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MATTHEW BENDER BRIEF IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT - August 5, 1996

IRELL & MANELLA LLP
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
- - - - - - - - - - - - - - - - - - - - - - - - - - - -
MATTHEW BENDER & COMPANY, INC.\
Plaintiff,
-against-
WEST PUBLISHING COMPANY,
Defendant.
- - - - - - - - - - - - - - - - - - - - - - - - - - - -
HYPERLAW, INC.
Intervenor-Plaintiff,
-against-
WEST PUBLISHING COMPANY,
Defendant.

x:::::x:::::x

Case No. 94 Civ. 0589 (JSM)

MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MATTHEW BENDER'S MOTION FOR SUMMARY JUDGMENT

 

TABLE OF CONTENTS

 

Page

 

STATEMENT OF UNDISPUTED FACTS 1

The Necessity Of Citation In Our Legal System 1

The Primacy Of Citation To West's Reporters 2

Matthew Bender's Use Of Star Pagination To Identify Page Breaks In West's Reporters 5

West's Efforts To Use The Copyright Laws To Block Competitors From Publishing Judicial Opinions That Are Compatible With Ubiquitous West Citations 9

 

ARGUMENT 11

I. Recent United States Supreme Court Authority As Well As Well Settled Second Circuit Law Mandate Summary Judgment That Matthew Bender Has Not Infringed West's Copyright 12

A.The Supreme Court's Feist Decision Governs The Instant Infringement Analysis 12

B.Application Of Feist To The Instant Facts Compels Summary Judgment For Matthew Bender 13

1. This Case Turns Solely On Feist's Second Prong — Whether Matthew Bender Has Copied Copyrightable Constituent Elements 13

2. Constituent Elements That (a) Are Not Copied, (b) May Be Copied As A Matter Of Law, Or (c) Are Copied With West's Permission, Are Irrelevant To Determining Infringement; Thus, Only Internal Star Pagination Is At Issue 14

a. Judicial Opinions Are A Non-Issue 14

b. West-Authored Elements (Headnotes, Syllabi, Key Numbers, etc.) Are A Non-Issue 15

c. First Page Citations (Parallel Cites) Are A Non-Issue 15

d. Selection Of Decisions Is A Non-Issue 15

e. Arrangement Of Decisions Is A Non-Issue 15

f. The Sole Live Issue Is Conveying Information Regarding Internal Page Breaks Through Star Pagination 16

3. Matthew Bender's Use Of Internal Star Pagination Does Not Constitute Copying Of Original Elements From West's Reporters 16

a. Use Of Internal Star Pagination Does Not Constitute Copying 16

b. In Any Event, The Element Allegedly Copied — Page Numbers — Is Not Original 19

c. Use Of Internal Star Pagination Does Not Copy Any Original "Selection Or Arrangement" 19

(1) There Is No Originality In West's Internal "Arrangement" Of Opinions 20

(2) In Any Event, Use Of Internal Star Pagination To State Facts About Page Breaks Does Not Copy The Internal "Arrangement" 21

(3) Any Alleged Copying Based On The Potential Reconstruction Of West's "Arrangement" From Star Pagination Is Irrelevant To Determining Matthew Bender's Alleged Infringement 22

d. Alleged Copying Of West's Arrangement Of Cases Unrelated To Pinpoint Citations Is Irrelevant 23

C.The Second Circuit Has Explicitly Held That Providing Information About The Location Of Page Breaks Through The Use Of Star Pagination Does Not Constitute Infringement 25

II. Diverse Independent Doctrines Of Copyright Law Lead To The Same Result — Summary Judgment For Matthew Bender 25

A.Application Of The Idea/Expression Dichotomy And Merger Doctrine Precludes A Finding Of Infringement 26

B.West's Citation Scheme Is A "System," And Therefore Not Copyrightable 28

C.The Fair Use Defense Bars Any Claim By West Against Matthew Bender's CD-ROM 31

1. Purpose And Character Of The Use 31

2. Nature Of The Copyrighted Work 32

3. Amount And Substantiality Of The Portion Used In Relation To The Copyrightable Work As A Whole 33

4. Effect Of The Use On Potential Market For Copyrighted Work 33

5. Public Interest 34

6. Balancing The Factors Favors Bender 36

III. In Any Event, West's Own Misconduct Bars It From Asserting Any Copyright Infringement Claim Based On Its Reporters 36

A.West's Misconduct Constitutes Copyright Misuse, Barring Any Enforcement Of Its Rights 36

B.West Has Violated The Copyright Notice Provisions Applicable To Federal Case Law Compilations 39

IV. The Eighth Circuit's Decision In West v. Mead Concerning Star Pagination Has No Bearing On This Court's Determination 41

A. The Eighth Circuit Misconstrued Second Circuit Law 41

B.West v. Mead Enunciates A Theory Of Infringement Incompatible With The Supreme Court's Formulation In Feist 44

C.Feist's Rejection Of "Sweat Of The Brow" Protection Undermines Any Continuing Validity Of West v. Mead 45

CONCLUSION 48 TABLE OF AUTHORITIES

CASES Pages


American Geophysical Union v. Texaco, Inc.,
802 F. Supp. 1 (S.D.N.Y. 1992), aff'd,
60 F.3d 913, 929 n.17 (2d Cir. 1994),
cert. dismissed, 116 S. Ct. 592 (1995) 32, 34

Baker v. Selden, 101 U.S. 99 (1879) 29

Banks Law Publishing Co. v. Lawyers'
Co-operative Publishing Co.,
169 F. 386 (2d Cir. 1909),
app. dism'd, 223 U.S. 738 (1911) passim

