United States Court of Appeals,
Eleventh Circuit.
No. 93-8474.
WARREN PUBLISHING, INC., Plaintiff-Counter-Defendant, Appellee,
v.
MICRODOS DATA CORP.; Robert Payne, Defendants-Counter-Claimants,
Appellants.
May 23, 1995.
Appeal from the United States District Court for the Northern
District of Georgia. (No. 1:90-cv-1654-JOF), J. Owen Forrester,
Judge.
Before KRAVITCH, Circuit Judge, GODBOLD and MORGAN, Senior Circuit
Judges.
GODBOLD, Senior Circuit Judge:
This is an appeal from a permanent injunction enjoining
defendants from infringing a copyright of Warren Publishing. As a
predicate for the injunction the district court denied a motion by
the defendants for partial summary judgment on the infringement
issue and granted a cross motion for partial summary judgment on
that issue by Warren Publishing.1 We affirm.
I. Background and Copyrightability
Warren compiles and publishes annually a printed director
known as the "Television and Cable Factbook," which provides
information on cable television systems throughout the country.
The subject matter of this case is the 1988 issue of the Factbook,
which contains a "Directory of Cable Systems" section and a "Group
1
Warren also asserted a claim for unfair competition, and
Microdos counterclaimed for defamation and trade disparagement,
interference with contract relations, and violations of the
Sherman Antitrust Act by attempts to monopolize. These claims
remain undisposed of.
Ownership of Cable Systems" section, together containing
approximately 1,350 pages of information concerning 8,413 cable
systems throughout the country and their owners.
The district court explained the format of the Factbook:
The directory of cable systems section arranges entries
alphabetically by state, and, within each state,
alphabetically by the name of the "lead" or "principal"
community served by the particular cable system. The group
ownership section contains a listing of selected information
about entities owning and/or operating more than one cable
system. These entities are called multiple system operators,
or MSOs. The 1988 Factbook contained information on 8,413
cable systems. Information on each cable system and MSO entry
is broken down into a uniform set of "data fields" which
provide a specific piece of information about the system. The
Factbook uses the same pattern for each cable system entry.
The Factbook's format is based on identifying cable systems,
then providing information on the cable systems through the
use of specific groups of data fields.
Order, p. 2.
Warren has been publishing cable television information since
1948, constantly adding to its work systems and data fields of
systems. It is not disputed that the Factbook is a copyrighted
work and is appropriately registered. The Factbook is, however, a
compilation.
A "compilation' is 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.
17 U.S.C. § 101 (1990) (Emphasis added.).
A "compilation' results from a process of selecting,
bringing together, organizing and arranging previously
existing material of all kinds, regardless of whether the
individual items in the material have been or ever could have
been subject to copyright.
H.Rep. No. 1476, 94th Cong., 2d Sess. 57, reprinted in 1976
U.S.C.C.A.N. 5659, 5670.2
The preexisting materials in this case consist of information
about cable television systems. A copyright of a compilation does
not lead automatically to a conclusion that all materials therein
are copyrighted. The owner must prove that the alleged infringer
appropriated a protectable element of the compilation consisting of
the owner's original selection, coordination or arrangement. Feist
Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 111 S.Ct.
1282, 113 L.Ed.2d 358 (1991). The district court found, on the
summary judgment record, that the Factbook had sufficient
originality in its selection, coordination and arrangement of the
data contained therein to be copyrighted, a conclusion that
Microdos does not seriously contest. Warren contended that the
elements of the compilation that were copyrighted and infringed
were three: (1) the communities covered; (2) the selection,
sequencing and arrangement of data fields; and (3) the content of
the data fields. With respect to (2), the court found that the
selection of data fields to be incorporated into the Factbook was
obvious to persons in the industry and did not require the
creativity and originality necessary to permit copyright
protection. The arrangement of data fields was held to be creative
and copyrighted but not infringed because not substantially
appropriated by Microdos. With respect to (3), the content of data
2
Section 103 of the Copyrights Act also protects "derivative
works," which involve changing preexisting material by
transforming or recasting it. By definition a derivative work
incorporates matter capable of protection by copyright, while a
compilation incorporates preexisting material or data that may
not in itself be capable of copyright protection. Nimmer on
Copyright, § 3.02.
fields was found to be merely facts thus not copyrightable. Warren
has not cross appealed, so the findings with respect to data fields
are not before us for review.
