F I L E D
United States Court of Appeals
Tenth Circuit
PUBLISH
JAN 8 1998
UNITED STATES COURT OF APPEALS
PATRICK FISHER
Clerk
TENTH CIRCUIT
TRANSWESTERN PUBLISHING
COMPANY LP,
Plaintiff-Appellant,
No. 96-6371
v.
MULTIMEDIA MARKETING
ASSOCIATES, INC; MULTI-VEST, a
partnership; ROBERT DUPRIEST;
LARRY WIBBEN; DENNIS HOFF;
JOEL ALDAY; ROBERT HOLMES;
MALLIE NORTON; TOM CLARK;
TOM RABY; ROBERT BOONE;
SHANE HOUSTON; VERNOISE
ANDREWS; DON LIGHTNER; J.
COURTNEY EGGER; JEFF ALLEN;
MULTI DIRECTORIES L.L.C.,
Defendants-Appellees.
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF OKLAHOMA
(D.C. No. 96-cv-371-C)
James Minor Bailey, III, Ponca City, Oklahoma (Jerry J. Dunlap, II, Oklahoma
City, Oklahoma, with him on the briefs) for Plaintiff-Appellant.
William S. Dorman of Dorman & Gilbert, Tulsa, Oklahoma (Mark Pordos of
Eagleton & Nicholson, Oklahoma City, Oklahoma, with him on the brief) for
Defendants-Appellees.
Before BRISCOE, LOGAN, and LUCERO, Circuit Judges.
LOGAN, Circuit Judge.
Plaintiff TransWestern Publishing Company LP appeals the district court’s
judgment denying a permanent injunction in plaintiff’s copyright infringement
action against defendants Multimedia Marketing Associates, Inc.; Multi-Vest, a
partnership; Multi Directories, L.L.C. and thirteen individuals (collectively
“defendants”). The case stems from defendants’ publication of a combined white
and yellow pages telephone directory containing advertisements resembling those
in plaintiff’s directory. The appeal requires us to consider the law enunciated in
Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991),
involving white pages factual information, in the context of directories containing
yellow pages advertising.
I
In 1995, plaintiff published a combined white and yellow pages “Ponca
City Area” telephone directory which included listings for Ponca City and
seventeen nearby towns and white and yellow pages advertisements. Account
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executives solicited advertisements and prepared ad layout sheets with customer
input. Although they did not create original artwork, the account executives
arranged information so that it was “pleasing to the eye.” I App. 223-24.
Plaintiff copyrighted its directory but not the individual ads.
Defendants thereafter published the “1996 Ponca City Community
Directory.” This directory contained listings for only eight towns, as well as
white and yellow pages advertisements. A number of these advertisements were
very comparable to those in the TransWestern directory. The infringement claim
alleges defendants copied advertisements from plaintiff’s directory.
Plaintiff obtained a preliminary injunction preventing the distribution or
display of defendants’ directory. At the permanent injunction hearing plaintiff
introduced a single witness and several exhibits in its case in chief. The district
court granted defendants’ motion for judgment as a matter of law and made
specific fact findings. The court noted likenesses such as their use of front and
back cover advertising, comparable introductory information, and advertisements
from some of the same businesses. The court then held that “business card” ads
and those incorporating the advertisers’ own logos or slogans were not original to
plaintiff and thus not copyrightable. The court found that other ads were not
substantially similar because of different type styles, sizes and shapes of the ads,
and the arrangement of information.
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II
We turn now to whether plaintiff established a case of copyright
infringement. The district court granted defendants’ motion for judgment as a
matter of law after a permanent injunction hearing at which plaintiff presented its
evidence in support of its claim of copyright infringement. Thus, the court made
its ruling under Fed. R. Civ. P. 50(a) or 52(c). See Advisory Committee Notes to
1991 amendments (noting Rule 52(c) “parallels the revised Rule 50(a)”). We
review the court’s findings of fact under a clearly erroneous standard. Id.
