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UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
THIRD DIVISION
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Oasis Publishing Company, Inc.,
Plaintiff,
-v- Civil No. 3-95-563
West Publishing Company,
Defendant.
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TRANSCRIPT OF CIVIL MOTION PROCEEDINGS
BEFORE THE HONORABLE CHIEF JUDGE PAUL A. MAGNUSON
St. Paul, Minnesota
April 26, 1996
APPEARANCES:
For the Plaintiff: Jose Rojas
Bruce Little
Tamara Carmichael
For the Defendant: Joseph Muselik
Monica McCarty
Official Court Reporter: Jeanne M. Anderson
JEANNE M. ANDERSON, RMR (612) 222-4188
Friday afternoon, April 26, 1996, 2:00 o'clock, p.m.
THE COURT: Good afternoon.
MR. MUSELIK: Good afternoon, Your Honor.
THE COURT: We have the matter of Oasis versus West on cross motions for summary judgment. Ms. Ruiz advises me that you have agreed that we will start with West's side and then hear the Oasis side and then go back and forth for a while.
Counsel, I would like to note a question to you, because it goes to both of you. And you don't have to start out with the answer to it if you don't want to, you can put it at anytime in your argument. But, I am going to ask that at some point in the argument that you respond to this question that is simply this. I want you to assume, arguendo, these things: One, that Mead remains good law; two, I want you to assume that the Florida Cases are the official case reports for Florida by mutual agreement with Florida; and three, assume that West and Florida have agreed by contract that West retains a copyright interest in the arrangement of the cases in the Florida Reports.
Now, if you will make those assumptions, then who wins this case? As I say, at some point in your arguments, if you would advise me a little bit more on that, I would appreciate
it. Counsel?
MR. MUSELIK: Your Honor, may it please the Court. My name is Joe Muselik. I am the attorney for West Publishing in this case, along with Monica McCarty, who is here. I would like to introduce the Court as well to Gerald Tostrud, the Executive Vice-president of West who is in attendance, and Donna Bergsgaard who is the executive in charge of the production of Southern Reporter, the publication at issue in this case.
Now, if I may take a moment and approach the bench, Your Honor? Your Honor, by agreement, the parties are making use of summary charts for purposes of demonstrative evidence at this oral argument. I have given you a copy of the charts that we are going to use and they have been shared with opposing counsel.
Your Honor, the Court must really decide one simple question, here, in order to grant summary judgment to West. And that is, does star-pagination to West's Southern Reporter infringe West's copyrights in the arrangement of that work.
West believes that it does for the reasons set forth in its briefs, as well as for the very well-articulated reasons of Judge Rosenbaum of this Court and Chief Judge Arnold of the Eighth Circuit when they faced the same legal issue ten years ago in the West versus Mead Data Central case.
And Your Honor, to argue and answer a part of your
question right off the bat, West believes very strongly that West -v- Mead is still very much good law and continues to be cited with approval by courts throughout the country. It has not been cited with disapproval by anyone. And that includes some very recent decisions that are post-Feist, which as you know is the 1991 Supreme Court decision on the copyrightability of the White-Pages Telephone Directory.
Now, this case is about star-pagination. And star-pagination is the insertion of the initial citation in the internal page breaks and page numbers into a competitor's compilation. In this case, Oasis has announced its intention to copy that portion of West's Southern Reporter that contains case reports from the courts of Florida and then to star page those case reports in its own CD-ROM product.
Oasis tries to argue that it will not infringe West copyrights because the Oasis product will be a CD-ROM product rather than a print product like Southern Reporter. However, Oasis has cited no cases, because there are none, that establish the position they want to take, which is the medium from which you copy or the medium into which you copy to makes a difference.
As a matter of fact, West cites a number of decisions that make it clear that it doesn't matter. If you take from a copyrighted work, it doesn't matter how you take it or where you put it. If you have copied it, you have infringed the
copyright. And so, the fact that we are talking about a print reporter, Southern Reporter, being infringed by a CD-ROM product provides no defense to the infringement.
Before I get to the main thrust of my argument, I would like to take a minute to address three fundamental mischaracterizations that run throughout the Oasis briefs. The first one, of course, is that Oasis repeatedly tries to cast this case as about the copyright in Florida Cases. However, as the undisputed facts establish, Florida Cases is simply a derivative product of, Southern Reporter. It does not have separate pagination. It does not have separate page breaks. It does not have separate volume numbers.
In fact, as established from the cover page of any volume of Florida Cases, it is taken verbatim from Southern Reporter. The copyright is in the underlying work of Southern Reporter. That is the way the law establishes how you set forth a copyright in a derivative work. The copyright is in the original work and copying from a derivative source is nonetheless copying from the original. And so, it is a red herring for Oasis to try to turn this into a case about Florida Cases, that publication, when in reality all that is is a part of West-copyrighted Southern Reporter.
The second major mischaracterization that runs through the Oasis argument is that this is a case about mere page numbers and the pagination of the volumes of West Reporters.
In fact, West has always admitted that it claims no copyright in page numbers. As so well discussed by Judge Rosenbaum in the Eighth Circuit in West -v- Mead, the problem with star-pagination is not a problem about page numbers. oasis does not want to copy West's page numbers, Oasis wants to copy West's arrangement.
Your Honor, we submitted with our materials an expert witness report from Gail Murphy Daly, the noted law librarian at the Southern Methodist University Law School who stated in her expert report, which is submitted as Exhibit E to the McCarty Affidavit. And I'm quoting from her expert report, here. By taking the volume and page numbers of the West product and embedding them in an electronic text, the electronic publisher has high-jacked the print arrangement and grafted it on to their product. The arrangement and coordination of cases that is unique to West and expressed by the volume and pagination of their Reporters would be unofficially superimposed on electronic cases that lack coordination and arrangement of their own. Or as the Eighth Circuit said it,-the copyright we recognize here is in West's arrangement, not its numbering system. And star-pagination is problematic because it infringes the arrangement, not because the numbers, themselves, are copyrightable.
The third major mischaracterization is that as a result of a series of contracts between West and the state of Florida
for the distribution to state offices and judges of copies of Florida Cases, that somehow Florida has become the owner of Southern-Reporter. Nothing could be further from the truth. West has produced Southern Reporter independently here in Minnesota since 1887, more than sixty years before Florida ceased publishing its own official reports, which were called Florida Reports in 1949. Florida is clearly not involved in the arrangement of Southern Reporter and never has been.
West has no contract with Florida that involves the Southern Reporter and no one in Florida has any editorial involvement in the publication of Southern Reporter. There has been no evidence uncovered by Oasis to the contrary. And Oasis has deposed executives of the judicial branch of Florida, as well as Office of Administrative Courts, and no one has indicated that they do anything more than process invoices, arrange for the budgetary requests, give distribution lists for the copies of the books to West so they know who to send them to.
