999 F.2d 1436 (11th Cir. 1993), 89-5131, BellSouth Advertising & Pub. Corp. v. Donnelley Information Pub., Inc.

Docket Nº:89-5131.
Citation:999 F.2d 1436
Party Name:th 616, 28 U.S.P.Q.2d 1001 BELLSOUTH ADVERTISING & PUBLISHING CORPORATION, Plaintiff-Counterclaim Defendant-Appellee, v. DONNELLEY INFORMATION PUBLISHING, INC. and The Reuben H. Donnelley Corp., Defendants-Counterclaim Plaintiffs-Appellants, BellSouth Corporation, et al., Counterclaim Defendants.
Case Date:September 02, 1993
Court:United States Courts of Appeals, Court of Appeals for the Eleventh Circuit
 
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Page 1436

999 F.2d 1436 (11th Cir. 1993)

th 616,

28 U.S.P.Q.2d 1001

BELLSOUTH ADVERTISING & PUBLISHING CORPORATION,

Plaintiff-Counterclaim Defendant-Appellee,

v.

DONNELLEY INFORMATION PUBLISHING, INC. and The Reuben H.

Donnelley Corp., Defendants-Counterclaim

Plaintiffs-Appellants,

BellSouth Corporation, et al., Counterclaim Defendants.

No. 89-5131.

United States Court of Appeals, Eleventh Circuit

September 2, 1993

Page 1437

[Copyrighted Material Omitted]

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Douglas C. Broeker, Fowler, White, Burnett, Hurley, Banick & Strickroot, P.A., Miami, FL, David L. Foster, Theodore Case Whitehouse, Francis J. Menton, Jr., Willkie, Farr & Gallagher, Baila H. Celedonia, Roger L. Zissu, Cowan, Liebowitz & Latman, P.C., New York City, for appellants.

Robert Richards, Anthony B. Askew, Jones, Askew & Lunsford, Atlanta, GA, for Bellsouth Advertising.

John K. Roedel, Jr., Senniger, Powers, Leavitt & Roedel, St. Louis, MO, for amicus ANADP.

Robert E. Marsh, Blackwell, Sanders, Matheny, Weary & Lombardi, Kansas City, MO, for amicus--US WEST.

Robert Alan Garrett, Arnold & Porter, Washington, DC, for amicus Bell Atlantic.

Appeal from the United States District Court for the Southern District of Florida.

Before TJOFLAT, Chief Judge, FAY, HATCHETT, EDMONDSON, BIRCH, BLACK and CARNES, Circuit Judges [*].

BIRCH, Circuit Judge:

I. INTRODUCTION

In this appeal, we must decide whether acts of copying infringed the compilation copyright registered in a "yellow pages" classified business directory. The parties have stipulated that the directory, which is a typical yellow pages directory, qualifies for compilation copyright protection. Thus, we are called upon to apply Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991), which addressed copyright protection for a "white pages" telephone directory, to resolve the infringement claims presented to us concerning a directory of a different color.

The pivotal issue in this case is whether that which was copied by the alleged infringer was protected by the registered claim of compilation copyright. The parties agree that the only elements of a work entitled to compilation copyright protection are the selection, arrangement or coordination as they appear in the work as a whole. The parties dispute what elements of a classified directory constitute such selection, arrangement or coordination. Mindful that the protection afforded to a whole work by a compilation copyright is "thin," 1 the determination as to whether an infringement of a compilation copyright has occurred is particularly difficult where less than the entire work is copied.

II. BACKGROUND

BellSouth Advertising & Publishing Corporation ("BAPCO") is a wholly owned subsidiary of BellSouth Corporation ("BellSouth") created for the purpose of preparing, publishing and distributing telephone directories. Using telephone listing information supplied by Southern Bell Telephone and Telegraph Company ("Southern Bell"), another wholly owned subsidiary of BellSouth, BAPCO publishes a classified, "yellow pages," advertising directory for the Greater Miami area. The BAPCO directory is organized into an alphabetical list of business classifications. Each business-rate telephone service subscriber is listed in alphabetical order under one appropriate heading without charge. A subscriber may purchase cross listings under different business classifications or advertisements to appear along with its business listing.

