Cheryl Janky v. Lake County Convention and Vis ( 2009 )

In the
United States Court of Appeals
For the Seventh Circuit
Nos. 07-2350, 07-2762 & 08-1606
C HERYL JANKY,
Plaintiff-Appellee/
Cross-Appellant,
v.
L AKE C OUNTY C ONVENTION AND
V ISITORS B UREAU,
Defendant-Appellant/
Cross-Appellee.
Appeals from the United States District Court
for the Northern District of Indiana, Hammond Division.
1
No. 05 C 217—Andrew P. Rodovich, Magistrate Judge.
A RGUED O CTOBER 28, 2008—D ECIDED A UGUST 3, 2009
Before B AUER, R IPPLE, and E VANS, Circuit Judges.
E VANS, Circuit Judge. This over-litigated case, involving
a song by a doo-wop group, comes to us with 18 district
1
Most of the heavy lifting in this case was done by Magistrate
Judge Paul R. Cherry. Judge Cherry recused himself after the
case was tried to a jury, and Magistrate Judge Andrew P.
Rodovich picked it up at that point.
2 Nos. 07-2350, 07-2762 & 08-1606
court orders and memorandum opinions spread over a
combined 239 pages. The district court’s 46-page docket
contains a staggering 371 entries. And the briefs of the
parties on appeal are a bit unfocused to say the least. But
although it’s a tough job, someone has to do it, so with
shoulder to the wheel, we forge on.
Lake County, Indiana, is the home of Gary, a gritty
industrial town southeast of Chicago. But there’s much
more to Lake County than Gary—including miles of
pristine beachfront along the Indiana Dunes National
Lakeshore—and the Lake County Convention and
Visitors Bureau (the Bureau) wants you to know that.
To get the word out, the Bureau commissioned a tune
singing the county’s praises, the distribution of which
led to this lawsuit for copyright infringement. Cheryl
Janky says she composed the song and never gave the
Bureau permission to use it. The Bureau maintains that
Janky was only a co-author and that it had the authority
to use the song by licensing it from the other song-
writer, Henry Farag. The district court entered partial
summary judgment in favor of Janky—deciding that she
was the sole author—and a jury awarded her $100,000
in damages. The Bureau now appeals, contending that
summary judgment was improper given the evidence of
co-authorship. In the alternative, the Bureau submits
that the district court erred when it denied a motion
for remittitur or new trial in light of Janky’s failure to
mitigate damages. Janky cross-appeals from an order
concerning the imposition of sanctions against her
counsel under Rule 11.
Nos. 07-2350, 07-2762 & 08-1606 3
Before we get to the underlying facts, we need to assess
our jurisdiction. See Mostly Memories, Inc. v. For Your Ease
Only, Inc., 526 F.3d 1097 (7th Cir. 2008) (“A court of appeals
has an obligation to examine its jurisdiction sua sponte,
even if the parties fail to raise a jurisdictional issue.”)
(quoting Wingerter v. Chester Quarry Co., 185 F.3d 657, 660
(7th Cir. 1998)). The Bureau has made this task more
complicated than usual because its brief is defective. At
oral argument the Bureau clarified that it seeks, first and
foremost, review of the summary judgment decision.
However, that is not at all apparent from the Bureau’s
brief, which neither references the lower court’s sum-
mary judgment opinion within the jurisdictional state-
ment nor includes that opinion within its short
appendix, all in violation of the applicable rules. See Fed. R.
App. P. 28(a)(4), 30(a); 7th Cir. R. 28(a)(2), 30(a). Janky’s
brief isn’t any better. Although we take these rules seri-
ously, we are nonetheless willing to forgive the violation
in this case because we do in fact have jurisdiction. To
be sure, the Bureau was not permitted to appeal as of
right following the grant of partial summary judgment.
See Liberty Mut. Ins. Co. v. Wetzel, 424 U.S. 737, 744
(1976) (“[P]artial summary judgment[s] limited to the
issue of [a] petitioner’s liability . . . are by their terms
interlocutory, see Fed. Rule Civ. Proc. 56(c), and where
assessment of damages . . . remains to be resolved have
never been considered to be ‘final’ within the meaning
of 28 U.S.C. § 1291.”). So we do not fault the Bureau for
waiting to appeal until the denial of its motion for new
trial or remittitur. And though the Bureau did a poor job
of explaining exactly what it seeks, we are satisfied that
4 Nos. 07-2350, 07-2762 & 08-1606
the denial of the motion for new trial or remittitur impli-
cates all prior orders, including the decision on sum-
mary judgment. With that sorted out, then, we can turn
to the facts.
