In the

United States Court of Appeals

For the Seventh Circuit ____________

No. 03-2061

ASSESSMENT TECHNOLOGIES OF WI, LLC,

Plaintiff-Appellee,

v.

WIREDATA, INC.,

Defendant-Appellant.

____________

Appeal from the United States District Court for the

Eastern District of Wisconsin.

No. 01-C-789—Aaron E. Goodstein, Magistrate Judge.

____________

ARGUED NOVEMBER 3, 2003—DECIDED NOVEMBER 25, 2003

____________

Before POSNER, DIANE P.WOOD, andEVANS, Circuit Judges.

POSNER, Circuit Judge. This case is about the attempt of a

copyright owner to use copyright law to block access to data

that not only are neither copyrightable nor copyrighted, but

were not created or obtained by the copyright owner. The

owner is trying to secrete the data in its copyrighted

program—a program the existence of which reduced the

likelihood that the data would be retained in a form in

which they would have been readily accessible. It would be

appalling if such an attempt could succeed.

Assessment Technologies (AT, we’ll call it) brought

suit for copyright infringement and theft of trade secrets
2 No. 03-2061

against WIREdata, and the district court after an evidentiary

hearing issued a permanent injunction on the basis of AT’s

copyright claim alone, without reaching the trade secret

claim. A sample database in the demo version of AT’s

product—a version freely distributed for promotional

purposes—reveals the entire structure of the database, thus

making the trade secret claim incomprehensible to us. But

we shall not make a formal ruling on the claim. It was not

addressed either by the district court or by the parties in

their submissions in this court, and conceivably if improbably it has more merit than we can find in it.

The copyright case seeks to block WIREdata from obtaining noncopyrighted data. AT claims that the data can’t

be extracted without infringement of its copyright. The

copyright is of a compilation, and the general issue that the

appeal presents is the right of the owner of such a copyright

to prevent his customers (that is, the copyright licensees)

from disclosing the compiled data even if the data are in the

public domain.

WIREdata, owned by Multiple Listing Services, Inc.,

wants to obtain, for use by real estate brokers, data regarding specific properties—address, owner’s name, the age of

the property, its assessed valuation, the number and type of

rooms, and so forth—from the southeastern Wisconsin

municipalities in which the properties are located. The municipalities collect such data in order to assess the value

of the properties for property-tax purposes. Ordinarily

they’re happy to provide the data to anyone who will pay

the modest cost of copying the data onto a disk. Indeed,

Wisconsin’s “open records” law, Wis. Stat. §§ 19.31-.39; State

ex rel. Milwaukee Police Ass’n v. Jones, 615 N.W.2d 190, 194-96

(Wis. App. 2000), which is applicable to data in digital form,

see id. at 195-96; Wis. Stat. § 19.32(2), requires them to

furnish such data to any person who will pay the copying
No. 03-2061 3

cost. However, three municipalities refused WIREdata’s

request. They (or the contractors who do the actual tax

assessment for them) are licensees of AT. The open-records

law contains an exception for copyrighted materials, id., and

these municipalities are afraid that furnishing WIREdata the

requested data would violate the copyright. WIREdata has

sued them in the state courts of Wisconsin in an attempt to

force them to divulge the data, and those suits are pending.

Alarmed by WIREdata’s suits, AT brought the present suit

to stop WIREdata from making such demands of the

municipalities and seeking to enforce them by litigation.

The data that WIREdata wants are collected not by AT but

by tax assessors hired by the municipalities. The assessors

visit the property and by talking to the owner and poking

around the property itself obtain the information that we

mentioned in the preceding paragraph—the age of the

property, the number of rooms, and so forth. AT has

developed and copyrighted a computer program, called

“Market Drive,” for compiling these data. The assessor

types into a computer the data that he has obtained from his

visit to the property or from other sources of information

and then the Market Drive program, in conjunction with a

Microsoft database program (Microsoft Access), automatically allocates the data to 456 fields (that is, categories

of information) grouped into 34 master categories known

as tables. Several types of data relating to a property, each

allocated to a different field, are grouped together in a table

called “Income Valuations,” others in a table called “Residential Buildings,” and so on. The data collected by the various assessors and inputted in the manner just described are

