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The Eleventh Circuit has considered whether to uphold an injunction barring a competitor from copying listing information from a yacht multiple listing service (MLS) database.
BUC International Corporation (“BUC”) publishes the BUC Used Boat Price Guide, which lists recreational boats and yachts along with market values. In the 1980s, BUC developed a computer network known as “BUCNET” containing yacht listing information. BUCNET was created in order to make it easier for yacht brokers to share listing information. Formerly, brokers had mailed or faxed listing information to each other and the listing information was not presented in a uniform way.
BUCNET allowed yacht brokers to view listings of other brokers on their computer and also presented this information in a standard format, as more than ninety-eight percent used the BUCNET “Standard Listing Form and Format”. Yacht brokers gained access to BUCNET by entering into a licensing agreement with BUC, and the listing information was only available to other BUCNET participants, not the public.
In 1997, BUC registered the BUCNET compilation with the U.S. Copyright Office (to learn more about registering a database compilation, click here). BUC received a “Certificate of Copyright Registration” in 1997 and continued to renew its registration annually. A notice of copyright registration was placed next to every vessel listing in the BUCNET database.
In June 2000, the Florida Yacht Brokers Association joined with several entities to create the International Yacht Council Limited (“IYC”). The IYC was formed in order to create a central yacht listing source. IYC entered into an agreement with MLS Solutions (“Vendor”) to operate the database. The IYC system had a private site for brokers, and also offered a public website. Many BUCNET participants sent their listings to the IYC MLS, mainly by copying their listing from BUCNET and sending it to the Vendor for inclusion on the IYC MLS. In January 2002, over half the listings on the IYC MLS came from BUCNET licensees or had been copied by the Vendor’s employees and placed on the IYC MLS. BUC was able to tell when the listings were copied from BUCNET because it had included a marker in all the listings on BUCNET.
BUC brought a lawsuit against IYC and the Vendor for copyright infringement. The trial court entered an injunction prohibiting IYC and the Vendor from copying “descriptive elements” from BUCNET’s listings and ordered them to remove all such postings from their website. Following the entry of the injunction, the case proceeded to trial and a jury found in favor of BUC and so the court entered a permanent injunction prohibiting the copying of BUCNET listings by the Vendor and IYC. The Vendor and IYC appealed.
The United States Court of Appeals for the Eleventh Circuit affirmed the rulings of the trial court. On appeal, the only issue that the Vendor and IYC had properly preserved was that BUC’s compilation lacked the originality required for copyright protection. First, the defendants argued that BUC was not the author of the listings because the broker participants were the ones who arranged the selection and arrangements of listings in BUCNET. Second, they argued that the merger doctrine precludes protection for BUC’s selection of the section headings used in BUCNET. Finally, BUC’s selection and creation of section headings on BUCNET lacked the minimal amount of creativity necessary to constitute an original work.
Electronic databases, like a MLS database, are entitled to copyright protection. The U.S. Copyright Office defines an electronic, or “automated,” database as a collection of facts, data, or other information which is one or more files organized into a format usable by a computer. These compilations of data are entitled to copyright protection because they are original works that organize existing information into a unique format or arrangement.
Looking at the challenges set forth above, the court first stated that the defendants’ argument that the brokers were the authors of the compilation and not BUC was untrue, as approximately 98 percent of BCUNET participants used the arrangement created by BUC. The small amount of listings altered by the yacht brokers did not affect BUC’s copyright and so the court denied this argument.
Second, the court considered whether BUC’s selection of headings survived the application of the merger doctrine. The “merger doctrine” is a rule where courts have found that certain expressions are not entitled to copyright protection because there are so few ways of expressing the idea that granting protection would essentially protect the idea itself. Here, the defendants argued that there are only a few ways to describe a boat and BUC’s use of headings that simply list the features of a boat should not be entitled to copyright protection. BUCNET was an attempt by BUC to provide yacht brokers information about yachts, and so it had organized the features of yacht into categories such as: accommodation and layout; vessel walkthrough; galley/laundry; electronics and navigation; engine and mechanical equipment; and others.
The court found that the testimony at trial undermined the defendants argument. The testimony detailed that prior to BUCNET, brokers had faxed listings to each which used a format varying broker by broker. BUCNET was an attempt to create a uniform system. Because there were a variety of ways to organize information about a yacht, BUCNET’s selection and arrangement of section headings did not merge with the larger idea of describing a yacht and so the court rejected this challenge as well.
Finally, the court looked at whether BUCNET lacked the minimal degree of creativity necessary to receive copyright protection. At trial, there was conflicting testimony about whether BUCNET was arranged in an original way. BUC witnesses portrayed BUCNET as providing a uniform way of transmitting listings which had not previously existed, while the Vendor and IYC witnesses stated that BUCNET used common industry terms. Since this was a factual dispute, it was up to the jury to decide which party had the better argument. Therefore, the court deferred to the jury’s determination and upheld the judgment.
Finally, the IYC and the Vendor argued that the trial court had improperly instructed the jury on the standard for evaluating copyright infringement. The trial court had instructed the jury that they could find copyright infringement if the original elements of BUC’s compilation were “substantially similar” to those represented in the Vendor’s system. While “substantially similar” is the general rule for copyright infringement cases, IYC and the Vendors argued that in this case the jury should have been told that their compilation had to be “virtually identical” to the original compilation in order for infringement to occur. In certain cases, the Eleventh Circuit has used the “virtually identical” standard, but this standard has been limited to cases involving computer code, not headings for a factual compilation like BUCNET. Therefore, the trial court had given the jury the proper instruction, and so the court upheld the entry of judgment against IYC and the Vendor.
BUC Int’l Corp. v. Int’l Yacht Council Ltd., 489 F.3d 1129 (11th Cir. June 21, 2007).