Szabo v. Errisson ( 1995 )

United States Court of Appeals,
Fifth Circuit.
No. 95-20025.
Scott W. SZABO, Plaintiff-Appellant,
v.
King ERRISSON, et al., Defendants-Appellees.
Nov. 10, 1995.
Appeal from the United States District Court for the Southern
District of Texas.
Before REYNALDO G. GARZA, BARKSDALE and EMILIO M. GARZA, Circuit
Judges.
EMILIO M. GARZA, Circuit Judge:
Plaintiff Scott W. Szabo appeals the district court's grant of
the defendants' motion for summary judgment, and the court's denial
of his motion for partial summary judgment. We reverse in part,
affirm in part, and remand for further proceedings.
I
Szabo, a musician and songwriter, composed an original music
composition titled "Man v. Man." Szabo then filed a single
copyright registration with the United States Copyright Office for
a collection of his songs titled "Scott Szabo's Songs of 1991."1
1
See 37 C.F.R. § 202.3(b)(3)(i)(B) (providing for copyrights
of unpublished works as a "collection"). A collection or
collective work is defined as "a work, such as a periodical
issue, anthology, or encyclopedia, in which a number of
contributions, constituting separate and independent works in
themselves, are assembled into a collective whole." 17 U.S.C. §
101. A collection is also a "compilation" for copyright
purposes. See id. ("A "compilation' is a work formed by the
collection and assembling of preexisting materials or of data
that are selected, coordinated, or arranged in such a way that
the resulting work as a whole constitutes an original work of
1
Although "Man v. Man" was not specifically listed on the
registration, it was on the tape of "Scott Szabo's Songs of 1991"
that Szabo deposited with the Copyright Office pursuant to his
registration.
A year later, King Errisson, a recording artist and musician,
recorded his version of "Man v. Man," which he titled "Man."
Errisson filed a copyright application for "Man," and the song was
then manufactured and distributed by Ichiban Records, Inc.
("Ichiban").
Szabo filed suit against defendants Errisson, Nassau Music,
Inc., d/b/a Erisong Records, d/b/a Koson's Music (collectively
referred to as "Errisson"), and Ichiban, asserting that Errisson
had infringed upon his copyright and that Ichiban was vicariously
liable for Errisson's acts. Szabo moved for partial summary
judgment on the issue of liability, asserting that there was no
genuine issue of material fact because Errisson admitted that he
authorship. The term "compilation' includes collective works.");
Heyman v. Salle, 743 F. Supp. 190, 192 (S.D.N.Y.1989) ("Those
compilations which consist of contributions which themselves
constitute "works' capable of copyright are called collective
works.").
Section 202.3(b)(3)(i)(B) also provides that multiple
unpublished works will be considered a "collection" if:
"(1) The elements are assembled in an orderly form; (2) the
combined elements bear a single title identifying the
collection as a whole; (3) the copyright claimant in all of
the elements, and in the collection as a whole, is the same;
and (4) all of the elements are by the same author." 37
C.F.R. § 202.3(b)(3)(i)(B). "Scott Szabo's Songs of 1991"
satisfies these requirements because it was assembled in an
orderly form with a single title identifying the collection
as a whole, and Szabo is the sole author and copyright
claimant of the individual songs in the collection.
2
had met Szabo, thus establishing that he had the opportunity to
copy Szabo's song, that his song, "Man," was a derivative of "Man
v. Man," and that the songs were substantially similar. The
district court denied Szabo's motion.
Errisson and Ichiban then filed a motion for summary judgment,
contending that Szabo could not maintain a copyright infringement
suit because he had never copyrighted the specific song, "Man v.
Man." They asserted that Szabo had only copyrighted the collection
titled "Scott Szabo's Songs of 1991," and that the copyright did
not extend to "Man v. Man" because it was not specifically listed
on the copyright registration. The district court granted Errisson
and Ichiban's motion for summary judgment and dismissed the case
with prejudice.
II
Szabo appeals both the district court's grant of summary
judgment in Errisson and Ichiban's favor, and the court's denial of
his request for partial summary judgment on the issue of liability.