The district court described Warren's system for selecting and
presenting information on cable systems:
How one defines a "cable system' will dictate the
communities selected to represent those systems.
Warren Publishing uses a "principle [sic] community'
system in selecting and presenting its information on cable
systems contained in its Factbook. A "cable system' is
defined as an entity composed as one or more communities that
are offered the same service by the same cable system owner at
the same price. The principle [sic] community, used to
represent the entire cable system, is then selected by
contacting the cable operator to determine which community is
considered the lead community within the cable system. Other
communities within the same cable system are then listed under
the principle [sic] community, not independently.
Order, p. 10. The court then went on to hold that only Warren's
selection of communities was sufficiently creatively original to be
copyrightable.
In effect, Warren had admitted that the coordination and
arrangement of the communities selected for coverage in the
Factbook was an obvious, mechanical, or routine task which
required no creativity. Therefore, the coordination and
arrangement of the communities selected is not copyrightable.
However, Warren argues that the selection of those communities
was creative and protectable because Warren uses a unique
system in selecting the communities that will be represented
in the Factbook. The court finds that Warren Publishing's
system of selecting communities is sufficiently creative and
original to be copyrightable.3
3
This is not to say that the selection of cable systems
would be copyrightable in all cases. Had Warren selected
every cable system listed by the F.C.C., then there would not
be sufficient originality in the "selection" to warrant
copyrightability.
* * * * * *
In this case a choice was made as to which communities were to
be listed.
Order, p. 11.
Cable system information compiled and arranged by various
compilers in the industry is commonly organized alphabetically by
state and then, for each state, alphabetically by the names of
communities having cable service. Cable systems offering service
may serve one geographical community (single-community service) or
more than one geographical community (multiple-community service).
A system will serve only a community, or communities, for which it
has been granted a franchise(s) by one or more local governments.
A list of geographical communities served will not, therefore,
coincide with a listing of systems—one lists apples and the other
oranges. Warren chose to present information on cable systems,
each an entity served by the same owner offering the same service
at the same price. The limits of the entity are not geographic but
owner/price/service bounded. For the purpose of listing, Warren
identified systems by the names of communities served.
Theoretically, it might have listed systems by the names of
operators listed alphabetically, but this would be of doubtful use.
Rather Warren chose to list systems geographically by "lead" or
"principal" communities served. More than half of the systems were
single-community systems, and, for each of them, the lead or
principal (hereinafter "principal") community was the sole
community served. For a multiple-community system it was necessary
to determine a principal community to be listed.3
3
Other listing methods are possible. The Federal
Communication Commission lists communities alphabetically by
mapbook name or local lore name. Another compiler might choose
to list by "communities" but define a "community" differently
than Warren does. It might choose a central geographical site
According to Warren's evidence it made the determination of
principal community by questionnaires (45% of the cases) and
contact with the operators (55% of the cases). It acknowledges
that it used Federal Communication Commission data to update its
files. Once a principal community was determined for a
multiple-community system, all other communities served by the
system were listed under the principal name, not independently.
The parties chose Illinois as a representative state, and 1988
as a representative year, for purposes of this case. The district
court set out differences brought about by different listing
methods. The FCC attempts to list alphabetically every
geographical Illinois community having cable service. For 1988 it
listed 724 communities served. Warren's 1988 Factbook listed 406
as suitable for listing using its principal community concept.4
The Broadcast Yearbook, another industry source (its criteria were
not spelled out by the court), listed 243 communities. The
district court found that each source listed some communities not
included in other works. The court cumulated the names of
communities listed by all sources and found 808.
In Feist Publications, Inc., 499 U.S. 340, 111 S.Ct. 1282, the
Supreme Court considered copyrightability of Rural's white page
telephone directory for several communities, the listings of which
and include some geographical radius around it. It might choose
a large urban site and attach adjacent suburbs, or attach rural
areas to urban, or combine rural areas. It might list by
communities within areas of the state, i.e., "NW Illinois" or "SW
Illinois."
