TransWestern Pub. Co. LP v. Multimedia Marketing Associates, Inc., 96-6371

• Decision Date: 08 January 1998
• Docket Number: No. 96-6371,96-6371
• Citation: 133 F.3d 773
• Parties: 1998 Copr.L.Dec. P 27,722, 45 U.S.P.Q.2d 1592, 98 CJ C.A.R. 89 TRANSWESTERN PUBLISHING COMPANY LP, Plaintiff-Appellant, v. MULTIMEDIA MARKETING ASSOCIATES, INC; Multi-vest, a partnership; Robert Dupriest; Larry Wibben; Dennis Hoff; Joel Alday; Robert Holmes; Mallie Norton; Tom Clark; Tom Raby; Robert Boone; Shane Houston; Vernoise Andrews; Don Lightner; J. Courtney Egger; Jeff Allen; Multi Directories L.L.C., Defendants-Appellees.
• Court: U.S. Court of Appeals — Tenth Circuit

Page 773

133 F.3d 773

1998 Copr.L.Dec. P 27,722, 45 U.S.P.Q.2d

1592, 98 CJ C.A.R. 89

TRANSWESTERN PUBLISHING COMPANY LP, Plaintiff-Appellant, v. MULTIMEDIA MARKETING ASSOCIATES, INC; Multi-vest, a partnership; Robert Dupriest; Larry Wibben; Dennis Hoff Joel Alday; Robert Holmes; Mallie Norton; Tom Clark; Tom Raby; Robert Boone; Shane Houston; Vernoise Andrews; Don Lightner; J. Courtney Egger; Jeff Allen; Multi Directories L.L.C., Defendants-Appellees.

No. 96-6371.

United States Court of Appeals Tenth Circuit.

Jan. 8, 1998.

James Minor Bailey, III, Ponca City, Oklahoma (Jerry J. Dunlap, II, Oklahoma City, Oklahoma, with him on the briefs) for Plaintiff-Appellant.

William S. Dorman of Dorman & Gilbert, Tulsa, Oklahoma (Mark Pordos of Eagleton & Nicholson, Oklahoma City, Oklahoma, with him on the brief) for Defendants-Appellees.

Before BRISCOE, LOGAN, and LUCERO, Circuit Judges.

LOGAN, Circuit Judge.

Plaintiff TransWestern Publishing Company LP appeals the district court's judgment denying a permanent injunction in plaintiff's copyright infringement action against defendants Multimedia Marketing Associates, Inc.; Multi-Vest, a partnership; Multi Directories, L.L.C. and thirteen individuals (collectively "defendants"). The case stems from defendants' publication of a combined white and yellow pages telephone directory containing advertisements resembling those in plaintiff's directory. The appeal requires us to consider the law enunciated in Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991), involving white pages factual information, in the context of directories containing yellow pages advertising.

I

In 1995, plaintiff published a combined white and yellow pages "Ponca City Area" telephone directory which included listings for Ponca City and seventeen nearby towns and white and yellow pages advertisements. Account executives solicited advertisements and prepared ad layout sheets with customer input. Although they did not create original artwork, the account executives arranged information so that it was "pleasing to the eye." I App. 223-24. Plaintiff copyrighted its directory but not the individual ads.

Defendants thereafter published the "1996 Ponca City Community Directory." This directory contained listings for only eight towns, as well as white and yellow pages advertisements. A number of these advertisements were very comparable to those in the TransWestern directory. The infringement claim alleges defendants copied advertisements from plaintiff's directory.

Plaintiff obtained a preliminary injunction preventing the distribution or display of defendants' directory. At the permanent injunction hearing plaintiff introduced a single witness and several exhibits in its case in chief. The district court granted defendants' motion for judgment as a matter of law and made specific fact findings. The court noted likenesses such as their use of front and back cover advertising, comparable introductory information, and advertisements from some of the same businesses. The court then held that "business card" ads and those incorporating the advertisers' own logos or slogans were not original to plaintiff and thus not copyrightable. The court found that other ads were not substantially similar because of different type styles, sizes and shapes of the ads, and the arrangement of information.

II

We turn now to whether plaintiff established a case of copyright infringement. The district court granted defendants' motion for judgment as a matter of law after a permanent injunction hearing at which plaintiff presented its evidence in support of its claim of copyright infringement. Thus, the court made its ruling under Fed.R.Civ.P. 50(a) or 52(c). See Advisory Committee Notes to 1991 amendments (noting Rule 52(c) "parallels the revised Rule 50(a)"). We review the court's findings of fact under a clearly erroneous standard. Id. Findings of fact are clearly erroneous when they are unsupported in the record, or if after our review of the record we have "the definite and firm conviction that a mistake has been made." Sanchez v. State of Colorado, 97 F.3d 1303, 1308-09 (10th Cir.1996) (quotations and citations omitted). We review de novo the district court's interpretation of the applicable law. Mitchell v. Maynard, 80 F.3d 1433, 1438 (10th Cir.1996).

