BELLSOUTH ADVERTISING & PUBLISHING CORPORATION,
Plaintiff-Counterclaim Defendant-Appellee, v. DONNELLEY
INFORMATION PUBLISHING, INC. and The Reuben H. Donnelley
Corp., Defendants-Counterclaim Plaintiffs-Appellants,
BellSouth Corporation, et al., Counterclaim Defendants.
No. 89-5131.
UNITED STATES COURT OF APPEALS FOR THE ELEVENTH CIRCUIT
999 F.2d 1436; 1993 U.S. App. LEXIS 22339; 28 U.S.P.Q.2D
(BNA) 1001; Copy. L. Rep. (CCH) P27,141; 74 Rad. Reg. 2d (P
& F) 713; 7 Fla. L. Weekly Fed. C 769
September 2, 1993, Decided
BIRCH, Circuit Judge:
I. INTRODUCTION
In this appeal, we must decide whether acts of copying infringed the
compilation copyright registered in a "yellow pages" classified business
directory. The parties have stipulated that the directory, which is a typical
yellow pages directory, qualifies for compilation copyright protection. Thus, we
are called upon to apply Feist Publications, Inc. v. Rural Tel. Serv. Co.,
U.S. , 111 S. Ct. 1282, 113 L. Ed. 2d 358 (1991), which addressed copyright
protection for a "white pages" telephone directory, to resolve the infringement
claims presented to us concerning a directory of a different color.
The pivotal issue in this case is whether that which was copied by the
alleged infringer [**2] was protected by the registered claim of compilation
copyright. The parties agree that the only elements of a work entitled to
compilation copyright protection are the selection, arrangement or coordination
as they appear in the work as a whole. The parties dispute what elements of a
classified directory constitute such selection, arrangement or coordination.
Mindful that the protection afforded to a whole work by a compilation copyright
is "thin," n1 the determination as to whether an infringement of a compilation
copyright has occurred is particularly difficult where less than the entire work
is copied.
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n1 Feist, U.S. at , 111 S. Ct. at 1289.
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II. BACKGROUND
BellSouth Advertising & Publishing Corporation ("BAPCO") is a wholly owned
subsidiary of BellSouth Corporation ("BellSouth") created for the purpose of
preparing, publishing and distributing telephone directories. Using telephone
listing information supplied by Southern Bell Telephone and Telegraph Compoany (
"Southern [**3] Bell"), another wholly owned subsidiary of BellSouth, BAPCO
publishes a classified, "yellow pages," advertising directory for the Greater
Miami area. The BAPCO directory is organized into an alphabetical list of
business classifications. Each business-rate telephone service subscriber is
listed in alphabetical order under one appropriate heading without charge. A
subscriber may purchase cross listings under different business classifications
or advertisements to appear along with its business listing.
After BAPCO published its 1984 directory for the Greater Miami area,
Donnelley Information Publishing, Inc. and Reuben H. Donnelley Corp.
(collectively "Donnelley") began promoting and selling classified advertisements
to be placed in a competitive classified directory for the Greater Miami area.
To [*1439] generate a list of business telephone subscribers to be solicited
for placement in its directory, Donnelley gave copies of BAPCO's directory to
Appalachian Computer Services, Inc. ("ACS"), a data entry company. Donnelley
first marked each listing in the BAPCO directory with one alphanumeric code
indicating the size and type of advertisement purchased by the subscriber n2 and
a similar code [**4] indicating the type of business represented by the BAPCO
heading under which the listing appeared. For each listing appearing in the
BAPCO directory: ACS created a computer data base containing, the name, address,
and telephone number of the subscriber, as well as the codes corresponding to
business type and unit of advertising. From this data base, Donnelley printed
sales lead sheets, listing this information for each subscriber, to be used to
contact business telephone subscribers to sell advertisements and listings in
the Donnelley directory. Relying on this information copied from the BAPCO
directory, Donnelley ultimately prepared its own competitive directory for the
Greater Miami area.
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n2 The code corresponding to the type of advertising appearing in the BAPCO
directory indicated only the unit of advertising purchased. Donnelley did not
record, nor was alleged to have recorded, information regarding the graphic
appearance or page location of the advertising material, nor did it copy facts
concerning individual businesses, such as product lines, services, hours of
operation, contained in the advertisements themselves.
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BAPCO sued Donnelley for alleged copyright infringement, n3 trademark
infringement, and unfair competition. After the district court denied BAPCO's
motion for a preliminary injunction, Donnelley answered and counterclaimed
against BAPCO, Southern Bell and BellSouth, for alleged violations of federal
antitrust law. On the copyright infringement claim, the district court granted
summary judgment to BAPCO and denied Donnelley's motion seeking partial summary
judgment in its favor, n4 BellSouth advertising & publishing corp. v. Donnelly
info. Publishing, Inc. 719 F. Supp. 1551(S.D. Fla. 1988).
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n3 BAPCO registered its claim of copyright (attached to this opinion as
Appendix A) for the "entire text and compilation" of both volumes of its 1984
Miami yellow pages directory. R1-1-Ex. D. It was upon this registration that
BAPCO initiated its action for infringement. See 17 U.S.C. § 411(a) ("No action
for infringement of the copyright in any work shall be instituted until
registration of the copyright claim has been made in accordance with this title.
").
n4 The district court granted BAPCO's motion for summary judgment on
Donnelley's antitrust counterclaim, but denied BellSouth and Southern Bell's
motion for summary judgment on the antitrust counterclaim. The only issue
presented by this appeal is the district court's resolution of the copyright
infringement claims.
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The district court found, and Donnelley admitted, that BAPCO owned a valid
compilation copyright in its classified directory. Donnelley stipulated that, in
preparing its data base and sales lead sheets, it obtained from each listing in
the BAPCO directory, the telephone number, name, address, kind of business, and
unit of advertising for the listed subscriber. As further evidence of copying,
the district court relied on affidavits and deposition testimony from Donnelley
's representatives and the presence of a number of erroneous listings common to
the BAPCO and Donnelley directories. From the process by which Donnelley
prepared its competitive yellow pages directory, the district court identified
three acts of copying: (1) the entry of subscriber information into the computer
data base by ACS; (2) the printout of sales lead sheets from this data base; and
(3) the publication of Donnelley's directory. Based on these acts of copying,
the court granted BAPCO's motion for summary judgment on its copyright
infringement claims. n5 Donnelley appealed the district court's resolution of
the parties' motions on the copyright claim. n6
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n5 In granting summary judgment in favor of BAPCO, the district court
rejected Donnelley's fair use and antitrust, or misuse of copyright, affirmative
defenses as a matter of law. Because we hold that summary judgment should have
been granted in favor of Donnelley on BAPCO's copyright claim, we do not reach
the issue of whether Donnelley's defenses were properly rejected on summary
judgment. [**7]
n6 The judgment of the district court was affirmed by a panel of this court,
but was subsequently vacated by a grant of rehearing en banc. Bellsouth Adv. &
Pub. Corp. v. Donnelley Info. Pub., Inc., 933 F.2d 952 (11th Cir.1991), vacated
and reh'g en banc granted, 977 F.2d 1435 (11th Cir.1992).
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[*1440] III. DISCUSSION
A. Feist Publications and the Requirement of Originality
In Feist Publications, the Supreme Court clarified the scope of copyright
protection afforded to factual compilations. Rural Telephone Service Company (
"Rural") claimed that Feist Publications, Inc. ("Feist") infringed Rural's
copyright by using names and telephone number listings from Rural's white pages
directory to compile its own white pages directory. Observing the inherent
tension between the axiom of copyright law that facts are not copyrightable n7
and the principle that compilations of fact generally are copyrightable, the
Court identified those components of a factual compilation that may, receive
copyright protection under certain circumstances. [**8] U.S. at , 111
S. Ct. at 1287.
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n7 See 17 U.S.C. § 102(b).
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The Court stressed that "the sine qua non of copyright is originality."
U.S. at , 111 S. Ct. at 1287. n8 "Facts, whether alone or as a part of a
compilation, are not original and therefore may not be copyrighted." U.S. at
, 111 S. Ct. at 1290. Drawing upon the requirement of originality and the
definition of "compilation" in the Copyright Act, n9 the Court held that a
compiler's selection, arrangement and coordination, if original, are the only
protectable elements of a factual compilation. U.S. at , 111 S. Ct. at
1289. n10
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n8 Moreover, "originality is a constitutional requirement" for copyright
protection implicit in the grant of power to Congress to "secure for limited
Times to Authors ... the exclusive Right to their respective Writings." Feist,
U.S. at , 111 S. Ct. at 1288 (quoting U.S. Const. art. I, § 8, cl. 8).
[**9]
n9 Section 101 of the Copyright Act of 1976 defines a compilation as "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 original work of authorship." 17 U.S.C. § 101.
n10 In confirming originality as the focus of copyright protection, the Court
rejected an alternative theory to justify the protection of factual
compilations. Relying upon a doctrine known alternatively as "sweat of the brow"
or "industrious collection," some courts had extended copyright protection to
every element of a factual compilation based on the labor expended by the author
in compiling the constituent facts. By extending copyright protection in a
compilation beyond the author's original selection, arrangement, and
coordination, this line of cases "eschewed the most fundamental axiom of
copyright law--that no one may copyright facts or ideas." U.S. at , 111
S. Ct. at 1291.
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Applying the requirement [**10] of originality to the directory compiled by
Rural, the Court noted that the listings, consisting of subscribers' names,
towns of residence, and telephone numbers, were uncopyrightable facts. Further,
the selection, coordination, and arrangement of Rural's white pages were not
sufficiently original to merit copyright protection. "Rural's selection of
listings could not be more obvious: it publishes the most basic
information--name, town, and telephone number--about each person who applies to
it for telephone service." U.S. at , 111 S. Ct. at 1296. Rural failed to
establish any original elements of coordination or arrangement: "there is
nothing remotely creative about arranging names alphabetically in a white pages
directory. It is an age-old practice, firmly rooted in tradition and so
commonplace that it has come to be expected as a matter of course." U.S. at
, 111 S. Ct. at 1297. In short, "Rural expended sufficient effort to make the
white pages directory useful, but insufficient creativity to make it original."
U.S. at , 111 S. Ct. at 1296. [**11]
B. BAPCO's Claim of Infringement
To establish its claim of copyright infringement, BAPCO must prove "(1)
ownership of a valid copyright, and (2) copying of constituent elements of the
work that are original." U.S. at , 111 S. Ct. at 1296. The validity of
BAPCO's copyright in its directory, considered as a whole, was conceded by
Donnelley. n11 To demonstrate the second element [*1441] of infringement,
BAPCO must prove that Donnelley, by taking the material it copied from the BAPCO
directory, appropriated BAPCO's original selection, coordination or arrangement.
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n11 Because of the parties' concession, we do not consider whether BAPCO's
yellow pages directory, taken as a whole, is copyrightable.
