Opposition Brief — Haines & Co. v. Illinois Bell Telephone Co.

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JOSEPH F. SPANIOL, JR

Iu the Supreme Court of the United States

OCTOBER TERM, 1990

HAINES AND COMPANY INC., ET AL., PETITIONERS

ILLINOIS BELL TELEPHONE COMPANY, RESPONDEN‘?

On Petition for a Writ of Certiorari to the

United States Court of Appeals

for the Seventh Circuit

BRIEF FOR THE RESPONDENT

EDWARD A. BUTTS MICHAEL K. KELLOGG

ROBERT GURITZ Counsel of Record

Illinois Bell CHARLES ROTHFELD

Telephone Co. Mayer, Brown & Platt

225 West Randolph St. 2000 Pennsylvania Ave., N.W.

Chicago, Illinois 60606 Washington, D.C. 20006

(8312) 727-7140 (202) 463-2000

Counsel for Respondent

— _ ee

WILSON - Eres PRINTING Co., INC. - 789-0096 - WASHINGTON, D.C. 20001

QUESTION PRESENTED

Whether wholesale appropriation of data from a

copyrighted directory for use in the preparation of

another directory is precluded by the Copyright Act

of 1976, 17 U.S.C. § 101 et seq.

(i)

TABLE OF CONTENTS

Page

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sta asnee coecdivceseetensisrerenacpercoes «onan 11

(iii)

TABLE OF AUTHORITIES

Cases: Paye

Atari, Inc. v. North American Philips Consumer

Electronics Corp., 672 F.2d 607 (7th Cir.), cert.

denied, 459 U.S. 880 (1982) ................................... 10

Cooling Systems & Flexibles, Inc. v. Stuart Radia-

tor, Inc., 777 F.2d 485 (9th Cir. 1985) _............... 8, 10

Eckes Vv. Card Prices Update, 736 F.2d 859 (2d

cA RSC RPI SSPE Roe ae De eRe A 7

Evans Newton Inc. v. Chicago Systems Software,

793 F.2d 889 (7th Cir.), cert. denied, 479 U.S.

RRR area tka ncn noe Oe 10

Financial Information, Inc. Vv. Moody’s Investors

Service, Inc., 808 F.2d 204 (2d Cir. 1986), cert.

denied, 848 U.S. 820 (1987) .....................2........... 7

Harper House, Inc. v. Thomas Nelson, Inc., 889

ff Ba Ta a etenmec eee emcee 8,10

Harper & Row, Publishers, Inc. v. Nation Enter-

prises, 471 U.S. S39 (1985) ................................ 3, 5, 8, 9

Hoehling v. Universal City Studios, Inc., 618 F.2d

972 (2d Cir.), cert. denied, 449 U.S. 841 (1980)... 7,10

Hutchinson Tel. Co. v. Fronteer Directory Co., 770

if me: Be es A. | Reece 6

Landsberg v. Scrabble Crossword Game Players,

Inc., 736 F.2d 485 (9th Cir.), cert. denied, 469

ERR eRe EPO ES SO RIOR 8

Leon V. Pacific Tel. & Tel. Co., 91 F.2d 484 (9th

RSS ea tae ares ee ee ee PI 6, 8

Miller v. Universal City Studios, Inc., 650 F.2d

Se i cancastenincigoiaies 7

Rosemont Enterprises, Inc. Vv. Random House, Inc.,

366 F.2d 303 (2d Cir. 1966), cert. denied, 385

i a el kc seadlinaapeinents 7

Schroeder Vv. William Morrow & Co., 566 F.2d 3

NI tec decaieaacouoie 3,9

Sid & Marty Krofft Television Productions, Inc.

v. McDonald’s Corp., 562 F.2d 1157 (9th Cir.

sR ROS Roe Re Oe ES Re ee 9-10

Southern Bell Tel. & Tel. Co. Vv. Associated Tel.