Janky and Farag were members of “Stormy Weather,” an
Indiana-based doo-wop group.2 Farag heard through the
grape vine that the Bureau was looking for a song to
represent Lake County, and he suggested that the band
might want to give it a shot. Janky took the initiative.
After Farag made the announcement, she got to work
writing the music and lyrics for a tune she called “Wonders
2
Doo-wop is characterized by vocal harmonies. It became
popular in the 1950s and 1960s with the arrival of groups like
The Five Satins (“In the Still of the Night”), The Platters (“My
Prayer”), The Skyliners (“Since I Don’t Have You”), The
Turbans (“When You Dance”), The Penguins (“Earth Angel”),
The Crystals (“Da Doo Ron Ron”), Frankie Lymon and the
Teenagers (“Why Do Fools Fall in Love?”), and the incompara-
ble Drifters (“There Goes My Baby,” “This Magic Moment,”
“Save the Last Dance for Me,” “Under the Boardwalk,” and “Up
on the Roof”). According to Stormy Weather’s Web site, the
group is “the chief proponent of the nation’s revitalized a
cappella doo-wop sound.” Stormy Weather has produced 14
albums, including “Street Carols” (a “holiday classic,” says its
Web site) and “Doo-Wop & Lollipops.” The group has also
performed with the likes of Smokey Robinson, Franki Valli,
and Dion Francis DiMucci (who, as Dion, made it big with hits
like “Runaround Sue” and “The Wanderer”). The group
reports that it has traveled around the world keeping “the a
cappella sounds of the street corner alive, well, and kickin’.”
www.stormy-weather.com (last visited Nov. 26, 2008).
Nos. 07-2350, 07-2762 & 08-1606 5
of Indiana” (a.k.a. “Indiana”). When it was complete,
Janky obtained a copyright for the song (in May 1999),
listing herself as the sole author. Janky then showed the
song to Farag. Although Farag thought it had potential,
he recommended revising the lyrics to better suit the
Bureau’s vision. Pursuant to a conversation with the
Bureau’s chief executive officer, Farag suggested that
the song needed to focus more on Lake County in particu-
lar, as opposed to Indiana in general, and include refer-
ences to the area as “Chicago’s neighboring south
shore” and to its ethnic diversity. Janky testified that
Farag’s recommendations, which she adopted, accounted
for 10 percent of the lyrical content. With the song re-
vamped, Janky filed a new copyright registration form
in December 1999, this time listing Farag as a co-author
who provided “additional lyrics” and styling the effort a
“joint work.” Similarly, she filed a document with the
American Society of Composers, Authors and Publishers
(ASCAP) stating that Farag held a 10 percent “ownership
share.” She now says that was all a mistake.
According to Janky, Farag was not a co-author and
she did not intend to give him credit as such. Rather,
she testified that she placed Farag’s name on the registra-
tion form “as an indication of [her] gratitude . . . and to
demonstrate that [she] appreciated every little bit of
support.” She said she now realizes that the proper way
to acknowledge a “de minimis” contribution is by
making a notation on the album cover.
Farag sees it differently. He says the lyrical changes
were “significant,” and revisions were also made to the
melody.
6 Nos. 07-2350, 07-2762 & 08-1606
This difference of opinion did not manifest itself im-
mediately, however. For the time being, there was music
to be made. Janky, Farag, and the rest of Stormy Weather
recorded a demo of the song at Thunderclap Studios in
Hammond, Indiana. They followed that up with a
music video and presented their work to the Bureau for
review. The Bureau was satisfied—it would be a great
marketing tool. And Stormy Weather was a generous
partner. Rather than seeking to extract a profit from
the venture, Stormy Weather agreed to allow the Bureau
to use the video and song in return for the costs of pro-
duction. Beyond that, the group decided the publicity
generated from the Bureau’s use of the material would
be payment enough. Farag issued a nonexclusive license
to the Bureau to that effect.
