Illinois Bell Telephone Co. v. Haines and Co., Inc.

• Decision Date: 06 August 1990
• Docket Number: No. 89-2207,89-2207
• Citation: 905 F.2d 1081
• Parties: , 59 USLW 2071, 1990-1 Trade Cases 69,076, 1990 Copr.L.Dec. P 26,598, 15 U.S.P.Q.2d 1353 ILLINOIS BELL TELEPHONE COMPANY, Plaintiff-Appellee, v. HAINES AND COMPANY, INC., Haines Criss + Cross Publishers, Inc., William K. Haines, Sr., and William K. Haines, Jr., Defendants-Appellants. HAINES AND COMPANY, INC., and Haines Criss + Cross Publishers, Inc., Counterclaimants-Appellants, v. ILLINOIS BELL TELEPHONE COMPANY, Counterdefendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

Page 1081

905 F.2d 1081

59 USLW 2053, 59 USLW 2071, 1990-1 Trade

Cases 69,076,

1990 Copr.L.Dec. P 26,598, 15 U.S.P.Q.2d 1353

ILLINOIS BELL TELEPHONE COMPANY, Plaintiff-Appellee, v. HAINES AND COMPANY, INC., Haines Criss + Cross Publishers,

Inc., William K. Haines, Sr., and William K.

Haines, Jr., Defendants-Appellants.

HAINES AND COMPANY, INC., and Haines Criss + Cross

Publishers, Inc., Counterclaimants-Appellants, v. ILLINOIS BELL TELEPHONE COMPANY, Counterdefendant-Appellee.

No. 89-2207.

United States Court of Appeals, Seventh Circuit.

Argued April 2, 1990.

Decided June 25, 1990.

Order on Denial of Rehearing and

Rehearing En Banc Aug. 6, 1990.

Robert Guritz, L. Bow Pritchett, Ronald E. Cundiff, James R. Bryant, Jr., Chicago, Ill., Michael Kellogg, Mayer, Brown & Platt, Washington, D.C., for plaintiff-appellee.

Edward G. Wierzbicki, Jeremiah D. McAuliffe, Craig S. Fochler, Thomas P. Arden, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, Chicago, Ill., Bernard A. Barken, St. Louis, Mo., for defendants-appellants and counterclaimants-appellants.

Richard D. Grauer, Frank K. Zinn, Dykema & Gossett, Detroit, Mich., for Cross Reference Directory Publishers amicus curiae.

Lawrence Gunnels, Rosanne J. Faraci, Mayer, Brown & Platt, Chicago, Ill., for Illinois Telephone Ass'n, Inc. amicus curiae.

John C. McNett, Spiro Bereveskos, Woodard, Emhardt, Naughton, Moriarty & McNett, Indianapolis, Ind., James E. Taylor, Jack C. Lorenz, St. Louis, Mo., for Southwestern Bell Telephone Co. amicus curiae.

Before FLAUM and KANNE, Circuit Judges, and NOLAND, Senior District Judge. ^*

FLAUM, Circuit Judge.

Illinois Bell Telephone Company ("Illinois Bell") brought suit against Haines and Company, Inc., ("Haines") for copying information from its "white pages" telephone directory and including it in Haines' street address directory and thus infringing on Illinois Bell's copyright. Haines counterclaimed for alleged Sherman Act violations by Illinois Bell. The district court granted summary judgment in favor of Illinois Bell on both counts, and Haines appeals. For the following reasons, we affirm the decision of the district court.

I.

Illinois Bell is a public utility providing general telephone services to the public. It is required by law to distribute to its subscribers a white pages telephone directory. The white pages, the familiar telephone book, is primarily comprised of alphabetical listings of its customer's names followed by street and telephone number information. Haines publishes cross reference directories under the "criss + cross" trademark. This appeal concerns Haines publication of its street address directory ("SAD"). The SAD lists streets in alphabetical order. Beneath each street listing, addresses on the street are listed in ascending numerical order. Adjacent to the address is the resident's last and first name, telephone numbers, the year the listing was last updated, the type of building at the address, and other useful information. See Illinois Bell Telephone Co. v. Haines and Co., 683 F.Supp. 1204 (N.D.Ill.1988) (detailing background information concerning Illinois Bell's & Haines' directories).

From 1971 until 1981, Haines and Illinois Bell entered into agreements, renewed each year, under which Illinois Bell provided to Haines advance "signature copies" of its white pages received from the printer prior to public distribution. Haines used the signature copies to discover new or changed names or telephone numbers to be included in its directories. Under the agreements, Illinois Bell billed Haines for every listing contained in the signature copies.

In 1982, Haines refused to renew the license agreement with Illinois Bell, stating it would rely on "other sources." One of the other sources turned out to be the published form of Illinois Bell's white pages. Illinois Bell discovered this use when it noticed that ten of twelve fictitious listings planted in the 1982 white pages appeared in Haines' directories. In 1983, thirteen of fourteen fictitious listings appeared in Haines' directories. Illinois Bell complained to Haines about this illicit use of the white pages and requested payment for the listings. Haines refused to pay.

