11/27/96 HyperLaw, Inc.®

HyperLaw Icon West Loses Long Copyright Fight Over Pagination

West Loses Long Copyright Fight Over Pagination

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PAPER: The Recorder (San Francisco)

DATE: 11/25/96

SECTION: News page 1

HEADLINE: West Loses Long Copyright Fight Over Pagination 

By Krysten Crawford

West Publishing Co. lost a critical court fight in New York 
Friday in its longstanding battle against rivals seeking 
access to its system of paginating published court opinions. 

The federal court ruling marks the first time West, whose 
$3.4 billion merger with Toronto-based The Thomson Corp. is 
awaiting final court approval, has lost such a copyright 
claim, observers said Friday. 

"Where and on what particular pages the text for a court 
opinion appears does not embody any original creation and it 
is not, in my opinion, entitled to protection," U.S. 
District Judge John Martin Jr. said Friday in ruling from 
the bench. 

He added: "What West is trying to do is create a monopoly in 
reported decisions." 

In _Matthew Bender & Co. and HyperLaw Inc. v. West 
Publishing Co._, filed in U.S. District Court for the 
Southern District of New York, the plaintiffs argue that 
Eagan, Minn. -based West cannot claim copyright control of 
its internal page -numbering system for case law books. 

West is a major player in the market for published case law. 
It has argued for years that its pagination system was 
protected by copyright. Critics of the company and 
competitors have claimed that the system, like the court 
opinions themselves, is part of the public domain. 

"This is a significant loss for these guys," said Alan 
Sugarman, the president of New York-based HyperLaw Inc., 
which publishes court rulings on CD-ROM. 

West lawyers said they were dismayed by Judge Martin's 
ruling and vowed to take the case to the New York-based 
Second Circuit U.S. Court of Appeals. 

"I was very surprised because I think [the judge was] really 
wrong," said Joseph Musilek, a Minneapolis lawyer who argued 
the case for West. "We'll be happy to take this to the 
Second Circuit." 

Counsel for Matthew Bender, Morgan Chu of Los Angeles' Irell 
& Manella, was not available for comment. 

The ruling by Martin -- granting full summary judgment to 
Matthew Bender and partial summary judgment to HyperLaw -- 
clears the way for a trial in January on HyperLaw's claim 
that it can legally copy the texts of judicial decisions as 
they are reported in West's books. 

In its motion for partial summary judgment, filed Sept. 23, 
HyperLaw sought the right to copy specific judicial opinions 
from West books for use in its CD-ROMs of federal district 
and circuit opinions. 

The detailed 56-page motion was the result of years of 
correspondence and depositions from West employees. HyperLaw 
tried to fashion a way to copy opinion text from a West book 
without triggering a West claim of copyright infringement. 

In West's Oct. 16 reply to the HyperLaw motion for summary 
judgment, West contended that there are far too many 
disputed facts to consider ruling in summary judgment. 
Resolving the disputed facts in West's favor "would compel a 
conclusion that West's editorial enhancements easily satisfy 
the modicum of creativity standard" for compilations, the 
company said. West makes indirect reference to "additional 
editorial enhancements, like original selection, 
coordination and arrangement of case reports themselves" to 
support a copyright claim. 

Lawyers familiar with West's copyright claim said they were 
not sure what impact, if any, Friday's ruling would have on 
the West-Thomson merger. The U.S. Department of Justice 
signed off on a consent decree in June settling antitrust 
concerns. Final approval of the deal is pending before a 
federal judge in Washington, D.C. 

The Justice Department had filed an _amicus curiae_ brief on 
Matthew Bender's behalf in the New York case decided Friday. 

Tom Scheffey, a reporter at _The Connecticut Law Tribune_, a 
Fairfield, Conn.-based weekly newspaper affiliated with _The 
Recorder_, contributed to this article. 

Reporter Krysten Crawford's e-mail address is