Findings of fact are clearly erroneous when they are unsupported in the record, or
if after our review of the record we have “the definite and firm conviction that a
mistake has been made.” Sanchez v. State of Colorado, 97 F.3d 1303, 1308-09
(10th Cir. 1996) (quotations and citations omitted). We review de novo the
district court’s interpretation of the applicable law. Mitchell v. Maynard, 80 F.3d
1433, 1438 (10th Cir. 1996).
To establish copyright infringement plaintiff 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 (white page listing information in public utility
directory not copyrightable). Defendants do not seriously contest that plaintiff
has a valid copyright on its directory. 1
1
The copyright registration certificate purports to register the “Ponca City Area,
(continued...)
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The second element requires proof that defendants copied plaintiff’s work
and that the elements copied were protected. Country Kids ’N City Slicks, Inc. v.
Sheen, 77 F.3d 1280, 1284 (10th Cir. 1996). Although the record does not
establish that defendants copied plaintiff’s publication, copying may be shown by
“establishing that Defendants had access to the copyrighted work and that there
are probative similarities between the copyrighted material and the allegedly
copied material.” Id. Defendants did not dispute their access. Although they
deny appropriating component elements of plaintiff’s publication, strong
similarities exist between some of plaintiff’s and defendants’ ads. We thus
examine the nature of plaintiff’s directory and the scope of protection available to
it.
Plaintiff’s directory is a compilation. The certificate of registration for
1995 treats it as a “derivative work or compilation” and states it is a “Revised
compilation in yellow pages.” II R. 236. To be copyrightable, a compilation
must be “a [1] work formed by the collection and assembling of preexisting
materials or of data that [2] are selected, coordinated, or arranged in such a way
1
(...continued)
OK July 1996 Telephone Directory.” II App. 235-36. Defendants argue that copyright
registration covers only the yellow pages portion of plaintiff’s directory. At the
permanent injunction hearing, however, defendants did not challenge whether the
copyright registration protected the entire directory or merely the yellow pages. We
assume for purposes of this opinion that plaintiff’s copyright is valid as to the whole
book.
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that [3] the resulting work as a whole constitutes an original work of authorship.”
17 U.S.C. § 101; Feist, 499 U.S. at 357 (explaining tripartite structure of statute). 2
The directory is, at least primarily, a compilation of facts. A factual compilation
is copyrightable but the facts themselves are not. Id. at 345. In Feist, the
Supreme Court explained the difference between facts and copyrightable
compilations: a compilation of facts or preexisting data is only protectible insofar
as it features original selection, arrangement or coordination of facts as they
appear in the “work as a whole.” Id. at 356, 358; 17 U.S.C. § 101.
The protection for a copyrighted compilation
extends only to the material contributed by the author of such work,
as distinguished from the preexisting material employed in the work,
and does not imply any exclusive right in the preexisting material.
The copyright in such work is independent of, and does not affect or
enlarge the scope, duration, ownership or subsistence of, any
copyright protection in the preexisting material.
17 U.S.C. § 103(b) (emphasis added). “The mere fact that a work is copyrighted
does not mean that every element of the work may be protected.” Feist, 499 U.S.
at 348. Determining “whether an infringement of a compilation copyright has
occurred is particularly difficult where less than the entire work is copied,”
BellSouth Advertising & Publ’g Corp. v. Donnelley Information Publ’g, Inc., 999
2
Because all compilations are a collection of preexisting facts or data, the first
element of the definition will always be satisfied. Key Publications, Inc. v. Chinatown
Today Publ’g Enters., Inc., 945 F.2d 509, 513 (2d Cir. 1991).
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F.2d 1436, 1438 (11th Cir. 1993) (en banc), especially when a competitor can take
“the bulk of the factual material from a preexisting compilation without
infringement.” Id. at 1445. The protection available for a compilation is “thin.”
