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Statement of Alan D. Sugarman
President, HyperLaw, Inc.
Submitted to the Subcommittee on Intellectual Property
and Judicial Administration
House Committee on the Judiciary
102nd Congress, Second Session
In Support of H.R. 4426
May 29, 1992
This statement is submitted to supplement the record of the hearings held on May 14, 1992 concerning H.R. 4426.
We are in support of the purposes of the bill; however, we believe that the bill must be redrafted so that there is no question the bill's intent is effectuated.
I am the President and CEO of HyperLaw, Inc., a new company formed in 1991 for the purposes of engaging in electronic publishing of legal information. I have practiced law for 20 years, and am a graduate of the University of Chicago Law School. In February, 1992, HyperLaw published Supreme Court on Disc, the first CD-ROM case reporter of opinions of the United States Supreme Court. The CD-ROM contains the opinions for the Court's 1990-1991 term.
Our comments herein will be confined to publication of federal court decisions, even though the bill applies to other issues.
I have read the statements submitted at the May 14, 1992 hearing of the Subcommittee.[1] I will attempt not to duplicate other testimony. We support in general the statements by the Register of Copyright, Professor Craig Joyce, and the American Association of Law Libraries.
In our view, the bill is not an example of special interest legislation for the Thomson Corporation. Thomson may have brought to the attention of the Congress the present untenable, anticompetitive, and undemocratic situation. But the attacks by West on Thomson are inappropriate and irrelevant.
As an independent publisher, and a competitor of Thomson companies, we applaud their efforts. We believe that most of the independent publishers referred to in the exhibits to the West Publishing Company statement would support the purposes of the bill. In our opinion, West, fortified by West v. Mead and its willingness to litigate, has established a stranglehold on many aspects of legal publishing. We will describe some of those below.
As a CD-ROM publisher, we are particularly aware of the stranglehold as it relates to the publication of federal law materials. One of the advantages of the CD-ROM media is that it is possible to disseminate a complete legal treatise and the full text of many thousands of cases cited in the treatise, on a single CD-ROM.[2] However, the practicalities are that legal writers generally need to reduce their research to a brief or article, and that citations to judicial decisions must include both the preferred official or standard citation and also citation to interior pages where specific issues are discussed.
Thus, a publication of the full text of cases is hobbled unless such citation information is available to the legal writers using the publication. Indeed, West has published such a CD-ROM treatise on federal court practice — and the CD-ROM contains the full text of the cases in the only citation form directly accepted by federal courts. But no other publisher may do this without the permission of West.
It is largely irrelevant how or why West got itself in the position of being able to assert monopoly control of federal judicial decision pagination — but clearly, whatever efforts West expended were done with the full knowledge of Wheaton v. Peters, 33 U.S. 591 (1834), described in Professor Joyce's Statement, Page 21. Moreover innovation and sweat alone, as West contends, do not account for the West success in establishing dominance of its citation system; even at present, West Publishing Company is attempting to undermine efforts of the federal judiciary to establish a public domain citation for federal court opinions.[3]
Chilling Effect of West Copyright Claims on HyperLaw
Vance Opperman in his oral testimony referred to HyperLaw's Supreme Court on Disc CD-ROM to support the proposition that there is abundant competition in publishing federal cases. Mr. Opperman has clearly missed the point. In is our opinion, West's threats coupled with the lack of clarity of the present state of copyright law has injured the marketability of the Supreme Court on Disc CD-ROM, in that we were not able to include citation and pagination information from West's Supreme Court Reporter. The pagination in West's Supreme Court Reporter is the "standard" citation for Supreme Court opinions, until the Court releases the Preliminary Print. For Supreme Court slip opinions, the Supreme Court Reporter citation information is required by the Bluebook and is in practice required to be included in all briefs submitted to federal courts.