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The district court found that BAPCO engaged in a number of acts of selection
in compiling its listings. For example, BAPCO determined the geographic scope of
its directory and the closing date after which no changes in listings would be
included. BellSouth, 719 F. Supp. at 1551-58. [**12] The district court
erred, however, in implicitly determining that these selective acts were
sufficiently original to merit copyright protection. Rural obviously established
a geographic scope and a closing date for its white pages, which were held
uncopyrightable as a matter of law in Feist. The district court's analysis would
protect such factual elements of every compilation; any collection of facts
"fixed in any tangible medium of expression" n12 will by necessity have a
closing date and, where applicable, a geographic limit selected by the compiler.
The district court found that BAPCO "selected" its listings by requiring its
yellow pages subscribers to use a business telephone service. Id. at 1557. The
district court also focused on a number of marketing techniques employed by
BAPCO to generate its listings, such as the determination of the number of free
listings offered to each subscriber, the selection of which customers to contact
by an on premise visit from sales personnel, the selection of the date of
commencement of its advertisement sales campaign, and the procedure used to
recommend the purchase of listings under multiple headings. Id. at 1557. [**13]
The district court again failed to consider whether these "acts of selection"
met the level of originality required to extend the protection of copyright to
BAPCO's selection.
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n12 17 U.S.C. § 102(a).
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More fundamental, these acts are not acts of authorship, but techniques for
the discovery of facts. In Feist, the Court emphasized the distinction "between
creation and discovery: the first person to find and report a particular fact
has not created the fact; he or she has merely discovered its existence."
U.S. at , 111 S. Ct. at 1288. By employing its sales strategies, BAPCO
discovered that certain subscribers describe their businesses in a particular
fashion and were willing to pay for a certain number of listings under certain
available business descriptions. To be sure, BAPCO employed a set of strategies
or techniques for discovering this data. Any useful collection of facts,
however, will be structered by a number of decisions [**14] regarding the
optimal manner in which to collect the pertinent data in the most efficient and
accurate manner. If this were sufficient, then the protection of copyright would
extend to census data, cited in Feist as a paradigmatic example of a work that
lacks the requisite originality. U.S. at , 111 S. Ct. at 1288. Just as
the Copyright Act does not protect "industrious collection," it affords no
shelter to the resourceful, efficient, or creative collector. See Miller v.
Universal City Studios, Inc., 650 F.2d 1365, 1372 (5th Cir. July 1981) ("The
valuable distinction in copyright law between facts and the expression of facts
cannot be maintained if research is held to be copyrightable."). The protection
of copyright must inhere in a creatively original selection of facts to be
reported and not in the creative means used to discover those facts. See 17
U.S.C. § 102(b) ("In no case does copyright protection ... extend to any idea,
procedure, process, system, method of operation, concept, principle, or
discovery, regardless of the form in which it is [**15] described, explained,
illustrated, or embodied in such work."). Ultimately, the district court erred
by extending copyright protection to the collection of facts in the BAPCO
directory based on the uncopyrightable formative acts used to generate those
listings.
[*1442] In addition to these acts of selection, the district court found
that BAPCO engaged in feats of coordination and arrangement to generate its
yellow pages directory. The court explains that BAPCO arranged its directory
inan alphabetized list of business types, with individual businesses listed in
alphabetical order under the applicable headings. The Copyright Act protects
"original works of authorship." 17 U.S.C. § 102(a). BAPCO's arrangement and
coordination is "entirely typical" for a business directory. Feist, U.S. at
, 111 S. Ct. at 1296. n13 With respect to business telephone directories,
such an arrangement "is not only unoriginal, it is practically inevitable."
U.S. at , 111 S. Ct. at 1297.
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n13 While the listings in BAPCO's yellow pages required somewhat more
organization and arrangement than the white pages directory considered in Feist,
BAPCO's claim of "originality" must be resolved by comparison to other business
telephone directories. BAPCO did not deviate from the arrangement of the typical
business directory, which employs an alphabetical list of headings to describe
the various types of businesses and then alphabetizes the listings under the
appropriate headings.
Applying Feist, the Second Circuit declined to extend copyright
protection to the selection and arrangement of certain charts
displaying the results of horse racing. Victor Lalli Enters. v. Big
Red Apple, Inc., 936 F.2d 671, 673-74 (2d Cir.1991). "The format of
the charts is a convention: Lalli exercises neither selectivity in
what he reports nor creativity in how he reports it." Id. at 673.
Similarly, the Ninth Circuit rejected a claim that two automobile
catalogs listing replacement radiators and associated parts were
substantially similar. Cooling Sys. & Flexibles, Inc. v. Stuart
Radiator, 777 F.2d 485, 491 (9th Cir.1985). Although both works were
arranged into three sections (an illustrations section, an original
equipment manufacturer section, and an applications section), the
court found that this arrangement was obligatory for a useful radiator
parts catalog. "The fewer the methods of expressing an idea, the more
the allegedly infringing work must resemble the copyrighted work in
order to establish substantial similarity." Id. A subsequent collector
is not required to arrange its compilation in a fashion not usable by
those for whom it is intended. Id. at 492. The format of a typical
business telephone directory is even more obvious and well established
than the radiator catalogs at issue in Cooling Systems.
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BAPCO's claim of copyright in the arrangement of its directory also does not
survive application of the "merger" doctrine. Under the merger doctrine,
"expression is not protected in those instances where there is only one or so
few ways of expressing an idea that protection of the expression would
effectively accord protection to the idea itself." Kregos v. Associated Press,
937 F.2d 700, 705 (2d Cir.1991). n14 see also Baker v. Selden, 101 U.S. (11
Otto) 99, 25 L. Ed. 841 (1879). Because this is the one way to construct a
useful business directory, the arrangement has "merged" with the idea of a
business directory, and thus is uncopyrightable. n15
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n14 See Kern River Gas Transmission Co. v. Coastal Corp., 899 F.2d 1458,
1463-64 (5th Cir.) (applying merger doctrine where idea of locating pipeline
along certain route was inseparable from expression of the route on a
topographical map), cert. denied, 498 U.S. 952, 111 S. Ct. 374, 112 L. Ed. 2d
336 (1990); see also Educational Testing Serv. v. Katzman, 793 F.2d 533, 539 (3d
Cir.1986); Toro Co. v. R & R Products Co., 787 F.2d 1208, 1212 (8th Cir.1986).
[**17]
n15 In Matthew Bender & Co. v. Kluwer Law Book Publishers, Inc., 672 F. Supp.
107 (S.D.N.Y.1987), the court considered the application of the merger doctrine
to a claim of copyright in a system of charts displaying information regarding
the amount of recovery in previous personal injury cases. Both the plaintiff's
work and that of the alleged infringer divided the cases into chapters
corresponding to the part of the body injured and further divided the cases
within each chapter based on whether the recovery was a result of a settlement,
or an "adequate," "inadequate," or "excessive" award. 672 F. Supp. at 108. Each
work listed the cases according to forum state, arranging awards from the same
state from largest to smallest amount. In both collections, information
regarding each case was organized into categories for amount, case name,
plaintiff, event, injury, and further relevant data. The court rejected the
plaintiff's claim of copyright, concluding that the plaintiff's work employed
one of the few practical and useful means of organizing data regarding personal
injury awards. The idea and the expression of such a work thus "merged." Id. at
109-10. Further, the information selected for display about each case was
obvious and did not demonstrate the original selection, arrangement or
coordination required for copyright protection. Id. at 112; see also
Coates-Freeman Assocs., Inc. v. Polaroid Corp., 792 F. Supp. 879, 883-84
(D.Mass.1992) (Placement of decisionmaking steps on chart purporting to
categorize leadership styles was not a copyrightable feature where selection of
those particular steps out of a universe of very limited options resulted in
merger of any creativity into the basic idea of the chart).
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[*1443] The district court's suggestion that BAPCO could have arranged its
headings according to the number of advertisers or to list its subscribers under
each heading according to the length of time for which that subscriber had
appeared under that heading misapprehends the question. The relevant inquiry is
not whether there is some imaginable, although manifestly less useful, method of
arranging business telephone listings. In Feist, Rural could have published
multiple directories for its service area or listed its numbers in numerical
order, by age, or by neighborhood within a single directory. The pertinent
inquiry is whether the compiler has demonstrated originality, the "sine qua non
" of copyright, in its arrangement or coordination. The arrangement of BAPCO's
yellow pages, like that of Rural's white pages is "entirely typical" of its
respective type.
The district court also identified acts of coordination and arrangement in
the particular system of headings used in the BAPCO directory. The district
court appears to find that, when Donnelley entered the listing information from
the BAPCO directory, it also copied the particular heading under which that
listing appeared [**19] in the BAPCO directory. 719 F. Supp. at 1558-59. n16
BAPCO, however, failed to introduce evidence sufficient to establish a genuine
dispute of material fact as to whether Donnelley copied the particular heading
structure employed by BAPCO. Donnelley stipulated that it obtained the "business
type" for each listing from the BAPCO directory. R1-8. The evidence submitted to
the district court in the form of affidavit, deposition, and witness testimony
reveals that Donnelley established its own system of headings and that, in
constructing its data base, Donnelley entered, an alphanumeric code that
corresponded to the Donnelley heading with easch BAPCO listing, 5SR2 at 183-85;
1SR-434 at 76-77, 143-44; 1SR-435 at 253-54 and Ex. 278; Deposition of John
Notestein at 10, 12, 14-15, 22. Further, the sales lead sheets generated by
Donnelley from its database and pages of the respective directories submitted to
the district court illustrate that Donnelley selected a somewhat different
category of headings to describe the listings originally appearing in the BAPCO
directory. n17 Considering the extent to which the heading structure of a
classified [**20] business directory is dictated by functional considerations
and common industry practice, the differences apparent in the glossary of
headings employed by Donnelley are sufficient to rebut any inference of copying
that otherwise might be drawn from those terms that are common to both
directories. n18 In sum, the evidence before the district court requires
[*1444] the conclusion that, by determining the type of business of each
subscriber by observation of the BAPCO directory and translating that business
type into an encoded heading of its own creation, Donnelley extracted
uncopyrightable information regarding the business activities of BAPCO's
subscribers without appropriating any arguably original, protectable expressive
element in the BAPCO glossary of headings.
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n16 Significantly, BAPCO registered no claim of copyright in the glossary of
terms used to describe the types of businesses represented by its listings.
BAPCO claims that Donnelley infringed its putative copyright in its directory
(the only claim of copyright before the court) by somehow copying the directory
onto the sales lead sheets (Appendix B). This argument excrimnates the
fundamental misconception of the nature and scope of a compilation copyright. A
comparison of the Donnelley sales lead sheets and the BAPCO directory pages
(Appendix C) manifests no substantial similarity as to those copyrightable
elements of a compilation. The dissent continues to confuse and merge the
copying of uncopyrightable data with the replication of the copyrightable
elements of a compilation. [**21]
n17 Despite the dissent's belief to the contrary, our opinion is based on the
evidence that was before the district court, including a number of sales lead
sheets (Appendix B) and pages from both directories (Appendix C).
n18 Where the form of expression is largely prescribed by functional
constraints, the similarity of expression in a subsequent work must be very
close in order to establish infringement. "Factual works are different [from
works of fiction]. 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).
