Amicus Curiae Brief — Haines & Co. v. Illinois Bell Telephone Co.

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90-731.

o No.

Conreme Court

ee

IN THE

Supreme Court of the United States —

OCTOBER TERM, 1990

HAINES AND COMPANY, INC.,

HAINES CRISS + CROSS PUBLISHERS, INC.

WILLIAM K. HAINES, Sr., and

WILLIAM K. HAINES, JR.,

Petitioners,

V.

ILLINOIS BELL TELEPHONE COMPANY,

Respondent.

On Petition for a Writ of Certiorari to the

United States Court of Appeals

for the Seventh Circuit

BRIEF OF THE INTERNATIONAL ASSOCIATION OF

CROSS REFERENCE DIRECTORY PUBLISHERS

AS AMICUS CURIAE IN SUPPORT OF —

PE. ITIONERS HAINES AND COMPANY, INC. ET AL

RICHARD D. GRAUER

Counsel of Record

DYKEMA GOSSETT

505 N. Woodward Ave.

Suite 3000

Bloomfield Hills, MI 48304

(313) 540-0864

Attorney for International Association

of Cross Reference Directory

Publishers

Of Counsel

KATHLEEN MCCREE LEwIis

FRANK K. ZINN

LAWRENCE J. GOFFNEY, JR.

DYKEMA GOSSETT

400 Renaissance Center

35th Floor

Detroit, Michigan 48243

(313) 568-6800

BOWNE OF DETROIT

610 W. CONGRESS - DETROIT, MICHIGAN 48226 - (313) 964-1330

ako

(i;

QUESTIONS PRESENTED

1. Does the Copyright Act preclude the use of a copyrighted

alphabetical telephone directory as one source for names, ad-

dresses and phone numbers for a noncompeting cross-reference

directory?

2. Where the act of copying from a copyrighted factual

compilation is proven, must substantial similarity of the expres-

sion of those compiled facts, i.e., the selection, coordination and

arrangement thereof, also be proven tc establish infringement of

the copyright?

3. Does the absence of substantial similarity in expression

between a copyrighted alphabetical telephone directory and a

noncompeting cross-reference directory preclude a finding that

the cross-reference directory infringes the copyright in the alpha-

betical telephone directory?

(ii)

TABLE OF CONTENTS

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pp Be yy oe 5) |. Ee earner

INTEREST OF THE AMICUS CURIAE .............

DESCRIPTION OF THE PRODUCTS OF THE

po a eee ere were cere ee rey ee

A. Cross Reference Directories Employ An Entirely

Different Form Of Expression Than That Found

In Alphabetical Telephone Directories..........

B. Cross-Reference Directories Perform Unique

PN oid eds v1KN DER EKKRU WS RENAE AONE ake

C. The Compilation Of A Cross-Reference Direc-

tory Involves Several Sources .................

semerean GOW ADRCSURGEINE 2... c cece ceseaseens

oo rE ee rrr errr rss yt

A. The Scope Of Copyright Protection In Factual

Compilations Is Limited By Statute............

B. The Effort Of Collecting And Assembling The

Compiled Facts Is Not Protectable By

SO | PPP ere ee ree Pret tee

C. Sound Policy Reasons Support The Statutory

ge ae 8 Per rrer rrr er rer

D. The Lower Courts Applied An Erroneous And

Incomplete Test For Infringement .............

ee Peemrrerrrrre rr ry rrr er

10

13

17

20

(iii)

TABLE OF AUTHORITIES

CASES Page

Affiliated Hospital Products, Inc. v. Merdel Game Mfg.

NE Bb pe) 15

Atari, Inc. v. North American Philips Consumer

Electronics Corp., 672 F.2d. 607 (7th Cir. 1982),

cart. Gemaee, Gon VU. GOP CIGEZ) . ww... cc wees 18

Bonito Boats v. Thunder Craft Boats, 109 S. Ct. 971

SG AG sak 4 EET ca wen ks t8ice kik + oan’ 9

Compco Corp. v. Day-Brite Lighting, 376 U.S. 234

NR US ul ag a aa ii ee 9

Feist Publications, Inc. v. Rural Telephone Service

a 2

Financial Information, Inc. v. Moody's Investor Ser-

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

Se) a aa 11

Harper & Row, Publishers v. Nation Enterprises, 471

cee sc kee s eect assacacceaeass 9, 13, 16

Hoehling v. Universal City Studios, Inc., 618 F.2d 972

(2nd Cir. 1980), cert. denied 449 U.S. 841 (1980) .. 1]

Hutchinson Telephone Co. v. Fronteer Directory Co.,

po ee Ee eee 12

Landsberg v. Scrabble Crossword Game Players, Inc.,

736 F.2d 485 (9th Cir. 1984), cert. denied, 469 U.S.

Ee ET SOE RC Se ag 15

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

ay gaa ha enki ek b 46 aA RS Oe 1]

