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.
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8 comments:
I'll redirect my HT to the person who pointed me to the opinion: C.E. Petit of Scrivener's Error.
Indeed, thanks as always Dr. P.
While I see the logic in your view, Bill, do you think it can be easily conveyed to a jury via instructions that are something less than an introduction to copyright law?
I've always suspected that the "virtual identity" test is the court's way of recognizing how difficult it is for a lay person to separate the "expression" from the unprotected elements from a predominantly factual compilation, then apply a "substantial similarity" test.
Hi Fred, I will try and track down the jury's instructions.
In the abstract, Prof. Patry, you are right. But in application where there is a robust population of copyrightable subject matter a substantial similarity in infringement is different from circumstances where the subject matter is "thin." The language itself makes this clear. If you take an inch of something 12 inches wide the taking is substantial and presumably similar. If you take one twelfth of an inch of something just one inch wide, it is easy to see that a jury would consider the taking less substantial even though proportionally identical. It is possible for something to be so thin as to never be credible as substantial at all.
I like both thin crust and deep dish pizza. But whether I have pigged out will depend on how much I eat of each and will vary according to the size of each. A two inch deep dish may be less than a 16 inch thin crust. My point is that each case has to be decided on its facts rather than abstract tests that say all thin crust pizzas have to be eaten in their entirety before you pig out, while deep dish pizzas can always lead to piggery. I think juries can understand that.
This case intrigued me from the beginning. I don’t share the same views as Williams main article, but I do agreed with his statement in a later blog “that each case has to be decided on its facts”. So I first want to go back and look at the facts.
1st the BUCNET service is a computer program for Yacht Brokers so they could place vessels that they have for sale and share their listings with the other Yacht Brokers. It is my understanding after narrowing down what BUCNET was actually trying to protect, it came down to the selection of information and the order in which the information was displayed.
After reviewing this case it’s clear that it was the brokers who collected the information, wrote about each section of a yacht and proceeded to enter their information, that they collected and wrote, onto the BUCNET multiple listing system.
Then we have the defendant, which created a similar product. They asked brokers to join their system. As many brokers joined multiple systems they started to join the defendants system. As the brokers joined they took their listing and copied it into the defendants system, in some cases they were copied from the brokers personal documents, other MLS’s and in some cases from the Plaintiffs print outs.
After reviewing the listings side by side they are formatted differently, however the main section of the listings is very similar. Now, if “Facts” are not copyrightable, and it is the broker who describes each aspect of a vessel, then the information is purely non-copyrightable material. In this case BUCNET claims only the selection, order and layout as copyrightable. But here is where it gets gray, if the broker does not enter something such as the year of the vessel, or a section or room within the vessel, then that information does not get displayed. Wouldn’t it be reasonable then to determine that it is the broker who determines the selection and the information that will be displayed, not the Plaintiffs’ multiple listing system? And if the broker had the ability to change the order of the information displayed, then it would be reasonable to believe that it was the brokers who selected the order, regardless if the broker felt the system default order was fine? After reviewing all the facts it seems the only thing BUCNET could claim is the visual look of the layout. If that was different then I could not see where BUCNET had any creativity in the selection, order and layout.
Copyright protection of a compilation is the least protected because of its grayness and rightfully so. So, in this case, the facts justify a higher standard of similarity; Virtually Identical. I believe the 11th circuit erred in their decision. They should have accepted the oral objections from the defendants’ lawyers, but instead stated that the attorneys did not submit their objection in writing and give a formal proposal of how the jury instruction should have read.
Thanks Valerie, for you thoughtful comments. The thrust of my post was on the standard to be used for infringement of compilations, and much less on whether this particular compilation was infringed. On the particular infringement, I had treated the broker as providing the uncopyrightable facts, and plaintiff the selection, coordination, or arrangement of those facts. I don't think that analysis is changed by whether the broker chooses to include this fact or not that fact, but it would change (for me) is the brokers also dictated the final format of the compilation. I had assumed that plaintiff had a fairly settled format into which the brokers' information was plugged.
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