Emanation Inc v. Zomba Recording Inc, doing business as Jive Records

* Pursuant to 5TH CIR. R. 47.5, the court has determined
that this opinion should not be published and is not precedent
except under the limited circumstances set forth in 5TH CIR. R.
47.5.4.
United States Court of Appeals
Fifth Circuit
F I L E D
August 20, 2003
Charles R. Fulbruge III
Clerk
IN THE UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT
_____________________
No. 02-30992
_____________________
EMANATION INC Plaintiff-Appellant
v.
ZOMBA RECORDING INC, doing business as Jive Records;
MICHAEL TYLER, also known as Mystikal
Defendants-Appellees
_________________________________________________________________
Appeal from the United States District Court
for the Eastern District of Louisiana
(01-CV-3284)
_________________________________________________________________
Before KING, Chief Judge, and DAVIS and BENAVIDES, Circuit
Judges.
PER CURIAM:*:
This case calls upon us to examine the extent of copyright
protection for allegedly unique and original combinations of
certain words and phrases. We agree with the district court that
the relevant words and phrases here are common Cajun identified
phrases not subject to copyright protection and thus affirm the
judgment in favor of the defendants.
I.
FACTUAL AND PROCEDURAL HISTORY

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2 “Sound recordings” are “works that result from the
fixation of a series of musical, spoken, or other sounds . . . .”
Newton v. Diamond, 204 F. Supp. 2d 1244, 1249 (C.D. Cal. 2002)
(quoting 17 U.S.C. § 101 (2000)). A sound recording differs from
a musical composition, which captures an artist’s music in its
written form only. Id.
2
The facts of this case are undisputed. The plaintiff,
Emanation, Inc. (“Emanation”), is a Louisiana corporation that
designs, manufactures and distributes novelty items. In 1997, the
president of Emanation, Steve Winn, created a novelty play-back
device called “Cajun in Your Pocket” (“Pocket Device”). The Pocket
Device is a hand-held toy. On its face, it bears six buttons
which, when pushed, play the following spoken phrases (referred to
by Emanation as “lyrics”): (1) “AIEEE”; (2) “We gon pass a good
time, yeah, cher”; (3) “Oo, I love you like a pig loves corn”; (4)
“You gotta suck da head on dem der crawfish”; (5) “Laissez les bons
temps rouler”; and (6) “Oo, cher, look like you gotta Cajun in you
pocket.” At issue in this case are spoken phrases number two, “We
gon pass a good time, yeah, cher,” and four, “You gotta suck da
head on dem der crawfish.” Since 1997, Emanation has sold
approximately 60,000 units of the Pocket Device. It continues to
sell the Pocket Device today. On February 16, 1999, Emanation
registered a copyright (#SR 261-398) to protect the “sound
recording” of these six sayings.2
In the fall of 2000, nearly three years after the Pocket
Device was marketed to the general public, defendant Zomba
Recording Inc. d/b/a Jive Records (“Zomba”) distributed an album
recorded by Michael Tyler a/k/a Mystikal (“Mystikal”), a rap

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3
artist. This album included the song entitled “Shake Ya Ass” (the
“Song”), which admittedly included the exact word arrangements
found in the two relevant Pocket Device sayings cited above. It is
estimated that the Song sold six million units worldwide. It has
also appeared in several movies and numerous CD compilations.
On December 13, 2000, Emanation received a copyright (# PA 1-
034-708) for the word arrangements found in the Pocket Device
sayings.
On October 31, 2001, Emanation filed suit against Zomba and
Mystikal (collectively, the “defendants”), seeking damages for
alleged copyright infringement of both of its copyrights and for
unfair trade practices under the Lanham Act and state law. The
defendants thereafter moved for summary judgment on all claims. In
their motion for summary judgment, the defendants maintained that
the two relevant sayings were common colloquial Cajun sayings not
protected by copyright law and that, even assuming the sayings were
subject to copyright protection, there is no “substantial
similarity” between the two works.
On September 3, 2002, the district court granted summary
judgment in favor of the defendants. The district court also
dismissed Emanation’s Lanham Act claims and its state law claims of
trademark infringement and unfair trade practices. Final judgment
in favor of the defendants was entered on September 5, 2002.

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3 Emanation does not address the district court’s
dismissal of its Lanham act claims and state law claims of
trademark infringement and unfair trade practices. We thus deem
the appeal of the dismissal of these claims abandoned. See Yohey
v. Collins, 985 F.2d 222, 224-25 (5th Cir. 1993).
4
Emanation appeals from this final judgment only insofar as it
dismissed Emanation’s copyright infringement claim.3
II.
STANDARD OF REVIEW
We review de novo the district court’s grant of summary
judgment, using the same standard as did the district court. Peel
& Co., Inc. v. The Rug Mkt., 238 F.3d 391, 394 (5th Cir. 2001).
Viewing the facts, and the inferences to be drawn from them, in the
light most favorable to Emanation as the non-movant, the grant of
summary judgment is proper only if no genuine fact issues persist
as to Emanation’s claim of copyright infringement. Id.
III.
COPYRIGHT INFRINGEMENT REQUIREMENTS
Emanation sued the defendants for copyright infringement under
the Copyright Act of 1976. To establish copyright infringement,
Emanation must demonstrate: (1) ownership of a valid copyright, and
(2) unauthorized copying of constituent elements of its work that
are original. Harper & Row, Publishers, Inc. v. Nation Enter., 471
U.S. 539, 556 (1985).
The first requirement is not at issue here; the defendants
concede that Emanation owns a valid copyright (#SR 261-398)
protecting the “sound recording” of the six Pocket Device sayings
and a valid copyright (#PA 1-034-708) protecting the word

