Warren Publishing v. Microdos Data

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.