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Additionally , BAPCO failed to present evidence that, even if copied, its
heading structure constitutes original expression warranting copyright
protection. Initially, many of the selected headings, for example "Attorneys" or
"Banks," represent [**22] such an obvious label for the entities appearing
under these headings as to lack the requisite originality for copyright
protection. n19 BAPCO can claim no copyright in the idea of dividing churches by
denomination or attorneys by area of specialty. Further, any expressive act in
including a category such as "Banks" or in dividing "Attorneys" into categories
such as "Bankruptcy" or "Criminal Law" would lose copyright protection because
it would merge with the idea of listing such entities as a class of businesses
in a business directory. n20 The evidence submitted by Donnelley also
establishes that many of BAPCO's headings result from certain standard industry
practices, such as the recommendations of the National Yellow Pages Sales
Association, with regard to the selection and phrasing of headings in business
directories. Finally, as established by the testimony of BAPCO's
representatives, the ultimate appearance of a particular subscriber under a
certain heading is determined by the subscriber's willingness to purchase those
listings in the BAPCO directory. While BAPCO may select the headings that are
offered to the subscriber, it is the subscriber who selects from those
alternatives [**23] the headings under which the subscriber will appear in the
copyrighted directory. The headings that actually appear in the directory thus,
do not owe their origin to BAPCO and BAPCO has claimed no copyright in the
larger universe of headings that are offered to subscribers. Thus, the elements
of selection, coordination and arrangement identified by the district court, and
purportedly copied by Donnelley, as a matter of law, do not display the
originality required to merit copyright protection.
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n19 See Sem-Torq, Inc. v. K Mart Corp., 936 F.2d 851, 854-55 (6th Cir.1991)
(Copyright law does not protect "forms of expression dictated solely by
functional considerations.")
n20 See Matthew Bender, 672 F. Supp. at 111 (Under the merger doctrine,
plaintiff could claim no copyright protection in headings used to display data
regarding personal injury awards where "terms employed are the most logical and
clear way of expressing the idea to be conveyed... [and] these terms, or
synonyms for them, are the only way of conveying the desired information.").
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Although purporting to consider whether Donnelley copied the original
elements of selection, arrangement or coordination from the BAPCO directory, the
opinion of the district court rests, at least in part, on a comparison of the
appearance of corresponding pages from both directories. n21 For example, the
court concluded that "Donnelley used a format nearly identical to that used by
BAPCO" and that "although Donnelley's directory is not identical to BAPCO's
directory, the material was copied and used to produce a directory substantially
similar in both content and format." 719 F. Supp. at 1559. [*1445] The
district court erred, however, by failing to consider the degree to which the
similarity between the two directories was because of Donnelley's use of the
uncopyrightable facts, such as name, number, address, and business type, from
the BAPCO directory. Further, to the extent that this similarity of format
resulted from to the common arrangement and coordination of the two directories
into alphabetized business classifications, with alphabetized listings under
each classification, the district court erred by extending the scope of BAPCO's
copyright to capture the system [**25] of organization common to all
classified directories in the public domain. Moreover, the other elements of
format common to the two directories, such as the organization of listings into
four columns, are also manifestly typical, obvious and unoriginal.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n21 A comparison of corresponding pages from the two directories, which were
before the district court as set out in Appendix C, reveals several obvious
differences in type face and graphic layout. Donnelley included different
advertisements, not only in content, but also in number and design. BAPCO
underlines its headings while Donnelley marks its headings with a sideways
triangle. Donnelley uses a different type face. Whatever original authorship is
represented by these types of presentation choices was clearly not copied by
Donnelley. Further, the sales lead sheets (attached in Appendix B) produced from
the ACS data base are obviously not similar in appearance or arrangement to
BAPCO's directory, in which its claim of copyright was registered.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
By comparing the overall [**26] appearance of the two directories through
its comparison of the corresponding pages, the district court effectively failed
to consider whether Donnelley copied the "constituent elements of the work that
are original." Feist, U.S. at , 111 S. Ct. at 1296. In the case of a
factual compilation, a comparison of the copyright holder's work with that of
the alleged infringer must distinguish similarities attributable to ideas, which
are unprotected per se, or to expression not owned by the copyright holder, from
those similarities resulting from the copying of the compiler's original
elements. n22 We consider this conclusion to be compelled by section 103(b) of
the Copyright Act, which directs 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 exclusive right in the preexisting material." 17 U.S.C. § 103
(b).
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n22 The Second Circuit has observed:
Although the test for infringement of original works and compilations
is one of "substantial similarity," the appropriate inquiry is
narrowed in the case of a compilation. As noted, the components of a
compilation are generally in the public domain, and a finding of
substantial similarity or even absolute identity as to matters in the
public domain will not suffice to prove infringement. What must be
shown is substantial similarity between those elements, and only those
elements, that provide copyrightability to the allegedly infringed
compilation.
Key Publications, Inc. v. Chinatown Today Publishing Enters., Inc.,
945 F.2d 509, 514 (2d Cir.1991) (citations omitted); see also Cooling
Sys. 777 F.2d at 492-93 ("What is important is not whether there is
substantial similarity in the total concept and feel of the works, but
whether the very small amount of protectable expression in Cooling
Systems' catalog is substantially similar to the equivalent portions
of Stuart's catalog.") (citation omitted).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [**27]
We note that Donnelley did not copy, nor was alleged to have copied, the text
or graphic material from the advertisements in the BAPCO directory, the
positioning of these advertisements, the typeface, or the textual material
included by BAPCO to assist the user. Unlike the infringer in Southern Bell Tel.
& Tel. Co. v. Associated Tel. Directory Publishers, 756 F.2d 801 (11th
Cir.1985), Donnelley did not photocopy, or reproduce by any equivalent means,
the page by page arrangement or appearance of its competitor's directory in the
process of creating its own work. Although the amount of material taken from the
BAPCO directory was substantial in a purely quantitative sense, Donnelley did
not, by this process, appropriate whatever original elements might arguably
inhere in the BAPCO directory. Given that the copyright protection of a factual
compilation is "thin", a competitor's taking the bulk of the factual material
from a preexisting compilation without infringement of the author's copyright is
not surprising. Feist, U.S. at , 111 S. Ct. at 1289. While it may seem
unfair for a compiler's labor [**28] to be used by a competitor without
compensation, the Court noted in Feist that "the primary objective of copyright
is not to reward the labor of authors, but "to promote the Progress of Science
and useful Arts." U.S. at , [*1446] 111 S. Ct. at 1290 (quoting U.S.
Const. art. I, § 8, cl. 8). "To this end, copyright assures authors the right to
their original expression, but encourages others to build freely upon the ideas
and information conveyed by a work." Id. (emphasis added); see also Harper &
Row, Publishers v. Nation Enterprises, 471 U.S. 539, 545-46, 105 S. Ct. 2218,
2223, 85 L. Ed. 2d 588 (1985).
IV. CONCLUSION
By copying the name, address, telephone number, business type, and unit of
advertisement purchased for each listing in the BAPCO directory, n23 Donnelley
copied no original element of selection, coordination or arrangement; Donnelley
thus was entitled to summary judgment on BAPCO's claim of copyright
infringement. n24 We REVERSE the judgment of the district court granting summary
judgment to BAPCO on its claim of copyright infringement and enter judgment
[**29] in favor of Donnelley on this claim.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n23 The common errors in the BAPCO and Donnelley listings prove only that
Donnelley admitted as copied the name, number, address, and type of business
from every BAPCO listing. The presence of common errors is not probative of
whether the portions of the BAPCO directory copied by Donnelley included the
copyrightable elements of original selection, coordination and arrangement. In
Feist, the alleged infringer copied every listing from the compilers' white
pages, including four erroneous listings. U.S. at , 111 S. Ct. at 1287.
Because Rural copied only uncopyrightable facts, however, the presence of common
errors was not relevant. See also Shira Perlmutter, "The Scope of Copyright in
Telephone Directories: Keeping Listing Information in the Public Domain," 38 J.
Copyright Society 1, 5-6 (Fall 1990) ("Where, as in Feist, the defendant has
admitted copying, such evidence is simply irrelevant. Copying of erroneous or
fictitious entries has no bearing on the question of whether material admittedly
copied is protected by the plaintiff's copyright, and if so, whether the taking
is substantial."); Alan Latman, "Probative Similarity as Proof of Copying:
Toward Dispelling Some Myths in Copyright Infringement," 90 Columbia L.Rev.
1187, 1204-06 (1990) (distinguishing use of common errors as proof of copying
from use as proof of substantial similarity of protected material). [**30]
n24 Summary judgment in favor of the defendant in an infringement action is
appropriate where the similarity between the two works concerns only
uncopyrightable elements of the plaintiff's work. Arica Inst., Inc. v. Palmer,
970 F.2d 1067, 1072 (2d Cir.1992); Warner Bros., Inc. v. American Broadcasting
Cos., 720 F.2d 231, 240 (2d Cir.1983).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [*1447] SEE
APPENDIX A IN ORIGINAL. [*1448] SEE APPENDIX A IN ORIGINAL. [*1449] SEE
APPENDIX A IN ORIGINAL. [*1450] SEE APPENDIX A IN ORIGINAL. [*1451] SEE
APPENDIX B IN ORIGINAL. [*1452] SEE APPENDIX B IN ORIGINAL. [*1453] SEE
APPENDIX B IN ORIGINAL. [*1454] SEE APPENDIX B IN ORIGINAL. [*1455] SEE
APPENDIX B IN ORIGINAL. [*1456] SEE APPENDIX B IN ORIGINAL. [*1457] SEE
APPENDIX C IN ORIGINAL. [*1458] SEE APPENDIX C IN ORIGINAL. [*1459] SEE
APPENDIX C IN ORIGINAL. [*1460] SEE APPENDIX C IN ORIGINAL. [*1461] SEE
APPENDIX C IN ORIGINAL. [*1462] SEE APPENDIX C IN ORIGINAL. [*1463] SEE
APPENDIX C IN ORIGINAL. [*1464] SEE APPENDIX C IN ORIGINAL. [*1465] SEE
APPENDIX C IN ORIGINAL. [*1466] SEE APPENDIX C IN ORIGINAL. [*1467] SEE
APPENDIX C IN ORIGINAL. [*1468] SEE APPENDIX C IN ORIGINAL. [*1469] SEE
APPENDIX C IN ORIGINAL. [*1470] SEE APPENDIX C IN ORIGINAL.
DISSENTBY: HATCHETT
DISSENT:
[*1471] HATCHETT, Circuit Judge, Dissenting:
The majority's holding establishes a rule of law that transforms the
multi-billion dollar classified publishing industry from a business requiring
the production of a useful directory based on multiple layers of creative
decision-making, into a business requiring no more than a successful race to a
data processing agency to copy another publisher's copyrighted work-product. In
reaching this incredible result, the majority forsakes thoughtful analysis of
the evidence under the governing principles articulated in Feist, and leaps to a
conclusion based on nothing more than its collective judgment of what ought to
be copyrightable.
