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PLEASE TAKE NOTICE that, upon the accompanying Memorandum of Law, defendant West Publishing Company will move this Court before the Honorable John S. Martin, United States District Judge, in the United States Courthouse, Foly Square, New York, New York 10007, as soon as counsel may be heard, pursuant to Rule 3(j) of the Rules of the United States District Courts
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for the Southern and Eastern District, for reconsideration of the Court's May 1, 1996 order, as it applies to the Complaints filed by Matthew Bender & Company, Inc. ("Bender"), and, alternatively, pursuant to 28 U.S.C. § 1292(b), for certification of that Order, as it applies to the complaints filed by Bender, to the Second Circuit Court of Appeals for interlocutory review.
Dated: May 13, 1996
WEIL, GOTSHAL & MANGES
JEFFREY l. KESSLER ( 7891)
Katherine Daniels KJD (0343)
767 Fifth Avenue
New York, New York 10153
(212) 310-8000
SCHATZ PAQUIN LOCKRIDGE
GRINDAL & HOLSTEIN P.L.L.P.
Joseph M. Musilek (JMM) (3913)
Eric C. Tostrud
2200 Washington Square
100 Washington Avenue South
Minneapolis, Minnesota 55401
(612) 339-6900
Attorneys for Defendant
West Publishing Company
CERTIFICATE OF SERVICE
I, KATHERINE J. DANIELS, an attorney at Weil, Gotshal & Manges, counsel for defendant, hereby certify that on May 13, 1996, I Caused the foregoing Notice of Motion for Reconsideration or, Alternatively, Certification For interlocutory Review to be served by facsimile and Federal Express upon Irell & Manella, 1800 Avenue of the Stars, Los Angeles, California 90007, counsel for plaintiff, Matthew Bender and Company, Inc., and by facsimile and Federal Express upon Paul J. Ruskin, Esq., 72-08 243rd Street, Douglaston, New York 11363, counsel for plaintiff, HyperLaw, Inc.
Katherine J. Daniels
West Publishing Company ("West") submits this memorandum of law in support of its motion, pursuant to Rule 30) of the Rules of the United States District Courts for the Southern and Eastern District, for reconsideration of the Court's May 1, 1996 order and, alternatively, in support
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of its request, pursuant to 28 U.S.C. § 1292(b), that the Court certify that Order, as it applies to the complaints filed by Matthew Bender & Company, Inc. ("Bender"), to the Second Circuit Court of Appeals for interlocutory review.
In its Order, the Court found that "Bender's apprehension [of suit by West] arises in connection with its star pagination to West reporters, and is not specific to federal or state reporters," let alone to the specific Matthew Bender products at issue in this case. order at 17 (emphasis added). Specifically, the Court found that: (i) Bender's apprehension of suit by West concerning its original New York product was "reasonable" even though Bender concedes that West did not know of the existence of that product prior to the filing of the Complaint (Order at 15); (ii) Bender's apprehension of suit concerning the revised New York product was "reasonable" even though Bender concedes West made no threats after learning for the first time of the existence of that new product when the Second Amended complaint was filed (order at 16-17); (iii) Bender's apprehension of suit concerning its new Texas product was reasonable even though Bender concedes that West made no threats after learning for the first time of the existence of that product when Bender's second action was filed (order
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at 23); and (iv) West's unequivocal assurances that it would never sue over the original New York product did not moot Bender's alleged apprehension of suit by West with respect to that original product because Bender's apprehension was not specific to any product. order at 18.
West respectfully submits that this Court's rulings on the "reasonableness" of Bender's alleged apprehension of suit are incorrect, as a matter of law, because they are based upon the erroneous assumption that copyright infringement can be determined or reasonably threatened on a non-product specific basis. Because of this error, West submits that the Court should reconsider its rulings that "West need not have threatened litigation with respect to a specific product" and that "Bender's general belief that West might sue it for using star pagination" was reasonable even though it knew that West had no knowledge of the specific products at issue. Order at 17. These rulings are at odds with fundamental principles of copyright law and the constitutionally based principle that the declaratory judgment procedure is not available to attack the validity of a patent or copyright in the absence of a reasonable belief by the plaintiff that the defendant is going to file a lawsuit contending that a specific product is likely to infringe. (Point 1, supra).