Now, Oasis, of course, has submitted voluminous material on the relationship and correspondence between West and individual judges in Florida and the clerks of the individual Courts of Appeal in Florida. However, that has nothing to do with the arrangement of the reporter which is the issue engaged by Oasis' attempt to star-paginate. Certainly West has always solicited corrections for hearing information on
issues with respect to whether a court believes that a case warranted full treatment in a book versus on WESTLAW only, or perhaps whether it warranted publication with headnotes or without. West has always encouraged judges and clerks to correspond with it. And, of course, we submitted some evidence that I thought was fairly interesting, including a few pieces of correspondence from Howard Taft when he was the Chief Judge of the Sixth Circuit indicating to West that he would like certain changes made in the opinions he authored. The point of that was simply to indicate that there is nothing different in the way West deals with Florida than it deals with the judges and clerk of any other state court system.
Certainly, Florida has never sought to claim any copyright rights in any of West's works. And in fact, in every contract between the state of Florida and West Publishing since the early forties -- or late forties, I believe it was, late fifties to the present, every contract has always expressly reserved the copyrights and the copyrightable elements to West.
The contracts, by the way, make no reference to Florida Cases being official. And more importantly, the actual document upon which Oasis relies for this official designation was a proclammation by the Florida Supreme Court in 1949 saying we are discontinuing our Florida Reports. We are unilaterally on our own designating Southern Reporter as the
depository of what we will consider to be our official reports from here on.
There is no contract. There is no mutual agreement between West and the state of Florida, since Florida would make that decision; that was simply a unilateral decision. That was addressed, that is, that issue was addressed in both the District Court and the Eighth Circuit decisions in Mead, and both courts found that that is not a ground to undercut West's copyright.
Specifically, though, in 1987,- following the decision in West -y- Mead, when the contract with the state of Florida came up for renewal in 1987, West asked the state to include in the next contract a specific statement that delineated that the arrangement of cases would be copyrightable and copyrightable by West.
And in a June 24th, 1987 letter to the state by West that is attached as Exhibit H to the Monica McCarty Affidavit, the letter states that the words "arrangement of cases" were added to clearly indicate that the formulation of the Florida Edition of the Southern Reporter by West and the editorial features are subject to copyright by West Publishing Company. There is no evidence whatsoever in this case that the state ever disagreed with that. And in every contract since 1987, in addition to the general statement that West retains the copyright, there has been a specific statement that the
arrangement of cases is copyrightable and will be copyrighted by West.
Now, getting to the real merits of the case from West's standpoint on its motion for summary judgment, the Court has three questions to address. Does West's arrangement meet the creativity standards of Callahan and Feist.? And if it does, the second question is, is Oasis, intended copying a fair use under the Copyright Act. And finally, if West copyrights are valid and would otherwise be infringed, is there anything in West's contracts with the state of Florida that could undercut West's-copyright claims?
First of all, the law of Callahan versus Myers is instructive. In 19 -- or in 1888, the Supreme Court specifically held that such work of the Reporter, which may be the lawful subject of copyright, comprehends the order of arrangement of the cases and the numbering and paging of the volumes. Both the District Court and the Eighth Circuit in West -v- Mead found this important, but only found it necessary to use that language to reach the preliminary issue and find that there is no rule of law that says the arrangements of case reports cannot be copyrightable. And that is all that West asked this Court to take judicial notice of Callahan versus Myers for, because we have a much more recent Supreme Court case which is, of course, the Feist case in 1991, which set out what is the standard threshold of
originality necessary to have a copyrightable arrangement. So, given that there is no rule against having a copyrightable arrangement of case law, the question is is West's arrangement copyrightable.
As noted in Feist, and I quote from the Feist cage, the originality requirement is not particularly stringent. A compiler may settle upon a selection or arrangement that others have used. Novelty is not required. Originality requires only that the author make the arrangement independently, i.e., without copying the arrangement from another work and that it display some minimal level of creativity. Presumably, the vast majority of compilations will pass this test. Numerous cases since Feist which have been cited in our briefs have reaffirmed this low threshold. Several of them referring favorably to the Eighth Circuit's decision in the West -v- Mead case.
The next issue is that West's arrangement is original and is creative. If I may, Your Honor, at this point refer to our charts. Our first one is simply a demonstrative exhibit of the continuum of arrangement originality. Feist dealt with a White Pages Telephone Book and found it was not creative, because it had become so garden variety, so mandatory for a White Pages Telephone Directory to be arranged alphabetically that it could no longer be claimed to be a creative arrangement by anyone.
However, you then get into increasingly sophisticated levels of arrangement and the case law cited in our brief such as the CCC case which the Supreme Court recently denied cert. on, which found that a compilation and arrangement of used car guides, value guides, was copyrightable. And, of course, in that kind of circumstance you are dealing with just simple numbers and makes and models of cars. The makes and models of cars, of course, are dictated by the car companies, not by the compiler.
Yet the Second Circuit didn't-find it at all persuasive to argue that that meant that it wasn't an original arrangement. And I think that is quite analogous to the argument that Oasis is going to make, that the split of the courts in the Supreme Courts and the Courts of Appeal is decided by the courts and not by West. Well, of course, that is true. It does not affect the creativity of the West arrangement.
The West arrangement of Southern Reporter is multifaceted, involves great editorial discretion, and I would like to talk about that arrangement for a minute, now. Your Honor, there are several hundred attorney editors at West who take great offense at the notion that their work is not creative and intellectual. And I would be remiss if I did not say here today that they are all fully expecting that this Court will agree with them that their legal training is put to
good use.
Now, as you can see by the general arrangement, West takes reports from the appellate courts, not the district courts, but only the appellate courts of four states and compiles them together into Southern Reporter. It does so not in chronological order as is alleged in the complaint, by the way, and as is mentioned in one of the Oasis' expert reports as how that expert thought that West arranged Southern Reporter. I might add, quite frankly, it is somewhat embarrassing that an expert would submit a report to this Court, and I am talking about Ralph Oman, here, who was the former Register of Copyrights, in which he acknowledges in his sheet talking about what he used to make his opinion and he never looked at Southern Reporter when that is the subject matter at issue, and simply talks about, well, if it is this or if it is that. Well, Your Honor, our expert reports are based on law librarians who studied in great depth the Southern arrangement and the arrangements of competing work. And I urge the Court to compare those expert reports to see which expert actually knew what they were talking about.
But, be that as it may, the arrangement is not chronological. It is not alphabetical. It is a multi-tiered, complicated arrangement that involves taking decisions and deciding as a preliminary matter whether they deserve headnotes and should be fully headnoted opinions, and that is
where the jacketed memoranda come in. Because jacketed memoranda, as described in the Donna Bergsgaard Affidavit, are cases that when they come into West are preliminarily judged to be of precedential value and to need and require headnotes and so they are given their own case jacket with the expectation they will become a headnoted case. During the process of preparing the case for publication, however, the West editor then decides that the case does not actually have a precedential point of law, so it becomes a memorandum decision.
All right. Then there are batches of memoranda decisions which come in the next group and table dispositions. Even that is not uniform throughout the courts because in Florida what West does is take the table dispositions from the Florida Supreme Court and puts them in tables with the Appellate Court table dispositions before the Florida Courts of Appeals fully headnoted opinions and jacketed memoranda. So, as you can see, this is a general arrangement which is multi-tiered and of its own right requires attorney editor discretion to compile and arrange.
MR. ROJAS: Joe, you are getting close on time.
MR. MUSELIK: What?
MR. ROJAS: You're getting close on time.
THE COURT: Counsel, maybe I should interrupt. I have asked you to work it the best you can on time. This
isn't the Supreme Court. And while I do have other matters later this afternoon, we will hold on them if it is necessary to take a few extra minutes because we are not in a rehearsed play, so it is okay.
MR. MUSELIK: Your Honor, I will try to be quicker. The point of this demonstrative exhibit is simply that the attorney editor must sit with the case and not only look at the general guidelines, but look at all of the various factors which may cause him to override the general arrangement. And while the stipulated facts talk about precede and follows, because that is what the parties would agree to stipulate to, there is no rebutting the fact that there are numerous other kinds of decisions that are made by the editor. And in fact those set forth in the Affidavit of Donna Bergsgaard are not rebutted in any way, shape or form by anything in the Oasis pleadings.
And the point made in the Bergsgaard Affidavit is that nearly 25 percent of the cases reported in Southern Reporter are effected by exceptions to the general guidelines. For instance, we have an example of cases that were decided almost six months apart, and yet the second one was rushed through the production process, because the editor thought they were close enough related that they should go together and published in precede and follow format so that one came right after the other.
And then we have the second issue of combining separate decisions. And it is interesting that the case we use as an example there is a case which we also rely on substantively, which is The Times Publishing versus Ake case, a case which I find it very surprising has not been cited to you by Oasis since it is a 1995 Florida Supreme Court case which says very directly that judicial records are not covered by the Florida Records Act.
As you see, West took those two decisions and put them together in a single case report and combined them and reported them in one place, whereas LEXIS publishes them separately as separate case reports.
There is also the issue of what to do with subsequent decisions by a higher court that affect a decision, such as a decision by the Florida Supreme Court to refuse to hear a Florida Court of Appeals case or a U.S. Supreme Court decision denying cert. of a Florida Supreme Court decision.
West oftentimes decides to put that in a file line. So in the Bohlander versus State example we use, if you turn to that case in the West book, you will see that they mark a file line under the caption that cert. was denied by the U.S. Supreme Court. That is an order, a decision, if you will, by a separate court that West has arranged by putting it right on the same page as the caption-of the case that it addresses.
And finally, we have a level of similarity of cases where
it does not require emergency action to make them precede and follow, but it is deemed important that they show up in the same issue. And so, you will see, we cite the State versus Campbell case where we have an October decision and a November decision in related cases that the West editor deemed should at least make it into the same volume. So, it was not, an attempt was not made to try to make them precede and follow, but the second case was rushed through the process enough that it could go in the same volume and advance sheet issue.
Obviously, Your Honor, there is no comparison between what West attorney editors do and what someone who puts together an alphabetical White Pages Telephone Directory does. And on the continuum of arrangement originality, there is no doubt that the West arrangement passes any muster or any test that one could devise for whether it should be copyrightable.
Moving quickly to the question of fair use. I don't think it takes much time for the Court to realize this is not a fair use case. What we have here is a purely commercial, nontransformative, supplementing use. It is, in effect, the worst kind of copyright infringement. It serves no purpose other than to replace the work it copies and cut into the market for the work that it copies.
I find it terribly disingenuous that Oasis would submit an affidavit from one of their principals saying: we intend
our work to complement the West books, after they have prepared a 1994 summary business plan which states that West Publishing and Lawyers Cooperative are the prime competitors of Oasis, and more importantly when they state obvious paper savings result from purchasing one compact disc versus shelves and shelves of hardbound books, it is quite difficult to imagine how that is consistent with the supplemental affidavit that they intend their product to complement the West product.
And if that is not enough, my-last chart is simply a summary taken from two deposition transcripts. The first is Giovanni D'Azzo. He is the Oasis Florida distributor. And he admits in no uncertain terms and with no hedging or qualification that the Oasis product would compete directly with West's own Florida CD-ROM product and also would be likely to serve, at least to some customers, as a replacement or substitution for the print books, themselves. The deposition of Richard Qualseth, Oasis' secretary/treasurer is similarly straightforward. He states twice: Yes, electronic forms do compete with books, with the paper forms. There is no fair use issue here.
I also might mention that a case heavily relied upon by Oasis on trying to make an argument that they have some sort of public purpose in mind, and that is the Princeton Press case, is wholly inapposite. That is a case involving
materials used in classrooms. It is classroom course packs. And there is a special section of the copyright law that deals with classroom copying. And that is not what is at issue here. And moreover, and quite importantly, that case a few weeks ago was a Sixth Circuit decision that the Sixth Circuit en banc vacated. And the effect of that as issued by the Sixth Circuit is to nullify the effect of that decision . pending a decision by the Sixth Circuit en banc. And the cite for that new Sixth Circuit decision is 74 F.3d 1528. And the date is April 9th, 1996. So that the Princeton University or Princeton Press case is no longer good authority.
Finally, I believe this is the time, if I have not done so already, to express my answer to your question, Your Honor. Yes, Mead remains good law. Even if Florida Cases are designated official by the state and even if that is by agreement with West, there is nothing at all that restricts the right of a state to have copyrighted works.
The only restrictions are that the state or that any body may not copyright law. And the Supreme Court in a series of old decisions, which remain unchallenged, include within laws judicial opinion. So, the text of judicial opinions, just like the text of statutes can not be copyrighted. However, the arrangement of a compilation of judicial decisions can certainly be copyrighted and there is no reason whatsoever why it cannot. And therefore, the fact that West and the state of
Florida have a contract does not in any way affect a copyright. It simply then becomes an issue, if there is an issue, of who owns it. And here it could not be more clear that the contract is express. Copyrights are reserved to West. And again, the contracts we are talking about are not contracts involving Southern Reporter, they are simply contracts for the printing and distribution to state officials of copies of Florida Cases, the spin-off of Southern Reporter. So, Your Honor, I think our briefs -- I hope our briefs address that question with case law, and I can provide additional citations for the uncontested fact that states can hold copyrights. And the only thing they can't hold copyrights in is the law, itself. So, the issue only becomes who owns the copyright in a copyrightable compilation. And clearly here West does and there is simply no doubt about it. And for that reason, Your Honor, West believes that it is wholly appropriate that this Court grant summary judgment to West. Thank you.
