PUBLISH

IN THE UNITED STATES COURT OF APPEALS

FOR THE ELEVENTH CIRCUIT

_______________

No. 93-8474

_______________

D. C. Docket No. 1:90-CV-1654-JOF

WARREN PUBLISHING, INC.,

Plaintiff,

Counter-Defendant,

Appellee,

versus

MICRODOS DATA CORP.;

ROBERT PAYNE,

Defendants,

Counter-Claimants,

Appellants.

______________________________

Appeal from the United States District Court

for the Northern District of Georgia ______________________________

 (June 10, 1997)

Before HATCHETT, Chief Judge, TJOFLAT, ANDERSON, EDMONDSON, COX,

BIRCH, DUBINA, BLACK, CARNES, and BARKETT, Circuit Judges, and

GODBOLD* and KRAVITCH**, Senior Circuit Judges.

*Senior U.S. Circuit Judge John C. Godbold elected to participate

in this decision pursuant to 28 U.S.C. § 46(c).

**Senior U.S. Circuit Judge Phyllis A. Kravitch heard oral argument

in this case on February 13, 1996 as a judge on active status. She

took senior status on December 31, 1996 and has elected to

participate in this decision pursuant to 28 U.S.C. § 46(c).
 The district court granted Warren’s motion for “permanent” injunction. Warren's

claim for unfair competition, as well as Microdos's counterclaims for defamation and trade

disparagement, interference with contractual relations, and violation of Sherman Act by

attempts to monopolize, however, all have yet to be addressed by the district court. No

final judgment was entered under 28 U.S.C. § 1291 because the court has not yet

disposed of all the claims in the case and did not make its injunction a final judgment

pursuant to Fed. R. Civ. P. 54(b). Accordingly, the order before us is an interlocutory

order for an injunction that is subject to review under 28 U.S.C. § 1292(a)(1). 

2

BIRCH, Circuit Judge:

This is an appeal from the district court's

entry of a preliminary injunction1

 enjoining a

putative infringer from infringing the compilation

copyright of a publisher of a cable television

factbook. As a predicate for the injunction, the

district court granted partial summary judgment

for the copyright holder, finding that the

copyright holder's system of selecting the

names of communities under which to list the

data in its factbook was sufficiently creative and

original to warrant copyright protection. Based

on Feist Publications, Inc. v. Rural Telephone

Service Co., 499 U.S. 340, 111 S. Ct. 1282,

113 L. Ed. 2d 358 (1991), as well as our

application of Feist in BellSouth Advertising &
 We note that the district court, in ruling on the summary judgment motions, did

not have the benefit of our en banc opinion in BellSouth. At the time of the district

court's order, the panel opinion in BellSouth had not yet been vacated by our grant of

rehearing en banc, and thus the district court relied in part on the panel opinion.

BellSouth Advertising & Publishing Corp. v. Donnelley Info. Publishing, Inc., 933 F.2d

952 (11th Cir. 1991), vacated and reh'g en banc granted, 977 F.2d 1435

(11th Cir. 1992), and on reh'g, 999 F.2d 1436 (11th Cir. 1993) (en banc), cert. denied, 510 U.S. 1101, 114 S. Ct. 943, 127 L. Ed. 2d 232 (1994).

3

Publishing Corp. v. Donnelley Information

Publishing, Inc., 999 F. 2d 1436 (11th Cir.

1993) (en banc),2

 cert. denied, 510 U.S. 1101,

114 S. Ct. 943, 127 L. Ed. 2d 232 (1994), we

VACATE the injunction and REMAND for

further proceedings.

I. BACKGROUND

Warren Publishing, Inc. ("Warren"),

compiles and publishes annually a printed

directory called the Television & Cable

Factbook ("Factbook"), which provides

information on cable television systems

throughout the United States. The Factbook

contains two volumes, the "Station" volume and

the "Cable and Services" volume. The focus of
4

this case is the "Cable & Services" volume of

the 1988 edition of the Factbook, and, in

particular, the two sections of this volume

entitled "Directory of Cable Systems" and

"Group Ownership of Cable Systems in the

United States." These sections are comprised

of approximately 1,340 pages of factual data on

8,413 cable systems throughout the country

and their owners. 

The "Directory of Cable Systems" section

contains extensive information on cable

systems, including, inter alia, the name,

address, and telephone number of the cable

system operator, the number of subscribers, the

channels offered, the price of service, and the

types of equipment used. The entries in this

section are arranged state by state in

alphabetical order, and, within each state, all of

the communities receiving cable television

service are listed alphabetically. The "Group
5

Ownership" section contains listings of selected

information on "all persons or companies which

have an interest in 2 or more systems or

franchises." Factbook, Cable and Services

Volume, at B-1301. The persons or entities

listed in the group ownership section are known

as multiple-system operators ("MSOs"), as

contrasted with single-systems operators

("SSOs").

In the "Directory of Cable Systems" section,

the factual data for each cable system is not

printed under the name of each community that

the cable system serves. The reason for this is

that many communities are part of multiplecommunity cable systems, and it would be

duplicative to list the same factual information

under the individual community names for each

community that comprises a multiplecommunity system. Therefore, a determination

is made as to what community is the "principal"
 For instance, in the Georgia section of the book, Atlanta is designated as a principal

community, with the factual data for the cable system serving Atlanta and the surrounding

areas listed under the Atlanta heading. There are, however, numerous other communities

served by the same cable system that serves Atlanta; under the names of these

communities, it says, "See ATLANTA, GA." The following

communities in north-central Georgia are cross-referenced to Atlanta in the 1988 Factbook:

Alpharetta, Avondale Estates, Clarkston, College Park, Decatur, DeKalb County, East

Point, Lithonia, Pine Lake, Sandy Springs, and Stone Mountain. In addition, Fulton County,

although it has its own separate listing with factual data (since it is served by cable system

different from that which serves Atlanta), also has a cross-reference that states "See also

ATLANTA, GA." We infer from these listings that there are portions of Fulton County that

are served by the cable system listed under the Fulton County heading, and that there are

other portions of Fulton County served by the cable system listed under the Atlanta

heading. The same holds true for DeKalb County, which is cross-referenced to both

Atlanta and Chamblee, Georgia.

6

or "lead" (hereinafter "principal") community

served by a particular cable system, and

Warren prints the data only under the name of

the principal community. Under the entries for

the nonprincipal communities of a multiplecommunity cable system, there is a crossreference to the principal community listing.3

We note that, in many cases, a cable system is

a single-community system, and thus there is

only one possible principal community.

Microdos Data Corp. and Robert Payne

("Microdos") also market a compilation of facts

about cable systems. Robert Payne is the
7

principal officer and shareholder of Microdos.

Microdos's compilation comes in the form of a

computer software package called "Cable

Access." The Cable Access program, like the

Factbook, provides detailed information on both

SSOs and MSOs. The district court described

the format of Cable Access as follows:

The Cable Access software package

is broken into three databases. The first

database provides information on the

individual cable systems. This database

is referred to as "the system database."

The second database provides

information on multiple system

operators and is simply referred to as

"the MSO database." The third

database is a historical database which

provides selected information on the

cable industry from 1965 to the present.

. . .

Defendant's Cable Access software

package comes pre-sorted by state and

city. The customer may rearrange the

data in a format of its choosing. The

customer may construct searches of the

database's information on cable

systems as required to fit its particular

needs, as well as output the data to a

hard copy in various formats, again to fit

the specific needs of the customer.

R4-36-3.
 Warren registered its claim of copyright for the 1988 Factbook in July of 1988, and,

in November of that year, the United States Copyright Office issued Warren a Certificate

of Copyright Registration. Moreover, Warren annually registers its claim

of copyright in the newest edition of the Factbook, and has been doing so since it began

publishing the Factbook. It is not disputed that the Factbook as a whole is a factual

compilation that is entitled to copyright protection. What is in dispute is whether Warren's

method of presentation of facts under the principal community

headings, with cross-references to the other communities served by that MSO, is entitled

to copyright protection. As the Supreme Court held in Feist, the only protectable elements

of a factual compilation are a compiler's selection, arrangement, or coordination, and these

elements are protectable only if they possess the requisite originality. Feist, 499 U.S. at

348, 111 S. Ct. at 1289, 113 L. Ed. 2d 358; see also Bell South, 999 F.2d at 1440.

8

There is no dispute that Warren's Factbook

predates the Cable Access program. Warren

has been publishing cable television information

since 1948, whereas Microdos began marketing

Cable Access in 1989. Shortly after Warren

became aware of the existence of the Cable

Access software, it notified Microdos that it

believed that the Cable Access program

infringed its copyright in the Factbook.4

 In 1989,

Microdos ceased marketing the original version

of Cable Access, and, after some delay, began

marketing a second version of Cable Access.

Subsequently, a third and fourth version of

Cable Access were marketed. 
 In its complaint, Warren does not allege that the Cable Access program as a whole

infringes its copyright in the Factbook. Rather, it is only the "system database" and the

"MSO database" of the Cable Access software that Warren alleges infringes its compilation

copyright.

9

In July of 1990, Warren filed suit against

Microdos, alleging copyright infringement and

unfair competition.5 Warren alleged that all four

versions of Cable Access infringed upon its

compilation copyright in the 1988 Factbook.

