this case does not consist solely of "trade dress" and common
Plaintiff complains Defendants have appropriated specific
text and artwork from her book; text and artwork which is
subject to her copyright. Therefore, the issue we must address
is whether the artwork identified by Plaintiff, in conjunction
with the supporting text, warrants copyright protection. For
the purpose of this motion the court finds Ekern is the owner
of the copyright in the illustration contained in "Slacks."
Moreover, we find the identified text and artwork are
sufficiently removed from the realm of theories, ideas and
concepts to warrant copyright protection.
As Nimmer explains, the copyrightability of a work's subject
matter is one of the elements of "ownership." Nimmer §
1301.[A]. Registration of a copyright constitutes prima facie
proof of ownership. 17 U.S.C. § 410(c). Baldwin Cooke Co. v.
Keith Clark, Inc., 383 F. Supp. 650, 655 (N.D.Ill., aff'd.
505 F.2d 1250 (7th Cir. 1974). Defendants, therefore, have the
burden of overcoming Plaintiff's prima facie proof of the
copyrightability of the subject matter of her work. The Ninth
Circuit's decision in Landsberg v. Scrabble Crossword Game
Players, Inc., 736 F.2d 485 (CA 9), cert. denied, ___ U.S. ___,
105 S.Ct. 513, 83 L.Ed.2d 403 (1984) provides an instructive
analysis of the copyrightability issue. See also Reyher v.
Children's Television Workshop, 533 F.2d 87, 91 (CA 2 1976).
The Plaintiff in Landsberg developed a strategy for the
playing of Scrabble and, in the course of publishing an account
of his strategy, requested permission of the Defendant, Selchow
and Richter ("S & R"), to use the Scrabble trademark. In order
to evaluate Plaintiff's reques>t, S & R requested and received
a copy of Plaintiff's manuscript.
At the time it received Plaintiff's manuscript S & R was in
the process of formulating its own instruction book on the
playing of Scrabble (the "Scrabble Handbook"). The employee
reported Plaintiff's manuscript had merit and S & R initiated
negotiations with Landsberg for the rights to the manuscript.
Negotiations, however, broke off and S & R severed whatever
relationship it had with Landsberg. S & R thereafter published
its Scrabble Handbook.
The district court found for Landsberg on the infringement
claim. Although the court found no verbatim copying, it did
find S & R had paraphrased large parts of Plaintiff's
manuscript and created handbook substantially similar to
Plaintiff's work. The Ninth Circuit Court of Appeals reversed,
holding no infringement occurred because the alleged
appropriations were non-copyrightable ideas. The Court of
Appeals found the similarity between the two works resulted
from the Defendant's restatement of unprotectable ideas
contained in Plaintiff's manuscript. 736 F.2d at 489.
