Illinois Bell Telephone Co. v. Haines and Co.

• Decision Date: 13 April 1988
• Docket Number: No. 85 C 07644.,85 C 07644.
• Citation: Illinois Bell Telephone Co. v. Haines and Co., 683 F.Supp. 1204 (N.D. Ill. 1988)
• Parties: ILLINOIS BELL TELEPHONE COMPANY, an Illinois corporation, Plaintiff, v. HAINES AND COMPANY, INC., an Ohio corporation, Haines Criss + Cross Publishers, Inc., an Illinois corporation, William K. Haines, Sr., and William K. Haines, Jr. Defendants. HAINES AND COMPANY, INC., Haines Criss + Cross Publishers, Inc., Counterclaimants, v. ILLINOIS BELL TELEPHONE COMPANY, an Illinois corporation, Ameritech Publishing, Inc., a Delaware corporation, Ameritech Publishing of Illinois Inc., an Illinois corporation, the Reuben H. Donnelley Corporation, a Delaware corporation, Am-Don, a general partnership formed under the Illinois Uniform Partnership Act, Defendants on Counterclaim.
• Court: U.S. District Court — Northern District of Illinois

683 F. Supp. 1204

ILLINOIS BELL TELEPHONE COMPANY, an Illinois corporation, Plaintiff, v.HAINES AND COMPANY, INC., an Ohio corporation, Haines Criss + Cross Publishers, Inc., an Illinois corporation, William K. Haines, Sr., and William K. Haines, Jr.Defendants.

HAINES AND COMPANY, INC., Haines Criss + Cross Publishers, Inc., Counterclaimants, v.ILLINOIS BELL TELEPHONE COMPANY, an Illinois corporation, Ameritech Publishing, Inc., a Delaware corporation, Ameritech Publishing of Illinois Inc., an Illinois corporation, the Reuben H. Donnelley Corporation, a Delaware corporation, Am-Don, a general partnershipformed under the Illinois Uniform Partnership Act, Defendantson Counterclaim.

No. 85 C 07644.

United States District Court, N.D. Illinois, E.D.

April 13, 1988.

Ronald E. Cundiff, L. Bow Pritchett, Chicago, Ill., for plaintiff.

Jeremiah D. McAuliffe, Craig S. Fochler, Edward G. Wierzbicki, Thomas P. Arden, Byron L. Gregory, Ronald E. Cundiff, Chicago, Ill., for defendants.

MEMORANDUM OPINION AND ORDER

CONLON, District Judge.

PlaintiffIllinois Bell Telephone Company("IBT") brought this action for copyright infringement under Title 17 of the United States Code against defendantsHaines and Company, Inc., Haines Criss + Cross Publishers, Inc., William K. Haines, Sr., and William K. Haines, Jr.(collectively "Haines").Now before the court is Haines' motion to dismiss or, alternatively, for partial summary judgment.IBT brings a cross-motion for partial summary judgment.For the following reasons, IBT's motion for summary judgment is granted on the issue of liability.

Factual Background

The Parties and Their Directories

IBT is a public utility that provides telephone service.The Illinois Administrative Code requires IBT to publish and distribute telephone directories to its consumers.83 Ill.Admin.Code § 735.180;Deposition of David Winton, IBT District Manager-Directory ("Winton Dep."), p. 201.The content of these directories, commonly known as "white pages," primarily is comprised of alphabetical listings of IBT's customers, followed by their respective addresses and telephone numbers.Other features of the directories are not at issue here.

The source for each listing is the IBT customer.When a customer initially receives telephone service, the customer's preference as to a listed name is placed on a service order and a telephone number is assigned.Winton Dep., p. 204.The contents of the service order are entered into IBT's computer system, where editing and verification take place in a number of different steps.Winton Dep., pp. 99-100, 204-210.Some manual correction and proofreading occurs.Winton Dep., pp. 198, 205, 221, 234-235.

Haines publishes cross reference directories under the trademark Criss + Cross.Declaration of James A. McGeorge, Vice President of Haines and Company, Inc., at ¶ 2("McGeorge Decl.").Each directory contains an "Addressakey," or street address directory, and a "Telokey," or telephone numerical directory.See Arden Exhibit 1.The Addressakey lists all streets in an area in alphabetical order.Each street and its town are capitalized in a bold typeface and are followed by the zip code.Beneath each street listing, addresses are listed in ascending numerical order.Adjacent to the address is the resident's last name, then first name and/or initials.See Arden Exhibit 1, Addressakey Key to Symbols.Non-residential names and numbers appear in bold typeface.Many listings are followed by a number to indicate the year in which the listing first appeared or was changed.The Addressakey also indicates whether an address is a multiple residence or apartment and whether more than one person is at an address or uses a telephone number.Following the list of addresses for each street, the Addressakey indicates the number of businesses, residences and new listings that appeared for that street.

The Telokey for a given area lists telephone numbers in ascending numerical order according to headings containing the telephone number prefix.See Arden Exhibit 1.Adjacent to each number is the name and address, with non-residential listings in boldface type.A plus-sign appears by new listings, and apartments or mobile homes are indicated.

