Opposition Brief — Deseret Book Co. v. Jacobsen

OCT <5 299

No. 02-482 j

| CLERK

IN THE

Supreme Court of the United States

DESERET BOOK COMPANY and DEAN HUGHES,

Petitioners,

v.

GENE S. JACOBSEN,

Respondent.

ON PETITION FOR A WRIT OF CERTIORARI TO THE

UNitep SraTES Court OF APPEALS FOR THE TENTH CIRCUIT

BRIEF IN OPPOSITION

Brent O. HATCH

Counsel of Record

Mark H. RICHARDS

Hatcu, JAMES & DoDGE

Attorneys-for Respondent

10 West Broadway

Suite 400

Salt Lake City, Utah 84101

(801) 363-6363

176986 g

COUNSEL PRESS

(800) 274-3321 © (800) 359-6859

i

TABLE OF CONTENTS

Page

Taio OF Cited AMEROFIIGS ... wo cc cece ne reses li

UE TG I ao 55560 Seven renee 1

A. Factual Background .................... l

B. The Lower Courts’ Proceedings .......... 4

Reason for Denying the Petition................ 9

The Court Of Appeals Correctly Held On A

Motion To Dismiss That Where Numerous

Portions Of An Alleged Infringing Work

Could Be Seen As Verbatim Copying Of

The Author’s Original Expression In A

Copyrighted Historical Work, A Jury Should

Be Allowed To Determine Whether The

Works Are Substantially Similar. ......... 9

A. The Tenth Circuit’s Decision Below Is

Not in Tension With Prior Decisions of

IG A a eh awe aks 9

B. The Tenth Circuit’s Decision Is Consistent

With Decisions Of The Ninth Circuit And

og ee ee eer eer ee 18

C. The Question Presented Is Not A Recurring

One of Exceptional Importance. ...... 26

I oi eu ys i ier ned ane ear are ere. 27

il

TABLE OF CITED AUTHORITIES

Page

Cases:

Apple Computer, Inc. v. Microsoft Corp., 779 F. Supp.

833 (ND. Ca USED cass whe eee 20, 21

Feist Publications, Inc. v. Rural Telephone Service

Co., 409 U.S. SOR CIFFE) bk eae ae passim

Harper & Row, Publishing Inc. v. Nation Enterprises,

471 US. S50 GSS) gs cavceeiseceneeeee passim

Hoehling v. Universal City Studios, Inc., 618 F.2d

S72 COE COs. TROP os setae eee 21, 22, 23, 24, 25

Narell v. Freeman, 872 F.2d 907 (9th Cir. 1989) ..

a 9-9 no ae wes 0 ar gen 19, 21, 23, 24, 25

Nash v. CBS, Inc., 899 F2d 1537 (7th Cir. 1990) ..24, 25

Rosemont Enterprises, Inc. v. Random House, Inc.,

366 F.28 303-6 Ce. 1968) «so ek ccwsaeen 21, 22, 23

Salinger v. Random House, Inc., 811 F.2d 90 (2d Cir.

i ene nr rene s Fath 8 Pees: 19, 20, 23, 24, 25

Wainwright Securities Inc. v. Wall Street Transcript

Corp., 558 F.2d 91 (2d Cir. 1997) ............ 13

iil

Cited Authorities

Rules:

a See ay |) ne

Secondary Sources:

4 Melville B. Nimmer & David Nimmer, Nimmer

on Copyright § 13.03[A][2] (2001)

|

STATEMENT OF THE CASE

In an effort to create an issue worthy of review by this

Court, Petitioners have overstated the record in crafting their

“Question Presented.” Whereas Petitioners claim the Tenth

Circuit allowed a claim for copyright infringement to proceed

against them despite a finding of only “minimal” copying,

the record in this case clearly establishes that Petitioners’

appropriation of Respondent’s original expression was

“substantial.” Indeed, the Tenth Circuit cited several lengthy

examples in its decision of verbatim copying by Petitioners.

A. Factual Background

Dr. Gene S. Jacobsen is a decorated World War II hero

who survived a three and one half year ordeal in the

Philippines as a prisoner of war to the Japanese. Dr. Jacobsen

is a survivor of the infamous Bataan Death March. Following

the war, in late 1945 and early 1946, Dr. Jacobsen recorded

in long hand his personal account, among other things, of

the traumatic experiences and emotions he endured and the

feelings he experienced as a prisoner of war. Aplt. App. 258-

59. In 1984, Dr. Jacobsen, with the help of his wife, converted

his long hand recording into a 200-plus page manuscript that

he entitled Who Refused to Die. Apit. App. 12. Dr. Jacobsen

has a federally registered copyright in his manuscript and

is the owner of all rights, title, and interests in and to

Who Refused to Die. Apit. App. 12.

In the fall of 1994, Petitioner Dean Hughes (“Hughes”)

began working on a series of fictional books set in World

War II. Hughes planned that a significant portion of his series

would focus on the war in the Philippines. Prior to writing

his first book in the planned series, Hughes received a copy

2

of Who Refused to Die from Dr. Jacobsen’s son. Aplt.

App. 261. Hughes read the manuscript and then contacted

Dr. Jacobsen and requested that they meet to discuss the war

in the Philippines. Aplt. App. 261, 314.

