Rand McNally & Co. v. Fleet Management Systems

• Decision Date: 31 December 1983
• Docket Number: No. 80 C 4499.,80 C 4499.
• Citation: 591 F. Supp. 726
• Court: U.S. District Court — Northern District of Illinois
• Parties: RAND McNALLY & COMPANY, Plaintiff, v. FLEET MANAGEMENT SYSTEMS, INC. d/b/a Logistics Systems, Defendant.

591 F. Supp. 726

RAND McNALLY & COMPANY, Plaintiff, v. FLEET MANAGEMENT SYSTEMS, INC. d/b/a Logistics Systems, Defendant.

No. 80 C 4499.

United States District Court, N.D. Illinois, E.D.

December 31, 1983.

COPYRIGHT MATERIAL OMITTED

Daniel W. Vittum, Jr., Robert G. Krupka, David L. Witcoff, Kirkland & Ellis, Chicago, Ill., for plaintiff.

David C. Hilliard, Pattishall, McAuliffe & Hofstetter, Chicago, Ill., Richard M. Zinner, Friedman & Atherton, Boston, Mass., for defendant.

MEMORANDUM OPINION AND ORDER

GETZENDANNER, District Judge:

This action under the Copyright Act of 1976, 17 U.S.C. § 101, et seq., is before the court on the cross motions for summary judgment of plaintiff Rand McNally & Company ("Rand McNally") and of defendant Fleet Management Systems, Inc. d/b/a Logistics Systems ("Logistics Systems"). Since the motions address many of the same issues, they will be disposed of in this one memorandum.

In the first count of Rand McNally's two-count First Supplemental Complaint, Rand McNally claims to have authored and compiled a book containing maps and mileage data entitled the Standard Highway Mileage Guide ("Mileage Guide").¹ Rand McNally claims that the Mileage Guide contains information wholly original to it, authored and compiled by it at great expense, and distributed by it directly and through the private association, the Household Goods Carriers' Bureau ("HGCB"). Rand McNally asserts that it has complied with the provisions of the Copyright Act of 1976, 17 U.S.C. § 101, et seq., and of the Copyright Act of 1909 in securing copyright protection of the 1978 edition of the Mileage Guide ("Mileage Guide 1978") and "earlier editions." (First Supplemental Complaint ¶ 5.) Rand McNally claims that the Mileage Guide 1978 received a Certificate of Copyright Registration from the Register of Copyrights, dated March 29, 1978, with registration number TX 31-469. In publishing the Mileage Guide 1978, Rand McNally allegedly complied with the provisions of the Copyright Act of 1976 and all other applicable copyright laws.

Rand McNally claims to be the sole owner of all rights, title, interest, and copyright in and to the Mileage Guide 1978 "and earlier editions" of the Mileage Guide. (First Supplemental Complaint ¶ 7.) Logistics Systems allegedly infringed these copyrights by copying, reproducing, publishing, and placing on the market, under the name "Compu.Guide," substantial and important portions of "at least the 1978 Mileage Guide." (Id. at ¶ 8.) After notification by Rand McNally that it had infringed at least the 1978 copyright, Logistics Systems allegedly continued its infringement, causing Rand McNally to suffer irreparable harm.

Count II alleges in addition that Rand McNally has recently published the 1982 edition of the Mileage Guide ("Mileage Guide 1982"). With respect to Mileage Guide 1982, Rand McNally claims to have complied with all applicable laws governing copyrights and to have received from the Register of Copyrights a Certificate of Registration dated December 29, 1982, registration number TX 1-021-076. Mileage Guide 1982 was allegedly published with proper notice and authority as prescribed by the governing copyright laws. Rand McNally claims to be the sole owner and proprietor of the rights, title, interest, and copyright in and to Mileage Guide 1982. Logistics Systems is allegedly infringing this latest copyright by utilizing in its "Compu.Guide" important and substantial portions of Mileage Guide 1982. This infringement has allegedly continued, despite Rand McNally's notice to Logistics Systems of such infringement. Logistics Systems' conduct allegedly has caused and continues to cause Rand McNally irreparable harm. Rand McNally has attached copies of the Certificates of Registration of the 1973, 1978, and 1982 editions of the Mileage Guide to its motion for summary judgment. Count III contains a state claim of unfair competition, before the court on pendent jurisdiction.

As relief for the alleged unlawful behavior of Logistics Systems, as stated in Counts I-III, Rand McNally seeks a preliminary and permanent injunction, an accounting for profits and damages as provided for under "the Copyright Law," (First Supplemental Complaint ¶ 7), punitive damages, deliverance of copies of and portions of "any edition of" the Mileage Guide in Logistics Systems' possession, (id.), and costs and attorneys' fees.

