Copyright, Data and Creativity in the Digital Age

A Journey through Feist

Julian Warner

• Publisher: Routledge
• Year: 2020
• ISBN:
  9781000167603
• Edition: 1
• Topic: Law
• Subtopic: Law Theory & Practice
• Index: Law

The Supreme Court of the United States in Feist v. Rural (1991) required that databases must have a minimal degree of creativity for copyright. The judgment was highly significant and the subsequent period is understood as the post-Feist era. It has been globally influential. However, the decision is extremely complex and remains unsatisfactorily interpreted. In particular, it has been impossible to illuminate the creativity requirement.

The book gives an account of the decision's conceptual structure, focusing on its full delineation of the opposite to creativity. In a radical and unprecedented innovation, it is correlated with an automatic computational process. Creativity itself is understood as non-computational or directly human activity concerned with meaning. Determining the presence of creativity is reduced to a four-stage test. This work then has acute practical current relevance to property in data in the digital age; it will also be of theoretical interest to, and is aimed at, researchers in, practitioners, and students of intellectual property worldwide.

1 Introduction

The convergence of the twain

Introduction

The Supreme Court of the United States denied copyright protection to telephone white pages, and thereby to similar compilations or collections of data, for their lack of creativity in 1991 in Feist Publications, Inc. v. Rural Tel. Service Co. (Feist Publications, Inc. v. Rural Tel. Service Co., Inc., 1991). The judgment specified that compilations or databases, and other works, must have a minimal degree of creativity to be copyrightable. The decision has been widely regarded as the most significant of modern intellectual property decisions for the information or digital age (Goldstein, 1991). Creativity is not directly elucidated and remains poorly understood. Creativity was described, as recently as 2012, as ‘the sine qua non and the je ne sais quoi of copyright’ (Bridy, 2012, p. 9) [the without which nothing and the I know not what of copyright]. No satisfactory reading of the decision has been made, in the nearly 30 years since it was issued. Establishing an understanding of creativity remains a live issue and is a compelling task.

In the introduction here we progressively address the decision, including its relation to the digital age, the reading of the decision to be developed, the approach on which that reading rests, and the structure of the subsequent work, including the use of narrative motifs. Finally, we conclude on the harmony the work enables for the convergence of copyright with the digital age.

The decision

For the decision, we distinguish its significance, diffusion, continuing status as law and the implications of this, the circumstances and progress of the case, and the decision’s relation to the digital age.

Significance

The decision dismissed ‘sweat of the brow’ or ‘industrious collection’ (Feist Publications, Inc. v. Rural Tel. Service Co., Inc., p. 352) as the criterion for intellectual property, insisting on creativity and originality as the constitutional requirement for copyright. The dismissal of industrious collection places it in tension with the often dominant labor theory of copyright, which had demonstrated its utility by its long endurance and wide diffusion for over 200 years in the United States and in other jurisdictions (Ager v. Peninsula, 1884; Breyer, 1970, pp. 284–285), whatever its imperfections (Breyer, 1970).

Elevating creativity to a constitutional requirement for copyright (Narayanan, 1993–1994, pp. 341, 350; Raskind, 1991–1992, pp. 331–334; VerSteeg, 1995, p. 586) and the dismissal of industrious collection was received as both highly significant and extremely disruptive. The Supreme Court was characterized as having ‘dropped a bomb’ on United States copyright law by the then Register of Copyrights, in testimony before the House of Representatives (Copyright Act Hearing, 1991; also quoted in Samuelson, 1992, p. 27; Polivy, 1997–1998, p. 782). In an analogous contemporaneous image – ‘[l]ike the proverbial handful of pebbles dropped in a pond’ – the Feist decision was described as having ‘the potential over time to generate a series of widening, if not necessarily concentric, consequences for the basic doctrines of copyright law’ (Raskind, 1991–1992, p. 331).

The disruption and discontinuity – ‘dropp[ing] a bomb’, the potential for multiple interpretations – ‘not necessarily concentric [,] consequences’, and the extensive diffusion – ‘widening … consequences’, vividly anticipated by commentators immediately subsequent to the decision have since been amply fulfilled. The discontinuity implied by the term ‘post’ is matched by the significance of the discontinuity and of Feist itself, understood as the ‘now-governing case’ (Nimmer and Nimmer, 1978/2020, 13.01n.5.1). Disruption and discontinuity for subsequent copyright practice is confirmed by current references to the ‘post-Feist era’ in the major treatise by Nimmer and Nimmer (1978/2020, 1.01[B][2][b]n.48).

