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Justice O’Connor’s Copyright Legacy

Although the late Justice Sandra Day O’Connor was not best known for her copyright jurisprudence, she wrote perhaps the most important Supreme Court decision since Baker v. Selden in 1879: Feist v. Rural Telephone. Her sweeping opinion in Feist established that creativity was a constitutional requirement for copyright protection, and that copyright meets its constitutional objective of promoting the progress of science and useful arts precisely by encouraging “others to build freely upon the ideas and information conveyed by a work.” By recognizing constitutional limits on the scope of copyright protection, Justice O’Connor ensured that copyright did not become an obstacle to competition and innovation. Additionally, she was the swing vote in Sony v. Universal, which has been described as the Magna Carta of the technology industry. 

Feist v. Rural Telephone

Feist v. Rural Telephone concerned the protectability of Rural Telephone’s telephone directory listing all of its subscribers. Rural argued that Feist’s copying of these telephone listings from Rural’s directory infringed Rural’s copyright in its directory. Rural based its position on the “sweat of the brow” or “industrious collection” doctrine, under which the copyright in a fact compilation in effect extended to the facts contained in the compilation. The premise of the “sweat of the brow” doctrine was that copyright was a reward for the hard work that went into compiling facts.

Justice O’Connor, in an opinion joined by seven Justices (Justice Blackmun concurred in the judgment but did not join the opinion), emphatically rejected the sweat of the brow doctrine, holding that it “flouted basic copyright principles” and “eschewed the most fundamental axiom of copyright law–that no one may copyright facts or ideas.” Justice O’Connor could have based the decision on interpretation of section 101 of the Copyright Act, which defines the scope of protection for a compilation of facts. Instead, she grounded the decision in the Constitution. She declared that “originality is a constitutional requirement,” and that facts cannot receive copyright protection because they are not original. “Facts do not owe their origin to an act of authorship,” she wrote; facts are discovered, not created.

To be sure, the selection and arrangement of facts could be original, and therefore protectable; but the facts themselves “are free for the taking,” regardless of how much effort their collection required. Justice O’Connor recognized that “[i]t may seem unfair that much of the fruit of the compiler’s labor may be used by others without compensation.” But this is the “essence of copyright, and a constitutional requirement.” Justice O’Connor explained that under the Constitution, “the primary objective of copyright is not to reward the labors of authors, but ‘to promote the Progress of Science and useful Arts.” Copyright achieves this objective “assur[ing] authors the right to their original expression, but encourag[ing] others to build freely upon the ideas and information conveyed by a work.” With respect to compilations, this meant that “only the compiler’s selection and arrangement may be protected; the raw facts may be copied at will.” Justice O’Connor underscored that “this result is neither unfair nor unfortunate; it is the means by which copyright advances the progress of science and art.”

It is difficult to overstate the impact of the Feist decision. By finding that originality is a Constitutional requirement, and that extending protection only to the original elements of a work furthers the Constitutional objective of copyright, the Feist decision caused a major course correction in the lower courts, particularly in software copyright cases. In decisions such as Whelan v. Jaslow, lower courts had accorded protection to the structure and logic of computer programs, reasoning that these were costly to develop and that protecting them “would provide the proper incentive for programmers by protecting their most valuable efforts.” Feist, however, rejected the notion that protectability has anything to do with the value of the material sought to be protected or the effort expended in its development. What mattered was whether the material constituted expression and was, accordingly, original. Feist informed landmark software copyright decisions such as Computer Associates v. Altai that the economic value of program elements was completely irrelevant to the determination of whether those elements were protectable under copyright. 

Relatedly, every copyright case since Feist has been framed—implicitly or explicitly—by Justice O’Connor’s clear articulation that the purpose of copyright is not to reward the labors of authors, but to promote the Progress of Science and useful Arts by enabling authors to build freely upon the ideas and information conveyed by existing works. 

Sony v. Universal

Justice O’Connor played a critical behind-the-scenes role in Sony v. Universal (Betamax), a decision almost as important as Feist. The Ninth Circuit had found that noncommercial private home videotaping of television programs infringed the copyright in the programs, and that Sony was contributorily liable for this infringement because of its awareness that the Betamax machines it manufactured could be used to reproduce these programs. In a 5-4 decision written by Justice Stevens, the Supreme Court reversed the Ninth Circuit’s decision, ruling that consumers’ “time-shifting” of television programs was a fair use, and that Sony was not a contributory infringer because its Betamax machines were capable of a substantial noninfringing use: this time-shifting.

