|3rd Circuit Opines on Copyright Originality
Requirement and Rules Based Expression
12/3. The U.S. Court of Appeals
(3rdCir) issued its divided en banc
opinion [40 pages
in PDF] in Southco v. Kanebridge, a copyright case that has been before
the Third Circuit before. The issue is what constitutes sufficient originality to be
protected by copyright. In this case, Southco claims copyright in the serial numbers that
it assigns to the parts that it manufacturers.
In Southco's system, each part is assigned a four part number. These numbers
not only identify the product, but also convey information about the product.
Kanebridge copied Southco's numbering system and numbers.
This case goes to what rules based expression
satisfies the originality requirement of the Copyright Act. Ideas, no matter how
creative, cannot be protected by copyright. Expression can be protected by
copyright. In this case the majority held that all of the creativity came in the
creation of the rules (an idea) for assigning numbers. The numbers themselves
(expression) are entirely dictated by the rules, and hence involve no creativity, or
originality. Thus, they are not entitled to protection. The dissent argued that the
majority unreasonably pushes all of the creativity and originality to the ideas side
of the idea expression dichotomy, and threatens to remove the incentive to create rules
Southco filed a complaint in U.S.
District Court (EDPenn) against Kanebridge alleging copyright infringement,
as well as false advertising under the Lanham Act in violation of
15 U.S.C. § 1125(a), trademark infringement in violation of 15 U.S.C. § 1114(1),
and unfair competition in violation of 15 U.S.C. § 1125(a). However, the
present opinion only addresses the copyright claim.
On remand, the District Court granted summary judgment to Kanebridge. Southco
appealed. A three judge panel of the Appeals Court reversed in an opinion reported at
324 F.3d 190. The Court of Appeals then agreed to rehear the case en banc.
The en banc panel affirmed the judgment
of the District Court. The Court of Appeals held that the numbers are not protected by copyright,
for two reasons. First, they are not original. Second, the Copyright Office rules
provide that short phrases cannot be copyrighted.
The Court reasoned first that the numbering system is not original within the
U.S.C. § 102(a), which provides in part that "Copyright protection subsists ...
in original works of authorship fixed in any tangible medium of expression."
The Appeals Court, relying upon the Supreme Court's 1991
in Feist Publications, Inc. v. Rural Telephone Services Co., 499 U.S. 340,
wrote that "In this case, the Southco product numbers are not
``original´´ because each number is rigidly dictated by the rules of the Southco
system. Because ideas may not be copyrighted, Southco does not assert any claim
of copyright in its numbering system, but instead focuses on the part
numbers themselves. The numbers, however, do not reflect any creativity."
(Emphasis in original.)
Secondly, the Court reasoned that "The Southco part numbers are
also excluded from copyright protection because they are analogous to short
phrases or the titles of works."
This principle is not codified in the Copyright Act. However, there is a
regulation. 37 C.F.R. § 202.1 provides, in part, that "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 in
The Court concluded that "We believe that the Copyright Office's
longstanding practice of denying registration to short
phrases merits deference." However, it added in a footnote that "We do not
decide what degree of deference is warranted under the circumstances."
On December 8, the Appeals Court issued a
pages in PDF]. On December 13, the Appeals Court issued a second
pages in PDF]. Both corrections pertain to identifying which judges joined in
which portions of the majority opinion.
Thirteen judges participated in the en banc rehearing. Judge Sam Alito wrote
the opinion for the Court. Three judges (Becker, McKee and Smith) concurred.
They did not agree with the portion of the majority opinion regarding short
phrases. They also offered an additional grounds for affirming the District
Court, scenes a faire. Judge Roth wrote a lengthy dissent, in which Judge
Judge Roth wrote that "The majority, however, in misapplying the
idea/expression dichotomy, has adopted an unduly restrictive understanding of
the originality requirement. ... By deciding that the determination of the part
number is inherent in the ``idea,´´ the majority has pushed all of Southco's
creative work onto the unprotected ``idea´´ side of the idea/expression dichotomy.
