Warren Publishing v. Microdos Data

PUBLISH

IN THE UNITED STATES COURT OF APPEALS

FOR THE ELEVENTH CIRCUIT

_______________

No. 93-8474
_______________

D. C. Docket No. 1:90-CV-1654-JOF

WARREN PUBLISHING, INC.,

Plaintiff,
Counter-Defendant,
Appellee,

versus

MICRODOS DATA CORP.;
ROBERT PAYNE,

Defendants,
Counter-Claimants,
Appellants.

______________________________

Appeal from the United States District Court
for the Northern District of Georgia
______________________________

(June 10, 1997)

Before HATCHETT, Chief Judge, TJOFLAT, ANDERSON, EDMONDSON, COX,
BIRCH, DUBINA, BLACK, CARNES, and BARKETT, Circuit Judges, and
GODBOLD* and KRAVITCH**, Senior Circuit Judges.

*Senior U.S. Circuit Judge John C. Godbold elected to participate
in this decision pursuant to 28 U.S.C. § 46(c).

**Senior U.S. Circuit Judge Phyllis A. Kravitch heard oral argument
in this case on February 13, 1996 as a judge on active status. She
took senior status on December 31, 1996 and has elected to
participate in this decision pursuant to 28 U.S.C. § 46(c).
BIRCH, Circuit Judge:

This is an appeal from the district court's
entry of a preliminary injunction1 enjoining a
putative infringer from infringing the compilation

copyright of a publisher of a cable television
factbook. As a predicate for the injunction, the

district court granted partial summary judgment
for the copyright holder, finding that the
copyright holder's system of selecting the

names of communities under which to list the

data in its factbook was sufficiently creative and

original to warrant copyright protection. Based

on Feist Publications, Inc. v. Rural Telephone
Service Co., 499 U.S. 340, 111 S. Ct. 1282,
113 L. Ed. 2d 358 (1991), as well as our

application of Feist in BellSouth Advertising &

The district court granted Warren’s motion for “permanent” injunction. Warren's
claim for unfair competition, as well as Microdos's counterclaims for defamation and trade
disparagement, interference with contractual relations, and violation of Sherman Act by
attempts to monopolize, however, all have yet to be addressed by the district court. No
final judgment was entered under 28 U.S.C. § 1291 because the court has not yet
disposed of all the claims in the case and did not make its injunction a final judgment
pursuant to Fed. R. Civ. P. 54(b). Accordingly, the order before us is an interlocutory
order for an injunction that is subject to review under 28 U.S.C. § 1292(a)(1).

2
Publishing Corp. v. Donnelley Information

Publishing, Inc., 999 F. 2d 1436 (11th Cir.
1993) (en banc),2 cert. denied, 510 U.S. 1101,
114 S. Ct. 943, 127 L. Ed. 2d 232 (1994), we

VACATE the injunction and REMAND for
further proceedings.

I. BACKGROUND

Warren Publishing, Inc. ("Warren"),

compiles and publishes annually a printed

directory called the Television & Cable
Factbook ("Factbook"), which provides

information on cable television systems

throughout the United States. The Factbook
contains two volumes, the "Station" volume and

the "Cable and Services" volume. The focus of

We note that the district court, in ruling on the summary judgment motions, did
not have the benefit of our en banc opinion in BellSouth. At the time of the district
court's order, the panel opinion in BellSouth had not yet been vacated by our grant of
rehearing en banc, and thus the district court relied in part on the panel opinion.
BellSouth Advertising & Publishing Corp. v. Donnelley Info. Publishing, Inc., 933 F.2d
952 (11th Cir. 1991), vacated and reh'g en banc granted, 977 F.2d 1435
(11th Cir. 1992), and on reh'g, 999 F.2d 1436 (11th Cir. 1993) (en banc), cert. denied,
510 U.S. 1101, 114 S. Ct. 943, 127 L. Ed. 2d 232 (1994).

3
this case is the "Cable & Services" volume of
the 1988 edition of the Factbook, and, in

particular, the two sections of this volume
entitled "Directory of Cable Systems" and
"Group Ownership of Cable Systems in the

United States." These sections are comprised
of approximately 1,340 pages of factual data on

8,413 cable systems throughout the country

and their owners.

The "Directory of Cable Systems" section

contains extensive information on cable
systems, including, inter alia, the name,

address, and telephone number of the cable

system operator, the number of subscribers, the
channels offered, the price of service, and the

types of equipment used. The entries in this
section are arranged state by state in
alphabetical order, and, within each state, all of

the communities receiving cable television
service are listed alphabetically. The "Group
4
Ownership" section contains listings of selected
information on "all persons or companies which

have an interest in 2 or more systems or
franchises." Factbook, Cable and Services
Volume, at B-1301. The persons or entities

listed in the group ownership section are known
as multiple-system operators ("MSOs"), as

contrasted with single-systems operators

("SSOs").

In the "Directory of Cable Systems" section,

the factual data for each cable system is not
printed under the name of each community that

the cable system serves. The reason for this is

that many communities are part of multiple-
community cable systems, and it would be

duplicative to list the same factual information
under the individual community names for each
community that comprises a multiple-

community system. Therefore, a determination
is made as to what community is the "principal"
5
or "lead" (hereinafter "principal") community
served by a particular cable system, and

Warren prints the data only under the name of
the principal community. Under the entries for
the nonprincipal communities of a multiple-

community cable system, there is a cross-
reference to the principal community listing.3

We note that, in many cases, a cable system is

a single-community system, and thus there is
only one possible principal community.

Microdos Data Corp. and Robert Payne

("Microdos") also market a compilation of facts

about cable systems. Robert Payne is the

For instance, in the Georgia section of the book, Atlanta is designated as a principal
community, with the factual data for the cable system serving Atlanta and the surrounding
areas listed under the Atlanta heading. There are, however, numerous other communities
served by the same cable system that serves Atlanta; under the names of these
communities, it says, "See ATLANTA, GA." The following
communities in north-central Georgia are cross-referenced to Atlanta in the 1988 Factbook:
Alpharetta, Avondale Estates, Clarkston, College Park, Decatur, DeKalb County, East
Point, Lithonia, Pine Lake, Sandy Springs, and Stone Mountain. In addition, Fulton County,
although it has its own separate listing with factual data (since it is served by cable system
different from that which serves Atlanta), also has a cross-reference that states "See also
ATLANTA, GA." We infer from these listings that there are portions of Fulton County that
are served by the cable system listed under the Fulton County heading, and that there are
other portions of Fulton County served by the cable system listed under the Atlanta
heading. The same holds true for DeKalb County, which is cross-referenced to both
Atlanta and Chamblee, Georgia.

6
principal officer and shareholder of Microdos.
Microdos's compilation comes in the form of a

computer software package called "Cable
Access." The Cable Access program, like the
Factbook, provides detailed information on both

SSOs and MSOs. The district court described
the format of Cable Access as follows:

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 system 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.
...
Defendant's Cable Access software
package comes pre-sorted 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.
R4-36-3.
7
 There is no dispute that Warren's Factbook
predates the Cable Access program. Warren

has been publishing cable television information
since 1948, whereas Microdos began marketing
Cable Access in 1989. Shortly after Warren

became aware of the existence of the Cable
Access software, it notified Microdos that it

believed that the Cable Access program

infringed its copyright in the Factbook.4 In 1989,

Microdos ceased marketing the original version

of Cable Access, and, after some delay, began
marketing a second version of Cable Access.

Subsequently, a third and fourth version of

Cable Access were marketed.

Warren registered its claim of copyright for the 1988 Factbook in July of 1988, and,
in November of that year, the United States Copyright Office issued Warren a Certificate
of Copyright Registration. Moreover, Warren annually registers its claim
of copyright in the newest edition of the Factbook, and has been doing so since it began
publishing the Factbook. It is not disputed that the Factbook as a whole is a factual
compilation that is entitled to copyright protection. What is in dispute is whether Warren's
method of presentation of facts under the principal community
headings, with cross-references to the other communities served by that MSO, is entitled
to copyright protection. As the Supreme Court held in Feist, the only protectable elements
of a factual compilation are a compiler's selection, arrangement, or coordination, and these
elements are protectable only if they possess the requisite originality. Feist, 499 U.S. at
348, 111 S. Ct. at 1289, 113 L. Ed. 2d 358; see also Bell South, 999 F.2d at 1440.

8
 In July of 1990, Warren filed suit against
Microdos, alleging copyright infringement and

unfair competition.5 Warren alleged that all four
versions of Cable Access infringed upon its

compilation copyright in the 1988 Factbook.
Microdos counterclaimed for defamation and

trade disparagement, tortious interference with
contractual relations, and violations of Section
2 of the Sherman Act, based on Warren's

alleged attempt to monopolize. Warren

contended that Microdos infringed its

compilation copyright in the Factbook in three

areas: (1) the communities covered/principal
community system, (2) the data fields, and (3)
the data field entries. Following discovery,

Warren and Microdos each moved for partial
summary judgment on these three copyright

In its complaint, Warren does not allege that the Cable Access program as a whole
infringes its copyright in the Factbook. Rather, it is only the "system database" and the
"MSO database" of the Cable Access software that Warren alleges infringes its compilation
copyright.

