4.1198 US Supreme Court: Copyright Decision (1/301)

Elaine Brennan & Allen Renear (EDITORS@BROWNVM.BITNET)
Tue, 2 Apr 91 20:48:52 EST

Humanist Discussion Group, Vol. 4, No. 1198. Tuesday, 2 Apr 1991.

Date: 2 Apr 91 12:30:54 EST
From: Peter D. Junger <pdj2@po.cwru.edu>
Subject: Important Copyright Decision by US Supreme Court

On March 27, 1991, the United States Supreme Court decided Feist
Publications, Inc. v. Rural Telephone Service Co., Inc., ___ U.S. ___
(1991), a copyright case with important implications for those concerned
with humanities computing, even though that case did not involve
computers and even though the only text involved was the white pages of
a rural telephone directory.

The lower courts had found Feist Publications guilty of a copyright
violation because it had copied listings from Rural Telephone Service
Co.'s telephone directory (including four fictitious listings) and
inserted them in its own regional telephone directory. The Supreme
Court, in an opinion by Justice O'Connor, reversed, holding--in no
uncertain terms--that facts, even those in a compilation, are not
copyrightable and that only `original' work is protected by the
copyright laws. The court expressly rejected the argument, which had
been accepted by some lower courts, that a compiler was entitled to
copyright protection simply because of the "sweat of the brow" or the
"industrious collection" that went into the making of the compilation.

The significance of this case for those concerned with humanities
computing lies in the fact that the Supreme Court has now made it clear
that material in the public domain (including not only facts, but also
texts that are not, or are no longer, subject to copyright protection)
can be safely copied from a compilation (or database, for a database is
just a compilation on a computer) even though the compilation itself is
copyrighted. Only the original work of the compiler is protected by the
copyright of the compilation. (The Feist case also holds that there is
no originality involved in arranging the entries in a telephone book in
alphabetical order.)

Here are some passages from Justice O'Connor's opinion in Feist
(downloaded from Westlaw's online database of law cases):

This case concerns the interaction of two well-established
propositions. The first is that facts are not copyrightable;
the other, that compilations of facts generally are. Each of
these propositions possesses an impeccable pedigree. That there
can be no valid copyright in facts is universally understood.
The most fundamental axiom of copyright law is that "[n]o author
may copyright his ideas or the facts he narrates." .... At
the same time, however, it is beyond dispute that compilations
of facts are within the subject matter of copyright.
Compilations were expressly mentioned in the Copyright Act of
1909, and again in the Copyright Act of 1976.

There is an undeniable tension between these two propositions.
Many compilations consist of nothing but raw data--i. e., wholly
factual information not accompanied by any original written
expression. On what basis may one claim a copyright in such a
work? Common sense tells us that 100 uncopyrightable facts do
not magically change their status when gathered together in one
place. Yet copyright law seems to contemplate that compilations
that consist exclusively of facts are potentially within its

The key to resolving the tension lies in understanding why
facts are not copyrightable. The sine qua non of copyright is
originality. To qualify for copyright protection, a work must
be original to the author. See Harper & Row, supra, at 547-549.
Original, as the term is used in copyright, means only that the
work was independently created by the author (as opposed to
copied from other works), and that it possesses at least some
minimal degree of creativity. 1 M. Nimmer & D. Nimmer, Copyright
ss 2.01[A], [B] (1990) (hereinafter Nimmer). To be sure, the
requisite level of creativity is extremely low; even a slight
amount will suffice. The vast majority of works make the grade
quite easily, as they possess some creative spark, "no matter
how crude, humble or obvious" it might be. Id., s 1.08[C][1].
Originality does not signify novelty; a work may be original
even though it closely resembles other works so long as the
similarity is fortuitous, not the result of copying. To
illustrate, assume that two poets, each ignorant of the other,
compose identical poems. Neither work is novel, yet both are
original and, hence, copyrightable. See Sheldon v. Metro-
Goldwyn Pictures Corp., 81 F. 2d 49, 54 (CA2 1936).

Originality is a constitutional requirement. The source of
Congress' power to enact copyright laws is Article I, s 8, cl.
8, of the Constitution, which authorizes Congress to "secur[e]
for limited Times to Authors ... the exclusive Right to their
respective Writings." In two decisions from the late 19th
Century-The Trade-Mark Cases, 100 U. S. 82 (1879); and
Burrow-Giles Lithographic Co. v. Sarony, 111 U. S. 53
(1884)-this Court defined the crucial terms "authors" and
"writings." In so doing, the Court made it unmistakably clear
that these terms presuppose a degree of originality.

