Copyright Law Blog: Exclusive Rights

Category Archives: Originality

Australian Fed Court adopts originality standard from Feist in phone book dispute

Shourin Sen - 5 April 2010 – 9:00 am

Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44 (8 February 2010)

There was a copyright order issued in the Federal Court of Australia that I have been meaning to write about for some time. Copyright infringement suits concerning phone directories provide a constant battle ground for the originality standard.This is true in many countries, and you can see a vibrant dialogue between courts that crosses national boundaries.

The Full Federal Court of Australia addressed the originality standard for factual compilations in a phone books case when it distinguished the U.S. and Australian Copyright Acts in Desktop Marketing Systems Pty Ltd v Telstra Corporation Limited [2002] FCAFC 112 (15 May 2002). The Court found that the word “original” in Section 32 of the Australian Copyright Act did not require the “intellectual effort or creative spark on which Feist insists.” The Full Court, instead, held that a phone directory “satisfie[d] the requirement of originality because of the labour and expense involved in the compilation.”

The Full Court revisited the originality standard from Desktop six years later in Nine Network Australia Pty Limited v IceTV Pty Limited [2008] FCAFC 71 (8 May 2008). In IceTV, the Full Court found that under the Australian Copyright Act originality “means that the creation (ie the production) of the work required some independent intellectual effort, but neither literary merit, nor novelty or inventiveness as required in patent law.” The Full Court, at the end of its decision, further noted that the originality standard from Desktop Marketing “may be” “out of line with the understanding of copyright law over many years” that there must be some creative spark or exercise of skill and judgment before a work is sufficiently original for the subsistence of copyright. The issue of originality was not directly litigated in IceTV so the tribunal ultimately was not forced to address whether Desktop was still controlling.

In early February, the Federal Court of Australia in Melbourne (Gordon, J.) directly addressed whether Desktop was still good law. Telestra, A publisher of yellow and white pages directories, brought suit against a rival publisher. (Telestra was also the plaintiff in Desktop.) Telestra alleged that the defendant had infringed its copyright in the compilation in its directories, including “the content, form and arrangement of information in individual listings, and the overall arrangement of individual listings,” and, in certain works, cross-references.

There were two questions at bar: whether Telestra had shown that it was the author of the directories; and more generally, whether the directories contained sufficient originality to merit copyright protection under the Australian Copyright Act of 1968.

Telestra had employed a large number of contractors, many of which it couldn’t identify, to assist in the preparation of the directories. There were “significant gaps” in the contractor agreements Telestra presented to the Court. Telestra argued that, even if it could not identify the contractors, and didn’t have agreements with the contractors, the directories were joint works. The Court rejected the argument:

[S]erious questions arise as to whether it is appropriate to refer to the gamut of individuals said to be authors of these Works as “joint authors”. The evidence demonstrated time and again that many of the staff perform their function separately from and often oblivious to the function of others . . . There is therefore a real question over whether there was the requisite level of collaboration between those workers to be considered joint authors: see s 10(1) of the Copyright Act. However, given the simple and undeniable fact that the Applicants have failed to prove the identity of the authors who contributed to the Works, it is unnecessary to consider this matter further.

The Court also made the broader finding that the directories at issue did not contain sufficient originality to merit copyright protection.

I accept that production of the directories is a large enterprise populated by many contributors (ignoring for the moment the determinative difficulties with authorship outlined above). . . . However, these facts are not relevant to the Applicants’ claim and, as explained at [20(6)] above, substantial labour and expense is not alone sufficient to establish originality. The evidence established that the “system” by which the directories are produced is designed to limit originality, not provide for it.
Where it can be automated, it has been. Where it cannot, Sensis workers are required to act consistently with the Rules and all work is subject to a multiplicity of checks to ensure that consistency. The weight of the evidence demonstrated that the tasks performed by individuals applying the Rules were mechanical in nature and often were able to be completed in large numbers swiftly. The Rules are followed and applied. Moreover, the Rules themselves are not complicated. It would be hard to conceive of how many of the Rules could be otherwise constructed given that the
purpose of the directories is to (a) enable someone to find a listing and (b) to allow customers to enhance their listing if so desired.

The decision included a plea to Parliament.

It is not open to me to ignore the express words of the Copyright Act to expand protection consistent with that set out in the Directive as summarised by the High Court. That is a matter for Parliament and, in my view, a matter which they should address without delay.