9
infringement issues. With respect to the data
fields issue, the district court found that

Microdos had not infringed Warren's data field
format.6 With respect to the data field entries
issue, the district court found that these entries

were uncopyrightable facts, and therefore
Warren's "sweat of the brow" argument on this

issue could not prevail in light of the Supreme

Court's Feist decision.7 Accordingly, the district

court entered partial summary judgment for

Microdos on these two issues.
The district court, however, reached a

different conclusion on the communities

covered issue. It found that the principal

The district court found that Warren's selection of its data fields was not sufficiently
original to warrant copyright protection. As for the Factbook's coordination and
arrangement of the data fields, the district court found that this was
sufficiently creative and original to warrant copyright protection, but that Microdos's
coordination and arrangement was not substantially similar to that of the Factbook.
Therefore, the district court granted Microdos's motion for summary judgment on the data
fields infringement issue, and denied Warren's cross-motion for summary judgment on the
same.

Thus, the district court granted Microdos's motion for summary judgment on the
data field entries infringement issue and denied Warren's cross-motion for summary
judgment on that issue.

10
community system utilized by Warren in
presenting the data on cable systems in its

Factbook was "sufficiently creative and original
to be copyrightable." R4-36-11 (footnote
omitted). The district court then analyzed the

selection of communities employed by Microdos
and found it to be "substantially similar" to that

of Warren.8 Id. at 12-17. Based on this finding,

and its conclusion that Microdos failed to prove
that it obtained its information from a source

independent of the Factbook, the district court

denied Microdos's motion for summary

judgment on the principal community system

and granted Warren's cross-motion on that

The parties stipulated to the use of Illinois as a test or representative state for the
purpose of the substantial similarity analysis. Counsel for both sides agreed that the data
records produced during discovery were most complete as to Illinois, and thus Illinois
provided a common factual ground for the parties to
present their respective arguments. In addition, they agreed that the Illinois section
of the Factbook fairly represented the factual circumstances throughout the Factbook.
Given the voluminous listings in the Factbook, we think that it was wise for the parties to
limit the substantial similarity analysis to one representative state and have no doubt that
limiting the analysis to Illinois has in no way restricted the parties' ability to present all of the
legal issues relevant to the infringement issue.

11
issue.9 The district court subsequently denied
Microdos’s motion for reconsideration of the

order and granted Warren’s motion for a
“permanent” injunction.10 The court “enjoined
[Microdos] from violating [Warren’s] copyright of

the Factbook through the use, copying,
distribution or selling of any version of

[Microdos’s] Cable Access products.” R6-42-4.

Microdos appeals the interlocutory order
granting the injunction.11

Microdos filed a motion for reconsideration of the district court's grant of summary
judgment in favor of Warren on the principal community system issue. The district court
denied this motion and granted Warren's motion for permanent injunction and
impoundment of the infringing materials. Microdos permanently was enjoined from violating
Warren's copyright in the Factbook "through the use, copying, distribution or selling of any
version of [their] Cable Access products." R4-42-4. In addition, Microdos was directed to
turn over to the clerk of the district court "all copies of and materials used to make any
version of [their] Cable Access database products." Id. Microdos complied with this order,
turning over in excess of 20,000 pages of documents and research materials used to make
its Cable Access product.

Because no final judgment was entered by the district court, the injunction is by
law a preliminary injunction. See supra note 1.

The judgment of the district court was affirmed by a panel of this court, but that
panel decision was subsequently vacated by a grant of rehearing en banc. Warren
Publishing, Inc. v. Microdos Data Corp., 52 F.3d 950 (11th Cir.), vacated and reh'g en banc
granted, 67 F.3d 276 (11th Cir. 1995).

12
 II. DISCUSSION

Microdos argues that the district court
improperly granted Warren’s motion for an

injunction based on an erroneous ruling of law.
As a predicate for injunctive relief, the district
court granted Warren’s motion for partial

summary judgment on the principal community
system issue. Microdos contends that the

district court erred, as a matter of law, in finding

the principal community system protectable

under copyright law.

A. Review of Relevant Statutory Provisions and Case law

Because copyright law is principally
statutory, we begin our analysis with a review of

the pertinent statutory provisions. In this case,
we are dealing with a compilation, which the
Copyright Act of 1976 (the "Act") defines as "a

work formed by the collection and assembling
of preexisting materials or of data that are
13
selected, coordinated, or arranged in such a
way that the resulting work as a whole

constitutes an original work of authorship."12 17
U.S.C. § 101 (emphasis added). Section 102 of

the Act provides that "[c]opyright protection
subsists, in accordance with this title, in original

works of authorship fixed in any tangible

medium of expression, now known or later

developed, from which they can be perceived,
reproduced, or otherwise communicated, either

directly or with the aid of a machine or device."

17 U.S.C. § 102(a) (emphasis added). As a
limiting principle, the Act states that "[i]n no

case does copyright protection for an original

work of authorship extend to any idea,

The phrase “as a whole” is highly relevant to our analysis of the originality and
creativity of Warren Publishing’s selection. “Evaluation of the originality [and creativity] of
selection should focus on the selection as a whole.” Jane C. Ginsburg, No “Sweat”?
Copyright and Other Protection of Works of Information After Feist v. Rural Telephone, 92
Col. L. R. 338, 348 (1992). The dissent takes the position that original selection is present
in Warren Publishing’s selection of “principal communities” as a means of organizing the
data although the data included in the compilation represent the entire universe of cable
television systems. The dissent’s interpretation
ignores the cross-referencing to all cable television systems in the compilation and, more
importantly, fails to give meaning to the statutory phrase “as a whole.”

14
procedure, process, system, method of
operation, concept, principle, or discovery,

regardless of the form in which it is described,
explained, illustrated, or embodied in such
work." 17 U.S.C. § 102(b).13
The Supreme Court, in its most recent
decision focusing on compilation copyrights,

noted that "[t]he sine qua non of copyright is

originality." Feist, 499 U.S. at 345, 111 S. Ct. at

1287, 113 L. Ed. 2d 358. The Court

emphasized that originality is a constitutional
requirement, noting that the Constitution

"authorizes Congress to 'secur[e] for limited

times to Authors . . . the exclusive Right to their

The dissent takes exception to the characterization of section 102(b) as a “limiting
principle.” Dissent at 23. The dissent attempts to support this argument by making the
unarguable points that section 102(b) is a codification of the idea/expression dichotomy and
that use of the term “idea, procedure, process, system, method of operation, concept,
principle, or discovery” to characterize expression does not itself preclude
copyrightability. Even given these unarguable points, Section 102(b), nonetheless, is
a limiting principle and is "universally understood to prohibit any copyright in facts."
Feist, 499 U.S. at 356, 111 S. Ct. at
1293, 113 L. Ed. 2d 358. Of course, section 102(b) does more than prohibit facts from
being copyrighted; it emphasizes that copyright protection does not extend to ideas
procedures, processes, systems, methods of operation, concepts, principles, or
discoveries. Thus, if the expression is characterized as a “system,” for example, it is not
copyrightable if the characterization is accurate.

15
respective Writings.'" Id. at 346, 111 S. Ct. at
1288, 113 L. Ed. 2d 358 (quoting U.S. Const.

art. I, § 8, cl. 8).14 The Court also admonished
that:

Facts, whether alone or as part of a
compilation, are not original and
therefore may not be copyrighted. A
factual compilation is eligible for
copyright if it features an original
selection or arrangement of facts, but
the copyright is limited to the particular
selection or arrangement. In no event
may copyright extend to the facts
themselves.

Id. at 350, 111 S. Ct. at 1290, 113 L. Ed. 2d 358
(emphasis added).
Thus, the compiler's choices as to selection,

coordination, or arrangement are the only

portions of the compilation that arguably are

even entitled to copyright protection. As the
Feist Court noted, these choices must be made
"independently by the compiler and entail a

The terms "authors" and "writings" as used in the Constitution have been interpreted
definitively by the Supreme Court to "presuppose a degree of originality." Feist, 499 U.S.
at 346, 111 S. Ct. at 1288, 113 L. Ed. 2d 358.

16
minimal degree of creativity"15 in order to be
entitled to compilation copyright protection. Id.

at 348, 111 S. Ct. at 1289, 113 L. Ed. 2d 358.
The Feist Court further explained:
This protection is subject to an
important limitation. The mere fact that
a work is copyrighted does not mean
that every element of the work may be
protected. Originality remains the sine
qua non of copyright; accordingly,
copyright protection may extend only to
those components of a work that are
original to the author.

Id. Given these limitations on the scope of

copyright protection in a factual compilation, it

is abundantly clear that "copyright in a factual
compilation is thin." Id. at 349, 111 S. Ct. at

1289, 113 L. Ed. 2d 358.16 Only when one

The Supreme Court further clarified that “a minimal degree of creativity” requires
“more than a de minimis quantum.” Feist, 499 U. S. at 363, 111 S. Ct. at 1297, 113 L.
Ed. 2d 358.

