Amicus Curiae Brief — Feist Publications, Inc. v. Rural Telephone Service Co.

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Supreme Court of the Hnited States

October Term, 1990

FEIST PUBLICATIONS, INC.,

RURAL TELEPHONE SERVICE COMPANY, INC.,

TABLE OF CONTENTS

Page

TABLE OF AUTHORITIES ............................. iii

PRELIMINARY STATEMENT...........ss—s—i—i—iciztéw 1

INTEREST OF AMICUSCURIAE ............___. l

SUMMARY OF ARGUMENT... 3

ae 4

I. THE DECISION REACHED BELOW IS NOT IN

CONFLICT WITH THE DECISION OF ANY

OTHER CIRCUIT INVOLVING A

Il. THE COPYRIGHTABILITY OF

COMPILATIONS UNDER THE 1976 ACT

DEPENDS UPON THE STANDARD OF

ORIGINALITY ESTABLISHED BY THE

EE SOO ee 6

Ill. CONGRESS DID NOT INTEND THE

DEFINITION OF COMPILATION CONTAINED

IN THE 1976 ACT TO ALTER THE

PRINCIPLES ESTABLISHED UNDER THE

1909 ACT REGARDING EITHER THE

COPYRIGHTABILITY OF OR SCOPE OF

PROTECTION ACCORDED TO A

0 10

A. Copyright Protection Under The 1909 Act Was

Not Limited To The Selection, Coordination Or

Arrangement Of Factual Data Contained In

ES ae 10

B. The Definition Of Compilation In The 1976 Act

Was Not Intended To Change The Copyright

Principles Established For Compilations Under

a a= ga a c.

Page

IV. PETITIONER’S USE OF RESPONDENT'S

TELEPHONE DIRECTORY IN THIS CASE IS

NOT PERMITTED BY SECTION 103 OF THE

PUIG 00.000ccensscesbesbasibcumsanianeenanen 16

CONCLUSION

TABLE OF AUTHORITIES

CASES Page

Adventures in Good Eating, Inc. v. Best Places to Eat,

Inc., 131 F.2d 809 (7th Cir. 1942) ....................... 5

Alfred Bell & Co. v. Catalda Fine Arts, Inc.,

EE 7,8

W.H. Anderson Co. v. Baldwin Law Publishing Co.,

27 F.2d 82 (6th Cir. 1928) ..................... 12, 18, 19

Atari Games Corp. v. Oman,

888 F.2d 878 (D.C. Cir. 1989) ........................... 3

Bleistein v. Donaldson Lithographing Co.,

188 U.S. 239, 23 S. Ct. 298 (1903)................. 7, 8,9

Buck v. Jewell-La Salle Realty Co.,

283 U.S. 191, 51 S. Ct. 410 (1931)..................... 12

Burrow-Giles Lithographic Co. v. Sarony,

111 US. GB, 46. Ce 270 (1884) ......................... 7

College Entrance Book Co. v. Anisco Book Co.,

119 F.2d 874 %75-76 (2d Cir. 1941) ................... 12

Drop Dead Co. v. S.C. Johnson & Son, Inc.,

326 F.2d 87 (9th Cir. 1963), cert. denied, 377 U.S.

EE 4

Dun v. Lumbermen’s Credit Ass’n,

209 U.S. 20, 28 S. Ct. 335 (1908) ..... > See 4

Edwards & Deutsch Lithographing Co. v. Boorman,

15 F.2d 35 (7th Cir.), cert. denied,

Ne ce... cece ccccees 12

Goldstein v. California, 412 U.S. 546, 93

S. Ct. 2303 (1973) ..... Se 7

Harper & Row, Publishers, Inc. v. Nation Enterprises,

471 U.S. 539, 105 S. Ct. 2218 (1985)................ 9,14

Hartfield v. Peterson,

91 F.2d 998 (2d Cir. 1937) .............. 0... c cece cen. 12

CASES Page

Hutchinson Tel. Co. v. Fronteer Directory Co.,

pp FN 5

Illinois Bell Tel. Co. v. Haines & Co.,

905 F.2d 1081 (7th Cir. 1990) ....................... 5, 18

Jeweler’s Circular Publishing Co. v. Keystone Publishing

Co., 281 F. 83 (2d Cir.), cert. denied,

Ep passim

Konor Enterprises, Inc., v. Eagle Publications, Inc.,

EE 5

M. Kramer Mfg. Co. v. Andrews,

po 3

Leon v. Pacific Tel. & Tel. Co.,

91 F.2d 404 (Oth Cir. 1987) ..................ccce eee. 5, 11

G.R. Leonard & Co. wv. Stack,

386 F.2d 38 (7th Cir. 1967) .....................05. 18, 19

Lin-Brook Builders Hardware v. Gertler,

352 F.2d 296 (9th Cir. 1965).........................005. 7

Lotus Dev. Corp. v. Paperback Software Int'l,

740 F. Supp. 37 (D. Mags. 1990) ........................ 3

Metro-Goldwyn-Meyer Distributing Corp. v. Wyatt,

21 C.O. Bull. 203 (D. Md. 1932)....................... 12

Rand McNally & Co. v. Fleet Management Sys.,

634 F. Supp. 604 (N.D. Ill. 1986)........................ 3

Sampson & Murdock Co. v. Seaver-Radford Co.,

a ee i ccc caw cece. 18

Schroeder v. William Morrow & Co.,

ee ee 11

Southern Bell Tel. & Tel. Co. v. Associated Tel. Directory

Publishers, 756 F.2d 801 (11th Cir. 1985).............. 5

Trade-Mark Cases, 100 U.S. 82 (1879)...................... 7

Twentieth Century Music Corp. v. Aiken,

422 U.S. 151, 95 S. Ct. 2040 (1975) ................... 12

eee

CASES Page

United Tel. Co. v. Johnson Publishing Co.,

855 F.2d 604 (8th Cir. 1988)...................0.. 000088. 5

Universal Athletic Sales Co. v. Salkeid,

511 F.2d 904 (3d Cir.), cert. denied,

I i a et 4

Vacheron & Constantin-Le Coultre Watches, Inc. v.