This over broad definition of the ``idea´´ leads inexorably to the majority's
conclusion -- that Southco’s part numbers are undeserving of copyright protection
because they lack originality."
"I believe that a more sensible middle ground is available. If
one adopts a slightly broader focus, Southco's numbering rules (and the
resulting numbers) will be seen as one of many possible expressions of the idea
of using a code to convey product specifications", wrote Roth. (Parentheses in
He further argued that "the majority's decision to divide
Southco’s numbering rules from the numbers themselves for purposes of evaluating
Southco’s copyright claim may suggest and certainly creates an unjustified and
unexplained bias against copyright protection for all rule-based expression.
Systematic or rule-driven thought will usually “precede” expression, as it does
here. That is, Southco's original work had to be completed before its numbers
were actually expressed, and the rules governing that expression may be readily
conceptualized apart from the numbers themselves. In contrast, original artistic
or literary thought is usually bound up inextricably in its expression.
Southco's numbering scheme is no less creative or original simply because it is
governed by rules rather than the more ``indeterminate ideas´´ typically
associated with art or literature. ... However, if the majority's division of Southco's rules from their expression were applied generally, large swaths of
rule-based original works would be denied protection."
He noted also that "many compilations that would seem to pass
Feist’s low creativity threshold would be denied protection if they happen
to be the product of predetermined rules."
Judge Roth also wrote that deference to the Copyright Office on the short
phrases argument "is inappropriate".
This case is Southco, Inc. v. Kanebridge Corporation,
U.S. Court of Appeals for the 3rd Circuit, App. Ct. No. 02-1243, an appeal from
the U.S. District Court for the Eastern District of Pennsylvania, D.C. No. 99-cv-04337,
Judge Norma Shapiro presiding.
|FCC Publishes Respondent's Briefs in Pending
12/21. The Federal Communications Commission
(FCC) published in its web site the briefs that it recently filed with the Court
of Appeals in three pending cases. First, the FCC published the
brief [38 pages in PDF]
that it filed with the U.S. Court of Appeals
(DCCir) in SBC Communications v. FCC.
This is a petition for review of a Forfeiture Order in which the FCC held
that SBC violated the provision of the FCC's order approving the merger of SBC and
Ameritech which required SBC to offer access to the shared transport
element of its telephone network to competitors in five midwestern states.
The FCC argues that this is the second time that SBC has brought a petition
for review that challenges this part of the merger order, and hence, the doctrine of issue preclusion
bars SBC from now raising new legal theories. The Appeals Court's previous opinion is
reported at 373 F.3d 140.
Oral argument is scheduled for February 17, 2005.
This case is SBC Communications, Inc. v. FCC and USA,
U.S. Court of Appeals for the District of Columbia, App Ct. No. 03-1147, a
petition for review of a final order of the FCC.
Second, the FCC published the
brief [25 pages
in PDF] that it filed with the DC Circuit in NSTN v. FCC. This is
an appeal of the FCC's cancellation of nine licenses to operate private land
mobile radio stations in the Los Angeles, California area.
The FCC argues that under the FCC's rules in effect at the time, NSTN was
required to construct the stations within one year. However, NSTN did not
construct the stations within one year, or apply to the FCC for an extension of
time within one year.
Oral argument is scheduled for February 7, 2005. This case is National
Science and Technology Network, Inc. v. FCC and USA, U.S. Court of Appeals for
the District of Columbia, App Ct. No. 03-1376, an appeal.
Third, the FCC published in its web site the
brief [25 pages
in PDF] that it filed with the DC Circuit in i2way v. FCC. This is
a petition for review of an order of the FCC interpreting its rule that provides
that no more than ten channels for a trunked mobile radio operation may be
applied for in a single application. Oral argument is
scheduled for March 7, 2005. This case is i2way v. FCC and USA,
U.S. Court of Appeals for the District of Columbia, App Ct. No. 03-1174, a
petition for review of a final order of the FCC.
