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LE BOOK PUBLISHING, INC. v. BLACK BOOK PHOTOGRAPHY

August 15, 2005.

LE BOOK PUBLISHING, INC., Plaintiff,
v.
BLACK BOOK PHOTOGRAPHY, INC. and DAG MEDIA, INC. Defendants.



The opinion of the court was delivered by: GERARD E. LYNCH, District Judge

OPINION AND ORDER

Plaintiff, Le Book Publishing, brings this copyright and trademark infringement action against Black Book Photography, Inc. and Dag Media, Inc. Both plaintiff and defendants publish directories targeted to the "creative industries," such as those in the business of fashion, advertising, media and visual production. Plaintiff alleges that defendants copied its directory, in violation of the Copyright Act of 1976, 17 U.S.C. § 101 et seq., and the Lanham Act, 15 U.S.C. § 1051 et seq. Plaintiff also brings a New York state claim for trademark dilution.*fn1 Defendants have filed a motion to dismiss for failure to state a claim pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure, arguing that the listings in plaintiff's directory are not copyrightable, and the directories published by plaintiff and defendants are blatantly dissimilar. For the reasons discussed below, defendants' motion will be granted.

  BACKGROUND

  Plaintiff, Le Book Publishing, Inc., is the publisher of Le Book — New York 2003 ("Le Book NY"), a directory for the fashion, advertising, and visual production industries. The reference guide contains 800 pages of listings of professional photographers, art directors, fashion stylists, hair stylists, make-up artists, model agencies, rental services, magazines, record labels, film and production companies, public relations firms, fashion designers, cosmetic companies, and advertising agencies. (Am. Compl. ¶¶ 13-14.) Plaintiff has published annual editions of its book in the United States for the past ten years, and was one of the first publications to combine photography and production elements in its guide. (Id. ¶ 14, 17.) The Le Book NY edition at issue here was first published in December 2002 (id. ¶ 21), and was registered with the United States Copyright Office on September 23, 2004. (Id. at ¶¶ 20-21.)

  Defendants publish The Black Book Creative Industry Directory 2004 ("The Black Book Directory"). The Black Book Directory was released in the spring of 2004. (Id. ¶ 100.) The Black Book Directory contains instances of direct copying from Le Book NY, such as the inclusion of "seed" names and addresses planted in plaintiff's directory for the purpose of discovering unauthorized copying. (Id. ¶¶ 23, 36.)

  Plaintiff employs a staff of approximately five people who research, select, and collect vast amounts of information to be included in Le Book NY. (Id. ¶ 22.) Plaintiff contends that it has spent an inordinate amount of time, money and effort to compile its listings, acquire reliable contacts in the industry, and verify that the information is accurate. (Id. ¶ 22, 107.) Plaintiff believes that defendants' "copying of [p]laintiff's thoroughly researched, carefully compiled listings is patently unfair" and subsequently brought forth this action. (Id. ¶ 106.)

  DISCUSSION

  I. Standard on Motion to Dismiss

  For the purposes of this motion to dismiss, the facts as alleged in plaintiff's complaint must be taken as true. Bolt Elec., Inc. v. City of New York, 53 F.3d 465, 469 (2d Cir. 1995). All reasonable inferences must be drawn in the plaintiff's favor. Freedom Holdings, Inc. v. Spitzer, 357 F.3d 205, 216 (2d Cir. 2004). At the same time, "[g]eneral, conclusory allegations need not be credited . . . when they are belied by more specific allegations of the complaint." Hirsch v. Arthur Andersen & Co., 72 F.3d 1085, 1092 (2d Cir. 1995); Whyte v. Contemporary Guidance Servs., Inc., No. 03 Civ. 5544 (GBD), 2004 WL 1497560, at *3 (S.D.N.Y. July 2, 2004). This Court may only dismiss a complaint if "it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief." Patel v. Searles, 305 F.3d 130, 135 (2d Cir. 2002) (internal quotation marks omitted).

  When deciding a motion to dismiss pursuant to Rule 12(b)(6), the Court may consider documents attached to the complaint as exhibits or incorporated in it by reference. Brass v. Am. Film Techs., Inc., 987 F.2d 142, 150 (2d Cir. 1993). Both directories, Le Book NY and The Black Book Directory, may be considered because they are referenced in the complaint and are crucial to plaintiff's claims. See Chambers v. Time Warner, Inc., 282 F.3d 147, 153 (2d Cir. 2002) (determining that documents were properly considered in a motion to dismiss as plaintiff had relied on the documents, and were integral to the complaint). Thus, the Court may consider the two directories in its analysis of the parties' arguments. II. Copyright Infringement

