Hutchinson Telephone Co. v. Fronteer Directory Co. of Minnesota, Inc.

• Decision Date: 13 August 1985
• Docket Number: No. 84-5129,84-5129
• Citation: Hutchinson Telephone Co. v. Fronteer Directory Co. of Minnesota, Inc., 770 F.2d 128 (8th Cir. 1985)
• Parties: , 1985 Copr.L.Dec. P 25,827 HUTCHINSON TELEPHONE COMPANY, Appellant, v. FRONTEER DIRECTORY COMPANY OF MINNESOTA, INC., Appellee.
• Court: U.S. Court of Appeals — Eighth Circuit

Page 128

770 F.2d 128

228 U.S.P.Q. 537, 1985 Copr.L.Dec. P 25,827

HUTCHINSON TELEPHONE COMPANY, Appellant, v.FRONTEER DIRECTORY COMPANY OF MINNESOTA, INC., Appellee.

No. 84-5129.

United States Court of Appeals Eighth Circuit.

Submitted Feb. 11, 1985.

Decided Aug. 13, 1985.

Alan G. Carlson, Minneapolis, Minn., for appellant.

Elliot S. Kaplan, Minneapolis, Minn., for appellee.

Before ROSS and BOWMAN, Circuit Judges, and OLIVER, ^*Senior District Judge.

BOWMAN, Circuit Judge.

AppellantHutchinson Telephone Company(Hutchinson) charges appelleeFronteer Directory Company of Minnesota (Fronteer) with infringement of Hutchinson's copyright of its comprehensive alphabetical telephone directory for its service area (white pages).Hutchinson seeks an injunction and damages for the alleged infringement.The District Court determined as a matter of law that Hutchinson's white pages directory was not copyrightable, and entered judgment for Fronteer on that basis.

The District Court divided the trial into two phases.The first phase was to determine the copyrightability of Hutchinson's white pages directory; the second was to determine if a valid copyright had been infringed.Because the District Court found Hutchinson's white pages directory was not copyrightable, the second phase was not reached and judgment was entered in favor of Fronteer.

I.

Hutchinson is a telephone company providing local service in the Hutchinson, Minnesota area.Under Minnesota law, Hutchinson is required to publish a telephone directory.5 Minn.R. Sec. 7810.2900(1983).The directory Hutchinson publishes, for which it holds a copyright, contains a white pages section and a section including a topical listing of business telephone numbers together with advertising (yellow pages).Hutchinson charges its customers a fee for new or changed listings in the white pages as well as for yellow pages advertising.The cost of printing and distribution and the revenue earned on the directories is considered by the state in setting rates for Hutchinson's telephone service.

Fronteer publishes both white and yellow page directories which it markets commercially.One of the directories it publishes is for the town of Hutchinson, Minnesota and surrounding communities.Hutchinson alleges that in the preparation of this directory for the year 1982, Fronteer copied Hutchinson's white pages directory and incorporated it into the Fronteer directory.

II.

The District Court, 586 F.Supp. 911(D.C.Minn.1984), held that Hutchinson's white pages directory did not constitute an original work of authorship within the meaning of the Copyright Act of 1976, 17 U.S.C. Secs. 101-810(Copyright Act).It based this holding on its conclusion that the extension of copyright protection for a document that Hutchinson is required to publish as a condition of its state-sanctioned telephone monopoly would unduly extend the benefits of that monopoly in contravention of the purposes of the Copyright Act.The District Court used this rationale to distinguish a long line of cases in which white page telephone directories and similar publications were held to be copyrightable.See, e.g., Leon v. Pacific Telephone and Telegraph Co., 91 F.2d 484(9th Cir.1937);National Business Lists, Inc. v. Dun & Bradstreet, Inc., 552 F.Supp. 89(N.D.Ill.1982);Central Telephone Company of Virginia v. Johnson Publishing Co., 526 F.Supp. 838(D.Colo.1981);Southwestern Bell Telephone Company v. Nationwide Independent Directory Service, Inc., 371 F.Supp. 900(W.D.Ark.1974).

The District Court cited nothing in the Copyright Act or its legislative history or any cases directly supporting its conclusion.Rather, it relied largely on the following quotation from a leading treatise on copyright law:

[T]he authorization to grant to individual authors the limited monopoly of copyright is predicated upon the dual premises that the public benefits from the creative activities of authors, and that the copyright monopoly is a necessary condition to the full realization of such creative activities.Implicit in this rationale is the assumption that in the absence of such public benefit the grant of a copyright monopoly to individuals would be unjustified.

