499 U.S. 340 (1991)

Feist Publications, Inc.
v.
Rural Telephone Service Co., Inc.

No. 89-1909

Supreme Court of the United States

Argued January 9, 1991

Decided March 27, 1991

CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE TENTH CIRCUIT

Kyler Knobbe argued the cause and filed briefs for petitioner.

James M. Caplinger, Jr., argued the cause and filed a brief for respondent.^[1]

JUSTICE O'CONNOR delivered the opinion of the Court.

This case requires us to clarify the extent of copyright protection available to telephone directory white pages.

I

Rural Telephone Service Company, Inc., is a certified public utility that provides telephone service to several communities in northwest Kansas. It is subject to a state regulation that requires all telephone companies operating in Kansas to issue annually an updated telephone directory. Accordingly, as a condition of its monopoly franchise, Rural publishes a typical telephone directory, consisting of white pages and yellow pages. The white pages list in alphabetical order the names of Rural's subscribers, together with their towns and telephone numbers. The yellow pages list Rural's business subscribers alphabetically by category and feature classified advertisements of various sizes. Rural distributes its directory free of charge to its subscribers, but earns revenue by selling yellow pages advertisements.

Feist Publications, Inc., is a publishing company that specializes in area-wide telephone directories. Unlike a typical directory, which covers only a particular calling area, Feist's area-wide directories cover a much larger geographical range, reducing the need to call directory assistance or consult multiple directories. The Feist directory that is the subject of this litigation covers 11 different telephone service areas in 15 counties and contains 46,878 white pages listings—compared to Rural's approximately 7,700 listings. Like Rural's directory, Feist's is distributed free of charge and includes both white pages and yellow pages. Feist and Rural compete vigorously for yellow pages advertising.

As the sole provider of telephone service in its service area, Rural obtains subscriber information quite easily. Persons desiring telephone service must apply to Rural and provide their names and addresses; Rural then assigns them a telephone number. Feist is not a telephone company, let alone one with monopoly status, and therefore lacks independent access to any subscriber information. To obtain white pages listings for its area-wide directory, Feist approached each of the 11 telephone companies operating in northwest Kansas and offered to pay for the right to use its white pages listings.

Of the 11 telephone companies, only Rural refused to license its listings to Feist. Rural's refusal created a problem for Feist, as omitting these listings would have left a gaping hole in its area-wide directory, rendering it less attractive to potential yellow pages advertisers. In a decision subsequent to that which we review here, the District Court determined that this was precisely the reason Rural refused to license its listings. The refusal was motivated by an unlawful purpose "to extend its monopoly in telephone service to a monopoly in yellow pages advertising." Rural Telephone Service Co. v. Feist Publications, Inc., 737 F. Supp. 610, 622 (Kan. 1990).

Unable to license Rural's white pages listings, Feist used them without Rural's consent. Feist began by removing several thousand listings that fell outside the geographic range of its area-wide directory, then hired personnel to investigate the 4,935 that remained. These employees verified the data reported by Rural and sought to obtain additional information. As a result, a typical Feist listing includes the individual's street address; most of Rural's listings do not. Notwithstanding these additions, however, 1,309 of the 46,878 listings in Feist's 1983 directory were identical to listings in Rural's 1982-1983 white pages. App. 54 (¶ 15-16), 57. Four of these were fictitious listings that Rural had inserted into its directory to detect copying.

Rural sued for copyright infringement in the District Court for the District of Kansas taking the position that Feist, in compiling its own directory, could not use the information contained in Rural's white pages. Rural asserted that Feist's employees were obliged to travel door-to-door or conduct a telephone survey to discover the same information for themselves. Feist responded that such efforts were economically impractical and, in any event, unnecessary because the information copied was beyond the scope of copyright protection. The District Court granted summary judgment to Rural, explaining that "[c]ourts have consistently held that telephone directories are copyrightable" and citing a string of lower court decisions. 663 F. Supp. 214, 218 (1987). In an unpublished opinion, the Court of Appeals for the Tenth Circuit affirmed "for substantially the reasons given by the district court." App. to Pet. for Cert. 4a, judgt. order reported at 916 F. 2d 718 (1990). We granted certiorari, 498 U.S. 808 (1990), to determine whether the copyright in Rural's directory protects the names, towns, and telephone numbers copied by Feist.

II

A

This case concerns the interaction of two well-established propositions. The first is that facts are not copyrightable; the other, that compilations of facts generally are. Each of these propositions possesses an impeccable pedigree. That there can be no valid copyright in facts is universally understood. The most fundamental axiom of copyright law is that "[n]o author may copyright his ideas or the facts he narrates." Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 556 (1985). Rural wisely concedes this point, noting in its brief that "[f]acts and discoveries, of course, are not themselves subject to copyright protection." Brief for Respondent 24. At the same time, however, it is beyond dispute that compilations of facts are within the subject matter of copyright. Compilations were expressly mentioned in the Copyright Act of 1909, and again in the Copyright Act of 1976.

There is an undeniable tension between these two propositions. Many compilations consist of nothing but raw data—i.e., wholly factual information not accompanied by any original written expression. On what basis may one claim a copyright in such a work? Common sense tells us that 100 uncopyrightable facts do not magically change their status when gathered together in one place. Yet copyright law seems to contemplate that compilations that consist exclusively of facts are potentially within its scope.

The key to resolving the tension lies in understanding why facts are not copyrightable. The sine qua non of copyright is originality. To qualify for copyright protection, a work must be original to the author. See Harper & Row, supra, at 547-549. Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity. 1 M. Nimmer & D. Nimmer, Copyright §§ 2.01[A], [B] (1990) (hereinafter Nimmer). To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, "no matter how crude, humble or obvious" it might be. Id., § 1.08[C][1]. Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying. To illustrate, assume that two poets, each ignorant of the other, compose identical poems. Neither work is novel, yet both are original and, hence, copyrightable. See Sheldon v. Metro-Goldwyn Pictures Corp., 81 F. 2d 49, 54 (CA2 1936).

Originality is a constitutional requirement. The source of Congress' power to enact copyright laws is Article I, § 8, cl. 8, of the Constitution, which authorizes Congress to "secur[e] for limited Times to Authors . . . the exclusive Right to their respective Writings." In two decisions from the late 19th century—The Trade-Mark Cases, 100 U.S. 82 (1879); and Burrow-Giles Lithographic Co. v. Sarony, 111 U. S. 53 (1884)—this Court defined the crucial terms "authors" and "writings." In so doing, the Court made it unmistakably clear that these terms presuppose a degree of originality.

In The Trade-Mark Cases, the Court addressed the constitutional scope of "writings." For a particular work to be classified "under the head of writings of authors," the Court determined, "originality is required." 100 U.S., at 94. The Court explained that originality requires independent creation plus a modicum of creativity: "[W]hile the word writings may be liberally construed, as it has been, to include original designs for engraving, prints, &c., it is only such as are original, and are founded in the creative powers of the mind. The writings which are to be protected are the fruits of intellectual labor, embodied in the form of books, prints, engravings, and the like." Ibid. (emphasis in original).

In Burrow-Giles, the Court distilled the same requirement from the Constitution's use of the word "authors." The Court defined "author," in a constitutional sense, to mean "he to whom anything owes its origin; originator; maker." 111 U. S., at 58 (internal quotation marks omitted). As in The Trade-Mark Cases, the Court emphasized the creative component of originality. It described copyright as being limited to "original intellectual conceptions of the author," 111 U. S., at 58, and stressed the importance of requiring an author who accuses another of infringement to prove "the existence of those facts of originality, of intellectual production, of thought, and conception." Id., at 59-60.

The originality requirement articulated in The Trade-Mark Cases and Burrow-Giles remains the touchstone of copyright protection today. See Goldstein v. California, 412 U. S. 546, 561-562 (1973). It is the very "premise of copyright law." Miller v. Universal City Studios, Inc., 650 F. 2d 1365, 1368 (CA5 1981). Leading scholars agree on this point. As one pair of commentators succinctly puts it: "The originality requirement is constitutionally mandated for all works." Patterson & Joyce, Monopolizing the Law: The Scope of Copyright Protection for Law Reports and Statutory Compilations, 36 UCLA L. Rev. 719, 763, n. 155 (1989) (emphasis in original) (hereinafter Patterson & Joyce). Accord, id., at 759-760, and n. 140; Nimmer § 1.06[A] ("[O]riginality is a statutory as well as a constitutional requirement"); id., § 1.08[C][1] ("[A] modicum of intellectual labor . . . clearly constitutes an essential constitutional element").

It is this bedrock principle of copyright that mandates the law's seemingly disparate treatment of facts and factual compilations. "No one may claim originality as to facts." Id., § 2.11[A], p. 2-157. This is because facts do not owe their origin to an act of authorship. The distinction is one between creation and discovery: The first person to find and report a particular fact has not created the fact; he or she has merely discovered its existence. To borrow from Burrow-Giles, one who discovers a fact is not its "maker" or "originator." 111 U.S., at 58. "The discoverer merely finds and records." Nimmer § 2.03[E]. Census takers, for example, do not "create" the population figures that emerge from their efforts; in a sense, they copy these figures from the world around them. Denicola, Copyright in Collections of Facts: A Theory for the Protection of Nonfiction Literary Works, 81 Colum. L. Rev. 516, 525 (1981) (hereinafter Denicola). Census data therefore do not trigger copyright because these data are not "original" in the constitutional sense. Nimmer § 2.03[E]. The same is true of all facts—scientific, historical, biographical, and news of the day. "[T]hey may not be copyrighted and are part of the public domain available to every person." Miller, supra, at 1369.

Factual compilations, on the other hand, may possess the requisite originality. The compilation author typically chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers. These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original that Congress may protect such compilations through the copyright laws. Nimmer §§ 2.11[D], 3.03; Denicola 523, n. 38. Thus, even a directory that contains absolutely no protectible written expression, only facts, meets the constitutional minimum for copyright protection if it features an original selection or arrangement. See Harper & Row, 471 U.S., at 547. Accord, Nimmer § 3.03.

This protection is subject to an important limitation. The mere fact that a work is copyrighted does not mean that every element of the work may be protected. Originality remains the sine qua non of copyright; accordingly, copyright protection may extend only to those components of a work that are original to the author. Patterson & Joyce 800-802; Ginsburg, Creation and Commercial Value: Copyright Protection of Works of Information, 90 Colum. L. Rev. 1865, 1868, and n. 12 (1990) (hereinafter Ginsburg). Thus, if the compilation author clothes facts with an original collocation of words, he or she may be able to claim a copyright in this written expression. Others may copy the underlying facts from the publication, but not the precise words used to present them. In Harper & Row, for example, we explained that President Ford could not prevent others from copying bare historical facts from his autobiography, see 471 U. S., at 556-557, but that he could prevent others from copying his "subjective descriptions and portraits of public figures." Id., at 563. Where the compilation author adds no written expression but rather lets the facts speak for themselves, the expressive element is more elusive. The only conceivable expression is the manner in which the compiler has selected and arranged the facts. Thus, if the selection and arrangement are original, these elements of the work are eligible for copyright protection. See Patry, Copyright in Compilations of Facts (or Why the "White Pages" Are Not Copyrightable), 12 Com. & Law 37, 64 (Dec. 1990) (hereinafter Patry). No matter how original the format, however, the facts themselves do not become original through association. See Patterson & Joyce 776.

This inevitably means that the copyright in a factual compilation is thin. Notwithstanding a valid copyright, a subsequent compiler remains free to use the facts contained in another's publication to aid in preparing a competing work, so long as the competing work does not feature the same selection and arrangement. As one commentator explains it: "[N]o matter how much original authorship the work displays, the facts and ideas it exposes are free for the taking . . . . [T]he very same facts and ideas may be divorced from the context imposed by the author, and restated or reshuffled by second comers, even if the author was the first to discover the facts or to propose the ideas." Ginsburg 1868.

It may seem unfair that much of the fruit of the compiler's labor may be used by others without compensation. As Justice Brennan has correctly observed, however, this is not "some unforeseen byproduct of a statutory scheme." Harper & Row, 471 U. S., at 589 (dissenting opinion). It is, rather, "the essence of copyright," ibid., and a constitutional requirement. The primary objective of copyright is not to reward the labor of authors, but "[t]o promote the Progress of Science and useful Arts." Art. I, § 8, cl. 8. Accord, Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975). To this end, copyright assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work. Harper & Row, supra, at 556-557. This principle, known as the idea/expression or fact/expression dichotomy, applies to all works of authorship. As applied to a factual compilation, assuming the absence of original written expression, only the compiler's selection and arrangement may be protected; the raw facts may be copied at will. This result is neither unfair nor unfortunate. It is the means by which copyright advances the progress of science and art.

This Court has long recognized that the fact/expression dichotomy limits severely the scope of protection in fact-based works. More than a century ago, the Court observed: "The very object of publishing a book on science or the useful arts is to communicate to the world the useful knowledge which it contains. But this object would be frustrated if the knowledge could not be used without incurring the guilt of piracy of the book." Baker v. Selden, 101 U.S. 99, 103 (1880). We reiterated this point in Harper & Row:

"[N]o author may copyright facts or ideas. The copyright is limited to those aspects of the work—termed 'expression'—that display the stamp of the author's originality.

"[C]opyright does not prevent subsequent users from copying from a prior author's work those constituent elements that are not original—for example . . . facts, or materials in the public domain—as long as such use does not unfairly appropriate the author's original contributions." 471 U.S., at 547-548 (citation omitted).

This, then, resolves the doctrinal tension: Copyright treats facts and factual compilations in a wholly consistent manner. Facts, whether alone or as part of a compilation, are not original and therefore may not be copyrighted. A factual compilation is eligible for copyright if it features an original selection or arrangement of facts, but the copyright is limited to the particular selection or arrangement. In no event may copyright extend to the facts themselves.

B

As we have explained, originality is a constitutionally mandated prerequisite for copyright protection. The Court's decisions announcing this rule predate the Copyright Act of 1909, but ambiguous language in the 1909 Act caused some lower courts temporarily to lose sight of this requirement.

The 1909 Act embodied the originality requirement, but not as clearly as it might have. See Nimmer § 2.01. The subject matter of copyright was set out in §§ 3 and 4 of the Act. Section 4 stated that copyright was available to "all the writings of an author." 35 Stat. 1076. By using the words "writings" and "author"—the same words used in Article I, § 8, of the Constitution and defined by the Court in The Trade-Mark Cases and Burrow-Giles—the statute necessarily incorporated the originality requirement articulated in the Court's decisions. It did so implicitly, however, thereby leaving room for error.

Section 3 was similarly ambiguous. It stated that the copyright in a work protected only "the copyrightable component parts of the work." It thus stated an important copyright principle, but failed to identify the specific characteristic—originality—that determined which component parts of a work were copyrightable and which were not.

Most courts construed the 1909 Act correctly, notwithstanding the less-than-perfect statutory language. They understood from this Court's decisions that there could be no copyright without originality. See Patterson & Joyce 760-761. As explained in the Nimmer treatise: "The 1909 Act neither defined originality, nor even expressly required that a work be 'original' in order to command protection. However, the courts uniformly inferred the requirement from the fact that copyright protection may only be claimed by 'authors'. . . . It was reasoned that since an author is 'the . . . creator, originator' it follows that a work is not the product of an author unless the work is original." Nimmer § 2.01 (footnotes omitted) (citing cases).

But some courts misunderstood the statute. See, e.g., Leon v. Pacific Telephone & Telegraph Co., 91 F. 2d 484 (CA9 1937); Jeweler's Circular Publishing Co. v. Keystone Publishing Co., 281 F. 83 (CA2 1922). These courts ignored §§ 3 and 4, focusing their attention instead on § 5 of the Act. Section 5, however, was purely technical in nature: It provided that a person seeking to register a work should indicate on the application the type of work, and it listed 14 categories under which the work might fall. One of these categories was "[b]ooks, including composite and cyclopædic works, directories, gazetteers, and other compilations." § 5(a). Section 5 did not purport to say that all compilations were automatically copyrightable. Indeed, it expressly disclaimed any such function, pointing out that "the subject-matter of copyright [i]s defined in section four." Nevertheless, the fact that factual compilations were mentioned specifically in § 5 led some courts to infer erroneously that directories and the like were copyrightable per se, "without any further or precise showing of original—personal—authorship." Ginsburg 1895.

Making matters worse, these courts developed a new theory to justify the protection of factual compilations. Known alternatively as "sweat of the brow" or "industrious collection," the underlying notion was that copyright was a reward for the hard work that went into compiling facts. The classic formulation of the doctrine appeared in Jeweler's Circular Publishing Co., 281 F., at 88:

"The right to copyright a book upon which one has expended labor in its preparation does not depend upon whether the materials which he has collected consist or not of matters which are publici juris, or whether such materials show literary skill or originality, either in thought or in language, or anything more than industrious collection. The man who goes through the streets of a town and puts down the names of each of the inhabitants, with their occupations and their street number, acquires material of which he is the author" (emphasis added).

The "sweat of the brow" doctrine had numerous flaws, the most glaring being that it extended copyright protection in a compilation beyond selection and arrangement—the compiler's original contributions—to the facts themselves. Under the doctrine, the only defense to infringement was independent creation. A subsequent compiler was "not entitled to take one word of information previously published," but rather had to "independently wor[k] out the matter for himself, so as to arrive at the same result from the same common sources of information." Id., at 88-89 (internal quotation marks omitted). "Sweat of the brow" courts thereby eschewed the most fundamental axiom of copyright law—that no one may copyright facts or ideas. See Miller v. Universal City Studios, Inc., 650 F. 2d, at 1372 (criticizing "sweat of the brow" courts because "ensur[ing] that later writers obtain the facts independently . . . is precisely the scope of protection given . . . copyrighted matter, and the law is clear that facts are not entitled to such protection").

Decisions of this Court applying the 1909 Act make clear that the statute did not permit the "sweat of the brow" approach. The best example is International News Service v. Associated Press, 248 U. S. 215 (1918). In that decision, the Court stated unambiguously that the 1909 Act conferred copyright protection only on those elements of a work that were original to the author. International News Service had conceded taking news reported by Associated Press and publishing it in its own newspapers. Recognizing that § 5 of the Act specifically mentioned "'periodicals, including newspapers,'" § 5(b), the Court acknowledged that news articles were copyrightable. Id., at 234. It flatly rejected, however, the notion that the copyright in an article extended to the factual information it contained: "[T]he news element—the information respecting current events contained in the literary production—is not the creation of the writer, but is a report of matters that ordinarily are publici juris; it is the history of the day." Ibid.^[2]

Without a doubt, the "sweat of the brow" doctrine flouted basic copyright principles. Throughout history, copyright law has "recognize[d] a greater need to disseminate factual works than works of fiction or fantasy." Harper & Row, 471 U. S., at 563. Accord, Gorman, Fact or Fancy: The Implications for Copyright, 29 J. Copyright Soc. 560, 563 (1982). But "sweat of the brow" courts took a contrary view; they handed out proprietary interests in facts and declared that authors are absolutely precluded from saving time and effort by relying upon the facts contained in prior works. In truth, "[i]t is just such wasted effort that the proscription against the copyright of ideas and facts . . . [is] designed to prevent." Rosemont Enterprises, Inc. v. Random House, Inc., 366 F. 2d 303, 310 (CA2 1966), cert. denied, 385 U. S. 1009 (1967). "Protection for the fruits of such research . . . may in certain circumstances be available under a theory of unfair competition. But to accord copyright protection on this basis alone distorts basic copyright principles in that it creates a monopoly in public domain materials without the necessary justification of protecting and encouraging the creation of 'writings' by 'authors.'" Nimmer § 3.04, p. 3-23 (footnote omitted).

C

"Sweat of the brow" decisions did not escape the attention of the Copyright Office. When Congress decided to over-haul the copyright statute and asked the Copyright Office to study existing problems, see Mills Music, Inc. v. Snyder, 469 U. S. 153, 159 (1985), the Copyright Office promptly recommended that Congress clear up the confusion in the lower courts as to the basic standards of copyrightability. The Register of Copyrights explained in his first report to Congress that "originality" was a "basic requisit[e]" of copyright under the 1909 Act, but that "the absence of any reference to [originality] in the statute seems to have led to misconceptions as to what is copyrightable matter." Report of the Register of Copyrights on the General Revision of the U. S. Copyright Law, 87th Cong., 1st Sess., p. 9 (H. Judiciary Comm. Print 1961). The Register suggested making the originality requirement explicit. Ibid.

Congress took the Register's advice. In enacting the Copyright Act of 1976, Congress dropped the reference to "all the writings of an author" and replaced it with the phrase "original works of authorship." 17 U.S.C. § 102(a). In making explicit the originality requirement, Congress announced that it was merely clarifying existing law: "The two fundamental criteria of copyright protection [are] originality and fixation in tangible form . . . . The phrase 'original works of authorship,' which is purposely left undefined, is intended to incorporate without change the standard of originality established by the courts under the present [1909] copyright statute." H. R. Rep. No. 94-1476, p. 51 (1976) (emphasis added) (hereinafter H. R. Rep.); S. Rep. No. 94-473, p. 50 (1975) (emphasis added) (hereinafter S. Rep.). This sentiment was echoed by the Copyright Office: "Our intention here is to maintain the established standards of originality. . . ." Supplementary Report of the Register of Copyrights on the General Revision of U.S. Copyright Law, 89th Cong., 1st Sess., pt. 6, p. 3 (H. Judiciary Comm. Print 1965) (emphasis added).

To ensure that the mistakes of the "sweat of the brow" courts would not be repeated, Congress took additional measures. For example, § 3 of the 1909 Act had stated that copyright protected only the "copyrightable component parts" of a work, but had not identified originality as the basis for distinguishing those component parts that were copyrightable from those that were not. The 1976 Act deleted this section and replaced it with § 102(b), which identifies specifically those elements of a work for which copyright is not available: "In no case does copyright protection for an original work of authorship extend to any 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." Section 102(b) is universally understood to prohibit any copyright in facts. Harper & Row, supra, at 547, 556. Accord, Nimmer § 2.03[E] (equating facts with "discoveries"). As with § 102(a), Congress emphasized that § 102(b) did not change the law, but merely clarified it: "Section 102(b) in no way enlarges or contracts the scope of copyright protection under the present law. Its purpose is to restate . . . that the basic dichotomy between expression and idea remains unchanged." H. R. Rep., at 57; S. Rep., at 54.

Congress took another step to minimize confusion by deleting the specific mention of "directories . . . and other compilations" in § 5 of the 1909 Act. As mentioned, this section had led some courts to conclude that directories were copyrightable per se and that every element of a directory was protected. In its place, Congress enacted two new provisions. First, to make clear that compilations were not copyrightable per se, Congress provided a definition of the term "compilation." Second, to make clear that the copyright in a compilation did not extend to the facts themselves, Congress enacted § 103.

The definition of "compilation" is found in § 101 of the 1976 Act. It defines a "compilation" in the copyright sense as "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 authorship" (emphasis added).

The purpose of the statutory definition is to emphasize that collections of facts are not copyrightable per se. It conveys this message through its tripartite structure, as emphasized above by the italics. The statute identifies three distinct elements and requires each to be met for a work to qualify as a copyrightable compilation: (1) the collection and assembly of pre-existing material, facts, or data; (2) the selection, coordination, or arrangement of those materials; and (3) the creation, by virtue of the particular selection, coordination, or arrangement, of an "original" work of authorship. "[T]his tripartite conjunctive structure is self-evident, and should be assumed to 'accurately express the legislative purpose.'" Patry 51, quoting.

At first glance, the first requirement does not seem to tell us much. It merely describes what one normally thinks of as a compilation—a collection of pre-existing material, facts, or data. What makes it significant is that it is not the sole requirement. It is not enough for copyright purposes that an author collects and assembles facts. To satisfy the statutory definition, the work must get over two additional hurdles. In this way, the plain language indicates that not every collection of facts receives copyright protection. Otherwise, there would be a period after "data."

The third requirement is also illuminating. It emphasizes that a compilation, like any other work, is copyrightable only if it satisfies the originality requirement ("an original work of authorship"). Although § 102 states plainly that the originality requirement applies to all works, the point was emphasized with regard to compilations to ensure that courts would not repeat the mistake of the "sweat of the brow" courts by concluding that fact-based works are treated differently and measured by some other standard. As Congress explained it, the goal was to "make plain that the criteria of copyrightable subject matter stated in section 102 apply with full force to works . . . containing preexisting material." H. R. Rep., at 57; S. Rep., at 55.

The key to the statutory definition is the second requirement. It instructs courts that, in determining whether a fact-based work is an original work of authorship, they should focus on the manner in which the collected facts have been selected, coordinated, and arranged. This is a straightforward application of the originality requirement. Facts are never original, so the compilation author can claim originality, if at all, only in the way the facts are presented. To that end, the statute dictates that the principal focus should be on whether the selection, coordination, and arrangement are sufficiently original to merit protection.

