Southern Bell Tel. and Tel. Co. v. Associated Telephone Directory Publishers
| Citation | 756 F.2d 801 |
| Decision Date | 29 March 1985 |
| Docket Number | No. 83-8561,83-8561 |
| Parties | , 1985 Copr.L.Dec. P 25,772 SOUTHERN BELL TELEPHONE AND TELEGRAPH COMPANY, Plaintiff-Appellee, v. ASSOCIATED TELEPHONE DIRECTORY PUBLISHERS; C.A. Lewis, individually, Maurice Lewis, individually, and R.L. Cunningham, individually and d/b/a A.T.D. Georgia, Defendants-Appellants. |
| Court | United States Courts of Appeals. United States Court of Appeals (11th Circuit) |
Audrey Biloon, Macon, Ga., for defendants-appellants.
Jerre B. Swann, Atlanta, Ga., for plaintiff-appellee.
Appeal from the United States District Court for the Northern District of Georgia.
Before JOHNSON and HATCHETT, Circuit Judges, and LYNNE *, District Judge.
This appeal arises from claims of copyright infringement and unfair competition Southern Bell Telephone and Telegraph Company (Southern Bell) is a publisher and distributor of telephone directories for its customers in Florida, Georgia, North Carolina, and South Carolina. In Georgia, Southern Bell produces eighty-five telephone directories grouped by communities with separate telephone exchanges. For many years Southern Bell has published and distributed in the metropolitan Atlanta area a classified telephone directory known as the "Atlanta Yellow Pages." It is called the "Yellow Pages," displays the walking fingers logotype, and is printed on yellow paper.
involving the solicitation for and compilation of telephone directories. We affirm the district court's ruling that copyright violations occurred in this case.
Associated Telephone Directory Publishers, Inc. (ATD-TX) is a Texas corporation whose principal business is the publication of telephone directories in Texas. Maurice Lewis is president of ATD-TX. In 1981, ATD-TX developed plans to publish "Mid-Georgia West Suburban Yellow Page Buyers Guide," a telephone directory, to cover an area south of Atlanta, Georgia. ATD-TX contracted with C.A. Lewis, a former employee and operator of a mailing service, to conduct a mail solicitation of potential advertisers in the new market area. Lewis conducted the mail solicitation in May, 1982, directing it at approximately 33,000 businesses selected from the 1981-82 Atlanta Yellow Pages. ATD-TX also conducted an on-site solicitation. The solicitations terminated in mid-June due to entry of a temporary restraining order.
On May 15, 1982, Richard Cunningham, a former employee of ATD-TX, executed an agreement with ATD-TX which gave Cunningham the "publishing rights" to four middle-Georgia directories. The planned Mid-Georgia West directory was one of the four. The agreement also gave Cunningham all "present accounts receivable after June 15, 1982," and the right to use the name "A.T.D.-Georgia." (ATD-Georgia and ATDP, the same entity, will be referred to in this opinion as ATD.) In considering how the mail solicitation was conducted, the district court found that
[t]his solicitation was done by C.A. Lewis, who, in the preparation of the solicitation, photocopied certain pages of the Southern Bell Yellow Pages directory. The listings and advertisements were then cut apart and attached to ATDP solicitation forms. The headings under which the listings appeared in the Southern Bell directory were inserted on the form as the classifications under which the solicited listing would appear in the ATDP directory. Defendants' solicitation forms are printed on yellow paper and display the 'walking fingers' logotype used by Southern Bell. The term 'Yellow Pages' appears several times on the form which states that 'because of the gas situation, this will be our only contact with you concerning the yellow page solicitation for the area mapped below.' A map of a section of Georgia, including Atlanta and Macon, is printed at the bottom of the form with a section west of Macon highlighted in a contrasting coloration. There also appears in red type on the form a statement which reads: 'Your ad, as it appears below, will be published, with your approval, in the next edition of the Mid-Georgia West Suburban Yellow Pages Buyers Guide and distributed in the area in the map to more than 131,000 buyers.' The words 'Southern Bell' and 'telephone company' are not used.
See Appendix A.
The on-site solicitation form is printed on white paper, prominently displaying both the ATD logo and the walking fingers logotype. Further, just above the line for the signature of the advertiser, is a disclaimer in bold, capital letters, "WE ARE NOT THE TELEPHONE COMPANY."
