Nester's Map & Guide Corp. v. Hagstrom Map Co.

• Citation: 796 F. Supp. 729
• Decision Date: 30 June 1992
• Docket Number: No. 90 CV 1086.,90 CV 1086.
• Parties: NESTER'S MAP & GUIDE CORP., Plaintiff, v. HAGSTROM MAP COMPANY, Defendant.
• Court: U.S. District Court — Eastern District of New York

796 F. Supp. 729

NESTER'S MAP & GUIDE CORP., Plaintiff, v. HAGSTROM MAP COMPANY, Defendant.

No. 90 CV 1086.

United States District Court, E.D. New York.

June 30, 1992.

Jacobson & Colfin, P.C. (Jefferey E. Jacobson, of counsel), New York City, for plaintiff.

Walter, Conston, Alexander & Green, P.C. (David B. Wolf, of counsel), New York City, for defendant.

MEMORANDUM AND ORDER

NICKERSON, District Judge:

Nester's Map & Guide Corporation (Nester), a New York Corporation, which sells and publishes a New York City taxi driver's guide entitled Official New York Taxi Driver's Guide (Nester's guide), brought this copyright infringement action against Hagstrom Map Company, Inc. (Hagstrom), a Delaware corporation with its principal place of business in New York, which publishes and distributes New York City Taxi & Limousine Drivers Guide (Hagstrom's guide).

Nester alleges that Hagstrom violated the Copyright Act of 1976, 17 U.S.C. § 101, et seq. (1977 & Supp.1992), by publishing a taxi guide unlawfully copying copyrighted material in Nester's taxi guide. The complaint also asserts pendent jurisdiction, pursuant to 28 U.S.C. § 1338(b), of three state law claims, based on substantially the same facts, for unfair competition, unfair trade practices, and state trademark infringement.

In its amended answer and counterclaim Hagstrom asserts four affirmative defenses, stating that (1) the complaint fails to state a claim, (2) Nester's guide contains large amounts of unoriginal material not copyrightable and comprising similar material in Hagstrom's guide, (3) the matter in Hagstrom's guide similar or identical to that in Nester's guide constitutes "fair use", and (4) Nester's state law claims are preempted by § 301 of the Copyright Act. Hagstrom also asserts a counterclaim, saying that Nester's use of the word "official" in the title of its taxi guide is false or misleading and prohibited by Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and injurious to the goodwill enjoyed by Hagstrom's guide.

Nester seeks (a) a permanent injunction enjoining Hagstrom from selling or otherwise distributing its guide, (b) damages, (c) impoundment of all promotional material and copies of Hagstrom's guide, and (d) costs and attorneys' fees. Hagstrom seeks (a) dismissal of the complaint, (b) preliminary and permanent injunctions enjoining Nester from using the word "official" in its guide, and (c) costs and attorneys' fees.

In a March 19, 1991 Memorandum and Order, familiarity with which is assumed, this court granted summary judgment on Hagstrom's counterclaim under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and permanently enjoined Nester from using the word "official" in the title of its guide. Nester's Map & Guide Corp. v. Hagstrom Map Co., 760 F.Supp. 36 (E.D.N.Y.1991).

In their present motions both parties move for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure. Nester moves for summary judgment on the issue of liability for copyright infringement, and Hagstrom moves to dismiss the complaint.

I.

Nester began publishing and selling its Official New York Taxi Driver's Guide in 1978, and has since published seven editions through 1988. The guide contains maps, information on mileage and taxi rates, points of interest such as restaurants, museums, nightclubs and theatres, public services such as hospitals, police precincts, cemeteries, and churches, as well as tables of addresses containing important streets and building numbers. As part of this listing of street and building addresses, Nester includes "obscure and erroneous" listings which do not "substantially affect the accuracy" of its guide but which serve to detect copying by others.

Nester claims that between 1978 and 1988 its guide was the only taxi guide for New York City published in New York. During this time Hagstrom bought many copies of Nester's guide. In 1988 Hagstrom began publishing its own guide, entitled New York City Taxi & Limousine Drivers Guide. Hagstrom's guide gives information similar to Nester's, as well as major commercial and residential buildings, various terminals, taxi inspection stations and cash machines, and color maps. For purposes of this motion Hagstrom concedes that material in its street address section consists of material copied from Nester's Guide.

II.

Nester claims that Hagstrom violated its copyright by copying the numbers and sequences of many street and address listings, arguing that researching, selecting, and arranging these listings represent the creative and original work of Nester's president, a Lewis J. Nesterman. Nester also claims that Hagstrom copied numerous automobile directions and mileage rates for out-of-town fares, basing the fares upon approximate distances slightly and knowingly inaccurate.