Not only does the majority [**31] ignore the evidence presented in the
district court, but it also allows the appellant to obtain an outright reversal
of the district court with new arguments and supplemental evidence that the
district court never considered. In doing so, the majority transforms this en
banc appellate court into no more than a multiple judge trial court that allows
unsuccessful litigants to have the proverbial "second bite at the apple.' I
cannot join the majority in its disregard for the well-established parameters of
appellate review; thus, I respectfully dissent. n1
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n1 During the discussion of the evidence presented to the district court, I
will also discuss the evidence presented and the new theories advanced at the
"en banc trial."
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
DISCUSSION
In order to prevail on a claim of copyright infringement, a plaintiff must
prove two elements: (1) that the plaintiff owns a valid copyright in the work;
and (2) that the defendant copied "constituent elements of the work that are
original." Feist Publications, Inc. v. Rural Telephone [**32] Service Co.,
Inc., U.S. , , 111 S. Ct. 1282, 1296, 113 L. Ed. 2d 358, 379 (1991).
Donnelley Information Publishing, Inc. and Reuben H. Donnelley Corporation
(collectively "Donnelley") concedes that Bellsouth Advertising & Publishing
Corporation ("BAPCO") possesses a valid compilation copyright in the 1984
Greater Miami Yellow Pages (1984 Yellow Pages ), taken as a whole. Donnelley
also stipulated that it copied the following information from the 1984 Yellow
Pages in preparing its "sales lead" sheets: "1. telephone number--under the
first column; 2. name--under the second column; 3. address--under the third
column; 4. kind of business--under the fourth column; and 5. unit of
advertising--under the fifth column." Therefore, based on Donnelley's
concessions that BAPCO possesses a valid copyright and its stipulation to
copying information from the 1984 Yellow Pages, this court is only asked to
determine whether Donnelley substantially copied constituent elements of the
1984 Yellow Pages that are original.
I. Copyrightability of Compilations
It is settled that compilations of facts are copyrightable, [**33] even though
the facts themselves are not subject to copyright protection. Feist
Publications, U.S. at , 111 S. Ct. at 1287, 113 L. Ed. 2d at 368
(discussing the inherent tension between these well-established propositions).
The Copyright Act of 1976 defines a copyrightable compilation as "a work formed
by the collection and assembly 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 original work of authorship." 17 U.S.C. § 101 (1988).
Therefore, section 101 identifies three requirements for a compilation to
qualify for copyright protection: "(1) the collection and assembly of
preexisting material, facts, or data; (2) the selection, coordination, or
arrangement of those materials; and (3) the creation, by virtue of the
particular selection, coordination, or arrangement, of an "original' work of
authorship." Feist, U.S. at , 111 S. Ct. at 1293, 113 L. Ed. 2d at 376.
The Court in Feist noted that the "selection, coordination, or arrangement"
[**34] requirement is the key to determining whether a work qualifies as a
copyrightable compilation. See Feist, U.S. at , 111 S. Ct. at 1294, 113
L. Ed. 2d at 377 (explaining that "facts are never original, so the compilation
author can claim originality, if at all, only in the way that the facts are
presented"). The Court in Feist emphasized that "the originality requirement
[*1472] is not particularly stringent." See Feist, U.S. at , 111 S. Ct.
at 1294, 113 L. Ed. 2d at 377 (explaining that originality means only that a
compiler selects or arranges independently and displays some minimal level of
creativity, even if the compiler settles upon a selection or arrangement that
others have used). In addition, the Court in Feist noted that a copyrightable
compilation is protected only to the extent of the author's "original"
selection, coordination, or arrangement. See Feist, U.S. at , 111 S. Ct.
at 1295, 113 L. Ed. 2d at 378. Accordingly, this court must first determine what
particular elements of BAPCO's selection, coordination, [**35] and arrangement
of preexisting facts in the 1984 Yellow Pages are sufficiently original to merit
copyright protection.
II. Original Selection, Coordination, or Arrangement
Based on the undisputed facts, the district court concluded that BAPCO performed
the following acts of selection, coordination, or arrangement, which were
sufficiently original to merit copyright protection: (1) the selection of the
geographic scope of businesses to be covered in the directory; (2) the selection
of the number of free listings for businesses in the covered area; (3) the
selection of only businesses with business telephone service for advertisements
in the directory; (4) the selection of a menu of classified headings that would
be available for business listings; (5) the selection of the criteria for
determining whether a business may advertise under a particular classified
heading; (6) the selection of the classified headings that would be recommended
to a particular business customer; (7) the selection of customers who would
receive on-premise sales contact, telephone sales contact, or no contact; (8)
the selection of the dates for the beginning and closing of the sales campaign
[**36] for advertisements in the directory; and (9) the arrangement of all of
the business listings under a particular heading, in alphabetical order. See
BellSouth Advertising & Publishing Corp. v. Donnelley Information Publishing,
Inc., 719 F. Supp. 1551, 1557-58 (S.D.Fla.1988).
The panel agreed that the 1984 Yellow Pages constituted a copyrightable
compilation, identifying the following acts of selection, coordination, or
arrangement as sufficiently original: (1) selection of the geographic scope of
businesses to be included in the directory; (2) selection of a directory close
date as a limit on modifications that would be reflected in a pending directory
publication; (3) the creation or selection of numerous classified headings that
would be available for business listings; (4) the coordination of all the
informational components--name, address, and telephone number--of a particular
business into one complete business listing; and (5) the arrangement of all
coordinated business listings under the appropriate classified headings. See
Bellsouth Advertising & Publishing Corp. v. Donnelley Information Publishing,
Inc., 933 F.2d 952, 957-58 (11th Cir.1991), [**37] vacated and reh'g en banc
granted, 977 F.2d 1435 (11th Cir.1992).
Donnelley challenges the district court's and panel's holding that BAPCO
performed sufficiently original acts of selection, coordination, or arrangement
to merit copyright protection for the 1984 Yellow Pages. Donnelley argues that
the district court erred in identifying BAPCO's alphabetizing of the listings
and classified headings as contributing to the originality of the directory.
Donnelley also argues that the district court erred in characterizing BAPCO's
decisions to offer one free listing, to include only business telephone service
subscribers, and decisions on soliciting advertisements as acts of selection
"fixed" in the 1984 Yellow Pages, as opposed to invisible business decisions. In
addition, Donnelley argues that the panel erred in identifying BAPCO's
coordination of the informational components--name, address, and telephone
number--of a particular business as an original act of coordination. Moreover,
Donnelley argues that both the district court and the panel erred in identifying
BAPCO's selection of a geographic scope, selection of classified headings, and
arrangement [**38] of all business listings under a particular classified
heading as "original" acts of selection or arrangement.
BAPCO responds that the district court and panel correctly concluded that
BAPCO's [*1473] acts of selection, coordination, or arrangement were
sufficiently original to be copyrightable. BAPCO analogizes the so-called
"business decisions" with the techniques that a photographer uses in taking a
picture. As the techniques of the photographer affect the photograph, BAPCO
argues that the published 1984 Yellow Pages would have been completely different
if BAPCO had selected a different geographic scope, permitted residential
telephone service subscribers to be listed, chosen a different closing date,
elected not to provide a free listing, changed its available menu of classified
headings, engaged in different marketing efforts to sell business listings,
excluded businesses listings from nearby communities such as Fort Lauderdale,
excluded listings of national businesses, or permitted different arrangements
between the available classified headings and business listings.
Donnelley is correct to assert that the holding in Feist precludes this court
from concluding that BAPCO satisfied [**39] the originality requirement based
on the mere alphabetizing of business listings and classified headings, or based
on the mere coordination of the name, address, and telephone number of a
particular business into one complete business listing. See Feist, U.S. at
, 111 S. Ct. at 1297, 113 L. Ed. 2d at 380-81 (holding that a telephone
company's white pages lack the requisite originality for copyright protection
where the telephone company merely published basic subscriber information--name,
town, and telephone number--and arranged it alphabetically based on surnames).
Donnelley is also correct to assert that the district court erred in
characterizing BAPCO's decision to offer one free listing and decisions on the
dates and procedures for soliciting advertisements as original acts of
"selection." "Selection implies the exercise of judgment in choosing which facts
from a given body of data to include in a compilation." Key Publications v.
Chinatown Today Publishing Enterprises, Inc., 945 F.2d 509, 513 (2d Cir.1991)
(citations omitted). BAPCO's decisions regarding a free listing and solicitation
procedures [**40] did not entail the exercise of judgment in choosing among
facts to be included in its directories. "Selection" is not an appropriate term
to describe the choices to include all of the data in a given body of data, on a
given date. Instead of acts of selection, these BAPCO's decisions are more
closely analogous to ideas or procedures for reliably and profitably collecting
facts. As ideas or procedures, BAPCO's decision to offer a free listing and its
decisions regarding soliciting advertisements, are not copyrightable. See 17
U.S.C. § 102(b) (providing that no copyright protection for an original work of
authorship extends to any "idea, procedure, process, system, method of
operation, concept, principle, or discovery, regardless of the form in which it
is described, explained, illustrated, or embodied in such work").
However, even ignoring these erroneously identified acts of selection,
coordination, or arrangement, BAPCO's other acts of selection and arrangement in
compiling the 1984 Yellow Pages were sufficient originality to merit copyright
protection under Feist.
A. Selection of Classified Headings
The clearest example [**41] of BAPCO's original selection is its choice of the
classified headings that would be included in the 1984 Yellow Pages. Accord Key
Publications, 945 F.2d at 514 (holding that a publisher's selection of 260
different categories, even if including particular categories that have been
used in other directories, involved sufficient creativity to contribute to the
overall originality of a classified directory). BAPCO selected the approximate
7,000 classified heading in the 1984 Yellow Pages from the 4,700 primary
headings and approximately 34,000 related headings in the BAPCO headings book.
BAPCO presented the undisputed testimony of Gerald Brown that the BAPCO headings
book is not standardized to coincide with the menu of classified headings used
in National Yellow Page Sales Association (NYPSA) publications. Moreover, even
if BAPCO's selection of classified headings is similar to other NYPSA
publications, it would still be copyrightable under Feist so long as BAPCO
selected independently. See Feist, U.S. at , 111 S. Ct. at 1287, 113 L.