I. Logistics Systems' Motion for Summary Judgment

Logistics Systems argues first that summary judgment in its favor is in order as Rand McNally has no valid copyright in the Mileage Guide as a matter of law. Logistics Systems points out that the Mileage Guide is an Interstate Commerce Commission ("ICC") tariff that, as such, has the force and effect of law. Logistics Systems contends that the Mileage Guide may not therefore be validly copyrighted as is the case with judicial opinions and statutes. It asks for judgment on the pleadings. Count III, Logistics Systems continues, must also be dismissed as preempted by the federal copyright law, 17 U.S.C. § 301(a). Logistics Systems contends that as Count III merely repeats the claims of Counts I and II, it clearly falls within the proscriptions of 17 U.S.C. § 301(a).

Rand McNally counters that its filing of the Mileage Guide with the ICC in no way affects its valid copyrights, as tariffs are not equivalent to judicial opinions and statutes. In addition, use by the federal government of copyrighted privately created works does not cause a forfeiture of copyright protection. Additionally, Rand McNally argues that the state claim in Count III steers clear of preemption by the federal statute.

Rand McNally's Motion for Summary Judgment

Rand McNally argues that because the undisputed facts show that Logistics Systems extensively copied the 1978 and 1982 editions of the Mileage Guide and because it owns a copyright in those editions, summary judgment should be granted it in order to remedy and halt Logistics Systems' infringement. Rand McNally asserts that its copyrights are valid as to the maps and the mileage and other data contained in the Mileage Guide. Rand McNally further argues that Logistics Systems' reformatting of the material, from book to computerized data bank form, does not legitimize its infringement. Finally, Rand McNally argues that the Mileage Guide is unlike statutes and judicial opinions and is therefore copyrightable.

Responding to this motion, Logistics Systems counters that the Mileage Guide, as a derivative work, is comprised of materials original to its own author and to other, unrelated authors. Rand McNally's failure to distinguish between these materials and to highlight what among them are subject to copyright protection, bars summary judgment at this point. Logistics Systems further contends that an issue of fact exists over whether Rand McNally is the owner of the copyrights in the Mileage Guide.

Contending that only the maps in the Mileage Guide are copyrightable, Logistics Systems claims the mileages are not copyrightable and hence in the public domain. In any case, Logistics Systems points out that an issue of fact exists over whether it is licensed to use the data in the Mileage Guide. Finally, Logistics Systems claims Rand McNally's Certificates of Registration are invalid as containing misstatements, and that Rand McNally's delay in bringing suit raises factual disputes concerning the defenses of laches and estoppel.

II. MAY RAND McNALLY COPYRIGHT THE MILEAGE GUIDE DATA

A. COMPILATION OF FACTS.

The Mileage Guide contains two different types of matter: maps and mileage and other data. Rand McNally alleges that Logistics Systems infringed its copyright in the 1978 and 1982 editions of the Mileage Guide by copying "substantial portions" of these works. However, in so alleging, Rand McNally does not differentiate between the maps and the data. Rand McNally argues in its memoranda that both maps and factual compilations are copyrightable, charging Logistics Systems with infringement of both.

The evidence before the court indicates that Rand McNally is complaining of infringement only of mileage and other data, whether derived from the Mileage Guide's maps or mileage tables. The Mileage Guide maps contain mileages marked on the maps, designating the mileages of "Black Mileage Segments" and "Red Mileage Segments." (Winterfeld Aff. ¶ 4.) The data tables of the Mileage Guide contain thousands of mileages between so-called "Keypoint" cities. Id. Both map and table data were copied by Logistics Systems. (E.g., Answer to Interrogatory No. 2(b)(ii); 1982 Shapiro Tr. 65, 80, 126; 1983 Rinehart Tr. 12-13.) Other information from the maps, for example, highway, city, and county names, was also copied by Logistics Systems. (E.g., Answer to Interrogatory No. 5(B).) Rand McNally has not presented evidence that Logistics Systems is reproducing actual maps created by Rand McNally. The Compu.Guide product is a computerized mileage system, the data base of which contains bare elementary mileages selected and/or calculated from raw mileage figures found in the Mileage Guide. (Shapiro Aff. ¶ 4.)

Both parties have no quarrel with the proposition that a map may be copyrightable. The copying of maps is not at issue in this action. Rather, Rand McNally asserts that the data contained in its Mileage Guide maps and tables, most importantly the mileage data, is subject to copyright protection and was in fact copyrighted when Rand McNally obtained its Certificates of Registration for certain editions of the Mileage Guide. Correctly pointing out that a copyright in a derivative or collective work does not prove that the protection extends to the entire work, 17 U.S.C. § 103, Logistics Systems argues that the data it derived from the maps and tables of the Mileage Guide is not copyrightable.

Rand McNally's Mileage Guide, consisting of maps and mileage tables, is a "compilation" as that term is defined by the Copyright Act....