10/10/96 HyperLaw, Inc.®

HyperLaw Request To DOJ - To File Amicus Brief. September 27, 1996

HyperLaw Request To DOJ - To File Amicus Brief. September 27, 1996

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"Back to DOJ Antitrust Review of Thomson/West Merger Page"

Note: By a letter dated October 3, 1996 from Joel I. Klein, Deputy Assistant Attorney General, DOJ declined to file an amicus brief on the text issues.

HyperLaw, Inc. 
P.O. Box 1176 
New York, New York 10023 
September 27, 1996 
Mr. Lawrence R. Fullerton 
Deputy Assistant Attorney General 
Antitrust Divsion 
U.S. Department of Justice 
10th & Constitution Avenue, N.W. 
Washington, D.C.  20530 
Dear Mr. Fullerton: 
We recently requested in a filing with DOJ that DOJ file an  
amicus brief in support of HyperLaw's motion for a  
determination that West copyrights are not infringed when a  
competing publisher keys-in and publishes the text of court  
opinions from a West case reporter, but does not key-in the  
West headnotes and syllabi. 
HyperLaw's has filed its motion for summary judgment on  
Tuesday, September 23, 1996.  It was filed under seal.  West  
last night agreed to unseal the document.  I am faxing to  
you herewith the memorandum of law in support of the motion. 
We hereby request that the Department of Justice now file an  
amicus brief in support of this part of HyperLaw's motion. 
Enclosed is a letter to Attorney General Reno that provides  
further explanation. 
Alan D. Sugarman 

HyperLaw, Inc.
P.O. Box 1176
New York, New York 10023

September 27, 1996

Attorney General Janet Reno
United Stated Department of Justice
10th & Constitution Ave., N.W.
Washington, D.C.  20530

Dear Attorney General Reno:

I am requesting in the enclosed letter that the Department 
file an amicus brief in support of HyperLaw's motion in 
Matthew Bender & Company and HyperLaw v. West Publishing 
Company for a determination that the text of court opinions, 
apart from the headnotes and syllabus, may be copied from 
West reporters and used by competing publishers in their 
products without infringing West copyrights.

The Antitrust Division has filed a brief in support of 
Matthew Bender's motion with respect to the citation of page 
numbers and an amicus brief in support of the same position 
in Oasis v. West.  In some ways this is an even more 
important motion, because it is not possible to obtain the 
copies of  many historical opinions from court archives. 
Even where opinions are obtainable, the opinions do not 
include corrections made by judges and communicated to West.  
Moreover, it is an extremely costly process.  Matthew Bender 
attempted to obtain five years worth of opinions from court 
files in New York, and, ultimately disbanded the project.

This problem is highlighted by the release, this week, of 
the FLITE (Air Force)-JURIS (DOJ) archive of United States 
Reports opinions.   However, that archive does not opinions 
after 1985.

Many may ask why are there no opinions after 1985?  In 1985, 
the DOJ and the Air Force stopped keying in this data, and 
instead relied upon data provided from West and its Supreme 
Court Reporter.  Further, according to the DOJ's position, 
it entered into a license agreement that required it to give 
the West data back to West at the end of the contract 
[others interpret the contract to permit DOJ to keep the 
opinion text portion of the data.]

Clearly, this was a policy mistake.  Had DOJ continued to 
key in Supreme Court opinions from the public document or 
negotiated a clear contract to assure that DOJ owned its 
archive of opinions, then the public would have benefited 
greatly by the announcement this week because it would have 
received a complete set of opinions.

Why does DOJ not have its own archive of federal court 
opinions?  Again, one must go back to 1976.  FLITE and DOJ 
wanted to create their own court opinion database.  West had 
not yet gone electronic.  When DOJ and FLITE approached 
West, West took the position that DOJ and FLITE could not 
key in the court opinions from West Reporters -- even if DOJ 
and FLITE did not key in the West headnotes and digests.  

DOJ and FLITE then had the following choices:

1.	Challenge West's copyright assertions and key in 
the court opinions over the West objections.

2.	Obtain the opinions from the courts and key them 

3.	Obtain a license from West to permit DOJ to key in 
non-copyrighted court opinions. [West did not have 
the data in electronic form at that time].

There was apparently no political will to confront West 
which would be required in choice 1.  Choice 2 was very 
expensive and impossible as well -- many opinions were 
missing and many changes were found only in West books, and 
not in the court file .  DOJ and FLITE selected choice 3, 
obtaining a license from West(and opted not to select choice 
2 for new opinions, a choice still available today.)  In 
selecting choice 3, DOJ and FLITE keyed in the data, but 
retained the right to keep the court opinions at the 
termination of the contract -- but West extracted the 
promise that DOJ and FLITE would not provide the purely 
public domain court opinions to the public.   In the 
process, the government keyed West books for West and helped 
West jump-start Westlaw.  Lexis complained bitterly about 
this unfair competition.  Lexis complained to Congress and 
even filed lawsuits citing this transaction.  See Mead Data 
Central, Inc. v. United Sates Department of the Air Force,  
566 F.2d 242 (D.C. Cir. 1977).