12/21. The Federal Communications
Commission (FCC) released a
Order [2 pages in PDF] that fines VIA Technologies, Inc. $14,000 for importing and
marketing unauthorized radio frequency (RF) devices. The offending items are two models
of its computer central processing unit boards. This order is DA 04-3947.
12/20. The Consumer Electronics Association
(CEA) and the Electronic Industries Alliance (EIA)
announced that they have "reached agreement to end their formal affiliation and
that CEA has decided to withdraw from its sector affiliation with EIA. The termination
is effective as of January 1, 2005. CEA and EIA will continue to share physical space at
their mutual headquarters in Arlington, Va." See, CEA
|There was no issue of the TLJ Daily E-Mail Alert yesterday,
Tuesday, December 21, 2004. There will be no issue on Friday,
December 24, 2004.
|People and Appointments
12/20. James Loy (at right), Deputy
Secretary of the Department of Homeland Security (DHS),
will step down. He was the Commandant of the U.S. Coast Guard before being appointed to
his current position at the DHS in 2002. He will remain in his position until March 1,
2005, or until a successor is confirmed. See,
statement by outgoing
Secretary Tom Ridge.
12/21. Rep. Jim DeMint (R-SC) and Rep. David Vitter (R-LA)
will be named to the Senate Commerce Committee
(SCC). (Source: Senate Finance Committee release.) Both are members of the House for the
108th Congress, who won open seats in the Senate, for the 109th Congress, which
will meet in January. DeMint won the seat being vacated by Sen. Ernest Hollings (D-SC),
who is retiring. Sen. Hollings has long been either the
ranking Democrat or Chairman of the SCC. Vitter won the seat being vacated by
Sen. John Breaux (D-LA), who is also retiring. Sen. Breaux was also a member of the
SCC. DeMint and Vitter will replace Sen.
Sam Brownback (R-KS) and Sen. Peter Fitzgerald (R-IL). Sen. Brownback, who
is a member of the SCC for the 108th Congress, will not be on the SCC in the
He will, however, be
named to the Senate Judiciary Committee.
Sen. Fitzgerald is retiring. Sen. Ted
Stevens (R-AK) (at left) will be named Chairman of the SCC. He will replace
Sen. John McCain (R-AZ), who is term
12/21. Sen. Sam Brownback
(R-KS), who was a member of the Senate
Judiciary Committee (SJC) until the end of the 107th Congress, will be
renamed to the SJC. In addition, former Rep. Tom Coburn (R-OK), who won
the open seat vacated by retiring Sen. Don Nickles (R-OK), will be named to the
SJC. Brownback and Coburn will replace
Sen. Larry Craig (R-ID) and
Sen. Saxby Chambliss (R-GA). Sen. Chambliss will become Chairman of the
Senate Agriculture Committee. Sen.
Craig will become Chairman of the Senate Veterans Affairs Committee. President
Bush, and members of his administration, particularly at the Department of
Justice, will be relieved by Sen. Craig's departure from the SJC. He has been
the leading Republican advocate for sunsetting some of the provisions of the USA
PATRIOT Act. The SJC has jurisdiction over this issue.
Sen. Arlen Specter (R-PA) is likely
to be named Chairman of the SJC. The outgoing Chairman,
Sen. Orrin Hatch (R-UT), is term
12/21. Sen. Mike Crapo (R-ID)
will be named to the Senate Finance Committee.
He will replace departing Sen. Don Nickles (R-OK), who did not run for re-election.
|EPIC Urges FTC to Open Investigation on Data
Products and FCRA
12/16. The Electronic Privacy Information
Center (EPIC) wrote a
to the Federal Trade Commission (FTC) in which
it urges the FTC to open an investigation regarding "data products" and the
"creation and use of dossiers of personal information to evaluate individuals".