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

| EI ARES sean MUON Reed ace eh RO A aR TY 7

TABLE OF AUTHORITIES—Continued

United Tel. Co. Vv. Johnson Publishing Co., 855

ee SI Te TE iccicstcseinide tice 9,10

Universal Athletic Sales Co. v. Salkeld, 511 F.2d

904 (3d Cir.), cert. denied, 423 U.S. 863 (1975)... 8, 10

Walker v. Time Life Films, Inc., 784 F.2d 44 (2d

Cir.), cert. denied, 476 U.S. 1159 (1986) ......... 7,9, 10

Worth v. Selchow & Righter Co., 827 F.2d 569

(9th Cir. 1987), cert. denied, 485 U.S. 977

ID wsctcesccc esis sen ccasstvaneoagpgeatnnlahaaondaniondatapatncaataniacianiins 8

Statute :

Miscellaneous

H.R. Rep. No. 1476, 94th Cong., 2d Sess. (1976)... 6

Lurvey, “Verifying” From Prior Directories—

“Fair Use” or Theft?, 13 Bull. Copyright Soc.

i a eee 5

3 M. & D. Nimmer, Nimmer on Copyright (1990)... 5,9

S. Rep. No. 473, 94th Cong., 1st Sess. (1975) ........ 6

Squires, Copyright and Compilations in the Com-

puter Era: Old Wine in New Bottles, 24 Bull.

CHOPRA TRG, TD CTD asiccccncsnsiicccmessessiccsnvncnare 5

Iu the Suprenve Court of the United States

OCTOBER TERM, 1990

No. 90-731

HAINES AND COMPANY INC., ET AL., PETITIONERS

ILLINOIS BELL TELEPHONE COMPANY, RESPONDENT

On Petition for a Writ of Certiorari to the

United States Court of Appeais

for the Seventh Circuit

BRIEF FOR THE RESPONDENT

STATEMENT

1. Respondent is a public utility that provides

telephone service. In the course of its business and

pursuant to state law, respondent produces and dis-

tributes telephone directories. In relevant part, these

directories—the familiar telephone ‘white pages’—

contain alphabetically arranged listings of respond-

ent’s customers, along with their addresses and tele-

phone numbers. Pet. App. 16a. Each of the direc-

tories was registered with the Copyright Office. /d.

at 19a.

Petitioner publishes directories that contain much

of the same information, although arranged in a

different format. Insofar as is relevant here, peti-

tioner’s directories contain a so-called ‘““Addressakey”

listing, in which names, telephone numbers, and cer-

tain other information are arranged by address. Pet.

App. 16a-17a. The directories also contain a “Telo-

key” listing, in which the same information, broken

down geographically, is arranged in the ascending

numerical order of the telephone numbers. /d. at

17a.

From 1971 through 1980 petitioner purchased the

right to use respondent’s white pages in the prepara-

tion of its directories. Under this arrangement, re-

spondent provided petitioner with advance copies of

the white pages. Petitioner would identify the new

white pages listings and insert them in the next edi-

tion of its own directories. In 1982, however, peti-

tioner chose not to renew the licensing agreement.

Instead, it took published copies of respondent’s

white pages and used them in the same manner that

it had used the advance copies obtained prior to 1980.

Petitioner did not verify the new listings before plac-

ing them in its own directories; as a consequence, 10

of 12 fictitious listings placed in the 1982 white

pages, and 13 of 14 fictitious listings placed in the

1983 white pages, appeared in petitioner’s direc-

tories. Pet. App. 2a-3a; 18a-19a.

2. Respondent then brought this action, asserting

that 10 editions of petitioner’s 1982 and 1983 direc-

tories infringed the copyright in 34 of respondent's

directories.’ Pet. App. 19a. The district court ruled

for respondent. Jd. at 15a-26a. The court first found

that “the ‘white pages’ of telephone books are copy-

rightable compilations under 17 U.S.C. §§ 102 and

' Petitioner asserted a counterclaim, alleging Sherman Act

viclations on the part of respondent. See Pet. App. 7a. The

district court dismissed the counterclaim; that ruling was

upheld on appeal. Jd. at Ta-lla. Petitioner has not sought

review of that aspect of the decision below.

103.” Pet. App. 20a. Relying on Schroeder v. Wil-

liam Morrow cd: Co., 566 F.2d 3 (7th Cir. 1977), the

court explained that “‘[a]nother is entitled to make

his own compilation of the same names and ad-

dresses, using information in the public domain, but

he is not entitled merely to copy the copyrighted

list.” Pet. App. 21a (quoting Schroeder, 566 F.2d

at 5-6). With this in mind, the court held that peti-

tioner infringed respondent’s copyright because

“Tdjirect evidence of copying exists here: [peti-

tioner] admits copying occurred.” Pet. App. 24a.

The court added that petitioner could not rely on a

defense of fair use because “[w]hen a defendant

fails to start with his own independent canvass and

instead starts with plaintiff’s copyrighted informa-

tion, * * * this defense is unavailable.” /d. at 25a.

The court of appeals affirmed. Pet. App. la-l4a.