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

SS Set ra re ay een eran ra 12

(iv)

TABLE OF AUTHORITIES — (Continued)

CASES Page

Morrissey v. Proctor & Gamble, 379 F.2d 675 (ist Cir.

oo Se ere) eee CO ee ee ere 15

Narell v. Freeman, 872 F.2d 907 (9th Cir. 1989)..... 1]

Rosemont Enterprises, Inc. v. Random House, Inc.,

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

PEG Srleeae cts civisaaas Cae ea tee ke sss 1]

Rural Telephone Service Co. v. Feist Publications, 663

F.Supp. 214 (D. Kansas 1987), aff'd without op.,

No. 88-1679 (10th Cir. March 8, 1990), cert.

granted, No. 89-1909 (Oct. 1, 1990) ............. 12

Sid & Marty Krofft Television Productions v. McDon-

ald's Corp., 562 F.2d 1157 (9th Cir. 1977) ........ 15

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

Directory Publishers, 756 F.2d 801 (11th Cir. 1985) 12

Universal Athletic Sales Co. v. Salkeld, 511 F.2d. 904

(3rd Cir. 1975), cert. denied, 423 U.S. 863 (1975) 17

Worth v. Selchow & Righter Co., 827 F.2d 569 (9th

NC Seu eC Ot a Gacec cares aan beseech sees 5 oss 11

Constitutional and Statutory Provisions

So I, GU Ty TE nse acc acennnesenees 7

RTS Leesan cs Chase bees obs 5, 6, 7, 8, 9, 10

Re es on be be ca cnd Chas need cae ane 7

ee Se Pe 7, 8, 13

Se OG Gx waka cabs. cakedcnnns 5, 8, 10, 13

Legislative Materials

a. Se ee OF eee eee Te eee 8

S. Rap Me. 96-473, wo. 34 CIDTS) «0.5. nncnscasccccss 8, 9

(v)

TABLE OF AUTHORITIES — (Continued)

Treatises and Articles Page

Chafee, Reflections on the Law of Copyright, 45

Colum.L.Rev. 503 (1945), quoted in Sony Corp. v.

Universal City Studios, 464 U.S. 417 (1984) ...... 17

Gorman, Fact or Fancy? The Implications for Copy-

right, 29 J.Copyright Soc. 560 (1982)......... 13, 14, 15

M. and D. Nimmer, Nimmer on Copyright

to Ee ee er eee ee eee 13, 15, 18, 19

Patry, Latman’s The Copyright Law (6th ed. 1986) .. 13

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—

IN THE

Supreme Court of the United States

OCTOBER TERM, 1990

No.

HAINES AND COMPANY, INC.,

HAINES CRISS + CROSS PUBLISHERS, INC.

WILLIAM K. HAINES, Sr., and

WILLIAM K. HAINES, JR.,

Petitioners,

Ve

ILLINOIS BELL TEFLEPHONE COMPANY,

Respondent.

On Petition for a Writ of Certiorari to the

United States Court of Appeals

for the Seventh Circuit

BRIEF OF THE INTERNATIONAL ASSOCIATION OF

CROSS REFERENCE DIRECTORY PUBLISHERS

AS AMICUS CURIAE IN SUPPO*T OF

PETITIONERS HAINES AND COMPANY, INC. ET AL

INTEREST OF THE AMICUS CURIAE!

The International Association of Cross Reference Directory

Publishers (“IACRDP”’) is a trade association of eleven indepen-

dent publishers of “cross-reference” directories, one of which is

Petitioner Haines and Company, Inc. As explained below, cross-

reference directories are not substitutes for, or competitive with,

alphabetical telephone directories published by telephone compa-

nies such as Respondent Illinois Bell Telephone Company (“Illi-

nois Bell’) and by independent telephone directory publishers.

! The written consents of Petitioner and Respondent to the filing of this

brief have been filed with the Clerk of the Court.

2

The decision of the lower courts that Illinois Bell’s copyright in an

alphabetical telephone directory was infringed by Petitioner

Haines’ cross-reference directory, notwithstanding substantial dif-

ferences in the form of expression of the public domain facts used

in the respective directories, is therefore of vital concern to the

members of amicus IACRDP. This issue is equally of concern to

publishers of other types of directories who utilize copyrighted

compilations of unprotectable public domain facts as a source of

information to prepare non-competing works which fulfill needs

which the prior copyrighted work cannot satisfy.

The presert case presents similar but broader legal and

policy issues to those which this Court will address in Feist

Publications, Inc. v. Rural Telephone Service Company, Inc.,

No. 89-1909, wherein certiorari was granted October 1, 1990.