11th Cir. finds medical forms lack sufficient originality; rejects standard from Feist

Shourin Sen - 23 February 2010 – 9:00 am

Filed under Noncopyrightable Material, Originality, Preemption

Utopia Provider Systems, Inc. v. Pro-Med Clinical Systems, LLC, 2010 WL 569892 (11th Cir. 2010)

We’ve discussed this case previously in May and, on damages, in December. Utopia alleged, inter alia, that Pro-Med infringed its copyright in a series of charts for a physician to use to record a patient’s medical history and symptoms. The district court granted Pro-Med summary judgment on the copyright claim finding that the charts were not copyrightable subject matter. Utopia appealed.

Were the charts copyrightable subject matter

The Court looked to whether the headings on the forms were expected on similar medical templates and, secondly, to whether the terms actually conveyed information to the treating physician. The Court found that the medical forms called for “the same information that any responsible physician would ask a patient with the given ailment.” The Court further found that the “selection and arrangement of the terminology” did not convey information that was sufficiently original. The Court, thus, affirmed the district court’s finding that the medical forms did not constitute copyrightable subject matter.

The real fireworks in this case came in a footnote where the Court appeared to reject the “modicum of originality” standard from Feist in favor of a “conveys information” standard. Utopia argued that Feist modified the Eleventh Circuit standard announced in John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 971 (11th Cir.1983) by specifying that compilations need only minimal creativity to be copyrightable; that compilations are copyrightable “so long as [choices as to selection and arrangement] are made independently by the compiler and entail a minimal degree of creativity.” Feist Pubs., Inc. v. Rural Tel. Svc. Co., Inc., 499 U.S. 340, 348 (1991). Stated the court:

Utopia ignores, however, that Feist dealt with how to resolve the tension between facts generally not being copyrightable and factual compilations being copyrightable. Feist held that a factual compilation may be copyrightable “if it features an original selection or arrangement of facts, but the copyright is limited to the particular selection or arrangement.” Id. at 350-51, 111 S.Ct. at 1290 (emphasis added). Feist did not imply in any way that the rule concerning the creativity in selection of facts was a standard that applied to anything but factual compilations or impacted the blank forms rule. While we note that the creativity in the selection of terms on the ED Maximus forms bears on whether the forms convey information, the “convey information” standard-not a creativity in selection or arrangement standard-still governs blank forms and was not altered by the Feist decision concerning factual compilations. Utopia’s argument that the selection and arrangement of terms in the ED Maximus templates show “extraordinary degrees of creativity and originality,” therefore, is relevant only to the extent that it shows the forms convey information.

The Court’s opinion also contained an interesting discussion of what it viewed as the Ninth Circuit misreading Eleventh Circuit precedence:

Some courts have adopted a “bright-line” rule regarding blank forms; that is, they hold that blank forms inherently do not convey information and are not copyrightable. The Ninth Circuit took this approach in Bibbero Sys., Inc. v. Colwell Sys., Inc., 893 F.2d 1104 (9th Cir.1990). The court rejected the argument that a blank form could satisfy the “convey information” test by containing possible categories of information, thus indicating which information was important. Id. at 1107. If categories of information were sufficient to “convey information,” according to the court, the copyrightability of blank forms would be “potentially limitless. All forms seek only certain information, and, by their selection, convey that the information sought is important. This cannot be what the Copyright Office intended by the statement ‘convey information’ in 37 C.F.R. 202.1(c).” Id.

The majority of circuits have rejected Bibbero ‘s bright-line approach. See, e.g,, Kregos v. Associated Press, 937 F.2d 700, 709 (2d Cir.1991) ( “[A]ll forms need not be denied protection simply because many of them fail to display sufficient creativity.”); Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1242-43 (3d Cir.1986) (noting that the Third Circuit, “like the majority of courts that have considered this issue … ha[s] held that blank forms may be copyrighted if they are sufficiently innovative that their arrangement of information is itself informative”). Although the Ninth Circuit characterized the Eleventh Circuit’s approach in Clarke Checks as adopting the “bright-line” approach that blank forms cannot be copyrighted, the Ninth Circuit’s reading of Clarke Checks does not comport with our reading of it. Bibbero, 893 F.2d at 1107. The Clarke Checks court’s statement that “blank forms which do not convey information … are not copyrightable” does not indicate a view that blank forms cannot convey information. 711 F.2d at 971. Moreover, the court’s analysis went beyond identifying the check stub at issue as a blank form; the court analyzed whether it conveyed “information beyond that contained on previously existing check stubs,” indicating that it would be possible for a check stub, although a blank form, to convey information. Id. at 972. We therefore look to the “convey information” test to analyze whether ED Maximus is copyrightable, and do not end the analysis merely by labeling it a blank form.

