Southwestern Bell T. Co. v. Nationwide Ind. Dir. Serv., Inc.

• Decision Date: 04 January 1974
• Docket Number: Civ. No. HS 72-C-21.
• Citation: 371 F. Supp. 900
• Parties: SOUTHWESTERN BELL TELEPHONE COMPANY, a corporation, Plaintiff, v. NATIONWIDE INDEPENDENT DIRECTORY SERVICE, INC., a corporation, et al., Defendants.
• Court: U.S. District Court — Western District of Arkansas

371 F. Supp. 900

SOUTHWESTERN BELL TELEPHONE COMPANY, a corporation, Plaintiff, v. NATIONWIDE INDEPENDENT DIRECTORY SERVICE, INC., a corporation, et al., Defendants.

Civ. No. HS 72-C-21.

United States District Court, W. D. Arkansas, Hot Springs Division.

January 4, 1974.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Donald K. King, Ronald T. LeMay, and Herschel H. Friday, Jr., Smith, Williams, Friday, Eldredge & Clark, Little Rock, Ark., for plaintiff.

John T. Harmon, Harmon, Wallace & Hilburn, North Little Rock, Ark., for defendants.

OPINION

OREN HARRIS, Chief Judge.

This is an action for copyright infringement and unfair competition. Plaintiff first charges that defendants have copied, in a telephone directory published by defendants, listings and art work from plaintiff's copyrighted telephone directory in violation of the Copyright Act of 1909, 17 U.S.C.A. § 1 et seq. Plaintiff's second cause of action sounds in unfair competition and challenges defendant's use of the phrase "Yellow Pages" and the duplication of plaintiff's claimed Yellow Pages trademark in the directory published by defendants. Damages and injunctive relief are prayed for.

Plaintiff is a Missouri corporation and is authorized to do business as a public utility in Arkansas. It is one of the Bell System operating companies and provides local and long distance service to many communities in Arkansas and in other states. Defendant, Nationwide Independent Directory Service, Inc., is a Texas corporation which has not been authorized to do business in Arkansas. Individual defendants Dan A. Smith and his wife, Marty Smith, are residents of Hot Springs, Garland County, Arkansas. The Smiths are the sole officers, directors, stockholders and employees of Nationwide.

This Court has jurisdiction by virtue of 28 U.S.C.A. § 1338(a) which grants to district courts original and exclusive jurisdiction over civil actions arising under the copyright statute and over any substantial and related claim for unfair competition which has been joined with the statutory claim.

The cause has been tried to the Court and has been submitted upon the proof taken at the hearing on plaintiff's motion for preliminary injunction held June 5, 1973, and the hearing on the merits held November 9, 1973, the pleadings, certain stipulations of counsel, interrogatories, depositions, numerous exhibits and written briefs. This opinion incorporates the Court's findings of fact and conclusions of law as authorized by Rule 52(a) of the Federal Rules of Civil Procedure, 28 U.S.C.A.

COPYRIGHT VIOLATION

Plaintiff, as part of its service offering, annually publishes and distributes telephone directories to its customers in its Little Rock telephone exchange, comprised of Little Rock, North Little Rock and certain surrounding suburban areas. These directories have been copyrighted since 1919. The directory which plaintiff claims defendant has copied was published by plaintiff in March 1972 for the use of its customers in the Little Rock exchange for the remainder of 1972 and the first months of 1973.

The first part of the directory is printed on white paper and lists in alphabetical order the names, addresses and telephone numbers of each of plaintiff's customers in the Little Rock exchange. The second part of the directory is printed on yellow paper and lists business customers alphabetically under appropriate business classifications. It also contains classified advertisements of differing sizes purchased by business customers under their business classifications.

The directory is 11 × 9 inches in size and about 1½ inches thick. It contains approximately 1,000 pages. The top half of the directory's front cover displays a picture of the North Little Rock Community Center. The bottom half of the cover bears the title "Little Rock — North Little Rock and suburban areas." In the lower right hand corner of the cover there appears the logo which plaintiff alleges to be its Yellow Pages trade-mark. The logo consists of a square colored black within which there is pictured a telephone receiver over an open book colored yellow. Across the book there is printed the words "Yellow Pages" in black. The lower left corner of the cover shows the Bell System logo, a circle with a bell in the center to the right of which is printed Southwestern Bell. At the bottom of the inside cover is printed "04494 Copyright 1972 by Southwestern Bell Telephone Company." A copyright notice is also printed on every page.

