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IP/Entertainment Case Law Updates

Silverstein v. Penguin Putnam, Inc.

The district court denied the defendant’s request for attorney’s fees under the Copyright Act and the Lanham Act that the defendant incurred from the time the case was remanded by the Second Circuit back to the district court. Plaintiff Silverstein commenced this action against Penguin Putnam, claiming that he owned a compilation copyright in Not Much Fun: The Lost Poems of Dorothy Parker, a collection of Dorothy Parker's previously uncollected poems, and that Penguin infringed this copyright by photocopying these poems from his book and reproducing them in a chapter of Penguin's book, Dorothy Parker: Complete Poems. The Second Circuit reversed the district court’s initial award of summary judgment on the copyright claim insofar as it was based on Not Much Fun's arrangement of poems and the edits that Silverstein made and the titles he gave to some of the poems. The Second Circuit also vacated the judgment that Silverstein's selection of poems was protectible, finding that issues of material fact existed as to whether Silverstein's decisions to include or exclude certain Parker works demonstrated creative judgment and, if so, whether such creativity was sufficient for copyright protection to attach. The Second Circuit remanded the case for resolution of these factual issues. After the remand, the parties renewed cross-motions for summary judgment. The court denied these motions, finding that issues of material fact existed for trial. After a bench trial, the court held that the plaintiff’s selection of all of the poems lacked creativity and was therefore not copyrightable, ruling in favor of Penguin.

Penguin argued that after the decision was remanded by the Second Circuit, the plaintiff’s copyright claim was objectively unreasonable, but the district court disagreed. The court held that this procedural history and the court’s denial of the parties’ motions for summary judgment after the remand “recognize[] the objective validity of Silverstein’s copyright claim, at least on its face.” The court also rejected the defendant’s argument that the plaintiff acted in bad faith, finding that most of the plaintiff’s conduct was within the bounds of permissible advocacy, and rejected the defendant’s argument that the defendant was entitled to compensation for the litigation, noting that “Penguin’s sharp treatment of Silverstein, though lawful under the Copyright Act, naturally invited a lawsuit, and Penguin should bear the costs of defending its behavior.”