stored in an electronic file, the database. The municipality’s

tax officials can use various queries in Market Drive or

Market Access to view the data in the file.
4 No. 03-2061

WIREdata’s appeal gets off on the wrong foot, with the

contention that Market Drive lacks sufficient originality to

be copyrightable. Copyright law unlike patent law does not

require substantial originality. Feist Publications, Inc. v. Rural

Telephone Service Co., 499 U.S. 340, 345-48 (1991). In fact, it

requires only enough originality to enable a work to be

distinguished from similar works that are in the public

domain, Bucklew v. Hawkins, Ash, Baptie & Co., 329 F.3d 923,

929 (7th Cir. 2003); Alfred Bell & Co. v. Catalda Fine Arts, Inc.,

191 F.2d 99, 102-03 (2d Cir. 1951), since without some

discernible distinction it would be impossible to determine

whether a subsequent work was copying a copyrighted

work or a public-domain work. This modest requirement is

satisfied by Market Drive because no other real estate

assessment program arranges the data collected by the assessor in these 456 fields grouped into these 34 categories,

and because this structure is not so obvious or inevitable as

to lack the minimal originality required, Key Publications,

Inc. v. Chinatown Today Publishing Enterprises, Inc., 945 F.2d

509, 513-14 (2d Cir. 1991), as it would if the compilation

simply listed the data in alphabetical or numerical order.

Feist Publications, Inc. v. Rural Telephone Service Co., supra, 499

U.S. at 362-64. The obvious orderings, the lexical and the

numeric, have long been in the public domain, and what is

in the public domain cannot be appropriated by claiming

copyright. Alternatively, if there is only one way in which

to express an idea—for example, alphabetical order for the

names in a phone book—then form and idea merge, and in

that case since an idea cannot be copyrighted the copying of

the form is not an infringement. Ets-Hokin v. Skyy Spirits,

Inc., 225 F.3d 1068, 1082 (9th Cir. 2000); Kregos v. Associated

Press, 937 F.2d 700, 705-07 (2d Cir. 1991). That is not the

situation here.

So AT has a valid copyright; and if WIREdata said to

itself, “Market Drive is a nifty way of sorting real estate data
No. 03-2061 5

and we want the municipalities to give us their data in the

form in which it is organized in the database, that is, sorted

into AT’s 456 fields grouped into its 34 tables,” and the

municipalities obliged, they would be infringing AT’s

copyright because they are not licensed to make copies of

Market Drive for distribution to others; and WIREdata

would be a contributory infringer (subject to a qualification

concerning the fair-use defense to copyright infringement,

including contributory infringement, that we discuss later).

But WIREdata doesn’t want the Market Drive compilation.

It isn’t in the business of making tax assessments, which is

the business for which Market Drive is designed. It only

wants the raw data, the data the assessors inputted into

Market Drive. Once it gets those data it will sort them in

accordance with its own needs, which have to do with providing the information about properties that is useful to real

estate brokers as opposed to taxing authorities.

But how are the data to be extracted from the database

without infringing the copyright? Or, what is not quite the

same question, how can the data be separated from the

tables and fields to which they are allocated by Market

Drive? One possibility is to use tools in the Market Drive

program itself to extract the data and place it in a separate

electronic file; this can be done rapidly and easily with just

a few keystrokes. But the municipalities may not have the

program, because the inputting of the data, which did of

course require its use, was done by assessors employed by

firms to do this work as independent contractors of the

municipalities. And if the municipalities do have the

program, still their license from AT forbids them to disseminate the data collected by means of it—a restriction that

may or may not be in violation of the state’s open-records

law, a question we come back to later. A second extraction

possibility, which arises from the fact that the database is a
6 No. 03-2061

Microsoft file accessible by Microsoft Access, is to use

Access to extract the data and place it in a new file, bypassing Market Drive. But there is again the scope of the license

to be considered and also whether the method of extraction

is so cumbersome that it would require more effort than the

open-records law requires of the agencies subject to it. It

might take a programmer a couple of days to extract the

data using Microsoft Access, and the municipalities might

lack the time, or for that matter the programmers, to do the

extraction. But that should not be a big problem, because

WIREdata can hire programmers to extract the data from

the municipalities’ computers at its own expense.