The absence of concentricity from the consequences of the decision for copyright law is revealed in the contrasting interpretations developed by different circuits (Polivy, 1997–1998). Commentaries also attribute an intention to the Supreme Court of encouraging a unified interpretation of property in data by the lower courts, although any such intention has been frustrated rather than fulfilled by the diversity of subsequent interpretations.

Diffusion

The diffusion of the decision includes its extension to comprehend material not prepared as data for compilations. For instance, a decision, concerned with the use of players’ statistics by newspapers for fantasy baseball, took Feist as controlling for considerations of copyright preemption. Baseball players’ names and playing records were considered to be analogous to the ‘names, towns, and telephone numbers in a phone book’ (C.B.C. Distribution, 2006, p. 73). Crucially, the decision, in a direct citation to Feist, held that statistics of players’ performance lacked the ‘sine qua non of copyright – originality’, and refused to allow intellectual property to inhere such data (pp. 70, 73).

Other jurisdictions have also encountered similar issues and may have been indirectly influenced by the Feist judgment. The European Community Database Directive (Narayan, 1993–1994, pp. 469–472), sui generis in the sense that it is not directly part of copyright legislation, was introduced (Gupta, 2017). Such developments can also be understood as part of the process of technological diffusion. At the same time, the reaction in the sphere of legal consciousness is different and indicates possibilities for difference within a dynamic with extensive commonalities. A commonality in outcome has been observed.

Congress’ record in meeting the challenge of the new dissemination technologies invites comparison with the high protectionist model of the continental author’s rights traditions…. the practical results on both continents have been roughly the same.

(Goldstein, 1991, p. 115)

In this instance, protection for compilations can be integrated within copyright or as sui generis provision, on the European Union model. The standard for the lack of copyrightability in the decision has begun to diffuse globally (Gervais, 2002; Judge and Gervais, 2010).

The increasing number of citations to the case, and its global impact, imply that its significance has increased, rather than diminished, over time. In the period from 1991 to 2020, paralleling the diffusion of the judgment, the internet has grown, databases have expanded greatly in size and number, and search engines have become increasingly prominent. The definitive removal of restrictions on the development of large collections of data by the decision may have partly enabled this development. The global diffusion of the judgment further implies an international need for an authoritative reading of the decision.

Status as law

The decision remains law – ‘Like it or not, Feist is the law in the U.S.’ (Resnik, 2003, p. 309) – without the prospect of change. The Court itself has not revisited the decision, despite opportunities to do so. The most that can be read from the absence of revisiting is that the Court is not sufficiently dissatisfied with the decision or with its effects, to expend its time in reviewing it. Constitutionally, Congress, as the legislature, cannot immediately override the Supreme Court (Fallon, 2004; Nimmer and Nimmer, 1978/ 2020, §1.01[B][2][a]). Although there have been a number of proposals for sui generis legislation to protect property for data in databases, these have not been passed into law. Sui generis proposals for legislation have not insignificant deliberation costs and, if enacted, can reduce the consistency and increase the complexity of the law (Trosow, 2004–2005). The status of the decision as current law, and the recognition of the costs of change, must then be accepted, as the founding basis for our considerations.

Circumstances and progress of the case

Rural Telephone Service Company were ‘a certified public utility providing telephone service to several communities in Kansas’ and were required to publish a directory of their subscribers, ‘[p]ursuant to state regulation’. A ‘typical telephone directory, consisting of white pages and yellow pages’ was published. Feist Publications, Inc., by contrast, was ‘a publishing company that specialize[d] in area-wide telephone directories covering a much larger geographic range than directories such as Rural’s’ (Feist, 1991a, Syllabus).

The copying activities which gave rise to the Supreme Court case of 1991 can be traced to 1978. When Rural refused to license its white pages listings to Feist for a directory covering 11 different telephone service areas, Feist extracted the listings it needed from Rural’s directory without Rural’s consent. Although Feist altered many of Rural’s listings, several were identical to listings in Rural’s white pages (Feist, 1991a, Syllabus).

