New York Times Co. v. Roxbury Data Interface, Inc.

• Decision Date: 03 May 1977
• Docket Number: Civ. A. No. 77-225.
• Parties: The NEW YORK TIMES COMPANY, Microfilming Corporation of America, Arno Press, Inc., and the New York Times Information Service, Inc., Plaintiffs, v. ROXBURY DATA INTERFACE, INC., Byron A. Falk, Jr., and Valerie R. Falk, Defendants.
• Court: U.S. District Court — District of New Jersey

434 F. Supp. 217

The NEW YORK TIMES COMPANY, Microfilming Corporation of America, Arno Press, Inc., and the New York Times Information Service, Inc., Plaintiffs, v. ROXBURY DATA INTERFACE, INC., Byron A. Falk, Jr., and Valerie R. Falk, Defendants.

Civ. A. No. 77-225.

United States District Court, D. New Jersey.

May 3, 1977.

Lankenau, Kovner & Bickford by John C. Lankenau, Robert C. Bickford, New York City, Schwartz, Steinberg, Tobia & Stanziale by Janet J. Burak, East Orange, N.J., for plaintiffs.

Cowan, Liebowitz & Latman by Carol Faye Simkin, New York City, Edward R. Weingram, Newark, N.J., for defendants.

OPINION

MEANOR, District Judge.

Plaintiffs, holders of certain copyrights, move under Fed.R.Civ.P. 65(a) for a preliminary injunction pursuant to § 112 of the Copyright Act of 1909, 17 U.S.C. § 112 (1970), to halt alleged infringement of their copyrights. The suit presents an interesting and seemingly novel question regarding the extent of the proprietary rights inhering in a copyright. The issue is whether a copyrighted work may be indexed by an outsider without the permission of the holders of the copyrights to the original work.

Plaintiffs publish the New York Times Index annually. As indicated by its name, the Times Index essentially correlates data which has appeared in The New York Times in a given year with citations to the pages and columns of The New York Times on which the data appears. The data is denominated by various headings in the Times Index. These headings include the names of people, places, institutions, events, and the general headings which cover broad subject matters, e. g., "fires." The Times Index has been published annually, with a few hiatuses, since 1863, and covers the years from 1851 to the present.¹

In addition to correlating data with page citations to The New York Times, the Times Index contains abstracts of certain Times articles. The Times Index is a publication of substantial size. For example, the 1972 Index consists of over 2500 small-margined pages of fine print. The external dimensions of the volume are 12 inches by 9½ inches by 3½ inches. Similarly, volume 1 of the two-volume 1933 Index contains almost 1500 pages of closely packed fine print. The external dimensions of the first volume of the 1933 Index are 10 inches by 7 inches by 2¾ inches.

In addition to their annual index, plaintiffs publish four cumulative indexes to The New York Times. The New York Times Obituaries Index, published in 1970, lists the names of persons whose obituary has appeared in The New York Times between 1858 and 1968. The New York Times Book Review Index is a cumulative index to material published in the weekly New York Times Book Review since 1896. The Book Review Index contains the names of the authors of reviewed books and of the reviewers. The New York Times Film Review Index is a cumulative index to film reviews published in The New York Times since 1913. This index contains the names of many directors, actors, screenwriters, producers and others involved in filmmaking. The New York Times Theater Review Index is a multivolume, cumulative index to theater reviews published in The New York Times since 1870. The Theater Review Index contains the names of playwrights, actors, directors, producers and others associated with the stage.

Plaintiffs also operate a computer data bank which consists of a subject index to The New York Times from 1969 to the present. Plaintiffs state that access to the data in the computer is obtained through certain "key words," of which approximately 350,000 are personal names. Plaintiffs sell subscriptions to the computer data bank and collect a fee based on use.

Plaintiffs allege that they hold valid copyrights on all of the annual Times Indexes and the cumulative indexes, and on the contents of the computer data bank. Plaintiffs assert that the Times Indexes are protected both as books and as compilations. See 17 U.S.C. §§ 5(a) & 7 (1970). Although defendants have indicated that they may challenge the validity of at least some of these copyrights, the court will assume the validity of these copyrights for the purposes of this motion.