Central to the Landsberg holding is the understanding that
the copyrightability of fact-based works is fundamentally
different from that of fictional accounts. Fact-based works are
limited to a rather narrow range of expression. Landsberg,
supra, at 488 (a fact based idea "cannot be expressed in in a
wide variety of ways"). More likely than not a subsequent
expression of a fact-based idea will appear to be a
substantially similar paraphrase of the original work. Thus,
before an infringement of a fact-based work will be found, the
similarity of the works "may have to amount to verbatim
reproduction or very close paraphrasing." Id.; 1 Nimmer, § 2.11
The rationale behind Judge Goodwin's analysis in
Landsberg is relatively straightforward. The finding that a
fact-based work is copyrightable effectively grants its author
a copyright on ideas when no later author could restate the
ideas contained in the original work without being found to
infringe on the original work. Such a result runs against the
policy behind the Copyright Act to grant protection to the
expression contained in a work without diminishing the free
exchange of ideas. See Nichols v. Universal Pictures Corp.,
45 F.2d 119, 121 (CA2 1930), cert. denied,
282 U.S. 902, 51 S.Ct. 216, 75 L.Ed. 795 (1931).
Defendants' argument parallels the reasoning found in
Landsberg. They argue the appropriations alleged by Ekern are
not copyrightable. Specifically Defendants focus on short
technical phrases and sentence fragments which appear in both
works. If the only appropriations alleged in this case
consisted of such short technical textual passages describing
sewing techniques, we might agree with Defendants. However,
Ekern alleges more than appropriation of textual passages. She
alleges the appropriation of text and artwork and this is what
we think distinguishes this case from the cases cited by
For example, McMahon v. Prentice-Hall, supra, involved
allegations of appropriated text, photographs and organization,
but the principal claims involved appropriations of text. To
the extent McMahon involved issues of appropriated artwork
(photographs and organization) that case is inapposite because
there the Plaintiff did not own the copyright to specific
artwork*fn1 and the court specifically found only a sporadic
use of the unprotected photographs contained in the original
work. 486 F. Supp. at 1303. This case involves the direct
lifting of illustrations to which Plaintiff held the copyright.
Originality of expression in this case stems from the
combination of textual explanation and pictorial illustration.
See Baldwin Cooke, supra, at 656. We, therefore, find Ekern's
work is copyrightable.
We now turn to the remaining elements of copyright
ownership. During discovery, Defendants twice admitted
Plaintiff was the owner of a valid copyright in
"Slacks." Defendants now contend "Slacks" was a work for hire
under the 1909 Copyright Act. The inconsistency of these two
positions raises genuine issues of material fact. Consequently,
for the purposes of this motion, we deem Plaintiff the owner of
the copyright in "Slacks."
At this point we specifically note that Plaintiff is also
the owner of the copyright in the artwork contained in
"Slacks." In the absence of contradicting evidence from
Defendants we must assume the artwork in "Slacks" was "work for
hire" under the 1909 Act. 1 Nimmer. § 5.03 [B]  [c] at 321.
See May v. Morganelli-Heumann & Assoc., 618 F.2d 1363, 1366-69
(CA 9 1980). Thus we find the first Atari element satisfied:
Plaintiff is the owner of a valid copyright in the text and
artwork contained in "Slacks."
The second element identified in Atari is the existence of
copying by the Defendants. As previously mentioned, this
element is satisfied by a showing that Defendants had access to
the work and a showing of substantial similarity between the
two works. Defendants do not contest access to Plaintiff's
work. Therefore, the remaining issue is whether a substantial
similarity exists between the text and artwork in "Slacks" and
the text and artwork in "Perfect Fit." Plaintiff need only show
a substantial similarity between the elements of the two works.
Atari, supra, at 614.
Plaintiff's brief alleges thirty appropriations. At least
five of the alleged appropriated illustrations appear to be
direct copies of Plaintiff's work with substantially similar
supporting text.*fn2 The specific examples of direct lifting
(supra, note 2), along with other alleged appropriations
(appropriations which do not clearly constitute direct lifting)
are sufficient to create triable issues of fact. This finding
is sufficient to preclude summary judgment in favor of
Defendants. Consequently, Defendants' motion for summary
on Count I and VI is denied. Defendants' motion for summary
judgment on Count IV, however, is granted.
Count IV alleges an infringement of "Slacks" by the Sew/Fit
Manual. Plaintiff, however, has failed to specifically identify
any appropriated material contained in the Manual. Inasmuch as
copyright does not protect ideas, theories and concepts,
Plaintiff cannot make such a generalized infringement claim and
Defendants' motion for summary judgment must be granted.