Not every selection, coordination, or arrangement will pass muster. This is plain from the statute. It states that, to merit protection, the facts must be selected, coordinated, or arranged "in such a way" as to render the work as a whole original. This implies that some "ways" will trigger copyright, but that others will not. See Patry 57, and n. 76. Otherwise, the phrase "in such a way" is meaningless and Congress should have defined "compilation" simply as "a work formed by the collection and assembly of preexisting materials or data that are selected, coordinated, or arranged." That Congress did not do so is dispositive. In accordance with "the established principle that a court should give effect, if possible, to every clause and word of a statute," Moskal v. United States, 498 U. S. 103, 109-110 (1990) (internal quotation marks omitted), we conclude that the statute envisions that there will be some fact-based works in which the selection, coordination, and arrangement are not sufficiently original to trigger copyright protection.

As discussed earlier, however, the originality requirement is not particularly stringent. A compiler may settle upon a selection or arrangement that others have used; novelty is not required. Originality requires only that the author make the selection or arrangement independently (i.e., without copying that selection or arrangement from another work), and that it display some minimal level of creativity. Presumably, the vast majority of compilations will pass this test, but not all will. There remains a narrow category of works in which the creative spark is utterly lacking or so trivial as to be virtually nonexistent. See generally Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903) (referring to "the narrowest and most obvious limits"). Such works are incapable of sustaining a valid copyright. Nimmer § 2.01[B].

Even if a work qualifies as a copyrightable compilation, it receives only limited protection. This is the point of § 103 of the Act. Section 103 explains that "[t]he subject matter of copyright . . . includes compilations," § 103(a), but that copyright protects only the author's original contributions—not the facts or information conveyed:

"The copyright in a compilation . . . extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material." § 103(b).

As § 103 makes clear, copyright is not a tool by which a compilation author may keep others from using the facts or data he or she has collected. "The most important point here is one that is commonly misunderstood today: copyright. . . has no effect one way or the other on the copyright or public domain status of the preexisting material." H. R. Rep., at 57; S. Rep., at 55. The 1909 Act did not require, as "sweat of the brow" courts mistakenly assumed, that each subsequent compiler must start from scratch and is precluded from relying on research undertaken by another. See, e.g., Jeweler's Circular Publishing Co., 281 F., at 88-89. Rather, the facts contained in existing works may be freely copied because copyright protects only the elements that owe their origin to the compiler—the selection, coordination, and arrangement of facts.

In summary, the 1976 revisions to the Copyright Act leave no doubt that originality, not "sweat of the brow," is the touchstone of copyright protection in directories and other fact-based works. Nor is there any doubt that the same was true under the 1909 Act. The 1976 revisions were a direct response to the Copyright Office's concern that many lower courts had misconstrued this basic principle, and Congress emphasized repeatedly that the purpose of the revisions was to clarify, not change, existing law. The revisions explain with painstaking clarity that copyright requires originality, § 102(a); that facts are never original, § 102(b); that the copyright in a compilation does not extend to the facts it contains, § 103(b); and that a compilation is copyrightable only to the extent that it features an original selection, coordination, or arrangement, § 101.

The 1976 revisions have proven largely successful in steering courts in the right direction. A good example is Miller v. Universal City Studios, Inc., 650 F. 2d, at 1369-1370: "A copyright in a directory . . . is properly viewed as resting on the originality of the selection and arrangement of the factual material, rather than on the industriousness of the efforts to develop the information. Copyright protection does not extend to the facts themselves, and the mere use of information contained in a directory without a substantial copying of the format does not constitute infringement" (citation omitted). Additionally, the Second Circuit, which almost 70 years ago issued the classic formulation of the "sweat of the brow" doctrine in Jeweler's Circular Publishing Co., has now fully repudiated the reasoning of that decision. See, e.g., Financial Information, Inc. v. Moody's Investors Service, Inc., 808 F. 2d 204, 207 (CA2 1986), cert. denied, 484 U. S. 820 (1987); Financial Information, Inc. v. Moody's Investors Service, Inc., 751 F. 2d 501, 510 (CA2 1984) (Newman, J., concurring); Hoehling v. Universal City Studios, Inc., 618 F. 2d 972, 979 (CA2 1980). Even those scholars who believe that "industrious collection" should be rewarded seem to recognize that this is beyond the scope of existing copyright law. See Denicola 516 ("[T]he very vocabulary of copyright is ill suited to analyzing property rights in works of nonfiction"); id., at 520-521, 525; Ginsburg 1867, 1870.

III

There is no doubt that Feist took from the white pages of Rural's directory a substantial amount of factual information. At a minimum, Feist copied the names, towns, and telephone numbers of 1,309 of Rural's subscribers. Not all copying, however, is copyright infringement. To establish infringement, two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. See Harper & Row, 471 U.S., at 548. The first element is not at issue here; Feist appears to concede that Rural's directory, considered as a whole, is subject to a valid copyright because it contains some foreword text, as well as original material in its yellow pages advertisements. See Brief for Petitioner 18; Pet. for Cert. 9.

The question is whether Rural has proved the second element. In other words, did Feist, by taking 1,309 names, towns, and telephone numbers from Rural's white pages, copy anything that was "original" to Rural? Certainly, the raw data does not satisfy the originality requirement. Rural may have been the first to discover and report the names, towns, and telephone numbers of its subscribers, but this data does not "'ow[e] its origin'" to Rural. Burrow-Giles, 111 U. S., at 58. Rather, these bits of information are uncopyrightable facts; they existed before Rural reported them and would have continued to exist if Rural had never published a telephone directory. The originality requirement "rule[s] out protecting . . . names, addresses, and telephone numbers of which the plaintiff by no stretch of the imagination could be called the author." Patterson & Joyce 776.

Rural essentially concedes the point by referring to the names, towns, and telephone numbers as "preexisting material." Brief for Respondent 17. Section 103(b) states explicitly that the copyright in a compilation does not extend to "the preexisting material employed in the work."

The question that remains is whether Rural selected, coordinated, or arranged these uncopyrightable facts in an original way. As mentioned, originality is not a stringent standard; it does not require that facts be presented in an innovative or surprising way. It is equally true, however, that the selection and arrangement of facts cannot be so mechanical or routine as to require no creativity whatsoever. The standard of originality is low, but it does exist. See Patterson & Joyce 760, n. 144 ("While this requirement is sometimes characterized as modest, or a low threshold, it is not without effect") (internal quotation marks omitted; citations omitted). As this Court has explained, the Constitution mandates some minimal degree of creativity, see The Trade-Mark Cases, 100 U. S., at 94; and an author who claims infringement must prove "the existence of . . . intellectual production, of thought, and conception." Burrow-Giles, supra, at 59-60.

The selection, coordination, and arrangement of Rural's white pages do not satisfy the minimum constitutional standards for copyright protection. As mentioned at the outset, Rural's white pages are entirely typical. Persons desiring telephone service in Rural's service area fill out an application and Rural issues them a telephone number. In preparing its white pages, Rural simply takes the data provided by its subscribers and lists it alphabetically by surname. The end product is a garden-variety white pages directory, devoid of even the slightest trace of creativity.

Rural's selection of listings could not be more obvious: It publishes the most basic information—name, town, and telephone number—about each person who applies to it for telephone service. This is "selection" of a sort, but it lacks the modicum of creativity necessary to transform mere selection into copyrightable expression. Rural expended sufficient effort to make the white pages directory useful, but insufficient creativity to make it original.

We note in passing that the selection featured in Rural's white pages may also fail the originality requirement for another reason. Feist points out that Rural did not truly "select" to publish the names and telephone numbers of its subscribers; rather, it was required to do so by the Kansas Corporation Commission as part of its monopoly franchise. See 737 F. Supp., at 612. Accordingly, one could plausibly conclude that this selection was dictated by state law, not by Rural.

Nor can Rural claim originality in its coordination and arrangement of facts. The white pages do nothing more than list Rural's subscribers in alphabetical order. This arrangement may, technically speaking, owe its origin to Rural; no one disputes that Rural undertook the task of alphabetizing the names itself. But there is nothing remotely creative about arranging names alphabetically in a white pages directory. It is an age-old practice, firmly rooted in tradition and so commonplace that it has come to be expected as a matter of course. See Brief for Information Industry Association et al. as Amici Curiae 10 (alphabetical arrangement "is universally observed in directories published by local exchange telephone companies"). It is not only unoriginal, it is practically inevitable. This time-honored tradition does not possess the minimal creative spark required by the Copyright Act and the Constitution.

We conclude that the names, towns, and telephone numbers copied by Feist were not original to Rural and therefore were not protected by the copyright in Rural's combined white and yellow pages directory. As a constitutional matter, copyright protects only those constituent elements of a work that possess more than a de minimis quantum of creativity. Rural's white pages, limited to basic subscriber information and arranged alphabetically, fall short of the mark. As a statutory matter, 17 U.S.C. § 101 does not afford protection from copying to a collection of facts that are selected, coordinated, and arranged in a way that utterly lacks originality. Given that some works must fail, we cannot imagine a more likely candidate. Indeed, were we to hold that Rural's white pages pass muster, it is hard to believe that any collection of facts could fail.

Because Rural's white pages lack the requisite originality, Feist's use of the listings cannot constitute infringement. This decision should not be construed as demeaning Rural's efforts in compiling its directory, but rather as making clear that copyright rewards originality, not effort. As this Court noted more than a century ago, "'great praise may be due to the plaintiffs for their industry and enterprise in publishing this paper, yet the law does not contemplate their being rewarded in this way.'" Baker v. Selden, 101 U. S., at 105.

The judgment of the Court of Appeals is

Reversed.

JUSTICE BLACKMUN concurs in the judgment.

[1] Briefs of amici curiae urging reversal were filed for the Association of North American Directory Publishers et al. by Theodore Case Whitehouse; for the International Association of Cross Reference Directory Publishers by Richard D. Grauer and Kathleen McCree Lewis; and for the Third-Class Mail Association by Ian D. Volner.

Briefs of amici curiae urging affirmance were filed for Ameritech et al. by Michael K. Kellogg, Charles Rothfeld, Douglas J. Kirk, Thomas P. Hester, and Harlan Sherwat; for the Association of American Publishers, Inc., by Robert G. Sugarman and R. Bruce Rich; for GTE Corp. by Kirk K. Van Tine, Richard M. Cahill, and Edward R. Sublett; for the National Telephone Cooperative Association by L. Marie Guillory and David Cosson; for the United States Telephone Association by Richard J. Rappaport and Keith P. Schoeneberger; and for West Publishing Co. by Vance K. Opperman and James E. Schatz.

Briefs of amici curiae were filed for Bellsouth Corp. by Anthony B. Askew, Robert E. Richards, Walter H. Alford, and Vincent L. Sgrosso; for the Direct Marketing Association, Inc., by Robert L. Sherman; for Haines and Co., Inc., by Jeremiah D. McAuliffe, Bernard A. Barken, and Eugene Gressman; and for the Information Industry Association et al. by Steven J. Metalitz and Angela Burnett.

[2] The Court ultimately rendered judgment for Associated Press on non-copyright grounds that are not relevant here. See 248 U.S., at 235, 241-242.

Melvin L. Wulf, Beldock, Levine & Hoffman, LLP, New York City, for Defendants-Appellants.

David Dunn, Davis, Weber & Edwards, P.C., New York City, for Plaintiff-Appellee.

Before: VAN GRAAFEILAND and WALKER, Circuit Judges, and RAKOFF, District Judge.^[*]

JOHN M. WALKER, Jr., Circuit Judge:

This case presents two interesting and somewhat novel issues of copyright law. The first is whether The Seinfeld Aptitude Test, a trivia quiz book devoted exclusively to testing its readers' recollection of scenes and events from the fictional television series Seinfeld, takes sufficient protected expression from the original, as evidenced by the book's substantial similarity to the television series, such that, in the absence of any defenses, the book would infringe the copyright in Seinfeld. The second is whether The Seinfeld Aptitude Test (also referred to as The SAT) constitutes fair use of the Seinfeld television series.

Defendants-appellants Carol Publishing Group, Inc. and Beth B. Golub appeal from the July 23, 1997 judgment of the United States District Court for the Southern District of New York (Sonia Sotomayor, District Judge) granting, pursuant to Fed.R.Civ.P. 56, plaintiff-appellee Castle Rock Entertainment, Inc.'s ("Castle Rock") motion for summary judgment; denying defendants' cross-motion for summary judgment; awarding Castle Rock $403,000 for defendants' copyright infringement; and permanently enjoining defendants from publishing The Seinfeld Aptitude Test.

We conclude that The SAT unlawfully copies from Seinfeld and that its copying does not constitute fair use and thus is an actionable infringement. Accordingly, we affirm the judgment in favor of Castle Rock.

Background

The material facts in this case are undisputed. Plaintiff Castle Rock is the producer and copyright owner of each episode of the Seinfeld television series. The series revolves around the petty tribulations in the lives of four single, adult friends in New York: Jerry Seinfeld, George Costanza, Elaine Benes, and Cosmo Kramer. Defendants are Beth Golub, the author, and Carol Publishing Group, Inc., the publisher, of The SAT, a 132-page book containing 643 trivia questions and answers about the events and characters depicted in Seinfeld. These include 211 multiple choice questions, in which only one out of three to five answers is correct; 93 matching questions; and a number of short-answer questions. The questions are divided into five levels of difficulty, labeled (in increasing order of difficulty) "Wuss Questions," "This, That, and the Other Questions," "Tough Monkey Questions," "Atomic Wedgie Questions," and "Master of Your Domain Questions." Selected examples from level 1 are indicative of the questions throughout The SAT:

1. To impress a woman, George passes himself off as

a) a gynecologist

b) a geologist

c) a marine biologist

d) a meteorologist

11. What candy does Kramer snack on while observing a surgical procedure from an operating-room balcony?

12. Who said, "I don't go for those nonrefundable deals ... I can't commit to a woman ... I'm not committing to an airline."?

a) Jerry

b) George

c) Kramer^[2]

The book draws from 84 of the 86 Seinfeld episodes that had been broadcast as of the time The SAT was published. Although Golub created the incorrect answers to the multiple choice questions, every question and correct answer has as its source a fictional moment in a Seinfeld episode. Forty-one questions and/or answers contain dialogue from Seinfeld. The single episode most drawn upon by The SAT, "The Cigar Store Indian," is the source of 20 questions that directly quote between 3.6% and 5.6% of that episode (defendants' and plaintiff's calculations, respectively).

The name "Seinfeld" appears prominently on the front and back covers of The SAT, and pictures of the principal actors in Seinfeld appear on the cover and on several pages of the book. On the back cover, a disclaimer states that "This book has not been approved or licensed by any entity involved in creating or producing Seinfeld."^[3] The front cover bears the title "The Seinfeld Aptitude Test" and describes the book as containing "[h]undreds of spectacular questions of minute details from TV's greatest show about absolutely nothing." The back cover asks:

Just how well do you command the buzzwords, peccadilloes, petty annoyances, and triflingly complex escapades of Jerry Seinfeld, Elaine Benes, George Costanza, and Kramer—the fabulously neurotic foursome that makes the offbeat hit TV series Seinfeld tick?

....

If you think you know the answers—and really keep track of Seinfeld minutiae—challenge yourself and your friends with these 550 trivia questions and 10 extra matching quizzes. No, The Seinfeld Aptitude Test can't tell you whether you're Master of Your Domain, but it will certify your status as King or Queen of Seinfeld trivia. So twist open a Snapple, double-dip a chip, and open this book to satisfy your between-episode cravings.

Golub has described The SAT as a "natural outgrowth" of Seinfeld which, "like the Seinfeld show, is devoted to the trifling, picayune and petty annoyances encountered by the show's characters on a daily basis." According to Golub, she created The SAT by taking notes from Seinfeld programs at the time they were aired on television and subsequently reviewing videotapes of several of the episodes, as recorded by her or various friends.

The SAT's publication did not immediately provoke a challenge. The National Broadcasting Corporation, which broadcasted Seinfeld, requested free copies of The SAT from defendants and distributed them together with promotions for the program. Seinfeld's executive producer characterized The SAT as "a fun little book." There is no evidence that The SAT's publication diminished Seinfeld's profitability, and in fact Seinfeld's audience grew after The SAT was first published.

Castle Rock has nevertheless been highly selective in marketing products associated with Seinfeld, rejecting numerous proposals from publishers seeking approval for a variety of projects related to the show. Castle Rock licensed one Seinfeld book, The Entertainment Weekly Seinfeld Companion, and has licensed the production of a CD-ROM product that includes discussions of Seinfeld episodes; the CD-ROM allegedly might ultimately include a trivia bank. Castle Rock claims in this litigation that it plans to pursue a more aggressive marketing strategy for Seinfeld-related products, including "publication of books relating to Seinfeld."

In November 1994, Castle Rock notified defendants of its copyright and trademark infringement claims. In February 1995, after defendants continued to distribute The SAT, Castle Rock filed this action alleging federal copyright and trademark infringement and state law unfair competition. Subsequently, both parties moved, pursuant to Fed.R.Civ.P. 56, for summary judgment on both the copyright and unfair competition claims.

The district court granted summary judgment to Castle Rock on the copyright claim. It held that defendants had violated plaintiff's copyrights in Seinfeld and that such copying did not constitute fair use. See Castle Rock Entertainment v. Carol Publ'g Group, Inc., 955 F.Supp. 260, 274 (S.D.N.Y. 1997). The district court did not grant summary judgment to either party on the unfair competition claim. See id. The parties then stipulated to damages and attorneys' fees on the copyright infringement claim and, presumably to facilitate the appeal, to the dismissal without prejudice of all remaining claims. Carol Publishing's cross-claims against Golub were dismissed with prejudice. The district court entered final judgment on the copyright infringement claim, awarded Castle Rock $403,000 with interest, permanently enjoined defendants from publishing or distributing The SAT, and ordered defendants to destroy all copies of The SAT in their custody or control. Defendants now appeal.

Discussion

Standard of Review

Summary judgment is appropriate only if the moving party can show that there is "no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). The court "must draw all reasonable inferences and resolve all ambiguities in favor of the non-moving party." Garza v. Marine Transp. Lines, Inc., 861 F.2d 23, 26 (2d Cir.1988). Although "[f]air use is a mixed question of law and fact," Harper & Row, Publishers, Inc. v. Nation Enter., 471 U.S. 539, 560, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985), this court has on a number of occasions "resolved fair use determinations at the summary judgment stage" where, as here, there are no genuine issues of material fact. Wright v. Warner Books, Inc., 953 F.2d 731, 735 (2d Cir.1991); Leibovitz v. Paramount Pictures Corp., 137 F.3d 109 (2d Cir.1998) (affirming summary judgment awarded to defendants on basis of fair use defense); Harper & Row, 471 U.S. at 560, 105 S.Ct. 2218. We review the district court's legal conclusions de novo and its findings of fact for clear error. See American Geophysical Union v. Texaco Inc., 60 F.3d 913, 918 (2d Cir.1994).

Copyright Infringement

The Copyright Act of 1976 ("Copyright Act"), 17 U.S.C. §§ 101-803, grants copyright owners a bundle of exclusive rights, including the rights to "reproduce the copyrighted work in copies" and "to prepare derivative works based upon the copyrighted work." Id. § 106. "Copyright infringement is established when the owner of a valid copyright demonstrates unauthorized copying." Repp v. Webber, 132 F.3d 882, 889 (2d Cir.1997); see Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). There are two main components of this prima facie case of infringement: "a plaintiff must first show that his work was actually copied .... [and] then must show that the copying amounts to an improper or unlawful appropriation." Laureyssens v. Idea Group, Inc., 964 F.2d 131, 139-40 (2d Cir.1992) (quotation marks and citations omitted). Actual copying may be established "either by direct evidence of copying or by indirect evidence, including access to the copyrighted work, similarities that are probative of copying between the works, and expert testimony." Id. at 140. As we have noted before, "probative," rather than "substantial" similarity is the correct term in referring to the plaintiff's initial burden of proving actual copying by indirect evidence. See Webber, 132 F.3d at 889 n. 1; Laureyssens, 964 F.2d at 140. "It is only after actual copying is established that one claiming infringement" then proceeds to demonstrate that the copying was improper or unlawful by showing that the second work bears "substantial similarity" to protected expression in the earlier work. Webber, 132 F.3d at 889; Laureyssens, 964 F.2d at 140.

In the instant case, no one disputes that Castle Rock owns valid copyrights in the Seinfeld television programs and that defendants actually copied from those programs in creating The SAT. Golub freely admitted that she created The SAT by taking notes from Seinfeld programs at the time they were aired on television and subsequently reviewing videotapes of several of the episodes that she or her friends recorded. Since the fact of copying is acknowledged and undisputed, the critical question for decision is whether the copying was unlawful or improper in that it took a sufficient amount of protected expression from Seinfeld as evidenced by its substantial similarity to such expression.

Substantial Similarity

We have stated that "substantial similarity"

requires that the copying [be] quantitatively and qualitatively sufficient to support the legal conclusion that infringement (actionable copying) has occurred. The qualitative component concerns the copying of expression, rather than ideas [, facts, works in the public domain, or any other non-protectable elements].... The quantitative component generally concerns the amount of the copyrighted work that is copied,

which must be more than "de minimis." Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70, 75 (2d Cir.1997) (emphasis added).

As to the quantitative element, we conclude that The SAT has crossed the de minimis threshold. At the outset, we observe that the fact that the copying appears in question and answer form is by itself without particular consequence: the trivia quiz copies fragments of Seinfeld in the same way that a collection of Seinfeld jokes or trivia would copy fragments of the series. In order to determine the quantitative extent of the defendants' copying, we must then decide whether to analyze separately the amount of expression copied from each individually copyrighted Seinfeld episode, or to analyze in the aggregate the amount copied from the eighty-four Seinfeld episodes. As defendants observe, 17 U.S.C. § 106 speaks throughout in the singular, referring to the allegedly infringed "work," thus bolstering an individual-episode analysis. Our precedents, however, tend to support the aggregate analysis. See Twin Peaks Prods., Inc. v. Publications Int'l, Ltd., 996 F.2d 1366, 1372-73, 1381 (2d Cir.1993) (finding substantial similarity between infringing book and 8 episodes of Twin Peaks weekly television series seen as a whole, but awarding statutory damages on per-episode basis); Wainwright Secs. Inc. v. Wall St. Transcript Corp., 558 F.2d 91, 94 (2d Cir.1977) (abstracts of a number of research reports treated cumulatively in fair use analysis); see also Craft v. Kobler, 667 F.Supp. 120, 124-25 (S.D.N.Y.1987) (passages taken from 15 separate books of copyright holder treated cumulatively in finding infringement); cf. New Era Publications Int'l, ApS v. Carol Publ'g Group, 904 F.2d 152, 158 (2d Cir.1990) (in analyzing whether critical biography was fair use of 48 original writings, court noted that biography "uses overall a small percentage of [plaintiff's] works" but also noted that percentage of copying taken from each individual work was not "unfair") (emphasis added); but see Salinger v. Random House, Inc., 811 F.2d 90, 98 (2d Cir.1987) (copying of Salinger letters not fair use because, among other factors, secondary work copied one-third of 17 letters and 10 percent of 42 letters).

As in Twin Peaks, for the purposes of the quantitative copying analysis we shall treat Seinfeld—a discrete, continuous television series—as a single work.^[4] Where the secondary work focuses on an entire continuous television series such as Seinfeld, there is no basis for looking in isolation at the amount copied from each separately copyrighted episode. Although 17 U.S.C. § 106 speaks in terms of a singular copyrighted "work," it would elevate form over substance to conclude that The SAT's copying of 643 fragments from 84 individually copyrighted Seinfeld episodes is indistinguishable from a case in which a 634-question trivia quiz book poses a few questions from each of 84 unrelated television programs, books, movies, or any combination of creative works that do not constitute a discrete series of works. Had The SAT copied a few fragments from each of 84 unrelated television programs (perhaps comprising the entire line-up on broadcast television), defendants would have a stronger case under the de minimis doctrine. By copying not a few but 643 fragments from the Seinfeld television series, however, The SAT has plainly crossed the quantitative copying threshold under Ringgold.

As to Ringgold's qualitative component, each SAT trivia question is based directly upon original, protectable expression in Seinfeld. As noted by the district court, The SAT did not copy from Seinfeld unprotected facts, but, rather, creative expression. Cf. Feist, 499 U.S. at 364, 111 S.Ct. 1282 (finding no infringement where defendant produced a multi-county phone directory, in part, by obtaining names and phone numbers from plaintiffs' single-county directory). Unlike the facts in a phone book, which "do not owe their origin to an act of authorship," id. at 347, 111 S.Ct. 1282, each "fact" tested by The SAT is in reality fictitious expression created by Seinfeld's authors. The SAT does not quiz such true facts as the identity of the actors in Seinfeld, the number of days it takes to shoot an episode, the biographies of the actors, the location of the Seinfeld set, etc. Rather, The SAT tests whether the reader knows that the character Jerry places a Pez dispenser on Elaine's leg during a piano recital, that Kramer enjoys going to the airport because he's hypnotized by the baggage carousels, and that Jerry, opining on how to identify a virgin, said "It's not like spotting a toupee." Because these characters and events spring from the imagination of Seinfeld's authors, The SAT plainly copies copyrightable, creative expression.^[5]See Feist, 499 U.S. at 347, 111 S.Ct. 1282 (discussing distinction between discovered facts, which do not "owe their origin to an act of authorship" and therefore are not protected by copyright, and created facts, which constitute original, protected expression).

