United Telephone Co. of Missouri v. Johnson Pub. Co., Inc.

Decision Date31 August 1988
Docket NumberNos. 87-2481,87-2517,s. 87-2481
Citation855 F.2d 604
Parties, 1988 Copr.L.Dec. P 26,320, 8 U.S.P.Q.2d 1058 UNITED TELEPHONE COMPANY OF MISSOURI, Appellee/Cross-Appellant, v. JOHNSON PUBLISHING COMPANY, INC., Appellant/Cross-Appellee.
CourtU.S. Court of Appeals — Eighth Circuit

D.A.N. Chase, Overland Park, Kan., for appellant/cross-appellee.

Carter H. Kokjer, Kansas City, Mo., for appellee/cross-appellant.

Before WOLLMAN and BEAM, Circuit Judges, and RE, * Chief Judge.

RE, Chief Judge.

Plaintiff, United Telephone Company of Missouri (United Telephone), sued for damages and injunctive relief for the copyright infringement of its 1985 Jefferson City, Missouri telephone directory (Phone Book) by defendant, Johnson Publishing Company (Johnson), in its Jefferson City, Missouri, City Directory (City Directory). Johnson appeals from an order of the United States District Court for the Western District of Missouri, denying its motion for summary judgment, and granting plaintiff's motion for summary judgment. United Telephone cross-appeals from the district court's denial of its motion for reasonable attorneys' fees from Johnson.

The question presented on this appeal is whether the district court erred in holding that Johnson's use of the Phone Book, to obtain the names, addresses, and telephone numbers of new subscribers for United Telephone's telephone service, constitutes an infringement of United Telephone's copyright, regardless of Johnson's independent verification of the vast majority of this information.

Johnson contends that it did not infringe United Telephone's copyright in the 1985 Jefferson City Phone Book because: (1) it took no protected expression from United Telephone's Phone Book, or, alternatively, any protected material it did take was not of a sufficient quantity to constitute an infringement; (2) its use of United Telephone's Phone Book amounted to a "fair use" within the meaning of 17 U.S.C. Sec. 107 (1982); and (3) United Telephone misused its copyright to create a monopoly in the names of its subscribers, and the misuse is a defense to the charge of copyright infringement.

Since the district court committed no error in concluding that Johnson's 1986 City Directory was an infringement of United Telephone's copyright in its 1985 Phone Book, and that there is no valid defense to the infringement, we affirm the summary judgment in favor of United Telephone.

Pursuant to 17 U.S.C. Sec. 505 (1982), United Telephone sought to obtain reasonable attorneys' fees from Johnson. Since the district court did not abuse its discretion, the order is affirmed.

I. THE FACTS

United Telephone is a Missouri corporation which provides telephone service to Jefferson City, Missouri and its environs. As part of its service, and pursuant to regulations of the Missouri Public Service Commission, United Telephone annually publishes and distributes a Jefferson City area telephone directory. United Telephone's 1985 Phone Book, published in May 1985, includes a "white pages" section. The white pages consist of an alphabetical listing of the names of all telephone subscribers, except those customers desiring an unlisted number, together with the customer's address and phone number.

Johnson is a Colorado corporation in the business of publishing and selling "city directories" which include a white pages section. The white pages of the directories contain an alphabetical listing of area residents and businesses, with their addresses and telephone numbers. The city directory white pages also contain information about area residents and businesses which is not found in the white pages of United Telephone's phone books.

In June 1986, Johnson published two editions of its City Directory. A soft cover residential edition, which sold for $6, included a white pages section with the names, addresses, and telephone numbers of area residents, the names of their spouses, and the names and years of birth of their children. The white pages business listings contained a brief description of the type of business and the names of the principals. A hard cover business edition of the 1986 directory, which sold for $120, contained a white pages section with the same information found in the residential edition white pages. The business edition white pages also noted the occupations of listed residents and their spouses, and whether they owned their home.

Johnson first published a city directory for Jefferson City in 1972, after purchasing a list of area telephone service subscribers from the Mullin Kille Company. Mullin Kille had compiled the list through door-to-door canvassing of area residents. Johnson published annual city directories, and, until 1980, it would update its list of telephone service subscribers with door-to-door canvassing. Beginning in 1982, Johnson updated its directories by referring to United Telephone's phone books.