There are three types of work that are entitled to copyright protection -- creative,
derivative, and compiled. Copyrights in these three distinct works are known as creative,
derivative, and compilation copyrights. An example of a creative work is a novel. An
example of a derivative work is a screenplay based on a novel; it is called "derivative"
because it is based on a preexisting work that has been recast, transformed, or adapted.
An example of a compilation is Warren's Factbook. The Act has created a hierarchy in
terms of the protection afforded to these different types of copyrights. A creative work is
entitled to the most protection, followed by a derivative work, and finally by a compilation.
This is why the Feist Court emphasized that the copyright protection in a factual compilation

17
copies the protected selection, coordination, or
arrangement in a factual compilation has one

infringed the compilation copyright; copying of
the factual material contained in the compilation
is not infringement.17

B. The Principal Community System Employed by Warren
To establish its claim of copyright

infringement, Warren must prove "(1) ownership
of a valid copyright, and (2) copying of

constituent elements of the work that are

original." Feist, 499 U.S. at 361, 111 S. Ct. at

1296, 113 L. Ed. 2d 358. The first element is

not at issue here, because Microdos does not
contest that the Factbook, considered as a

is "thin." 499 U.S. at 349, 111 S. Ct. at 1289, 113 L. Ed. 2d 358.

This point is emphasized in section 103(b) of the Act, which states that "[t]he
copyright in a compilation or derivative work extends only to the material contributed by the
author to such work, as distinguished from the preexisting material employed in the work,
and does not imply any exclusive right in the preexisting material." 17 U.S.C. § 103(b).

18
whole, is entitled to copyright protection.18 To
prove the second element, Warren must

demonstrate that Microdos, by taking the
material it copied from the Factbook,
appropriated Warren's original selection,

coordination, or arrangement. See BellSouth,
999 F.2d at 1441.

The district court found that Warren's
coordination and arrangement of the

communities listed in the Factbook was "an

obvious, mechanical, or routine task which
required no creativity," and thus concluded that

"the coordination and arrangement of the

communities selected is not copyrightable."

R4-36-11. That holding is not at issue on
appeal. The district court, however, agreed
with Warren that "the selection of those

communities was creative and protectable

Microdos does strongly challenge, however, the district court's finding that Warren's
system of selection of principal communities is copyrightable.

19
because Warren uses a unique system in
selecting the communities that will be

represented in the Factbook." Id. This system,
so concluded the district court, was "sufficiently

creative and original to be copyrightable." Id.
(footnote omitted). The district court then
employed "substantial similarity" analysis,19

concluding that Microdos's selection of

communities was substantially similar to that of
Warren and therefore infringed Warren's

compilation copyright.20 Based on this finding,

the district court entered summary judgment for

The test for infringement of copyrighted works is one of "substantial similarity." As
the Second Circuit has noted, the substantial similarity inquiry is "narrowed" when dealing
with a compilation. Key Publications, Inc. v. Chinatown
Today Publishing Enters., Inc., 945 F.2d 509, 514 (2d Cir. 1991). It explained that "the
components of a compilation are generally in the public domain, and a finding of substantial
similarity or even absolute identity as to matters in the public domain will not suffice to
prove infringement." Id. Therefore, "[w]hat must be shown is substantial similarity between
those elements, and only those elements, that provide copyrightability to the allegedly
infringed compilation." Id. (emphasis added).

The district court found that there was a greater than 90% correlation between the
principal communities in the Illinois section of the Factbook and the communities listed in
the Illinois section of the Cable Access software. The district court compared all four
versions of Cable Access with the Factbook and found the
correlation to range from 91.85% to 94.85%. R4-36-13-14.

20
Warren on the principal community selection
issue.

On appeal, the only issue before us is
whether the district court abused its discretion
in granting a preliminary injunction based on an

erroneous ruling on the principal selection
issue. We review the district court's grant of a

preliminary injunction for abuse of discretion.

Zardui-Quintana v. Richard, 768 F.2d 1213,

1216 (11th Cir. 1985). The district court abuses

its discretion when it grants a preliminary
injunction in spite of the movant’s failure to

establish “(1) a substantial likelihood that [the

movant] will ultimately prevail on the merits; (2)
that [the movant] will suffer irreparable injury

unless the injunction issues; (3) that the
threatened injury to the movant outweighs
whatever damage the proposed injunction may

cause the opposing party; and (4) that the
injunction, if issued, would not be adverse to
21
the public interest.” Id. Because we conclude
that Warren failed to establish a substantial

likelihood of success on the merits, we need
not address the additional elements required for
a preliminary injunction.

The district court found that "Warren has
developed a system for selecting communities

which is original in the industry. This selection

process represents a part of the format of the
compilation which is copyrightable." R4-36-16

(emphasis added). Since the district court

concluded that Microdos had "substantially

appropriated the copyrightable selection of

communities portion of the format of Warren's
Factbook," it held that "Microdos ha[d] infringed

Warren's copyright in the Factbook." R4-36-30.
The district court was correct in employing
"substantial similarity" analysis once it

concluded that Warren's system for selecting
communities was copyrightable. Where it
22
erred, however, was in concluding that
Warren's system of selection was copyrightable

in the first place.21

1. Warren's "System" of Selection
Section 102(b) of the Copyright Act
specifically excludes "any idea, procedure,

process, system, method of operation, concept,

principle, or discovery" from copyright
protection "regardless of the form in which it is

described, explained, illustrated, or embodied in

such work." 17 U.S.C. § 102(b) (emphasis

added). Nonetheless, the district court

concluded that Warren's "system" of selecting
communities was original and entitled to

copyright protection. R4-36-16. This

Since the district court erred in finding that Warren's system of selection was
copyrightable, the substantial similarity analysis was unnecessary, for even verbatim
copying of uncopyrightable matters is not infringement. As we noted in BellSouth, in the
case of a factual compilation, the original elements of the compiler's work are compared
with the corresponding elements of the putative infringer's work. 999 F.2d at 1445. In this
case, Warren's system of selecting principal communities is not copyrightable; therefore,
comparing this uncopyrightable selection with Microdos's system of selecting communities
is pointless.

23
conclusion is contrary to the plain language of
17 U.S.C. § 102(b), and is clearly incorrect.22 If

Warren actually does employ a system to select

the communities to be represented in the book,
then section 102(b) of the Act bars the
protection of such a system.

Even if we were to assume that the district
court incorrectly denominated Warren's

selection of communities as a "system," such

an assumption would not validate the district

court's finding of copyrightability. Warren

contends that it has a unique method of
choosing which communities to include in its

directory, based on its "principal community"

system. Warren defines a "cable system" as an
entity offering subscribers in one or more

communities the same cable services for the

The dissent is correct in arguing that use of the term “system” does not itself
preclude copyrightability under section 102(b). Rather, because the characterization
is accurate, Warren’s “system” is not copyrightable because it is a system and systems
are excluded from copyright protection under section 102(b).

24
same price. As the district court found, "[t]he
principal 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 principal community, not

independently."23 R4-36-10. The Federal

Communication Commission ("FCC"), unlike

Warren, does not use a principal community
system; rather, it lists individually every

geographical community having cable service.

As a result, if there are five communities served
by one "cable system," Warren would list the

The district court's finding on this matter is inaccurate. Each community served in
each state is listed separately in the Factbook; the principal community designation
eliminates the need for Warren to reprint duplicative factual information about a cable
system under every community that is part of the multiple-community system. Instead,
under the nonprincipal community headings, it has a cross-reference in order to inform the
reader of the principal community heading for that particular cable system. This directs the
user where to find the factual data for a particular cable system. What the district court
may have been attempting to explain is that in the Factbook, under the principal community
listing, there is included an "also serves" entry, in which the names of all of the nonprincipal
communities served by that multiple-community system are listed. This list identifies all of
the communities that are cross-referenced to the principal community listing.

25
system's data under the principal community
name, and there would be cross-references

under the listings of the names of the other four
communities. The FCC, on the other hand,
would list the data on all five communities

separately.24

At oral argument, Warren asserted, and the

dissent agrees, that the district court was

correct in finding that Warren is entitled to
copyright protection in its "selection" of

communities, which is based on its putatively

unique definition of a cable system. The
problem with this is that Warren does not

undertake any "selection" in determining what

communities to include in the Factbook.
Warren claims that its system of listing

communities does not include the entire
universe of cable systems, and thus there is

In many instances, Warren's "system" and the FCC's community list are identical,
for if a "system" only serves one community, then there is only one possible place to list the
data.

26
"selection" involved as to which communities
they include in their Factbook. This assertion,

however, is plainly wrong.
The district court found that the FCC, which
attempts to list individually every community

across the country with a cable system, had
724 communities listed for Illinois. R4-36-12.

Warren, it observed, listed 406 communities

under its principal community concept. Id. It

did note that "[n]umerous additional

communities were listed under the various
principal communities," but stated that they

were not separately listed.25 Id. Given that

Warren did not list all of the communities that

the FCC did, the district court concluded that
Warren did "select" which communities to
include in the Factbook, and thus its selection

This is an inaccurate statement. Every community in the Factbook is listed
separately, state by state, in alphabetical order. What is not listed separately under each
community name is the factual data about the cable system serving that particular
community -- this data is listed under the principal community listings only.

27
was copyrightable. In an unintentionally
prescient footnote, however, the district court

noted that :
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.