CAD software user interface copyrightable as a compilation of public domain elements

Shourin Sen - 16 February 2010 – 12:36 pm

Filed under Noncopyrightable Material, Originality, Scenes a Faire, Software, Unfair Competition

Real View, LLC v. 20-20 Technologies, Inc., 2010 WL 455459 (D. Mass. 2010)

Real View and 20-20 Technologies sold competing CAD software that enabled consumers to model kitchens. 20-20 sent Real View a cease-and-desist letter, which Real View responded to by filing a complaint seeking a declaratory judgment that it has not infringed 20-20′s copyrights. 20-20 filed counterclaims for copyright infringement, trade dress infringement, unfair competition, intentional interference with advantageous relations, and violations of Massachusetts General Laws Chapter 93A.

The District Court of Massachusetts (Saris, J.) held a preliminary hearing to determine whether 20-20 Design contained expression that merited copyright protection, and if so, which parts. The Court’s decision is interesting for its attempt to synthesize the “abstraction, filtration, comparison” test, adopted by the Second Circuit in Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992) (plaintiff claiming non-literal infringement), and the First Circuit’s decision in Lotus Dev. Corp. v. Borland Int’l, Inc., 49 F.3d 807, 820 (1st Cir.1995) (plaintiff claiming literal infringement) that criticized the “abstraction, filtration, comparison” test for obscuring the fundamental question of whether a work merited copyright protection at all.

20-20 presented the court with a list of fifty-four elements that it contended merited copyright protection. The Court found that this allowed it to skip directly to the filtration portion of the “abstraction, filtration, comparison” analysis:

Since 20-20 has offered a list of specifically protected elements, this Court need not engage in the abstraction process described in Altai and eschewed in Lotus. See MiTek Holdings v. Arce Eng’g Co., 89 F.3d 1548, 1555 (11th Cir.1996) (“[I]f the copyright holder presents the court with a list of features that it believes to be protectable …, the court need not abstract further such features.”); ILOG, Inc. v. Bell Logic, 181 F.Supp.2d 3, 11 (D.Mass.2002) (declining to “abstract” and proceeding to “filter” when parties identified elements of a computer program that were allegedly copied). Nevertheless, sitting in a Lotus position, the Court must read Altai through the lens of Lotus and thus filter out elements based on § 102(b) before filtering on the basis of merger, scenes a faire, or public domain.

Analysis

The Court found that many of the elements of the program design did not merit copyright protection when viewed in isolation. The Court however found that a compilation of the individual components, as viewed on the screen display, was protectible. The Court also found that a particular dialog box that enabled users to specify characteristics of kitchen items placed into a design was copyrightable as a compilation of factual information (based on unique selection and arrangement).

Individual components that were found to be in the public domain when not evaluated as part of a compilation

The sequence of sub-windows on the left side of the screen: information box, edit box, hierarchical catalog box, drag and drop listing, and search box.

The items in various dialog boxes.

“Save as Image” function.

A row of command categories on the top of the screen display (File, Edit, View, Place, Project, Design, Notes, Dimensions, Render, Preferences, Window, and Help).

The ability to add notes via a dialog box.

Three methods used to add a wall. One of the methods was consisted of using a menu command function; a second, pressing a button on a toolbar.

An “idiosyncratic” sequence of mouse clicks through which a user could draw walls (regardless of the novelty of the sequence).

The ability to terminate a wall sequence through a single left mouse click behind the most recent wall drawn.

An edit box and default room configuration users can use to create walls.

A submenu that allows a user to move, rotate, extrude, and delete a wall.

A dialog box that allows users to modify the appearance of a wall or a placement zone.

A drop and drag method of placing items such as cabinets; a method through which a user can select an item from a list and click “place”; and a method through which a user can input coordinates.

Two means through which a user could resize windows and doors Options for editing countertops, e.g, “Add Bevel,” “Notch,” and “Rotate.”

On whether a work merits copyright protection is a question of law or fact

Shourin Sen - 29 June 2009 – 9:00 am

Filed under Originality, Useful Article

Jonathan Browning, Inc. v. Venetian Casino Resort LLC, 2009 WL 1764652 (N.D. Cal. 2009)

There was an interesting decision last week in the Northern District of California over the question of whether a work warrants copyright protection is of one of law, appropriate for a judge, or fact, appropriate for a jury. The Plaintiff brought suit for among other things infringement of its copyrights in two lighting fixtures. The Defendant challenged whether the works merited protection. An examiner at the Copyright Office had rejected registration of the fixtures finding that they were “‘useful articles’ which do not contain any separable features that are copyrightable.” Post rejection, the Plaintiff submitted hand drawings of the light fixtures to the Copyright Office that were registered.

