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MATTHEW BENDER'S POINTS AND AUTHORITIES IN OPPOSITION TO WEST'S MOTION FOR RECONSIDERATION OR, ALTERNATIVELY, CERTIFICATION May 25, 1996 Re Justiciability

Morgan Chu MC 3911
David Nimmer DN 7049
Elliot Brown EB 0135
Perry Goldberg PG 1281
1800 Avenue of the Stars, Suite 900
Los Angeles, California 90067-4276
Telephone: (310) 277-1010

DEUTSCH, KLAGSBRUN & BLASBAND
David Blasband DB 7069
800 Third Avenue
New York, New York 10022
Telephone: (212) 758-1100

Attorneys for Plaintiff
Matthew Bender & Company, Inc. UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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Case No. 94 Civ. 0589 (JSM)
MATTHEW BENDER & COMPANY, INC.,:

Plaintiff,:
and:
HYPERLAW, INC.,:
Intervenor-Plaintiff,:
v.:
WEST PUBLISHING COMPANY,

:
Defendant.:
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Case No. 95 Civ. 4496 (JSM)
MATTHEW BENDER & COMPANY, INC.,

Plaintiff,

WEST PUBLISHING COMPANY,

:

Defendant.:
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Case No. 94 Civ. 0589 (JSM)

MATTHEW BENDER'S POINTS AND AUTHORITIES IN OPPOSITION TO WEST'S MOTION FOR RECONSIDERATION OR, ALTERNATIVELY, CERTIFICATION

INTRODUCTION 1

TABLE OF AUTHORITIES

Statutes

Other Authorities

INTRODUCTION

Its motions to dismiss having been denied, and recognizing that the New York product action is now ripe for cross-motions for summary judgment, West seeks to delay the day of judgment by advancing the unfounded assertion that this Court's Memorandum Opinion and Order dated May 1, 1996 denying West's motions to dismiss Matthew Bender ("May 1 Opinion") overlooked controlling precedent on the road to clear judicial error.

In reality, it is West alone, not this Court, that has ignored controlling precedent. The courts of this circuit could not have made it clearer that parties are not to make motions for reconsideration based upon arguments that have already been made or upon new theories that were previously available. In disregard of these principles, West serves up a new variation of an old argument (which this Court has already rejected) and a new theory about a previously-briefed authority (that is in any event irrelevant to the issues at bar). See Section I below.

In further disregard of the settled law of this Circuit, West asks for interlocutory appeal based on West's assertion that its motions to dismiss involve a "novel" issue of law. For two years, West has persistently alleged that its motions to dismiss Matthew Bender's complaints are governed by well-settled controlling law. West's sudden revelation that this case actually turns on a previously unrecognized "novel" issue worthy of interlocutory appeal is false. See Section II below.

To compound West's offense, West's continuing efforts to challenge justiciability in these actions rest on a bogus theory of justiciability that West endorses only when faced with the jurisdiction of courts outside of the Eighth Circuit, but which West ignored in a suit it initiated in the District of Minnesota and which West has casually discarded in a currently pending case after West successfully transferred that case to West's forum of choice -- the District of Minnesota. West's shameless flip-flops on its theory of justiciability are powerful evidence that West's present efforts to attack this Court's May 1 Opinion owe their origin to motives other than West's purported concern for Article III of the U.S. Constitution and alleged fear of wasting judicial resources. Rather, West's instant motion is the latest move in West's game to prevent a court outside of the Eighth Circuit from examining its "scarecrow" copyright. See Section III below; see also Matthew Bender's Supplemental Memorandum of Points and Authorities Regarding Mootness (dated September 7, 1995) at 1-3.