Feist, 499 U.S. at 349; see also BellSouth, 999 F.2d at 1439 (applying Feist and
concluding that defendant did not appropriate “original elements” of BellSouth
directory “as a whole” by preparing data base and sales leads based upon listing
information and units of advertising appearing in preexisting directory). The
focus is on “the selection, coordination, or arrangement of listings in the directory
[which must be] sufficiently original or creative [that] the directory will be
entitled to a copyright.” Key Publications, Inc. v. Chinatown Today Publ’g
Enters., Inc., 945 F.2d 509, 513, 516 (2d Cir. 1991) (recognizing copyrightability
of specialty directory but concluding no infringement by smaller competing
publication that utilized “significantly different principles of [listing] selection”).
See also Feist, 499 U.S. at 345-47.
Although a compilation gains copyright protection with only minimal
creativity in the selection and arrangement of facts, Feist’s statement that the
copyright is “thin” has implications when the holder sues an alleged infringer. “It
would seem to follow analytically that more similarity is required when less
protectible matter is at issue. Thus, if substantial similarity is the normal measure
required to demonstrate infringement, ‘supersubstantial’ similarity must pertain
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when dealing with ‘thin’ works.” 4 Melville B. Nimmer & David Nimmer,
Nimmer on Copyright, § 13.03[A] at 13-28 (1997); see also Apple Computer, Inc.
v. Microsoft Corp., 35 F.3d 1435, 1439 (9th Cir. 1994) (“When the range of
protectible and unauthorized expression is narrow, the appropriate standard for
illicit copying is virtual identity.”), cert. denied, 115 S. Ct. 1176 (1995); Jane C.
Ginsburg, No “Sweat”? Copyright and Other Protection of Works of Information
After Feist v. Rural Telephone, 92 Colum. L. Rev. 338, 349 (1992) (“‘Even if the
compilation is deemed original, what kind of copying will be held to infringe it?’
The answer [after Feist] appears to be: ‘Virtually none, short of extensive
verbatim copying.’”). Further, because the copyrightability of a factual
compilation depends upon the originality in selection, coordination or
arrangement of the facts “as a whole” work, 17 U.S.C. § 101, in an infringement
action the court must compare the allegedly infringing work as a whole also.
In the instant case, if we focus on the respective directories as a whole
there are many differences. The district court’s opinion noted some:
The directories are very different in appearance. The Transwestern
directory is approximately 5” by 7” in size and has a yellow cover.
The Community Directory is larger in size and has a green cover.
Both directories have advertisements on their covers; although the
advertisements are different on each directory. Although similar
introductory information is contained in each directory, the format,
layout and content varies between the two directories. The
Transwestern Directory includes [18] towns . . . . The Community
Directory provides listings for [8 towns].
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I R. 84. Plaintiff’s directory is indexed; defendants’ is not. Plaintiff’s white
pages are alphabetized with all the listings together; defendants organized their
white page listings alphabetically by town. The directories use different
typefaces, and defendants’ directory contains significantly fewer pages.
Plaintiff’s directory has two columns, defendants’ three in its advertising pages.
The type styles are different; the headings to the business listings are distinctive.
Even accepting as true plaintiff’s contention that “numerous” ads in its directory
have been copied to defendants’ directory, no one would mistake defendants’
directory for that of the plaintiff. Thus, at a thin level of comparison of the
compilation “as a whole” the district court’s finding of no infringement must be
affirmed.
III
This circuit in other contexts has applied an abstraction-filtration-
comparison test in copyright infringement cases. See Country Kids, 77 F.3d at
1284-85 (wooden dolls); Gates Rubber Co. v. Bando Chemical, Ltd., 9 F.3d 823,
834 (10th Cir. 1993) (computer program); Autoskill v. National Educational
Support Systems, Inc., 994 F.2d 1476, 1491-92 (10th Cir. 1993) (computer
program). That test requires filtering out nonprotectible ideas and components
and then comparing protectible elements in the plaintiff’s work with the
defendant’s allegedly infringing product. We have recognized that this test is not
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appropriate for every case, depending on the claims involved, the procedural
posture, and the nature of the work at issue. See Mitel, Inc. v. Iqtel, Inc., 124
F.3d 1366, 1372-73 (10th Cir. 1997); Gates, 9 F.3d at 834 n.12.
