Penguin Hopes to Waddle Away From Suit Unhurt - TheStreet

Penguin Hopes to Waddle Away From Suit Unhurt

A six-year-old Dorothy Parker copyright case is finally coming to trial this month.
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Dorothy Parker is perhaps best known for the short poem, "News Item" -- "Men seldom make passes /At girls who wear glasses." But the literary lioness and legendary wit compiled three collections of her poetry during her lifetime.

Still, she let nearly a third of her early works essentially vanish because, according to literary critics, she considered them inferior.

So it's ironic that these "lost" poems are in the limelight as the subject of a six-year lawsuit.

The case, which comes to trial later this month, pits Stuart Y. Silverstein, a Los Angeles attorney, against Penguin Group, a unit of

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and one of the world's top three publishers of consumer books on the basis of sales.

And fittingly, the story of the "lost" poems has enough twists and turns to compete with any of Penguin's top sellers.

As I have chronicled in

The Wall Street Journal

, Silverstein sued the publishing house for copyright infringement in 2001. He alleges the company stole his book,

Not Much Fun: The Lost Poems of Dorothy Parker

and appropriated it for use in a Penguin book without giving him a dime, or any credit.

Parker earned her reputation as America's wittiest woman while a member of the Algonquin Round Table, a group of New York literati who met for lunch every day at the Algonquin Hotel in 1920s Manhattan.

Thirteen years ago, while researching a book on the Round Table, Silverstein found a large number of poems Parker hadn't published in a compilation. He collected and edited 122 poems and offered it as a book to Penguin, the publisher of Parker's works. Penguin offered Silverstein $2,000 for his work. The publisher said it wanted the collection for a complete compilation of Parker's poetry and to have someone other than Silverstein write the introduction.

Silverstein rejected the idea and took the book to Scribner, an imprint of

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publishing house Simon & Schuster. He wrote the introduction and received credit as the compilation editor. Then in 1999, Penguin published

Dorothy Parker: Complete Poems

, with Silverstein's book

Not Much Fun

in its entirety "comma for comma," he says, in a section entitled "Poems Uncollected by Parker." Silverstein received neither compensation nor attribution in the Penguin book.

Penguin didn't deny using Silverstein's book. It defended its actions by saying the poems were either part of the public domain or belong to the estate of Dorothy Parker, who died in 1967. But Silverstein has what is known as a compilation, or thin, copyright.

An editor of a compilation can assert a copyright on the underlying intellectual property if he contributes creativity and material beyond the original work. Sweat-of-the-brow research isn't copyrightable; neither is organizing the list in a typical way, such as chronological or alphabetical. The two sides asked for a summary judgment.

(Neither side owns the rights to the poems themselves, which Parker bequeathed to the National Association for the Advancement of Colored People.)

In depositions, Colleen Breese, the woman chosen to edit

Complete Poems

over Silverstein, testified to compiling the poems "the old way." She bought a copy of Silverstein's book, cut the pages out and literally made photocopies of the poems.

In April 2003, U.S. District Judge John F. Keenan found the global publishing house liable for copyright infringement. "The failure to credit Silverstein was willful ... deliberate and not inadvertent," he wrote in the ruling. In addition, the judge ruled that Penguin violated the Lanham Act, which forbids claiming another's work as one's own, and New York state law regarding unfair competition and trade practices.

Two months later, Keenan ordered Penguin to completely recall

Complete Poems

by notifying each of its customers that sold or distributed the book. Penguin was also ordered to run an ad about the recall in the trade publication,

Publisher's Weekly

, and offer reimbursement for all books returned.

"Judges have extensive powers, but it's quite unusual for a remedy to reach books that are no longer in the hands of the infringer," says Peter Jaszi, a professor at American University Law School. "So the idea of a recall is a very serious and relatively unusual remedy."

Penguin pulled the book but appealed the decision to the U.S. Court of Appeals for the Second Circuit.

According to precedent, a compiler of material previously published by others certainly may enjoy a copyright in the selection if "some minimal level" of creativity has been exercised in the process.

In the opinion of the appellate court, "material questions of fact exist as to whether Silverstein exercised creativity in selecting the works for his compilation. Those questions must be answered before the creativity, if any, in his selection process can be assessed. We ... remand for further findings."

The appellate court vacated, as too harsh, the permanent injunction from selling the book and sent the case back down to the District Court, where it will come to trial later this month.

While that might seem like a victory for Penguin, the company was unable to prevent the court from compelling two top executives, Penguin Group's worldwide chairman and Chief Executive John Makinson, and David Shanks, the chief executive of the Penguin Group (USA), from testifying.

Despite Penguin's claims that neither executive had knowledge of the incident in question, Keenan denied the claim in papers dated June 27. In one Keenan wrote, "Makinson is a party witness with a New York residence who may offer relevant testimony."

As for Shanks, Keenan wrote, "Based on the deposition testimony of Penguin's worldwide chief executive officer John Makinson, Shank's testimony could potentially speak to the willfulness of Penguin's alleged copyright infringement. According to Makinson, Shanks was 'aware of the substance of the Silverstein matter,' and Makinson 'relied on David

Shanks... to deal with the matter.'"

"We don't think there is a copyright issue here. We think this is factual material that anyone has a right to use," says Alex Gigante, Penguin Group USA's senior vice president for legal affairs. "If

Silverstein has found some undiscovered Parker poems, he's done a great bit of research, but everyone else has a right to use them."

Still, even though the injunction was lifted, the book has not been reissued.

"The appellate court said there were some details Judge Keenan had not considered," says Silverstein's attorney Mark Rabinowitz of Neal, Gerber & Eisenberg. "The issue to be decided now is whether Stuart's selection of poems shows a minimal level of creativity. If we establish minimal, more than trivial, creativity, then we have copyright protection for the entire compilation."

The trial is set to begin July 17. It will be a bench trial, which means Judge Keenan will serve as judge and jury. Also being called to testify are Penguin President Kathryn Court and former Penguin editors Michael Millman and Jane von Mehren, who is now a senior editor at Random House.

Should Penguin lose, the financial damages could run into the millions of dollars. But that would be a pinprick to the publisher's media-house parent, which earned a profit of $668.1 million last year. More likely, it could cast a black cloud over the reputation of one of the most highly respected houses in the publishing industry.

The 72-year-old company is a big part of the British publishing industry's history, including standing up for authors' rights. According to its Web site, Penguin revolutionized the book industry in 1935 by introducing the affordable paperback book with "good quality contemporary fiction." Ernest Hemingway and Agatha Christie were some of its first authors.

"Publishers and other enterprises in the creative sector want to be, and need to be, respectful of the talent and creativity of authors," says Professore Jaszi. "And if Penguin is found to have ridden over someone who was a creative person, and disregarded their rights, that would be a black eye for its reputation."