Benrus Watch Co., 260 F.2d 637 (2d Cir. 1958) ..... 12

West Publishing Co. v. Mead Data Central, Inc.,

799 F.2d 1219 (8th Cir. 1986), cert. denied,

eo cewcbneccccceces 1,2

White-Smith Music Publishing Co. v. Apollo Co.,

208 US. 1, 98 & Ct. 319 (1908) ..................0 0 12

Wihtol v. Wells, 231 F.2d 550 (7th Cir. 1956). .............. 7

U.S. CONSTITUTION

Me oo, os cdeeboovcedsettuenwaue’ 6

STATUTES

EE RS a passim

EE ee Ae ae 4

i US aoe eens 18

od , passim

cui ccciccossccseccovcevctenbes 3, 6

Ee passim

ens vocceccddvcavden 15

LAW REVIEWS AND TREATISES

Davidson, Common Law, Uncommon Software, 47 U. Pitt.

ee Te a ss sn slgdioneveceuewde 2

LAW REVIEWS AND TREATISES Page

Denicola, Copyright in Collections of Facts: A Theory for

the Protection of Nonfiction Literary Works, 81 Colum. L.

Re cb cic ccdocececacbocekbecneces 15, 16

P. Goldstein, Copyright (1989) ................ccc00cc00e. 7,9

Gorman, Opinion on Legal-Research Services Raises Major

Computer-Age Issues, Nat’] L.J., July 20, 1987, at 40 .. 2,3

Jones, Factual Compilations and the Second Circuit, 52

Brooklyn L. Rev. 679 (1986) .... 2... o.oo ccc cece cece, 13

M. Nimmer & D. Nimmer, Nimmer on Copyright

SPEER ENS 6 SAA A RE ee oe 7,9

Case Comment, Copyright Protection for Citations to a

Law Reporter: West Publishing Co. v. Mead Data Central,

Inc., 71 Minn. L. Rev. 991 (1987) ......... 0.0.0... 0 cece, 2

Note, Copyrighting the Book of Numbers— Protecting the

Compiler: West Publishing Co. v. Mead Data Central, Inc.,

20 Creighton L. Rev. 1133 (1987)................0...0000.0.. 2

Comment, West Publishing Co. v. Mead Data Central, Inc.

(LEXIS), 14 Rutgers Computer & Tech. L.J. 359

GENS ciccson tee bic cutenedeme ee OG U es Eva uctcuek vc be Glee vcece 2

LEGISLATIVE MATERIALS

H.R. Rep. No. 1476, 94th Cong., 2d Sess. (1976) .... passim

PRELIMINARY STATEMENT

West Publishing Company (“West”) submits this brief as

amicus curiae pursuant to Rule 37.3 of the Rules of this

Court in support of Respondent Rural Telephone Service

Company, Inc.'

INTEREST OF AMICUS CURIAE

West is generally interested in copyright issues relating to

compilations, and particularly issues regarding the

copyrightability of compilations and scope of protection

given to compilations as a whole and to the assembled data

contained therein. Many of West’s publications, such as its

National Reporter System publications, contain significant

amounts of public domain materials, including judicial

decisions and statutes. West collects and assembles these

materials, creates a variety of related editorial

enhancements such as synopses, headnotes, key number

classifications and annotations and then compiles and

publishes such materials and enhancements in convenient

and accessible formats. West also compiles and makes

available many of these materials and enhancements on

WESTLAW, its online computer-assisted legal research

service, and, more recently, on its West CD-ROM Libraries

compact disc products.

In recent years, West increasingly has been required to

seek judicial relief to prevent infringement of its copyrighted

compilations. For example, West was forced to act to

prevent unauthorized copying by Mead Data Central, Inc.

of the copyrighted case report arrangements contained in

its National Reporter System publications. West Publishing

Co. v. Mead Data Central, Inc., 799 F.2d 1219(8th Cir. 1986),

cert. denied, 479 U.S. 1070 (1987). Although West has been

successful in protecting its copyrighted compilations, the

judicial rulings in West’s favor have, on occasion, been

misunderstood or mischaracterized by third parties in later

litigation, as was done here by the Association of North

‘Consent to file this brief was given by both parties and has been

separately filed with the Clerk of Court.

Association in their amicus curiae brief in support of

Petitioner’s request for a writ of certiorari (“NADP Cert.

Brief”), and by commentators.’ Ee

With — to the present case, West is critically

concerned with the attempt by Petitioner and the various

2 example, the assertion by NADP that the decision in West

Prey v. Mead Data Central, Inc., 799 F.2d 1219 (8th Cir.