WEST'S REITERATED ARGUMENTS AND AUTHORITIES DO NOT PRESENT PROPER GROUNDS FOR A MOTION FOR RECONSIDERATION

West's argument for reconsideration proves once again the unfortunate truth of this Court's observation that "[t]he practice of filing motions for reargument that do not meet the standards of Rule 3(j) is becoming all too common." Borouchov v. Strobel, 1995 WL 598978, at * 1 (S.D.N.Y. October 10, 1995) (Martin, J.). "The purpose of a motion to reargue under Rule 3(j) of this Court's Civil Rules," this Court has stated,

is not to start a new round of arguments in which counsel can simply make new arguments which should have been made originally or repeat arguments rejected by the Court in its original decision. I fully endorse the statements of Judge Mukasey in McHahon & Co. v. Donaldson, Lufkin & Jenrette Securities Corp., 727 F. Supp. 833 (S.D.N.Y. 1989) to the effect that a motion for reargument is not to give the losing party an opportunity to advance new facts and theories in response to the Court's rulings. Nor should the Court be expected to wade through lengthy papers that simply reiterate in slightly different form the arguments made in the party's original papers. . . . Counsel should make motions to reargue only when "new facts [have] come to light or . . . it appears that controlling precedents were overlooked."

In its rush to avoid judgment, West utterly ignores the foregoing limitations on Rule 3(j) motions for reconsideration. First, West's reconsideration argument boils down to a variant of an argument already made by West in its first motion to dismiss filed May 27, 1994. West argued then, as now, that Matthew Bender cannot have a reasonable apprehension of litigation because West did not have specific knowledge of the product in suit before the action was filed. See West's Memorandum of Law In Support of Defendant's Rule 12(B)(1) Motion To Dismiss (dated May 27, 1994) at 24-26. Matthew Bender has already rebutted West's "specific intent" theory, see Matthew Bender's Opposition to West's Rule 12(b)(1) Motion to Dismiss (dated May 12, 1995) at 21-23, which has further been considered and rejected by this Court. May 1 Opinion at 17.

In addition, West accuses this Court of overlooking "controlling authority." West does not, however, identify which of the cases it now cites -- all of which West previously cited in its motions to dismiss FNR1 -- allegedly constitutes controlling precedent that was overlooked. Certainly, the district court opinion, FNR2 Federal Circuit opinion FNR3 and Seventh Circuit opinion FNR4 cited by West are not controlling authority. By process of elimination, that leaves CCC Information Servs. v. Maclean Hunter Market Reports, Inc., 44 F.3d 61 (2d Cir. 1994), cert. denied, 116 S. Ct. 72 (1995), which West cites for the proposition that determining copyright infringement turns on a product-specific analysis. However, CCC Information Servs. is not only irrelevant to standards governing justiciability, but West previously provided this Court with its views regarding CCC Information Servs. and never once intimated that it is a controlling precedent with respect to determining justiciability. See West Supplemental Memorandum (dated December 22, 1995) at 10, 11. FNR5 West's present suggestion that CCC Information Servs. imports a specific intent requirement into determination of justiciability is indefensible. As set forth in this Court's May 1 Opinion, reasonable apprehension turns on whether under the totality of the circumstances Matthew Bender had an objectively reasonable apprehension of litigation, not upon whether West reasonably intended to sue Matthew Bender. See May 1 Opinion at 5-6, 12.

THERE IS NO BASIS UPON WHICH TO GRANT INTERLOCUTORY APPEAL

The Second Circuit has "repeatedly cautioned . . . that the use of th[e § 1292(b)] certification procedure should be strictly limited because `only "exceptional circumstances [will] justify a departure from the basic policy of postponing appellate review until after the entry of a final judgment."'" In re Flor, 79 F.3d 281, 284 (2d Cir. 1996) (citing Klinghoffer v. S.N.C. Achille Lauro, 921 F.2d 21, 25 (2d Cir. 1990) (citation omitted)); see also Westwood Pharmaceuticals v. National Fuel Gas Distrib. Corp., 964 F.2d 85, 89 (2d Cir. 1992) ("we urge the district courts to exercise great care in making a § 1292(b) certification"); Long Island Lighting v. Transamerica Delaval, Inc., 648 F. Supp. 988, 991 (S.D.N.Y. 1986) ("As a matter of policy, interlocutory appeals should be reserved for exceptional cases, where such appeal may avoid protracted litigation; the purpose is not to review the correctness of an interim ruling.").

