945 F.2d 509 (2nd Cir. 1991), 1681, Key Publications, Inc. v. Chinatown Today Pub. Enterprises, Inc.

Docket Nº:1681, Docket 91-7235.
Citation:945 F.2d 509
Party Name:KEY PUBLICATIONS, INC., Plaintiff-Appellee, v. CHINATOWN TODAY PUBLISHING ENTERPRISES, INC., Galore Enterprises, Inc., Cyprus Development, Inc. and Ma Kam Yee, Defendants, Galore Enterprises, Inc. and Ma Kam Yee, Defendants-Appellants.
Case Date:September 23, 1991
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

Page 509

945 F.2d 509 (2nd Cir. 1991)

KEY PUBLICATIONS, INC., Plaintiff-Appellee,



Enterprises, Inc., Cyprus Development, Inc. and Ma

Kam Yee, Defendants,

Galore Enterprises, Inc. and Ma Kam Yee, Defendants-Appellants.

No. 1681, Docket 91-7235.

United States Court of Appeals, Second Circuit

September 23, 1991

Argued July 24, 1991.

As Amended Oct. 1, 1991.

Page 510

Dianan Jia, New York City (Yuen & Yuen, of counsel), for defendants-appellants.

Amy B. Goldsmith, New York City (Gottlieb, Rackman & Reisman, of counsel), for plaintiff-appellee.

Before WINTER, ALTIMARI and MAHONEY, Circuit Judges.

WINTER, Circuit Judge:

This appeal concerns the scope of copyright protection provided a classified telephone directory published by appellee Key Publications, Inc. ("Key"). Appellants Galore Enterprises, Inc. and Ma Kam Yee ("Galore" and "Ma"), appeal from Judge Ward's holding that their publication, the

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1990 Chinese American-Life Guide ("Galore Directory"), infringed Key's copyright in the 1989-90 Chinese Business Guide & Directory ("1989-90 Key Directory"). We hold that the 1989-90 Key Directory is subject to copyright protection, but that the Galore Directory does not infringe Key's copyright. We therefore reverse.


Since 1984, Key has published an annual classified business directory for New York City's Chinese-American community. Each directory consists of a white pages section and a yellow pages section. The white pages include maps, articles, and information about government and private services printed in both English and Chinese. Accounting for approximately two-thirds of each directory, the yellow pages contain telephone numbers and addresses for numerous businesses located in Chinatown, and more recently, businesses located in other parts of the New York metropolitan area, Boston, and Philadelphia. Key has registered each of its six directories with the United States Copyright Office.

This appeal specifically concerns the yellow pages listings contained in the 1989-90 Key Directory. Key's president, Lynn Wang, is responsible for assembling the Key directories. Beginning in 1983, Ms. Wang collected business cards from doctors and lawyers associated with the Chinese-American community, banks that did business in the Chinese-American community, and other establishments she thought ought to be included in the yellow pages section of the Directory. Additionally, a "modest percentage," in the words of the district court, of the listings in the 1984 Key Directory were copied from another compilation, the 1981 Chinese American Restaurant Directory ("Restaurant Directory"). Some of the copied listings were presumably included in later directories, including the 1989-90 Key Directory. The information collected in the 1989-90 Key Directory was sorted by type of business; each listing is placed in one of over 260 different categories; and each of the approximately 9000 listings consists of an English and a Chinese name, an address, and a telephone number. About 15,000 copies of the 1989-90 Key Directory have been distributed to businesses and individuals in the New York Chinese-American community.

Ma is a fifty-percent stockholder of Galore, which in 1990 published the Galore Directory, also a classified directory for the New York Chinese-American Community. The yellow pages of the Galore Directory contain approximately 2000 listings divided among twenty-eight different categories. Like the 1989-90 Key Directory, business establishments of interest to the New York Chinese-American community are listed in the Galore Directory. About seventy-five percent, or 1500, of the businesses listed in the Galore Directory are also listed in the 1989-90 Key Directory.

On April 4, 1990, Key brought suit against Ma and Chinatown Today Publishing Enterprises, Inc. (the publisher of the Galore Directory and solely owned by Ma), charging that the Galore Directory infringed Key's copyright in the 1989-90 Key Directory, and seeking injunctive relief, damages, and attorney's fees. On October 30, 1990, after six months of discovery, Key requested leave to amend its complaint to add two new defendants, Galore and Cyprus Development, Inc. (a corporation in which Ma is a fifty-percent stockholder). This motion was granted on November 30, 1990. In the meantime, on November 21, 1990, Key moved for a preliminary injunction to prevent then-defendants Chinatown Today and Ma from printing and distributing the 1991 version of the Galore Directory, which was similar to the allegedly infringing 1990 Galore Directory. Upon agreement of the parties, this motion was consolidated with a trial on the merits.