Microdos counterclaimed for defamation and

trade disparagement, tortious interference with

contractual relations, and violations of Section

2 of the Sherman Act, based on Warren's

alleged attempt to monopolize. Warren

contended that Microdos infringed its

compilation copyright in the Factbook in three

areas: (1) the communities covered/principal

community system, (2) the data fields, and (3)

the data field entries. Following discovery,

Warren and Microdos each moved for partial

summary judgment on these three copyright
 The district court found that Warren's selection of its data fields was not sufficiently

original to warrant copyright protection. As for the Factbook's coordination and

arrangement of the data fields, the district court found that this was

sufficiently creative and original to warrant copyright protection, but that Microdos's

coordination and arrangement was not substantially similar to that of the Factbook.

Therefore, the district court granted Microdos's motion for summary judgment on the data

fields infringement issue, and denied Warren's cross-motion for summary judgment on the

same. 

 Thus, the district court granted Microdos's motion for summary judgment on the

data field entries infringement issue and denied Warren's cross-motion for summary

judgment on that issue. 

10

infringement issues. With respect to the data

fields issue, the district court found that

Microdos had not infringed Warren's data field

format.6 With respect to the data field entries

issue, the district court found that these entries

were uncopyrightable facts, and therefore

Warren's "sweat of the brow" argument on this

issue could not prevail in light of the Supreme

Court's Feist decision.7 Accordingly, the district

court entered partial summary judgment for

Microdos on these two issues.

The district court, however, reached a

different conclusion on the communities

covered issue. It found that the principal
 The parties stipulated to the use of Illinois as a test or representative state for the

purpose of the substantial similarity analysis. Counsel for both sides agreed that the data

records produced during discovery were most complete as to Illinois, and thus Illinois

provided a common factual ground for the parties to

present their respective arguments. In addition, they agreed that the Illinois section

of the Factbook fairly represented the factual circumstances throughout the Factbook.

Given the voluminous listings in the Factbook, we think that it was wise for the parties to

limit the substantial similarity analysis to one representative state and have no doubt that

limiting the analysis to Illinois has in no way restricted the parties' ability to present all of the

legal issues relevant to the infringement issue.

11

community system utilized by Warren in

presenting the data on cable systems in its

Factbook was "sufficiently creative and original

to be copyrightable." R4-36-11 (footnote

omitted). The district court then analyzed the

selection of communities employed by Microdos

and found it to be "substantially similar" to that

of Warren.8 Id. at 12-17. Based on this finding,

and its conclusion that Microdos failed to prove

that it obtained its information from a source

independent of the Factbook, the district court

denied Microdos's motion for summary

judgment on the principal community system

and granted Warren's cross-motion on that
 Microdos filed a motion for reconsideration of the district court's grant of summary

judgment in favor of Warren on the principal community system issue. The district court

denied this motion and granted Warren's motion for permanent injunction and

impoundment of the infringing materials. Microdos permanently was enjoined from violating

Warren's copyright in the Factbook "through the use, copying, distribution or selling of any

version of [their] Cable Access products." R4-42-4. In addition, Microdos was directed to

turn over to the clerk of the district court "all copies of and materials used to make any

version of [their] Cable Access database products." Id. Microdos complied with this order,

turning over in excess of 20,000 pages of documents and research materials used to make

its Cable Access product.

 Because no final judgment was entered by the district court, the injunction is by

law a preliminary injunction. See supra note 1.

 The judgment of the district court was affirmed by a panel of this court, but that

panel decision was subsequently vacated by a grant of rehearing en banc. Warren

Publishing, Inc. v. Microdos Data Corp., 52 F.3d 950 (11th Cir.), vacated and reh'g en banc

granted, 67 F.3d 276 (11th Cir. 1995).

12

issue.9 The district court subsequently denied

Microdos’s motion for reconsideration of the

order and granted Warren’s motion for a

“permanent” injunction.10 The court “enjoined

[Microdos] from violating [Warren’s] copyright of

the Factbook through the use, copying,

distribution or selling of any version of

[Microdos’s] Cable Access products.” R6-42-4.

Microdos appeals the interlocutory order

granting the injunction.11 
13

II. DISCUSSION

Microdos argues that the district court

improperly granted Warren’s motion for an

injunction based on an erroneous ruling of law.

As a predicate for injunctive relief, the district

court granted Warren’s motion for partial

summary judgment on the principal community

system issue. Microdos contends that the

district court erred, as a matter of law, in finding

the principal community system protectable

under copyright law.

A. Review of Relevant Statutory Provisions and Case law

Because copyright law is principally

statutory, we begin our analysis with a review of

the pertinent statutory provisions. In this case,

we are dealing with a compilation, which the

Copyright Act of 1976 (the "Act") defines as "a

work formed by the collection and assembling

of preexisting materials or of data that are
 The phrase “as a whole” is highly relevant to our analysis of the originality and

creativity of Warren Publishing’s selection. “Evaluation of the originality [and creativity] of

selection should focus on the selection as a whole.” Jane C. Ginsburg, No “Sweat”?

Copyright and Other Protection of Works of Information After Feist v. Rural Telephone, 92

Col. L. R. 338, 348 (1992). The dissent takes the position that original selection is present

in Warren Publishing’s selection of “principal communities” as a means of organizing the

data although the data included in the compilation represent the entire universe of cable

television systems. The dissent’s interpretation

ignores the cross-referencing to all cable television systems in the compilation and, more

importantly, fails to give meaning to the statutory phrase “as a whole.”

14

selected, coordinated, or arranged in such a

way that the resulting work as a whole

constitutes an original work of authorship."12 17

U.S.C. § 101 (emphasis added). Section 102 of

the Act provides that "[c]opyright protection

subsists, in accordance with this title, in original

works of authorship fixed in any tangible

medium of expression, now known or later

developed, from which they can be perceived,

reproduced, or otherwise communicated, either

directly or with the aid of a machine or device."

17 U.S.C. § 102(a) (emphasis added). As a

limiting principle, the Act states that "[i]n no

case does copyright protection for an original

work of authorship extend to any idea,
 The dissent takes exception to the characterization of section 102(b) as a “limiting

principle.” Dissent at 23. The dissent attempts to support this argument by making the

unarguable points that section 102(b) is a codification of the idea/expression dichotomy and

that use of the term “idea, procedure, process, system, method of operation, concept,

principle, or discovery” to characterize expression does not itself preclude

copyrightability. Even given these unarguable points, Section 102(b), nonetheless, is

a limiting principle and is "universally understood to prohibit any copyright in facts."

Feist, 499 U.S. at 356, 111 S. Ct. at

1293, 113 L. Ed. 2d 358. Of course, section 102(b) does more than prohibit facts from

being copyrighted; it emphasizes that copyright protection does not extend to ideas

procedures, processes, systems, methods of operation, concepts, principles, or

discoveries. Thus, if the expression is characterized as a “system,” for example, it is not

copyrightable if the characterization is accurate.

15

procedure, process, system, method of

operation, concept, principle, or discovery,

regardless of the form in which it is described,

explained, illustrated, or embodied in such

work." 17 U.S.C. § 102(b).13

The Supreme Court, in its most recent

decision focusing on compilation copyrights,

noted that "[t]he sine qua non of copyright is

originality." Feist, 499 U.S. at 345, 111 S. Ct. at

1287, 113 L. Ed. 2d 358. The Court

emphasized that originality is a constitutional

requirement, noting that the Constitution

"authorizes Congress to 'secur[e] for limited

times to Authors . . . the exclusive Right to their
 The terms "authors" and "writings" as used in the Constitution have been interpreted

definitively by the Supreme Court to "presuppose a degree of originality." Feist, 499 U.S.

at 346, 111 S. Ct. at 1288, 113 L. Ed. 2d 358.

16

respective Writings.'" Id. at 346, 111 S. Ct. at

1288, 113 L. Ed. 2d 358 (quoting U.S. Const.

art. I, § 8, cl. 8).14 The Court also admonished

that: 

Facts, whether alone or as part of a

compilation, are not original and

therefore may not be copyrighted. A

factual compilation is eligible for

copyright if it features an original

selection or arrangement of facts, but

the copyright is limited to the particular

selection or arrangement. In no event

may copyright extend to the facts

themselves.

Id. at 350, 111 S. Ct. at 1290, 113 L. Ed. 2d 358

(emphasis added).

Thus, the compiler's choices as to selection,

coordination, or arrangement are the only

portions of the compilation that arguably are

even entitled to copyright protection. As the

Feist Court noted, these choices must be made

"independently by the compiler and entail a
 The Supreme Court further clarified that “a minimal degree of creativity” requires

“more than a de minimis quantum.” Feist, 499 U. S. at 363, 111 S. Ct. at 1297, 113 L.

Ed. 2d 358.

 There are three types of work that are entitled to copyright protection -- creative,

derivative, and compiled. Copyrights in these three distinct works are known as creative,

derivative, and compilation copyrights. An example of a creative work is a novel. An

example of a derivative work is a screenplay based on a novel; it is called "derivative"

because it is based on a preexisting work that has been recast, transformed, or adapted.

An example of a compilation is Warren's Factbook. The Act has created a hierarchy in

terms of the protection afforded to these different types of copyrights. A creative work is

entitled to the most protection, followed by a derivative work, and finally by a compilation.

This is why the Feist Court emphasized that the copyright protection in a factual compilation

17

minimal degree of creativity"15 in order to be

entitled to compilation copyright protection. Id.

at 348, 111 S. Ct. at 1289, 113 L. Ed. 2d 358.