This is not an "exceptional case" meeting the criteria warranting the grant of interlocutory review. Fatal to West's request is the fact that the Court's May 1 Opinion does not involve a "question of law as to which there is a substantial ground for difference of opinion . . . ." 28 U.S.C. § 1292(b). Indeed, West has repeatedly represented to the Court prior to the Court's May 1 Opinion that this a garden variety case governed by settled "controlling" precedent. See, e.g., West's Memorandum of Law in Support of Defendant's Rule 12(B)(1) Motion to Dismiss and Rule 11 Motion for Sanctions (dated July 26, 1995) at 14 ("Here, there is a controlling Second Circuit precedent and that precedent has been followed consistently (and recently) by this Court."). As such, it is not appropriate for interlocutory appeal. See, e.g., Department of Economic Dev. v. Arthur Andersen & Co., 683 F. Supp. 1463, 1486 (S.D.N.Y. 1988) (denying motion for interlocutory appeal; "The question of subject matter jurisdiction in this case does not involve a disagreement with respect to the applicable law. Rather, the question turns on an analysis of the relevant facts."). West's concoction of an alleged "novel" issue cannot create a question of first impression where the matter is resolved by well established principles of law.

Moreover, even if, arguendo, this were an issue of first impression (rather than the non-issue that it is), "the mere presence of a disputed issue that is a question of first impression, standing alone, is insufficient to demonstrate a substantial ground for difference of opinion." In re Flor, 79 F.3d at 284. Rather, "`[i]t is the duty of the district judge . . . to analyze the strength of the arguments in opposition to the challenged ruling when deciding whether the issue for appeal is truly one on which there is a substantial ground for dispute.'" Id. (citation omitted). For the reasons already articulated in this Court's May 1 Opinion, the arguments advanced by West here are meritless, not just weak, and thus cannot provide a substantial ground for dispute.

West's request for interlocutory appeal should also be denied because West cannot satisfy the statutory requisite that interlocutory appeal "materially advance the ultimate termination of the litigation." 28 U.S.C. § 1292(b). West concedes that the New York product action, which has been pending for over two years, is ripe for cross-motions for summary judgment. West Motion for Reconsideration at 13. The discovery necessary in the Texas product action, which has been pending for over one year, is not substantial given that most of the pertinent information has already been obtained through discovery in the New York product action. The instant cases thus do not involve a situation where "immediate appeal might avoid protracted and costly litigation." United States v. International Business Machs., 406 F. Supp. 184, 186 (S.D.N.Y. 1975); see also McNeil v. Aguilos, 820 F. Supp. 77, 80 (S.D.N.Y. 1993) (interlocutory appeal would not materially advance the ultimate termination of the litigation where "the chances are overwhelming that [movant] would not prevail in an interlocutory appeal, [and thus] certification would far more likely delay the case than hasten its disposition").

In lieu of case authority in support of West's application for interlocutory review -- apparently there is none -- West offers the policy argument that if an appellate court determines that there is no subject matter jurisdiction in these actions, the parties and the Court will have expended unnecessary resources. This trite observation proves far too much -- it would justify interlocutory appeal in every single instance in which a district court denies a motion to dismiss. Congress did not grant an automatic right of appeal from denials of motions to dismiss for good reason. See Coopers & Lybrand v. Livesay, 437 U.S. 463, 474-475, 98 S. Ct. 2454, 2461 (1978) (giving district courts discretion over grants of interlocutory appeal "serves the dual purpose of ensuring that such review will be confined to appropriate cases and avoiding time-consuming jurisdictional determinations in the court of appeals") (emphasis added). West cannot rewrite the law that Congress enacted.

