Chapter 2: Copyright Protection of
Software: “Writings of Authors” and
“Original Works of Authorship”
United States Constitution, Art. I, § 8, Clause 8
The Congress shall have Power...To promote the Progress of Science...by securing for limited Times to Authors...the exclusive Right to their...Writings....
1976 Copyright Act, Section 102
(a) Copyright protection subsists, in accordance with this title, in 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. ...
(b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.
Introduction to Materials on Writings,
Authors, and Originality/Authorship
This chapter addresses several related issues concerning when and whether something can be protected by copyright. The Constitution limits Congress’ power in the copyright field to regulation of writings of authors. The statute (17 U.S.C. § 102(a)) applies to authors’ original works of authorship. Accordingly, something that is not an original work of authorship is outside the statute. Moreover, if something is not a writing of an author, Congress has no power under the copyright clause to regulate it, and presumably did not intend in the copyright statute to regulate it.
The requirement of a writing very seldom figures in the case law. One of the editors once tried to register the gesticulations of a coin-operated mechanical parrot (candy dispenser), whose motor–driven wings, tail, head, and beak were under the control of a microprocessor and computer program. The Copyright Office was willing to register individually the appearance of the parrot as a sculptural work, his croaked song as a literary or musical work, and the governing computer program as a literary work. But the Office refused to register the gesticulations as an audiovisual work. (Perhaps a choreographic work would have fared better.)
Readers will note that even though the parrot’s gesticulations may have been one of those rare instances of a creation that is not a registrable writing, the computer program dictating them was registrable. Given that, does it make any difference whether the gesticulations are not registered?
Suppose that a competitor tried to market software to purchasers of the parrot, where the software changed the repertory of the parrot. Would the copyright registration that the Copyright Office denied help protect this market for the manufacturer of the parrot? Cf. Sega Enterprises, Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992), cert. denied, 113 S. Ct. 1582 (1993); Worlds of Wonder, Inc. v. Veritel Learning Systems, Inc., 658 F. Supp. 351, 355 (N.D. Tex. 1986); Worlds of Wonder, Inc. v. Vector Intercontinental, Inc., 653 F. Supp. 135, 139 (N.D. Ohio 1986). Can you think of other examples of non-writings that a creator might want to protect, beside gesticulations of a mechanical parrot?
The requirement of a writing of an author may play a more significant role. Can you think of any computer–related writings that do not have an author?
A writing may have an author and yet lack sufficient authorship to qualify for copyright registration. The authorship may be so minimal that the writing lacks originality. Why do we need a legal doctrine to act as a sieve or filter for writings having de minimis authorship or originality?
Still another requirement of the copyright statute is that even an original writing of an author must be fixed in a tangible medium of expression before it can be registered and protected. Why should the statute have such a requirement?
Finally, some things could be deemed original writings of authors, fixed in a tangible medium, but they are denied copyright protection on grounds of policy. Most authorities agree that algorithms are in this category. What rationale can there be for this denial of legal protection? Are algorithm creators undeserving persons? Is it bad for society to encourage algorithm–creation activity unduly by providing creative incentives to those who “create” algorithms?
Imagine the invention of smellovision. Consider the creative activity of “authors” of odor epics, of scent bards. Think how soap operas or soap commercials could be augmented by adding additional olfactory stimulation. Would copyright law extend its protection to scent bards who create odor epics? Should it?
Compare the notional extension of copyright protection to odor epics with the notional extension of copyright protection to algorithms. How are they, or are they not, in pari materia?
And before proceeding, re–read Baker v. Selden, 101 U.S. 99 (1879).
The Trade–Mark Cases
United States Supreme Court
100 U.S. 82 (1879)
[In 1870 Congress enacted a federal trademark statute based only on the patent–copyright clause of the Constitution. In 1876 Congress supplemented the 1870 law by making it a crime to counterfeit or fraudulently use a trademark. These appeals challenged Congress’ power to pass such legislation. The Attorney General sought to defend on the theory that Congress had such power under the commerce clause, so that its reliance on the patent–copyright clause issue was irrelevant.]
Mr. Justice Miller delivered the opinion of the court.
These three cases are criminal prosecutions for violations of what is known as the trade-mark legislation of Congress. In all of them the judges of the circuit courts in which they are pending have certified to a difference of opinion on what is substantially the same question; namely, are the Acts of Congress on the subject of trade-marks founded on any rightful authority in the Constitution of the United States?
The entire legislation of Congress in regard to trade-marks is of very recent origin. It is first seen in the Act of July 8, 1870, entitled “An Act to revise, consolidate, and amend the statutes relating to patents and copyrights.”
The right to adopt and use a symbol or a device to distinguish the goods or property made or sold by the person whose mark it is, to the exclusion of use by all other persons, has been long recognized by the common law and the chancery courts of England and of this country, and by the statutes of some of the States. It is a property right for the violation of which damages may be recovered in an action at law, and the continued violation of it will be enjoined by a court of equity, with compensation for past infringement.
The power of Congress to legislate on rights in trade–marks, to establish the conditions on which these rights shall be enjoyed and exercised, the period of their duration, and the legal remedies for their enforcement, if such power exist at all, must be found in the Constitution of the United States, which is the source of all powers that Congress can lawfully exercise.
In the argument of these cases this seems to be conceded, and the advocates for the validity of the Acts of Congress on this subject point to two clauses of the Constitution, in one or in both of which, as they assert, sufficient warrant may be found for this legislation.
The first of these is the eighth clause of § 8 of the first article. That section, manifestly intended to be an enumeration of the powers expressly granted to Congress, and closing with the declaration of a rule for the ascertainment of such powers as are necessary by way of implication to carry into efficient operation those expressly given, authorizes Congress, by the clause referred to, “to promote the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries.”
As the first and only attempt by Congress to regulate the right of trade-marks is to be found in the Act of July 8, 1870, to which we have referred, entitled “An Act to revise, consolidate, and amend the statutes relating to patents and copyrights,” terms which have long since become technical, as referring, the one to inventions and the other to the writings of authors, it is a reasonable inference that this part of the statute also was, in the opinion of Congress, an exercise of the power found in that clause of the Constitution. It may also be safely assumed that until a critical examination of the subject in the courts became necessary, it was mainly if not wholly to this clause that the advocates of the law looked for its support.
Any attempt, however, to identify the essential characteristics of a trade-mark with inventions and discoveries in the arts and sciences, or with the writings of authors, will show that the effort is surrounded with insurmountable difficulties. The ordinary trade-mark has no necessary relation to invention or discovery. The trade-mark recognized by the common law is generally the growth of a considerable period of use, rather than a sudden invention. It is often the result of accident rather than design, and when under the Act of Congress it is sought to establish it by registration, neither originality, invention, discovery, science, nor art is in any way essential to the right conferred by that Act.
If we should endeavor to classify it under the head of writings of authors, the objections are equally strong. In this, as in regard to inventions, originality is required. And while the word writings may be liberally construed, as it has been, to include original designs for engravings, prints, &c., it is only such as are original, and are founded in the creative powers of the mind. The writings which are to be protected are the fruits of intellectual labor, embodied in the form of books, prints, engravings, and the like. The trade-mark may be, and generally is, the adoption of something already in existence as the distinctive symbol of the party using it. At common law the exclusive right to it grows out of its use, and not its mere adoption. By the Act of Congress this exclusive right attaches upon registration. But in neither case does it depend upon novelty, invention, discovery, or any work of the brain. It requires no fancy or imagination, no genius, no laborious thought. It is simply founded on priority of appropriation. We look in vain in the statute for any other qualification or condition. If the symbol, however plain, simple, old, or well–known, has been first appropriated by the claimant as his distinctive trade–mark, he may by registration secure the right to its exclusive use.
While such legislation may be a judicious aid to the common law on the subject of trade–marks, and may be within the competency of legislatures, whose general powers embrace that class of subjects, we are unable to see any such power in the constitutional provision concerning authors and inventors, and their writings and discoveries.
The other clause of the Constitution supposed to confer the requisite authority on Congress is the third of the same section, which, read in connection with the granting clause, is as follows: “The Congress shall have power to regulate commerce with foreign nations, and among the several States, and with the Indian tribes.”
The argument is that the use of a trade–mark — that which alone gives it any value — is to identify a particular class or quality of goods as the manufacture, produce, or property of the person who puts them in the general market for sale; that the sale of the article so distinguished is commerce; that the trade-mark is, therefore, a useful and valuable aid or instrument of commerce, and its regulation by virtue of the clause belongs to Congress, and that the act in question is a lawful exercise of this power.
The question, whether the trade-mark bears such a relation to commerce in general terms as to bring it within congressional control, when used or applied to the classes of commerce which fall within that control, is one which, in the present case, we propose to leave undecided. We adopt this course because when this court is called on in the course of the administration of the law to consider whether an Act of Congress, or of any other department of the government, is within the constitutional authority of that department, a due respect for a co-ordinate branch of the government requires that we shall decide that it has transcended its powers only when that is so plain that we cannot avoid the duty. In such cases it is manifestly the dictate of wisdom and judicial propriety to decide no more than is necessary to the case in hand.
There still remains a very large amount of commerce, perhaps the largest, which, being trade or traffic between citizens of the same State, is beyond the control of Congress. When, therefore, Congress undertakes to enact a law, which can only be valid as a regulation of commerce, it is reasonable to expect to find on the face of the law, or from its essential nature, that it is a regulation of commerce. If not so limited, it is in excess of the power of Congress. If its main purpose be to establish a regulation applicable to all trade, to commerce at all points, especially if it be apparent that it is designed to govern the commerce wholly between citizens of the same State, it is obviously the exercise of a power not confided to Congress.
We find no recognition of this principle in the statutes on trade-marks. We would naturally look for this in the description of the class of persons who are entitled to register a trade-mark, or in reference to the goods to which it should be applied. If, for instance, the statute described persons engaged in a commerce between the different States, and related to the use of trade-marks in such commerce, it would be evident that Congress believed it was acting under the clause of the Constitution which authorizes it to regulate commerce among the States. So if, when the trade-mark has been registered, Congress had protected its use on goods sold by a citizen of one State to another, or by a citizen of a foreign State to a citizen of the United States, it would be seen that Congress was at least intending to exercise the power of regulation conferred by that clause of the Constitution.
But no such idea is found or suggested in this statute. Its language is: “Any person or firm domiciled in the United States, and any corporation created by the United States, or of any State or Territory thereof,” or any person residing in a foreign country which by treaty or convention affords similar privileges to our citizens, may by registration obtain protection for his trade-mark. Here is no requirement that such person shall be engaged in the kind of commerce which Congress is authorized to regulate. It is a general declaration that anybody in the United States, and anybody in any other country which permits us to do the like, may, by registering a trade-mark, have it fully protected. So, while the person registering is required to furnish “a statement of the class of merchandise, and the particular description of the goods comprised in such class, by which the trade-mark has been or is intended to be appropriated,” there is no hint that the goods are to be transported from one State to another, or between the United States and foreign countries. No limitation is suggested in regard to persons or property engaged in the different classes of commerce mentioned in the Constitution.
The remedies provided by the Act when the right of the owner of the registered trade-mark is infringed, are not confined to the case of a trade-mark used in foreign or interstate commerce. It is therefore manifest that no such distinction is found in the act, but that its broad purpose was to establish a universal system of trade-mark registration, for the benefit of all who had already used a trade-mark, or who wished to adopt one in the future, without regard to the character of the trade to which it was to be applied or the residence of the owner.
[The Attorney General] has suggested that if Congress has power to regulate trade–marks used in commerce with foreign nations and among the several States, these statutes shall be held valid in that class of cases, if no further. To this there are two objections: First, the indictments in these cases do not show that the trade-marks which are wrongfully used were trade-marks used in that kind of commerce.
Second, while it may be true that when one part of a statute is valid and constitutional, and another part is unconstitutional and void, the court may enforce the valid part where they are distinctly separable so that each can stand alone, it is not within the judicial province to give to the words used by Congress a narrower meaning than they are manifestly intended to bear in order that crimes may be punished which are not described in language that brings them within the constitutional power of that body. If we should, in the case before us, undertake to make by judicial construction a law which Congress did not make, it is quite probable we should do what, if the matter were now before that body, it would be unwilling to do; namely, make a trade–mark law which is only partial in its operation, and which would complicate the rights which parties would hold, in some instances under the Act of Congress, and in others under State law.
The questions in each of these cases being an inquiry whether these statutes can be upheld in whole or in part as valid and constitutional, must be answered in the negative.
Burrow-Giles Lithography Co. v. Sarony
United States Supreme Court
111 U.S. 53 (1884)
Mr. Justice Miller delivered the opinion of the Court.