Banks v. Manchester,
128 U.S. 244 (1888) 14, 35

Bellsouth Advertising & Publishing Corp. v.
Donnelley Info. Publishing Co.,
999 F.2d 1436 (11th Cir. 1993) (en banc),
cert. denied, 114 S. Ct. 943 (1994) 20, 44

Bentley v. Tibbals, 223 F. 247 (2d Cir. 1915) 38

Building Officials & Code Adm'rs Int'l, Inc.
v. Code Technology, Inc., 628 F.2d 730
(1st Cir. 1980) 35

Callaghan v. Myers, 128 U.S. 617 (1888) 27, 42

Campbell v. Acuff-Rose Music, Inc.,
114 S. Ct. 1164 (1994) 32, 33

CCC Info. Servs., Inc. v. Maclean Hunter
Market Reports, Inc., 44 F.3d 61
(2d Cir. 1994), cert. denied,
116 S. Ct. 72 (1995) 26, 35

Computer Assocs. Int'l, Inc. v. Altai, Inc.,
982 F.2d 693 (2d Cir. 1992) 14

Consumer's Union of United States, Inc. v.
General Signal Corp., 724 F.2d 1044
(2d Cir. 1983), cert. denied, 469 U.S.
823, 105 S. Ct. 100 (1984) 32

Eggers v. Sun Sales Corp., 263 F. 373 (2d Cir. 1920) 42

Feist Publications, Inc. v. Rural Tel.
Service Co., 499 U.S. 340,
111 S. Ct. 1282 (1991) passim


Garfield v. Palmieri, 193 F. Supp. 137
(S.D.N.Y. 1961), aff'd, 297 F.2d
526 (2d Cir.), cert. denied, 369
U.S. 871, 82 S. Ct. 1139 (1962) 3, 35

Hutchinson Tel. Co. v. Fronteer Directory Co.,
770 F.2d 128 (8th Cir. 1985) 46

Illinois Bell Tel. Co. v. Haines & Co., Inc.,
905 F.2d 1081 (7th Cir. 1990) 46

Knitwaves, Inc. v. Lollytogs Ltd.,
71 F.3d 996 (2d Cir. 1995) 22

Kregos v. Associated Press,
937 F.2d 700 (2d Cir. 1991) 15, 26

Lasercomb Am., Inc. v. Reynolds,
911 F.2d 970 (4th Cir. 1990) 39

Lotus Dev. Corp. v. Borland Int'l, Inc.,
788 F. Supp. 78 (D. Mass. 1992), rev'd
49 F.3d 807 (1st Cir. 1995),
aff'd by an equally divided court,
116 S. Ct. 804 (1996) 30, 44, 45

Lowenschuss v. West Publishing Co.,
402 F. Supp. 1212 (E.D. Pa. 1975),
aff'd, 542 F.2d 180 (3d Cir. 1976) 35

Mazer v. Stein, 347 U.S. 201, 74 S. Ct.
460 (1954) 17, 26

Mead Data Central, Inc. v. West Pub. Co.,
679 F. Supp. 1455 (S.D. Ohio 1987) 27

Morrissey v. Procter & Gamble,
379 F.2d 675 (1st Cir. 1967) 28

Myers v. Callaghan, 20 F. 441 (C.C.N.D. Ill. 1883) 42

New Era Publications Int'l, ApS v. Henry Holt & Co.,
873 F.2d 576 (2d Cir. 1989) 34

Oasis Publishing v. West Publishing Co.,
924 F. Supp. 918 (D. Minn. 1996) 10, 19, 29, 45

Rockford Map Publishers v. Directory Service Co.,
768 F.2d 145 (7th Cir. 1985) 46

Salinger v. Random House, Inc., 650 F. Supp.
413 (S.D.N.Y. 1986) (Leval, J.),
rev'd on other grounds, 811 F.2d
90 (2d Cir.), cert. denied,
484 U.S. 890 (1987) 31

Seminole Tribe of Florida v. Florida,
116 S. Ct. 1114 (1996) 1

Sony Corp. of Am. v. Universal City Studios,
Inc., 464 U.S. 417, 104 S. Ct.
774 (1984) 17, 22

Unigard Security Insur. Co. v. Lakewood Eng'g & Mfg. Corp.,
982 F.2d 363 (9th Cir. 1992) 34

West Publishing Co. v. Mead Data Central Corp.,
799 F.2d 1219 (8th Cir. 1986),
cert. denied, 479 U.S. 1070,
107 S. Ct. 962 (1987) passim

Wheaton v. Peters, 33 U.S. (8 Pet.)
591 (1834) 41, 42, 47

Wright v. Warner Books, Inc.,
953 F.2d 731 (2d Cir. 1991) 36

STATUTES AND RULES

17 U.S.C. § 102(b) 26, 29, 30

17 U.S.C. § 103(b) 14

17 U.S.C. § 105 40

17 U.S.C. § 106 16, 17

17 U.S.C. § 107 10, 31

17 U.S.C. § 403 40

D.C. Cir. R. 28(b) 4

Eleventh Cir. R. 28-2(k) 3

Third Cir. R. 28.3(a) 3

OTHER AUTHORITIES

Digital Performance Right in Sound Recordings Act
of 1995, Pub. L. 104-39, 109 Stat. 336 (Nov. 1, 1995) 17

Eaton S. Drone, Drone on Copyright (Boston, 1879) 25

H.R. Rep. No. 94-1476, 94th Cong.,
2d Sess. 145-46 (1976) 40

Hearings on H.R. 4426, Serial No. 105 (May 14, 1992) 47

In the Matter of the Amendment of Supreme Court Rules:
Electronic Archive of Appellate Opinions, Rules
and Orders, Supreme Court of Wisconsin,
Case No. 95-01 10