As an example, the HyperLaw CD-ROM contains the full text of Feist Publications, Inc. v. Rural Telephone Service Company Inc. decided during the Court's 1990-1991 term. However, we did not include the Supreme Court Reporter citation to the opinion — 111 S.Ct. 1282 — at the beginning of the opinion. Our CD-ROM was a complete compilation of the 1990-1991 term opinions. Based on our correspondence with West and West v. Mead, we believed we would be sued by West if we did.[4]
Similarly, we were afraid to insert the interior pagination for Feist as it appear in the West Supreme Court Reporter This interior pagination is sometimes referred to as "star pagination."[5] As an example, we could not show where page 1285 of the Feist case began and ended. Thus, a legal writer preparing a brief for a federal court who wished to cite to a statement on page 1285 of Feist would still need to obtain a copy of West's Supreme Court Reporter.
Accordingly, HyperLaw's Supreme Court on Disc CD-ROM could not be the sole research tool for the legal writer. The damaging effect of the West's claims and the lack of clarity of copyright law upon our CD-ROM is easy to see.
We also could not include on the CD-ROM citable versions of the lower court decisions being appealed to the Supreme Court because these generally were from West's Federal Reporter 2d. Additionally, we might even have chosen to include the full text of the West v. Mead case, to read in conjunction with Feist — again, we could not do so without fear of litigation.
Ironically, efforts by HyperLaw to wage an effective intellectual challenge to West by publishing a CD-ROM with citations to West v. Mead and Feist would be chilled by the threat of litigation from West. We leave to constitutional lawyers whether there are First Amendment principles involved here.
We should emphasize as well that the burden is not only fear of litigation (and for a small publisher, bankruptcy) — any publisher even thinking of a publication that may in West's view infringe West copyrights must disclose its competitive plans to West, pay license fees to West, and in any event have to engage is what amounts to a time consuming and debilitating process to obtain a "publication permit" from West.
Perhaps well funded litigation in independent courts would eventually clarify the law to establish HyperLaw's freedom to publish the decisions of the federal courts using the federal court endorsed citation and star pagination. On the other hand, other circumstances may intervene, and the issue may not be settled. We believe that the expectation that litigation will resolve the issues, although appealing in theory, ignores the realities of publishing, standing to bring declaratory judgment actions, and the ability of large competitors to abuse the litigation system and copyright laws.[6]
The possibility that the Courts may some day clarify an issue is not a reason for Congress to delay, especially where the subject matter involves statutory and judicial law which is fundamental information required for the functioning of our democracy and system of justice.
Does the Bill Do What It Should
The purpose of the H.R. 4426 is "to exclude copyright protection for certain legal compilations." We are not at all sure that the bill as drafted will accomplish what it intends to do. In order to assist in this analysis, we will discuss only the copyright of federal court decision citations.
The bill proposes to amend Section 105(a)(2) to provide that copyright protection is not available
for any volume or page number by which ...Federal ... judicial opinions, or portions thereof, are, or ever have been, identified.
This language will not cure the problem caused by the West v. Mead case.
West's spokesman, Mr. Vance Opperman, in his May 14, 1992 to the Subcommittee, perhaps in an effort to create a legislative record, by implication illustrates the inadequacy of the present language of the bill:
Those who disagree with the decisions in West v. Mead have consistently distorted a central fact. I cannot state often enough that, contrary to Mead's assertion in the case and some assertions that Thomson Corporation is now making, West did not and does not claim copyright protection for page numbers and citations per se. It is ridiculous to think that any publisher could or would claim copyright protection for terms like "volume 534" or "Page 42." Neither does West claim that its citations — such as "681 F. Supp. 1228" — are in and of themselves copyrightable.
Vance Opperman Statement, Page 21.
We are not so sure that commentators have distorted West v. Mead. But West may have fairly read the bill language which some may reasonably conclude addresses only "copyright protection for page number and citations per se".
West says it has never claimed a copyright on for example the words "681 F. Supp 1228". Taken literally, the bill says the same thing, that one cannot copyright "volume or page numbers". Were the bill to be enacted as drafted, the bad law of West v. Mead would persist, since the issues determined there related to compilations of cases.
Thus, if the current bill version were to be enacted, West would likely continue to assert that its copyright in, for example, the compilation of cases found in Volume 111 of the Supreme Court Reporter had been violated were a commercial publisher to publish the Feist decision with all of the West Supreme Court Reporter interior "star pagination." This is because a compilation of uncopyrightable elements could be copyrightable.
