[Scanned by HyperLaw, Inc. from the court document, 1.0, May 24, 1996]
2. Oasis is a publisher of compact discs containing state statutes and case law reports. Currently, Oasis publishes Florida Statutes in Compact Disc Read Only Memory ("CD-ROM") format. Oasis also publishes reports of Massachusetts court decisions, regulations, and municipal codes on CD-ROM; Connecticut Statutes on CD-ROM; and has announced its intention to publish reports of Florida court decisions on CD-ROM.
3 . West Publishing Company ("West") is a private, for-profit Minnesota corporation. West's principal place of business is located in Eagan, Dakota County, Minnesota.
4 . West is a publisher which, inter alia, publishes case reports of judicial opinions of both state and federal courts. These case reports are published in print in a collection of reporters known collectively as the "National Reporter System"("NRS") , as well as in an on-line database service ("WESTLAW") and in CD-ROM format.
West's Southern Reporter and Florida Cases.
5. The Southern Reporter is a regional reporter published by West that is a collection of reports of appellate decisions of the courts of the states of Alabama, Florida, Louisiana and Mississippi.
6. Southern Reporter is published in consecutively numbered volumes, the pages of which are consecutively numbered. Southern Reporter was first published by West in 1887 and has been a part of West's NRS ever since.
7. Florida Cases is comprised of reports of the Florida decisions as they appear in the Southern Reporter and related preliminary tables and digest material.
8. Florida Cases does not contain its own volume numbers or pagination, but, instead, uses the volume numbers and pagination from Southern Reporter. Thus, the pagination of Florida cases is not consecutive, but contains gaps where non-Florida case reports appear in Southern Reporter which are not reproduced in Florida Cases and there is no way to cite to a case report from, Florida Cases without using the Southern Reporter citation.
9. Florida Cases was first published in 1949. Beginning in 1972, West extended the coverage of Florida Cases back to 1941, the year that Southern Reporter, Second Series was introduced, so that the coverage of Florida Cases now corresponds with Volume 1 of Southern Reporter, Second Series.
10. Florida Cases, as well as Southern Reporter, also includes certain editorial enhancements created by West including case synopsis; syllabi; "key" number digest classifications; index digests; and tables of statutes construed. West has a valid copyright in these enumerated editorial enhancements which are not the subject of this dispute.
11. At all times relevant to this lawsuit, Southern Reporter was first published in weekly advance sheets. Several advance sheets are combined to form a bound volume.
12. Florida Cases has been published in weekly advance sheets since 1982, before that having been published only in bound volume format. Each bound volume of Florida Cases contains the case reports from one or more entire volume of Southern Reporter, so that no portion of a Southern Reporter volume appears in more than one hard-bound volume of Florida Cases.
13. Each advance sheet and bound volume of Florida Cases and Southern Reporter contains a copyright notice. West obtains and holds Certificates of Registration of Copyright for each bound volume and each advance sheet of Southern Reporter and has renewed those registrations for advance sheets and bound volumes first published before 1968.
14. West does not obtain separate copyright registrations for bound volumes of Florida Cases. However, West has obtained and holds Certificates of Registration of. Copyright for each advance sheet of Florida Cases since their introduction in 1982. Thus, prior to 1982, West did not obtain a copyright registration for either advance sheets or bound volumes of Florida Cases.
15. Attached as Exhibit 1 are representative copies of the Copyright Registrations obtained by West for advance sheets of Southern Reporter since 1949.
16. Attached as Exhibit 2 are representative copies of the Copyright Registrations obtained by West for bound volumes of Southern Reporter since 1949.
17. Attached as Exhibit 3 are representative copies of the Copyright Registrations for advance sheets of Florida Cases since 1982.
18. West's Certificates of Registration do not expressly identify "page numbers" or "pagination" as the subject of the claim of copyright.
Parallel Citation and Star Pagination.
19. The essential purpose of a citation is to provide the identity and specific location of a case report.
20. A citation that fails to advise a reader where to locate the case has little utility.
21. West's compilations of case reports of legal decisions are published in numbered and paginated volumes. Researchers typically cite to a legal decision reported in a West reporter by referring to the name of the case, the volume number, the name of the particular West reporter and the page number of the volume on which the particular reported decision is found in that volume. Thus, the case of Feist Publications v. Rural Telephone Service Co., decided by the U.S. Supreme Court in 1991 may be 'cited' as Feist Publications v. Rural Telephone Service Co., 111 S.Ct. 1282 (1991), where "S.Ct." is a recognized abbreviation for West's Supreme Court Reporter.
