BellSouth Adv. & Pub. v. Donnelley Inf. Pub.

• Decision Date: 27 October 1988
• Docket Number: No. 85-3233-CIV.,85-3233-CIV.
• Parties: BELLSOUTH ADVERTISING & PUBLISHING CORPORATION, Plaintiff-Counterdefendant, v. DONNELLEY INFORMATION PUBLISHING, INC., Defendant-Counterclaimant, v. BELLSOUTH CORPORATION and Southern Bell Telephone and Telegraph Company, Additional Counterdefendants.
• Court: U.S. District Court — Southern District of Florida

719 F. Supp. 1551

BELLSOUTH ADVERTISING & PUBLISHING CORPORATION, Plaintiff-Counterdefendant, v. DONNELLEY INFORMATION PUBLISHING, INC., Defendant-Counterclaimant, v. BELLSOUTH CORPORATION and Southern Bell Telephone and Telegraph Company, Additional Counterdefendants.

No. 85-3233-CIV.

United States District Court, S.D. Florida.

October 27, 1988.

Anthony B. Askew, Robert E. Richards, Stephen M. Schaetzel, Jones, Askew & Lunsford, Atlanta, Ga., Eric B. Meyers, Stephen B. Gillman, Shutts & Bowen, Miami, Florida, for BellSouth Advertising & Pub. Corp.

King & Spalding, Atlanta, Ga. and Shutts & Bowen, Miami, Fla., for BellSouth and Southern Bell Tel. and Tel. Co.

Fowler, White, Burnett, Hurley, Banick & Strickroot, P.A., Miami, Fla., for Donnelley Information Pub., Inc.

AMENDED MEMORANDUM OPINION

SCOTT, District Judge.

I. INTRODUCTION

THIS MATTER is before the Court on the parties' Motions and Cross-Motions for Summary Judgment. Plaintiff/Counter-Defendant BellSouth Advertising and Publishing Corporation's ("BAPCO") amended complaint against Defendant/Counterclaimant Donnelley Information Publishing, Inc. ("Donnelley") alleges copyright infringement, trademark infringement and unfair competition arising from Donnelley's publication and distribution of a classified advertising directory in South Florida. In its answer, Donnelly counterclaims against BAPCO, as well as Southern Bell Telephone and Telegraph Co. ("Southern Bell") and BellSouth Corporation ("BellSouth"), alleging that Counterdefendants illegally monopolized and attempted to monopolize the market for advertising directories in certain parts of Florida, in violation of Section 2 of the Sherman Act, 15 U.S.C. § 2, and Florida Statutes, § 542.19. After full and complete discovery, the voluminous record is replete with exhibits and depositions. The issues have been extensively briefed and are ripe for disposition.

II. FACTS AND PROCEDURAL POSTURE

In accordance with the "Plan of Reorganization and Divestiture" approved on August 5, 1983, by the United States District Court for the District of Columbia, American Telephone & Telegraph Company ("AT & T") was divided into seven regional companies. BellSouth is one of the seven regional companies and is the holding company for the stock of Southern Bell. Following the divestiture of AT & T, BellSouth created BAPCO as a wholly-owned subsidiary for the purpose of preparing, publishing and distributing telephone directories. See generally Western Union Tel. Co. v. F.C.C., 815 F.2d 1495 (D.C.Cir.1987); GTE Service Corp. v. F.C.C., 782 F.2d 263 (D.C. Cir.1986).

On December 30, 1983, BellSouth Advertising and Publishing Corporation ("BAPCO")¹ and Southern Bell entered into an agreement by which Southern Bell granted to BAPCO the sole right to publish a classified advertising directory for the greater Miami, Florida area.² Pursuant to this agreement, BAPCO published and distributed a classified advertising directory known as the "1984 Miami Yellow Pages".³ Southern Bell provided BAPCO with listing data for all new, changed and disconnected telephone subscribers, along with data for each foreign listing.⁴ Additionally, BAPCO owns a valid copyright in the 1984 Greater Miami classified telephone directory.⁵

Following publication of the 1984 Miami Yellow Pages, Donnelley began the promotion and sale of classified advertising in a competitive classified directory for the Greater Miami area (hereinafter the "Donnelley Directory"). On August 23, 1984, Mr. William Bak, then Executive Vice President of Reuben H. Donnelley Corporation,⁶ wrote to BAPCO requesting information about how Donnelley could obtain "listings" in connection with its own directory activities. Exhibit B to Mitchell Affidavit.

Following those discussions, Southern Bell entered into four business agreements with Donnelley for the publication and distribution of a competing classified advertising directory in the Miami area through which Southern Bell provided Donnelley with the name, address, and telephone number of its relevant business subscribers. This information is the same non-confidential business subscription information that Southern Bell provides to all similarly situated independent publishers.⁷

On October 2, 1985, BAPCO filed suit against Donnelley alleging three causes of action: (1) infringements of BAPCO's copyrights in the 1984 Miami Yellow Pages; (2) trademark infringement; and (3) unfair competition.⁸ BAPCO moved for a preliminary injunction on the copyright count, requesting that distribution of the Donnelley directories be prohibited. An evidentiary hearing was held in which substantial evidence was introduced. Donnelley neither disputed the validity of BAPCO's copyright registration for the 1984 Miami Yellow Pages nor denied obtaining listings and advertisements from the 1984 Yellow Pages in the preparation and publication of Donnelley's Miami North and Miami South classified telephone directories.

