Yesterday, the Eleventh Circuit returned to the issue of compilation copyrights, in BUC International Corporation v. International Yacht Council Limited, 2007 WL 1774643 (11th Cir. June 21, 2007. (HT to Mike Madison). This area has not been the circuit's strongest suit. Fear struck me as I read the opening sentence:
In this copyright infringement case, the plaintiff claimed copyright protection of a factual compilation - specifically, the selection, order, and arrangement of information about yachts listed for sale -- vis a vis the defendants' competing factual competing factual compilation, which came on to the scene after the plaintiff had obtained certificates of registration.
An alternative might be: "This is an action for infringement of copyright in the selection, order, and arrangement of yacht listings."
The opinion is 42 pages long, so it was with dread that I sat down with a strong cup of herbal tea to make my way through it. But happily first impressions can be wrong: the opinion settles down and is a straightforward explication of basic principles, a task that is more difficult than one might imagine given the less than straightforward nature of the arguments made.
Plaintiff's work is the yacht equivalent of the real estate Multiple Listing Service: brokers send in listings, which plaintiff then compiles into a centralized directory. The directory is divided into categories, along with section headings like "accommodations and layout, vessel walkthrough, electronics and navigation." Defendant developed a competing product, using many of the same listings as plaintiff and allegedly substantially similar categories and section headings. While pre-trial plaintiff appears to have had a grandiose view of the scope of any copyright, by trial it had narrowed its claim to infringement of its selection, coordination, and arrangement of the categories and section headings. There was a jury trial. The jury held that plaintiff possessed a valid copyright and that defendant had infringed it. Defendant made an ineffectual motion for a new trial, which was denied. The Eleventh Circuit affirmed.
I will focus on two components of the court of appeals' opinion: (1) what constitutes originality in a compilation, and (2) what is the standard for infringement of a compilation. Regarding originality, the opinion is pretty much a by-the-book analysis of originality in compilations and the merger doctrine. This is not a criticism, but rather praise: by-the-book is quite fine when the book is fine. On infringement, the court was faced with defendant's argument that the trial court erred by not adopting its proposed "virtual identicality" standard for infringement (as opposed to substantial similarity). I confess to laughing (snorting, really), when I read this. It reminded me of Jeff Koons' description of Michael Jackson's "radicality." Outisde of the BUC case, a Westlaw search reveals only three other uses of this bizarre term: MiTek Holdings, Inc. v. Arce Engineering Co., Inc., 89 F.3d 1548, 1558 (11th Cir. 1996) - which originated the term; Curico Webb LLC v. National Benefit Programs Agency, Inc., 2006 WL 47506 (S.D. Ohio Jan. 9, 2006)l and, Nautical Solutions Marketing, Inc. v. Boats.com, 2004 WL 782121 (M.D. Fla. April 4, 2004). The term is derived from the more literate "virtual identity" standard used by the Ninth Circuit in Apple Computer, Inc. v. Microsoft Corporation, Inc., 35 F.3d 1435, 1446 (9th Cir, 1996).
Whatever the source or phrasing, the concept of requiring a higher level of similarity for any work is fatally flawed. In all cases, as the Eleventh Circuit recognized en banc in its BellSouth case (999 F.2d 1436, 1445 n.22), the only thing that matters for infringement is substantial similarity in expression. Given the limitation to expression, there is no possible justification for requiring a greater taking of expression from one type of work (say compilations) than for another (say fiction). The worst offender in this regard is Nimmer, who writes (Nimmer on Copyright, sec. 13.03[a]):
The measure of how substantial a “substantial similarity” must be made vary according to the circumstances. For many, copyrights represent significant creative effort, and are therefore reasonably robust, whereas others reflect only scant creativity; the Supreme Court labels the latter “thin.” It would seem to follow analytically that the 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.
The approach of the last two sentences in this passage misapprehends the basic issue of infringement. When Feist spoke of “thin” copyrights, it was referring to determining the amount of protectible material, not to the level of similarity required to prove infringement of that material for originality purposes. The level of similarity required to prove infringement is the same for every class of work—namely, substantial similarity of expression. If a defendant has copied nonprotectible material only, or a de minimis amount of expression, there is no infringement. On the other hand, if a defendant has copied a substantial amount of expression from a work having a “thin” copyright, infringement occurs. The error in the supersubstantiality test is that it confuses copyrightability with infringement and in the process misleads courts into requiring a higher level of similarity in expression. Blessedly, the Eleventh Circuit in BUC rejected the higher standard for compilations, limiting MiTek to its own facts, claims of infringement of the nonliteral elements of a computer program. The higher test makes no sense there either, but the BUC court was stuck with it, and deserves the highest praise for not letting it infect other areas. Bravo to the court of appeals.