Monday, October 31, 2005

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.


Anonymous said...

That Judge Alito gets good marks in Originality 101 isn't much of a recommendation. I would be more interested in knowing how he would have stood on the issues raised by Eldred v. Ashcroft. How much constitutional leeway does Congress have to pass stupid laws ? When does sloppy Congressional thinking rise to the level of a want of reason in the legislative judgement sufficiently serious to render an act of Congress unconstitutional?

William Patry said...

He might be deserving of more generous marks on originality given the views of others on his court, in light of the 9th Circuit's CDN case, the 11th Circuit's horrible compilation cases, the 6th Circuit's sound recording infringement case, etc. The basics don't seem as basic as they should be.

On Eldred, the split was not along the conservative - liberal lines. I'm inclined to give Congress a lot of room to pass stupid laws, and I don't even think Justice Ginsburg thought CTEA was that good an idea. To me, the problem in Eldred was petitioners' error in conceding that the initial language of the clause (I refuse to call it a preamble) did not act as a substantive limitation on Congress's powers), and Justice Ginsburg's dissing of the quid pro quo concept.

I don't know how a Justice Alito might come out on a case properly presented.

Max Lybbert said...

Well, aside from a strict constructionist, it's impossible to predict how a judge will rule on any particular issue, because only strict constructionism gives us a clear yardstick to measure with:

Q. What is the meaning of a “moderate” interpretation of the Constitution?
A. An interpretation halfway between what the Constitution says and what a justice would like it to say. (

In all honesty, it's nearly impossible to determine how any judge will rule on any issue ten years in the future. Abraham Lincoln had a hard enough time with Salmon Chase, who created the "greenback plan" as Secretary of the Treasury, and declared it unconstitutional after Lincoln put him on the Supreme Court.

William Patry said...

Well said, Max. Here are some comments that a friend sent me and agreed to let me post:

His comment: "What about Tin Pan Apple v. Miller Brewing 30 U.S.P.Q.2d 1791 (S.D.N.Y. 1994). My understanding is that it suggested "BRR" could be copyrightable. Was the case wrongly decided? Is even a very short sequence copyrightable if original, or does the merger doctrine rule this out entirely for very short items?

His comment: I may not understand your point in this context but as a general matter it seems to me originality could reside either in what the sequence designates or the manner in which it is designated. For example, some kind of notation for choreography might be original only because of the originality of the dance moves that are represented by the notation. The translation of the dance into notation might not be a creative act (although I don't know enough about dance to say for sure). It seems to me that only when there is no authorship in either the notation nor what the notation represents would there be no claim to copyright. Similarly, to refer back to our earlier discussion of chess notation, if someone used chess notation to record how dancers would move around a large 64 square board without regard to the rules of chess and not to achieve checkmate, but just as a work of art, the chess notation might be copyrightable even though chess game scores generally are not.

Conversely, a photograph of a mountain could be copyrightable even though the mountain is as "old as the hills."

His comment: A large listing of names and numbers seems to offer as many ways to argue for authorship as numbers assigned to parts pursuant to a numbering system. It seems implicit in Feist that some room for discretion is not the same as creativity.

An interesting related question is at what point does a photograph of items that are not created by the photographer become so lacking in creativity that it has no copyright? For example, I have a camera set up at my front door with a motion detector and while I am away on vacation it snaps a photo of someone knocking on the door. Granted, I could have set it up from a different vantage point and with a sound detector rather than a motion detector, but my purpose was strictly security, and if short phrases and numbers are not copyrightable due to lack of creativity it seems that in some cases photographs might lack minimal creativity as well. And yet, it seems to be a rare case where anyone questions copyright on photographs.

William Patry said...

Article III Groupie, with her catty (but must-read) "Underneath Their Robes" blog has "spileld the beans" on Judge Alito's coffee:

At T.M. Ward Coffee Co. in downtown Newark, near Alito's office, the judge is known more for his taste in coffee than for his legal philosophy. Store clerk Vera Barbosa said that Alito's law clerks wanted to do something special for his birthday a few years ago, so they persuaded the store to come up with a special blend for him.

"Judge Alito's Bold Justice Blend" -- a mix of Colombian, Java and New Guinea with a bit of espresso -- remains a hot seller at the coffee shop, Barbosa said, and Alito often stops by for it - by the cup and by the pound.

"He's a great man," Barbosa said. "He's very polite. He comes in whenever he has a chance. He's very nice."

William Patry said...

See also discussion by Laura Quilter,

Anonymous said...

That seemed like a backhanded swipe at Scalia. Some in the conservative circle like myself might use the term "Scalito" as a compliment. Isn't Scalia, too, a wonderful human being?

Max Lybbert said...

anonymous, Scalia is (IMO) a very intelligent human being, but he's apparently not somebody I'd hang out with after work.

Besides, calling a grown man, who is very accomplished in his own right, the "Mini Me" of another person can be very rude.

Anonymous said...

Out of curiosity, then, Mr. Patry, is it your view that West Pub. Co. v. Mead Data Centers, Inc., 799 F.2d 1219 (8th Cir. 1986)--the famous case holding that West's page numbers were copyrightable, essentially on "selection and arrangement" grounds--was wrongly decided? In that case not only was the selction and arrangement found to be protectible, if I recall correctly, but the pagination itself was also protected. Surely page numbers are even shorter than the part numbers at issue in Southco.

I'm not expressing a view here one way or the other -- and I may well be misremembering West--I'm just curious what your thoughts are on that case.