Ed. 2d at 369 (holding that "originality does [*1474] not signify [**42]
novelty; a work may be original even though it closely resembles other works so
long as the similarity is fortuitous, not the result of copying"). n2
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n2 In reasoning that BAPCO's selection of headings lack originality because
many resemble NYPSA headings, the majority completely ignores the Feist Court's
holding that an independent selection of data need not be "novel" in order to be
deemed original. See Majority Slip op. at p. 3097.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
In addition, the testimony of Donnelley's own witness supports the district
court's conclusion that BAPCO's selection of headings constituted an original
act of selection. Donnelley's corporate representative, Jon Notestein, responded
to a question about whether Donnelley created its headings especially for the
Donnelley Miami directory, with the following statement: "What we have learned
in this business after 99 years is that individual markets may have local
terminology that reflect differently in different parts of the country. So, yes,
I'm sure we have created some headings, [**43] classifications to represent
types of business that we didn't normally use in Donnelley in the Mid-west, for
example." See Deposition of Jon Notestein, p. 50. In further describing the
process of particularizing headings for a specific directory, Notestein
explained that Donnelley maintains a list of over 7,000 headings that are
generally applied across the country, but "in the end the type of business
appears in our directory is a reflection of the marketing and needs of the
market and users of the product. It is an ongoing process changing every day."
See Deposition of Jon Notestein, p. 51 (also stating that Donnelley probably
selected its headings for Miami from "looking at" the 1984 Yellow Pages ).
On appeal, Donnelley appears to concede that copyright protection extends to
a publisher's selection of which headings to include in a particular classified
directory, arguing instead that it did not copy BAPCO's selection of classified
headings. Donnelley asserts that its 1985 Miami North directory contains
approximately 4,000 headings and that its 1985 Miami South directory contains
approximately 4,300 headings, as compared to the 7,000 headings in BAPCO's 1984
[**44] Yellow Pages. Even though more relevant to the separate issue of
substantial copying, Donnelley's assertion that it independently selected a
substantially smaller and distinct "universe" of classified headings underscores
the originality, and thus copyrightability of BAPCO's selection of headings. n3
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n3 In reaching its over-broad conclusion that none of BAPCO's selection,
coordination, or arrangement is copyrightable, the majority merges the issues of
originality and substantial copying. In doing so, the majority allows Donnelley
to defeat BAPCO's claim of original selection, the first issue before this
court, based on new evidence presented for the first time on appeal that relates
mainly to the second, substantial similarity issue. Regarding the substantial
similarity issue, the majority concludes that Donnelley presented evidence
showing that it "established its own system of headings." The majority relies on
citations to the record that Donnelley uses in support of its new assertion that
it selected "a smaller universe" of classified headings. See Majority Slip op.
at 3096-97. The majority's reliance on these citations is misplaced for two
reasons. First, as BAPCO argues, none of Donnelley's citations actually support
the "smaller universe" assertion. See BAPCO En Banc Brief at p. 3 (compiling all
portions of the record that Donnelley cites as "Exhibit 2"). Moreover, as
discussed fully in section III-A, the relevant question is whether Donnelley
proved that it selected a menu of classified headings for particular use in
compiling its South Florida directories, not whether Donnelley entered codes
corresponding to a general universe of headings in the Donnelley heading book.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [**45]
B. Categorizing Businesses Under Classified Headings
The originality of BAPCO's arrangement of business listings under a particular
classified heading is also clear under the standard definition of "arrangement"
in the copyright laws. "Arrangement "refers to the ordering or grouping of data
into lists or categories that go beyond the mere mechanical grouping of data as
such, for example, the alphabetical, chronological, or sequential listings of
data.' " Key Publications, 945 F.2d at 513-14 (quoting Copyright Office,
Guidelines for Registration of Fact-Based Compilations 1 (Rev. Oct. 11, 1989)).
In this case, BAPCO presented the undisputed affidavit testimony of its General
Manager-Publishing, Bob Johnson, regarding BAPCO's grouping of listings under a
particular classified heading. See Exhibit A to Donnelley's En Banc Brief
[*1475] (copy of Affidavit of Bob Johnson ). Because most business subscribers
offer multiple product lines, goods, and services, Johnson testified that BAPCO
sales representatives were responsible for itemizing the products or services of
a business subscriber, determining the degree of importance or profitability
[**46] to the business, and recommending an appropriate classified heading for
listing the business in the 1984 Yellow Pages. Johnson further testified that
BAPCO annually updates and publishes its heading book in order to provide sales
representatives with a quick-reference of the approximately 34,000 authorized
BAPCO "related headings" for making recommendations to businesses about
additional listings.
Moreover, Johnson's statements about the skill and judgment that BAPCO sales
representatives exercise in recommending appropriate related headings is
supported in the statistics that he provided about the 1984 Yellow Pages.
Johnson testified that the resulting 1984 Yellow Pages included 56,459 free
business listings and 49,939 paid listings from a total of 32,559 local,
foreign, and national business subscribers. These statistics on total listings
and advertisers highlight the fundamental error in the majority's conclusion
that BAPCO's grouping of business listings under classified headings is not an
original act of arrangement. Using Donnelley's figure of approximately 7,000
classified headings in the 1984 Yellow Pages, it defies logic to conclude that
BAPCO's grouping of [**47] over 106,398 business listings from 32,559 different
businesses, under approximately 7,000 classified headings amounts to no more
than mechanical grouping of data. The numbers alone indicate that BAPCO had
numerous options for grouping the 106,398 listings among the 7,000 classified
headings.
Beyond statistics, however, BAPCO presented the district court with
conclusive evidence concerning the originality of its groupings of business
listings under classified headings. BAPCO attached to Johnson's affidavit a
sample page from its heading book, which includes the primary heading of
"Bakers-Retail" and related headings including "Biscuits," "Cakes," "Pastries,"
"Bagels," "Candy & Confectionery," "Caterers," "Cookies & Crackers,"
"Delicatessens," "Donuts," "Food Products," "Foods-Carry Out," "Grocers-Retail,"
"Health & Diet Food Products-Retail," "Pies," "Pretzels," "Restaurants,"
"Sandwiches," "Snack Products," "Wedding Supplies & Services." Although some
primary entries on the sample page contain less related headings than the
"Bakers-Retail" example, other primary headings contain more related heading
options. Hence, the "Bakers-Retail" example provides a representative
illustration [**48] of the wide-ranging choices that BAPCO sales
representatives made in categorizing the 32,559 businesses under the appropriate
related headings from the approximately 34,000 options in the heading book. With
so many related headings to describe a business principally known as a bakery,
BAPCO's arrangement of the listing of a particular bakery under one, two, three,
four, or more headings is neither "obvious" nor "practically inevitable" as
defined in Feist. See Feist, U.S. at , 111 S. Ct. at 1297, 113 L. Ed. 2d
at 380. Accordingly, the evidence is clear that BAPCO's arrangement was in no
sense mechanical. On the contrary, the 1984 Yellow Pages reflects several layers
of BAPCO choices on grouping 106,398 business listings under approximately 7,000
classified headings, which BAPCO selected from a heading book containing 4,700
primary entries and 34,000 related headings. Accord Key Publications, 945 F.2d
at 514 (holding that a classified publisher's grouping of over 9,000 listings
into approximately 260 different categories constituted original arrangement
entitled to copyright protection).
Donnelley [**49] challenges BAPCO's evidence of an original arrangement with
repeated assertions that the businesses themselves, not BAPCO, selected the
appropriate classified heading or headings with which to describe their
businesses. In its reply brief to the panel, Donnelley conceded that if BAPCO
supported its "belated allegation that BAPCO selects the headings, there would
result a material issue of fact, making summary judgment improper on the issue
of infringement." Donnelley Panel Reply Brief at p. 13. The evidence before the
district court not only supports BAPCO's so-called "belated allegation," but the
only evidence presented to the [*1476] district court conclusively establishes
that BAPCO makes the final decisions on whether to list a business under a
particular classified heading. n4
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n4 The majority summarily concludes that "it is the subscriber who selects" a
particular classified heading without any discussion of BAPCO's evidence on this
issue. See Majority Slip op. at p. 3098.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Donnelley does not point to any independent [**50] evidence that it
presented on the issue, but relies on testimony that it elicited from BAPCO's
General Manager-Directory, Gerald Brown, during the October, 1985, preliminary
injunction hearing. Specifically, Donnelley relies on Brown's statements that
customers generally select additional classified headings in the course of a
sales presentation by a BAPCO employee, and his statement that the owner of
Havana Welding made the decision to be listed under ten different headings,
including "Exporter," with the guidance of a BAPCO sales person. Based on Brown
's testimony about a business owner's role and the fact that business owners pay
BAPCO for the additional listings, Donnelley argues that "it defies logic to
even suppose that [businesses] would leave to a directory publisher any
discretion to decide what business they are in."
Donnelley's argument completely ignores the undisputed evidence that BAPCO
presented on the editorial role of its Heading Committee in arranging business
listings under a particular classified heading. n5 In addition to discussing the
role of a BAPCO sales representative in recommending related headings to
businesses, Gerald Brown testified via deposition that [**51] BAPCO's Heading
Committee had the final responsibility for deciding whether a requested
classified heading was appropriate for inclusion in the 1984 Yellow Pages. Brown
further testified that a business's willingness to pay for a listing under a
particular classified heading did not influence the Heading Committee's decision
on whether to approve the proposed new heading. Moreover, during the October,
1985, preliminary injunction hearing, Brown responded to questions about whether
BAPCO allowed businesses to make final decisions on a particular heading based
on their willingness to pay for the advertisement. In response to a question on
redirect, Brown testified that BAPCO would not allow businesses to select
classified headings under a particular category that is totally incorrect,
responding to the extreme example of a butcher who asked to be listed as a
plumber. See 5SR2-4, p. 133. On recross-examination, Brown responded to a more
subtle example stating that BAPCO would allow a butcher to be listed as a
delicatessen only if the butcher was in fact a delicatessen, regardless of the
butcher's willingness to pay for a full-page ad under the "Delicatessen"
heading. See [**52] 5SR2-4, pp. 133-34. Donnelley fails to point to any
evidence contradicting Brown's testimony regarding the final editorial authority
of the Heading Committee on whether a business would be grouped under a
particular classified heading.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n5 The majority blindly accepts Donnelley's argument that BAPCO surrenders
ultimate editorial authority to advertisers without any consideration of BAPCO's
obvious need to maintain final editorial discretion in order to protect the
integrity and accuracy of its compilation.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Therefore, the uncontroverted testimony in this case proves that BAPCO
performed an original act of arrangement in deciding how to group appropriately
the 106,398 business listings from 32,559 businesses, under the approximate
7,000 classified headings in the 1984 Yellow Pages.
C. Selection of Only Businesses with Business Telephone Service
BAPCO's selection of only businesses with business telephone service, as opposed
to residential service, is also an act of selection contributing to the
originality [**53] of the 1984 Yellow Pages. As noted earlier, selection
involves "the exercise of judgment in choosing which facts from a given body of
data to include in a compilation." See Key Publications, 945 F.2d at 513. BAPCO
exercised such judgment in choosing only business service subscribers from the
body of data including both business and residential subscribers for inclusion
in the 1984 Yellow Pages. The originality is BAPCO's choice is amply
demonstrated in the fact that Donnelley, unlike BAPCO, would accept listings and
[*1477] advertising from residential telephone service subscribers in addition
to business telephone service subscribers. For example, the Assistant
Vice-President and General Manager of the Southeast Operation of Donnelley
Information Publishing, Louis Sudholz, testified about the disparate treatment
of a hypothetical prospective customer, "John, the painter." Sudholz testified
that Donnelley, unlike BAPCO, would include "John, the painter" in its
directory, regardless of Donnelley's discovery that John does not have a
business telephone and operates out of a shed in his backyard. See 5SR2-4, pp.