In The Trade-Mark Cases, the Court addressed the
constitutional scope of "writings." For a particular work to
be classified "under the head of writings of authors," the
Court determined, "originality is required." 100 U. S., at 94.
The Court explained that originality requires independent
creation plus a modicum of creativity: "[W]hile the word
writings may be liberally construed, as it has been, to include
original designs for engraving, prints, & c., it is only such as
are original, and are founded in the creative powers of the
mind. The writings which are to be protected are the fruits of
intellectual labor, embodied in the form of books, prints,
engravings, and the like." Ibid. (emphasis in original).*
{*Here is an example of the absence of markup in materials
downloaded from Weslaw and Lexis; Justice O'Connor's "emphasis"
is missing.}

In Burrow-Giles, the Court distilled the same requirement from
the Constitu- tion's use of the word "authors." The Court
defined "author," in a constitutional sense, to mean "he to
whom anything owes its origin; originator; maker." 111 U. S.,
at 58 (internal quotations omitted). As in The TradeMark Cases,
the Court emphasized the creative component of originality. It
described copyright as being limited to "original intellectual
conceptions of the author," ibid., and stressed the importance
of requiring an author who accuses another of infringement to
prove "the existence of those facts of originality, of
intellectual production, of thought, and conception." Id., at

. . . . It is this bedrock principle of copyright that
mandates the law's seemingly disparate treatment of facts and
factual compilations. "No one may claim originality as to
facts." Id., s 2.11[A], p. 2-157. This is because facts do
not owe their origin to an act of authorship. The distinction
is one between creation and discovery: the first person to find
and report a particular fact has not created the fact; he or
she has merely discovered its existence. To borrow from
BurrowGiles, one who discovers a fact is not its "maker" or
"originator." 111 U. S., at 58. "The discoverer merely finds
and records." Nimmer s 2.03[E]. Census-takers, for example, do
not "create" the population figures that emerge from their
efforts; in a sense, they copy these figures from the world
around them. Denicola, Copyright in Collections of Facts: A
Theory for the Protection of Nonfiction Literary Works, 81
Colum. L. Rev. 516, 525 (1981) (hereinafter Denicola). Census
data therefore do not trigger copyright because these data are
not "original" in the constitutional sense. Nimmer s 2.03[E].
The same is true of all facts-scientific, historical,
biographical, and news of the day. "[T]hey may not be
copyrighted and are part of the public domain available to every
person." Miller, supra, at 1369.

Factual compilations, on the other hand, may possess the
requisite originality. The compilation author typically chooses
which facts to include, in what order to place them, and how to
arrange the collected data so that they may be used effectively
by readers. These choices as to selection and arrange- ment, so
long as they are made independently by the compiler and entail a
mini- mal degree of creativity, are sufficiently original that
Congress may protect such compilations through the copyright
laws. Nimmer ss 2.11[D], 3.03; Denicola 523, n. 38. Thus, even
a directory that contains absolutely no protectible written
expression, only facts, meets the constitutional minimum for
copyright protection if it features an original selection or
arrangement. See Harper & Row, 471 U. S., at 547. Accord Nimmer
s 3.03.

This protection is subject to an important limitation. The
mere fact that a work is copyrighted does not mean that every
element of the work may be protected. Originality remains the
sine qua non of copyright; accordingly, copyright protection
may extend only to those components of a work that are original
to the author. Patterson & Joyce 800-802; Ginsburg, Creation
and Commercial Value: Copyright Protection of Works of
Information, 90 Colum. L. Rev. 1865, 1868, and n. 12 (1990)
(hereinafter Ginsburg). Thus, if the compilation author clothes
facts with an original collocation of words, he or she may be
able to claim a copyright in this written expression. Others
may copy the underlying facts from the publication, but not the
precise words used to present them. In Harper & Row, for
example, we explained that President Ford could not prevent
others from copying bare historical facts from his
autobiography, see 471 U. S., at 556-557, but that he could
prevent others from copying his "subjective descriptions and
portraits of public figures." Id., at 563. Where the
compilation author adds no written expression but rather lets
the facts speak for themselves, the expressive element is more
elusive. The only conceivable expression is the manner in which
the compiler has selected and arranged the facts. Thus, if the
selection and arrangement are original, these elements of the
work are eligible for copyright protection. See Patry, Copyright
in Compilations of Facts (or Why the "White Pages" Are Not
Copy rightable), 12 Com. & Law 37, 64 (Dec. 1990) (hereinafter
Patry). No matter how original the format, however, the facts
themselves do not become original through association. See
Patterson & Joyce 776.