From the standpoint of copyright law all that matters is

that the process of extracting the raw data from the database

does not involve copying Market Drive, or creating, as AT

mysteriously asserts, a derivative work; all that is sought is

raw data, data created not by AT but by the assessors, data

that are in the public domain. A derivative work is a

translation or other transformation of an original work and

must itself contain minimum originality for the same

evidentiary reason that we noted in discussing the requirement that a copyrighted work be original. Pickett v.

Prince, 207 F.3d 402, 405 (7th Cir. 2000); Gracen v. Bradford

Exchange, 698 F.2d 300, 304-05 (7th Cir. 1983). A work that

merely copies uncopyrighted material is wholly unoriginal

and the making of such a work is therefore not an infringement of copyright. The municipalities would not be infringing Market Drive by extracting the raw data from the

databases by either method that we discussed and handing

those data over to WIREdata; and since there would thus be

no direct infringement, neither would there be contributory

infringement by WIREdata. It would be like a Westlaw

licensee’s copying the text of a federal judicial opinion that

he found in the Westlaw opinion database and giving it to
No. 03-2061 7

someone else. Westlaw’s compilation of federal judicial

opinions is copyrighted and copyrightable because it involves discretionary judgments regarding selection and

arrangement. But the opinions themselves are in the public

domain (federal law forbids assertion of copyright in federal

documents, 17 U.S.C. § 105), and so Westlaw cannot prevent

its licensees from copying the opinions themselves as

distinct from the aspects of the database that are copyrighted. See Matthew Bender & Co. v. West Publishing Co., 158

F.3d 693 (2d Cir. 1998); Matthew Bender & Co. v. West

Publishing Co., 158 F.3d 674 (2d Cir. 1998).

AT would lose this copyright case even if the raw data

were so entangled with Market Drive that they could not be

extracted without making a copy of the program. The case

would then be governed by Sega Enterprises Ltd. v. Accolade,

Inc., 977 F.2d 1510, 1520-28 (9th Cir. 1992). Sega manufactured a game console, which is a specialized computer, and

copyrighted the console’s operating system, including the

source code. Accolade wanted to make computer games that

would be compatible with Sega’s console, and to that end it

bought a Sega console and through reverse engineering

reconstructed the source code, from which it would learn

how to design its games so that they would activate the

operating system. For technical reasons, Accolade had to

make a copy of the source code in order to be able to obtain

this information. It didn’t want to sell the source code,

produce a game-console operating system, or make any

other use of the copyrighted code except to be able to sell a

noninfringing product, namely a computer game. The court

held that this “intermediate copying” of the operating

system was a fair use, since the only effect of enjoining it

would be to give Sega control over noninfringing products,

namely Accolade’s games. See also Sony Computer Entertainment, Inc. v. Connectix Corp., 203 F.3d 596, 602-08 (9th Cir.
8 No. 03-2061

2000); Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1539-40 n. 18

(11th Cir. 1996); Atari Games Corp. v. Nintendo of America,

Inc., 975 F.2d 832, 842-44 (Fed. Cir. 1992). Similarly, if the

only way WIREdata could obtain public-domain data about

properties in southeastern Wisconsin would be by copying

the data in the municipalities’ databases as embedded in

Market Drive, so that it would be copying the compilation

and not just the compiled data only because the data and

the format in which they were organized could not be

disentangled, it would be privileged to make such a copy,

and likewise the municipalities. For the only purpose of the

copying would be to extract noncopyrighted material, and

not to go into competition with AT by selling copies of

Market Drive. We emphasize this point lest AT try to

circumvent our decision by reconfiguring Market Drive in

such a way that the municipalities would find it difficult or

impossible to furnish the raw data to requesters such as

WIREdata in any format other than that prescribed by

Market Drive. If AT did that with that purpose it might be

guilty of copyright misuse, of which more shortly.

AT argues that WIREdata doesn’t need to obtain the data

in digital form because they exist in analog form, namely in

the handwritten notes of the assessors, notes that all agree

are not covered by the Market Drive copyright. But we were

told at argument without contradiction that some assessors

no longer make handwritten notes to copy into a computer

at a later time. Instead they take their laptop to the site and

type the information in directly. So WIREdata could not

possibly obtain all the data it wants (all of which data are in

the public domain, we emphasize) from the handwritten

notes. But what is more fundamental is that since AT has no

ownership or other legal interest in the data collected by the

assessor, it has no legal ground for making the acquisition

of that data more costly for WIREdata. AT is trying to use its
No. 03-2061 9

copyright to sequester uncopyrightable data, presumably in

the hope of extracting a license fee from WIREdata.