We find support for this conclusion in a previous case in which we held that a series of still photographs of a ballet may in some cases infringe the copyright in an original choreographic work. See Horgan v. Macmillan, Inc., 789 F.2d 157, 163 (2d Cir.1986). The defendants in Horgan claimed that still photographs could not "capture the flow of movement, which is the essence of dance," that "the staged performance could not be recreated from the photographs," and thus, that the photographs were not substantially similar to the choreographic work. Id. at 161-62 (quotation marks omitted). Although noting that the issue "was not a simple one," this court rejected that argument, holding that "the standard for determining copyright infringement is not whether the original could be recreated from the allegedly infringing copy, but whether the latter is substantially similar to the former." Id. at 162 (quotation marks omitted). That observation applies with equal force to the trivia quiz fragments in this case. Although Seinfeld could not be "recreated" from The SAT, Castle Rock has nevertheless established both the quantitative and qualitative components of the substantial similarity test, establishing a prima facie case of copyright infringement.

Other Tests

As defendants note, substantial similarity usually "arises out of a claim of infringement as between comparable works .... [where] because of the equivalent nature of the competing works, the question of similarity can be tested conventionally by comparing comparable elements of the two works." Because in the instant case the original and secondary works are of different genres and to a lesser extent because they are in different media, tests for substantial similarity other than the quantitative/qualitative approach are not particularly helpful to our analysis.

Under the "ordinary observer" test, for example, "[t]wo works are substantially similar where 'the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal [of the two works] as the same.'" Arica Inst., Inc. v. Palmer, 970 F.2d 1067, 1072 (2d Cir.1992) (quoting Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.1960) (L.Hand, J.) (comparing dress designs)) (alterations in original). Undoubtedly, Judge Hand did not have in mind a comparison of aesthetic appeal as between a television series and a trivia quiz and, in the usual case, we might question whether any "ordinary observer" would "regard [the] aesthetic appeal" in a situation-comedy television program as being identical to that of any book, let alone a trivia quiz book, about that program. Cf. Laureyssens, 964 F.2d at 132, 141 (applying "ordinary observer" test to compare two sets of foam rubber puzzles). We note here, however, that plaintiff has a plausible claim that there is a common aesthetic appeal between the two works based on The SAT's plain copying of Seinfeld and Golub's statement on the back cover that the book was designed to complement the aesthetic appeal of the television series. See The SAT ("So twist open a Snapple, double-dip a chip, and open this book to satisfy your between episode cravings.").

Under the "total concept and feel" test, urged by defendants, we analyze "the similarities in such aspects as the total concept and feel, theme, characters, plot, sequence, pace, and setting" of the original and the allegedly infringing works. Williams v. Crichton, 84 F.3d 581, 588 (2d Cir.1996) (comparing children's books with novel and movie); Reyher v. Children's Television Workshop, 533 F.2d 87, 91 (2d Cir.1976) (comparing children's book with story in Sesame Street Magazine). Defendants contend that The SAT and the Seinfeld programs are incomparable in conventional terms such as plot, sequence, themes, pace, and setting. For example, The SAT has no plot; "[t]he notion of pace ... cannot be said even to exist in the book"; The SAT's "sequence has no relationship to the sequences of any of the Seinfeld episodes, since it is a totally random and scattered collection of questions relating to events that occurred in the shows"; and The SAT's only theme "is how much a Seinfeld fan can remember of 84 different programs." The total concept and feel test, however, is simply not helpful in analyzing works that, because of their different genres and media, must necessarily have a different concept and feel. Indeed, many "derivative" works of different genres, in which copyright owners have exclusive rights, see 17 U.S.C. § 106, may have a different total concept and feel from the original work.

Finally, we do not apply the "fragmented literal similarity" test,^[6] which focuses upon copying of direct quotations or close paraphrasing, or the "comprehensive nonliteral similarity" test, which examines whether "the fundamental essence or structure of one work is duplicated in another." 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[A][1], at 13-29, § 13.03[A][2], at 13-45 (1997) (hereafter "Nimmer"); Twin Peaks, 996 F.2d at 1372-73 (applying Nimmer test); Warner Bros. Inc. v. American Broad. Cos., 720 F.2d 231, 240, 242 (2d Cir.1983) (applying Nimmer test to compare Superman and The Greatest American Hero). In the instant case, because the direct quotations or close paraphrases that The SAT copied from the Seinfeld series are few and almost irrelevant to The SAT, undue focus upon these isolated quotations could improperly distract us from inquiring as to whether substantial similarity exists between Seinfeld and The SAT.

Castle Rock's comprehensive nonliteral similarity argument—that the defendants "literally constructed the SAT with 643 fragments of Seinfeld's creative whole"—is also unhelpful to our analysis and unnecessary to our determination that The SAT is substantially similar to Seinfeld. Without having viewed Seinfeld itself, no SAT reader could plausibly "construct" in his or her mind the plot of any Seinfeld episode, nor any of Seinfeld's settings (the Seinfeld and Kramer apartments, the foursome's restaurant hangout, George Steinbrenner's office, etc.), nor even the four principal Seinfeld characters. Nor does The SAT "[duplicate] the fundamental essence or structure" of Seinfeld. 4 Nimmer § 13.03[A][1], at 13-29; cf. Twin Peaks, 996 F.2d 1372-73 (finding "substantial similarity through comprehensive nonliteral similarity" where chapter of infringing book "is essentially a detailed recounting of the first eight episodes of the [television] series" and "[e]very intricate plot twist and element of character development appear in the Book in the same sequence as in the teleplays"). However, "[t]he standard for determining copyright infringement is not whether the original could be recreated from the allegedly infringing copy, but whether the latter is 'substantially similar' to the former," Horgan, 789 F.2d at 162, and in copying a sufficient amount of protected expression from the Seinfeld television series, The SAT easily passes the threshold of substantial similarity between the contents of the secondary work and the protected expression in the original.

Fair Use

Defendants claim that, even if The SAT's copying of Seinfeld constitutes prima facie infringement, The SAT is nevertheless a fair use of Seinfeld. "From the infancy of copyright protection," the fair use doctrine "has been thought necessary to fulfill copyright's very purpose, '[t]o promote the Progress of Science and useful Arts.'" Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994) (quoting U.S. Const., art. I, § 8, cl. 8). As noted in Campbell, "in truth, in literature, in science and in art, there are, and can be, few, if any, things, which in an abstract sense, are strictly new and original throughout. Every book in literature, science and art, borrows, and must necessarily borrow, and use much which was well known and used before." Id. (quotation marks omitted). Until the 1976 Copyright Act, the doctrine of fair use grew exclusively out of the common law. See id. at 576, 114 S.Ct. 1164; Folsom v. Marsh, 9 F.Cas. 342, 348 (C.D.Mass.1900) (CCD Mass. 1841) (Story, J.) (stating fair use test); Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L.Rev. 1105, 1105 (1990) ("Leval").

In the Copyright Act, Congress restated the common law tradition of fair use:

[T]he fair use of a copyrighted work ... for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

17 U.S.C. § 107. This section "intended that courts continue the common law tradition of fair use adjudication" and "permits and requires courts to avoid rigid application of the copyright statute, when, on occasion, it would stifle the very creativity which that law is designed to foster." Campbell, 510 U.S. at 577, 114 S.Ct. 1164 (quotation marks omitted). Fair use analysis, therefore, always "calls for case-by-case analysis." Id. The fair use examples provided in § 107 are "illustrative and not limitative" and "provide only general guidance about the sorts of copying that courts and Congress most commonly had found to be fair uses." Id. at 577-78, 114 S.Ct. 1164. Similarly, the four listed statutory factors in § 107 guide but do not control our fair use analysis and "are to be explored, and the results weighed together, in light of the purposes of copyright." Id.; see 4 Nimmer § 13.05[A], at 13-153 ("[T]he factors contained in Section 107 are merely by way of example, and are not an exhaustive enumeration."). The ultimate test of fair use, therefore, is whether the copyright law's goal of "promot[ing] the Progress of Science and useful Arts," U.S. Const., art. I, § 8, cl. 8, "would be better served by allowing the use than by preventing it." Arica, 970 F.2d at 1077.

Purpose/Character of Use

The first fair use factor to consider is "the purpose and character of the [allegedly infringing] use, including whether such use is of a commercial nature or is for nonprofit educational purposes." 17 U.S.C. § 107(1). That The SAT's use is commercial, at most, "tends to weigh against a finding of fair use." Campbell, 510 U.S. at 585, 114 S.Ct. 1164 (quotation marks omitted); Texaco, 60 F.3d at 921. But we do not make too much of this point. As noted in Campbell, "nearly all of the illustrative uses listed in the preamble paragraph of § 107, including news reporting, comment, criticism, teaching, scholarship, and research ... are generally conducted for profit in this country," 510 U.S. at 584, 114 S.Ct. 1164 (quotation marks omitted), and "no man but a blockhead ever wrote, except for money," id. (quoting 3 Boswell's Life of Johnson 19 (G. Hill ed.1934)). We therefore do not give much weight to the fact that the secondary use was for commercial gain.

The more critical inquiry under the first factor and in fair use analysis generally is whether the allegedly infringing work "merely supersedes" the original work "or instead adds something new, with a further purpose or different character, altering the first with new ... meaning [ ] or message," in other words "whether and to what extent the new work is 'transformative.'" Id. at 579, 114 S.Ct. 1164 (quoting Leval at 1111). If "the secondary use adds value to the original—if [copyrightable expression in the original work] is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings—this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society." Leval at 1111. In short, "the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works." Campbell, 510 U.S. at 579, 114 S.Ct. 1164.

Defendants claim two primary "transformative" qualities of The SAT. First, as noted by the district court, "a text testing one's knowledge of Joyce's Ulysses, or Shakespeare's Hamlet, would qualify as 'criticism, comment, scholarship, or research,' or such. The same must be said, then, of a text testing one's knowledge of Castle Rock's Seinfeld." Castle Rock, 955 F.Supp. at 268 (citing Twin Peaks, 996 F.2d at 1374 ("A comment is as eligible for fair use protection when it concerns 'Masterpiece Theater' and appears in the New York Review of Books as when it concerns 'As the World Turns' and appears in Soap Opera Digest.")). In other words, the fact that the subject matter of the quiz is plebeian, banal, or ordinary stuff does not alter the fair use analysis. Criticism, comment, scholarship, research, and other potential fair uses are no less protectable because their subject is the ordinary.

Second, defendants style The SAT as a work "decod[ing] the obsession with ... and mystique that surround[s] 'Seinfeld,'" by "critically restructur[ing] [Seinfeld's mystique] into a system complete with varying levels of 'mastery' that relate the reader's control of the show's trivia to knowledge of and identification with their hero, Jerry Seinfeld." Citing one of their own experts for the proposition that "[t]he television environment cannot speak for itself but must be spoken for and about," defendants argue that "The SAT is a quintessential example of critical text of the TV environment .... expos[ing] all of the show's nothingness to articulate its true motive forces and its social and moral dimensions." (Quotation marks omitted). Castle Rock dismisses these arguments as post hoc rationalizations, claiming that had defendants been half as creative in creating The SAT as were their lawyers in crafting these arguments about transformation, defendants might have a colorable fair use claim.

Any transformative purpose possessed by The SAT is slight to non-existent. We reject the argument that The SAT was created to educate Seinfeld viewers or to criticize, "expose," or otherwise comment upon Seinfeld. The SAT's purpose, as evidenced definitively by the statements of the book's creators and by the book itself, is to repackage Seinfeld to entertain Seinfeld viewers. The SAT's back cover makes no mention of exposing Seinfeld to its readers, for example, as a pitiably vacuous reflection of a puerile and pervasive television culture, but rather urges SAT readers to "open this book to satisfy [their] between-episode [Seinfeld] cravings." Golub, The SAT's author, described the trivia quiz book not as a commentary or a Seinfeld research tool, but as an effort to "capture Seinfeld's flavor in quiz book fashion." Finally, even viewing The SAT in the light most favorable to defendants, we find scant reason to conclude that this trivia quiz book seeks to educate, criticize, parody, comment, report upon, or research Seinfeld, or otherwise serve a transformative purpose.^[7] The book does not contain commentary or analysis about Seinfeld, nor does it suggest how The SAT can be used to research Seinfeld; rather, the book simply poses trivia questions. The SAT's plain purpose, therefore, is not to expose Seinfeld's "nothingness," but to satiate Seinfeld fans' passion for the "nothingness" that Seinfeld has elevated into the realm of protectable creative expression.

Although a secondary work need not necessarily transform the original work's expression to have a transformative purpose, see, e.g., 4 Nimmer § 13.05[D][2], at 13-227-13-228 (discussing reproduction of entire works in judicial proceedings), the fact that The SAT so minimally alters Seinfeld's original expression in this case is further evidence of The SAT's lack of transformative purpose. To be sure, the act of testing trivia about a creative work, in question and answer form, involves some creative expression. While still minimal, it does require posing the questions and hiding the correct answer among three or four incorrect ones.^[8] Also, dividing the trivia questions into increasing levels of difficulty is somewhat more original than arranging names in a telephone book in alphabetical order. See Feist, 499 U.S. at 362-63, 111 S.Ct. 1282. The SAT's incorrect multiple choice answers are also original. However, the work as a whole, drawn directly from the Seinfeld episodes without substantial alteration, is far less transformative than other works we have held not to constitute fair use. See, e.g., Twin Peaks, 996 F.2d at 1378 (book about Twin Peaks television series that discusses show's popularity, characters, actors, plots, creator, music, and poses trivia questions about show held not to be fair use).

Finally, we note a potential source of confusion in our copyright jurisprudence over the use of the term "transformative." A "derivative work," over which a copyright owner has exclusive control, is defined as

a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.

17 U.S.C. §§ 101, 106(2) (emphasis added). Although derivative works that are subject to the author's copyright transform an original work into a new mode of presentation, such works—unlike works of fair use—take expression for purposes that are not "transformative."^[9] In the instant case, since The SAT has transformed Seinfeld's expression into trivia quiz book form with little, if any, transformative purpose, the first fair use factor weighs against defendants.

Nature of the Copyrighted Work

The second statutory factor, "the nature of the copyrighted work," 17 U.S.C. § 107(2), "calls for recognition that some works are closer to the core of intended copyright protection than others, with the consequence that fair use is more difficult to establish when the former works are copied." Campbell, 510 U.S. at 586, 114 S.Ct. 1164. Defendants concede that the scope of fair use is somewhat narrower with respect to fictional works, such as Seinfeld, than to factual works. See Stewart v. Abend, 495 U.S. 207, 237, 110 S.Ct. 1750, 109 L.Ed.2d 184 (1990) ("In general, fair use is more likely to be found in factual works than in fictional works"); Twin Peaks, 996 F.2d at 1376 (second factor "favor[s] ... creative and fictional work"). Although this factor may be of less (or even of no) importance when assessed in the context of certain transformative uses, see, e.g., Campbell, 510 U.S. at 586, 114 S.Ct. 1164 (creative nature of original "Pretty Woman" song "not much help" to fair use analysis "since parodies almost invariably copy ... expressive works"), the fictional nature of the copyrighted work remains significant in the instant case, where the secondary use is at best minimally transformative. Thus, the second statutory factor favors the plaintiff.

Amount and Substantiality of the Portion Used in Relation to the Copyrighted Work as a Whole

As a preliminary matter, the district court held that its determination that The SAT is substantially similar to Seinfeld "'should suffice for a determination that the third fair use factor favors the plaintiff.'" Castle Rock, 955 F.Supp. at 269-70 (quoting Twin Peaks, 996 F.2d at 1377). However, because secondary users need invoke the fair use defense only where there is substantial similarity between the original and allegedly infringing works, and thus actionable copying, the district court's analysis is of little if any assistance. Under the district court's analysis, the third fair use factor would always and unfairly favor the original copyright owner claiming no fair use. See 4 Nimmer § 13.05[A], at 13-152 ("[F]air use is a defense not because of the absence of substantial similarity but rather despite the fact that the similarity is substantial.").

In Campbell, a decision post-dating Twin Peaks, the Supreme Court clarified that the third factor—the amount and substantiality of the portion of the copyrighted work used—must be examined in context. The inquiry must focus upon whether "[t]he extent of ... copying" is consistent with or more than necessary to further "the purpose and character of the use." 510 U.S. at 586-87, 114 S.Ct. 1164; see Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 449-50, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984) (reproduction of entire work "does not have its ordinary effect of militating against a finding of fair use" as to home videotaping of television programs); Harper & Row, 471 U.S. at 564, 105 S.Ct. 2218 ("[E]ven substantial quotations might qualify as fair use in a review of a published work or a news account of a speech" but not in a scoop of a soon-to-be-published memoir.). "[B]y focussing [sic] on the amount and substantiality of the original work used by the secondary user, we gain insight into the purpose and character of the use as we consider whether the quantity of the material used was reasonable in relation to the purpose of the copying." Texaco, 60 F.3d at 926 (quotation marks omitted). In Campbell, for example, the Supreme Court determined that a "parody must be able to 'conjure up' at least enough of [the] original [work] to make the object of its critical wit recognizable" and then determined whether the amount used of the original work was "no more than necessary" to satisfy the purpose of parody. 510 U.S. at 588-89, 114 S.Ct. 1164.

In the instant case, it could be argued that The SAT could not expose Seinfeld's "nothingness" without repeated, indeed exhaustive examples deconstructing Seinfeld's humor, thereby emphasizing Seinfeld's meaninglessness to The SAT's readers. That The SAT posed as many as 643 trivia questions to make this rather straightforward point, however, suggests that The SAT's purpose was entertainment, not commentary. Such an argument has not been advanced on appeal, but if it had been, it would not disturb our conclusion that, under any fair reading, The SAT does not serve a critical or otherwise transformative purpose. Accordingly, the third factor weighs against fair use.

Effect of Use Upon Potential Market for or Value of Copyrighted Work

Defendants claim that the fourth factor favors their case for fair use because Castle Rock has offered no proof of actual market harm to Seinfeld caused by The SAT. To the contrary, Seinfeld's audience grew after publication of The SAT, and Castle Rock has evidenced no interest in publishing Seinfeld trivia quiz books and only minimal interest in publishing Seinfeld-related books.

The Supreme Court has recently retreated from its earlier cases suggesting that the fourth statutory factor is the most important element of fair use, see Harper & Row, 471 U.S. at 566, 105 S.Ct. 2218, recognizing instead that "[a]ll [factors] are to be explored, and the results weighed together, in light of the purposes of copyright," Campbell, 510 U.S. at 578, 114 S.Ct. 1164; see Texaco, 60 F.3d at 926 (applying Campbell approach). Under this factor, we "consider not only the extent of market harm caused by the particular actions of the alleged infringer, but also whether unrestricted and widespread conduct of the sort engaged in by the defendant ... would result in a substantially adverse impact on the potential market for the original." Campbell, 510 U.S. at 590, 114 S.Ct. 1164 (quotation marks and citation omitted). The fourth factor must also "take account ... of harm to the market for derivative works," id., defined as those markets "that creators of original works would in general develop or license others to develop," id. at 592, 114 S.Ct. 1164.

In considering the fourth factor, our concern is not whether the secondary use suppresses or even destroys the market for the original work or its potential derivatives, but whether the secondary use usurps or substitutes for the market of the original work. Id. at 593, 114 S.Ct. 1164. The more transformative the secondary use, the less likelihood that the secondary use substitutes for the original. Id. at 591, 114 S.Ct. 1164. As noted by the district court, "[b]y the very nature of [transformative] endeavors, persons other than the copyright holder are undoubtedly better equipped, and more likely, to fill these particular market and intellectual niches." Castle Rock, 955 F.Supp. at 271. And yet the fair use, being transformative, might well harm, or even destroy, the market for the original. See Campbell, 510 U.S. at 591-92, 114 S.Ct. 1164 ("[A] lethal parody, like a scathing theater review, kills demand for the original, [but] does not produce a harm cognizable under the Copyright Act."); New Era Publications, 904 F.2d at 160 ("a critical biography serves a different function than does an authorized, favorable biography, and thus injury to the potential market for the favorable biography by the publication of the unfavorable biography does not affect application of factor four").^[10]

Unlike parody, criticism, scholarship, news reporting, or other transformative uses, The SAT substitutes for a derivative market that a television program copyright owner such as Castle Rock "would in general develop or license others to develop." Campbell, 510 U.S. at 592, 114 S.Ct. 1164.^[11] Because The SAT borrows exclusively from Seinfeld and not from any other television or entertainment programs, The SAT is likely to fill a market niche that Castle Rock would in general develop. Moreover, as noted by the district court, this "Seinfeld trivia game is not critical of the program, nor does it parody the program; if anything, SAT pays homage to Seinfeld." Castle Rock, 955 F.Supp. at 271-72. Although Castle Rock has evidenced little if any interest in exploiting this market for derivative works based on Seinfeld, such as by creating and publishing Seinfeld trivia books (or at least trivia books that endeavor to "satisfy" the "between-episode cravings" of Seinfeld lovers), the copyright law must respect that creative and economic choice. "It would ... not serve the ends of the Copyright Act—i.e., to advance the arts—if artists were denied their monopoly over derivative versions of their creative works merely because they made the artistic decision not to saturate those markets with variations of their original." Castle Rock, 955 F.Supp. at 272; see Salinger, 811 F.2d at 99 ("The need to assess the effect on the market for Salinger's letters is not lessened by the fact that their author has disavowed any intention to publish them during his lifetime."). The fourth statutory factor therefore favors Castle Rock.

Other Factors

As we have noted, the four statutory fair use factors are non-exclusive and serve only as a guide to promote the purposes underlying the copyright law. One factor that is of no relevance to the fair use equation, however, is defendants' continued distribution of The SAT after Castle Rock notified defendants of its copyright infringement claim, because "[i]f the use is otherwise fair, then no permission need be sought or granted.... [B]eing denied permission to use a work does not weigh against a finding of fair use." Campbell, 510 U.S. at 585 n. 18, 114 S.Ct. 1164; see Wright, 953 F.2d at 737 (rejecting as irrelevant to fair use analysis argument that defendant failed to get plaintiff's permission to create work).

We also note that free speech and public interest considerations are of little relevance in this case, which concerns garden-variety infringement of creative fictional works. See 4 Nimmer § 13.05[B][4], at 13-205 ("The public interest is also a factor that continually informs the fair use analysis."); cf. Time Inc. v. Bernard Geis Assocs., 293 F.Supp. 130, 146 (S.D.N.Y.1968) (discussing importance of access to information about President Kennedy assassination in fair use analysis of home video of assassination).

Aggregate Assessment

Considering all of the factors discussed above, we conclude that the copyright law's objective "[t]o promote the Progress of Science and useful Arts" would be undermined by permitting The SAT's copying of Seinfeld, see Arica, 970 F.2d at 1077, and we therefore reject defendants' fair use defense. Finally, we note that defendants do not assert that Castle Rock abandoned, forfeited, or misused copyrights in Seinfeld, and that defendants have asserted no defense on appeal other than that of fair use.

Conclusion

Undoubtedly, innumerable books could "expose" the "nothingness" or otherwise comment upon, criticize, educate the public about, or research Seinfeld and contemporary television culture. The SAT, however, is not such a book. For the reasons set forth above, the judgment of the district court is affirmed.^[12]

[*] The Honorable Jed S. Rakoff, of the United States District Court for the Southern District of New York, sitting by designation.

[2] An example of the trivia quiz book's matching questions (entitled "Family Trees") is as follows:

1. Cousin Jeffrey 2. Uncle Leo 3. Manya 4. Isaac 5. Mr. Seinfeld 6. Mrs. Seinfeld 7. Mr. Benes 8. Mr. Costanza 9. Mrs. Costanza 10. Mrs. Kramer.

(a) Former condo association president

(b) Drinks Colt 45 in the nude

(c) Arm-grabbing, loquacious garbage can picker

(d) Leaves a rent-controlled New York City apartment for the Phoenix sunshine

(e) Gruff-talking, well-known novelist

(f) New York City employee who watches the Nature Channel

(g) Wears sneakers in the swimming pool and has to "get the good spot in front of the good building in the good neighborhood"

(h) Enjoys the heat and never uses air conditioning

(i) Elderly immigrant whose beloved pony was "the pride of Krakow"

(j) Nagging, shrill-voiced Glamour magazine reader who was hospitalized for a back injury

[3] As noted later, this opinion does not address issues of trademark or unfair competition.

[4] Because the parties have stipulated to damages, we need not address, as did Twin Peaks, whether damages should be assessed on a per episode basis.

[5] We appreciate that the line between unprotected fact and protected creative expression may in some instances be less clear. Where a "fictional" single mother in a popular television series engages in real political discourse with a real Vice-President of the United States, for example, it is less clear whether the television "script" is fiction—in the sense that it is only a television script, or fact—in the sense that it is a real dialogue with a real political figure about contemporary issues. Whatever the line between historical fact and creative expression, however, Seinfeld is securely on the side of creative expression.