Other than the changes in format, additional differences exist between the Haines and IBT listings.Haines employs certain standardized abbreviations which differ from IBT's equivalent abbreviations.First, Haines follows United States Post Office rather than IBT abbreviations for street designations such as "avenue,""street,""boulevard,"etc. McGeorge Dep.at 108, 111, 130;McGeorgeDecl., ¶ 18.Second, Haines divides the IBT listings into the categories of residential or non-residential.This determination is made pursuant to the subjective judgment of the Haines staff, based upon training provided by Haines.McGeorge Dep.at 37-38.For example, Haines would designate an address at a downtown office building as a business listing.Id.Third, some of the IBT listings are duplicates, appearing in both the IBT city and suburban directories.Haines uses only one such listing and does not repeat the duplication.Id. at 115-116.Fourth, every Haines directory approximately encompasses the listings contained in one to five of the IBT directories because of differences in the geographic compilation of the respective directories.Id;McGeorgeDecl., ¶ 33.Fifth, unlike the IBT directories, the Haines directories include over 300,000 listings of addresses without names and/or telephone numbers.McGeorge Dep.at 97-98;McGeorgeDecl., ¶ 28.

Although the Haines directories contain tables of demographic information, they are not relevant for purposes of this motion because IBT does not identify them as infringing upon IBT's copyrights.

Haines' Use of IBT's Directories

Haines began publishing Chicago-area directories in 1969.However, IBT objected to Haines' use of information from IBT's directories.Declaration of William K. Haines, Sr., ¶ 5("Haines Decl.").Therefore, from 1971 through 1980, the parties entered an agreement, renewed each year, for IBT's provision to Haines of pre-publication advance listings in IBT's Chicago-area directories at a certain cost per listing.HainesDecl., ¶¶ 5, 6; Exhibit 1, "License Agreement."

Under the agreement, IBT provided Haines with "signature copies" of its directories received from the printer prior to public distribution.Haines Decl., Exhibit 1, ¶ 3.Haines personnel compared the IBT listings contained in the signature copies with Haines' listings.Deposition of James A. McGeorge ("McGeorge Dep."), p. 24.Through this process, Haines identified listings that IBT had added, altered or deleted since its last annual directories.Id. at 25.The Haines staff underlined in red on the signature copies all IBT listings that differed from Haines' prior listings, including the additional listings.Id. at 29-31.Next, the Haines data entry department logged the red-lined IBT listings into the Haines data system.Id. at 34-35.Haines' proofreaders then compared the data entries to the red-lined listings, checking for inaccuracies.Id. at 39.

Each year in which the parties renewed their agreement, IBT billed Haines for every listing contained in IBT's signature copies and not merely for new or changed listings.McGeorge Dep.at 86;Declaration of Roger McDowall, IBT Directory Manager, ¶¶ 4, 5("McDowall Decl.").Haines chose not to renew the agreement after 1980.However, Haines utilized IBT's listings in the same manner both during and after termination of the agreement.McGeorge Dep., pp. 62-63.During the course of the agreement, Haines obtained IBT's listings from the signature copies; subsequently, Haines made its comparisons against IBT's published directories.Id. at 54, 62-64.

IBT's Claims

IBT alleges that ten editions of the Haines directories published in 1983 and 1984 infringe the copyrights of 34 IBT directories.(The pertinent directories of each party cover listings for the greater Chicago metropolitan area.)Specifically, IBT claims that:

In preparing and publishing the Haines directories, defendants infringed by copying from the Illinois Bell directories the individual listings contained therein.

Complaint, ¶ 12.Further, IBT alleges that numerous fictitious listings which IBT placed in its own directories are replicated in the Haines directories.Complaint, ¶ 11; Exhibit "C."A list of the registration number of the certificates of registration issued by the Registrar of Copyrights for each relevant IBT directory, and the effective dates of registration, is appended to the complaint as Exhibit A.The certificates of registration comprise Exhibit B. IBT requests both injunctive and monetary relief.

Motion to Dismiss

Haines initially brings a motion to dismiss, arguing that IBT has not stated a cause of action for copyright infringement because it failed to allege substantial similarity between the infringing directories and IBT's copyrighted directories.Also, Haines contends that IBT failed to allege copying of protectible facts in its copyrighted directories.

The court notes that to defeat a motion to dismiss, a complaint "must state either direct or inferential allegations concerning all of the material elements necessary for recovery under the relevant legal theory."Carl Sandburg Village Condominium Ass'n. No. 1 v. First Condominium Development Co.,758 F.2d 203, 207(7th Cir.1985).To establish copyright infringement, a plaintiff must prove ownership of a valid copyright and that the defendant copied plaintiff's work.Atari, Inc. v. North American Philips Consumer Electronics Corp.,672 F.2d 607, 614(7th Cir.1982), cert. denied,459 U.S. 880, 103 S.Ct. 176, 74 L.Ed.2d 145.

Ownership Element

The court initially will address Haines' argument concerning the first element, ownership of a valid copyright.Haines contests the sufficiency of IBT's allegations by contending that IBT...