Pre-Feist Protection of Compilations under U.S. Copyright Law
by Caleb Groos
INTRODUCTION ......................................................................................................................... 1
I.
AMERICAN COPYRIGHT LAW HAS LONG RECOGNIZED THE
REQUIREMENT OF ORIGINALITY FOR THE GRANT OF COPYRIGHT ..................... 2
II. PRIOR TO THE SUPREME COURT’S FEIST DECISION, MAJORITY CIRCUITS
USED A “CREATIVE ORIGINALITY” STANDARD TO DETERMINE THE
COPYRIGHTABILITY OF COMPILATIONS OF INFORMATION ................................... 3
a. Prior to the Feist Decision, the Second Circuit Explicitly Repudiated “Sweat of the
Brow” Protection of Compilations in Favor of the “Creative Originality” Requirement ........... 3
b. Prior to Feist, the Eleventh, Ninth, and Fifth Circuits Also Recognized Creative
Originality as the Basis for Copyright in Compilations .............................................................. 5
i. The Eleventh Circuit ....................................................................................................... 5
ii. The Ninth Circuit ............................................................................................................ 5
iii. The Fifth Circuit ............................................................................................................. 6
c. Long Before Feist, Majority Circuits Repudiated the Protection of Data in Non-directory
Factual Works Based on Research Labor ................................................................................... 7
III. PRIOR TO THE FEIST DECISION, MINORITY CIRCUITS USED A CONFUSED
“SWEAT OF THE BROW” RATIONALE TO GRANT COPYRIGHT PROTECTION TO
COMPILATIONS OF INFORMATION .................................................................................... 9
a. At the Time of Feist, the Seventh, Eighth, and Tenth Circuits Employed a “Sweat of the
Brow” Rationale for Copyright Protection of Compilations ....................................................... 9
i. The Seventh Circuit Articulated a Confused “Sweat of the Brow” Rationale for
Protecting Compilations ......................................................................................................... 9
ii. The Eighth Circuit ........................................................................................................ 12
iii. The Tenth Circuit ......................................................................................................... 13
IV. THE FEIST DECISION REMEDIED CONFUSION BETWEEN THE CIRCUITS
REGARDING THE COPYRIGHTABILITY OF COMPILATIONS, APPROPRIATELY
LIMITED THE SCOPE OF COPYRIGHT PROTECTION IN COMPILATIONS TO
PROTECTION OF COPYRIGHTABLE EXPRESSION, AND SUGGESTED
MISAPPROPRIATION AS POTENTIALLY PROTECTING COMPILATIONS FROM
COMPETETIVE COPYING ..................................................................................................... 14
a. Rather than Eliminate an Accepted Doctrine Granting Copyright for “Sweat of the
Brow,” Feist Enforced the Majority Viewpoint that Copyrightability of Compilations Requires
Original Selection and Arrangement ......................................................................................... 14
b. Feist Rectified Confusion within the Circuits Regarding the Scope of Protection for
Compilations by Limiting the Scope to Copyrightable Elements ............................................. 15
V. A CLOSE READING OF FEIST SUGGESTS THAT MISAPPROPRIATION,
RATHER THAN COPYRIGHT, MIGHT OFFER PROTECTION OF COMPILATIONS
FROM CERTAIN COMPETITIVE COPYING ...................................................................... 17
CONCLUSION ............................................................................................................................ 17
INTRODUCTION
Proponents of database protection often cite the Supreme Court’s 1991 Feist
Publications, Inc. v. Rural Telephone Service Co., Inc.1 decision as abruptly upsetting the
status-quo “sweat of the brow” protection of compilations under copyright. This simply
was not the case. At the time of the Feist decision, the majority circuits, including the
most copyright-intensive circuits, had rejected “sweat of the brow” copyright protection.
At that time, the Second, Fifth, Ninth, and Eleventh Circuits all required originality of
selection and/or arrangement of information in a compilation to merit copyright. While
some minority circuits followed the Seventh Circuit’s troubled articulation of “sweat of
the brow” protection, there remained within the minority circuits a confusion as to the
scope of protection extended to compilations under copyright.
Rather than sweep the rug out from under database producers, the Feist decision
clarified circuit confusion and opted for the majority approach to copyrighting
compilations. In addition to finding the majority requirement of original selection and
arrangement constitutionally required, it clarified misconceptions about the scope of
protection for such copyrighted compilations. While leaving a hint that some collections
of information might find protection from competitive copying through misappropriation
law, the Feist decision simply made clear the long-rooted and then-dominant position that
copyright protects original expression and not “sweat of the brow.”
The Supreme Court held in Feist that factual compilations possess the originality
required for a grant of copyright only to the extent that the selection and arrangement of
the facts are original.2 The court went on to hold that the copyright protection for any
compilation meeting this requirement is thin, extending only to the copyrightable
selection and arrangement, and not to the information compiled.3 The court held this
requirement of originality to be constitutionally mandated,4 but low- requiring only
independent selection and arrangement plus a minimal level of creativity.5 Some
compilations, however, such as the “garden variety” white pages at issue in Feist, would
not meet the standard because they lack the “modicum of creativity” required for
copyright protection.6
To bolster the argument that lack of protection from free riding will underincentivize the production of databases in the United States, proponents of database
protection often cite the Feist decision as a landmark shift in the expected protection of
1
Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340 (1991).
Id. at 349.
3
Id.
4
Id. at 351 (citing The Trade-Mark Cases, 100 U.S. 82 (1879); Burrow-Giles Lithographic Co. v. Sarony,
111 U.S. 53 (1884)).
5
Id. at 358.
6
Id. at 359, 362.
2
1
investments made by database producers.7 A report commissioned by these proponents,
for example, claims that
[t]his sweeping decision eliminated the traditional “sweat of the brow”
rationale for database protection that had been accorded under copyright
law and left database producers in legal limbo in terms of their ability to
protect themselves from unauthorized copying and dissemination of their
products and from outright piracy.8
While U.S. courts have at times extended copyright protection to compilations
based on “sweat of the brow,” such protection was not the general rule prior to the Feist
decision.9 The Feist decision rectified a circuit split in which only minority circuits
protected “sweat of the brow.” In doing so, the Supreme Court did not upset an expected
rule, but instead opted for the majority rule by requiring original selection and/or
arrangement for copyright in compilations.