Accordingly, we also dismiss Count V (alleging a breach of an
oral contract based on the Sew/Fit Manual) for lack of pendent
jurisdiction. See United Mine Workers v. Gibbs, 383 U.S. 715,
86 S.Ct. 1130, 16 L.Ed.2d 218 (1966).
II Plaintiff's motion for summary judgment
Plaintiff has moved for partial summary judgment on Counts
II and III contending that the undisputed facts in this case
establish a breach of contract and a breach of fiduciary duty
by Defendants. First, Plaintiff contends Defendants'
replacement of her book with the Oblander book constitutes a
breach of their express promise to use their best efforts to
sell, promote and distribute "Slacks." Next, Plaintiff contends
the substitution of the Oblander book also constitutes a breach
of an implied promise of good faith and fair dealing by
Defendants. Defendants argue that no breach of either express
or implied terms occurred because the writings signed by the
parties (Ex. A through C) provide Defendants with substantial
discretion in discontinuing the publication of Plaintiff's
The initial royalty agreement allows Sew/Fit, "in its
discretion [to] discontinue the publication or distribution"
of "Slacks." Ex. B. The second royalty agreement provides for
termination of the agreement if "Slacks" is no longer on sale
and if Sew/Fit chooses not to bring out another edition of the
book. See Ex. C. As we read these provisions, the discretionary
right of the publisher to discontinue publication is not
necessarily at odds with the automatic operation of the
termination clause (where the book is not on sale and the
publisher decides not to bring out a new edition). The first
provision operates to the publisher's advantage, while the
second clearly operates to the advantage of the author.
Plaintiff's contrary interpretation both ignores and distorts
the plain meaning of the contract language. For example, the
initial royalty agreement clearly gives Sew/Fit the right to
discontinue publication at its discretion: Plaintiff's
interpretation of the second royalty agreement ignores this
language and would hold Sew/Fit to the agreement for the length
of Plaintiff's copyright. Therefore, we agree with Defendants
that the decision to discontinue publication of Plaintiff's
book constituted the exercise of an express contract term and
cannot constitute a breach of the best efforts clause. However,
we do not agree with Defendants that such a finding compels the
conclusion that substitution of the Oblander book for
Plaintiff's work did not constitute a breach of the implied
covenant of good faith and fair dealing. See Rao v. Rao,
718 F.2d 219, 222-23 (CA7 1983); 3 Nimmer § 10.11[B], at 1096-96.1
(1983). As we have already found, Plaintiff may be able to make
out infringement in this case. Consequently, if infringement is
shown, Defendants may also have breached the implied covenant
of good faith in that they published a book based on
Plaintiff's work for the purpose of diverting royalties from
Plaintiff. See Corner v. Israel, 732 F.2d 267, 271 (CA 2 1984);
Nelson v. Mills Music, 278 A.D. 311, 104 N.Y.S.2d 605 (N Y
1951), affd, 304 N.Y. 966, 10 N.E.2d 892 (1953). Although our
interpretation of the contract in this case precludes Plaintiff
from arguing a breach by Defendants of the best efforts clause
based on the decision to discontinue Plaintiff's book, the
motion for summary judgment on Count II must be denied.
In Count III Plaintiff contends Defendants have breached a
fiduciary duty. Defendants maintain no breach can be found
where no fiduciary relation has been shown
to exist. We agree with Defendants that no fiduciary relation
exists in this case and therefore grant summary judgment for
Defendants on Count III.
The relationship between a publisher and an author is not
generally regarded as one between fiduciaries. E.g., Van
Valkenburgh, Nooger & Neville, Inc. v. Hayden Publishing Co.,
Inc., 30 N.Y.2d 34, 330 N.Y.S.2d 329, 281 N.E.2d 142, 145
(1972). Consequently the proponent of the fiduciary
relationship bears the burden of showing by clear and
convincing evidence that the "circumstances make it certain
that confidence was reposed on one side and influence resulted
on the other." Vargas v. Esquire, 166 F.2d 651, 653 (CA 7),
cert. denied, 335 U.S. 813, 69 S.Ct. 29, 93 L.Ed. 368 (1948).
See also In Re Estate of Nelson, 132 Ill. App.2d 544,
270 N.E.2d 65, 70 (1st Dist 1971) (evidence of fiduciary relation must be
so strong "it can lead only to one conclusion"). Because we
find the rights and duties of the parties in this case are
governed by the various writings, we do not believe Plaintiff
has met her burden of making a clear and convincing showing
that a fiduciary relationship existed in this case. Defendants
motion for summary judgment on Count III is therefore granted.
In sum, then, Defendants' motion for summary judgment on
Counts I, II and VI is denied. Defendants' motion for summary
judgment on Counts III and IV, however, is granted. Count V is
dismissed for a lack of pendent jurisdiction. Plaintiff's
motion for summary judgment is, in all respects, denied.
IT IS SO ORDERED.