An excerpt below from a case I handled where the plaintiff's listings had been copied wholesale (including fake listings inserted to trap copiers), but the defendant made some changes in categories and additions to the listings.
The judge was impressed by the copier switching things around and adding a few snippets, so the rule is you can steal entire directories, but just switch them around a little, tiny bit.
Might a jury have come to a different conclusion?
Le Book Pub., Inc. v. Black Book Photography, Inc.
418 F.Supp.2d 305
S.D.N.Y.,2005.
August 16, 2005 (Approx. 12 pages)
II. Copyright Infringement
[1] [2] Plaintiff's basic claim is that defendants copied listings from Le Book NY and included them in The Black Book Directory. Plaintiff asserts that it hired a team of five individuals who researched, selected and collected a vast amount of information that were eventually included in Le Book NY. (Am.Compl.¶ 22.) To detect any copying, Le Book NY contains several mock company names and addresses (referred to as "seeds"). These seed entries were then found listed in The Black Book Directory. While plaintiff has invested time, energy and money into collecting information appropriate for its directory, it is a basic principle of copyright law that facts cannot be copyrighted, no matter how much effort has been put into discovering and compiling these facts. See 17 U.S.C. § 102(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."). The rationale behind this principle stems from the Constitution itself, which explains that the primary objective of copyright is "[t]o promote the Progress of Science and useful Arts," rather than reward the labor of authors. Feist Publ'ns, Inc. v. Rural Tel. Service Co., 499 U.S. 340, 349, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991), quoting U.S. Const. Art. I, § 8, cl. 8. The key distinction is "one between creation and discovery: The first person to find and report a fact has not created the fact; he or she has merely discovered its existence." Feist Publ'ns, 499 U.S. at 347, 111 S.Ct. 1282. To this day, the "originality requirement ··· remains the touchstone of copyright protection today." Id. Therefore, plaintiff's listings of various stylists, photographers, and agencies cannot be copyrighted as they are purely facts and not original creations.
[3] Plaintiff also argues that its directory deserves copyright protection as a "factual compilation." Indeed, "[f]actual compilations ··· may possess the requisite originality" because 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 the readers." Id. at 348, 111 S.Ct. 1282. Because the Supreme Court has specifically rejected*309 the "sweat of the brow" or "industrious collection" theories, where copyright protection is a reward for the hard work that went into compiling the facts, id. at 353, 111 S.Ct. 1282, any copyright in a factual compilation is "thin," and "only the compiler's selection and arrangement may be protected; the raw facts may be copied at will." Id. at 350, 111 S.Ct. 1282.
[4] [5] The Copyright Act of 1976 defines a copyrightable 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." 17 U.S.C. § 101. To qualify as a factual compilation, Le Book NY must include: "(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." Feist Publ'ns, 499 U.S. at 347, 111 S.Ct. 1282. Plaintiff's directory clearly meets the first two requirements. First, Le Book NY is a collection of information about various individuals and companies serving the fashion and creative industry. Second, Plaintiff properly alleges that it selected and arranged the materials for inclusion into the directory, employing a detailed specific process by surveying existing clients, conducting internet research to check "hit rates" on websites, examining portfolios, and reviewing individuals' client lists. (Am.Compl.¶¶ 120-126.) Plaintiff has alleged that it had to select from a database of 35,000 of individuals and companies that would be of interest to its audience. (Am.Compl.¶¶ 128-131.)
Plaintiff also satisfies the originality requirement of the third prong. The requirement of originality "is not particularly stringent," but it does exist. Feist Publ'ns, 499 U.S. at 358-59, 111 S.Ct. 1282. The arrangement must "order[ ] or group[ ] ··· data into lists or categories that go beyond the mere mechanical grouping of data as such, for example, the alphabetical, chronological, or sequential listings of data." Key Publ'ns. Inc. v. Chinatown Today Publ'g Enter., Inc., 945 F.2d 509, 513 (2d Cir.1991). While Le Book NY's listings within categories are arranged alphabetically, plaintiff does more than just alphabetically list all its entries in one lump. Instead, it has divided the listings into nine main categories: hair and make-up stylists; model agencies; photo production, location services, photo labs, and retouchers; rentals; events, luxury hotels; magazines; music & video; fashion; and advertising agencies. ( See Am. Compl. ¶¶ 148-63.) See also Key Publ'ns. Inc., 945 F.2d at 514 (finding that the arrangement in a directory of Chinese-American businesses was sufficiently original, as it included categories such as "Bean Curd & Bean Sprout Shops" that were of particular interest to the Chinese-American community). This arrangement required sufficient thought and creativity necessary to meet the originality requirement. Plaintiff has met all three requirements of a factual compilation, and therefore, Le Book NY is entitled to copyright protection.