Jane C. Ginsburg, No "Sweat"? Copyright and Other
Protection of Works of Information After
Feist v. Rural Telephone, 92 Colum.
L. Rev. 338 (1992) 21, 27

L. Ray Patterson & Craig Joyce, Monopolizing the Law: The Scope
of Copyright Protection for Law Reports and Statutory
Compilations, 36 UCLA L. Rev. 719 (1989) passim

Lawrence A. Locke, A Critical Analysis of
West Publishing Company v. Mead Data
Central, Inc., 36 J Copr. Soc'y of the
USA 182 (1989) 18

Lynn I. Miller, Fair Use, Biographies, and
Unpublished Works: Life After H.R. 4412,
40 J. Copr. Soc'y 349 (1993) 34

Melville B. Nimmer & David Nimmer,
Nimmer on Copyright (1996) 14

Morris L. Cohen, Robert C. Berring & Kent Olson,
Finding the Law (West 1989) 1

Paul Axel-Lute, Legal Citation Form: Theory
and Practice, 75 Law. Lib. J. 148 (1982) 1

Robert C. Berring, On Not Throwing Out the Baby:
Planning the Future of Legal Information,
83 Cal. L. Rev. 615 (1995) 4

S. Rep. No. 94-473, 94th Cong.,
1st Sess. 128 (1975) 40

The Bluebook: A Uniform System of Citation
(15th ed. 1991) 1, 3-5, 27, 28

Vera Titunik, "That Was Then, This Is Now,"
American Lawyer 21 (April 1996) 47

William F. Patry, Copyright Law and Practice
(1994) 17, 23, 29, 46

William F. Patry, Latman's The Copyright Law
(1986) 46

 

STATEMENT OF UNDISPUTED FACTS

The Necessity Of Citation In Our Legal System

A fundamental governing principle of our nation's legal system is stare decisis, the doctrine that precedents from within a relevant jurisdiction are a primary source of binding authority. See, e.g., Seminole Tribe of Florida v. Florida, 116 S. Ct. 1114, 1127 (1996) ("Generally, the principle of stare decisis, and the interests that it serves, viz., `the evenhanded, predictable, and consistent development of legal principles, . . . reliance on judicial decisions, and . . . the actual and perceived integrity of the judicial process,' . . . counsel strongly against the reconsideration of our precedent.") (citations omitted); Morris L. Cohen, Robert C. Berring & Kent Olson, Finding the Law 13 (West 1989) ("the American legal system, along with the common law system generally, is most easily distinguished from other legal systems by its heavy reliance on the precedential value of judicial opinions"). As a direct manifestation of stare decisis, the bench and bar must (and do) provide citations to judicial opinions to provide authoritative support for propositions of law and fact.

"The basic purpose of a legal citation is to allow the reader to locate a cited source accurately and efficiently." The Bluebook: A Uniform System of Citation 4 (15th ed. 1991) (the "Bluebook"); see generally Paul Axel-Lute, Legal Citation Form: Theory and Practice, 75 Law. Lib. J. 148 (1982) (analyzing principles of citation form). Citations to judicial opinions are generally of two types. "First page citations" (a.k.a., "initial citations" or "parallel citations") refer the reader to the location of the first page of the cited source. For example, "Banks Law Publishing Co. v. Lawyers' Co-operative Publishing Co., 169 F. 386 (2d Cir. 1909)" is the first page citation for the controlling Second Circuit authority that holds that case reporter pagination is not copyrightable. This first page citation informs the reader that the Banks case appears in volume 169 of West's Federal Reporter starting at page 386. "Pinpoint citations" (a.k.a., "jump cites") refer the reader to the location of the particular page being referred to within the cited source. For example, to cite the following language from the Supreme Court's recent decision concerning copyright protection for factual compilations:

This [limit on copyright protection] inevitably means that the copyright in a factual compilation is thin. Notwithstanding a valid copyright, a subsequent compiler remains free to use the facts contained in another's publication to aid in preparing a competing work, so long as the competing work does not feature the same selection and arrangement[,] one would need to provide a citation such as "Feist Publications, Inc. v. Rural Tel. Service Co., 499 U.S. 340, 349, 111 S. Ct. 1282, 1289 (1991)," to inform the reader that this text appears on page 349 of Volume 499 of United States Reports and on page 1289 of volume 111 of West's Supreme Court Reporter.

The Primacy Of Citation To West's Reporters

Defendant West Publishing Company has long been this nation's dominant publisher of judicial opinions of the federal and state courts.[1] By necessity, law and practice, the bench and bar must have access to and use citations to the appropriate volume and page numbers in West's reporters. This situation has emerged for multiple reasons.

First, West's federal reporters (i.e., Federal Cases, Federal Reporter, Federal Reporter - Second Series, Federal Reporter - Third Series, Federal Supplement, Federal Rules Decisions and Bankruptcy Reporter) are the de facto official reporters of the U.S district courts and courts of appeals (the "lower federal courts") and thus are the standard citation source for the bench and bar.[2] Only West publishes in book form a comprehensive collection of the published decisions of the lower federal courts. Consequently, the rules adopted by many of the federal courts require that citations in briefs be to the appropriate volume and page number of West's federal reporters. See, e.g., Third Cir. R. 28.3(a). The preeminent legal citation manual also requires citation to West's federal reporters, including pinpoint citation. See generally Bluebook at 34-36, 165-67. The Bluebook citation form, which the legal community regards as setting the standards for citations in legal writing, has been formally adopted by the local rules of various courts, thereby further extending the official status of West's federal reporters. See, e.g., Eleventh Cir. R. 28-2(k).