That West would continue to claim copyright infringement for commercial publication of even a single opinion with West interior pagination is illustrated by what is not said in another part of the West statement:
What West continues to object to and what was really an issue in West v. Mead is the wholesale taking of its original copyrighted compilations of case law materials for direct commercial use by a competitor.
Vance Opperman Statement, Page 22.
This sentence requires closer scrutiny. First, Opperman does not state that West's only objection is "wholesale taking" — and he begs the question whether West objects to something less than "wholesale" use. Second, Mr. Opperman states that "wholesale taking" was "an" issue in the Mead, not "the" issue. Once again, it is not clear what the other issues in West v. Mead were, in West's view.[7] This is another reason the language of the bill needs to be clarified.
We would agree that West v. Mead was directed more to compilations of cases, and not to the citations itself. But the bill language is not adequate — arguably, it would only except from copyright protection the "case citation" or "jump citation." It would not, on its face, protect a compilation which uses all of the volume and page number identifiers from another publisher's case reporter.
Nor might the bill protect a commercial republication of a single case using the interior pagination from a West reporter. Moreover, the bill's language ignores the claims by West and other publishers that their copyright on case reports also includes "sweat of the brow" efforts such as correcting spellings and typographical errors, adding parallel citations, and incorporating amendments of the decision in a single restated decision. We note that this is just the type of activity engaged in by Henry Wheaton. Wheaton v. Peters. 38 U.S. 591 (1834), discussed at pages 21 and 22 of the Statement of Professor Joyce, and rejected as not evidence of original work in Feist.
The language of the bill needs to be revised so as to make it abundantly clear that copyright protection is not available for:
those elements of compilations of Federal judicial opinions which consist of volume and initial page numbers, case numbers, text breaks such as page numbers or paragraph numbers, and other identifying material as well as corrections of typographical errors, additions of parallel citations, and incorporation of amending or modifying language
I must admit that this language may not complete the job - there is still the issue of selection and organization. Perhaps Section 103 should be amended to add a statement such as "a compilation of decisions of the federal courts do not constitute an original work of authorship under this section." Another possibility would be to amend Section 103 to state:
Elements of Federal judicial opinions or compilations thereof which consist of volume and initial page numbers, case numbers, text breaks such as page numbers or paragraph numbers, and other identifying material as well as corrections of typographical errors, additions of parallel citations, corrections of citations, changes of case name references, and incorporation of amending or modifying language, selection of opinions by court or by perceived importance, organization of opinions by date or court, and results of other similar efforts, may not be introduced as evidence to support a claim of original work of authorship, either alone or as part of a compilation.
By excluding certain aspects of a compilation from being introduced into evidence to support a claim of original work of authorship, judicial proceedings considering compilation of judicial opinions will be greatly simplified, and all will be spared the diversion that occurred in the West v. Mead case. Of course, anyone who republished a West reporter volume with all of the headnotes, key numbers, and other original West material would still violate West's copyright. Admittedly, there are some compilations that may deserve protection; compilation of important Rule 11 cases may deserve protection; a compilation of all precedential value cases concerning the federal rules probably should not. The language suggested is merely a starting point,
The Committee should also understand that concepts of selection and organization are not as meaningful in the CD-ROM and on-line environment. In a sense, the selection and organization is performed by the user, not by the publishers. But the mere selection, coordination, and arrangement of a set of federal court opinions would just not be protected.
Having pointed out the problem, I leave it to those more knowledgeable in the structure of the Copyright Act and legislative drafting to perform the redrafting and codification of Feist.
It is our assumption that the bill should protect a publication of the Feist decision with all of the page breaks from West's Supreme Court Reporter; publication of the West v. Mead with text obtained from, and including all of the page breaks from, West's Federal Reporter 2d; publication of a compilation of all of the opinions of the United States Supreme Court using West's Supreme Court Reporter pagination; and a compilation of all or substantially all federal lower court decisions which includes the pagination from West's Supreme Court Reporter or Federal Supplement.
Thus, the bill needs to be amended to make it clear that certain elements of compilations may not be used as evidence of original work to support copyright of a compilation, not only the volume and page numbers.
Comment on Specific Contentions by West
At the hearing, Congressman Frank expressed an interest in the policy issues including the fairness to publishers who have published compilations. Thus, some response is needed to the rambling opposition of West. We do not intend to respond to all of the hyperbole and diverting statements in the West statement. We believe that a few examples will suffice.
