Bellsouth Advertising & Pub. Corp. v. Donnelley Information Pub., Inc.
| Citation | Bellsouth Advertising & Pub. Corp. v. Donnelley Information Pub., Inc., 933 F.2d 952 (11th Cir. 1991) |
| Decision Date | 18 June 1991 |
| Citation | 933 F.2d 952 |
| Docket Number | No. 89-5131,89-5131 |
| Parties | , 1991-1 Trade Cases 69,468, 1991 Copr.L.Dec. P 26,749, 19 U.S.P.Q.2d 1345 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. |
| Court | U.S. Court of Appeals — Eleventh Circuit |
Douglas C. Broeker, Michael J. Cappucio, Miami, Fla., Fowler, White, Burnett, Hurley, Banick & Strickroot, P.A., David L Foster, Theodore Case Whitehouse, Francis J. Menton, Jr., Willkie, Farr & Gallagher, Baila H. Celedonia, Roger L. Zissu, Cowan, Liebowitz, & Latman, PC, New York City, for defendants-counterclaim plaintiffs-appellants.
Robert E. 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 curiae, ANADP.
Robert E. Marsh, Blackwell, Sanders, Matheny, Weary & Lombardi, Kansas City, Mo., for amicus curiae, US WEST.
Robert Alan Garrett, Arnold & Porter, Washington, D.C., for amicus curiae, Bell Atlantic.
Appeal from the United States District Court for the Southern District of Florida.
Before JOHNSON and HATCHETT, Circuit Judges, and SMITH *, Senior Circuit Judge.
The case before us concerns infringement of copyright. The United States District Court for the Southern District of Florida granted summary judgment to appellee, Bellsouth Advertising & Publishing Corp. (BAPCO), on its claim that appellants, Donnelley Information Publishing, Inc. and Reuben H. Donnelley Corp. (Donnelly), had infringed on BAPCO's copyrights in its phone directory. The district court also granted summary judgment against Donnelley on their fair use and antitrust misuse defenses. To preserve the integrity of BAPCO's copyrights, the district court enjoined Donnelley from copying any of BAPCO's directories in the future. 719 F.Supp. 1551. Donnelley appeals to this Court for review of the grant of summary judgment and the injunction order. We affirm.
BAPCO and Southern Bell Telephone and Telegraph Co. (Southern Bell) are wholly-owned subsidiaries of BellSouth Corp. (BellSouth). BAPCO was created for the purpose of preparing, publishing and distributing telephone directories. Pursuant to an agreement between Southern Bell and BAPCO, the latter publishes and distributes a classified advertising directory entitled the Greater Miami Yellow Pages (Yellow Pages). The information that BAPCO presents in its directory is supplied by Southern Bell. This controversy concerns the Yellow Pages published in 1984 in which BAPCO owns a valid copyright.
The information embodied in the Yellow Pages is presented in a convenient, organized fashion. A particular directory is organized to have its own geographic scope, so that businesses which have a phone exchange located within the geographic scope are listed in the appropriate directory. Moreover, the Yellow Pages directory is categorized according to business classification. Each business listing is placed within its appropriate business classification in alphabetical order. A business listing comprises the business name, address and phone number. To attract prospective customers, a given business may purchase an advertisement which will appear in the Yellow Pages in addition to its business listing. These advertisements are interspersed within each business classification throughout the Yellow Pages.
After BAPCO published the 1984 Yellow Pages, Donnelley began promoting and selling classified advertisements which were to be placed in a competitive classified directory for the Greater Miami area. Donnelley's vice president wrote to BAPCO concerning the acquisition of listings that could be published in their own directory. Subsequently, Southern Bell and Donnelley entered an agreement pertaining to Donnelley's publication and distribution of a competing classified advertising directory in the Greater Miami area. Pursuant to the agreement, Southern Bell provided Donnelley with the name, address, and telephone number of all of its relevant business subscribers.