I. AMERICAN COPYRIGHT LAW HAS LONG RECOGNIZED THE
REQUIREMENT OF ORIGINALITY FOR THE GRANT OF
COPYRIGHT
The Constitution grants Congress the power to secure to “authors” for a limited
time the exclusive right to their “writings.”10 From “writings” of “authors,” the Supreme
Court as early as 1879 extrapolated a requirement of originality upon which the grant of
copyright depends.11 Explaining the fact that Congress’ power to legislate regarding
copyrights and patents did not grant it the power to legislate regarding trademarks, the
Supreme Court in The Trade-Mark Cases stated:
If we should endeavor to classify it under the head of writings of authors,
the objections are equally strong. In this, as in regards to inventions,
originality is required. And while the word writings may be liberally
construed . . . it is only such as are original, and are founded in the creative
powers of the mind.12
The 1976 Copyright Act made explicit this requirement of originality, using the
phrase “original works of authorship,” instead of “writing of authors,” as the basis for
subject matter to be protected by copyright.13 Under the 1976 Act, a compilation can fall
See Laura D’Andrea Tyson and Edward F. Sherry, Statutory Protection for Databases: Economic &
Public Policy Issues (unpublished report for the Information Industry Association, 1997), available at
http://www.house.gov/judiciary/41118.htm (last visited September 1, 2004).
8
Id.
9
See Discussion §§ II, III.
10
U.S. CONST. art. I, § 8, cl. 8.
11
The Trade-Mark Cases, 100 U.S. 82 (1879); Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53
(1884).
12
The Trade-Mark Cases, 100 U.S. at 94.
13
17 U.S.C. § 102(a) (2003).
7
2
within copyrightable subject matter,14 but only if the materials or data within it are
“selected, coordinated, or arranged in such a way that the resulting work as a whole
constitutes an original work of authorship.”15 Furthermore, “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.”16
Thus originality, and not labor, was at the time of Feist, and long before, firmly
established as the basis for copyright protection of a work. Under the 1976 Act,
originality in selection, coordination, or arrangement serves not only to determine which
compilations are “works of authorship” worthy of copyright protection, but also to
demarcate which portions of a protectible compilation are covered by copyright. The
1976 Act, the majority circuits prior to Feist, and the Feist decision itself explicitly
applied to compilations the longstanding requirement of originality. Feist recognized that
this is a “constitutional requirement”: “The primary objective of copyright is not to
reward the labor of authors, but ‘[t]o promote the Progress of Science and useful Arts.’
Art. I, § 8, cl. 8. 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.”17
II. PRIOR TO THE SUPREME COURT’S FEIST DECISION, MAJORITY
CIRCUITS USED A “CREATIVE ORIGINALITY” STANDARD TO
DETERMINE THE COPYRIGHTABILITY OF COMPILATIONS OF
INFORMATION
a. Prior to the Feist Decision, the Second Circuit Explicitly Repudiated
“Sweat of the Brow” Protection of Compilations in Favor of the
“Creative Originality” Requirement
The Second Circuit Court of Appeals’ 1922 decision in Jeweler’s Circular Pub.
Co. v. Keystone Pub. Co. is often cited as the hallmark explanation of copyright
protection of a compiler’s “industrious collection.” There, the court upheld a decree of
copyright infringement against a defendant who was found to have copied substantial
portions of the plaintiff’s trade directory for use in a competing directory.18 The court
explained:
The right to copyright a book upon which one has expended labor in its
preparation does not depend on 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
14
17 U.S.C. § 103(a) (2003).
17 U.S.C. § 101 (2003) (defining “compilation”).
16
17 U.S.C. § 103(b) (2003).
17
Feist, 499 U.S. at 349-350 (citation omitted).
18
Jeweler’s Circular Pub. Co. v. Keystone Pub. Co, 281 F. 83 (2d Cir. 1922).
15
3
the streets of a town and puts down the names of each of the inhabitants,
with their occupations and their street number, acquires material of which
he is the author. He produces by his labor a meritorious composition, in
which he may obtain copyright, and thus obtain the exclusive right of
multiplying copies of his work.19
Long before the Supreme Court’s decision in Feist, however, the Second Circuit
repudiated this “sweat of the brow” rationale for copyright protection of compilations.
The Second Circuit’s movement away from the use of copyright to simply protect
the compiler’s labor can be seen in the Southern District of New York’s 1982 Dow Jones
v. Board of Trade of the City of Chicago decision.20 There, the court held that Dow
Jones’ market indexes were copyrightable due to the “high degree of selectivity and
subjective judgment” evidenced therein.21 The court explained that “Dow’s lists . . . share
with compilations one characteristic responsible for their copyright protection, the
subjective judgment and selectivity involved in determining which members of a given
population merit inclusion in the author’s list.”22 The Second Circuit’s Dow Jones
decision, like many majority circuit decisions requiring originality in selection and/or
arrangement, held the compilations in question to merit copyright protection.23
The Second Circuit Court of Appeals’ 1984 decision in Eckes v. Card Price
Updates used this test of subjective judgment and selectivity, rather than “sweat of the
brow,” to decide whether the plaintiff’s listing of baseball card values merited copyright
protection.24 The court decided that the plaintiff, by selecting of 5,000 “premium” cards
from a group of about 18,000 cards, undoubtedly “exercised selection, creativity and
judgment.” In opting to employ a rationale of originality in selection rather than one of
industrious collection, the court cited the Second Circuit’s growing case law rejecting the
protection of the sweat of the researcher’s brow.25 Again, while imposing a requirement
of originality in selection, the court chose to protect the minimally creative compilation in
question.
