Central Telephone Co. of Va. v. Johnson Pub. Co., Civ. No. 80-A-1225.

• Decision Date: 15 October 1981
• Docket Number: Civ. No. 80-A-1225.
• Parties: CENTRAL TELEPHONE COMPANY OF VIRGINIA, a Virginia Corporation, Plaintiff, v. JOHNSON PUBLISHING CO., INC., a Texas Corporation, Defendant.
• Court: U.S. District Court — District of Colorado

526 F. Supp. 838

CENTRAL TELEPHONE COMPANY OF VIRGINIA, a Virginia Corporation, Plaintiff, v. JOHNSON PUBLISHING CO., INC., a Texas Corporation, Defendant.

Civ. No. 80-A-1225.

United States District Court, D. Colorado.

October 15, 1981.

COPYRIGHT MATERIAL OMITTED

Kyle W. Rost, Denver, Colo., P. Phillips Connor and Kevin W. Guynn, Chicago, Ill., for plaintiff.

W. David Pantle, Denver, Colo., for defendant.

MEMORANDUM OPINION AND ORDER ON MOTIONS FOR SUMMARY JUDGMENT

ARRAJ, District Judge.

Central Telephone Company (Central) brought this action against Johnson Publishing Co. (Johnson) claiming that Johnson infringed its copyright covering telephone directories published for the area including Martinsville, Virginia, in the years 1976 through 1979. Central alleges that Johnson copied material from Central's directories and published this material as a part of Johnson's community directories for the years 1977, 1978 and 1980. Jurisdiction is conferred by 28 U.S.C. § 1338(a) (1976).

The case is now before me on cross motions for summary judgment, pursuant to Federal Rule of Civil Procedure 56. Rule 56(c) states that summary judgment "shall be rendered forthwith if the pleadings, depositions, answers to interrogatories and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." In addition, it provides that summary judgment "may be rendered on the issue of liability alone although there is a genuine issue as to the amount of damages." Under Rule 56(e) a party opposing a summary judgment motion properly made and supported "may not rest upon the mere allegations or denials of his pleading, but his response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial."

As to plaintiff's claims that defendant caused its copyrights to be infringed, defendant has failed to set forth by affidavit, deposition, answer to interrogatory or admission that any genuine issue of fact exists for trial. On the other hand, material issues of fact do remain unresolved as to the amount of damages plaintiff has suffered due to the copyright infringement. As to defendant's claim that plaintiff did not have copyright protection for two of the years in question, defendant has failed to establish that it is entitled to summary judgment as a matter of law. Accordingly, plaintiff's motion for summary judgment will be granted in part and denied in part, as explained below, and defendant's motion for summary judgment will be denied. The case will proceed to trial on the issue of damages only, as contemplated by Rule 56(c).

BACKGROUND

In the normal course of business, plaintiff Central compiles, prepares, publishes and distributes telephone directories covering the geographical areas in which it also provides telephone service, including the Martinsville, Virginia, area. Plaintiff's telephone directories are printed partly on white pages and partly on yellow pages. The portion printed on white pages lists in alphabetical order the names, addresses and telephone numbers of plaintiff's customers who elect to have their listings published. The portion printed on yellow pages lists plaintiff's business customers alphabetically under appropriate business classifications and contains advertisements of various sizes purchased by some customers.

In 1976, defendant Johnson entered into an agreement with the Basset Printing Co. by which defendant undertook to complete the work begun by Basset in the production of a community directory for the Martinsville, Virginia, area. While there are other distinctions, a community directory is a publication that lists additional information, such as name of spouse, place of employment, etc., beyond the information listed in the telephone directory about the people residing, in this instance, in the Martinsville area. After concluding the agreement with Basset, defendant Johnson took steps to complete the directory including hiring people from the Martinsville area to be enumerators. The enumerators were given survey forms on cards to fill out. In this process, the enumerators used the initial work of Basset and plaintiff's then current telephone directory to complete the survey cards with the name and telephone number of each of the listings as they appeared in the white pages of the Central directory. The enumerators were instructed to telephone each of the listings and to fill in other information as outlined by the survey cards. The completed cards were sent to defendant Johnson's business headquarters in Colorado where they were keypunched and sorted alphabetically. Concurrent with this work by the enumerators, Johnson salesmen went door to door to solicit advertisements from businesses for a yellow page section to be published as a part of the 1977 community directory.