However, Donnelley did not utilize the licensed information to generate their own directory. Instead, Donnelley had Appalachian Computer Services, Inc. key the information and the inherent organizational elements embodied in BAPCO's Yellow Pages into a computer and store it on magnetic tape. Donnelley subsequently printed out listings from the computer data base along with some of its corresponding organizational elements onto sales lead sheets. Donnelley's sales representatives used these lead sheets to solicit additional advertising purchases from those businesses listed in their directory. Donnelley also printed the listings onto their own directory in substantially the same format as that inscribed in the Yellow Pages.
On October 2, 1985, BAPCO filed suit against Donnelley alleging three causes of action: (1) copyright infringement, (2) trademark infringement, and (3) unfair competition. BAPCO moved for a preliminary injunction which the district court eventually denied. After the preliminary injunction proceedings, Donnelley answered the complaint naming BAPCO, Southern Bell and Bell South as counterdefendants and alleged: (1) unlawful monopolization, (2) unlawful attempt to monopolize, and (3) invalid trademark registration.
After several salvos of summary judgments were motioned by each party, the district court granted summary judgment in favor of BAPCO on the copyright infringement claim, antitrust counterclaims and affirmative defenses. The district court denied Donnelley's motion for summary judgment on the trademark issues and denied BellSouth and Southern Bell's motion for summary judgment on the antitrust counterclaims. Donnelley appeals to this Court, contesting the district court's decision regarding the copyright infringement and the antitrust and fair use affirmative defenses.
The district court found that BAPCO was entitled to summary judgment on its claim that Donnelley infringed its copyright and that BAPCO had not committed any antitrust violation. We must determine whether the evidence before the court indicates "that there is no genuine issue as to any material fact" relevant to the copyright infringement claim and the fair use and antitrust defenses. 1 If the law applicable to the undisputed facts entitles BAPCO to the judgment entered by the district court, we must affirm. 2
BAPCO claims that Donnelley infringed its copyright in the Yellow Pages. To prevail on a claim of copyright infringement, the plaintiff must establish two elements: (1) that plaintiff owns a valid copyright in the work; and (2) that defendant copied "constituent elements of the work that are original." 3
As to the first element, a phone directory is afforded copyright protection if it classifies as a compilation. 4 Donnelley admits that BAPCO possesses a valid compilation copyright in their phone directories because it qualifies as a compilation under 17 U.S.C. Sec. 101. 5 Donnelley's defense to infringement is that although they did copy information from BAPCO's phone directory, they did not copy any constituent elements that make the work original (i.e., protected expression). Instead the defendant maintains that they only "extracted" information which is not protected by copyright.
The Courts of Appeal were in disagreement as to the extent that a compilation work is protected. The "sweat of the brow" standard extends copyright protection to the information in a compilation because labor and effort were expended to gather the information that is placed in the work. 6 The Supreme Court has disapproved the "sweat of the brow" standard, explaining that its defect lies in the fact that the copyright laws were never intended to protect information merely for the reason that it may stem from effort or labor. 7 The copyright laws, as part of the overall protection afforded intellectual property, were designed only to protect "original works of authorship fixed in any tangible medium of expression...." 8 Therefore, the information contained in the directory which is accumulated by effort or labor does not lie within the hegemony of BAPCO's copyright. 9
Instead, the proper standard is delineated in the statute itself. "A compilation is 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." 10 Therefore, in the case of compilations, the protected expression is the manner of selection, coordination, or arrangement of the information that constitutes the originality, not the information itself that is accumulated by the "sweat of the brow". 11 Hence, copyright protection only extends to the selection, coordination and arrangement which comprises an original format of the compilation work. 12 In the case of compilations, to satisfy the second element of the copyright infringement cause of action, there must be a substantial appropriation of the original format of the compilation to constitute the copying of protected material. 13 Accordingly, we must determine whether there was a substantial appropriation of the format of the plaintiff's compilation.
To determine whether there was a substantial appropriation, we initially determine whether BAPCO's format was original. First of all, BAPCO performed several acts of selection. BAPCO had to select and demark the geographic boundaries that correspond to the scope of each directory. These boundaries determine in which directory or directories a particular business will be listed. BAPCO also had to select a directory close date on which no more listing modifications would be reflected...
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