Building on the Eckes decision, the Second Circuit in Financial Information, Inc.
v. Moody’s Investment Service, Inc. characterized the requirement of originality in
selection and/or arrangement as mandated by the Copyright Act of 1976.26 Before
deciding whether the plaintiff’s daily reports of data pertaining to all recalled municipal
19
Id. at 88.
Dow Jones & Company, Inc. v. Board of Trade of the City of Chicago, 546 F. Supp. 113, 116 (S.D.N.Y.
1982).
21
Id.
22
Id.
23
Cf. Eckes v. Card Prices Update, 736 F.2d 859 (2d Cir. 1984); Southern Bell Telephone v. Associated
Telephone, 756 F.2d 801 (11th Cir. 1985); Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197 (9th
Cir. 1989).
24
Eckes v. Card Prices Update, 736 F.2d 859, 863 (2d Cir. 1984).
25
Id. at 862 (citing Hoehling v. Universal Studios, Inc., 618 F.2d 972 (2d Cir. 1980) and Rosemont
Enterprises, Inc. v. Random House, Inc., 366 F.2d 303 (2d Cir. 1966)).
26
Financial Information, Inc. v. Moody’s Investors Service, Inc., 808 F.2d 204, 207 (1986), cert. denied,
484 U.S. 820 (2d Cir. 1987).
20
4
bonds were copyrightable, the court stated that the 1976 Act “requires that
copyrightability not be determined by the amount of effort the author expends, but rather
by the nature of the final result.”27 Unlike the card price updates in Eckes, the bond
reports of Financial Information, Inc. were held not to merit copyright protection.28 In
support of the refusal to allow copyright to simply protect the “sweat of the author’s
brow,” the court asserted that such a grant of copyright protection “would risk putting
large areas of factual research data off limits and threaten the public’s unrestrained access
to information.”29
b. Prior to Feist, the Eleventh, Ninth, and Fifth Circuits Also Recognized
Creative Originality as the Basis for Copyright in Compilations
i. The Eleventh Circuit
In 1985, the Eleventh Circuit Court of Appeals chose to follow the Second Circuit
in requiring originality in selection or arrangement, rather than “sweat of the brow,” to
grant copyright protection to compilations.30 Faced with a decision as to whether the
plaintiff’s yellow pages for the city of Atlanta should be protected by copyright, the court
wrote:
The ability to copyright a compilation does not depend on whether the
individual items are themselves capable of being copyrighted; rather, a
compilation is capable of being copyrighted even where it merely consists
of a selection or arrangement of “facts” which individually would not be
copyrightable [but] the originality involved in the selection and/or
arrangement of such facts is sufficient to constitute the resulting
compilation of protectible literary work.31
Reaching the conclusion that the nature of selection and arrangement of the underlying
material caused Southern Bell’s yellow pages to merit copyright protection, the court
noted that outside of copyright, the protection of information resulting from the sweat of
a researcher’s brow would be better afforded under an unfair competition theory.32 Thus,
as did the Second Circuit, the Eleventh Circuit chose to require a low level of creativity
in selection and/or arrangement, providing protection to even minimally creative
compilations.
ii. The Ninth Circuit
After having previously employed an “industrious collection” rationale for
protecting compilations through copyright, the Ninth Circuit also rejected “sweat of the
27
Id.
Id. at 207–8.
29
Id. at 207.
30
Southern Bell Telephone v. Associated Telephone, 756 F.2d 801, 809 (11th Cir. 1985).
31
Id. (quoting Nimmer, §2.04[B] 2–41 to 2–42 n.16).
32
Id. at 809, n. 9.
28
5
brow” protection in favor of requiring originality in selection and/or arrangement.33 Its
1937 decision in Leon v. Pacific Telephone & Telegraph Co. is often correctly cited as an
articulation of the “industrious collection” rationale for copyrighting compilations in line
with the Second Circuit’s 1922 Jeweler’s Circular decision. Before the Feist case,
however, the Ninth Circuit (much like the Second Circuit) turned away from protecting
“sweat of the brow” through copyright and toward requiring a modicum of creativity.
In Harper House, Inc. v. Thomas Nelson, Inc., the Ninth Circuit upheld the
copyright of the plaintiff’s business organizers as compilations because of their unique
selection, format, and combination of uncopyrightable forms and information.34 While
the district court found the organizers copyrightable due to both subjective selection and
labor expended, the Court of Appeals rejected the labor portion of this analysis. 35 The
court stated, “[w]e agree [with the defendant] that the amount of work put into designing
Harper House’s organizers does not resolve the original question of copyrightability.”36
Instead, copyright in the compilation resulted from “unique ‘selection, coordination, and
arrangement’” of uncopyrightable elements.37 As occurred in the Second and Eleventh
Circuits, the Ninth Circuit held arguably minimal amounts of creativity in selection
and/or arrangement to satisfy the requirement of originality upon which the grant of
copyright depends.
Before its Harper House decision, the Ninth Circuit had indicated a shift away
from “sweat of the brow” protection in its 1987 Worth v. Selchow & Righter Company
decision.38 There, a factual work was held not to have been an infringed compilation
because the plaintiff’s selection and arrangement of trivia questions was not copied by
the defendant’s Trivial Pursuit cards.39 Though this decision blended discussion of nondirectory factual works (such as historical works) and compilations, it makes clear the
Ninth Circuit’s rejection of the “sweat of the brow” rationale for copyrighting
compilations, stating that selection and arrangement are what qualify a compilation for
copyright protection.40 Rejecting the plaintiff’s use of Leon to support his claim of
infringement, the court stated that “to the extent that Leon suggests that research or labor
is protectible, later cases have rejected that theory.”41
iii. The Fifth Circuit
As did the Second, Eleventh, and Ninth Circuits, the Fifth Circuit also recognized
subjective selection and arrangement, not “sweat of the brow,” as the basis for copyright
33
Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197 (9th Cir. 1989); Worth v. Selchow & Righter
Co., 827 F.2d 569 (9th Cir. 1987).
34
Harper House, 889 F.2d at 201–205.
35
Id. at 201, n.2.
36
Id.
37
Id. at 204.