Szabo contends (1) that Errisson and Ichiban's motion for summary
judgment should have been denied because "Man v. Man" is
copyrighted as part of the "collection" copyrighted as "Scott
Szabo's Songs of 1991," and (2) that he is entitled to partial
summary judgment on the issue of liability because Errisson
admitted that he had access to "Man v. Man," that "Man" is a
derivative of "Man v. Man," and that the two works are
substantially similar.
We review a district court's grant or denial of summary
3
judgment de novo. Matagorda County v. Russell Law, 19 F.3d 215,
217 (5th Cir.1994); United States v. First City Capital Corp., 53
F.3d 112, 115 (5th Cir.1995). "Summary judgment is appropriate if
the record discloses "that there is no genuine issue as to any
material fact and that the moving party is entitled to judgment as
a matter of law.' " Matagorda County, 19 F.3d at 217 (quoting
FED.R.CIV.P. 56(c)). We must review the record to ensure that no
genuine issue of material fact remains, drawing all inferences in
the favor of the nonmoving party. Id. (quoting Reid v. State Farm
Mut. Auto Ins. Co., 784 F.2d 577, 578 (5th Cir.1986)). "If the
record taken as a whole cannot lead a rational trier of fact to
find for the non-moving party, there is no genuine issue for
trial." Id. (citing Matsushita Elec. Indus. Co. v. Zenith Radio
Corp., 475 U.S. 574, 587, 106 S. Ct. 1348, 1356, 89 L. Ed. 2d 538
(1986)).
A
To establish a claim for copyright infringement, a plaintiff
must prove (1) that he owns a valid copyright and (2) that the
alleged infringer copies his copyrighted material.2 Apple Barrel
Productions, Inc. v. Beard, 730 F.2d 384, 387 (5th Cir.1984). The
first issue before us is whether a copyright of a "collection" of
individual songs, whose titles are not individually listed on the
copyright registration, extends copyright protection to the
2
"Copyright ownership is shown by proof of originality and
copyrightability in the work as a whole and by compliance with
applicable statutory formalities." Engineering Dynamics, Inc. v.
Structural Software, Inc., 26 F.3d 1335, 1340 (5th Cir.1994)
(citation omitted).
4
collection as a whole and to the individual songs, or just to the
collection as a whole. The district court held that because the
individual songs were not specifically listed on the copyright
registration, the copyright only protected the collection as a
whole and granted summary judgment against Szabo. We disagree, and
hold that a copyright of a collection of unpublished works protects
the individual works that are copyrightable,3 regardless of whether
they are individually listed on the copyright certificate.
The language of the Copyright Act, the regulations issued
pursuant to it, and a circular published by the Copyright Office
are instructive, though not definitive, in answering this issue of
first impression. Section 202.3(b)(3)(i)(B) of Title 37 provides
that multiple unpublished works may be registered as a collection
if the works meet certain requirements.4 This section provides
that "[r]egistration of an unpublished "collection' extends to each
copyrightable element in the collection." Section 103 of the
Copyright Act provides that "[t]he copyright in a compilation or
derivative work extends only to the material contributed by the
author of such work." (emphasis added). Circular 56, published by
the Copyright Office to explain the process for registering sound
3
Section 102 of the Copyright Act provides that copyright
protection is available for "original works of authorship"
including literary, musical, dramatic and other types of works.
17 U.S.C. § 102(a). However one cannot copyright an "idea,
procedure, process, system, method of operation, concept,
principle, or discovery, regardless of the form in which it is
described, explained, illustrated, or embodied in such work."
Id. § 102(b).
4
See supra note 1.
5
recordings, provides that "[a]lthough registration for an
unpublished collection covers all the selections, only the
collection title will appear in the catalog of copyright
registrations; the individual titles are not indexed." These
sections make it clear that the copyright of a collection can
protect the individual components of the collection. But they do
not answer the question of whether the individual components must
be specifically listed on the copyright registration to qualify for
such protection.
The cases addressing this issue hold that when one copyrights
a collection, the copyright extends to each individual work in the
collection even though the names of each work are not expressly
listed in the copyright registration. One district court was
presented a fact situation almost identical to this case. See
Sylvestre v. Oswald, 1993 WL 179101 (S.D.N.Y. May 18, 1993). In
Sylvestre, the plaintiffs had a copyright for a collection of songs
titled "Cherry Bomb." They brought a copyright infringement action
alleging that the defendants had infringed their copyright on
"Heaven," one of the songs in the "Cherry Bomb" collection.
