Seminar 4 Sweat of the Brow Doctrine

Principal Issue  Whether “originality” is satisfied by the labour and expense in the “industrious collection” of the factual information (“sweat of the brow”) as distinct from intellectual effort or “creative spark” in terms of selection or arrangement?  The sweat of the brow approach argues that the skill and effort expended by an author of a fact- based work merits copyright protection.

Feist Publications Inc. v Rural Telephone Service Co (1991) 20 IPR 129 Rural was a certified public utility It provided phone services to several communities in north-west Kansas. It was obliged to publish annually an updated phone directory consisting of white and yellow pages. Rural obtained the data from subscribers, who had to provide their particulars to obtain phone services Rural distributed its directory free of charge to subscribers but derived revenue from selling yellow pages advertisements.

Facts (Contd) Feist was a publishing company specialising in area-wide phone directories, covering much larger areas. Its directory covered 11 different phone service areas and contained nearly 47,000 white pages listings, compared with Rural 7,700 listings. Since Feist lacked independent access to subscriber information, it sought permission from the 11 phone companies to use their white pages listings. All agreed except Rural. Feist nonetheless used Rural’s white pages listings, taking 1309 names, towns and phone numbers without Rural’s consent. Feist’s directory was also distributed free of charge, but both competed vigorously for yellow pages advertisements.

Litigation Rural successfully sued for copyright infringement in the District Court CA of the Tenth Circuit affirmed. SC, in an opinion delivered by O’Connor J, unanimously reversed the CA Held: the selection, coordination and arrangement of Rural’s white pages did not satisfy the minimum standards of originality for copyright protection in the US. Issue: Did copyright subsist in the telephone directory? US Supreme Court said: “No.”

SC rejected the sweat of the brow approach to originality 1. The phone directory was a compilation of facts. 2.Factual compilations may be copyrightable if the author’s selection and arrangement reflect sufficient originality. 3.Originality required some minimal degree of creativity 4.Copyright protects only the author’s original expression, not the underlying facts or ideas. 5.The sweat of the brow doctrine flouts basic copyright principles by protecting underlying facts. 6.Compilations of facts are only protected to the extent those facts are “selected, coordinated or arranged” in a way resulting in an original work of authorship. 7.The material copied by Feist was not sufficiently original to qualify for copyright protection.

O’Connor J: “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 …. 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.”

Constitutional requirement  Art 1, #8, cl 8, US Constitution authorises Congress to “secure for limited times to Authors … the exclusive right to their respective writings.”  For a particular work to be classified as the writings of an author it has to be “original” and this requires independent creation plus a modicum of creativity.  It was this “bedrock principle of copyright” that mandated the law’s seemingly disparate treatment of facts and factual compilation. “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.”

Criticism of the sweat of the brow doctrine  O’Connor J observed that the doctrine had been wrongly embraced by a number of US courts  The doctrine’s most glaring flaw was that it extended copyright in a compilation beyond selection and arrangement to the facts themselves “The ‘sweat of the brow’ courts had eschewed the most fundamental axiom of copyright law – that no one may copyright facts or ideas.”  The raw data were uncopyrightable facts.  Rural’s selection and arrangement of the raw data were so mechanical or routine as to require no creativity whatsoever.  Rural had merely taken the data provided by subscribers and listed their names in alphabetical order.

Key Publications, Inc v Chinatown Today Publishing Enterprises, Inc 945 F 2d 509 (2d Cir 1991)  P’s collection of business cards of interest to the Chinese- American community in NY  Publication of a “Chinese Business Guide & Directory” after sorting them out with businesses, their names, addresses and phone numbers listed in its Yellow Pages in their various categories  D also published a Yellow Pages Directory with 75% of P’s listings appearing in it  Held, P had copyright because there was evidence of thought and creativity in the selection process  P had “selected out” businesses not of interest to Chinese-Americans and businesses soon to close  Headings (business categories) were original rather than mechanical groupings  Arrangement was in no sense mechanical and involved creativity.

“Sweat of the brow” suffices to attract copyright protection in Australia  Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 55 IPR 1 (Full Federal Court)  Originality requirement is not that stringent  Intellectual effort or creative spark not essential  Labour and expense in industrious compilations was sufficient

Conclusion Generally, common law tends to confer copyright protection on any work on which substantial skill or labour has been expended. However, the US Supreme Court rejected the “sweat of the brow” test for copyright in compilations. If the creative spark is utterly lacking or so trivial as to be virtually non-existent, then a valid copyright cannot be sustained. Civil law systems often impose a higher test. The challenge for copyright law is to continue to reward originality, but not at the expense of protecting purely factual material and inhibiting the development of further technological innovations.