Second, the de facto official status of citations to the volume and page numbers of West's federal reporters is further reflected in their use as the standard citation form in the printed opinions of the United States Supreme Court and the printed slip opinions of the lower federal courts. In the United States Reports, which is the United States government's official reporter of United States Supreme Court decisions, citations to lower federal court decisions almost invariably consist of a citation to the volume and appropriate page numbers, including the pinpoint citation, of the West federal reporter in which the decision and pertinent passages were published. For example, when the United States Supreme Court wished to cite the classic formulation of the "sweat of the brow" copyright doctrine — in the process of banishing that doctrine from U.S. copyright jurisprudence — its official reporter cited to the location of the relevant portion of the relevant judicial opinion in West's Federal Reporter. See Feist, 499 U.S. at 352 ("[t]he classic formulation of the [`sweat of the brow'] doctrine appeared in Jeweler's Circular Publishing Co., 281 F., at 88").

Third, the primacy of citations to West state court judicial reports is a condition dictated by the requisites of legal practice. The judicial decisions of at least nineteen state court systems — including the decisions of Texas state courts, which are at issued in the related action, Matthew Bender & Co., Inc. v. West Publishing Co., 95 Civ. 4496 — are not currently published in any "official" reporter. See Robert C. Berring, On Not Throwing Out the Baby: Planning the Future of Legal Information, 83 Cal. L. Rev. 615, 633 n.66 (1995) ("Berring Article"). Citation to judicial authority in states such as Texas are by necessity to an unofficial reporter, such as the reporters in West's National Reporter System. In yet other states, West is the official reporter. For example, in Florida, West publishes the official Florida Cases, which is a collection of Florida judicial opinions reprinted — including volume and page numbers — from West's Southern Reporter. A citation to Florida's "official" reporter is thus identical to a citation to West's "unofficial" Southern Reporter.

Finally, even in the remaining states, such as New York, where there are non-West "official" reporters of judicial opinions, law and practice nonetheless require parallel citations to West's New York reporters.[3] For example, the rules adopted by certain federal courts require citations to West's New York reporters. See, e.g., D.C. Cir. R. 28(b). The Bluebook (which, as noted above, various local rules of court adopt by reference) also requires citation to West's New York reporters, including pinpoint citation, in documents submitted to federal and state courts. See id. at 195-97. In accord with the standards promulgated by the Bluebook, citation to West's New York reporters, including pinpoint citation, is considered by the legal community to be the proper method of citation in memoranda of law submitted to the federal and state courts.[4]

In sum, as is true of West's federal reporters, the bench and bar must (and do) cite to West's state reporters, including West's New York reporters. Pinpoint citations to West's reporters are thus ubiquitous in the U.S. state and federal corpus juris, in submissions to the courts, as well as in the vast secondary literature about our laws. Information about the location of page breaks in West reporters has thus become a standard frame of reference for discussion, debate and advocacy about the law of this country.

Matthew Bender's Use Of Star Pagination To Identify Page Breaks In West's Reporters

When a judicial opinion is published in a source other than one emanating from West and its publisher wishes it to be linked to the West citation system, that judicial opinion must include: (i) an initial citation to the location of the decision in a West reporter; and (ii) in order to enable pinpoint citations, information about the location of page breaks as they appear in West's reporters, information which is typically provided through the convention of star pagination.[5] Only if those two elements are added to the opinion (i) will the readers of that opinion be able to cite specific portions of that opinion in the proper form (e.g., 281 F. at 88); and (ii) will a user who encounters a citation (e.g., 650 F. Supp. at 425) in a judicial opinion, brief, or commentary be able to isolate the exact text to which that citation refers. Absent those capabilities, that source plainly will be unusable either to generate opinions, pleadings and articles in proper form or to evaluate the analysis of others. Because "[t]he basic purpose of a legal citation is to allow a reader to locate a cited source accurately and efficiently," Bluebook at 4, sources that exclude these capabilities fail the very purpose of citation.

Matthew Bender has long been one of this country's leading publishers of legal secondary literature, including such well known treatises as Moore's Federal Practice, Collier On Bankruptcy, and Weinstein's Evidence. In recent years, Matthew Bender has made most of its library available on CD-ROM. CD-ROM publications offer several advantages over publications in book form. A CD-ROM version of a work takes up a fraction of the space occupied by its conventional printed counterpart. In addition, when used with the appropriate software, a document stored on CD-ROM offers the reader many of the capabilities that are available to a reader using on-line text retrieval services such as LEXIS and WESTLAW. A reader of a Matthew Bender CD-ROM publication can, for example, locate items in the text by using word searches, jump quickly and directly to other portions of a CD-ROM publication, and can print out selected portions of the publication or download them to computer disk. In contrast to on-line text retrieval services, however, the reader of a CD-ROM publication does not incur charges for being on-line, for searching, or for printing. See Declaration of Laurie Kaplan, filed concurrently, ¶ 3 ("Kaplan Decl.").

Matthew Bender is in the process of releasing collections of judicial opinions in conjunction with most of its titles that are available on CD-ROM, as part of its Authority from Matthew Bender electronic library. One of the first such CD-ROM products offered by Matthew Bender contains secondary literature regarding New York practice (e.g., Weinstein, Korn and Miller CPLR Manual) together with judicial opinions from the state and federal courts in New York (the "New York product"). Kaplan Decl. ¶ 5. The current commercial release of the New York product contains a comprehensive collection of published and unpublished decisions of the Second Circuit Court of Appeals (1789-present), the four United States District Courts within the State of New York (1789-present), the New York Court of Appeals (1884-present), New York Appellate Division (1912-present), New York Supreme Court (1912-present) and other lower New York Courts (1912-present). Id. ¶ 6.

