Feist Publications, Inc., v. Rural Telephone Service Co.

Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340 (1991), was a decision by the Supreme Court of the United States establishing that information alone without a minimum of original creativity cannot be protected by copyright.^[1] In the case appealed, Feist had copied information from Rural's telephone listings to include in its own, after Rural had refused to license the information. Rural sued for copyright infringement. The Court ruled that information contained in Rural's phone directory was not copyrightable and that therefore no infringement existed.

Background

Rural Telephone Service Company, Inc. is a telephone cooperative providing services for areas in northwest Kansas, with headquarters in the small town of Lenora, in Norton County. The company was under a statutory obligation to compile a phone directory of all their customers free of charge as a condition of their monopoly franchise.

Feist Publications, Inc. specialized in compiling telephone directories from larger geographic areas than Rural from other areas of Kansas. They had licensed the directory of 11 other local directories, with Rural being the only hold-out in the region. Despite Rural's denial of a license to Feist, Feist copied some 4000 entries from Rural's directory. Because Rural had placed a small number of phony entries to detect copying, Feist was caught.

Prior to this case, the substance of copyright in United States law followed the sweat of the brow doctrine, which gave copyright to anyone who invested significant amount of time and energy into their work. At trial and appeal level the courts followed this doctrine, siding with Rural.

Ruling of the court

The ruling of the court was written by Justice O'Connor. It examined the purpose of copyright and explained the standard of copyrightability as based on originality.

The case centered on two well-established principles in United States copyright law: That facts are not copyrightable, but that compilations of facts can be.

"There is an undeniable tension between these two propositions," Justice O'Connor wrote in her decision. "Many compilations consist of nothing but raw data -- i.e. wholly factual information not accompanied by any original expression. On what basis may one claim a copyright upon such work? Common sense tells us that 100 uncopyrightable facts do not magically change their status when gathered together in one place. … The key to resolving the tension lies in understanding why facts are not copyrightable: The sine qua non of copyright is originality."

Rural claimed a collection copyright in its directory. The court clarified that the intent of copyright law was not, as claimed by Rural and some lower courts, to reward the efforts of persons collecting information — the so-called "sweat of the brow" or "industrious collection" doctrine — but rather "to promote the Progress of Science and useful Arts" (U.S. Const. Art. I, § 8, cl. 8). That is, to encourage creative expression.

The standard for creativity is extremely low. It need not be novel, rather it only needs to possess a "spark" or "minimal degree" of creativity to be protected by copyright.

In regard to collections of facts, Justice O'Connor stated that copyright can only apply to the creative aspects of collection: the creative choice of what data to include or exclude, the order and style in which the information is presented, etc., but not on the information itself. If Feist were to take the directory and rearrange it, it would destroy the copyright owned in the data. "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," Justice O'Connor wrote.

The court ruled that Rural's directory was nothing more than an alphabetic list of all subscribers to its service, which it was required to compile under law, and that no creative expression was involved. The fact that Rural spent considerable time and money collecting the data was irrelevant to copyright law, and Rural's copyright claim was dismissed.

While the other justices joined Justice O'Connor's majority opinion, Justice Blackmun only concurred in judgement, but never filed a concurring opinion to explain his reasons.^[2]

Implications

The ruling has major implications for any project that serves as a collection of knowledge. Information (that is, facts, discoveries, etc.), from any source, is fair game, but cannot contain any of the "expressive" content added by the source author. That includes not only the author's own comments, but also his choice of which facts to cover, his choice of which links to make among the bits of information, his order of presentation (unless it is something obvious like an alphabetical list), any evaluations he may have made about the quality of various pieces of information, or anything else that might be considered "original creative work" of the author rather than mere facts.