The Feist Court further explained:

This protection is subject to an

important limitation. The mere fact that

a work is copyrighted does not mean

that every element of the work may be

protected. Originality remains the sine

qua non of copyright; accordingly,

copyright protection may extend only to

those components of a work that are

original to the author. 

Id. Given these limitations on the scope of

copyright protection in a factual compilation, it

is abundantly clear that "copyright in a factual

compilation is thin." Id. at 349, 111 S. Ct. at

1289, 113 L. Ed. 2d 358.16 Only when one
is "thin." 499 U.S. at 349, 111 S. Ct. at 1289, 113 L. Ed. 2d 358.

 This point is emphasized in section 103(b) of the Act, which states that "[t]he

copyright in a compilation or derivative work extends only to the material contributed by the

author to such work, as distinguished from the preexisting material employed in the work,

and does not imply any exclusive right in the preexisting material." 17 U.S.C. § 103(b).

18

copies the protected selection, coordination, or

arrangement in a factual compilation has one

infringed the compilation copyright; copying of

the factual material contained in the compilation

is not infringement.17

B. The Principal Community System Employed by Warren

To establish its claim of copyright

infringement, Warren must prove "(1) ownership

of a valid copyright, and (2) copying of

constituent elements of the work that are

original." Feist, 499 U.S. at 361, 111 S. Ct. at

1296, 113 L. Ed. 2d 358. The first element is

not at issue here, because Microdos does not

contest that the Factbook, considered as a
 Microdos does strongly challenge, however, the district court's finding that Warren's

system of selection of principal communities is copyrightable.

19

whole, is entitled to copyright protection.18 To

prove the second element, Warren must

demonstrate that Microdos, by taking the

material it copied from the Factbook,

appropriated Warren's original selection,

coordination, or arrangement. See BellSouth,

999 F.2d at 1441.

The district court found that Warren's

coordination and arrangement of the

communities listed in the Factbook was "an

obvious, mechanical, or routine task which

required no creativity," and thus concluded that

"the coordination and arrangement of the

communities selected is not copyrightable."

R4-36-11. That holding is not at issue on

appeal. The district court, however, agreed

with Warren that "the selection of those

communities was creative and protectable
 The test for infringement of copyrighted works is one of "substantial similarity." As

the Second Circuit has noted, the substantial similarity inquiry is "narrowed" when dealing

with a compilation. Key Publications, Inc. v. Chinatown

Today Publishing Enters., Inc., 945 F.2d 509, 514 (2d Cir. 1991). It explained that "the

components of a compilation are generally in the public domain, and a finding of substantial

similarity or even absolute identity as to matters in the public domain will not suffice to

prove infringement." Id. Therefore, "[w]hat must be shown is substantial similarity between

those elements, and only those elements, that provide copyrightability to the allegedly

infringed compilation." Id. (emphasis added).

 The district court found that there was a greater than 90% correlation between the

principal communities in the Illinois section of the Factbook and the communities listed in

the Illinois section of the Cable Access software. The district court compared all four

versions of Cable Access with the Factbook and found the

correlation to range from 91.85% to 94.85%. R4-36-13-14.

20

because Warren uses a unique system in

selecting the communities that will be

represented in the Factbook." Id. This system,

so concluded the district court, was "sufficiently

creative and original to be copyrightable." Id.

(footnote omitted). The district court then

employed "substantial similarity" analysis,19

concluding that Microdos's selection of

communities was substantially similar to that of

Warren and therefore infringed Warren's

compilation copyright.20 Based on this finding,

the district court entered summary judgment for
21

Warren on the principal community selection

issue.

On appeal, the only issue before us is

whether the district court abused its discretion

in granting a preliminary injunction based on an

erroneous ruling on the principal selection

issue. We review the district court's grant of a

preliminary injunction for abuse of discretion.

Zardui-Quintana v. Richard, 768 F.2d 1213,

1216 (11th Cir. 1985). The district court abuses

its discretion when it grants a preliminary

injunction in spite of the movant’s failure to

establish “(1) a substantial likelihood that [the

movant] will ultimately prevail on the merits; (2)

that [the movant] will suffer irreparable injury

unless the injunction issues; (3) that the

threatened injury to the movant outweighs

whatever damage the proposed injunction may

cause the opposing party; and (4) that the

injunction, if issued, would not be adverse to
22

the public interest.” Id. Because we conclude

that Warren failed to establish a substantial

likelihood of success on the merits, we need

not address the additional elements required for

a preliminary injunction. 

 The district court found that "Warren has

developed a system for selecting communities

which is original in the industry. This selection

process represents a part of the format of the

compilation which is copyrightable." R4-36-16

(emphasis added). Since the district court

concluded that Microdos had "substantially

appropriated the copyrightable selection of

communities portion of the format of Warren's

Factbook," it held that "Microdos ha[d] infringed

Warren's copyright in the Factbook." R4-36-30.

The district court was correct in employing

"substantial similarity" analysis once it

concluded that Warren's system for selecting

communities was copyrightable. Where it
 Since the district court erred in finding that Warren's system of selection was

copyrightable, the substantial similarity analysis was unnecessary, for even verbatim

copying of uncopyrightable matters is not infringement. As we noted in BellSouth, in the

case of a factual compilation, the original elements of the compiler's work are compared

with the corresponding elements of the putative infringer's work. 999 F.2d at 1445. In this

case, Warren's system of selecting principal communities is not copyrightable; therefore,

comparing this uncopyrightable selection with Microdos's system of selecting communities

is pointless.

23

erred, however, was in concluding that

Warren's system of selection was copyrightable

in the first place.21

1. Warren's "System" of Selection

Section 102(b) of the Copyright Act

specifically excludes "any idea, procedure,

process, system, method of operation, concept,

principle, or discovery" from copyright

protection "regardless of the form in which it is

described, explained, illustrated, or embodied in

such work." 17 U.S.C. § 102(b) (emphasis

added). Nonetheless, the district court

concluded that Warren's "system" of selecting

communities was original and entitled to

copyright protection. R4-36-16. This
 The dissent is correct in arguing that use of the term “system” does not itself

preclude copyrightability under section 102(b). Rather, because the characterization

is accurate, Warren’s “system” is not copyrightable because it is a system and systems

are excluded from copyright protection under section 102(b).

24

conclusion is contrary to the plain language of

17 U.S.C. § 102(b), and is clearly incorrect.22 If

Warren actually does employ a system to select

the communities to be represented in the book,

then section 102(b) of the Act bars the

protection of such a system.

Even if we were to assume that the district

court incorrectly denominated Warren's

selection of communities as a "system," such

an assumption would not validate the district

court's finding of copyrightability. Warren

contends that it has a unique method of

choosing which communities to include in its

directory, based on its "principal community"

system. Warren defines a "cable system" as an

entity offering subscribers in one or more

communities the same cable services for the
 The district court's finding on this matter is inaccurate. Each community served in

each state is listed separately in the Factbook; the principal community designation

eliminates the need for Warren to reprint duplicative factual information about a cable

system under every community that is part of the multiple-community system. Instead,

under the nonprincipal community headings, it has a cross-reference in order to inform the

reader of the principal community heading for that particular cable system. This directs the

user where to find the factual data for a particular cable system. What the district court

may have been attempting to explain is that in the Factbook, under the principal community

listing, there is included an "also serves" entry, in which the names of all of the nonprincipal

communities served by that multiple-community system are listed. This list identifies all of

the communities that are cross-referenced to the principal community listing.

25

same price. As the district court found, "[t]he

principal community, used to represent the

entire cable system, is then selected by

contacting the cable operator to determine

which community is considered the lead

community within the cable system. Other

communities within the same cable system are

then listed under the principal community, not

independently."23 R4-36-10. The Federal

Communication Commission ("FCC"), unlike

Warren, does not use a principal community

system; rather, it lists individually every

geographical community having cable service.

As a result, if there are five communities served

by one "cable system," Warren would list the
 In many instances, Warren's "system" and the FCC's community list are identical,

for if a "system" only serves one community, then there is only one possible place to list the

data.

26

system's data under the principal community

name, and there would be cross-references

under the listings of the names of the other four

communities. The FCC, on the other hand,

would list the data on all five communities

separately.24

At oral argument, Warren asserted, and the

dissent agrees, that the district court was

correct in finding that Warren is entitled to

copyright protection in its "selection" of

communities, which is based on its putatively

unique definition of a cable system. The

problem with this is that Warren does not

undertake any "selection" in determining what

communities to include in the Factbook.

Warren claims that its system of listing

communities does not include the entire

universe of cable systems, and thus there is
 This is an inaccurate statement. Every community in the Factbook is listed

separately, state by state, in alphabetical order. What is not listed separately under each

community name is the factual data about the cable system serving that particular

community -- this data is listed under the principal community listings only.

27

"selection" involved as to which communities

they include in their Factbook. This assertion,

however, is plainly wrong.

The district court found that the FCC, which

attempts to list individually every community

across the country with a cable system, had

724 communities listed for Illinois. R4-36-12.

Warren, it observed, listed 406 communities

under its principal community concept. Id. It

did note that "[n]umerous additional

communities were listed under the various

principal communities," but stated that they

were not separately listed.25 Id. Given that

Warren did not list all of the communities that

the FCC did, the district court concluded that

Warren did "select" which communities to

include in the Factbook, and thus its selection
28

was copyrightable. In an unintentionally

prescient footnote, however, the district court

noted that :

This is not to say that the selection

of cable systems would be copyrightable

in all cases. Had Warren selected every

cable system listed by the F.C.C., then

there would not be sufficient originality

in the "selection" to warrant

copyrightability.