In order to produce the white pages of its 1986 City Directory, Johnson compared its 1985 City Directory white pages, in alphabetical order, with the white pages of United Telephone's 1985 Phone Book. From this comparison Johnson obtained the names, addresses, and telephone numbers of residents and businesses not included in its 1985 directory. Johnson added these listings to its 1985 white pages to create a provisional computer data base for its 1986 City Directory white pages. The listings copied from United Telephone's 1985 Phone book totaled approximately 5,000 in number and represented approximately 20 percent of the total listings in the 1985 Phone Book.

In an effort to update all material and obtain other necessary information, Johnson employees attempted to contact all entries in its data base. Of those entries acquired by reference to United Telephone's 1985 Phone Book, Johnson was successful in contacting all but 214. For the 214 entries not contacted, Johnson copied the name, address, and telephone number printed in United Telephone's 1985 Phone Book, and reprinted this information in its 1986 City Directory.

The Johnson white pages contain separate listings for all area residents over 18 years old, including residents who are not subscribers for telephone service, or are subscribers with unlisted telephone numbers. The Phone Book contains listings only for its telephone service subscribers, and any non-area residents or businesses that request a listing. While both directories serve the Jefferson City area, the Phone Book covers several towns not included in Johnson's. The methods used to alphabetize the white pages of the two directories differed slightly.

United Telephone offered to sell Johnson a license to use its 1985 Phone Book white pages listings. After the May publication of its 1985 Phone Book, United Telephone raised the price for a license to use its 1985 white pages listings from 10 cents to 49 cents per entry. These offers were conditioned on Johnson's purchase of United Telephone's entire white pages listing, including those entries in communities outside the scope of Johnson's City Directory. Johnson declined the offers and did not purchase the license.

After Johnson's publication of its 1986 City Directory, United Telephone filed this suit against Johnson for copyright infringement. The parties entered into a stipulation of facts, and made cross-motions for summary judgment.

The district court held that Johnson's "activity constitutes direct evidence of substantial copying, thereby making United's claim for copyright infringement a valid one and which * * * warrants the granting of summary judgment." United Tel. Co. v. Johnson Publishing Co., 671 F.Supp. 1514, 1522-23 (W.D.Mo.1987).

The district court denied Johnson's defense that its use of the 1985 Phone Book was a "fair use" within the meaning of 17 U.S.C. Sec. 107 (1982). The court held that Johnson's attempt "to gain a profit from the publication and distribution of its directory * * * does not fall within Sec. 107's meaning of 'fair use.' " Id. at 1523. The court dismissed Johnson's contention that United Telephone's alleged misuse of its copyright amounted to a defense to Johnson's infringement, by relying on the "line of cases which hold that antitrust defenses are inapplicable to copyright infringement cases." Id. at 1523 n. 3. Furthermore, the court, "in balancing the equities," held that United Telephone was not entitled to reasonable attorneys' fees. See id. at 1524. Johnson appeals from the decision granting United Telephone summary judgment on its copyright infringement claim, and United Telephone cross-appeals from the denial of its motion for reasonable attorneys' fees.

II. STANDARD OF REVIEW

On appellate review of a decision to grant summary judgment, the court applies the same standard applied by the district court. Trnka v. Elanco Prods. Co., 709 F.2d 1223, 1224-25 (8th Cir.1983). Summary judgment is granted if "there is no genuine issue as to any material fact and * * * the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). Moreover, an appellate court may affirm a summary judgment "regardless of an incorrect analysis if the same result may be reached on theories other than those employed by the trial court * * *." Kuehn v. Garcia, 608 F.2d 1143, 1146 (8th Cir.1979), cert. denied, 445 U.S. 943, 100 S.Ct. 1340, 63 L.Ed.2d 777 (1980). Since the facts have been stipulated, the question presented is whether United Telephone is entitled to judgment as a matter of law.

III. DISCUSSION
A. Infringement

The Constitution confers upon Congress the power "[t]o promote the Progress of Science and useful Arts by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." U.S. Const. art. 1, Sec. 8, cl. 8. This provision embodies the concept or judgment "that free expression is enriched by protecting the creations of authors from exploitation by others, and the...

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