This inevitably means that the copyright in a factual
compilation is thin. Notwithstanding a valid copyright, a
subsequent compiler remains free to use the facts contained in
an another's publication to aid in preparing a competing work,
so long as the competing work does not feature the same
selection and arrangement. As one commentator explains it:
"[N]o matter how much original authorship the work displays, the
facts and ideas it exposes are free for the taking.... [T]he
very same facts and ideas may be divorced from the context
imposed by the author, and restated or reshuffled by second
comers, even if the author was the first to discover the facts
or to propose the ideas." Ginsburg 1868.

It may seem unfair that much of the fruit of the compiler's
labor may be used by others without compensation. As Justice
Brennan has correctly observed, however, this is not "some
unforeseen byproduct of a statutory scheme." Harper & Row, 471
U. S., at 589 (dissenting opinion). It is, rather, "the essence
of copyright," ibid., and a constitutional requirement. The
primary objective of copyright is not to reward the labor of
authors, but "[t]o promote the Progress of Science and useful
Arts." Art. I,  8, cl. 8. Accord Twentieth Century Music Corp.
v. Aiken, 422 U. S. 151, 156 (1975). To this end, copyright
assures authors the right to their original expression, but
encourages others to build freely upon the ideas and information
conveyed by a work. Harper & Row, supra, at 556-557. This
principle, known as the idea/expression or fact/expression
dichotomy, applies to all works of authorship. As applied to a
factual compila- tion, assuming the absence of original written
expression, only the compiler's selection and arrangement may be
protected; the raw facts may be copied at will. This result is
neither unfair nor unfortunate. It is the means by which
copyright advances the progress of science and art.

This Court has long recognized that the fact/expression
dichotomy limits severely the scope of protection in fact-based
works. More than a century ago, the Court observed: "The very
object of publishing a book on science or the useful arts is to
communicate to the world the useful knowledge which it con-
tains. But this object would be frustrated if the knowledge
could not be used without incurring the guilt of piracy of the
book." Baker v. Selden, 101 U. S. 99, 103 (1880). We
reiterated this point in Harper & Row:

"[N]o author may copyright facts or ideas. The copyright is
limited to those aspects of the work-termed 'expression'--that
display the stamp of the author's originality.

"[C]opyright does not prevent subsequent users from copying
from a prior author's work those constituent elements that are
not original--for example ... facts, or materials in the public
domain--as long as such use does not unfairly appropriate the
author's original contributions." 471 U. S., at 547-548
(citation omitted). This, then, resolves the doctrinal tension:
Copyright treats facts and factual compilations in a wholly
consistent manner. Facts, whether alone or as part of a
compilation, are not original and therefore may not be
copyrighted. A factual compilation is eligible for copyright if
it features an original selection or arrangement of facts, but
the copyright is limited to the particular selection or
arrangement. In no event may copyright extend to the facts

And there you have it. No protection for the facts included in a
compilation or database and, a fortiori, no protection for materials
already in the public domain that are included in such a database.

The question remains as to the extent of the protection given to the
original portions of the compilation such as its organization. In
Feist, the Court held that the organization of the White Pages was not
entitled to any protection, saying:

The question that remains is whether Rural selected,
coordinated, or arranged these uncopyrightable facts in an
original way. As mentioned, originality is not a stringent
standard; it does not require that facts be presented in an
innovative or surprising way. It is equally true, however, that
the selection and arrangement of facts cannot be so mechanical
or routine as to require no creativity whatsoever. The standard
of originality is low, but it does exist. See Patterson & Joyce
760, n. 144 ("While this requirement is sometimes characterized
as modest, or a low threshold, it is not without effect")
(internal quotations omitted; citations omitted). As this
Court has explained, the Constitution mandates some minimal
degree of creativity, see The TradeMark Cases, 100 U. S., at 94;
and an author who claims infringement must prove "the exist-
ence of ... intellectual production, of thought, and
conception." Burrow- Giles, supra, at 59-60.

The selection, coordination, and arrangement of Rural's white
pages do not satisfy the minimum constitutional standards for
copyright protection. As mentioned at the outset, Rural's white
pages are entirely typical. Persons desiring telephone service
in Rural's service area fill out an application and Rural issues
them a telephone number. In preparing its white pages, Rural
simply takes the data provided by its subscribers and lists it
alphabetically by surname. The end product is a garden-variety
white pages directory, devoid of even the slightest trace of

Rural's selection of listings could not be more obvious: it
publishes the most basic information--name, town, and telephone
number--about each person who applies to it for telephone
service. This is "selection" of a sort, but it lacks the
modicum of creativity necessary to transform mere selection into
copyrightable expression. Rural expended sufficient effort to
make the white pages directory useful, but insufficient
creativity to make it original.

Peter D. Junger
Case Western Reserve University Law School, Cleveland, Ohio