22. Some publishers include, at the beginning of their report of a judicial decision, reference to another publisher's versions of that case by including a "parallel citation" to the other publisher's version. For example, most publishers of U.S. Supreme Court decisions include a parallel citation to the version of the decision reported in U.S. Reports, the federal government's publication of United States Supreme court decisions. Thus, the parallel citation to the Feist decision found in West's Supreme Court Reporter is to the U.S. Reports version of the case, located at 499 U.S. 340, where "U.S." is the accepted abbreviation for citation to U.S. Reports.
23. Star pagination is the term used to describe a feature of a publication whereby that publication includes not only a parallel citation to another publisher's version of a case report, but also the internal page breaks and page numbers from the other publisher's version of the case report. For instance, West's Supreme Court Reporter contains star-pagination to U.S. Reports.
24. West considers the use by other publishers of parallel citations" to West's NRS versions of a case report to be a fair use of West's citations under S 107 of the Copyright Act.
The Oasis Proposed Product.
25. Oasis has announced its intention to publish a CD-ROM product containing the appellate court decisions of the State of Florida, to be called Oasis' Florida Decisions on CD-ROM. Oasis has announced its intention to include both parallel citations and star pagination to Florida Cases (which uses Southern Reporter volume number and pagination) in its product.
26. Oasis has stated that it intends to obtain Florida court decisions for its Florida CD-ROM product from Florida Cases. Specifically, Oasis has indicated that it intends to obtain a set of West's Florida Cases in hard-bound form. Oasis will then send such books to a key-punching service, where the text of the reports of the Florida courts' decisions will be "key-punched" into the computer. Oasis has stated that it will not include the synopsis, syllabi, key number digest classifications, index digest or the tables of statutes construed, all of which are authored by West.
27. Oasis asserts that it will insert the star-pagination into its product by, simultaneous with key-punching the text of Florida court decisions, key-punching the page numbers as they appear in West's Florida Cases (the same as from Southern Reporter).
28. Oasis has an agreement in place with Interaction: CD-ROM & Optical Storage ("Interaction") of Sarasota, Florida, (Oasis' exclusive Florida distributor) for the purchase and distribution by Interaction of 500 Oasis discs of the star-paginated reports of the Florida courts' decisions on CD-ROM, immediately upon availability of such discs from Oasis.
The Basis of the Dispute Giving Rise to Oasis' Request for a Declaratory Judgment
29. A common law system such as Florida's requires reference to previously reported decisions of the appellate courts in order to ascertain and apply the law pursuant to the doctrine of stare decisis.
30. The parties agree that the use by Oasis of a parallel citation to the Southern Reporter volume number and initial page number of the Florida court decisions reported in Southern Reporter, as contemplated by Oasis, is a fair use under S 107 of the Copyright Act. However, West asserts that the star pagination contemplated by Oasis will infringe West's copyrights.
31. West does not claim, and does not assert in this matter as a basis for the validity of its copyrights in Southern Reporter or Florida Cases, copyright in pagination per se of any portion of its Southern Reporter or Florida Cases volumes.
The Arrangement of Southern Reporter
32. The following courts are reported in Southern Reporter: Alabama Supreme Court, Alabama Court of criminal Appeals, Alabama Court of Civil Appeals, Florida Supreme Court, Florida Courts of Appeal, Louisiana Supreme Court, Louisiana Court of Appeals, and Mississippi supreme Court. No other publisher has selected the same group of courts for reporting in a single reporter.
33. The general coordination and arrangement of Southern Reporter advance sheets is as follows. Reports of opinions, fulltext memorandum decisions (called "jacketed memorandums" by West because West provides them with a separate case folder "jacket"), consecutively-issued memorandum dispositions (such as a batch of review-denied or appeal-denied decisions by a state appellate court) and then memorandum decisions reported in tables are generally first coordinated and arranged in the following order: Supreme Court of Alabama; Court of Civil Appeals of Alabama; Court of Criminal Appeals of Alabama; Supreme Court of Florida; Court of Appeals of Florida; Supreme Court of Louisiana; Court of Appeals of Louisiana; Supreme Court of Mississippi.
