Comments Re: Law.Com Article Re HyperLaw v. West Publishing, Matthew Bender, and Carl Malamud: The Text Copyright Decision
April 19, 2008, Revised May 1, 1908
In a Law.Com Article dated March 31, 2008, "An Operating System for Law: Online Case", the reporter Eriq Gardner profiled Carl Malamud who "has been bothered for 25 years by the fact that U.S. case law is locked away from the public's eye." The article attempts to provide an overview of legal publishing, on-line legal research, and efforts to make court opinions available on the internet, but, unfortunately did not provide an accurate presentation.
Following are a few corrections and focused primarily on the inaccurate description of the Matthew Bender and HyperLaw litigation against West Publishing.
Although the article referred to only one decision in that litigation, significantly there were two decisions, not one. One decision related to West's claims of copyrights in citations in which Matthew Bender and intervenor HyperLaw joined. The second decision related to West claims of copyrights in its enhanced text of court opinions. Neither Matthew Bender nor its law firm Irell and Manella were involved in the second text decision. In that decision, HyperLaw, Inc., was represented not by a large law firm, but by Carl Hartmann, Paul Ruskin, and Alan Sugarman, also counsel in the citation decision mentioned in Gardner's article.
The error is not just one of credit, but is an error that goes to the understanding of West's claims of copyright then and now. Perhaps because of the 1986 decision in West v. Mead , 799 F. 2d 1219 (1986), there had been much focus upon West's claims as to citations, particularly pin-point citations. But, West claims of copyright to the enhanced text of court opinions was of equal importance. Neither West nor Mead (Lexis) wished to have this issue explored in litigation. Ultimately, the West claims were rejected as a result of HyperLaw's litigation against West. In the appeal, Reed Elsevier (Lexis) supported West with a amicus brief in the HyperLaw Second Circuit Case. HyperLaw was supported by an amicus brief written by Professor Ray Paterson. The United States Department of Justice, which filed a brief supporting Matthew Bender and HyperLaw in the citation case, abstained from filing a brief in the text case. Many of the decisions and pleadings in the HyperLaw litigation may be found here. Clearly, there were powerful forces in the information industry which was not at all happy with HyperLaw's challenge.
Second Circuit Text Decision: Matthew Bender v. West, 158 F.3d 674 (2nd Cir. 1998), aff'g, No. 94 Civ. 0589, 1997 WL 266972 (S.D.N.Y. May 19, 1997), cert. denied sub. nom. West v. Hyperlaw, 526 U.S. 1154 (1999).
Second Circuit Citation Opinion: Matthew Bender v. West Publishing Co., 158 F.3d 693 (2d Cir. 1998), cert. denied, 526 U.S. 1154 (1999), The Second Circuit affirmed a summary order dated March 12, 1997 re a bench opinion granting summary judgment on citation issues to Matthew Bender and HyperLaw dated November 22, 1996.
The Two Decisions in Matthew Bender and HyperLaw v. West.
The Gardner article totally fails to recognize that there were two decisions in the litigation (two decisions, two appeals, and two petitions for certiorari). In the first decision, Matthew Bender and HyperLaw were both plaintiffs - the district court ruled on the invalidity of the West copyright claims to the citations to its caselaw reporters. Mr. Gardner mentioned this decision. But, Gardner inexplicably missed the second decision in the litigation that only HyperLaw pursued and won - the decision Matthew Bender v. West, 158 F. 3d 674 (2nd Cir. 1998), aff'g, No. 94 Civ. 0589, 1997 WL 266972 (S.D.N.Y. May 19, 1997), cert. denied sub. nom. West v. Hyperlaw, 526 U.S. 1154 (1999) that the West enhanced versions of court opinions were not copyrightable. One reason the text decision is important because the courts view the West printed versions of cases as the official version. These enhanced versions included typographical and substantive corrections and parallel citations. HyperLaw, in winning this decision, made it possible for anyone to key in or scan text from the West National Reporter system. As a direct result, the FastCase federal court opinions, later discussed by the reporter, could be copied with impunity.
That the text ruling was important is shown by the fact that West fought the text part of the case aggressively, Matthew Bender (which was soon to be acquired by Reed Elsevier, owner of Mead-Lexis) refused to join in HyperLaw's text motions and trials, Mead-Lexis filed a brief in the Second Circuit opposing HyperLaw, and the United States Department of Justice (through Joel Klein), although filing a brief in support of Matthew Bender and HyperLaw on the citation issue, ducked filing a brief on the text issue.