There, the issue is whether a copyright in an alphabetical tele-

phone directory prevents “access to that directory as a source of

names and numbers to compile a competing directory” (emphasis

added). Here, the noncompeting and functionally dissimilar na-

ture of Petitioner’s cross-reference directories demonstrates more

starkly that the analyses of the lower courts both here and in Feist

were inconsistent with the copyright statute, its legislative history,

precedents of this Court and public policy.

Approval by this Court of the infringement tests applied by

the lower courts could be devastating to independent cross-

reference directory publishers, as well as detrimental to the public

interest. Even if the copyright owners elected to license these

publishers rather than enforce their right to enjoin, the profit

margins in the cross-reference directory industry would not sup-

port license fees at the level demanded, for example, by Illinois

Bell. The phone companies would have a monopoly, resulting in

higher prices in selected larger markets and no cross-reference

directory service at all in most smaller markets.

The disappearance of these directories from smaller commu-

nities now served by independent cross reference directory pub-

lishers is likely because of the historic pattern of limited

participation by the public telephone companies in the cross-

3

reference directory industry. The multi-state independent pub-

lishers can publish in the marginally profitable smaller communi-

ties because they maintain staffs large enough to handle the larger

and more profitable jobs when required. The public telephone

companies, however, which are confined to their own territories,

are not likely to have staffs adequate for such tasks except in the

larger metropolitan areas. The public benefit of access to such

directories by emergency services, business and other public

institutions in smaller communities would be lost.

Public telephone companies can legitimately claim no harm

to their compilation efforts because they could, in proper circum-

stances, continue to enforce their rights against publishers of

competing jointly bound white and yellow page directories. Such

directories employ the alphabetical arrangement of the telephone

companies’ white pages, so that an infringement might be found if

the overriding “substantial similarity” test were satisfied.

DESCRIPTION OF THE PRODUCTS

OF THE AMICUS CURIAE

A. Cross-Reference Directories Employ An Entirely Different

Form Of Expression Than That Found In Alphabetical Tele-

phone Directories

To appreciate the extent and consequences of the erroneous

infringement tests applied by the lower courts here and in Feist, it

is useful to highlight the differences between the white pages

section of a conventional alphabetically arranged telephone d*-ec-

tory and a cross-reference directory. Cross-reference directories

co not contain an alphabetically arranged list of telephone sub-

scribers. Instead, they contain two basic sections: a street address

section, which arranges the facts by street address, and a tele-

phone numerical section, which arranges the facts by phone

number. Exemplary excerpts from Petitioners’ cross-reference

directory are reproduced at pages 5-6 of their Petition.

4

These examples show that cross-reference directories do not

and cannot compete with alphabetical telephone directories. An

alphabetical directory cannot be used to learn the name of a

person or business located at a known address, or to whom a

known phone number belongs. Conversely, a cross-reference

directory cannot be used to obtain an address or phone number of

a known individual or business.

B. Cross-Reference Directories Perform Unique Functions

Cross-reference directories have been published for more

than seventy years. At least 600 such directories are published

annually by independent cross-reference directory publishers. Vir-

tually every community with more than 20,000 businesses and

households is served by these directories. The eleven IACRDP

members publish directories serving forty-eight states, the Dis-

trict of Columbia, and three Canadian provinces.

Cross-reference directories contain no advertising. Distribu-

tion is too limited to offer any potential for advertising revenue.

The costs of compilation and publication are borne by directory

purchasers, typically $50 to $150 except for very large metropoli-

tan areas where a multi-volume set may cost several hundred

dollars.

Cross-reference directories are widely used by government,

business and public service organizations. Major users include law

enforcement agencies, fire departments, medical and emergency

services, political campaigns, voter registration offices, religious

organizations, charities, the media, businesses, attorneys, schools,

salespeople, public utilities, banks, coilection agencies and even

Bell System telephone companies.

Smaller community emergency services must rely on their

copy of a cross-reference directory to supplement the often

incomplete location description supplied by the emergency caller.

For small local businesses (e.g., realtors and household services),

cross-reference directories provide an inexpensive way to target an

audience in their own territory. Envelopes or flyers can be

5

addressed by a secretary, or occupants called directly on the

telephone, without the expense of an advertising agency-prepared

direct mail campaign. The consumer also benefits because the

more efficiently targeted advertising costs less and results in lower

prices of the goods or services advertised.

C. The Compilation Of A Cross-Reference Directory Involves

Several Sources

A cross-reference directory is not merely the result of copy-

ing and rearranging the data from an alphabetical telephone

directory. Many additional sources are required to produce a

cross-reference directory. All street addresses, zip codes, business

and residential notations, community names, neighborhood

names, apartment notations, street corner designations, and

length of occupation of an address are derived independently of

any telephone directory.

Cross-reference directory publishers must and do use tele-

phone directories as one of their research sources for their annual

compilation process. There is no other source for names and

telephone numbers. The only alternative to the use of alphabetical

telephone directories would be a prohibitively expensive annual

door-to-door canvass of the entire covered territory.