The Bureau’s first use of the song came on December 1,
1999. The Bureau opened a new visitor’s center that day,
and it commemorated the occasion not only by playing
the music video, but also with a live performance.
When Stormy Weather completed production of the
album on which the song ultimately appeared—“Doo-It
Doo-Wop,” published by Street Gold Records—in June
of 2000, the Bureau purchased 1,500 copies to resell at the
visitor’s center.3 Beginning around the same time, the
Bureau treated callers placed on hold to the sounds of
Stormy Weather, and it frequently played the song at
3
When it released the album, Stormy Weather renamed the
tune “Lake County, Indiana.” There is no dispute, however,
that this was the same song registered in December 1999.
Nos. 07-2350, 07-2762 & 08-1606 7
the visitor’s center and used it in promotional ads. So
passed the next three years.
On July 15, 2003, Janky filed yet another copyright
registration form, ostensibly to correct the “mistake” she
had made in the previous form. Janky omitted Farag’s
name, listing herself as the sole author of the music, lyrics,
and “arrangement performance.” And at some point in
time she notified the Bureau that she was the exclusive
owner. However, the Bureau did not stop using the
tune until she filed this lawsuit against it in October 2003.
Janky alleged in her complaint (just like in her latest
registration form) that she was the sole author of the
song and had a valid copyright in the tune to the ex-
clusion of Farag. As a result, so the theory went, Farag’s
license to the Bureau was without effect and the latter’s
use of the song illegal. Although Janky originally filed
her complaint in the Eastern District of Michigan and
named Farag and Street Gold as additional defendants,
the case was transferred to the Northern District of
Indiana early, and the matter was stayed against Farag
and Street Gold pursuant to bankruptcy proceedings.
The parties thereafter consented to have a magistrate
judge handle the case. After conducting discovery, cross-
motions for summary judgment were filed. In March of
2006, the magistrate judge issued his summary judg-
ment decision in favor of Janky. A jury trial, on damages,
was conducted a year later, in March of 2007.
The main issue—both in the district court and here on
appeal—is whether Janky holds the copyright to the
song by herself or whether she shares it with Farag as a co-
8 Nos. 07-2350, 07-2762 & 08-1606
author. In general, individuals are co-authors of a work
only where they (1) intend to create a joint work; and
(2) contribute independently copyrightable material.
Erickson v. Trinity Theatre, Inc., 13 F.3d 1061, 1071 (7th Cir.
1994). Applying this standard, the magistrate judge
found in favor of Janky on both scores. First, he found
that a jury would have no choice but to conclude that
Farag and Janky didn’t intend to be co-authors at the
time of creation. Second, he found that Farag’s contribu-
tions were nothing more than “minimal revisions” of
a song Janky already composed.
We disagree with that analysis, which we review de novo.
Trask-Morton v. Motel 6 Operating L.P., 534 F.3d 672, 677
(7th Cir. 2008). But before we get too much further,
a bit more on the background law.
A plaintiff alleging copyright infringement must estab-
lish two elements: “(1) ownership of a valid copyright,
and (2) copying of constituent elements of the work that
are original.” Feist Publ’ns, Inc. V. Rural Tel. Serv. Co., 499
U.S. 340, 361 (1991). Janky’s satisfaction of the second
element is in little dispute. An individual “copies” an-
other’s work for purposes of copyright law if he plays
it publicly or distributes copies without the copyright
owner’s authorization. Twentieth Century Music Corp. v.
Aiken, 422 U.S. 151, 157 (1975); see also ProCD, Inc. v.
Zeidenberg, 86 F.3d 1447, 1454 (7th Cir. 1996) (“Copyright
law forbids duplication, public performance, and so on,
unless the person wishing to copy or perform the work
gets permission[.]”). The Bureau concedes that it played
and distributed the song that Janky claims as her sole
Nos. 07-2350, 07-2762 & 08-1606 9
creation. And no one questions that the song enjoys
copyright protection. The question is, was Janky the only
author? If not—if Farag was a co-author—then Janky
does not own the copyright exclusively, and the Bureau
had a right to use the song with Farag’s permission.
On, then, to the legal framework of joint authorship.
Under 17 U.S.C. § 201(a), “[t]he authors of a joint work are
co-owners of copyright in the work.” In other words, “the
joint authors hold undivided interests in [the] work,
despite any differences in each author’s contribution.”