For all of the reasons set forth above, Matthew Bender has added initial citations, and is adding and will continue to add star pagination to those judicial opinions published in the New York product that are also published in West's reporters.[6] Id. By having access to primary and secondary sources together in an electronic medium, a reader, at the touch of a button, is able to "jump" from a citation in a treatise to the cited text of a "hot linked" judicial opinion or from one opinion to another "hot linked" cited opinion. Additional "hot links" will be added to allow users to "jump" from an opinion to the cited text of a Matthew Bender secondary source. See id. ¶ 9; Goldberg Decl. ¶ 30.

The judicial opinions included in Matthew Bender's New York product were obtained through an arrangement with LEXIS. Kaplan Decl. ¶ 7. Matthew Bender did not copy the judicial opinions or anything else in its New York product from West's reporters. Id. ¶ 7. For example, the New York product does not and will not contain the case synopses, headnotes, key number topic designations, tributes, indices, or tables from West's reporters. Id. ¶ 10. Nor does the New York product segregate judicial opinions into separate volumes or contain page breaks within the body of opinions. Id. ¶¶ 8, 12.

In addition to copying no literal elements from West's reporters, the New York product differs fundamentally from West's reporters in its selection and arrangement. Matthew Bender's method of "selection" was simply to incorporate all of the New York state and federal cases contained in the LEXIS database. Id. ¶ 7. Thus, the New York product includes many judicial opinions that are not contained in West's reporters. Id.

With regard to arrangement, the New York product and West's reporters are fundamentally dissimilar. To illustrate this dissimilarity, the accompanying Goldberg Declaration compares the arrangement of nine Second Circuit cases published in adjacent order by West in Volume 1 of Federal Reporter - Third Series (starting at page 82) with the arrangement of these same cases in the New York product. These cases are interspersed across no less than 37 cases in the New York product. See Goldberg Decl. ¶¶ 26-27 and Ex. 31.[7] This difference exists, among other reasons, because all the Second Circuit opinions in the New York product are published in strict chronological order,[8]and because Matthew Bender's product contains numerous cases from LEXIS that do not appear in West's reporters.[9]

In addition, there are no pages (or page breaks) in the judicial opinions in the New York product. Kaplan Decl. ¶ 12. The unit of visible text that appears on the screen of a CD-ROM user bears no resemblance to a West page. Thus, whereas a given page of Federal Reporter - Second Series may be arranged in two columns and may contain approximately 650 words, a user's screen off the CD-ROM may display 220 words, which cross a West page break, which are not arranged in columns, and which give no clue as to where on the page the subject material may appear in the West reporter (at the bottom of the left column, in the center of the right column, etc.). Goldberg Decl. ¶ 40.

Unlike West's reporters, which locate footnotes in the conventional manner of print publications at the bottom of the same page on which the footnote numbers occur, the New York product simply inserts a footnote number on the screen. It reproduces the body of that note at the very end of the opinion. Id. ¶ 44. The New York product also contains a "pop-up" feature that allows users to superimpose footnotes over the text by simply clicking on the footnote number. Id. & Ex. 36. That methodology also differs markedly from West's, inasmuch as it obscures the opinion text underneath the pop-up window.

In sum, the only elements of the New York product that even colorably stem from West's reporters are initial citations and information about the location of page breaks conveyed through the convention of star pagination. Kaplan Decl. ¶ 13; Goldberg Decl. ¶¶ 31-46 and Exs. 19, 20 and 35 (illustrating differences between a particular case as it appears in West's reporters and in the New York product).

West's Efforts To Use The Copyright Laws To Block Competitors From Publishing Judicial Opinions That Are Compatible With Ubiquitous West Citations

 

West concedes that Matthew Bender may, without infringing any West copyright, include in the judicial opinions of its New York product first page citations to West reporters. See, e.g., Statement of West's outside general counsel, James E. Schatz, Transcription of American Association of Law Libraries 1995 Annual Meeting in Pittsburgh, Pennsylvania, July 15-20, 1995 at 14 ("West has made it very clear it has no objection to, never has, doesn't now and never will to the use of initial West citations, the volume and first page number by other publishers or by anybody else."; "[T]he initial citations are in the public domain because West has no objection to anybody using them. West has said that for a long time. West has basically said that since 1876.") [Ex. 1]; Transcript of Hearing, In the Matter of the Amendment of Supreme Court Rules: Electronic Archive of Appellate Opinions, Rules and Orders, Case No. 95-01 (March 21, 1995) at 114:6-8, 118:13-14 ("The volume and first page number of every case report published by West is in the public domain."; "West's volume and initial page number are matters of public domain") (testimony of West's counsel Brady Williamson) [Ex. 10]; Supplemental Brief of West Publishing Co., In the Matter of the Amendment of Supreme Court Rules: Electronic Archive of Appellate Opinions, Rules and Orders, Supreme Court of Wisconsin, Case No. 95-01 (April 3, 1995), at 8 ("Since West has no objection to the use of initial citations to its case reports, even by its competitors, those initial citations are effectively `in the public domain.'") [Ex. 11]; see also Berring Article[10]at 630 ("West claims no interest in the citation to the first page of a decision.").[11] West, contends however, that when Matthew Bender provides information about the location of page breaks in West reporters through the convention of star pagination, it engages in copyright infringement.

