TRANSWESTERN PUBLISHING COMPANY LP, Plаintiff-Appellant, v. MULTIMEDIA MARKETING ASSOCIATES, INC; Multi-vest, a partnership; Robert Dupriest; Larry Wibben; Dennis Hoff; Joel Alday; Robert Holmes; Mallie Norton; Tom Clark; Tom Raby; Robert Boone; Shane Houston; Vernoise Andrews; Don Lightner; J. Courtney Egger; Jeff Allen; Multi Directories L.L.C., Defendants-Appellees.
No. 96-6371.
United States Court of Appeals, Tenth Circuit.
Jan. 8, 1998.
133 F.3d 773
James Minor Bailey, III, Ponca City, Oklahoma (Jerry J. Dunlap, II, Oklahoma City, Oklahoma, with him on the briefs) for Plaintiff-Appellant.
William S. Dorman of Dorman & Gilbert, Tulsa, Oklahoma (Mark Pordos of Eagleton & Nicholson, Oklahoma City, Oklahoma, with him on the brief) for Defendants-Appellees.
Before BRISCOE, LOGAN, and LUCERO, Circuit Judges.
LOGAN, Circuit Judge.
In 1995, plaintiff published a combinеd white and yellow pages “Ponca City Area” telephone directory which included listings for Ponca City and seventeen nearby towns and white and yellow pages advertisements. Account executives solicited advertisements and prepared ad layout sheets with customer input. Although they did not create original artwork, the account executives arranged information so that it was “pleasing to the eye.” I App. 223-24. Plaintiff copyrighted its directory but not the individual ads.
Defendants thereafter published the “1996 Ponca City Community Directory.” This directory contained listings for only eight towns, as well as white and yellow pages advertisements. A number of these advertisements were very comparаble to those in the TransWestern directory. The infringement claim alleges defendants copied advertisements from plaintiff‘s directory.
Plaintiff obtained a preliminary injunction preventing the distribution or display of defendants’ directory. At the permanent injunction hearing plaintiff introduced a single witness and several exhibits in its case in chief. The district court granted defendants’ motion for judgment as a matter of law and made specific fact findings. The court noted likenesses such as their use of front and back cover advertising, comparable introductory information, and advertisements from some of the same businesses. The court then held that “business card” ads and those incorporating the advertisers’ own logos or slogans were not original to plaintiff and thus not copyrightable. The court found that other ads were not substantially similar because of different type styles, sizes and shapes of the ads, and the arrangement of information.
II
We turn now to whether plaintiff established a case of copyright infringement. The district court granted defendants’ motion for judgment as a matter of law after a permanent injunction hearing at which plaintiff presented its evidence in support of its claim of copyright infringement. Thus, the court made its ruling under
To establish copyright infringement plaintiff must prove (1) ownership of a valid copyright and (2) “copying of constituent elements of the work that are original.” Feist, 499 U.S. at 361, 111 S.Ct. at 1296 (white page listing information in public utility directory not copyrightable). Defendants do not seriously contest that plaintiff has a valid copyright on its directory.1
The second element requires proof that defendants copied plaintiff‘s wоrk and that the elements copied were protected. Country Kids ‘N City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1284 (10th Cir.1996). Although the record does not establish that defendants copied plaintiff‘s publication, copying may be shown by “establishing that Defendants had access to the copyrighted work and that there are probative similarities between the copyrighted material and the allegedly copied material.” Id. Defendants did not dispute their access. Although they deny appropriating component elements of plaintiff‘s publication, strong similarities exist between some of plaintiff‘s and defendants’ ads. We thus
Plaintiff‘s directory is a compilation. The certificate of registration for 1995 treats it as a “derivative work or compilation” and states it is a “Revised compilation in yellow pages.” II R. 236. To be copyrightable, a compilation must be “a [1] work formed by the collection and assembling of preexisting materials or of data that [2] are selected, coordinated, or arranged in such a way that [3] the resulting work as a whole constitutes an original work of authorship.”