The court agreed that respondent’s directory was

subject to copyright, noting that this Court had cited

Schroeder for the proposition that “ ‘a compilation of

pure fact[] entails originality.’” ‘et. App. 5a

(quoting Harper & Row, Publishers, Inc. v. Nation

Enterprises, 471 U.S. 539, 547 (1985) ). Responding

to petitioner’s complaint that its directories were not

“substantially similar’ to respondent’s, the court

adaed that “[e]stablishing substantial similarity is

necessary only when direct evidence of copying is un-

available. Here there is direct evidence of copying,

i.e., [ petitioner’s] admitted use of the information in

[respondent’s] directories to create its directory, and

therefore, proof of substantial similarity is not re-

quired.” Pet. App. 7a (citation omitted).

DISCUSSION

We agree that it would be appropriate to hold the

petition in this case pending the decision in Feist

Publications, Inc. y. Rural Telephone Service Co., No.

89-1909, scheduled to be argued on January 9, 1991.

There are significant differences between the issues

in the two cases: the petitioner in Feist principally

argues that telephone directories are not subject to

cedes copyrightability; the Feist petitioner asserts a

fair use defense, while petitioner here does not. Pe-

titioners in both cases do argue, however, that copy-

right in a directory protects only the arrangement of

the listings. The decision in Feist accordingly may

have some bearing on the claim here.

Having said that, two additional points merit em-

phasis. First, petitioner’s claim here is, in one sig-

nificant respect, weaker than the claim of petitioner

in Feist. Second, apart from the question already

presented in Feist, none of the issues raised by peti-

tioner here warrants consideration by this Court. If

the petiticn is held, both of those points should be

borne in mind when this petition is considered again

in light of the disposition of Feist.

1. The petitioners both in this case and in Feist

copied a substantial portion of their listings from

copyrighted directories. The Feist petitioner, how-

ever, independently verified the accuracy of those

listings before printing them in its directory: peti-

tioner here did not. While we do not believe that such

verification vitiates the infringement when data is

copied wholesale from a copyrighted directory, there

is some (very old) authority suggesting that copying

in such circumstances is a permissible practice. See

Squires, Copyright and Compilations in the Computer

Era: Old Wine in New Bottles, 24 Bull. Copyright

Soc. 18, 28 n.41 (1976); Lurvey, “Verifying” From

Prior Directories-—“‘Fair Use” or Theft?, 13 Bull.

any decision approving the wholesale appropriation

of directory listings without such verification. Even

if the petitioner in Feist prevails, then, the outcome

there might not affect this case.

2. Petitioner raises a number of issues that it con-

tends merit this Court’s consideration. None does.

a. Petitioner asserts (Pet. 13-15) that this case

warrants review apart from Feist because the factual

settings of the cases differ; Feist involves competing

directories while this one does not. Even if petition-

er’s characterization of the facts is correct, however,

it is beside the point here. The purpose of the in-

fringing work never has been deemed relevant to the

scope of the basic protections accorded a copyrighted

work. That necessarily is so; it is difficult to see how

an infringer’s lack of a competitive purpose could

bear on the legal question whether copyright protec-

tion in a compilation extends only to the particular

arrangement of its listings. In fact, the purpose to

which the material taken from a copyrighted work

will be put—in particular, the effect on the market

for the copyrighted work—is considered under the

rubric of fair use as a defense to what otherwise

would be unlawful copying. See generally Harper &

Row, supra; 3 M. & D. Nimmer, Nimmer on Copy-

right § 13.05 (1990). But petitioner did not assert

fair use as a defense before the court of appeals, and

does not advance a fair use contention in its petition.

Review of its claim here accordingly is inappropriate.

| i aaa aeaaiiaciaeiiiaeaa mms

b. Petitioner asserts (Pet. 16-19) a conflict be-

tween the holding below and decisions of the Second,

Fifth, and Ninth Circuits on the scope of copyright

protections for compilations of data. There is no

merit in this contention. In fact, we are not aware of

any decision of any court that has sanctioned the

wholesale appropriation of data from a compilation.

Needless to say, we agree with petitioner’s state-

ment that facts are not subject to copyright. But

courts long have accorded extensive copyright pro-

tection to compilations of data. Before enactment of

the Copyright Act of 1976, 17 U.S.C. § 101 et seq.,

courts consistently held that the wholesale appropri-

ation of data from a copyrighted directory infringed

the copyright, even if the data were rearranged by

the infringer. Indeed, in the leading case from that

period, the copyrighted work was an alphabetical

white pages directory; the Ninth Circuit upheld the

ings were repackaged as a so-called “criss-cross” di-

rectory similar to petitioner’s. Leon v. Pacific Tel.