[6] [7] Nevertheless, plaintiff's claim fails because defendants have not infringed on plaintiff's copyright. To establish infringement, two elements must be shown: (1) possession of a valid copyright, and (2) "copying of those elements of the work that are copyrightable." Id. at 514. As the Second Circuit points out in Key Publications, whether a compilation has been infringed "requires a somewhat more refined analysis than is applied in a case involving a wholly original work." Id. While the test for original works is one of *310 "substantial similarity," when examining a factual compilation, a court must examine the "substantial similarly between those elements, and only those elements, that provide copyrightability." Id. In Key Publications, the court found that a telephone directory targeted to New York City's Chinese-American community did not infringe on a similar directory, despite blatant copying of certain listings, because the arrangement of the two directories were not "remotely similar," and only a small percentage of the defendants' categories overlapped with the plaintiff's categories. Id. at 515.
Here, plaintiff and defendants' directories are also arranged very differently. Le Book NY includes nine main categories, while The Black Book Directory contains ten. Plaintiff points out that The Black Book Directory contains some of the same categories as Le Book NY. (Am.Compl.¶ 165.) For example, Le Book NY has a "Hair, Make-up Stylists" category, and The Black Book Directory has a "Stylists" grouping. However, some overlap is bound to happen when producing directories for a similar audience, and this does not automatically lead to a finding of infringement. See id. at 516 ("There are a finite number of businesses that are of special interest to a sizeable segment of [a particular community], and some substantial overlap among classified business directories compiled for that community is inevitable.").
A perusal of the listings under each book demonstrate that the compilations are arranged quite distinctly. Le Book NY includes some categories, such as "Fashion" and "Magazine" that The Black Book Directory does not have. While Le Book NY contains a broad category titled "Rentals," the parallel subcategories listed under "Rentals" are spread among several categories in The Black Book Directory, such as "Supplies & Equipment," "Props & Wardrobe," and "Studios/Sound Stages/Locations." Similarly, listings under Le Book NY's "Photo Production, Location Services, Photo Labs, Retouchers," can be found in three categories in The Black Book Directory, specifically "Pre Press/ Photo Labs/ Agencies," "Production Co., & Location Services," and "Post Production."
In addition, some subcategories are placed in different groupings. For example, Le Book NY places "Animal Rentals" under the "Rentals" category, while The Black Book Directory has a subcategory titled "Animal Casting" under "Casting/Model/Talent Agencies." Last, each directory has sets of listings that do not exist in the other. For example, Le Book NY contains subcategories "Wigs," "Plant Rentals," "Luxury Accessories," "Perfume & Cosmetic Companies," "Luxury and Boutique Hotels," and "Fashion TV," that Black Book NY does not have. Similarly, The Black Book Directory contains subcategories that do not exist in Le Book NY, such as "Ocean & Marine Equipment," "Art Supplies," "FX Props/ Special FX," "Animatronics & Mechanical FX," "Ice," "DVD Authoring & Replications," "Animation, Computer Graphics, & Visual FX," "Film & Tape Storage," and "CD Duplication," among others.
The arrangement of the listings demonstrate that the "organizing principles of the two directories are thus not substantially similar." Key Publ'ns, 945 F.2d at 516. A consumer looking at the two directories would perceive the difference when perusing the table of contents of the two directories. Therefore, defendants' motion to dismiss is granted on plaintiff's copyright infringement claim.
Raymond J. Dowd
Partner
Dunnington, Bartholow & Miller, LLP
477 Madison Avenue, 12th Floor
New York, NY 10022
Tel: (212) 682-8811
Fax: (212) 661-7769
rdowd[_at_]dunnington.com
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