1986), cert. denied, 479 U.S. 1070 (1987), was based on the purported

“sweat of the brow” doctrine simply is not true. See NADP Cert. Brief

at 13. The Eighth Circuit did not rely on the “sweat of the brow

doctrine in reaching its decision. Instead, in recognizing the validity of

West's copyrights, the Eighth Circuit expressly found that West 8 case

arrangements contained in its National Reporter System publications

constituted original works of authorship protected by the Copyright

Act:

conclude, as did the District Court, that the arrangement

Woot pendiunce thowughs thie peasess ie tho sess of consinorabte

labor, talent, and judgment. As discussed above, * pemer

itted] to meet the intellectual-creation requirements 4 wor

kee oto eodineen at eines taher

West's case arrangements easily meet this standard. Further,

since there is no allegation that West copies its case arrangements

from some other source, the requirement of originality poses no

obstacle to copyrighting the arrangements.

peng oe 9 Eighth Circuit's decision in West v. Mead has

been widely discussed by commentators, the decision clearly has not

been “the object of near-universa! scholarly criticism” as asserted by

amicus NADP. See NADP Cert. Brief at 13. The decision has been cited

and/or discussed by many different commentators in law review

articles, treatises and other periodicals, and has been approved of in

both result and reasoning by a substantial number of such commentators.

See, e.g., Gorman, Opinion on Legal-Research Services Raises Major

Computer-Age Issues, Nat’! L.J., July 20, 1987, at 40; Davidson,

Common Law, Uncommon Software, 47 U. Pitt. L. Rev. 1037 (1986),

Case Comment, Copyright Protection for Citations toa Law Reporter:

West Publishing Co. v. Mead Data Central, Inc., 71 Minn. L. Rev. 991

(1987); Note Copyrighting the Book of Numbers — Protecting the

Compiler: West Publishing Co. v. Mead Data Central. Inc., 20 Creighton

L. Rev. 1133 (1987); Comment, West Publishing Co. v. Mead Data

Central, Inc. (LEXIS), 14 Rutgers Computer & Tech. L.J. 359 (1988).

For example, Professor Gorman has stated that:

amici curiae supporting Petitioner (“Amici”) to alter long-

standing, fundamental principles of copyright law upon

which West and other publishers have relied in structuring

SUMMARY OF ARGUMENT

Under the current Copyright Act, the copyrightability of

a compilation depends upon whether it is an “original work

of authorship.” 17 U.S.C. § 102(a). In utilizing that

terminology, Congress expressly intended to incorporate

the standard of originality established under the Copyright

Act of 1909 (“1909 Act”). The test of originality, and hence

copyrightability, under the 1909 Act did not require that a

compilation of data possess some novel or unique element of

“selection, coordination or arrangement” in order to be

To a considerable extent, West can be viewed as merely applying,

in a specific factual context (albeit one of special fascination for

lawyers), conventional rules of copyright law regarding

originality, infringement and fair use of compilations. It is,

however, a case that raises these isaues in the context of new

computer technologies, which challenge certain basic

assumptions about the scope of protection of factual compilations

in an age of almost instantaneous absorption, manipulation and

restructuring of information.

Although the outcome of the case wil] no doubt stir debate at the

bar (in the courtroom and over across the street), it moves the law

in a sound direction.

Gorman, Nat’! L.J., July 20, 1987, at 41.

In addition to commentators, a number of courts have cited the case

with approval for a variety of propositions. See. e.g., Atari Games

Corp. v. Oman, 888 F.2d 878, 882-83 (D.C. Cir. 1989) (standard of

originality required for copyrightability): M. Kramer Mfg. Co. v.

Andrews, 783 F.2d 421, 438 (4th Cir. 1986) (while facts are not

copynightable, their original arrangement in a compilation may be

copyrighted); Lotus Dev. Corp. v. Paperback Software Int'l, 740 F.

Supp. 37, 48(D. Mass. 1990) (discussing original works of authorship).

Rand McNally & Co. v. Fleet Management Sys., 634 F. Supp. 604, 606

(N.D. Ill. 1986) (difference in arrangement in computer database

compared to that of printed work does not preclude finding

infringement).

protected; nor were such features the only elements of a

compilation which were protected by courts under the 1909

Act. In enacting the Copyright Act of 1976 (“1976 Act’”’),°

Congress did not repudiate or intend to repudiate any of the

decisions which set forth the protection accorded

compilations under the 1909 Act. To the contrary, the

expressed intent of Congress was to adopt and codify the

scope of protection accorded compilations under existing

case law.

Petitioner's and Amici’s arguments that the only

protectible elements of a compilation of factual material are

the “selection, coordination or arrangement” thereof, and

that substantial copying of the collection and assemblage

of factual material contained in a compilation is permitted

as long as the “selection, coordination or arrangement” of

the material is not copied, rest upon a serious misreading of

the definition of “compilation” contained in the 1976 Act. A

proper reading of the definition demonstrates that Congress

neither intended to narrow the variety of works traditionally

protected as compiiations, aor to limit the traditional

protection accorded to such “origina! works of authorship.”

ARGUMENT

I. THE DECISION REACHED BELOW IS NOT IN

CONFLICT WITH THE DECISION OF ANY

OTHER CIRCUIT INVOLVING A DIRECTORY

Despite the assertions by Petitioner and Amici, the

district court and the Tenth Circuit did not rely on the

so-called “sweat of the brow” doctrine of copyright protection

in their decisions. Neither court expressed any opinion

regarding such doctrine nor stated that its decision was the

result of an application of the doctrine.