In December 1994, Hughes met with Dr. Jacobsen and

Dr. Jacobsen’s wife, Barbara, in the Jacobsen’s home and

discussed information about the war. Aplt. App. 261. During

this meeting, Hughes informed the Jacobsen’s that Petitioner

Deseret Book Company (“Deseret Book”) would be

publishing his series. Dr. Jacobsen told Hughes that he

intended to submit Who Refused to Die to Deseret Book for

review and hoped that Deseret Book would publish Who

Refused to Die. Aplt. App. 262. At no time during this meeting

or at any other time did Hughes request or receive permission

to use, copy, paraphrase, or fictionalize the material in Who

Refused to Die, or to use Dr. Jacobsen and his experiences

as the basis for a central character in Hughes’ planned series.

Aplt. App. 314-315.

In the fall of 1995, Dr. Jacobsen’s daughter submitted a

copy of Who Refused to Die to Deseret Book. Aplt. App.

263. Deseret Book rejected the manuscript claiming that it

was not commercially viable. Aplt. App. 264. During the

same time period that Deseret Book was reviewing

Who Refused to Die, Hughes had submitted for publication

through Deseret Book Volume I of his planned series, now

titled Children of the Promise. Although Hughes, thereafter,

sent a portion of the material he had written to Dr. Jacobsen,

Aplt. App. 264, he did not send any material that alerted

Dr. Jacobsen to Hughes’ intention to copy, paraphrase,

and/or fictionalize Dr. Jacobsen’s copyrighted manuscript.

Aplt. App. 316-17. In a short note to Hughes, Dr. Jacobsen

stated that the small amount of material he had received from

3

Hughes made difficult to “piece together” the storyline or

comprehend the overall objective of Hughes’ project.

Aplt. App. 316-17; App. 149. Dr. Jacobsen has testified that

he is “100 percent positive” that the material Hughes sent to

him did not include material later added to Children of the

Promise taken from Who Refused to Die. Aplt. App. 316-17.

Petitioners assert in their Petition for Writ of Certiorari

that Hughes’ copying from Dr. Jacobsen’s memoir was

“minimal.” In fact, the evidence developed in discovery

demonstrates that a significant portion of the Children of the

Promise series was taken directly from Dr. Jacobsen’s

copyrighted manuscript. At his deposition, Hughes testified

that “many of the pages, sometimes whole chapters” from

the Children of the Promise series were taken directly from

Who Refused to Die. Aplt. App. 319-20 (emphasis added).

Hughes testified that when he was writing the Children of

the Promise series, he would keep Dr. Jacobsen’s manuscript

open and in front of him so that he could draft his books

directly out of Dr. Jacobsen’s manuscript. Aplt. App. 320.

Hughes further testified that he used “much” from Dr.

Jacobsen’s manuscript and that the material came “directly

out of” Dr. Jacobsen’s manuscript and that he “pretty well

[told] the story as it existed in [Dr. Jacobsen’s] journal”

because he thought that using Dr. Jacobsen’s story as is would

be more “compelling as a part of my plot.” Aplt. App. 320.

Dr. Jacobsen did not learn that Hughes was using his

life story as recorded in Who Refused to Die in Hughes’ series

until after both Volumes I and II of the series had been

published. Despite the fact that Hughes and Deseret

Book were timely notified that Dr. Jacobsen had contacted

attorneys to pursue legal action against them for copyright

infringement, Hughes and Deseret Book nevertheless

4

subsequently completed and published additional volumes

of the series. Aplt. App. 272. Dr. Jacobsen filed his Complaint

against Deseret Book and Hughes in November 1999.

Aplt. App. 19.

B. The Lower Courts’ Proceedings

Nearly a year after Dr. Jacobsen filed his complaint and

after discovery in this case was substantially complete,

Petitioners filed a Motion to Dismiss with the district court

on October 10, 2000, Petitioners argued that although

Dr. Jacobsen alleged, and the evidence showed, that

Petitioners substantially copied and fictionalized his memoir,

Dr. Jacobsen had not specifically alleged that Petitioners

infringed on any protectible expression. On December 4,

2000, the matter was heard before the district court.

On January 11, 2001, the district court issued an Order

granting Petitioner Deseret Book’s Motion to Dismiss.

Applying the “supersubstantial similarity” test outlined by

the Court in Feist Publications, Inc. v. Rural Telephone

Service Co., 499 U.S. 340 (1991), the district court held that

Dr. Jacobsen’s memoir was “a historical work that is not

protectable under the copyright laws,” and dismissed the

lawsuit.

On appeal, the Tenth Circuit reversed the district court’s

Rule 12(b)(6) dismissal of Dr. Jacobsen’s claims. The Tenth

Circuit began its decision by emphasizing the fact that it was

reviewing a Motion to Dismiss and stating:

We cannot affirm the dismissal for failure to state

a claim unless, after considering the complaint,

Who Refused to Die, and the Children of the

Promise series in the light most favorable to

5

Dr. Jacobsen, it appears beyond doubt Dr.

Jacobsen can prove no set of facts in support of

his claim that would entitle him to relief.

Jacobsen v. Deseret Book Company, 287 F.3d 936, 942

(10th Cir. 2002). Because it ultimately concluded that

numerous portions of the Children of the Promise series could

be seen as verbatim copying of Dr. Jacobsen’s original

expression in Who Refused to Die, the Tenth Circuit reversed

the district court’s dismissal of Dr. Jacobsen’s claims and

held that a jury should be allowed to determine whether the

works are substantially similar.

