Supreme Court Review, Vol. 1991 (1991), pp. 143-177

Abstract

Lately, the Constitution has become an unwelcome guest at the parties of those claiming rights lying on the periphery of intellectual property. Two terms ago, in Bonito Boats, Inc. v. Thunder Craft Boats Inc., the Court held that federal patent law preempted a Florida statute forbidding the reproduction of boat hulls by use of any direct molding process. The Court's decision effectively provided a limited constitutional right to copy unpatented product shapes and designs. Most recently, in Feist Publications, Inc. v. Rural Telephone Service, Inc. the Intellectual Property Clause was held to create positive restraints on Congress's ability to provide copyright protection. In deciding that telephone directory white pages were uncopyrightable, the Court found that the Intellectual Property Clause imposed an originality requirement on authors seeking protection for their works. It held that Rural Telephone Service's white pages were not original enough to meet the new constitutional requirement. The Intellectual Property Clause, generally presumed to be nothing more than a grant of power to Congress, suddenly grew some substantive claws.

The idea that only "original" works can be copyrighted is hardly novel. The 1976 Copyright Act protects only "original works of authorship," as did its predecessor act as interpreted by courts and commentators. Exactly what "original" meant in a work comprised of a compilation of facts was hotly debated. A unanimous Court in Feist dropped two bombshells in the middle of the debate. First, Justice O'Connor's opinion asserts, bludgeoning the point home in at least seven places, that originality exists as a constitutional requirement wholly apart from the Copyright Act. Second, telephone white pages are not original enough to satisfy the new constitutional test. In other words, the familiar white pages are unprotected and Congress apparently can do nothing to render them protectable short of initiating a constitutional amendment.

The opinion is all the more interesting, because the Court bypassed at least four narrower grounds for reversing the Tenth Circuit's decision -- the well-worn axiom militating against reaching constitutional questions except when necessary was nowhere to be seen. Doctrinally, these narrow grounds appear far more attractive than the rationale provided in Justice O'Connor's opinion. Feist's constitutionalization of the originality requirement is undesirable because it may frustrate the goals of the Intellectual Property Clause, as described by virtually all modern commentators and the Court itself. Although the likely contours of the post-Feist legal landscape are difficult to predict, Justice O'Connor's opinion in Feist has direct implications for the copyrightability of other types of statutory compilations, collections of facts found in noncompilations, and other works which evidence little originality such as maps and some computer programs. The opinion may also affect the copyrightability of broadcasts of sporting events and speeches, and raises the question of the legitimacy of a congressional attempt to circumvent the decision by enacting legislation under its power to regulate interstate commerce.

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