Instead, the courts below rendered decisions which are in

accordance with the result reached by every circuit that has

ever been presented with a claim of infringement of a

copyrighted directory under either the 1909 or 1976 Act —

‘The Copyright Act of 1976, found at Title 17 of the United States

Code, was enacted in 1976 and became effective on January |, 1978

the collection and assemblage of names, addresses and

other data contained in a copyrighted directory cannot be

copied or otherwise used as a source to create a competing

directory, whatever the precise theory of protection relied

upon by a particular court. JIlinois Bell Tel. Co. v. Haines &

Co., 905 F.2d 1081 (7th Cir. 1990) (telephone directory);

Konor Enterprises, Inc. v. Eagle Publications, Inc., 878 F.2d

138 (4th Cir. 1989) (telephone directory); United Tel. Co. v.

Johnson Publishing Co., 855 F.2d 604 (8th Cir. 1988)

(telephone directory); Hutchinson Tel. Co. v. Fronteer

Directory Co., 770 F.2d 128 (8th Cir. 1985) (telephone

directory); Southern Bell Tel. & Tel. Co. v. Associated Tel.

Directory Publishers, 756 F 2d 801 (11th Cir. 1985) (telephone

directory); Adventures in Good Eating, Inc. v. Best Places to

Eat, Inc., 131 F.2d 809 (7th Cir. 1942) (restaurant directory);

Leon v. Pacific Tel. & Tel. Co., 91 F.2d 484 (9th Cir. 1937)

(telephone directory); Jeweler’s Circular Publishing Co. v.

Keystone Publishing Co., 281 F . 83 (2d Cir.), cert. denied, 259

U.S. 581 (1922) (trademark directory).‘

Quite simply, no cou.: of appeals, when presented with

the type of systematic copying from a copyrighted directory

present in this case, has ever concluded that such copying

was not an infringement. Thus, there is no conflict between

the result reached by the Tenth Circuit below and the result

reached by every other circuit presented with the same

factual circumstance.

In addition, because the Tenth Circuit did not rely upon

the “sweat of the brow,” or, more appropriately, the

“industrious collection” doctrine, there is not even a conflict

in principle. In fact, the cases which may appear to utilize

the supposedly separate rationales of “industrious

collection” and “selection and arrangement” do not even

conflict in theory when closely analyzed. Previous

compilation decisions are best understood not as advocating

two separate theories of protection, but rather as

emphasizing the different aspects of authorship reflected in

‘In fact, the clarity of existing precedent on this point is likely the

reason the Tenth Circuit elected to dispose of this matter with an

unpublished opinion.

compilations. Some cases emphasize the author’s “selection

or arrangement” of data, while others emphasize the

authorship in “collecting and assembling” individual facts

to create a compilation of data.

It is also important to recognize that to the extent

Petitioner relies upon the asserted “monopoly” status of

Respondent as a justification for copying Respondent's

directory (Petitioner’s Brief at 22-23), that justification must

be based on federal antitrust law, and not grounded upon a

distortion of federal copyright law. If the antitrust laws

require that the namee and addresses collected by a

telephone service monopoly be licensed at reasonable rates,

then that result should be based upon antitrust principles

and not obtained through an interpretation of copyright

law which would demolish decades of established principles

relating to compilations of all types.

Il. THECOPYRIGHTABILITY OF COMPILATIONS

UNDER THE 1976 ACT DEPENDS UPON THE

STANDARD OF ORIGINALITY ESTABLISHED

BY THE 19098 ACT

The copyright clause of the Constitution, article I, section

8, clause 8, allows Congress to grant to “Authors” exclusive

rights to their “Writings.” Through the 1976 Act, Congress

has elected to extend copyright protection to “original

works of authorship fixed in any tangible medium of

expression.” 17 U.S.C. § 102(a). The 1976 Act does not define

the phrase “original works of authorship,” but the House

Report did address the issue:

The phrase “original works of authorship,” which is

purposely left undefined, is intended to incorporate

without change the standard of originality established

by the courts under the present [i-.e., the 1909] copyright

statute.

H.R. Rep. No. 1476, 94th Cong., 2d Sess. 51 (1976) (“House

Report’) (emphasis added). Thus, the standard of

“originality” as established by the courts under the 1909

Act must be ascertained to determine the meaning of the

phrase “original works of authorship” as used in the 1976

Act.

The “originality” standard established under the 1909

Act, and prior copyright acts, consists of two components.

The first component arose from this Court’s definition of an

“Author” in Burrow-Giles Lithographic Co. v. Sarony, 111

U.S. 53, 4S. Ct. 279 (1884). There, this Court determined that

an “Author” under the copyright clause was “he to whom

anything owes its origin; originator; maker.” Jd. at 57-58, 4

S. Ct. at 281. Asa result, a work was “original” if it “owed its

origin” to an author. There was no requirement imposed by

this definition that a work possess any novelty, uniqueness

or aesthetic merit in order to be original. Burrow-Giles

required only that a work be independently created by an

author. This was the universal construction of the term

“original” under the 1909 Act. In enacting the current

that “(t}his standard [of originality under the 1909 Act] does

not include requirements of novelty, ingenuity, or esthetic

merit, and there is no intention to enlarge the standard of

protection to require them.” House Report at 51.

The second component of originality under the 1909 Act

arose from this Court’s determination that the word

“Writings” in the copyright clause “includes} any physical

rendering of the fruits of creative intellectual or esthetic

labor.” Goldstein v. California, 412 U.S. 546, 561-62, 93S. Ct.

2303, 2312 (1973) (citing Burrow-Giles, 111 U.S. at 58, 4S. Ct.

at 281; Trade-Mark Cases, 100 U.S. 82, 94 (1879) ). Thus, it is

clear that the 1909 Act also required a work to possess some

amount of creative intellectual effort or labor in order to be

an “original work of authorship.”