[6] We do not understand Ringgold's quantitative analysis to be the same as a fragmented similarity analysis. The former considers the amount of copying not only of direct quotations and close paraphrasing, but also of all other protectable expression in the original work.

[7] Had The SAT's incorrect answer choices attempted to parody Seinfeld, for example, defendants would have a stronger case for fair use. See Campbell, 510 U.S. at 588, 114 S.Ct. 1164.

[8] In the time it took to write this last sentence, for example, one could have easily created the following trivia question about the film trilogy Star Wars: "Luke Skywalker was aghast to learn that Darth Vader was Luke's (a) father (b) father-in-law (c) best friend (d) Jerry Seinfeld," and innumerable other such trivia questions about original creative works.

[9] Indeed, if the secondary work sufficiently transforms the expression of the original work such that the two works cease to be substantially similar, then the secondary work is not a derivative work and, for that matter, does not infringe the copyright of the original work. See 1 Nimmer § 3.01, at 3-3 (stating that "a work will be considered a derivative work only if it would be considered an infringing work" if it were unauthorized).

[10] By the same token, because a "film producer's appropriation of a composer's previously unknown song that turns the song into a commercial success" is a market substitute, that use is not made fair because it increases the market for the original work. Campbell, 510 U.S. at 591 n. 21, 114 S.Ct. 1164.

[11] Just as secondary users may not exploit markets that original copyright owners would "in general develop or license others to develop" even if those owners had not actually done so, copyright owners may not preempt exploitation of transformative markets, which they would not "in general develop or license others to develop," by actually developing or licensing others to develop those markets. Thus, by developing or licensing a market for parody, news reporting, educational or other transformative uses of its own creative work, a copyright owner plainly cannot prevent others from entering those fair use markets. See 4 Nimmer § 13.05[A][4], at 13-181-13-182 (recognizing "danger of circularity" where original copyright owner redefines "potential market" by developing or licensing others to develop that market); Texaco, 60 F.3d at 930 ("Only an impact on potential licensing revenues for traditional, reasonable, or likely to be developed markets" is relevant to fourth factor.).

[12] For any reader of this opinion still possessed by post-Seinfeld "cravings," the answers to the trivia questions posed supra, at 3-4 & n. 2, are: 1-c, 11-"Junior Mints," 12-a; matching: 1-f, 2-c, 3-i, 4-d, 5-a, 6-h, 7-e, 8-g, 9-j, 10-b.

United States Court of Appeals, Ninth Circuit.

No. 08-55998.

UMG RECORDINGS, INC., a Delaware corporation, Plaintiff-Counter-­Defendant-Appellant, v. Troy AUGUSTO, an individual doing business as Roast Beast Music Col­lectables doing business as Roast­beastmusic, Defendant-Counter-­Claimant-Appellee.

Filed Jan. 4, 2011.

Argued and Submitted June 7, 2010.

Before: WILLIAM C. CANBY, JR., CONSUELO M. CALLAHAN and SANDRA S. IKUTA, Circuit Judges.

Russell J. Frackman, Mitchell Silber­berg & Knupp, LLP, Los Angeles, CA, for the plaintiff, counter-defendant, appellant.

Joseph C. Gratz, Keker & Van Nest, LLP, San Francisco, CA, for the defen­dant-counter-claimant-appellee.

Robert W. Clarida, Cowan, Liebowitz & Latman, P.C., New York, NY, Jason Schultz, Samuelson Law, Technology & Public Policy Clinic, Berkeley, CA, for the amici curiae.

OPINION

CANBY, Circuit Judge:

UMG Recordings appeals the district court’s grant of summary judgment in fa­vor of defendant Troy Augusto on UMG’s claim of copyright infringement in violation of § 501 of the Copyright Act, which enti­tles copyright owners to institute an action for infringement of the exclusive right to distribute copies of the copyrighted work. See 17 U.S.C. §§ 501(a), (b), 106(3) (2006). The copies in issue comprise eight special­ly-produced compact discs, each embody­ing a copyrighted sound recording. UMG, the copyright owner, used the discs solely for marketing purposes, sending them un­solicited to individuals such as music critics and radio disc jockeys. Although Augusto was not one of those individuals, he man­aged to obtained the discs from various sources. He later sold them at auction, an act which UMG contends infringed its ex­clusive right to distribute the discs.

Augusto asserts that UMG’s initial dis­tribution of the discs effected a transfer of ownership of the discs to the recipients, rendering the discs subject to the “first sale” doctrine, which permits one who has acquired ownership of a copy to dispose of that copy without the permission of the copyright owner. See id. § 109(a). UMG argues that the statements on the discs and the circumstances of their distribution granted only a license to each recipient, not a transfer of ownership (or “sale”) of the copy. Absent a sale, UMG remained the owner of the discs and, accordingly, the defense of the first sale doctrine would be out of Augusto’s reach. We conclude that the mailing indeed did effect a sale of the discs to the recipients for purposes of the first sale doctrine, and we affirm the order of the district court.

BACKGROUND AND PROCEDURAL HISTORY

The material facts of the case are undis­puted. UMG is among the world’s largest music companies. One of its core busi­nesses is the creation, manufacture, and sale of recorded music, or phonorecords, the copyrights of which are owned by UMG.1 These phonorecords generally take the form of compact discs (“CDs”).

Like many music companies, UMG ships specially-produced promotional CDs to a large group of individuals (“recipients”), such as music critics and radio program­mers, that it has selected. There is no prior agreement or request by the recipi­ents to receive the CDs. UMG does not seek or receive payment for the CDs, the content and design of which often differs from that of their commercial counter­parts. UMG ships the promotional CDs by means of the United States Postal Ser­vice and United Parcel Service. Relatively few of the recipients refuse delivery of the CDs or return them to UMG, and UMG destroys those that are returned.

Most of the promotional CDs in issue in this case bore a statement (the “pro­motional statement”) similar to the follow­ing:

This CD is the property of the record company and is licensed to the intended recipient for personal use only. Accep­tance of this CD shall constitute an agreement to comply with the terms of the license. Resale or transfer of pos­session is not allowed and may be pun­ishable under federal and state laws.

Some of the CDs bore a more succinct statement, such as “Promotional Use Only—Not for Sale.”2

Augusto was not among the select group of individuals slated to receive the pro­motional CDs. He nevertheless managed to acquire numerous such CDs, many of which he sold through online auctions at eBay.com. Augusto regularly advertised the CDs as “rare ... industry editions” and referred to them as “Promo CDs.”

After several unsuccessful attempts at halting the auctions through eBay’s dis­pute resolution program, UMG filed a complaint against Augusto in the United States District Court for the Central Dis­trict of California, alleging that Augusto had infringed UMG’s copyrights in eight promotional CDs for which it retained the “exclusive right to distribute.” The dis­trict court granted summary judgment in favor of Augusto, and UMG appealed. We have jurisdiction of the appeal pursuant to 28 U.S.C. § 1291.

STANDARD OF REVIEW

We review de novo a grant of sum­mary judgment. See Bagdadi v. Nazar, 84 F.3d 1194, 1197 (9th Cir.1996). We may affirm on any ground supported by the record. See Video Software Dealers Ass’n v. Schwarzenegger, 556 F.3d 950, 956 (9th Cir.2009).

While it is an open question as to wheth­er the plaintiff or defendant bears the burden of proving the applicability of the first sale defense, see United States v. Wise, 550 F.2d 1180, 1191-92 (9th Cir. 1977) (government bears the burden of proof in the criminal context), we need not reach the issue in this case, because we would reach the same conclusion regard­less of which party were to bear the bur­den.

DISCUSSION

To establish a prima facie case of copyright infringement, a plaintiff must show (1) ownership of a valid copyright and (2) violation by the alleged infringer of at least one of the exclusive rights granted to copyright owners by the Copyright Act (the “Act”). See Ellison v. Robertson, 357 F.3d 1072, 1076 (9th Cir.2004) (citing 17 U.S.C. § 501(a)). Section 106 of the Act grants copyright owners, such as UMG, the exclusive right, among others, “to dis­tribute copies or phonorecords of the copy­righted work to the public by sale or other transfer of ownership.” 17 U.S.C. § 106(3); see id. § 501(a) (“Anyone who violates any of the exclusive rights of the copyright owner as provided by section[] 106 ... is an infringer of the copy­right....”). The district court held that UMG made out a prima facie case of copy­right infringement: UMG established that it owned the copyright to the promotional CDs and Augusto sold the CDs without UMG’s permission.

Although UMG, as the owner of the copyright, has exclusive rights in the pro­motional CDs, “[e]xemptions, compulsory licenses, and defenses found in the Copy­right Act narrow [those] rights.” Wall Data Inc. v. Los Angeles Cnty. Sheriffs Dept. 447 F.3d 769, 777 (9th Cir.2006) (citing 17 U.S.C. §§ 107-22). Augusto in­vokes the “first sale” doctrine embodied in § 109(a) of the Act. 17 U.S.C. § 109(a). He argues that the circumstances attend­ing UMG’s distribution of the discs effect­ed a “sale” (transfer of ownership) of the discs to the original recipients and that, under the “first sale” doctrine, the recipi­ents and subsequent owners of those par­ticular copies were permitted to sell or otherwise dispose of those copies without authorization by the copyright holder.

In the alternative, Augusto argues that the original recipients were entitled to treat the CDs as gifts under the Unord­ered Merchandise Statute, enacted as part of the Postal Reorganization Act of 1970, and therefore had “the right to retain, use, discard, or dispose of [them] in any man­ner [they saw] fit,” in this case, by selling those CDs to the thrift shops and second­hand stores where Augusto states he pur­chased them. See 39 U.S.C. § 3009(a), (b) (2006); see also Postal Reorganization Act of 1970, Pub.L. No. 91-375, 84 Stat. 719 (codified at 39 U.S.C. § 101).

UMG, on the other hand, contends that the promotional statement effected a li­cense with the recipients and, because the recipients were not owners but licensees of the CDs, neither they nor Augusto were entitled to sell or otherwise transfer the CDs. See Quality King Distribs., Inc. v. L’anza Research Int'l, Inc., 523 U.S. 135, 146-17, 118 S.Ct. 1125, 140 L.Ed.2d 254 (1998) (“[B]ecause the protection afforded by § 109(a) is available only to the ‘owner’ of a lawfully made copy ..., the first sale doctrine would not provide a defense to ... any nonowner such as a bailee, a licen­see, a consignee, or one whose possession of the copy was unlawful.”); Am. Int’l Pictures, Inc. v. Foreman, 576 F.2d 661, 664 (5th Cir.1978) (“[U]nless title to the copy passes through a first sale by the copyright holder, subsequent sales do not confer good title.”).

The Distribution of the Promotional CDs Effected a Sale

The first sale doctrine provides that “the owner of a particular copy or phonorecord lawfully made under [the Act], or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.” 17 U.S.C. § 109(a). Not­withstanding its distinctive name, the doc­trine applies not only when a copy is first sold, but when a copy is given away or title is otherwise transferred without the accou­terments of a sale. See 4 Patry on Copy­right § 13:15; see also United States v. Atherton, 561 F.2d 747, 750 (9th Cir.1977) (“The ‘sale’ embodied in the first sale con­cept is a term of art.”). “[O]nce the copy­right owner places a copyrighted item in the stream of commerce ..., he has ex­hausted his exclusive statutory right to control its distribution.” Quality King, 523 U.S. at 152, 118 S.Ct. 1125. The semi­nal illustration of the principle is found in Bobbs-Merrill Co. v. Straus, 210 U.S. 339, 341, 28 S.Ct. 722, 52 L.Ed. 1086 (1908), where a copyright owner unsuccessfully attempted to restrain the resale of a copy­righted book by including in it the follow­ing notice: “The price of this book at retail is $1 net. No dealer is licensed to sell it at a less price, and a sale at less price will be treated as an infringement of the copy­right.” Id. The Court noted that the stat­utory grant to a copyright owner of the “sole right of vending” the work did not continue after the first sale of a given copy. Id. at 349-50, 28 S.Ct. 722. “The purchaser of a book, once sold by authority of the owner of the copyright, may sell it again, although he could not publish a new edition of it.” Id. at 350, 28 S.Ct. 722. The attempt to limit resale below a certain price was therefore held invalid. Id. at 351, 28 S.Ct. 722.

The rule of Bobbs-Merrill remains in full force, enshrined as it is in § 109(a) of the Act: a copyright owner who trans­fers title in a particular copy to a purchas­er or donee cannot prevent resale of that particular copy. We have recognized, however, that not every transfer of posses­sion of a copy transfers title. Particularly with regard to computer software, we have recognized that copyright owners may cre­ate licensing arrangements so that users acquire only a license to use the particular copy of software and do not acquire title that permits further transfer or sale of that copy without the permission of the copyright owner. Our most recent exam­ple of that rule is Vernor v. Autodesk, Inc., 621 F.3d 1102 (9th Cir.2010). Others are Wall Data Inc. v. Los Angeles Cnty. Sher­iffs Dept., 447 F.3d 769 (9th Cir.2006); Triad Sys. Corp. v. Se. Express Co., 64 F.3d 1330 (9th Cir.1995); MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511 (9th Cir.1993). All of these cases dealt with the question whether arrangements with con­sumers amounted to sales of copies, or succeeded in awarding only licenses. They recognized that the mere labeling of an arrangement as a license rather than a sale, although it was a factor to be consid­ered, was not by itself dispositive of the issue. See, e.g., Vernor, 621 F.3d at 1109 (construing United States v. Wise, 550 F.2d 1180, 1190-92 (9th Cir.1977)).

The same question is presented here. Did UMG succeed in creating a license in recipients of its promotional CDs, or did it convey title despite the restrictive labeling on the CDs? We con­clude that, under all the circumstances of the CDs’ distribution, the recipients were entitled to use or dispose of them in any manner they saw fit, and UMG did not enter a license agreement for the CDs with the recipients. Accordingly, UMG transferred title to the particular copies of its promotional CDs and cannot maintain an infringement action against Augusto for his subsequent sale of those copies.

Our conclusion that the recipients ac­quired ownership of the CDs is based largely on the nature of UMG’s distribu­tion. First, the promotional CDs are dis­patched to the recipients without any prior arrangement as to those particular copies. The CDs are not numbered, and no at­tempt is made to keep track of where particular copies are or what use is made of them. As explained in greater detail below, although UMG places written re­strictions in the labels of the CDs, it has not established that the restrictions on the CDs create a license agreement.3

We also hold that, because the CDs were unordered merchandise, the recipi­ents were free to dispose of them as they saw fit under the Unordered Merchandise Statute, 39 U.S.C. § 3009, which provides in pertinent part that,

(a) [e]xcept for ... free samples clearly and conspicuously marked as such, ... the mailing of unordered mer­chandise ... constitutes an unfair method of competition and an unfair trade practice....

(b) Any merchandise mailed in violation of subsection (a) of this section ... may be treated as a gift by the recipient, who shall have the right to retain, use, discard, or dispose of it in any manner he sees fit without any obligation whatsoever to the sender....

Id. § 3009(a), (b) (emphasis added). The statute defines “unordered merchandise” as “merchandise mailed without the prior expressed request or consent of the recip­ient” but leaves “merchandise” itself un­defined. Id. § 3009(d). Although the statute applies in terms to “mailed” mer­chandise, the Federal Trade Commission has applied its prohibitions to other types of shipment, as violations of § 5 of the Federal Trade Commission Act, 15 U.S.C. § 45. See 43 Fed.Reg. 4113 (Jan. 31, 1978).

Augusto attempts to invoke this statute directly in his defense, but the statute in terms confers rights only on recipients of unordered merchandise. Augusto does not contend that UMG shipped the pro­motional CDs to him, nor does he show that any of his sources in fact treated the CDs as gifts.4 The significance of the Unordered Merchandise Statute is not that it applies to Augusto, but that it con­fers on the recipients the “right to retain, use, discard, or dispose of [the CDs] in any manner that [they] see[ ] fit, without obli­gation to the sender,” UMG. 39 U.S.C. § 3009(b). This provision is utterly incon­sistent with the terms of the license that UMG sought to impose on the recipients. Because the statute grants to the recipi­ents the right to treat the CDs as their own, shipping the unordered CDs to the recipients rendered the recipients owners, not licensees, of the CDs for purposes of the first sale defense. This effect of the Unordered Merchandise Statute distin­guishes this case from those involving com­puter software, where the software con­sumers clearly ordered and paid for the software licensed to them. See, e.g., Wall Data, 447 F.3d at 774.

UMG contends that the Unordered Mer­chandise Statute clearly does not apply to its distribution of free promotional CDs, because the “main purpose” of the Statute “was to ‘control the unconscionable prac­tice of persons who ship unordered mer­chandise to consumers and then trick or bully them into paying for it.’” Kipperman v. Acad. Life Ins. Co., 554 F.2d 377, 379 (9th Cir.1977) (quoting 116 Cong. Rec. 22,-­314 (June 30, 1970) (statement of Sen. Warren Magnuson)). Because UMG is not trying to extract payment from the recipi­ents, it argues that the statute does not apply. But the terms of the statute do not require “bullying” for payment; it is enough that unordered merchandise is sent. The recipient is then free to treat it as a gift “without any obligation whatsoev­er to the sender.” 39 U.S.C. § 3009(b). In sending its promotional CDs, UMG at­tempts to obligate the recipient to confine the use of the CDs to promotional pur­poses. It serves the purpose of the statute to permit a recipient who does not wish to be so obligated to treat the unordered CD as a gift. We also have no difficulty con­cluding that the CDs fall within the mean­ing of “merchandise.” UMG’s attempt to prohibit their sale is an indication.5

There are additional reasons for con­cluding that UMG’s distribution of the CDs did not involve a consensual licensing operation. Some of the statements on the CDs and UMG’s purported method of se­curing agreement to licenses militate against a conclusion that any licenses were created. The sparest promotional state­ment, “Promotional Use Only—Not for Sale,” does not even purport to create a license. But even the more detailed state­ment is flawed in the manner in which it purports to secure agreement from the recipient. The more detailed statement provides:

This CD is the property of the record company and is licensed to the intended recipient for personal use only. Accep­tance of this CD shall constitute an agreement to comply with the terms of the license. Resale or transfer of pos­session is not allowed and may be pun­ishable under federal and state laws.

It is one thing to say, as the statement does, that “acceptance” of the CD consti­tutes an agreement to a license and its restrictions, but it is quite another to maintain that “acceptance” may be as­sumed when the recipient makes no re­sponse at all. This record reflects no re­sponses. Even when the evidence is viewed in the light most favorable to UMG, it does not show that any recipients agreed to enter into a license agreement with UMG when they received the CDs.6

Because the record here is devoid of any indication that the recipients agreed to a license, there is no evidence to support a conclusion that licenses were established under the terms of the promotional state­ment. Accordingly, we conclude that UMG’s transfer of possession to the recipi­ents, without meaningful control or even knowledge of the status of the CDs after shipment, accomplished a transfer of title.

The district court based its decision in favor of Augusto in part on somewhat dif­ferent grounds from those we have adopted. The district court first held that the licensing language in the detailed pro­motional statement did not create a license because it lacked any provision for UMG to regain possession of the CDs. In this ruling, the district court relied upon our decision in United States v. Wise, 550 F.2d 1180 (9th Cir.1977). In Wise, we dealt with several contracts, each denominated as a license, by which motion picture stu­dios conveyed films to various recipients.

The issue was whether any of these licenses actually constituted a sale for pur­poses of the first sale doctrine.7 We held all but one of the conveyances to be licens­es, pointing out that they were designated as licenses, reserved title in the studio, and provided for return or destruction of the prints after use. See id. at 1191-92. We held one purported license to be a sale, however, because in addition to the pay­ment of a “cost” price (which did not alone establish a sale), there was no provision for return of the print to the studio; perma­nent possession was granted to the recipi­ent. See id.

Return of possession is not invariably required in a license, however. We have since read Wise and our software licensing cases

to prescribe three considerations that we may use to determine whether a software user is a licensee, rather than an owner of a copy. First, we consider whether the copyright owner specifies that a user is granted a license. Second, we consider whether the copyright own­er significantly restricts the user’s abili­ty to transfer the software. Finally, we consider whether the copyright owner imposes notable use restrictions.

Vemor, 621 F.3d at 1110-11 (footnote omitted).

This formulation, however, applies in terms to software users, and software users who order and pay to acquire copies are in a very different position from that held by the recipients of UMG’s pro­motional CDs. As we have already ex­plained, UMG has virtually no control over the unordered CDs it issues because of its means of distribution, and it has no assur­ance that any recipient has assented or will assent to the creation of any license or accept its limitations. UMG also does not require the ultimate return of the pro­motional CDs to its possession. Although the failure to require return of the CDs may not, by itself, conclusively establish a sale under our precedent, it is one more indication that UMG had no control over the promotional CDs once it dispatched them. UMG thus did not retain “sufficient incidents of ownership” over the pro­motional copies “to be sensibly considered the owner of the cop[ies].” Krause v. Ti­tleserv, Inc., 402 F.3d 119, 124 (2d Cir. 2005).

Because we conclude that UMG’s meth­od of distribution transferred the owner­ship of the copies to the recipients, we have no need to parse the remaining pro­visions in UMG’s purported licensing statement; UMG dispatched the CDs in a manner that permitted their receipt and retention by the recipients without the re­cipients accepting the terms of the pro­motional statements. UMG’s transfer of unlimited possession in the circumstances present here effected a gift or sale within the meaning of the first sale doctrine, as the district court held.

CONCLUSION

UMG’s distribution of the promotional CDs under the circumstances effected a sale (transfer of title) of the CDs to the recipients. Further sale of those copies was therefore permissible without UMG’s authorization. The judgment of the dis­trict court dismissing UMG’s copyright in­fringement action against Augusto is therefore

AFFIRMED.

1

The Copyright Act defines phonorecords as “material objects in which sounds ... are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise commu­nicated, either directly or with the aid of a machine or device.” 17 U.S.C. § 101 (2006).

2

Despite the fact that the two types of state­ments bear little resemblance to each other, the parties unaccountably agree that both types have the same meaning (although they dispute what that meaning is). Insofar as the parties agreement purports to establish that the two statements have the same legal conse­quences, it does not bind us. See Swift & Co. v. Hocking Valley Ry. Co., 243 U.S. 281, 289, 37 S.Ct. 287, 61 L.Ed. 722 (1917) ("If the stipulation is to be treated as an agreement concerning the legal effect of admitted facts, it is obviously inoperative; since the court cannot be controlled by agreement of counsel on a subsidiary question of law.").

3

A few of the CDs are returned, and then destroyed by UMG. Needless to say, they were not the subjects of Augusto’s resales. For the CDs that are not returned, UMG does not know the recipients’ responses to the distribu­tion or to the conditions UMG attempts to impose.

4

We have recognized a private right of action arising under the Unordered Merchandise Statute, but it is a right of recipients. Kipper­man v. Acad. Life Ins. Co., 554 F.2d 377, 380 (9th Cir.1977).

5

Webster's Third New International Dictio­nary defines "merchandise” as "commodities or goods that are bought and sold in business: the wares of commerce.” Id. at 1413. See also Sanford v. MemberWorks, Inc., 625 F.3d 550, 559 (9th Cir.2010) ("'Merchandise' ... refers to movable articles of value that are bought and sold by merchants.”). Augusta's many sales themselves evidence a market, au­thorized or not.

6

Although our result does not depend on the point, there is even doubt that a license con­tract could arise from the absence of response of the recipients. The general rule of contract law is that the "mere receipt of an unsolicited offer does not impair the offeree’s freedom of action or inaction or impose on him any duty to speak.” Restatement (Second) of Con­tracts § 69 cmts. a, c. "Nothing in contract law [can] force the parties into a contractual arrangement when they do not intend to be bound.” Raymond T. Nimmer & Jeff Dodd, Modern Licensing Law § 3:17 (2010).

The commentary on section 69 of the Re­statement offers a pertinent illustration: "A sends B a [book] with a letter, saying, 'If you wish to buy this book send me $6.50 within one week after receipt hereof, otherwise noti­fy me and I will forward postage for return.’ B examines the book and without replying carefully lays it on a shelf to await A's mes­senger. There is no contract.” Restatement (Second) of Contracts § 69 cmt. e, illus. 8 (emphasis added). The Restatement does provide an exception to the rule that silence and inaction do not constitute assent when, "because of prior dealings or otherwise, it is reasonable that the offeree should notify the offeror if he does not intend to accept.” Id. § 69(l)(c). The record as it stands does not suggest that UMG could avail itself of this provision.

7

Wise concerned the first sale doctrine as codified in 17 U.S.C. § 27 (1970), the prede­cessor to § 109(a). See Wise, 550 F.2d at 1183. The two statutes, however, are sub­stantively identical.

United States Court of Appeals, Eighth Circuit.

Nos. 11-2820, 11-2858.

