Matthew Bender Amicus Motion Oasis v. West Eighth Circuit September 5. 1996

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Matthew Bender Amicus Motion Oasis v. West Eighth Circuit September 5. 1996


     No. 96-2887

     Oasis Publishing Co.,

     West Publishing Co.,




     On Appeal From the United States District Court
     District of Minnesota
     Third Division
     Case No. CV3-95-563
     The Honorable Paul A. Magnuson


                                   Morgan Chu
                                   David Nimmer
                                   Elliot Brown
                                   IRELL & MANELLA LLP
                                   Suite 900
                                   Los Angeles, California 90067
                                   (310) 277-1010

     Attorneys for Amicus Curiae
     Matthew Bender & Company, Inc.

     Matthew Bender & Company, Inc. respectfully moves to file
the concurrently submitted brief amicus curiae, which argues
primarily that subject matter jurisdiction over this declaratory
judgment action is lacking because it does not implicate a
justiciable controversy. Matthew Bender's brief will show in
particular that under recently enunciated Eighth Circuit
precedent governing copyright declaratory actions, the instant
controversy is not justiciable. See Diagnostic Unit Inmate
Council v. Films Inc., 88 F.3d 651, 653 (8th Cir. 1996).
Accordingly, the judgment below should be vacated and the action
     Matthew Bender sought the written consent of the parties to
file the attached brief. Appellant Oasis Publishing Company
promptly consented. (Oasis' consent letter is attached as
Exhibit A.) Appellee West Publishing Company consented to
Matthew Bender filing a brief addressing the merits; however West
refused to consent "to an amicus brief on any jurisdictional or
justiciability issues." (West's consent letter is attached as
Exhibit B.[FNR1]) Because Matthew Bender's brief addresses the
issue that West wishes to suppress, Matthew Bender must move
pursuant to Federal Rule of Appellant Procedure 29 for leave to
file the attached brief.

[FNT1] This Circuit has made it clear that it is proper for
an amicus to challenge the existence of subject matter
jurisdiction, even if the issue is not addressed by the
parties. Middle South Energy, Inc. v. Arkansas Public Serv.
Comm'n, 772 F.2d 404, 409 n.13 (8th Cir. 1985), cert.
denied, 474 U.S. 1102 (1986). Matthew Bender accordingly
sought clarification from West as to why it would consent to
a brief on the merits, but not to a brief on the threshold
jurisdictional issue. (See Matthew Bender letter, attached
as Exhibit C.) West did not respond. West's position here
is especially puzzling in light of its conduct in Matthew
Bender & Co., Inc. v. West Publishing Co., 94 Civ. 0589
(S.D.N.Y.), a pending action in which Matthew Bender seeks a
declaration that its use of star pagination to West's
reporters does not infringe any West copyright. In that
action, West refused to consent to the request by the
Department of Justice to file an amicus brief on behalf of
the United States in support of Matthew Bender's position,
on the ground that the U.S. brief would be duplicative of
issues to be addressed by the parties. See West letter to
Judge John Martin, attached as Exhibit D.) In other words,
in this case West will consent to an amicus brief only to
the extent that it addresses issues briefed by the parties;
in the Matthew Bender v. West case, West takes the contrary
position that it will not consent to an amicus brief
precisely because it addressed only issues briefed by the