THE COURT: Thank you very much. Mr. Rojas?
MR. ROJAS: Good afternoon, Your Honor, if it please the Court. Jose Rojas, along with Tamara Carmichael and Bruce Little, counsel for the Plaintiff Oasis Publishing Company. Also present with us today, Your Honor, is David Abrahams sitting at counsel table who is the president and CEO of Oasis Publishing Company.
Your Honor, I am going to start right at your question. And I think it is real simple. We win. And I will tell you why. Very simple, West has admitted that if Florida Cases is the official reports of Florida, then there is no infringement in star-paginating to the pages.
Your Honor, we have a reference here in the chart. Exhibit A.35 is the deposition of Donna Bergsgaard who is here representing West sitting at counsel table. And the question and answer at page 201, lines 1 through 5, and then 8 through 18 are highlighted, here. And that is:
Question. Do you know if West includes parallel citations, star paginations to the official U.S. Reporter?
Answer. Yes.
Question. Why does it do that?
Answer. To help our readers locate the pages from U.S. and if they need to refer to a page in the U.S. Reports. Question. You don't feel that that is taking the arrangement of the U.S. Reports?
Answer: The U.S. Reports is the official publication. Question. So, if it is an official publication, then it is okay to take the arrangement?
Answer. That would be my understanding. If it was, the government can't hold,the U.S. Government can't hold a copyright by copyright law.
Further, taking it beyond just the U.S. Supreme Court Reports, Your Honor, I asked Ms. Bergsgaard at page 217, and she was sitting there as the designated 30(b)6 representative of West Publishing Company, not just as an individual witness, but I asked Ms. Bergsgaard the following question:
Question. Now, when you said before when I was asking you about West citing to the U.S. Supreme Court Reports and doing the star-pagination to the reports, which you pointed out was the official reports, does that hold, for instance, with Ohio where West publishes the official reports of that state? Do you contend or do you state that if somebody star paginates to the Ohio pagination that West produces for Ohio, that that would not be a violation of any of West's rights?
Answer: That is correct.
Your Honor, Judge Rosenbaum in the District Court decision in West versus Mead -- again, your facts were to assume that West versus Mead is still good law. Consistent with that, Judge Rosenbaum had thought that West was not the official reporter for any court in this country, and that is at page 1577. We know now from the facts that have developed here, of course, West versus Mead was on a preliminary injunction. The Eighth Circuit went out of its way to emphasize how it was merely preliminary, it was not a final decision. It was subject to revision upon full record after
trial, which had never been held, and of course the case settled and it never came back up that way.
Judge Rosenbaum expressly recognized that situation under the belief and the impression there that West was not official reporter. But, let me read a little excerpt from Judge Rosenbaum's decision of the District Court at page 1577.
"When one is mandated (as an official reporter) to perform these functions, the result is not an exercise of independent judgment or discretion. The arrangement and pagination in here in the official-process can become part of the public domain. For a person who stands in this official position, no copyright protection can be granted for arrangement or pagination."
Similarly, Your Honor, the Eighth Circuit on the appeal of that case acknowledged the official pagination -- in fact, the official reporter, and used that as a basis to distinguish the decision of Banks from the First Circuit. And the reason that that was important was, again, the independence or the creativity.
We now have a clarification by Feist that, from the U.S. Supreme Court, that the hallmark of copyright is originality. In Feist, the Supreme Court pointed out expressly as an alternative ground beyond the issue of how much creativity or nominal level of creativity was involved, that a compilation may also fail the originality requirement for another reason,
there. And the Court said that in that case, Rural, who was the publisher of the White Pages, was required to publish these White Pages by the Kansas Corporation Commission as part of its monopoly franchise. That is at Page 1297.
The Court Justice O'Connor writing for the unanimous court stated, "Accordingly, one could plausibly conclude that this selection was dictated by state law, not by Rural."
If that is the case, if it is dictated by state law, then it is not an independent or original work, which is the benchmark of copyright found by Feist, which is not inconsistent with the West versus Mead. Your Honor would not be required to depart from West versus Mead to make these findings. This is simply a clarification.
Furthermore, 102(b) there has been another Supreme Court decision that impacts and further clarifies. And it was not present at the time of West versus Mead and that is the Lotus versus Borland decision that was affirmed by the Supreme Court on January 16th of this year on a 4 to 4 split.
And in that case it found that the menu command system or tree of the program Lotus 1-2-3, which is the means by which access was granted to the program to any user, that was found to be under 102(b) of the Copyright Law a method of operation which is expressly not subject to copyright. So, one issue here is, what is this pagination? West says the pagination is not copyrightable, per se. We don't contend that it is. This
case isn't about the pagination being copyrightable. It is only our arrangement that is copyrightable. Yet the evidence is undisputed in this record that Oasis will not copy the arrangement of West's books in any way, shape or form. Simply the factual reference to where in the West arrangement a particular page appears will be cross-referenced in th e Oasis product, but not the actual arrangement. The computer does not need to do that and will not have that arrangement.
So, the question then is, what is the pagination? Well, you don't have to hear it from me,-Your Honor. West's own expert in this case, Professor Robert Berring, has made it clear. And what he said was: "It is a system of citation." A system is expressly precluded from being copyrighted under Section 102(b) of the Copyright Law.
The Lotus case finding method, system, process, et cetera to be under 102(b) said, "Even if it were expressive, it is not protected by the express dictates of the statute. Congress has seen fit in its wisdom to expressly clarify the law in 1976, which was not a new edition but a clarification of a 1909 law, to state that if it is a method, if it is a process, if it is a system, it is not protected.
Now, Judge Rosenbaum, again, in the West versus Mead case, quite interesting, District Court opinion at page 1578 says: What is this pagination all about? And after pointing out that 479 F.2d 701 simply means that the decisions found on
the 701st page of the 479th Volume of the Second Series, which is nothing but a mere fact, and Feist says facts are not copyrightable, goes on to say that what it really is and makes it unique is that it is a method of referencing cases in the field of legal research. In fact, Judge Rosenbaum found this to be the most common method going all the way back to the British system. And further stated that -- gave an example of a decision saying that if that decision standing alone is published by the Seventh Circuit, for instance, U.S. ex rel. Miller versus Tuomy, the Judge wrote, "It is useless. It is useless because that decision, as issued, cannot be accessed. Its voice is silent and its teachings are unheeded." And the Court wrote:
"This is so as long as no person beyond the Seventh Circuit has authored or arranges it in an accessible form and indexes the case."