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Alternatively, if the Court determines not to reconsider its holding with respect to Bender's "reasonable" apprehension of suit, West respectfully requests that the question of whether a reasonable apprehension of suit has to be product specific be certified to the Second Circuit Court of Appeals for interlocutory review pursuant to 28 U.S.C. § 1292(b). Certification of this novel issue of subject matter jurisdiction would save substantial judicial and party resources in the event that the Court of Appeals agrees with West's position on this threshold issue of justiciability.
Indeed, if interlocutory review is granted and the Court of Appeals reverses, this Court and the parties will not have wasted their time in dealing with discovery disputes, deciding cross-motions for summary judgment or ultimately undertaking a trial only to learn later that the Court lacked subject matter jurisdiction in the first instance. That is exactly what happened to the district court in International Harvester Co. v. Deere & Co., 623 F.2d 1207 (7th Cir. 1980), where summary judgment was fully briefed and decided at the trial court level only to be vacated by the Seventh Circuit because the case was found not to be justiciable. Interlocutory review of the justiciability issue is particularly appropriate here since
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Bender has already announced its intention to continue producing its products as this case proceeds, and thus will not suffer any prejudice. (Point II).
ARGUMENT
Reconsideration is proper if a party can point to controlling law or facts that the Court overlooked, which might reasonably be expected to alter the conclusions it reached. Shrader v. CSX Transp. Inc., 70 F.3d 255, 257 (2d Cir. 1995). In this instance, West believes that the Court has overlooked basic principles of copyright law which compel the conclusion that the reasonable apprehension of suit component of justiciability can only be met in a copyright case if the apprehension of suit is specific to the particular products at issue in the case.
It is a fundamental principle of copyright law that the determination of infringement involves a product specific analysis. See, e.g., Robinson v. Random House, Inc.,, 1995 WL 20347 (S.D.N.Y. Jan. 18, 1995) (Preska, J.); CCC Information Services, Inc. v. Macclean Hunter Market Reports, Inc., 44 F.3d 61 (2d Cir. 1994), cert. denied, 116 S.Ct. 72 (1995). Specifically, apart from the issue of whether there is a valid copyright -- here, the
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copyrightability of West's selections and arrangements -there must be a separate determination as to whether a particular product duplicates a substantial enough portion of the copyrighted original to be considered infringing. Id. This means that a company like West could not file a copyright infringement suit -- without violating Rule 11 -unless it had at least some knowledge of the specific product which it contends infringes. Moreover, it necessarily follows that a declaratory judgment plaintiff, like Bender, could not, as a matter of law, have a reasonable apprehension of suit by West if it knew, as it did, that West did not have any knowledge about the existence or intent of Bender to produce the specific products at issue. Goldstein Dep. 60-61, 83-83, 90; Sann Dep. 44, 46, 53.
Bender's original New York product is a case in point. Bender's Complaint alleged that it had a reasonable apprehension that West would sue over Bender's original New York product, which was far from complete, even though West did not even know about the existence or contents of that product. Subsequently, when a test product was finally completed some fifteen months after Bender filed suit and West had an opportunity to review this specific product, it concluded (and filed an affidavit attesting) that West has
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no intention of ever suing over that product. Supplemental Affidavit of Vance K. Opperman ("Opperman Supp. Aff.11) at 1 13. This set of facts -- which is undisputed -- simply underscores the fact that both a claim of copyright infringement and a reasonable apprehension of suit for copyright infringement rust be product specific. Otherwise, the Court and parties will, as in the case of the original New York product, spend months litigating over products about which it turns out there is no dispute.
Similarly, contrary to the Court's ruling, it does matter that Bender's apprehension is "not specific to federal or state reporters," Order at 17, because West's selection and arrangement of the cases in those reporters is different with respect to each. It also matters that West did not "threaten[] litigation with respect to a specific product," Order at 15 n. 4, because one product may substantially duplicate West's selection and arrangement of cases through the use of star pagination whereas another may not. Moreover, West may find one product sufficiently objectionable to sue over while it does not object to another even though it might infringe. Under the Court's rulings, Bender's "general belief that West might sue it for using star pagination" would equally support a "reasonable" apprehension of suit by West whether Bender had star paged
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to one case or duplicated and star paged to West's entire reporter system. This result cannot be squared with basic principles of copyright law.