For example, a recipe is a process, and not copyrightable, but the words used to describe it are; see idea-expression divide and Publications International v Meredith Corp. (1996).^[3] Therefore, you can rewrite a recipe in your own words and publish it without infringing copyrights. But, if you rewrote every recipe from a particular cookbook, you might still be found to have infringed the author's copyright in the choice of recipes and their "coordination" and "presentation", even if you used different words; however, the West decisions below suggest that this is unlikely unless there is some significant creativity carried over from the original presentation. It should be noted that a sufficiently novel, useful, and unique (i.e. non-obvious) recipe can be granted protection under patent law.^[4]

Feist proved most important in the area of copyright of legal case law publications. Although one might assume that the text of U.S. case law is in public domain, Thomson West had claimed a copyright as to the first page citations and internal pin-point page citations of its versions of court opinions (case law) found in its printed versions of the case law ("West's citation claims.") West also had claimed a copyright in the text of its versions of the case law, which included parallel citations and typographical corrections ("West's text claims.") The text claim would have barred anyone from copying the text of a case from a West case law reporter, since the copied text would include West enhancements to which West claimed copyright.

In a pre-Feist case, West's citation copyright claim had been affirmed by the U.S. Court of Appeals for the Eighth Circuit in a preliminary injunction case in 1986 brought by West against Mead Data, owner of Lexis. West v. Mead (1986);^[5] however, in a case commenced in 1994 in the U.S. District Court for the Southern District of New York, the U.S. Court of Appeals for the Second Circuit found Feist to have undermined the reasoning in West v. Mead. West's citation claims were challenged in 1994 by legal publisher, Matthew Bender & Company and by a small CD-Rom publisher HyperLaw, Inc. HyperLaw intervened, joining Matthew Bender in the citation challenge and separately challenging West's text copyright claims. West was found by the Second Circuit in 1998 not to have a protectable copyright interest in its citations; neither to the first page citations nor to its internal pagination citations. See Matthew Bender v. West, Citation Appeal.^[6] The Second Circuit thereby rejected the 1996 determination of a Minnesota district court in Oasis Publishing Co. v. West Publishing Co., 924 F.Supp. 918 (D. Minn. 1996), that the outcome of West is not changed by Feist.

In the same case, but in separate decisions in which Matthew Bender was not involved, HyperLaw successfully challenged West's text claims. Judge John S. Martin ruled in favor of HyperLaw against West in a U.S. District Court decision in May, 1996. Matthew Bender v. West, No. 94 Civ. 0589, 1997 WL 266972 (S.D.N.Y. May 19, 1997), aff'd, 158 F. 3d 674 (2nd Cir. 1998), cert. denied sub. nom. West v. Hyperlaw, 526 U.S. 1154 (1999).^[7] West lost to HyperLaw in its appeal to the U.S. Court of Appeals for the Second Circuit and certiorari was denied by the U.S. Supreme Court.^[8]

After the 1986 West v. Mead decision, Mead Data and Lexis were acquired by Reed Elsevier, a large English-Dutch based publisher. During the Matthew Bender v. West case, Reed Elsevier and Matthew Bender entered into a strategic relationship, culminating in Reed Elsevier's acquisition of Matthew Bender in 1998, just after the Second Circuit appeals were argued. Reed Elsevier now was on the side of West and filed an amicus brief opposing HyperLaw and supporting West. Thus, although the name of the case might suggest that Matthew Bender challenged West on the text claim, by the middle of the case Matthew Bender was on the side of West on the text issue. Reed Elsevier's support of West's claims to a copyright in text was consistent with the initiatives, discussed below, to sidestep Feist by implementing database protection, through legislation and treaties discussed below. Similarly, during the case, West was acquired by the Canadian based international publisher, the Thomson Corporation.

Another case covering this area is Assessment Technologies v. Wiredata (2003),^[9] in which the Seventh Circuit Court of Appeals ruled that a copyright holder in a compilation of public domain data cannot use that copyright to prevent others from using the underlying public domain data, but may only restrict the specific format of the compilation, if that format is itself sufficiently creative. Assessment Technologies also held that it is a fair use of a copyrighted work to reverse engineer that work in order to gain access to uncopyrightable facts. Assessment Technologies also created new law, stating that it is a copyright misuse and an abuse of process if one attempts to use a contract or license agreement based on one's copyright to protect uncopyrightable facts.