38
Worth v. Selchow & Righter Co., 827 F.2d 569 (9th Cir. 1987).
39
Id. at 572–573.
40
Id. at 572.
41
Id. at 573 (citing Eckes v. Card Prices Update, 736 F.2d 859, 863 (5th 1984)).
6
protection of compilations.42 In Miller v. Universal Studios, Inc., the Fifth Circuit
endorsed originality rather than labor as the proper test.43 Recognizing the divergent
rationales employed to protect directories through copyright, the court made clear that
“copyright in a directory . . . is properly viewed as resting on the originality of the
selection and arrangement of the factual material, rather than on the industriousness of
the efforts to develop the information.”44 While the holding in this case specifically
pertained to the copyright protection of a non-directory factual work, the court explicitly
chose to reject “sweat of the brow” as the source of copyright protection for directories45
and non-directory factual works.46 Applying a rationale consistent with the Second
Circuit in Hoeling and Rosemont,47 the court held that research (and information resulting
from research) is not protected by copyright, no matter the labor expended.48
c. Long Before Feist, Majority Circuits Repudiated the Protection of
Data in Non-directory Factual Works Based on Research Labor
Non-directory factual works cases, such as the Ninth Circuit’s Worth decision,49
and the Fifth Circuit’s Miller decision,50 provide insight into compilation cases in two
primary ways. First, both types of cases (sometimes without distinction between the
two)51 deal squarely with the question of how copyright does or does not protect factual
data. Additionally, in the non-directory factual work cases, one sees clearly how
copyright deals with works that, while satisfying the requirements to gain copyright,
contain elements outside the scope of copyright protection, owing to their nature as
factual data. The approach taken in such factual works cases reiterates that copyright
protects expression, not data as such, and that the reuse of factual data contained in even
a copyrighted work prevents precisely the waste of effort that would impede progress and
dissemination of information.
Before the Fifth Circuit’s holding in Miller, the Second Circuit had already
rejected the notion that copyright protected the sweat of the researcher’s brow. While in
the early 1980s it unquestionably repudiated the “industrious collection” rationale for
protecting compilations,52 the Second Circuit in 1966 made clear that research labor
42
Miller v. Universal Studios, Inc., 650 F.2d 1365 (5th Cir. 1981).
Id. at 1370.
44
Id.
45
Id.
46
Though the court in Miller suggested directory cases to be a separate category, it did so in order to
characterize copyright protection for non-directory factual works as more restricted than that provided
directories. Recognizing the accepted potential for directories to obtain copyright, it went on to state that
“[h]owever appropriate it may be to extend copyright protection to the selection and arrangement of factual
material in a directory if it involves originality and hence authorship, and however difficult it may be to
reconcile these cases with the principle that facts are not copyrightable, . . . the special protection granted
directories under copyright law has generally not been applied to other factual endeavors.” Id.
47
See infra notes 54–55 and accompanying text.
48
Miller, 650 F.2d at 1371–72.
49
See supra notes 38–41 and accompanying text.
50
See supra notes 42–48 and accompanying text.
51
See Worth, supra notes 38–41 and accompanying text, blending discussion of directory and non-directory
factual works.
52
Eckes, 736 F.2d at 863; Moody’s, 808 F.2d at 207; Dow Jones, 546 F. Supp. at 116.
43
7
should not bestow copyright protection on factual works such as historical and
educational works. In contrast to its earlier Jeweler’s Circular approach, which would
prevent the second comer from “sav[ing] himself the labor and expense of arriving at his
results by an independent road,”53 the Second Circuit by 1966 articulated a different
approach to factual legwork. Refusing to prevent the publication of a Howard Hughes
biography that allegedly infringed a previously published article about him, the court
asserted, “[w]e . . . cannot subscribe to the view that an author is absolutely precluded
from saving time and effort by referring to and relying upon prior published material. It is
just such wasted effort that the proscription against the copyright of ideas and facts . . .
are designed to prevent.”54
The Second Circuit reiterated this refusal to protect factual works on a “sweat of
the brow” rationale in its 1980 Hoehling v. Universal Studios, Inc. decision. No matter
the sweat of the first author’s brow, each second-comer was deemed free to “avail
himself of the facts contained” in predecessor works and to use such information in his
own works.55
Thus, in addition to refusing copyright protection based on the labor involved in
the compilation of directories and listings, majority jurisdictions evidenced a
longstanding refusal to use copyright to protect the data within other types of factual
works. As in the directory cases, “sweat of the brow” invested in non-directory factual
works did not lead to copyright protection. Further, protection of works that as a whole
qualified for copyright did not extend to the protection of factual data. Thus, in all types
of factual works, majority circuits before Feist limited copyright protection to originality
of expression rather than extending “sweat of the brow” protection to the underlying facts.
Jeweler’s Circular, 281 F. at 95.
Rosemont Enterprises, Inc. v. Random House, Inc., 366 F.2d 303, 310 (2d Cir. 1966).
55
Hoehling v. Universal Studios, Inc. 618 F.2d 972, 979 (2d Cir. 1980) (quoting Greenbie v. Noble, 151
F.Supp. 45, 67 (S.D.N.Y. 1957)).