34. Within each jurisdiction, reports of opinions and jacketed memorandum decisions come first and within that grouping, are arranged in filing date order. Other memorandum decision case reports, if any, are grouped together and come next. Tables of dispositions, if any, generally are coordinated and arranged next.
35. In addition to this general arrangement, West has a procedure whereby it links two or more case reports together in a "precede and follow" arrangement which overrides any general arrangement rule that would otherwise split the two case reports. 36. In Southern Reporter, all cases from the Florida Supreme Court precede cases from the Florida Appellate Courts. Within each court division the cases are ordered by case type: Florida Supreme Court opinions precede Florida Supreme Court memorandums which precede the Florida Supreme Court unpublished opinion tables, which precede Florida district court opinions (Fla. App. 1st Dist., Fla. App. 2 Dist., etc.).
37. Page numbers in Southern Reporter and Florida Cases are input by automated machinery used by West in its publication process of publishing reports of Florida court decisions.
The Florida State Court System
38. The State of Florida has trial courts throughout the state. The state has divided itself into five districts and created a District Court of Appeals for each district. The state also has a Supreme Court, which hears appeals from the District Courts of Appeal.
39. The Florida court levels or divisions (between Supreme Court and District Court of Appeals) were not created or controlled by West.
40. The system of districts within the Florida courts is not, and never has been, created or controlled by West.
41. The dates the decisions are released for publication by the Florida courts is not, and never has been, created or controlled by West.
42. The decisions of Florida Courts are public information. West does not claim a copyright in the text of judicial decisions of the Florida courts.
West's Contracts with the State of Florida
43. Since 1949, West has entered into contracts with the State of Florida relating to Florida Cases. The contracts are titled "Florida Cases Contract for Publication and Distribution.' West's contract with the State for the State's receipt of WESTLAW services was incorporated into the Florida Cases contracts beginning in 1986, and terms for the purchase by the State of Florida Cases on CD-ROM were incorporated into the contracts beginning in 1993.
44. The Contract has been re-negotiated and entered into between Florida and West every two years. The contract is prepared by West and forwarded to the State of Florida for review, comment, and revisions. The most recent Contract is dated July 1, 1995 for the period ending June 30, 1997.
45. Since 1987, pursuant to the contract between West and the state, the Florida Supreme Court and Florida District courts of appeal provide West with orders, opinions, and decisions of the Supreme Court and the District Courts of Appeal for the State of Florida via electronic transmission.
46. Florida courts provide West with opinions, lists of appearances of counsel and the city from which the counsel come.
47. Florida judges or their clerks may make revisions to their decisions forwarded to West. West is informed of such changes by phone or by letter, and incorporates such revisions for publication in Southern Reporter and Florida Cases.
48. Pursuant to the Contracts, West provides copies of Florida Cases to Florida judges. In Florida, out of approximately eight hundred judges, between twenty and twenty five of such judges currently choose not to receive a set of Florida Cases either because of a lack of space for storage or the availability of law libraries at or near their offices.
49. West and the State of Florida have been unable to locate copies of the contracts between West and the State of Florida for the period from 1949 until June of 1957, and for the period from July 1, 1961 to June 30, 1963. The parties stipulate to the existence of contracts between West and the State of Florida during those years, but have no information about the terms.
50. Attached as Exhibit 4 is a memorandum dated April 28, 1949 and an attached "Exhibit 1" thereto which appear to contain conditions and specifications which may have been part of the original contract between West and the State of Florida to cover the period from 1949 to 1951. The parties are unable to confirm that the conditions and specifications constitute actual language of the 1949 contract or if the conditions and specifications represent the contractual provisions in their entirety.
51. Attached as Exhibit 5 are copies of the various versions of the contracts between West and the State of Florida from 1957 to 1961, and from 1963 to 1965.