Id. at 11 n.9. Yet, this is precisely what Warren

did. The district court made the mistake of
comparing the number of principal communities

listed with the number of individual communities

listed by the FCC. Given the way the principal

community system works, however, that is like

comparing apples to oranges. The proper
method is to compare the 724 individual

communities listed by the FCC for Illinois with
the total number of communities listed by
Warren for Illinois; in other words, include not

only the principal communities listed, but also
those that are listed and are cross-referenced
28
to one of the 406 principal communities. Our
count of the total number of communities listed

for Illinois by Warren, both principal and
nonprincipal, is approximately 1,000.
Therefore, Warren seems to have included not

only all that the FCC listed, but also some
others that the FCC did not.26

The Second Circuit has noted that

"[s]election implies the exercise of judgment in
choosing which facts from a given body of data

to include in a compilation." Key Publications,

Inc. v. Chinatown Today Publishing Enters.,
Inc., 945 F.2d 509, 513 (2d Cir. 1991). In Key

Publications, the record indicated that the
compilation copyright holder did not include the

entire relevant universe in her directory; she

A likely explanation for this numerical disparity is that Warren lists not only names
of towns, villages, and cities, but also townships and counties. Therefore, this results in a
greater number of listings than the FCC, which seems to list by town, city, or village name
only. These additional listings in the Factbook are cross-referenced to the principal
community for the area, but they are nonetheless
individually listed by Warren, albeit with a one-line entry.

29
testified that she chose to exclude certain
businesses based on her belief that they would

not remain open for very long. As the court
noted, "[t]his testimony alone indicates thought
and creativity in the selection of businesses

included in the 1989-90 Key Directory." Id.

Warren, to the contrary, has failed to make

such a showing in this case. It did not exercise

any creativity or judgment in "selecting" cable
systems to include in its Factbook, but rather

included the entire relevant universe known to

it. The only decision that it made was that it
would not list separately information for each

community that was part of a multiple-

community cable system; in other words, it
decided to make the Factbook commercially

useful. Therefore, it cannot prevail in its claim
that it "selected" which communities to include

30
in its Factbook.27 The district court erred in
determining that Warren's system of selecting

communities was copyrightable.

2. The Originality Requirement

Even were we to assume that the

presentation of the selection of principal

communities made by Warren was creative and
original and therefore copyrightable, its claim

that it is entitled to protection would

nonetheless fail, because the selection is not its
own, but rather that of the cable operators. The

On an alternative ground, Warren's claim of copyright in its selection of communities
does not survive application of the merger doctrine. "Under the merger doctrine,
'expression is not protected in those instances where there is only one or so few ways of
expressing an idea that protection of the expression would effectively accord protection to
the idea itself.'" BellSouth, 999 F.2d at 1442 (quoting Kregos v. Associated Press, 937
F.2d 700, 705 (2d Cir. 1991)). If Warren were given protection in its principal community
system, the concept of cross-referencing would be subsumed in its copyright. The idea of
organizing by principal community yields very few ways, if not only one way, of expressing
the data. Each SSO has only one principal community. Each MSO has one obvious
principal community. For the compilation to be convenient and useful, not repetitive and
onerous, however, the nonprincipal communities in each MSO must be cross-referenced
to the principal community with the data listed only under the principal community. The
people for whom the Factbook and similar products are produced are not interested in
having information repeated under every community served by a multiple-community
system. Consequently, expression of the principal community selection has merged with
the idea, and thus the selection of principal communities is uncopyrightable.

31
district court found that the principal community
was "selected by contacting the cable operator

to determine which community is considered
the lead community within the cable system."
R4-36-10. As we observed in BellSouth, "these
acts are not acts of authorship, but techniques

for the discovery of facts."28 999 F.2d at 1441.

In BellSouth, a case involving a "yellow
pages" classified business directory, we held
that Donnelley Information Publishing, Inc.

("Donnelley"), "[b]y copying the name, address,

telephone number, business type, and unit of

advertisement purchased for each listing in the

BAPCO [BellSouth Advertising & Publishing

The dissent takes several opportunities to describe in substantial detail Warren’s
“acts of selection.” Dissent at 4-7, 14, 17. It should be noted, however, that analysis
of the compiler’s acts of selection is relevant only to determine whether the
compiler exercised any individual judgment that is equivalent to creativity. See
BellSouth, 999 F.2d at 1441. The industriousness of the collection is not relevant to a
determination of copyrightability. Feist, 499 U. S. at 359-60, 111 S. Ct. at 1295, 113 L.
Ed. 2d 358. “The fact that a finding of creativity is subjective often means the court can
apply a ‘sweat’ recognition of the developer’s labor and ignore the creativity
requirement.” Charles Von Simson, Note, Feist or Famine: American Database
Copyright as an Economic Model for the European Union, 20 Brook J. Int’l. L. 729, 768
(1995). The court in this opinion, as in BellSouth, does not succumb to
the urge to allow industrious collection to substitute for creativity.

32
Corporation] directory . . . copied no original
element of selection, coordination or

arrangement," and thus Donnelley was entitled
to summary judgment on BAPCO's copyright
infringement claim.29 Id. at 1446. The en banc
court stated that "[w]hile BAPCO may select the

headings that are offered to the subscriber, it is

the subscriber who selects from those

alternatives the headings under which the
subscriber will appear in the directory. The

headings that actually appear in the directory

thus[] do not owe their origin to BAPCO . . . ."

Id. at 1444. In this case, Warren employed a
method similar to that of BAPCO in "selecting"

the principal community heading under which to

The dissent questions the wisdom of this court’s en banc decision in BellSouth.
Dissent at 22 n.6. The dissent notes “considerable criticism” of the
opinion and cites a student note to show support for this contention. Dissent at 22 n.6.
Another student note, however, considered the en banc decision to be consistent with
Feist, stating that “[t]he first appellate decision demonstrate[d] the way sympathy for the
effort expended by the compiler will lead some courts to find creativity in anything. The
second appellate decision exemplifie[d] proper application of Feist’s creative selection.”
Von Simson, 20 Brook. J. Int’l L. at 748.

33
list the data for the multiple-community
systems.30

Lynn Levine, the Director of Market
Research and Data Sales for Warren, stated in

her deposition that Warren determines the
names of the communities served by a cable

system by contacting the operators of the cable
systems and asking them which communities
they serve. Levine dep. at 53. In addition, she

stated that Warren, in gathering data for the

Factbook, relied in "great part" on the

As noted before, in the case of a single-community system, there is only one
community served and therefore only one possible principal community. Thus, no
argument can be made regarding the selection of the principal community in the case
of a single-community system. The record shows that in the Illinois section of the
Factbook, approximately fifty-five percent of the principal communities are single-
community systems. For the remaining principal communities, which are all part of
multiple-community systems, Microdos contends that over two-thirds of them are simply
the community in the multiple-community system that, according to FCC records, has
the highest number of subscribers. En Banc Brief of Appellants at 37-38. Warren
cannot make any tenable argument regarding selection in these instances
either, given that their "selection" is nothing more than discovery of facts that are
contained in the publicly-available FCC records.
The dissent seems to argue that creativity exists because the principal
community could be determined in more than one way. Specifically, the cable system
operators could be contacted to identify their principal communities or the principal
community could be determined by external factors, like the number of subscribers.
Dissent at 15-16. The dissent ignores the fact that these methods are likely to identify
the same principal community -- without necessitating any judgment on the part of
Warren. For example, a cable operator is likely to designate its principal community as
the community with the most subscribers.

34
questionnaire responses received from the
various cable operators. Id. at 35. These acts

are nothing more than techniques for the

discovery of facts. Simply because Warren
may have been the first to discover and report
a certain fact on cable systems does not

translate these acts of discovery into acts of
creation entitled to copyright protection.31 See

For a compilation to be creative, and hence copyrightable, the compiler must
exercise individual judgment. Key Publications, 945 F.2d at 513. The dissent makes
much of the fact that Warren was the first to organize a comprehensive directory of
cable systems by principal community rather than by discrete community that
represented the franchising entity. The dissent suggests that Warren newly defined the
industry because the industry originally developed around these franchising entities.
Dissent at 2. The evolution of the industry, however, did not develop around franchising
units but around geographically distinct areas. The Supreme Court in Turner
Broadcasting Systems, Inc. v. F.C.C., ___ U.S.___, 114 S. Ct. 2445, 129 L. Ed. 2d 497
(1994) reviewed the development of the industry: “The earliest cable systems were
built in the late 1940's to bring clear broadcast television
signals to remote or mountainous communities. The purpose was not to replace
broadcast television but to enhance it.” Id. at ___, 114 S. Ct. at 2451, 129 L. Ed. 2d
497. Thus, although acknowledging that cable systems depended on the express
permission of local governing authorities since “[t]he construction of th[e] physical
infrastructure entail[ed,] the use of public right-of way and easements, the Supreme
Court recognized that geography and population, rather than franchising entities,
influenced the location and extent of early cable television systems.
Even if the industry was newly defined, as the dissent contends, when Warren
organized cable systems under principal communities, however, the creative element
is still lacking in Warren’s compilation. The mere discovery of an organizing principle
which is dictated by the market is not sufficient to establish creativity. “The distinction
is one between creation and discovery: The 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, 111 S. Ct. at 1288, 113 L. Ed. 2d 358. The same can be said for an
organizing principle like the “principal community.” Thus, even if Warren discovered the
existence of the principal community as an organizing concept, Warren did not create
this organization.