We are mindful of pressures, reflected in bills that have

been pending in Congress for years, Jonathan Band &

Makoto Kono, “The Database Protection Debate in the 106th

Congress,” 62 Ohio St. L.J. 869 (2001), to provide legal

protection to the creators of databases, as Europe has already done. Jane C. Ginsburg, “Copyright, Common Law,

and Sui Generis Protection of Databases in the United States

and Abroad,” 66 U. Cinc. L. Rev. 151 (1997). (Ironically,

considering who owns WIREdata, the multiple-listing

services are pressing for such protection. Ron Eckstein, “The

Database Debate,” Legal Times, Jan. 24, 2000, p. 16.) The

creation of massive electronic databases can be extremely

costly, yet if the database is readily searchable and the data

themselves are not copyrightable (and we know from Feist

that mere data are indeed not copyrightable) the creator

may find it difficult or even impossible to recoup the

expense of creating the database. Legal protection of

databases as such (as distinct from programs for arranging

the data, like Market Drive) cannot take the form of copyright, as the Supreme Court made clear in Feist when it held

that the copyright clause of the Constitution does not

authorize Congress to create copyright in mere data. But

that is neither here nor there; what needs to be emphasized

in this case is that the concerns (whether or not valid,

as questioned in Ginsburg, supra, and also J.H. Reichman

& Pamela Samuelson, “Intellectual Property Rights in

Data?” 50 Vand. L. Rev. 51 (1997), and Stephen M. Maurer &

Suzanne Scotchmer, “Database Protection: Is It Broken and

Should We Fix It?” 284 Sci. 1129 (1999)) that actuate the

legislative proposals for database protection have no

relevance because AT is not the collector of the data that go

into the database. All the data are collected and inputted by
10 No. 03-2061

the assessors; it is they, not AT, that do the footwork, the

heavy lifting.

AT points to the terms of its license agreements with the

municipalities, which though ambiguous might be interpreted to forbid the licensees to release the raw data, even

without the duplication, or revelation of any copyrighted

feature, of Market Drive. But AT is not suing for breach of

the terms of the agreements—it can’t, since WIREdata is not

a party to them. Nor is it suing for intentional interference

with contract, Frandsen v. Jensen-Sundquist Agency, Inc., 802

F.2d 941, 947-48 (7th Cir. 1986) (Wisconsin law); Dorr v.

Sacred Heart Hospital, 597 N.W.2d 462, 478 (Wis. App. 1999);

Cudd v. Crownhart, 364 N.W.2d 158, 160-61 (Wis. App. 1985),

which would be the logical route for complaining about

WIREdata’s inviting the municipalities that are AT’s

licensees to violate the terms of their license. The licenses do

nothing for AT in this case.

So it is irrelevant that ProCD, Inc. v. Zeidenberg, 86

F.3d 1447, 1453-55 (7th Cir. 1996), holds that a copyright

owner can by contract limit copying beyond the right that

a copyright confers. See also Bowers v. Baystate Technologies,

Inc., 320 F.3d 1317, 1323-26 (Fed. Cir. 2003). Like other

property rights, a copyright is enforceable against persons

with whom the owner has no contractual relations; so a

property owner can eject a trespasser even though the trespasser had not contractually bound himself to refrain from

entering the property. That is why AT is suing WIREdata

for copyright infringement rather than for breach of contract. The scope of a copyright is given by federal law, but

the scope of contractual protection is, at least prima facie,

whatever the parties to the contract agreed to. The existence

of contractual solutions to the problem of copying the

contents of databases is one of the reasons that Professor
No. 03-2061 11

Ginsburg and others are skeptical about the need for legislative protection of databases. But our plaintiff did not

create the database that it is seeking to sequester from

WIREdata; or to be more precise, it created only an empty

database, a bin that the tax assessors filled with the data. It

created the compartments in the bin and the instructions for

sorting the data to those compartments, but those were its

only innovations and their protection by copyright law is

complete. To try by contract or otherwise to prevent the

municipalities from revealing their own data, especially

when, as we have seen, the complete data are unavailable

anywhere else, might constitute copyright misuse.

The doctrine of misuse “prevents copyright holders

from leveraging their limited monopoly to allow them

control of areas outside the monopoly.” A&M Records, Inc. v.