The Second Circuit’s decision in Key Publications is the post-Feist decision
most nearly like the case before us. It involved competing yellow page
directories for Chinese-American businesses in New York City. Holding that
“thin” protection available for compilations was not meant to be “anorexic,” the
court stated the test as one in which the plaintiff must show “substantial similarity
between those elements, and only those elements, that provide copyrightability to
the alleged infringed compilation.” Key Publications, 945 F.2d at 514. This
seems a distillation into fewer words of the abstraction-filtration-comparison test.
The district court in Key Publications had found that 1,500 listings, 75%, of
the 2,000 listings in the defendants’ directory, were deliberately copied from the
plaintiff’s directory. Making a facial examination the appellate court reversed,
noting substantial dissimilarities in the selection and arrangement of the
directories, especially in that the defendants’ directory had many fewer classified
headings, had only 17% of the total number of listings in the plaintiff’s directory,
and 25% of its listings were not in the plaintiff’s directory. Key Publications
appears to have involved only listings, classifications, and arrangements; there
was no discussion of advertisements.
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Plaintiff’s infringement claim in the case before us is based on its
contributions to the yellow page advertisements in its directory that were
allegedly copied by defendants. Plaintiff’s employees apparently solicited those
ads, yet they are fundamentally fact compilations essentially like the business
listings gathered and arranged by the plaintiff in Key Publications. Treated as a
fact compilation protection is available only to the extent the work as a whole
possesses the requisite originality. But even if we ignore all elements of the two
directories that are different and look only at those that are alike plaintiff loses in
the case before us. Plaintiff’s case founders on the lack of evidence of its
creative contributions to copied material.
Plaintiff asks the court to note the similarities of the ads it attached to its
complaint and those contained in its Exhibit 7 introduced at the permanent
injunction hearing. But it must show its original contributions to those ads. At
the permanent injunction hearing plaintiff presented one witness and seven
exhibits. The exhibits were the copyright registration certificate, the two
directories, three exhibits of layout sheets for advertisements plaintiff said its
employee prepared--for Skinsations Tattoo Studio, TWT Heat & Air, and Smith’s
Home Furnishings--and Exhibit 7. Exhibit 7 was a notebook of some 600 pages,
consisting of an index and pages from the respective directories showing
plaintiff’s ads on the left and defendants’ allegedly infringing ads on the right.
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Only 252 pages of Exhibit 7 are excerpted in the record on appeal; the TWT Heat
& Air exhibit is not in the appellate record.
Plaintiff’s witness was Timothy Dancey, one of its account executives, who
also was its sole witness at the preliminary injunction hearing. On direct
examination he simply identified plaintiff’s exhibits and testified that with new
customers they: “usually do ad copy together, figure out what size ad they want
and we work out a program for them at that time,” I R. 193; take into possession
logos given them by customers and sometimes make logos; write down
information to be placed in the ad given them by customers, sometimes
themselves suggesting information to be included; and arrange the verbiage, logos
and artwork provided by the customer into the advertisement using a layout sheet.
Id. at 194-95. The witness then said he designed and created the ads on the layout
sheets for Skinsations Tattoo Parlor, TWT Heat & Air, and Smith Home
Furnishings.
On cross-examination the witness admitted that the artwork on the
Skinsations ad was supplied by the customer and he only provided the written
information; on the TWT ad he provided the Rheem logo which he admitted he
probably got from someone else’s ad, and he and the business owner together
contributed the words on the ad, id. at 208-09; on the Smith ad the sentence
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“We’re Committed to Earning Your Business” was a logo he did not provide, the
picture came from the customer, and other items and logos came from clip art.
Later the following exchange took place:
Q. Are there any ads that you did the artwork on yourself, any ads
in the book?
