Judge Alito and Copyright

Copyright lawyers should cheer the appointment of Judge Samuel Alito to the Supreme Court. In 2004, Judge Alito was the author of the en banc opinion in Southco, Inc. v. Kanebridge Corp., 390 F.3d 276. He was also the author of a panel opinion in the same case three years earlier, 258 F.3d 148. Both opinions are thoughtful looks at basic questions of originality. In addition to his extremely impressive legal skills, Judge Alito is a wonderful human being, the opposite of the “Scalito” nick name bandied about. He is a reserved, scholarly man adored by his clerks who had a special blend of coffee beans made up for him at a coffee store near his chambers in Newark, New Jersey called “Judge Alito’s Bold Justice Blend.” I have a pound in my refrigerator, and it is quite delicious: rich but subtle. We can expect Justice Alito to provide a skilled, fair look at copyright issues and a better cup of coffee.

Here’s a brief review of the Southco case. The claim was in the parts numbers (for “captive” fasteners), not in the compilation thereof. Examples of the numbers are:
47 – 10 – 202 – 10
47 – 11 – 502 – 10
47 – 10 – 502 – 50
47 – 12 – 502 - 50
47 – 62 – 501 - 20

In this sequence, 47 tells one that the part is captive fasterner. The other numbers refer to the thread size, the composition of the screw (e.g. aluminum), and the finish of the knob. Defendant was alleged to have copied 51 of plaintiff’s parts numbers. Applying Feist, the panel, per Judge Alito, found that “the creative spark is utterly lacking in Southco’s parts numbers and [thus] these numbers are examples of works that fall short of the minimal level of creativity required for copyright protection.” The basis for this conclusion was set out in the court’s factual description of plaintiffs nine-digit code.

The Southco’s panel’s denial of copyright was based on the parts numbers as an inevitable sequence dictated by the logic of the parts system. Subsequently, the Third Circuit granted a petition for rehearing en banc. Judge Alito began his opinion for the en banc majority by again reviewing the Feist originality standard and concluding that “the Southco product numbers are not ‘original’ because each number is rigidly dictated by the rules of the Southco system.” He acknowledged that Southco could have assigned different numbers than it did, and that it could have chosen to include different characteristics in the system. But, having made its choice, “the system was in place, and all of the products in the class could be numbered without the slightest creativity.” That seems factually and legally true. The “descriptions” are strictly sequential and matched with increasing incremental “values.” The concept of numbering registers and descriptions in ascending sequence is analogous to arranging telephone entries in alphabetical order.

Judge Alito, citing the author of this blog, then offered an alternative ground for the lack of protection, namely, that the parts numbers were analogues to short phrases or titles. The Copyright Office also took this position. This part of the opinion drew a concurring opinion by Judges Becker, McKee, and Smith. Judge Becker agreed with defendant that parts numbers were not “phrases,” a term he apparently reserved for words. As Judge Becker saw the matter, “the problem … is whether the Southco part numbers are words, short phrases, names or titles, or whether they are instead a compilation of data, a classification, or something else.” Judge Becker answered his own question regarding Southco’s numbers by describing them as “seem[ing] to fall into the gray area between a short phrase and a more extensive work,” in other words, “something else.”

Judge Becker makes a point, but it is at best one of how to classify unprotectible material. Ironically, Judge Becker’s preferred method of classification was far more strained than calling parts numbers short phrases: His approach was to regard them as scenes a faire.
Judge Becker came out the same place that the majority did – initial constraints precluded originality – but merely gave a different label to the rationale for the denial of protection. Judge Becker’s reliance on industry standards appear to be off-point, though, since he focuses on what the numbers designate, rather than the originality in the designation of the numbers themselves. Judge Alito's approach is more straightforward legally and more consistent with the facts.

There was a dissent, written by Judges Roth and joined by then Judge Chertoff who has gone on to such distinguished service as the Homeland Security chief. Judge Roth’s opinion focuses on the arbitrary nature of Southco’s selection. Her view is worth quoting for what it demonstrates about Judge Alito, who rejected it:

"[T]here is nothing pre-determined about the length of a part number. For instance, Southco could choose to use more than nine digits to accommodate products with too many values to be easily expressed in only nine. These seem like relatively mundane choices, but, as the Supreme Court indicated in Feist, ‘the requisite level of creativity is extremely low; even a slight amount will suffice.’”

While the dissent’s point about the number of digits being a matter of some discretion has some merit, the amount of such discretion was quite limited (you couldn’t choose less than seven, and Southco admitted that if it had used a ten-digit system, it could have also used a standard numbering format). But most importantly, after the original set of numbers was determined (whether 5, 7, 9, or 10 digits), all subsequent entries followed automatically. In essence, Southco was claiming protection for the original selection of the number of digits used. Whether regarded as de minimis or unoriginal, those nine numbers were sparkless. Judge Alito’s majority opinion is correct and reflects a view of Feist most copyright lawyers should prefer.