In reaching its conclusion, the Tenth Circuit began by

stating that “the difficulty in this case arises in determining

whether Dr. Hughes copied only unprotected facts or instead

impermissibly copied Dr. Jacobsen’s original expression,”

as it is undisputed that Hughes copied many of Dr. Jacobsen’s

experiences in Who Refused to Die. Id. Relying on the Court’s

decisions in Harper & Row, Publishing Inc. v. Nation

Enterprises, 471 U.S. 539 (1985) and Feist, the Tenth Circuit

stated the well-settled principle that “no author may copyright

facts or ideas” and a copyright therefore protects “only those

aspects of the work—termed expression—that display the

stamp of the author’s originality.” /d., citing Harper & Row,

471 U.S. at 547; Feist, 499 U.S. at 348. In order to prove

copying of legally protectible material, the Tenth Circuit

found that Dr. Jacobsen must show “substantial similarity”

between the “legally protectible elements of the original

work and the allegedly infringing work.” Jd. at 942-43.

In turn, the Tenth Circuit held that in order to determine

“substantial similarity” it must ask:

Whether the accused work is so similar to the

plaintiff’s work that an ordinary reasonable person

6

would conclude that the defendant unlawfully

appropriated the plaintiff’s protectible expression

by taking material of substance and value.

Id. at 943. With this framework established, the Tenth Circuit

turned to the district court’s dismissal, which it rejected on

two grounds.

First, the Tenth Circuit held that the district court

incorrectly applied the “supersubstantial similarity” test

outlined by the Court in Feist to Dr. Jacobsen’s memoir.

The Tenth Circuit found that a court is not required to apply

the supersubstantial similarity test to all fact-based works.

Because fact-based works differ “as to the relative proportion

of fact and fancy,” it held that the “quantum of similarity

required to establish infringement differs in each case.”

Id. at 944, quoting Harper & Row, 471 U.S. at 563. The Tenth

Circuit also found that merely applying a supersubstantial

similarity test to all fact-based works would ignore the

differences between “sparsely embellished maps and

directories” and “elegantly written biography.” Jd., quoting

Harper & Row, 471 U.S. at 563. Accordingly, the Tenth

Circuit concluded that because Who Refused to Die involves

more creative effort and original expression than the

telephone directories at issue in Feist, Dr. Jacobsen could

prove substantial similarity with less similarity than required

with a telephone directory. Jd.

Second, the Tenth Circuit found that the district court

incorrectly focused on the differences between Who Refused

to Die and Petitioners’ Children of the Promise series rather

than the two works’ similarities. The Tenth Circuit held

that “a taking may not be excused merely because it is

insubstantial with respect to the infringing work.” Jd. at 945,

7

quoting Harper & Row, 471 U.S. at 565. Instead, “the

question in each case is whether the similarity relates to

matter that-constitutes a substantial portion of plaintiff’s

work—not whether such material constitutes a substantial

portion of defendant’s work.” Jd., quoting 4 Melville B.

Nimmer & David Nimmer, Nimmer on Copyright

§ 13.03[A][2], at 13-46 (2001). Thus, the Tenth Circuit

concluded that it must consider whether Petitioners copied a

substantial portion of Who Refused to Die.

After rejecting the district court’s analysis, the Tenth

Circuit engaged in its own thorough comparison of Who

Refused to Die with the Children of the Promise series.

It found that Hughes obviously copied extensively from

Dr. Jacobsen’s original expression in Who Refused to Die.

The Tenth Circuit stated:

As we need not weigh the evidence, we make no

attempt to compile an exhaustive list of protectible

material a jury could find to have been copied.

Suffice it to say the similarity goes beyond the bare

facts that both works describe a World War II Army

Air Corps Supply Sergeant who was captured by the

Japanese, forced to march across the Bataan

Peninsula, and imprisoned in various work camps.

Id. at 945 (emphasis added).

While the Tenth Circuit, which was considering the

district court’s grant of a motion to dismiss for failure to

plead a cause of action and was not therefore required to

make a complete list of every instance of copying, it did, by

way of example, provide four lengthy excerpts from both

works that clearly demonstrate Petitioner Hughes’ copying

8

went well beyond the bare facts and appropriated

Dr. Jacobsen’s original expression.' Indeed, the Tenth Circuit

found that in many instances Hughes copied verbatim whole

passages, as opposed to a few words or phrases, from

Dr. Jacobsen’s memoir. Jd. at 947-48.

The Tenth Circuit noted that certain words contained in

one of the examples it provided were enclosed in quotation

marks. It agreed that quotations may be freely copied

“if the quotation is recorded contemporaneously or taken

directly from a written source.” Jd. at 947. The Tenth Circuit

held, however, that Dr. Jacobsen’s words were neither. Jd.

It concluded therefore that the trier of fact could conclude

that the material in quotation marks in Who Refused to Die

was original expression rather than the actual words used.

Id. As the Tenth Circuit noted, “Dr. Jacobsen may have

enclosed the material in quotations merely to allow him to

speak in the voice of a third party while recording his story.”

Id.

In conclusion, the Tenth Circuit examined the Harper &

Row opinion for its instruction on the issue of verbatim

copying. It found that even though the memoir at issue in

Harper & Row was a factual work, this Court held that the

defendant’s verbatim copying of the memoir appropriated

original expression and amounted to copyright infringement.

