Warren Pub., Inc. v. Microdos Data Corp., 93-8474

Citation115 F.3d 1509
Decision Date10 June 1997
Docket NumberNo. 93-8474,93-8474
Parties1997 Copr.L.Dec. P 27,667, 43 U.S.P.Q.2d 1065, 11 Fla. L. Weekly Fed. C 16 WARREN PUBLISHING, INC., Plaintiff, Counter-Defendant, Appellee, v. MICRODOS DATA CORP.; Robert Payne, Defendants, Counter-Claimants, Appellants.
CourtUnited States Courts of Appeals. United States Court of Appeals (11th Circuit)

Robert B. Kennedy, Carl M. Davis, II, Kennedy Davis & Kennedy, P.C., Atlanta, GA, for Defendants, Counter-Claimants, Appellants.

Joyce B. Klemmer, Smith Gambrell & Russell, Atlanta, GA, Arthur Scheiner, Holland & Knight, Washington, DC, Dennis Lane, Morrison & Hecker, Washington, DC, for Plaintiff, Counter-Defendant, Appellee.

Appeal from the United States District Court for the Northern District of Georgia.

Before HATCHETT, Chief Judge, TJOFLAT, ANDERSON, EDMONDSON, COX, BIRCH, DUBINA, BLACK, CARNES and BARKETT, Circuit Judges, and GODBOLD * and KRAVITCH **, Senior Circuit Judges.

BIRCH, Circuit Judge:

This is an appeal from the district court's entry of a preliminary injunction 1 enjoining a putative infringer from infringing the compilation copyright of a publisher of a cable television factbook. As a predicate for the injunction, the district court granted partial summary judgment for the copyright holder, finding that the copyright holder's system of selecting the names of communities under which to list the data in its factbook was sufficiently creative and original to warrant copyright protection. Based on Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991), as well as our application of Feist in BellSouth Advertising & Publishing Corp. v. Donnelley Information Publishing, Inc., 999 F.2d 1436 (11th Cir.1993) (en banc), 2 cert. denied, 510 U.S. 1101, 114 S.Ct. 943, 127 L.Ed.2d 232 (1994), we VACATE the injunction and REMAND for further proceedings.

I. BACKGROUND

Warren Publishing, Inc. ("Warren") compiles and publishes annually a printed directory called the Television & Cable Factbook ("Factbook"), which provides information on cable television systems throughout the United States. The Factbook contains two volumes, the "Station" volume and the "Cable and Services" volume. The focus of this case is the "Cable & Services" volume of the 1988 edition of the Factbook, and, in particular, the two sections of this volume entitled "Directory of Cable Systems" and "Group Ownership of Cable Systems in the United States." These sections are comprised of approximately 1,340 pages of factual data on 8,413 cable systems throughout the country and their owners.

The "Directory of Cable Systems" section contains extensive information on cable systems, including, inter alia, the name, address, and telephone number of the cable system operator, the number of subscribers, the channels offered, the price of service, and the types of equipment used. The entries in this section are arranged state by state in alphabetical order, and, within each state, all of the communities receiving cable television service are listed alphabetically. The "Group Ownership" section contains listings of selected information on "all persons or companies which have an interest in 2 or more systems or franchises." Factbook, Cable and Services Volume, at B-1301. The persons or entities listed in the group ownership section are known as multiple-system operators ("MSOs"), as contrasted with single-systems operators ("SSOs").

In the "Directory of Cable Systems" section, the factual data for each cable system is not printed under the name of each community that the cable system serves. The reason for this is that many communities are part of multiple-community cable systems, and it would be duplicative to list the same factual information under the individual community names for each community that comprises a multiple-community system. Therefore, a determination is made as to what community is the "principal" or "lead" (hereinafter "principal") community served by a particular cable system, and Warren prints the data only under the name of the principal community. Under the entries for the nonprincipal communities of a multiple-community cable system, there is a cross-reference to the principal community listing. 3 We note that, in many cases, a cable system is a single-community system, and thus there is only one possible principal community.