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4 Emanation’s copyrights cover all six sayings as one
unit. However, as we have previously held, this does not
preclude a claim for copyright infringement of a single saying in
this unit or, as here, two sayings. See, e.g., Szabo v.
Errisson, 68 F.3d 940, 943 (5th Cir. 1995) (holding that a
“copyright of a collection of unpublished works protects the
individual works that are copyrightable, regardless of whether
they are individually listed on the copyright certificate”),
citing with approval Heyman v. Salle, 743 F. Supp. 190, 193
(S.D.N.Y. 1989) (concluding that individual photographs in a
copyrighted book were protected as both original works and as
part of a copyrighted work).
5
arrangements in the six sayings used in the Pocket Device.4 We
thus focus our inquiry on the second requirement – the unauthorized
“copying of constituent elements of the work that are original.”
Feist Publ’n, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361
(1991).
This second requirement is comprised of numerous elements –
each of which must be satisfied by Emanation. First, Emanation
must demonstrate that the sayings claimed to be protected are
“original.” See, e.g., id. at 345. Second, as direct evidence of
“copying” is not available in this case, Emanation must satisfy the
“copying” element by demonstrating “factual copying,” which “can be
inferred from (1) proof that the defendant[s] had access to the
copyrighted work prior to creation of the infringing work and
(2) probative similarity.” Peel & Co., 238 F.3d at 394. Finally,
assuming the “factual copying” element is satisfied, Emanation must
further show that this copying was “unauthorized” or unlawful,
meaning that the claim is legally actionable. The “unauthorized”
element is demonstrated through a “substantial similarity” test.
See, e.g., id. at 395 (“Not all copying is legally actionable,

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5 The defendants also mention, in passing without a
single case citation, the alleged applicability of the doctrine
of copyright estoppel to this case. However, because this
argument was not identified in the issue section of the
defendants’ briefing or addressed in any meaningful manner in the
defendants’ briefing, it is deemed waived. Ruiz v. United
States, 160 F.3d 273, 275 (5th Cir. 1998).
6
however. To prevail on a copyright infringement claim, a plaintiff
also must show substantial similarity between the two works.”);
Alcatel USA, Inc. v. DGI Tech., Inc., 166 F.3d 772, 790 (5th Cir.
1999).
The defendants dispute Emanation’s ability to satisfy the
“originality” element, the “probative similarity” test, and the
“substantial similarity” test, but concede that Mystikal had
“access to the copyrighted work prior to creation” of the Song.5
IV.
ORIGINALITY
It is a generally accepted truth in copyright law that
“[f]acts and discoveries, of course, are not themselves subject to
copyright protection,” Feist, 499 U.S. at 345 (internal quotation
omitted), but that “compilations of facts are within the subject
matter of copyright,” and were indeed expressly mentioned in the
Copyright Act of 1909, and again in the Copyright Act of 1976. Id.
In Feist, the Supreme Court cited the statutory and constitutional
requirement of “originality” to explain the “doctrinal tension”
between these two rules – that facts, on the one hand, do not
receive copyright protection, but factual compilations, on the

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6 The definition of “compilation” is found in § 101 of
the 1976 Act, which defines a “compilation” in the copyright
sense as “a work formed by the collection and assembling of
preexisting materials or of data that are selected, coordinated,
or arranged in such a way that the resulting work as a whole
constitutes an original work of authorship.”
7
other hand, generally do.6 Id.; see art. I, § 8, cl. 8; 17 U.S.C.
§ 102(a) (extending protection to “original works of authorship
fixed in any tangible medium of expression”).
The “original” element “does not require novelty, ingenuity,
or aesthetic merit.” Mason v. Montgomery Data, Inc., 967 F.2d 135,
141 (5th Cir. 1992). However, the simple recording or reporting of
facts is insufficient to satisfy the “originality” requirement
because “[t]he first person to find and report a particular fact
has not created the fact; he or she has merely discovered its
existence.” Feist, 499 U.S. at 347. To qualify a work as an
“original” work “choices as to selection and arrangement” of facts
into factual compilations must be made such that the independent
creation of the compilation involves “at least some minimal degree
of creativity.” Id. at 345 (quoting 1 M. NIMMER & D. NIMMER, COPYRIGHT
§ 2.01[A], [B] (1990) (hereinafter NIMMER)). For example, in Harper
& Row Publishers, Inc., the Supreme Court explained that President
Ford could not prevent others from copying bare historical facts
from his autobiography but that he could prevent others from
copying “subjective descriptions and portraits of public figures.”
471 U.S. at 556-57, 563.
Here, the packaging of the Pocket Device states that the
device plays “six authentic Cajun sayings.” On the back of the