Plaintiff [Sarony] is a lithographer, and defendant [Burrow–Giles] a photographer, with large business in those lines in the City of New York. The suit was commenced by an action at law in which Sarony charged the defendant with violating his copyright in regard to a photograph, the title of which is “Oscar Wilde, No. 18.” A jury being waived, the court made a finding of facts on which a judgment in favor of the plaintiff was rendered for the sum of $600, for the plates and 85,000 copies sold and exposed to sale; and $10, for copies found in his possession. Among the finding of facts made by the court the following presents the principal question raised by the assignment of errors in the case:
(3) That the plaintiff, in 1882, under an agreement with Oscar Wilde, became and was the author, inventor, designer, and proprietor of the photograph in suit, the title of which is “Oscar Wilde, No. 18,” being the number used to designate this particular photograph and of the negative thereof; that the same is a useful, new, harmonious, characteristic, and graceful picture, and that said plaintiff made the same entirely from his own original mental conception, to which he gave visible form by “posing the said Oscar Wilde in front of the camera, selecting, and arranging the costume, draperies, and other various accessories in said photograph, arranging the subject so as to present graceful outlines, arranging and disposing the light and shade, suggesting and evoking the desired expression, and from such disposition, arrangement, or representation, made entirely by the plaintiff, he produced the picture in suit, Exhibit A, April 14, 1882, and that the terms “author,” “inventor,” and “designer,” as used in the art of photography and in the complaint, mean the person who so produced the photograph.
Accordingly, the [principal] assignment of error in this court by plaintiff in error is that the court below decided that Congress had and has the constitutional right to protect photographs and negatives thereof by copyright.
The constitutional question is not free from difficulty. The eighth section of the first article of the Constitution is the great repository of the powers of Congress, and by the eighth clause of that section Congress is authorized “to promote the progress of science and useful arts, by securing, for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” The argument here is that a photograph is not a writing nor the production of an author. Under the Acts of Congress designed to give effect to this section, the persons who are to be benefited are divided into two classes — authors and inventors. The monopoly which is granted to the former is called a copyright; that given to the latter, letters patent. It is the first of these under which plaintiff asserts a claim for relief. It is insisted, in argument, that a photograph being a reproduction, on paper, of the exact features of some natural object, or of some person, is not a writing of which the producer is the author.
The first Congress of the United States, sitting immediately after the formation of the Constitution, enacted that the “author or authors of any map, chart, book, or books ... shall have the sole right and liberty of printing, reprinting, publishing, and vending the same for the period of fourteen years from the recording of the title thereof.” This statute not only makes maps and charts subjects of copyright, but mentions them before books in the order of designation. The second [1802 Copyright Act provides that] he who shall invent and design, engrave, etch, or work, any historical or other print or prints, shall have the same exclusive right for the term of 14 years.
The construction placed upon the Constitution by the first Act of 1790 and the Act of 1802, by the men who were contemporary with its formation, many of whom were members of the convention which framed it, is of itself entitled to very great weight, and when it is remembered that the rights thus established have not been disputed during a period of nearly a century, it is almost conclusive. Unless, therefore, photographs can be distinguished in the classification of this point from the maps, charts, designs, engravings, etchings, cuts, and other prints, it is difficult to see why congress cannot make them the subject of copyright as well as the others.
These statutes certainly answer the objection that books only, or writing, in the limited sense of a book and its author, are within the constitutional provision. Both these words are susceptible of a more enlarged definition than this. An author in that sense is “he to whom anything owes its origin; originator; maker; one who completes a work of science or literature.” So, also, no one would now claim that the word “writing” in this clause of the Constitution, though the only word used as to subjects in regard to which authors are to be secured, is limited to the actual script of the author, and excludes books and all other printed matter. By writings in that clause is meant the literary productions of those authors, and Congress very properly has declared these to include all forms of writing, printing, engravings, etchings, etc., by which the ideas in the mind of the author are given visible expression.
The only reason why photographs were not included in the extended list in the Act of 1802 is, probably, that they did not exist, as photography, as an art, was still unknown, and the scientific principle on which it rests, and the machinery by which it is operated, have all been discovered long since that statute was enacted.
We entertain no doubt that the Constitution is broad enough to cover an Act authorizing copyright of photographs, so far as they are representatives of original intellectual conceptions of the author. But it is said that an engraving, a painting, a print, does embody the intellectual conception of its author, in which there is novelty, invention, originality, and therefore comes within the purpose of the Constitution in securing its exclusive use or sale to its author, while a photograph is the mere mechanical reproduction of the physical features or outlines of some object, animate or inanimate, and involves no originality of thought or any novelty in the intellectual operation connected with its visible reproduction in the shape of a picture. That while the effect of light on the prepared plate may have been a discovery in the production of these pictures, and patents could properly be obtained for the combination of the chemicals, for their application to the paper or other surface, for all the machinery by which the light reflected from the object was thrown on the prepared plate, and for all the improvements in this machinery, and in the materials, the remainder of the process is merely mechanical, with no place for novelty, invention, or originality. It is simply the manual operation, by the use of these instruments and preparations, of transferring to the plate the visible representation of some existing object, the accuracy of this representation being its highest merit.
This may be true in regard to the ordinary production of a photograph, and that in such case a copyright is no protection. On the question as thus stated we decide nothing.
The third finding of facts says, in regard to the photograph in question, that it is a “useful, new, harmonious, characteristic, and graceful picture, and that plaintiff made the same entirely from his own original mental conception, to which he gave visible form by posing the said Oscar Wilde in front of the camera, selecting and arranging the costume, draperies, and other various accessories in said photograph, arranging the subject so as to present graceful outlines, arranging and disposing the light and shade, suggesting and evoking the desired expression, and from such disposition, arrangement, or representation, made entirely by plaintiff, he produced the picture in suit.” These findings, we think, show this photograph to be an original work of art, the product of plaintiff’s intellectual invention, of which plaintiff is the author, and of a class of inventions for which the Constitution intended that Congress should secure to him the exclusive right to use, publish, and sell it.
The judgment of the circuit court is accordingly affirmed.
Notes on The Trademark Cases and Sarony
1. In Sarony the Court upheld the application of the copyright clause and statute to legal protection of Sarony’s photograph of Oscar Wilde because, on the facts of the case, Sarony had exercised his faculty of “original mental conception, to which he gave visible form by posing the said Oscar Wilde in front of the camera, selecting and arranging the costume, draperies, and other various accessories in said photograph, arranging the subject so as to present graceful outlines, arranging and disposing the light and shade, suggesting and evoking the desired expression....” The Court was careful to point out, however, that it was deciding nothing about ordinary photographs lacking such original creative activity. Manifestly, many or most photographs — such as fixed-focus driver’s license pictures, coin-operated kiosk portraits, and “stand on the white line” identification card photos — lack such posing, selecting, arranging, disposing, suggesting, evoking, and so on. There are, therefore, it would seem, both creative and mere rote photographs. Consider a very accurate and exact photograph of a 400-year old painting, requiring a great deal of skill, experience and effort to prepare. Is it protected against identical copies? See Bridgeman Art Library v. Corel Corp., 36 F.Supp.2d 191 (S.D.N.Y. 1999). Would it make a difference if we substitute for the painting a sculpture, say, Michaelangelo's David? (The photographer selects the angle and lighting, might use drapery or other background, so as to present graceful outlines, arranging and disposing the light and shade, suggesting and evoking the desired effect.)
This is another Sarony photograph of Oscar Wilde — the said Oscar Wilde posed in front of the camera, arranged so as to present graceful outlines, the desired expression evoked, and otherwise manifested as a work of authorship.
Does the photograph at the left below infringe the one above and to the right?
Does the following photograph on the right below infringe the one above and to the right? Are the selection of costume and draperies, the graceful outlines presented, and desired expression evoked substantially similar? Does it infringe the photograph shown at finding (3) in the Sarony decision?
What is the relation between the elements of these works that make for the work being eligible for copyright protection and the elements that make for one work being an infringement of the copyright in another work? Can same costume or draperies, or substantially similar facial expression, count for eligibility but not count for infringement purposes? Or vice versa?
2. Did the Sarony Court pause to ask whether Congress would have wanted to protect some photographs (creative ones) while leaving others (mere-rote ones) unprotected (assuming that Congress knew about photography and wanted to address the subject)?
Yet, in The Trademark Cases the Court expressed great concern about putting words into the mouth of Congress or thoughts into its head. If Congress did not clearly say it wanted to regulate trademarks in commerce but not trademarks not in commerce, the Court would not force such distinctions on Congress. How do you account for that greater delicacy? How would you harmonize the decisions?
3. Why do trademarks fail to qualify as “writings”? Automobile companies have been known to hire famous poets to think up names for new cars. (Ford did that but, instead of taking the poetic advice it bought, Ford decided to name the new car the “Edsel.”) If you think that trademarks are too short to be writings (is that a valid test?), consider that slogans are protectable under the Trademark Act and haiku are protected writings under copyright law. The respective lengths are comparable.
The creativity threshold for copyright is quite low, see Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991), infra; Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 102-03 (2d Cir. 1951), and some coined trademarks may well exceed that virtually de minimis threshold.
4. Suppose that I pose Bob’s source code in front of my scanner, carefully select and arrange the settings (ASCII output, 8.5 x 11 paper, 1–inch margins all around, etc.), evoke an appropriate output (to 3.5–inch floppy disk in A), and then arrange and dispose the information thus loaded by means of a compiler in my computer and download it thence to another 3.5–inch floppy disk. Is the resulting work in object code an original work of authorship that I have created by means of my own original mental conception? Why or why not?
What about use of a generator of user interfaces? What about a sales report generated by 1-2-3, dBase, or Quicken? By a query language? Frame arguments, based on the Sarony opinion, in support of such copyright protection. Does the decision in Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991), infra, do any harm to the arguments? To the rationale of Sarony?
5. The Semiconductor Chip Protection Act of 1984 (SCPA), 17 U.S.C. §§ 901-914, protects semiconductor chip layouts (topographies) against unauthorized copying when the alleged infringement involves conduct in or affecting commerce. 17 U.S.C. § 910(a). The legislative history indicates that this limitation was inserted because of concern by some about The Trade-Mark Cases. Was their concern misplaced?
What of a law prohibiting unauthorized downloading from computer databases? What of a law protecting ideas embodied in computer programs?
6. The SCPA, § 902(b), denies protection to works that are not “original” (in the sense of being copied from another work) or that consist “of designs that are staple, commonplace, or familiar in the semiconductor industry, or variations of such designs, combined in a way that, considered as a whole, is not original.” The latter test is higher than that of copyright law but lower than that of patent law. The various phrases in this section were added at different times during the evolution of the SCPA. The legislative history and a discussion of the meaning of these layered terms is found in Richard H. Stern, Semiconductor Chip Protection § 5.3[A] (1986).
Magic Marketing, Inc. v. Mailing Services of Pittsburgh, Inc.
United States District Court
634 F. Supp. 769 (W.D. Pa. 1986)
Ziegler, District Judge
American Paper now moves for summary judgment on the issue of copyrightability. We hold that the envelopes allegedly manufactured by American Paper cannot be accorded copyright protection.
Plaintiff, Magic Marketing, Inc., designs and markets mass mailing advertising campaigns for businesses. It alleges that it holds a valid copyright in the relevant letters, forms and envelopes. According to plaintiff, defendant Mailing Services infringed its copyright by selling copies of the materials to other customers.
Copies of the envelopes in question are contained in Exhibits A. and F. Both envelopes are conventional in size and contain standard instructions to the postmaster printed on the front. A solid black stripe runs horizontally across the middle of one envelope. The words “priority message: contents require immediate attention” are printed in large white letters within the stripe. A shorter black stripe encasing the word “telegram” lies at the bottom right corner of the envelope. The other envelope has no stripe. Printed in bold-faced letters just above the window are the words “gift check enclosed.” The copyright marking, “©1984 Magic Marketing, Inc.,” is imprinted on the backs of both envelopes.
II. Copyrightability of the Envelopes
Section 102(a) of the Copyright Act provides that copyright protection subsists in “original works of authorship.” Originality is the “one persuading element” essential for copyright protection regardless of the form of the work. Originality is distinct from novelty. To be original, a work must be the product of independent creation. While the test for originality is a “low threshold,” the “author” must contribute more than a trivial variation of a previous work, i.e., the work must be recognizably “his own.” There is a narrow class of cases where even admittedly independent efforts may be deemed too trivial or insignificant to support copyright protection.
This class is illustrated by case authority denying copyright protection to “fragmentary words and phrases” and to “forms of expression dictated solely by functional considerations.” Such material does not exhibit the minimal level of creativity necessary to warrant copyright protection. Indeed, regulations promulgated pursuant to the Copyright Act list the following works as not subject to copyright:
Words and short phrases such as names, titles, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering or coloring; mere listing of ingredients or contents. [37 C.F.R. § 202.1(a) (1985).]
We hold that the envelopes do not exhibit a sufficient degree of creativity to be copyrightable. The terse phrases on the envelopes describe their contents: “telegram,” “gift check,” and “priority message.” The listing of the contents of an envelope or package, like a listing of ingredients, is not protected under the copyright regulations. 37 C.F.R. § 202.1(a). We note that even more colorful descriptions, such as advertising slogans, are not accorded copyright protection. For example, the phrase “most personal sort of deodorant” on a feminine hygiene product is not copyrightable. Alberto-Culver Co. v. Andrea Dumon, Inc., 466 F.2d 705, 711 (7th Cir. 1972). The phrase “contents require immediate attention” merely exhorts the recipient to open the envelope immediately upon delivery. It is nothing more than a direction or instruction for use. As such, it is unprotected. More complex directions, such as the serving directions on a frozen dessert package, are not copyrightable. Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 266 F.2d 541 (2d Cir.1959). In sum, the phrases printed on the envelopes are generic in nature and lack the minimal degree of creativity necessary for copyright protection.