52. The contracts between Florida and West, since at least 1957 have remained essentially the same, varying primarily in price and quantity ordered by Florida with regard to Florida Cases. Prior to 1987, the contracts contained the following sentence: 'The Synopsis, Syllabi and Key Number Digest classifications, Index P. 10 Digest, 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." In the 1987 and subsequent contracts the phrase "and arrangement of cases" was added to this sentence. other points or changes (other than price and quantity) addressed in-the contracts include:
a. In 1957, the contract provided for publication and distribution of district court, as well as Supreme Court opinions and reports.
b. Since July 1, 1986, -the contract provides that Florida now electronically transmits its courts' decisions to West and the contract now contains a provision with regard to WESTLAW.
c. Since July 1, 1993, the contract has included pricing for Florida to license copies of West's Florida Cases on CD-ROM.
d. The following provision was added to the Contract as of July 1, 1993:
All records made or received by the Florida Supreme Court in association with this agreement are subject to Art. I, Section 24, of the Florida Constitution, and Rule 2.051, Florida Rules of Judicial Administration. . .
e. The contracts between West and Florida state that West shall use the volume designation and pagination of the corresponding volume of the Southern Reporter, Second Series, in which the opinions and decisions are published.
53. The 1987 Supplemental Agreement to the Contract for Publication and Distribution of Florida Cases, signed by West, states that West is "..... the official reporter of Florida appellate court decisions designated under Sec. 25.381, Florida Statutes...".
54. West submits invoices to Florida requesting payment under the contracts. Since 1949, these invoices are paid by the state with taxpayer dollars by state warrant.
55. Pursuant to West's contracts with the State of Florida, over the last five years, West has billed the State of Florida and stipulates to the receipt of the following rounded amounts from the State of Florida pursuant to the contracts:
1990 1991 1992 1993 1994
Florida $476,000 $423,000 $271,000 $333,000 $373,000
Cases
WESTLAW $107,000 $115,000 $123,000 $141,000 $153,000
CD-ROM -0- $ 2,700
Florida Laws and Rules Relating to the Publication of Judicial Decisions
56. Florida Constitution Article I Section 24 provides, in
(1) (e]very person has the right to inspect or copy any public record made or received in connection with the official business of any public body, officer, or employee of the state, or persons acting on their behalf . . . This section specifically includes the legislative, executive, and judicial branches of government ...
57. Florida Statute 25.381 (1963) is entitled "Reports; publication; purchase and distribution" and provides:
The reports of the opinions of the Supreme Court and the district courts of appeal shall be known as Florida Cases. In July, 1963, and every second year thereafter until otherwise provided by law, the Supreme Court and the Attorney General shall jointly enter into a contract with West Publishing Company, St. Paul, Minnesota, providing for the publication and distribution of such volumes of Florida Cases as necessary to furnish copies thereof to the officers and institutions as required or authorized by law.
58. From 1949 to 1963, the statute required only that such reports be published by a "reputable contractor" but since 1949, it was always West.
59. Prior to 1957, Chapter 25 of the Florida Statutes expressly charged the State's Attorney General with the duty to report the Supreme Court's decisions.
60. In 1957, Florida Statutes Chapter 25 was substantially rewritten, including the creation of the District Courts of Appeal. Furthermore, the District Court of Appeal judges were added to the distribution list for Florida Cases volumes pursuant to the contracts contracts between West and the State.
61. Prior to 1948, the State of Florida privately published and sold its courts' decisions in a reporter known as Florida Reports or contracted with other publishers to print, bind and deliver copies of Florida Reports. In 1948, the State of Florida ceased publishing Florida Reports as the official reports of its appellate decisions. In 1948, the Florida Supreme Court issued the following notice:
"The SOUTHERN REPORTER, beginning with 1948 Florida Supreme Court cases reported in 37 So.2d 692 et seq., is adopted by the Supreme Court of Florida, and by the Board of Commissioners of State Institutions of Florida as the official publication of the opinions and decisions of the Supreme Court of Florida. This book connects with Volume 160 Florida Reports, without omission or duplication."
"Citations should be to Southern Reporter volume and page thus:
42 So.2d 368."
62. West published the Supreme Court's Notice in Southern Reporter.
63. Florida Rule of Judicial Administration 2.051 provides,
in part:
"(a) Generally. Subject to the rule making power of the Florida Supreme Court provided by article V, section 2, Florida Constitution, the following rule shall govern public access to the records of the judicial branch of government and its agencies. The public shall have access to all records of the judicial branch of government and it agencies. . ."