Hagstrom says that it copied facts or information "represented as facts", and that these "facts" are not copyrightable. Hagstrom also says that under the doctrine of copyright estoppel Nester's "false facts" are not copyrightable and do not deserve any greater protection than the true facts in Nester's guide.

While facts of whatever kind — scientific, historical, biographical, and news of the day — are not copyrightable, 17 U.S.C. § 102(b), factual compilations may be. 17 U.S.C. §§ 102, 103 (1977 & Supp.1992). Feist Publications, Inc. v. Rural Telephone Service Co., ___ U.S. ___, 111 S.Ct. 1282, 1288-89, 113 L.Ed.2d 358 (1991).

To be copyrightable such compilations must possess some originality. Feist 111 S.Ct. at 1289. Section 103 requires that compilations have three elements in order to qualify as original:

(1) the collection and assembly of preexisting material, facts, or data; (2) the selection, coordination, or arrangement of those materials; and (3) the creation, by virtue of the particular selection, coordination, or arrangement, of an "original" work of authorship.

Id. at 1293.

The first element merely describes the nature of a compilation. The street address listings in Nester's guide is an example of such a collection of facts. The third element requires that the compiler use some minimal level of creativity. See id. at 1289, 1293; Key Publications, Inc. v. Chinatown Today Pub. Ent., 945 F.2d 509, 512 (2d Cir.1991).

The second requirement is that the compilation exhibit sufficient originality in the "selection, coordination, or arrangement" of the facts to be copyrightable. Although "the originality requirement is not particularly stringent", not every compilation's selection and arrangement of fact will do. Feist, 111 S.Ct. at 1294, 1296.

In Feist, the Supreme Court held that plaintiff Rural's white pages telephone directory alphabetically listing the name, town, and telephone number of each telephone subscriber lacked "even the slightest trace of creativity" in the presentation and possibly the selection of facts. Id. at 1296. In Key Publications, the court held that the selection of 9,000 businesses and the arrangement of the business listings into more than 260 categories made the Key directory copyrightable, although the competing directory did not infringe upon the copyright. 945 F.2d at 513.

Nester says that both its selection and arrangement of street address listings and the mileage fares and routes for out-of-town destinations are sufficiently original to be copyrightable.

The street address section in Nester's guide first lists all the major thoroughfares running north-south in Manhattan, the numbered avenues (first through twelve), the named avenues (Park Avenue South, Park, Lexington, Madison, and York Avenues), and then additional named streets or major roads (Broadway, Central Park West, Amsterdam, Columbus, Hudson, Varick, Dyckman, Canal, Christopher St., Nicholas, Lenox, West End, Riverside Drive, and Grand Street). The address listings for the other boroughs follow the same scheme. The selection of these main concourses are obvious for purposes of a taxi guide to New York, and the particular order of the listings is not sufficiently creative to be copyrightable.

Nester says that the originality of the presentation of street addresses consists of the selection of cross streets and the assignment of address numbers for each of these cross streets. Nesterman, the guide's author, stated in his deposition that, because the guide has limited space for listing cross streets, he selected only the important and most helpful cross streets based upon his knowledge of New York. Moreover, many of the numbers assigned to each cross street do not correspond to the actual numbers of the buildings at that intersection. He approximated the vast majority of building numbers in order both to detect copying and to make them easier to remember. Despite the changes, the listings are sufficiently accurate to enable taxi drivers to find the actual address.

On First Avenue, for example, the interval between cross streets varies from three to five blocks and follows no particular pattern. The intervals for other avenues throughout the city are as low as a single block, but follow no pattern, and the building numbers are only approximately correct.

Nester intimates that since these numbers are invented, they should be copyrightable like other works of fiction. Hagstrom argues, relying upon the doctrine of copyright estoppel, that since Nester represents the numbers as "facts", they are not copyrightable. Huie v. National Broadcasting Company, 184 F.Supp. 198, 199-200 (S.D.N.Y.1960); Houts v. Universal City Studios, Inc., 603 F.Supp. 26, 28 (C.D.Cal.1984) ("Under the doctrine of copyright estoppel, once a plaintiff's work has been held out to the public as factual, the author-plaintiff cannot then claim that the book is, in actuality, fiction and thus entitled to the higher protection allowed to fictional works.")

To treat "false" facts interspersed among actual facts and represented as actual facts as fiction would mean that no one could ever reproduce or...