Only Rural, of the 11 telephone service providers covered by the Feist directory, had refused to license their listings to Feist. Rural’s refusal stemmed from an unlawful purpose ‘to extend its monopoly in telephone service to a monopoly in yellow pages advertising’ (Feist, 1991a, p. 343). However, Rural’s refusal to license and possibly unlawful purpose, to create a monopoly, are deliberately excluded from consideration in the oral proceedings of the Supreme Court – ‘Mr. Caplinger, before you sit down, just as a matter of curiosity, what is the status of the antitrust aspect of this case?’ (Feist, 1991b, p. 48). They can then be acknowledged but continue to be placed out of scope, for our subsequent considerations. Feist’s use of license agreements may imply that they had initially held the common understanding that publishers of directories had property in their listings. Feist also conducted some independent research to add street addresses to entries.

The dispute was partly prompted by a transition in the production methods used by Feist for selecting and arranging data for their collective directories. For the alphabetization of data, Feist had further supplemented human labor by automated computer-based processes by 1983 (Feist, 1990a, pp. 45, 46; Feist, 1991b, pp. 25, 53; Rural, 1990, pp. 29–33, 36–38, 45–57), reflecting concurrent transitions in information technologies. Feist used human labor to keyboard data copied from Rural’s white pages directory, and sent files to a vendor for production of the collective printed directory, which would have included the integration of previously separate alphabetical arrangements. Interrogation of computer-held data, and the imposition of different orderings on coordinated units as part of the search process, was not yet fully part of the commercial practice for such directories.

The progress of the case can be traced. The District Court ‘granted summary judgment to Rural, explaining that “[c]ourts have consistently held that telephone directories are copyrightable” and citing a string of lower court decisions’. The Court of Appeals for the Tenth Circuit affirmed ‘for substantially the reasons given by the district court’, in an unpublished opinion (Feist, 1991a, Syllabus). The Supreme Court selects cases offered for appeal on the basis of their wide potential significance.

We granted certiorari, 498 U.S. 808 (1990), to determine whether the copyright in Rural’s directory protects the names, towns, and telephone numbers copied by Feist.

(Feist Publications, Inc. v. Rural Tel. Service Co., Inc., 1991, p. 344)

The Supreme Court reversed the judgment of the Court of Appeals, breaking with an apparently settled and not fully questioned consensus.

Cultural and legal aspects distinctive of the United States can be discerned. Provision of telephone services is by region, with no national provider. Feist’s directory aggregated together listings from different telephone service providers, in order to facilitate communication between and to their subscribers. There is also a strong commitment to public information embodied in the judgment.

The role of information technology in prompting the dispute implies some relation to the digital age.

Feist and the digital age

The decision has been widely regarded as the most significant of modern intellectual property cases for the digital or information age, for the current epoch.

Just as the Supreme Court’s 1879 decision in Baker v. Selden, describing the respective spheres of copyright and patent law, was a defining event for copyright in the industrial age, so Feist is a defining event for copyright in the information age.

(Goldstein, 1991, p. 118)

The view of Feist as ‘a defining event for copyright … in the information age’ (Goldstein, 1991, p. 118), then, intimates a significant relation of the case to contemporaneous information developments, but does not fully explore the nature of that relation. The comment cites Baker v. Selden for its significance to the distinction of copyright from patent but does not attend to the late-nineteenth-century information technologies – books for entering accounts and economizing on the direct human labor involved – in the case. A limited historical awareness with regard to information technology is, then, discernible. The subsequent critical understanding of the judgment then shows a strong consensus that it is the crucial judgment for copyright in the digital age. The precise significance of the judgment for the digital age remains unarticulated, although there has been some further specificity.

In particular, developments in information technology, including computational technologies, wer...

Table of contents

• Cover
• Half Title
• Series Page
• Title Page
• Copyright Page
• Dedication
• Table of Contents
• List of illustrations
• Acknowledgments
• 1. Introduction: the convergence of the twain
• 2. Critiques of the decision
• 3. Creativity in the decision: into the briar patch
• 4. Creativity utterly lacking: through the Wicket Gate
• 5. Correlation: the key to Doubting Castle
• 6. Creativity: out of the labyrinth
• 7. A minimal degree of creativity
• 8. Originality: Odysseus
• 9. Qualities of reading
• 10. Conclusion: the interaction of the twain
• Index