SUMMARY OF ARGUMENT

The Copyright Act authorizes copyrights for compilations of

pre-existing facts only when they are “selected, coordinated or

arranged in such a way that the resulting work as a whole

constitutes an original work of authorship” (17 U.S.C. 101). The

Act expressly precludes “any exclusive right in the pre-existing

material” (17 U.S.C. 103b).

At issue here are copyrighted “white pages” telephone direc-

tories, wherein pre-existing facts are arranged as an alphabetical

list of telephone subscribers, followed by their respective ad-

dresses and telephone numbers. The individual facts are not part

of a confidential customer list of the telephone company; they are

6

in the public domain. The telephone companies are required by

law to publish and distribute such facts to their customers.

Cross-reference directories, such as published by amicus

IACRDP’s members, arrange such facts in an entirely different

way: (i) in numerical order by street address, and (2) in

numerical order by telephone number. Thus, cross-reference

directory publishers do not use the expression of those facts found

in the telephone companies’ white pages. They create indepen-

dent works using “pre-existing material,” as authorized by the

Copyright Act.

The endorsement by the lower courts of the widely rejected

“industrious collection” or “sweat of the brow” theory, by which

Haines would be required to conduct its own canvass to compile

the public domain facts contained in Illinois Bell’s directory,

ignores the second and third essential conjunctive elements for a

copyrightable compilation. Not only must there be a collection

and assembling of pre-existing data; there must also be a selec-

tion, coordination or arrangement which warrants the resulting

work being considered “an original work of authorship” (15 USC

101). Without an expression of such data which satisfies those

two statutory elements, a compilation is not copyrightable. The

effort of the first compiler is not enough. Requiring the second

compiler to conduct a canvass to assemble the same public

domain facts is legally erroncous.

The Copyright Act, precedents of this Court and underlying

public policy all require that copyrights in factual compilations

such as alphabetical telephone directories be strictly confined to

the minimally creative expression embodied in such alphabetical

arrangement of the public domain facts, an expression not used in

cross-reference directories.

The lower courts erred in omitting from the test of copyright

infringement the determination of substantial similarity between

the expression of the compiled facts (i.e., the selection, coordina-

tion and arrangement thereof) employed in the copyrighted and

accused works. Where the similarity is only in the uncopyright-

able facts, and not in the expression thereof, the similarity is not

“substantial” and there is no infringement.

ARGUMENT

A. The Scope Of Copyright Protection In Factual Compila-

tions Is Limited By Statute

The copyright law, like the patent law, finds its origin and

purpose in the Constitutional grant to Congress of the power “to

promote the Progress of Science and useful Arts, by securing for

limited Times to Authors and Inventors the exclusive Right to

their respective Writings and Discoveries” (U.S. Constitution,

Art. 1, §8).

The 1976 Copyright Act provides copyright protection for

“original works of authorship” (17 U.S.C. 1024), including com-

pilations, which the Act defines in this way:

A “compilation” is a work formed by the collection and

assembling of pre-existing materials or of data that are

selected, coordinated or arranged in such a way that the

resulting work as a whole constitutes an original work of

authorship.

17 U.S.C. 101, emphasis added.

In addition to the requirement of oripinality, the Act contains

two explicit restrictions on the scope of protection afforded by a

copyright, the first general and the second specific to

compilations:

In no case does copyright protection for an original work of

authorship extend to any idea, procedure, process, system,

method of operation, concept, principle or discovery, regard-

less of the form in which it is described, explained, illus-

trated, or embodied in such work.

17 USC. 102b.

8

The copyright in a compilation or derivative work extends

oniy to the material contributed by the author of such work,

as distinguished from the pre-existing material employed in

the work, and does not imply any exclusive right in the pre-

existing material. . .

17 U.S.C. 103b.

While compilations of fact are copyrightable (17 U.S.C.

101), the copyright does not extend to the facts disclosed. Only

the expression of those facts is protected by the copyright (17

U.S.C. 102b, 103b). Where, as here, the compilation is a

telephone directory, the pre-existing material or data which the

statute explicitly excludes from protection are the individual

listings of name, address and telephone number. The telephone

companies, which typically obtain the data from their phone

service customers when they apply for such service, are required

by law to publish such data in an alphabetical directory.2 The

expression employed in a telephone directory is minimal: the

selection process is virtually non-existerit, because all numbers

which the customers wish to be published are listed; the coordina-

tion and arrangement is the age-old and indispensable alphabeti-

cal arrangement.

The intent of the scope-restricting provisions of the Copy-

right Act is found in the language of the Senate Judiciary

Committee Report:

Copyright does not preclude others from using the ideas or

information revealed by the author’s work. It pertains to the

literary, musical, graphic or artistic form in which the author

expressed his intellectual concepts.

S. Rep. No. 94-473, p. 54 (1975), and H.R. Rep. No. 94-1476,

pp. 56-57.