One may wonder how was it possible that Lexis was able to 
create its database of opinions -- if as I claim, it is 
impossible to obtain the original opinions and corrections 
from the courts.  

The answer is simple -- Until West sued Lexis in 1988 for 
copyright infringement, Lexis keyed in the opinions from 
West case reports.

When West and Lexis entered into the secret 1988 agreements 
for case citations, they also settled the text copyright 
claims as well.  [The docket sheet in the 1988 copyright 
case shows that the copyright claims on text were settled.]  
We understand that Lexis stopped keying in from West books 
around 1988, and it is fair to conclude that this was one of 
the terms of the secret 1988 settlement agreements.  

As a result, only West and Lexis have an historic archive, 
and no one else, or will.  That is why these parties need to 
keep the 1988 agreements secret.  It appears that some in 
the Antitrust Division may be embarrassed that they have 
allowed these two big companies to have entered into a deal 
which results in total domination of the on-line legal 
research market.

After 1988, Lexis stopped making a public issue about the 
FLITE deal and made no statements at the 1992 Congressional 
hearing.  One familiar with litigation settlement agreements 
would conclude that Lexis is gagged by the secret 1988 

There was another company that could have challenged West 
and keyed in opinions from West books.  That was Thomson.  
Indeed Thomson had an on line service that they shut down in 
1988.  As Vance Opperman stated in his testimony to Congress 
in 1992, at page 115 of the hearing on HR 4426:

You can get them [court opinions] on LEXIS, and you 
used to be able to get them on Veralex.  Veralex was 
available through LCP before Llyod Thomson and Thomson 
International bought Lawyers Cooperative Publishing for 
$810 million, along with the other 25 American 
publishers they have bought in the last 8 years.  They 
then phase out Veralex.

LCP (Lawyers Cooperative) was obtaining its data from LEXIS 
and the secret 1988 agreement between West and Lexis relates 
to Veralex.

One of the results of the merger is that Thomson will never 
have to confront West with the text issue as it had started.  
Thomson, by 1994, had already confonted on the text issue.  
Thomson did this by buying a database of Texas opinions from 
Curtis Hill Publishing Company and releasing those opinions 
on a CD-ROM.  The database Thomson was publishing was keyed 
in from the West case reporters.  Thus, Thomson was directly 
confronting West on the very same text issue that dogged 
Juris and FLITE in 1976 and Lexis in 1988.

In 1993 Matthew Bender & Company acquired the same Curtis 
Hill database.  West then immediately threatened Matthew 
Bender about the use of that database.  This was described 
by Judge Martin's in his decision of May 1, 1996.  Matthew 
Bender & Co., Inc. and HyperLaw, Inc. v. West Publishing 
Company, 1996 U.S. Dist. LEXIS  5871, 39 U.S.P.Q.2d (BNA), 
1079 Copy. L.R. (CCH) (P. 27,505)(S.D.N.Y May 1, 1996) (Note 
that West also includes corrections to the body of the 
opinions in the term "West textual additions."):

Many of the opinions that Bender collected for the 
planned enhancement of the Texas product were purchased 
in database form from Curtis Hill Publishing.  West has 
contended that the Curtis Hill database includes 
certain textual additions copied from West's South 
Western Reporter, including parallel citations, case 
titles, docket number, judge and attorney names, and 
rehearing information (the "West textual additions").

In its complaint, Bender alleges that West has 
threatened to sue it if it includes star pagination to 
West reporters in Bender products, and that West has 
also threatened suit over use of the West textual 
additions contained in the Curtis Hill database.  
Bender thus seeks a declaration that its use of these 
features in the enhanced Texas product does not 
infringe any West copyright.

The foregoing may explain why Lexis has been silent 
regarding the text issue in their challenge to the West-
Thomson merger ... because Lexis already has its deal with 
West for the historic data.

It is imperative that DOJ go on record, as it should have in 
1976, that West copyrights are not infringed when the 
government or a competing publisher keys in the text of the 
court opinions from a West case reporter, but does not key 
in the West headnotes and syllabi.

We ask, therefore, that DOJ immediately file an amicus brief 
in support of this proposition in the pending action in New 

Thank you very much.


Alan D. Sugarman

   HyperLaw filed a narrow FOIA request in 1993 for this exact same Juris-Flite Supreme 
Court data that was released this week.  Our FOIA request did not seek any other 
information and it was denied by DOJ.  Therefore, I was chagrined to see that a publisher 
of court opinions, Villanova Law School (which did not file such a FOIA request at that 
time) was given a copy of this data when HyperLaw was not provided the data on the 
same terms and conditions.  It was wrong to give West the first crack at the data in 1976.  
It is wrong to give Villanova first crack at the newly released data in 1996 while 
withholding it from others which have filed specific clear requests for the data.

Attorney General Reno
September 27, 1996
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