53
54
8
III. PRIOR TO THE FEIST DECISION, MINORITY CIRCUITS USED A
CONFUSED “SWEAT OF THE BROW” RATIONALE TO GRANT
COPYRIGHT PROTECTION TO COMPILATIONS OF INFORMATION
a. At the Time of Feist, the Seventh, Eighth, and Tenth Circuits
Employed a “Sweat of the Brow” Rationale for Copyright Protection of
Compilations
i. The Seventh Circuit Articulated a Confused “Sweat of the Brow”
Rationale for Protecting Compilations
Before the Supreme Court decided Feist, the Seventh Circuit provided copyright
protection to compilations resulting from “industrious collection.” The most often cited
illustration of this theory, which remained good law until the Feist decision, was the
Seventh Circuit’s decision in Schroeder v. Morrow.56 This case dealt with a large
gardening book that copied names and addresses from a smaller gardening directory.57
Before going on to find the plaintiff’s copyright infringed, the court cited the Second
Circuit’s 1922 Jeweler’s Circular decision in stating that copyright in a compilation
required only “industrious selection,” not novelty in the patent sense.58 Discussing what,
if any, uses of the first compiler’s work could be made by a second comer, the court
asserted that
[t]he copyright protects not the individual names and addresses but the
compilation, the product of the compiler’s industry. Another is entitled to
make his own compilation of the same names and addresses, using
information in the public domain, but he is not entitled to merely copy the
copyrighted list.59
Because the defendant simply copied names and addresses from the plaintiff’s listing,
without making an independent effort to compile the same underlying information, the
court found infringement.60
While employing the “industrious collection” rationale previously utilized in
other circuits, the court’s references to Seventh Circuit precedent prove problematic. The
court responded to the defendant’s contention of not having copied plaintiff’s
accompanying textual descriptions by asserting that “[t]he copyright protected not merely
the descriptive material, but also ‘the selection, the ordering and arrangement’ of the
56
Shroeder v. Morrow, 566 F.2d 3 (7th Cir. 1977).
Id. at 4.
58
Id. at 5.
59
Id. at 5-6 (citing G. R. Leonard & Co. v. Stack, 386 F.2d 38, 39 (7th Cir. 1967)). The court in Leonard
articulated a “right to check back,” stating “a compiler of a directory or the like may make a fair use of an
existing compilation serving the same purpose if he first makes an honest, independent canvass; he merely
compares and checks his own compilation with that of the copyrighted publication; and publishes the result
after verifying the additional items derived from the copyrighted publication.” G. R. Leonard & Co. v.
Stack, 386 F.2d 39.
60
Id. at 6.
57
9
names and addresses.”61 Thus, the court found the selection and arrangement of the
compilation relevant to the scope of copyright protection, as opposed to the availability of
protection in the first place, 62 but is not clear as to whether it would limit protection to
those elements.63 Further confusing things, the court’s source for the “selection, the
ordering and arrangement” quotation was the 1926 Seventh Circuit decision in Edwards
& Deutsch Lithographing Co. v. Boorman, which used these elements to address both the
threshold question of copyrightability and scope of protection. Edwards & Deutsch
exemplified copyright protection for collections of uncopyrightable elements based upon
novel selection and arrangement.64 There, the court upheld the copyright of a banker’s
interest and time teller because “the selection, the ordering and arrangement, [were] new
and useful.”65 Thus, while Seventh Circuit decisions after Schroeder would wonder
whether its holding limited infringement to copying of selection and arrangement,66 the
authority relied upon by the court in Schroeder actually limited both copyrightability and
scope of protection to novel selection and arrangement.
Similar confusion67 followed the Schroeder court’s citation to Gelles-Widmer
Company v. Milton Bradley Company to support the assertion that copyright in
compilations required only “industrious collection” instead of patent-type novelty.68
While the court in Gelles-Widmer did hold that copyright did not require novelty in the
patent sense,69 it did not employ an “industrious collection” rationale. Instead, it upheld
copyright in educational flashcards because although the arithmetical problems may have
been in the public domain, “the arrangement, the plan and manner in which they were put
together by the author . . . [did] constitute originality.”70 So, while the Seventh and other
Circuits would follow the Schroeder court’s direction in providing “sweat of the brow”
protection to compilations, these confusions within Schroeder would result in
problematic subsequent interpretations within the Seventh Circuit.
Though ordering and arrangement in the compiler’s work clearly played some
role in prior Seventh Circuit case law regarding copyrightability71 and the scope of
protection granted compilations, the district court in National Business Lists v. Dun &
61
Id. at 6.
See Rand McNally & Co. v. Fleet Management Systems, 591 F. Supp. 726, 732 at n.3 (N.D. Ill. 1983)
(hereinafter Rand McNally I) (stating “It is true that the Schroeder Court discussed the “selection, the
ordering and arrangement” of the compilation, but only in connection with the scope of the copyright
protection and not in connection with the qualities that a compilation must possess to merit the protection in
the first place.” (emphasis in original)).
63
On the one hand, the defendant appeared to have copied the selection, and to some extent the
arrangement, of the plaintiff’s list, but on the other hand, the court emphasized the defendant’s lack of
independent effort in finding infringement, suggesting that protection might extend to the facts themselves.
64
Edwards & Deutsch Lithographing Co. v. Boorman, 15 F.2d 35 (7th Cir.), cert. denied, 273 U.S. 738
(1926).
65
Id. at 36.
66
See Rand McNally I, 591 F. Supp. at 732 n.3.
67
See id., at 732, n.4.
68
Schroeder, 566 F.2d at 5.
69
Gelles-Widmer Co. v. Milton Bradley Co., 313 F.2d 143, 146–47 (7th Cir. 1963).
70
Id. at 147.
71
See discussions of Edwards & Deutsch Lithographing and Gelles-Widmer, supra notes 59-70.
62
10
Bradstreet decided not to so limit copyright protection.72 It stated that “[t]he compiler’s
contribution to knowledge normally is the collection of information, not its
arrangement.”73 Taking the same view, the district court in Rand McNally v. Fleet
Management Systems maintained that, “with respect to electronic compilations, ‘an
emphasis upon arrangement and form in compilation protection becomes even more
meaningless than in the past.’”74 In renewed litigation between Rand McNally and Fleet
Management Systems, the district court continued with the approach that neither
copyrightability nor scope of protection depended on the arrangement of compiled
information.75 In this case, compiled data was reformatted into the defendant’s system.