Donnelley's defense was essentially threefold: First, Donnelley alleged that BAPCO had purposely delayed filing the case until the eve of publication and, therefore, the alleged injury was not irreparable; second, Donnelley alleged unclean hands and antitrust violations by BAPCO, Southern Bell, and BellSouth; and third, the copyright laws did not prevent Donnelley from obtaining the listings and advertisements from BAPCO's copyrighted telephone directories.

The Court agreed with Donnelley's argument that "BAPCO's delay of over seven months in seeking injunctive relief was in conflict with its allegations of an urgent need to prevent irreparable injury."⁹ Accordingly, BAPCO failed to meet its burden of persuasion that it would suffer irreparable injury sufficient to warrant the granting of an injunction.¹⁰

Before Donnelley answered the original complaint, BAPCO amended its complaint, expanding the allegations of copyright infringement to include all BAPCO copyrighted classified telephone directories from which Donnelley had obtained listings and advertisements.¹¹ The amended complaint was filed November 7, 1985. Donnelley answered, naming BAPCO, Southern Bell, and BellSouth, as Counterdefendants and alleged: (1) unlawful monopolization; (2) unlawful attempt to monopolize; and (3) invalid trademark registrations.¹²

Following extensive discovery, the parties submitted voluminous motions for summary judgment — to wit:

(1) Donnelley moved for Summary Judgment on BAPCO's copyright claims.

(2) Donnelley moved for partial Summary Judgment on BAPCO's trademark claims (3) Donnelley moved for Summary Judgment seeking to cancel registration of the "Walking Fingers" logo;

(4) BAPCO moved for Summary Judgment on the copyright claims.

(5) BAPCO, BellSouth, and Southern Bell moved for Summary Judgment on Donnelley's antitrust counterclaims and defenses.

Oral argument was originally conducted on Friday, October 3, 1986. At the close of argument, the Court inquired as to whether discovery was complete. The parties indicated that "key" discovery needed to be taken. In view of these representations at oral argument, the Court allowed additional discovery. The parties were also granted leave to file supplemental memoranda and exhibits relating to their respective motions. In order to assist the Court in concluding this matter, the parties reargued their respective motions on May 22, 1987. Each motion as it relates to a substantive area of the law will be addressed independently.

III. LEGAL DISCUSSION

A. COPYRIGHT

BAPCO moves for summary judgment¹³ on count one of the amended complaint, arguing that Donnelley violated the copyright laws by reproducing the 1984 Miami Yellow Pages. As direct evidence of copying, BAPCO submits that Donnelley's own admissions, as well as the testimony of Donnelley's own employees, clearly establish that Donnelley actually copied name, address, telephone number and classified heading from the 1984 Miami Yellow Pages on to sales lead sheets and then into the Donnelley directories. As indirect evidence of mass copying, BAPCO argues that the 1984 Miami Yellow Pages were easily accessable to Donnelley, there being over 1,100,000 copies in circulation. Additionally, BAPCO asserts that the Donnelley sales lead sheets and the Donnelley directories are substantially similar to the 1984 Yellow Pages, relying mainly on the presence of "common errors" between the two publications.

In its Cross-Motion for Summary Judgment and Opposition to BAPCO's Motion for Summary Judgment, Donnelley's principal argument is that the names, addresses, and telephone numbers as they appear under yellow page headings in BAPCO's classified directories are not copyrightable subject matter. "Donnelley bases its claim of non-infringement on the contention that the particular material it has copied, because of both its nature and origin, is not protected by BAPCO's copyright." Concise Statement of Donnelley Information Publishing, Inc., Pursuant to Order of April 3, 1987, page 4.

To prevail on a claim of copyright infringement, a copyright owner must establish ownership of a valid copyright in the work and copying of that work by the defendant. Donald Frederick, Evans and Assoc., Inc. v. Continental Homes, Inc., 785 F.2d 897, 903 (11th Cir.1986); Southern Bell Tel. & Tel. v. Assoc. Tel. Directory Publishers, 756 F.2d 801, 810 (11th Cir. 1985) (citing Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821 (11th Cir.1982); Miller v. Universal City Studios, Inc., 650 F.2d 1365 (5th Cir.1981)). Further, the "mere use of information contained in a directory without a substantial copying of the format does not constitute infringement." Miller, 650 F.2d at 1369-70; New York Times Co. v. Roxbury Interface, Inc., 434 F.Supp. 217 (D.N.J.1977). Thus, there are three elements that must be established in order to show copyright infringement. These elements include:

(i) ownership of a valid copyright due to creation of an original work of

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