Illinois Bell filed suit in the United States District Court for the Northern District of Illinois alleging Haines violated its copyrights in the white pages. Haines counterclaimed against Illinois Bell for alleged violations of the Sherman Antitrust Act. The district court granted Illinois Bell's motion for summary judgment, holding that Illinois Bell has a valid copyright interest in its telephone directories and that Haines' 1982 and 1983 SADs infringed on those copyrights. On the counterclaim, the district court determined that there were no genuine issues of material fact and that Illinois Bell was entitled to summary judgment as a matter of law. Haines challenges these findings on appeal as well as the district court's grant of statutory damages and attorneys' fees in favor of Illinois Bell. For the reasons stated below, we affirm the district court.

II.

We begin with Haines' appeal from the grant of summary judgment on the copyright claim. Haines argues on appeal, as it did in the district court, that in taking the information from Illinois Bell's directory it merely copied facts which contain no elements of expression and are uncopyrightable. Haines relies on Harper Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 547, 105 S.Ct. 2218, 2223, 85 L.Ed.2d 588 (1985), where the Supreme Court stated that Sec. 102 of the Copyright Act provides "no author may copyright facts or ideas. Sec. 102. The copyright is limited to those aspects of the work-termed 'expression'--that display the stamp of the author's originality." Haines argues that under Harper Row Publishers, compilations which are copyrightable under 17 U.S.C. Sec. 103(a), are similarly protected only for the originality contributed by the author and not the underlying facts. Therefore, Haines asserts, only an author's original contribution, which is defined in section 101 of the Copyright Act as the arrangement, coordination or selection displayed by the compilation, is copyrightable. In this respect, Haines alleges that Illinois Bell's white pages entail almost no originality and the district court erred in granting copyright protection to the facts contained in Illinois Bell's directory.

The district court's well-reasoned opinion specifically rejected this assertion, and we agree that "[Illinois Bell] has shown that its directories have valid copyrights." Illinois Bell, 683 F.Supp. at 1207. In reaching this conclusion, the trial judge appropriately relied on this Court's decision in Schroeder v. William Morrow & Co., 566 F.2d 3 (7th Cir.1977). Schroeder involved an action by a compiler of a book of listings of names and addresses of suppliers of seeds, plants, publications and plant societies that alleged copyright infringement against the publishers of a different gardening book who copied the names and addresses out of the plaintiff's book. In that decision, we held that "[a]n original compilation of names and addresses is copyrightable even though the individual names and addresses are in the public domain and not copyrightable" because it contains originality. Id. at 5. Schroeder remains valid precedent and is quite applicable to this appeal. Illinois Bell's directories are compilations of facts, consisting of names, addresses, and telephone numbers, and as such can be protected by copyright under Schroeder.

Our conclusion that the directories are copyrightable finds ample support from several circuits and the Supreme Court. First, in the Ninth Circuit opinion of Leon v. Pacific Telephone and Telegraph Co., 91 F.2d 484 (9th Cir.1937), relied on by this Court in Schroeder, the Ninth Circuit held a publisher who rearranged an alphabetical telephone directory numerically violated the alphabetical directory publisher's copyright. Protection for compilers has also been cited with favor in Harper & Row v. Nation Enterprises, 471 U.S. 539, 547, 105 S.Ct. 2218, 2223, 85 L.Ed.2d 588 (1985) where the Supreme Court cited Schroeder for the proposition that "a compilation of pure fact, entails originality." The decision we reach today is more directly supported by the Eighth Circuit's opinion in Hutchinson Telephone Co. v. Fronteer Directory Co., 770 F.2d 128, 131 (8th Cir.1985), where the court stated "[i]t thus appears, Congress intended that directories be copyrightable, thereby ratifying an unbroken line of cases holding telephone directories to be copyrightable ... 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. It is evident that a directory compiled by a telephone company from its internally maintained records may be said to be independently created." (citations omitted). In sum, we agree with the district judge's conclusion that Illinois Bell has a valid copyright in its white pages directory.

We now consider whether the district court properly concluded that Haines infringed upon the copyright. In support of its finding of infringement, the district court relied on this Court's opinion in Rockford Map Publishers, Inc. v. Directory Service Co. of Colorado Inc., 768 F.2d 145 (7th Cir.) cert. denied, 474 U.S. 1061, 106 S.Ct. 806, 88 L.Ed.2d 781 (1986), an analogous case that held it is an infringement to create a second compilation by merely copying from the first copyrighted work. As stated in that case:

[A] second compiler may check back his independent work upon the original compilation. The right to 'check back' does not imply a right to start with the copyrighted work. Everyone must do the same basic work, the same 'industrious collection.' A subsequent compiler is bound to set about doing for himself what the first compiler has done. The...