The protection for a copyrighted 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. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownershiр or subsistence of, any copyright protection in the preexisting material.
Although a compilation gains copyright protection with only minimal creativity in the selection and arrangement of facts, Feist‘s statement that the copyright is “thin” has impliсations when the holder sues an alleged infringer. “It would seem to follow analytically that more similarity is required when less protectible matter is at issue. Thus, if substantial similarity is the normal measure required to demonstrate infringement, ‘supersubstantial’ similarity must pertain when dealing with ‘thin’ works.” 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright, § 13.03[A] at 13-28 (1997); see also Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1439 (9th Cir.1994) (“When the range of protectible and unauthorized expression is narrow, the appropriate standard for illicit copying is virtual identity.“), cert. denied, 513 U.S. 1184, 115 S.Ct. 1176, 130 L.Ed.2d 1129 (1995); Jane C. Ginsburg, No “Sweat“? Copyright and Other Protection of Works of Information After Feist v. Rural Telephone, 92 Colum. L.Rev. 338, 349 (1992) (“Even if the compilation is
In the instant case, if we focus on the respective directories as a whole there are many differences. The district court‘s opinion noted some:
The directories are very different in appearance. The Transwestern directory is approximately 5” by 7” in size and has a yellow cover. The Community Directory is larger in size and has a green cover. Both directories have advertisements on their covers; although the advertisements are different on each directory. Although similar introductory information is contained in each directory, the format, layout and content varies between the two directories. The Transwestern Directory includes [18] towns. . . . The Community Directory provides listings for [8 towns]. I R. 84. Plaintiff‘s directory is indexed; defendants’ is not. Plaintiff‘s white pages are alphabetized with all the listings together; defendants organized their white page listings alphabetically by town. The directories use different typefaces, and defendants’ directory contains significantly fewer pаges. Plaintiff‘s directory has two columns, defendants’ three in its advertising pages. The type styles are different; the headings to the business listings are distinctive. Even accepting as true plaintiff‘s contention that “numerous” ads in its directory have been copied to defendants’ directory, no one would mistake defendants’ directory for that of the plaintiff. Thus, at a thin level of comparison of the compilation “as a whole” the district court‘s finding of no infringement must be affirmed.
III
This circuit in other contexts has applied an abstraction-filtration-comparison test in copyright infringement cases. See Country Kids, 77 F.3d at 1284-85 (wooden dolls); Gates Rubber Co. v. Bando Chemical Industries, Ltd., 9 F.3d 823, 834 (10th Cir.1993) (computer program); Autoskill v. National Educational Support Systems, Inc., 994 F.2d 1476, 1491-92 (10th Cir.1993) (comрuter program). That test requires filtering out nonprotectible ideas and components and then comparing protectible elements in the plaintiff‘s work with the defendant‘s allegedly infringing product. We have recognized that this test is not appropriate for every case, depending on the claims involved, the procedural posture, and the nature of the work at issue. See Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366, 1372-73 (10th Cir.1997); Gates, 9 F.3d at 834 n. 12.
The Second Circuit‘s decision in Key Publications is the post-Feist decision most nearly like the case before us. It involved competing yellow page directories for Chinese-American businesses in New York City. Holding that “thin” protection available for compilations was not meant to be “anorexic,” the court stated thе test as one in which the plaintiff must show “substantial similarity between those elements, and only those elements, that provide copyrightability to the alleged infringed compilation.” Key Publications, 945 F.2d at 514. This seems a distillation into fewer words of the abstraction-filtration-comparison test.
The district court in Key Publications had found that 1,500 listings, 75%, of the 2,000 listings in the defendants’ directory, were deliberately copied from the plaintiff‘s directory. Making a facial examination the appellate court reversed, noting substantial dissimilarities in the selection and arrangement of the directories, especially in that the defendants’ directory had many fewer classified headings, had only 17% of the total number of listings in the plaintiff‘s directory, and 25% of its listings were not in the plаintiff‘s directory. Key Publications appears to have involved only listings, classifications, and arrangements; there was no discussion of advertisements.
