ProCD, Inc. v. Zeidenberg: The End Does Not Justify the Means in Federal Copyright Analysis

I. INTRODUCTION The Supreme Court recently reaffirmed that the "most fundamental axiom of copyright law is that '[n]o author may copyright his ideas or the facts he narrates."'1 However, with the explosion of the computer software industry, the question of whether something is a fact, thus having no copyright protection, is fast becoming the lead actor on the stage of federal copyright law.2 Adding further confusion to this issue is the Supreme Court's holding that "compilations of facts are within the subject matter of copyright."3 At the heart of this conflict is the complex issue of whether state law should provide protection where copyright law does not or whether federal copyright law preempts state law relief. This Note discusses the copyrightability of factual compilations and specifically enters the fray of federal copyright preemption of state law claims. Section II will provide background to the complex area of copyright protection in the computer software industry. Additionally, section II will briefly explore how state law claims have attempted to fill the gaps left by an unpredictable federal copyright law. Section III will give the facts and the court's reasoning in ProCD, Inc. v. Zeidenberg, a pivotal case dealing with copyright protection of factual compilations.4 Section IV will assert that the Seventh Circuit erred in not preempting ProCD's state common law claims. Additionally, section IV will propose an analysis under the Supreme Court's copyright standard that the Seventh Circuit should have used in ProCD. This proposed analysis is grounded in the assertion that current copyright law is adequate to protect factual compilations used in computer software programs. Finally, it will be asserted that the interests of (1) supremacy and (2) uniformity should serve to motivate courts to use the proper analysis when asked to determine copyright protection of factual compilations. II. BACKGROUND A. Federal Copyright Protection of Factual Compilations Arguably, copyright law began more as an effort to protect labor rather than creative genius.5 In describing the infancy of copyright, Columbia University School of Law Professor Jane C. Ginsburg states that "the scope of copyright was initially rather modest. The first author might forbid the second comer's copying from the first production, but he could not prohibit a second comer from creating a competing work-if the competitor acquired the same information from primary sources."6 Indeed, early case law depicts an era where individual effort was the sliding scale used to extend copyright protection. In Banks v. McDivitt, an 1875 New York case, the court stated: No compiler of such a book has a monopoly of the subject of which the book treats. Any other person is permitted to enter that department of literature and make a similar book. But, the subsequent investigator must investigate for himself, from the original sources which are open to all. He cannot use the labors of a previous compiler . . . and save his own time by copying the results of the previous compiler's study, although the same results could have been attained by independent labor. The compiler of a digest, a road book, a directory, or a map can search and survey for himself in the fields which all laborers are permitted to occupy, but cannot adopt as his own the products of another's toil.7 This "labor intensive" analysis provided an avenue of protection for those willing to engage in the business of compiling directories and other factual based works. However, this "labor only" analysis was short-lived; the scope of copyright has steadily evolved from protection of "labor" to protection of personality and individual authorship.8 Along with this evolution has come-not surprisingly-judicial inconsistency and controversy over which type of work deserves more protection-labor intensive work or original, subjective authorship.9 Ginsburg points out that these two extremes are illustrated by courts that on the one hand "give[] primacy to the personality concept of original authorship, thereby relegating the labor view to the extremes of historical anomaly" and on the other, "admit [labor intensive] compilations into the company of copyrightable works" by "simply declar[ing] the existence of [a valid copyright]. …