Id., citing Harper & Row, 471 U.S. at 548-49.-Relying on

Harper & Row, the Tenth Circuit concluded that the Children

of the Promise series contains enough material for a trier of

1. The specifics of three of these examples are found in

footnotes 7-9 of the Tenth Circuit’s opinion. The fourth example is

found in the body of the court’s opinion. Several more similar

examples are found in Respondent’s briefs to the Tenth Circuit.

_

9

act to find verbatim copying’? of Dr. Jacobsen’s original

expression and that Dr. Jacobsen could, therefore, prove a

set of facts entitling him to relief. Jd. at 948.

Thereafter, Petitioners requested an en banc hearing from

the Tenth Circuit. That request was unanimously denied.

Petitioners now request that the Court accept certiorari in a

case that has not progressed beyond a motion to dismiss.

This Court should decline.

REASON FOR DENYING THE PETITION

THE COURT OF APPEALS CORRECTLY HELD ON A

MOTION TO DISMISS THAT WHERE NUMEROUS

PORTIONS OF AN ALLEGED INFRINGING WORK

COULD BE SEEN AS VERBATIM COPYING OF

THE AUTHOR’S ORIGINAL EXPRESSION IN A

COPYRIGHTED HISTORICAL WORK, A JURY

SHOULD BE ALLOWED TO DETERMINE WHETHER

THE WORKS ARE SUBSTANTIALLY SIMILAR.

A. The Tenth Circuit’s Decision Below Is Not in Tension

With Prior Decisions of This Court.

Petitioners argue that the Tenth Circuit’s decision is

inconsistent with the general framework for copyright

infringement of factual works set forth by the Court in Harper

& Row and Feist. Petitioners’ argument is misguided.

2. While the Tenth Circuit held that the Children of the Promise

series contains enough material for the trier of fact to find verbatim

copying, it specifically stated that nothing in its opinion would

preclude the Tenth Circuit from adopting an approach in the future

which recognizes that close paraphrasing of an historical work is

sufficient to establish a copyright violation. Jd. at p. 948.

10

An examination of the Court’s holdings in Harper & Row

and Feist clearly demonstrates that the Tenth Circuit’s

decision in this matter is entirely consistent with this Court’s

precedent.

Harper & Row involved a copyright infringement claim

brought against the political magazine, The Nation, for

publishing an article lifting excerpts from a novel written by

President Ford containing his unpublished memoirs. Harper

& Row owned the copyright to President Ford’s memoir,

which the Court characterized as “a historical narrative

or autobiography.” See Harper & Row, 471 U.S. at 563.

The Nation obtained a copy of the memoir prior to its

publication and published an article including verbatim

quotes from the memoir.

While the Court began with the proposition that the law

generally recognizes a greater need to disseminate works

based on fact rather than those based on fiction, the Court

recognized that substantial differences exist between different

types of factual works:

Even within the field of fact works, there are

gradations as to the relative proportion of fact and

fancy. One may move from sparsely embellished

maps and directories to elegantly written

biography. The extent to which one must permit

expressive language to be copied, in order to

assure dissemination of the underlying facts, will

thus vary from case to case.

Id. at 563.

11

_ After examining the two works at issue in Harper & Row,

the Court concluded that while some of the short quotes

appropriated from President Ford’s memoir’ were “arguably

necessary adequately to convey the facts,” the “subjective

descriptions” that lie in the “author’s individualized

expression” that were copied “exceed[ed] that necessary to

disseminate the facts.” Jd. at 563-64. Thus, the Court found

that The Nation had appropriated far more expression than

was necessary to disseminate the underlying facts of President

Ford’s expressive work.

Petitioners rely heavily on the dissent in Harper & Row,

and apparently regard Justice Brennan’s analysis of the

“threshold question of copyrightability” as the controlling

law of the Court. Petitioner’s reliance on Harper & Row’s

dissent is misplaced. While it is true, as Petitioners point

out, that the majority did not take issue with Justice Brennan’s

analysis of the question of copyrightability, it is important

to note that the majority refused to even reach the question

of copyrightability in its opinion. Indeed, Justice Brennan

chided the majority for failing to conduct such an analysis.

Id. at 580 (“The Court finds no need to resolve the threshold

copyrightability issue. .. Because I disagree with the Court’s

fair use holding, it is necessary for me to decide the threshold

copyrightability question”). The majority did not agree or

disagree with Justice Brennan’s analysis for the simple fact

that it found such analysis unnecessary. The majority’s silence

cannot be taken as an approval of the dissent’s analysis on

the question of copyrightability as Petitioners apparently

urge.

3. For example, the Court cited President Ford’s characterization

of the White House tapes as the “smoking gun” as perhaps “so integral

to the ideal expressed as to be inseparable from it.” Jd.

12

Moreover, regardless of whether Justice Brennan’s

dissent were viewed as controlling on the issue of

copyrightability, nothing in the Tenth Circuit’s decision

in this case conflicts with Justice Brennan’s analysis.

Petitioners’ summary of the dissent in Harper & Row is

incomplete and misleading.

Justice Brennan began his opinion by noting the basic

tenant that copyright protection extends to an author’s literary

form-but precludes any claim of copyright to facts.

Accordingly, he found that a claim for copyright infringement

must be “based on the taking of literary form, as opposed to

the ideas or information contained in a copyrighted work.”

Id. at 582. Justice Brennan stated, the test for determining

whether an author’s literary form has been appropriated

proceeds along two axes:

How closely has the second author tracked the first

author’s particular language and structure of

presentation; and how much of the first author’s

language and structure has the second author

appropriated.