4
As we discuss below under "Infringement," Microdos's list
of communities served was almost a 1:1 match of Warren's list of
406 principal communities.
were copied by Feist in an area-wide directory. The Court held
that Rural's material did not meet minimum standards for copyright
protection. Rural simply took raw data—name, town and telephone
number—of each person who had applied for, and was receiving,
telephone service from it and listed it alphabetically by surname.
The court recognized that this was "selection" of a sort but held
that it lacked "the modicum of creativity necessary to transform
mere assertion into copyrightable expression." Id. at 361, 111
S.Ct. at 1296. The Court set out principles for copyrightability
of factual compilations of preexisting factual materials. The
material contained need not be protectable. Id. at 347, 111 S.Ct.
at 1289. The constitutional touchstone is originality in
selection, coordination or arrangement of the preexisting
materials. The level of creativity required is low, "some creative
spark, no matter how crude, humble or obvious." Id. at 344, 111
S.Ct. at 1287. The copyright is "thin." Id. at 347, 111 S.Ct. at
1289. The "sweat-of-the-brow" doctrine was rejected. Id. at 351,
111 S.Ct. at 1291.
Feist has been accorded very narrow scope.
Most applications of Feist have recognized the
circumscribed sphere to which its holding applies, ruling that
it invalidates the copyright only in the most banal of works,64
such as the white pages of a phone book.64.1
64
Victor Lalli Enters., Inc. v. Big Red Apple, Inc., 936
F.2d 671 (2d Cir.1991) (chart of horse racing statistics
arranged according to "purely functional grids that offer no
opportunity for variation'); Sem-Torg, Inc. v. K Mart Corp.,
936 F.2d 851 (6th Cir.1991) (five plastic lettered signs—e.g.,
"For Rent'/"For Sale'—purportedly "compiled into a set').
64.1
Illinois Bell Tel. Co. v. Haines & Co., 932 F.2d 610
(7th Cir.1991). In 1991, two courts of appeals distinguished
Feist to hold infringing the act of copying a yellow pages
compilation. Key Publications, Inc. v. Chinatown Today
Publishing Enters., Inc., 945 F.2d 509 (2d Cir.1991);
Bellsouth Adver. & Pub. Corp. v. Donnelley Info. Pub., Inc.,
933 F.2d 952 (11th Cir.1991). After the latter opinion had
been on the books for well over two years, the full court
reached the opposite conclusion. 999 F.2d 1436 (11th
Cir.1993) (en banc), cert. denied, [--- U.S. ----,] 114 S.Ct.
943 [427 L.Ed.2d 323] (1994). Over a blistering dissent, id.
at 1471 (Hatchett, J., dissenting), the court noted that
defendant was not alleged to have copied from plaintiff's
directory the text or graphic material from the
advertisements, the positioning of those ads, the typeface, or
the textual material included by plaintiff to assist its
readers. Id. at 1445. In essence, plaintiff complained that
defendant used its directory as a shortcut to prepare a rival
publication.
Nimmer on Copyright, ¶ 3.04(B), p. 3-31 (footnote 63 omitted).
Bellsouth Adver. & Pub. Corp. v. Donnelley Info. Pub., Inc.,
999 F.2d 1436 (11th Cir.1993) (en banc), cert. denied, --- U.S. ---
-, 114 S.Ct. 943, 127 L.Ed.2d 323 (1994), is this court's post-
Feist directory case. BAPCO, a subsidiary of Bellsouth, published
a "yellow pages" advertising directory for the Miami area,
organized into an alphabetical list of business classifications.
Donnelley, the alleged infringer, obtained the name, address, phone
number, and other data from each listing in the BAPCO directory.
It entered this into its computer, published it in its directory,
and prepared from it advertising leads. This court en banc
reversed a summary judgment for Bellsouth.
Bellsouth is like Feist. BAPCO took its own data—telephone
listings of its subscribers—and arranged it in an alphabetical
listing of business types, with individual businesses listed in
alphabetical order under the applicable headings. These acts of
coordination and arrangement, like those of Warren, were—for a
business telephone directory—"not only unoriginal but practically
inevitable." The court considered BAPCO's asserted acts of
selection—i.e., determining the geographical scope of its directory
and setting the closing date after which no listing would be
accepted, and various marketing techniques to generate listings.