CAPITOL RECORDS, INC.; Sony BMG Music Entertainment; Arista Records LLC; Interscope Records; Warner Bros. Records Inc.; UMG Recordings, Inc., Plaintiffs-Appellants, v. Jammie THOMAS-RASSET, Defendant-Appellee, United States of America, Intervenor below-Appellee. Motion Picture Association of America, Incorporated, Amicus on Behalf of Appellant, Electronic Frontier Foundation; Inter­net Archive; American Library Asso­ciation; Association of Research Li­braries; Association of College and Research Libraries; Public Knowl­edge, Amici on Behalf of Appellee. Capitol Records, Inc.; Sony BMG Music Entertainment; Arista Records LLC; Interscope Records; Warner Bros. Records Inc.; UMG Recordings, Inc., Plaintiffs-Appellees, v. Jammie Thomas-Rasset, Defendant-­Appellant, United States of America, Intervenor below-Appellee. Motion Picture Association of America, Incorporated, Amicus on Behalf of Appellee, American Library Association; Associa­tion of Research Libraries; Associa­tion of College and Research Librar­ies; Public Knowledge; Electronic Frontier Foundation; Internet Ar­chive, Amici on Behalf of Appellant.

Filed: Sept. 11, 2012.

Submitted: June 12, 2012.

Before MURPHY, MELLOY, and COLLOTON, Circuit Judges.

Paul D. Clement, argued, Washington, DC, Matthew J. Oppenheim, Potomac, MD, Erin Murphy, Washington, DC, Timo­thy M. Reynolds, Eve G. Burton, Denver, CO, Jennifer L. Pariser, Washington, DC, on the brief, for appellants.

Kiwi Alejandro Danao-Camara, argued, Michael Lee Wilson, on the brief, Houston, TX, for appellee Thomas-Rasset.

Jeffrey A. Clair, argued, USDOJ, Civil Division, Washington, DC, for United States of America.

Robert Alan Garrett, Lisa S. Blatt, R. Reeves Anderson, Washington, DC, on the amicus brief filed by The Motion Picture Association of America Inc., in support of appellant.

Sherwin Siy, Washington, DC, on the amicus brief of Public Knowledge in sup­port of appellee.

Jonathan Band, Washington, DC, on the amicus brief in support of appellee filed by American Library Association, Association of Research Libraries and Association of College and Research Libraries.

Corynne McSherry, San Francisco, CA, Michael Barclay, Menlo Park, CA, on the amicus brief filed by Frontier Foundation and Internet Archive in support of appel­lee.

COLLOTON, Circuit Judge.

This appeal arises from a dispute be­tween several recording companies and Jammie Thomas-Rasset. There is a com­plicated procedural history involving three jury trials, but for purposes of appeal, it is undisputed that Thomas-Rasset willfully infringed copyrights of twenty-four sound recordings by engaging in file-sharing on the Internet. After a first jury found Thomas-Rasset liable and awarded dam­ages of $222,000, the district court granted a new trial on the ground that the jury instructions incorrectly provided that the Copyright Act forbids making sound re­cordings available for distribution on a peer-to-peer network, regardless of wheth­er there is proof of “actual distribution.” A second jury found Thomas-Rasset liable for willful copyright infringement under a different instruction, and awarded statuto­ry damages of $1,920,000. The district court remitted the award to $54,000, and the companies opted for a new trial on damages. A third jury awarded statutory damages of $1,500,000, but the district court ultimately ruled that the maximum amount permitted by the Due Process Clause of the Fifth Amendment was $54,000 and reduced the verdict according­ly. The court also enjoined Thomas-Ras­set from taking certain actions with re­spect to copyrighted recordings owned by the recording companies.

The companies appeal two aspects of the remedy ordered by the district court. They object to the district court’s ruling on damages, and they seek an award of $222,000, which was the amount awarded by the jury in the first trial. They also seek a broader injunction that bars Thom­as-Rasset from making any of their sound recordings available to the public. For tactical reasons, the companies do not seek reinstatement of the third jury’s award of $1,500,000. They urge instead that this court should reverse the district court’s order granting a new trial, rule that the Copyright Act does protect a right to “making available” sound recordings, rein­state the first jury’s award of $222,000, and direct entry of a broader injunction. In a cross-appeal, Thomas-Rasset argues that any award of statutory damages is unconstitutional, and urges us to vacate the award of damages altogether.

For reasons set forth below, we conclude that the recording companies are entitled to the remedies they seek: damages of $222,000 and a broadened injunction that forbids Thomas-Rasset to make available sound recordings for distribution. But be­cause the verdicts returned by the second and third juries are sufficient to justify these remedies, it is unnecessary for this court to consider the merits of the district court’s order granting a new trial after the first verdict. Important though the “mak­ing available” legal issue may be to the recording companies, they are not entitled to an opinion on an issue of law that is unnecessary for the remedies sought or to a freestanding decision on whether Thom­as-Rasset violated the law by making re­cordings available.

I.

Capitol Records, Inc., Sony BMG Music Entertainment, Arista Records LLC, In­terscope Records, Warner Bros. Records, and UMG Recordings, Inc., are recording companies that own the copyrights to large catalogs of music recordings. In 2005, they undertook to investigate suspected infringement of these copyrights. Media-­Sentry, an online investigative firm hired by the recording companies, discovered that an individual with the username “ter­eastarr” was participating in unauthorized file sharing on the peer-to-peer network KaZaA.

During the relevant time period, KaZaA was a file-sharing computer program that allowed its users to search for and down­load specific files from other users. KaZaA users shared files using a share fold­er. A share folder is a location on the user’s computer in which the user places files—such as audio or video recordings—that she wants to make available for other users to download. KaZaA allowed its users to access other users’ share folders, view the files in the folder, and download copies of files from the folder.

MediaSentry accessed tereastarr’s share folder. The investigative firm determined that the user had downloaded copyrighted songs and was making those songs avail­able for download by other KaZaA users. MediaSentry took screen shots of tereas­tarr’s share folder, which included over 1,700 music files, and downloaded samples of the files. But MediaSentry was unable to collect direct evidence that other users had downloaded the files from tereastarr. MediaSentry then used KaZaA to send two instant messages to tereastarr, notify­ing the user of potential copyright in­fringement. Tereastarr did not respond to the messages. MediaSentry also deter­mined tereastarr’s IP address, and traced the address to an Internet service account in Duluth, Minnesota, provided by Charter Communications. MediaSentry compiled this data in a report that it prepared for the recording companies.

Using the information provided by Me­diaSentry, the recording companies, through the Recording Industry Associa­tion of America (RIAA), issued a subpoena to Charter Communications requesting the name of the person associated with tereas­tarr’s IP address. Charter informed the RIAA that the IP address belonged to Jammie Thomas-Rasset. The RIAA then sent a letter to Thomas-Rasset informing her that she had been identified as engag­ing in unauthorized trading of music and inviting her to contact them to discuss the situation and settle the matter. Thomas­-Rasset contacted the RIAA as directed in the letter and engaged in settlement con­versations with the organization. The par­ties were unable to resolve the matter.

In 2006, the recording companies sued Thomas-Rasset, seeking statutory dam­ages and injunctive relief for willful copy­right infringement under the Copyright Act, 17 U.S.C. § 101 et seq. They alleged that Thomas-Rasset violated their exclu­sive right to reproduction and distribution under 17 U.S.C. § 106 by impermissibly downloading, distributing, and making available for distribution twenty-four copy­righted sound recordings.

A jury trial was held in October 2007. At trial, Thomas-Rasset conceded that “tereastarr” is a username that she uses regularly for Internet and computer ac­counts. She admitted familiarity with and interest in some of the artists of works found in the tereastarr KaZaA account. She also acknowledged that she wrote a case study during college on the legality of Napster—another peer-to-peer file sharing program—and knew that Napster was shut down because it was illegal. None­theless, Thomas-Rasset testified that she had never heard of KaZaA before this case, did not have KaZaA on her comput­er, and did not use KaZaA to download files. The jury also heard evidence from a forensic investigator that Thomas-Rasset removed and replaced the hard drive on her computer with a new hard drive after investigators notified her of her potential infringement. The new hard drive did not contain the files at issue.

At the close of evidence, the district court instructed the jury that one who reproduces or distributes a copyrighted work without license infringes the copy­right. The court’s instructions defined “reproduction” to include “[t]he act of downloading copyrighted sound recordings on a peer-to-peer network.” The court also instructed that the act of “making copyrighted sound recordings available for electronic distribution on a peer-to-peer network, without license from the copy­right owners, violates the copyright own­ers’ exclusive right of distribution, regard­less of whether actual distribution has been shown.” The jury found Thomas­-Rasset liable for willful infringement and awarded the recording companies statuto­ry damages of $9,250 per work, for a total of $222,000.

Thomas-Rasset moved for a new trial or, in the alternative, for a remittitur, ar­guing that the size of the jury’s statutory damages award violated her rights under the Due Process Clause. The United States intervened to defend the constitu­tionality of the statute on statutory dam­ages, 17 U.S.C. § 504(c). The recording companies also filed a post-trial motion, seeking to amend the judgment to include an injunction enjoining Thomas-Rasset from infringing the recording companies’ copyrights by “using the Internet or any online media distribution system to repro­duce (i.e., download) any of Plaintiffs’ Re­cordings, to distribute (i.e., upload) any of Plaintiffs’ Recordings, or to make any of Plaintiffs’ Recordings available for distri­bution to the public.”

Several months later, the district court sua sponte raised the issue whether it erred by instructing the jury that making sound recordings available for distribution on a peer-to-peer network violates a copy­right owners’ exclusive right to distribu­tion, “regardless of whether actual distri­bution has been shown.” The parties filed supplemental briefs in which the recording companies defended the court’s instruction and Thomas-Rasset argued that the court erred when it instructed the jury on the “making available” issue. After a hearing, the district court granted Thomas-Ras­set’s motion for a new trial on this alterna­tive ground, holding that making a work available to the public is not “distribution” under 17 U.S.C. § 106(3). The issue whether making copyrighted works avail­able to the public is a right protected by § 106(3) has divided the district courts. Compare, e.g., Atl. Recording Corp. v. Howell, 554 F.Supp.2d 976, 981-84 (D.Ariz.­2008), and London-Sire Records v. Doe 1, 542 F.Supp.2d 153, 176 (D.Mass.2008), with Motown Record Co. v. DePietro, No. 04-CV-2246, 2007 WL 576284, at *3 (E.D.Pa. Feb. 16, 2007), and Warner Bros. Records, Inc., v. Payne, No. W-06-CA-­051, 2006 WL 2844415, at *3 (W.D.Tex. July 17, 2006).

The district court convened a second trial in June 2009, at which the recording companies produced substantially the same evidence of Thomas-Rasset’s liabili­ty. At this trial, however, Thomas-Rasset attempted to deflect responsibility by sug­gesting for the first time that her children and former boyfriend might have done the downloading and file-sharing attributed to the “tereastarr” username. The court again instructed the jury that reproduction or distribution constituted copyright in­fringement. But this time, the court omit­ted reference to making works available and instructed the jury that “[t]he act of distributing copyrighted sound recordings to other users on a peer-to-peer network, without license from the copyright owners, violates the copyright owners’ exclusive distribution right.” The jury again found Thomas-Rasset liable for willful infringe­ment, and awarded the recording compa­nies statutory damages of $80,000 per work, for a total of $1,920,000.

Following the second trial, Thomas-Ras­set filed a post-trial motion in which she argued that any statutory damages award would be unconstitutional in her case, but in the alternative that the court should reduce the jury’s award either through remittitur or based on the Due Process Clause. The district court declined to rule on the constitutional issue and instead re­mitted damages to $2,250 per work, for a total of $54,000, on the ground that the jury’s award was “shocking.” The record­ing companies declined the remitted award and exercised their right to a new trial on damages.

A third trial was held in November 2010, and the only question for the jury was the amount of statutory damages. The jury awarded the recording companies statuto­ry damages of $62,500 per work, for a total of $1,500,000.

Thomas-Rasset then moved to alter or amend the judgment, again arguing that any statutory damages award would be unconstitutional, but alternatively that the district court should reduce the award un­der the Due Process Clause. The district court, relying in part on the now-vacated decision in Sony BMG Music Entm’t v. Tenenbaum, 721 F.Supp.2d 85 (D.Mass.­2010), vacated in relevant part by, 660 F.3d 487 (1st Cir.2011), granted Thomas­-Rasset’s motion and reduced the award to $2,250 per work, for a total of $54,000. The court ruled that this amount was the maximum award permitted by the Due Process Clause. The district court also entered a permanent injunction against Thomas-Rasset, but refused to include language enjoining her from “making available” copyrighted works for distribu­tion to the public.

The recording companies appeal the judgment of the district court, arguing that the district court erred in (1) granting a new trial based on the “making avail­able” instruction in the first trial, and (2) holding that the Due Process Clause limits statutory damages to $2,250 per infringed work. They request that we reinstate and affirm the first jury’s $222,000 award, and remand with instructions to grant an in­junction prohibiting Thomas-Rasset from making the copyrighted works available to the public. Thomas-Rasset cross-appeals, arguing that even an award of the mini­mum statutory damages authorized by the Copyright Act would be unconstitutional.

II.

In their brief on appeal, the record com­panies urge this court to review the dis­trict court’s order granting a new trial after the first verdict. The companies ar­gue that the court erred by holding that an individual does not infringe a copyright holder’s exclusive rights by making a copy­righted work available to the public with­out authorization. They argue that ac­cepting their position on that issue would “lead to reversing the District Court’s er­roneous refusal to enjoin Thomas-Rasset from making Plaintiffs’ copyrighted works available, but also would reinstate the first jury’s $9,250-per-work verdict,” for total damages of $222,000. Although the third jury’s verdict awarded $62,500 per work, for a total of $1,500,000, the companies seek only the smaller amount awarded by the first jury, because they want a ruling on the legal issue whether making works available is part of the distribution right protected by the Copyright Act.

In reply, Thomas-Rasset says that she has no objection to reinstatement of the first verdict, subject to her arguments on the constitutionality of the damages. She maintains that she still disagrees with the recording companies about the meaning of “distribute” in the Copyright Act, 17 U.S.C. § 106(3), but she does not object to the relief that the companies request on appeal. She now suggests that this court should reinstate the first jury’s verdict on liability (albeit without making precedent on the meaning of “distribute”) and then determine whether the first damages award of $222,000 is constitutional. Thom­as-Rasset is liable for willful infringement under any of the verdicts, and it suits her fine to cap the maximum possible damages at $222,000 rather than $1,500,000. Thom­as-Rasset also offers to acquiesce in the entry of an injunction that forbids her to make copyrighted works available for dis­tribution. In light of these concessions, she suggests that the issue whether mak­ing works available is part of the distribu­tion right protected by the Copyright Act is moot.

Our response to these tactical maneu­vers is to observe that this court reviews judgments, not decisions on issues. Thompson v. Mo. Bd. of Prob. & Parole, 39 F.3d 186, 189 n. 2 (8th Cir.1994); see California v. Rooney, 483 U.S. 307, 310, 107 S.Ct. 2852, 97 L.Ed.2d 258 (1987). The record companies appeal the district court’s final judgment and seek additional remedies that the district court refused to order. The entitlement of the companies to these remedies—damages of $222,000 and an injunction against making copy­righted works available to the public—are the matters in controversy. That the com­panies seek these remedies with the objec­tive of securing a ruling on a particular legal issue does not make that legal issue itself the matter in controversy. Once the requested remedies are ordered, the desire of the companies for an opinion on the meaning of the Copyright Act, or for a statement that Thomas-Rasset violated the law by making works available, is not sufficient to maintain an Article III case or controversy. Chathas v. Local 134 IBEW, 233 F.3d 508, 512 (7th Cir.2002); Alliance to End Repression v. City of Chicago, 820 F.2d 873, 875-76 (7th Cir.1987).

For the reasons set forth below, we conclude that when the district court en­tered judgment after the verdict in the third trial, the court should have enjoined Thomas-Rasset from making copyrighted works available to the public, whether or not that conduct by itself violates rights under the Copyright Act. We also conclude that statutory damages of at least $222,000 were constitutional, and that the district court erred in holding that the Due Pro­cess Clause allowed statutory damages of only $54,000. We therefore will vacate the district court’s judgment and remand with directions to enter a judgment that in­cludes those remedies. The question whether the district court correctly grant­ed a new trial after the first verdict is moot.

A.

After the third trial, the district court entered an injunction that prohibits Thomas-Rasset from “using the Internet or any online media distribution system to reproduce (i.e., download) any of Plaintiffs’ Recordings, or to distribute (i.e., upload) any of Plaintiff's Recordings.” The re­cording companies urged the district court to amend the judgment to enjoin Thomas­-Rasset from making any of their sound recordings available for distribution to the public through an online media distribution system. The district court declined to do so on the ground that the Copyright Act does not provide an exclusive right to mak­ing recordings available. The court fur­ther reasoned that the injunction as grant­ed was adequate to address the concerns of the companies. We review the grant or denial of a permanent injunction for abuse of discretion. Fogie v. THORN Americas, Inc., 95 F.3d 645, 649 (8th Cir.1996). “Abuse of discretion occurs if the district court reaches its conclusion by applying erroneous legal principles or relying on clearly erroneous factual findings.” Id.

We conclude that the district court’s ruling was based on an error of law. Even assuming for the sake of analy­sis that the district court’s ruling on the scope of the Copyright Act was correct, a district court has authority to issue a broad injunction in cases where “a proclivi­ty for unlawful conduct has been shown.” See McComb v. Jacksonville Paper Co., 336 U.S. 187, 192, 69 S.Ct. 497, 93 L.Ed. 599 (1949). The district court is even per­mitted to “enjoin certain otherwise lawful conduct” where “the defendant’s conduct has demonstrated that prohibiting only un­lawful conduct would not effectively pro­tect the plaintiff's rights against future encroachment.” Russian Media Grp., LLC v. Cable America, Inc., 598 F.3d 302, 307 (7th Cir.2010) (citing authorities). If a party has violated the governing statute, then a court may in appropriate circum­stances enjoin conduct that allowed the prohibited actions to occur, even if that conduct “standing alone, would have been unassailable.” EEOC v. Wilson Metal Casket Co., 24 F.3d 836, 842 (6th Cir.1994) (internal quotation omitted).

Thomas-Rasset’s willful infringe­ment and subsequent efforts to conceal her actions certainly show “a proclivity for un­lawful conduct.” The recording companies rightly point out that once Thomas-Rasset makes copyrighted works available on an online media distribution system, she has completed all of the steps necessary for her to engage in the same distribution that the court did enjoin. The record also dem­onstrates the practical difficulties of de­tecting actual transfer of recordings to third parties even when a party has made large numbers of recordings available for distribution online. The narrower injunc­tion granted by the district court thus could be difficult to enforce.

For these reasons, we conclude that the district court erred after the third trial by concluding that the broader injunction re­quested by the companies was impermissi­ble as a matter of law. An injunction against making recordings available was lawful and appropriate under the circum­stances, even accepting the district court’s interpretation of the Copyright Act. Thom­as-Rasset does not resist expanding the injunction to include this relief. We there­fore will direct the district court to modify the judgment to include the requested in­junction.

B.

On the question of damages, we conclude that a statutory damages award of $9,250 for each of the twenty-four in­fringed songs, for a total of $222,000, does not contravene the Due Process Clause. The district court erred in reducing the third jury’s verdict to $2,250 per work, for a total of $54,000, on the ground that this amount was the maximum permitted by the Constitution.

The Supreme Court long ago declared that damages awarded pursuant to a stat­ute violate due process only if they are “so severe and oppressive as to be wholly dis-proportioned to the offense and obviously unreasonable.” St. Louis, I. M. & S. Ry. Co. v. Williams, 251 U.S. 63, 67, 40 S.Ct. 71, 64 L.Ed. 139 (1919). Under this stan­dard, Congress possesses a “wide latitude of discretion” in setting statutory damages. Id. at 66, 40 S.Ct. 71. Williams is still good law, and the district court was cor­rect to apply it.

Thomas-Rasset urges us to consid­er instead the “guideposts” announced by the Supreme Court for the review of puni­tive damages awards under the Due Pro­cess Clause. When a party challenges an award of punitive damages, a reviewing court is directed to consider three factors in determining whether the award is ex­cessive and unconstitutional: “(1) the de­gree of reprehensibility of the defendant’s misconduct; (2) the disparity between the actual or potential harm suffered by the plaintiff and the punitive damages award; and (3) the difference between the punitive damages awarded by the jury and the civil penalties authorized or imposed in compa­rable cases.” State Farm Mut. Auto. Ins. Co. v. Campbell, 538 U.S. 408, 418, 123 S.Ct. 1513, 155 L.Ed.2d 585 (2003); see also BMW of N. Am., Inc. v. Gore, 517 U.S. 559, 574-75, 116 S.Ct. 1589, 134 L.Ed.2d 809 (1996).

The Supreme Court never has held that the punitive damages guideposts are appli­cable in the context of statutory damages. See Zomba Enters., Inc. v. Panorama Rec­ords, Inc., 491 F.3d 574, 586-88 (6th Cir.­2007). Due process prohibits excessive punitive damages because “‘[e]lementary notions of fairness enshrined in our consti­tutional jurisprudence dictate that a per­son receive fair notice not only of the conduct that will subject him to punish­ment, but also of the severity of the penal­ty that a State may impose.’” Campbell, 538 U.S. at 417, 123 S.Ct. 1513 (quoting Gore, 517 U.S. at 574, 116 S.Ct. 1589). This concern about fair notice does not apply to statutory damages, because those damages are identified and constrained by the authorizing statute. The guideposts themselves, moreover, would be nonsensi­cal if applied to statutory damages. It makes no sense to consider the disparity between “actual harm” and an award of statutory damages when statutory dam­ages are designed precisely for instances where actual harm is difficult or impossible to calculate. See Cass Cnty. Music Co. v. C.H.L.R., Inc., 88 F.3d 635, 643 (8th Cir.­1996). Nor could a reviewing court consid­er the difference between an award of statutory damages and the “civil penalties authorized,” because statutory damages are the civil penalties authorized.

Applying the Williams standard, we conclude that an award of $9,250 per each of twenty-four works is not “so severe and oppressive as to be wholly dispropor­tioned to the offense and obviously unrea­sonable.” 251 U.S. at 67, 40 S.Ct. 71. Congress, exercising its “wide latitude of discretion,” id. at 66, 40 S.Ct. 71, set a statutory damages range for willful copy­right infringement of $750 to $150,000 per infringed work. 17 U.S.C. § 504(c). The award here is toward the lower end of this broad range. As in Williams, “the interests of the public, the numberless op­portunities for committing the offense, and the need for securing uniform adher­ence to [federal law]” support the consti­tutionality of the award. Id. at 67, 40 S.Ct. 71.

Congress’s protection of copyrights is not a “special private benefit,” but is meant to achieve an important public in­terest: “to motivate the creative activity of authors and inventors by the provision of a special reward, and to allow the public access to the products of their genius after the limited period of exclusive control has expired.” Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 429, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984). With the rapid advancement of technology, copy­right infringement through online file-­sharing has become a serious problem in the recording industry. Evidence at trial showed that revenues across the industry decreased by fifty percent between 1999 and 2006, a decline that the record compa­nies attributed to piracy. This decline in revenue caused a corresponding drop in industry jobs and a reduction in the num­ber of artists represented and albums re­leased. See Sony BMG Music Entm’t v. Tenenbaum, 660 F.3d 487, 492 (1st Cir.­2011).

Congress no doubt was aware of the serious problem posed by online copyright infringement, and the “numberless oppor­tunities for committing the offense,” when it last revisited the Copyright Act in 1999. To provide a deterrent against such in­fringement, Congress amended § 504(c) to increase the minimum per-work award from $500 to $750, the maximum per-work award from $20,000 to $30,000, and the maximum per-work award for willful in­fringement from $100,000 to $150,000. Id.

Thomas-Rasset contends that the range of statutory damages established by § 504(c) reflects only a congressional judg­ment “at a very general level,” but that courts have authority to declare it “severe and oppressive” and “wholly dispropor­tioned” in particular cases. The district court similarly emphasized that Thomas-­Rasset was “not a business acting for prof­it, but rather an individual consumer ille­gally seeking free access to music for her own use.” By its terms, however, the statute plainly encompasses infringers who act without a profit motive, and the statute already provides for a broad range of dam­ages that allows courts and juries to cali­brate the award based on the nature of the violation. For those who favor resort to legislative history, the record also suggests that Congress was well aware of the threat of noncommercial copyright infringement when it established the lower end of the range. See H.R. Rep. 106-216, at 3 (1999), 1999 WL 446444, at *3.1 Congressional amendments to the criminal provisions of the Copyright Act in 1997 also reflect an awareness that the statute would apply to noncommercial infringement. See No Electronic Theft (NET) Act, Pub.L. No. 105-147, § 2(a), 111 Stat. 2678 (1997); see also H.R. Rep. 105-339, at 5 (1997), 1997 WL 664424, at *5.