On June 14, 1982, Southern Bell filed its complaint alleging six violations of federal and state fair business practice statutes. Count I alleges copyright infringement under the Copyrights Act, 17 U.S.C.A. Count II alleges federal unfair competition in violation of 15 U.S.C.A. Sec. 1125(a) (1982). 2 Southern Bell claims that ATD's use of the walking fingers logotype, the names "Mid-Georgia West Suburban Yellow Page Buyers Guide" and "Yellow Page Buyers Guide," and the duplication of listings and other materials from its Atlanta Yellow Pages causes confusion. Southern Bell also claims that printed statements which imply an association between Southern Bell and ATD are "calculated to cause confusion or mistake among yellow pages users and advertisers as to the true origin, source, sponsorship, or affiliation" of ATD and the Mid-West Georgia Buyers Guide.
Secs. 101-702 (1977, Supp.1984). 1 In this count, Southern Bell asserts exclusive copyright interest in the 1981-82 Atlanta Yellow Pages "to publish and reproduce the said work, to prepare derivative works from it, and to publicly display the said work including the individual listings, advertisements, and art work therefrom." The 1981-82 Atlanta Yellow Pages was registered with the United States Register of Copyrights on June 8, 1982. Southern Bell claims injury to its ownership rights as a result of ATD's "preparing, reproducing, distributing, publishing, and placing upon the market without authorization, sales solicitation materials containing subject matter which was copied identically and directly from plaintiff's said copyrighted December 1981-82 Atlanta Yellow Pages."
Count III alleges common law and statutory unfair competition in violation of the Georgia Uniform Deceptive Trade Practices Act, Ga.Code Sec. 10-1-372 (1982). 3
Southern Bell claims injury to its goodwill and reputation as a result of ATD's solicitations which had the "calculated purpose of trading upon plaintiff's goodwill and business reputation and of deceiving plaintiff's subscribers." 4
On June 15, 1982, the district court granted Southern Bell a temporary restraining order against ATD's continuance of the mail and on-site solicitations. On December 29, 1982, the court entered a preliminary injunction. Southern Bell sought a permanent injunction, actual and statutory damages under the Copyright Act, punitive damages, an accounting for defendants' profits, and attorney's fees and costs. At time of trial, the claims before the district court were the permanent injunction claim and a demand for attorney's fees and costs under 17 U.S.C.A. Sec. 505 (1977), 5 15 U.S.C.A. Sec. 1117 (1982), 6 and Ga.Code Sec. 10-1-373(b) (1982). 7
In a nonjury trial held March 22, 1983, Edmond E. Gay, a customer service representative for Southern Bell, testified that for several weeks in May and June, 1982, he handled a volume of telephone complaints about confusion resulting from the ATD mail solicitations. The complaints were substantially greater in number than any other group of complaints regarding other non-Southern Bell directories. Maurice Lewis, president of ATD-TX, testified that there had been confusion in the past with other ATD directory solicitations, and it was expected that confusion would be a result of the Atlanta mail solicitation. C.A. Lewis acknowledged that he had received complaints of confusion as a result of the Atlanta mailing. Seven witnesses testified for Southern Bell on their actual confusion as a result of ATD's mail solicitation. The district court found that
[t]he evidence is unrefuted that defendants were aware that Southern Bell's Yellow Pages December 1981-82 Atlanta directory were copyrighted. By their own admission they were aware of confusion caused by prior solicitations and anticipated that the Atlanta mailing would result in some confusion unless it were made clear to those being solicited by appropriate disclaimer that they were not connected with the Southern Bell Yellow Pages directory. In addition, after receiving Defendants have used a disclaimer of association on their white on-premise call forms for the avowed purpose of avoiding confusion. They admit that there would be no additional expense involved in adding such disclaimer information to the mail solicitations and, in light of their admitted prior knowledge of confusion and the kind of confusion that might be generated due to the very nature of the solicitations, the omission of such clarifying information, together with ambiguous verbiage such as 'Your ad as it appears below will be published' and 'Because of the gas situation this will be our only contact with you concerning the yellow pages solicitation' is evidence of a clear and willful intent to confuse and deceive the public being solicited. The use of yellow paper, the walking fingers logotype, repetitive use of the term 'Yellow Pages', and the copy of the addressee's Southern Bell Yellow Pages listing as previously published by the Southern Bell Yellow Pages directory further evidences an intent to trade on the public's association of those identifying elements with Southern Bell.
notices of confusion directly from customers solicited and the complaints of Southern Bell, they refused to discontinue the mail solicitations.
The district court found that Southern Bell's copyright had been infringed and that ATD had engaged in unfair competition and deceptive trade practices. In fashioning relief, the district court awarded...
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