In the late 1990s, Congress attempted to pass laws which would protect collections of data,^[10] but these measures failed.^[11] By contrast, the European Union has a sui generis (specific to that type of work) intellectual property protection for collections of data.

Other countries

The applicability of copyright to phone directories has come up in several other countries.

In Canada, the appeal-level case of Tele-Direct (Publications) Inc. v. American Business Information Inc. (1997) 76 C.P.R. (3d) 296 (F.C.A.) reached a similar result to that of Feist. However, the Supreme Court partially backed away from the originality doctrine in CCH Canadian Ltd. v. Law Society of Upper Canada. Under the CCH ruling, someone may assert protection in a database where the facts are themselves not copied from another source. For example, a person may assert protection in a collection of her own recipes, but she may not assert protection in a database of facts about persons and their ancestry compiled from census records.

In Australia, the Federal Court decision of Telstra v. Desktop Marketing Systems [2002] FCAFC 112 followed the UK approach in Walter v. Lane and ruled that copyright law did, in fact, follow the "sweat of the brow" doctrine. However, Desktop v. Telstra held, as did CCH Canadian, that collections of facts must not be copied from other sources to be eligible for protection. In 2010, the Telstra decision was overturned in a ruling by Justice Gordon by Telstra v. Phone Directories^[12] using the precedent of IceTV v. Nine Network.

Relation with treaties

Congress has been considering whether to implement a treaty negotiated at the World Trade Organization. Part of the Uruguay Round Agreement resulted in text which states, in Part II, Section 1, Article 10:

Compilations of data or other material, whether in machine readable or other form, which by reason of the selection or arrangement of their contents constitute intellectual creations shall be protected as such. Such protection, which shall not extend to the data or material itself, shall be without prejudice to any copyright subsisting in the data or material itself.

The text mirrors that of Article 2(5) of the Berne Convention, which applies to "collections of literary or artistic works".

This treaty provision is broadly in line with the United States Copyright Act and the Act's case law, which protects compilations of data whose "selection and arrangement" is sufficiently original. See 17 U.S.C. § 101 ("compilation" as defined by the United States Copyright Act includes compilations of data). The standard for such originality is fairly low; for example, business listings have been found to meet this standard when deciding which companies should be listed and categorizing those companies required some kind of expert judgment. See Key Publ'ns, Inc. v. Chinatown Today Pub. Enters., 945 F.2d 509 (2d Cir. 1991) (applying Feist). As such, implementation of this treaty would not overrule Feist.

See also

• List of United States Supreme Court cases, volume 499
• List of United States Supreme Court cases
• Lists of United States Supreme Court cases by volume
• List of United States Supreme Court cases by the Rehnquist Court
• Idea–expression divide
• Threshold of originality
• Database right

References

Further reading

• Ekstrand, Victoria S. (2002). "Drawing Swords After Feist: Efforts to Legislate the Database Pirate". Communication Law and Policy. 7 (3): 317–341. doi:10.1207/S15326926CLP0703_04. 
• Ginsburg, Jane C. (1992). "No 'Sweat'? Copyright and Other Protection of Works of Information after Feist v. Rural Telephone". Columbia Law Review. Columbia Law Review, Vol. 92, No. 2. 92 (2): 338–388. doi:10.2307/1123087. JSTOR 1123087. 
• Thorner, Benjamin B. (1997). "Copyright Protection For Computer Databases: The Threat of Feist and a Proposed Solution" (PDF). Virginia Journal of Law and Technology. 1 (5): 1522–1687. 

External links

Wikisource has original text related to this article: Feist Publications, Inc., v. Rural Telephone Service Co.

• Text of the decision from FindLaw.com