The proof shows the compilation, production and distribution of the 45 directories which plaintiff publishes for the Little Rock exchange and the other 44 exchanges plaintiff operates in Arkansas involves highly specialized work and that great care is taken to assure the accuracy of the listings contained therein. The cost for production and distribution of the 45 directories plaintiff published in Arkansas in 1972 approximated $1,467,000. About 40% of this figure, or $585,000, represented the cost for the "Little Rock — North Little Rock and suburban areas" directory.

We will now describe the telephone directory published by defendants. This directory is 9 × 6 inches in size and 3/8 inches thick. It contains 206 pages. The front cover bears the title "North Little Rock and Suburban Areas Telephone Directory" across the top. Below this is a picture of an Ozark mountain spring. In the lower right hand corner is printed the same Yellow Pages logo which appears on plaintiff's directory. Defendant's directory is also divided into two sections. The alphabetical section, printed on white paper, lists names, addresses and telephone numbers of persons residing in North Little Rock. The classified section, printed on yellow paper, lists North Little Rock businesses under the appropriate business headings. It also contains business advertising. The publisher's name does not appear on the directory cover. However, on page 3 the name "Nationwide Independent Directory Service, Inc." appears as the publisher.

The testimony discloses defendants sold classified advertising in their directory to a number of North Little Rock business firms during the first part of 1972. Defendants received approximately $8,500 in advertising revenues from their directory and expended approximately $7,500 for its compilation, printing and distribution to residents of North Little Rock.

Plaintiff introduced into evidence the copyright certificate of registration issued by the United States copyright office for its 1972 Little Rock — North Little Rock and suburban areas directory. This certificate names plaintiff as author of the directory and consequently, plaintiff is entitled to a prima facie presumption of originality. 17 U. S.C.A. § 209; Drop Dead Co. v. S. C. Johnson & Son, Inc., 326 F.2d 87, 92 (9th Cir. 1963), cert. denied, 377 U.S. 907, 84 S.Ct. 1167, 12 L.Ed.2d 177. Also the certificate of registration constitutes prima facie evidence of the validity of plaintiff's copyright and defendants have the burden of overcoming this presumption. Flick Reedy Corp. v. Hydroline Mfg. Co., 351 F.2d 546 (7th Cir. 1965), cert. denied, 383 U.S. 958, 86 S. Ct. 1222, 1223, 16 L.Ed.2d 301.

Defendants challenge plaintiff's copyright, taking the position that telephone directories by reason of the public nature of their content cannot be copyrighted. This contention is without merit. The copyright law specifically states that directories may be copyrighted. 17 U.S.C.A. §§ 3, 5 and 7. Moreover, the case law is well settled that telephone directories, as well as other similar compilations, are copyrightable and that suits for copyright infringement will lie when such compilations are copied without consent. 18 Am.Jur.2d Copyright and Literary Properties § 46; 18 C.J.S. Copyright and Literary Property § 29; Nimmer, Nimmer on Copyright § 41 (1973).

The landmark case on copyright infringement of a telephone directory is Leon v. Pacific Tel. & Tel. Co., 91 F.2d 484 (9th Cir. 1937). In that case, Leon published a directory which was prepared by taking the information contained in Pacific's San Francisco telephone directory and rearranging it according to telephone numbers in numerical order followed by the subscriber's name. Pacific brought suit for temporary and permanent injunctions, damages and costs alleging violation of its copyright. The trial court entered judgment for Pacific. On appeal the court concluded that a telephone directory may be copyrighted. In doing so it quoted the following from Jeweler's Circular Pub. Co. v. Keystone Pub. Co., 281 F. 83 at 88, cert. denied, 259 U.S. 581, 42 S.Ct. 464, 66 L.Ed. 1074:

The right to copyright a book upon which one has expended labor in its preparation does not depend upon whether the materials which he has collected consist or not of matters which are publici juris, or whether such materials show literary skill or originality, either in thought or in language, or anything more than industrious collection. 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. Id., 91 F.2d at 486

Other cases supporting the conclusion reached by the court in Leon are Cincinnati and Surburban Bell Tel. Co. v. Brown, 44 F.2d 631 (D.C.S.D.Ohio 1930); Southern Bell Tel. & Tel. Co. v. Donnelly, 35 F.Supp. 425 (D.C.S.D.Fla. 1940); Consumers Union of U. S., Inc. v. Hobart Mfg. Co., 189 F.Supp. 275 (D.C.S.D.N.Y.1960), and Donald v. Zack Meyer's TV Sales and Service, 426 F.2d 1027 (5th Cir. 1970), cert. denied, 400 U.S. 992, 91 S.Ct. 459, 27 L.Ed.2d 441. It has also been specifically held that copying of a portion of a telephone directory in order to prepare a separate directory for a town included in the...