The letter reviews the Fair
Credit Reporting Act of 1970 (FCRA), and argues that data aggregation
companies, such as ChoicePoint, are now
selling data products that it asserts fall outside of the protections contained in the FCRA,
even though they have "similar data elements and descriptions" to FCRA covered
products. The FTC has responsibility for enforcing the FCRA.
The letter asserts that data aggregation companies, which are regulated by
the FCRA, are now structuring their electronic databases, and data products, to
fall outside of the scope of the FCRA, thereby threatening individual privacy,
and the policy goals underlying the FCRA.
It gives an example involving the Federal Bureau of Investigation (FBI) and
ChoicePoint. It asserts that "the FBI has concluded that information it buys
from ChoicePoint is not subject to the FCRA", even though that data "is often
identical to what appears in a credit report from one of the
``big three´´ agencies."
The letter asserts that "Americans face a return to the pre-FCRA era if
companies like ChoicePoint can amass dossiers on Americans without compliance with
any regime of Fair Information Practices. That era was marked by unaccountable data
companies that reported inaccurate, falsified, and irrelevant information on Americans,
sometimes deliberately to drive up the prices of insurance or credit. To some extent,
this pre-FCRA area has returned." (Footnote omitted.)
The EPIC wants the FTC to investigate ChoicePoint to determine whether
whether its non FCRA covered products obtain information from FCRA covered
Moreover, the EPIC argues that "Even if these products are not consumer
reports for purposes of the FCRA, it is incumbent on the FTC to analyze them and
make recommendations to Congress concerning possible expansion of the FCRA." It
further argues that "Many of the public policy purposes underlying the FCRA are
being circumvented by data brokers who have artfully constructed databases to
avoid the Act's provisions."
The letter urges the FTC "to engage in a serious inquiry on the status of
data brokers' products".
In 2001, the U.S. Court of Appeals
(DCCir), in TransUnion v. FTC, upheld the constitutionality of the
FCRA, and upheld the FTC's order that TransUnion must stop selling target
marketing lists for purposes not listed in the FCRA. See, April 13, 2001
opinion, and story titled "Financial Privacy" in
TLJ Daily E-Mail
Alert No. 166, April 16, 2001.
The EPIC letter is signed by
Chris Hoofnagle, Associate Director of the EPIC, and
a professor at the George Washington
University Law School.
Also, in November, Solove released a
book [Amazon] titled "The Digital Person: Technology And Privacy In The
|Washington Tech Calendar
New items are highlighted in red.
|Wednesday, December 22
The House will next meet on January 4, 2004 at 12:00 NOON. See,
Republican Whip Notice.
The Senate will next meet on January 4, 2005 at 12:00 NOON.
The Supreme Court will next
meet on Monday, January 10, 2005. See,
List [9 pages in PDF] at page 9.
|Saturday, December 25
|Thursday, December 30
Extended deadline to submit reply comments to
Federal Communications Commission (FCC) in
response to its
Notice of Proposed Rulemaking (NPRM) [38 pages in PDF] regarding use by
unlicensed devices of broadcast television spectrum where the spectrum is not
in use by broadcasters. See,
titled "FCC Adopts NPRM Regarding Unlicensed Use of Broadcast TV Spectrum" in
TLJ Daily E-Mail Alert No.
898, May 14, 2004, and story titled "FCC Releases NPRM Regarding Unlicensed Use
of TV Spectrum" in
TLJ Daily E-Mail Alert No.
905, May 26, 2004. This NPRM is FCC 04-113 in ET Docket Nos. 04-186 and
No. 02-380. See,
notice (setting original deadlines) in the Federal Register, June 18,
2004, Vol. 69, No. 117, at pages 34103-34112; and
notice [PDF] of extended deadlines, and
|About Tech Law Journal
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