Although "Heaven" was not specifically listed on the plaintiff's
copyright registration, it was on the "Cherry Bomb" tape that the
plaintiffs deposited with their application for registration. Id.
at *1. The defendants argued that the copyright for "Cherry Bomb"
did not protect "Heaven," since "Heaven" was not specifically
listed on the copyright registration. The district court held that
the title "Cherry Bomb" extended registration to "Heaven" because
6
"Heaven" was part of a collection of unpublished works. Id. at *2.
The district court found that the plaintiffs had met the
requirements in § 202.3(b)(3)(i)(B) of Title 37 for registering
unpublished works as a collection and in light of the "lenient
nature of the registration requirements," concluded that
registering the collection was sufficient to copyright the
individual songs as well as the collection as a whole. Id.
In a similar case, the Third Circuit held that if the
individual items contributed by the author of a collection or
compilation are copyrightable, then the registration of the
compilation or collection also protects the individual items. See
Educational Testing Services v. Katzman, 793 F.2d 533, 539 (3d
Cir.1986). Educational Testing Services ("ETS") is the author and
administrator of testing programs such as the Scholastic Aptitude
Test. ETS registers its tests for copyright under "secure test"
registration which "suspends the requirement to deposit copies of
the work, and requires instead that registrants of secure tests
need only deposit a sufficient portion or a description of the test
sufficient to identify it." Id. at 538 (citing 37 C.F.R. §
202.20(c)(2)(vi)). Under this procedure, the Copyright Office
examined the tests and then returned them to ETS, leaving only the
front and back covers of the tests on deposit. Citing section
103(b) of the Copyright Act,5 the court found that the statute is
5
Section 103(b) of the Copyright Act states that "[t]he
copyright in a compilation or derivative work extends only to the
material contributed by the author of such work." 17 U.S.C. §
103(b).
7
premised on the idea that "the copyright in a compilation extends
to the constituent material contributed by the author"; therefore,
ETS's individual questions, of which the tests were comprised, were
protected by the copyright of the tests. Id. at 539. The fact
that the individual test questions were neither listed on the
copyright registration nor on permanent deposit with the Copyright
Office did not affect their copyright status.
Applying the holding of Educational Testing Services, another
court has held that photographs in a copyrighted book which were
taken by the author of the book were protected as an original work
contributed by the author and part of a copyrighted work. See
Heyman v. Salle, 743 F. Supp. 190, 193 (S.D.N.Y.1989).
In light of the statutory language and the preceding cases, we
hold that the individual songs included in the collection "Scott
Szabo's Songs of 1991" are protected by the copyright of the
collection as a whole. It is irrelevant to its copyright status
that "Man v. Man" was not specifically listed on the copyright
registration for "Scott Szabo's Songs of 1991." Because we have
concluded that "Man v. Man" was copyrighted, Errisson and Ichiban
are not entitled to judgment as a matter of law. Therefore, we
reverse the district court's grant of summary judgment in their
favor.
B
Szabo further claims he is entitled to partial summary
judgment on Errisson and Ichiban's liability for copying his
copyrighted material. To prove actionable copying, the plaintiff
8
first must establish that the "alleged infringer actually used the
copyrighted material to create his own work." Engineering
Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335, 1340
(5th Cir.1994). This aspect of copying, known as factual copying,
can usually be inferred from proof that the alleged infringer had
access to the copyrighted material and that the two works are
probatively similar. Id. Second, the plaintiff must establish
actionable copying, that is the substantial similarity of two
works. Id. at 1340-41.
Errisson's affidavit in opposition to Szabo's motion for
partial summary judgment admits that he had met Szabo and that he
had created his own version of "Man v. Man." However, the
affidavit also states that Szabo told Errisson that he would not
have recognized Errisson's song titled "Man" as being derivative of
his song "Man v. Man" had he not known that it was. Drawing the
inferences in the light most favorable to the non-moving party, we
find that a genuine issue of material fact remains as to whether
"Man v. Man" and "Man" are substantially similar works. Therefore,
we affirm the denial of Szabo's motion for partial summary judgment
and remand for further proceedings.
III
For the foregoing reasons, we REVERSE in part, AFFIRM in part,
and REMAND for further proceedings.
9