A. As far as drawing a picture?
Q. Well, contributing anything in the way of artwork.
A. Sure, on logos, on certain logos in the book.
Q. You created the logos yourself?
A. Uh-huh. When I say “logos,” I mean like a name.
Q. Could you direct our attention to one such ad, please.
A. I can’t think of one right now. The Paper Hanger. I wrote that
in.
....
Q. I don’t understand. What’s the logo?
A. The block print.
Q. Huh?
A. The block print.
Q. You say “the block print”?
A. There’s not a picture of anything.
Q. The block print of “The Paper Hanger”?
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A. Uh-huh.
....
A. Just the name, “The Paper Hanger.” I did that on many ads.
Q. The block print right there (INDICATING)?
A. Uh-huh.
Q. You call that artwork; is that right?
A. I wrote it.
Q. Okay. Is that the same in the [defendant’s ad]?
A. The text is the same.
Q. What about the logo, is that the same?
A. It’s set up a little different.
Q. Are there any other ads besides this Paper Hanger where you
contributed the artwork yourself?
A. I remember Kay Refrigeration, I believe.
Q. Is that here?
A. It’s in here someplace, I’m sure. It’s really just names on
some of those.
Q. Just names?
A. Uh-huh, like that one.
Q. That’s primarily information, is it not?
A. That is information.
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Q. Apart from the names we just referred to, the logo “The Paper
Hanger,” did you contribute any other artwork to any of the ads?
A. Artwork meaning pictures, no. Artwork meaning making them
pleasing to the eye, yes.
Q. That would be in the way it was typed, right, the size and style
of the type?
A. Either that, yes, or just saying something to catch the eye.
Q. But pictures and logos, you wouldn’t have anything to do with
that, would you?
A. No, I did not draw pictures.
I R. 221-24.
On redirect the witness stated that he took the information and artwork on
the three ads to which he had testified and “arranged and designed it into the ad.”
Id. at 228. This summarized and quoted testimony is all of plaintiff’s evidence of
its “original” contributions to the ads in its directory.
Even if we credit the testimony as showing original contributions to the
Skinsations, TWT, and Smith ads, there is nothing in the appellate record to show
defendants copied any of those ads. There is no Skinsations ad in defendants’
directory, see II R. 317-18; a TWT ad appears in defendants’ directory, id. at 296,
but the record does not show what plaintiff’s TWT ad looked like; and the Smith
Home Furnishings ad in defendants’ yellow pages, id. at 93, bears no resemblance
to the ad laid out in plaintiff’s Exhibit 6, id. at 243-49. In the white pages of
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defendants’ directory there is a version of a business card ad for Smith Home
Furnishings, with the same information as plaintiff’s business card ad for that
company--name, address, phone number, picture, and slogan--but with a
significantly different configuration, placement of the information, and type style.
See id. at 497-98.
To find original and hence protectible contributions by plaintiff to its
yellow page ads the court would have to credit the vague and general testimony of
the witness that he “arranged” information provided by his customers and
“designed” the ads--without himself providing any of the artwork--although he
did not identify how his contribution was original in any particular ad allegedly
copied by defendants. Thus, even if we were to accept plaintiff’s request to
compare the allegedly infringing ads for their similar order and placement of
information and artwork we cannot qualitatively analyze plaintiff’s contribution.
At the preliminary injunction hearing, witness Dancey had testified that all
the ads in plaintiff’s directory were either designed by him or his predecessor “or
they were given to us by the customers in our book.” II R. 164. He then said
fifty percent were “altered old ads that were in there where he wanted to make a
change,” id. at 165. This simply underscores the deficiencies in plaintiff’s
evidence. Thus, even if we were to look only to the ads defendants allegedly
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copied, and ignore all differences between the directories, we would have to
affirm the district court’s denial of the injunction.