M. Nimmer, Nimmer on CopyrightSec. 1.03[A], at 1-30.1(1984)(footnote omitted).Upon examining the Nimmer treatise, it is evident that the District Court quoted Professor Nimmer's language wholly out of context.The cited language is found in a discussion of the purposes of the constitutional provision granting Congress the specific power to legislate on the subject of copyrights.Professor Nimmer concludes this discussion with the following statement: "[T]he phrase 'To promote the progress of science and useful arts ...' [contained in the Copyright Clause of the United States Constitution must be read as largely in the nature of a preamble, indicating the purpose of the power [granted Congress to pass copyright legislation] but not in limitation of its exercise."Id. at 1-30.2 to 1-30.3(footnotes omitted).

We agree with Professor Nimmer that although the promotion of artistic and scientific creativity and the benefits flowing therefrom to the public are purposes of the Copyright Clause, those purposes do not limit Congress's power to legislate in the field of copyright.¹SeeSchnapper v. Foley, 667 F.2d 102, 112(D.C.Cir.1981)cert. denied, 455 U.S. 948, 102 S.Ct. 1448, 71 L.Ed.2d 661(1982);Mitchell Brothers Film Group v. Cinema Adult Theater, 604 F.2d 852, 860(5th Cir.1979), cert. denied, 445 U.S. 917, 100 S.Ct. 1277, 63 L.Ed.2d 601(1980).To determine if Hutchinson's directory is copyrightable, we must examine the Copyright Act.First, we must decide whether the Act establishes copyright protection for works of the sort represented by Hutchinson's white pages directory.Next, we must determine whether anything in the Act excludes copyright protection for regulated business organizations such as Hutchinson with respect to directories they are required by law to produce.

The Copyright Act extends copyright protection to "original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device."17 U.S.C. Sec. 102(a).The legislative history states that the phrase "original works of authorship" was intended to codify without change the concept of "originality" applied by the courts under the prior copyright statute.H.R.Rep. No. 1476, 94th Cong., 2d Sess., reprinted in 1976 U.S.Code Cong. & Ad.News 5659, 5664."Originality" under the prior construction did not connote novelty or uniqueness but simply that the work be independently created.If a work is similar to preexisting works, it must show more than trivial variation from those works.L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486, 490(2d Cir.), cert. denied, 429 U.S. 857, 97 S.Ct. 156, 50 L.Ed.2d 135(1976).

Several specific categories of "original works of authorship" are defined in the Copyright Act.For instance, 17 U.S.C. Sec. 102(a)(1) states that "literary works" are copyrightable.The legislative history of Sec. 102(a)(1) states that "[t]he term 'literary works' does not connote any criterion of literary merit or qualitative value: it includes catalogs, directories and similar factual, reference or instructional works and compilations of data."H.R.Rep. No. 1476, 1976 U.S.Code Cong. & Ad.Newsat 5667(emphasis added).It thus appears that Congress intended that directories be copyrightable, thereby ratifying an unbroken line of cases holding telephone directories to be copyrightable.See cases cited supra p. 3.As to originality, where a telephone directory is assembled from data collected and constantly revised by the telephone company, courts consistently have held that such a directory is copyrightable.See, e.g., Leon, 91 F.2d at 485.It is evident that a directory compiled by a telephone company from its internally maintained records may be said to be independently created.Cf.L. Batlin & Son, Inc., 536 F.2d at 490.

As discussed, infra, Fronteer and the District Court never questioned the fact that Hutchinson, although under a state requirement, compiled and maintained the records on which the directory was based.Fronteer vigorously argues that the effort expended in transforming pre-existing records into a telephone directory is insufficient to meet the so-called "sweat of the brow" test relied on and quoted in Leon.That test is drawn from an earlier case and states:

The man who goes through the streets of a town and puts down the names of each of the inhabitants, with their occupations and their street number, acquires material of which he is the author.He produces by his labor a meritorious composition, in which he may obtain a copyright, and thus obtain the exclusive right of multiplying copies of his work.

Jeweler's Circular Publishing Co. v. Keystone Publishing Co., 281 Fed. 83, 88(2d Cir.1922).Fronteer argues that Hutchinson gathered the records for billing purposes and that the directory was merely a publication of its customer listing requiring little or no new effort.Fronteer's focus is too narrow.Hutchinson's records are gathered and maintained for many purposes, including publication of a directory.The proper focus is not whether...