The reporter Gardner writes: "Everyone accepts that the actual words of legal decisions are in the public domain" -- but, that is of course not true, depending on what one means by "words." West does not accept this and did not in the HyperLaw litigation. Even now, in the letter to Malamud, West states as protected by its copyright "West's editorial enhancements (annotations, revisions, and amplification of citations)." And, indeed, the Second Circuit, in a follow up appeal in the HyperLaw v. West litigation, denied attorneys fees to HyperLaw on the basis that the law was not crystal clear.
The article also states:
Asked today what copyrighted elements could be deleted if someone wanted to scan the Federal Reporter, Thomson Executive Vice President Rick King says he's not sure. "This gets into gray areas," he says. "The content itself is in the public domain. But if someone takes it and scans it in, I don't know if courts have decided that issue."
Well, Thomson Executive Vice President Rick King is not telling the truth: HyperLaw v. West decided this against West. But, apparently the reporter Gardner just did not know there were two decisions in the Matthew Bender/HyperLaw litigation and Malamud and Irell and Manella did not correct the reporter.
Having misunderstood the case, the reporter then fails to credit the HyperLaw attorneys who not only were centrally involved in the citation part of the case, but successfully won the text litigation alone - Carl Hartmann, Paul Ruskin, and Alan Sugarman. Even worse, it appears that Matthew Bender's counsel Irell and Manella took credit for both parts of the case, when Matthew Bender was clearly not involved in the critical text decision. The article quotes Chu as stating
"[Thomson] seems to be taking the position that because our [Bender's] case was the only court to address the issue, they can ignore it."
I wrote Chu and asked whether this was a misquote by the reporter and whether he intended to take credit for both decisions, but, I received no reply. I then called the reporter and asked him why all references to HyperLaw's attorneys were left out, and, received a confused answer. [If those reading this are offended or believe this is petty, remember that HyperLaw's fee application was rejected, and these attorneys remain unpaid. So, what is left?]
The importance of being able to copy the text of the decisions from West was reflected elsewhere in the article. The article states:
"Malamud has put out the call to buy case law scanned from courtroom files. In November he announced a deal with Washington, D.C.-based Fastcase Inc., that will provide him 1.8 million pages of federal case law, including all appeals court decisions from 1950 to the present".
Well, the FastCase opinions were NOT obtained from "case law scanned from courtroom files." The FastCase files were scanned from the West Federal Reporter, under the protection of the HyperLaw win against West. To repeat what happens: West collects the opinions from the courts, prints them, and then FastCase (or its provider) keyed in or scanned the cases from the West Federal Reporter.
From what we understand, the FastCase Federal Reporter derive partly from cases scanned and keyed by Kyle Parker of LOIS. As reporter Thomas Scheffey wrote in a Legal Times article about the text case, West Loses on Copyright Claim, Legal Times, May 26, 1997 (html version):
[Added April 30, 2008]
Professor L. Ray Paterson whose article L. Ray Patterson & Craig Joyce, Monopolizing the Law: The Scope of Copyright Protection for Law Reports and Statutory Compilations, 36 UCLA L. Rev. 719, 809–10 (1989) is frequently cited filed an amicus brief in support of HyperLaw on behalf of the American Association of Legal Publishers (HyperLaw was a founding member of this Association.)
Recently, the Legislative Counsel Committee of the State of Oregon has asserted copyright claims to its statutory compilations.
Patterson was prescient as to the Oregon claims - in the brief he states in his concluding paragraph:
"Moreover, although state judicial opinions are not the subject of this litigation, this Court may take judicial notice of West's claim for copyright of the opinions of state judges. Oasis Pub. Co. v. West Pub. Co., 924 F. Supp. 918 (D. Minn. 1996). A ruling for West in this case will serve as precedent for West's claim of copyright for state law. But in our federal system, states are sovereign entities, Seminole Tribe of Florida v. Florida, 517 U.S. 609, 116 S. Ct. 1114, 1122 (1996) ("each State is a sovereign entity in our federal system"), and the sovereign that makes law has a duty to provide the public with access to that law. Thus, adopting West's argument, federal copyright for law that vests control of access to the law in a private publisher means two things: 1) The federal government has abdicated a sovereign duty and, in doing so, 2) the federal government has invaded the sovereignty of state governments./Footnote25 Section 105 prevents the first, section 103 prevents the second."