Erickson, 13 F.3d at 1068. The benefits of co-authorship
are therefore significant: each author may use or
license the joint work. Id.But when does a song qualify as a “joint work”? Section
101 of the Copyright Act defines a joint work as “a work
prepared by two or more authors with the intention
that their contributions be merged into inseparable or
interdependent parts of a unitary whole.” 17 U.S.C. § 101.
In Erickson, we determined that this language requires
(1) intent to create a joint work; and (2) contribution of
independently copyrightable material.4 Erickson, 13 F.3d
4Later, in Gaiman v. McFarlane, 360 F.3d 644, 658-59 (7th Cir.
2004), we identified an exception to the requirement of inde-
pendent copyrightability. However, that exception obtains
only when none of the constituent parts could pass the test
of copyrightability due to “the nature of the particular creative
process,” e.g., the creation of a comic book by a writer, a
penciler, an inker, and a colorist. Id. at 659. The exception is not
(continued...)
10 Nos. 07-2350, 07-2762 & 08-1606
at 1068, 1071. With respect to the first element, we ex-
plained that the intent prong does not have to do with
the collaborators’ intent to recognize each other as co-
authors for purposes of copyright law; the focus is on the
parties’ intent to work together in the creation of a single
product, not on the legal consequences of that collabora-
tion. See id. At 1068-69. We also noted that “ ‘billing’ or
‘credit’ may be evidence of intent to create a joint work.”
Id. at 1072 (internal quotation marks omitted). As to the
second element, we rejected Professor Nimmer’s “de
minimis” test, which posits that a joint work exists when-
ever there is “more than a de minimis contribution by
each author.” Id. at 1070. The standard we embraced
requires more than that: a contribution that is independ-
ently copyrightable. Measured against this standard,
we held that the putative joint author of a play was not
a joint author where his contributions were limited to
“[i]deas, refinements, and suggestions.” Id. at 1072.
“[S]tanding alone,” we said, these contributions were
“not the subject of copyright.” Id.
As in Erickson, the first question for us is whether
Farag and Janky intended to create a joint work. Janky
certainly denies that now, but that is irrelevant. The issue
is whether Janky and Farag “intended to be joint authors
at the time the work was created.” Id. at 1070. We think
they did, so much so that Farag was entitled to sum-
4
(...continued)
applicable in this case because Janky’s work was copyrightable
before Farag got on board.
Nos. 07-2350, 07-2762 & 08-1606 11
mary judgment on this point. Unlike Erickson, where an
individual made minor suggestions but the final decision
belonged “entirely” to the principal playwright, id. at
1072, the song here was the product of Janky and Farag.
Farag wielded considerable control over what the song
finally looked like; one could even say he demanded the
changes. More important, however, is the evidence of
intent supplied by Janky herself. We observed in
Erickson that crediting another person as a co-author is
strong evidence of intent to create a joint work. See id. at
1072; see also Childress v. Taylor, 945 F.2d 500, 508 (2d Cir.
1991) (“Though ‘billing’ or ‘credit’ is not decisive in all
cases and joint authorship can exist without any
explicit discussion of this topic by the parties, consider-
ation of the topic helpfully serves to focus the fact-
finder’s attention on how the parties implicitly regarded
their undertaking.”) (footnote omitted). In this case, we
have such an acknowledgment—Janky named Farag a co-
author and deemed the song a “joint work.” Janky’s post
hoc rationalization—that she only intended to express
her gratitude—is simply at odds with the significant
contributions made by Farag and Janky’s identification
of Farag as a co-author in the copyright registration
form. Just as litigants “cannot create sham issues of fact
with affidavits that contradict their prior depositions,”
Lorillard Tobacco Co. v. A & E Oil, Inc., 503 F.3d 588, 592 (7th
Cir. 2007) (internal quotation marks omitted), Janky’s
affidavit cutting the other way is entitled to little weight.
A reasonable jury could only conclude that Janky and
Farag intended to create a joint work.