Id. at 583 (emphasis in original). Justice Brennan also

specified that the protection of literary form must “proscribe

more than merely word-for-word appropriation of substantial

portions of an author’s work.” Jd. at 583 n.5. Otherwise, as

Justice Brennan noted, “a plagiarist could avoid infringement

by immaterial variations.” Jd.

With this framework established, Justice Brennan then

compared the works at issue. Justice Brennan first examined

the language used by The Nation in its article and concluded

that the information “was not in the form of paraphrase at

13

all, but took the form of synopsis of lengthy discussions in

the Ford manuscript.” Jd. at 584 (emphasis added). While

Justice Brennan did find that The Nation occasionally used

sentences that closely resembled the language used by

President Ford in his memoir, he specifically noted that:

The Nation paraphrased nothing approximating

the totality of a single paragraph, much less a

chapter or the work as a whole. At most The

Nation paraphrased disparate isolated sentences

from the original. A finding of infringement based

on paraphrase generally requires far more close

and substantial a tracking of the original language

than occurred in this case.

Id. at 585-86, citing Wainwright Securities Inc. v. Wall

Street Transcript Corp., 558 F.2d 91 (2d Cir. 1977) (emphasis

added).

Justice Brennan next examined the structure of

presentation of The Nation’s article and found that it did not

mimic the structure of President Ford’s memoir. Jd. at 586.

He, instead, determined that the information presented in

The Nation’s article did not appear in the same sequence as

President Ford’s memoir and, in fact, was drawn from

scattered sections of President Ford’s work. Jd.

Based on his examination of the two works, Justice

Brennan concluded that when the Nation’s article was not

directly quoting President Ford, the language and structure

of the article did not so closely and substantially track

President Ford’s language as to constitute an appropriation

of his literary form. /d. at 587.

14

Nothing in the Tenth Circuits opinion is inconsistent with

the holding of the majority in Harper & Row or Justice

Brennan’s dissent. Petitioners argue that the Tenth Circuit’s

decision conflicts with Harper & Row because the Tenth

Circuit, purportedly, “made no threshold effort to identify

which components of Jacobsen’s memoir constituted

unprotected fact, and which constituted protected

expression.” Pet. Brief at p. 12. A careful reading of the

opinions in Harper & Row demonstrates that nothing in the

decision requires a court to “abstract” the unprotected facts

from the protected expression of a copyrighted work as

Petitioners argue. Indeed, in making his comparison of the

works at issue in Harper & Row, Justice Brennan broadly

examined the language used by The Nation to determine the

extent of its verbatim copying or paraphrasing of sentences,

paragraphs or chapters and then examined the overall

structure of The Nation’s article to determine if it tracked

the same sequence as President Ford’s memoir.

The Court’s decision in Harper & Row establishes that

while facts or ideas are not copyrightable, an author’s

“individualized expression” or the “literary form” used to

describe and convey ideas or facts is protected under the

copyright laws. The dissenting opinion in Harper & Row is

in accord. Accordingly, the law proscribes verbatim copying

or using “immaterial variations” of the author’s original

expression or literary form.

The Tenth Circuit’s decision is consistent with

controlling precedent. The Tenth Circuit found evidence

demonstrating that Hughes copied verbatim significant

portions of Dr. Jacobsen’s individualized expression of his

life experiences in Who Refused to Die. Moreover, it

specifically rejected the claim that Hughes merely copied a

15

few words or phrases. To the contrary, it found that Hughes

copied entire passages and portions of Dr. Jacobsen’s memoir.

The Tenth Circuit’s decision is not in conflict with Harper

& Row.

Petitioners also claim that the Tenth Circuit’s decision

is contrary to the Court’s decision in Feist. Petitioners argue

that Feist establishes that in the context of all factual works,

only verbatim (i.e. use of the “precise words”) copying of

the author’s original expression gives rise to a claim of

copyright infringement. Thus, according to Petitioners,

copyright protection for all factual works is “thin.” Petitioners

essentially argue that there is no difference in the amount of

original expression in a historical work such as Dr. Jacobsen’s

memoir than what exists in the telephone directory at issue

in Feist.

Feist involved a copyright infringement action by a

telephone utility against a telephone directory that used

listings from the utility’s white pages in its publication.

The Court began its opinion by noting that facts, because

they are neither “discovered” nor “created”, do not constitute

an act of authorship, and are therefore ineligible for copyright

protection. Feist, 499 U.S. at 347. On the other hand, factual

compilations “may possess the requisite originality ...

[because] [t]he 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.” Jd. at 348. Therefore, the Court concluded that

choices as to selection and arrangement of data, so long as

they are sufficiently creative, may be protected by the

copyright laws. Jd.

16

The Court noted, however, that the copyright in a

compilation is not all-inclusive as protection extends only

to the author’s original expression or contribution. The Feist

decision emphasized that “the copyright in a factual

compilation is thin.” Jd. at 349. Accordingly, 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.” Jd.

Examining the telephone directory at issue, this Court

concluded that it was not copyrightable. Neither the facts in

the directory nor their selection and arrangement met the

standards of copyrightability the Court had established.