At the conclusion of the bench trial, Judge Ward rendered an oral decision finding that the Galore Directory infringed Key's copyright in the 1989-90 Key Directory. On February 11, 1991, the district court dismissed the complaint against Chinatown Today and Cyprus Development, and awarded Key statutory damages

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against the remaining defendants, Galore and Ma, in the amount of $15,000, pursuant to 17 U.S.C. § 504(c)(2) (1988), and full costs and attorney's fees, pursuant to 17 U.S.C. § 505 (1988). Additionally, Judge Ward permanently enjoined Galore and Ma from further infringement of Key's copyright, pursuant to 17 U.S.C. § 502(a) (1988), and ordered all copies of the 1990 Galore Directory, as well as all documents and printing plates relating to the listings section of that directory, delivered to the court for destruction, pursuant to 17 U.S.C. § 503(b) (1988). Because full relief could be granted on the finding of infringement of the 1989-90 Key Directory, he found it unnecessary to address the infringement claims regarding early Key Directories.


We address two questions on this appeal. First, did the district court correctly conclude that the 1989-90 Key Directory is entitled to a copyright? And, if so, does the Galore Directory infringe that copyright? We answer the first in the affirmative, the second in the negative.

  1. Copyrightability

    The 1989-90 Key Directory is a factual compilation--a selection of business names, addresses, and phone numbers, separated into descriptive categories, e.g., "ART SUPPLIES."

    Facts, without more, are not copyrightable. 17 U.S.C. § 102(b) (1988) ("[i]n no case does copyright protection for an original work of authorship extend to any ... discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work"). See Feist Publications, Inc. v. Rural Tel. Serv. Co., --- U.S. ----, 111 S.Ct. 1282, 1288, 1293, 113 L.Ed.2d 358 (1991) ("[Section] 102(b) is universally understood to prohibit any copyright in facts."); Financial Info., Inc. v. Moody's Investors Serv., Inc., 808 F.2d 204, 207 (2d Cir.1986), cert. denied, 484 U.S. 820, 108 S.Ct. 79, 98 L.Ed.2d 42 (1987). Factual compilations, however, may be copyrighted. 17 U.S.C. §§ 102, 103 (1988). See, e.g., Feist, 111 S.Ct. at 1289; Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 547, 105 S.Ct. 2218, 2224, 85 L.Ed.2d 588 (1985). Some view these two principles as a paradox in that a compilation comprised of facts not entitled by themselves to copyright protection may support a valid copyright. See Feist, 111 S.Ct. at 1287 (observing that "[t]here is an undeniable tension between these two propositions"); Financial Info., Inc. v. Moody's Investors Serv., Inc., 751 F.2d 501, 505 (2d Cir.1984) ("the law of copyrights defies the laws of logic ... since it 'affords to the summation of one hundred or one million [individual facts and their unadorned expression] a significant measure of protection' while affording none to the facts themselves") (quoting Robert C. Denicola, Copyright in Collections of Facts: A Theory for the Protection of Nonfiction Literary Works, 81 Colum.L.Rev. 516, 527 (1981)).

    Paradox or no, Section 101 of the Copyright Act of 1976, Pub.L. No. 94-553, 90 Stat. 2544, defines a copyrightable compilation as "a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship." 17 U.S.C. § 101 (1988). This language suggests three requirements for a compilation to qualify for copyright protection: (1) the collection and assembly of preexisting data; (2) the selection, coordination, or arrangement of that data; and (3) a resulting work that is original, by virtue of the selection, coordination, or arrangement of the data contained in the work. See Feist, 111 S.Ct. at 1293. There is thus more to a copyrightable compilation than the simple collection of uncopyrightable facts. Such a compilation must "feature[ ] an original selection or arrangement of [those] facts." Id. at 1290.

    This requirement of originality, a prerequisite to any valid copyright, see 17 U.S.C. § 102(a) (1988) ("[c]opyright protection subsists ... in original works of authorship"), is not particularly rigorous. Simply stated, original means not copied, and exhibiting a minimal amount of creativity.

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    See 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright, § 2.01 (1991). In practice, the requirement of originality has become " 'little more than a prohibition of actual copying.' " Denicola, supra at 520-21 (quoting Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 103 (2d Cir.1951)); see also Feist, 111 S.Ct. at 1287. Moreover, for purposes of copyright, originality is not synonymous with novelty. Similarity to prior works will not, in and of itself, affect the validity of a particular work's copyright. 1 Nimmer & Nimmer, supra, at § 2.01[B].

    Because every compilation, by definition, satisfies the first requirement of a collection of data, whether the 1989-90 Key Directory can be copyrighted will...

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