In holding that any award over $2,250 per work would violate the Constitution, the district court effectively imposed a tre­ble damages limit on the $750 minimum statutory damages award. The district court based this holding on a “broad legal practice of establishing a treble award as the upper limit permitted to address willful or particularly damaging behavior.” Any “broad legal practice” of treble damages for statutory violations, however, does not control whether an award of statutory damages is within the limits prescribed by the Constitution. The limits of treble damages to which the district court re­ferred, such as in the antitrust laws or other intellectual property laws, represent congressional judgments about the appro­priate maximum in a given context. They do not establish a constitutional rule that can be substituted for a different congres­sional judgment in the area of copyright infringement. Although the United States seems to think that the district court’s ruling did not question the constitutionali­ty of the statutory damages statute, the district court’s approach in our view would make the statute unconstitutional as ap­plied to a significant category of copyright infringers. The evidence against Thomas­-Rasset demonstrated an aggravated case of willful infringement by an individual consumer who acted to download and dis­tribute copyrighted recordings without profit motive. If an award near the bot­tom of the statutory range is unconstitu­tional as applied to her infringement of twenty-four works, then it would be the rare case of noncommercial infringement to which the statute could be applied.

Thomas-Rasset’s cross-appeal goes so far as to argue that any award of statutory damages would be unconstitutional, be­cause even the minimum damages award of $750 per violation would be “wholly disproportioned to the offense” and thus unconstitutional. This is so, Thomas-Ras­set argues, because the damages award is not based on any evidence of harm caused by her specific infringement, but rather reflects the harm caused by file-sharing in general. The district court similarly con­cluded that “statutory damages must still bear some relation to actual damages.” The Supreme Court in Williams, however, disagreed that the constitutional inquiry calls for a comparison of an award of statu­tory damages to actual damages caused by the violation. 251 U.S. at 66, 40 S.Ct. 71. Because the damages award “is imposed as a punishment for the violation of a public law, the Legislature may adjust its amount to the public wrong rather than the private injury, just as if it were going to the state.” Id. The protection of copy­rights is a vindication of the public inter­est, Sony Corp. of Am., 464 U.S. at 429, 104 S.Ct. 774, and statutory damages are “by definition a substitute for unproven or unprovable actual damages.” Cass Cnty. Music Co., 88 F.3d at 643. For copyright infringement, moreover, statutory dam­ages are “designed to discourage wrongful conduct,” in addition to providing “restitu­tion of profit and reparation for injury.” F.W. Woolworth Co. v. Contemporary Arts, 344 U.S. 228, 233, 73 S.Ct. 222, 97 L.Ed. 276 (1952).

Thomas-Rasset highlights that if the re­cording companies had sued her based on infringement of 1,000 copyrighted record­ings instead of the twenty-four recordings that they selected, then an award of $9,250 per song would have resulted in a total award of $9,250,000. Because that hypo­thetical award would be obviously exces­sive and unreasonable, she reasons, an award of $222,000 based on the same amount per song must likewise be invalid. Whatever the constitutionality of the hypo­thetical award, we disagree that the validi­ty of the lesser amount sought here de­pends on whether the Due Process Clause would permit the extrapolated award that she posits. The absolute amount of the award, not just the amount per violation, is relevant to whether the award is “so se­vere and oppressive as to be wholly dispro­portioned to the offense and obviously un­reasonable.” Williams, 251 U.S. at 67, 40 S.Ct. 71. The recording companies here opted to sue over twenty-four recordings. If they had sued over 1,000 recordings, then a finder of fact may well have consid­ered the number of recordings and the proportionality of the total award as fac­tors in determining where within the range to assess the statutory damages. If and when a jury returns a multi-million dollar award for noncommercial online copyright infringement, then there will be time enough to consider it.

For the foregoing reasons, we conclude that the recording companies are entitled to the remedies that they seek on appeal. The judgment of the district court is vacat­ed, and the case is remanded with di­rections to enter a judgment for damages in the amount of $222,000, and to include an injunction that precludes Thomas-Ras­set from making any of the plaintiffs’ re­cordings available for distribution to the public through an online media distribution system.

1

According to the House report in 1999:

By the turn of the century the Internet is projected to have more than 200 million users, and the development of new tech­nology will create additional incentive for copyright thieves to steal protected works. The advent of digital video discs, for ex­ample, will enable individuals to store far more material than on conventional discs, and at the same time, produce perfect secondhand copies.... Many computer users are either ignorant that copyright laws apply to Internet activity, or they simply believe that they will not be caught or prosecuted for their conduct. Also, many infringers do not consider the cur­rent copyright infringement penalties a real threat and continue infringing, even after a copyright owner puts them on no­tice that their actions constitute infringe­ment and that they should stop the activi­ty or face legal action. In light of this disturbing trend, it is manifest that Con­gress respond appropriately with updated penalties to dissuade such conduct.

United States Court of Appeals, Federal Circuit.

No. 2010-1290.

INNOVENTION TOYS, LLC, Plaintiff-Appellee, v. MGA ENTERTAINMENT, INC., Wal-­Mart Stores, Inc., and Toys “R” Us, Inc., Defendants-Appellants.

March 21, 2011.

Before RADER, Chief Judge, LOURIE, Circuit Judge, and WHYTE, District Judge.*

James C. Otteson, Agility IP Law, of East Palo Alto, CA, argued for plaintiff-­appellee.

Michael A. Nicodema, Greenberg Trau­rig, LLP, of Florham Park, NJ, argued for defendants-appellants. With him on the brief were Mark R. Galis and Kevin J. O’Shea, of Chicago, IL.

*

The Honorable Ronald M. Whyte, United States District Court for the Northern District of California, sitting by designation.

LOURIE, Circuit Judge.

MGA Entertainment, Inc.; Wal-Mart Stores, Inc.; and Toys “R” Us, Inc. (collec­tively, “MGA”) appeal from the summary judgment decision of the United States District Court for the Eastern District of Louisiana that the asserted claims of U.S. Patent 7,264,242 (“the '242 patent”) were infringed and were not invalid for obvious­ness. Innovention Toys, LLC v. MGA Entm’t, Inc., 665 F.Supp.2d 636 (E.D.La. 2009). Because the district court correctly found no genuine issues of material fact regarding infringement based on its con­struction of the claim term “movable,” we affirm the court’s grant of summary judg­ment of literal infringement. The district court, however, erred in several of its fac­tual findings underlying its nonobviousness determination. We therefore vacate the court’s grant of summary judgment of nonobviousness and remand.

Background

I.

Innovention Toys, LLC (“Innovention”) brought suit against MGA for infringe­ment of the '242 patent, which claims a chess-like, light-reflecting board game and methods of playing the same. The dis­closed game includes a chess-styled play­ing surface, laser sources positioned to project light beams over the playing sur­face when “fired,” mirrored and non-mir­rored playing pieces used to direct the lasers’ beams, and non-mirrored “key play­ing pieces” equivalent to the king pieces in chess. See '242 patent col.2 1.64-col.3 1.35. To play the game, players take turns ei­ther moving a playing piece to an unoccu­pied, adjacent square or rotating (reorient­ing) a piece within a square. Id. col.3 11.21-24; col.8 1.49-col.9 1.12. After moving or rotating a piece, a player then fires his laser, and if the laser’s beam strikes the non-mirrored surface of a playing piece, that piece is eliminated from the game. Id. col.3 11.26-30; col.9 11.13-17. To win the game, a player must direct his laser beam to strike, or illuminate, his opponent’s non-­mirrored key playing piece, ending the game. Id. col.3 11.17-20; col.6 11.44-47.

All the asserted claims, claims 31-33, 39-41, 43-44, 48-50, and 53-54, include a “key playing pieces” limitation in which the key pieces are “movable.” Claim 31 is representative:

A board game for two opposing players or teams of players comprising:

a game board, movable playing pieces having at least one mirrored sur­face, movable key playing pieces having no mirrored surfaces, and a laser source,

wherein alternate turns are taken to move playing pieces for the purpose of deflecting laser beams, so as to illuminate the key playing piece of the opponent.

Id. claim 31 (emphasis added).

MGA counterclaimed, denying infringe­ment and alleging, inter alia, that the '242 patent was invalid under 35 U.S.C. § 103. In making its obviousness argu­ment, MGA relied on the combination of (1) two articles describing computer-­based, chess-like strategy games, Laser Chess and Advanced Laser Chess (collec­tively, “the Laser Chess references”); and (2) U.S. Patent 5,145,182 (“the Swift pat­ent”) describing a physical, chess-like, la­ser-based strategy game.

The Laser Chess game is described in an article entitled “Laser ChessTM First Prize $5,000.00 Winner Atari ST Program­ming Contest,” published in the April 1987 edition of Compute!. J.A. 1775-78. Ad­vanced Laser Chess is described in an article published in the Summer 1989 edi­tion of Computers Amiga Resource. J.A. 1784-87. Both articles disclose chess-like computer games with virtual lasers and mirrored and non-mirrored pieces, which are moved or rotated by players during alternating turns on a virtual, chess-like playing board. The goal of each game is to manipulate one’s laser beam using the various game pieces to eliminate the other player’s non-mirrored king piece by strik­ing it with the laser beam. In Laser Chess, a player’s king piece may move squares during game play: “[The king] can capture any opposing piece by moving onto its square.” J.A. 1776. Similarly, in Advanced Laser Chess “Kings possess the ability to capture other pieces [by moving on top of them].” J.A.1784.

The Swift patent discloses a physical (rather than electronic) strategy game in which players take turns placing mirrored game pieces onto squares of a chess-styled game board. The players position the pieces so as to direct their laser’s beam towards the opposing player’s scoring mo­dule and away from their own. A player scores when his laser beam, having been deflected around the game board, strikes his opponent’s scoring module. The scor­ing modules are mounted to the frame of the game board, see Swift patent col.2 11.51-56, and thus are not physically capa­ble of movement on the game board.

MGA’s accused game, Laser Battle, is a physical board game for playing a chess-­like strategy game. Players take turns moving or rotating mirrored playing pieces so as to direct a laser beam to strike the opposing player’s non-mirrored Tower playing piece to win the game. According to the rules of Laser Battle, in “Classic Game Play,” the Tower pieces are placed on the board at the beginning of the game at one of various standard positions. J.A. 1986. Although the Towers are physically capable of movement on the game board, the rules provide that they “should always remain in their original positions on the board.” J.A.1985. However, the standard starting configuration illustrated in the rules show that the Tower pieces can be placed at different locations on the board, and the rules state that during “Advanced Game Play,” the Towers need not remain in their standard positions. J.A.1986.

II.

On October 14, 2009, the district court ruled on the parties’ cross-motions for summary judgment of infringement and invalidity. Innovention Toys, 665 F.Supp.2d 636. The district court granted Innovention’s motion for summary judg­ment of literal infringement. Id. at 647. The court first construed the claim term “movable” in light of the term’s plain meaning as “capable of movement as called for by the rules of the game or game strategy.” Id. at 644-45. In so holding, the court rejected MGA’s more “cramped” construction that the movement must be “from space to space or by rotation within a single space.” Id. at 643-45; see also id. at 644 n. 15. The district court also reject­ed Innovention’s broader construction of “movable” to mean “able to be moved, or possible to move,” without any tie to the rules or strategy of the game. Id. at 642-­43.

Based on its construction, the district court then found that the accused Laser Battle game’s Tower pieces met the “mov­able” claim limitation, the only disputed limitation. The court found that those key pieces were “moveable” when the players selected and “set up the game pieces in various start formations and layouts.” Id. at 647 n. 18. The court reasoned that even if “the instructions to Laser Battle suggest that its key pieces, the Towers, are not supposed to be moved during game play,” they “are capable of movement ... in that they fit into the recessed spaces on the board like the other pieces, and are capa­ble of rotation within whatever recessed space a player may choose to place the Tower in for the start of game play.” Id. at 646-47. The court also observed that although the instructions to Laser Battle note that “[t]he Towers should always re­main in their original positions on the board,” id. at 647 n. 18, they also explain that “[e]xcept for Advanced Game Play, the Target Tower and the Laser Guns will remain in their standard positions in all formations,” see id. at 647 n. 18 & 19; J.A.1986. This instruction suggests that the Tower pieces could be moved in Ad­vanced Game Play because they fit in and are rotatable in the recessed spaces on the board.

The district court also granted Innoven­tion’s motion for summary judgment of nonobviousness. Id. at 655. The court first found that the Laser Chess refer­ences were non-analogous art because they described electronic, rather than real-­world, laser games. Id. at 653. The dis­trict court then held that, because MGA had provided no evidence to support a finding as to the level of ordinary skill in the art, MGA’s obviousness argument could be pursued only on the basis of what would have been obvious to a layperson. Id. at 654. The court then decided that because MGA had not provided any evi­dence that a layperson would have known of the Laser Chess articles or would have had any reason to modify the teachings of the Laser Chess references, MGA had failed to state a prima facie case of obvi­ousness. Id.

Finally, the court found that Innovention had demonstrated several secondary con­siderations of nonobviousness. These in­cluded (1) commercial success based on the sale of 140,000 games by Innovention, a small company with minimal marketing ca­pabilities, and evidence that fans had start­ed clubs and tournaments around the world; (2) long-felt need based on the game’s sudden success and media praise; and (3) industry praise based on, inter alia, the game’s nomination for Outstand­ing Technology of the Year by the Interna­tional Academy of Science and its being one of five finalists for the Toy Industry Association’s 2007 Game of the Year award. Id. at 654-55. In light of its summary judgment rulings, the district court granted Innovention’s motion for a permanent injunction on January 13, 2010.

MGA appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

Discussion

This court reviews a district court’s decision on summary judgment de novo, reapplying the same standard applied by the district court. Iovate Health Scis., Inc. v. Bio-Engineered Supplements & Nutrition, Inc., 586 F.3d 1376, 1380 (Fed. Cir.2009). Summary judgment is appro­priate “if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a).

I. Infringement

A determination of infringement involves two steps: First, the court deter­mines the scope and meaning of the as­serted patent claims. The court then com­pares the properly construed claims to the allegedly infringing device to determine whether all of the claim limitations are present, either literally or by a substantial equivalent. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.Cir.1998) (en banc). The first step, claim construc­tion, is a question of law, reviewed de novo. Id. (citing Markman v. Westview Instru­ments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). In contrast, infringe­ment, whether literal or under the doctrine of equivalents, is a question of fact. Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed.Cir.1998). Accordingly, a court may determine infringement on summary judg­ment “when no reasonable jury could find that every limitation recited in the proper­ly construed claim either is or is not found in the accused device.” Id.

On appeal, MGA does not argue that the district court erred in construing “mova­ble” to mean “capable of movement as called for by the rules of the game or game strategy.” Rather, MGA argues that the court improperly broadened its construction during the second step of the infringement analysis by adding capable of movement “during game set up,” and thus erred in finding that Laser Battle’s Tower pieces meet the “movable” limitation. Un­der the court’s original construction, MGA asserts, Laser Battle’s instructions defini­tively show that the Tower pieces are not to be moved, either from space to space or by rotation within a space, as part of the game’s rules or strategy. Rather, MGA urges, the only way that the Tower pieces can be “movable” during game play or strategy is if the players ignore the game’s rules and cheat. Moreover, according to MGA, because all the pieces must be moved onto the game board at some point, the district court’s altered construction renders everything “movable” and the “movable” limitation superfluous.

Innovention responds that Laser Bat­tle’s Tower pieces are clearly “capable of movement”; each Tower piece is a sepa­rate component that can be placed at any space on the game board and afterwards rotated within that space or moved to an­other space. In other words, Innovention argues, the Towers are “movable” since they are not permanently mounted to the game board as are the key playing pieces (scoring modules) disclosed in the Swift patent. Furthermore, according to Inno­vention, Laser Battle’s instructions do not require the Tower pieces to remain sta­tionary during all game play; the rules invite players to create “more intricate games” and tell players that the Towers “remain in their standard positions in all formations” except during “Advanced Game Play.” J.A.1986-87.

We agree in main with the district court’s infringement analysis,1 and we af­firm the district court’s decision holding that MGA’s Laser Battle game literally infringes the asserted claims of the '242 patent. During claim construction, the district court rejected MGA’s narrower construction of “movable” in which “mova­ble” was limited to the movements explicit­ly permitted by the rules of the game during game play, i.e., movable from space to space or by rotation within a single space. Innovention Toys, 665 F.Supp.2d at 642-43. Rather, the court embraced a definition that distinguished “movable” from “mounted” by contrasting the “mova­ble key playing pieces” of the '242 patent with the fixed scoring modules of Swift. In particular, the district court stated that while the “key pieces disclosed in the Swift reference are permanently fixed to the game board and, therefore, cannot be moved prior to or during game play,” the key pieces of the '242 patent “may be positioned in different spaces at the begin­ning of each game and can also be moved during game play.” Id. at 644; see also id. at 644 n. 15. Thus, the court’s con­struction of “movable” includes the capa­bility of being positioned in different spaces during set up (i.e., at the beginning of each game) and the capability of being moved during Advanced Game Play. In other words, the Tower pieces “are capa­ble of movement as called for by the rules of the game or game strategy.”

Accordingly, MGA is incorrect when it argues that the district court expanded its construction of “movable” during the sec­ond step of the infringement analysis. The court’s construction, not just its appli­cation, encompasses movement during game set up. Moreover, such a construc­tion does not render “movable” superflu­ous, as MGA asserts, since it distinguishes the '242 patent’s key pieces from the mounted scoring modules disclosed in Swift. Laser Battle’s Tower pieces thus meet the “movable” limitation under the district court’s consistent construction based on the pieces’ undisputed ability to be physically positioned in different squares on the game board. No reason­able jury could find otherwise.

Although MGA contends that it does not dispute the district court’s construction, implicit in MGA’s argument is its disagree­ment with the construction of “movable” to mean “capable of movement.” Because MGA does not challenge the district court’s claim construction directly, but rather indirectly based on its application to the accused product, we will not review the district court’s construction of “movable” to encompass the capability of movement. Accordingly, we affirm the district court’s decision granting summary judgment of literal infringement.

II. Obviousness

Under the Patent Act, “[a] pat­ent may not be obtained ... if the differ­ences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the inven­tion was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a). Although the ultimate determination of obviousness under § 103 is a question of law, it is based on several underlying factual find­ings, including (1) the scope and content of the prior art; (2) the level of ordinary skill in the pertinent art; (3) the differences between the claimed invention and the prior art; and (4) evidence of secondary fac­tors, such as commercial success, long-felt need, and the failure of others. Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). A patent is presumed valid, 35 U.S.C. § 282, and this presumption can be overcome only by clear and convincing evidence to the con­trary. Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1374 (Fed.Cir.2001).

MGA argues that, rather than being nonobvious, the asserted claims would have been obvious based on the combina­tion of the Laser Chess references, which teach the claimed game in electronic form, and the Swift patent, which teaches a physical laser-based game. According to MGA, the district court erred both (1) in concluding that because the '242 patent relates to a physical game, the Laser Chess articles were non-analogous art; and (2) in assuming that a person of skill in the art was a layperson rather than, as put forth by Innovention, a mechanical engineer with knowledge of optics. Final­ly, MGA argues, Innovention’s unsupport­ed and conclusory assertions of secondary considerations fail to overcome MGA’s pri­ma facie case of obviousness.

Innovention responds that the Laser Chess references in combination with the Swift patent fail to teach or suggest every limitation of the asserted claims, and thus MGA has failed to state a prima facie case of obviousness. Specifically, Innovention argues that Swift, as MGA admits, fails to disclose movable key pieces and that the Laser Chess references fail to disclose any physical, non-virtual game components. Accordingly, Innovention argues that the Laser Chess references are non-analogous art because they are neither within the inventors’ field of endeavor, i.e., a non-­virtual, three-dimensional, laser board game, nor reasonably pertinent to it. In­novention also argues that because MGA offered no evidence as to the level of skill in the art, the skill level defaults to that of a layperson, and that its evidence of sec­ondary considerations provides further evi­dence that the claimed invention would not have been obvious.

We conclude that the district court clearly erred in several of the factual find­ings underlying its obviousness analysis. The district court erred in finding that the Laser Chess references fail to qualify as analogous art. The court also erred in concluding that the level of skill in the art is that of a layperson. We address each in turn.

A. Analogous Art

A reference qualifies as prior art for a determination under § 103 when it is analogous to the claimed invention. In re Clay, 966 F.2d 656, 658 (Fed.Cir.1992). “Two separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the ref­erence is not within the field of the inven­tor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is in­volved.” In re Bigio, 381 F.3d 1320, 1325 (Fed.Cir.2004). “A reference is reasonably pertinent if ... it is one which, because of the matter with which it deals, logically would have commended itself to an inven­tor’s attention in considering his problem.” Clay, 966 F.2d at 659. “If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection.” Id. Whether a prior art refer­ence is “analogous” is a question of fact. Id. at 658.

Innovention argues that the Laser Chess articles are non-analogous art be­cause the '242 patent’s inventors were con­cerned with making a non-virtual, three-­dimensional, laser-based board game, a project that involves mechanical engineer­ing and optics, not computer program­ming. The district court appears to have agreed, finding that the Laser Chess refer­ences were non-analogous art since each discloses “an electronic version of the '242 patent.” Innovention Toys, 665 F.Supp.2d at 653. The court, however, failed to con­sider whether a reference disclosing an electronic, laser-based strategy game, even if not in the same field of endeavor, would nonetheless have been reasonably perti­nent to the problem facing an inventor of a new, physical, laser-based strategy game. In this case, the district court clearly erred in not finding the Laser Chess references to be analogous art based on this test as a matter of law. See Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed.Cir.2010) (holding as a matter of law that prior art padlock seals were analogous since direct­ed to the same problem of preventing the ingress of contaminants into the locking mechanism).

The '242 patent and the Laser Chess references are directed to the same pur­pose: detailing the specific game elements comprising a chess-like, laser-based strate­gy game. Specifically, the '242 patent de­scribes (1) the game’s components, includ­ing the game board, '242 patent col.4 11.45-56, and various types of playing pieces, id. col.6 1.48-col.7 1.24; (2) the game’s specific rules, including how the pieces may move on the game board during a player’s turn, id. col.3 11.21-28, col.8 1.49-col.9 1.17; and (3) the game’s ultimate objective, namely, illuminating an opponent’s key playing piece with a laser beam, id. col.6 11.45-47. The specification even distinguishes prior art patents based on these game elements, stating that U.S. Patent 3,516,671 lacks “the unique elements and rules of the ['242 patent’s] invention,” id. col.1 11.47-50, and U.S. Patent 6,702,286 contemplates a game in which the objective is not to “illuminate playing pieces,” but rather “to maneuver one’s pieces to flank (or surround) those of the opposing player,” id. col.2 11.16-21.

The Laser Chess references likewise de­scribe specific playing pieces, rules, and objectives to create a chess-like, laser-­based strategy game. Both Laser Chess and Advanced Laser Chess disclose, for example, (1) various game pieces, each with unique capabilities, J.A. 1775-77, 1784-85; (2) rules for each player’s turn, J.A. 1777-78, 1785-86; and (3) an ultimate objective of eliminating an opponent’s king piece, J.A. 1775, 1784.

Accordingly, the '242 patent and the Laser Chess references relate to the same goal: designing a winnable yet entertain­ing strategy game. The '242 patent’s specification confirms that game design was one objective facing its inventors. In particular, the specification states that “[s]trategy games may differ in a variety of ways,” such as in board layout, the number and types of playing pieces, and the manner in which each piece moves on the game board, and that “[e]ach of these variations affects the strategy of the play and the degree of skill required to play the game.” '242 patent col.2 11.19-46. The specification thus admonishes that if the game elements “are overly simplistic, the game is too easy, will usually end in a draw or a predictable manner, and quickly become uninteresting for the average play­er.” Id. col.2 11.49-54. Conversely, accord­ing to the specification, if the game ele­ments “are overly complicated, the game takes too long to learn [and] is frustrating and uninteresting for the average player.” Id. col.2 11.57-60.

The specific combination of game ele­ments disclosed and claimed in the '242 patent thus deals with the problem of game design, and game elements from any strategy game, regardless how implement­ed, “logically would have commended itself to an inventor’s attention in considering [this] problem.” Clay, 966 F.2d at 659. Basic game elements remain the same re­gardless of the medium in which they are implemented: whether molded in plastic by a mechanical engineer or coded in soft­ware by a computer scientist. And, as MGA’s evidence shows, inventors of nu­merous prior art patents contemplated the implementation of their strategy games in both physical and electronic formats. In­novention Toys, 665 F.Supp.2d at 650 n. 23. For example, the Swift patent states that “[a]lthough the preferred embodiment is played by two players, obvious modifica­tions of the game allow for ... a single player playing against a computer.” Swift col.2 11.47-51. Thus, because no reasonable jury could find that the Laser Chess refer­ences do not qualify as analogous prior art, and the district court erred in not so con­cluding as a matter of law.

Because of its error, the district court failed to properly consider the scope and content of the relevant prior art as well as the differences between that art and the claimed invention, including whether one of ordinary skill in the art would have been motivated to combine the teachings of the Laser Chess references with the Swift pat­ent in light of the standard articulated in KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007). We therefore remand these factual determinations to the district court to consider in the first instance. Further­more, should the district court conclude that MGA has made out a prima facie case of obviousness based on the Laser Chess articles and the Swift patent, the court must then determine whether Innoven­tion’s secondary considerations overcome MGA’s prima facie case.