However, in Bleistein v. Donaldson Lithographing Co.,

188 U.S. 239, 23 S. Ct. 298 (1903), this Court made it clear it is

‘See, e.g., Lin-Brook Builders Hardware v. Gertler, 352 F.2d 298, 301

(9th Cir. 1965); Wihtol v. Wells, 231 F.2d 550, 553 (7th Cir. 1956); Alfred

Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 102-03 (2d Cir. 1951)

See also 1 P. Goldstein, Copyright § 2.2.1 (1989) (“Goldstein’’), | M.

Nimmer & D. Nimmer, Nimmer or Copyright § 2.01{A) (1990)

(“Nimmer’’).

not the role of a judge to weigh the artistic quality or worth

of a particular work when ascertaining the presence in that

work of the - epee degree of “creative intellectual or

Id. at 251-52, 23 S. Ct. at 300.

In determining those “narrowest and most obvious limits”

in which works are excluded from copyright for lack of

intellectual effort, this Court instructed that:

[A] very modest grade of art has in it something

irreducible, which is one man’s alone. That something

he may copyright unless there is a restriction in the

words of the act.

Id. at 250, 23 S. Ct. at 300. As a result of this admonition,

courts have required that only a very slight degree of

intellectual labor or creativity be present for a work to be

considered an original work of authorship and, hence,

copyrightable. See, e.g., Alfred Bell & Co., 191 F.2d at 102-03

(“{aJll that is needed to satisfy both the Constitution and the

statute is that the ‘author’ contributed something more

than a ‘merely trivial’ variation, something recognizab!

‘his own’”); Universal Athletic Sales Co. v. Salkeid, 511

F.2d 904, 908 (3d Cir.), cert. denied, 423 U.S. 863 (1975); Drop

Dead Co. v. S.C. Johnson & Son, Inc., 326 F.2d 87, 92 (9th

Cir. 1963), cert. denied, 377 U.S. 907 (1964). See also

Goldstein, § 2.2.1.2; Nimmer, § 2.01[B].

PConeiaht Asteris08

ch. 391, § Ka), 61 Stat. 654 (recodified 1947). Section 103a) of

the 1976 Act likewise accords protection for compilations.

In applying the 1909 Act (and prior acts), this Court and

other courts encountered little difficulty in concluding that

original compilations of pure factual material, including

directories of names, addresses, businesses and trade

suppliers, met both components of the originality standard.

See, e.g., Dun v. Lumbermen’s Credit Ass’n, 209 U.S. 20, 28

S. Ct. 335 (1908) (owner of copyrighted directory of North

American merchants, manufacturers and traders permitted

to recover whatever monetary damages they actually

sustained from defendant's copying of directory); Bleistein,

188 U.S. at 250, 23 S. Ct. at 300 (“{tJhe least pretentious

picture has more originality in it than directories and the

like, which may be copyrighted”). See also Nimmer, § 3.02

n.9 (collecting cases).

The 1909 Act’s recognition of originality in factual works,

including compilations, has been carried forward under the

1976 Act. As this Court recently observed, “{c}jreation of a

nonfiction work, even a compilation of pure fact, entails

originality.” Harper & Row, Publishers, Inc., v. Nation

Enterprises, 471 U.S. 539, 547, 105 S. Ct. 2218, 2224 (1985).

Ill. CONGRESS DID NOT INTEND THE

DEFINITION OF COMPILATION CONTAINED

IN THE 1976 ACT TO ALTER THE PRINCIPLES

ESTABLISHED UNDER THE 1909 ACT RE-

GARDING EITHER THE COPYRIGHTABILITY

OF OR SCOPE OF PROTECTION ACCORDED

TO A COMPILATION

In enacting the 1976 Act, Congress did not intend to

reject those decisions which had found origina! authorship

in the collection and assemblage of facts created through

the efforts of a compiler. The argument that the “industrious

collection” doctrine was repudiated by Congress under the

1976 Act is based entirely upon a misreading of the

definition of “compilation” found in Section 101 of the 1976

Act, 17 U.S.C. § 101.

A. Copyright Protection Under The 1909 Act Was

Not Limited To The Selection, Coordination

Or Arrangement Of Factua! Data Contained

In A Compilation

The 1909 Act contained no definition of the term

“compilation,” yet, as we have seen, that Act clearly

conferred copyright protection upon factual compilations,

including telephone directories. The definition of

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 origina!

work of authorship. The term “compilation” includes

collective works.

17 U.S.C. § 101. Reasoning principally from this definition,

Petationer and Amici argue that authorship in a compilation

may only be found in a compiler’s original “selection,

coordination or arrangement” of data, and that an

alphabetical arrangement of names or a selection of ai/

telephone company customers in a city is not an origina!

work of authorship.* This interpretation of the Section 101

definition was not intended by Congress and is not

warranted by the plain language of the definition.

In enacting the 1976 Act, Congress made clear when a

‘Jation is ichtabl

A compilation or derivative work is copyrightable if it

represents an “original work of authorship” and falls

within one or more of the categories listed in section

102.

House Report at 57. As earlier demonstrated, Congress did

not intend to make any change to the meaning of “original

work of authorship” from the 1909 Act:

The phrase “original works of authorship,” which is

purposely left undefined, is intended to incorporate

without change the standard of originality established

by the courts under the present copyright statute.

Id. at 51 (emphasis added). on Congress clearly intended

that a compilation would be copyrightable if it was an

“original work of authorship,” and expressly stated that it

was not changing the standard of originality traditionally

applied under the 1909 Act.