Well, what the pagination does, Your Honor, is to provide that method for access. And that is precisely, precisely what the menu tree in the Lotus case did for the Lotus 1-2-3 program. It is the means by which the user was able to access the contents of the program. And in fact, in that case, Borland -- and I know counsel referred to MB. Daly's Affidavit in saying how there's other ways you can do paragraph cites, you can do all of these other things, Borland had done it in a different way. Borland's menu command tree was different than
Lotus'. But, what they did was they also included the ability to use Lotus' commands so that a user who is used to Lotus' program could run Lotus' program on the Borland program, and included in there the same access system, the same method of operation as Lotus had put in. And the First Circuit in Lotus recognized that, yes, it could have been expressed differently. And even if it was an original expression and not something that was functionally required, even if it wasn't purely fact as what we have here, as Judge Rosenbaum wrote, the fact that this appears on a particular page, even if it were unique, even if it were original and creative, it would nevertheless by virtue of the wisdom of Congress not be protectable under copyright under 102(b). And that case was taken to the U.S. Supreme Court. And the U.S. Supreme Court has affirmed it and it is now valid precedent.
Finally, Judge, the fact that you mentioned in your hypothetical, whether or not the contract between West and the state of Florida allowed West to retain copyright in the arrangement. First of all, it is important to point out to the Court as counsel has acknowledged in his presentation that that was not in there until the 1987 contract. West has been publishing these cases since 1948 in the Florida Cases since, I'm sorry, 1949. For the first time arrangement was put in in 1987. It probably coincides with Mead having been decided in 1986. But, the point is this, Judge, parties cannot create
copyright by agreement. Either a copyright exists by virtue of the federal Copyright Act, or it doesn't, or possibly common law. But, by agreement, per se, does not create the right to copyright. So, whether West got that put into the contract does not dispose of the issue.
The other thing, and I think we have got to come back to the core issue here, again, even if you assume that to be so that there was a copyright in the arrangement and it was sufficiently original, despite the fact that Feist has made it clear and the Eighth Circuit even acknowledged that in that official capacity it is not sufficiently original, nevertheless we are not going to take the arrangement. We are not going to copy the arrangement. By having that pagination, the only thing that is going to be included is either uncopyrightable fact -- and how did the Eighth Circuit deal with that? The uncopyrightable fact argument was raised by Mead to some extent -- I mean, to a large extent. And the Eighth Circuit in that case cited the Hutchinson decision, which is a White Pages compilation case, a sweat of the brow doctrine case. And that case has been, in fact, expressly overruled or implicitly overruled, but no question it has been overruled by the Feist decision.
In fact, in the Eighth Circuit decision the Court wrote as follows. It says,, "If a protection for the numbers is not sought for their own sake..." -- that is the same thing West
THE COURT: Counsel, I am sorry,, I missed what you said in that line. Will you repeat?
MR. ROJAS: Yeah. In other words, in the Eighth Circuit -- when I was getting to the point, Your Honor, is that what you are asking?
THE COURT: Yes.
MR. ROJAS: The Eighth Circuit addressed West's contention that this was only the pagination, not the arrangement, but that the pagination was somehow reflective of the arrangement. There is no citation. There is no authority cited for this reflection theory of copyright infringement that somehow without having a copying of a portion that is protected, you could still have a copyright infringement because what you are copying somehow reflects the copyrighted portion.
What the Eighth Circuit wrote in West versus Mead was the following. It said, "Protection for the numbers is not sought for their own sake. It is sought rather because access to these particular numbers, the jump cites would give users of LEXIS a large part of what West has spent so much labor and industry in compiling and would protonto reduce anyone's need to buy West's books." Judge, that is the sweat of the brow doctrine that was rejected expressly by the Supreme Court in Feist. And it
should be noted that in rejecting the sweat of the brow doctrine in Feist, the Supreme Court extensively relied on the Law Review article by Messieurs Patterson and Joyce, which was concerning the monopolizing of the law and addressing specifically the West versus Mead decision and that aspect of it. So, essentially, the fact that West versus Mead did not address that factual reference part other than by relying on the sweat of the brow, the Supreme Court has clearly addressed that one portion, I think makes it clear where one has to go with that.
But, let me also point out to the Court, and we have put together several charts here on why West versus Mead is not outcome determinative. And I think it ties into what Your Honor's question was. I have already pointed out to the Court item number one, that it was not a preliminary -- it was on a preliminary injunction. Here we have full discovery, we have charts, evidence excerpts. You have seen the voluminous appendix that has been filed. I am not going to take the time to go into each and every one of those items, but it is explicitly there before Your Honor.
In West versus Mead, the assumption was made and language was used about we do not believe that West is employed by the state, I have gone into that. And in fact it was under the impression that West was not an official reporter. West in this case has admitted that it is official reporter for at
least eight states, so that is a difference.
In West versus Mead there was no evidence regarding the ability to recreate the arrangement. Here we have a chart, if Tammy you could please bring that forward, showing -- and this is the CD-ROM that West produces concerning Massachusetts cases, Your Honor, is in the record. What this chart here shows is a screen printout and it may be hard to see from where Your Honor is at, but we will leave this with the Court, that a search can be done of the Massachusetts Reports, the case decision, simply citing the volume number, which is right here. It says, cite 421. And what comes out, because West concedes that the volume and the first page numbers are fair use, just using the volume or the first page number, the computer can regenerate or can sort the cases into the order of which case follows which case in logical numbering sequence. So, in other words, what the significance of that is is that even though the arrangement within the database that Oasis puts together is different than the arrangement that actually appears in the official reports of Massachusetts; that by having access to the volume and first page number alone, the sort can be done to put it into the order in which the official reports appear.
West concedes in this case that it is fair use. And I know they attack the fair use and say there is no basis for fair use, it is commercial. Yet they concede here that it is
fair use to have at least the volume and the first page number. So, the only thing they are really complaining about is the internal pagination.
In other words, instead of saying case A precedes case B which precedes case C, what their concern is, is that page 15 might follow page 14. Because just using what they have already conceded is fair use, we can put the cases in the order that precede and follow and the order that they have shown in their nice little charts as to how the cases were arranged, one before the other. So, really, what the focus of the issue here comes down to ultimately is are those internal pages the result of some kind of creative spark or some kind of sufficient originality and creativity that would merit the protection.
The one case law and the other has already conceded that is not an issue. So, where is that creativity? And I submit to the Court that there is no evidence other than that those pages are the result of a computer program mechanically putting page numbers on pages and breaking paragraphs and so forth. It certainly does not rise to the level of originality expressly found by Feist, and I believe even contemplated by the Eighth Circuit in the West versus Mead decision.