Defendants are in the process of publishing a 22-volume personal name index to the annual New York Times Index. Two of the 22 volumes have been published, covering names beginning with the letter "A" through "Blo." Defendants compiled their index by perusing all of the annual New York Times Indexes covering the years 1851 to 1974 and culling every personal name that appeared as a heading. The culled names appear in defendants' index in alphabetical order. After each name appears citations to pages of the New York Times Index on which the name appears. Some names are followed by the year of death, certain titles held by the person, and years of birth and death; most, if not all, of this information was taken from the Times Index. Physically, each of the first two volumes of the set is approximately ten inches long, seven inches wide, and an inch thick. Each volume is covered with brown cloth and has gold lettering on the front and binding. The title of defendants' index, as printed on the cover, reads, "PERSONAL/NAME INDEX/TO `THE NEW YORK TIMES INDEX'/1851-1974." The title is divided into four lines, as indicated by the slashes above. The words "PERSONAL NAME INDEX" appear in letters 3/8 of an inch high; "TO `THE NEW YORK TIMES INDEX'" is written in 3/16 inch letters; and the years appear in 3/32 inch type. Approximately 4¾ inches below the title on the cover of all but the first volume will appear the following phrase in 1/8 inch gold lettering: "AN INDEPENDENT WORK NOT PUBLISHED OR APPROVED BY THE NEW YORK TIMES." On the binding, an abbreviated title appears: PERSONAL/NAME/INDEX/1851/-/1974. The binding also contains the volume number, an indication of the names appearing in the volume, and the logotype of Roxbury Data Interface, Inc.

Defendants compiled the first volume of their index in the following manner. Defendants hired several people to peruse each volume of the Times Index for the years 1851 to 1974, and to extract every personal name beginning with the letter "A." In addition to the name itself, the employees were instructed to copy any pseudonyms, nicknames, titles, years of birth and death, and to note the page and year of the Times Index on which the name appeared. Each extract was recorded on a three by five inch card. Defendants state that because the Times Index does not always list as a separate heading certain personal names which appear under certain subject matter headings, e. g., murders, defendants' employees were instructed to peruse certain subject matter headings for names beginning with the letter "A," as well as the "A" section of each Times Index. Defendants then sorted into alphabetical order the names taken from each Times Index. The resulting 120 stacks of cards then were sorted into five alphabetized stacks, which finally were sorted by the two named authors into the lists that were published. During each of these sortings, defendants made some effort to standardize variant spellings of names where no confusion would result, list separately different people with the same names, and consolidate listings of single individuals appearing under different names. The extent of these efforts is disputed and unclear; it is clear that defendants' efforts failed in a number of cases and an appropriate warning to users appears in the Introduction to the second volume. Defendants also transformed the personal names which appear in all capital letters in the Times Indexes to capital and small letters in their index. The first two volumes contain approximately 240,000 names. The complete set is expected to list over 3,000,000 names. Editorial costs for compilation of the entire set will be $213,000.00, according to defendants' projection. This projection does not include the cost of typesetting and publishing the index. Defendants plan to sell the 22 volumes at a price of $600.00 to $650.00 per set.

Plaintiffs contend that the copying of these names constitutes a prima facie case of copyright infringement, entitling plaintiffs to a preliminary injunction. Defendants point out that it would be impossible for them to publish a personal name index to the New York Times Index without copying the names from the Times Index. In order to obtain a preliminary injunction, plaintiffs must show "a strong likelihood" of prevailing on the merits. Kontes Glass Co. v. Lab Glass, Inc., 373 F.2d 319, 321 (3d Cir. 1967). While the general rule in alleged infringement of creative works seems to presume irreparable harm from a copyright holder's showing of a clear probability of success on the merits, see American Metropolitan Enterprises, Inc. v. Warner Brothers Records, Inc., 389 F.2d 903, 905 (2d Cir. 1968), the most recent Third Circuit opinion indicates that plaintiffs may be required to make some showing of irreparable harm. Kontes Glass Co., supra, at 320.

The primary function of the Times Index is the correlation of data with citations to the pages and columns of The New York Times on which the data appears. This correlation constitutes the substance of plaintiffs' copyrights. See Kane v. Pennsylvania Broadcasting Co., 73 F.Supp. 307, 307 (E.D.Pa.1947). Cf. Affiliated Hospital Products, Inc. v. Merdel Game Mfg. Co., 513 F.2d 1183, 1188 (2d Cir. 1975) (copyright on rule book only protects arrangement of rules); Benny v. Loew's Inc., 239 F.2d 532, 536 (9th Cir. 1956), aff'd by an equally divided court, 356 U.S. 43, 78 S.Ct. 667, 2 L.Ed.2d 583 (1958) (copyright on screenplay protects arrangement of events); Triangle Publications, Inc. v. Sports Eye, Inc., 415 F.Supp. 682, 686 (E.D.Pa.1976) (only form for expressing horse racing data is copyrightable). If defendants had copied both the personal names and the correlated citations to the pages of The New York Times from the Times Index, plaintiffs would...