Failing to account for the product specific nature of copyright infringement claims also caused the Court to erroneously find that Bender's apprehension of suit was reasonable based, in part, upon prior copyright infringement cases filed by West which involved entirely different. and dissimilar products. order at 12. The undisputed facts are that the "six cases filed between 1988 and 1993 in which West claims a copyright violation," that are cited on page 12 of the Court's Order, involved products that are not even remotely comparable to the Bender products at issue here. Specifically, the six other cases Bender "point[s)" to in support of its alleged apprehension of suit by West all involved the wholesale scanning of West reporters which duplicated not only the selection and arrangement of those reporters, but also the keynotes, case synopses and other editorial materials that are original to West. See West's Memorandum in Support of Defendant's motion to Dismiss HyperLaw, Inc.'s Complaint for Lack of Subject Matter Jurisdiction (citing Sugarman Dep. at 125-31, 157-63, 23149, 406-11). it is undisputed that the Bender products at issue here do not contain these original West editorial
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materials and were not scanned from West's volumes. Thus, the six cases, which involved very different products, could not give rise to a reasonable apprehension of suit by West over the specific products described in Bender's complaints. See International Harvester, 623 F.2d at 1212 ("[t]he [other) pending litigation between Deere and 1H is of some relevance. . . . It does not indicates however, that Deere would pursue a Patent suit with respect to the CX-41 or that Deere had formed any opinion as to whether the CX-41 infringed its patent. The CX-41 was in no way involved in the prior suit and thus that suit cannot be viewed as anything more than a general indication that Deere considers litigation a viable alternative once it has determined that a competitor is producing a product which infringes the patent at issue here.") (emphasis added).
The only case filed by West solely claiming copyright infringement over the use of star pagination was West v. Mead. In stark contrast to the Bender products at issue, however, the Mead litigation involved an on-line computer database which totally duplicated West's entire reporter system. This decade-old case -- which involved an entirely different product -- cannot provide Bender with a reasonable apprehension of an infringement suit by West over
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the CD-ROM products at issue here, which West did not even know about until after Bender filed its various complaints.
In sum, by finding Bender's Complaints justiciable based upon Bender's "general belief that West might sue" over the use of star pagination without regard to a specific product, the Court has overlooked fundamental copyright infringement law and constitutionally based principles holding that the Declaratory Judgment Act is not available to attack the validity of a patent or copyright simply because the owner has indicated that it believes that its intellectual property rights are valid and the declaratory plaintiff disagrees. See, e.g., International Medical Prosthetics Research Assocs. v. Gore Enter. Holdings, Inc., 787 F.2d 572, 575 (Fed. Cir. 1986). In other words,, there is no justiciable basis for challenging the validity of a patent or copyright in the absence of a reasonable apprehension that the patent or copyright owner is going to sue over a specific product that it believes is reasonably likely to infringe.
Accordingly, West respectfully requests that the Court reconsider its ruling and hold that Bender cannot have a reasonable apprehension of suit by West sufficient to create a justiciable controversy because it is undisputed that Bender knew that West had no prior knowledge of the
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existence of (or even Bender's intent to produce) the specific products at issue, and because there is no substantial similarity between the specific Bender products and the products West has sued over for copyright infringement in the past.
If the court does not reconsider its ruling that Bender's alleged apprehension of suit by West was reasonable without regard to any specific product, West respectfully requests that this controlling issue of law be certified to the Second circuit court of Appeals for interlocutory review. This procedure will enable the parties to get a final answer to the threshold issue of subject matter jurisdiction without having to go through the substantial expense of further proceedings. Further, it will cause no prejudice to Bender, who has stated that it intends to continue producing its products during the pendency of the litigation without waiting for any ruling by the Court.
Pursuant to 28 U.S.C. § 1292(b), a district court may certify an order for interlocutory review if it finds that the order "involves a controlling question of law as to which theta is substantial difference of opinion and that an immediate appeal from the order may materially advance the
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ultimate termination of the litigation." 28 U.S.C. S 1292(b). West submits that both statutory elements clearly are present here.