& Tel. Co., 91 F.2d 484, 485 (9th Cir. 1937). Con-

gress expressly endorsed the then-existing standards

on the scope of copyright protection, such as those

applied in Leon, when it enacted the Copyright Act.

See H.R. Rep. No. 1476, 94th Cong., 2d Sess. 51

(1976); S. Rep. No. 473, 94th Cong., 1st Sess. 50

(1975). See Hutchinson Tel. Co. v. Fronteer Direc-

tory Co., 770 F.2d 128, 131 (8th Cir. 1985) (Con-

gress “ratif[ied] an unbroken line of cases’).

These decisions did not hold facts as such to be

copyrightable. Instead, they reasoned that the com-

piler’s original—and therefore copyrightable—contri-

bution was his collection and coordination of a mass

of data. As a consequence, wholesale appropriation

of that data was understood to infringe the compiler’s

The decisions cited by petitioner are wholly con-

sistent with this understanding. Of the Second Cir-

cuit cases relied upon by petitioner (Pet. 18-19 &

n.6), three involved factual narratives rather than

compilations and therefore are not relevant here; ”

the other two (neither of which involved a telephone

directory) expressly left open the possibility that

“wholesale appropriation” of data from a compilation

would amount to infringement. EHckes v. Card Prices

Update, 736 F.2d 859, 862 (2d Cir. 1984); Financial

Information, Inc. v. Moody’s Investors Service, Inc.,

808 F.2d 204, 207 n.1 (2d Cir. 1986), cert. denied,

848 U.S. 820 (1987).° The Fifth Circuit decision

relied upon by petitioner (Pet. 17) also involved a

narrative rather than a compilation; far from sup-

porting petitioner’s position, it noted “the special pro-

tection granted directories under the copyright law.”

Miller vy. Universal City Studios, Inc., 650 F.2d 1365,

1370 (5th Cir. 1981). And the Ninth Circuit, while

*Walker Vv. Time Life Films, Inc., 784 F.2d 44, 49 (2d

Cir.), cert. denied, 476 U.S. 1159 (1986); Hoehling v Uni-

versal City Studies, Inc., 618 F.2d 972, 978-979 (2d Cir.),

cert. denied, 449 U.S. 841 (1980); Rosemont Enterprises,

Ine. V. Random House, Inc., 366 F.2d 303, 310 (2d Cir. 1966),

cert. denied, 385 U.S. 1009 (1967).

* Indeed, the plaintiff’s work in Financial Information was

heid to be not copyrightable at all. 808 F.2d at 208. As peti-

tioner does not deny the copyrightability of respondent’s

directory, the holding in Financial Information is of no rele-

vance here.

*While Southern Bell Tel. & Tel. Co. V. Associated Tel.

Directory Publishers, 756 F.2d 801, 810 (11th Cir. 1985),

has language suggesting that only the form of a directory

questioning some of the language in Leon, never has

overruled that decision; to the contrary, that court

also has recognized that special rules apply in cases

involving “infringement of one directory by another.”

Worth v. Selchow & Righter Co., 827 F.2d 569, 573

(9th Cir. 1987), cert. denied, 485 U.S. 977 (1988).°

Petitioner’s assertion of a conflict (to the extent that

it survives Feist) accordingly does not warrant

review.

ce. Petitioner’s similar assertion (Pet. 19-21) of

tension between the decision below and this Court’s

holding in Harper & Row, supra, is similarly without

foundation. The Court in Harper & Row did indi-

cate, of course, that particular facts may not be copy-

righted. But the Court did not suggest that one may

copy at will from a factual publication. The Court

recognized—and did not resolve—confusion in the

lower courts over the extent of copyright “in the

realm of factual narrative.” 471 U.S. at 548.° And

as the court of appeals observed (Pet. App. 5a), the

is protected, the court in fact found infringement. See id.

at 811 & 809-810 n.9.

*> The other Ninth Circuit decisions cited by petitioner (Pet.

16-17) also did not involve directories. Harper House, Inc. V.

