TransWestern Publishing Co. v. Multimedia Marketing Associates, Inc.

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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