Warren Publishing, Inc., Counter-Defendant v. Microdos Data Corp. Robert Payne, Counter-Claimants

115 F.3d 1509, 43 U.S.P.Q. 2d (BNA) 1065, 1997 U.S. App. LEXIS 13649, 1997 WL 308837

• Court: Court of Appeals for the Eleventh Circuit
• Decided: June 10, 1997
• Docket: 93-8474
• Status: Published

Opinions

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 fact-book 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 & 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 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 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 multiple-community cable systems, and it would be duplicative to list the same factual information under the individual community names for each community that comprises a multiple-community system. Therefore, a determination is made as to what community is the “principal” 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 non-principal communities of a multiple-community cable system, there is a cross-reference to the principal community listing.³ We note that, in many eases, 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 principal officer and shareholder of Mi-crodos. Mierodos’s compilation comes in the form of a computer software package called “Cable Access.” The Cable Access program, like the Factbook, provides detañed 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.

There is no dispute that Warren’s Fact-book 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 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 Fact-book in three areas: (1) the communities covered/prineipal 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 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 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. Based on this finding, and its conclusion that Microdos failed to prove that it obtained its information from a source independent of the Faetbook, the district court denied Mierodos’s motion for summary judgment on the principal community system and granted Warren’s cross-motion on that 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 Faetbook 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

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 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 “[e]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, 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. The Court emphasized that originality is a constitutional requirement, noting that the Constitution “authorizes Congress to ‘seeur[e] for limited times to Authors ... the exclusive Right to their respective Writings.’ ” Id. at 346, 111 S.Ct. at 1288 (quoting U.S. Const, art. I, § 8, cl. 8).¹⁴ The Court also admonished that:

Pacts, 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 (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 minimal degree of creativity” ¹⁵ in order to be entitled to compilation copyright protection. Id. at 348, 111 S.Ct. at 1289. 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 1289.¹⁶ Only when one 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. The first element is not at issue here, because Mierodos does not contest that the Factbook, considered as a whole, is entitled to copyright protection.¹⁸ To prove the second element, Warren must demonstrate that Mierodos, 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 protecta-ble 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 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 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 Mierodos had “substantially appropriated the copyrightable selection of communities portion of the format of Warren’s Factbook,” it held that “Mierodos 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 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 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 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 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 “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 Fact-book, and thus its selection 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 eopyrightability.

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 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 “[selection 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 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, “[tjhis 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 multiple-community 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 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 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 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 “[wjhile BAP-CO 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 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 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 Feist, 499 U.S. at 347, 111 S.Ct. at 1288 (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.Ct. at 1287. 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 Mierodos’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 court and REMAND for proceedings consistent with this opinion.

1 . 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 . 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 . 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, De-Kalb 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 a 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.

4 . 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 BellSouth, 999 F.2d at 1440.

5 . 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.

6 . The district court found that Warren's selection of its data fields was not sufficiently original to warrant copyright protection. As for the Fact-book'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.

7 . 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.

8 . 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 Fact-book. Given the voluminous listings in the Fact-book, 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.

9 . 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 Fact-book "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.

10 . Because no final judgment was entered by the district court, the injunction is by law a preliminary injunction. See supra note 1.

11 . 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 . 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.”

13 . The dissent takes exception to the characterization of section 102(b) as a "limiting principle.” Dissent at 2162. 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. 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.

14 . 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.

15 . 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.

16 . 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 is "thin.” 499 U.S. at 349, 111 S.Ct. at 1289.

17 . 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 . Mierodos does strongly challenge, however, the district court's finding that Warren's system of selection of principal communities is copyrightable.

19 . 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).

20 .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.

21 . 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.

22 . The dissent is correct in arguing that use of the term "system” does not itself preclude copy-rightability 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).

23 . 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.

24 .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.

25 . This is an inaccurate statement. Eveiy community in the Factbook is listed separately, state by state, in alphabetical order. What is not listed separately under each community name are the factual data about the cable system serving that particular community — these data are listed under the principal community listings only.

26 . 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.

27 . 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.

28 . The dissent takes several opportunities to describe in substantial detail Warren’s "acts of selection.” Dissent at 2153-55, 2158, 2159. 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. "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.

29 . The dissent questions the wisdom of this court's en banc decision in BellSouth. Dissent at 2160 n.6. The dissent notes "considerable criticism” of the opinion and cites a student note to show support for this contention.. Dissent at 2160 n.6. Another student note, however, considered the en banc decision to be consistent with Feist, stating that ”[t]he first appellate decision demonstrated the way sympathy for the effort expended by the compiler will lead some courts to find creativity in anything. The second appellate decision exemplified proper application of Feist’s creative selection.” Von Simson, 20 Brook. J. Int’l L. at 748.

30 . 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 single-communily 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 2158-59. 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.

31 . 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 2152. The evolution of the industry, however, did not develop around franchising units but around geographically distinct areas. The Supreme Court in Turner Broadcasting System, Inc. v. F.C.C., 512 U.S. 622, 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 627, 114 S.Ct. at 2451. 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. 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.