Under the 1909 Act, it was clear that a directory was

copyrightable and protected against substantial copying if

the directory was created by the original efforts of the

compiler in collecting and assembling the individual facts.

Every circuit which considered the issue agreed that a

compilation which was the product of substantial effort on

the part of a compiler in collecting and assembling the data

was copyrightable and that substantial copying of the

collection of data in such a compilation was an infringement.

Schroeder v. William Morrow & Co., 566 F.2d 3, 5-6 (7th Cir.

1977); Leon v. Pacific Tel. & Tel. Co., 91 F.2d 484, 486 (9th

* While Petitioner and Amici pay lip service to the well-settled rule that

white pages directories are protected by copyright, there would be

nothing to protect under their interpretation of Sections 101 and 103

because in their view neither the alphabetical arrangement of a

directory nor the comprehensive selection of the names contained

within it would constitute protectible matter. See Petitioner's Brief at

18, 22; NADP Brief at 17 n.19.

Cir. 1937); W.H. Anderson Co. v. Baldwin Law Publishing

Co., 27 F.2d 82, 90-91 (6th Cir. 1928); Jeweler’s Circular

Publishing Co. v. Keystone Publishing Co., 281 F. 83, 88-89

(2d Cir.), cert. denied, 259 U.S. 581 (1922).

In addition to according copy.ight protection based on

the authorship inherent in collecting and assembling

individual facts to create a compilation, circuits under the

1909 Act also recognized authorship in a compiler’s

particular selection or arrangement of data. College

Entrance Book Co. v. Amsco Book Co., 119 F.2d 874, 875-76

(2d Cir. 1941); Hartfield v. Peterson, 91 F.2d 998, 1000 (2d

Cir. 1937); Edwards & Deutsch Lithographing Co. v.

Boorman, 15 F.2d 35, 36 (7th Cir.), cert. denied, 273 U.S. 738

(1926). Thus, under the 1909 Act, a compilation of data was

considered copyrightable if the intellectual labor or effort

reflected in either the collection and assemblage of data or

the selection or arrangement of data, or both, was sufficient

to constitute an original work of authorship. This was the

unquestioned state of the law at the time Congress enacted

the 1976 Act. Congress, when it passed the 1976 Act, did not

repudiate the theory of any of the judicial] decisions

according copyright protection to compilations of data, nor

did it statutorily reverse or alter the scope of protection such

decisions accorded the collection and assemblage of data

contained in copyrighted compilations.’

"Indeed, when Congress disagreed with a particular judicial decision

interpreting the 1909 Act, it made its disapproval quite plain in the

legislative history of the 1976 Act and clearly indicated that the 1976

Act was intended to alter the result of the decision. See House Report at

52 (disagreeing with White-Smith Music Publishing Co. v. Apollo Co.,

209 U.S. 1, 28S. Ct. 319 (1908) ); House Report at 64 (disagreeing with

Metro-Goldwyn-Meyer Distributing Corp. v. Wyatt, 21 C.O. Bull. 203

(D. Md. 1932) ); House Report at 157 (altering Vacheron & Constantin-

Le Coultre Watches, Inc. v. Benrus Watch Co., 260 F.2d 637 (2d Cir.

1958)); House Report at 86-87 (rejecting the basis of the Supreme

Court's decision in Twentieth Century Music Corp. v. Aiken, 422 U.S.

151, 95 S. Ct. 2040 (1975), and codifying pre-Aiken interpretations of

Buck v. Jewell-La Salle Realty Co., 283 U.S. 191,51 S. Ct. 410(1931), as

Section 110(5) of the 1976 Act). The legislative history relating to

Sections 101 and 103 nowhere indicates that Congress disagreed with

or sought to change any of the decisions under the 1909 Act relating to

the protection accorded factual compilations.

B. The Definition Of Compilation In The 1976

Act Was Not Intended To Change The Copy-

right Principles Established For Compilations

Under The 1909 Act

Although Congress included the “selected, coordinated,

or arranged” language in the definition of compilation

contained in the 1976 Act, that decision was not made, as

Petitioner and Amici suggest, because Congress intended

that such selection, coordination or arrangement would be

the only protectible elements of a compilation. Instead, the

reference to “selected, coordinated, or arranged” was included

simply to make it clear that all types of works made up of

collected and assembled preexisting data were to be

classified as compilations if they met the established

standard of originality. This interpretation is consistent

with the language of the House Report which states:

Between them the terms “compilations” and

“derivative works” which are defined in section 101,

comprehend every copyrightable work that employs

preexisting materia] or data of any kind.

House Report at 57. Thus, Congress was not seeking to add

new elements of originality which applied only to

compilations. It was simply stating that all types of

collections of preexisting material (however organized) fall

within the definition of “compilation” if the work as a

whole constitutes “an original work of authorship.”

Under this interpretation, it is clear that the process and

effort necessarily involved in collecting and assembling

factual material constitute the “selection, coordination or

arrangement” referenced in the definition.* Whether such a

work is a copyrightable “compilation” depends upon, as the

definition clearly states, whether “the resulting work as a

whole constitutes an original work of authorship.” 17

"Professor Beryl R. Jones persuasively suggests that the word

“coordination” in the definition easily encompasses the act of “taking

facts which exist in a multitude of places and ina variety of forms and

putting them in a single location.” Jones, Factual Compilations and

the Second Circuit, 52 Brooklyn L. Rev. 679, 701 (1986).