IV
By focusing its contentions for infringement on its contributions to
individual advertisements in its directory, plaintiff appears to argue that the ads
should not be treated as fact compilations but as unique creations. If each ad is a
separate creation, akin to short stories with individual authors, plaintiff’s yellow
pages directory would be a collective work. Plaintiff admitted its advertisers
provided input into each ad, and some were given to plaintiff by their customers--
thus not created by plaintiff in any sense. A collective work for copyright
purposes is still a compilation, 17 U.S.C. § 101, but one “in which a number of
contributions, constituting separate and independent works in themselves, are
assembled into a collective whole.” Id. So viewed there exists another barrier to
plaintiff’s infringement claim, 17 U.S.C. § 404(a). That section provides as
follows:
A separate contribution to a collective work may bear its own
notice of copyright, as provided by sections 401 through 403.
However, a single notice applicable to the collective work as a whole
is sufficient to invoke the provisions of section 401(d) or 402(d), as
applicable with respect to the separate contributions it contains (not
including advertisements inserted on behalf of persons other than the
owner of copyright in the collective work), regardless of the
ownership of copyright in the contributions and whether or not they
have been previously published.
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Id. § 404(a) (emphasis added).
In Canfield v. Ponchatoula Times, 759 F.2d 493 (5th Cir. 1985), the court
examined the effect of the parenthetical exclusion in § 404(a) in the context of
one newspaper publishing an ad that had been created by another newspaper. The
ad, as in the case before us, had not been separately copyrighted but the
newspaper in which it appeared had been copyrighted as a whole. The court
assumed the first newspaper owned the copyright to the ad, but held the effect of
the parenthetical phrase was to deny protection when it was copied in another
publication. “Advertisements inserted in a collective work on behalf of persons
other than the collective work copyright owner are not protected by a copyright
notice applicable to the work as a whole.” Id. at 495.
[T]here is no doubt Congress intended to carve out a special
exception for advertisements which would require that a separate
copyright notice appear in the advertisement itself. The committee
notes make clear that this exception was regarded as necessary
because of the nature of advertisements which were regarded as a
unique form of copyrightable material. Their uniqueness stems from
the fact that advertisements are creations which are commonly
published in more than one periodical and seldom display separate
copyright notice. The committee notes recognize this as particularly
true of advertisements published in major advertising media such as
newspapers and magazines.
....
. . . . The delineation is not based on who owns the copyright.
It does not matter whether the publisher, advertiser, or another owns
the copyright. Separate notice is required for any advertisement
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inserted on behalf of someone other than the collective work
copyright owner.
Id. at 496.
In Canfield the advertiser was the moving force in asking the second
newspaper to publish the ad. In the case before us plaintiff asserts that many
advertisers had not given defendants permission to reproduce their ads. That is
contrary to the testimony of defendants’ manager at the preliminary hearing, I R.
173, and it is difficult to see why advertisers would object when defendants
published ads at no charge to the advertisers. 3 We note that no advertiser is a
party to this suit, and plaintiff’s witness at the permanent injunction hearing
admitted that its contracts with advertisers contained a statement, “Advertiser
assumes sole responsibility for the protection of its copyright in any writing,
illustration, design, map, photograph, or combination thereof included in said
item of advertising.” Id. at 226. 4
3
Apparently defendants attempted to enter the area market to produce a directory
that would compete with the Southwestern Bell and TransWestern directories by offering
advertisers free ads. This is the same technique the instant plaintiff used to enter the
Wichita, Kansas, area to produce a directory to compete there with the Southwestern Bell
directory. See Southwestern Bell Media, Inc. v. TransWestern Publishing, Inc., 670
F. Supp. 899 (D. Kan. 1987); id., 685 F. Supp. 779 (D. Kan. 1988).
4
The issues of who may or must be parties to an infringement action involving an
ad subject to this provision, or the provision’s intended scope, need not be resolved in this
case.
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Treating the yellow pages advertising as creations that are something more
than compilations of facts, we hold that under 17 U.S.C. § 404(a), the existence
of a copyright notice on plaintiff’s directory is insufficient to prohibit the copying
of an advertisement from that directory, absent a copyright notice specific to the
advertisement itself. As the concurring opinion states, under the Berne
Convention Implementation Act of 1988, copyright notice is no longer mandatory.