“é

This distinction between unprotectable facts and protectable

form or expression has been succin¢tly summarized by this Court:

2 Appendix to Petition, p.2a.

9

[ N]o author may copyright facts or ideas. §102. The copy-

right is limited to those aspects of the work —termed

“expression”— that display the stamp of the author’s

originality.

Harper & Row, Publishers v. Nation Enterprises, 471 U.S. 531,

547 (1985).

The Court stated the corollary principle, i.e., the subsequent

user’s right to copy facts, this way:

Yet copyright does not prevent subsequent users from copy-

ing from a prior author’s work those constituent elements

that are not original — for example, quotations borrowed

under the rubric of fair use from other copyrighted works,

facts or materials in the public domain — as long as such use

does not unfairly appropriate the author’s original

contributions.

Id. at 548 (emphasis added).

Similarly, a subsequent author has “an unfettered right to

use any factual information” revealed in a work. Id. at 557. The

copyright statute thus reconciles the interests of the prior author

with those of subsequent authors and the public.

A cross-reference directory does not copy the telephone

company’s “original contribution” or the “expression” (as this

Court put it in Harper & Row), or the “form” (as the Senate

Report put it), or the “select[ion], coordinat[ion] or ar-

range[ment]” (as 17 U.S.C. 101 puts it).

The Constitutional .ight to copy uncopyrightable material

(here, the facts within the telephone directory listings) was

recently reiterated by this Court. Quoting from Compco Corp. v.

Day-Brite Lighting, 376 U.S. 234, 237 (1964), the Court again

held that a state may not “interfere with the Federal policy, found

in Art. I, §8, cl. 8, of the Constitution and in the implementing

Federal statutes, of allowing free access to copy whatever the

Federal patent and copyright laws leave in the public domain.”

Bonito Boats v. Thunder Craft Boats, 109 S. Ct. 971, 979 (1989).

10

B. The Effort of Collecting and Assembling The Compiled Facts

Is Not Protectable By Copyright.

The conclusion of the Court of Appeals for the Seventh

Circuit that Haines must conduct its own canvass to compile

public domain facts contained in IBT’s alphabetical directories? is

contrary to the copyright statute and to the weight of modern

cases and scholarly commentary.

By according protection for the compiler’s “industrious col-

lection” or “sweat of the brow’, without consideration to whether

Petitioner had copied any protectable expression which may exist

in Respondent’s copyrighted directories, the decision below disre-

garded and negated the statutory authority for copyrights in

factual compilations. The “collection” step is only one of three

conjunctive elements of the statutory definition of a copyrightable

compilation. Reiterating that definition (with numbers added):

A “compliation” is a work formed (1) by the collection and

assembling of pre-existing materials or of data (2) that are

selected, coordinated or arrranged in such a way (3) that the

resulting work as a whole constitutes an original work of

authorship.

17 USC 101, emphasis added.

Requiring Petitioner to conduct its own canvass before it can

use the public domain facts and express them in its own distinc-

tive arrangement further violates the statute’s limiting directive

that a copyright in a compilation “does not imply any exclusive

right in the pre-existing material” (17 U.S.C. 103b). See discus-

sion of §102b and 103b and this Court’s Harper & Row decision

at pp. 7-9, supra, ).

3 The Court quoted with approval its own prior Rockford Map holding that,

“Everyorfé must do the same basic work, the same industrious collection.”

Appendix to the Petition herein, p. 6a.

11

The Leon case,* formerly cited as support for the widely

discredited “sweat of the brow” or “industrious collection” the-

ory, has been rejected by a more recent panel of the Court which

authored it:

In addition, to the extent Leon suggests that research or

labor is protectable, later cases have rejected that theory

[citations omitted].

Worth v. Selchow & Righter Co., 827 F.2d 569, 573 (9th Cir.

1987).

Quoting a Second Circuit opinion’, the Court continued:

We...cannot subscribe to the view that an author is abso-

lutely precluded from saving time and effort by referring to

and relying upon prior published material .. . [t is just such

wasted effort that the proscription against the copyright of

ideas and facts, and to a lesser extent the privilege of fair use,

are designed to prevent.

Ibid. See also, Narell v. Freeman, 872 F.2d 907 (9th Cir. 1989).

Other Courts of Appeal have rejected as irrelevant to copy-

right issues the amount of effort expended by the initial compiler:

The statute thus requires that copyrightability not be deter-

mined by the amount of effort the author expends, but rather

by the nature of the final result. To grant copyright protec-

tion based merely on the “sweat of the author’s brow” would

risk putting large areas of factual research material off limits

and threaten the pubiic’s unrestrained access to information.

Financial Information, Inc. v. Moody’s Investor Service, Inc., 808

F.2d 204, 207 (2nd Cir. 1986), cert. denied 484 U.S. 820 (1987).