Id. at 11 n.9. Yet, this is precisely what Warren

did. The district court made the mistake of

comparing the number of principal communities

listed with the number of individual communities

listed by the FCC. Given the way the principal

community system works, however, that is like

comparing apples to oranges. The proper

method is to compare the 724 individual

communities listed by the FCC for Illinois with

the total number of communities listed by

Warren for Illinois; in other words, include not

only the principal communities listed, but also

those that are listed and are cross-referenced
 A likely explanation for this numerical disparity is that Warren lists not only names

of towns, villages, and cities, but also townships and counties. Therefore, this results in a

greater number of listings than the FCC, which seems to list by town, city, or village name

only. These additional listings in the Factbook are cross-referenced to the principal

community for the area, but they are nonetheless

individually listed by Warren, albeit with a one-line entry.

29

to one of the 406 principal communities. Our

count of the total number of communities listed

for Illinois by Warren, both principal and

nonprincipal, is approximately 1,000.

Therefore, Warren seems to have included not

only all that the FCC listed, but also some

others that the FCC did not.26

The Second Circuit has noted that

"[s]election implies the exercise of judgment in

choosing which facts from a given body of data

to include in a compilation." Key Publications,

Inc. v. Chinatown Today Publishing Enters.,

Inc., 945 F.2d 509, 513 (2d Cir. 1991). In Key

Publications, the record indicated that the

compilation copyright holder did not include the

entire relevant universe in her directory; she
30

testified that she chose to exclude certain

businesses based on her belief that they would

not remain open for very long. As the court

noted, "[t]his testimony alone indicates thought

and creativity in the selection of businesses

included in the 1989-90 Key Directory." Id.

Warren, to the contrary, has failed to make

such a showing in this case. It did not exercise

any creativity or judgment in "selecting" cable

systems to include in its Factbook, but rather

included the entire relevant universe known to

it. The only decision that it made was that it

would not list separately information for each

community that was part of a multiplecommunity cable system; in other words, it

decided to make the Factbook commercially

useful. Therefore, it cannot prevail in its claim

that it "selected" which communities to include
 On an alternative ground, Warren's claim of copyright in its selection of communities

does not survive application of the merger doctrine. "Under the merger doctrine,

'expression is not protected in those instances where there is only one or so few ways of

expressing an idea that protection of the expression would effectively accord protection to

the idea itself.'" BellSouth, 999 F.2d at 1442 (quoting Kregos v. Associated Press, 937

F.2d 700, 705 (2d Cir. 1991)). If Warren were given protection in its principal community

system, the concept of cross-referencing would be subsumed in its copyright. The idea of

organizing by principal community yields very few ways, if not only one way, of expressing

the data. Each SSO has only one principal community. Each MSO has one obvious

principal community. For the compilation to be convenient and useful, not repetitive and

onerous, however, the nonprincipal communities in each MSO must be cross-referenced

to the principal community with the data listed only under the principal community. The

people for whom the Factbook and similar products are produced are not interested in

having information repeated under every community served by a multiple-community

system. Consequently, expression of the principal community selection has merged with

the idea, and thus the selection of principal communities is uncopyrightable.

31

in its Factbook.27 The district court erred in

determining that Warren's system of selecting

communities was copyrightable.

2. The Originality Requirement

Even were we to assume that the

presentation of the selection of principal

communities made by Warren was creative and

original and therefore copyrightable, its claim

that it is entitled to protection would

nonetheless fail, because the selection is not its

own, but rather that of the cable operators. The
 The dissent takes several opportunities to describe in substantial detail Warren’s

“acts of selection.” Dissent at 4-7, 14, 17. It should be noted, however, that analysis

of the compiler’s acts of selection is relevant only to determine whether the

compiler exercised any individual judgment that is equivalent to creativity. See

BellSouth, 999 F.2d at 1441. The industriousness of the collection is not relevant to a

determination of copyrightability. Feist, 499 U. S. at 359-60, 111 S. Ct. at 1295, 113 L.

Ed. 2d 358. “The fact that a finding of creativity is subjective often means the court can

apply a ‘sweat’ recognition of the developer’s labor and ignore the creativity

requirement.” Charles Von Simson, Note, Feist or Famine: American Database

Copyright as an Economic Model for the European Union, 20 Brook J. Int’l. L. 729, 768

(1995). The court in this opinion, as in BellSouth, does not succumb to

the urge to allow industrious collection to substitute for creativity.

32

district court found that the principal community

was "selected by contacting the cable operator

to determine which community is considered

the lead community within the cable system."

R4-36-10. As we observed in BellSouth, "these

acts are not acts of authorship, but techniques

for the discovery of facts."28 999 F.2d at 1441.

In BellSouth, a case involving a "yellow

pages" classified business directory, we held

that Donnelley Information Publishing, Inc.

("Donnelley"), "[b]y copying the name, address,

telephone number, business type, and unit of

advertisement purchased for each listing in the

BAPCO [BellSouth Advertising & Publishing
 The dissent questions the wisdom of this court’s en banc decision in BellSouth.

Dissent at 22 n.6. The dissent notes “considerable criticism” of the

opinion and cites a student note to show support for this contention. Dissent at 22 n.6.

Another student note, however, considered the en banc decision to be consistent with

Feist, stating that “[t]he first appellate decision demonstrate[d] the way sympathy for the

effort expended by the compiler will lead some courts to find creativity in anything. The

second appellate decision exemplifie[d] proper application of Feist’s creative selection.”

Von Simson, 20 Brook. J. Int’l L. at 748.

33

Corporation] directory . . . copied no original

element of selection, coordination or

arrangement," and thus Donnelley was entitled

to summary judgment on BAPCO's copyright

infringement claim.29 Id. at 1446. The en banc

court stated that "[w]hile BAPCO may select the

headings that are offered to the subscriber, it is

the subscriber who selects from those

alternatives the headings under which the

subscriber will appear in the directory. The

headings that actually appear in the directory

thus[] do not owe their origin to BAPCO . . . ."

Id. at 1444. In this case, Warren employed a

method similar to that of BAPCO in "selecting"

the principal community heading under which to
 As noted before, in the case of a single-community system, there is only one

community served and therefore only one possible principal community. Thus, no

argument can be made regarding the selection of the principal community in the case

of a single-community system. The record shows that in the Illinois section of the

Factbook, approximately fifty-five percent of the principal communities are singlecommunity systems. For the remaining principal communities, which are all part of

multiple-community systems, Microdos contends that over two-thirds of them are simply

the community in the multiple-community system that, according to FCC records, has

the highest number of subscribers. En Banc Brief of Appellants at 37-38. Warren

cannot make any tenable argument regarding selection in these instances

either, given that their "selection" is nothing more than discovery of facts that are

contained in the publicly-available FCC records.

The dissent seems to argue that creativity exists because the principal

community could be determined in more than one way. Specifically, the cable system

operators could be contacted to identify their principal communities or the principal

community could be determined by external factors, like the number of subscribers.

Dissent at 15-16. The dissent ignores the fact that these methods are likely to identify

the same principal community -- without necessitating any judgment on the part of

Warren. For example, a cable operator is likely to designate its principal community as

the community with the most subscribers.

34

list the data for the multiple-community

systems.30

Lynn Levine, the Director of Market

Research and Data Sales for Warren, stated in

her deposition that Warren determines the

names of the communities served by a cable

system by contacting the operators of the cable

systems and asking them which communities

they serve. Levine dep. at 53. In addition, she

stated that Warren, in gathering data for the

Factbook, relied in "great part" on the
 For a compilation to be creative, and hence copyrightable, the compiler must

exercise individual judgment. Key Publications, 945 F.2d at 513. The dissent makes

much of the fact that Warren was the first to organize a comprehensive directory of

cable systems by principal community rather than by discrete community that

represented the franchising entity. The dissent suggests that Warren newly defined the

industry because the industry originally developed around these franchising entities.

Dissent at 2. The evolution of the industry, however, did not develop around franchising

units but around geographically distinct areas. The Supreme Court in Turner

Broadcasting Systems, Inc. v. F.C.C., ___ U.S.___, 114 S. Ct. 2445, 129 L. Ed. 2d 497

(1994) reviewed the development of the industry: “The earliest cable systems were

built in the late 1940's to bring clear broadcast television

signals to remote or mountainous communities. The purpose was not to replace

broadcast television but to enhance it.” Id. at ___, 114 S. Ct. at 2451, 129 L. Ed. 2d

497. Thus, although acknowledging that cable systems depended on the express

permission of local governing authorities since “[t]he construction of th[e] physical

infrastructure entail[ed,] the use of public right-of way and easements, the Supreme

Court recognized that geography and population, rather than franchising entities,

influenced the location and extent of early cable television systems.

Even if the industry was newly defined, as the dissent contends, when Warren

organized cable systems under principal communities, however, the creative element

is still lacking in Warren’s compilation. The mere discovery of an organizing principle

which is dictated by the market is not sufficient to establish creativity. “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.” Feist, 499

U. S. at 347, 111 S. Ct. at 1288, 113 L. Ed. 2d 358. The same can be said for an

organizing principle like the “principal community.” Thus, even if Warren discovered the

existence of the principal community as an organizing concept, Warren did not create

this organization.

