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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Amicus Curiae Brief
- **Published:** January 1, 1991
- **Citation:** 499 U.S. 340

## Text

Supreme Court of the Hnited States
October Term, 1990

FEIST PUBLICATIONS, INC.,

v.

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

iv

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
Copyright Act of 1909, ch. 320, 35 Stat. 1075
EE RS a passim

EE ee Ae ae 4
i US aoe eens 18
Copyright Act of 1976, 17 U.S.C. §§ 101-914........ passim
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.

l

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:
2

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).

3

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

4

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.

5

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

6

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
Copyright Act, Congress clearly understood and accepted
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
8

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
ee

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!

10

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.

ll

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.
12

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).

13

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
copyright principles. The collection and assemblage of data
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
copyright in a compilation . .. does not imply any exclusive
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

14

:

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

15

“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.

16

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

17

— 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.
Copyright Act of 1909, ch. 391, § 7, 61 Stat. 655 (recodified 1947)

18

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
19

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

20

21

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385012_0764%3A15. Public record. Not legal advice.