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Matthew Bender & Company, Inc. Plaintiff and HyperLaw, Inc. Plaintiff Intervenor

v.

West Publishing Co.

 

In February, 1994 HyperLaw intervened in an action for declaratory judgment concerning West's star paginatioin citation brought by Matthew Bender & Co. against West Publishing Co. in the Southern District of New York. HyperLaw sought to intervene for several reasons: West had threatened HyperLaw with litigation if it dared to use West text in its CD-Roms, the Mathew Bender claim ignred the claims of West for copyright in its corrected versions of opinions appearing in its National Reporter System, and HyperLaw was concerned that West and Mathew Bender would settle the case in a confidential settlement as occurred in 1988.

Ultimately, HyperLaw and West previalied on the citation claim, and West prevailed on it claim relating to opinion text.

Judge Martin stated at the conclusion of the case:

 

"Judicial opinions are a highly sought-after commodity in the legal, literary, and news markets. Hyperlaw's action in this case served the public good because West was maintaining a monopoly over the market for judicial opinions based on a tenuous copyright claim. West was not the author of an original work seeking only to prevent another from making fair use of a portion of a work it had authored. West was attempting to use the fact that it had made inconsequential modifications to judicial opinions to maintain a monopoly in the publication of those opinions. Thus, rather than invoking the Copyright Act as a shield to protect legitimate creative work, West used it as a sword to perpetuate a monopoly over important government works"

 

"While Hyperlaw's vanquishing of West's monopoly over judicial opinions may be far less impressive [than David being made King for vanquishing Goliath] all it asks for its efforts is that it be reimbursed for the substantial legal fees West forced it to incur in order to vindicate the public's right of access to judicial opinions. It prevailed against an adversary that did all that it could to make this litigation as expensive as possible, no doubt hoping that a small company such as Hyperlaw would not stay the course. . . ."

 

The case was initially assigned to Judge Preska, and then was transferred to Judge John S. Martin Jr. after HyperLaw moved to recuse Judge Preska.

 

West sought to dismiss the case against both Matthew Bender and HyperLaw because of a lack of case or controversy. A Bench Trial on this "justiciability" issue as to HyperLaw, and HyperLaw prevailed.

 

Motions were then filed by Matthew Bender and HyperLaw for summary judgment on the citation issue, which motions were granted.

 

HyperLaw alone moved for summary judgment on the issue of West's claims to a copyright in their enhanced versions of the text of court opinions. A trial was held on the text issue, and the District Court issued a ruling in favor of HyperLaw. The two decisions were appealed to the Second Circuit, and West lost both. West brought in Professor Arthur Miller to argue the appeals.

 

Matthew Bender did not participate in the text motion, trial, appeal thereof to the Second Circuit, and petition to the US Supreme Court. Soon thereafter, Matthew Bender was acquired by Reed Elsevier, which also owns Lexis. Reed Elsevier filed an amicus brief in the Second Circuit on the text issue, opposing HyperLaw. Interestingly, the United States Department of Justice filed an amicus brief supporting Matthew Bender and HyperLaw on the citation issue, but refused to submit an amicus brief on the text issue.

 

HyperLaw moved for attorneys fees and was awarded more than $800,000 in fees. West appealed (actually twice, the second time after a remand) and won, so, HyperLaw received no attorneys fees.

 

Second Circuit Text Decision: Matthew Bender v. West, 158 F. 3d 674 (2nd Cir. 1998), aff'g, No. 94 Civ. 0589, 1997 WL 266972 (S.D.N.Y. May 19, 1997), cert. denied sub. nom. West v. Hyperlaw, 526 U.S. 1154 (1999).

Second Circuit Citation Opinion: Matthew Bender v. West Publishing Co., 158 F.3d 693 (2d Cir. 1998), cert. denied, 526 U.S. 1154 (1999), The Second Circuit affirmed a summary order dated March 12, 1997 re a bench opinion granting summary judgment on citation issues to Matthew Bender and HyperLaw dated November 22, 1996.

 

There is an excellent discussion of this case at the web site of Carl Hartmann, lead attorney for HyperLaw.

Following are selected pleadings, decisions, and transcripts related to the case.

 

 

Selected Pleadings updated 2023

 