1. This decision is representative of a rule that “de minimis works” are not copyrightable. They do not just have a narrow scope of copyright protection or a thin copyright. They have none. What implications does this have for attempts to secure copyright registration for small aspects of a work, such as a single, short menu screen? How would you avoid running afoul of the rule in such a situation?
2. Could the plaintiff in this case have found refuge in the “compilation” rule, for example, by asserting a copyright in the set of materials as a compilation of direct-mailing advertising material? What kind of copyright protection would a compilation of de minimis items enjoy? Can you magically transform 100 infinitesimally original items into a copyright-protected compiliation, the way you can integrate infinitesimal dx slices under F(x) to get the area ∫ F(x)dx?
3. Is a work comprising a composite of old or de minimis materials properly rejected for copyright registration because it lacks sufficient “original authorship”? See Atari Games Corp. v. Oman, 888 F.2d 878 (D.C. Cir. 1989) (video game); Reader’s Digest Ass’n v. Conservative Digest, Inc., 821 F.2d 800 (D.C. Cir. 1987) (magazine cover format as graphic work).
4. Once a work has been registered with the Copyright Office, which awards a certificate without technical examination for creativity, the work acquires a presumption of originality and the other requirements for copyright protection. 17 U.S.C. § 410(c). This factor has supported some rather flimsy claims of copyright
. In Santrayll v. Burrell, 39 U.S.P.Q.2d (BNA) 1052 (S.D.N.Y. 1996), the court denied summary judgment against a commercial song/jingle that Persi-Cola exploited. The song contained “uh-oh” repeated four times in an allegedly distinctive rhythm. The court said that “a combination of two otherwise unprotectible elements [uh-oh + rhythm] can create a sufficiently original, and indeed, commercially marketable, composition.” Similarly, in Tin Pan Apple, Inc. v. Miller Brewing Co., 30 U.S.P.Q.2d (BNA) 1791 (S.D.N.Y. 1994), the court denied summary judgment against a combination of “Brr” and “Hugga-Hugga,” relying in part on the presumption of § 410(c). These decisions suggest that claims of originality based on integrating infinitesimals may get a copyright infringement case to a jury.
5. The de minimis rule of the Magic Marketing case involves quantitatively too little material to constitute a work of authorship. In other cases, there may be a great deal of material in total, but its expressive content is too little. For example, a large catalog may contain a great deal of expressive material describing the catalogued products in prose and many parts numbers for the respective products. Suppose the parts are numbered according to a system in which all of the various parameters applicable to a part comprise the part's unique number. Say it is a nine-digit number and the first two digits represent the last two digits of the year it was first sold, the next three digits represents how long it is in mm, the next digit represents the material (brass=1, steel=2, plastic=3), and so on. Each part has a unique number dictated by the numbering system and the parameters of the part. In Southco, Inc. v. Kanebridge Corp., 258 F.3d 148 (3d Cir. 2001), the court held that when the numbering system dictated the number through mechanical application of the system, the de minimis rule negated copyright protection for the part numbers, and they could be extensively copied with impunity. (Of course, the prose descriptions if expressive are copyright-protected.)
6. Still another de minimis rule concerns infringement. Taking a very small amount of material from a work is excused under the maxim de minimis non curat lex or sometimes as fair use. See Sandoval v. New Line Cinema Corp., 147 F.3d 215 (2d Cir. 1997). See also Gordon v. Nextel Communications, 345 F.3d 922 (6th Cir. 2003) (use of copyright-protected dental illustrations as background to TV commercial held de minimis because illustrations were not in focus and appeared only briefly). On the other hand, a very recent and much-criticized Sixth Circuit decision holds that even de minimis (three notes repeated at several points) musical sampling of a copyright-protected sound recording is infringement. Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005). Based on that decision, would the material at this link be an example of copyright infringement? Will the Bridgeport decision kill off hip-hop? Do you think that the "fair use" rule will step in to save hip-hop? Should it? For blog commentary on the decision, use this link which cross-cites other commentary. See also Sample This. Another bizarre and much criticized decision, Cook v. Robbins, 232 F.3d 736 (9th Cir. 2000), found infringement and awarded damages for taking two phrases, "meter drop" and "rolling stock," and repeating them several times in a competitive work. Commentator Neil Boorstyn said, "As a matter of law, logic, and common sense, the holding in Cook is bewildering." The case was later settled and the Ninth Circuit withdrew the opinion.
Toro Co. v. R & R Products Co.
United States Court of Appeals for the Eighth Circuit
787 F.2d 1208 (8th Cir. 1986)
[Plaintiff Toro manufactures lawn care and snow removal equipment. Its catalog contains drawings of its replacement parts and part numbers identifying them. Defendant R&R manufactures the most frequently called for repair parts of Toro and others. Toro sued R&R for copyright infringement because R&R used the same parts numbers as those in Toro’s catalog. Toro lost below because of 17 U.S.C. § 102(b).]
Timbers, Circuit Judge.
Toro raises a number if issues on appeal, the most significant of which is whether the district court erred in holding that Toro’s parts–numbering system is not copyrightable, because it lacks originality.
By manufacturing and selling only those types of replacement parts that are in high demand — those that wear out frequently — R&R can offer these parts to consumers at a considerable savings. The original manufacturers of the machines, like Toro, must offer a full line of replacement parts to ensure continued sales of their machines. Some of the overhead for manufacturing and stocking the full line of replacement parts is reflected in Toro’s higher replacement-part prices. (The record indicates that R&R’s prices generally are 10% to 25% below Toro’s prices.)
R&R’s main sales tool is a catalog that it sends periodically to past and prospective customers. This catalog is central to the instant litigation. The catalog is composed of lists of various original manufacturers’ replacement parts indexed according to their original manufacturer part name and part number. Next to each original manufacturer part name and number is the part number for R&R’s part which replaces the original manufacturer’s part. Alongside this is R&R’s price. Toro’s part numbers tend to be five or six-digit numbers with a hyphen inserted somewhere. R&R’s corresponding part numbers are identical except that they are preceded by the letter “R.” R&R has employed draftsmen to create similar drawings of its own parts. The catalogs also contain a disclaimer, printed at various pages throughout the catalog, stating:
All original equipment manufacturer’s names, drawings, colors, and part numbers are used for identification purposes only, and we are in no way implying that any of our products are original equipment parts.
Customers wishing to order R&R’s parts may either order directly from R&R by mail or purchase the parts from a local dealer who carries them.
Toro’s complaint alleged that R&R, through its catalogs, had infringed Toro’s copyrights in its part drawings and parts-numbering system. R&R moved to dismiss that part of Toro’s copyright infringement claim based on R&R’s use of Toro’s parts-numbering system. R&R asserted that the parts-numbering system was an uncopyrightable “system” under 17 U.S.C. § 102(b). The court dismissed that portion of Toro’s copyright infringement claim based on R&R’s use of Toro’s parts numbers. The court held that § 102(b) precluded copyright protection for systems like Toro’s parts-numbering system.
In the balance of this opinion we shall address the dismissal of Toro’s copyright infringement claim based on its parts-numbering system. Toro argues that the court erred in holding that § 102(b) precluded copyright protection for its parts-numbering system. We affirm the court’s holding, but we do so for different reasons.
Under 17 U.S.C. § 102(a), any “original work of authorship fixed in any tangible medium of expression” is entitled to copyright protection. Section 102(b), a proviso to § 102(a), states:
In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.
This section is nothing more than a codification of the idea/expression dichotomy as it developed in the case law prior to passage of the 1976 Act. The case law embodying the idea/expression dichotomy, which traces its roots back to Baker v. Selden, 101 U.S. 99 (1880), holds that copyright protection extends only to the expression of a particular idea, not the idea itself. The doctrine is grounded both in a presumed legislative intent to grant an author a monopoly only in his expressions — not his ideas — and in the First Amendment interest in the free exchange of ideas.
In light of this history of § 102(b), the district court’s literal application of the section’s language — that Toro’s parts–numbering system is not copyrightable because it is a “system”— cannot stand. All that the idea/expression dichotomy embodied in § 102(b) means, in the parts-numbering system context, is that Toro could not copyright the idea of using numbers to designate replacement parts. Section 102(b) does not answer the question of whether Toro’s particular expression of that idea is copyrightable.
R&R urges that we uphold the court’s ruling by assuming that under the rubric of § 102(b) the court actually was applying the doctrine of merger. Although we doubt that the court intended to invoke the doctrine, it is irrelevant since we are convinced that Toro’s parts-numbering system does not fall within the small category of works to which merger applies. Under the copyright law doctrine of merger, a close cousin to the idea/expression dichotomy, copyright protection will be denied to even some expressions of ideas if the idea behind the expression is such that it can be expressed only in a very limited number of ways. The doctrine is designed to prevent an author from monopolizing an idea merely by copyrighting a few expressions of it. Morrissey v. Proctor & Gamble Co., 379 F.2d 675, 678-79 (1st Cir. 1967) (copyright protection will be denied when “by copyrighting a mere handful of forms, [a party] could exhaust all possibilities of future use of the substance [of the idea]”). Cf. Baker v. Selden, supra (if particular expression is necessary incident to an idea, expression is not copyrightable). We do not believe that the idea of a parts-numbering system is susceptible of only a very limited number of expressions. Such systems will vary in complexity and composition as the type of information attempted to be encoded into the designation and the method of encoding varies. Granting a particular company a copyright in its own system or systems would not necessarily monopolize the idea of a parts-numbering system.
We believe, however, that the court’s holding in the instant case that appellant’s parts-numbering system is not copyrightable should be affirmed for a more basic reason. As stated above, in order to sustain copyright protection under the 1976 Act, the parts–numbering system must be within the subject matter of copyright — it must be an original work of authorship fixed in a tangible medium of expression. While it is clear that Toro’s parts-numbering system is adequately “fixed,” we hold that it lacks the requisite originality to sustain copyright protection.
Originality is undefined in the 1976 Act, but the legislative history makes clear that the preexisting case law on originality is meant to apply without change. Under originality case law, a work need not be artistic or novel to achieve protection. Mazer v. Stein, 347 U.S. 201 (1954). Originality denotes only enough definite expression so that one may distinguish authorship. Id. at 214 (“They must be original, that is, the author’s tangible expression of his ideas.”); Burrow-Giles Lithographic Co. v. Sarony (photograph is copyrightable because author’s efforts in composing subject shows photograph was “an original work, the product of plaintiff’s intellectual invention”). If the disputed work is similar to a preexisting protected work or one in the public domain, the second work must contain some variation recognizable as that of the second author. L. Batlin & Sons, Inc. v. Snyder, 536 F.2d 486 (2d Cir.) (en banc), cert. denied, 429 U.S. 857 (1976); Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951) (for copy of work already in public domain to be original, author of copy must have “contributed something more than a `merely trivial’ variation, something recognizably `his own.’”).
Applying these principles to appellant’s parts–numbering system, we hold that the system lacks the requisite originality for copyright protection. The undisputed evidence below shows that Toro’s “system” is composed of arbitrarily assigning to a particular replacement part a random number when Toro creates the part. Toro’s Vice President for Distribution testified that “once a part is created an arbitrary number is assigned” to the part to identify it. Toro’s counsel, when moving for a new trial, told the court that “it was undisputed at trial that Toro’s parts-numbering system was arbitrary and random.” There was no evidence that a particular series or configuration of numbers denoted a certain type or category of parts or that the numbers used encoded any kind of information at all. In short, numbers were assigned to a part without rhyme or reason. This record establishes that Toro’s parts-numbering “system” falls short of even the low threshold of originality. The random and arbitrary use of numbers in the public domain does not evince enough originality to distinguish authorship. The expression itself is nothing more than the public domain numbers. There is no variation, other than the trivial hyphen, to establish authorship. Also, it is clear that no effort or judgment went into the selection or composition of the numbers.
We are left, then, with the accidental marriage of a part and a number. We do not believe that such a marriage produces an original work of authorship. Toro simply has not added enough to its parts numbers to make them original and remove them from the public domain. This is not to say that all parts-numbering systems are not copyrightable. A system that uses symbols in some sort of meaningful pattern, something by which one could distinguish effort or content, would be an original work. Originality is a very low threshold, but still a threshold. Since Toro’s parts-numbering system has not crossed this threshold, we affirm the district court’s dismissal of Toro’s copyright infringement claim based on the system.
To summarize: We hold that Toro’s parts-numbering system is not copyrightable because it lacks originality. The arbitrary assignment of randomly chosen numbers to a particular replacement part does not evince enough authorship for copyright protection. In the last analysis, R&R has not committed a wrong in aggressively competing with Toro for a share of its replacement parts market.
