07/09/96 HyperLaw, Inc.®

HyperLaw Second Letter to DOJ Re Thomson/West, June 28, 1996

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June 28, 1996

Craig W. Conrath
Chief, Merger Task Force
Antitrust Division
U.S. Department of Justice
Suite 4000
1401 E Street, N.W.
Washington, D.C. 20530

Dear Mr. Conrath:

In my letter to you two days ago concerning the many problems with West's License Agreement form, I referred to the following section in the agreement which permits West to vitiate the agreement.

"1.03 'Licensee Case Reports' shall mean Licensee's reports of judicial decisions that are selected for reporting by Licensees in [Licensee Product(s)/Services(s) and coordinated and arranged by Licensee within [Licensee Product(s)/Services]."
I understand that West representatives are now saying that this provision does not mean what it says. It is clear to me: if the Licensee does not itself select for reporting the decisions and then also coordinate and arrange them, as defined by West in its own confidential arbitrary discretion subject only to review by confidential non-appealable arbitration in Minnesota, then West will not grant a license.

To understand what this means, I quote to you the following from a letter from West that is attached to the complaint in Oasis v. West, about to be appealed to the Eighth Circuit.

"[W]est does not object to the use by a competitor of a parallel citation to the first page of West case reports of judicial decision independently selected by the competitor for inclusion in its own reporter volume."
"With respect to your question of whether West would enter into a star pagination license agreement, the answer is yes. West has entered into star pagination licenses with other publishers and would be happy to discuss such a license with your client. However, the terms of such licenses are individually negotiated and depend in part upon the scope of the use contemplated by the licensees. Therefore, I am unable to quote any type of price or even discuss basic license terms without knowing more about your client's intended product."
Letter dated January 4, 1995 from Joseph M. Musilek, outside litigation general counsel for West, responding to request "Our client would like to use not only the initial page numbers of each case but also 'star pagination' reflecting the pagination of the Florida Cases as published by West under contract with the State of Florida."

It would seem that under the proposed License Agreement, West would be able to continue to assert that Florida Cases is a West selection of decisions, and deny a license to companies like Oasis under Section 1.03, since the Licensee would, according to West, be copying the West selection. And, Oasis would not even be able to tell anyone because it would be muzzled pursuant to the confidentiality provisons accorded to West. Good public policy? I think not.

In response to our letter, others have noted to us that the Department of Justice and the plaintiff Attorney Generals have reserved the right to contest the copyright claims of West. I wish to bring to your attention State of Texas v. West Publishing Co., 882 F.2d. 171 (5th Cir. 1989) which was a declaratory judgment action brought by the Attorney General of Texas re West's claims to ownership of chapter and section numbers of Texas statutes.

The Texas Attorney General's challenge was dismissed because there was no case or controversy -- the State of Texas was not deemed to have met the justiciability standard that the State itself had the immediate intent ability to itself publish the statutes. So, I am having a hard time understanding how these attorneys general or even the Department of Justice is going to challenge the West claims. And, the United States has never intervened in the still pending West v. Mead 1988 case, despite the obvious anti-competitive impact of the settlement, nor has the United States ever taken the obvious step of asking the court to make the agreements public, so that the public can see just how much the public is being abused.

One would conclude that these reservation of rights by the United States and the Attorneys General to contest West copyrights is simple window dressing.

We also note that there is no statute license agreement (something else covered in 1988 between West and Mead in their secret settlement which it seems the Department of Justice and the Attorney Generals felt was only important to Lexis and would not be important to other publishers).


Alan D. Sugarman
HyperLaw, Inc.
June 28, 1996 Page 3 of 2