B. Level of Skill in the Art

A determination of obviousness requires a factual finding of the level of ordinary skill in the art. 35 U.S.C. § 103(a); Graham, 383 U.S. at 17, 86 S.Ct. 684. Yet, a district court’s failure to make a correct finding on the level of skill con­stitutes reversible error only where it af­fects the ultimate conclusion under § 103. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 963 (Fed.Cir. 1986). For example, no reversal is neces­sary where a district court makes a deter­mination that an invention would have been obvious to one having the lowest level of skill, i.e., a layperson, because what is obvious to a layperson is necessarily obvi­ous to one with a higher level of skill in the field of the invention. Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565, 1574 (Fed.Cir.1986), overruled on other grounds by Knorr-Bremse Systeme Fuer Nutz­fahrzeuge GmbH v. Dana Corp., 383 F.3d 1337 (Fed.Cir.2004) (en banc). Converse­ly, no reversal is necessary where a dis­trict court makes a determination of nonobviousness based on a finding of the high­est possible level of skill in the relevant art, as fewer inventions are obvious to a person with a lower level of skill than to one with a higher level of skill. Id. A less sophisticated level of skill generally favors a determination of nonobviousness, and thus the patentee, while a higher level of skill favors the reverse. See Union Car­bide Corp. v. Am. Can Co., 724 F.2d 1567, 1573 (Fed.Cir.1984).

In this case, the district court found that MGA had failed to provide any evidence of the level of skill in the art, and thus concluded that MGA’s obviousness ar­gument could be pursued only on the basis of what is obvious to a layperson. Inno­vention Toys, 665 F.Supp.2d at 654. In so concluding, the district court erred. While MGA is permitted to argue that any level of skill, and thus the skill of a layperson, would suffice to support a holding of obvi­ousness, the factual record in this case does not support such a finding. Here, Innovention conceded to the district court that the level of ordinary skill in the art was greater than that of a layperson. Specifically, Innovention asserted that the development of a three-dimensional game would not, in fact, be easy for the average layperson, as it took Innovention’s game creators, a Ph.D. in mechanical engineer­ing and two mechanical engineering stu­dents, a year and a half to develop and finalize Innovention’s game, J.A. 1884 n. 10, and that Innovention’s patent reveals that the claimed invention requires an un­derstanding of geometrical optics, J.A. 1885. The district court appeared to agree, stating that “it seems some knowledge of mechanical engineering or optics is re­quired.” Innovention Toys, 665 F.Supp.2d at 654. The district court thus clearly erred in basing its obviousness analysis on what would have been obvious to a layperson notwithstanding evidence in the record and its apparent factual finding that one of ordinary skill in the art would possess a higher level of skill in the art.

Because the district court found nonob­viousness based on an inappropriately low level of skill in the art, the error was not harmless. Kloster, 793 F.2d at 1574. Ac­cordingly, on remand, the district court must make a finding on the level of skill in the art and base its obviousness analysis on that level of skill.

III. Permanent Injunction

The district court, based on its grant of summary judgment of infringement and nonobviousness, granted a permanent injunction to Innovention. Because we vacate and remand the district court’s de­cision of summary judgment of nonobvi­ousness, we also vacate the district court’s permanent injunction.

Conclusion

For the foregoing reasons, we affirm the district court’s grant of summary judg­ment of literal infringement, and we vacate and remand the district court’s grant of summary judgment of nonobviousness.

AFFIRMED IN PART, VACATED IN PART, and REMANDED.

1

The district court stated that even if the instructions suggest that the key pieces should not be moved, the capability existed, and this was dispositive of the infringement question. Innovention Toys, 665 F.Supp.2d at 646-47. To the extent that this analysis implies that there would be infringement regardless of rules requiring particular placement of key pieces during game set up and prohibiting movement of those pieces regardless of the type of play, the analysis goes beyond that required for the disposition of the infringe­ment question here.

Circuit Court of Appeals, Fourth Circuit.

No. 4672.

DIXI-COLA LABORATORIES, Inc., et al. v. COCA-COLA CO.

Jan. 11, 1941.

Joseph S. Mead, of Birmingham, Ala., and W. Hamilton Whiteford, of Baltimore, Md. (Mead & Moebes, of Birmingham, Ala., and Due, Nickerson & Whiteford, of Baltimore, Md., on the brief), for ap­pellants.

Arthur T. Vanderbilt, of Newark, N. J. (Mullikin, Stockbridge & Waters, of Balti­more, Md., Herman Shulman, Milton Handler, and Benjamin Algase, all of New York City, Theodore C. Waters and Her­shey, Donaldson, Williams & Stanley, all of Baltimore, Md., Willis Battle, of Colum­bus, Ga., Ellis W. Leavenworth, of New York City, and Roger B. Williams, of Baltimore, Md., on the brief), for Pepsi-­Cola Co., Life Savers Corporation, and Nehi Corporation, as amici curiae.

Hilary W. Gans, of Baltimore, Md., and Harry D. Nims, of New York City (Brown & Brune and Charles Ruzicka, all of Baltimore, Md., Robert B. Troutman, of Atlanta, Ga., and Percy E. Williamson, Jr., of New York City, on the brief), for appellee.

Before PARKER, SOPER, and DOBIE, Circuit Judges.

SOPER, Circuit Judge.

The Coca-Cola Company, a Delaware corporation, is undoubtedly entitled to re­lief in this case of trade-mark infringe­ment and unfair competition. Fraudulent conduct on the part of the Dixi-Cola Lab­oratories, Inc., a Maryland corporation, and certain individuals resident in Mary­land and trading as Marbert’s, Inc., and Apola Extract and Syrup Corporation, has been established. The only question seri­ously disputed, albeit an important one, is the extent of the relief to which the plaintiff is entitled.

The plaintiff is the owner of the trade­mark “Coca-Cola” for a syrup to be used with carbonated water as a beverage. The defendants make and sell a concentrate and a syrup to be used in the production of a similar beverage under the names, MarBert the Distinctive Cola and Dixi­-Cola. The defendants do not use the word “coca”; but they claim the right to use the word “cola” in the combinations mentioned. The evidence shows that they have also used other terms, such as Apola Cola and Lola-Kola, but as to them they now make no defense. The plaintiff con­cedes that the names Dixi-Cola and MarBert the Distinctive Cola are not so sim­ilar to the name Coca-Cola, that a purchas­er of the beverage known as Dixi-Cola or MarBert the Distinctive Cola would be led to believe that he was buying the beverage Coca-Cola, but the plaintiff nevertheless charges infringement on the ground that the use of the word “cola” in defendants’ trade-marks or trade-names leads the pub­lic to believe that their products originate with the plaintiff.

The decree of the District Court sus­tains this contention, forbidding the de­fendants to continue the use of names containing the word “cola”, or to use Coca-Cola or any other name which in­cludes either the word “coca” or “cola”. The defendants are also enjoined from the performance of various acts designed to promote the passing off of their product as that of the plaintiff, and are specifically prohibited from giving to their merchan­dise, not sold to consumers in bottles, a color resembling the well known dark brown color of the Coca-Cola beverage, when defendants know, or in the exercise of reasonable care should know, that the purchaser does not intend to dispense the goods to customers in bottles, or intends to use bottles with some deceiving ele­ment, enabling the goods to be passed off as the plaintiff’s product. The defendants, however, are given permission, under cer­tain distinguishing safeguards, to state on their containers and labels, or in adver­tisements, if it should be a fact, that their products contain an extract of coca leaves or cola nuts.

The broad claim of the plaintiff to the exclusive use of the word “cola” in a trade-mark or trade-name is based upon the contention that Coca-Cola is a techni­cal common-law trade-mark, adopted as a fanciful and arbitrary word by the first producer of the beverage in 1886. The plaintiff also relies on five registrations of the mark in the United States Patent Office, one under the Act of March 3, 1881, 21 Stat. 502, and four under the Act of February 20, 1905, 33 Stat. 724, 15 U.S.C.A. § 81 et seq. The District Judge concluded that these registrations were valid, but it is not necessary for us to de­cide the point here for, as the judge also held, the substantive rights under a trade­-mark are not dependent upon or affected by registration, and its secondary, as dis­tinguished from its primary significance, is still open to question. Thaddeus Davids Co. v. Davids Mfg. Co., 233 U.S. 461, 34 S.Ct. 648, 58 L.Ed. 1046, Ann.Cas.1915B, 322; Trade-Mark Cases, 1879, 100 U.S. 82, 92, 25 L.Ed. 550; American Trading Co. v. Heacock Co., 1932, 285 U.S. 247, 52 S.Ct. 387, 76 L.Ed. 740; Anheuser-­Busch v. Cohen, D.C.Md.1930, 37 F.2d 393, 396; Beckwith’s Estate, Inc. v. Com­missioner, 1920, 252 U.S. 538, 543, 40 S.­Ct. 414, 64 L.Ed. 705; American Steel Foundries v. Robertson, 1926, 269 U.S. 372, 381, 46 S.Ct. 160, 70 L.Ed. 317; United Drug Co. v. Rectanus Co., 1918, 248 U.S. 90, 99, 39 S.Ct. 48, 63 L.Ed. 141.

A vigorous contest has arisen in this case as to whether the name Coca-­Cola is in reality a technical trade-mark, entitled to the widest protection, or is a descriptive name which through long years of use and extensive advertisement has acquired a secondary significance. So far as the validity of the trade-mark and the right of the plaintiff to prevent its use as a whole by any competitor are con­cerned, the issue is unimportant. It was held in Coca-Cola Co. v. Koke Co., 1920, 254 U.S. 143, 41 S.Ct. 113, 65 L.Ed. 189, that “whatever may have been its original weakness, the mark for years has acquired a secondary significance and has indicated the plaintiff’s product alone”; and it was held by this court the next year in Coca-­Cola Co. v. Old Dominion Beverage Corp., 4 Cir., 271 F. 600, 601, certiorari denied 256 U.S. 703, 41 S.Ct. 624, 65 L.Ed. 1179 that as the plaintiff’s trade-mark had been duly registered under the ten-year proviso of the Act of February 20, 1905, it is “immaterial that it may once have been descriptive or that to a degree it may be so still”. See, also, Coca-Cola Co. v. Gay-­Ola Co., 6 Cir., 200 F. 720; Id., 6 Cir., 211 F. 942; Nashville Syrup Co. v. Coca Cola Co., 6 Cir., 215 F. 527, Ann.Cas.1915 B, 358; Coca-Cola Co. v. Bennett, 8 Cir., 238 F. 513; Coca-Cola Co. v. Chero-Cola Co., 51 App.D.C. 27, 273 F. 755; Stein­reich v. Coca-Cola Co., Cust. & Pat.App., 67 F.2d 498.

The decisions in trade-mark cases seem to show that some difference exists between the protection given to trade-marks and that given to trade-names, using these terms in the significance in which they are employed in the Restatement of Torts, §§ 715, 716, to indicate, respectively, arbi­trary marks or coined words adopted as technical trade-marks, and descriptive marks which have acquired a secondary significance. In some cases it is said that a descriptive name which has acquired a secondary significance may be used by a competitor to designate his own product; provided that in doing so he unmistakably distinguishes it from that of the prior user of the name, while in other cases it is said that the use of such a word to denominate the competitor’s product should be enjoined. Compare the original opinion in Barton v. Rex-Oil Co., 3 Cir., 2 F.2d 402; 40 A.L.R. 424, with the opinion in the same case on rehearing in 29 F.2d 474. See, also, Elgin Watch Co. v. Il­linois Watch Case Co., 179 U.S. 665, 21 S.Ct. 270, 45 L.Ed. 365; Thaddeus Davids Co. v. Davids Mfg. Co., 233 U.S. 461, 34 S.Ct. 648, 58 L.Ed. 1046, Ann.Cas.1915B, 322; Fawcett Publications v. Popular Mechanics Co., 3 Cir., 80 F.2d 194; Rich­mond Remedies Co. v. Dr. Miles Medical Co., 8 Cir., 16 F.2d 598; Vacuum Oil Co. v. Climax Refining Co., 6 Cir., 120 F. 254; Trinidad Asphalt Co. v. Standard Paint Co., 8 Cir., 163 F. 977, affirmed 220 U.S. 446, 31 S.Ct. 456, 55 L.Ed. 536. In reality, there is no important difference between a trade-name and a trade-mark with re­spect to the protection afforded by the courts to the exclusive right of the owner to use it to denominate his goods. See, Restatement of Torts, § 717 and comment (a); Handler and Pickett on Trade Marks and Trade Names, 30 Col.L.Rev. 168.

It is certainly beyond dispute that the word “Coca-Cola” is the exclusive prop­erty of the Coca-Cola Company. 'The evi­dence in the pending case shows that what was said of the name in Coca-Cola Co. v. Koke Co., 254 U.S. 143, 41 S.Ct. 113, 65 L.Ed. 189, and Coca-Cola Co. v. Old Do­minion Beverage Corp., supra, is equally true today. There has been no let-up in the popular demand for the drink or in the extent of its advertising. On the contrary, both have greatly increased. In 1920 the gallons of syrup sold were 18,656,445 and the advertising expense $2,330,710.40, while in 1938 the gallons sold were 48,508,414, and the advertising ex­pense $7,122,863.31. No one else can law­fully use the word “Coca-Cola” for a trade-mark, even though it originally may have been a descriptive name.

The plaintiff, however, is not content with this measure of protection. It in­sists in addition that no one shall use the word “cola” in a trade-mark, even in connection with a prefix that prevents all confusion with the name Coca-Cola. The reason given is that the word is so closely associated with Coca-Cola in the public mind that any drink, bearing the word as part of its name, will be thought to proceed from the same source. Forty-one witnesses from Baltimore, Springfield and Birmingham testified that when they saw goods labeled by a name containing the suffix “cola”, they were led to believe, not that the goods were Coca-Cola, but that they originated with the Coca-Cola Company. Hence, it is said, the defend­ants have appropriated the result of the plaintiff’s efforts and expenditures, and imperiled the reputation of the Coca-Cola Company and its product.

Confusion of origin, as well as con­fusion of goods, from the use of the same trade-mark, may constitute infringement, especially when the name has a fanciful and arbitrary character. See the decision of this court in Arrow Distilleries, Inc. v. Globe Brewing Co., 4 Cir., 117 F.2d 347, decided January 6, 1941. We must, therefore, consider the defense now set up to this phase of the plaintiff’s case that the word “cola” is a descriptive and generic term, open to all the world, which may be lawfully used as part of a trade­mark by competitors so long as the whole trade-mark is not confusingly similar to Coca-Cola.

There are many cases which hold that it is not infringement for a trader to use as part of his trade-name to desig­nate his product a descriptive or generic word which has already been adopted by another, provided that the competing marks, taken as a whole, are clearly dis­tinguishable. Thus “Sal-Vet” was held not infringed by “Sal Tone”, since the word “Sal”, meaning salt, was descriptive of the principal ingredient of both prod­ucts, and no ordinary purchaser would confuse one of the complete names with the other. S. R. Feil Co. v. John E. Rob­bins Co., 7 Cir., 220 F. 650. 1

In the light of these decisions, it is im­portant to inquire whether or not the word “cola” has a descriptive significance apart from its use in the trade-mark Coca-­Cola, and has become a generic term, gen­erally used to indicate a class of beverage. The answer is to be found, we believe, in scientific and popular literature, in the discussions of Coca-Cola cases by the courts, and the attitude of the Coca-Cola Company itself in the conduct of its busi­ness. The beverage was devised and the name Coca-Cola was adopted by John S. Pemberton in Atlanta in 1886. The prod­uct was sold under a label registered in the Patent Office, which advertised Coca-­Cola syrup as an extract for carbonated beverages possessing a peculiar flavor and the tonic and nerve stimulant qualities of the coca plant and cola nuts. Both of these substances were well known at that time. The word “cola” was recognized as the name of a tree native to Africa, which bears the small brown “cola nut” that was introduced in England in 1865 and later in the United States. Prior to 1886 the stimulant qualities of the cola nut were frequently referred to in phar­maceutical and scientific publications and periodicals, and it was suggested that it could be used to make a beverage that would successfully compete with tea and coffee as a refreshing and invigorating drink. 2

These facts led to the contention in the court below that at best the word Coca-­Cola, taken as a whole, is a descriptive name, entitled to protection only because it has acquired a secondary significance. But the contention was rejected. It was said that while relatively small amounts of coca and cola extracts are found in the drink, the basic ingredients are sugar, phosphoric acid and a small amount of caf­feine; and also that the words compris­ing the mark were so little known to the general public when adopted that they did not suggest at that time that the bev­erage was made from coca leaves or cola nuts. Hence it was decided that the name is not clearly descriptive of the product, but should be considered a coined word with all the characteristics of a technical trade mark. Other courts have reached the same conclusion. See, Coca-Cola Co. of Canada, Ltd. v. Pepsi-Cola Co. of Can­ada, Ltd., 1938, 4 D.L.R. 161. (Reversed by the Supreme Court of Canada, 1940, 1 D.L.R. 161). Nashville Syrup Co. v. Coca Cola Co., 6 Cir., 215 F. 527, Ann.Cas.1915 B, 358.

This view, however, has not always been maintained by the Coca-Cola Company in the conduct of its business, or by the courts in the never-ceasing litigation provoked by the extraordinary popularity of the product. Thus we find in 1901, in a suit for infringement against John B. Daniel in the Fulton Superior Court of Fulton County, Georgia, that the president of the Coca-Cola Company made affidavit to a bill of complaint wherein it was alleged that the company had been engaged for more than five years in the manufacture and sale of a trade-marked syrup or article, known as Coca-Cola, “the name in large measure being descriptive of the character of the article.” Coca-Cola Co. v. John B. Daniel, No. 8577, Spring Term, 1901.

In 1905, the Coca-Cola Company indi­cated that the mark was descriptive in character by applying, through its presi­dent, for registration in the Patent Office under the ten year proviso of § 5 of the Act of February 20, 1905, 15 U.S.C.A. § 85, which permits the registration of a descriptive mark by one who has made actual and exclusive use thereof for ten years next preceding the approval of the act.

In 1912, in Coca-Cola Company v. Dea­con Brown Bottling Co., D.C. N.D.Ala., 200 F. 105, it was said that the right of com­plainant to the use of the words Coca-Cola as a technical trade-mark was doubtful, “in view of the fact that the words are admittedly suggestive, and probably mere­ly descriptive of the constituents of the beverage, and not subject to be appropri­ated as a trade-mark”; but the plaintiff was held entitled to an injunction because the mark had acquired a secondary mean­ing and had been registered under the ten-­year clause of the Act of 1905.

Again in 1912, in Coca Cola Co. v. Wil­liamsburgh Stopper Co.,3 D.C.S.D.N.Y., Judge Hough said: “‘Cola’ is admitted­ly a descriptive word, in which complain­ant is entitled to no special or exclusive right. Nevertheless affidavits submitted are fully persuasive to the effect that ‘soft drinks’, to which the word ‘cola’ can properly be applied, owe if not their introduction, certainly their popularity, wholly to the long continued efforts of complainant.”

In 1916, in United States v. Forty Bar­rels and Twenty Kegs of Coca Cola, 241 U.S. 265, 285, 36 S.Ct. 573, 60 L.Ed. 995, Ann.Cas.1917C, 487, the court considered a change under the Pure Food and Drug Act of June 30, 1906, 34 Stat. 768, 21 U.S. C.A. § 1 et seq., that Coca-Cola was mis­branded in that it contained no coca and little, if any, cola. The court rejected the defense that the combination of the two names constituted a distinctive name, and held that it was a question of fact whether or not the name was primarily descriptive of a compound with coca and cola ingredients. The lower court in an opinion, 6 Cir., 215 F. 535, filed the same day as its opinion in Nashville Syrup Co. v. Coca Cola Co., 6 Cir., 215 F. 527, Ann.­Cas.1915B, 358, had said that there could be no misbranding because the public gen­erally was not familiar with the substances described in the name of the beverage. But the Supreme Court repudiated this ar­gument, saying (page 288 of 241 U.S., page 581 of 36 S.Ct., 60 L.Ed. 995, Ann.Cas. 1917C, 487): “Nor would it be control­ling that at the time of the adoption of the name the coca plant was known only to foreigners and scientists; for if the name had appropriate reference to that plant and to substances derived therefrom, its use would primarily be taken in that sense by those who did know or who took pains to inform themselves of its meaning. Mere ignorance on the part of others as to the nature of the composition would not change the descriptive char­acter of the designation. The same con­clusion would be reached if the single name ‘Cola’ had been used as the name of the product, and it were found that in fact the name imported that the product was obtained from the cola nut. The name would not be the distinctive name of a product not so derived until in usage it achieved that secondary significance.” Other courts have also denied the right to the exclusive use of terms known to investigators, but unknown to the public at large. See, Searle & Hereth Co. v. Warner, 7 Cir., 112 F. 674; Thermogene Co. v. Thermozine Co., 2 Cir., 234 F. 69; Richmond Remedies Co. v. Dr. Miles Med. Co., 8 Cir., 16 F.2d 598; In re Richfield Oil Co., Cust. &. Pat.App., 88 F.2d 499.

The decision of the Supreme Court in Coca-Cola Co. v. Koke Co., 254 U.S. 143, 41 S.Ct. 113, 65 L.Ed. 189, has already been mentioned. The court rejected the charge that the right to protection against infringement because of misrepresenta­tions implied by the name that the product contained cocaine, which had formerly been used in small amounts, but had been eliminated after the passage of the Food and Drug Act. The court said (pages 146, 147 of 254 U.S., page 114 of 41 S.Ct., 65 L.Ed. 189): “ * * * We are deal­ing here with a popular drink not with a medicine, and although what has been said might suggest that its attraction lay in producing the expectation of a toxic effect the facts point to a different con­clusion. Since 1900 the sales have in­creased at a very great rate correspond­ing to a like increase in advertising. The name now characterizes a beverage to be had at almost any soda fountain. It means a single thing coming from a single source, and well known to the community. It hardly would be too much to say that the drink characterizes the name as much as the name the drink. In other words ‘Coca-Cola’ probably means to most per­sons the plaintiff’s familiar product to be had everywhere rather than a compound of particular substances. Although the fact did not appear in United States v. [Forty Barrels and Twenty Kegs of] Coca Cola, 241 U.S. 265, 289, 36 S.Ct. 573, 60 L.Ed. 995, Ann.Cas.1917C, 487, we see no reason to doubt that, as we have said, it has acquired a secondary meaning in which perhaps the product is more em­phasized than the producer but to which the producer is entitled. The coca leaves and whatever of cola nut is employed may be used to justify the continuance of the name or they may affect the flavor as the plaintiff contends, but before this suit was brought the plaintiff had advertised to the public that it must not expect and would not find cocaine, and had eliminated every thing tending to suggest cocaine effects except the name and the picture of the leaves and nuts, which probably conveyed little or nothing to most who saw it. It appears to us that it would be going too far to deny the plaintiff relief against a palpable fraud because possibly here and there an ignorant person might call for the drink with the hope for in­cipient cocaine intoxication. The plaintiff’s position must be judged by the facts as they were when the suit was begun, not by the facts of a different condition and an earlier time.”

Shortly thereafter came the decision of this court in Coca-Cola Co. v. Old Domin­ion Beverage Corp., 4 Cir., 271 F. 600, certiorari denied 256 U.S. 703, 41 S.Ct. 624, 65 L.Ed. 1179, in which it was held immaterial that the mark was descriptive since it had been duly registered under the ten-year clause of the Act of 1905.

It will be perceived that in some of these earlier cases the Coca Cola Com­pany, in answer to the charges made against its trade-name, successfully main­tained the position that the name of the beverage was not deceptive, but was ac­tually justified by the ingredients, while in the present case the company is en­deavoring to show that the name is purely arbitrary and fanciful, and does not truly describe the nature of its product.

It must be concluded, we think, from this history that the word “Coca-Cola”, taken as a whole, is in some sense descrip­tive of the drink which it designates. It is true that the name identifies the goods of the plaintiff, but it has also come to characterize them. This process has been hastened by the fact that the combination of extract of coca leaves and extract of cola nuts employed by Pemberton was new, and it gave to the product a new and dis­tinctive flavor for which there was no other name than that which he employed. Hence the drink came to be known to the public by this name in much the same fashion as other soft drinks are named for a small quantity of flavoring ingredi­ent rather than the large quantities of sugar and water that mainly compose them. The process was further stimulated by the great public response to the drink and the activities of numerous competi­tors who speedily entered the field and were enabled lawfully to make the same or a similar beverage, since Coca-Cola was not covered by a patent.