The court claimed that “[t]he way that information must be formatted in order to be of
use by a particular computer or program should not prevent a finding of infringement,”
citing “[t]he irrelevance of the arrangement of data in the context of a computer
database.”76
One year later, however, the Seventh Circuit Court of Appeals again spoke to the
copyright protection of compilations and again claimed to limit copyright protection to
arrangement and presentation of compiled information.77 In Rockford Map Publishers,
Inc. v. Directory Service Company of Colorado, the defendant anticipated a “sweat of the
brow” rationale by arguing that the plaintiff had not expended enough labor to merit
protection, and that it, as the second compiler, had been industrious in making alternative
maps detailing who owned which pieces of land.78 The court responded that it was not the
amount of labor contributed, but the resulting work that copyright protected.79 It
continued by explaining that “[p]erhaps the smaller the effort the smaller the contribution;
if so, the copyright simply bestows fewer rights.”80 The contribution to a collection of
facts, according to the court, lay not in the facts themselves, but in their presentation. “All
Rockford Map’s copyright covered,” the court explained, “was the arrangement and
presentation of the information.”81 Thus, the court claimed to follow the Schroeder
court’s rationale of “industrious collection,” here without regard to the amount of labor
expended, in order to provide copyright protection that actually applied to selection,
ordering, and arrangement. Further complicating matters, protection of selection and
arrangement still resulted in finding infringement in any copying of the copyrighted
compilation.
72
National Business Lists, Inc. v. Dun & Bradstreet, Inc., 552 F.Supp. 89, 92 (N.D. Ill. 1982).
Id.
74
Rand McNally I, 591 F. Supp. at 733 (quoting National Business Lists, 552 F. Supp. at 97).
75
Rand McNally & Co. v. Fleet Management Systems, Inc., 600 F. Supp. 933, 942 (N.D. Ill. 1984)
(hereinafter Rand McNally II).
76
Id.
77
Rockford Map Publishers, Inc. v. Directory Services Company of Colorado, Inc., 768 F.2d 145, 148–9
(7th Cir. 1985).
78
Id.
79
Id. at 148.
80
Id.
81
Id.
73
11
The difficulty of applying this web of precedent became apparent in the third
round of litigation between Rand McNally and Fleet Management Systems.82 Faced with
Schroeder’s precedent of labor-based protection, and Rockford Map’s refusal to consider
the amount of labor meriting copyright, the district court second-guessed its previous
rationale for protecting the plaintiff’s compilation. While it had previously focused on the
effort expended, the court wrote that in light of Rockford Map,
the court’s analysis should have questioned whether the compilation as a
whole was a copyrightable arrangement and presentation of information,
and then, without reference to the amount of labor involved on Rand
McNally’s part, addressed whether [the defendant’s] imputing of that
information into its computer database constituted infringement of that
arrangement.83
The court concluded by maintaining that Schroeder was still good law, as it had not been
explicitly repudiated by Rockford Map. It expressed regret, however, that Rockford Map
“addressed the law in this area as if it were a seamless and not a tangled web.”84
In its last pre-Feist statement on copyright protection of compilations, the Seventh
Circuit Court of Appeals did not address the confusions encountered since the Schroeder
opinion. In Illinois Bell v. Haines and Company, the court held the plaintiff’s white pages
to be infringed by the defendant’s directory, which took data from the white pages to
publish a directory organized by street address.85 The court simplified matters by simply
ruling that directories are copyrightable86 and that copying a copyrighted directory was
infringement.87
ii. The Eighth Circuit
At the time of the Feist decision, the Eighth Circuit also employed a “sweat of the
brow” approach to copyright protection of compilations. In 1985, the Eighth Circuit
Court of Appeals used the “industrious collection” rationale articulated in Jeweler’s
Circular to hold that white page directories merited copyright because they resulted from
the compiler’s effort and energy.88
The Eighth Circuit’s “sweat of the brow” protection became slightly less clear in
the 1988 West Publishing v. Mead Data decision.89 At issue were the page numbers in
West’s published case reporters. According to West, use of those page numbers by Lexis
82
Rand McNally & Company v. Fleet Management Systems, Inc., 634 F. Supp. 604 (N.D. Ill. 1986)
(hereinafter Rand McNally III).
83
Id. at 607–8.
84
Id. at 609.
85
Illinois Bell Telephone Company v. Haines and Company, 905 F.2d 1081, 1086 (7th Cir. 1990).
86
Id. at 1085 (citing Schroeder v. Morrow, 566 F.2d 3 (1977)).
87
Id. at 1086.
88
Hutchison Telephone Company v. Frontier Directory Company of Minnesota, Inc., 770 F.2d 128, 132
(8th Cir. 1985). Infringement was found on remand. Hutchison Telephone Company v. Frontier Directory
Company of Minnesota, Inc., 640 F. Supp. 386 (D. Minn. 1986).
89
West Publishing Co. v. Mead Data, Inc., 799 F.2d 1219 (8th Cir. 1986).
12
infringed on West’s copyright in the compiled reporters. In siding with West, the court
did not make clear whether it supported copyright in the compilation due to the labor or
the originality employed in arranging the cases. The court concluded that “the
arrangement West produces through this process is the result of considerable labor, talent,
and judgment.”90 Use of West’s page numbers, according to the court, would allow Lexis
users to recreate West’s arrangement of cases and thus would infringe West’s copyright
in the compilation. Though the court refers to the “modicum of intellectual labor”
required to meet the requirements of “intellectual creation,”91 the modicum of intellect
required to chronologically order cases within jurisdictions seems minimal enough to
place this case within “sweat of the brow” protection.
Again in 1988, the Eighth Circuit held telephone white pages copyrightable and
infringed.92 Here, the copyrightability of the directory was described in the language of
the 1976 Act’s definition of compilation, as “selected, coordinated, and arranged in such
a way that the resulting work as a whole constitutes an original work of authorship.”93
The court found the listing of “preexisting names, addresses, and telephone numbers” to
be protected expression of the author.94 Entering this information into the defendant’s
computer was found to infringe.95
iii. The Tenth Circuit
Leading to the now binding Supreme Court decision regarding copyright
protection of compilations of information was the Tenth Circuit decision in Rural
Telephone Service Company, Inc. v. Feist Publications, Inc.96 There, the court followed
Hutchison in finding that white pages are copyrightable and are infringed given direct
evidence of copying.97
Thus, at the time of the Feist decision, certain minority circuits extended
copyright protection to compilations of information based on “sweat of the brow.” In
doing so, they often relied on the rationale of “industrious collection” as stated in
Jeweler’s Circular, which had long since been disregarded by majority circuits.