West's claim that copyright protects information about its page breaks is surprising given that its Rule 30(b)(6) witness on the topic of page breaks admitted that West page breaks — which of course determine which text will appear on which page — are determined automatically by a computer program called "Page Makeup." Deposition of West's Mark Brunsvold, April 7, 1995, at 80:22-25 ("Brunsvold Depo.") [Ex. 13]; West Publishing Company's Supplemental Responses to Matthew Bender's Fifth Set of Interrogatories at 2-3 [Ex. 14]. Once assigned by the Page Makeup program, page breaks are changed by human beings at West less than one percent of the time. Brunsvold Depo. at 111:21-112:8 [Ex. 13].[12] West also admits that its process to insert page breaks is generally the same as the process used by other publishers in the industry. Id. at 34:3-12. This process does not involve editorial judgment, creativity, or originality. Kaplan Decl. ¶ 15. In light of these admissions, it is not surprising that West concedes that "West does not assert a copyright in the page numbers or volume numbers of its reporters." Defendant's Response to Matthew Bender's First Request for Production of Documents (April 6, 1994) at 3 [Ex. 15].

ARGUMENT

West faces an insuperable challenge — it admits that it possesses no copyright over either judicial opinions or over the volume and page numbers of its case reporters, yet it maintains that Matthew Bender commits copyright infringement by providing (concededly uncopyrightable) page number information about (concededly uncopyrightable) judicial opinions. Because West cannot possibly establish copyright infringement under any governing standard, Matthew Bender is entitled to summary judgment.

Recent Supreme Court precedent demands that West prove that Matthew Bender has copied original elements of West authorship in order to demonstrate infringement. Under the uncontrovertible facts, Matthew Bender accordingly is entitled to summary judgment because Matthew Bender has copied nothing from West's reporters, much less any constituent element that is original. Although this analysis is dispositive, the same result follows both from hoary precedent of this Circuit that star pagination to a competitor's judicial reporter does not infringe a copyright interest, as well as from a host of copyright doctrines that circumscribe the scope of copyright protection in light of constitutional limits and in furtherance of the purposes of copyright.

West's sole defense is the West v. Mead case, in which a divided Eighth Circuit panel provisionally found that LEXIS's intended use of star pagination infringed West's arrangement copyright. Because it deviated from over a century of well settled precedent precluding copyright protection for page numbers in judicial reporters, that rogue decision has been denounced by the United States Register of Copyrights and reviled by copyright scholars. Both the U.S. Copyright office and commentators have taught that West v. Mead represents a misguided effort to accord West protection for the "sweat of the brow" it expended in compiling its reporters and that in the clear light of the Supreme Court's recent pronouncements, West v. Mead should not be followed, even in the Eighth Circuit.

 

a. Recent United States Supreme Court Authority As Well As Well Settled Second Circuit Law Mandate Summary Judgment That Matthew Bender Has Not Infringed West's Copyright

b.

c. The Supreme Court's Feist Decision Governs The Instant Infringement Analysis

d. In Feist Publications, Inc. v. Rural Tel. Service Co., 499 U.S. 340, 111 S. Ct. 1282 (1991), a unanimous Supreme Court articulated the standard for determining copyright infringement that governs the instant dispute. A brief summary of that case is instructive.

e. Feist involved wholesale copying by defendant Feist of plaintiff Rural's white pages compilation of telephone listings. Feist conceded that Rural possessed a valid copyright in the directory's introductory text and its graphically laid-out yellow pages, neither of which Feist copied. Id. at 361, 111 S. Ct. at 1296. In addition, Feist conceded that it copied a substantial amount of the telephone listings in Rural's directory, including fictitious listings composed by Rural for the precise purpose of detecting copying. Id. at 344, 111 S. at 1287.

f. Although it was beyond dispute that Feist had extensively copied the fruits of Rural's labor, the Supreme Court held: "Not all copying . . . is copyright infringement. To establish infringement, two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Id. at 361, 111 S. Ct. at 1296.

g. The first element of infringement was established, as Feist conceded the validity of Rural's copyright. Id. Nonetheless, the Supreme Court found no infringement because Rural could not meet the second prong: The constituent elements copied by Feist did not possess sufficient "originality" to qualify for copyright protection. Id. at 362, 111 S. Ct. at 1296 ("selection, coordination, and arrangement of Rural's white pages do not satisfy the minimum constitutional standards for copyright protection").

h. Application Of Feist To The Instant Facts Compels Summary Judgment For Matthew Bender

i.

j. This Case Turns Solely On Feist's Second Prong — Whether Matthew Bender Has Copied Copyrightable Constituent Elements

k.

l. For the purposes of Matthew Bender's motion only, West's ownership of a valid copyright in the advance sheets and bound volumes of its reporters, each considered as a whole, will be presumed. Thus, as in Feist, the sole issue at bar is whether the second prong of the Feist infringement test pertains — i.e., whether Matthew Bender has copied any constituent elements of West's reporters that are original. As demonstrated below, because Matthew Bender has not copied West's selection or arrangement or any other purportedly original constituent component from West's reporters, Matthew Bender is entitled to summary judgment. See Feist, 499 U.S. at 349, 111 S. Ct. at 1289 ("[C]opyright in a factual compilation is thin. Notwithstanding a valid copyright, a subsequent compiler remains free to use the facts contained in another's publication to aid in preparing a competing work, so long as the competing work does not feature the same selection and arrangement.").

m. Constituent Elements That (a) Are Not Copied, (b) May Be Copied As A Matter Of Law, Or (c) Are Copied With West's Permission, Are Irrelevant To Determining Infringement; Thus, Only Internal Star Pagination Is At Issue

n.

o. Plainly, constituent elements that have not been copied, that may be copied as a matter of law, or that are copied with West's consent, cannot establish unlawful appropriation. See generally 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[B] (1996). Those elements are accordingly irrelevant to determining whether Matthew Bender has infringed Feist's second prong. Any attempt by West to raise copying of these elements to demonstrate infringement is nothing more than a meaningless diversion. By process of elimination, it emerges that there is one, and only one, potential constituent element at issue on this motion — internal pagination (i.e., page breaks in the interior of reported judicial decisions, as opposed to their initial cites).