After BAPCO published its 1984 directory for the Greater Miami area, Donnelley Information Publishing, Inc. and Reuben H. Donnelley Corp. (collectively "Donnelley") began promoting and selling classified advertisements to be placed in a competitive classified directory for the Greater Miami area. To

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generate a list of business telephone subscribers to be solicited for placement in its directory, Donnelley gave copies of BAPCO's directory to Appalachian Computer Services, Inc. ("ACS"), a data entry company. Donnelley first marked each listing in the BAPCO directory with one alphanumeric code indicating the size and type of advertisement purchased by the subscriber 2 and a similar code indicating the type of business represented by the BAPCO heading under which the listing appeared. For each listing appearing in the BAPCO directory, ACS created a computer data base containing the name, address, and telephone number of the subscriber as well as the codes corresponding to business type and unit of advertising. From this data base, Donnelley printed sales lead sheets, listing this information for each subscriber, to be used to contact business telephone subscribers to sell advertisements and listings in the Donnelley directory. Relying on this information copied from the BAPCO directory, Donnelley ultimately prepared its own competitive directory for the Greater Miami area.

BAPCO sued Donnelley for alleged copyright infringement, 3 trademark infringement, and unfair competition. After the district court denied BAPCO's motion for a preliminary injunction, Donnelley answered and counterclaimed against BAPCO, Southern Bell and BellSouth, for alleged violations of federal antitrust law. On the copyright infringement claim, the district court granted summary judgment to BAPCO and denied Donnelley's motion seeking partial summary judgment in its favor, 4 BellSouth Advertising & Publishing Corp. v. Donnelly Info. Publishing, Inc., 719 F.Supp. 1551 (S.D.Fla.1988).

The district court found, and Donnelley admitted, that BAPCO owned a valid compilation copyright in its classified directory. Donnelley stipulated that, in preparing its data base and sales lead sheets, it obtained from each listing in the BAPCO directory, the telephone number, name, address, kind of business, and unit of advertising for the listed subscriber. As further evidence of copying, the district court relied on affidavits and deposition testimony from Donnelley's representatives and the presence of a number of erroneous listings common to the BAPCO and Donnelley directories. From the process by which Donnelley prepared its competitive yellow pages directory, the district court identified three acts of copying: (1) the entry of subscriber information into the computer data base by ACS; (2) the printout of sales lead sheets from this data base; and (3) the publication of Donnelley's directory. Based on these acts of copying, the court granted BAPCO's motion for summary judgment on its copyright infringement claims. 5 Donnelley appealed the district court's resolution of the parties' motions on the copyright claim. 6

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III. DISCUSSION

  1. Feist Publications and the Requirement of Originality

    In Feist Publications, the Supreme Court clarified the scope of copyright protection afforded to factual compilations. Rural Telephone Service Company ("Rural") claimed that Feist Publications, Inc. ("Feist") infringed Rural's copyright by using names and telephone number listings from Rural's white pages directory to compile its own white pages directory. Observing the inherent tension between the axiom of copyright law that facts are not copyrightable 7 and the principle that compilations of fact generally are copyrightable, the Court identified those components of a factual compilation that may receive copyright protection under certain circumstances. 499 U.S. at ----, 111 S.Ct. at 1287.

    The Court stressed that "[t]he sine qua non of copyright is originality." 499 U.S. at ----, 111 S.Ct. at 1287. 8 "Facts, whether alone or as a part of a compilation, are not original and therefore may not be copyrighted." 499 U.S. at ----, 111 S.Ct. at 1290. Drawing upon the requirement of originality and the definition of "compilation" in the Copyright Act, 9 the Court held that a compiler's selection, arrangement and coordination, if original, are the only protectable elements of a factual compilation. 499 U.S. at ----, 111 S.Ct. at 1289. 10

    Applying the requirement of originality to the directory compiled by Rural, the Court noted that the listings, consisting of subscribers' names, towns of residence, and telephone numbers, were uncopyrightable facts. Further, the selection, coordination, and arrangement of Rural's white pages were not sufficiently original to merit copyright protection. "Rural's selection of listings could not be more obvious: it publishes the most basic information--name, town, and telephone number--about each person who applies to it for telephone service." 499 U.S. at ----, 111 S.Ct. at 1296. Rural failed to establish any original elements of coordination or arrangement: "there is nothing remotely creative about arranging names alphabetically in a white pages directory. It is an age-old practice, firmly rooted in tradition and so commonplace that it has come to be expected as a matter of course." 499 U.S. at ----, 111 S.Ct. at 1297. In short, "Rural expended sufficient effort to make the white pages directory useful, but insufficient creativity to make it original." 499 U.S. at ----, 111 S.Ct. at 1296.

  2. BAPCO's Claim of Infringement

    To establish its claim of copyright infringement, BAPCO must prove "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." 499 U.S. at ----, 111 S.Ct. at 1296. The validity of BAPCO's copyright in its directory, considered as a whole, was conceded by Donnelley. 11 To demonstrate the second element

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    of infringement, BAPCO must prove that Donnelley, by taking the material it copied from the BAPCO directory, appropriated BAPCO's original selection, coordination or arrangement.

    The district court found that BAPCO engaged in a number of acts of selection in compiling its listings. For...

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