Justice Marshall’s papers, when opened to the public after his death, revealed that Justice O’Connor had provided the swing vote for the Court’s decision. At the internal conference held by the Supreme Court after the oral argument in 1983, a majority of Justices appeared to support affirming the Ninth Circuit’s finding that Sony contributed to copyright infringement. Justice Blackmun was assigned the task of writing the majority opinion. Justice Blackmun fashioned an opinion that quickly gained the approval of Justices Marshall, Rehnquist, and Powell. Although Justice O’Connor initially supported affirmance at conference, she had difficulty with Justice Blackmun’s draft opinion. Justice Blackmun refused to make changes to his opinion that she requested, declaring that “[f]ive votes are not that important to me when I feel that proper legal principles are involved. It therefore looks as though you and I are in substantial disagreement.” 

Justice O’Connor then began working with Justice Stevens, who was writing an opinion supporting reversal with the concurrence of Justices Brennan, White, and Burger. Justice Stevens was willing to accommodate Justice O’Connor’s concerns about the appropriate standard for contributory infringement. Eventually she joined his opinion, and Justice Stevens had five votes necessary to reverse the Ninth Circuit.

Betamax enabled an explosion of innovation that all of us enjoy in our daily lives. All digital devices, including personal computers, DVRs, and iPods, allow consumers to make copies. Justice Stevens’ opinion made clear that the manufacturers of these devices were not liable for infringements made with the devices because the devices were also capable of substantial noninfringing uses – the fair use private copies. This meant that companies could invest in the development of new digital technologies without them incurring the risk of enormous liability for the potential misuses of those technologies by some of their consumers.

Other Copyright Decisions

Justice O’Connor was involved in other important copyright decisions. She wrote the problematic decision in Harper & Row v. Nation Enterprises, which rejected The Nation’s fair use defense for publishing a verbatim quotation of less than 400 words from the passage of President Ford’s memoir discussing his pardon of President Nixon. The opinion contained questionable dicta concerning the four fair use factors which were largely superseded by Campbell v. Acuff-Rose. However, Justice O’Connor prevented the decision from being worse. In addition to its verbatim quotation, The Nation had paraphrased some of the memoir’s other passages. The Second Circuit below held that these paraphrases were not infringing, rejecting the district court’s finding that the coupling of facts with President Ford’s revelations concerning his state of mind created a copyrightable totality that could not be reproduced. In correspondence revealed in Justice Blackmun’s papers, Justice Powell urged Justice O’Connor to reverse the Second Circuit’s ruling concerning the paraphrases. Justice O’Connor replied that while she agreed that more than merely the words were protectable, and that the Second Circuit may have erred on this point, she feared she would lose her slim majority if she addressed the paraphrases. She recommended instead that this issue be left for another day and Justice Powell ultimately agreed. A ruling preventing the paraphrasing of autobiographies would have caused serious problems for journalists and historians. 

Justice O’Connor also recommended an important change to Justice Ginsburg’s opinion in New York Times v. Tasini. In a draft of her opinion, Justice Ginsburg stated: “The Copyright Act’s ultimate concern is the way works are presented to, and comprehensible by, the human reader, viewer, or listener.” In correspondence revealed in Justice Stevens’ papers, Justice O’Connor wrote that while she agreed with the point of the sentence in the context of the opinion, she had two concerns about the sentence as written. First, 

the “ultimate concern” of the Copyright Act is actually the protection of original expression so as “[t]o promote the Progress of Science and useful Arts,” U.S. Const., Art. I, § 8, cl. 8. While perceptibility is one concern of the Copyright Act in a functional sense, it seems to me that the “ultimate concern” claim is too sweeping and not quite accurate. 


the sentence is somewhat misleading in that the Copyright Act is not at all concerned with the way in which works are presented to and perceived by human beings. … A sentence that links the Copyright Act’s “ultimate concern” to the “way” in which works are presented might be used to attack medium neutrality or for some other misleading purpose. The risk of misuse seems particularly great because the sentence is eminently quotable and appears at an important juncture in the opinion.

On this basis, Justice O’Connor proposed replacing the troubling sentence with a more neutral one. Justice Ginsburg responded later that day, telling Justice O’Connor, “[y]ou are absolutely right.” Justice O’Connor was correct that Justice Ginsburg’s original formulation would have been susceptible to misuse for the reasons she stated. 

Although most Americans will remember Justice O’Connor for her trailblazing role as the first woman to be a Justice on the Supreme Court and her representing the swing vote in many divisive cases, her legacy of keeping copyright within its proper bounds should also not be overlooked.

Intellectual Property

The Internet enables the free exchange of ideas and content that, in turn, promote creativity, commerce, and innovation. However, a balanced approach to copyright, trademarks, and patents is critical to this creative and entrepreneurial spirit the Internet has fostered. Consequently, it is our belief that the intellectual property system should encourage innovation, while not impeding new business models and open-source developments.