Foxworthy v. Custom Tees, Inc.

Foxworthy
v.
Custom Tees, Inc.

879 F. Supp. 1200

U.S. District Court
N.D. Georgia

March 6, 1995

MEMORANDUM OPINION and ORDER

RICHARD C. FREEMAN, Senior District Judge.

. . .

GENERAL BACKGROUND

Plaintiff is a comedian known throughout the country for his "redneck" humor. He is probably best known for his "you might be a redneck if . . ." jokes. Examples of these jokes are:

--You might be a redneck if . . . you've ever financed a tattoo.

--You might be a redneck if . . . your two-year-old has more teeth than you do.

--You might be a redneck if . . . your dog and your wallet are both on a chain.

--You might be a redneck if . . . your dad walks you to school because you're in the same grade.

Plaintiff claims ownership to hundreds of jokes such as these, as well as a trademark and service mark . . . . His comedy album entitled "You Might be a Redneck If . . ." has sold more than 1 million copies, more than any other comedy album in more than a decade. Plaintiff has also issued a calendar with 365 "you might be a redneck if . . ." jokes, one for every day of the year. In addition to these products, he sells t-shirts with his redneck jokes on them at his concerts and elsewhere.

In December, 1994, plaintiff . . . became aware that t-shirts bearing exact replications of plaintiff's jokes were being sold in various stores across the country, including stores in Georgia. The only difference between plaintiff's jokes and those appearing on the t-shirts was the format. On one shirt, for example, the copy read "If you've ever financed a tattoo . . . you might be a redneck."

An investigation by plaintiff's associates ensued, and the source of the t-shirts was determined to be defendant Custom Tees. Plaintiff's representatives contacted defendant Stewart R. Friedman, an employee of Custom Tees who admits to directing the marketing of, and assisting in the production of, Custom Tees' products . . . . Upon notification that the jokes violated plaintiff's copyright and/or trademarks, Friedman turned the matter over to his legal counsel.⁴ Subsequent to these events, Custom Tees changed the copy on its t-shirts to read, to use a different example, "[W]hen you learn to drive in a car where you were conceived . . . you ain't nothin' but a redneck." . . .

. . .

PRELIMINARY INJUNCTION

. . .

B. Plaintiff Might be Likely to Succeed on the Merits If . . .

Plaintiff's request for injunctive relief is directed at the two components of his "redneck" jokes--the "you might be a redneck" phrase and the text of the jokes that follow. As to the phrase "you might be a redneck," plaintiff claims a common-law trademark. As to the joke portion, e.g., "you've ever cut your grass and found a car," plaintiff claims a copyright.

. . .

2) . . . . He Can Show Infringement of His Copyright

. . .

With regard to the jokes at issue, defendants do not argue that the text of their t-shirts exactly duplicated jokes found in plaintiff's books. Their defense to the copyright claim instead concerns plaintiff's purported ownership of the jokes at issue. Specifically, defendants argue that the copyright registration for one of plaintiff's books is a "compilation" registration, and that the registration does not cover the individual material compiled.²² Defendants also argue that the jokes themselves are not original to plaintiff, and that he therefore cannot claim "authorship" in them. The court finds defendants' arguments without merit.

Defendants cite Feist . . . for the proposition that compilation copyrights cover the selection, arrangement, and coordination of the pre-existing material compiled. . . . What Feist does not say, however, is that the copyright in a compilation extends only to the selection and arrangement of materials. Rather, copyright extends to the "author's original contributions." . . .

Understanding the nature of the Feist decision is essential to understanding this distinction. Defendants state that the instant case presents only a slight variation on the facts of Feist. Nothing could be further from the truth. Feist was founded upon two canons of copyright law: copyright requires originality, and facts are never original. . . . Because the compilation at issue in Feist was a fact compilation (names, addresses and telephone numbers), there could not be any copyright protection for the preexisting materials--i.e., the facts. Rather, copyright protection extends "only to those components of a work that are original to the author." . . .

This does not mean that preexisting materials cannot be the subject of copyright protection. . . .

These principles combine to illustrate the point defendants seek to finesse: the preexisting materials may be subject to copyright protection under the umbrella of a compilation copyright. Although defendants are correct that they did not copy the "constituent elements" of the compilation (the selection and arrangement of the jokes), whether they copied the original contributions of the author in the preexisting material (the jokes themselves) is another question altogether.