Again, as I pointed out to the Court already on the 102(b), it is a slam dunk, Your Honor. Congress has said it. You don't need to -- it was not addressed expressly in West
versus Mead. You are not receding from West versus Mead. You are not going contrary to West versus Mead. You are simply following what the First Circuit and the Supreme Court's affirmance in Lotus clarify, which is 102(b) says what it says. And even if it would be otherwise protectable, you cannot grant a protection under that if it is a method or a system. Here we have a citation system.
Functional way to reference cases. Again, if in Florida it is the official reporter, we have testimony from the defendant's own expert, Professor Berring, and it is Exhibit A.90 I'm sorry, wrong one, wrong chart. Where I asked him if the Court requires or expresses a preference at one cite to a particular reporter can you ignore that? The question was, if the source which the Court prefers over here is in existence and available, would you advise your students to ignore that source and only cite to a different source? The answer is, no. we know the Blue Book, A.75 requires citation to Southern Second. And Rule 9.800 of the Florida Rules of Appellate Procedure also requires citation to Southern Second. And until about a year ago expressly required them even for the internal pagination, it was amended about a year ago to say: Okay, well, you know, you still have to cite the Southern Second for the volume and the first page number, but as to the internal pagination, you are no longer required to do it; however, the Court prefers that it be done.
And of course, as I am sure Your Honor could appreciate, when a court expresses to counsel a practice in the Bar before it, that it do -- it would prefer something be done in a certain way, well, by golly, that is the way the lawyer is going to do it. So, as a functional matter, this is the only way that somebody can refer to these cases.
Now, these cases, these citations are also similar, Your Honor, to titles. Because as Judge Rosenbaum himself acknowledged, just a decision by itself, West versus Mead without a volume and page number is meaningless as part of the stare decisis, as part of the functional use that it would have to the Bar and to the profession as far as being the law. It is an essential part of being the law under our common law system to have a -- not just a name to it, but a way to access it, a title to it. And the pagination, Your Honor, I submit to you, is in fact exactly part of the title. Without that, you can't get to it. It is silent. It doesn't speak. So, it is part of the title. The internal pagination, it is just a logical, factual flow from that title.
I have covered four and five pretty much in the prior discussions. On seven, that is what it is all about. Eight, fair use and -- oh, by the way, I'm sorry, before I get to fair uses, the Chapter 119 of Florida Statute that counsel refers to, first of all, there is -- arguably, that is something that probably would require a trial because there is
no bright line rule. There is a series of factors to be combined and considered in determining whether under the Florida law of public record something is a part of the public record. You have to balance all of the factors together.
But, what is key is that it applies, also, to the judicial branch by virtue of the provisions of the Florida Constitution and Article 124. Article I, Section 24 of the Florida Constitution: Access to public records and meetings provides that the records made or received in connection -made or received in connection with the official business of any public body, office, or employee of the state or acting on their behalf, except where exempted, are accessible. This section specifically includes the legislative, executive and judicial branches of government and each agency or department created thereunder, et cetera.
So, no question in the Florida Constitution that it applies to the judiciary. But, let me take it a step further. And it goes to the issue, ties back into the issue of having access to the law.
When a court publishes or issues a decision and has it in slip opinion form and it is filed, it is not part of that. It is not accessible or usable as part of that body of law. It has to be compiled and it has to be published and made accessible.
For that reason, Florida, as does I am sure just about
every state, provides a Chapter 25.381 that the attorney general, which is part of the executive branch of government, has to compile and publish-these reports of decisions. Of course, in Florida, since at least 1963, it expressly provides now that the contracts shall be with West Publishing Company of St. Paul, Minnesota. So, it actually would require an act of the Legislature to change the contract with West or to go to somebody other than West. But, the point is that it is part of the executive branch's function, the attorney general's function to enter into this contract, along with the Supreme Court, to procure for the publication of the reports.
Also, the contract, Your Honor, I know counsel for West refers to this as a procurement agreement. But, the contract is very clear that, it says, "First party agrees to," under the Section A, (1) "Edit, print, publish and distribute the opinions and decisions of the Court." It doesn't say, state agrees to buy fifty copies Of Southern Second. In fact, it says, that these reports designated shall be designated and labeled Florida Cases. It says the pages, the amount of pages that it should try to fall within. It requires inclusion -- for instance, paragraph 4 is very significant. It says, "To use the volume designation and pagination of the corresponding volume of the Southern Reporter, Second Series, in which the opinions and decisions are published." So, West has voluntarily -- this is
no due process that the state has in the Eighth Circuit referenced Northwestern Reporter as being adopted unilaterally as the official report and West not having any say in it, here. West has agreed as part of their contract that they are going to do this for the state of Florida and they are going to provide the state of Florida this pagination in the Florida Cases.
And then if you see under Section C, the very last paragraph, this was a sample one, 1985 to 1987. What was protected by copyright, it said: "The synopsis, syllabi and key number digest classifications, index digest and table of statutes construed, editorially prepared and supplied by the first party and included in the volumes of Florida Cases are subject to copyright and will be copyrighted by the first party."
Nowhere is there any mention of arrangement, certainly nowhere is there any mention of pagination. In fact, even in the subsequent versions that did include arrangement added after West -v- Mead, there is still there no mention to pagination. And again, we are not going to copy the arrangement.
Finally, Your Honor, the fair use considerations, again, this is an equitable rule, a balancing act that Your Honor has to conduct. There is no bright line test. And there are a series of factors, four of which are set forth in 17 U.S.C.
Section 107. We've provided a chart up on the easel for use here concerning those factors and to tie into the evidence in this case. However, those four factors in themselves are not exclusive. Those are only some of the factors that must be considered.
The basic policy that the Court has to follow in determining fair use is the policy of encouraging authors to create works of authorships balanced by the public interest in dissemination of information. In this case I think it is especially significant that what we are talking about is law. We are talking about the common law, the common law of the state of Florida, by the official reporter of the state of Florida. And that there is an especially strong public policy encouraging, and it should be an overriding public policy, encouraging the dissemination of that law throughout not only the state, but everywhere else.
The four factors, essentially the purpose and character of the use. Yes, Oasis is for profit. Yes, Oasis intends to make money out of selling the product. However, by doing what Oasis is seeking to do, it will facilitate in essence a "no frills" version or access to the law without the syllabi, the keynote system, all of those creative and unique items that are properly subject to copyright by West, provide just the raw decisions of the Court with the official citation to the public that will facilitate educational, scholarship and
research uses and will provide it in a format that can be used to cut and paste and so forth on the CD-ROM.
The second factor of the nature of the work that is copyrighted, in other words, West's work, again it is merely a compilation of factual and public domain material. The portions in there that are truly and authentically copyrightable and should be, it's West's creation of the syllabi and keynotes, et cetera, will not be copied. So, what we have here is a compilation primarily of factual and public domain that is entitled to the least, to the thinnest level of protection under the copyright laws.