As to the second element—independent copyright-
ability—we think the situation here differs considerably
12 Nos. 07-2350, 07-2762 & 08-1606
from Erickson. Farag’s contributions went beyond general
“[i]deas, refinements, and suggestions.” They were con-
crete expressions and thus pass the test of copyrightability
where mere ideas fail. Gaiman, 360 F.3d at 658. In addi-
tion, while Farag’s changes may have accounted for only
10 percent of the lyrics, they were significant. They were
important not only to the final sound, but also to its
commercial viability. Before Farag became involved, the
song celebrated the charm of Indiana as a state; Farag
shifted the focus to Lake County. Without Farag’s input,
it is unlikely that the Bureau would have embraced the
song the way it did. And though we think any reason-
able jury would agree with us on this point, that doesn’t
actually matter. Under our precedent, “copyrightability
is always an issue of law.” Gaiman, 360 F.3d at 648
(citing Publications Int’l, Ltd. v. Meredith Corp., 88 F.3d
473, 478 (7th Cir. 1996)).
Despite this conclusion, however, we admit that this is
a close case. Farag contributed ideas and gave expression
to those ideas, but had he done much less, his work
would not garner the protection of copyright. We have
observed in the past that published creations are almost
always collaborative efforts to some degree—peers
make suggestions, editors tweak words, and so forth. See
id. at 658. Were we to deem every person who had a
hand in the process a co-author, “copyright would ex-
plode.” Id. On the other hand, the very purpose of copy-
right law is to promote the progress of the arts and sci-
ences, U.S. CONST. art. I, § 8, cl. 8; Wildlife Express Corp. v.
Carol Wright Sales, Inc., 18 F.3d 502, 507 (7th Cir. 1994), a
purpose that is defeated if important contributions are
Nos. 07-2350, 07-2762 & 08-1606 13
denied copyright protection. Placing a contribution in
one hopper or the other is not always an easy task, and
the judge here made a commendable effort. In the end,
though, this doo-wop ditty is a joint work.5
That leaves only one loose end—Janky’s cross-appeal.6
After the district court handed down its summary judg-
ment decision, it levied $2,500 in sanctions against
Janky’s attorney, Gregory Reed, under Rule 11 of the
Federal Rules of Civil Procedure. The court found that
Reed filed a motion for injunctive relief without any
legal or factual support. (Reed wanted the Bureau to
stop selling the song, but it hadn’t done so for several
years.) When the jury returned a verdict for Janky in
the amount of $100,000, the parties jointly sought to
reduce the judgment by the amount owed in Rule 11
sanctions. It is only logical, however, that Reed was the
driving force behind this request—the cost to the
Bureau would be the same either way, but paying the
5
Janky may still have a cause of action against Farag for an
accounting of profits, see Gaiman, 360 F.3d at 652; Erickson,
13 F.3d at 1068, but that possibility has no bearing on the
appeal before us.
6
The Bureau also appealed from the district court’s ruling on
another motion for sanctions (Court of Appeals Case No. 08-
1606). However, the Bureau never mentioned that issue in
its principal or reply brief—not so much as an argument
header! Perhaps the Bureau was overwhelmed by the sheer
amount of paper filed in this case. Whatever the reason, this
issue is waived for lack of development. See Kochert v.
Adagen Med. Int’l, Inc., 491 F.3d 674, 679 (7th Cir. 2007).
14 Nos. 07-2350, 07-2762 & 08-1606
Rule 11 sanctions out of Janky’s judgment would save
Reed $2,500. In other words, Reed sought to use funds
from his client’s victory to pay for a penalty he had in-
curred all by himself. The district court was not im-
pressed; not only would this proposal shift the burden to
an innocent party (Janky), it would violate the terms of
Rule 11(c)(5)(A), which provides that monetary sanctions
shall not be imposed against a represented party for
frivolous legal contentions. Reed apparently does not
dispute the propriety of sanctions in the first instance,
but he insists that the court abused its discretion in deny-
ing his request for a setoff.7 We highly doubt that. But
we need not decide the issue because it is mooted by
our conclusion that the Bureau is entitled to summary
judgment—there is now no verdict from which sanc-
tions can be deducted.
For these reasons, the judgment is R EVERSED and the
case R EMANDED so that summary judgment can be
entered in favor of the Bureau, and for such further
proceedings that may be necessary.
7
That’s certainly how Reed framed the issue on the notice of
appeal and jurisdictional statement. However, to the extent
Reed thinks sanctions were inappropriate to begin with, we
have considered that issue and find no error.