The record is replete with references to the number of competing drinks in this class. The District Judge in his opin­ion, 31 F.Supp. 835, 839, said that “since Coca-Cola appeared, there has been a veritable flood of drinks of this type, as evidenced by the fact that there have been no less than 143 registrations in the United States Patent Office of names embodying the word ‘cola’ as a suffix”. In 1907 the Supreme Court of Mississippi, in the case of Coca-Cola Co. v. Skillman, 91 Miss. 677, 44 So. 985, discussed a statute im­posing a privilege tax on Coca-Cola, Cel­ery-Cola, Afri-Cola, Hecks Cola, Cola-­Beta, Colavin, Nervola, and Nervocola, or any similar or proprietary drinks. Some cola drinks have had a long and continu­ous history. Thus the record shows that Lime-Cola has been made for more than twenty years in the United States and that Pepsi-Cola has been in existence as a beverage for more than thirty-five years.

The adoption of the word “cola” to characterize a class of drinks thus came about very naturally, to some extent with the consent of the Coca-Cola Company, as we shall see, and to a greater extent because in the course of events it could not be prevented. It was attended by a vast increase after 1886 in the literature relating to the cola nut and its uses. Pub­lications of various types recognized the fact that it could be used as an ingredient of a soft drink. Numerous references to the cola nut and to cola syrup and extract and their use in beverages, called cola drinks, appeared throughout the following years in dictionaries, encyclopedias, phar­maceutical magazines, trade journals and government publications.4 During the same period the word was adopted as part of the trade name of a large number of competing beverages. The result is that today the phrase “cola drinks” indicates to the general public beverages which in taste and appearance resemble Coca-Cola.

The litigation that has ensued between the plaintiff and its numerous competitors bears out this conclusion. The Coca-Cola Company itself has recognized the pro­priety of competitive trade-names contain­ing the word “Cola” by consenting to a number of consent decrees in unreported cases as follows: Keen Kola in 1913, Espo-Cola in 1914, Gay-Ola in 1914 (6 Cir., 211 F. 942), Lime Cola and Afri-­Cola in 1927.

The courts in a number of decisions have upheld the right of competitors to use the word “Cola” as part of a trade-­name not confusingly similar in its en­tirety to Coca-Cola. Thus in 1912 it was held in Coca-Cola Co. v. Williamsburgh Stopper Co., 5 that “cola” is a descriptive word to which the Coca-Cola Company had no especial or exclusive right, and that “cola” drinks were open to the world. In 1914, in Coca-Cola Co. v. Gay-Ola Co., 6 Cir., 211 F. 942, 945, the use of the words “The Improved Cola” was approved with certain precautions to prevent the continuance of deceptive practices by the owner. In 1930, the use of the words “Roxa Kola” was approved in Coca-Cola Co. v. Carlisle Bottling Works, 6 Cir., 43 F.2d 119, and in 1939, in Moxie Co. v. Noxie Kola Co. of New York, D.C.S.D.­N.Y., 29 F.Supp. 167, it was said that cola is a purely descriptive term signifying a cola nut or an extract of it, and distin­guishing any number of the cola drinks upon the market. 29 F.Supp. page 170.

The same result was reached in Pepsi-­Cola Co. of Canada Ltd. v. The Coca-Cola Co. of Canada, Ltd., (1940) 1 D.L.R. 161,6 where the Supreme Court of Canada ruled that the word “cola” could not be monop­olized, and that the trade-mark “Pepsi-­Cola” does not infringe “Coca-Cola”. The Court said (pages 173, 175 of 1 D.L.R.):

“The only similarity between the two compound words here in question lies in the inclusion of the word ‘cola’ in both marks. The plaintiff does not, and of course could not, claim any proprietary right in the word ‘cola’ standing alone. None the less it is plain that the objec­tion of the plaintiff really goes to the reg­istration by any other person of the word ‘cola’ in any combination, for a soft drink. If such objection is allowed, then the plain­tiff virtually becomes the possessor of an exclusive proprietary right in relation to the word ‘cola’, * * * ”.

“We cannot say by tests of sight and sound that the compound word ‘Pepsi-­Cola’ bears so close a resemblance to ‘Coca-­Cola’ as to be likely to cause confusion in the trade or among the purchasing public. The difference between the two compound words is apparent. If the sound test is applied, the difference is sharply accentu­ated; if the sight test is applied, the first word ‘Pepsi’, written in any form, at once distinguishes the compound words. The general impression on the mind of the or­dinary person, we think, made by sight and sound of the two marks would be one of contrast, rather than of similarity.”

It must not be supposed that the Coca-­Cola Company has not fought vigorously to protect its valuable right from invasion. Suits against competitors have averaged one a week during the last thirty years. Many of these competitors have been guilty of fraud and unfair competition, and all of them, it is safe to say, have sought to participate in the profits which experience had shown could be derived from making a drink like Coca-Cola. Generally com­petitors have used the word “cola” as part of the corporate name, joined with a pre­fix, by which it might be distinguished from Coca-Cola. As evidence of its efforts to suppress unlawful competition, the plain­tiff lists twenty-nine decrees by United States District Courts in unreported cases enjoining the use by a competitor of the word “cola” alone. Twenty-three of these decrees were entered with consent and three upon the default of the defendant. The use of the word “cola” as part of a trade-name, such as Apola Cola, King Cola, Keen-Cola, etc., has also been en­joined by consent decrees in unreported cases. The following reported cases also resulted in decrees of infringement: “Fletcher’s Coca Cola”, Nashville Syrup Co. v. Coca Cola Co., 6 Cir., 215 F. 527, 528, Ann.Cas.1915B, 358; “Extract of Coca and Cola”, Coca-Cola Co. v. Ameri­can Druggists’ Syndicate, D.C.N.Y., 200 F. 107; “Taka Cola”, Coca-Cola Co. v. Old Dominion Beverage Corp., 4 Cir., 271 F. 600; “El-Cola”, Coca-Cola Co. v. Du­berstein, D.C.Ohio, 249 F. 763; “A Gen­uine Coca and Cola Flavor”, Coca-Cola Co. v. Stevenson, D.C.Ill., 276 F. 1010, 1014; “Mixo Cola”, Coca-Cola Co. v. Hy-­Po Co., D.C.N.Y., 1 F.Supp. 644.

None of these reported decisions goes further than the decision of this court in Coca-Cola Co. v. Old Dominion Beverage Corp., 4 Cir., 271 F. 600, involving the use of the name “Taka Cola”, and the unreported decision of the present writer in Coca-Cola Co. v. Philips Bros. 7 in the District Court of Maryland, involving the word “Champion-Cola”. In both cases the names were regarded as so close to the name “Coca-Cola” as to be likely to re­sult in the confusion of the goods. In both there was unfair competition in the simulation of the color scheme, of the script of the Coca-Cola Company, or in the confusing display of the competing name. In Coca-Cola Co. v. Old Dominion Corp., supra, 271 F. at page 604 the court said: “It is unnecessary to say that we are deciding the case before us. Here we have found, from all the facts, both in­fringement of a trade-mark and unfair competition. We are not to be under­stood as intimating any opinion as to whether plaintiff has or has not any ex­clusive rights in either of the words which make up the trade-mark, when either is used separately from the other, and un­der circumstances in which there is no at­tempt by a competitor to use plaintiff’s property to plaintiff’s damage.”

No reported case has come to our attention which distinctly holds that the word “cola” cannot be used as part of a name of a beverage provided that the whole name is not confusingly similar to Coca-­Cola. It is urged, however, that we should make such a decision in this case for the reasons, which found favor in the District Court, that no such thing as a cola bever­age in the present sense of the term, was known or spoken of prior to the advent of Coca-Cola in 1886, and that the Coca-Cola Company has always asserted its claim to the exclusive use of the term. In our opin­ion, these considerations, even if sustained by the evidence, are not controlling in the face of the fact that the word “cola” does not today indicate the plaintiff’s product but a class of drinks to which the goods of the defendants and many other com­petitors belong. The applicable rule, sup­ported by authority, is thus stated in the Restatement of Torts: “§ 735. (1) A designation which is initially a trade-mark or trade name ceases to be such when it comes to be generally understood as a generic or descriptive designation for the type of goods, services or business in con­nection with which it is used.” Comment (a) to the foregoing sub-section (1) reads as follows: “Significance of change in meaning. When one has a monopoly of the initial distribution of a specific article over a period of time, and especially if the descriptive name for the article is one difficult to pronounce or remember, there is a likelihood that the designation which he adopts as his trade-mark for the article will be incorporated into the language as the usual generic designation for an ar­ticle of that type. When that happens, the designation becomes merely descrip­tive of the goods and no longer identifies a particular brand or performs any of the functions of a trade-mark or trade name. Moreover, the designation must then be used by others if there is to be any effective competition in the sale of the goods. It is immaterial that the per­son first adopting the designation made every reasonable effort to avoid this re­sult or that the designation was coined by him and derived meaning only from his use. The designation may be used by others, subject to the limitations of Sub­-Section (2) and of Sec. 712 relating to fraudulent marketing.” See, also, Com­ment (b).

The following cases supporting the text deal with the competitive use of the full name applied as a trade-mark to a well known article of commerce; they are all the more persuasive of the decision that should be reached when dealing with only a part of the name of the plaintiff’s bev­erage, that, taken by itself, has never been the name by which that beverage has been known to the public: DuPont Cellophane Co. v. Waxed Products Co., 2 Cir., 85 F.2d 75, certiorari denied Du Pont De Nemours & Co. v. Waxed Products Co., 299 U.S. 601, 57 S.Ct. 194, 81 L.Ed. 443; Id, 304 U.S. 575, 58 S.Ct. 1047, 82 L.Ed. 1539, rehearing denied 305 U.S. 672, 59 S.Ct. 227, 83 L.Ed. 436; Bayer Co. v. United Drug Co., D.C.S.D.N.Y, 272 F. 505; Ford v. Foster, [1872] L.R., 7 Ch.­App. 611; Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 59 S.Ct. 109, 83 L.Ed. 73; Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 16 S.Ct. 1002, 41 L.Ed. 118; Cf. Saxlehner v. Eisner & Mendelson Co., 179 U.S. 19, 21 S.Ct. 7, 45 L.Ed. 60; Saxlehner v. Wagner, 216 U.S. 375, 30 S.Ct. 298, 54 L.Ed. 525; Selchow v. Baker, 93 N.Y. 59, 45 Am.Rep. 169; N.­K. Fairbank Co. v. Central Lard Co., C.C. N.Y., 64 F. 133.

With this rule in mind, we can realize the full significance of the evidence that the word “cola” was originally adopted in part for its descriptive properties, and has since become a generic term, used in common by manufacturers as part of the trade-names for their products; and the evidence of plaintiff’s witnesses that the word indicates to them only a product of the Coca Cola Company is seen to be en­titled to little weight. See the discussion of the evidence in DuPont Cellophane Co. v. Waxed Products Co., 2 Cir., 85 F.2d 75, 80. When products of a similar nature are extensively advertised and widely sold, the possibility of some confusion between the goods of competitors and the goods of the principal producer cannot always be avoided; but under the circumstances per­taining to the manufacture and sale of “Cola drinks”, the amount of confusion in the absence of fraud will be negligible and may be disregarded. See, John Mor­rell & Co. v. Doyle, 7 Cir., 97 F.2d 232, 237; Bliss, Fabyan & Co. v. Aileen Mills, 4 Cir., 25 F.2d 370, 372. Our conclusion is that there is no infringement of the plaintiff’s trade-mark by the mere use of such names as Dixi Cola or MarBert the Distinctive Cola.

We are, however, in accord with the conclusion of the District Court that the conduct of the defendants has been such as to justify a decree restricting their business activities in the future along certain lines. The evidence amply justi­fies the finding that distributors of their products in New England, New York and St. Louis, and to a less extent in Balti­more, have attempted to sell and have sold their syrup to customers, engaged in the fountain trade, with the understand­ing that the drink made therefrom should be sold as and for Coca-Cola. The of­ficers of the defendant corporation had knowledge of these activities and partici­pated therein. The sale of syrup to the fountain trade constituted about ten per cent of the total business of the defendant.

The evidence also justifies the finding that the bottled beverage made by bottlers from defendant’s concentrate was passed off as Coca-Cola in various bars and tav­erns. It is difficult to ascertain how wide­spread this practice has been, but there is some evidence that an officer of the corporation encouraged the practice. The defendants were also fully aware of the use of the infringing word “Lola-Kola” by bottlers, and indeed agreed to place this word on all packages of its concen­trate sold to Lola Bottlers, Inc. Under these circumstances, it is a reasonable con­clusion that the defendants have conspired with their customers to palm off their goods for those of the Coca-Cola Com­pany whenever it was safe to do so.

The remedy for these illegal acts, which appears in the decree, is the issuance of an injunction against the defendants en­joining them from committing any acts calculated to cause any product other than the plaintiff’s to be known or sold as “Coca-­Cola” or “Koke”, or any colorable imita­tion thereof. The defendants are also en­joined “(f) From giving to any part of their merchandise not sold by defendants, their agents or distributors, in bottles to consumers, a color imitating or resembling the color of plaintiff’s product, if or when defendants know, or in the exercise of reasonable care should know, that the pur­chaser thereof intends to dispense such merchandise to the consumer other than in bottles, or intends to bottle the beverage made from such product and to use on the bottles, labels or caps some extrinsic, deceiving element that in conjunction with the color imitating plaintiff’s color enables such purchaser to pass off his, her or their product for plaintiff’s product.”

This portion of the decree is jus­tified by the facts. It is true as stated in Coca-Cola Co. v. Koke Co., 254 U.S. 143, 147, 41 S.Ct. 113, 114, 65 L.Ed. 189, that “the product including the coloring matter is free to all who can make it if no intrinsic deceiving element is present”. See, also, Coca-Cola Co. v. Williamsburgh Stopper Co., D.C.S.D.N.Y.,8; Coca-Cola Co. v. Hy-Po Co., D.C.E.D.N.Y., 1 F.Supp. 644. But it has also been held that the copy­ing of the color of the drink may be en­joined when the act is a part of a scheme of unfair competition. Coca-Cola Co. v. Gay-Ola Co., 6 Cir., 200 F. 720; Coca-Cola Co. v. Hy-Po Co., supra.

The decree of the District Court will therefore be affirmed except insofar as it adjudicates an infringement by the use of the names Dixi Cola, Marbert Cola and Marbert the Distinctive Cola, or prohibits the use of said names or of any name which includes the word “Cola”, or from supplying the product on calls for “cola” or from committing any acts calculated to cause its product to be known as “cola”.

Modified.

1

See, also, Graf Bros., Inc. v. Marks, D.C.E.D.N.Y.1929, 41 F.2d 167; Caron Corp. v. Maison Jeurelle-Seventeen, Inc., D.C.S.D.N.Y.1938, 26 F.Supp. 560; Col­burn v. Puritan Mills, 7 Cir., 1939, 108 F.2d 377; (the court regarded the plain­tiff’s mark as descriptive but did not rest its discussion on this ground); Thomas Kerfoot & Co. v. Louis K. Liggett Co., 1 Cir., 1933, 67 F.2d 214; Turner & Sey­mour Mfg. Co. v. A. & J. Mfg. Co., 2 Cir., 1927, 20 F.2d 298; Valvoline Oil Co. v. Havoline Oil Co., D.C.S.D.N.Y.1913, 211 F. 189; Crowell Pub. Co. v. Italian Monthly Co., Inc., D.C.S.D.N.Y.1928, 28 F.2d 613; Social Register Ass’n v. Mur­phy, C.C.D.R.I.1904, 128 F. 116; Glen­more Distilleries Co. v. National D. Prod. Corp., D.C.E.D.Va., 23 F.Supp. 928, af­firmed, 4 Cir., 101 F.2d 479; Pepsi-Cola Co. v. Krause Bottling Co., 4 Cir., 92 F.2d 272.

2

Lindley—The Treasury of Botany, Longmans, Green & Co., 1874, pp. 311, 312.

The Dispensatory of the United States of America, 13th Ed., pp. 1700-1701.

American Journal of Pharmacy, Janu­ary, 1883, pp. 27-28.

“The Kola Nut”, The Druggists’ Circu­lar and Chemical Gazette, February 1883, p. 19.

“The Kola Nut”, Journal of The Chemi­cal Society, 1884, pp. 863, 864;

“A New Idea”, June-July, 1884, p. 327.

“Notes on Kola Nut”, The American Druggist, July 1885, pp. 133, 134.

“Kola and Kola Paste”, The American Druggist, August, 1886, pp. 155, 156.

3

No opinion for publication.

4

Murray’s A New English Dictionary, 1893, Vol. II, pp. 606, 607.

Webster’s New International Diction­ary, 2d Ed., Unabridged, 1939, p. 1374. Encyclopaedia Americana, 1922.

Ernest E. Stanford, Economic Plants, 1934, pp. 527, 528.

“Composition and Food Value of Bot­tled Soft Drinks”, Yearbook of the U.S. Dept. of Agriculture, 1918, p. 116.

“Have A Coke”, Consumer’s Digest, Sept., 1939, pp. 37-39.

5

No opinion for publication.

6

Cross-appeals in this case to the Privy Council have been allowed.

7

No opinion for publication.

8

No opinion for publication.

Circuit Court of Appeals, Second Circuit.

No. 89.

CHENEY BROS. v. DORIS SILK CORPORA­TION.

October 21, 1929.

Harry D. Nims, of New York City (Min­ium De S. Verdi and Wallace H. Martin, both of New York City, on the brief), for appellant.

Epstein So Bros., of New York City (Ar­thur J. Brothers, of New York City, of counsel), for appellee.

Before MANTON, L. HAND, and SWAN, Circuit Judges.

L. HAND, Circuit Judge.

The plaintiff, a corporation, is a manufacturer of silks, which puts out each season many new pat­terns, designed to attract purchasers by their novelty and beauty. Most of these fail in that purpose, so that not much more than a fifth catch the public fancy. Moreover, they have only a short life, for the most part no more than a single season of eight or nine months. It is in practice impossible, and it would be very onerous if it were not, to se­cure design patents upon all of these; it would also be impossible to know in advance which would sell well, and patent only those. Besides, it is probable that for the most part they have no such originality as would sup­port a design patent. Again, it is impossible to copyright them under the Copyright Act (17 USCA § 1 et seq.), or at least so the authorities of the Copyright Office hold. So it is easy for any one to copy such as prove successful, and the plaintiff, which is put to much ingenuity and expense in fabricating them, finds itself without protection of any sort for its pains.

Taking advantage of this situation, the defendant copied one of the popular designs in the season beginning in October, 1928, and undercut the plaintiff’s price. This is the injury of which it complains. The defend­ant, though it duplicated the design in ques­tion, denies that it knew it to be the plain­tiff’s, and there thus arises an issue which might be an answer to the motion. However, the parties wish a decision upon the equity of the bill, and, since it is within our power to dismiss it, we shall accept its allegation, and charge the defendant with knowledge.

The plaintiff asks for protection only during the season, and needs no more, for the designs are all ephemeral. It seeks in this way to disguise the extent of the pro­posed innovation, and to persuade us that, if we interfere only a little, the solecism, if there be one, may be pardonable. But the reasoning which would justify any inter­position at all demands that it cover the whole extent of the injury. A man whose de­signs come to harvest in two years, or in five, has prima facie as good right to pro­tection as one who deals only in annuals. Nor could we consistently stop at designs; processes, machines, and secrets have an equal claim. The upshot must be that, when­ever any one has contrived any of these, oth­ers may be forbidden to copy it. That is not the law. In the absence of some recog­nized right at common law, or under the stat­utes—and the plaintiff claims neither—a man’s property is limited to the chattels which embody his invention. Others may imitate these at their pleasure. Flagg Mfg. Co. v. Holway, 178 Mass. 83, 59 N. E. 667; Keystone Co. v. Portland Publishing Co., 186 F. 690 (C.C.A. 1); Heide v. Wallace, 135 F. 346 (C.C.A. 3); Upjohn Co. v. Merrell Co., 269 F. 209 (C.C.A. 6); Hud­son Co. v. Apco Co. (D.C.) 288 F. 871; Crescent Tool Co. v. Kilborn & Bishop Co., 247 F. 299 (C.C.A. 2); Hamilton Co. v. Tubbs Co. (D.C.) 216 F. 401; Montegut v. Hickson, 178 App. Div. 94, 164 N. Y. S. 858.

This is confirmed by the doctrine of "non­functional” features, under which it is held that to imitate these is to impute to the copy the same authorship as the original. Enter­prise Co. v. Landers, 131 F. 240 (C.C.A. 2); Yale & Towne Co. v. Adler, 154 F. 37 (C.C.A. 2); Rushmore v. Manhattan Co., 163 F. 939, 19 L. R. A. (N.S.) 269 (C.C.A. 2); Rushmore v. Badger Co., 198 F. 379 (C.C.A. 2); Fox v. Glynn, 191 Mass. 344, 78 N. E. 89, 9 L. R. A. (N.S.) 1096, 114 Am. St. Rep. 619. These decisions imply that, except as to these elements, any one may copy the original at will. Unless, there­fore, there has been some controlling au­thority to the contrary, the bill at bar stands upon no legal right and must fail.

Of the cases on which the plaintiff relies, the chief is International News Service v. Associated Press, 248 U.S. 215, 39 S. Ct. 68, 63 L. Ed. 211, 2 A. L. R. 293. Although that concerned another subject-matter—printed news dispatches—we agree that, if it meant to lay down a general doctrine, it would cover this case; at least, the language of the majority opinion goes so far. We do not believe that it did. While it is of course true that law ordinarily speaks in general terms, there are cases where the occasion is at once the justification for, and the limit of, what is decided. This appears to us such an instance; we think that no more was cov­ered than situations substantially similar to those then at bar. The difficulties of under­standing it otherwise are insuperable. We are to suppose that the court meant to create a sort of common-law patent or copyright for reasons of justice. Either would fla­grantly conflict with the scheme which Con­gress has for more than a century devised to cover the subject-matter.

Qua patent, we should at least have to decide, as tabula rasa, whether the design or machine was new and required invention; further, we must ignore the Patent Office whose action has always been a condition upon the creation of this kind of property. Qua copyright, although it would be simpler to decide upon the merits, we should equally be obliged to dispense with the conditions imposed upon the creation of the right. Nor, if we went so far, should we know whether the property so recognized should be limited to the periods prescribed in the statutes, or should extend as long as the author’s griev­ance. It appears to us incredible that the Supreme Court should have had in mind any such consequences. To exclude others from the enjoyment of a chattel is one thing; to prevent any imitation of it, to set up a mo­nopoly in the plan of its structure, gives the author a power over his fellows vastly great­er, a power which the Constitution allows only Congress to create.

The other cases are easily distinguishable. Board of Trade v. Christie, 198 U.S. 236, 25 S. Ct. 637, 49 L. Ed. 1031, went upon the fact that the defendants had procured their information through a breach of contract between the plaintiff and its subscribers, or some surreptitious and dishonest conduct. Hunt v. N. Y. Cotton Exchange, 205 U.S. 322, 27 S. Ct. 529, 51 L. Ed. 821, was an­other instance of the same kind. There is, indeed, language in National Tel. News Co. v. West. Un. Tel. Co., 119 F. 294, 60 L. R. A. 805 (C.C.A. 7), which goes further, but we take it that the authoritative statement of the doctrine must be found in Board of Trade v. Christie (Board of Trade v. Tuck­er) 221 F. 305 (C.C.A. 2). Though the limitations there imposed have indeed been extended in International News Service v. Associated Press, they still comprise no more than cases involving news and perhaps mar­ket quotations. Prest-O-Lite v. Bogen (C.C.) 209 F. 915, and Prest-O-Lite v. Davis (D.C.) 209 F. 917, were cases of passing off. In Kiernan v. Manhattan Co., 50 How. Prac. (N.Y.) 194, Dodge v. Construction Co., 183 Mass. 63, 66 N. E. 204, 60 L. R. A. 810, 97 Am. St. Rep. 412; Exchange Co. v. Gregory, L. R. (1896) 1 Q. B. 147 (C.A.) and Exchange Co. v. Central News, L. R. (1897) 2 Ch. 48, again, either there was a breach of contract between the plaintiff and its subscriber, or the defendant had dishon­estly procured the information. They are like Board of Trade v. Christie.

True, it would seem as though the plain­tiff had suffered a grievance for which there should be a remedy, perhaps by an amend­ment of the Copyright Law, assuming that this does not already cover the case, which is not urged here. It seems a lame answer in such a case to turn the injured party out of court, but there are larger issues at stake than his redress. Judges have only a lim­ited power to amend the law; when the sub­ject has been confided to a Legislature, they must stand aside, even though there be an hiatus in completed justice. An omission in such cases must be taken to have been as de­liberate as though it were express, certainly after long-standing action on the subject-­matter. Indeed, we are not in any position to pass upon the questions involved, as Brandeis, J., observed in International News Service v. Associated Press. We must judge upon records prepared by litigants, which do not contain all that may be relevant to the issues, for they cannot disclose the con­ditions of this industry, or of the others which may be involved. Congress might see its way to create some sort of temporary right, or it might not. Its decision would certainly be preceded by some examination of the result upon the other interests af­fected. Whether these would prove para­mount we have no means of saying; it is not for us to decide. Our vision is inevitably contracted, and the whole horizon may con­tain much which will compose a very dif­ferent picture.

The order is affirmed, and, as the bill cannot in any event succeed, it may be dis­missed, if the defendant so desires.