Napster, Inc., 239 F.3d 1004, 1026-27 (9th Cir. 2001);

see Alcatel USA, Inc. v. DGI Technologies, Inc., 166 F.3d 772,

792-95 (5th Cir. 1999); Practice Management Information Corp.

v. American Medical Ass’n, 121 F.3d 516, 520-21 (1997),

amended, 133 F.3d 1140 (9th Cir. 1998); DSC Communications

Corp. v. DGI Technologies, Inc., 81 F.3d 597, 601-02 (5th Cir.

1996); Lasercomb America, Inc. v. Reynolds, 911 F.2d 970, 976-

79 (4th Cir. 1990). The data in the municipalities’ taxassessment databases are beyond the scope of AT’s copyright. It is true that in Reed-Union Corp. v. Turtle Wax, Inc., 77

F.3d 909, 913 (7th Cir. 1996), we left open the question

whether copyright misuse, unless it rises to the level of

an antitrust violation, is a defense to infringement; our

earlier decision in Saturday Evening Post Co. v. Rumbleseat

Press, Inc., 816 F.2d 1191, 1200 (7th Cir. 1987), had intimated

skepticism. No effort has been made by WIREdata to

show that AT has market power merely by virtue of its

having a copyright on one system for compiling valuation

data for real estate tax assessment purposes. Cases such

as Lasercomb, however, cut misuse free from antitrust,
12 No. 03-2061

pointing out that the cognate doctrine of patent misuse is

not so limited, 911 F.3d at 977-78, though a difference is that

patents tend to confer greater market power on their owners

than copyrights do, since patents protect ideas

and copyrights, as we have noted, do not. The argument for

applying copyright misuse beyond the bounds of antitrust,

besides the fact that confined to antitrust the doctrine would

be redundant, is that for a copyright owner to use an

infringement suit to obtain property protection, here in data,

that copyright law clearly does not confer, hoping to force

a settlement or even achieve an outright victory over an

opponent that may lack the resources or the legal sophistication to resist effectively, is an abuse of process.

We need not run this hare to the ground; nor decide

whether the licenses interpreted as AT would have us interpret them—as barring municipalities from disclosing

noncopyrighted data—would violate the state’s openrecords law. Cf. Antisdel v. City of Oak Creek Police & Fire

Comm’n, 600 N.W.2d 1, 3 (Wis. App. 1999); Gordie Boucher

Lincoln-Mercury Madison, Inc. v. J & H Landfill, Inc., 493

N.W.2d 375, 378 (Wis. App. 1992); State ex rel. Sun Newspapers v. Westlake Board of Education, 601 N.E.2d 173, 175 (Ohio

App. 1991); but cf. Pierce v. St. Vrain Valley School District,

981 P.2d 600, 605-06 (Colo. 1999). WIREdata is not a licensee

of AT, and AT is not suing to enforce any contract it might

have with WIREdata. It therefore had no cause to drag the

licenses before us. But since it did, we shall not conceal our

profound skepticism concerning AT’s interpretation. If

accepted, it would forbid municipalities licensed by AT to

share the data in their tax-assessment databases with each

other even for the purpose of comparing or coordinating

their assessment methods, though all the data they would

be exchanging would be data that their assessors had

collected and inputted into the databases. That seems an

absurd result.
No. 03-2061 13

To summarize, there are at least four possible methods by

which WIREdata can obtain the data it is seeking without

infringing AT’s copyright; which one is selected is for the

municipality to decide in light of applicable trade-secret,

open-records, and contract laws. The methods are: (1) the

municipalities use Market Drive to extract the data and

place it in an electronic file; (2) they use Microsoft Access to

create an electronic file of the data; (3) they allow programmers furnished by WIREdata to use their computers to

extract the data from their database—this is really just an

alternative to WIREdata’s paying the municipalities’ cost of

extraction, which the open-records law requires; (4) they

copy the database file and give it to WIREdata to extract the

data from.

The judgment is reversed with instructions to vacate the

injunction and dismiss the copyright claim.

REVERSED AND REMANDED, WITH INSTRUCTIONS.

A true Copy:

Teste:

 _____________________________

Clerk of the United States Court of 

Appeals for the Seventh Circuit 

USCA-02-C-0072—11-25-03