His Footnote 25 states;
The problem is exacerbated by the fact that copyright law is exclusively federal law. Thus, the copyright statute preempts state law and denies the states any right to adjudicate the claim of West that it has a copyright for state law. 17 U.S.C. § 301.
JURIS AND FLITE
The article, and presumably Malamud, in the discussion of Juris, the Department of Justice's on-line database, continues with confusion as to what West did and did not do. The article states:
"In 1971 the government set up Juris, a database of collected federal case law that went back to 1900. Twelve years later, under a mandate by the Reagan administration to privatize as much of government as possible, Eagan, Minnesota-based West Publishing Co. was hired to take over the job of managing Juris. ... In 1993, 10 years after the government outsourced its management of case law to West (acquired by Thomson in 1996), the company announced that it was pulling out of Juris. Its original agreement gave it continued access to the case law database, but it now had something even more valuable: West had indelibly stamped America's legal code and case law with introductory headnotes, commentary, typographical and grammatical corrections, italicized and boldface emphasis to highlight key passages and indexing."
There is so much wrong here that one does not know where to start - but basically, this is the story. The government, starting with the Air Force's FLITE system, in the early 1970's was pioneering on-line legal and full text research. It needed the text of the cases, and so FLITE and the DOJ Juris system entered into a license agreement with West to key in the West collection of cases from West books. In return West received a copy of the keyed in data. In the 1980's West started WestLaw and started to key in its own data (and we assume using the digital files for printing their books. So, a new deal was struck: West licensed its keyed in data to the government - and, even converted the data to the Juris format. Juris fell apart in 1994 - as West just wanted the government to use WestLaw directly. What we think West importantly did not want was for the government itself to collect the opinions of the federal court directly from the courts and create a court opinion database independent from West.
This is still the the fear and concern of West and now Lexis - the creation of a public database of authoritative court opinions with citations compiled from the courts by the Government - whether by the judiciary, the Administrative Office, or the Department of Justice.
What Malamud and the reporter do not get - is that the "adversary" is not West, but the governmental agencies and courts (to be sure, egged on by West and Lexis). Of course, to fight this fight, the law professors and big firms have to be willing to fight those from whom they need so much: publication of books and treatises, support of conferences, travel and publications, discounted or free access to on-line research, appointments for judicial clerkships etc.
The Gardner article did include a quote from me which was more or less accurate. Following is a more nuanced marked- up quote:
"HyperLaw founder Alan Sugarman, who was instrumental in pushing the Bender suit forward and alone pursued the portion of the suit concerning the copyrightability of West's text enhancements, calls Malamud's efforts of scanning 19th century West microfiche a "PR stunt" and thinks Malamud
heshould instead push judicial circuitsfederal courts like the U.S. district and bankruptcy courts to get their act together and publish their documents online in a systematic and uniform way. Sugarman worries that Malamud's approach that does not press the courts to undertake primary publication and is "enabling the courts to palm off their own responsibilities." Sugarman argues that the law schools, which acted as Internet publishers for courts , although believing they were advancing public access to the law, merely postponed or ended efforts to have courts' assume their responsibilities."
In preparing this article, I found a 1998 statement to the Senate Committee on rules and Administration by Robert Oakley, Washington Affairs Representatives for the American Association of Law Libraries. Professor Oakley, unfortunately, died this past September from complications from a knee operation. Oakley was a indefatigable fighter for the rights of the public to access the law - and he will be missed greatly. Oakley statement does support the views expressed above and previously and as well provide a nice and accurate overview.
AALL has encouraged the courts to proceed toward the electronic dissemination of Federal court opinions through the Internet in an organized and systematic manner. In fact, beginning in 1994, several prominent law schools joined forces to provide the courts with a model on how to provide no-fee Internet access to the opinions of the U.S. Courts of Appeals at very low cost These law schools -- Villanova University School of Law, Georgetown University Law Center, Emory University School of Law, Chicago-Kent College of Law, Pace University and Touru Law Center, Washburn University School of Law, and Washington University School of Law--each assumed responsibility to provide daily updates to searchable databases of the slip opinions of one or more of the U.S Courts of Appeals at no fee to the public through the Internet. Recognizing the need for permanent public access to these electronic opinions, these law centers also voluntarily archive the opinions.