35

questionnaire responses received from the

various cable operators. Id. at 35. These acts

are nothing more than techniques for the

discovery of facts. Simply because Warren

may have been the first to discover and report

a certain fact on cable systems does not

translate these acts of discovery into acts of

creation entitled to copyright protection.31 See
36

Feist, 499 U.S. at 347, 111 S. Ct. at 1288, 113

L. Ed. 2d 358 (distinguishing creation from

discovery). "Just as the Copyright Act does not

protect 'industrious collection,' it affords no

shelter to the resourceful, efficient, or creative

collector." BellSouth, 999 F.2d at 1441.

The record indicates that it is the cable

operators, not Warren, that determine, in the

case of a multiple-community system, the

community name under which to list the factual

data for the entire cable system. Therefore,

Warren cannot prevail in its claim that it

undertakes original selection in employing the

principal community concept. Rather, it has

created an effective system for determining

where the cable operators prefer to have the

data listed. While Warren may have found an

efficient method of gathering this information, it

lacks originality, which is the sine qua non of

copyright. See Feist, 499 U.S. at 345, 111 S.
37

Ct. at 1287, 113 L. Ed. 2d 358. Thus, the

district court erred in finding that Warren's

principal community "system" was sufficiently

creative and original to be entitled to copyright

protection.

III. CONCLUSION

The district court erred in granting Warren a

preliminary injunction based on its erroneous

ruling on the principal community selection

issue. Although the record indicates that

Microdos's choices as to where to list the

factual data on cable systems had an extremely

high correlation with Warren's principal

community listings, Microdos copied no original

selection, coordination, or arrangement of

Warren's factual compilation. Warren thus

failed to show a substantial likelihood of

success on the merits. We therefore VACATE

the preliminary injunction entered by the district
38

court and REMAND for proceedings consistent

with this opinion.

 

GODBOLD, Senior Circuit Judge, dissenting, in

which HATCHETT, Chief Judge, and

BARKETT, Circuit Judge, join:

The district court understood this case. It

held that Warren's compilation of selected data

concerning cable television operations, in the

form of data-reporting units with each unit

named for a principal community within the unit,

was original and creative. Its decision should

be affirmed. 

I. Introductory

The Copyright Clause of the Constitution

provides that Congress has the power to secure

to authors "the exclusive Right to their

respective Writings." U.S. Const. art. I, § 8, cl.
39

8. Therefore originality -- authorship -- is a

constitutional requirement. By 17 U.S.C. § 102

Congress provided for copyright protection to

original works of authorship. 17 U.S.C. § 103

provides that § 102 includes compilations. 17

U.S.C. § 101 defines compilation:

A "compilation" is a work formed by

the collection and assembling of

preexisting materials or of data that are

selected, coordinated, or arranged in

such a way that the resulting work as a

whole constitutes an original work of

authorship.

Thus, originality is also a statutory requirement.

Warren's compilation was held by the

district court to be protected as an original work

of authorship "selected" pursuant to § 101. It is

a work containing data on cable television

operations nationwide, issued annually in book

form, entitled Television and Cable Factbook,

and the volume in question is the 1988 edition.

 It contains collected data selected and
 As the district court succinctly put it,

"how one defines a `cable system' will dictate

the communities selected to represent those

systems [i.e., the principal communities]." Dis

Ct. op. p. 10. 

40

assembled into reporting units each of which

comprises a functional "cable system," which

Warren defines as: "an entity composed as one

or more communities that are offered the same

service by the same cable system owner at the

same price." Each "cable system" bears the

name of a "lead" or "principal" community within

the system. That name identifies the cable

system, and data for the system is presented

under that name.32 To simplify the evidence the

parties have accepted that evidence concerning

cable television operations in the state of Illinois

is representative. 

Understanding Warren's compilation, and

this case, requires one to understand that cable

television service exists by authority of
41

franchises granted by organized governmental

units, usually cities and counties. The district

court found how, prior to Warren's work, the

various compilers of industry data commonly

compiled and arranged information concerning

cable television operations:

Warren Publishing admits that the cable

system information coordinated and

arranged by the various compilers in the

industry is commonly organized

alphabetically by state and then

alphabetically by community within the

states. 

Dis. Ct. op. p. 10. This common form of

organizing and presenting data is not surprising

since franchises to operate sprang from

discrete communities. Moreover, this accords

with Federal Communications Commission

definitions. FCC defines a "cable television

system" as a facility that provides cable service

to subscribers "within a community." 47 C.F.R.

§ 76.5(a). Also, it defines a "cable television

system" as one that "operates . . . within a
42

separate and distinct community." 47 C.F.R.

§ 76.5(dd). Type and extent of service, rates,

commonality of service with other communities,

and sharing of facilities or equipment or staff or

management are not elements of FCC

definitions of cable systems. As the industry

developed innumerable new cable operations

were franchised and activated, some

contiguous to existing franchises, others

disassociated and far distant from previously

franchised communities, some operators with a

single franchise, others with more than one.

Over time cable operations were sold, merged,

expanded in area, mechanical equipment was

shared, and staff and servicing combined or

shared. Geographic areas of service changed.

But the industry norm for selecting and

presenting data remained the community. 

Against this background one must examine

what, in a general sense, a compiler does and,
43

in a specific sense, what Warren as compiler

did. The creator of a compilation responds to a

perceived need for information, and that

response may be a highly creative act but at

this initial stage it is only an idea and clearly not

copyrightable. William S. Strong, Database

Protection After Feist v. Rural Telephone Co.,

42 J. Copyright Soc'y U.S.A. 39, 47 (1994).

Responding to the perceived need the compiler

must choose the facts it wants and devise a

framework for the data to be assembled, which

includes formulating rules and identifying

categories that may be highly selective but are

not necessarily so. Id. Categories desired may

be limited or dictated by their utility or by the

marketplace and hence involve no originality, or

they may be original to the compiler. It is at this

identification/formulation of categories stage

that the compiler moves from uncopyrightable
44

idea to acts of selection that are the expression

of his ideas. 

Warren grasped the "perceived need for

information" reflecting the present nature of the

cable television industry and the past practices

of the industry for selecting and presenting

data. It then chose the facts it wanted to

compile. The Supreme Court has recognized

this choice of facts as part of a compiler's

authorship: "The compilation author typically

chooses which facts to include, in what order to

place them, and how to arrange the collected

data so that they may be used effectively by

readers." Feist Publications, Inc. v. Rural

Service Co., Inc., 499 U.S. 340, 348 (1991).

See also Key Publications, Inc. v. Chinatown

Today Publishing Enters., Inc., 945 F.2d 509,

513 (2d Cir. 1991), "Selection implies the

exercise of judgment in choosing which facts
45

from a given body of data to include in a

compilation." 

At the initial stage of choosing the facts that

it wanted Warren moved from idea to

intellectual expression through selection. The

selection of facts it wanted were not the facts

that previously the industry had compiled in

terms of community. Rather Warren chose to

select and present facts that reflected the way

the industry is currently actually operating. Its

choice was reflected in functional

service/operations/management terms. The

building block, the data-reporting unit, for

selection and presentation of industry data was

the "cable system" as newly defined by Warren,

"an entity composed as one or more

communities that are offered the same service

by the same cable system owner at the same

price." Warren had, as Strong, supra, has

described it, devised a framework for the data
46

to be assembled and had formulated selective

rules and categories. Reporting data by a

functional unit was a new and original concept,

and the implementing definition of "cable

system" was new to the industry and crafted by

Warren. 

Next, it was necessary for Warren to define

and identify the universe of raw data from which

it would select and present information. It

chose a universe composed of all geographic

communities (in the state of Illinois, the

representative state) having cable television

service. This defined universe was itself new.

It consisted of 1,000 plus geographic

communities (1,017 by one count, 1,045 by

another). It included cities, towns, and villages,

and also included counties and townships,

which historically were not usual franchisegranting units. The FCC maintained its own list

of cable systems (as it defined them),
47

composed of cities, towns and villages, that is,

franchise-granting units. FCC's universe was

724 communities. Warren's

functional/operational definition swept in nonfranchising geographic areas receiving service.

Its universe of raw data was thus new in

concept and some 40% larger in number of

communities than the FCC universe. 

As its next step Warren identified and

selected from its universe 406 data-reporting

units in Illinois, each a "cable system" pursuant

to its functional definition. Then, drawing from

the 1,000 plus universe, Warren had to identify

and properly locate within the proper unit of the

406 each geographic community enjoying cable

service. More than half of the 406 Illinois cable

operations turned out to be single-system

operations (SSO's), that is, each served only a

single community. A multiple community

system (MSO) served more than one
48

community. Each SSO, because of its

singularity, fell within Warren's same

operator/same service/same price definition of

a cable system. The name under which its data

was presented was necessarily that of the

single community it served. Having located

within the proper cable system (MSO or SSO)

each community served, for MSO's Warren had

to merge or combine the operating data for

each community into one unitary body of

operating data to be reported for the system.

Data relating to each geographic community

served was no longer independently listed

community-by-community but instead was

included in the unitary system data. The name

of an individual (nonprincipal) geographic

community whose service was operated and

managed as part of a cable system appeared

but without data and was cross-referenced to

the system where its data was included in the
49

unitary data. This referencing was necessary,

of course, because data-reporting was unitary

rather than individual. 

