Copyright law update.

How to protect your membership list from profiteers.

Can your association copyright the membership directory? The recent Supreme Court decision in Feist Publications, Inc., v. Rural Telephone Service Company changed the answer. The case involved the ability to copyright a telephone directory, and the principles set out in that opinion apply to similar types of compilations, such as association membership directories.

Feist changed one fact: The owner of a compilation can no longer rely on what is known as the sweat of the brow test for a simple compilation such as a series of names and addresses. The sweat of the brow test weighs the work that went into creating a particular compilation such as a membership directory.

But now even a membership directory that was difficult to compile is not protected if it's no more than an alphabetical listing. It must also be original. If a compilation shows a sufficient degree of originality in selection, categories, system of ordering, and other qualities of its arrangement, it qualifies for protection under the Copyright Act of 1976.

The Feist opinion is not altogether disastrous. It states: "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 reader. These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimum degree of creativity, are sufficiently original that Congress may protect such compilations through the copyright laws."

An original selection and arrangement means one that is not obvious like the alphabetical listing in a telephone directory. The following recent decisions, made by federal courts after Feist, illustrate this point:

* The selection and arrangement of references to state medicaid laws is a copyrightable compilation.

* A yellow pages directory is a copyrightable compilation because of the selection, coordination, and arrangement of material that produces an original format.

* The creative coordination and arrangement of listings by community in a cable television directory is copyrightable. However, this same case holds that the selection and arrangement of what are known as data fields for the cable television directory are not original enough to command copyright protection. Data fields contain information standard to every cable television publication and so don't meet the requirement.

Do these cases spell hope for copyrighting association membership directories? Undoubtedly they do. A membership directory that is a creative compilation of names, addresses, telephone numbers, division of industry lines, geographic areas, and so forth, is more original than a simple list of names and addresses. Many membership directories also carry creative advertising and announcements about association programs.

Does a copyright prohibit a person from typing a directory's names and addresses in alphabetical order for another purpose? Victory isn't guaranteed against such an infringer, since the infringer would not be copying the selection and layout of the directory but the alphabetical listing. Typing names into a computer is very different from photocopying or optically scanning the pages one by one.

Does Feist affect a mailing list copyright? It is much more difficult now to copyright a simple alphabetical list of names and addresses. Your solution lies in contract law. A contract to rent an association mailing list should contain specific damage provisions as to what happens if the lessee makes unauthorized copies. Have the lessee agree to pay damages to the association upon any illicit copying and state that the lessee has absolutely no rights in the mailing list whatsoever except those specifically granted under the contract. Diligent enforcement of the contract might require litigation on the part of the association, which of course is expensive.

The following copyright questions were recently received by ASAE Information Central.

Should our publications be registered in the U.S. Copyright Office?

Yes. Registration is official recognition by the government that a publication is owned by the association and the copyright is valid. The court will automatically award statutory damages to a copyright owner who proves both infringement and timely registration. That can be useful when actual damages (e.g., loss of profits) are difficult to prove. The timing of registration can be important, so register promptly.

Our library staff makes copies of articles from copyrighted magazines to send to members. We typically do not ask permission first. Is this legal?

No. The library copying rules under the Copyright Act of 1976 are extremely narrow and probably do not apply to any association activities. Copying as a member benefit is a clear example of copyright infringement. This comes as a surprise to many who assume that associations may copy freely, since they are nonprofit organizations. Nothing could be further from the truth. In the last few years, some small newsletter publishers have made more money suing people for statutory damages than by selling subscriptions.

George D. Webster is general counsel to ASAE and a partner in Webster, Chamberlain & Bean, a Washington, D.C., law firm.