At issue on this motion was a request by the Plaintiff to strike an expert report and to preclude the Defendants from offering the expert’s testimony in opposition to Plaintiff’s motion for summary judgment or at trial. The Plaintiff objected to the testimony on the grounds that the expert was set to speak about a pure issue of law, whether a work merits copyright protection. As a pure question of law, the Plaintiff argued, the issue must be reserved for the judge to decide as a matter of law, sans expert testimony. (The Defendant, perhaps as a tactical decision, elected not to challenge the characterization of the issue as a question of law.)

The Court agreed that the question of whether a work is copyrightable is a question of law, citing Pivot Point International, Inc. v. Charlene Products, Inc., 932 F.Supp. 220, 225 (N.D.Ill.1996) (holding that there is no need for expert testimony on the subject of what constitutes copyrightable subject matter as the issue is determined by the judge, not the jury). The Court excluded the expert testimony in regards to the whether specific light fixtures at issue warranted copyright protection, but allowed the expert’s testimony on the general practices of the Copyright Office and history of design protection:

The subjects of Mr. Oman’s testimony, as represented in his report, are: (1) the practices and procedures of the Copyright Office; (2) the history of design protection in the United States; and (3) the decisions of the Copyright Office as to the light fixtures at issue here. To the extent Mr. Oman wishes to testify generally about the practices and procedures of the U.S. Copyright Office regarding the registration of useful articles, or the procedures for special handling requests, or the history of design protection in the United States, Mr. Oman is entitled to so testify. However, to the extent Mr. Oman is proffered to testify about the copyrightability of the specific light fixtures in this matter or the particular decision on those fixtures, that testimony does indeed pertain to an ultimate issue of law to be decided by the Court, and not by the jury.

Notes:

Patry on Copyright takes the position that the question of whether a work is a useful article, that doesn’t contain independent features that merit copyright protection, is a question of fact that may be resolved by a jury with expert testimony. Citation to Poe v. Missing Persons, 745 F.2d 1238 (9th Cir. 1984); Kikker 5150 v. Kikker 5150 USA, LLC, 2004 WL 1837926 (N.D. Cal. 2004). Patry at 3:147. More generally, the Treatise states that the “vast majority” of courts have held that “creativity is a question of fact.” Patry at 3:39.

Copyright in spiral tye-dye designs held to lack sufficient originality to merit copyright protection

Shourin Sen - 13 May 2009 – 9:00 am

Filed under Fashion, Originality, Registration

Banzai, Inc. v. Broder Bros. Co. (E.D. Pa. 2009)

When did the Eastern District of Pennsylvania become a hotbed for fun copyright cases? Judge Bruce W. Kauffman issued an order in another treat of a copyright dispute last Thursday. Banzai brought suit against Broder Brothers for copyright infringement of its tye-dye fabric designs “USA Ultra Spiral Design” and “Orange Ultra Spiral Design” (pictured below). The Court dismissed the claims on the basis that the designs lacked sufficient originality to merit exclusive rights.

On the originality of the tye-dye designs

Banzai argued that its copyright was not in the spiral design itself, but for the “original selection of colors and their arrangement” in the spiral design. The Court wasn’t buying. (And is that snark I doth detect?)

Plaintiff admits that the tie-dye spiral design is common and not proprietary to Plaintiff, so its only unique contribution was to select the colors red, white, and blue in one design and orange and yellow in the other. Neither of these selections shows a modicum of creativity. Red, white, and blue are commonly matched colors, perhaps most notably on the American flag. Orange and yellow are adjacent in the spectrum of colors visible to the human eye. Placing these basic, predictable color combinations into a pre-existing design does not satisfy the minimum creativity necessary to establish a valid copyright.

Deference to the Copyright Office’s registration

The Court also addressed the level of weight to be given to the fact that the Copyright Office registered the designs:

The determination of whether a work is “subject to copyright protection is a matter of law for the Court.” William A. Graham Co. v. Haughey, 430 F. Supp. 2d 458, 465 (E.D. Pa. 2006) (citing Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 34 n.5 (1st Cir. 2001)). The issuance of a certification by the Copyright Office does not resolve the question of whether an item is copyrightable; in the context of a challenge that a work lacks sufficient creativity to receive copyright protection, registration merely places the burden on the defendant to prove that the work is not copyrightable. See Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 669 & n.7 (3d Cir. 1990); see also Haughey, 430 F. Supp. 2d at 468 (“[The Third Circuit] Court of Appeals has recognized that ‘a claim to copyright is not examined for basic validity before a certification is issued.’” (quoting Masquerade Novelty, 912 F.2d at 667)).