The court pointed out that any expression of facts fixed in a
tangible medium of expression requires a closing date and, where
appropriate, a geographical limit, and that marketing techniques
were techniques for collection of facts. No creative originality
in selection was present.
In contrast, Warren utilized not raw data from its files but
an external universe of existing material drawn from the industry
and not itself precisely contoured, and presented and listed in
various forms by various compilers. It chose to present
information on cable systems by listing cable systems. For that
purpose it defined "system." It selected a method for placing each
system within the listing structure, i.e., it chose to identify
each system by the geographical name of the principal community
served, determined in the manner we have described for
single-community systems and for multi-community systems.
It is obvious that Warren's listings offer advantages to
persons using, serving, or selling to cable operators, who can deal
with a single-community system, or a multi-community system
connected by service and operation, by identifying and dealing with
the heart of the system.
Microdos makes a number of contentions directed to whether
Warren's selection process has originality. It says it lacks
originality because publicly available information is contained in
FCC records, reports and filings.
The FCC reports provide a solid basis for determining cable
systems and communities served. The FCC reports are a
snapshot of cable systems nation-wide at a fixed time. Cable
operations are constantly changing. They are not static and
the changes are reported by cable operators to the FCC.
Reply Brief, p. 3. Microdos also says that originality is lacking
because Warren contacts operators by questionnaires and telephone,
to determine from each what respective community it considers to be
its principal community. Microdos's argument overlooks the nature
of a compilation, which is copyrightable because it compiles
preexisting material in an original manner. It overlooks that the
underlying data in this case does not in itself reveal that listing
will be by principal communities, and, except for single-community
operations, it does not reveal the name of the principal community,
which is central to Warren's selection process.
Warren does not, as Microdos suggests, assert copyrightability
of a mere list of historically established geographical names. No
such claim is made. Except for a single-community system, a
geographical designation of "X" is not used by Warren in its local
lore/mapbook sense but as the designation of a community that may
include A, B and C as well as geographical area X, whose name has
been selected as a label and useful as an entry point for the
researcher.
We discuss below under "Infringement" Microdos's independent
source defense in which it asserts that FCC data can be used to
produce the information that Warren lists. That argument is also
relevant to the claim that Warren's work lacks originality. For
the reasons we give below, it does not demonstrate lack of
originality.
The merger doctrine is not a bar to copyrightability in this
case. It precludes copyrightability where an idea can only be
expressed in a limited number of ways. Here the concern is
copyrightability of a compilation embracing selection of items that
might, and often are, selected and listed in many forms by authors
of existing compilations. The "sweat-of-the-brow" doctrine is not
utilized.
The district court did not err in holding that Warren's system
of selecting communities is sufficiently creative and original to
be copyrightable.
II. Infringement
Microdos markets a computer software package called Cable
Access, which, like the Factbook, provides detailed information on
the cable television industry. The district court described it:
The Cable Access software package is broken into three
databases. The first database provides information on the
individual cable systems. This database is referred to as
"the systems database.' The second database provides
information on multiple system operators and is simply
referred to as "the MSO database.' The third database is a
historical database which provides selected information on the
cable industry from 1965 to the present. Only the systems
database and the MSO database are alleged to be infringing
upon plaintiff's copyright.
Defendant's Cable Access software package comes presorted
by state and city. The customer may rearrange the data in a
format of its choosing. The customer may construct searches
of the database's information on cable systems as required to
fit its particular needs, as well as output the data to a hard
copy in various formats, again to fit the specific needs of
the customer.
Order, p. 3. Cable Access has been marketed in four versions which
follow essentially the same format. Warren contends that all four
versions infringe upon its copyright.
The test for infringement is whether there is substantial
similarity between Microdos and the Warren selection of principal
communities, the element of copyrightability in Warren's
compilation. There is strong evidence of copying by Microdos.
Warren included in its Factbook nine or ten fictitious cable system
entries, created as decoys. The phony operator(s) appeared in the
initial version of Cable Access. Microdos's only explanation to
this court is the statement that it has no explanation for how this
happened.5
The district court found that Cable Access's versions one to
four are virtually identical to the 1988 Factbook selection. The
Factbook listed 406 communities under its principal community
concept. The first version of Cable Access listed 405 communities
served, the second 394, the third 393, and the fourth 398. These
were almost 1:1 matches with the Factbook—99.9% by version one, 97%
by version two, 96.8% by version three, and 98% by version four.6
Faced with this commanding evidence of almost verbatim
copying, Microdos asserted an independent creation defense, i.e.,
that the high correlation of listings was the result of its use of
5
In a colloquy with the trial court counsel for Microdos
stated that there were ten decoys from the Handbook that appeared
in Cable Access. On appeal defendants' brief refers to a single
decoy operator. We cannot reconcile these variations, and need
not, for, one or ten decoy operators, or one or ten listings of a
single operator, the entry or entries constitute(s) evidence of
copying.
6
Microdos asserted in the district court that at least 20
communities should not have been included in the matching. If
they were excluded the matching of versions one to four,
respectively, to the Factbook, would have been 94.85%, 92.10%,
91.85%, and 93.10%. For 1988 the FCC, which attempts to list
individually every community having a cable system, listed 724.
The Broadcast Yearbook listed 243. The match between the
Factbook and the FCC was only 56.10%. Between Cable Access and
the Yearbook, the match was only 56.10%.
similar but independent community selection processes that produced
similar results. The district court held that, in view of the high
degree of correlation, Microdos was required to produce detailed
evidence showing how it arrived at its listings and how the system
worked to produce substantially similar results.
In its independent creation argument Microdos sets out that
FCC lists all cable operators and that operator that is part of a
multi-community operation is given a "system-iden" number that
identifies it as part of a multi-community operation. Thus, it
says that it grouped together all systems having the same
system-iden code, thereby establishing a geographical area for the
multiple system. It then selected a name for the area, "in most
cases" the name of the "major community," which was the community
with the largest number of subscribers, or in some cases where the
headend7 was located. This process of selecting a name produced
what Microdos calls an "inherent selection." It tells us in its
brief (p. 27) that the name of the geographical area "may, however,
differ from this initial selection." Microdos made telephone calls
to cable systems which might reveal changes such as headend
location and changes in franchise areas by adding or deleting
communities served.
The district court found this description of independent
source not satisfactory. Microdos did not clearly state how, in
utilizing it, it determined the major community in each
multi-community area, a determination that had to be made to
7
The place at which television signals were received, to be
fed into the cable system.
convert FCC's listing of communities served into listings that
matched Warren's principal community listings. We have the same
difficulty as the district court had. At one point Microdos says
that the "major community" is the community with the most
subscribers, elsewhere that it is the most populous, elsewhere that
in "most cases" it is where the headend is located. It asserts
that FCC requires that cable systems report communities served by
headends and, that as a matter of common sense, the headend will be
the principal community. The district court voiced its
dissatisfaction with the changeable, and changing, explanations of
listing by headend community, most populous community, common sense
community, and "most cases" as against "other cases" not clearly
explained. It is self-evident that a single-community operation
will be listed in both the Factbook and Cable Access.
Additionally, some communities listed by FCC were assigned multiple
system-iden codes, which made it unlikely that Microdos's asserted
use of FCC data would produce consistent and reliable community
listings.8
In its reply brief Microdos seems to describe another method
that it says produced a list of roughly 390 communities. This
method embraced using an FCC report "among other public documents
and FCC reports," which produced 458 "potential" systems, and this
figure was then corrected for 57 errors and irregularities resolved
by telephone calls to the FCC and to operators, and also by removal
of ten systems listed under other states but serving Illinois
8
We have pointed out above that this description of data
available from FCC records does not show lack of originality in
Warren's community selection process.
communities, producing a final figure of roughly 390 systems
"having an Illinois community as the name of the geographical area
served by the cable systems."
Like the district court, we are simply not informed by
Microdos how its listings of communities served is almost a 1:1
match of Warren's list of principal communities. The district
court did not err in holding that Microdos did not establish a
plausible and coherent method for arriving at its selection of
communities and submitted insufficient evidence that relied on any
principled criterion for community selection.
The judgment granting an injunction is AFFIRMED.
KRAVITCH, Circuit Judge, dissenting:
The facts of this case present a very close question, and
Judge Godbold has written a well-reasoned and forceful opinion.