64. Florida Statute 119.011 provides, in part:
For the purpose of this chapter:
(1) "Public records" means all documents, papers, letters, maps, books, tapes, photographs, films, sound recordings, data processing software, or other material, regardless of the physical form, characteristics, or means of transmission, made or received pursuant to law or ordinance or in connection with the transaction of official business by any agency.
(2) "Agency" means any state, county, district, authority, or municipal officer, department, division, board, bureau, commission, or other separate unit of government created or established by law including, for the purposes of this chapter..... and any [] public or private agency, person, partnership, corporation, or business entity acting on behalf of any public agency.
65. From 1949 until 1994, the Florida Rule of Appellate Procedure 9.800 provided that when a Southern Reporter cite is available, it must be used. In 1994, Rule 9.800 was amended to state that 'When referring to specific material within a Florida court's opinion, pinpoint citation to the page of the Southern Reporter where that material occurs is optional, although preferred.' Florida Rule of Appellate Procedure 9.800 applies to all legal documents, including court opinions.
66. The "Bluebook," A Uniform System of Citation, provides that, in Florida, in documents submitted to Florida state courts, one should cite to Florida Reports for years 1846-1948 ("Fla.11), and to Southern Reporter for years 1886 to date ("So." or "So. 2d).
The Correction Process for Southern Reporter
67. In volume 648 of Southern Reporter, second series, (selected by West as a representative volume by West), West made revisions at the respective court's request to the following court decisions which are not reflected in the Florida court slip opinions (attached as exhibit 6) maintained by the courts' respective clerks:
a. Downtown Square Associates v. Department of Transportation. Published at 648 So. 2d 1265 (4th DCA 1995) . Case Number 93-1447.
b. State Farm Fire & Casualty Co. v. Middleton. Published at 648 So.2d 1200 (3rd DCA 1995). Case Number 94-711.
C. Vaughan v. Guardianship of Vaughan. Published at 648 So.2d 193 (5th DCA 1994). Case Number 94-91.
68. Florida judges have been involved in deciding whether their decisions will be published in table versus memorandum format.
69. West does not release Florida court decisions for publication until it is indicated by the Florida court that rehearing was filed, denied, granted, or waived. If rehearing is granted, West does not publish the report of such decision until the court issues a "release" of such decision for publication.
70. West sought and followed the advice of the Florida Supreme Court as to the release for publication of orders which promulgate changes in Florida rules but which are subject to a motion for rehearing or clarification, and whether to withhold publication in Southern Reporter and Florida Rules !at Court pending disposal of motions for rehearing for clarification.
71. West sought the Florida Supreme Court's approval to stop stamping "State Property" on volumes of Florida Cases in order that Florida could more readily distinguish sets of books purchased by the Supreme Court of Florida from those purchased by the counties. Florida allowed West to do so.
72. West currently, pursuant to contracts, is the official reporter for the appellate courts of the states of Ohio, Maryland, New Jersey, Pennsylvania, Arizona, Idaho, New Mexico and West Virginia, as well as the Virginia Court of Appeals. Attached as Exhibit 7 are pages R71 through R73 of West's 1995 Product Reference Guide identifying these products. West acknowledges that other publishers may star-paginate to these reporters.
73. The State of Florida recognizes Florida Cases as Florida's official reporter.
74. For the purposes of the summary judgment proceedings, the parties stipulate to the authenticity of all documents produced in discovery, as well as all documents marked as Exhibits during any depositions taken during discovery in this case.
75. Shepard's Citations (with regard to Florida appellate decision since 1949) uses the volume and page numbers contained in Southern Reporter.
Dated: February 2, 1996.
SCHATZ PAQUIN LOCKRIDGE
GRINDAL & HOLSTEIN P.L.L.P
Joseph M. Musilek #130023
Monica C. McCarty #243577
2200 Washington Square
100 Washington Avenue South
Minneapolis, MN 55401
(612) 339-6900
POPHAM HAIK
SCHNOBRICH & KAUFMAN, LTD.
Attorneys for West Publishing
Company
Bruce Little #17421X
3300 Piper Jaffray Tower
222 So. Ninth Street
Minneapolis, Minnesota 55402
(612) 333-4800
BROAD AND CASSEL
Jose Rojas
Tamara Carmichael
Suite 2000, Court House Center
175 N.W. First Avenue
Miami, FL 33128-9965
Attorneys for Oasis Publishing
Company