WEST'S EFFORTS TO AVOID THIS COURT'S JURISDICTION ARE PART OF A STRATEGY TO AVOID LITIGATION OF WEST'S "SCARECROW" COPYRIGHT OUTSIDE THE EIGHTH CIRCUIT

A. In A Case Currently Pending In The Eighth Circuit, West Has Adopted A Radically Contrary View Of Justiciability

It is bad enough that West's requests for reconsideration and interlocutory appeal are meritless. West's present posturing is egregious, however, when evaluated in light of West's conduct in a concurrent proceeding now pending before the United States District Court for the District of Minnesota -- Oasis Publishing v. West Publishing Co., CV3-95-563. In that action, West has taken a dramatically contrary stance regarding the conditions under which justiciability is established, for the purpose of obtaining an advisory ruling in its forum-of-choice. A comparison of the two cases is powerful evidence that West's sustained assault on the jurisdiction of this Court is based not on West's good faith understanding of the law, but rather upon West's strategy to confine examination of its alleged copyright in star pagination to courts in the Eighth Circuit.

In Oasis, plaintiff Oasis Publishing, Inc., a CD-ROM publisher, initiated suit against West in the United States District Court for the District of Florida seeking a declaration that West does not have a copyright in the page numbers contained in Florida court decisions published in West's Southern Reporter and that Oasis' intended use of star pagination to West's Southern Reporter in Oasis' planned CD-ROM product will not infringe West's copyright. FNR6 West responded to the Oasis complaint by moving to dismiss the declaratory judgment claim for lack of a justiciable controversy and alternatively to transfer the action from Florida to the District of Minnesota.

West's motion to dismiss for lack of justiciable controversy in Oasis advanced arguments that were similar to those made by West in this action. West claimed that since Oasis had not begun production of its product, e.g., by beginning to obtain the pertinent judicial opinions, Oasis had not met the "preparations" prong of the justiciability test. West further argued that Oasis had presented no evidence to satisfy the "reasonable apprehension" prong of the justiciability test. Specifically, West contended that: (1) West's suits against other third parties with respect to different products containing West star pagination are irrelevant to Oasis' apprehension of suit; (2) correspondence from West's counsel attached to the complaint did not contain threats of suit but merely asserted West's beliefs about its rights with respect to star pagination; and (3) West's offer in that correspondence to grant a star pagination license did not create an apprehension of litigation. According to the Joint Stipulation of Facts filed by West and Oasis in conjunction with their respective cross-motions for summary judgment, Oasis has still not commenced production of the product at issue. See Joint Stipulation of Facts ¶¶ 25-28. Before the Florida court ruled on West's motion to dismiss, it granted West's motion to transfer the case to Minnesota.

Once West succeeded in transferring the Oasis case to Minnesota, West withdrew its motion to dismiss for lack of a justiciable controversy. It did so even though there was not a single new fact pertaining to Oasis' preparations to produce an infringing product or Oasis' apprehension of litigation. But West did not simply withdraw its motion. Rather, it entered a stipulation filed with the Minnesota court in which it dismissed "with prejudice" from its answer the affirmative defense that the case was not justiciable and all allegations in West's answer based upon that defense. In other words, once West successfully transferred the case to Minnesota, West not only withdrew its motion challenging justiciability, but actively attempted to expunge the issue from the record.

After West in effect stipulated to jurisdiction, the parties submitted cross-motions for summary judgment on Oasis' copyright declaratory judgment claim. Just four weeks after oral argument, West's apparent strategy to obtain a favorable opinion from its forum-of-choice paid off. The Minnesota court followed the much-criticized West Publishing Co. v. Mead Data Central, Inc., 799 F.2d 1219 (8th Cir. 1986), cert. denied, 479 U.S. 1070 (1987), and granted West's motion for summary judgment. See Oasis Publishing Co. v. West Publishing Co., 1996 WL 264773 (D. Minn. May 17, 1996).