To establish copyright infringement plaintiff must prove (1) ownership of a valid copyright and (2) "copying of constituent elements of the work that are original." Feist, 499 U.S. at 361, 111 S.Ct. at 1296 (white page listing information in public utility directory not copyrightable). Defendants do not seriously contest that plaintiff has a valid copyright on its directory. ¹

The second element requires proof that defendants copied plaintiff's work and that the elements copied were protected. Country Kids 'N City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1284 (10th Cir.1996). Although the record does not establish that defendants copied plaintiff's publication, copying may be shown by "establishing that Defendants had access to the copyrighted work and that there are probative similarities between the copyrighted material and the allegedly copied material." Id. Defendants did not dispute their access. Although they deny appropriating component elements of plaintiff's publication, strong similarities exist between some of plaintiff's and defendants' ads. We thus examine the nature of plaintiff's directory and the scope of protection available to it.

Plaintiff's directory is a compilation. The certificate of registration for 1995 treats it as a "derivative work or compilation" and states it is a "Revised compilation in yellow pages." II R. 236. To be copyrightable, a compilation must be "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; Feist, 499 U.S. at 357, 111 S.Ct. at 1293 (explaining tripartite structure of statute). ² The directory is, at least primarily, a compilation of facts. A factual compilation is copyrightable but the facts themselves are not. Id. at 345, 111 S.Ct. at 1287. In Feist, the Supreme Court explained the difference between facts and copyrightable compilations: a compilation of facts or preexisting data is only protectible insofar as it features original selection, arrangement or coordination of facts as they appear in the "work as a whole." Id. at 356, 358, 111 S.Ct. at 1293, 1294; 17 U.S.C. § 101.

The protection for a copyrighted compilation 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. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership or subsistence of, any copyright protection in the preexisting material.

17 U.S.C. § 103(b) (emphasis added). "The mere fact that a work is copyrighted does not mean that every element of the work may be protected." Feist, 499 U.S. at 348, 111 S.Ct. at 1289. Determining "whether an infringement of a compilation copyright has occurred is particularly difficult where less than the entire work is copied," BellSouth Advertising & Publ'g Corp. v. Donnelley Information Publ'g, Inc., 999 F.2d 1436, 1438 (11th Cir.1993) (en banc), especially when a competitor can take "the bulk of the factual material from a preexisting compilation without infringement." Id. at 1445. The protection available for a compilation is "thin." Feist, 499 U.S. at 349, 111 S.Ct. at 1289; see also BellSouth, 999 F.2d at 1439 (applying Feist and concluding that defendant did not appropriate "original elements" of BellSouth directory "as a whole" by preparing data base and sales leads based upon listing information and units of advertising appearing in preexisting directory). The focus is on "the selection, coordination, or arrangement of listings in the directory [which must be] sufficiently original or creative [that] the directory will be entitled to a copyright." Key Publications, Inc. v. Chinatown Today Publ'g Enters., Inc., 945 F.2d 509, 513, 516 (2d Cir.1991) (recognizing copyrightability of specialty directory but concluding no infringement by smaller competing publication that utilized "significantly different principles of [listing] selection"). See also Feist, 499 U.S. at 345-47, 111 S.Ct. at 1287-89.

Although a compilation gains copyright protection with only minimal creativity in the selection and arrangement of facts, Feist's statement that the copyright is "thin" has implications when the holder sues an alleged infringer. "It would seem to follow analytically that more similarity is required when less protectible matter is at issue. Thus, if substantial similarity is the normal measure required to demonstrate infringement, 'supersubstantial' similarity must pertain when dealing with 'thin' works." 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright, § 13.03[A] at 13-28 (1997); see also Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1439 (9th Cir.1994) ("When the range of protectible and unauthorized expression is narrow, the appropriate standard for illicit copying is virtual identity."), cert. denied, 513 U.S. 1184, 115 S.Ct. 1176, 130 L.Ed.2d 1129 (1995); Jane C. Ginsburg, No "Sweat"? Copyright and Other Protection of Works of Information After Feist v. Rural Telephone, 92 Colum. L.Rev. 338, 349 (1992) (" 'Even if the compilation is deemed original, what kind of copying will be held to infringe it?' The answer [after Feist ] appears to be: 'Virtually none, short of extensive verbatim copying.' "). Further, because the copyrightability of a factual compilation depends upon the originality in selection, coordination or arrangement of the facts "as a whole" wor...