The purpose behind this voluntary project was to demonstrate to the courts that the use of electronic communications networks can facilitate the timely and low cost dissemination of court opinions. The project was not intended to relieve the courts of their own dissemination responsibilities, but rather to encourage them to follow the model of electronic public dissemination.
* * *
AALL believes that the Federal courts themselves, or the Administrative Office of the United States Courts on their behalf, should disseminate electronic versions of the opinions of the lower Federal courts ..
* * *
In their Report of the Committee on Automation and Technology's Subcommittee on Policy and Programs Concerning Standard Electronic Citations (1997), the Subcommittee noted that.
The primary assumption underlying the proposal is that judicial opinions are public documents and that it is in the best interest of the judiciary and the public for such opinions to be made available to judicial officers, litigants, and the public as quickly and inexpensively as possible. While official case reports (United States Reports, for example) have historically seldom been available to the public on a timely basis, the subcommittee sees no reason why this should be so if the opinions were posted electronically. Creation and maintenance of a central database of federal opinions would appear to be a matter undoubtedly within the authority of the judicial conference.
I concur with the approach of Professor Oakley and the Judicial Conference Subcommittee and for that reason believe that Malamud's approach is not the proper approach. In fact, HyperLaw had made presentations before the judicial conference subcommittee making these same arguments. See Transcript, Hearing, Committee on Automation and Technology, Subcommittee on Policy and Programs, April 3, 1997 and related information on HyperLaw's "Citation" page. At the Judicial Conference hearing, Acting Assistant Attorney General Joel Klien, Jamie Love, Professor Oakley, Marc Rotenberg and Alan Sugarman were among those who testified. Carl Malamud was not there.
Another addenda re FLITE and JURIS: In 1993 and 1994, Jamie Love, who with Malamud was instrumental in forcing the government to make SEC and patent data available to the public, was also heavily involved as part of the Taxpayer Assets Project's Crown Jewels project, in an effort to get the DOJ to release the West-Juris database. That is how I met Jamie and worked with him for several years on citation and case law dissemination issues.
Despite the overstatements describing Malamud's efforts [all federal law does not equal the cases in the Federal Reporter - by a long show], it is clear that Carl Malamud has made a major contribution by obtaining the Federal Reporter decisions from FastCase, posting them on a public web site, and formatting them with the assistance of professional programmers. As a result, if one Googles a Federal Reporter citation, wow, there it is. Although missing pin-point West pagination, it is faster than West or Lexis and free as well. Carl - that is absolutely awesome. And, clearly, linking to other Federal Reporter cases cited within these cases is for Carl's programmers not a difficult task and we will no doubt see that soon.
There are other misstatements in the article, but I do hope that future writers will not use the article as an authoritative reference and will independently verify anything stated therein. I suggest starting with Professor Oakley statement, or even reading John B. West's 1909 article - Multiplicity of Reports. I know Eriq Gardner worked hard and may have been misled by other sources - but, since he left out Carl Hartmann's and Paul Ruskin's names with deliberate intent, I am not completely sympathetic.
An article on Law.Com of March 31, 2008 mixes up the issues and neglects to mention the other Second Circuit and Trial Court decisions re copyrightability of text in the Matthew Bender v. West case. Also, fails to note that Matthew Bender's was soon to be acquired in 1998 by Reed Eslevier, which owned Mead and Lexis. The article also confused issues concerning the Juris database once operated by the Department of Justice, and the source of the FastCase opinions being posted by Malamud.
Because West had claimed copyright in their enhanced versions of court opinions, West was able to threaten anyone who copied a decision from a West reporter. These claims were soundly rejected by Judge John S. Martin and his opinion was affirmed by the Court of Appeals. Not only did Matthew Bender not involve itself in the text part of the case, but it soon to be owner file an amicus brief opposing HyperLaw.
Second Circuit Text Decision: Matthew Bender v. West, 158 F. 3d 674 (2nd Cir. 1998), aff'g, No. 94 Civ. 0589, 1997 WL 266972 (S.D.N.Y. May 19, 1997), cert. denied sub. nom. West v. Hyperlaw, 526 U.S. 1154 (1999).