Date	Filing	Court	Type	Issue
May 12, 1997	Judge Martin Summary Judgment re Citation 1997 U.S. Dist. LEXIS 2710  (S.D.N.Y. 1996)	SDNY 94-589	Decision	Citation
Mar 9, 1994	HyperLaw Complaint With Exhibits	SDNY 94-589	Complaint
Mar 9, 1994	HyperLaw Complaint Without Exhibits	SDNY 94-589	Complaint
Feb 2, 1995	Note Re West and Matthew Bender Ending Settlement Discussions Announced at Court Hearing	SDNY 94-589
Mar 16, 1995	Preska Memorandum and Order Recusal 1995 U.S. Dist. LEXIS 3280	SDNY 94 Civ. 0589	Opinion	Recusal
May 1, 1996	Judge Martin Opinion re Justiciability of Bender and Hyperlaw Claim, Granting as to Bender, Denying at HyperLaw 1996 U.S. Dist. LEXIS 5871; 39 U.S.P.Q.2D (BNA) 1079; Copy. L. Rep. (CCH) P27,505; 24 Media L. Rep. 1972	SDNY 94-589	Decision	Justiciability
May 13, 1996	West Motion to Reconsider re Justiciability	SDNY 94-589	Brief	Justiciability
May 25, 1996	Bender Opposition to West Motion for Reconsideration	SDNY 94-589	Brief	Justiciability
Aug 5, 1996	Bender Motion For Summary Judgment	SDNY 94-589	Brief	Citation
Aug 5, 1996	Judge Martin Opinion Denying West Motion to Dismiss HyperLaw re Justiciability.	SDNY 94-589	Opinion	Justiciability
June 21, 1996	June 21, 1996 HyperLaw Justiciability Hearing Transcript	SDNY 94-589	Transcript	Justiciability
Sep 24, 1996	Sugarman Affidavit in Support of Motion for Summary Judgment re Text	SDNY 94-589	Affidavit Motion	Text
Sep 24, 1996	HyperLaw's Motion for Summary Judgment re Text, Sugarman Affidavit November 13, 1996.	SDNY 94-589	Brief	Text
Nov 4, 1996	Sugarman Reply Affidavit Re Text November 13, 1996 DE 146.	SDNY 94-589	Affidavit Motion	Text
Nov 4, 1996	HyperLaw Reply Brief In Support of Motion for SJ November 13, 1996 DE 145.	SDNY 94-589	Brief	Text and Citation
Nov 22, 1996	Judge Martin Bench Opinion Denying HyperLaw Motion for SJ Re Text Because of Disputed Issues of Fact and Setting Trial	SDNY 94-589	Bench Opinion	Citation and Text
Nov 22, 1996	Complete Transcript Bench Opinion Awarding Summary Judgment re Citation Issues to Matthew Bender and HyperLaw November 22, 1996.	SDNY 94-589	Transcript	Citation and Text
		SDNY 94-589
Jan 26-27-28 1997	Transcript of Trial of HyperLaw Challenge to Text - Judge Martin pdf file	SDNY 94-589	Transcript	Text
Mar 4, 1997	HyperLaw Post Trial  Brief on Text Issues	SDNY 94-589	Brief	Text
Mar 12, 1997	Memorandum Order Granting Summary Judgment to Matthew Bender and HyperLaw on the Issue of Citations. 1997 U.S. Dist. LEXIS 2710 (S.D.N.Y. 1996)	SDNY 94-589	Memorandum Order	Citation
May 19, 1997	District Court, Martin, J. - HyperLaw Text Claims 1997 U.S. Dist. LEXIS 6915; 42 U.S.P.Q.2D (BNA) 1930; Copy. L. Rep. (CCH) P27,638; 25 Media L. Rep. 1856 (S.D.N.Y. 1997).	SDNY 94-589	Opinion	Text
Sep 29, 1997	West Brief on Appeal Text	2nd Cir. 97-7910	Brief	Text Appeal
Sep 29, 1997	Reed Elsevier Amicus Brief on Appeal in support of West claims re text	2nd Cir. 97-7910.	Brief	Text Appeal
Oct 3, 1997	DOJ Amicus Brief re Citation DOJ web site html	2nd Cir. 97-7430	Brief	Citation
Jan 30, 1998	Brief For Amicus Curiae American Association Of Legal Publishers -- Second Circuit Text Appeal - Ray Paterson	2nd Cir. 97-7910	Brief	Text Appeal
Feb.3, 1998	West Reply Brief Second Circuit	2nd Cir. 97-7910	Brief	Text
Nov 3, 1998	Second Circuit Text Opinion 158 F.3d 674 (2d Cir. 1998)	2nd Cir. 97-7910	Opinion	Text
Nov 3, 1998	Second Circuit Citation Opinion 158 F.3d 693 (2d Cir. 1998)	2nd Cir. 97-7430	Opinion	Citation
Dec 16, 1999	Martin, J., Opinion Awarding Attorneys Fees to HyperLaw I	SDNY 94-589	Opinion	Attorneys Fees
Apr 20, 2000	District Court Docket Sheet as of April 20, 2000	SDNY 94-589	Docket
Jan 23, 2001	Second Circuit Attorneys Fees I Opinion	2nd Cir. 00-7029 00-7070	Opinion	Attorneys Fees
Jul 2, 2001	Martin, J., Opinion On Remand Awarding Attorneys Fees to HyperLaw III	SDNY 94 Civ. 589	Opinion	Attorneys Fees
Jul 17, 2002	Summary Order En Banc Second Circuit	2nd Cir.	Opinion	Attorneys Fees
Jul 29, 2002	Petition for Rehearing En Banc	2nd Cir.	Brief

 

Docket SDNY 94-589

 

Matthew Bender & Company, Inc. Plaintiff

and

HyperLaw, Inc.

Plaintiff Intervenor
v.
West Publishing Co.

 

Summary and Selected Pleadings

See Below

 

Why is there confusion as to the existence of two, not one decisions in the Matthew Bender case.

David Nimmer, a copyright law expert, who was one of the attorneys for Matthew Bender, discusses the Second Circuit cases in:

"Copyright In The Dead Sea Scrolls - Authorship and Originality, 38 Houston Law Review 1 at page 44 -49 and 97-115.

Mr. Nimmer, who was one of the counsel for Matthew Bender, conflates the two decisions and Matthew Bender's role. The discussion in the Dead Sea article is primarily about the text case.

Matthew Bender intentionally did not pursue the text claims.

In 1996, Reed Elsevier (which owned Lexis) and Matthew Bender were in acquisistion discussion The acquistion that formally took place in April 1998.

Reed Elsevier actually opposed the HyperLaw text claim and filed a amicus brief opposing HyperLaw..