35
Feist, 499 U.S. at 347, 111 S. Ct. at 1288, 113
L. Ed. 2d 358 (distinguishing creation from

discovery). "Just as the Copyright Act does not
protect 'industrious collection,' it affords no
shelter to the resourceful, efficient, or creative

collector." BellSouth, 999 F.2d at 1441.
The record indicates that it is the cable

operators, not Warren, that determine, in the
case of a multiple-community system, the

community name under which to list the factual

data for the entire cable system. Therefore,
Warren cannot prevail in its claim that it

undertakes original selection in employing the

principal community concept. Rather, it has

created an effective system for determining
where the cable operators prefer to have the
data listed. While Warren may have found an

efficient method of gathering this information, it
lacks originality, which is the sine qua non of

copyright. See Feist, 499 U.S. at 345, 111 S.
36
Ct. at 1287, 113 L. Ed. 2d 358. Thus, the
district court erred in finding that Warren's

principal community "system" was sufficiently
creative and original to be entitled to copyright
protection.

III. CONCLUSION
The district court erred in granting Warren a

preliminary injunction based on its erroneous
ruling on the principal community selection

issue. Although the record indicates that

Microdos's choices as to where to list the

factual data on cable systems had an extremely

high correlation with Warren's principal
community listings, Microdos copied no original

selection, coordination, or arrangement of
Warren's factual compilation. Warren thus
failed to show a substantial likelihood of

success on the merits. We therefore VACATE
the preliminary injunction entered by the district
37
court and REMAND for proceedings consistent
with this opinion.

GODBOLD, Senior Circuit Judge, dissenting, in

which HATCHETT, Chief Judge, and
BARKETT, Circuit Judge, join:
The district court understood this case. It

held that Warren's compilation of selected data

concerning cable television operations, in the

form of data-reporting units with each unit

named for a principal community within the unit,
was original and creative. Its decision should
be affirmed.

I. Introductory

The Copyright Clause of the Constitution
provides that Congress has the power to secure
to authors "the exclusive Right to their
respective Writings." U.S. Const. art. I, § 8, cl.

38
8. Therefore originality -- authorship -- is a
constitutional requirement. By 17 U.S.C. § 102

Congress provided for copyright protection to
original works of authorship. 17 U.S.C. § 103
provides that § 102 includes compilations. 17

U.S.C. § 101 defines 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.

Thus, originality is also a statutory requirement.

Warren's compilation was held by the

district court to be protected as an original work
of authorship "selected" pursuant to § 101. It is

a work containing data on cable television
operations nationwide, issued annually in book
form, entitled Television and Cable Factbook,
and the volume in question is the 1988 edition.
It contains collected data selected and
39
assembled into reporting units each of which
comprises a functional "cable system," which

Warren defines 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." Each "cable system" bears the
name of a "lead" or "principal" community within

the system. That name identifies the cable

system, and data for the system is presented

under that name.32 To simplify the evidence the
parties have accepted that evidence concerning

cable television operations in the state of Illinois
is representative.

Understanding Warren's compilation, and

this case, requires one to understand that cable
television service exists by authority of

As the district court succinctly put it,
"how one defines a `cable system' will dictate
the communities selected to represent those
systems [i.e., the principal communities]." Dis
Ct. op. p. 10.
40
franchises granted by organized governmental
units, usually cities and counties. The district

court found how, prior to Warren's work, the
various compilers of industry data commonly
compiled and arranged information concerning

cable television operations:
Warren Publishing admits that the cable
system information coordinated and
arranged by the various compilers in the
industry is commonly organized
alphabetically by state and then
alphabetically by community within the
states.

Dis. Ct. op. p. 10. This common form of
organizing and presenting data is not surprising

since franchises to operate sprang from

discrete communities. Moreover, this accords
with Federal Communications Commission

definitions. FCC defines a "cable television
system" as a facility that provides cable service
to subscribers "within a community." 47 C.F.R.

§ 76.5(a). Also, it defines a "cable television
system" as one that "operates . . . within a
41
separate and distinct community." 47 C.F.R.
§ 76.5(dd). Type and extent of service, rates,

commonality of service with other communities,
and sharing of facilities or equipment or staff or
management are not elements of FCC

definitions of cable systems. As the industry
developed innumerable new cable operations

were franchised and activated, some

contiguous to existing franchises, others

disassociated and far distant from previously

franchised communities, some operators with a
single franchise, others with more than one.

Over time cable operations were sold, merged,

expanded in area, mechanical equipment was
shared, and staff and servicing combined or

shared. Geographic areas of service changed.
But the industry norm for selecting and
presenting data remained the community.

Against this background one must examine
what, in a general sense, a compiler does and,
42
in a specific sense, what Warren as compiler
did. The creator of a compilation responds to a

perceived need for information, and that
response may be a highly creative act but at
this initial stage it is only an idea and clearly not

copyrightable. William S. Strong, Database

Protection After Feist v. Rural Telephone Co.,

42 J. Copyright Soc'y U.S.A. 39, 47 (1994).

Responding to the perceived need the compiler
must choose the facts it wants and devise a

framework for the data to be assembled, which

includes formulating rules and identifying
categories that may be highly selective but are

not necessarily so. Id. Categories desired may
be limited or dictated by their utility or by the

marketplace and hence involve no originality, or
they may be original to the compiler. It is at this
identification/formulation of categories stage

that the compiler moves from uncopyrightable

43
idea to acts of selection that are the expression
of his ideas.

Warren grasped the "perceived need for
information" reflecting the present nature of the
cable television industry and the past practices

of the industry for selecting and presenting
data. It then chose the facts it wanted to

compile. The Supreme Court has recognized

this choice of facts as part of a compiler's

authorship: "The compilation author typically

chooses which facts to include, in what order to
place them, and how to arrange the collected

data so that they may be used effectively by

readers." Feist Publications, Inc. v. Rural
Service Co., Inc., 499 U.S. 340, 348 (1991).

See also Key Publications, Inc. v. Chinatown

Today Publishing Enters., Inc., 945 F.2d 509,
513 (2d Cir. 1991), "Selection implies the

exercise of judgment in choosing which facts

44
from a given body of data to include in a
compilation."

At the initial stage of choosing the facts that
it wanted Warren moved from idea to
intellectual expression through selection. The

selection of facts it wanted were not the facts
that previously the industry had compiled in

terms of community. Rather Warren chose to

select and present facts that reflected the way

the industry is currently actually operating. Its

choice was reflected in functional
service/operations/management terms. The

building block, the data-reporting unit, for

selection and presentation of industry data was
the "cable system" as newly defined by Warren,

"an entity composed as one or more
communities that are offered the same service
by the same cable system owner at the same

price." Warren had, as Strong, supra, has
described it, devised a framework for the data
45
to be assembled and had formulated selective
rules and categories. Reporting data by a

functional unit was a new and original concept,
and the implementing definition of "cable
system" was new to the industry and crafted by

Warren.
Next, it was necessary for Warren to define

and identify the universe of raw data from which

it would select and present information. It

chose a universe composed of all geographic

communities (in the state of Illinois, the
representative state) having cable television

service. This defined universe was itself new.

It consisted of 1,000 plus geographic
communities (1,017 by one count, 1,045 by

another). It included cities, towns, and villages,
and also included counties and townships,
which historically were not usual franchise-

granting units. The FCC maintained its own list
of cable systems (as it defined them),
46
composed of cities, towns and villages, that is,
franchise-granting units. FCC's universe was

724 communities. Warren's
functional/operational definition swept in non-
franchising geographic areas receiving service.

Its universe of raw data was thus new in
concept and some 40% larger in number of

communities than the FCC universe.

As its next step Warren identified and

selected from its universe 406 data-reporting

units in Illinois, each a "cable system" pursuant
to its functional definition. Then, drawing from

the 1,000 plus universe, Warren had to identify

and properly locate within the proper unit of the
406 each geographic community enjoying cable

service. More than half of the 406 Illinois cable
operations turned out to be single-system
operations (SSO's), that is, each served only a

single community. A multiple community
system (MSO) served more than one
47
community. Each SSO, because of its
singularity, fell within Warren's same

operator/same service/same price definition of
a cable system. The name under which its data
was presented was necessarily that of the

single community it served. Having located
within the proper cable system (MSO or SSO)

each community served, for MSO's Warren had

to merge or combine the operating data for

each community into one unitary body of

operating data to be reported for the system.
Data relating to each geographic community

served was no longer independently listed

community-by-community but instead was
included in the unitary system data. The name

of an individual (nonprincipal) geographic
community whose service was operated and
managed as part of a cable system appeared

but without data and was cross-referenced to
the system where its data was included in the
48
unitary data. This referencing was necessary,
of course, because data-reporting was unitary

rather than individual.
As part of Warren's acts of selection it was
necessary for it to choose a name by which

each cable system would be listed and
identified and under which the system data

would be set out. For this purpose Warren

elected to use a geographic name, and the type

of geographic name it chose was that of the

"lead" or "principal" geographic community
within the system. Obviously, for an SSO the

name of the single community served was

selected. When these acts were concluded
Warren's selection (406 units) consisted of 45%

fewer data-reporting units than the FCC's listing
of 724.
II. Originality and creativity

We are faced in this case with what Feist
described as the "undeniable tension" between
49
two well-established propositions -- that facts
themselves are not copyrightable but

compilations of facts generally are. 499 U.S. at
344-45. A compilation draws its originality from
its selection and arrangement.