p. Judicial Opinions Are A Non-Issue

q. Matthew Bender obtained the judicial opinions contained in the New York product from LEXIS. See Kaplan Decl. ¶ 7. Matthew Bender did not copy the judicial opinions in its New York product from West's reporters. Id. In any event, under no circumstances are judicial opinions in West's reporters a constituent component over which West can assert copyright. See Banks v. Manchester, 128 U.S. 244, 253 (1888) ("The whole work done by the judges constitutes the authentic exposition and interpretation of the law, which, binding every citizen, is free for publication to all."). Rather, the judicial opinions in West's reporters are as uncopyrightable as were the telephone listings in Feist; they may therefore be freely copied. See 17 U.S.C. § 103(b) (copyright in compilation does not extend to "the preexisting material employed in the work"); Feist, 499 U.S. at 359, 111 S. Ct. at 1295 ("the facts contained in existing works may be freely copied because copyright protects only the elements that owe their origin to the compiler"). See also Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 710 (2d Cir. 1992) ("[public domain] material is free for the taking and cannot be appropriated by a single author even though it is included in a copyrighted work") (citations omitted).

r. West-Authored Elements (Headnotes, Syllabi, Key Numbers, etc.) Are A Non-Issue

s.

t. It is beyond dispute that Matthew Bender does not copy putatively West-authored elements, such as headnotes, key numbers and syllabi, which are analogous to the copyrightable introduction and yellow pages graphics added by Rural to the telephone books at issue in Feist. Because Matthew Bender is avoiding any similarity, no matter how tenuous, to those West additions, they are as irrelevant to the case at bar as were Rural's concededly copyrightable additions to its white pages in Feist.

u. First Page Citations (Parallel Cites) Are A Non-Issue

v.

Selection Of Decisions Is A Non-Issue

Matthew Bender's selection differs from West's in non-trivial ways and thus cannot be deemed to be copied from West's selection of cases. See Kregos v. Associated Press, 937 F.2d 700, 710 (2d Cir. 1991) (if alleged infringer's selection differs in "more than a trivial degree" from competitor's original selection, infringement is absent). The selection of the New York product corresponds to the state and federal cases from New York contained in the LEXIS database. For that reason, Matthew Bender's case collection contains significant numbers of opinions that were published on LEXIS, but which were not published in any West reporter. See p. 7, supra. In sum, there is no actionable similarity between Matthew Bender's and West's selection of cases.

 

Arrangement Of Decisions Is A Non-Issue

As discussed above, the New York product does not arrange opinions according to the arrangement used by West. For example, the nine Second Circuit opinions arranged consecutively by West in Volume 1 of Federal Reporter - Third Series are interspersed across 37 cases in the New York product. See p. 8, supra. Matthew Bender's arrangement includes cases that appear on LEXIS but not in a West reporter; West's arrangement definitionally excludes those cases. Id. West arranges decisions on individual pages with page numbers; Matthew Bender does not. Id. West arranges judicial opinions in separate volumes; Matthew Bender does not. See pp. 8-9, supra. There is, in short, no actionable similarity between West's and Bender's arrangement of cases.

The Sole Live Issue Is Conveying Information Regarding Internal Page Breaks Through Star Pagination

The sole "constituent element" at issue in this motion that conceivably emanates from West's reporters is information about the location of the internal page breaks in West's reporters — i.e., the page breaks in the interior of a given judicial opinion (as opposed to a break between the end of one opinion and the beginning of another). As explained above, Matthew Bender does not "arrange" given judicial opinions in its New York product to emulate on-screen what appears on a West page. Instead, to satisfy the dictates of citation, Matthew Bender informs its readers through the convention of star pagination of facts about where page breaks occur in the referenced West reporter. Whether Matthew Bender has infringed West's copyright turns on whether Matthew Bender's use of internal star pagination to state facts about the location of West page breaks within opinions constitutes "copying of constituent elements of the work that are original." Feist at 361, 111 S. Ct. at 1296.

Matthew Bender's Use Of Internal Star Pagination Does Not Constitute Copying Of Original Elements From West's Reporters

 

Use Of Internal Star Pagination Does Not Constitute Copying

At the threshold, for West to prevail it must show that there has been "copying" from its compilation. In copyright law, "copying" is a shorthand for the infringing of any of the copyright owner's five exclusive rights set forth in Section 106 of the Copyright Act. 2 Nimmer on Copyright § 8.02[A]. See 17 U.S.C. § 106 (according the rights to (1) reproduce, (2) adapt, (3) publicly distribute, (4) publicly perform, and (5) publicly display copyrighted works).

Matthew Bender has not "copied" the page breaks in West's reporters that internal star pagination notates. Indeed, there are no fixed page breaks at all in Matthew Bender's New York product. See Kaplan Decl. ¶ 12. Matthew Bender's use of star pagination rather "states a fact — where certain public domain matter, i.e., a passage from a judicial opinion, is located in a parallel source — and nothing more." Patterson & Joyce, 36 UCLA L. Rev. at 758 n.137 (emphasis added); see also Deposition of Vance Opperman, Vol. III at 415:19-416:10 [Ex. 16].

West will likely argue that Matthew Bender's use of internal star pagination is copying because star pagination "reflects" allegedly original elements of West's compilation. Defendant's Response to Matthew Bender's First Request for Production of Documents (April 6, 1994) at 3 [Ex. 14]; West v. Mead, 799 F.2d at 1227 (adopting West's argument that LEXIS's intended use of "West's page numbers infringes West's copyright in the arrangement."). This "reflection" theory of copying must fail. Congress drafted the 1976 Act to accord copyright proprietors five enumerated rights, and no others.[13] See 17 U.S.C. § 106; Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 432, 104 S. Ct. 774, 784 (1984) ("[copyright] protection has never accorded the copyright owner complete control over all possible uses of his work"); see also 2 Nimmer on Copyright § 8.01[A]. "Reflection" is not among the statutory enumeration.