Three, the amount and substantiality of the portion used in relation to the copyrighted work as a whole? Again, Judge, there is no copying of the syllabi, the headnotes, any of that. The only parts that are going to be copied, if you are going to call it copying, is the use of the reference to the pagination of the decisions and where they appear. And at that West has conceded that the volume and the first page number is fine, that is fair use. So, really, the only thing we are really talking about here, now, is just that limited thing about whether page 15 follows page 14. And that, out of the entire body of everything that West has, is what is going to be used by Oasis. And part of that factor is the justification for that copying. In other words, can Oasis do this and produce this product without copying? Why do they
have to copy?
I submit to you that even in the Borland and Lotus case, I mean, Borland didn't have to, they had their own system that worked. But, in Florida, in order to provide a product of the decisions that are the courts' official cites that lawyers and practitioners can use, you have to have the citation. So, Oasis is compelled to do it, if not mandated by the statutes and the rules and certainly by the preference of the court that has been indicated by custom and usage in the Bar and the profession.
Finally, the effect of the use on the potential market. And West provides testimony that, yeah, there is some business plan that says that some sales that would have gone to West would have gone to -- might go to Oasis if the product comes out. That may be so; but, the true market that is there, and the affidavits in this record support, is a niche in the market that West does not obtain -- whether it wants to -- it may not even want to obtain because we are talking about that "no frill" market, but does not obtain because of its pricing in any case. And the courts have recognized that where there is a niche in the market that is not being used by the owner of the original copyright work, and that is the niche that is is being sought by the fair use and there might happen to be some incidental impact on the other market, that that is not the type of impact on the market that is so substantial and
significant to become pervasive as the law says to render on the fair use analysis the use improper.
Again, these are not conclusive. It is not the only factors, but I think the overriding thing is the public policy and the balancing of it. We submit to the Court respectfully that given your own hypothetical, given the decisions of Feist, given Lotus and the interpretation or the injection of validity into the statutory language of 102(b), that this Court is required to find summary judgment in favor of Oasis and that they can do so without departing or diverging from West versus Mead. And furthermore, that if it does not go that route, it still can and should find that the use that is intended here will be a fair use. Thank you, Your Honor.
THE COURT: Okay. Thank you, Mr. Rojas. Mr. Muselik?
MR. MUSELIK: Your Honor, I know we are exceeding our time. I will be brief. If I may, just a second.
Your Honor, there is a very big gaping hole in the logic of Oasis' argument. And it is this: Oasis acknowledges that the contracts between West and the state of Florida require West to include in Florida Cases the synopsis and headnotes that are included in the Florida case reports published in Southern Reporter. Yet Oasis says: We acknowledge the copyright belongs to West for those because it is expressed in the contract. Yet
they want to argue that even when it is expressed in the contract that all copyrights are reserved to West, that somehow they can carve out the arrangement. And there is simply no logical way to distinguish one copyrightable element of a West case report from another.
Now, the chart that was used by Oasis to show the contract cuts off where the party in the first part retains the copyright in the synopsis and the table of statutes construed and some of the other copyrightable elements that are so obvious. What Oasis cuts off is the next 1ine which is in every contract, not from '87 forward, but in every contract between the state and West. And it says, specifically, and has been unchanged, "The state will not without written authorization from West reprint or cause to be reprinted any material in the volumes of Florida Cases copyrighted by West." Any material copyrighted by West. The only reason for making express the arrangement of cases in 1987 was that West was fresh on the heels of its victory in West -v- Mead, and so it was on their mind. And when the copy of the contract was renewed, they included that clause with no disagreement from the state, because every contract had said any material copyrighted by West remained West's. And so it has always been the case that West has retained its copyrights.
Now, a couple of points that also need to be rebutted, because they are simply misleading of the Court. Donna
Bergsgaard testified that West can star-paginate to U.S. Reports. Well, of course it can, because Section 105 of Copyright Act states specifically that the federal government cannot have copyrights. U.S. Reports, the entire publication, is a publication of the federal government. And as such every word in it is in the public domain by federal statute.
There is no corresponding provision in the Copyright Act for the works created by states. States, by acknowledgement and agreement of all commentators and all judicial decisions, can hold copyrights. And so to try to argue from Ms. Bergsgaard testifying that yes, we star-paginate to the official reports of the United States federal government -and again, if I may quote a chart, it was read quickly at the end, but the answer Ms. Bergsgaard gave cites specifically, "That would be my understanding because the government can't hold, U.S. Government can't hold a copyright by Copyright Law." That is the basis for why West star-paginates the U.S. Reports.
Now, let's talk about Ohio. Your Honor, the Ohio contract is in the record. And I am afraid I don't have the cite to it at this moment, but I can certainly provide it to the Court. The contract between West and Ohio specifically states that the arrangement of the Ohio official reports shall be in the public domain. By contract, the state required West to give up the copyright and West did so.
More importantly, in each case in which West is an official reporter, it is a situation where by contract West is simply continuing the official publication of the state; that is, it is using the volume numbers and the name of the work that was used by the state prior to its own discontinuance. In effect, in those instances West is something of a contract printer. So, in Ohio, you have Ohio official reports with volume numbers that correspond with the hundred-year-old series of Ohio official reports ad previously published by the state, itself. And it uses an arrangement and pagination that is unique to Ohio official reports. It is not the arrangement, the volume numbers or the pagination from a West National Reporter System publication. And that is the case with every single one of the contracts West has with states to provide them with an official reporter. They are always called reports. That is a convention that is acknowledged in the industry. Every one of them is called reports. And every one of them has a volume number that continues a state volume number and pagination that is unique to itself and not a part of the pagination of the National Reporter System Publication. I just have a couple more points. I also would call attention to the fact that, first of all, I don't think software cases are really helpful, here. There is an abstraction filtration comparison test that has sort of become
the rage in software cases. It really isn't applicable to the kind of case we have here. And most of the cases that deal with print products and infringing them make no reference and don't try to get into that hash of what is and what is not copyrightable in a computer software program. By the way, the Lotus case decided by the Supreme Court was a 4-4 split and so, of course, it has no precedential value as a Supreme Court case. It is simply, in effect, a First Circuit decision on a software matter.
Finally, Your Honor, I do want to just address for a moment the notion that you can arrange the cases by using just the initial citation. Well, of course you can. And West doesn't mind and doesn't object and considers it a fair use. Because the point of that is the use of a first page citation is a citation. It sends you to the West book. It is good for West's business. It doesn't supplant the West product. That is why it is not infringing. It is a fair use.
Keep in mind that fair use only comes into play once you find a copyrightable work that has been otherwise infringed. So, to even get to the fair use analysis, you have to acknowledge West's copyright and acknowledge that Oasis, work, if not for the fair use defense, would be an infringing work.
And, of course, the main point of a fair use analysis is the fourth factor, the effect of the use on the potential market. That is what all of the courts say is the most
important factor. And that is the factor most implicated when you go from simply having a citation to a West case report to having a star-pagination. You replace the need to refer to the book. You are no longer referring people to the West books, you are telling them you can pretend you have the West books. You can tell the world that you have the West books and treat in your briefs and your correspondence and in your research as if you have the West books. That turns from a citation source that will enhance West's business to a supplanting use. And it is not a fair use.
Your Honor, one other minor point on the citation to the Eighth Circuit opinion in West -v- Mead. The Eighth Circuit actually was very direct in what they said about this whole official, nonofficial distinction. And what they said is that: We don't think West is truly an official reporter like Wheaton and Peters, the people who were employed as reporters of decisions which, as you know, is a title that is bestowed on state employees.
The Court then says very stressfully, "But, even if it is,, the facts of this case as found on the present record by the Court shows that West has used sufficient talent in the industry in compiling and arranging its cases to entitle it to copyright protection." And that is, in effect, the answer to your question, Your Honor. It doesn't matter that there is a contract between West and the state for a subset spin-off of
Southern Reporter. It just doesn't matter. There is a copyright in the arrangement. West has always retained its right-in its copyrights and there is simply no reason to argue otherwise. You can look at every one of those contracts and the language is very clear.
THE COURT: Thank you very much. Mr. Rojas?
MR. ROJAS: May it please the Court. Your Honor, several, several points in reply. First of all, counsel refers to the acknowledgement in the contract of some copyrights that would be retained;-and that is true. But, that is not creating copyright by agreement. Wheaton versus Peters and Banks versus Manchester in many cases going back to the early days delineated what could be properly copyrightable by an official reporter and that is simply consistent with that. The headnotes, the syllabi, the keynote system, tables of statutes construed, et cetera, are exactly the types Of things that are and have always been acknowledged by the Supreme Court and by a long line of precedent to be copyrightable as far as an official reporter.
As far as the U.S. Reports being the official reports, several things. Number one, and that is why I read the other portion of Ms. Bergsgaard's testimony, it was not limited to U.S. Reports that she was referring to, but all states in which they were official, Ohio being only one example. But, they have acknowledged being official in eight.
The second thing is that even the U.S. Reports, however, are published by reporters. You know, Messieurs Wheaton, Peters, those folks were all official reporters of the state. And to the extent that the court or that the courts are saying that their official status is not what makes the difference, here, but their creativity or their originality in the product that they come up with such as those headnotes, syllabi, et cetera, then clearly the same copyright protection would apply, including the pagination. So, there is really that distinction about the U.S. not having a right to have copyright is by itself a distinction without significance.
Also, here there is no evidence that Florida claims copyright in any of this stuff. To the contrary, all of the statutory provisions, the constitutional provisions are that all this is public access and public domain. And in fact, in the '87-'89 agreement -- or, I'm sorry, the '93 agreement that is attached to our complaint, Justice Barquette -- then Justice Barquette, now a member of the Eleventh Circuit Court of Appeals expressly wrote in that all of this agreement is subject to Article 1, Section 24 and to Rule 2051 of the Florida Rules of Judicial Administration. So, that was pointed out to West and West agreed to that.
Concerning the Lotus case and the abstraction filtration comparison test, first of all that was formulated by Judge Learn Hand. And moreover, is applicable in this circuit. But,
nevertheless, Lotus versus Borland was not a nonliteral copying case. It was, in fact, a literal copying case. This is what we supposedly have here.
Usually copyright cases involving software do involve nonliteral copying. And you have to apply that dichotomy and so forth. That was not the case here. The Court expressly acknowledged that that was a literal copying case because it was a literal copying of that menu tree, same as copying here to the pagination.
As far as referring to the other states, I call Your Honor's attention, they cite to Ohio but they omit the other seven states that they acknowledge to be official. Maryland and Idaho are two examples I would like to bring to the Court's attention. Specifically, if you look at the Idaho contract and it's part of the appendix in the record, it reads remarkably similar to the agreement with the state of Florida, almost even in appearance of the pages.
It provides, for example -- I am not going to read the whole thing, but A(l), "The first party agrees to edit,, print, publish and distribute the opinions and decisions of the Supreme Court and the Court of Appeals of the state of Idaho for the period beginning with the closing of volume... " blah, blah, blah, blah, blah, and going on, et cetera, to include syllabi, key number digest -- same type of language.
Ohio, if anything, is the absolute exception to those
eight, which is much more extensive; but, the other seven -if anything, some of them are just one-page agreements. They are even simpler than the agreements with Ohio. And I would invite the Court to do a comparison of the official contracts and that with the state of Florida.
And finally, getting back again to Feist and to the entire issue of the pagination being reflective of the arrangement, again we are not going to take the arrangement -not going to copy it. Feist has said, the Supreme Court in Feist, page 1289, "No matter how original the format, however, the facts themselves do not become original through association." And that is really, I think, using a different word here, association for this reflection that really addresses the whole argument that West has that pagination reflects the arrangement. That is like saying the fact of -I mean, frankly, what that is saying is the pagination is the system to which to access the pages. But, it is also saying alternatively that it is a fact that because it is associated with a creative or unique arrangement, somehow it is entitled to protection, even though West acknowledges that the pagination, itself, is not sufficiently original as to merit copyright protection. They don't claim it in their copyright applications and they don't contend that it is entitled to that here. So Feist addressing that association does not in itself, or does not thereby create protection for those
facts. I think it is further dispositive and clarifies the Eighth Circuit's decision.
Accordingly, we would urge the Court, then, for summary judgment in favor of Oasis, and certainly at the very least that, there are factual questions on fair use and on the Public Records Act which would require a trial of fact. Thank you, Your Honor.
THE COURT: Very well, counsel. We thank you very much for the well presented matter this afternoon. I will take it under advisement. We will-let you know as soon as we can.
I suspect, while in candor, I'm simply a whistle stop on the way to the Circuit; but, that is all right. That is my job. There is one thing. I suspect that Mr. Little's office can help us with this, and that's Ms. Ruiz gets all upset with me when I take these great big placards back into the back room because it soon gets full.
Would you mind, Bruce, taking those back to your office, reduce them down to a smaller size and then we will just take them and use them as part of the record.
MR. LITTLE: We will give them to you next week, Your Honor.
THE COURT: Sure, that is fine. Very well. Thank you very much.
ALL COUNSEL: Thank you, Your Honor.
/s/ ____________________
Jeanne M. Anderson, RPR-CM
Official Court Reporter
(612) 222-4188