In Buc International Corp. v. International Yacht Council Limited, 489 F.3d 1129 (11th Cir. 2007)(available here), the 11th Circuit Court of Appeals ruled on the scope of copyright protection for a database comprised of yacht listings. Plaintiff BUC compiled a yacht listing service similar to the MLS real estate listing services for home sales. The BUC contract established a license providing that the user-licensee must “not use, sell, distribute, display, or otherwise transfer, any information obtained from the BUC Licensed System to others for any purpose.” Further, the contract provided for the protection of the factual compilation – specifically, the selection, order, and arrangement of information about yachts listed for sale. Defendant International Yacht Council (“IYC”) built a competing yacht listing database after BUC obtained copyright registration certificates.
Interestingly, BUC caught IYC by embedding markers in the BUC yacht listings and, after searching IYC’s site, BUC discovered that IYC’s yacht-MLS presented over 4,400 listings which replicated BUC’s listings.
After losing in the trial court, IYC presented two major points on appeal. First, IYC argued that the selection of data (“headings” or field identifier labels for yacht-boat features), the arrangement of such data and the coordination of the data was not original to BUC. Second, IYC argued that the jury instructions were erroneous in that BUC should be required to prove “identicality” of the two databases, rather than meet the less stringent standard of “substantial similarity” which is the common standard for copyright infringement. The 11th Circuit Court of Appeals disagreed with defendant IYC on both grounds.
In a footnote, the 11th Circuit outlined the various theories of copyright liability, direct, vicarious and contributory, as follows:
Direct copyright infringement arises upon violation of the exclusive rights of a copyright holder under 17 U.S.C. § 501. Even though the Copyright Act does not specifically provide for secondary liability, vicarious and contributory copyright infringement are well established principles derived from common law. Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930–31, 125 S. Ct. 2764, 2776, 162 L. Ed. 2d 781 (2005). Contributory copyright infringement refers to the intentional inducement, causation or material contribution to another’s infringing conduct. Greenberg v. Nat’l Geographic Soc., 244 F.3d 1267, 1271 n.6 (11th Cir. 2001), abrogated on other grounds by, New York Times Co., Inc. v.
Tasini, 533 U.S. 483, 121 S. Ct. 2381, 150 L. Ed. 2d 500 (2001), as recognized by, Greenberg v. Nat’l Geographic Soc., 488 F.3d 1331 (11th Cir. 2007). Liability for vicarious copyright infringement arises “when the defendant profits directly from the infringement and has a right and ability to supervise the direct infringer, even if the defendant initially lacks knowledge of the infringement.” Grokster, 545 U.S. at 931 n.9.
Id. at 1138, Ftnt 19.
As for copyright coverage of databases, the 11th Circuit “held that a compiler’s selection, arrangement and coordination, if original, are the only protectable elements of a factual compilation.” Id. at 1141 (quoting BellSouth Adver. & Publ’g Corp. v. Donnelley Info. Publ’g, Inc., 999 F.2d 1436, 1440 (11th Cir. 1993)(en banc) and citing Feist, 499 U.S. at 348, 111 S. Ct. at 1289)). As for selection of data, the appeals court distinguished between “a creatively original selection of facts” and “the creative means used to discover those facts.” Bell South, 999 F. 2d at 1441. “While the former is protected as an original work of authorship, the latter, i.e., methods used to discover facts and/or collect data, are not. … [and] ‘an alphabetized list of business types, with individual businesses listed in alphabetical order under the applicable headings,’ … [is] not an original coordination and arrangement of facts.” BUC, 489 F. 3d at 1141, quoting Bell South, 999 F. 2d at 1442.
After reviewing the trial evidence, the 11th Circuit found that prior to BUC’s yacht-MLS, there was no standard headers or field identifiers for MLS yacht listings. Also, IYC was not foreclosed from using industry terms like “galley” or “hull.” IYC argued, unsuccessfully, that the idea-merger doctrine precludes copyright protection over BUC’s selection of yacht headers-field identifiers because BUC had expressed the idea of organizing a vessel listing by using standard industry terms. However, the Appeals Court found that many brokers used different headings and organized information in different formats for their vessel listings.
As for the jury instruction, “identicality” vs. “substantial similarity,” the 11th Circuit did not extend the holding in the computer program case of MiTek Holdings, Inc. v. Arce Eng’g Co., 89 F.3d 1548, 1558 n.24 (11th Cir. 1996). See also, Apple Computer v. Microsoft, 35 F.3d 1435 (9th Cir. 1994). In Mitek, the 11th Circuit held that “virtual identicality:”
applies to “claims of compilation copyright infringement of nonliteral elements of a computer program.” MiTek involved a copyright infringement claim for the “selection, coordination, and arrangement embodied in [a computer] program and its user interfaces.” We recognized that “a user interface, [such as] a screen display (itself an audiovisual work), may be entitled to copyright protection as a compilation.” Ultimately, we affirmed the district court’s decision that “virtual identicality” between the two implicated programs was lacking because, in part, one program “depict[ed] its commands as icons in the Windows environment” while the other program displayed them as words. We note that MiTek, while not elaborating on the basis for its adoption of the “virtual identicality” standard, did make clear that its application of the standard was specific to the type of compilation copyright claim in that case, i.e., “claims of compilation copyright infringement of nonliteral elements of a computer program.”
Buc at 1149-50 (citing Mitek at 1558 – 59, and quoting MiTek Holdings, Inc. v. Arce Eng’g Co., 864 F. Supp. 1568, 1584 (S. D. Fla. 1994)).
The 11th Circuit said that BUC was not claiming infringement in the selection or arrangement embodied in a screen display or some other nonliteral element of its computer program. Nor was BUC contending that IYC had copied the overall appearance of the BUC program as viewed on a computer screen. BUC presented the jury with claims for the infringement of the selection, order and arrangement of a factual compilation, not the nonliteral elements of a computer program. “Substantial similarity” was, therefore, the appropriate standard.
BUC also confirms that facts are not subject to copyright protection, only that selection, arrangement and coordination, if original, are protectable elements of a factual compilation. BUC at 1141; see also BellSouth, 999 F.2d at 1440 and Feist, 499 U.S. at 348, 111 S. Ct. at 1289.