The Court first held that the listings of the names, towns,

and telephone numbers were pre-existing, unoriginal and

therefore uncopyrightable facts. /d. at 361. The Court next

looked at the selection of the facts in the directory and

concluded that it too failed to satisfy the requirements of

originality. The Court found that the telephone utility had

selected and published “the most basic information—name,

town, and telephone number—about each person who applies

to it for telephone service.” Jd. at 362. While useful, the Court

held that the utility’s “selection of listings could not be more

obvious,” and thus fell short of meeting the minimal level of

creativity. Jd. Moreover, the Court determined that since the

utility was required to publish such listings as part of its

monopoly over local phone service, the utility “did not truly

‘select’ to publish” the listings it included in its telephone

directory. Instead, the selection “was dictated by state law,

not by [the utility].” Jd. at 363.

The Tenth Circuit, consistent with the precedent of this

Court; refused to apply a supersubstantial similarity test to

17

all fact-based works. Citing Harper & Row, it held that

because fact-based works differ as to the amount of original

or creative expression they contain, “the quantum of

similarity required to establish infringement differs in each

case.” Jacobsen, 287 F.3d at 944, citing Harper & Row, 471

U.S. at 563. Accordingly, the Tenth Circuit concluded that

Dr. Jacobsen could prove substantial similarity with less

similarity than required in a case involving a telephone

directory. The Tenth Circuit’s holding is not inconsistent with

Feist and is entirely consistent with Harper & Row on this

issue.

Petitioners read Feist to require a court to make a

threshold effort to “abstract” the unprotected facts or ideas

from a copyrighted work. Because a telephone directory such

as that at issue in Feist is made up entirely of facts, which in

and of themselves are not copyrightable, the abstraction of

all the unprotected elements of a factual compilation would

require removing all elements of the copyrighted work.

Rather than reaching this nonsensical result, the Court in Feist

looked broadly at the arrangement and selection of the

unprotected facts to determine what elements of the

copyrighted work were protected. Consistent with Feist, the

Tenth Circuit examined the two works at issue to determine

whether the Children of the Promise series was “so similar”

to Dr. Jacobsen’s memoir that it could reasonably conclude

that Hughes unlawfully appropriated Dr. Jacobsen’s protected

expression. Because it found that Hughes had copied

verbatim entire passages and portions of Who Refused to Die,

the Tenth Circuit held that there was sufficient evidence that

a jury should be allowed to determine whether the works are

substantially similar. The Tenth Circuit’s decision to not first

“abstract” all unprotected elements of Who Refused to Die is

consistent with Feist.

18

Because the Tenth Circuit’s decision in not in conflict with

either, and, in fact, is entirely consistent with both, the Court’s

decisions in Harper & Row and Feist, Petitioners’ petition for

writ of certiorari should be denied.

B. The Tenth Circuit’s Decision Is Consistent With

Decisions Of The Ninth Circuit And Other Circuits.

Petitioners argue that the Tenth Circuit’s decision in this

matter is in direct conflict with the decisions of other circuits.

In fact, the Tenth Circuit’s decision is consistent with the

decisions of other circuits that have dealt with the issue of the

copyrightability of factual works.

Initially, it should be noted that Petitioners’ primary

argument, that the Tenth Circuit’s decision held that a claim for

copyright infringement claim involving a historical, factual work

“may proceed” even “where the appropriation of expressive

elements (if any) is incidental,” is a straw man. In fact, the Tenth

Circuit made no such limited holding. The Tenth Circuit

provided several examples demonstrating the type of wrongful

appropriation conducted by Hughes in writing the Children of

the Promise series. The Tenth Circuit specifically stated that it

was not necessary to its decision to provide an exhaustive list

of all the protected material of Dr. Jacobsen’s memoir that a

jury could find to have been appropriated by Hughes. Jacobsen,

F.3d 287 at 945. It is disingenuous for Petitioners to argue that

the example provided by the Tenth Circuit in the body of its

opinion is the sole incident of copying it found when comparing

the works at issue in this case.‘

4. As noted above, the Tenth Circuit cites several other examples

of verbatim copying in footnotes in its opinion. Additionally,

Dr. Jacobsen in his Complaint and briefs submitted to the lower courts

cites several lengthy examples of essentially verbatim copying.

19

Petitioners argue that the Tenth Circuit opinion is in

direct conflict with the Ninth Circuit’s decision in Narell v.

Freeman, 872 F.2d 907 (9th Cir. 1989). Petitioners are

mistaken. As the Tenth Circuit correctly held, the facts of

the present action are readily distinguishable from those at

issue in Narell.

In Narell, the Ninth Circuit held that the copying of

numerous isolated phrases did not constitute infringement.

The copyrighted work at issue was a nonfictional work

describing the history of Jews in the San Francisco Bay Area.

The defendant admitted in deposition that she had copied

both historical facts and “language” from the copyrighted

work. In affirming summary judgment in favor of the

defendant, the Ninth Circuit held that nothing that was copied

constituted protected expression.

Key to the Ninth Circuit’s holding was its finding

that the defendant merely copied ordinary isolated phrases

and did not take a “sequence of creative expression” from

plaintiff’s copyrighted work. Jd. at 911, quoting Salinger

v. Random House, Inc., 811 F.2d 90 (2d Cir. 1990).

The distinction between “an ordinary phrase” and a “sequence

of creative expression” was explained by the Second Circuit

in Salinger as follows:

Though a cliché or an “ordinary” word-

combination by itself will frequently fail to

demonstrate even the minimum level of creativity

necessary for copyright protection, such protection

is available for the “association, presentation, and

combination of the ideas and thought which go to

make up the [author’s] literary composition.”