West claims that its success results because it "innovates and competes".[8] We do not know, for example, why Delaware decided to stop publishing the Delaware reports and we do not know what was said or done or offered by West at the time. Nor do we know whether the Delaware legislature and judiciary understood that it was conferring a monopoly upon West or that West would sue other publishers that used the Atlantic Reporter pagination, if even a small number of opinions were published.
However, we would like to bring to the Subcommittee's attention the proposal of the United Stated Judicial Conference to establish an electronic citation system.[9] Such a system, if implemented, would eliminate the West citation monopoly for federal court decisions. West is making every effort to undermine and thwart the proposal — it first campaigned against a central repository of electronically disseminated federal cases, and is now campaigning against the federal courts adoption of their own "star-pagination" of cases.[10] West also has not been candid with the Judicial Conference; West implies that it would consent to use of the West volume and first page citation in a commercially published compilation; this is misleading.[11] West opposed the Judicial Conference Subcommittee official Electronic Citation System on the grounds, among others, that the parallel citation would make decisions longer and more unwieldy. Before this Subcommittee, West heartily endorses duplicative parallel citations from numerous publishers of case reports. West is of course free to lobby as it wishes, but there is a certain inconsistency in fact and approach.
West also makes an effort to illustrate the extent of competition in publication of case reporters.:
Just to illustrate the multiplicity of publishers of federal judicial opinions, the full text of each opinion of the United States Supreme Court currently can be obtained from at least seven different sources...
Vance Opperman Statement, Page 14.
West is actually arguing against itself. First, it is a little disingenuous for West to count West's Supreme Court Reporter, WESTLAW, and LEXIS as three sources - since LEXIS uses the Supreme Court Reporter pagination under a license from West, and West's Supreme Court Reporter and WESTLAW are published by the same publisher. West has only one private permanent bound Supreme Court reporter competitor, and that is Lawyer's Edition.
The viability of a permanent bound case reporter versions of Supreme Court opinions is feasible commercially only because of the existence of the official citation provided by United States Reports. These official citations, however, are not released until two years after the opinions are decided; in the interim, the so called advanced sheets must use a proprietary citation or the slip opinion citation form. HyperLaw decided to publish Supreme Court on Disc CD-ROM because for opinions over two year old, the United States Reports are available.
"Advance sheet" versions for opinions released within the prior two years of Lawyer's Edition, and the CD-ROM equivalent on Supreme Court on Disc, remain at a commercial disadvantage because of the inability to use the "standard" Supreme Court Reporter pagination for slip opinions. Many librarians do not bother to even purchase the advance sheet version of Lawyer's Edition, because it does not contain standard or official citation information.
The real lesson, then, from West's Supreme Court example is that existence of a public domain official citation with interior pagination stimulates competition. A cursory inspection of West's other examples of new legal publications since West v. Mead was decided would support this statement.
For example, where is the vaunted competition in the publication of the full text of decision of the lower federal courts? West (and WESTLAW and West's licensee LEXIS) are the only publisher of comprehensive federal decision reporters. On CD-ROM, West is the only publisher of CD-ROM's that contain the full text of opinions of any selected lower federal court decisions.[12] We assume that the West license to Mead Data Central which owns LEXIS, prohibits Mead from including West star-pagination on CD-ROM or print publication. West has the field entirely to itself. As to availability of case material in a variety of formats, West has declined to publish CD-ROM versions of Federal Supplement and Federal Reporter 2d. West also will not publish microfiche versions of current volumes of those reporters. Why? We believe, not lack of demand, but lack of competition.
West further states at page 43 of its statement that "In no other nation are so many publishers making so much public domain legal material so widely, inexpensively and readily available". This is not true. First, only West could suggest that WESTLAW is "inexpensive".
As to other nations, one example will suffice. In Italy, there are several companies publishing CD-ROM reporters of full text decisions of the Italian national courts including IPSOA srl, Giuffre Editore Spa, and LaserData spa. In the United States (with the exception of Supreme Court on Disc), there are no federal court case reporters on CD-ROM. CD-ROM Law publication in the United States is behind that in other Western European countries, and, without clarification of the copyright laws, will only fall further behind.