Factual compilations, on the other hand,
may possess the requisite originality.
The compilation author typically
chooses which facts to include, in what
order to place them, and how to arrange
the collected data so that they may be
used effectively by readers. These
choices as to selection and
arrangement, so long as they are made
independently by the compiler and entail
a minimal degree of creativity, are
sufficiently original that Congress may
protect such compilations through the
copyright laws. Nimmer § § 2.11[D],
3.03; Denicola 523, n. 38. Thus, even a
directory that contains absolutely no
protectable written expression, only
facts, meets the constitutional minimum
for copyright protection if it features an
original selection or arrangement. See
Harper & Row, 471 U.S., at 547, 105
S.Ct., at 2223. Accord, Nimmer § 3.03.

Id. at 348. The originality necessary to render
Warren's work copyrightable lies in its selection
of data as provided by § 101. The selection
50
must be done "in such a way" that it possesses
the necessary originality.

What does "originality" mean? The
selection must be made independently by the
compiler, not copied, and must owe its origin to

the author. Novelty is not required. But
selection must entail a minimal degree of

creativity.33

How much originality is required? Feist tells

us: "a modicum of intellectual labor," 499 U.S.

at 347; "independent creation plus a modicum
of creativity," id. at 346; "at least some minimal

degree of creativity," id. at 345; "the requisite
level of creativity is extremely low; even a slight

amount will suffice," id. at 345. Nimmer

expresses the degree of originality this way:

It is of only semantic significance
whether originality is defined as embodying
creativity or whether creativity is regarded as a
necessary adjunct to originality. But it is clearer
to refer to them as separate elements. Nimmer,
§ 201[B], p. 2-15.
51
 It has been said that all legal
questions are in the last analysis
questions of degree, requiring judicial
line drawing. Certainly, copyright law is
replete with such questions. The
determination of the quantum of
originality necessary to support a
copyright presents such a question. It is
not, however among the more
troublesome questions of degree
inherent in copyright law, as the line to
be drawn includes almost any
independent effort on the side of
sufficient originality.
Melville B. Nimmer and David Nimmer, Nimmer

on Copyright § 2.01 [B], at 2-13 (1996). And

[O]riginality for copyright purposes
amounts to . . . little more than a
prohibition of actual copying.
Nimmer, § 2.01B[, p. 2-14 (quotes and internal

quotes omitted). Accord, Key Publications,
supra, at 513.

Warren's selection entails more than the

required degrees of originality and creativity.
Warren saw the need, chose the facts it wanted
to compile, chose how it wanted to arrange

them in gathering points for data rather than by
individualized presentations. It employed a new
52
concept of gathering cable data into a smaller
number of units and, for this purpose, it devised

a new concept of a cable system as functionally
defined and a new concept (and new title) of
"principal community." It is sufficient if there is

a "small spark of distinctiveness," but this is no
small spark. It is a fundamental change in

reporting data of a changing and developing

industry. The fact that some of the data-

reporting units were SSO's does not diminish

the fact of Warren's acts of selection or of the
originality and creativity of the selection, which

required Warren to determine whether each of

the 1,000 plus systems was a single community
system (SSO) or part of a multiple community

system (MSO) and to assemble and report
system data accordingly.
Along with originality of selection and

arrangement is a related but different
requirement. The Constitution authorized
53
protection of the work of an author. The
claimant to copyright protection must be an

author, not a mere discoverer of facts.
No one may claim originality as to facts.
Facts may be discovered, but they are
not created by an act of authorship.
One who discovers an otherwise
unknown fact may well have performed
a socially useful function, but the
discovery as such does not render him
an `author' in either the constitutional or
statutory sense.

Nimmer, § 2.11[A], p. 2-172.16 (footnotes

omitted). But by hypothesis a compiler collects

and assembles the work of others, and his
compilation is a "work formed by the collection

and assembly of preexisting material." See 17

U.S.C. § 101.
In the tension between facts and

compilation of facts there are some facts that
cannot trigger copyrightability. In a narrow
range of circumstances facts themselves may

be of such character that a work relating to
them is incapable of meeting the requirement of
54
a "work of authorship" referred to by the
Constitution and by the statute. These might be

called "public domain facts," known to or
available to the world at large. Feist, at pp.
347-48, refers to census data, scientific and

historical and biographical facts, and news of
the day. Professor Nimmer refers to scientific

facts as to the nature of the physical world,

historical facts, and contemporary news events.
Nimmer, § 2.03[F], at p. 2-36. Regulations

covering "Registration of Claims to Copyright"

provide in 37 C.F.R. § 202.1:
Material not subject to copyright
...
(d) Works consisting entirely of
information that is common property
containing no original authorship, such
as, for example: Standard calendars,
height and weight charts, tape
measures and rulers, schedules of
sporting events, lists or tables taken
from public documents or other common
sources.

Another narrow range of facts do not fit
neatly within the "public domain" category but
55
nevertheless are so obvious or trivial that no
creativity will transform mere selection of them

into copyrightable expression. Nimmer
§ 201[B], p. 2-14. In Feist, the telephone
company's white page directory alphabetically

listed telephone users by name, town and
telephone number. 499 U.S. at 362. The

subject matter was not original with the

telephone company, and the company's use of
the facts through alphabetical listing was not

only unoriginal but practically inevitable. Id. at

363. The Supreme Court "ultimately reversed
[in Feist] on the ground that plaintiff's white

pages directory was not copyrightable at all."

Jane C. Ginsburg, "No Sweat"? Copyright and
Other Protections of Information after Feist v.

Rural Telephone, 92 Colum. L. Rev. 338, 342.
In BellSouth Adv. & Pub. Corp. v. Donnelley
Info. Pub., Inc., 999 F.2d 1436 (11th Cir. 1993)

(en banc), BAPCO's heading structure, for
56
example, "Attorneys" or "Banks", represented
such obvious labels for the entities appearing

beneath that they lacked the required originality
for copyright protection.
III. The opinion of this court

Apart from two lesser points discussed in
Parts V and VI below, the opinion of this court

has these main premises:

(1) The Factbook does not come within the

"selection" prong of the § 101 definition of a

"compilation" because no selection has been
made (by anybody), since the Factbook lists all

geographic communities having cable service.

(Mss. pp. 22-26.)
(2) Assuming that the Factbook is

sufficiently creative and original to be
copyrightable, Warren's claim of protection fails
because:

(a) Warren seeks copyright protection
for mere techniques for discovery of facts.
57
 (b) The selection of principal
communities was made by cable operators and

not by Warren. Therefore, Warren does not
meet the constitutional requirement that it be
the "author" of the compilation, rather it is

engaged in mere discovery of facts.
I take these up in the above sequence.

(1) The premise that the Factbook contains no

selection at all because it lists the universe
composed of all geographic communities having

cable service.

It is puzzling that this argument is seriously

advanced. It is a play on words such as

"listing" and "including" and it confuses the
universe of data with the data drawn from the

universe. As noted in the opinion of this court,
(Mss. p. 26), the district court itself recognized
that a list of a universe (in that reference, FCC's

universe) would of itself not be original and,
therefore, not copyrightable. Warren claims no
58
copyright on the universe, and the district court
found no copyright on such a list. Warren

claims, and the district court found, a copyright
on the selection of data drawn from the
universe. Definition of a universe of data was

an essential initial step in selection, but no
claim is made that the universe by itself is

copyrightable as a selection. The district court's

references to "selected communities" are

plainly references to communities as selected

and presented through Warren's 406 cable-
system data-presenting units. K e y
Publications, supra, tells us that selection

implies the exercise of judgment in choosing

which facts from a given body of data to include
in a compilation. 945 F.2d at 513. There the
compiler's universe consisted of a multitude of

businesses that she thought of interest to
Chinese-Americans. The infringer urged that
the compiler had made no selection but had
59
included every business of which she had
information. The court found that she had

excluded businesses she thought might not
remain open for very long, and this alone
indicated the necessary thought and creativity.

Id. The compiler did not list the universe, only
the selected businesses. This court suggests

that Warren has no copyright protection
because it "included" its universe as well as its

selected data. This misconceives the work of

selection. All communities were selected, some
identified and located in MSO's, others in

SSO's.