Or as we have more recently stated, “What is

20

protected is the manner of expression, the author’s

analysis or interpretation of events, the way he

structures his material and marshals facts, his

choice of words and the emphasis he gives to

particular developments.” The “ordinary” phrase

may enjoy no protection as such, but its use in a

sequence of expressive words does not cause the

entire passage to lose protection. And though the

“ordinary” phrase may be quoted without fear of

infringement, a copier may not quote or

paraphrase the sequence of creative expression

that includes such a phrase.

Id. at 98 (internal citations omitted).

This approach is consistent with this Court’s decision in

Fiest, which made quite clear that a compilation of non-

protectible elements can enjoy copyright protection even

though its constituent elements do not. In Apple Computer,

Inc. v. Microsoft Corp., 779 F. Supp. 133 (N.D. Cal. 1991),

the district court explained this approach another way:

Suppose defendant copied plaintiff’s abstract

painting composed entirely of geometric forms

arranged in an original pattern. The alleged

infringer could argue that each expressive element

(i.e., the geometric forms) is unprotectible under

the functionality, merger, scenes a faire, and

unoriginality theories and, thus, all elements

should be excluded prior to the substantial

similarity of expression analysis. Then, there

would be nothing left for purposes of determining

substantial similarity of expression. In this

example, elimination of “unprotectible” elements

21

would result in a finding of no copyright

infringement, which would be clearly inconsistent

with the copyright law’s purpose of providing

incentives to authors of original works.

Id. at 136.

Petitioners allege that Hughes merely copied “isolated

phrases” from Dr. Jacobsen’s memoir. See Pet. Brief at

p. 14. As shown above, Petitioners misstate the record. They

argue because Hughes in some instances did not copy the

entire quotation but rather copied such “commonplace”

phrases as “use any means,” “get paid for your troubles,”

and “get off the ship,” Hughes copying is not actionable.

As demonstrated above, Narell does not support Petitioners’

argument. If Hughes had merely copied these “commonplace”

phrases in isolation from one another, Dr. Jacobsen likely

would have no claim. A reading of the example provided by

the Tenth Circuit clearly demonstrates, however, that the

phrases were not, as Petitioners allege, copied by Hughes in

isolation. Hughes copied each of the phrases in sequence to

one another and therefore appropriated Dr. Jacobsen’s

creative expression. The Tenth Circuit’s reading of Narell is

entirely consistent with the holding of the Ninth Circuit.

Petitioners next argue that the Tenth Circuit’s decision

conflicts with the Second Circuit’s decisions in Rosemont

Enterprises, Inc. v. Random House, Inc., 366 F.2d 303 (2d

Cir. 1966) and Hoehling v. Univeral City Studios, Inc., 618

F.2d 972 (2d Cir. 1980). Petitioners rely on Rosemount

Enterprises for its finding that a book which copied two direct

quotations and one eight-line paraphrase from three articles

about the life of Howard Hughes doubtfully constituted a

substantial part of either of the articles or of the book.

22

Apparently, the inference that Petitioners urge the Court to

draw from the Rosemount Enterprises decision is that the

example provided by the Tenth Circuit in its opinion is

insufficient to demonstrate that the material Hughes

appropriated from Who Refused to Die constitutes a

substantial part of either the Children of the Promise series

or Who Refused to Die. Petitioners’ reliance on Rosemount

Enterprises is misplaced. Nowhere in its decision does the

Tenth Circuit state that the example it provides is the sole

instance of copying by Hughes of Dr. Jacobsen’s memortr.

Again, the undisputed evidence from Hughes’ own deposition

in this case clearly establishes that Hughes copied a

significant portion of Who Refused to Die, including “whole

chapters.” As Deseret Book admits, Hughes took the “best

stories” from Dr. Jacobsen’s manuscript. Moreover, as the

Tenth Circuit noted in its decision, “a taking may not be

excused merely because it is insubstantial with respect to

the infringing work.” Jacobsen, 287 F.3d at 945, quoting

Harper & Row, 471 U.S. at 565. It is irrelevant that the

material Hughes copied from Who Refused to Die may have

constituted an unsubstantial portion of the entire Children

of the Promise series. The Tenth Circuit’s decision does not

conflict with Rosemount Enterprises.

Petitioners correctly note that the Second Circuit held

in Hoehling that while facts are not copyrightable, the

“author’s original expression of particular facts” is. Hoehling,

618 F.2d at 974. The Second Circuit also held in Hoehling

that “verbatim reproduction of another work . . . even in the

realm of nonfiction, is actionable as copyright infringement.”

Id. at 980. Accordingly, the Second Circuit held that only

“random duplications of phrases and sequences of events”

are not copyrightable. Jd. at 979 (emphasis added).

23

The Tenth Circuit’s decision is entirely consistent

with Hoehling. The Tenth Circuit found that Hughes copied

Dr. Jacobsen’s original expression of particular facts

verbatim. At a minimum, there were sufficient allegations

of such copying to overcome the motion to dismiss. As noted

in the discussion regarding Narell above, Hughes copying

of phrases and sequences of events from Dr. Jacobsen’s

memoir were not found by the Tenth Circuit to be either

isolated or random. The Tenth Circuit found evidence that

Hughes appropriated sequences of Dr. Jacobsen’s creative

expression.