First, West believes that the discussion in Point I above demonstrates why the Court's ruling that Bender can reasonably have a non-product specific apprehension of a copyright infringement suit by West presents a "controlling question of law as to which there is a substantial difference of opinion." There is little room to dispute that basic copyright law dictates that infringement is a product specific inquiry. see cases cited at page 5 supra. Further, the Second Circuit has never held, or even had the occasion to expressly consider whether, in light of these undisputed copyright principles, a declaratory judgment plaintiff could ever have a reasonable apprehension of suit when it knew that the copyright owner had no awareness of the specific product at issue to determine if it was likely to infringe. At a minimum, there are certainly grounds for "a substantial difference of opinion" over whether a nonproduct specific apprehension of suit can be reasonable where, as here, West has filed an affidavit stating that, as a matter of policy, it makes all decisions about copyright infringement and whether to sue on a product-by-product basis. Opperman Supp. Aff. J 6.
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Similarly, an immediate appeal of this controlling legal issue "may materially advance the ultimate termination of the litigation" because allowing it to proceed without interlocutory review would risk a tremendous waste of judicial resources if it is later determined that the Court lacked subject matter jurisdiction to begin with. in the New York action, the parties and the court will be proceeding to major cross-notions for summary judgment and possibly a trial, while in the Texas action, substantial discovery would have to go forward. In both cases, it makes no sense to proceed and inflict these burdens on the Court and the parties if there is a substantial difference of opinion which could cause the court of Appeals to conclude that the cases are non-justiciable.
The adverse consequences of not following the prudent procedure of certifying the justiciability issue for interlocutory review are illustrated in International Harvester, 623 F.2d 1207, In that case, the district court denied Deere's motion to dismiss for lack of justiciability, finding that International Harvester had a reasonable apprehension that it would be sued by Deere for patent infringement based upon (i) a prior suit between the parties over the patent at issue (but a different allegedly infringing product), (ii) Deere's refusal to take a position
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on whether the CX-41 product infringed and (iii) Deere's statement that it would permit IH to produce the CX-41 product upon payment of money. The case proceeded through discovery and extensive summary judgment briefing, only to be vacated by the Seventh Circuit because the court concluded that IH's had not satisfied the reasonable apprehension requirement for justiciability. in particular, the Seventh Circuit concluded that, although the prior suit was of some relevance in assessing the reasonableness of IH's alleged apprehension of suit by Deere, it "does not indicate, however, that Deere would pursue a patent suit with respect to the CX-41 or that Deere had formed any opinion as to whether the CX-41 infringed its patent." id at 12.
Finally, certifying an immediate appeal of the justiciability issue would not prejudice Bender in its business operations because Bender has indicated in the record that it is producing the products at issue and will continue to do so during the pendency of this litigation, without waiting for a judicial determination. Permitting the Second Circuit to resolve the threshold issue now will thus substantially further judicial efficiency and cause no prejudice to the parties.
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For all of the foregoing reasons, West respectfully requests that the Court either reconsider its ruling that a reasonable apprehension of a copyright infringement suit by West against Bender can be non-product specific and still present a justiciable controversy or, alternatively, that it certify this novel issue of law for immediate appeal pursuant to 28 U.S.C. § 1292(b).
Dated; May 13, 1996
WEIL, GOTSHAL & MANGES
JEFFREY l. KESSLER ( 7891)
Katherine Daniels KJD (0343)
767 Fifth Avenue
New York, New York 10153
(212) 310-8000
SCHATZ PAQUIN LOCKRIDGE
GRINDAL & HOLSTEIN P.L.L.P.
Joseph M. Musilek (JMM) (3913)
Eric C. Tostrud
2200 Washington Square
100 Washington Avenue South
Minneapolis, Minnesota 55401
(612) 339-6900
Attorneys for Defendant
West Publishing Company
CERTIFICATE OF SERVICE
1, KATHERINE J. DANIELS, an attorney at Weil, Gotshal & Manges, counsel for defendant, hereby certify that on May 13, 1996, I caused the foregoing Notice of Memorandum of Law in Support of West's Motion for Reconsideration of the Court's Rulings With Respect to the Complaints Filed by Matthew Bender or, Alternatively, Certification Pursuant to 28 U.S.C. § 1291(B) to be served by facsimile and Federal Express upon Irell & Manella, 1800 Avenue of the Stars, Los Angeles, California 90007, counsel for plaintiff, Matthew Bender and Company, Inc., and by facsimile and Federal Express upon Paul J. Ruskin, Esq., 72-08 243rd Street, Douglaston, Few York 11363, counsel for plaintiff, HyperLaw, Inc.-
Katherine J. Daniels