Microdos Data Corp. and Robert Payne ("Microdos") also market a compilation of facts about cable systems. Robert Payne is the principal officer and shareholder of Microdos. Microdos's compilation comes in the form of a computer software package called "Cable Access." The Cable Access program, like the Factbook, provides detailed information on both SSOs and MSOs. The district court described the format of Cable Access as follows:

The Cable Access software package is broken into three databases. The first database provides information on the individual cable systems. This database is referred to as "the system database." The second database provides information on multiple system operators and is simply referred to as "the MSO database." The third database is a historical database which provides selected information on the cable industry from 1965 to the present....

Defendant's Cable Access software package comes pre-sorted by state and city. The customer may rearrange the data in a format of its choosing. The customer may construct searches of the database's information on cable systems as required to fit its particular needs, as well as output the data to a hard copy in various formats, again to fit the specific needs of the customer.

R4-36-3.

There is no dispute that Warren's Factbook predates the Cable Access program. Warren has been publishing cable television information since 1948, whereas Microdos began marketing Cable Access in 1989. Shortly after Warren became aware of the existence of the Cable Access software, it notified Microdos that it believed that the Cable Access program infringed its copyright in the Factbook. 4 In 1989, Microdos ceased marketing the original version of Cable Access, and, after some delay, began marketing a second version of Cable Access. Subsequently, a third and fourth version of Cable Access were marketed.

In July of 1990, Warren filed suit against Microdos, alleging copyright infringement and unfair competition. 5 Warren alleged that all four versions of Cable Access infringed upon its compilation copyright in the 1988 Factbook. Microdos counterclaimed for defamation and trade disparagement, tortious interference with contractual relations, and violations of Section 2 of the Sherman Act, based on Warren's alleged attempt to monopolize. Warren contended that Microdos infringed its compilation copyright in the Factbook in three areas: (1) the communities covered/principal community system, (2) the data fields, and (3) the data field entries. Following discovery, Warren and Microdos each moved for partial summary judgment on these three copyright infringement issues. With respect to the data fields issue, the district court found that Microdos had not infringed Warren's data field format. 6 With respect to the data field entries issue, the district court found that these entries were uncopyrightable facts, and therefore Warren's "sweat of the brow" argument on this issue could not prevail in light of the Supreme Court's Feist decision. 7 Accordingly, the district court entered partial summary judgment for Microdos on these two issues.

The district court, however, reached a different conclusion on the communities covered issue. It found that the principal community system utilized by Warren in presenting the data on cable systems in its Factbook was "sufficiently creative and original to be copyrightable." R4-36-11 (footnote omitted). The district court then analyzed the selection of communities employed by Microdos and found it to be "substantially similar" to that of Warren. 8 Id. Based on this finding, and its conclusion that Microdos failed to prove that it obtained its information from a source independent of the Factbook, the district court denied Microdos's motion for summary judgment on the principal community system and granted Warren's cross-motion on that issue. 9 The district court subsequently denied Microdos's motion for reconsideration of the order and granted Warren's motion for a "permanent" injunction. 10 The court "enjoined [Microdos] from violating [Warren's] copyright of the Factbook through the use, copying, distribution or selling of any version of [Microdos's] Cable Access products." R6-42-4. Microdos appeals the interlocutory order granting the injunction. 11

II. DISCUSSION

Microdos argues that the district court improperly granted Warren's motion for an injunction based on an erroneous ruling of law. As a predicate for injunctive relief, the district court granted Warren's motion for partial summary judgment on the principal community system issue. Microdos contends that the district court erred, as a matter of law, in finding the principal community system protectable under copyright law.

A. Review of Relevant Statutory Provisions and Case Law

Because copyright law is principally statutory, we begin our analysis with a review of the pertinent statutory provisions. In this case, we are dealing with a compilation, which the Copyright Act of 1976 (the "Act") defines 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." 12 17 U.S.C. § 101 (emphasis added). Section 102 of the Act provides that "[c]opyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or...

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