Petitioners ignore the Second Circuit’s decision in

Salinger, which was made several years after both Hoehling

and Rosemont Enterprises and which specifically and

thoroughly discusses the issue of the copyrightability of

factual works. In Salinger, the plaintiff J.D. Salinger, who

wrote Catcher in the Rye, brought a copyright infringement

claim against the publisher of an unauthorized biography of

Salinger and its author, Hamilton. Important sources of

material for the biography were several unpublished letters_

Salinger wrote to his friends. Salinger received an initial

version of the biography and demanded that quotations of

his unpublished letters that appeared in the version be deleted.

The biography was published with much of the material

previously quoted from Salinger’s unpublished letters

replaced by paraphrasing. The district court found against

Salinger.

On appeal, the Second Circuit reversed the district court’s

finding that the extent of copying of expressive material

entitled to copyright protection was “minimal.” The district

court had based its holding on its finding that Hamilton’s

copying of Salinger’s letters was fragmented and that

24

Hamilton merely “employ[ed] a cliché or a word-combination

that is so ordinary that it does not qualify for the copyright

law’s protection.” Jd. at 98. Applying the law quoted above,

the Second Circuit disagreed and held:

In almost all of those instances where the quoted

or paraphrased passages from Salinger’s letters

contain an “ordinary” phrase, the passage as a

whole displays a sufficient degree of creativity as

to sequence of thoughts, choice of words,

emphasis, and arrangement to satisfy the minimal

threshold of required creativity. And in all of the

instances where that minimum threshold is met,

the Hamilton paraphrasing tracks the original so

closely as to constitute infringement.

Id.

The Second Circuit’s holding in Salinger is consistent

with Narell and Hoehling. Unlike those cases where the

allegedly infringing work’s author was found to have merely

borrowed random, isolated, “ordinary” phrases, the Second

Circuit found in Salinger that the infringing author copying

the original author’s sequence of creative expression.

The Tenth Circuit’s decision in this case is consistent

with Salinger. The Tenth Circuit found that the evidence

demonstrates that Petitioners copied more than a few words

or isolated phrases from Dr. Jacobsen’s memoir. Rather,

Hughes copied verbatim entire passages from Who Refused

to Die. Jacobsen, 287 F.3d at 97.

Finally, Petitioners argue that the Tenth Circuit’s decision

is in conflict with the Seventh Circuit’s decision in Nash v.

CBS, Inc., 899 F.2d 1537 (7th Cir. 1990). Petitioners cite

25

Nash for its holding that the allegedly infringing author’s

merely used the original work “as a source of facts and ideas,

to which they added their distinctive overlay.” Jd. at 1543.

Petitioner’s admit, however, that Nash involved a claim for

the alleged appropriation of a plot line only. There was no

evidence presented to the Court of any amount of verbatim

copying. Petitioners’ reliance on Nash is misplaced.

Petitioners can point to nothing in the Seventh Circuit’s

opinion that is in conflict with the Tenth Circuit’s decision

in this case.

Petitioners conclude their argument by making the

following statement: “All of these cases establish that an

author is permitted to engage in incidental appropriation

of expressive elements from a historical, factual work.”

Pet. Brief at p. 16. Petitioners’ statement is not supported

by the holdings of any of the cases upon which they rely.

The cases cited by Petitioners uniformly hold that while facts

are not copyrightable, the author’s original expression of

those facts is entitled to copyright protection. Hoehling and

Narell do state that random, isolated “ordinary” phrases

are not entitled to copyright protection. As Salinger

clearly establishes, however, the combination of even

“ordinary phrases” in a “sequence of creative expression”

constitutes original expression that is entitled to copyright

protection. Here, Hughes’ appropriation was much more

than “incidental.” The Tenth Circuit’s decision found

evidence that Petitioners copied more than a few words or

phrases and instead copied verbatim passages containing

Dr. Jacobsen’s original expression from Who Refused to Die.

The Tenth Circuit’s decision in not in conflict with the cases

cited by Petitioners. Petitioners petition should therefore be

denied.

26

C. The Question Presented Is Not A Recurring One of

Exceptional Importance.

As demonstrated above, the question presented by

Petitioners for their request for certiorari is not a recurring

question on which there is any disagreement among circuits

that merits this Court’s attention. The Tenth Circuit’s decision

is consistent with this Court’s precedent and the decisions

of the other circuits that have addressed the issue of the

copyrightability of historical works.

Moreover, this case has not progressed to trial and-final

judgment. The Tenth Circuit’s decision recognized the

preliminary nature of this action and correctly held that the

Children of the Promise series contains enough material for

a trier of act to find verbatim copying of Dr. Jacobsen’s

original expression and that Dr. Jacobsen could, therefore,

prove a set of facts entitling him to relief. Accordingly, a

jury should be allowed to determine whether the works at

issue are substantially similar.

The question presented by Petitioners in their Petition

for Writ ignores the fact that examples provided by the

Tenth Circuit were not an exhaustive list and merely

constituted a threshold finding that reflected the preliminary

nature of the case. The question is not of exceptional

‘importance. The Court should therefore decline to accept

certiorari.

27

CONCLUSION

For the foregoing reasons, this Court should deny the

petition for a writ of certiorari.

Respectfully submitted,

Brent O. HATCH

Counsel of Record

MakkK H. RICHARDS

Hatcu, JAMES & DODGE _

Attorneys for Respondent

10 West Broadway

Suite 400

Salt Lake City, Utah 84101

(801) 363-6363