This has no bearing on our holding regarding 17 U.S.C. § 404(a), however.
Section 404(a) has always provided that copyright notice is optional on collective
works. It defines the scope of protection available to collective works when they
do contain a copyright notice: the notice invokes the protections of §§ 401(d) and
402(d) with respect to separate contributions but not as to advertisements inserted
by someone other than the copyright owner. 5 Because there is no separate
copyright on the ads allegedly copied, plaintiff cannot use this provision to gain
protection for the third party ads through the existence of a copyright notice for
the overall collective work.
In this case, under § 404(a) the notice protecting the overall collective work
does not extend to the ads in question. As plaintiff has failed to present evidence
5
The Berne Convention, as implemented, amended § 404(a) to add references to
§§ 401(d) and 402(d) after that treaty was adopted. But the amendment did not eliminate
the parenthetical discussed in this Section IV. Where the overall collective work is
protected by a copyright notice, § 404(a) still refuses to extend the protection afforded by
that notice to ads inserted by a third party.
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of its original contributions to the advertisements in question, the ads are not
protectible even without the mandatory notice requirement.
V
Plaintiff also has asserted that the district court erred in finding that
defendants did not copy certain ads created by plaintiff, and in concluding that
plaintiff alleged infringement only as to the yellow pages portion of its directory.
Our holding effectively disposes of those issues. It does not matter whether
defendants copied the ads in plaintiff’s directory in the absence of more evidence
than was presented here of contributions of originality to ads that supposedly
were copied.
As to the white pages issue, we agree with the district court that plaintiff
effectively abandoned that claim by choosing not to present evidence at the
permanent injunction hearing to support those allegations. The record supports
the district court’s legal conclusion that plaintiff based its proof at trial on the
yellow pages ads only.
AFFIRMED.
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No. 96-6371, Transwestern Publishing Co. v. Multimedia Marketing
BRISCOE, Circuit Judge, concurring:
I concur in the result because I agree with the majority that plaintiff failed
to present sufficient evidence of its original contributions to the yellow-page
advertisements at issue to allow us to properly analyze its copyright infringement
claims. I write separately, however, because I disagree with several points made
by the majority.
In section II of its opinion, the majority compares the directories as a
whole. This comparison is irrelevant. Although plaintiff registered its directory
as a single work, it has never claimed either that the entire work is original and
eligible for protection or that the entire work was copied by defendant (in fact,
plaintiff has not even submitted complete copies of either directory). See, e.g.,
Aplt’s App. I at 92 (“Plaintiff does not contend that Defendants copied its
directory in its entirety.”). Rather, plaintiff has maintained certain original
elements of its copyrighted work, i.e., individual advertisements contained in the
work, were copied by defendant without authorization from plaintiff or the
advertisers. Thus, the sole focus in this case should be on the individual yellow-
page advertisements.
In section III of its opinion, the majority concludes the decision in Key
Publications, Inc. v. Chinatown Today Publ’g Enters., Inc., 945 F.2d 509 (2d Cir.
1991), “is the post-Feist decision most nearly like the case before us.” Although
the majority’s conclusion may be correct, Key Publications is substantially
different from the case at hand and, ultimately, of little assistance. The issue in
Key Publications was the copying of listings and headings from the yellow-page
section of plaintiff’s telephone directory. Contrary to the majority’s description, I
do not agree that those business listings are “essentially like” the yellow-page
advertisements at issue in our case. Unlike the business listings and headings in
Key Publications, the advertisements at issue here are individually copyrightable.
Thus, comparisons of the directories as a whole (or even the entire yellow-page
sections as a whole) are unnecessary in our case because the unauthorized copying
of a single copyrightable ad would constitute infringement.
In section IV of its opinion, the majority concludes 17 U.S.C. § 404(a)
permits copying of ads from plaintiff’s directory absent a copyright notice
specific to each ad. I disagree. Prior to March 1, 1989, the Copyright Act
required that each copy of a work distributed to the public be marked with a
copyright notice. Failure to do so would inject the work into the public domain.