U.S.C. § 101 (emphasis added). Congress’ explanation in the

House Report that “{a] compilation results from a process of

selecting, bringing together, organizing, and arranging

previously existing material of all kinds, regardless of

whether the individual items in the material have been or

ever could have been subject to copyright” is in accord with

this interpretation. House Report at 57.

If a compilation meets the “original work of authorship”

test, then all elements reflecting such original authorship of

the compiler, including the collection and assemblage of

data created by the author and the presentation and

arrangement of such data, are protected under familiar

as a whole is the expression of the author of a factual

compilation —it is that aspect of the work which “display(s]

the stamp of the author’s originality.” Harper & Row,

Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 547, 105

S. Ct. 2218, 2224 (1985). Of all of the immense mass of

factual data available in the world, a compiler determines a

topic for which he or she believes it will be valuable (and

profitable) to collect and assemble data. The compiler may

decide to create a comprehensive collection of available

data on a particular topic, or may conclude that only some

types of data pertaining to a topic should be included in the

compilation. The important point is that the resulting

-ollection and assemblage is the original expression of the

compiler’s authorship as long as the collection as a whole

was independently created and not copied from a prior

compilation.

The fact that the cal!grtion and assemblage of data as a

whole is protected expression does not mean that the

preexisting data contained in the compilation are protected.

As provided in Section 103(b) of the 1976 Act, “(t]he

right in the preexisting material.” 17 U.S.C. § 103(b). The

preexisting data continue to be as freely available from the

same source for use by subsequent compilers as they were

for use by the initial compiler. It is the collection and

assemblage, or compilation, of the data as a whole that is

protected, not the underlying data. Such protection does not

stifle creativity in the preparation of subsequent

compilations, or unduly restrict subsequent compilers,

because “only copying sufficient to produce a substantially

similar collection would generate potential liability.”

Dericola, Copyright in Collections of Facts: A Theory for

the Protection of Nonfiction Literary Works, 81 Colum. L.

Rev. 516, 531 (1981) (“Denicola”). In addition, the fair use

doctrine is available to help determine the permissibility of

particular uses of the collection and assemblage of data

contained in a compilation. 17 U.S.C. § 107.

The construction of the statutory definition of a

“compilation” urged by Petitioner and Amici would accord

no protection to a compilation other than to the compiler’s

original selection, coordination or arrangement of the data

contained in the compilation. See, e.g., Petitioner’s Brief at

13, 18; Brief of Amicus Curiae Direct Marketing Association

at 89. Thus, under Petitioner’s and Amici’s view, if a

compiler collects, assembles and alphabetically arranges

the names of all of the military battles that occurred in

recorded time, that compilation may be freely copied, even

by a direct competitor, because no selection was exercised

(the list is comprehensive) and an alphabetical arrangement

obviously is not original. On the other hand, if the compiler

publishes an alphabetical list of those battles he or she

deems “most decisive” in world history, then Petitioner and

Amici apparently would accord protection to that list

because the author exercised “selection” (i.e., exclusion) in

compiling the information. This interpretation would lead

to the perverse result that the more comprehensive the

collection of data in a work, and the more accessible and

familiar the presentation of such data, the less likely the

work would be considered a protectible compilation. This

prould be a nonsensical result, and certainly is not the result

intended by Congress when it enacted the definition of

“compilation” contained in the 1976 Act.®

Congress did not intend that the language it chose

relating to preexisting data being “selected, coordinated, or

assemblages

of “compilation,” and hence from the protection of copyright.

Instead, it relied upon the language in the definition that

Pe pie mee besiege Ay naps cy area

of authorship,” together with the established originality

standard of the 1909 Act, to perform that exclusionary

function. Congress intended the “selected, coordinated, or

arranged” language to perform an inclusionary role, and

the legislative history demonstrates this intent.

IV. PETITIONER’S USE OF RESPONDENT'S

TELEPHONE DIRECTORY IN THIS CASE IS

NOT PERMITTED BY SECTION 103 OF THE

1976 ACT

Contrary to Petitioner's and Amici’s assertions, Section

103 of the 1976 Act does not sanction substantial copying of

the factual material contained in a copyrighted compilation.

Section 103(b) provides in part that:

The copyright in a compilation or derivative work

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

*As a further example, consider the plight of computer databases

under the interpretation urged by Petitioner and Amuc:. Most databases

are considered te have greater utility and value the greater their

comprehensiveness (i.e.. ali information and materia! relevant to the

topic of the database are sought out by the compiler). Similarly, the

arrangement of data in a database is often a function of the

technicalities of electronic memory. Thus, unless the information may

be retrieved only in a way which represents a particular arrangement

of the data intended by the compiler, it is often meaning/ess to speak of

a particular “arrangement” of the data in the database. See Denicola

at 53). Without any demonstrable arrangement on the part of

database compilers, such databases could be freely copied by anyone

under Petitioner's and Amici’s interpretation of the statutory

definition.

exclusive right in the preexisting material.

17 U.S.C. § 103(b). From this language, Petitioner and

Amici argue that the names, addresses and telephone

numbers contained in a white pages directory are

“preexisting materials,” that the compiler of such a directory

has performed no selection or arrangement of data which

would result in authorship, and that, as a result, substantia!

if not wholesale copying of such names, addresses and

telephone numbers is permissible. See, ¢.g., Petitioner’s

Brief at 21-22; NADP Brief at 11-12.