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

5 Rosement Enterprises, Inc. v. Random House, Inc., 366 F.2d 303, 310

(2d Cir. 1966), cert. denied 385 U.S. 1009 (1967). See also, Hoehling v.

Universal City Studios, Inc., 618 F.2d 972, 979 (2nd Cir. 1980), cert. denied 449

U.S. 841 (1980).

12

The Fifth Circuit Court of Appeals has applied these stan-

dards to directories:

A copyright in a directory, however, is properly viewed as

resting on the originality of the selection and arrangement of

the factual material, rather than on the industriousness of the

efforts to develop the information. See Nimmer, supra, at

§3.04. Copyright protection does not extend to the facts

themselves, and the mere use of the information contained in

a directory without a substantial copying of the format does

not constitute infringement.

Miller v. Universal City Studios, Inc., 650 F.2d 1365, 1369-70

(Sth Cir. 1981).

The valuable distinction in copyright law between facts and

the expression of facts cannot be maintained if research is

held to be copyrightable. There is no rational basis for

distinguishing between facts and the research involved in

obtaining facts. To hold that research is copyrightable is no

more or no less than to hold that the facts discovered as a

result of research are entitled to copyright protection.

Id. at 1372. See also, Southern Bell Telephone & Telegraph Co. v.

Associated Telephone Directory Publishers, 756 F.2d 801, 809-10

(11th Cir. 1985). Contra, Hutchinson Telephone Co. v. Fronteer

Directory Co., 770 F.2d 128 (8th Cir. 1985); Rural Telephone

Service Co., Inc., v. Feist Publications, Inc., 663 F. Supp 214 (D.

Kansas 1987), aff'd without op. No. 88-1679 (10th Cir. March 8,

1990), cert. granted, No. 89-1909 (Oct. 1, 1990).

As cited in Miller, Nimmer concurs in the view that copy-

right protection is inappropriate for a research effort which fails to

satisfy the “writings” of an “author” standard of the Constitution

and the Copyright Act: |

But to accord copyright protection on this basis alone [i.e.,

the “sweat of the author’s brow’ distorts basic copyright

principles in that it creates a monopoly in public domain

13

materials without the necessary justification of protecting

and encouraging the creation of “writings” by “authors”.

1 Nimmer on Copyright, §3.04, p. 3-20.2 (1990) (hereinafter

Nimmer).

The formulation of an “expression” is clearly the very es-

sence of the authorship process. The discovery of a fact,

regardless of the quantity of labor and expense, is simply not

the work of an author.

Nimmer §2.11[E]; p. 2-169. See also, Patry, Latman’s The

Copyright Law, p. 64 (6th Ed. 1986) (“Extending copyright

protection to labor qua labor would violate the Constitution’).

The rejection of the “sweat of the brow” basis for copyright

protection is compelled by the statutory restrictions against exten-

sion of copyright to ideas, discoveries and other types.of pre-

existing material (17 U.S.C. 102b and 103b, supra), and by the

compelling policy reasons for permitting the copying of facts and

dissemination of information, as enunciated by this Court in

Harper & Row, supra,. |

C. Sound Policy Reasons Support The Statutory Right To Copy

Facts

Compelling policy reasons support this statutory license to

copy and disseminate facts from copyrighted factual compilations.

These reasons were well stated by Professor Gorman in a schol-

arly article quoted with approval by this Court in Harper & Row,

471 U.S. at 563. He observed:

Our law, as reflected in the terms of our copyright statutes

and the language of our Courts, emphasizes the greater need

to disseminate the contents of fact works in contrast to the

contents of works of artistic or literary fancy.

Gorman, Fact or Fancy? The Implications for Copyright, 29 J.

Copyright Society 560, 561 (1982).

* * *

14

[E]ven within the field of fact works, there are gradations as

to the relative proportion of fact and fancy. One may move

from sparsely embellished maps and directories to elegantly

written biography. The extent to which one must permit

expressive language to be copied, in order to assure dissemi-

nation of the underlying facts, will thus vary from case to

case.

Id. at 563.

Gorman listed several reasons for affording greater freedom

to copy factual information than fanciful or literary expression:

(1) public interest in access to facts; (2) the expression or

presentation of facts is often “dictated by and inseparable from

the underlying information”, with maps and directories being the

best examples; (3) commentary on political, social and historical

facts as fostered by First Amendment and fair use considerations;

and (4) copyright is intended to protect literary or artistic

expression, rather than the labor in discovering facts. /d. at 562.

Professor Gorman believes only limited scope is warranted

for copyrights in directories:

Because the underlying facts in the terse and exhaustive

directory are in the public domain and because the expres-

sive variations are so limited, the copyright should properly

be a “thin” one (as with maps), lest the monopoly unduly

hinder the dissemination of information in the public inter-

est. Even modest departures from the form of such a stream-

lined copyrighted compilation, or new contributions and

revisions, should presumably warrant a finding of non-

infringement.