Nos. 07-2350, 07-2762 & 08-1606 15
R IPPLE, Circuit Judge, dissenting. I agree with the major-
ity that the district court improperly granted Ms. Janky
summary judgment on the issue of copyright owner-
ship. However, I cannot agree with the majority’s conclu-
sion that the Bureau is entitled to summary judgment
under our precedent in Erickson v. Trinity Theatre, Inc., 13
F.3d 1061 (7th Cir. 1994). I therefore must respectfully
dissent.
In reviewing the district court’s grant of summary
judgment, “we consider only those matters that were
before the district court when it entered the judgment.”
Hildebrandt v. Ill. Dep’t of Natural Res., 347 F.3d 1014, 1024
(7th Cir. 2003) (citation and quotation marks omitted). To
establish that Ms. Janky and Farag intended to create a
joint work under Erickson, the Bureau needed to show
(1) that Farag and Ms. Janky “intended to be joint authors
at the time the work was created” and (2) that Farag’s
contributions to the song were independently
copyrightable. See Erickson, 13 F.3d at 1071. When the
district court considered Ms. Janky’s motion for sum-
mary judgment on copyright ownership, there was
little evidence regarding Farag’s intent to become a joint
author. In its motion opposing summary judgment, the
Bureau presented a certificate of registration for a joint
copyright as evidence of Farag’s intent. See R.71, Ex. 2.
However, Farag stated in his counterclaim that his
name was forged on the copyright application, which
cast doubt on the Bureau’s claim that Farag intended to
create a joint authorship. See R.64, Ex. B-1.
Farag stated in his declaration that he was an “owner
and/or co-owner” of the song, R.29, Ex. 6 at ¶ 6, and Ms.
16 Nos. 07-2350, 07-2762 & 08-1606
Janky’s declaration acknowledged that Farag revised
her original work “by 10%,” R.29, Ex. 1 at ¶ 5. Neverthe-
less, there was no evidence before the district court estab-
lishing that Farag intended to create a joint work, as
required under Erickson, 13 F.3d at 1071. Moreover,
Farag’s notice of affirmative defenses stated that Ms. Janky
did not own the copyrights at issue, R.64, Ex. B-2 at ¶ 8,
a view that undermines the Bureau’s claim that Farag
intended to create a joint authorship with Ms. Janky.
In finding that Farag intended to be a joint author, the
majority emphasizes the fact that “Farag wielded con-
siderable control over what the song finally looked
like” and that Ms. Janky credited him in the copyright
application. Ante, at 11. The factors of decisionmaking
and billing were discussed briefly in Erickson and at
greater length in a subsequent Second Circuit opinion. See
Thomson v. Larson, 147 F.3d 195, 202-03 (2d Cir. 1998) (citing
Erickson, 13 F.3d at 1071-72). However, even if we take
these factors into account in our analysis, the record at
summary judgment does not show that Farag possessed
the requisite intent to create a joint work. See Erickson,
13 F.3d at 1071. Consequently, the first requirement for
joint authorship has not been met.
I also believe that the Bureau has failed to establish
that Farag’s “contributions to the [work] were independ-
ently copyrightable.” See Erickson, 13 F.3d at 1071. As the
majority observes, we know that Farag’s contributions to
the lyrics were his suggestion to Ms. Janky that the song
focus on Lake County specifically, and the specific sug-
gestion that the song include a reference to “Chicago’s
Nos. 07-2350, 07-2762 & 08-1606 17
neighboring south shore” 1 and to its ethnic diversity.
These contributions do not rise above mere “[i]deas,
refinements, and suggestions.” Id. at 1072.
I do not think that the record before us allows us to
affirm summary judgment for Ms. Janky or to grant
summary judgment to the Bureau on the issue of copy-
right ownership. I would remand this case to the
district court for further proceedings on the merits.
1
Short phrases are generally not entitled to copyright protec-
tion. 37 C.F.R. § 202.1 (2004); see also Alberto-Culver Co. v. Andrea
Dumon, Inc., 466 F.2d 705, 711 (7th Cir. 1972). Consequently,
Farag’s addition of the phrase “Chicago’s neighboring
south shore” is not sufficient to establish that his contribu-
tion was independently copyrightable.
8-3-09