As part of Warren's acts of selection it was

necessary for it to choose a name by which

each cable system would be listed and

identified and under which the system data

would be set out. For this purpose Warren

elected to use a geographic name, and the type

of geographic name it chose was that of the

"lead" or "principal" geographic community

within the system. Obviously, for an SSO the

name of the single community served was

selected. When these acts were concluded

Warren's selection (406 units) consisted of 45%

fewer data-reporting units than the FCC's listing

of 724. 

II. Originality and creativity

We are faced in this case with what Feist

described as the "undeniable tension" between
50

two well-established propositions -- that facts

themselves are not copyrightable but

compilations of facts generally are. 499 U.S. at

344-45. A compilation draws its originality from

its selection and arrangement. 

Factual compilations, on the other hand,

may possess the requisite originality.

The compilation author typically

chooses which facts to include, in what

order to place them, and how to arrange

the collected data so that they may be

used effectively by readers. These

choices as to selection and

arrangement, so long as they are made

independently by the compiler and entail

a minimal degree of creativity, are

sufficiently original that Congress may

protect such compilations through the

copyright laws. Nimmer § § 2.11[D],

3.03; Denicola 523, n. 38. Thus, even a

directory that contains absolutely no

protectable written expression, only

facts, meets the constitutional minimum

for copyright protection if it features an

original selection or arrangement. See

Harper & Row, 471 U.S., at 547, 105

S.Ct., at 2223. Accord, Nimmer § 3.03.

Id. at 348. The originality necessary to render

Warren's work copyrightable lies in its selection

of data as provided by § 101. The selection
 It is of only semantic significance

whether originality is defined as embodying

creativity or whether creativity is regarded as a

necessary adjunct to originality. But it is clearer

to refer to them as separate elements. Nimmer,

§ 201[B], p. 2-15. 

51

must be done "in such a way" that it possesses

the necessary originality. 

What does "originality" mean? The

selection must be made independently by the

compiler, not copied, and must owe its origin to

the author. Novelty is not required. But

selection must entail a minimal degree of

creativity.33

How much originality is required? Feist tells

us: "a modicum of intellectual labor," 499 U.S.

at 347; "independent creation plus a modicum

of creativity," id. at 346; "at least some minimal

degree of creativity," id. at 345; "the requisite

level of creativity is extremely low; even a slight

amount will suffice," id. at 345. Nimmer

expresses the degree of originality this way: 
52

It has been said that all legal

questions are in the last analysis

questions of degree, requiring judicial

line drawing. Certainly, copyright law is

replete with such questions. The

determination of the quantum of

originality necessary to support a

copyright presents such a question. It is

not, however among the more

troublesome questions of degree

inherent in copyright law, as the line to

be drawn includes almost any

independent effort on the side of

sufficient originality. 

Melville B. Nimmer and David Nimmer, Nimmer

on Copyright § 2.01 [B], at 2-13 (1996). And

[O]riginality for copyright purposes

amounts to . . . little more than a

prohibition of actual copying. 

Nimmer, § 2.01B[, p. 2-14 (quotes and internal

quotes omitted). Accord, Key Publications,

supra, at 513. 

Warren's selection entails more than the

required degrees of originality and creativity.

Warren saw the need, chose the facts it wanted

to compile, chose how it wanted to arrange

them in gathering points for data rather than by

individualized presentations. It employed a new
53

concept of gathering cable data into a smaller

number of units and, for this purpose, it devised

a new concept of a cable system as functionally

defined and a new concept (and new title) of

"principal community." It is sufficient if there is

a "small spark of distinctiveness," but this is no

small spark. It is a fundamental change in

reporting data of a changing and developing

industry. The fact that some of the datareporting units were SSO's does not diminish

the fact of Warren's acts of selection or of the

originality and creativity of the selection, which

required Warren to determine whether each of

the 1,000 plus systems was a single community

system (SSO) or part of a multiple community

system (MSO) and to assemble and report

system data accordingly. 

Along with originality of selection and

arrangement is a related but different

requirement. The Constitution authorized
54

protection of the work of an author. The

claimant to copyright protection must be an

author, not a mere discoverer of facts. 

No one may claim originality as to facts.

Facts may be discovered, but they are

not created by an act of authorship.

One who discovers an otherwise

unknown fact may well have performed

a socially useful function, but the

discovery as such does not render him

an `author' in either the constitutional or

statutory sense. 

Nimmer, § 2.11[A], p. 2-172.16 (footnotes

omitted). But by hypothesis a compiler collects

and assembles the work of others, and his

compilation is a "work formed by the collection

and assembly of preexisting material." See 17

U.S.C. § 101. 

In the tension between facts and

compilation of facts there are some facts that

cannot trigger copyrightability. In a narrow

range of circumstances facts themselves may

be of such character that a work relating to

them is incapable of meeting the requirement of
55

a "work of authorship" referred to by the

Constitution and by the statute. These might be

called "public domain facts," known to or

available to the world at large. Feist, at pp.

347-48, refers to census data, scientific and

historical and biographical facts, and news of

the day. Professor Nimmer refers to scientific

facts as to the nature of the physical world,

historical facts, and contemporary news events.

Nimmer, § 2.03[F], at p. 2-36. Regulations

covering "Registration of Claims to Copyright"

provide in 37 C.F.R. § 202.1:

Material not subject to copyright

. . . 

(d) Works consisting entirely of

information that is common property

containing no original authorship, such

as, for example: Standard calendars,

height and weight charts, tape

measures and rulers, schedules of

sporting events, lists or tables taken

from public documents or other common

sources. 

Another narrow range of facts do not fit

neatly within the "public domain" category but
56

nevertheless are so obvious or trivial that no

creativity will transform mere selection of them

into copyrightable expression. Nimmer

§ 201[B], p. 2-14. In Feist, the telephone

company's white page directory alphabetically

listed telephone users by name, town and

telephone number. 499 U.S. at 362. The

subject matter was not original with the

telephone company, and the company's use of

the facts through alphabetical listing was not

only unoriginal but practically inevitable. Id. at

363. The Supreme Court "ultimately reversed

[in Feist] on the ground that plaintiff's white

pages directory was not copyrightable at all."

Jane C. Ginsburg, "No Sweat"? Copyright and

Other Protections of Information after Feist v.

Rural Telephone, 92 Colum. L. Rev. 338, 342.

In BellSouth Adv. & Pub. Corp. v. Donnelley

Info. Pub., Inc., 999 F.2d 1436 (11th Cir. 1993)

(en banc), BAPCO's heading structure, for
57

example, "Attorneys" or "Banks", represented

such obvious labels for the entities appearing

beneath that they lacked the required originality

for copyright protection. 

III. The opinion of this court

Apart from two lesser points discussed in

Parts V and VI below, the opinion of this court

has these main premises:

(1) The Factbook does not come within the

"selection" prong of the § 101 definition of a

"compilation" because no selection has been

made (by anybody), since the Factbook lists all

geographic communities having cable service.

(Mss. pp. 22-26.)

(2) Assuming that the Factbook is

sufficiently creative and original to be

copyrightable, Warren's claim of protection fails

because: 

(a) Warren seeks copyright protection

for mere techniques for discovery of facts. 
58

(b) The selection of principal

communities was made by cable operators and

not by Warren. Therefore, Warren does not

meet the constitutional requirement that it be

the "author" of the compilation, rather it is

engaged in mere discovery of facts. 

I take these up in the above sequence. 

(1) The premise that the Factbook contains no

selection at all because it lists the universe

composed of all geographic communities having

cable service. 

It is puzzling that this argument is seriously

advanced. It is a play on words such as

"listing" and "including" and it confuses the

universe of data with the data drawn from the

universe. As noted in the opinion of this court,

(Mss. p. 26), the district court itself recognized

that a list of a universe (in that reference, FCC's

universe) would of itself not be original and,

therefore, not copyrightable. Warren claims no
59

copyright on the universe, and the district court

found no copyright on such a list. Warren

claims, and the district court found, a copyright

on the selection of data drawn from the

universe. Definition of a universe of data was

an essential initial step in selection, but no

claim is made that the universe by itself is

copyrightable as a selection. The district court's

references to "selected communities" are

plainly references to communities as selected

and presented through Warren's 406 cablesystem data-presenting units. K e y

Publications, supra, tells us that selection

implies the exercise of judgment in choosing

which facts from a given body of data to include

in a compilation. 945 F.2d at 513. There the

compiler's universe consisted of a multitude of

businesses that she thought of interest to

Chinese-Americans. The infringer urged that

the compiler had made no selection but had
60

included every business of which she had

information. The court found that she had

excluded businesses she thought might not

remain open for very long, and this alone

indicated the necessary thought and creativity.

Id. The compiler did not list the universe, only

the selected businesses. This court suggests

that Warren has no copyright protection

because it "included" its universe as well as its

selected data. This misconceives the work of

selection. All communities were selected, some

identified and located in MSO's, others in

SSO's. 