Plaintiff‘s infringement claim in the case before us is based on its contributions to the yellow page advertisements in its directo-
Plaintiff asks the court to note the similarities of the ads it attached to its complaint and those contained in its Exhibit 7 introduced at the permanent injunction hearing. But it must show its original contributions to those ads. At the permanent injunction hearing plaintiff presented one witness and seven exhibits. The exhibits were the copyright registration certificate, the two directories, three exhibits of layout sheets for advertisements plaintiff said its employee prepared—for Skinsаtions Tattoo Studio, TWT Heat & Air, and Smith‘s Home Furnishings—and Exhibit 7. Exhibit 7 was a notebook of some 600 pages, consisting of an index and pages from the respective directories showing plaintiff‘s ads on the left and defendants’ allegedly infringing ads on the right. Only 252 pages of Exhibit 7 are excerpted in the record on appeal; the TWT Heat & Air exhibit is not in the appellate record.
Plaintiff‘s witness was Timothy Dancey, one of its account executives, who also was its sole witness at the preliminary injunction hearing. On direct examination he simply identified plaintiff‘s exhibits and testified that with new customers they: “usually do ad copy together, figure out what size ad they want and we work out a program for them at that time,” I R. 193; take into possession logos given them by customers аnd sometimes make logos; write down information to be placed in the ad given them by customers, sometimes themselves suggesting information to be included; and arrange the verbiage, logos and artwork provided by the customer into the advertisement using a layout sheet. Id. at 194-95. The witness then said he designed and created the ads on the layout sheets for Skinsations Tattoo Parlor, TWT Heat & Air, and Smith Home Furnishings.
On cross-examination the witness admitted that the artwork on the Skinsations ad was supplied by the customer and he only provided the written information; on the TWT ad he provided the Rheem logo which he admitted he probably got from someone else‘s ad, and he and the business owner together contributed the words on the ad, id. at 208-09; on the Smith ad the sentence “We‘re Committed to Earning Your Business” was a logo he did not provide, the picture came from the customer, and other items and logos came from clip art.
Later the following exchange took place:
Q. Are there any ads that you did the artwork on yourself, any ads in the book?
A. As far as drawing a picture?
Q. Well, contributing anything in the way of artwork.
A. Sure, on logos, on certain logos in the book.
Q. You created the logos yourself?
A. Uh-huh. When I say “logos,” I mean like a name.
Q. Could you direct our attention to one such ad, please.
A. I can‘t think of one right now. The Paper Hanger. I wrote that in.
. . . .
Q. I don‘t understand. What‘s the logo?
A. The block print.
Q. Huh?
A. The block print.
Q. You say “the block print“?
A. There‘s not a picture of anything.
Q. The block print of “The Paper Hanger“?
A. Uh-huh.
. . . .
A. Just the name, “The Paper Hanger.” I did that on many ads.
Q. The block print right there (INDICATING)?
A. Uh-huh.
Q. You call that artwork; is that right? A. I wrote it.
Q. Okay. Is that the same in the [defendant‘s ad]?
A. The text is the same.
Q. What about the logo, is that the same?
A. It‘s set up a little different. . . .
Q. Are there any other ads besides this Paper Hanger where you contributed the artwork yourself?
A. I remember Kay Refrigeration, I believe.
Q. Is that here?
A. It‘s in here someplace, I‘m sure. It‘s really just names on some of those.
Q. Just names?
A. Uh-huh, like that one.
Q. That‘s primarily information, is it not?
A. That is information.
Q. Apart from the names we just referred to, the logo “The Paper Hanger,” did you contribute any other artwork to any of the ads?