(2) The premise that, assuming that the
Factbook is sufficiently creative and original to be

copyrightable, Warren's claim of protection fails
because:
(a) The premise that, as in BellSouth, Warren
seeks copyright protection for mere techniques for

discovering facts.
60
 This is a baffling premise. In BellSouth the
district court had described acts that BAPCO

performed as alleged "acts of selection" --
geographic limits, closing dates for entries,
requiring yellow page subscribers to use

business telephone service, and use of
marketing techniques such as free listings and

on-site visits. On appeal this court found that

the district court had erred in not considering

whether these alleged acts of selection met the

level of originality, therefore it examined the
acts. 999 F.2d at 1441. This court then held

that through these strategies and marketing

techniques BAPCO had learned that
subscribers described their businesses in

particular manners in yellow page listings and
would pay for listings under certain business
categories. The strategies and techniques

used by BAPCO were not selected facts at all in
the copyright sense but were merely creative
61
means used to discover the facts it wanted to
learn, merely industrious means for collecting

data. These "uncopyrightable formative acts
used to generate [the] listings were not entitled
to copyright protection." Id. at 1441.
Warren seeks no copyright on the means it

used to find out facts. It has no strategies or
marketing techniques. As acts of selection it

collected facts in the old-fashioned way.34 It

collects data from trade publications, FCC

records and reports, newspaper and magazine
clipping services. Each year it sends

"thousands and thousands" of questionnaires to

over 10,000 cable operators in the country,

This court suggests (n. 27) that Warren's
acts of selection merely show industriousness,
which is not relevant to copyrightability. To the
contrary, Warren's acts of selection are
examined, just as this court in BellSouth
examined BAPCO's acts of selection, 999 F.2d
at 1441, to determine whether those acts met
the level of originality to extend copyright
protection.
62
which are used to identify changes from the
preceding year and to update. If a system does

not respond or responds inadequately Warren
telephones the operator to obtain update data.
It follows leads to new systems. A staff of over

20 people spend the entire year gathering data,
inputting, checking, conferring and updating. It

confirms with some operators the geographic

areas they are currently serving. It contacts

some operators to inquire what community is

considered to be the lead or principal
community. These are all fact-gathering

techniques. None is claimed to enjoy copyright

protection.
(b) The premise that the selection of

principal communities was made by cable operators
and not by Warren, therefore, Warren does not meet
the constitutional requirement that it be the "author"

of the compilation, rather it is engaged in mere
discovery of facts.
63
 First, as a matter of fact did Warren
delegate to operators the choice of principal

communities? The district court found "[t]he
principle community used to represent the
entire system, is then selected by contacting

the cable operator to determine which
community is considered the lead community

within the cable system." (Op. 10.) This court

draws upon that statement to conclude that

Warren has made no selection of principal

communities or that it accepts as conclusive
operators' consideration of what are principal

communities of their respective cable systems.

This single sentence by the district court does
not bear the weight of this court's conclusions.

The phrase "contacting the cable operator to
determine" the principal community was used
by a witness. Elsewhere a witness explained

that a call might be made to an operator to
determine in conjunction with the operator the
64
identity of the principal community. Moreover,
this court's conclusions are inconsistent with

Microdos' position. Before the panel Microdos
asserted that the choice of the principal
community is controlled by external objective

factors. It urged that the principal community is
the one with the greatest number of

subscribers. It has suggested the principal

community is the "largest," which it infers to be

the most populous because, Microdos says, it

will generate the most subscribers. It has
asserted that the lead community is the site of

the headend (the location of equipment used to

process television signals for redistribution to
cable subscribers).35 Also, Microdos has

Television signals may be received by
satellite, by microwave tower, or by telephone
lines from television stations. Microwave
towers generally are located on high ground
that may be unrelated to other facilities of the
operator and not necessarily even in the area
served by the cable system. Many systems
have multiple headends. It has been suggested
65
strenuously urged that Warren draws the
identity of the principal community from data it

finds in Federal Communications Commission
reports. Additionally, in its petition for rehearing
en banc it has called the court's attention to

Atlanta as the principal community for its cable
service, chosen, Microdos says, because it is

the dominant municipal area served and

everybody knows that it is the principal

community. It is obvious that these objective

factors are relevant to determining the identity
of the principal community of a cable system,

and Microdos accordingly has relied upon

that "lead" community means the site of the
managerial headquarters of the system, where
a customer, salesmen for cable equipment, or
a potential advertiser may seek the manager or
the engineer or the sales manager. But
managerial headquarters is not necessarily
even in the area served, and examination of
Illinois systems in the Factbook shows that
frequently it is not.

66
them.36 But this court has laid all these aside as
having no significance, indeed as though never

uttered, in favor of its own conclusion that it is
the cable operators, not Warren, that determine
in the case of a multiple community systems,

the community name under which to list the
pertinent data for the entire cable system. (Mss.

p. 33.)

Alternatively, this court proposes (n. 29) that

a cable operator is "likely" to designate as its

principal community the community with the
most subscribers, therefore no exercise of

judgement was required by Warren to select the

principal communities. I have pointed out the
many factors asserted by Microdos itself as

relevant to selection of the principal community.
Neither the record, nor Microdos, supports the

Other relevant factors are miles of cable
and numbers of homes passed in a particular
community.
67
"likelihood" that the principal community will be
the one with the most subscribers, nor the

statement (n. 26) that every MSO has one
"obvious" principal community. That may be so
as to Atlanta ("everybody knows it is the

principal community"), but a study of some 406
principal communities in Illinois, most of them

smaller towns and cities, discloses no such

"obvious" character.

This court (Mss. p. 31) analogizes Warren's

contacts with operators to what it describes as
the "similar" selection of headings made by

telephone users in BellSouth. But, as BellSouth

noted, the headings offered to BAPCO
subscribers did not originate with BAPCO but

were obvious and unoriginal labels for business
categories such as "Attorneys" or "Banks." 999
F.2d at 1445. The BAPCO subscriber ordered

from an unoriginal menu of business categories
the menu item it liked and would pay to be
68
listed under in the yellow pages. Warren's
category, "principal community," is neither

obvious nor unoriginal. The cable operator in
this case was asked for operational information
about how his business was currently

functioning, to be listed in an operations
directory. The extensive objective factors

advanced by Microdos itself demonstrate

relevant criteria that bear on this industrial

directory listing.

Moreover, this court has focused upon the
selection of the principal community, whose

name the system will bear, as though that is all

that the case is about. The acts of selection
carried out by Warren were a stream of events,

beginning with its choice of the facts it wanted
and the construct of a functional methodology in
which to develop and present them. The use of

a geographic name for each cable system, and
the choice of the names of principal
69
communities as identifiers, and the decision on
a particular name, were not isolated acts of

selection like Athena springing full grown from
the brow of Zeus, or a decision made by a snap
of someone's fingers, or a mechanical decision

from a single telephone call, or by numerous
calls. They were parts of the stream of acts of

selection that I have described. This court does

not, however, refer to Warren's exercise of

judgment in creating this structure of selection

and in choosing the facts to be reported and
how to report them. Yet these acts of selection

are independent expressions of the author,

part of the overall "work of authorship."37 This

The selections made of categories --
"cable system," "principal community," -- are by
themselves, acts of selection that
meet requirements of originality. CCC
Information Services, Inc. v. Maclean Hunter
Mkt. Reports, Inc., 44 F.3d 61 (2d Cir. 1994),
held copyrightable a compilation of the
compiler's predictions of
used car valuations based upon market data
and the compiler's judgment and expertise.
70
court does not hold them to be unoriginal or
non-creative. Instead, it ignores them and

treats this case as turning on the single fact of
the source of information about principal
communities. This trivializes what this case is

about. Laying aside the foregoing, I turn to
this court's conclusion that Warren does not

meet the requirements of authorship because it

is a "mere discoverer" of facts. The difference

between mere discovery of facts by Warren and

authorship by Warren cannot be based on the
single fact that Warren is engaged in collecting

One of the elements of originality held to pass
Feist's threshold was the use of the abstract
concept coined by the compiler, of the
"average" vehicle in each category. Id. at 67.
The Second Circuit held the compilation was
protected and that the district court erroneously
applied a higher standard of originality than
Feist. Kregos v. Associated Press, 937 F.2d
700 (2d Cir. 1991), concerned a form that
displayed statistics on the recent past
performances of baseball pitchers scheduled to
start the next day's games. The compiler's
selection of statistics survived summary
judgment motion alleging lack of originality.
71
information. All compilers are collectors of facts
collected from some other source. If the fact of

collecting data from an original source deprives
a compiler of authorship status, all the vitality is
drained out of the congressional provision for

copyright of compilations in §§ 101 and 102.
Warren's status as author versus mere

discoverer requires examination of the nature of

the facts discovered. If they are "public

domain" facts, or such facts as by their nature

cannot support originality, Warren is not an
author. If, however, Warren has collected facts

that are capable of supporting originality, and it

meets the statutory requirements for selection
and presentation, then both statute and the

constitutional provision for originality
(authorship) are met. The linchpin of Feist is
the nature of the underlying facts (names,

towns and telephone listings) that would not
support copyrightability. BellSouth has the
72
same linchpin: headings, such as "Attorney"
and "Banks" that were not original expressions

of an author but mere facts, obvious if inevitable
classifications drawn from the public domain. In
both cases, Feist and BellSouth, the compiler
was gathering information that would not

support copyrightability.
Warren's facts do not fit into these narrow

categories of uncopyrightable facts. Data on

how businesses in a growing and changing
industry are owned, operated and managed is

not public matter like today's news event, or the

speed of a falling object, or the face of the

calendar, nor is it unoriginal subject matter

open to and utilized by the world at large like
the telephone listings of Feist. Its facts are
functional data of a changeable and changing

industry, structured in a new and original

format. Its gathering of these facts from original
sources is authorship, not mere discovery.
73
 U.S. Payphone, Inc. v. Executives Unltd. of

Durham, Inc., 18 U.S.P.Q.2d 2049 (4th Cir.
1991), is a per curiam with Justice Powell on

the panel. The compiler assembled and
summarized public information on state tariffs
regulating fees payable to telephone utilities by

owners and operators of pay telephones. The
summarized information was presented in the

format of one sheet for each state. The court

found:

Payphone's selection and organization
of the state tariff material was
sufficiently subjective and original to
make the Tariff Section copyrightable
material.