(2) The premise that, assuming that the

Factbook is sufficiently creative and original to be

copyrightable, Warren's claim of protection fails

because: 

(a) The premise that, as in BellSouth, Warren

seeks copyright protection for mere techniques for

discovering facts. 
61

This is a baffling premise. In BellSouth the

district court had described acts that BAPCO

performed as alleged "acts of selection" --

geographic limits, closing dates for entries,

requiring yellow page subscribers to use

business telephone service, and use of

marketing techniques such as free listings and

on-site visits. On appeal this court found that

the district court had erred in not considering

whether these alleged acts of selection met the

level of originality, therefore it examined the

acts. 999 F.2d at 1441. This court then held

that through these strategies and marketing

techniques BAPCO had learned that

subscribers described their businesses in

particular manners in yellow page listings and

would pay for listings under certain business

categories. The strategies and techniques

used by BAPCO were not selected facts at all in

the copyright sense but were merely creative
 This court suggests (n. 27) that Warren's

acts of selection merely show industriousness,

which is not relevant to copyrightability. To the

contrary, Warren's acts of selection are

examined, just as this court in BellSouth

examined BAPCO's acts of selection, 999 F.2d

at 1441, to determine whether those acts met

the level of originality to extend copyright

protection.

62

means used to discover the facts it wanted to

learn, merely industrious means for collecting

data. These "uncopyrightable formative acts

used to generate [the] listings were not entitled

to copyright protection." Id. at 1441. 

Warren seeks no copyright on the means it

used to find out facts. It has no strategies or

marketing techniques. As acts of selection it

collected facts in the old-fashioned way.34 It

collects data from trade publications, FCC

records and reports, newspaper and magazine

clipping services. Each year it sends

"thousands and thousands" of questionnaires to

over 10,000 cable operators in the country,
63

which are used to identify changes from the

preceding year and to update. If a system does

not respond or responds inadequately Warren

telephones the operator to obtain update data.

It follows leads to new systems. A staff of over

20 people spend the entire year gathering data,

inputting, checking, conferring and updating. It

confirms with some operators the geographic

areas they are currently serving. It contacts

some operators to inquire what community is

considered to be the lead or principal

community. These are all fact-gathering

techniques. None is claimed to enjoy copyright

protection. 

(b) The premise that the selection of

principal communities was made by cable operators

and not by Warren, therefore, Warren does not meet

the constitutional requirement that it be the "author"

of the compilation, rather it is engaged in mere

discovery of facts. 
64

First, as a matter of fact did Warren

delegate to operators the choice of principal

communities? The district court found "[t]he

principle community used to represent the

entire system, is then selected by contacting

the cable operator to determine which

community is considered the lead community

within the cable system." (Op. 10.) This court

draws upon that statement to conclude that

Warren has made no selection of principal

communities or that it accepts as conclusive

operators' consideration of what are principal

communities of their respective cable systems.

This single sentence by the district court does

not bear the weight of this court's conclusions.

The phrase "contacting the cable operator to

determine" the principal community was used

by a witness. Elsewhere a witness explained

that a call might be made to an operator to

determine in conjunction with the operator the
 Television signals may be received by

satellite, by microwave tower, or by telephone

lines from television stations. Microwave

towers generally are located on high ground

that may be unrelated to other facilities of the

operator and not necessarily even in the area

served by the cable system. Many systems

have multiple headends. It has been suggested

65

identity of the principal community. Moreover,

this court's conclusions are inconsistent with

Microdos' position. Before the panel Microdos

asserted that the choice of the principal

community is controlled by external objective

factors. It urged that the principal community is

the one with the greatest number of

subscribers. It has suggested the principal

community is the "largest," which it infers to be

the most populous because, Microdos says, it

will generate the most subscribers. It has

asserted that the lead community is the site of

the headend (the location of equipment used to

process television signals for redistribution to

cable subscribers).35 Also, Microdos has
that "lead" community means the site of the

managerial headquarters of the system, where

a customer, salesmen for cable equipment, or

a potential advertiser may seek the manager or

the engineer or the sales manager. But

managerial headquarters is not necessarily

even in the area served, and examination of

Illinois systems in the Factbook shows that

frequently it is not. 

66

strenuously urged that Warren draws the

identity of the principal community from data it

finds in Federal Communications Commission

reports. Additionally, in its petition for rehearing

en banc it has called the court's attention to

Atlanta as the principal community for its cable

service, chosen, Microdos says, because it is

the dominant municipal area served and

everybody knows that it is the principal

community. It is obvious that these objective

factors are relevant to determining the identity

of the principal community of a cable system,

and Microdos accordingly has relied upon
 Other relevant factors are miles of cable

and numbers of homes passed in a particular

community. 

67

them.36 But this court has laid all these aside as

having no significance, indeed as though never

uttered, in favor of its own conclusion that it is

the cable operators, not Warren, that determine

in the case of a multiple community systems,

the community name under which to list the

pertinent data for the entire cable system. (Mss.

p. 33.) 

Alternatively, this court proposes (n. 29) that

a cable operator is "likely" to designate as its

principal community the community with the

most subscribers, therefore no exercise of

judgement was required by Warren to select the

principal communities. I have pointed out the

many factors asserted by Microdos itself as

relevant to selection of the principal community.

Neither the record, nor Microdos, supports the
68

"likelihood" that the principal community will be

the one with the most subscribers, nor the

statement (n. 26) that every MSO has one

"obvious" principal community. That may be so

as to Atlanta ("everybody knows it is the

principal community"), but a study of some 406

principal communities in Illinois, most of them

smaller towns and cities, discloses no such

"obvious" character.

This court (Mss. p. 31) analogizes Warren's

contacts with operators to what it describes as

the "similar" selection of headings made by

telephone users in BellSouth. But, as BellSouth

noted, the headings offered to BAPCO

subscribers did not originate with BAPCO but

were obvious and unoriginal labels for business

categories such as "Attorneys" or "Banks." 999

F.2d at 1445. The BAPCO subscriber ordered

from an unoriginal menu of business categories

the menu item it liked and would pay to be
69

listed under in the yellow pages. Warren's

category, "principal community," is neither

obvious nor unoriginal. The cable operator in

this case was asked for operational information

about how his business was currently

functioning, to be listed in an operations

directory. The extensive objective factors

advanced by Microdos itself demonstrate

relevant criteria that bear on this industrial

directory listing. 

Moreover, this court has focused upon the

selection of the principal community, whose

name the system will bear, as though that is all

that the case is about. The acts of selection

carried out by Warren were a stream of events,

beginning with its choice of the facts it wanted

and the construct of a functional methodology in

which to develop and present them. The use of

a geographic name for each cable system, and

the choice of the names of principal
 The selections made of categories --

"cable system," "principal community," -- are by

themselves, acts of selection that

meet requirements of originality. CCC

Information Services, Inc. v. Maclean Hunter

Mkt. Reports, Inc., 44 F.3d 61 (2d Cir. 1994),

held copyrightable a compilation of the

compiler's predictions of

used car valuations based upon market data

and the compiler's judgment and expertise.

70

communities as identifiers, and the decision on

a particular name, were not isolated acts of

selection like Athena springing full grown from

the brow of Zeus, or a decision made by a snap

of someone's fingers, or a mechanical decision

from a single telephone call, or by numerous

calls. They were parts of the stream of acts of

selection that I have described. This court does

not, however, refer to Warren's exercise of

judgment in creating this structure of selection

and in choosing the facts to be reported and

how to report them. Yet these acts of selection

are independent expressions of the author,

part of the overall "work of authorship."37 This
One of the elements of originality held to pass

Feist's threshold was the use of the abstract

concept coined by the compiler, of the

"average" vehicle in each category. Id. at 67.

The Second Circuit held the compilation was

protected and that the district court erroneously

applied a higher standard of originality than

Feist. Kregos v. Associated Press, 937 F.2d

700 (2d Cir. 1991), concerned a form that

displayed statistics on the recent past

performances of baseball pitchers scheduled to

start the next day's games. The compiler's

selection of statistics survived summary

judgment motion alleging lack of originality. 

71

court does not hold them to be unoriginal or

non-creative. Instead, it ignores them and

treats this case as turning on the single fact of

the source of information about principal

communities. This trivializes what this case is

about. Laying aside the foregoing, I turn to

this court's conclusion that Warren does not

meet the requirements of authorship because it

is a "mere discoverer" of facts. The difference

between mere discovery of facts by Warren and

authorship by Warren cannot be based on the

single fact that Warren is engaged in collecting
72

information. All compilers are collectors of facts

collected from some other source. If the fact of

collecting data from an original source deprives

a compiler of authorship status, all the vitality is

drained out of the congressional provision for

copyright of compilations in §§ 101 and 102.

Warren's status as author versus mere

discoverer requires examination of the nature of

the facts discovered. If they are "public

domain" facts, or such facts as by their nature

cannot support originality, Warren is not an

author. If, however, Warren has collected facts

that are capable of supporting originality, and it

meets the statutory requirements for selection

and presentation, then both statute and the

constitutional provision for originality

(authorship) are met. The linchpin of Feist is

the nature of the underlying facts (names,

towns and telephone listings) that would not

support copyrightability. BellSouth has the
73

same linchpin: headings, such as "Attorney"

and "Banks" that were not original expressions

of an author but mere facts, obvious if inevitable

classifications drawn from the public domain. In

both cases, Feist and BellSouth, the compiler

was gathering information that would not

support copyrightability. 