After the survey card information was stored in a computer data base, personnel in defendant's compiling department compared a printout with plaintiff's then current 1976 directory. Any additional listings contained in the Central directory but not on the printout list were added. No attempt was made to verify the additional listings. Thereafter, the listed information and the orders for yellow page advertisements were typeset and the 1977 community directory was printed. After printing, the directory was delivered to the Martinsville, Virginia, area for distribution.

In 1977, defendant Johnson again hired enumerators from the Martinsville area. They were supplied with a computer printout of the listings assembled for the 1977 community directory and blank survey cards. The enumerators were instructed to telephone the numbers listed on the computer printout and determine whether the information was current, making note of changes and additions on the survey cards. Similarly, defendant's salesmen again solicited businesses in the Martinsville area for advertisements in the upcoming 1978 community directory. Thereafter, this new information was merged at defendant's headquarters with the data from the previous year to provide an updated data base. Defendant's personnel compared a printout of the new data base with plaintiff's then current 1977 directory and additional listings contained in plaintiff's directory were added without an attempt to verify the additions. Defendant Johnson then printed and distributed its 1978 community directory for the Martinsville, Virginia, area.

No community directory was published by the defendant for the Martinsville area in 1979. However, during 1979 defendant Johnson again hired enumerators and sent salesmen to Martinsville. They were instructed to follow the same procedure as used in 1977, described above. In addition, defendant's compiling department followed the same procedure for updating the data base and then referred to plaintiff's current 1979 directory for obtaining additional listings. However, unlike previous years, these additional listings were returned to the enumerators for verification. Soon thereafter, defendant's 1980 city directory for Martinsville was printed and distributed.

It is undisputed by the parties and well settled by the courts that two elements are necessary to establish the case of copyright infringement: first, the plaintiff must show ownership of a valid copyright and, second, copying of the material by the defendant. M. Nimmer, Nimmer on Copyright, § 13.01 (1981) hereinafter cited as Nimmer; American Chemical Society v. Dun-Donnelley Publishing Corp., 202 U.S. P.Q. 459, 462 (N.D.Ill.1979).

THE WHITE PAGES

1. Ownership

Plaintiff tenders the certificates of copyright registration issued by the United States Copyright Office as proof of its copyright ownership. A copyright registration certificate is prima facie evidence of the facts stated therein, including evidence of ownership. 17 U.S.C. § 210 at 962 (1976) (1909 Act); 17 U.S.C. § 410(c) (Supp.III 1979) (1976 Act).

Defendant does not deny the facial validity of the certificates, but alleges instead, in defense and under its separate Motion for Partial Summary Judgment, that the copyright is defective as to plaintiff's 1976 and 1977 directories, due to improper placement of the copyright notice. Johnson contends that under the law applicable to these two directories, the notice of copyright was not upon "the title page or the page immediately following" as directed by 17 U.S.C. § 20 (1976) (1909 Act).^*

The copyright notice for both directories was placed on the inside (backside) of the front paper cover. Under the 1909 Act, the placing of the copyright notice in the wrong location results in a loss of copyright protection. Bell v. Combined Registry Co., 397 F.Supp. 1241 (N.D.Ill.1975); Foreign Car Parts, Inc., v. Auto World, Inc., 366 F.Supp. 977 (M.D.Pa.1973). To determine, therefore, whether this placement of the notice complies with the 1909 Act, the scope of the terms "title" and "title page" must be examined.

The title registered with the United States Copyright Office is prima facie proof of the proper title of the work. See 17 U.S.C. § 210 (1976) (1909 Act). The respective titles for the directories in question, as designated on the copyright certificates, are "May, 1976 Martinsville, Virginia 76570" and "May, 1977 Martinsville, Virginia 76570." Defendant asserts these titles are improper since an appropriate title must include a description of the work, in this case the designation "telephone directory." Other courts, however, have found titles to be as designated on the copyright registration certificate even though these titles lacked a description of the work. See, e. g., OA Business Publications, Inc., v. Davidson Publishing Co., 334 F.2d 432 (7th Cir. 1964) (newspaper entitled "Daily Office Appliances —NSOEA Convention Edition."); Booth v. Haggard, 184 F.2d 470 (8th Cir. 1950) (...