Besides revealing the true purpose of West's assault on jurisdiction in this action, Oasis undercuts West's argument in the instant application that there can be no reasonable apprehension of litigation unless the declaratory defendant has specific knowledge of the product in suit before the action is filed. It is uncontested in the Oasis case that the plaintiff has not produced a product that West could evaluate for infringement. West nonetheless has conceded that the Oasis case is justiciable, and has thus implicitly conceded that Oasis had a reasonable apprehension of litigation.

In a recent letter to the Court, West's counsel asserts that the Oasis case is "irrelevant to the matter pending before the Court in New York," and further that "there has been no decision on justiciability in the Minnesota case . . . ." Letter of Joseph Musilek to Honorable John Martin dated May 14, 1996. This letter transcends disingenousness. The reason that there was no decision about justiciability in Oasis is because of West's affirmative actions to ensure that the issue would never be considered. Contrary to West's assertion, Oasis is thus highly relevant because it reveals that West's instant contentions regarding justiciability are driven by West's desire to manipulate jurisdiction in order to obtain only favorable rulings on West's "scarecrow" copyright. FNR7

Examination Of West's Contradictory Stances On Justiciability Reveals A Pattern Of Seeking to Limit Examination of Its Purported Pagination Copyright To Its Home Forum

This is not the first time that West has taken a very different view of justiciability when litigating its alleged pagination copyright in the Eighth Circuit. As detailed in Matthew Bender's Opposition to West's Motion for Rule 11 Sanctions, in West Publishing Co. v. Mead Data Central, Inc., 616 F. Supp. 1571, 1775 (D. Minn. 1985), aff'd, 799 F.2d 1219 (8th Cir. 1986), cert. denied, 479 U.S. 1070 (1987), West sued Mead Data Central in the District of Minnesota seeking a declaratory judgment that Mead's "intended" addition of star pagination constituted copyright infringement, notwithstanding the fact that Mead had not yet released the allegedly infringing product. See generally, Matthew Bender's Memorandum in Opposition to West's Motion for Sanctions (dated August 28, 1995) at 6-7.

An impartial observer of West's flip-flopping stances on justiciability in the West v. Mead case, the Oasis case, and the instant actions, attempting to discern a coherent scheme behind West's malleable views on subject matter jurisdiction, might infer what could appropriately be termed "West's Three Axioms of Justiciability":

Pagination copyright declaratory judgment actions brought in the Eighth Circuit are justiciable. See West v. Mead Data Central.

Pagination copyright declaratory judgment actions brought outside of the Eighth Circuit are not justiciable. See Matthew Bender v. West; Oasis v. West.

Pagination copyright declaratory judgment actions brought outside of the Eighth Circuit, once transferred by West into the Eighth Circuit, are transformed into justiciable controversies. See Oasis v. West.

The principle animating these "axioms" is self-evident.

CONCLUSION

Matthew Bender respectfully submits that West's motion for reconsideration or certification for interlocutory appeal of this Court's May 1 Opinion denying West's motions to dismiss should be summarily denied. It is substantively meritless, motivated only by West's ongoing desire to manipulate the jurisdiction of the federal courts to protect a favorable copyright decision that departs from "100 years of settled contrary precedent." Hearings at 12 (statement of Ralph Oman, Register of Copyrights).

The New York product action has been pending for over two years and is ready to proceed without delay to the merits. Accordingly, Matthew Bender respectfully requests that this Court immediately schedule cross-motions for summary judgment as follows: within thirty days of the date that the Court denies West's pending motion, the parties shall file and serve cross-motions for summary judgment in the New York product action, Case No. 94 Civ. 0589; the parties shall have fifteen days to file an opposition brief. In the alternative, Matthew Bender respectfully requests that the Court set a pre-motion conference pursuant to the Court's individual rules of practice. In addition, Matthew Bender respectfully requests that the Court order a Case Management Conference in the Texas product action, Case No. 95 Civ. 4496, to set a discovery cutoff date so that the limited discovery necessary to bring that action to summary judgment can be completed promptly.