Conclusion
We support the purposes of H.R. 4426. However, we believe the language needs to be changed to address the compilation and "sweat of the brow" issues. We believe that language limiting the use of certain elements as evidence of originality is a proper and sound approach.
May 29, 1992
The Honorable William J. Hughes
Chairman Subcommittee on Intellectual Property
and Judicial Administration
House Committee on the Judiciary
United States House of Representatives
207 Cannon House Office Building
Washington, D.C. 20515
Dear Congressman Hughes:
Enclosed herewith is our statement to be submitted to the Subcommittee on Intellectual Property and Judicial Administration of the House Judiciary Committee in support of the intent of H.R. 4426.
HyperLaw, Inc., was formed in 1991 for the purposes of engaging in electronic publishing of legal information. In early, 1992, it published Supreme Court on Disc on CD-ROM, the first CD-ROM case reporter of United States Supreme Court decisions. Because of the lack of clarity in copyright law, HyperLaw was unable to include useful information and features in the CD-ROM, including pagination information and the text of lower court opinions on appeal.
Although we support the intent of the bill, we have identified ambiguities in the bill and believe the bill as drafted will not work. The bill needs to address compilations explicitly. It should also address "sweat-of-the-brow" claims such as case selection, correction of typographical and citation errors in opinions, and make it clear that neither pagination nor such "sweat-of-the-brow" activities may be used as evidence to support a claim of original work in a compilation.
We attended the hearings held on May 14, 1992 and were advised that the record would remain open for at least ten legislative days to supplement the record.
Sincerely,
Alan D. Sugarman
President and CEO
_______________________________
[1] [2] [3]
Standard Citation to Electronic Opinions, Draft Report, July 18, 1991, Library Program Subcommittee of the Automation and Technology Committee of the Judicial Conference.
Letter dated August 22, 1991 from West Publishing Company to the Administrative Office of the United States Courts.
Transcript of the Proceedings of the Library Program Subcommittee of the Automation and Technology Committee of the Judicial Conference Regarding Electronic Citation System, September 13, 1991. (See the Testimony of Dwight D. Opperman at Page 78 which is somewhat inconsistent with the testimony of Vance Opperman to this Subcommittee).
Standard Citation to Electronic Opinions, Revised Draft Report, October 17, 1991, Library Program Subcommittee of the Automation and Technology Committee of the Judicial Conference.
Letter dated April 9, 1992 from HyperLaw, Inc. to the Administrative Office of the United States Courts.
Letter and proposal dated April 15, 1992, from HyperLaw, Inc. to the United States Supreme Court.
[4] See also footnote 9 of the Statement of Professor Joyce concerning an action brought by West against ROM Publishers, Inc., a Nebraska publisher. We believe that the company and owners suffered bankruptcy as a result of the action.
CASE CITATION. The citation to the volume and initial page location (or a case number) of a particular decision, for example, Mead, 799 F.2d 1219.
PINPOINT LOCATION. An interior location within a decision such as a page break, beginning of a paragraph, or other arbitrary segment break.
PINPOINT CITATION. A reference (that may be contained in an article, case, or brief) to a "pinpoint location" in a decision. Most writers seem to use this as a synonym for "jump cite". For example, 799 F.2d 1219, 1222.
JUMP CITE. See Pinpoint Citation.
STAR-PAGINATION. A scheme or system identifying or marking pinpoint locations (usually page numbers) located in another published version of the same decision. This phrase apparently was coined by Lexis to describe its insertion of West interior page numbers in Lexis' text.
Thus, one might state that pagination information permits "pinpoint citation." In the same sense, a "jump cite" "jumps" to a specific page. Some commentators equate "jump cite" with "star pagination". We disagree with this usage. Indeed, West v. Mead , 700 F.2d at 1222, contributes to the confusion: "This feature would insert page numbers from West's National Reporter System publications into the body of LEXIS reports, providing 'jump' or 'pinpoint' citations to the location in West's reporter..." It would have been more accurate to say "permitting 'jump' or 'pinpoint' citations" rather than "providing".
[6] [7] [8] [9] [10] [11]
[12]