194-95. Based on the different choices [**54] of two competing classified
publishers, it is clear that BAPCO's selection of only businesses with business
telephone service represents an exercise of judgment that is in no sense
automatic or dictated by functional considerations. Hence, the record also
supports the district court's holding that BAPCO's selection of only business
telephone subscribers for inclusion in its 1984 Yellow Pages constitutes an
original act of selection contributing to the copyrightability of its
compilation.
D. Selection of a Geographic Area to be Covered Comprehensively
Although a closer question, BAPCO's geographic scoping also represents an
original act of selection. BAPCO asserts that its selection of a geographic
scope refers to a choice about what geographic region would be covered
comprehensively in the 1984 Yellow Pages. BAPCO argues that its selection of a
geographic area is not determined simply based on the scope of a white-page
directory for the same community, but is instead selected based on BAPCO's
evaluation of the shopping habits and desired shopping areas of consumers within
a white-pages community. Donnelley responds that geographic scoping merely
refers to BAPCO's [**55] decision about the geographic area for free
distribution of copies of its 1984 Yellow Pages. Donnelley further asserts that
BAPCO did not, in fact, limit advertisements in its directory to businesses in a
particular area. Based on Bob Johnson's affidavit testimony that the 1984 Yellow
Pages contains advertisements from 1,772 businesses in nearby cities and from
2,215 national businesses, the evidence supports Donnelley's assertion that
BAPCO did not limit classified listings to only businesses in a certain
geographic area. Johnson's testimony also demonstrates that BAPCO solicited, not
selected, the advertisements from national businesses and businesses in nearby
cities. However, the fact that BAPCO did not limit its 1984 Yellow Pages
exclusively to greater Miami businesses does not dispose of the issue, because
BAPCO's claim of copyrightability is based on its selection of an area, not
individual businesses, to be covered comprehensively, not exclusively.
The evidence before the district court supports its conclusion that
geographic scoping is an original act of selection. Besides BAPCO's evidence,
Donnelley presented evidence on the uniqueness of its different scoping [**56]
choice to cover the greater Miami area in two North and South Miami regions. In
addition, Donnelley elicited testimony from Louis Sudholz on Donnelley's
decision to cover the geographic region between Dallas and Fort Worth in a
"Mid-City" directory. Based on such evidence of how classified publishers could
easily select geographic regions that do not strictly follow the boundaries of
cities, it is clear that the selection of a geographic region is not
"practically inevitable." See Feist, U.S. at , 111 S. Ct. at 1297, 113 L.
Ed. 2d at 380 (recognizing that the alphabetizing of names in a white pages is
an age-old practice that is unoriginal and practically inevitable).
The evidence before the district court also compels a conclusion that the
geographic scoping of a classified directory is not an "obvious" act of
selection. See Feist, U.S. at , 111 S. Ct. at 1297, 113 L. Ed. 2d at 380
(describing a white-page publisher's selection of basic information--name, town,
and telephone number--as "obvious" and lacking sufficient creativity to make it
original). On this point, [**57] BAPCO presented "Donnelley Directory
Publishing Start-Up Business Plan October 21, 1984," which discussed Donnelley's
own geographic scoping decisions as being based on "extensive research [leading
Donnelley] to scope differently from its competitors." See 6SR12-34, Volume
IV--Appendix to Summary Memorandum of Bellsouth Advertising & Publishing
Corporation, [*1478] p.DM207045 (stating that Donnelley generally will scope
to cover areas of two or more telco directories, and stating that "more logical
scoping is intended to be a key selling point for [Donnelley]"). Therefore, even
though Donnelley now argues that geographic scoping represents an obvious
decision lacking a modicum of creativity, the evidence before the district court
was uncontroverted that geographic scoping results from thoughtful analysis of
research on shopping habits and analysis of how to distinguish one directory
from its competitors. n6 Such thoughtful selection is sufficient under Feist to
contribute to the originality of the 1984 Yellow Pages. See Feist, U.S. at
, 111 S. Ct. at 1294, 113 L. Ed. 2d at 377 (explaining that "the originality
requirement [**58] is not particularly stringent").
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n6 The majority reaches the conclusion that geographic scoping is an obvious
and inevitable act of selection based on cursory analysis that analogizes the
geographic scoping involved in classified directories to the scoping of white
pages. However, as the majority points out, this case concerns a "directory of a
different color." That distinction requires this court to thoroughly analyze the
evidence under the Feist principles. Instead of such analysis, the majority's
holding appears to be based on the mistaken notion that deciding copyright cases
requires no more than an application of the collective common sense of judges.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
In sum, the record on this case demonstrates that BAPCO performed at least
four original acts of selection and arrangement: (1) the selection of 7,000
classified headings; (2) the arrangement of 106,398 business listings, from
32,559 businesses under the 7,000 classified headings; (3) the selection of only
businesses with business telephone service, as opposed [**59] to businesses
having either business service or residential service; and (4) the selection of
a geographic area to be covered comprehensively in the 1984 Yellow Pages.
Accordingly, I would hold that BAPCO performed four acts of selection or
arrangement which are sufficiently original to merit copyright protection. The
analysis of BAPCO's infringement claim, however, does not end with a finding of
originality. This court must next determine whether Donnelley copied those
constituent elements of selection and arrangement which are copyrightable.
III. Substantial Copying of BAPCO's Original Selection or Arrangement
Because the copyright in a factual compilation is "thin," a plaintiff must prove
"substantial similarity" between the defendant's compilation and the original
elements of the plaintiff's compilation. Key Publications, 945 F.2d at 514
(adopting the "substantial similarity" test for infringement, and rejecting
arguments that Feist requires a subsequent compiler to produce an "exact replica
" of the copyrighted compilation); see also Majority Opinion at n. 21 (citing
favorably the Key Publications test); Southern Bell Tel. & Tel. Co. v.
Associated Tel. Directory Publishers, 756 F.2d 801, 810-11 (11th Cir.1985)
[**60] (applying the "substantially similarity" test). Therefore, in order for
BAPCO to prevail on its infringement claim, it must prove that Donnelley
substantially appropriated the particular elements of selection or arrangement
that are original. Based on the previous discussion identifying those elements
of selection or arrangement that are copyrightable, BAPCO must prove that
Donnelley substantially appropriated BAPCO's selection of classified headings,
arrangement of business listings under classified headings, selection of only
businesses with business telephone service, or selection of a geographic area to
be covered comprehensively.
A proper analysis of whether Donnelley substantially appropriated BAPCO's
original selection or arrangement requires this court to analyze separately each
of the three acts of copying at issue in this case. The district court concluded
that Donnelley engaged in the following three acts of copying: (1) hiring
Appalachian Computer Services, Inc. (Appalachian), a data entry company in
London, Kentucky, to key BAPCO's compilation into a computer database; (2) using
the computer database to print out sales lead sheets that represented a
reproduction of substantially [**61] the entire 1984 Yellow Pages in inverted
or crisscross form; and (3) publishing the 1985 Miami North and 1985 Miami South
directories based on the information copied into the computer database and onto
the sales lead sheets. See BellSouth, 719 F. Supp. at 1558-59. [*1479]
Similarly, this court should evaluate each alleged act of copying separately. n7
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n7 The majority not only merges its analysis of the originality and the
substantial similarity issues, as previously noted, the majority also
intertwines its slight discussion of Donnelley's first two alleged acts of
copying, the computer database and sales lead sheets, with its exhaustive
discussion of the lack of similarity between the actual published directories.
The majority's focus on the distinguishable features of Donnelley's published
directories, with only slight mention of the computer database and sales lead
sheets, is not consistent with the development of facts in this case. That is,
Donnelley's alleged copying of BAPCO's compilation into the computer database
and onto the sales lead sheets occurred before BAPCO filed this action putting
Donnelley on notice. Donnelley's actual publication of the 1985 Miami North and
1985 Miami South Directories occurred after BAPCO filed this action and after
the district court denied BAPCO's motion for a preliminary injunction. Hence, it
is not at all surprising that Donnelley's published directories contain a number
of distinguishable features.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [**62]
A. Computer Database
Donnelley does not dispute that it obtained copies of the 1984 Yellow Pages,
separated and mounted each sheet individually, and assigned a classified heading
code, advertising code, and directory code for every business listing. It is
also undisputed that Appalachian keyed the following information into a computer
database: name, address, telephone number, code corresponding to a classified
heading, code corresponding to the unit of advertising, and a code for the
directory from which the listing came. Appalachian stored this information on
magnetic tape and sent it to Donnelley for reproduction in the form of sales
lead sheets. The only factual dispute concerning the creation of the computer
database derives from Donnelley's assertion that Appalachian entered a code
corresponding to a previously chosen Donnelley classified heading, as opposed to
a code corresponding to the BAPCO heading directly next to each code.
The record support's Donnelley's version of the alleged factual dispute.
Several Donnelley employees testified that Appalachian keyed-in heading codes
that corresponded to headings in a Donnelley heading book. For example, Gary
Johnson [**63] explained that
if we found a heading on our database that had a heading code which
was similar or the same meaning as the BAPCO heading, we used our
heading, the Donnelley support file heading. We didn't directly copy
the heading from the BAPCO book. We used our heading. This heading
code is a Donnelley heading code that applies to a support file,
mechanized support file, that we maintain in Terre Haute [, Indiana, a
Donnelley Publishing Center].
Deposition of Gary Johnson, at p. 143. Johnson further testified that he sent
Appalachian a "Donnelley heading book" and "asked Appalachian to use [the
Donnelley heading book] and find alike [sic] or similar, in our book to the
BAPCO book." Deposition of Gary Johnson, at p. 254. Johnson's testimony, along
with that of other Donnelley employees, resolves the alleged factual dispute and
makes it clear that Appalachian keyed a heading code that corresponded to a
heading in the Donnelley heading book. But, the mere fact that Appalachian
entered codes that corresponded to a heading in Donnelley's own heading book
does not resolve the issue.
The relevant question is whether Appalachian entered codes that corresponded
to Donnelley's [**64] previously selected menu of headings for particular use
in its Miami directories, not whether Appalachian entered codes corresponding to
a heading in a Donnelley heading book that Donnelley uses for compiling
directories generally. As discussed earlier, the evidence is undisputed that
BAPCO selected approximately 7,000 classified headings from those in its heading
book containing 4,700 primary entries and approximately 34,000 authorized
related headings. Therefore, the originality of BAPCO's selection of headings is
based on its selection of approximately 7,000 headings for inclusion in the 1984
Yellow Pages, not the selection of the nearly 40,000 authorized headings in the
BAPCO heading book. In considering whether Donnelley copied BAPCO's selection of
headings from the 1984 Yellow Pages, Johnson's testimony makes it apparent that
Donnelley did not previously select headings from its own heading book [*1480]
for inclusion in its 1985 Miami North and 1985 Miami South directories. Instead,
Johnson testified that Donnelley merely sent Appalachian its heading book so
that Appalachian could assign a code to each BAPCO heading that corresponded to
a like or similar heading in the [**65] Donnelley heading book.