Thomas Nelson, Inc., 889 F.2d 197, 198-199 (9th Cir. 1989)

(time organizer); Cooling Systems & Flexibles, Inc. v. Stuart

Radiator, Inc., T777 F.2d 485, 491-492 (9th Cir. 1985) (cat-

alog); Landsberg v. Scrabble Crossword Game Players, Inc.,

736 F.2d 485, 486 (9th Cir.) (Scrabble strategy book), cert.

denied, 469 U.S. 1037 (1984). The same is true of the Third

Circuit decision cited (Pet. 17-18) by petitioner. Universal

Athletic Sales Co. Vv. Salkeld, 511 F.2d 904, 907-909 (3d Cir.)

(exercise chart), cert. denied, 423 U.S. 863 (1975). i

® As this case does not involve a factual narrative, it is not

a suitable vehicle for settling that controversy.

Court in Harper & Row noted the availability of

U.S. at 547. The Court cited for that proposition

Schroeder, the decision relied upon by the court below.

Id. It is worth adding that Schroeder involved a sit-

uation very much like the one in this case: the court

found infringement when listings from a gardening

directory were edited and placed in a volume with a

different format. See 566 F.2d at 4-5. Against this

background, nothing in Harper & Row is inconsistent

with the decision below.

d. Finally, petitioner asserts that the decision be-

low conflicts with holdings of other courts assertedly

requiring the plaintiff in a copyright infringement

action to prove both copying of the copyrighted work

and substantial similarity between the copyrighted

and infringing works. Pet. 21-24. In fact, other

courts have no such rule. As the late Professor

Nimmer explained, “[r]educed to most fundamental

terms, there are only two elements necessary to the

plaintiff’s case in an infringement action: ownership

of the copyright by the plaintiff and copying by the

defendant.” 3 M. & D. Nimmer, supra, § 13.01, at

13-4 (footnotes omitted). Substantial similarity be-

tween the works is simply one way of proving copy-

ing. “It is generally not possible to establish copying

by direct evidence * * *. Therefore copying is ordi-

narily established indirectly by the plaintiff’s proof

of access [to the copyrighted work by the defendant]

and substantial similarity.” Jd. § 13.01[B], at 13-7

to 13-8 (footnotes omitted).

The decisions cited by petitioner recognize this

rule. See, e.g., United Tel. Co. v. Johnson Publishing

Co., 855 F.2d 604, 607 (8th Cir. 1988); Walker, 784

F.2d at 48; Sid & Marty Krofft Television Produc-

tions, Inc. v. McDonald’s Corp., 562 F.2d 1157, 1162

(9th Cir. 1977). These courts have suggested that

proof of copying is not enough to establish infringe-

ment only when the thing copied is not itself copy-

rightable. As the Second Circuit explained,

[c]opying may be inferred where a plaintiff es-

tablishes that the defendant had access to the

copyrighted work and that substantial similari-

ties exist as to protectible material in the two

works. Put another way, [the plaintiff] must

show that his book was “copied,” by proving ac-

cess and substantial similarity between the

works, and also show that his expression was

“improperly appropriated,” by proving that the

similarities relate to copyrightable material.

Walker, 784 F.2d at 48 (citations omitted). That ‘s

the distinction drawn in each of the cases cited by

petitioner.’

The Seventh Circuit follows an identical rule—as

is suggested by petitioner’s citation to two decisions

of that court. See Pet. 22-23 (citing Evans Newton

Inc. v. Chicago Systems Software, 793 F.2d 889, 893

(7th Cir.), cert. denied, 479 U.S. 949 (1986) ); Pet.

23 n.9 (citing Atari, Inc. v. North American Philips

Consumer Electronics Corp., 672 F.2d 607, 615 (7th

Cir.), cert. denied, 459 U.S. 880 (1982)). In this

case, the court below held that the wholesale appro-

priation of data from a compilation takes copyright-

able matter. And because copying here was admitted,

the court concluded that there was no néed for it to

7See Harper House, 889 F.2d at- 207-208; Walker, 784

F.2d at 48; Cooling Systems, T77 F.2d at 491-492; Hoehling,

618 F.2d at 977; Sid & Marty Krofft Television Productions,

562 F.2d at 1162, 1165; Universal Athletic Sales, 511 F.2d at

908. Cf. United Tel. Co., 855 F.2d at 607-608.

inquire further. If the court of appeals is correct

in its analysis of the scope of copyright protection

accorded directories, nothing in its holding conflicts

with the decisions of other courts regarding the rela-

tionship between copying and substantial similarity.

CONCLUSION

The petition for a writ of certiorari should be held

pending disposition of Feist Publications, Inc. v.

Rural Telephone Service Co., No. 89-1909.

Respectfully submitted.