Punk band Minor Threat asks Forever 21 to stop selling a shirt that features its album logo

Shourin Sen - 13 March 2009 – 7:45 am

Filed under Originality, Subject Matter

There is a fun little copyright dust up that makes me think of pink hair. Forever 21 is chain of stores that targets teens and tweens. The chain sold shirts that appear to contain an image that the punk band Minor Threat used on the cover of their 1983 album, Out of Step. From a quick TESS search, it doesn’t appear that the band/label registered the image.

So is the manufacturer of the shirt and Forever 21 potentially liable for copyright infringement? 37 CFR 202.1 states the following:

The following are examples of works not subject to copyright and applications for registration of such works cannot be entertained:

(a) Words and short phrases such as names, titles, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering or coloring; mere listing of ingredients or contents; [emphasis added]

So, is the image of the phrase “minor threat” merely typographic ornamentation or does it possess sufficient originality to be granted exclusive rights as a “pictorial, graphical, or sculptural work”? And, if the work is granted exclusive rights would it survive a fair use analysis? Or, could there possibly be a viable common law trademark claim?

Looks like the answer to these questions is gray enough for the Dischord Records to send a cease-and-desist. Says Alec Bourgeois who conducts publicity at Dischord:

This is an unauthorized shirt and it is still unclear whether the shirt was produced by Forever 21 or if it is a bootleg that they just happen to carry. Either way the members of Minor Threat are looking into it and Forever 21 will be asked to stop selling it.

In the beginning, Minor Threat did not license anything and any shirts you saw were screened by band member Jeff Nelson. But Jeff stopped screening shirts and over the years the band members realized that the shirts were going to be made with or without their permission, so they may as well authorize a couple friendly printers in order to better control the quality, content and revenue.

The band and the label tend to deal with bootleg shirts on a case by case basis, acknowledging the vast difference between kids screening shirts for friends and professional printing studios screening shirts for profit. Obviously this absurd Forever 21 shirt falls under the ‘unacceptable’ category.

Some of you may remember a similar 2007 t-shirt dispute between Minor Threat and Nike.

S.D. Fla. grants summary judgment against plaintiffs alleging infringement of medical forms

Shourin Sen - 6 February 2009 – 2:11 am

Filed under Originality

Utopia Provider Systems, Inc. et al v. Pro-Med Clinical Systems, L.L.C., 07 cv 60654 WJZ (S.D. Fla. Feb. 2, 2009).

Utopia is a corporation that managed the rights in a system of charts for use by emergency room physicians. Utopia alleged that Pro-Med’s software infringed its copyright in the charts. Pro-Med argued that the charts lacked sufficient originality to be granted exclusive rights. Judge Zloch of the Southern District of Florida granted summary judgment on Utopia’s claim. Stated the Court:

Works that compile words, but that do not compile facts, are not copyrightable. Thus, “works not subject to copyright” include “[b]lank forms, such as time cards, graph paper, account books, diaries, bank checks, scorecards, address books, report forms, order forms and the like, which are designed for recording information and do not in themselves convey information.” 37 C.F.R. § 202.1(b) (2008). What sets compilations of facts apart from blank forms is the conveyance of information. Because copyright protects the expression of ideas, or original works of authorship, something must be put down on the page to qualify for protection. That something must be of an original and, in this case, literary nature. Feist Publications, 499 U.S. at 345 (noting that the sine qua non of copyright is the authorship of an original work). If the import of a page, even with words and phrases pre-marked on it, is to act as a mere receptacle for information input by the reader, it is not the proper subject of copyright protection. . .

Rather, the law analyzes blank forms not as original works of authorship but as “systems” for recording information. . . Such a system for recording information is not contemplated under the rubric of copyright.

Documents:

Utopia Provider Systems, Inc. et al v. Pro-Med Clinical Systems, L.L.C., 07 cv 60654 WJZ (S.D. Fla. Feb. 2, 2009) (order).

Utopia Provider Systems, Inc. et al v. Pro-Med Clinical Systems, L.L.C., 07 cv 60654 WJZ (S.D. Fla. Feb. 2, 2009) (sample of forms).

Counsel: