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To AALP Members:
From: Russ Armstrong, Geronimo Development Corp., Publisher CD-ROM of Virginia Law
I attended the hearing in Oasis v. West in the Federal Court of Appeals for the 8th Circuit this morning. I took notes as fast as I could, and my report follows. Though I hesitate to predict what a court might decide, from the tenor of the questions, it appeared to me that this court is looking to overrule the lower court. I believe they are concerned about finding a way to distinguish Oasis from Mead v. West, and I think they might try to use the unique situation of West being the official publisher for Florida to do so.
The spectator section of the courtroom was divided like the families at a shotgun wedding; West kinfolk on the right side and Oasis on the left. Dwight Opperman was there (but he left when Mr. Rojas rose in rebuttal). I could not identify any other West personnel. A woman was heard to say, before the case was called as she was chatting with other West personnel, "copyists," with some emphasis.
Both principals of Oasis were there, along with four attorneys, including a Mr. Mikelson from the Department of Justice. (!) Mr. Rojas, who argued the case in the lower court, appeared for Oasis, and Mr. Musilek appeared for West, along with co-counsel.
Oasis, appellant, went first, and Mr. Rojas reserved four minutes for Mr. Mikelson's presentation, along with time for rebuttal. He began by noting that this case is governed by Feist. He emphasized that Oasis would be producing a CD-Rom product which would have the same page numbers as the West volumes, but which would not contain the same arrangement. He explained that when the data is recorded on a CD the arrangement is entirely different; that it cannot even be deciphered without the aid of a program. He gave the example of an audio CD, noting how the user could play back tunes in any order. He noted that the users of the Oasis disk could, if they wished, retrieve cases from the database and place them in the same arrangement as West had used, but repeated that they were not stored on the disk in that arrangement.
Mr. Rojas said this led to the question of whether pagination could be an original element, subject to copyright. He said the court needn't look beyond the 8th Circuit for the answer, citing the Toro case, in which part numbers that had been generated by a machine (a computer or word processor) were held to be insufficiently original to be copyrightable.
Mr. Rojas then noted that West says that pagination "reflects" the arrangement of the cases, that the arrangement is copyrightable, and for that reason, the page numbers are protected.
A judge asked what was the "arrangement" upon which West claimed a copyright. Mr. Rojas explained that certain cases appear in their books ahead of other cases, for instance, those cases for which there are headnotes. However, he noted that Oasis was not arguing whether the arrangement was sufficiently original to be copyrightable, emphasizing that the CD which Oasis would produce does not or would not copy that arrangement.
Mr. Rojas argued that pagination is a system (a "system" is not copyrightable under the federal copyright statute). He noted that the only value of the page numbers is to locate text, without which, the reader would need to thumb through the volume. He stressed that the page numbers do not provide the kind of information that is provided by the arrangement; i.e., the page number does not tell you whether it is a criminal case, whether it has headnotes, etc. -- that is the kind of information conveyed by the arrangement.
One of the judges asked "What about Mead?" (which is precedent in the 8th Circuit). Mr. Rojas explained that Mead was decided before Feist. He cited the HyperLaw / Matthew-Bender action before Judge Martin in the Southern District of New York as questioning Mead in light of Feist, and mentioned Judge Friedman's questioning of the continued viability of Mead in his opinion and hearings in the Antitrust action in the District Court for the District of Columbia.
The judge asked if the panel would have to say that Feist overruled Mead. Mr. Rojas said no - because in Mead, the court itself had said that the decision was "tentative," as it was on a petition for a temporary injuction, and that the strong dissent in Mead by judge Oliver noted that there was no evidence in the record as to how the page numbers were generated. Here, by contrast, there was ample evidence, and it showed that the page numbers were mechanically generated. Mr. Rojas repeated the point that numbering is simply a system, and systems are not copyrightable. He noted that Shepard's uses the West citation system, Courts require that it be used, and the Blue Book cites to it. Mr. Rojas said that if there were no system for accessing the law, there would be First Amendment problems (maybe taking a clue from the Patterson amicus brief submitted on behalf of the American Association of Legal Publishers?).
Mr. Mikelson, from the Department of Justice, then made a short presentation. He said the position of DOJ is that Feist "compels" the conclusion that the copying which Oasis has said it would perform is not an infringement. He gave three reasons: (1) Copyright protection for factual compilations is thin; (2) No copyright can be claimed for the effort of compilation (only for the resulting work), and (3) Language in Feist clearly states that when a rival publishes a competing work using the same arrangement, there is no infringement if the competing work does not "feature" that arrangement. He noted that Oasis would be using a different arrangement (a database), and even though one might re-create the West arrangement from it, the Oasis product did not feature the West arrangement.
One judge inquired whether star pagination "led you back to West's arrangment?" Mr. Mikelson repeated that even though it could, Oasis' product would not feature the West arrangement.
The judge asked "but couldn't there be use of West's arrangment?" Mr. Mikelson said yes there could, "but we're dealing only with the compilation." He said Feist requires that we look at the arrangement on the CD-Rom, noting that the arrangment on the CD-Rom is not a copy of the West arrangement, and thus, there is no infringement.
Mr. Musilek then presented West's side. He said there were three issues, the first being whether West's arrangement exhibited sufficient creativity to meet the standard for a compilation copyright elucidated in Feist. He noted that Feist was not discussing a copyrightable arrangement, because Rural Telephone had not exercised sufficient creativity in the process of compilation. Here, he said, West had exericised sufficient creativity.
A judge asked "Where does pagination fit into a copyrightable arrangement." Mr. Musilek responded with something to the effect that Oasis would be inserting every page number into their text, and cited the CCC case.
The same judge said that he thought West had agreed that pagination is per se not copyrightable. Mr. Musilek said yes, but that there were situations where numbers were copyrightable. He gave an example of compiling a list of the 85 best restaurants in St. Paul (he must not live here), and numbering them as to which was the best, etc. If someone else reproduced his list, they couldn't just say that those were mere un-copyrightable numbers.
The judge responded "That's not the situation here. In your example the number showed which was the better restaurant. If your example contained reports about the restauants, and referred to the page number upon which the report for a particular restaurant appeared. . ." Mr. Musilek stated that in his example, all the restaurants would be listed on a single page.
Mr. Musilek noted that with the Oasis product, one could re-create the West arrangement; one could percieve it. (I assume "perceive" is a word of art in the copyright statute). A judge then asked "But couldn't you re-create it using the fair use first page cites?" Yes, said Mr. Musilek, but he argued that Oasis' intended use of the page numbers in the arrangement would not be "fair."
Mr. Musilek mentioned a "non-transformative commercial use" which lost me.
One of the judges then said "You allow fair use of the first page citation because your product would be useless without it. But you won't allow fair use of the page numbers because that's how you retain control."
Mr. Musilek stated that this is not a case about access to the law; that there was plenty of access to the law. He said that case is about the fact that Oasis wants to "take advantage" of a significant feature of West's work.
The judge responded that the Oasis product would not have the headnotes, or the key numbers, or the other features, but that it would be available at a lower price. I don't know what, if anything, Mr. Musilek responded. The judge then asked how West responded to the argument that Oasis is not going to copy the arrangement. Again, Mr. Musilek said something to the effect that the arrangement was not readily discernible. (I apologize; I didn't really get this).
Another judge asked if Mr. Musilek hadn't said that the arrangement consisted of determining that one case was more important than others, etc. Mr. Musilek tried to make a distinction between a compilation that involved pre-existing numbers (e.g., phone numbers) versus West deciding which page numbers would appear where. He said this is not a case about West trying to monopolize anything.
Mr. Musilek finished by saying that it doesn't matter whether or not West is the "official reporter" for Florida. The judge responded "So if we contracted out our publications, we could prevent the public from having access to our decisions?"
Mr. Rojas then presented a short rebuttal. He repeated the point that the page numbers in the West reports tell you nothing about the arrangement. He compared that with the fact that the number one in the list of restaurants tells you something about the arrangement.
Mr. Rojas stressed that Section 101 of the Copyright statute requires two things for infringement: The infringed work must be fixed, not just perceivable. In the Oasis case, the supposedly infringed work - the arrangement - could perhaps be perceived from the data on the CD, but that arrangement is not fixed on the CD. He noted that the data on the Oasis disk does not get re-arranged on the CD when the user decides to view it in the West arrangement; the user is simply viewing it that way.