While federal law prohibits a competitor from taking advantage of another’s intellectual property or from palming off its products as another’s, the law does not foreclose a competitor from zeroing in on a profitable market segment and offering an alternative product.
1. What is Toro’s alleged work of authorship that R&R allegedly infringed? Is the right question to ask whether that work is copyrightable, or should one ask whether R&R’s conduct infringed the copyright because R&R took protected elements of the work without Toro’s authorization?
What difference does it make which question is asked? What is the difference between the district court’s approach based on § 102(b), holding the work a system, and the court of appeal’s approach based on originality?
How do the answers to the foregoing questions differ depending on what is the work of authorship? Does the difference alter who prevails in the suit?
2. Is Toro’s idea the idea of using numbers to designate replacement parts? Is that too general? Can you identify a more specifically formulated idea? Has Toro simply no idea at all? Is it analytically helpful (does it further the progress of the legal analysis) to ask what is Toro’s idea?
Does it further the analysis to state that “arbitrary and random” selection of alphanumeric characters falls below the line for originality? The statutes offers copyright protection only to “original works of authorship.” Does analysis of “original” merge with that of “authorship”? Other than a requirement of refraining from outright copying, do you perceive any difference in these elements?
3. Could R&R’s use be a fair use? Is there some other possible privilege? How is this case like or unlike British Leyland Motor Corp. v. Armstrong Patents Co.,  1 All Eng. Rep. 852 (H.L.), which follows in the next chapter?
4. Has this case any bearing on machine authorship? On programs generated by user interface generators or code generators, such as Telon?
5. Wheaton v. Peters redux: In 1979 Henry Lind replaced Henry Putzell as Reporter of the United States Supreme Court. Imagine the following: In a spasm of privatization frenzy, the Reagan Court decided to go back (two centuries) to letting the Court Reporter publish and sell U.S. Reports, under his own name. The order is retroactive, and the celebrated 19th Century controversy between Wheat. and Pet. Reports recurs. Starting in 1979 with 1 Lind, Reporter Lind marketed his version of U.S. Reports. Also in the marketplace, for the pre-1979 period covered by Putz. Reports, were Putzell and his successors in title.
Putzell published his pre-1979 U.S. Reports using the most modern, state–of–the-art computerized-publishing and word–processing software, which automatically inserts page–breaks in the right places, prevents “orphans” (first line of a new paragraph as last line on page) and “widows” (first line on a new page the last line of a paragraph), and so on. After a few years, like Peters, Lind decided to expand his market backwards, into the pre-1979 period before he began 1 Lind. But Lind discovers that users are accustomed, or even constrained, to cite quotations from pre–1979 opinions of the Supreme Court by giving the particular page (“jump cite” or “pinpoint cite”) of Putz. on which the cited quotation appeared. Therefore, to make his version of the pre-1979 reports more attractive to his customers, Lind adopts the practice of inserting “star-page cites” in his reprints. (A star-page cite is a “[*n]” inserted into the text of Lind’s version of Putz. at a point at which a page-break occurs in Putzell’s version, where n is the number of the new page. The custom began at least as early as the 18th century, when reprinters of Blackstone and Coke provided their customers with the page cites of the original editions, which had different page breaks.)
The Putzell group is outraged. But they have learned from Wheaton v. Peters, 34 U.S. (8 Pet.) 591 (1834). They have registered Putzell’s work under the 1976 Copyright Act, and now sue for infringement of the statutory copyright. But Lind has learned from Toro v. R&R and knows something about forum-shopping, so that he gets the case moved to the Eighth Circuit to rely on that precedent. What result? Read on.
West Pub. Co. v. Mead Data Central, Inc.
United States Court of Appeals for the Eighth Circuit
799 F.2d 1219 (8th Cir. 1986), cert. denied, 479 U.S. 1070 (1987)
Arnold, Circuit Judge.
Mead Data Central, Inc. (MDC) appeals from a preliminary injunction issued in a copyright-infringement action brought by West Publishing Company (West). West’s claim is based upon MDC’s proposed introduction of “star pagination,” keyed to West’s case reports, into the LEXIS system of computer-assisted legal research.
For more than a century, West has been compiling and reporting opinions of state and federal courts. West publishes these opinions in a series of books known as the “National Reporter System.” Before it publishes an opinion, West checks the accuracy of case and statutory citations in the opinion and adds parallel citations, prepares headnotes and a synopsis for the opinion, and arranges the opinion in West’s style and format. West then assigns its report of each opinion to one of the individual series in the National Reporter System, such as Federal Reporter, Second Series; this assignment is based on the court and/or the subject matter of the opinion. Next, West assigns the case to a volume in the series, further categorizes and arranges the cases within the volume, and prepares additional materials, such as indices and tables of cases, for each volume. Volumes and pages are numbered sequentially to facilitate precise reference to West reports; citing the proper volume number, series name, and page number communicates the exact location of a West report, or a portion thereof, within the National Reporter System.
MDC developed, owns, and operates LEXIS, a computer-assisted, on-line legal–research service. LEXIS, like West’s National Reporter System, reports the decisions of state and federal courts. MDC announced that it planned to add “star pagination” to the text of opinions stored in the LEXIS data-base. This new service would insert page numbers from West’s National Reporter System publications into the body of LEXIS reports, providing “jump” or “pinpoint” citations to the location in West’s reporter of the material viewed on LEXIS. Thus, with the LEXIS Star Pagination Feature, LEXIS users would be able to determine the West page number corresponding to the portion of an opinion viewed on LEXIS without ever physically referring to the West publication in which the opinion appears.
In response to MDC’s announcement, West brought this copyright infringement action.
MDC maintains that any aspects of West’s reporters affected by the LEXIS Star Pagination Feature are not copyrightable. The dominant chord of MDC’s argument is that West claims copyright in mere page numbers. MDC adds that in any event whether West claims copyright in its case arrangement or simply in its pagination, West’s claim must fail because neither case arrangement nor pagination can ever qualify as the original work of an author. Even were this possible, MDC goes on, West’s case arrangement and pagination do not in fact meet this standard. Finally, MDC contends that even were West’s arrangement of cases protected by copyright, the proposed use of West’s page numbers in LEXIS reports would not constitute infringement.
We do not agree with MDC that West’s claim here is simply one for copyright in its page numbers. Instead, we concur in the District Court’s conclusion that West’s arrangement is a copyrightable aspect of its compilation of cases, that the pagination of West’s volumes reflects and expresses West’s arrangement, and that MDC’s intended use of West’s page numbers infringes West’s copyright in the arrangement.
A. Copyright Protection
The Copyright Act provides copyright protection for “original works of authorship fixed in any tangible medium of expression.” 17 U.S.C. § 102(a). The standard for “originality” is minimal. It is not necessary that the work be novel or unique, but only that the work have its origin with the author — that it be independently created. Little more is involved in this requirement than “a prohibition of actual copying.”
To be the original work of an author, a work must be the product of some “creative intellectual or aesthetic labor.” However, “a very slight degree of such labor...almost any ingenuity in selection, combination or expression, no matter how crude, humble or obvious, will be sufficient” to make the work copyrightable.
MDC argues that case arrangement is per se uncopyrightable because it cannot meet these standards. However, it is apparent on the face of the Copyright Act that it is possible for an arrangement of pre-existing materials to be an independently produced work of intellectual creation. Section 103 of the Act, 17 U.S.C. § 103, establishes that “the subject matter of copyright...includes compilations and derivative works.” A “compilation” is defined in the Act as: “a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.” An arrangement of opinions in a case reporter, no less than a compilation and arrangement of Shakespeare’s sonnets, can qualify for copyright protection.
We find support for this view in Callaghan v. Myers, 128 U.S. 617 (1888), which indicates that an original arrangement of opinions is copyrightable whenever it is the product of labor, talent, or judgment. The teaching of Callaghan with respect to the issues before us does not come through with unmistakable clarity. But as we read it, Callaghan establishes at least that there is no per se rule excluding case arrangement from copyright protection, and that instead, in each case the arrangement must be evaluated in light of the originality and intellectual-creation standards.
Having determined that there is no per se rule that case arrangements are not copyrightable, we turn to examine the District Court’s findings that West’s arrangements in fact meet originality and intellectual-creation requirements. West publishes opinions not from just one court, but from every state and all the federal courts in the United States. Federal decisions are first divided by the level of the court they come from into district court decisions, court of appeals decisions, and Supreme Court decisions; Court of Claims and military court decisions are also separated out. Before being assigned to a reporter, district court decisions are subdivided according to subject matter into bankruptcy decisions, federal rules decisions, and decisions on other topics. After an opinion is assigned to a reporter [e.g., F.R.D., F. Supp., F.2d], it is assigned to a volume of the reporter and then arranged within the volume. Federal court of appeals decisions, for example, are arranged according to circuit within each volume of West’s Federal Reporter, Second Series.
We conclude that the arrangement West produces through this process is the result of considerable labor, talent, and judgment. As discussed above, to meet intellectual-creation requirements a work need only be the product of a modicum of intellectual labor; West’s case arrangements easily meet this standard.
In the end, MDC’s position must stand or fall on its insistence that all West seeks to protect is numbers on pages. If this is a correct characterization, MDC wins: two always comes after one, and no one can copyright the mere sequence of Arabic numbers. As MDC points out, the specific goal of this suit is to protect some of West’s page numbers, those occurring within the body of individual court opinions. But protection for the numbers is not sought for their own sake. It is sought, rather, because access to these particular numbers — the “jump cites” — would give users of LEXIS a large part of what West has spent so much labor and industry in compiling, and would pro tanto reduce anyone’s need to buy West’s books.
The key to this case, then, is not whether numbers are copyrightable, but whether the copyright on the books as a whole is infringed by the unauthorized appropriation of these particular numbers.
We further hold that MDC’s proposed use of West page numbers will infringe West’s copyright in the arrangement. Jump cites to West volumes within a case on LEXIS are infringing because they enable LEXIS users to discern the precise location in West’s arrangement of the portion of the opinion being viewed. MDC plans to replicate on LEXIS every page break in West’s volumes and to note the corresponding West page number. Communication to LEXIS users of the location in West’s arrangement of specific portions of text is precisely what the LEXIS Star Pagination Feature is designed to do.
With MDC’s star pagination, consumers would no longer need to purchase West’s reporters to get every aspect of West’s arrangement. Since knowledge of the location of opinions and parts of opinions within West’s arrangement is a large part of the reason one would purchase West’s volumes, the LEXIS star pagination feature would adversely affect West’s market position.
MDC asserts that enjoining its use of West page numbers is tantamount to giving West a copyright in the Arabic numbering system. West cannot, MDC argues, claim that its use of the numbering system is an original work of authorship. It is true that some uses of a numbering system cannot meet originality requirements for copyright. See Toro Co. v. R & R Products Co. (arbitrary assignment of random numbers to replacement parts did not qualify for copyright protection). However, as already noted, the copyright we recognize here is in West’s arrangement, not in its numbering system; MDC’s use of West’s page numbers is problematic because it infringes West’s copyrighted arrangement, not because the numbers themselves are copyrighted.
MDC also argues that the LEXIS Star Pagination Feature does not infringe West’s copyright because its citations to page numbers in West reporters are merely statements of pure fact. The flaw in this argument is that it does not distinguish between isolated use of the factual aspects of a compilation or arrangement and wholesale appropriation of the arrangement. “Isolated instances of minor infringements, when multiplied many times, become in the aggregate a major inroad on copyright that must be prevented.” MDC’s wholesale appropriation of West’s arrangement and pagination for a competitive, commercial purpose is an infringement.
We hold that West’s arrangement of cases in its National Reporter System publications is entitled to copyright protection and that the LEXIS Star Pagination feature infringes West’s copyright in the arrangement. On the basis of the present record, it is probable that West will succeed on the merits at trial.
Oliver, Senior District Judge, concurring in part and dissenting in part.
The record, as I read it, merely establishes that MDC only intends to add star pagination to the court opinions contained in its LEXIS data base. MDC, as I understand the record, does not intend to make, nor has it in fact made any use of West’s “synopses, syllabi or case law paragraphs, key number classifications, tables and index digest, with revisions and additions” for which West claimed in its Certificates of Copyright Registration. The record, as I read it, cannot be said to support a finding of fact that MDC intends in any way to duplicate or reproduce West’s “arrangement of cases,” whatever those arrangements may be.
The probability of whether West will succeed on the merits must, in my judgment, be viewed in light of the fact that law book publishers in the United States have long and traditionally used star pagination in their publication of court opinions which have been taken verbatim from earlier published and copyrighted works of both official and unofficial court reporters. Indeed, it is apparent that West has long used and presently uses star pagination in the court opinions published in its Supreme Court Reporter. I do not believe that the record in this case can be said to support a conclusion that West will probably succeed on the merits when that record can be said only to support a finding of fact that MDC intends to do no more than what other law book publishers have been doing for a long, long period of time.
The record in this case does not indicate in any way how or by whom West’s page numbers are, in fact, created. West’s affidavits do not identify any person as the “author” of any of the page numbers. How those page numbers are assigned to West’s advance sheets is a total mystery so far as the record is concerned.
Judicial notice may be taken of the fact that the original page numbers that appear on a slip opinion submitted by a judge for publication never appear in any West advance sheet. (The page numbers on this slip opinion, for example, will, like Clementine, be lost and gone forever once the opinions in this case are published in a West advance sheet.) The pagination of a judge’s slip opinion is, at best, the work of a judge’s secretary or, in this day of advanced technology, the work of the secretary’s word processor in electronic response to the secretary’s punch of a button on a machine.
Thus, the factual question in regard to how or by what process, electronic or otherwise, West assigns a completely new set of page numbers to a judge’s slip opinion is an open factual question that can only be determined on a trial of the merits. It is my view that West’s probability of success on the merits simply cannot be measured on a record that does not provide any information in regard to whether West’s new advance sheet pagination, like a judge’s secretary’s original pagination of his slip opinion, is nothing more than an electronic response to a direction given a machine or whether, as a matter of fact, West’s new pagination may be considered an original work of authorship.
If, on the trial of the merits, it is established that West’s new page numbers are assigned a judge’s slip opinion by some automatic electronic process, it is inconceivable to me that the public policy that denies all right of copyright to a court opinion would nevertheless grant copyright to the page numbers of the volume in which such a court opinion is published.
The majority recognized that Toro Co. v. R & R Products Co. had most recently held that “some uses of a numbering system cannot meet originality requirements for copyright.” It, however, purported to distinguish Toro by stating that “the copyright we recognize here is in West’s arrangement, not in its numbering system; MDC’s use of West’s page numbers is problematic because it infringes West’s copyrighted arrangement, not because the numbers themselves are copyrighted.”
I find nothing in the record in this case to support a finding of fact that it takes intellectual creativity to put page numbers on a volume of law reports. Indeed, the trial on the merits of this case may establish that West’s pagination is no more than the work of a machine responding to a punch of a button.
I believe that this court should hesitate to suggest that the scope of the copyright act can be said to protect West’s arrangement of cases which may, on the facts, be no more than the sequential publication of court opinions in the chronological order in which the cases are handed down. Nor do I believe on the record in this case that we should suggest in any way that the scope of West’s copyright is broad enough to protect the placement of arabic numbers on the pages of the volumes in which those opinions are published.
1. Consider the court’s rule that “isolated instances of minor infringements, when multiplied many times, become in the aggregate a major inroad on copyright that must be prevented.” Is that a rule about when de minimis non curat lex stops? Or is a rule that transforms intrinsically noninfringing behavior into infringement when enough of it occurs? What’s the difference?
Consider this case: I publish my autobiography. Many readers are so excited by it that demand builds for more of the same. Harry proceeds to write an unauthorized biography, after licensing negotiations between us break down over price. Harry copies many facts (even including some that I made up about myself). I sue him for copyright infringement. What result?
Next case: My rival, Professor Balderdash, repeatedly writes law review articles criticizing my copyright law treatise. His motive is clearly commercial — to induce people to buy his inferior, simpleminded, competing copyright treatise rather than mine. In each of his articles, he quotes a sentence or two from my treatise and purports to point out that I don’t know beans about copyright law (as is allegedly illustrated by the copied passages). Of course, his arguments are all fallacious and misguided. I ignore the first several articles, on the theory that just maybe it is fair use (see 17 U.S.C. § 107). After the third such piece of trash, however, I decide enough is enough. These are no longer isolated instances, because they are multiplied too many times. In the aggregate he has by now copied a substantial part of my treatise. I sue him for copyright infringement. What result under West v. Mead?
Do “100 uncopyrightable facts...magically change their status when gathered together in one place”? See Feist, infra.
2. Suppose that Judge Oliver’s suspicions about electronic publishing are correct. Thus, assume that West’s software decides where the page breaks in F.3d, F. Supp., etc. shall be. Hence, the jump cites are determined or are predictable from the place on the page of the initial cite where the case begins.
Assume that West owns the copyright in the publishing software. (It is custom made software and West has secured a written assignment of copyright from the software house whose employees wrote (created) the software in the first place.) Given this fact, isn’t West the author of the jump cites as the copyright owner of the software that made the page breaks? Don’t all rights in the fruit of an orchard belong to the owner of the orchard? Or: “To every cow its calf, to every book its copy” (ruling of King Diarmait of Ireland as judge in the first reported copyright infringement case, In re St. Columba’s Infringement, finding St. Columba guilty of unauthorized reproduction of a psalter manuscript (The Cathach) belonging to St. Finnian. See Fergus Kelly, A Guide to Early Irish Law 239–40 (1988)); Cathach MS. 3. For later developments in the star pagination controversy, read on.
Matthew Bender & Co., Inc. v. West Pub. Co.
United States Court of Appeals, Second Circuit
158 F.3d 693 (2d Cir. 1998), cert. denied, 119 S. Ct. 2039 (1999)
Jacobs, Circuit Judge.
West Publishing Co. and West Publishing Corp. (collectively “West”) create and publish printed compilations of federal and state judicial opinions. Plaintiffs Matthew Bender & Company, Inc. and HyperLaw, Inc. manufacture and market compilations of judicial opinions stored on compact disc read only memory (“CD-ROM”) discs, in which opinions they embed (or intend to embed) citations that show the star page location of the particular text in West’s printed version of the opinions. Bender and HyperLaw seek judgment declaring that star pagination will not infringe West’s copyrights in its compilations of judicial opinions. West now appeals from a judgment of the district court granting summary judgment of noninfringement to Bender and partial summary judgment of noninfringement to HyperLaw.
West’s primary contention on appeal is that plaintiffs’ products (when star pagination is added) are unlawful copies of West’s arrangement. We reject West’s argument.
West creates “case reports” of judicial opinions. These case reporters are collectively known as West’s “National Reporter System,” and include (as relevant to this case): the Supreme Court Reporter, which contains all Supreme Court opinions and memorandum decisions; the Federal Reporter, which contains all federal court of appeals opinions designated for publication, as well as tables documenting the disposition of cases that are unpublished; the Federal Rules Decisions and Federal Supplement, which contain selected federal district court opinions; and the New York Supplement, which contains selected New York State case reports. Cases appearing in West’s case reporters are universally cited by the volume and page number of the case reporter series in which they appear. One citation guide recommends (and some courts require) citation to the West version of federal appellate and trial court decisions and New York State court decisions. See The Bluebook: A Uniform System of Citation (16th ed. 1996); see, e.g., Third Cir. R. 28.3(a).
Bender markets a series of CD-ROM discs called Authority from Matthew Bender. Bender obtains the text of the judicial opinions through a license from Lexis (an on-line database containing legal and non-legal data), and stores the opinions and orders on the discs arranged by court and date, which is also the order in which they would be seen by a user who for some reason browses through the discs without sorting the case reports in a search. For each case that appears in West’s case reporters, Bender intends to insert (and in some cases already has inserted) a parallel citation (e.g., 100 F.3d 101) to the West case reporter at the beginning of the opinion and a citation to the successive West page numbers at the points in the opinion where page breaks occur in the West volume (e.g., *104 or 100 F.3d 104).
HyperLaw markets Supreme Court on Disc, an annual CD-ROM disc containing opinions of the United States Supreme Court since 1991, and Federal Appeals on Disc, a quarterly CD-ROM disc containing nearly all opinions (published and unpublished) of the federal courts of appeals since January 1993. HyperLaw currently obtains the text of its opinions directly from the courts and includes in its Federal Appeals CD-ROM disc many more cases than published by West. The opinions are organized on the CD-ROM disc in an order that is “approximately chronological.” HyperLaw includes parallel citations to West’s case reporters for all cases appearing in the Supreme Court Reporter and the Federal Reporter, and intends to add star pagination as well.
Bender’s complaint sought a judgment declaring that star pagination to West’s case reporters will not copy West’s arrangement or infringe West’s copyright. HyperLaw intervened seeking the same relief. All parties then moved for summary judgment. The district court granted summary judgment to plaintiffs on the star pagination issue, concluding that the insertion of star pagination to West’s volumes on the CD-ROM version of the cases would not reproduce any protectable element of West’s compilation. The court noted that “the protection extends only to those aspects of the compilation that embody the original creation of the compiler” and that “where and on what particular pages the text of a court opinion appears does not embody any original creation of the compiler, and therefore...is not entitled to protection.” The court further ruled that star pagination would be permitted under the fair use doctrine even if West’s pagination were copyrightable.
West’s case reporters are compilations of judicial opinions. The Copyright Act defines a “compilation” as “a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.” Compilations are copyrightable, but the copyright “extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work.” Works of the federal government are not subject to copyright protection, although they may be included in a compilation.
Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991), is the seminal Supreme Court decision on copyrights in compilations. In Feist, the publisher of a telephone book claimed that a competitor had infringed its compilation copyright by copying some of its white pages listings. The Court clarified the scope of a copyright in compilations: “A factual compilation is eligible for copyright if it features an original selection or arrangement of facts, but the copyright is limited to the particular selection or arrangement. In no event may copyright extend to the facts themselves.” Because of this limitation on protectability, “the copyright in a factual compilation is thin. Notwithstanding a valid copyright, a subsequent compiler remains free to use the facts contained in another’s publication to aid in preparing a competing work, so long as the competing work does not feature the same selection and arrangement.” The Court expressly rejected the “sweat of the brow” doctrine, which had justified the extension of copyright protection to the facts and other non-original elements of compilations on the basis of the labor invested in obtaining and organizing the information.
As is clear from Feist, copyright protection in compilations “may extend only to those components of a work that are original to the author.” The “originality” requirement encompasses requirements both “that the work was independently created..., and that it possesses at least some minimal degree of creativity.” At issue here are references to West’s volume and page numbers distributed through the text of plaintiffs’ versions of judicial opinions. West concedes that the pagination of its volumesi.e., the insertion of page breaks and the assignment of page numbers — is determined by an automatic computer program, and West does not seriously claim that there is anything original or creative in that process. As the district court noted, “where and on what particular pages the text of a court opinion appears does not embody any original creation of the compiler.” Because the internal pagination of West’s case reporters does not entail even a modicum of creativity, the volume and page numbers are not original components of West’s compilations and are not themselves protected by West’s compilation copyright. Because the volume and page numbers are unprotected features of West’s compilation process, they may be copied without infringing West’s copyright.
We differ with the Eighth Circuit’s opinion in West Publishing Co. v. Mead Data Central, Inc., 799 F.2d 1219 (8th Cir.1986). In that case, Lexis (an on-line database provider) announced plans to star paginate its on-line version of cases to West case reporters. West claimed that the star pagination would allow users to page through cases as if they were reading West volumes, and in that way copied West’s arrangement of cases. The court held that “West’s arrangement is a copyrightable aspect of its compilation of cases, that the pagination of West’s volumes reflects and expresses West’s arrangement, and that MDC’s intended use of West’s page numbers infringes West’s copyright in the arrangement.”
At bottom, West Publishing Co. rests upon the now defunct “sweat of the brow” doctrine. That court found that Lexis had infringed West’s copyright simply because it supplanted much of the need for West’s case reporters through wholesale appropriation of West’s page numbers. In reaching this conclusion, the court (i) noted that Lexis’s appropriation would deprive West of a large part of what it “[had] spent so much labor and industry in compiling,” and (ii) cited classic “sweat of the brow” cases that were overruled in Feist. Thus, the Eighth Circuit in West Publishing Co. erroneously protected West’s industrious collection rather than its original creation. Because Feist undermines the reasoning of West Publishing Co., we decline to follow it.
We hold that Bender and HyperLaw will not infringe West’s copyright by inserting star pagination to West’s reporters in their CD-ROM disc version of judicial opinions.
1. A 1996 Minnesota district court decision continued to follow the Eighth Circuit’s Mead v. West decision, Oasis Pub. Co. v. West Pub. Co., 924 F. Supp. 918 (D. Minn. 1996). The Supreme Court’s denial of certiorari in the Matthew Bender v. West case, despite the blatant conflict, suggests that the Supreme Court considers review of the matter unnecessary. Why? Also of possible interest is a District of Columbia district court decision approving entry of a consent decree in United States v. Thomson/West Group, 1997 CCH Trade Cases ¶ 71,735, in which West was required to license star pagination but without collecting the royalties until the Supreme Court finally resolved the copyrightability of star pagination or December 31, 2000. The D.C. court insisted on these limitations because it felt that the following decision, Feist, had undermined West’s copyright claim in star pagination.
2. In the Matthew Bender case reprinted above, Judge Sweet dissented (opinion omitted) and stated that he found West’s position consistent with Feist, despite the majority’s contrary view. Make your own determination now of how well West’s position squares with Feist.
Feist Pubs., Inc. v. Rural Tel. Serv. Co.
United States Supreme Court
499 U.S. 340(1991)
Justice O’Connor delivered the opinion of the Court.
This case requires us to clarify the extent of copyright protection available to telephone directory white pages.
I. Factual Background
Rural Telephone Service Company is a certified public utility that provides telephone service to several communities in northwest Kansas. It is subject to a state regulation that requires all telephone companies operating in Kansas to issue annually an updated telephone directory. Accordingly, as a condition of its monopoly franchise, Rural publishes a typical telephone directory, consisting of white pages and yellow pages. The white pages list in alphabetical order the names of Rural’s subscribers, together with their towns and telephone numbers. The yellow pages list Rural’s business subscribers alphabetically by category and feature classified advertisements of various sizes. Rural distributes its directory free of charge to its subscribers, but earns revenue by selling yellow pages advertisements.
Feist Publications, Inc., is a publishing company that specializes in area-wide telephone directories. Unlike a typical directory, which covers only a particular calling area, Feist’s area-wide directories cover a much larger geographical range, reducing the need to call directory assistance or consult multiple directories. The Feist directory that is the subject of this litigation covers 11 different telephone service areas in 15 counties and contains 46,878 white pages listings — compared to Rural’s approximately 7,700 listings. Like Rural’s directory, Feist’s is distributed free of charge and includes both white pages and yellow pages. Feist and Rural compete vigorously for yellow pages advertising.
As the sole provider of telephone service in its service area, Rural obtains subscriber information quite easily. Persons desiring telephone service must apply to Rural and provide their names and addresses; Rural then assigns them a telephone number. Feist is not a telephone company, let alone one with monopoly status, and therefore lacks independent access to any subscriber information. To obtain white pages listings for its area-wide directory, Feist approached each of the 11 telephone companies operating in northwest Kansas and offered to pay for the right to use its white pages listings.
Of the 11 telephone companies, only Rural refused to license its listings to Feist. Rural’s refusal created a problem for Feist, as omitting these listings would have left a gaping hole in its area-wide directory, rendering it less attractive to potential yellow pages advertisers. In a decision subsequent to that which we review here, the district court determined that this was precisely the reason Rural refused to license its listings. The refusal was motivated by an unlawful purpose “to extend its monopoly in telephone service to a monopoly in yellow pages advertising.”
Unable to license Rural’s white pages listings, Feist used them without Rural’s consent. Notwithstanding additions, 1,309 of the 46,878 listings in Feist’s 1983 directory were identical to listings in Rural’s 1982-1983 white pages. Four of these were fictitious listings that Rural had inserted into its directory to detect copying.
Rural sued for copyright infringement, taking the position that Feist, in compiling its own directory, could not use the information contained in Rural’s white pages. Rural asserted that Feist’s employees were obliged to travel door-to-door or conduct a telephone survey to discover the same information for themselves. Feist responded that such efforts were economically impractical and, in any event, unnecessary because the information copied was beyond the scope of copyright protection. The District Court granted summary judgment to Rural, explaining that “[c]ourts have consistently held that telephone directories are copyrightable” and citing a string of lower court decisions. In an unpublished opinion, the Court of Appeals for the Tenth Circuit affirmed “for substantially the reasons given by the district court.” We granted certiorari, to determine whether the copyright in Rural’s directory protects the names, towns, and telephone numbers copied by Feist.
II. Applicable Principles of Copyright Law
A. Copyrightability of Factual Compilations
This case concerns the interaction of two well-established propositions. The first is that facts are not copyrightable; the other, that compilations of facts generally are. Each of these propositions possesses an impeccable pedigree. That there can be no valid copyright in facts is universally understood. The most fundamental axiom of copyright law is that “[n]o author may copyright his ideas or the facts he narrates.” Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985). Rural wisely concedes this point, noting in its brief that “[f]acts and discoveries, of course, are not themselves subject to copyright protection.” At the same time, however, it is beyond dispute that compilations of facts are within the subject matter of copyright. Compilations were expressly mentioned in the Copyright Act of 1909, and again in the Copyright Act of 1976.
There is an undeniable tension between these two propositions. Many compilations consist of nothing but raw data — i.e., wholly factual information not accompanied by any original written expression. On what basis may one claim a copyright in such a work? Common sense tells us that 100 uncopyrightable facts do not magically change their status when gathered together in one place. Yet copyright law seems to contemplate that compilations that consist exclusively of facts are potentially within its scope.
The key to resolving the tension lies in understanding why facts are not copyrightable. The sine qua non of copyright is originality. To qualify for copyright protection, a work must be original to the author. “Original,” as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity. To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, “no matter how crude, humble or obvious” it might be.
Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying. To illustrate, assume that two poets, each ignorant of the other, compose identical poems. Neither work is novel, yet both are original and, hence, copyrightable.
Originality is a constitutional requirement. The source of Congress’ power to enact copyright laws is Art. I, § 8, cl. 8, of the Constitution, which authorizes Congress to “secur[e] for limited Times to Authors...the exclusive Right to their respective Writings.” In two decisions from the late 19th Century — The Trade-Mark Cases and Burrow-Giles Lithographic Co. v. Sarony — this Court defined the crucial terms “authors” and “writings.” In so doing, the Court made it unmistakably clear that these terms presuppose a degree of originality.
In The Trade-Mark Cases, the Court addressed the constitutional scope of “writings.” For a particular work to be classified “under the head of writings of authors,” the Court determined, “originality is required.” The Court explained that originality requires independent creation plus a modicum of creativity:
[W]hile the word "writings" may be liberally construed, as it has been, to include original designs for engraving, prints, &c., it is only such as are original, and are founded in the creative powers of the mind. The writings which are to be protected are the fruits of intellectual labor, embodied in the form of books, prints, engravings, and the like.
In Burrow-Giles, the Court distilled the same requirement from the Constitution’s use of the word “authors.” The Court defined “author,” in a constitutional sense, to mean “he to whom anything owes its origin; originator; maker.” As in The Trade-Mark Cases, the Court emphasized the creative component of originality. It described copyright as being limited to “original intellectual conceptions of the author,” and stressed the importance of requiring an author who accuses another of infringement to prove “the existence of those facts of originality, of intellectual production, of thought, and conception.”
The originality requirement articulated in The Trade-Mark Cases and Burrow-Giles remains the touchstone of copyright protection today. It is the very “premise of copyright law.” Leading scholars agree on this point. It is this bedrock principle of copyright that mandates the law’s seemingly disparate treatment of facts and factual compilations. “No one may claim originality as to facts.” This is because facts do not owe their origin to an act of authorship. The distinction is one between creation and discovery: the first person to find and report a particular fact has not created the fact; he or she has merely discovered its existence. To borrow from Burrow-Giles, one who discovers a fact is not its “maker” or “originator.” “The discoverer merely finds and records.”
Census-takers, for example, do not “create” the population figures that emerge from their efforts; in a sense, they copy these figures from the world around them. Census data therefore do not trigger copyright because these data are not “original” in the constitutional sense. The same is true of all facts — scientific, historical, biographical, and news of the day. “They may not be copyrighted and are part of the public domain available to every person.”
Factual compilations, on the other hand, may possess the requisite originality. The compilation author typically chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers. These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original that Congress may protect such compilations through the copyright laws. Thus, even a directory that contains absolutely no protectible written expression, only facts, meets the constitutional minimum for copyright protection if it features an original selection or arrangement.
This protection is subject to an important limitation. The mere fact that a work is copyrighted does not mean that every element of the work may be protected. Originality remains the sine qua non of copyright; accordingly, copyright protection may extend only to those components of a work that are original to the author. Thus, if the compilation author clothes facts with an original collocation of words, he or she may be able to claim a copyright in this written expression. Others may copy the underlying facts from the publication, but not the precise words used to present them. In Harper & Row, for example, we explained that President Ford could not prevent others from copying bare historical facts from his autobiography, but that he could prevent others from copying his “subjective descriptions and portraits of public figures.” Where the compilation author adds no written expression but rather lets the facts speak for themselves, the expressive element is more elusive. The only conceivable expression is the manner in which the compiler has selected and arranged the facts. Thus, if the selection and arrangement are original, these elements of the work are eligible for copyright protection. No matter how original the format, however, the facts themselves do not become original through association.
This inevitably means that the copyright in a factual compilation is thin. Notwithstanding a valid copyright, a subsequent compiler remains free to use the facts contained in another’s publication to aid in preparing a competing work, so long as the competing work does not feature the same selection and arrangement. As one commentator explains it: “[N]o matter how much original authorship the work displays, the facts and ideas it exposes are free for the taking.... [T]he very same facts and ideas may be divorced from the context imposed by the author, and restated or reshuffled by second comers, even if the author was the first to discover the facts or to propose the ideas.”
It may seem unfair that much of the fruit of the compiler’s labor may be used by others without compensation. As Justice Brennan has correctly observed, however, this is not “some unforeseen byproduct of a statutory scheme.” Harper & Row, (dissenting opinion). It is, rather, “the essence of copyright,” and a constitutional requirement.
The primary objective of copyright is not to reward the labor of authors, but “to promote the Progress of Science and useful Arts.” Art. I, § 8, cl. 8. Accord, Twentieth Century Music Corp. v. Aiken, 422 U.S. 151 (1975). To this end, copyright assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work. This principle, known as the idea/expression or fact/expression dichotomy, applies to all works of authorship.
As applied to a factual compilation, assuming the absence of original written expression, only the compiler’s selection and arrangement may be protected; the raw facts may be copied at will. This result is neither unfair nor unfortunate. It is the means by which copyright advances the progress of science and art.
This Court has long recognized that the fact/expression dichotomy limits severely the scope of protection in fact-based works. More than a century ago, the Court observed:
The very object of publishing a book on science or the useful arts is to communicate to the world the useful knowledge which it contains. But this object would be frustrated if the knowledge could not be used without incurring the guilt of piracy of the book.
Baker v. Selden. We reiterated this point in Harper & Row:
[N]o author may copyright facts or ideas. The copyright is limited to those aspects of the work — termed "expression" — that display the stamp of the author's originality. [C]opyright does not prevent subsequent users from copying from a prior author's work those constituent elements that are not original — for example ... facts, or materials in the public domain — as long as such use does not unfairly appropriate the author's original contributions.
This, then, resolves the doctrinal tension: Copyright treats facts and factual compilations in a wholly consistent manner. Facts, whether alone or as part of a compilation, are not original and therefore may not be copyrighted. A factual compilation is eligible for copyright if it features an original selection or arrangement of facts, but the copyright is limited to the particular selection or arrangement. In no event may copyright extend to the facts themselves.
B. “Sweat of the Brow” Doctrine
As we have explained, originality is a constitutionally mandated prerequisite for copyright protection. The Court’s decisions announcing this rule predate the Copyright Act of 1909, but ambiguous language in the 1909 Act caused some lower courts temporarily to lose sight of this requirement.
The 1909 Act embodied the originality requirement, but not as clearly as it might have. Section 4 stated that copyright was available to “all the writings of an author. By using the words “writings” and “author” — the same words used in Art. I, § 8 of the Constitution and defined by the Court in The Trade-Mark Cases and Burrow-Giles — the statute necessarily incorporated the originality requirement articulated in the Court’s decisions. It did so implicitly, however, thereby leaving room for error.
Section 3 was similarly ambiguous. It stated that the copyright in a work protected only “the copyrightable component parts of the work.” It thus stated an important copyright principle, but failed to identify the specific characteristic — originality — that determined which component parts of a work were copyrightable and which were not.
Most courts construed the 1909 Act correctly, notwithstanding the less–than–perfect statutory language. They understood from this Court’s decisions that there could be no copyright without originality. As explained in the Nimmer treatise:
The 1909 Act neither defined originality, nor even expressly required that a work be “original” in order to command protection. However, the courts uniformly inferred the requirement from the fact that copyright protection may only be claimed by “authors”’.... It was reasoned that since an author is “the... creator, originator” it follows that a work is not the product of an author unless the work is original.
But some courts misunderstood the statute. See, e.g., Leon v. Pacific Telephone & Telegraph Co., 91 F.2d 484 (CA9 1937); Jeweler’s Circular Publishing Co. v. Keystone Publishing Co., 281 F. 83 (CA2 1922). These courts ignored § 3 and § 4, focusing their attention instead on § 5 of the Act. Section 5, however, was purely technical in nature: it provided that a person seeking to register a work should indicate on the application the type of work, and it listed 14 categories under which the work might fall. One of these categories was “[b]ooks, including composite and cyclopaedic works, directories, gazetteers, and other compilations.” Section 5 did not purport to say that all compilations were automatically copyrightable. Indeed, it expressly disclaimed any such function, pointing out that “the subject-matter of copyright [i]s defined in section four.” Nevertheless, the fact that factual compilations were mentioned specifically in § 5 led some courts to infer erroneously that directories and the like were copyrightable per se, “without any further or precise showing of original — personal — authorship.”
Making matters worse, these courts developed a new theory to justify the protection of factual compilations. Known alternatively as “sweat of the brow” or “industrious collection,” the underlying notion was that copyright was a reward for the hard work that went into compiling facts. The classic formulation of the doctrine appeared in Jeweler’s Circular Publishing Co.:
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.
The “sweat of the brow” doctrine had numerous flaws, the most glaring being that it extended copyright protection in a compilation beyond selection and arrangement — the compiler’s original contributions — to the facts themselves. Under the doctrine, the only defense to infringement was independent creation. A subsequent compiler was “not entitled to take one word of information previously published,” but rather had to “independently wor[k] out the matter for himself, so as to arrive at the same result from the same common sources of information.” “Sweat of the brow” courts thereby eschewed the most fundamental axiom of copyright law — that no one may copyright facts or ideas.
Decisions of this Court applying the 1909 Act make clear that the statute did not permit the “sweat of the brow” approach. The best example is International News Service v. Associated Press, 248 U.S. 215 (1918). In that decision, the Court stated unambiguously that the 1909 Act conferred copyright protection only on those elements of a work that were original to the author. International News Service had conceded taking news reported by Associated Press and publishing it in its own newspapers. Recognizing that § 5 of the Act specifically mentioned “[p]eriodicals, including newspapers,” the Court acknowledged that news articles were copyrightable. It flatly rejected, however, the notion that the copyright in an article extended to the factual information it contained: “[T]he news element — the information respecting current events contained in the literary production — is not the creation of the writer, but is a report of matters that ordinarily are publici juris; it is the history of the day.”
Without a doubt, the “sweat of the brow” doctrine flouted basic copyright principles. Throughout history, copyright law has “recognize[d] a greater need to disseminate factual works than works of fiction or fantasy.” Harper & Row. But “sweat of the brow” courts took a contrary view; they handed out proprietary interests in facts and declared that authors are absolutely precluded from saving time and effort by relying upon the facts contained in prior works. In truth, “[i]t is just such wasted effort that the proscription against the copyright of ideas and facts...[is] designed to prevent.”
C. 1976 Copyright Act
“Sweat of the brow” decisions did not escape the attention of the Copyright Office. When Congress decided to overhaul the copyright statute and asked the Copyright Office to study existing problems, the Copyright Office promptly recommended that Congress clear up the confusion in the lower courts as to the basic standards of copyrightability. The Register of Copyrights explained in his first report to Congress that “originality” was a “basic requisit[e]” of copyright under the 1909 Act, but that “the absence of any reference to [originality] in the statute seems to have led to misconceptions as to what is copyrightable matter.” The Register suggested making the originality requirement explicit.
Congress took the Register’s advice. In enacting the Copyright Act of 1976, Congress dropped the reference to “all the writings of an author” and replaced it with the phrase “original works of authorship.” 17 U.S.C. § 102(a). In making explicit the originality requirement, Congress announced that it was merely clarifying existing law:
The two fundamental criteria of copyright protection [are] originality and fixation in tangible form .... The phrase “original works of authorship,” which is purposely left undefined, is intended to incorporate without change the standard of originality established by the courts under the present  copyright statute.
To ensure that the mistakes of the “sweat of the brow” courts would not be repeated, Congress took additional measures. For example, § 3 of the 1909 Act had stated that copyright protected only the “copyrightable component parts” of a work, but had not identified originality as the basis for distinguishing those component parts that were copyrightable from those that were not. The 1976 Act deleted this section and replaced it with § 102(b), which identifies specifically those elements of a work for which copyright is not available:
In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.
Section 102(b) is universally understood to prohibit any copyright in facts. Harper & Row. As with § 102(a), Congress emphasized that § 102(b) did not change the law, but merely clarified it:
Section 102(b) in no way enlarges or contracts the scope of copyright protection under the present law. Its purpose is to restate...that the basic dichotomy between expression and idea remains unchanged.
Congress took another step to minimize confusion by deleting the specific mention of “directories...and other compilations” in § 5 of the 1909 Act. As mentioned, this section had led some courts to conclude that directories were copyrightable per se and that every element of a directory was protected. In its place, Congress enacted two new provisions. First, to make clear that compilations were not copyrightable per se, Congress provided a definition of the term “compilation.” Second, to make clear that the copyright in a compilation did not extend to the facts themselves, Congress enacted 17 U.S.C. § 103.
The definition of “compilation” is found in § 101 of the 1976 Act. It defines a “compilation” in the copyright sense as “a work formed by the collection and assembly of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.”
The purpose of the statutory definition is to emphasize that collections of facts are not copyrightable per se. It conveys this message through its tripartite structure, as emphasized above by the italics. The statute identifies three distinct elements and requires each to be met for a work to qualify as a copyrightable compilation: (1) the collection and assembly of pre-existing material, facts, or data; (2) the selection, coordination, or arrangement of those materials; and (3) the creation, by virtue of the particular selection, coordination, or arrangement, of an “original” work of authorship. “This tripartite conjunctive structure is self-evident, and should be assumed to `accurately express the legislative purpose.’”
At first glance, the first requirement does not seem to tell us much. It merely describes what one normally thinks of as a compilation — a collection of pre-existing material, facts, or data. What makes it significant is that it is not the sole requirement. It is not enough for copyright purposes that an author collects and assembles facts. To satisfy the statutory definition, the work must get over two additional hurdles. In this way, the plain language indicates that not every collection of facts receives copyright protection. Otherwise, there would be a period after “data.”
The third requirement is also illuminating. It emphasizes that a compilation, like any other work, is copyrightable only if it satisfies the originality requirement (“an original work of authorship”). Although § 102 states plainly that the originality requirement applies to all works, the point was emphasized with regard to compilations to ensure that courts would not repeat the mistake of the “sweat of the brow” courts by concluding that fact-based works are treated differently and measured by some other standard. As Congress explained it, the goal was to “make plain that the criteria of copyrightable subject matter stated in section 102 apply with full force to works...containing preexisting material.”
The key to the statutory definition is the second requirement. It instructs courts that, in determining whether a fact-based work is an original work of authorship, they should focus on the manner in which the collected facts have been selected, coordinated, and arranged. This is a straightforward application of the originality requirement. Facts are never original, so the compilation author can claim originality, if at all, only in the way the facts are presented. To that end, the statute dictates that the principal focus should be on whether the selection, coordination, and arrangement are sufficiently original to merit protection.
Not every selection, coordination, or arrangement will pass muster. This is plain from the statute. It states that, to merit protection, the facts must be selected, coordinated, or arranged “in such a way” as to render the work as a whole original. This implies that some “ways” will trigger copyright, but that others will not. Otherwise, the phrase “in such a way” is meaningless and Congress should have defined “compilation” simply as “a work formed by the collection and assembly of preexisting materials or data that are selected, coordinated, or arranged.” That Congress did not do so is dispositive. In accordance with “the established principle that a court should give effect, if possible, to every clause and word of a statute,” we conclude that the statute envisions that there will be some fact-based works in which the selection, coordination, and arrangement are not sufficiently original to trigger copyright protection.
As discussed earlier, however, the originality requirement is not particularly stringent. A compiler may settle upon a selection or arrangement that others have used; novelty is not required. Originality requires only that the author make the selection or arrangement independently (i.e., without copying that selection or arrangement from another work), and that it display some minimal level of creativity. Presumably, the vast majority of compilations will pass this test, but not all will. There remains a narrow category of works in which the creative spark is utterly lacking or so trivial as to be virtually nonexistent. Such works are incapable of sustaining a valid copyright.
Even if a work qualifies as a copyrightable compilation, it receives only limited protection. This is the point of § 103 of the Act. Section 103 explains that “[t]he subject matter of copyright ... includes compilations,” § 103(a), but that copyright protects only the author’s original contributions — not the facts or information conveyed: “The copyright in a compilation...extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material.” § 103(b).
As § 103 makes clear, copyright is not a tool by which a compilation author may keep others from using the facts or data he or she has collected. “The most important point here is one that is commonly misunderstood today: copyright...has no effect one way or the other on the copyright or public domain status of the preexisting material.” The 1909 Act did not require, as “sweat of the brow” courts mistakenly assumed, that each subsequent compiler must start from scratch and is precluded from relying on research undertaken by another. See, e.g., Jeweler’s Circular Publishing Co. Rather, the facts contained in existing works may be freely copied because copyright protects only the elements that owe their origin to the compiler — the selection, coordination, and arrangement of facts.
In summary, the 1976 revisions to the Copyright Act leave no doubt that originality, not “sweat of the brow,” is the touchstone of copyright protection in directories and other fact-based works. Nor is there any doubt that the same was true under the 1909 Act. The 1976 revisions were a direct response to the Copyright Office’s concern that many lower courts had misconstrued this basic principle, and Congress emphasized repeatedly that the purpose of the revisions was to clarify, not change, existing law. The revisions explain with painstaking clarity that copyright requires originality, § 102(a); that facts are never original, § 102(b); that the copyright in a compilation does not extend to the facts it contains, § 103(b); and that a compilation is copyrightable only to the extent that it features an original selection, coordination, or arrangement, § 101.
III. Whether Feist Infringed Rural’s Copyright
There is no doubt that Feist took from the white pages of Rural’s directory a substantial amount of factual information. At a minimum, Feist copied the names, towns, and telephone numbers of 1,309 of Rural’s subscribers. Not all copying, however, is copyright infringement. To establish infringement, two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. The first element is not at issue here; Feist appears to concede that Rural’s directory, considered as a whole, is subject to a valid copyright because it contains some foreword text, as well as original material in its yellow pages advertisements.
The question is whether Rural has proved the second element. In other words, did Feist, by taking 1,309 names, towns, and telephone numbers from Rural’s white pages, copy anything that was “original” to Rural? Certainly, the raw data does not satisfy the originality requirement. Rural may have been the first to discover and report the names, towns, and telephone numbers of its subscribers, but this data does not “ow[e] its origin” to Rural. Rather, these bits of information are uncopyrightable facts; they existed before Rural reported them and would have continued to exist if Rural had never published a telephone directory. The originality requirement “rule[s] out protecting...names, addresses, and telephone numbers of which the plaintiff by no stretch of the imagination could be called the author.”
Rural essentially concedes the point by referring to the names, towns, and telephone numbers as “preexisting material.” Section 103(b) states explicitly that the copyright in a compilation does not extend to “the preexisting material employed in the work.”
The question that remains is whether Rural selected, coordinated, or arranged these uncopyrightable facts in an original way. As mentioned, originality is not a stringent standard; it does not require that facts be presented in an innovative or surprising way. It is equally true, however, that the selection and arrangement of facts cannot be so mechanical or routine as to require no creativity whatsoever. The standard of originality is low, but it does exist. As this Court has explained, the Constitution mandates some minimal degree of creativity, see The Trade-Mark Cases; and an author who claims infringement must prove “the existence of ... intellectual production, of thought, and conception.” Burrow-Giles.
The selection, coordination, and arrangement of Rural’s white pages do not satisfy the minimum constitutional standards for copyright protection. As mentioned at the outset, Rural’s white pages are entirely typical. Persons desiring telephone service in Rural’s service area fill out an application and Rural issues them a telephone number. In preparing its white pages, Rural simply takes the data provided by its subscribers and lists it alphabetically by surname. The end product is a garden-variety white pages directory, devoid of even the slightest trace of creativity.
Rural’s selection of listings could not be more obvious: it publishes the most basic information — name, town, and telephone number — about each person who applies to it for telephone service. This is “selection” of a sort, but it lacks the modicum of creativity necessary to transform mere selection into copyrightable expression. Rural expended sufficient effort to make the white pages directory useful, but insufficient creativity to make it original.
We note in passing that the selection featured in Rural’s white pages may also fail the originality requirement for another reason. Feist points out that Rural did not truly “select” to publish the names and telephone numbers of its subscribers; rather, it was required to do so by the Kansas Corporation Commission as part of its monopoly franchise. Accordingly, one could plausibly conclude that this selection was dictated by state law, not by Rural.
Nor can Rural claim originality in its coordination and arrangement of facts. The white pages do nothing more than list Rural’s subscribers in alphabetical order. This arrangement may, technically speaking, owe its origin to Rural; no one disputes that Rural undertook the task of alphabetizing the names itself.
But there is nothing remotely creative about arranging names alphabetically in a white pages directory. It is an age-old practice, firmly rooted in tradition and so commonplace that it has come to be expected as a matter of course. It is not only unoriginal, it is practically inevitable. This time-honored tradition does not possess the minimal creative spark required by the Copyright Act and the Constitution.
We conclude that the names, towns, and telephone numbers copied by Feist were not original to Rural and therefore were not protected by the copyright in Rural’s combined white and yellow pages directory. As a constitutional matter, copyright protects only those constituent elements of a work that possess more than a de minimis quantum of creativity. Rural’s white pages, limited to basic subscriber information and arranged alphabetically, fall short of the mark. As a statutory matter, 17 U.S.C. § 101 does not afford protection from copying to a collection of facts that are selected, coordinated, and arranged in a way that utterly lacks originality. Given that some works must fail, we cannot imagine a more likely candidate. Indeed, were we to hold that Rural’s white pages pass muster, it is hard to believe that any collection of facts could fail.
Because Rural’s white pages lack the requisite originality, Feist’s use of the listings cannot constitute infringement. This decision should not be construed as demeaning Rural’s efforts in compiling its directory, but rather as making clear that copyright rewards originality, not effort. As this Court noted more than a century ago, “great praise may be due to the plaintiffs for their industry and enterprise in publishing this paper, yet the law does not contemplate their being rewarded in this way.” Baker v. Selden. The judgment of the court of appeals is reversed.