The Copyright Act was amended by the Berne Convention Implementation Act of
1988, which became effective March 1, 1989. Under the Berne Convention,
copyright notice is optional rather than mandatory; copyright notice is no longer a
prerequisite to copyright protection. See 17 U.S.C. § 401(a); see also Norma
Ribbon & Trimming, Inc. v. Little, 51 F.3d 45 (5th Cir. 1995). Thus, regardless
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of whether one places a copyright notice on his or her work, the work is fully and
automatically protected under the Copyright Act from the moment it is fixed in
some tangible form (assuming it is published after enactment of the Berne
Convention). 17 U.S.C. § 102(a).
The key case relied upon in section IV of the majority’s opinion is Canfield
v. Ponchatoula Times, 759 F.2d 493 (5th Cir. 1985). In Canfield, a newspaper
publisher filed a copyright infringement action against a rival newspaper
publisher for reprinting an advertisement that plaintiff’s employees designed and
printed in one of plaintiff’s newspapers. The Second Circuit ultimately concluded
plaintiff could not protect its asserted copyright in the advertisement because it
had failed to print a separate notice of copyright along with the advertisement.
Although the opinion is useful for its holding that advertisements are
copyrightable, 759 F.2d at 496, it is otherwise inapplicable because it was issued
prior to adoption of the Berne Convention. Under today’s standards (i.e., those
established by the Berne Convention amendments to the Copyright Act), a
separate notice would not be required in order for the plaintiff to protect its
advertisements.
The majority apparently reads § 404(a) to require separate copyright
registration of any copyrightable advertisements created by the copyright owner
of a collective work, but inserted on behalf of other persons. No court has ever
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decided this issue and I disagree that § 404(a) provides the definitive answer to
the question. In analogous circumstances, several district courts have held
registration of a collective work satisfies the requirements of § 411(a) for
purposes of bringing an action for infringement of any of the constituent parts as
long as the owner of the collective work also owns the constituent parts of the
collective work. See Woods v. Universal City Studios, Inc., 920 F. Supp. 62, 64
(S.D.N.Y. 1996)("[W]here the owner of the copyright for a collective work also
owns the copyrights for its constituent parts, registration of the collective work
satisfies the requirements of Section 411(a) for purposes of bringing an action for
infringement of any of the constituent parts."); Greenwich Film Prod., S.A. v.
DRG Records, Inc., 833 F. Supp. 248, 252 (S.D.N.Y. 1993) (copyright
registration for motion picture was sufficient to cover musical compositions
contained in sound track of picture, even though musical compositions were
prepared in advance of completion of film); Howard v. Sterchi, 725 F. Supp.
1572, 1575-76 (N.D. Ga. 1989) (holding designer of log homes properly
registered her purported copyrights in floor plans, as independent derivative
works, by registering the plan books in which they were published). These cases
are supported by the leading treatise on copyright law, which suggests separate
copyright registration is not necessary where the author of a collective work is
also the author of individual works contained therein. See 2 Melville B. Nimmer
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& David Nimmer, Nimmer on Copyright § 7.16[B][2], at 7-169 to 7-170 (1996);
see also 37 C.F.R. § 202.3(b)(3) (allowing copyright claimant to register as a
single work a published work containing "copyrightable elements that are
otherwise recognizable as self-contained works"). Ultimately, any conclusion on
this issue is dicta in light of plaintiff's failure of proof.
Finally, section IV of the majority opinion makes reference to the following
statement in the contracts between plaintiff and its advertisers: “Advertiser
assumes sole responsibility for the protection of its copyright in any writing,
illustration, design, map, photograph, or combination thereof included in said
item of advertising.” (Emphasis added.) Assuming, arguendo, that plaintiff made
original contributions to the advertisements at issue, plaintiff would have been, at
an absolute minimum, a joint author of those advertisements (along with those
advertisers that also made original contributions to the advertisements), and
would have had the right to assert its own interest in each advertisement,
independent of what the advertiser chose to do.
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