I.      Matthew Bender's Interest In This Action     
     Matthew Bender has long been one of this country's
preeminent publishers of legal secondary literature. Its titles
include such well known treatises as Moore's Federal Practice,
Nimmer on Copyright, Collier On Bankruptcy, and Weinstein's
     Matthew Bender is in the process of commercially releasing
collections of judicial opinions on CD-ROM in conjunction with
many of its titles, as part of its Authority From Matthew Bender
electronic library. Matthew Bender is including in those
judicial opinions, where applicable, information about the
location of page breaks in the version of the opinion appearing
in reporters published by appellee West. Matthew Bender provides
this information via the conventional shorthand of "star
     As it does with respect to Oasis' proposed use of star
pagination that is the focus of this appeal, West erroneously
contends that Matthew Bender's use of star pagination infringes
West's copyrights in the arrangement of judicial opinions in its
reporters. To dispel the cloud created by West's erroneous
copyright claims, Matthew Bender has instituted two declaratory
judgment actions in the Southern District of New York (where
Matthew Bender is headquartered), seeking declarations that its
use of star pagination does not infringe any West copyright. See
generally Matthew Bender & Co., Inc. v. West Publishing Co., 39
U.S.P.Q.2d 1079, 1083-84, 1086-87 (S.D.N.Y. 1996). The parties
have filed cross-motions for summary judgment. West's motion for
summary judgment relies heavily on the decision of this court in
West Publishing Co. v. Mead Data Central, Inc., 799 F.2d 1219
(8th Cir. 1986), cert. denied, 479 U.S. 1070 (1987), as well as
on the decision below in this action, which follows West
Publishing v. Mead.
     In light of the foregoing, it is clear that the sound
development of copyright law pertaining to star pagination
directly affects Matthew Bender's interests. Matthew Bender
therefore has a demonstrably strong interest in the resolution of
this action.
II. Reasons Why Matthew Bender's Brief Amicus Curiae Is
A.      This Court Has An Obligation To Consider Subject
Matter Jurisdiction, Even If The Parties Do Not
     This Circuit has recognized that it is proper for an amicus
curiae to challenge subject matter jurisdiction even "though [the
issue is] not raised by a party, since subject matter
jurisdiction cannot be waived or conferred by consent." Middle
South Energy, Inc. v. Arkansas Public Serv. Comm'n, 772 F.2d 404,
409 n.13 (8th Cir. 1985), cert. denied, 474 U.S. 1102 (1986)
(considering subject matter jurisdiction challenge raised by
amicus). Indeed, "every federal appellate court has a special
obligation to `satisfy itself not only of its own jurisdiction,
but also of that of the lower courts in a cause under review,'
even though the parties are prepared to concede it." Bender v.
Williamsport Area School Dist., 475 U.S. 534, 541, 106 S. Ct.
1326, 1331 (1986) (quoting Mitchell v. Maurer, 293 U.S. 237, 244
55 S. Ct. 162, 165 (1934)) (emphasis added); see also Boatmen's
First Nat'l Bank v. Kansas Public Employees Retirement System, 57
F.3d 638, 640 n.4 (8th Cir. 1995) ("subject matter jurisdiction
is not waived if not raised in the trial court, as we are
empowered and required to consider the issue sua sponte if need
be"). "It is to be presumed that a cause lies outside of [a
federal court's] limited jurisdiction . . . and the burden of
establishing the contrary rests on the party asserting
jurisdiction[.]" Kokkonen v. Guardian Life Ins. Co. of America,
511 U.S. 375, ___, 114 S. Ct. 1673, 1675 (1994) (citations
omitted); see also Newhard, Cook & Co. v. Inspired Life Ctrs.,
Inc., 895 F.2d 1226, 1228 (8th Cir. 1990) ("It is incumbent on .
. . the party seeking to invoke federal jurisdiction, to
establish jurisdiction by a preponderance of the evidence.").

B.      Neither Party Intends To Address The Issue Of
Subject Matter Jurisdiction
     Despite the fact that this Court is obligated to consider
the existence of subject matter jurisdiction, neither party
intends to brief the issue of whether the declaratory judgment
action presents a justiciable controversy. Accordingly, Matthew
Bender's amicus brief will bring to the Court's attention a
relevant, and in this case dispositive, issue that the Court is
obligated to consider but which both parties have brushed aside.
Cf. Sup. Ct. R. 37(1) ("An amicus curiae brief that brings to
the attention of the Court relevant matter not already brought to
its attention by the parties may be of considerable help to the

C.      The Issue Presented By Matthew Bender's Brief Is
Dispositive Because The Instant Case Seeks An Advisory
Opinion With Respect To A Hypothetical Product
     A declaratory plaintiff in a copyright action must show both
that it (1) has published, or has taken concrete steps to publish
the allegedly infringing product, and (2) that it has a
"reasonable apprehension" of litigation. See Diagnostic Unit
Inmate Council v. Films Inc., 88 F.3d 651, 653 (8th Cir. 1996).
The totality of facts bear out Oasis' assertion that it has a
reasonable apprehension of litigation. However, the stipulated
facts that form the basis of the judgment below establish that
Oasis is not presently publishing, and has not taken any concrete
steps to publish, an allegedly infringing work. Accordingly, an
essential jurisdictional element is lacking, meaning that this
action is not justiciable.[FNR2]

[FNT2]While this action was still pending in the District of
Florida, West argued this very point in a motion to dismiss,
i.e., that the Complaint did not describe a justiciable
controversy because Oasis did not allege that it possessed
the "immediate intention and ability" to produce an
allegedly infringing product. After West succeeded in
transferring the action from Florida to Minnesota, West
withdrew its motion, apparently because West desired to
obtain an advisory ruling from this Circuit. [/FNT2]

     In sum, as is detailed in the attached brief amicus curiae,
because Oasis has not made preparations to publish an allegedly
infringing product, the Court below was without subject matter
jurisdiction. The judgment below should thus be vacated and the
case remanded with directions to dismiss the complaint. See,
e.g., Acquisito v. United States, 70 F.3d 1010, 1011 (8th Cir.
1995) (vacating grant of summary judgment and remanding with
instructions to dismiss where no subject matter jurisdiction

     Matthew Bender has a strong interest in the proper
resolution of the issues at bar. Its amicus brief, moreover,
addresses in detail a threshold, potentially dispositive issue
that this Court is obligated to consider, but which the parties
do not intend to address -- the existence of subject matter
jurisdiction. For the foregoing reasons, Matthew Bender
respectfully requests leave to file the concurrently submitted
brief amicus curiae.

     DATED: September 5, 1996

                                   IRELL & MANELLA LLP
                                   Morgan Chu
                                   David Nimmer
                                   Elliot Brown


                                        Elliot Brown
                                   Attorneys for Amicus Curiae
                                   Matthew Bender & Company, Inc.







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