Defendants argue that the jokes are not original to plaintiff because he receives ideas, often in the form of jokes, from others. To support this assertion, defendants point to the Foreward to plaintiff's book, Red Ain't Dead, where plaintiff wrote

[N]ot a day goes by that someone doesn't offer me a new example of 'redneckism.' . . . With the help of my wife and friends, I add several to the list almost daily. I have collected numerous Redneck Lines from radio audiences and even from my live show audiences.

. . . Defendants therefore argue that "plaintiff's work consists of preexisting 'public domain'--[sic] material that was 'authored' by many persons over the years." . . .

Plaintiff testified at the hearing in this matter that he does in fact receive ideas from other sources, but more than 95% of his redneck joke ideas are original to him. . . . More important, plaintiff testified that, even when he receives an idea from another person, it is plaintiff who takes the idea and gives it the expression in the form it appears in his books. . . . In other words, plaintiff testified unequivocally that he wrote every word in his books, calendars, etc. Finally, plaintiff testified that he wrote and had the ideas for each joke appearing on defendants' t-shirts produced at the hearing. . . .

Defendants' argument mistakes the nature of authorship and originality. In Feist, the Court stated that "[t]he most fundamental axiom of copyright law is that '[n]o author may copyright his ideas or the facts he narrates.'" Feist . . . . Facts are not copyrightable because they lack the "sine qua non" of copyright--originality. Feist . . . . Narrated ideas are not copyrightable because they are not fixed in tangible form. Where, however, an idea is written or otherwise fixed in tangible form, a copyright is earned if the expression is original.

The Feist Court noted that "[original], as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity." . . . The Court went on to note that the level of creativity required is extremely low, and the "vast majority" of works will possess some kind of "creative spark." . . .²³

It must be stressed that, because ideas are not the stuff of copyrights, copyrights inhere in the expression used. Two painters painting the same scene each own a copyright in their paintings. Two news organizations covering the same event each own a copyright in the stories written by their reporters. As the Feist Court put it, "[o]thers may copy the underlying facts from the publication, but not the precise words used to present them." . . .

In the same way, two entertainers can tell the same joke, but neither entertainer can use the other's combination of words. This is where defendants' argument misses the mark. Copyright is concerned with the originality of the expression, not the subject matter. Plaintiff repeatedly stated that he uses other people's ideas, but he puts them in his own words. At the hearing, he explained why:

A joke is [. . .] a strange thing. And probably to the public, they never realize this. But I have--with a comic, we all have the same bowl of words to work with, and the whole trick is to take the smallest amount of words and put them in the proper order. You know, I've sat backstage with Jay Leno or Gary Shandling and sometimes for ten or fifteen minutes argued about a particular one line in a joke, which word should go where, should you delete this, which word should go to the end of the joke, and so that's why it changes. I mean, it's to get the maximum laugh from, you know, the shortest amount of material.

Q. How important is the particular expression of the joke versus the underlying idea of the joke?

. . . .

A. Well, I mean the idea is key in coming up with the wording. You need--the idea comes first and then you play with it to get the wording correct.

. . . Plaintiff clearly established at the hearing that all of the jokes copied by the defendants were not only his own ideas, but his own expression. His expression clearly evidenced a "modicum of intellectual labor," . . . and defendants clearly copied that expression verbatim. Accordingly, plaintiff has shown a likelihood of success on the merits of his copyright claim.

. . .

⁴ There is evidence that Friedman initially offered to pay a licensing fee for the shirts. Friedman, however, states in an affidavit that this offer was conditioned upon proof that plaintiff owned a copyright or trademark in the jokes. Whatever the case, the fact is that Friedman's legal counsel intervened and no licensing fee was paid or arranged.

²² Defendants do not argue that plaintiff does not have "standing" to sue on the copyright because the form of the registration, for a compilation, is insufficient. Rather, the argument is directed to the copyrightability of the constituent elements of the compilation, the jokes. . . .

²³ Feist was an unusual case because it involved the "creativity" of the selection and arrangement of uncopyrightable facts. This case is not nearly as unusual. Indeed, defendants do not challenge the creativity of plaintiff's jokes, but whether he was the originator of them. As explained below, defendants mistake the nature of originality.