18 U.S.P.Q.2d at 2051.

IV. BellSouth does not ring for this case
It is understandable that judges of this court
wish to be faithful to the en banc decision in
BellSouth. But we need not extend it. I gather

in one place the reasons this decision is not
controlled by BellSouth.
74
 (1) BellSouth concerned uncopyrightable
facts, obvious headings drawn from the public

domain. This case does not.
(2) The district court in BellSouth found that
the compiler's establishment of the geographic

limits of its directory and of a closing date for
listings were acts of selection. This court found

these were uncopyrightable acts common to

compilations. 999 F.2d at 1441. There are no
such acts in the present case.

(3) In BellSouth this court found that the

district court had erred in treating as
copyrightable facts that were not copyrightable

facts at all but merely techniques for the

discovery of facts -- marketing techniques and

sales strategies. Warren has no such
techniques and strategies and it relies upon
selection and presentation of facts.

(4) Much of the BellSouth decision

concerns BAPCO's claims of originality based
75
upon the coordination and arrangement
provisions of § 102. 999 F.2d 1442-44. These

issues are not present in this case. The district
court ruled against Warren on coordination and
arrangement, and this holding is not an issue in

this appeal.
(5) BAPCO failed to establish that its

structure of headings was "original expression,"

that is, that it was the author of the headings

such as "Attorneys" and "Banks." Without

question Warren is the creator of the heading
"principal community," a name previously

unknown to the industry and implicating the

concept of a data-reporting unit previously
unknown. BellSouth found that an expressive
act of dividing such obvious categories as
"Attorneys" into subcategories (such as
bankruptcy lawyers and criminal lawyers)

merged into the idea of listing in a directory the
subtitles as a class of business. 999 F.2d at
76
1444. There are no such subdivisions in this
case, and, as discussed below in Part VI,

merger does not fit, indeed does not even come
close, to this case. (6) At the heart of
BellSouth is the single fact of the subscriber's
selecting an appropriate heading from the menu

of obvious and unoriginal headings. The
selection involved in the present case is a

stream of original and nonobvious acts only one

aspect of which involves choice of names for

77
data-reporting units.38 V. Use of the word

While I do not suggest that BellSouth be
abandoned, it has drawn considerable criticism.
Wood, Ethan L., Copyrighting the Yellow
Pages: Finding Originality in Factual
Compilations, 78 Minn. L. Rev. 1319, 1335
(1994): "The Eleventh Circuit's approach
directly contradicts Key Publications"
[discussed above in text]. . . . "The Eleventh
Circuit opinion in BellSouth is much more
hostile than Key Publications to claims of
copyright infringement of the yellow pages." Id.
at 1333. "The Eleventh Circuit's BellSouth
decision used a standard of originality that is
inconsistent with the Supreme Court's approach
in Feist." Id. at 1336. "[T]he Eleventh Circuit
has raised the threshold of required originality
higher than the Feist decision established." Id.
at 1337. And finally, "[U]nlike the Eleventh
Circuit, the Second Circuit, which has
traditionally been the most influential in
developing copyright law, properly follows the
Feist approach." Id. at 1339 (footnote omitted).

See also Nimmer § 3.04[B], p. 3-31
(footnotes omitted):

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, such as the
white pages of a copybook.
Other post-Feist decisions cannot be
78
"system" does not bar copyrightability
The district court used the word "system" in

referring to Warren's acts of selection, and the
panel opinion by this court fell into the same
phraseology. 17 U.S.C. § 102(b) tells us that

copyright protection for an original work of
authorship does not extend to a "system." This

court relies upon § 102[b] as a bar to

copyrightability. Neither district court nor the

panel addressed § 102(b), nd one may infer

that both courts used the word "system" in a
generic, everyday sense and not as a word of

art under § 102(b).

squared with BellSouth. See CCC Information
Services, Inc. v. Maclean Hunter Mkt. Reports,
Inc., 44 F.3d 61 (2d Cir. 1994), in footnote 5,
supra.

See also U.S. Payphone, Inc. v.
Executives Unltd. of Durham, Inc., 18
U.S.P.Q.2d 2049 (4th Cir. 1991), discussed
above in Part III.
79
 In any event, § 102(b) is not, as this court
describes it, a "limiting principle." In the leading

case, Toro Co. v. R. & R. Products Co., 787
F.2d 1208, 1212 (8th Cir. 1986), the claimant

asserted a copyright on its use of a "system" of
numbering in its catalog replacement parts for

lawn care machines. The district court denied
copyrightability on the ground that the claim
was for a "system." The court of appeals

rejected the view that literal use of the term

"system" from § 102(b) is a "limiting principal."

[Section 102(b)] is nothing more than a
codification of the idea/expression
dichotomy as it developed in the case
law prior to passage of the 1976 Act.
H.R.Rep. No. 1476, 94th Cong., 2d
Sess. 57, reprinted in 1976 U.S.Code Cong.
& Ad.News 5659, 5670 ("Section 102(b)
in no way enlarges or contracts the
scope of copyright protection under the
present law. Its purpose is to restate . .
. that the basic dichotomy between
expression and idea remains
unchanged.") (Emphasis added.)
Id. at 1212. The court held the claimant's

copyright not valid, based on the
80
idea/expression dichotomy; i.e., claimant could
not copyright the idea of using numbers to

designate replacement parts. And its

expression of that idea simply drew numbers
from the public domain and, without rhyme,

reason, or judgment, arbitrarily assigned them
to parts. The expression of the idea did not

meet the requirement of originality. See

Nimmer § 203(D), p. 2-35, to the same effect as

Toro. It seems beyond argument that Warren
does not seek copyright protection on the idea

of gathering and selecting data and reporting it

in a manner that responds to the perceived

needs for functional data of a changeable and
changing industry. Rather it seeks a copyright

on its expression of that idea.
The opinion of this court recognizes that the

use of the term "system" does not preclude

copyrightability. But, the court says, Warren's
acts of selection were in fact a "system," and
81
that fact creates a bar. (n. 21). In the first
place, the district court made no such finding,

nor does the evidence address it. Second, this
contention is contrary to what Congress itself
has said. See quotation, above, H.R. Report

No. 1476. If what the copyright claimant has
done is an expression of sufficient originality

that it is entitled to copyright, calling it a

"system" does not strip it of copyrightability.

VI. The doctrine of merger does not bar

copyrightability
By footnote this court suggests the merger

doctrine as an alternative ground for denying

copyrightability. Merger operates where there
is only one or so few ways of expressing an

idea that protection of the expression would
effectively accord protection to the idea itself.
The court suggests that Warren's principal

community presentation is one, if not the only,
commercially useful way of organizing a
82
compilation of information on the cable
television industry, so the presentation is

merged with the idea of a cable television
directory.
This is another puzzling point. As has been

said repeatedly, Warren's reporting data by
principal community units is a total departure

from prior methods utilized in the industry. No

one -- industry or government -- has previously

assembled and presented functional data

drawn from the way the industry presently
operates and is managed. Presumably, for

many users, Warren's way of selecting and

presenting data is the most useful way. But
there are many ways.

The television industry is driven by the
advertising dollar, and advertisers place their
dollars by numbers and types of viewers, based

in part on information that includes numbers of
homes reached by cable. Seekers of cable
83
data may wish to utilize data compiled
community-by-community, as, for example, an

equipment salesman will wish to know whether
discrete communities within a service area
utilize differing equipment. A compiler may

wish to organize cable television data by
counties, by areas of the state ("upstate" and

"downstate"), by adjoining communities, by

agricultural areas, by urban and rural areas, by

big systems and smaller systems, large cities

and small towns, high income and low income
areas, sports-oriented areas and less interested

areas. Nor does cross-referencing change the

picture. Warren cross-references and groups
data by service/management. Another compiler

may group and cross-reference agricultural
areas or high income areas. It may group and
cross-reference all cable operations that use a

particular manufacturer of equipment.

84
 Warren's selection of data is original,
creative and useful. To suggest it is the only

conceivable useful way is astonishing. The
FCC listed 724 communities in Illinois versus
Warren's selected 406, based on different

criteria. The Broadcast Yearbook, another
recognized directory of the industry, listed 243

communities in Illinois. Different organizations

create lists different in structure, scope and

number that may be useful for different readers

for varying purposes. Merger does not fit.
VII. Conclusion

The district court correctly decided this

case, and we should affirm its decision. Our
statutes provide rational and economically

useful copyright protection for compilations. If
that protection is to be narrowed and cabined
the choice is for Congress, not the courts.

85