  Plaintiff's basic claim is that defendants copied listings from Le Book NY and included them in The Black Book Directory. Plaintiff asserts that it hired a team of five individuals who researched, selected and collected a vast amount of information that were eventually included in Le Book NY. (Am. Compl. ¶ 22.) To detect any copying, Le Book NY contains several mock company names and addresses (referred to as "seeds"). These seed entries were then found listed in The Black Book Directory. While plaintiff has invested time, energy and money into collecting information appropriate for its directory, it is a basic principle of copyright law that facts cannot be copyrighted, no matter how much effort has been put into discovering and compiling these facts. See 17 U.S.C. § 102(b) ("In no case does copyright protection for an original work of authorship extend to any idea, 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."). The rationale behind this principle stems from the Constitution itself, which explains that the primary objective of copyright is "[t]o promote the Progress of Science and useful Arts," rather than reward the labor of authors. Feist Publ'ns, Inc. v. Rural Tel. Co., 499 U.S. 340, 349 (1991), quoting U.S. Const. Art. I, § 8, cl. 8. The key distinction is "one between creation and discovery: The first person to find and report a fact has not created the fact; he or she has merely discovered its existence." Feist Publ'ns, 499 U.S. at 347. To this day, the "originality requirement . . . remains the touchstone of copyright protection today." Id. Therefore, plaintiff's listings of various stylists, photographers, and agencies cannot be copyrighted as they are purely facts and not original creations. Plaintiff also argues that its directory deserves copyright protection as a "factual compilation. Indeed, "[f]actual compilations . . . may possess the requisite originality" because 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 the readers." Id. at 348. Because the Supreme Court has specifically rejected the "sweat of the brow" or "industrious collection" theories, where copyright protection is a reward for the hard work that went into compiling the facts, id. at 353, any copyright in a factual compilation is "thin," and "only the compiler's selection and arrangement may be protected; the raw facts may be copied at will." Id. at 350.

  The Copyright Act of 1976 defines a copyrightable compilation as "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." 17 U.S.C. § 101. To qualify as a factual compilation, Le Book NY must include: "(1) the collection and assembly of pre-existing material, facts, or data; (2) the selection, coordination, or arrangement of those materials; and (3) the creation, by virtue of the particular selection, coordination, or arrangement, of an `original' work of authorship." Feist Publ'ns, 499 U.S. at 347. Plaintiff's directory clearly meets the first two requirements. First, Le Book NY is a collection of information about various individuals and companies serving the fashion and creative industry. Second, Plaintiff properly alleges that it selected and arranged the materials for inclusion into the directory, employing a detailed specific process by surveying existing clients, conducting internet research to check "hit rates" on websites, examining portfolios, and reviewing individuals' client lists. (Am. Compl. ¶¶ 120-126.) Plaintiff has alleged that it had to select from a database of 35,000 of individuals and companies that would be of interest to its audience. (Am. Compl. ¶¶ 128-131.)

  Plaintiff also satisfies the originality requirement of the third prong. The requirement of originality "is not particularly stringent," but it does exist. Feist Publ'ns, 499 U.S. at 358-59. The arrangement must "order? or group? . . . data into lists or categories that go beyond the mere mechanical grouping of data as such, for example, the alphabetical, chronological, or sequential listings of data." Key Publ'ns, Inc. v. Chinatown Today Publ'g Enter., Inc., 945 F.2d 509, 513 (2d Cir. 1991). While Le Book NY's listings within categories are arranged alphabetically, plaintiff does more than just alphabetically list all its entries in one lump. Instead, it has divided the listings into nine main categories: hair and make-up stylists; model agencies; photo production, location services, photo labs, and retouchers; rentals; events, luxury hotels; magazines; music & video; fashion; and advertising agencies. (See Am. Compl. ¶¶ 148-63.) See also Key Publ'ns, Inc., 945 F.2d at 514 (finding that the arrangement in a directory of Chinese-American businesses was sufficiently original, as it included categories such as "Bean Curd & Bean Sprout Shops" that were of particular interest to the Chinese-American community). This arrangement required sufficient thought and creativity necessary to meet the originality requirement. Plaintiff has met all three requirements of a factual compilation, and therefore, Le Book NY is entitled to copyright protection.

  Nevertheless, plaintiff's claim fails because defendants have not infringed on plaintiff's copyright. To establish infringement, two elements must be shown: (1) possession of a valid copyright, and (2) "copying of those elements of the work that are copyrightable." Id. at 514. As the Second Circuit points out in Key Publications, whether a compilation has been infringed "requires a somewhat more refined analysis than is applied in a case involving a wholly original work." Id. While the test for original works is one of "substantial similarity," when examining a factual compilation, a court must examine the "substantial similarly between those elements, and only those elements, that provide copyrightability." Id. In Key Publications, the court found that a telephone directory targeted to New York City's Chinese-American community did not infringe on a similar directory, despite ...


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