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December 22, 2004, 9:00 AM ET, Alert No. 1,042.
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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 based expression.

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 meaning of 17 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 opinion 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 original.)

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 correction [2 pages in PDF]. On December 13, the Appeals Court issued a second correction [2 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 Chertoff joined.

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 original.)

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 Cases

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.

More News

12/21. The Federal Communications Commission (FCC) released a Forfeiture 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 release.

Publication Schedule
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

James Loy12/20. 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 109th Congress. Sen. Ted StevensHe 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 limited.

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 limited.

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 letter 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 sources.

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 Daniel Solove, 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 Information Age".

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, Order List [9 pages in PDF] at page 9.

Thursday, December 23

Deadline to submit comments to the National Institute of Standards and Technology's (NIST) Computer Security Division regarding the FIPS 201 and SP 800-73 public drafts. See, document [91 pages in PDF] titled "Federal Information Processing Standard 201 (FIPS 201), Personal Identity Verification for Federal Employees and Contractors", and document [99 pages in PDF] titled "Special Publication 800-73 (SP 800-73), Integrated Circuit Card for Personal Identity Verification". Submit comments to

Friday, December 24

The Federal Communications Commission (FCC) and other federal offices will be closed. See, Office of Personnel Management's (OPM) list of federal holidays.

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, story 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 erratum [PDF].

Friday, December 31

The Federal Communications Commission (FCC) and other federal offices will be closed. See, Office of Personnel Management's (OPM) list of federal holidays.

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