A. Artwork meaning pictures, no. Artwork meaning making them pleasing to the eye, yes.
Q. That would be in the way it was typed, right, the size and style of the type?
A. Either that, yes, or just saying something to catch the eye.
Q. But pictures and logos, you wouldn‘t have anything to do with that, would you?
A. No, I did not draw pictures.
I R. 221-24.
On redirect the witness stated that he took the information and artwork on the three ads to which he had testified and “arranged and designed it into the ad.” Id. at 228. This summarized and quoted testimony is all of plaintiff‘s evidence of its “original” contributions to the ads in its directory.
Even if we credit the testimony as showing original contributions to the Skinsations, TWT, and Smith ads, there is nothing in the appellate record to show defendants copied any of those ads. There is no Skinsations ad in defendants’ directory, see II R. 317-18; a TWT ad appears in defendants’ directory, id. at 296, but the record does not show what plaintiff‘s TWT ad looked like; and the Smith Home Furnishings ad in defendants’ yellow pages, id. at 93, bears no resemblance to the ad laid out in plaintiff‘s Exhibit 6, id. at 243-49. In the white pages of defendants’ directory there is a version of a business card ad for Smith Home Furnishings, with the same information as plaintiff‘s business card ad for that company—name, address, phone number, picture, and slogan—but with a significantly different configuration, placement of the information, and type style. See id. at 497-98.
To find original and hence protectible contributions by plaintiff to its yellow page ads the court would have to credit the vague and general testimоny of the witness that he “arranged” information provided by his customers and “designed” the ads—without himself providing any of the artwork—although he did not identify how his contribution was original in any particular ad allegedly copied by defendants. Thus, even if we were to accept plaintiff‘s request to compare the allegedly infringing ads for their similar order and placement of information and artwork we cannot qualitatively analyze plaintiff‘s contribution.
At the preliminary injunction hearing, witness Dancey had testified that all the ads in plaintiff‘s directory were either designed by him or his predecessor “or they were given to us by the customers in our book.” II R. 164. He then said fifty percent were “altered old ads that were in there where he wanted to make a change,” id. at 165. This simply underscores the deficiencies in plaintiff‘s evidence. Thus, even if we were to look only to the ads defendants allegedly copied, and ignore all differences between the directories, we would have to affirm the district court‘s denial of the injunction.
IV
By focusing its contentions for infringement on its contributions to individual advertisements in its directory, plaintiff appears to argue that the ads should not be treated as fact compilations but as unique creations. If each ad is a separate creation, akin to short stories with individual authors,
A separate contribution to a collective work may bear its own notice of copyright, as provided by
sections 401 through403 . However, a single notice applicable to the collective work as a whole is sufficient to invoke the provisions of section 401(d) оr 402(d), as applicable with respect to the separate contributions it contains (not including advertisements inserted on behalf of persons other than the owner of copyright in the collective work), regardless of the ownership of copyright in the contributions and whether or not they have been previously published.
Id. § 404(a) (emphasis added).
In Canfield v. Ponchatoula Times, 759 F.2d 493 (5th Cir.1985), the court examined the effect of the parenthetical exclusion in
[T]here is no doubt Congress intended to carve out a special exception for advertisements which would require that a separate copyright notice appear in the advertisement itself. The committee notеs make clear that this exception was regarded as necessary because of the nature of advertisements which were regarded as a unique form of copyrightable material. Their uniqueness stems from the fact that advertisements are creations which are commonly published in more than one periodical and seldom display separate copyright notice. The committee notes recognize this as particularly true of advertisements published in major advertising media such as newspapers and magazines.
. . . .
The delineation is not based on who owns the copyright. It does not matter whether the publisher, advertiser, or another owns the copyright. Separate notice is required for any advertisement inserted on behalf of someone other than the collective work copyright owner.