Misapplication of precedent within minority circuits (such as occurred in the Seventh
Circuit) led to confusion regarding both copyrightability and scope of protection. It was
to this confusion, and to the large-scale differences between majority and minority
circuits, that the Supreme Court spoke in Feist.
90
Id. at 1226.
Id. at 1227.
92
United Telephone v. Johnson Publishing Co., 855 F.2d 604 (8th Cir. 1988).
93
Id. at 607.
94
Id.
95
Id.
96
Rural Telephone Service Company, Inc. v. Feist Publications, Inc. 663 F. Supp. 214 (D. Kan. 1987),
aff’d, 916 F.2d 718 (table decision) (10th Cir. 1990), rev’d, 499 U.S. 340 (1991).
97
Id. at 218–9.
91
13
IV. THE FEIST DECISION REMEDIED CONFUSION BETWEEN THE
CIRCUITS REGARDING THE COPYRIGHTABILITY OF
COMPILATIONS, APPROPRIATELY LIMITED THE SCOPE OF
COPYRIGHT PROTECTION IN COMPILATIONS TO PROTECTION
OF COPYRIGHTABLE EXPRESSION, AND SUGGESTED
MISAPPROPRIATION AS POTENTIALLY PROTECTING
COMPILATIONS FROM COMPETETIVE COPYING
a. Rather than Eliminate an Accepted Doctrine Granting Copyright for
“Sweat of the Brow,” Feist Enforced the Majority Viewpoint that
Copyrightability of Compilations Requires Original Selection and
Arrangement
As seen in the above analysis of pre-Feist case law, “sweat of the brow” did not
merit copyright for compilations in most circuits. While some argue that the Feist
decision swept away stable copyright protection of labor, it actually enforced a longstanding and then-dominant position that copyright in a compilation, like copyright in
everything else, results from original expression, and not labor expended.
Just prior to the Feist decision, commentator Jane Ginsburg argued against
applying to compilations the unitary view of copyright based on authorial personality. 98
She explained that before the rise of a personality-based approach to the analysis of
originality, courts often granted protection based on labor expended.99 While the scope of
such protection was thin (extending only to verbatim copying), the scope of protection
offered to works under the subsequent personality-based approach was thick.100 The
result, under what Ginsburg acknowledged as the dominant view of originality based in
personality, was underprotection of compilations lacking personality and overprotection
of compilations found to have the requisite originality.101 Ginsburg drew attention to the
roots of “sweat of the brow” protection in English common law and nineteenth-century
American cases,102 seeming to argue that the subsequent personality-based approach was
eventually misapplied to compilation cases.
The history of original selection and/or arrangement as the basis for copyright
protection of compilations, however, goes back much further than recognized by
Ginsburg. As Justice Story wrote in 1845 upholding the copyright of Emerson’s North
American Arithmetic,
98
Jane C. Ginsburg, Creation and Commercial Value: Copyright Protection of Works of Information, 90
COLUM. L. REV. 1865 (1990). Ginsburg’s recommendation was to abandon the unitary approach to
copyright. She advocated a modified form of copyright protection for works of “low authorship,” involving
compulsory licensing to ensure follow-on works. Id. at 1924–1938.
99
Id. at 1875–1881.
100
Id. at 1871.
101
Id. at 1871–2.
102
Id. at 1875–1881.
14
The question is not, whether the materials which are used are entirely new,
and have never been used before; or even that they have never been used
before for the same purpose. The true question is, whether the same plan,
arrangement and combination of materials have been used before for the
same purpose or for any other purpose. If they have not, then the plaintiff
is entitled to a copy-right….103
Whether or not copyright law inefficiently forces the prescriptions of literary and artistic
authorship onto the functional realm of information compilations, the language of skillful
selection and arrangement as the basis of copyright in factual works is not new. As was
held in 1869,
Copyright may justly be claimed by an author of a book who has taken
existing materials from sources common to all writers, and arranged and
combined them in a new form, and given them an application unknown
before, for the reason that, in so doing, he has exercised skill and
discretion in making the selections, arrangement, and combination, and,
having presented something that is new and useful, he is entitled to the
exclusive enjoyment of his improvement, as provided in the copyright
act.104
At the very least, one must see that the historical cases cited by Ginsburg as providing
“sweat of the brow” protection to compilations coexisted with an equally strong tradition
of basing copyright of compilations on originality in selection and/or arrangement.
By the time of the Feist decision, this difference in rationale had evolved into a
circuit split in which the majority position awarded copyright only to compilations
exhibiting originality. Rather than bolting from the blue, the Supreme Court’s Feist
decision applied the then-dominant, and long storied, view that copyrightability of
compilations under U.S. law requires original selection and arrangement.
b. Feist Rectified Confusion within the Circuits Regarding the Scope of
Protection for Compilations by Limiting the Scope to Copyrightable
Elements
Leading up to the Feist decision, both majority and minority circuits struggled in
deciding whether to resolve the extent of copyright protection granted to compilations at
the copyrightablity stage or in scope of protection analysis. Majority circuits hinted that
while copyright would not protect the sweat of the researcher’s brow, wholesale
appropriation of some works might infringe.105 The Second Circuit wrote in Eckes that
“we have been particularly restrictive in the protection of non-fiction works indicating,
for example, that the fruit of the researcher’s labor in lieu of independent research
obtained through sweat of the researcher’s brow, does not merit copyright protection,
103
Emerson v. Davies, 8 F. Cas. 615, 618–19 (Circuit Court, D. Massachusetts, 1845).
Lawrence v. Dana, 15 F. Cas. 26, 57–58 (Circuit Court, D. Massachusetts, 1869) (emphasis added).
105
See Eckes v. Card Prices Update, 862 F.2d 859 (1984).
