                                                           United States Court of Appeals
                                                                    Fifth Circuit
                                                                 F I L E D
                                                                 August 20, 2003
                IN THE UNITED STATES COURT OF APPEALS
                                                             Charles R. Fulbruge III
                                                                     Clerk
                        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

     *
          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that this opinion should not be published and is not precedent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.
       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


       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
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.




                                   3
      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

      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
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,


     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
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




     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
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


     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
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.



                                8
     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


                                          9
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.




                                    10