Johnson's testimony is bolstered in the testimony of Jon Notestein, who made
the following statement in response to a question about how Donnelley selected
classified headings that reflected needs of the market and users in Miami: "They
were probably created by looking at the directories representing Miami, [the
BAPCO directory]." See Deposition of Jon C. Notestein, pp. 50-52; see also
Donnelley En Banc Reply Brief, p. 19 n. 14 (conceding that Notestein testified
that Donnelley used the 1984 Yellow Pages in order to refine its preexisting set
of headings for use in Florida).
Therefore, even resolving the alleged factual dispute regarding Appalachian's
coding of headings in favor of Donnelley's version, Johnson's and Notestein's
testimony makes it clear that Donnelley did not previously select a universe of
headings for particular use in its Miami directories. Instead, Donnelley copied
BAPCO's selection of headings with what can only be described as a high-tech
copying process. Donnelley's high-tech copying involved Appalachian keying codes
rather than the words of BAPCO headings into a database, from which the wording
of the BAPCO headings could [**66] be reconstructed later using the Donnelley
heading book as a decoder.
Besides the evidence showing that Donnelley substantially appropriated BAPCO
's selection of headings, Donnelley's stipulation regarding what information
Appalachian keyed into the computer database leaves no factual dispute that
Donnelley also substantially appropriated BAPCO's other original acts of
selection and arrangement. As previously discussed, BAPCO's original acts of
selection or arrangement included the selection of approximately 7,000 headings
for particular use in the 1984 Yellow Pages; the arrangement of 106,398 listings
from 32,559 businesses under the approximately 7,000 classified headings; the
selection of only businesses with business telephone service; and the selection
of a geographic area to be covered comprehensively in the directory. It is
undisputed that Appalachian keyed into the computer database every business
listing with a corresponding heading code and a code indicating the directory
source for every listing in the 1984 Yellow Pages.
Although the keying of each code in isolation would amount to the lawful
copying of facts, Appalachian's grouping of the business listing with [**67]
an associated heading code and a directory code amounts to the appropriation of
virtually all of BAPCO's original acts of selection and arrangement. That is,
Donnelley copied BAPCO's selection of headings based on Appalachian's keying of
a heading code, even if it corresponded to headings in Donnelley's own heading
book, for virtually every heading used in the 1984 Yellow Pages. Donnelley
copied BAPCO's arrangement of business listings under a particular classified
heading based on Appalachian's grouping of the business listing data with a
heading code that corresponded to a heading like or similar to BAPCO's.
Donnelley copied BAPCO's selection of only businesses with business telephone
service based on Appalachian's keying of every business listed in the 1984
Yellow Pages. In addition, Donnelley copied BAPCO's selection of a geographic
area based on Appalachian's grouping of the business listing data and the code
indicating the directory source.
Because the keyed information was stored in or on some material object until
later printed on the sales lead sheets, Donnelley's creation of the computer
database represents an act of "copying" as defined in the Copyright Act. See
[**68] 17 U.S.C. § 101 (defining a copy as a material object "in which a work
is fixed by any method now known or later developed, and from which the work can
be perceived, reproduced, or otherwise communicated, either directly or with the
aid of a machine or device"). Accordingly, I would hold that Donnelley's
substantial appropriation of BAPCO's original acts of selection or arrangement
in creating the computer database, represented an act of copyright infringement.
[*1481] B. Sales Lead Sheets
Donnelley's substantial appropriation of BAPCO's original act of selection or
arrangement is also apparent in the printed sales lead sheets. As discussed
previously, Donnelley stipulated in the district court that it prepared the
sales lead sheets from the following information obtained from the 1984 Yellow
Pages: (1) telephone number--under the first column; (2) name--under the second
column; (3) address--under the third column; (4) kind of business--under the
fourth column; and (5) unit of advertising--under the fifth column. A visual
examination of the printed sales lead sheets shows that the sales lead sheets
also contain rate information under the [**69] sixth column and a directory
code under the seventh column. Because it is uncontroverted that the sales lead
sheets represented merely a printed version of the same information that
Appalachian keyed into the computer database, the previous analysis of how
Donnelley substantially appropriated BAPCO's original selection or arrangement
in creating the database applies equally to its printing of the sales lead
sheets. Hence, I would also hold that Donnelley's printing sales lead sheets
using the information already copied into the computer database, represented a
second act of copyright infringement.
Even though a discussion of the sales lead sheets necessarily turns on
analysis of the information keyed into the computer database, the printed sales
lead sheets have independent significance because the sales lead sheets, not the
actual directories, constituted the chief visual evidence of copying in the
district court. In the district court, Donnelley stipulated that the seven lead
sheets attached to BAPCO's motion for preliminary injunction were representative
of all the thousands of sales lead sheets that Donnelley created. Donnelley now
attempts to retreat from its concession concerning [**70] the
representativeness of the sales lead sheets and to retry this case based on a
visual comparison of the 1984 Yellow Pages and the 1985 Miami North and 1985
Miami South directories. In its En Banc Reply Brief, Donnelley responds to BAPCO
's assertions of substantial similarity based on the seven lead sheets with the
following argument: "BAPCO bases this assertion entirely on a chart drawn from
just seven of the thousands of lead sheets produced by Donnelley for Miami.
However, BAPCO's chart "conclusively demonstrates' only that a small sample can
produce a misleading result." See Donnelley En Banc Reply Brief, p. 22
(citations omitted). Donnelley continues its response with its newly created
chart comparing the headings in the 1984 Yellow Pages and those used in the 1985
Miami North and 1985 Miami South directories.
Donnelley's arguments are fatally flawed in that they rely on a visual
comparison of the actual directories, which Donnelley admits that it only
recently, on January 27, 1993, moved for leave to place physical copies of the
three directories in the record on appeal. See Donnelley En Banc Reply Brief, p.
22 n. 16. Likewise, Donnelley [**71] failed to present the chart comparing the
headings in the three directories to the district court, attaching it for the
first time as an appendix in its En Banc Reply Brief. See Donnelley En Banc
Reply Brief, p. 22 n. 17 (explaining the results of its new analysis as
indicated in Appendix A of the En Banc Reply Brief). n8
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n8 Contrary to settled principles of finality, the majority permits Donnelley
to back away from its stipulation in the district court regarding the
representativeness of the seven lead sheets. Instead of considering the seven
sales lead sheets and analysis of them as presented to the district court, the
majority relies heavily on a visual comparison of selected pages from the three
published directories. Indeed, it is unusual that this copyright case proceeded
from October, 1985, to October, 1988, in the district court without the parties
submitting complete physical copies of the disputed publications. But, it was
this court, not the district court, that admitted the directories into the
record in response to the parties' joint motion of January, 1993. The majority
properly, albeit implicitly, declines Donnelley's request that this en banc
court to engage in a side-by-side visual comparison of all pages in three
published directories. See Donnelley En Ban Reply Brief, p. 22 nn. 16 & 17.
However, the majority's visual comparison of selected pages from the directories
is equally unfounded. As discussed fully in section III-C, the record before the
district court consisted of a total of approximately forty pages from the
published directories. Nothing in the district court opinion indicates that the
district court actually made a side-by-side visual comparison of those pages
except possibly to verify the conclusions in the Affidavit of Barbara J. Wiggs.
This court generally bases a reversal of a district court on evidence
that the district court considered. The majority's outright reversal
of the district court based upon its original "findings' from a visual
comparison of selected pages from the published directories, places
this court in the novel position of retrying this case rather than
reviewing it. Because Donnelley's own stipulation as to the
representativeness of the sales lead sheets led the district court to
reach what Donnelley now calls a "misleading result," this court must
affirm the district court's conclusion on the substantial similarity
issue. At a minimum, this court is required to remand to the district
court for consideration of Donnelley's new theory of the case which
hinges on a comparative analysis of pages from the published
directories.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [**72]
[*1482] Unlike Donnelley, BAPCO did present the district court with a
comparative analysis of the seven lead sheets showing the virtual identity
between BAPCO headings and Donnelley headings. BAPCO presented the affidavit
testimony of Barbara Wiggs, who explained her findings on the similarities
between information on the sales lead sheets and that in the 1984 Yellow Pages.
Based on line-by-line comparisons of the sales lead sheets to the 1984 Yellow
Pages, Wiggs concluded that "the listing information on the attached Donnelley
Sales Lead sheets were identical to the 1984 Yellow Pages directories, except
for a small number of very minor discrepancies." See 6SR10-17, pp. 11-12,
Affidavit of Barbara J. Wiggs, in Volume 1--Appendix to Summary Memorandum of
Bellsouth Advertising & Publishing Corporation. Specifically, Wiggs listed her
findings of complete identity except for the following entries: (1) Evian
associated with the heading "Water Coolers" instead of "Water Coolers-Renting";
(2) Star Appliances being associated with the heading "Air Conditioning-Room
Units" instead of "Air Conditioning Equipment--Room Units"; (3) Star Appliances
being associated with the heading [**73] "Television Dealers--Retail" instead
of "Television & Radio--Dealers"; (4) Star Appliances being associated with the
heading "Vacuum Cleaners--YSTEM Household--Dealers" instead of "Vacuum
Cleaners--Household--Dealers"; (5) Star Appliances being associated with the
heading "Vacuum Cleaners--S Household--Dealers" instead of "Vacuum
Cleaners--Household--Dealers"; and (6) Audiotron-High Fidelity Corp. being
associated with the address of " 145 S.W. 52, 240 Mo. 121 nd Avenue" instead of
"145-147 S.W. 52nd Avenue Second Floor." Wiggs's conclusion that the
discrepancies were "minor" is entirely reasonable in light of the fact that the
seven lead sheets contain information concerning seven different businesses,
appearing under forty different headings in the 1984 Yellow Pages, for a total
of sixty-eight listings, averaging five different headings and ten listings. It
is also significant to note that the headings on the lead sheets ranged from
"Gas--Industrial & Medical Cylinder & Bulk" to "Antiques--Repairing & Restoring.
" The identity between the headings on the lead sheets and those in the 1984
Yellow Pages included even the hyphens and the ampersands.
Based on Donnelley's stipulation that the [**74] seven sales lead sheets
were representative and Wiggs's testimony on the virtual identity between the
headings and other information on the sales lead sheets and that in the 1984
Yellow Pages, the chief visual evidence in the district court conclusively shows
that Donnelley's printing of the sales lead sheets represented a second act of
substantial appropriation of BAPCO's original acts of selection or arrangement.