104
15
absent, perhaps, wholesale appropriation.”106 Commentators including Ginsburg107 and
subsequent courts108 read this to imply that the extent of copying might have determined
the copyrightability of a compilation in the Second Circuit. Upon closer examination,
however, this part of the Eckes decision refers to the Second Circuit’s treatment of nondirectory factual works. Specifically, it describes the treatment of a book about the
Hindenburg’s last voyage in Hoehling, and a magazine article about Howard Hughes in
Rosemont Enterprises.109 Such non-compilation factual works easily contain
copyrightable expression in the words through which the author refers to the facts. Thus,
the copyrightability of such works is not in question to the extent that it is in cases
dealing with unoriginal compilations. The court in Eckes did not say that wholesale
copying can result in granting copyright protection to otherwise uncopyrightable works,
but rather that wholesale copying of routinely copyrightable nonfiction works can
infringe the thin scope of protection offered such works.
Regardless of inaccuracy in portraying the Eckes decision, such confusion
lingered.110 This confusion as to scope of protection added to that already evidenced in
the Seventh Circuit’s contradictory statements regarding whether compilation copyrights
protected against all copying or only protected selection and arrangement of the
information.111
Thus, while the majority opinion held that compilations exhibit subjective
selection and arrangement in order to merit copyright protection, courts in both majority
and minority jurisdictions struggled with determining just when compilation copyrights
were infringed. In response to this question, the Supreme Court in Feist provided an
obvious answer. After endorsing the majority opinion as to the copyrightability of
compilations, it stipulated that the scope of such protection extended only to the
copyrightable elements within the compilation.112
106
Id.
See Ginsburg, supra note 98, at 1897.
108
Moody’s, 808 F.2d at 207, n.1.
109
See supra notes 54–55 and accompanying text for discussion of these cases.
110
As indicated by the court in Moody’s responding to, rather than simply dispatching, the plaintiff’s
assertion of wholesale misappropriation of an uncopyrightable works. Moody’s, 808 F.2d at 207, n.1.
111
See supra notes 56–87 and accompanying text.
112
Feist, 499 U.S. at 359–60.
107
16
V. A CLOSE READING OF FEIST SUGGESTS THAT
MISAPPROPRIATION, RATHER THAN COPYRIGHT, MIGHT OFFER
PROTECTION OF COMPILATIONS FROM CERTAIN COMPETITIVE
COPYING
In its decision upholding an industriously collected but unoriginally arranged
compilation, the district court in National Business Lists v. Dun & Bradstreet made a
telling statement about its perception of the relationship between copyright and
misappropriation law. It wrote: “[t]he court respectfully suggests that the directory cases,
rather than being a breed apart, are the most striking illustrations in copyright law that the
misappropriation doctrine most commonly associated with International News Service v.
Associated Press . . . has there [in copyright] long found a house, if not a home.”113
As practical as it may have seemed, protection of non-copyright information from
misappropriation by means of copyright law flies in the face of INS v. AP. The Supreme
Court in Feist made this point clear, citing INS v. AP as authority for copyright law’s
refusal to protect “sweat of the brow” expended in gathering information.114 In doing so,
it noted that the grounds upon which the court had ruled for INS “[were] not relevant
here.”115 While federal common law misappropriation no longer exists, the law of
misappropriation is not dead. Whereas a court at the time of National Business Lists v.
Dun & Bradstreet might have seen no place besides copyright to put the seemingly
extinct misappropriation protection, NBA v. Motorola shows that certain state law
misappropriation claims survive preemption by copyright law.116 The recognition of valid
“hot-news” claims between competitors represents a specific analysis of certain types of
information that might require protection from direct competitors to ensure provision.
Rather than taking away stable protection for industrious collection of information, Feist
reiterates the majority position that copyright law, the law of literary and artistic property,
is an inappropriate arena in which to perform such unfair competition analysis.117
CONCLUSION
The exclusion of factual data from copyright protection is not simply a side effect
of preserving the requirement of personality-based originality for the grant of all
113
National Business Lists, Inc. v. Dun & Bradstreet, Inc., 552 F. Supp. 89, 95 (N.D. Ill. 1982).
Feist, 499 U.S. at 353–54.
115
Id.
116
National Basketball Association v. Motorola, 105 F.3d 841, 845 (2d Cir. 1997). For a more detailed
discussion of misappropriation law, see accompanying article by Stephanie Kandzia and Tim Pomarole,
Analysis of the Notion of Time-Sensitivity for Database Legislation.
117
“Protection for the fruits of such research ... may in certain circumstances be available under a theory of
unfair competition. But to accord copyright protection on this basis alone distorts basic copyright principles
in that it creates a monopoly in public domain materials without the necessary justification of protecting
and encouraging the creation of ‘writings’ by ‘authors.’” Feist, 499 U.S. at 354 (quoting NIMMER ON
COPYRIGHT § 3.04).
114
17
copyrights. Rather, the decision not to protect all database contents through copyright
reflects a wise decision as to copyright’s role in the provision of information products.
This role, in addition to protecting original works of authors (which include databases
showing even minimal originality), is to ensure future authors the ability to use facts and
ideas. Decisions regarding exclusive rights in data must consider, along with the oft-cited
need to incentivize database production, both the public’s access to information and the
ability of follow-on producers to utilize existing factual data in the creation of new
databases.
The Feist decision did not sweep the rug out from under database producers.
Rather, it reiterated the then-dominant position that copyright is not the place to protect
compilations whose selection and arrangement of information is not original. Rather than
suddenly taking away a form of protection reliably depended upon by database producers,
the Feist decision settled a circuit split in favor of the majority position. While clearly
stating American copyright law as applied to information compilations, the Feist decision
appropriately illustrated copyright’s purpose. This purpose is not only to provide certain
monopoly rights, but also to protect facts and ideas from exclusive rights, which might
threaten to choke the production and dissemination of information goods. While Feist
concluded that the need to balance these dual roles prevents copyright from extending to
data, party- and use-specific misappropriation analysis (such as “hot news” competition
claims left open by NBA v. Motorola) may eventually provide database protection that
both better protects database producers and maintains the copyright balance.
18