Id. at 571 (emphasis added). -

Of similar mind is noted copyright authority Melville Nim-

mer, whose widely known treatise, Nimmer on ‘Copyright, was

cited fifteen times by this Court in the Harper & Row majority

opinion. In his view, one who labors to bring to light obscure

public domain material has performed a socially useful service,

15

but that activity alone does not qualify as the “writing” of an

“author” under the Constitution. He continues:

The situation is quite different with respect to an original

selection or arrangement of such public domain materials.

Such selection or arrangement may in itself constitute an

original contribution of authorship and should be protectable

against appropriation under copyright principles. However,

the fact that an author has made such an original contribu-

tion is no basis for protecting the public domain materials

per se if the original selection or arrangement is not copied.

1 Nimmer §3.04, at p. 3-20.2 (1990) (emphasis added).

As Professor Gorman observed, the presentation of facts is

often “dictated by and inseparable from the underlying informa-

tion” (29 J. Copyright Society at 562). To assure dissemination

of the underlying facts in terse directories, he advocated a finding

of non-infringement for “even modest departures from the form

of such a streamlined copyrighted compilation.” This approach

has been followed by the Courts:

Factual works are different. Subsequent authors wishing to

express the ideas contained in a factual work often can

choose from only a narrow range of expression . . . Therefore,

similarity of expression may have to amount to verbatim

reproduction or very close paraphrasing before a factual work

will be deemed infringed.

Landsberg v. Scrabble Crossword Game Players, Inc., 736 F.2d

485, 488 (9th Cir. 1984), cert. denied, 469 U.S. 1037 (1984).

Accord, Sid & Marty Krofft Television Productions v. Mc-

Donald's Corp., 562 F.2d 1157, 1168 (9th Cir. 1977) (“The idea

and expression will coincide when the expression provides nothing

new or additional over the idea.”); Morrissey v. Proctor & Gam-

ble, 379 F.2d 675, 678-79 (ist Cir. 1967) (protection “could

exhaust all possibilities of future use of the substance’’); Affiliated

Hospital Products, Inc. v. Merdel Game Mfg. Co, 513 F.2d 1183,

16

1188 (2d Cir. 1975) (protection on game rule book wouid

impermissibly extend protection to the public domain game).

Cross-reference directories do not use the alphabetical form

of expression employed in telephone directories. They use only

the public domain facts, which are neither owned by the tele-

phone companies nor protected by their directory copyrights.

There is no other way to convey such facts except by repeating

them, which cross-reference directories do in an entirely different

arrangement and expression. Under the statute and the prece-

dents, these acts do not constitute copyright infringement.

Citing the information/form dichotomy (or “idea/expres-

sion” as it is more frequently described) expressed in the Con-

gressional Reports (quoted at p. 11, supra), Justice Brennan

concluded that:

Congress made the affirmative choice that the copyright laws

should apply in this way... This distinction [i.e., informa-

tion/form] is at the essence of copyright... To insure the

progress of arts and sciences and the integrity of First

Amendment values, ideas and information must not be

freighted with claims of proprietary right.

Harper & Row, 471 U.S. at 589-90 (dissenting).

Were this Court to conclude that the scope of protection of a

copyrighted alphabetical telephone directory extends to an en-

tirely different expression of the compiled facts, such as in a

cross-reference directory, then these policies of promoting dis-

semination of information in the public interest, as intended by

the Constitution and commented upon by Professor Gorman and

Justice Brennan, would be severely inhibited. As has been de-

scribed, cross-reference directories provide valuable and other-

wise unavailable resources and benefits to governmertt, business

and the public. Such works neither compete with nor diminish the

need for alphabetical telephone directories. They impair no legiti-

mate interest of the copyright owner.

17

Because cross-reference directories are non-competing with

and incomparable to alphabetical telephone directories, their

creation should be encouraged in accordance with the Constitu-

tional purpose of promoting progress.

The world goes ahead because each of us builds on the work

of our predecessors. “A dwarf standing on the shoulders of a

giant can see farther than the giant himself.”

Chafee, Reflections on the Law of Copyright, 45 Colum.L.Rev.

503, 511 (1945), quoted in Sony Corp. v. Universal City Studios,

464 U.S. 417, 469, n. 28 (1984) (dissent).

D. The Lower Courts Applied An Erroneous And Incomplete

Test For Infringement

The lower courts erred in concluding that proof of the act of

copying obviated the requirement of applying the “substantial

similarity” test to determine whether the nature and extent of the

copying was an infringement. That is, while the act of copying

may be proven either directly (by admission) or circumstantially

(by proving access to the copyrighted work and substantial

similarity between the copyrighted and accused works), the

“substantial similarity” test must a/ways be applied at the next

level of analysis, i.e., to determine whether that which was copied

was substantial enough in both quantity and substance to consti-

tute copyright infringement.