1. As previously stated, the Feist decision is probably the single most important software–impacting copyright decision of the Supreme Court since Baker v. Selden. What are some of its implications for databases, screen displays, and computer programs?
The Court has yet to address directly the copyright status of databases, screen displays, computer programs, or computer programming languages.
2. The most fundamental axiom of copyright law is that no author may copyright his ideas or the facts he narrates. Feist, § II–A. What aspects of software, if any, would fit into these categories?
3. Nonetheless, compilations are subject to copyright protection. Feist, § II–A. What aspects of software, if any, would fit into this category?
4. Feist says (§ II-A): “Common sense tells us that 100 uncopyrightable facts do not magically change their status when gathered together in one place.” Does that apply in any way to software?
Does the same principle apply to things not facts but nonetheless not subject to copyright protection? For example, ideas?
How does any of this apply to algorithms? To a compilation of algorithms into an application program? To a compilation of menu commands such as print, exit, retrieve, copy?
5. Is Feist a decision about the meaning of “authors” or “writings”? Or “writings of authors” (as a unitary concept)? Or “original works of authorship” (again as unitary)?
6. Feist tells us that compilations of fact get a thin copyright. What’s the difference between a thin copyright and a fat copyright? Which does software get? Does it matter what kind or aspect of software is involved? If so, how?
7. Feist says (§ II–B): “Throughout history, copyright law has `recognize[d] a greater need to disseminate factual works than works of fiction or fantasy.’ ...But `sweat of the brow’ courts took a contrary view; they handed out proprietary interests in facts and declared that authors are absolutely precluded from saving time and effort by relying upon the facts contained in prior works.” What application, if any, does that have to computer software?
8. Feist caused concern in various copyright constituencies over the limitation of copyright protection for data bases. See Jane C. Ginsburg, No “Sweat”? Copyright and Other Protection of Works of Information After Feist v. Rural Telephone, 92 Colum. L. Rev. 338, 346 (1992). These concerns have led to some legislative initiatives. In 1996, the Council of the European Union issued a Directive on the Legal Protection of Databases, 96/9/EC, O.J.E.C. No. L 777/20 (23.3.96). Art. 7.1 of this Directive created a sui generis right barring “extraction” and “reutilization” of a “substantial part” of a database. This Directive included a reciprocity requirement in its Art. 11, which provides that a non-EC database will receive protection in an EC country only if the non-EC country affords equivalent protection within its territory to an EC database. (See comparable provisions in the U.S. Semiconductor Chip Protection Act, 17 U.S.C. §§ 902, 914.)
Meeting the reciprocity condition doubtless was one of the considerations which led to the introduction of H.R. 3531 in the 104th Cong., 2d Sess., as the Database Investment and Intellectual Property Antipiracy Act of 1996. This bill, which has reappeared in later Congresses, would make actionable an unauthorized effort to: “extract, use or reuse all or of a substantial part...of the contents of a database...in a manner which conflicts with the database owner’s normal exploitation of the database or adversely affects the actual or potential market for the database” (§ 4(a)(1)). The bill has moved forward slowly, but its prospects in 2000 are said to be good.
Does the requirement in Article I, § 8, cl. 8 of a “writing of an author,” which Feist says requires originality, mean that using the generic commerce power (Art. I, § 8, cl. 3) to enact this bill would impermissibly subvert cl. 8 and the Founders’ original intent?
9. Feist has not killed off all database protection, at least not in the courts of appeal. Consider the following excerpt from CCC Information Servs., Inc. v. MacLean Hunter Market Reports, Inc., 44 F.3d 61 (2d Cir. 1994), a decision upholding the protectability under copyright law of a compendium of projected used car prices:
Leval, Circuit Judge
The thrust of the Supreme Court’s ruling in Feist was not to erect a high barrier of originality requirement. It was rather to specify, rejecting the strain of lower court rulings that sought to base protection on the “sweat of the brow,” that some originality is essential to protection of authorship, and that the protection afforded extends only to those original elements. Because the protection is so limited, there is no reason under the policies of the copyright law to demand a high degree of originality. To the contrary, such a requirement would be counterproductive. The policy embodied into law is to encourage authors to publish innovations for the common good — not to threaten them with loss of their livelihood if their works of authorship are found insufficiently imaginative.
In recognition of these considerations, we have several times since Feist upheld copyright claims for compilations and similar works where the originality component was extremely modest. In Kregos v. Associated Press, 937 F.2d 700 (2d Cir. 1991), for example, we reversed a ruling of the district court that the selection of nine statistical categories for use on a baseball pitching form failed to demonstrate the necessary originality. In Key Publications, Inc. v. Chinatown Today Publishing Enterprises, Inc., 945 F.2d 509 (2d Cir. 1991), we held that the selection, from a more general list, of businesses of special interest to Chinese-Americans also merited copyright protection. Several years before Feist, in Eckes v. Card Prices Update, 736 F.2d 859 (2d Cir. 1984), we held that an author’s subjective decision as to which baseball cards are “premium” is entitled to protection.
Other case examples [where selection validated copyright protection] include: the choice of categories of Medicaid data to include in charts; the “judgement and knowledge of the author respecting the social standing and societal relations of a limited class of the general public”; the choice of “true” public relations firms to include in a directory; a list of state tariffs on pay telephones; selection of the most important and helpful cross-streets and assignment of address numbers for the streets; information about cable television systems throughout the United States.... The key factor is the exercise of some editorial judgment in the selection of data.
The district court was simply mistaken in its conclusion that the Red Book valuations were, like the telephone numbers in Feist, pre-existing facts that had merely been discovered by the Red Book editors. To the contrary, MacLean’s evidence demonstrated without rebuttal that its valuations were neither reports of historical prices nor mechanical derivations of historical prices or other data. Rather, they represented predictions by the Red Book editors of future prices estimated to cover specified geographic regions. According to MacLean’s evidence, these predictions were based not only on a multitude of data sources, but also on professional judgment and expertise. The testimony of one of MacLean’s deposition witnesses indicated that fifteen considerations are weighed; among the considerations, for example, is a prediction as to how traditional competitor vehicles, as defined by MacLean, will fare against one another in the marketplace in the coming period. The valuations themselves are original creations of MacLean.
MacLean’s selection includes far fewer than all extant options, and presents them in a manner that furnishes a single valuation to cover the particular option in numerous different vehicles. The editors make these choices to accommodate the practical space limitations imposed by the book’s format, while providing the information most likely to satisfy customers’ needs. We conclude for these reasons that the district court erred in ruling that the Red Book commands no copyright protection by reason of alleged lack of originality.
CCC’s strongest argument is that it took nothing more than ideas, for which the copyright law affords no protection to the author. According to this argument: (1) each entry in the Red Book expresses the authors’ idea of the value of a particular vehicle; (2) to the extent that “expression” is to be found in the Red Book’s valuations, such expression is indispensable to the statement of the idea and therefore merges with the idea, so that the expression is also not protectible; and (3) because each of Red Book’s valuations could freely be taken without infringement, all of them may be taken without infringement.
Given the nature of compilations, it is almost inevitable that the original contributions of the compilers will consist of ideas. Originality in selection, for example, will involve the compiler’s idea of the utility to the consumer of a limited selection from the particular universe of available data. One compiler might select out of a universe of all businesses those that he believes will be of interest to the Chinese-American community; another will offer a list of restaurants he suggests are the best, the most elegant, or offer the best value within a price range. Each of these exercises in selection represents an idea.
Can you state the criteria that Judge Leval applied to distinguish protectable facts from those entitled to no copyright protection? Consider the earlier Second Circuit opinions cited by Judge Leval — Kregos, Key Publications, and Eckes. How did they find the requisite creativity or authorship?
Kregos had nine statistical categories, selected out of a larger number of categories. What if those were the nine most sensible categories and a vast gap yawned between No. 9 and the next runner up? If there are a large number of conceivable categories, and the plaintiff selects a lesser number (“far fewer than all extant options”), is that enough to confer on the plaintiff an exclusive right to utilize that subset?
Does the last quoted passage from Judge Leval’s opinion leave any doubt that he would hold protectable a compilation of ideas? Could the selection of which algorithms to implement in a computer program be a protected compilation of algorithms under this opinion? Would a second computer program with different code, but implementing the same creative selection of algorithms, infringe the first computer program?
10. Returning to the earlier hypothetical about a compilation of menu commands or other commands in an application program, such as Retrieve file, Copy, Save, Save As, Edit, Print, Exit — suppose that the selected subset contains far fewer than all conceivable options. Or consider a reduced instruction set, where considerable effort may go into deciding which instructions to keep in the set and which to omit. Using Judge Leval’s criteria, would copyright protection attach?
Does the scènes à faire doctrine apply to such compilations? (The scènes à faire doctrine insulates stock themes and cliches, such as Nazi officers singing Deutschland Über Alles in a beer hall, from copyright protection. For examples of scènes à faire in a computer program context, see, e.g., Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366 (10th Cir. 1997); Engineering Dynamics, Inc. v. Structural Software, Inc., 46 F.3d 408, 410 (5th Cir. 1995) (cataloging examples).) For a decision suggesting that a novel compilation of scènes à faire in a computer program is protected, see Softel, Inc. v. Dragon Med. & Sci. Communications, Inc., 118 F.3d 955 (2d Cir. 1997).
Tutorial on Code Generators
Code generators are programs that generate code in accordance with predetermined specifications. PC Telon, a program which has been ported to PCs from mainframe Telon, is illustrative. A user wants to write an application that will prepare a given type of report, using information stored in a database management system (typically, Xdb). The user designates the input and output formats, and Telon then generates COBOL code to provide the application software. At the present state of the art, the COBOL code so generated needs further hand-processing and “tweaking.” But the amount of human intervention needed will, it is anticipated, decrease over time. It takes vastly less time to prepare an application with a code generator, despite the time spent on subsequent human intervention. Furthermore, code generators rarely make mistakes, while human programmers frequently make mistakes. The COBOL so generated may not be as compact as that which a skilled programmer would write, but it is highly structured and substantially bug-free. That makes it very easy to maintain and update.
Software that code generators “create” at this time require so much human tweaking that serious copyrightability questions do not arise. At some time in the future, however, serious questions about authorship and originality will arise. Can you imagine some?
Who should own the resulting code? Give the pros and cons of allocating copyright (under present copyright law) to various candidates. The economic consequences.
Do you think that copyright in a computer program generated by a code generator can successfully be predicated on the work that went into preparing the input information that the code generator requires to prepare its output code?
[Excerpt from U.S. Cong./Off. Technol. Assessment, Finding a Balance: Computer Software, Intellectual Property, and the Challenge of Technological Change, ch. 4 (1992)]
The copyright clause of the U.S. Constitution permits Congress to grant “authors” exclusive rights to their “writings.” Before the current Copyright Act and 1980 software amendments became law, there was considerable disagreement as to whether programs were copyrightable “writings.” Even after the 1980 amendments were enacted some believed that only high-level language (or “source code”) programs were copyrightable subject matter, while machine language (or “object code”) programs were not protected by copyright law. Some arguments centered on whether code in lower-level languages was human-readable; according to one view, only higher-level languages expressed writings (for human readers) eligible for copyright protection.
A corollary debate concerns requirements for “authorship” of programs. There were two issues: (1) whether “original works of authorship” required a human author, or whether machine-generated works could also be eligible for copyright—the Copyright Office has maintained that the term “authorship” in the Copyright Act implies a human originator; and (2) determining authorship and copyright ownership for machine-generated or machine-assisted works.
Questions of machine authorship have arisen with respect to compilers. When a program is compiled, some information is removed (e.g., comments), some information is added, and the code may then be rearranged to optimize execution speed.
From a technological perspective, the end result of the compilation process could therefore be regarded as a “derivative work” based on the source code program. However, the Copyright Office does not view the object code version as containing sufficient “originality” to be a derivative work. For this reason, the Copyright Office takes the position that the source-code and object-code versions of a computer program are copies of the same work.
The Final Report of the National Commission on New Technological Uses of Copyrighted Works (CONTU) addressed the question of computer-generated works and concluded that “no special problem exists.” The issue continues to be addressed, most recently at a symposium sponsored by the World Intellectual Property Organization (WIPO) on the intellectual property aspects of artificial intelligence.
One conferee expressed the view that the real issue was not whether there is a human author, but rather who that author is. While CONTU had concluded that the computer was just a tool to assist a human being in creating a work, the conferee suggested that advances in artificial intelligence meant that the tools were becoming increasingly sophisticated, perhaps indicating a need to apportion authorship among the user and the author of a program used in creating a work. A second party expressed similar views when discussing the authorship of programs generated by a sophisticated “code generator” from functional specifications.
The preceding portion of this chapter addressed the copyright implications of the quantity and quality of the mentation or other processes leading to the generation of a work. We now turn to the copyright implications of the kind of the product resulting from some kinds of creative effort, and what kinds of thing can be termed an infringement of a protected work.
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