This analysis assumes that there is no “material

contributed by the author” of a white pages directory

because such a directory contains factual, public domain

material arranged alphabetically. However, this analysis

ignores the fact that the “material” contributed by the

author of such a directory includes the collection and

assemblage (or coordination) of data as a whole. Just as an

ow@gina! selection or arrangement of public domain data

may be “material contributed by the author” of a compilation

(as Petitioner and Amici acknowledge), so too can the

original collection and assembly of such data as a whole

constitute “material contributed by the author,” and both

are protected by copyright. See discussion in Section III,

supra.

While it was clear under the 1909 Act that copyright

protection was accorded to the collection and assemblage of

factual data as a whole, and that substantial copying of the

resulting compilation of data was not permitted, it also was

clear that the compiler had no exclusive right in the

— ial ° This principle was the basi

of another venerable doctrine of copyright law which

Petitioner and Amuci seek to overturn, the verification rule.

The verification rule was firmly established under the

1909 Act. Essentially, the rule holds that if a compiler first

independently collects and assembles factual material to be

contained in a new compilation, he or she then may

compare and check the new compilation with an existing

Illinois Bell Tel. Co. v. Haines & Co., 905 F.2d 1081, 1086 (7th

Cix. 1990); G.R. Leonard & Co. v. Stack, 386 F.2d 38, 39 (7th

Cir. 1967), W.H. Anderson Co. v. Baldwin Law Publishing

Co., 27 F.2d 82, 89 (6th Cir. 1928); Jeweler’s Circular

Publishing Co. v. Keystone Publishing Co., 281 F.83, 91-92

(2d Cir.), cert. denied, 259 U.S. 581 (1922); Sampson &

‘°Section 7 of the 1909 Act provided in relevant part that:

Compilations or abridgments, adaptations, arrangements

dramatizations, translations, or other versions of works in the

public domain .. . or works republished with new matter, shal!

be regarded as new works subject to copyright under the

provisions of this title, but the publicat.on of any such new works

shall not affect the force or validity of any subsisting copynght

upon the matter employed or any part thereof, or be construed to

umply an exclusive nght to such use of the ongina!l works. or to

secure or extend copyright in such ongina! works.

a ee

ae Co. v. Seaver-Radford Co., 140 F. 539, 544-45 (1st

ir. 1905)."*

In addition to defining the scope of protection accorded to

factual information contained in compilations, the

verification rule was also an early application of the

doctrine of fair use. Courts adopting the rule essentially

used it to delineate the boundaries of permissible use of

existing compilations by subsequent compilers of competing

works. See e.g., G.R. Leonard & Co., 386 F.2d at 39 (“{i}t is

recognized that a compiler of a directory or the like may

make a fair use of an existing compilation serving the same

purpose if he first makes an honest, independent canvass’):

W.H. Anderson Co., 27 F.2d at 89 (“there is the pyblic

interest in having subsequent workers in a field allowed to

make use of the accumulated knowledge of the past,

nee of Che couneas"h; deweler’s Cirenter,

1 F. at 91

While Amici scorn the verification rule, see NADP Brief

at 23-24, it has been, as an application of the fair use

doctrine, a settled principle of copyright law for nearly 100

years. In enacting the 1976 Act, the doctrine of fair use as

developed by courts under the 1909 Act was yet another

area of copyright law which Congress expressly intended to

remain unchanged:

The bill endorses the purpose and general scope of the

judicial doctrine of fair use, but there is no

disposition to freeze the doctrine in the statute.

'' Petitioner repeated|y asserts that copying Respondent's compilation

was its “only . . . feasible alternative” because of the “practical

unavailability” of the data contained therein. See Petitioner's Brief at

9, 23. It is, of course, always the case that copying the expression in a

copyrighted work is easier and cheaper than creating one's own

expression. However, to the extent that there exists specia! difficulty

in collecting the factual data involved in this case, it must be

remembered that the factual material found in many other types of

compilations is readily available from other sources. For example.

government data and various forms of financia! data which are

frequently compiled are readily available to subsequent compilers

from the orginal sources. See a/so discussion regarding antitrust law

mandates in Section |. supra

especially during a period of rapid technological

change. .. . Section 107 is intended to restate the

present judicial doctrine of fair use, not to change,

narrow, or enlarge it in any way.

House Report at 66 (emphasis added). Thus, Congress

neither repudiated the verification rule as an application of

the fair use doctrine when it enacted the 1976 Act, nor

indicated that Section 103(b) was meant to effectuate a

sweeping change from the 1909 Act in the scope of protection

accorded to compilations of factual material.'?

CONCLUSION

Petitioner and Amici seek to have this Court lay aside

longstanding judicial authority relating to the copyright

protection accorded factual compilations. Their basis for

this request is a misreading of both the language and

legislative history of Sections 101 and 103. Congress did not

intend to work such a radical or wholesale change in

established copyright law relating to compilations when it

enacted the 1976 Act. The decision of the Tenth Circuit

should be affirmed because it was based on a proper reading

of the relevant provisions of the 1976 Act and is uniformly

supported by prior precedent.

'?The House Report does state that Section 103(b) is “intended to

define, more sharply and clearly than does section 7 of the present law,

the important interrelationship and correlation between protection of

and of ‘new’ materia! in a particular work.” House Report

at 57. It is plain that Petitioner's and Amici's suggested interpretation

of Section 103(b) in this case — that it permits wholesale copying of the

body of factual materia! contained in a white pages directory because

it 1s unprotectible “preexisting maternal” — would do more than ‘define

more sharply and clearly” the relationship between protection of

preexisting and new material. Such an interpretation would overturn

decades of judicial decisions relating to the scope of protection granted

compilations and the permissible uses of data contained in such

compilations. Congress did not intend Section 103(b) to produce such a

result

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