Thursday, June 05, 2008

Telephone Directories Again

Reading through lots of opinions gives one a sense of the ebb and flow of case law. There are spikes in certain areas, periods when courts seem to quite attuned to legislative change and the policy changes that go with that, and periods when such changes are so remote that courts seem unable to grasp them as has happened recently with divisibility.

Before and for some period after the Supreme Court’s 1991 opinion in Feist Publications, Inc. v. Rural Telephone Service Co., suits involving telephone directories were all the rage, sometimes involving the white pages, sometimes involving the yellow pages. Then the suits dropped off. On May 23, 2008, a district court in Oregon issued an opinion in Idearc Media Corp. v. Northwest Directories, 2008 WL 2185334 (Civil No. 07-796-HA) that brought it all back again.

Here is the background from the court’s opinion:

In 2006, Verizon Directories Corporation (VDC) published and distributed a telephone directory in Yamhill County (“the 2006 directory”). The yellow pages section of the directory included a number of display ads. Display ads typically include graphics, colors and text beyond the name, address, and telephone number of the business. NWD admits to scanning copies of all of the display ads in the 2006 directory and using those scanned ads to create display ads for use in the telephone directory that it distributed in Yamhill County in 2007 (“the 2007 directory”). As part of an attempt to enter the Yamhill County directory business, NWD did not charge advertisers for placement of ads in the 2007 directory. The display ads from the 2006 directory that are reproduced in the 2007 directory are essentially identical. However, because the pages in the two directories are of a different size, the ads in the 2007 directory are often different sizes than those in the 2006 directory. As a result, Idearc admits that none of the ads in the 2007 directory are totally identical. After the distribution of the 2007 directory, Idearc brought suit against NWD alleging infringement of its copyright in the 2006 directory.

VDC changed its name to Idearc in 2006. Unless Idearc itself created the display ads or had an assignment from the advertisers, then the advertisers, not Idearc had standing to sue. The evidence recited by the court was murky. Idearc relied on a contractual provision stating that if it created the ads then it owned rights in them, but it didn’t seem to present evidence that it had done so.

Defendant also argued that the notice on the yellow pages as a whole was insufficient since the ads themselves lacked notice, a dispute that was not an actual issue since mandatory notice was abolished as of March 1, 1989 in the Berne Convention implementing legislation. Yet, although aware of this, the court engaged in some sustained discussion of the issue, understandably disagreeing with the Tenth Circuit’s opinion in Transwestern Publishing Co. v. Multimedia Marketing Associates, Inc., 133 F.3d 773 (10th Cir.1998) that required a separate notice. There was also discussion of compliance with registration requirements and originality.

And then one had to face once again a (large corporate) plaintiff’s failure to understand, after 30 years, the most basic aspect of how statutory damages work: one award per work, regardless of the number of infringements:

Idearc claims that it is entitled to compensation for four acts of infringement. However, the text of § 504(c)(1) clearly indicates that the statutory damages for all infringements of the copyright in a single work (here a compilation) are lumped together… Thus, for the purposes of calculating the statutory damages, all acts of infringement of the 2006 directory, the only work at issue, are subject to a single award. This includes copies made during scanning, in the distributed paper copies, and the evanescent copies generated each time an Internet user visits the Yamhill County directory on the NWD web site.

The court did a workman-like job in the opinion, but there is a large sense of déjà vu to it all for me.

No comments: