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Copyright protection cannot be extended to a hardware manufacturer’s numbering of its parts if the choice of numbers is not “creative,” but instead follows a system in which each digit of the part number simply corresponds to a characteristic of the part, a federal appeals court has ruled. If that ruling sounds like something you’ve heard before, well, it is. Last week’s decision by a 13-judge panel of the 3rd U.S. Circuit Court of Appeals in Southco Inc. v. Kanebridge Corp. is the culmination of a five-year roller-coaster ride that effectively reinstates the defendant’s July 2001 victory. Southco, a manufacturer of fasteners, latches and screws, won the first round of the litigation when Senior U.S. District Judge Norma L. Shapiro issued an injunction in January 2000 that barred Kanebridge from using Southco’s nine-digit numbering system to sell identical products. Shapiro found that Southco’s numbering system was a “complex code” with “unique, non-intuitive and highly complex attributes,” and that if it were not protected by copyright, Southco would suffer “widespread use by unauthorized competitors.” But Kanebridge won the next round when the 3rd Circuit dissolved the injunction in July 2001 and held that Southco was not likely to succeed because such part numbers are not entitled to protection. The ruling appeared to be a complete victory for Kanebridge because the appellate court used sweeping language in its rejection of Southco’s copyright theory. “Southco’s part numbers are completely devoid of originality and instead result from the mechanical application of the numbering system,” 3rd Circuit Judge Samuel A. Alito wrote in an opinion joined by Judges Dolores K. Sloviter and Anthony J. Scirica. “We conclude that the creative spark is utterly lacking in Southco’s part numbers and that these numbers are examples of works that fall short of the minimal level of creativity required for copyright protection,” Alito wrote. Predictably, round No. 3 also went to Kanebridge when Shapiro granted summary judgment in its favor and dismissed the suit, citing the 3rd Circuit’s injunction decision. But the roller-coaster ride was far from over. In a second appeal to the 3rd Circuit, Southco found itself back on top in March 2003 when it won a ruling that revived the case. A different three-judge panel reviewed Shapiro’s summary judgment decision and held that she had ignored “new evidence” that established the originality of the part numbers and their protectability. Third Circuit Judge Jane R. Roth found that Shapiro had read the appellate court’s first decision too broadly. “Because the only issue before the panel in Southco I was whether Southco was entitled to a preliminary injunction, the district court erred in concluding that it was bound by Southco I to grant Kanebridge’s motion for summary judgment,” Roth wrote. “While the Southco I panel reviewed the likelihood of success on the merits of the ‘originality’ claim, the panel did not address the distinct issue of whether Southco is actually entitled to succeed on the merits of the claim,” Roth wrote in an opinion joined by Judge D. Brooks Smith and visiting 7th Circuit Judge Richard D. Cudahy. Roth found that Southco’s new evidence “calls into doubt the Southco I panel’s factual conclusions about the process by which Southco assigns numbers to new fasteners.” The new evidence cited by Roth was an affidavit by Robert H. Bisbing, the inventor of Southco’s captive screw fasteners, who described the process by which he developed the product numbers for this new line of fasteners. Bisbing’s testimony, Roth said, showed that the product numbers were not “mechanically assigned,” but instead that the inventor of each new product “exercised creativity and choice in determining the values to be reflected in the numbers.” But Roth’s decision was vacated when the 3rd Circuit voted to rehear the case before the full court in October 2003. Now the roller-coaster ride has taken what may be its final plunge and Kanebridge has once again emerged the victor. In a long-awaited decision handed down Friday, the 3rd Circuit voted 11-2 to uphold Shapiro’s dismissal of the suit. Roth authored a dissenting opinion that was joined by Judge Michael Chertoff. Alito authored the majority decision and was joined wholly by seven judges — Chief Judge Anthony J. Scirica, and Judges Dolores K. Sloviter, Richard L. Nygaard, Marjorie O. Rendell, Maryanne Trump Barry, Thomas L. Ambro and Julio M. Fuentes. Senior Judge Edward R. Becker, joined by Judges Smith and Theodore A. McKee, authored a concurring opinion that rejected some of Alito’s reasoning, but joined in the result. Writing for the majority, Alito found that “the Southco product numbers are not ‘original’ because each number is rigidly dictated by the rules of the Southco system.” Because “ideas” may not be copyrighted, Alito said, Southco was not asserting any claim of copyright in its numbering “system,” but instead focuses on the part numbers themselves. “The numbers, however, do not reflect any creativity,” Alito said. The evidence, Alito said, showed that before any Southco product could be numbered, Southco had to create the numbering system applicable to products in that line. At issue in the litigation was Southco’s No. 47 fastener series, known as “retractable captive screw assemblies,” which combine screws and knobs together in a locking mechanism. The products are identified by a nine-digit numbering system with the format ## – ## – ### – ##. The first two digits denote the product class while the other digits denote functional characteristics such as installation type, thread size, recess type (phillips or slotted), grip length, material and knob finish. Alito found that such a mechanical system of numbering cannot be considered creative because each nine-digit number was dictated by the numbers chosen to represent the individual characteristics. “Once these decisions were made, the system was in place, and all of the products in the class could be numbered without the slightest element of creativity. Indeed, if any creativity were allowed to creep into the numbering process, the system would be defeated,” Alito wrote. As a result, Alito concluded that “the Southco numbers are purely functional” and merely “convey information about a few objective characteristics of mundane products — for example, that a particular screw is one-eighth of an inch in length.” Alito criticized Roth’s dissent for relying on an argument that was never made by Southco. “The dissent contends that the expression at issue here consists of both ‘the particular numbers’ at issue and ‘the numbering rules’ that produced those numbers. But Southco has never claimed that its numbering ‘rules’ or ‘system’ is copyrightable,” Alito wrote. In its brief in the first appeal, Alito noted, Southco had argued that “there is no monopoly on the system; anyone is free to use it … with impunity. It is only the particular expression that Southco seeks to protect — the precise nine digits which express the idea in each part number.” The ruling is a victory for Kanebridge’s attorneys — Stanley H. Cohen of Caesar Rivise Bernstein Cohen & Pokotilow in Philadelphia and Steven B. Pokotilow of Stroock Stroock & Lavan in New York. Southco was represented in the appeal by attorneys James C. McConnon and Alex R. Sluzas of Paul & Paul in Philadelphia.

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