C. The Donnelley Directories
As previously discussed, only a small portion of the arguments and evidence
before the district court related to a visual comparison of published copies of
the actual directories. In its opinion, the district court references a
comparison of the directories only three times. The first reference is the
district court's statement that "a comparison of the two (2) directories reveal
that Donnelley used a format nearly identical to that used by BAPCO. See Exhibit
P and P Enlarged to BAPCO's Brief." See BellSouth, 719 F. Supp. at 1559. In
their February, 1993, letters to the clerk of this court regarding requests for
certain portions of the record, both parties agreed that the district court did
not [**75] refer to the BAPCO and Donnelley directories when referencing
Exhibit P and P Enlarged.
[*1483] In fact, Exhibit P and P Enlarged are copies of a sales
solicitation form of Associated Telephone Directory Publishers that this court
reproduced as Appendix A in Southern Bell Tel. & Tel. v. Associated Tel.
Directory Publishers, 756 F.2d 801, 813-14 (11th Cir.1985). Donnelley stated in
its February 22, 1993, letter to the clerk that "Exhibits P and P enlarged do
not involve any yellow pages directory at issue in the present appeal" and that
the district court cited the exhibits erroneously. BAPCO responded that the
district court correctly referred to the exhibits from the Southern Bell
opinion, but only for the limited purposes of showing what the Southern Bell
court considered to be a copyrightable format, and showing that Donnelley's
format as evidenced in the sales lead sheets was nearly identical to that of
BAPCO. Regardless of why the district court referenced Exhibits P and P
Enlarged, the fact that the parties agree that the district court was not
referencing pages from the BAPCO or Donnelley directories makes it
uncontroverted that the district court [**76] was not stating that it performed
page-by-page visual comparison of the 1984 Yellow Pages and the Donnelley
directories.
The second suggestion that the district court visually compared the disputed
directories, is the district court's discussion of the evidence of "common
errors." See BellSouth, 719 F. Supp. at 1559 & n. 23. But, in discussing the
common errors in the three directories, the district court referenced pages from
the directories that BAPCO attached to the Second Affidavit of Barbara J. Wiggs.
See BellSouth, 719 F. Supp. at 1559 n. 23. The district court did not cite pages
in complete published copies of the directories. Similarly, in concluding that
the directories are substantially similar, the district court cites the Barbara
Wiggs affidavit and Gerald Brown testimony rather than pages from the published
directories. See BellSouth, 719 F. Supp. at 1559-60.
Therefore, none of the references in the district court's opinion provide a
basis for this court to engage in side-by-side comparisons of all pages in the
1984 Yellow Pages with those in the 1985 Miami North and [**77] 1985 Miami
South directories. It is only possible to conclude that the district court
examined the pages of the directories that BAPCO attached to the Second
Affidavit of Barbara J. Wiggs. Because Donnelley failed to present its own
comparative analysis of pages from the actual directories and also failed to
place physical copies of the directories in the record until January, 1993, this
court is required to limit its determination on the substantial similarity of
the directories to those pages attached to the Second Affidavit of Barbara J.
Wiggs, and only to the extent of Wiggs's comparative analysis.
The district court relied on Wiggs's analysis of pages from the directories
as support for the following conclusion: "Although Donnelley's directory is not
identical to BAPCO's directory, the material was copied and used to produce a
directory substantially similar in both content and format." See BellSouth, 719
F. Supp. at 1559-60 (citing Affidavit of Barbara Wiggs and October, 1985,
testimony of Gerald Brown). In her affidavit, Wiggs identified twenty-five
errors that were common to both the 1984 Yellow Pages and the Donnelley
directories. [**78] See 6SR11-18, Second Affidavit of Barbara J. Wiggs, pp.
2-19. For example, Wiggs explained that BAPCO incorrectly listed Fort Lauderdale
News under the heading "Balancing Equipment" in the 1984 Yellow Pages, and that
Donnelley's 1985 Miami North directory also lists Fort Lauderdale News under a
"Balancing Equipment" heading. See BellSouth, 719 F. Supp. at 1559 n. 23 (also
noting the example of the common erroneous listing of "Flash Courier Systems"
even though the subscriber's telephone was disconnected before January 1, 1984).
The presence of common errors is "one of the most significant evidences of
infringement." Callaghan v. Myers, 128 U.S. 617, 662, 9 S. Ct. 177, 190, 32 L.
Ed. 542 (1888). Based on the earlier conclusions that the 1984 Yellow Pages
constitutes an original selection and arrangement of facts that is
copyrightable, Wiggs's testimony regarding the presence of common errors is
relevant to rebut Donnelley's repeated assertions that it used the 1984 Yellow
Pages "only to ascertain the fact revealed by BAPCO's heading--the kind of
business carried on by the [**79] listed [*1484] firm--so as to enable
Donnelley to classify that firm in its own system of classification." See
Donnelley En Banc Reply Brief at p. 20; see also, Donnelley En Banc Brief at p.
12. Donnelley's assertions that it independently classified businesses using its
own heading scheme is wholly unbelievable when one considers the statistical
improbability of two publishers independently classifying the same newspaper as
a "Balancing Equipment" dealer. Therefore, the presence of the common errors in
the published directories is significant evidence that Donnelley substantially
appropriated BAPCO's original arrangement of business listings under particular
classified headings.
As further evidence of Donnelley's substantial appropriation of BAPCO's
grouping of listings under particular headings, Wiggs's affidavit included a
heading comparison based on a random selection of Donnelley headings and a
comparison of the listings appearing under those headings with the listings
appearing under the corresponding headings in the 1984 Yellow Pages. BAPCO
presented the district court with the following chart summarizing Wiggs's
findings regarding the percentage of correlation between [**80] the listings
under particular headings in the Donnelley directories and those in the 1984
Yellow Pages:
Heading North Miami South Miami
"Bail Bonds" 68% 55%
"Boxes, Corrugated & Fiber" 86% 100%
"Ceilings" 64% 50%
"Driving Instruction" 72% 73%
"Engineers-Civil" 88% 86%
"Furniture-Outdoors" 63% 70%
"Gold, Silver & Platinum Dealers" 95% 85%
See 6SR5-3 Reply to Donnelley's Memorandum in Opposition to Motion for Partial
Summary Judgment on Copyright Infringement by Bellsouth Advertising & Publishing
Corporation and Memorandum in Opposition to Donnelley's Copyright Partial
Summary Judgment Motion, p. 40 (March 6, 1986).
As the chart indicates, Wiggs found a high (averaging seventy-five percent)
statistical correlation of listings under particular headings when comparing the
1984 Yellow Pages with the Donnelley directories. Donnelley did not respond with
its own correlation analysis, and thus, Wiggs's findings represent further
undisputed evidence that Donnelley's published directories contain a
substantially similar arrangement of business listings under particular
classified headings. Accord see Key Publications, 945 F.2d at 515, 517 (finding
no substantial similarity based on the lack of any evidence that the defendant
copied an entire category of the plaintiff's directory, but explaining that a
finding of infringement would succeed if the defendant [**81] had exactly
duplicated a substantial designated portion of the plaintiff's directory such as
all of the listings of professionals such as medical doctors, lawyers,
accountants, engineers, and architects).
To the extent that Wiggs's analysis of the directories was misleading, it is
an elementary rule on summary judgment that the burden shifted to Donnelley to
produce its own comparative analysis of the published directories in order to
rebut the undisputed evidence of substantial similarity in Wiggs's affidavit.
See United States v. Four Parcels of Real Property, 941 F.2d 1428, 1438 (11th
Cir.1991) (recognizing that the burden on summary judgment shifts to the
non-moving party once the moving party has met its initial responsibility of
showing the absence of a triable issue of fact, and that the moving party is
entitled to summary judgment if the non-moving party fails to make a sufficient
showing on an essential element of the case); Fed.R.Civ.P. 56(e). As a
non-moving party opposing a motion for summary judgment which BAPCO supported
with affidavits, Donnelley could not simply rely on legal [*1485] conclusions
or evidence which would be inadmissible at trial [**82] in order to meet its
burden of coming forward with relevant and competent evidence. See Avirgan v.
Hull, 932 F.2d 1572, 1577 (11th Cir.1991).
In the district court, Donnelley failed to respond to the evidence in Wiggs's
affidavit showing substantial similarity in the arrangement of listings under
headings in the published directories. Contrary to Donnelley's assertions to the
en banc court, Donnelley also failed to present evidence to the district court
that the selection of headings in its published directories was substantially
smaller and different from those in the 1984 Yellow Pages. Compare Donnelley En
Banc Brief at p. 12 and BAPCO En Banc Brief at p. 3 (attaching as "Exhibit 2"
those portions of the record that Donnelley cites). Instead of responding to
BAPCO's evidence in the district court, Donnelley waited until January, 1993,
before moving to place the published directories in the record. See Donnelley En
Banc Reply Brief p. 22 n. 16. Donnelley also waited until its En Banc Reply
Brief before presenting a comparative analysis of the heading structure in the
published directories. See Donnelley En Banc Reply Brief, pp. 22-23 [**83] & n.
17. Stated simply, Donnelley waited too late to meet its burden of presenting
competent evidence to oppose BAPCO's motion for summary judgment. Because Wiggs
's affidavit represented the only evidence before the district court concerning
the substantial similarity of the published directories, I would affirm the
district court's conclusion that Donnelley substantially appropriated BAPCO's
original acts of selection and arrangement when publishing the 1985 Miami North
and 1985 Miami South directories. n9
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n9 Incredibly, the majority ignores the fact that Donnelley failed to meet
its burden of coming forward with relevant and competent evidence to rebut BAPCO
's affidavit evidence. In doing so, the majority departs from the settled rule
that a non-moving party may lose at the summary judgment stage based on its
failure to come forward with competent evidence showing a genuine issue of
material fact. See Four Parcels, 941 F.2d at 1438. As a replacement for the
established rules concerning summary judgment, the majority's reliance on its
original fact-finding in a visual comparison of pages from the published
directories, establishes a new and absurd rule that a non-moving party failing
to meet its burden in the district court may nonetheless win outright judgment
with evidence considered for the first time on appeal.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [**84]
In sum, the uncontroverted evidence before the district court shows that
Donnelley substantially appropriated BAPCO's original selection and arrangement
in the 1984 Yellow Pages with three separate acts of copying: (1) keying-in that
selection and arrangement into the computer database; (2) printing the sales
lead sheets from the data in the computer database; and (3) using the computer
database and the sales lead sheets to publish the Donnelley directories with a
substantially similar selection of headings and substantially similar
arrangement or grouping of listings under particular headings. Accordingly, I
would affirm the judgment of the district court granting summary judgment in
favor of BAPCO on all three claims that Donnelley infringed its compilation
copyright in the 1984 Yellow Pages. n10
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n10 In addition, for the reasons stated in the now vacated panel opinion,
Bellsouth, 933 F.2d at 960-61, I would affirm the district court's rejection of
Donnelley's "fair use" and "antitrust misuse" defenses.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [**85]
Because the majority reaches the opposite result based on an utter failure to
analyze the evidence presented to the district court under the controlling legal
principles announced in Feist, and also based on an unwarranted departure from
well-established rules limiting this court's review to arguments and evidence
presented in the district court, I must respectfully DISSENT.