In Canfield the advertiser was the moving force in asking the second newspaper to publish the ad. In the case before us plaintiff asserts that many advertisers had not given defendants permission to reproduce their ads. That is contrary to the testimony of defendants’ manager at the preliminary hearing, I R. 173, and it is difficult to see why advertisers would object when defendants published ads at no charge to the advertisers.3 We note that no advertiser is a party to this suit, and plaintiff‘s witness at the permanent injunction hearing admitted that its contracts with advertisеrs contained a statement, “Advertiser assumes sole responsibility for the protection of its copyright in any writing, illustration, design, map, photograph, or combination thereof included in said item of advertising.” Id. at 226.4
In this case, under
V
Plaintiff also has asserted that the district court erred in finding that defendants did not copy certain ads created by plaintiff, and in concluding that plaintiff alleged infringement only as to the yellow pages portion of its directory. Our holding effectively disposes of those issues. It does not matter whether defendants copied the ads in plaintiff‘s directory in the absence of more evidence than was presented here of contributions of originality to ads that supposedly were copied.
As to the white pages issue, we agree with the district court that plaintiff effectively abandoned that claim by choosing not to present evidence at the permanent injunction hearing to support those allegations. The record supports the district court‘s legal conclusion that plaintiff based its proof at trial on the yellow pages ads only.
AFFIRMED.
BRISCOE, Circuit Judge, concurring:
I concur in the result because I agree with the majority that plaintiff failed to present sufficient evidence of its original contributions to the yellow-page advertisements at issue to allow us to properly analyze its copyright infringement claims. I write separately, however, because I disagree with several points made by the majority.
In section II of its opinion, the majority compares the directories as a whole. This comparison is irrelevant. Although plaintiff registered its directory as a single work, it has never claimed either that the entire work is original and eligible for protection or that the entire work was copied by defendant (in fact, plaintiff has not even submitted complete copies of either directory). See, e.g., Aplt‘s App. I at 92 (“Plaintiff does not contend that Defendants copied its directory in its entirety.“). Rather, plaintiff has mаintained certain original elements of its copyrighted work, i.e., individual advertisements contained in the work, were copied by defendant without authorization from plaintiff or the advertisers. Thus, the sole focus in this case should be on the individual yellow-page advertisements.
In section III of its opinion, the majority concludes the decision in Key Publications, Inc. v. Chinatown Today Publ‘g Enters., Inc., 945 F.2d 509 (2d Cir.1991), “is the post-Feist decision most nearly like the case before us.” Although the majority‘s conclusion may be correct, Key Publications is substantially different from the case at hand and, ultimately, of little assistance. The issue in
In section IV of its opinion, the majority concludes
The key case relied upon in section IV of the majority‘s opinion is Canfield v. Ponchatoula Times, 759 F.2d 493 (5th Cir.1985). In Canfield, a newspaper publisher filed a copyright infringement action against a rival newspaper publisher for reprinting an advertisement that plaintiff‘s employees designed and printed in one of plaintiff‘s newspapers. The Second Circuit ultimately concluded plaintiff could not protect its asserted copyright in the advertisement because it had failed to print a separate notice of copyright along with the advertisement. Although the opinion is useful for its holding that advertisements are copyrightable, 759 F.2d at 496, it is otherwise inapplicable because it was issued prior to adoption of the Berne Convention. Under today‘s standards (i.e., those established by the Berne Convention amendments to the Copyright Act), a separate notice would not be required in order for the plaintiff to protect its advertisements.
The majority apparently reads
Finally, section IV of the majority opinion makes reference to the following statement in the contracts between plaintiff and its advertisers: “Advertiser assumes sole responsibility for the protection of its copyright in any writing, illustration, design, map, photograph, or combination thereof included in said item of advertising.” (Emphasis added.) Assuming, arguendo, that plaintiff made original contributions to the advertisements at issue, plaintiff would have been, at an absolute minimum, a joint author of those advertisements (along with those advertisers that also made original contributions to thе advertisements), and would have had the right to assert its own interest in each advertisement, independent of what the advertiser chose to do.