Kay Berry, Inc. v. Taylor Gifts, Inc. Bandwagon, Inc
421 F.3d 199, 2005 U.S. App. LEXIS 18829, 76 U.S.P.Q. 2d (BNA) 1119 (2005)
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Rule of Law:
A work combining unprotectable elements, such as public domain text and common shapes, is copyrightable if the author's selection, coordination, and arrangement of those elements demonstrates a minimal degree of creativity. Furthermore, multiple distinct works may be validly registered under a single copyright as a 'single work' if they are published together in a single unit of publication by the same claimant.
Facts:
- Kay Berry, Inc. designs, manufactures, and sells decorative cement sculptures called 'Garden Accent Rocks'.
- One of its best-selling products is Sculpture No. 646, a rectangular, stone-like object inscribed with a five-line poem from the public domain, 'If Tears Could Build A Stairway...'.
- Kay Berry arranged the public domain poem using a right-leaning font, a specific five-line layout, and capitalized the first letter of each word.
- In 1997, Kay Berry obtained a single copyright registration for its entire line of Garden Accent Rocks by submitting its product catalog as the specimen.
- In 2003, Bandwagon, Inc. began supplying Taylor Gifts, Inc. with a 'Memory Stone' that was also a rectangular, stone-like object.
- The Memory Stone featured the exact same public domain poem, laid out in the same five-line format, using a similar right-leaning font and capitalization as Kay Berry's Sculpture No. 646.
Procedural Posture:
- Kay Berry, Inc. sued Taylor Gifts, Inc. and Bandwagon, Inc. for copyright infringement in the U.S. District Court for the Western District of Pennsylvania.
- Kay Berry's motion for a preliminary injunction was denied by the District Court, which adopted a Magistrate Judge's recommendation.
- Appellees Taylor and Bandwagon filed a motion for summary judgment on the infringement claim.
- A Magistrate Judge issued a Report and Recommendation suggesting the District Court grant the summary judgment motion.
- The District Court adopted the Magistrate's recommendation and granted summary judgment in favor of Taylor and Bandwagon, finding the copyright registration invalid and the work unprotectable.
- Kay Berry, Inc., as the appellant, appealed the grant of summary judgment to the U.S. Court of Appeals for the Third Circuit.
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Issue:
Does a single copyright registration covering a catalog of distinct sculptural works validly protect an individual sculpture that combines a public domain poem with an original arrangement and design, thereby meeting the originality requirement for copyright protection?
Opinions:
Majority - Van Antwerpen, Circuit Judge
Yes, the single registration is valid and the sculpture is sufficiently original for copyright protection. The District Court erred by analyzing the registration under the 'group registration' provision, which requires works to be related. The correct standard is the 'single work' registration regulation, which permits registering multiple self-contained works as a single unit if they are included in a 'single unit of publication,' such as a catalog, and share the same claimant; relatedness is not a requirement. Furthermore, the sculpture itself meets the low threshold for originality required by copyright law. Although the poem is in the public domain, Kay Berry's creative choices in selecting and arranging the font, line breaks, capitalization, and combining them with the specific sculptural design constitute a sufficient 'quantum of creativity' to warrant protection for the work as a whole. The idea of a memorial stone with a poem has not merged with Kay Berry's specific expression, as there are many other ways to express that idea.
Analysis:
This decision clarifies the important procedural distinction between 'group registration' under 17 U.S.C. § 408(c) and 'single work' registration under 37 C.F.R. § 202.3(b)(3), providing a clear path for creators to register collections of works published together in a single unit, like a catalog, without proving the works are substantively related. Substantively, the case reinforces the low threshold for originality from Feist, affirming that copyright protects an author's creative arrangement and combination of otherwise unprotectable, public domain elements. The ruling also narrowly construes the merger doctrine for aesthetic works, strengthening protection for specific artistic expressions even when based on common themes or ideas.
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