Warren's facts do not fit into these narrow

categories of uncopyrightable facts. Data on

how businesses in a growing and changing

industry are owned, operated and managed is

not public matter like today's news event, or the

speed of a falling object, or the face of the

calendar, nor is it unoriginal subject matter

open to and utilized by the world at large like

the telephone listings of Feist. Its facts are

functional data of a changeable and changing

industry, structured in a new and original

format. Its gathering of these facts from original

sources is authorship, not mere discovery. 
74

U.S. Payphone, Inc. v. Executives Unltd. of

Durham, Inc., 18 U.S.P.Q.2d 2049 (4th Cir.

1991), is a per curiam with Justice Powell on

the panel. The compiler assembled and

summarized public information on state tariffs

regulating fees payable to telephone utilities by

owners and operators of pay telephones. The

summarized information was presented in the

format of one sheet for each state. The court

found: 

Payphone's selection and organization

of the state tariff material was

sufficiently subjective and original to

make the Tariff Section copyrightable

material. 

18 U.S.P.Q.2d at 2051. 

IV. BellSouth does not ring for this case

It is understandable that judges of this court

wish to be faithful to the en banc decision in

BellSouth. But we need not extend it. I gather

in one place the reasons this decision is not

controlled by BellSouth. 
75

(1) BellSouth concerned uncopyrightable

facts, obvious headings drawn from the public

domain. This case does not. 

(2) The district court in BellSouth found that

the compiler's establishment of the geographic

limits of its directory and of a closing date for

listings were acts of selection. This court found

these were uncopyrightable acts common to

compilations. 999 F.2d at 1441. There are no

such acts in the present case. 

(3) In BellSouth this court found that the

district court had erred in treating as

copyrightable facts that were not copyrightable

facts at all but merely techniques for the

discovery of facts -- marketing techniques and

sales strategies. Warren has no such

techniques and strategies and it relies upon

selection and presentation of facts. 

(4) Much of the BellSouth decision

concerns BAPCO's claims of originality based
76

upon the coordination and arrangement

provisions of § 102. 999 F.2d 1442-44. These

issues are not present in this case. The district

court ruled against Warren on coordination and

arrangement, and this holding is not an issue in

this appeal. 

(5) BAPCO failed to establish that its

structure of headings was "original expression,"

that is, that it was the author of the headings

such as "Attorneys" and "Banks." Without

question Warren is the creator of the heading

"principal community," a name previously

unknown to the industry and implicating the

concept of a data-reporting unit previously

unknown. BellSouth found that an expressive

act of dividing such obvious categories as

"Attorneys" into subcategories (such as

bankruptcy lawyers and criminal lawyers)

merged into the idea of listing in a directory the

subtitles as a class of business. 999 F.2d at
77

1444. There are no such subdivisions in this

case, and, as discussed below in Part VI,

merger does not fit, indeed does not even come

close, to this case. ( 6 ) A t t h e h e a r t o f

BellSouth is the single fact of the subscriber's

selecting an appropriate heading from the menu

of obvious and unoriginal headings. The

selection involved in the present case is a

stream of original and nonobvious acts only one

aspect of which involves choice of names for
 While I do not suggest that BellSouth be

abandoned, it has drawn considerable criticism.

Wood, Ethan L., Copyrighting the Yellow

Pages: Finding Originality in Factual

Compilations, 78 Minn. L. Rev. 1319, 1335

(1994): "The Eleventh Circuit's approach

directly contradicts Key Publications"

[discussed above in text]. . . . "The Eleventh

Circuit opinion in BellSouth is much more

hostile than Key Publications to claims of

copyright infringement of the yellow pages." Id.

at 1333. "The Eleventh Circuit's BellSouth

decision used a standard of originality that is

inconsistent with the Supreme Court's approach

in Feist." Id. at 1336. "[T]he Eleventh Circuit

has raised the threshold of required originality

higher than the Feist decision established." Id.

at 1337. And finally, "[U]nlike the Eleventh

Circuit, the Second Circuit, which has

traditionally been the most influential in

developing copyright law, properly follows the

Feist approach." Id. at 1339 (footnote omitted).

See also Nimmer § 3.04[B], p. 3-31

(footnotes omitted):

Most applications of Feist have

recognized the circumscribed

sphere to which its holding

applies, ruling that it invalidates

the copyright only in the most

banal of works, such as the

white pages of a copybook. 

Other post-Feist decisions cannot be

78

data-reporting units.38 V. Use of the word
squared with BellSouth. See CCC Information

Services, Inc. v. Maclean Hunter Mkt. Reports,

Inc., 44 F.3d 61 (2d Cir. 1994), in footnote 5,

supra. 

See also U.S. Payphone, Inc. v.

Executives Unltd. of Durham, Inc., 18

U.S.P.Q.2d 2049 (4th Cir. 1991), discussed

above in Part III. 

79

"system" does not bar copyrightability

The district court used the word "system" in

referring to Warren's acts of selection, and the

panel opinion by this court fell into the same

phraseology. 17 U.S.C. § 102(b) tells us that

copyright protection for an original work of

authorship does not extend to a "system." This

court relies upon § 102[b] as a bar to

copyrightability. Neither district court nor the

panel addressed § 102(b), nd one may infer

that both courts used the word "system" in a

generic, everyday sense and not as a word of

art under § 102(b). 
80

In any event, § 102(b) is not, as this court

describes it, a "limiting principle." In the leading

case, Toro Co. v. R. & R. Products Co., 787

F.2d 1208, 1212 (8th Cir. 1986), the claimant

asserted a copyright on its use of a "system" of

numbering in its catalog replacement parts for

lawn care machines. The district court denied

copyrightability on the ground that the claim

was for a "system." The court of appeals

rejected the view that literal use of the term

"system" from § 102(b) is a "limiting principal."

[Section 102(b)] is nothing more than a

codification of the idea/expression

dichotomy as it developed in the case

law prior to passage of the 1976 Act.

H.R.Rep. No. 1476, 94th Cong., 2d

Sess. 57, reprinted in 1976 U.S.Code Cong.

& Ad.News 5659, 5670 ("Section 102(b)

in no way enlarges or contracts the

scope of copyright protection under the

present law. Its purpose is to restate . .

. that the basic dichotomy between

expression and idea remains

unchanged.") (Emphasis added.) 

Id. at 1212. The court held the claimant's

copyright not valid, based on the
81

idea/expression dichotomy; i.e., claimant could

not copyright the idea of using numbers to

designate replacement parts. And its

expression of that idea simply drew numbers

from the public domain and, without rhyme,

reason, or judgment, arbitrarily assigned them

to parts. The expression of the idea did not

meet the requirement of originality. See

Nimmer § 203(D), p. 2-35, to the same effect as

Toro. It seems beyond argument that Warren

does not seek copyright protection on the idea

of gathering and selecting data and reporting it

in a manner that responds to the perceived

needs for functional data of a changeable and

changing industry. Rather it seeks a copyright

on its expression of that idea.

The opinion of this court recognizes that the

use of the term "system" does not preclude

copyrightability. But, the court says, Warren's

acts of selection were in fact a "system," and
82

that fact creates a bar. (n. 21). In the first

place, the district court made no such finding,

nor does the evidence address it. Second, this

contention is contrary to what Congress itself

has said. See quotation, above, H.R. Report

No. 1476. If what the copyright claimant has

done is an expression of sufficient originality

that it is entitled to copyright, calling it a

"system" does not strip it of copyrightability. 

VI. The doctrine of merger does not bar

copyrightability

By footnote this court suggests the merger

doctrine as an alternative ground for denying

copyrightability. Merger operates where there

is only one or so few ways of expressing an

idea that protection of the expression would

effectively accord protection to the idea itself.

The court suggests that Warren's principal

community presentation is one, if not the only,

commercially useful way of organizing a
83

compilation of information on the cable

television industry, so the presentation is

merged with the idea of a cable television

directory. 

This is another puzzling point. As has been

said repeatedly, Warren's reporting data by

principal community units is a total departure

from prior methods utilized in the industry. No

one -- industry or government -- has previously

assembled and presented functional data

drawn from the way the industry presently

operates and is managed. Presumably, for

many users, Warren's way of selecting and

presenting data is the most useful way. But

there are many ways. 

The television industry is driven by the

advertising dollar, and advertisers place their

dollars by numbers and types of viewers, based

in part on information that includes numbers of

homes reached by cable. Seekers of cable
84

data may wish to utilize data compiled

community-by-community, as, for example, an

equipment salesman will wish to know whether

discrete communities within a service area

utilize differing equipment. A compiler may

wish to organize cable television data by

counties, by areas of the state ("upstate" and

"downstate"), by adjoining communities, by

agricultural areas, by urban and rural areas, by

big systems and smaller systems, large cities

and small towns, high income and low income

areas, sports-oriented areas and less interested

areas. Nor does cross-referencing change the

picture. Warren cross-references and groups

data by service/management. Another compiler

may group and cross-reference agricultural

areas or high income areas. It may group and

cross-reference all cable operations that use a

particular manufacturer of equipment. 
85

Warren's selection of data is original,

creative and useful. To suggest it is the only

conceivable useful way is astonishing. The

FCC listed 724 communities in Illinois versus

Warren's selected 406, based on different

criteria. The Broadcast Yearbook, another

recognized directory of the industry, listed 243

communities in Illinois. Different organizations

create lists different in structure, scope and

number that may be useful for different readers

for varying purposes. Merger does not fit. 

VII. Conclusion

The district court correctly decided this

case, and we should affirm its decision. Our

statutes provide rational and economically

useful copyright protection for compilations. If

that protection is to be narrowed and cabined

the choice is for Congress, not the courts.