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package, the following “sayings & definitions” for the relevant
phrases are provided:
WE GON PASS A
GOOD TIME, YEAH, CHER
First of all, ‘gon’ is short for ‘gonna’ which means
‘going to’. To ‘pass a good time’ means to have a good
time. The use of the word ‘pass’ comes from the French
verb ‘passer’ which means, oddly enough, ‘to pass time’
or ‘to spend time’. ‘Cher’ is a term of endearment, like
baby, honey or dear.
. . .
YOU GOTTA SUCK DA HEAD
ON DEM DER CRAWFISH
Yes, we do suck the head on the boiled crawfish in
Louisiana. How else you gonna get all that flavor from
the juice that’s hiding up there. We also pinch the
tails, but that’s a whole ‘nother story. (We often put
the letter “d” in place of the letter “th” in words.)
Ex. 1.
The district court found that the two relevant sayings were
unprotected facts, not original factual compilations, stating:
Here, the Court finds that the phrases “We Gon Pass a
Good Time, Yeah, Cher” and “You Gotta Suck Da Head of Dem
Der Crawfish” do not satisfy the originality requirement
of Feist. Some minimal degree of creativity is patently
elusive. It is undeniable that these statements are
merely common Cajun-identified phrases which are not
subject to copyright protection. Defendants’ expert,
Amanda Lafleur, states, and plaintiff does not dispute,
that the two phrases at issue are “well-known colloquial
Cajun expressions and that their syntax is very
predictable in the context of south Louisiana vernacular
speech.” She also points out that the “phrases have been
uttered many times over the years in everyday
conversation . . .” Moreover, plaintiff markets the
product as containing “authentic Cajun sayings,”
acknowledging that sayings are not original in the
critical sense of being creative.
Ord. at 4 (internal citation omitted). We agree.

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9
In Norma Ribbon & Trimming, Inc. v. Little, 51 F.3d 45 (5th
Cir. 1995), manufacturers of ribbon flowers (artificial flowers
made of twisted ribbon that may be attached as decoration to
clothing and accessories) counterclaimed against their former
marketer for copyright infringement of their ribbon flowers. Id.
at 46. Although the counter-plaintiffs tried to distinguish their
ribbon flowers from those ribbon flowers already existing in the
public domain by demonstrating that their flowers “[we]re of a
higher quality, ha[d] greater symmetry and uniformity, and ha[d]
different height and petal shape,” we upheld the grant of summary
judgment in favor of the marketer. Id. at 47-48. In so doing, we
found that the counter-plaintiffs’ ribbon flowers lacked the
requisite originality for copyright protection, stating that
“[a]lthough prior to the new process [used by the counter-
plaintiffs] it may have been difficult to manufacture ribbon
flowers of consistently high quality, there [i]s nothing new in the
design of the flowers themselves.” Id. at 48.
As in Norma Ribbon & Trimming, the slight modifications to the
common Cajun words and phrases made by Winn are “merely trivial”
and do not allow Emanation to satisfy the originality requirement.
Id. at 47. For example, in his deposition, Wynn testifies that
with respect to the “we gon pass a good time, yeah, cher,” that
“pass a good time” and “cher” are common Cajun sayings, but states
that his arrangement of the words “we gon pass a good time, yeah,
cher,” with the syntax, inflection, and cadence ultimately selected
for the recording is unique. However, we hold that no reasonable

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juror could conclude that this saying should be afforded copyright
protection as an “original” work simply because Wynn added the word
“yeah” between two common phrases and recorded the saying in
typical Cajun dialect. We likewise hold that, with respect to the
phrase “you gotta suck da head on dat der crawfish,” no reasonable
juror could conclude that this saying should be afforded copyright
protection as an “original” work simply because Wynn made minor
alterations to admittedly common phrases, such as “you gotta suck
the head.” See, e.g., Narell v. Freeman, 827 F.2d 907, 911-12 (9th
Cir. 1989) (denying protection to commonly-used expressions found
in an historical work, such as “staggering network,” “cow path,” or
the description of a river bank as “crawling with alligators”);
Alberto-Culver Co. v. Andrea Dumon, Inc., 466 F.2d 705, 711 (7th
Cir. 1972) (denying protection to the phrase “most personal sort of
deodorant”); Jean v. Bug Music, Inc., 2002 WL 287786, at *6
(S.D.N.Y. 2002) (“[A] reasonable jury could only conclude that the
lyrical excerpt ‘clap your hands’ is not afforded copyright
protection because the excerpt is a common phrase. The lyrics
appear often in church anthems and secular music.”).
Because we agree with the district court that Emanation cannot
satisfy the “originality” requirement, we need not address the
“probative similarity” or “substantial similarity” tests.
V.
CONCLUSION
We AFFIRM the final judgment of the district court.

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