As the Court of Appeals for the Third Circuit has noted,

“Substantial similarity to show that the original work has been

copied is not the same as substantial similarity to prove infringe-

ment. ... [D]issection and expert testimony in the former setting

are proper but are irrelevant when the issue turns to unlawful

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

904, 907 (3rd Cir. 1975), cert. denied, 423 U.S. 863 (1975)

(emphasis added).

The failure to recognize that there is a next level of analysis

to every infringement issue may have resulted from reliance on a

streamlined two-part statement of the infringement test which

18 ws

appears in some cases and in Nimmer’s series on copyright law.

The two-part test comprises proof of (1) ownership of a copyright

and (2) copying. 3 Nimmer §13.01, p. 13-4.6

But further reading reveals that Nimmer’s treatise elaborated

on the content of the copying element:

Just as copying is an essential element of infringement, so

substantial similarity between plaintiffs and defendant's

works is an essential element of copying. Yet the determina-

tion of the extent of similarity which will constitute a

substantial and hence infringing similarity presents one of

the most difficult questions in copyright law, and one which

is the least susceptible of helpful generalizations.

3 Nimmer §13.03[A], p. 13-23.’

After describing two forms of similarity which satisfy the

substantial similarity test®*, Nimmer cautions that even a finding

of extended similarity does not complete the infringement

analysis:

To the extent that such similarity inheres in ideas, which are

by definition unprotected, or in expression which is not

proprietary to plaintiff, then an essential ingredient is lacking

from plaintiff's prima facie case.

3 Nimmer §13.03[B][2], p. 13-52.

6 In fact, the Court in Haines cited a prior decision which, in stating the

streamlined two-part test, relied on Nimmer’s statement of the test. Atari, Inc. v.

North American Philips Consumer Electronics Corp., 672 F.2d. 607, 614 (7th

Cir. 1982), cert. denied, 459 US 889 (1982).

7 Further reading of Atari shows that there, too, the Court recognized that

copying which does not involve copying of the protected expression does not

satisfy the substantial similarity element of the infringement test. 672 F.2d. at

614-15.

%’ Nimmer describes “comprehensive nonliteral similarity” (duplication of

the fundamental essence or structure, but without word-for-word copying) and

“fragmented literal similarity” (virtual word-for-word copying, but only of a

fragment of the copyrighted work. 3 Nimmer §13.03 [A][{1], p. 13-24;

§13.03[A][2], p.13-41.

19

And, even more pertinent to the present compilation of facts:

Because no copyright may exist in facts per se, the copyright

in a book dealing with factual matters cannot be infringed by

a work that copies such facts, but in a manner in which the

particular verbal description of such facts is not copied

[citing this Court’s Harper & Row decision, supra}.

Id. at p. 13-56.

* a hd

Even if the defendant has copied from the plaintiff's copy-

righted work, if the only material thus copied are those

elements of plaintiffs work which are not protectable, then

the resulting copy will not constitute an infringement.

Id. at §8.01[D], p. 8-20.

*+* * *

Similarity which is not “substantial”, even if due to copying,

is a noninfringing use of the plaintiff's “ideas”.

Id. at p. 8-22.2.

Summarizing these criteria, amicus IACRDP respectfully

suggests that, once ownership of a valid copyright is proven,

infringement is established by proof of (1) the act of copying,

either by direct evidence or by indirect evidence showing access to

the copyrighted work plus substantial similarity of the copyrighted

and accused works, and (2) substantial similarity with respect to

the protectable expression of the underlying idea, facts or concept.

As applied to a copyrighted compilation of facts, the substan-

tial similarity must be with respect to the expression of those

facts, i.e., the selection, coordination and arrangement of the

facts. Where, as here, the only similarity is in the facts, there is no

“substantial” similarity and therefore no infringement.

20

CONCLUSION

Amicus 1|ACRDP respectfully submits that the lower court

judgment should be reversed and the scope of Illinois Bell’s

copyright in its alphabetical directory should be narrowly confined

to the particular expression of the facts employed therein. Its

copyrightable aspect so defined, the information contained in such

directory could be freely used as a source for names, addresses

and phone numbers for incorporation in subsequent works which,

like Petitioner’s cross-reference directories, express those facts in

a way which is not substantially similar because of differences in

the selection, coordination or arrangement thereof.

Respectfully submitted,

RICHARD D. GRAUER

Counsel of Record

DYKEMA GOSSETT

505 N. Woodward Ave.

Suite 3000

Bloomfield Hills, MI 48304

(313) 540-0864

Attorney for International Association

of Cross Reference Directory

Publishers

Of Counsel

KATHLEEN MCCREE LEwis

FRANK K. ZINN

LAWRENCE J. GOFFNEY, JR.

DYKEMA GOSSETT

400 Renaissance Center

35th Floor

Detroit, Michigan 48243

(313) 568-6800