Dated: May 25, 1996
Respectfully submitted,
IRELL & MANELLA LLP
Morgan Chu
David Nimmer
Elliot Brown
Perry Goldberg

By: ___________________________
Elliot Brown
Attorneys for Plaintiff
Matthew Bender and Company, Inc.

FNT1

The only case cited by West in the instant brief that West has not previously cited in its attempts to dismiss these actions is Shrader v. CSX Transp., Inc., 70 F.3d 255 (2d Cir. 1995), which discusses the standard governing Rule 3(j) motions. Shrader provides: "The standard for granting such a motion is strict, and reconsideration will generally be denied unless the moving party can point to controlling decisions or data that the court overlooked -- matters, in other words, that might reasonably be expected to alter the conclusion reached by the Court." Id. at 257 (emphasis added). In its recitation of the holding of Shrader, West omits mention of the underlined limitations which were included by the Second Circuit to emphasize the high hurdle to be cleared by a party moving under Rule 3(j).

FNT2

Robinson v. Random House, Inc., 1995 WL 20347 (S.D.N.Y. Jan. 18, 1995).

FNT3

International Medical Prosthetics Research Assocs. v. Gore Enter. Holdings, Inc., 787 F.2d 572 (Fed. Cir. 1986). It is unlikely that West's considers this a controlling precedent in light of West's prior argument to this Court that "[w]hile Federal Circuit justiciability decisions, in the absence of a guiding Second Circuit precedent, may be useful to this Court, they are never controlling." West's Memorandum of Law in Support of Defendant's Rule 12(b)(1) Motion to Dismiss and Rule 11 Motion for Sanctions (dated July 26, 1995) at 14 (emphasis original).

FNT4

International Harvester Co. v. Deere & Co., 623 F.2d 1207 (7th Cir. 1980).

FNT5

Indeed, West has maintained that the only relevant controlling authority that this Court need consider is Wembley, Inc. v. Superba Cravats, Inc., 315 F.2d 87 (2d Cir. 1963). See, e.g., West's Reply Memorandum (dated June 23, 1995) at 12 ("Here, as West points out in its original memorandum, there is a controlling Second Circuit precedent and that precedent has been followed consistently (and recently) by this Court") (citing Wembley); West's Memorandum of Law in Support of Defendant's Rule 12(B)(1) Motion to Dismiss and Rule 11 Motion for Sanctions (dated July 26, 1995) at 14 ("Here, there is a controlling Second Circuit precedent and that precedent has been followed consistently (and recently) by this Court.") (citing Wembley).

FNT6

The Oasis complaint also claims that West has violated the U.S. antitrust laws by preventing competitors from star-paginating to West's reporters. The Oasis complaint, as well as the other documents from the Oasis case referred to herein, have been submitted to the Court by plaintiff intervenor HyperLaw, Inc. as exhibits to the letter of Paul Ruskin to this Court dated May 1, 1996. Pursuant to Rule 3(j) Matthew Bender has not submitted a declaration resubmitting those documents. Matthew Bender is happy to submit additional copies of the Oasis documents if directed by the Court.

FNT7

The recent events in Oasis vividly validate the prescient comments to Congress of Professor Craig Joyce, a strong critic of the Mead Data Central decision, as well as a scholar cited by the U.S. Supreme Court:

The West Publishing Company is an able litigator. If it decides on a "preemptive strike," it sues competitors asserting the right to use "its" identifying matter -- that is, the matter for which it claims protection by virtue of the Mead case -- in the federal trial court which it filed and won in Mead. For quite proper reasons, West's likelihood of success in that court, or anywhere in the Eighth Circuit, is very high. If, however, West is sued elsewhere by a potential competitor seeking to employ in its own works the identifying matter in which West claims ownership, West can in all likelihood get the case transferred to the district of Minnesota. Again, West's chances there are good.