Nonetheless, I dissent. I conclude that this case is factually
similar to BellSouth Adv. & Pub. Corp. v. Donnelley Info. Publ.,
999 F.2d 1436, 1441 (11th Cir.1993) (en banc), cert. denied, ---
U.S. ----, 114 S.Ct. 943, 127 L.Ed.2d 323 (1994), and, therefore,
that we are bound by the holding of our en banc opinion.
BellSouth denied copyright protection for the selection of
business listings used in the Yellow Pages after determining that
the selection did not meet the "requirement of originality." Id.
at 1440 (citing Feist Publications, Inc. v. Rural Tel. Ser. Co.,
499 U.S. 340, 344, 349, 111 S.Ct. 1282, 1287, 1290, 113 L.Ed.2d 358
(1991)). The en banc court determined that "[b]y employing its
sales strategies, BAPCO discovered that certain subscribers
describe their businesses in a particular fashion and were willing
to pay for a certain number of listings under certain available
business descriptions." BellSouth, 999 F.2d at 1441. It held that
BellSouth's acts of selection were "not acts of authorship, but
techniques for the discovery of facts" and that the Copyright Act
"affords no shelter to the resourceful, efficient, or creative
collector." Id.
Warren Publishing's selection of principal communities is
similar to BellSouth's selection of business listings. Warren
Publishing selects how to divide the country into individual cable
systems and how to assign principal community names by
contact[ing] cable operators to come up with a cable system
listing which identifies the way an operator's service areas
are managed.... To determine how to list systems in the
Factbook, the Factbook staff, in conjunction with the cable
system operators, determines what we call the "principal
communities' of their service areas. All data for each
separately identified system (including data for other
communities served) are reported under the "principal
community' heading.
Levine Affidavit, WW 11-12. Thus, like BellSouth, Warren
Publishing contacts operators, asks them questions about how their
systems are run, and uses the responses it receives to place the
systems within the directory. In light of this similarity, I am
not convinced that Warren Publishing's selection of cable systems
and principal communities involves significantly more originality
than BellSouth's selection of business listings.
Warren Publishing's claim that "when some names are selected
from a larger universe for use in a compilation, that list provides
a distinctive, original selection entitled to protection," Brief
for Appellee at 18, conflicts with BellSouth. Like Warren
Publishing, BellSouth selected its business classifications from a
larger universe of available headings after contacting those who
would be listed in the directory. BellSouth, 999 F.2d at 1473-74
(en banc) (Hatchett, J., dissenting) (noting that BellSouth
selected approximately 7,000 classified headings from a list of
4,700 primary headings and 34,000 related possible headings).
Warren Publishing's suggestion of copyrightability because
"the variation in the selections examined in the record
demonstrates that starting from the same source material, authors
seeking to present cable system information can and do select
separate and distinct groups of systems to report," Brief for
Appellee at 18, is similarly refuted by BellSouth. In BellSouth,
substantial variation in listings selected by competitors did not
lead to a finding of originality. For example, as noted in the
dissent, the "1985 Miami North directory contain[ed] approximately
4,000 headings and [the] 1985 Miami South directory contain[ed]
approximately 4,300 headings, as compared to the 7,000 headings in
BAPCO's 1984 Yellow Pages." BellSouth, 999 F.2d at 1474 (en banc)
(Hatchett, J., dissenting).
Finally, the fact that BellSouth compiled its own data is not
sufficient to differentiate the cases. A compiler who takes facts
from an outside source is not any more original under copyright law
than a compiler who takes facts from its own files; its employees
just may have worked harder. Id. at 1440 n. 10 (rejecting "sweat
of the brow" or "industrious collection" theories; citing Feist
Publications, 499 U.S. at 351, 111 S.Ct. at 1291).
Accordingly, in light of our en banc court's holding in
BellSouth, I cannot conclude that Warren Publishing's acts of
selection were sufficiently original to merit copyright protection
in this Circuit.1 Respectfully, therefore, I dissent.
1
Although the district court concluded that Warren
Publishing's selection of principal communities was sufficiently
original to receive copyright protection, it did not have the
benefit of the en banc BellSouth opinion.