As the Supreme Court succinctly stated long ago: "Absent copying, there can be no infringement." Mazer v. Stein, 347 U.S. 201, 208, 74 S. Ct. 460, 471 (1954); see also William F. Patry, 1 Copyright Law and Practice 691, n.774 ("This point was lost on the Eighth Circuit in [West v. Mead]."); § IV.C, infra. Because West cannot demonstrate that star paginating constitutes "copying of constituent elements of the work that are original," Matthew Bender is entitled to summary judgment. Feist at 361, 111 S. Ct. at 1296 (emphasis added).

In addition to being fundamentally incompatible with U.S. copyright jurisprudence, West's reflection theory rests on a false factual premise — that star pagination is intended to and does relate to arrangement. In reality, the information conveyed by star pagination is present solely to state a fact about the location of text in a parallel source, not to convey information about arrangement. See Paterson & Joyce at 758 n. 137 ("We wish to state, in the most emphatic terms, our conviction that star pagination of judicial reports has nothing whatsoever to do with case arrangement — that is, with how cases are arranged in the original report or, for that matter, the subsequent report containing the star pagination. Star pagination states a fact — where certain public domain matter, i.e., a passage from a judicial opinion, is located in a parallel source — and nothing more.") (emphasis original). Indeed, because star pagination is added, and used, solely to "locate a cited source accurately and efficiently," Bluebook at 4, the arrangement of the cited source is beside the point: all that matters is that the location of the referenced text be identified accurately and efficiently. See Lawrence A. Locke, A Critical Analysis of West Publishing Company v. Mead Data Central, Inc., 36 J Copr. Soc'y of the USA 182, 196-97 (1989) ("For all the reasons why one would want to use West volumes, it is hard to even imagine one where the arrangement of cases in a volume would be of concern. * * * As a practical matter, whether the user be lawyer, judge, or academic, when one has an interest in a case in any West volume, one would have no interest in what case was printed before or after in that volume and would have no interest in the arrangement of cases within the volume as a whole."). Indeed, for that reason citations via star pagination to West reporters is fully "compatible with an entirely random arrangement. It is hard, therefore, to understand how the ability to cite provided by the pagination . . . can be an essential part of West's arrangements." Id. at 199.

 

In Any Event, The Element Allegedly Copied — Page Numbers — Is Not Original

 

Even if, arguendo, Matthew Bender's use of star pagination to convey information constituted "copying," West concedes, as it must, that the pagination of its reporters — 1, 2, 3, 4, 5, etc. — is anything but original. See, e.g., Defendant's Response to Matthew Bender's First Request for Production of Documents at 3 ("West does not assert a copyright in the page numbers or volume numbers of its reporters.") [Ex. 15].[14] West's admission negates the essential element of a copyright claim noted above: "copying of constituent elements of the work that are original." Feist at 361, 111 S. Ct. at 1296 (emphasis added). Matthew Bender is accordingly entitled to summary judgment because the constituent element allegedly copied by Matthew Bender is not original.

 

Use Of Internal Star Pagination Does Not Copy Any Original "Selection Or Arrangement"

 

West must inevitably attempt to evade the effect of its fatal admission that the constituent element allegedly copied by Matthew Bender is neither original nor copyrightable. Matthew Bender anticipates that West will attempt to shift the focus of the analysis about what is copied from admittedly uncopyrightable page numbers to the allegedly copyrightable "selection and arrangement" of judicial opinions in its reporters. West claims copyright in the selection and arrangement of opinions in its reporters by virtue of West's alleged exercise of "editorial" discretion regarding which opinions shall appear in which order. As mentioned above, West contends that internal star pagination "reflects" West's purportedly copyrightable arrangement of judicial opinions and that use of star pagination is thus tantamount to copying West's original arrangement.

 

It seems highly doubtful on the authority of Feist that West's "selection and arrangement" of judicial opinions into the limited set of reporters in its National Reporter System could sustain a compilation copyright.[15] Nonetheless, for purposes of Matthew Bender's summary judgment motion, this Court need not reach the lack of originality of West's selection and arrangement of cases in each of its reporters. For even if it were presumed that West's reporters have an original selection and arrangement of judicial opinions, multiple independent reasons mandate rejection of West's claim that Matthew Bender's New York product infringes because the internal star pagination "reflects" West's allegedly copyrightable arrangement.

 

There Is No Originality In West's Internal "Arrangement" Of Opinions

 

The fatal weakness in any West claim predicated on the alleged originality of internal "arrangement" of cases is that West can proffer no evidence that there is any "authorship" in its page breaks within reports of any given judicial opinion, or in the way text is otherwise "arranged." To the contrary, West concedes that page breaks are effectuated by a computer program rotely applying set rules of page composition. Brunsvold Depo. at 80:22-25 [Ex. 13]. West also concedes that these mechanically determined page breaks are changed by human beings at West less than one percent of the time. Id. at 111:21-112:8. The other elements of West's internal page layout — using two columns of text with top and side margins — are "manifestly typical, obvious and unoriginal." Bellsouth Advertising & Publishing Corp. v. Donnelley Info. Publishing Co., 999 F.2d 1436, 1445 (11th Cir. 1993) (en banc), cert. denied, 114 S. Ct. 943 (1994) (rejecting claim of originality in page layout of yellow pages). Therefore, West cannot demonstrate the necessary factual predicate for its claim to copyright protection, i.e., that the constituent component allegedly copied is "original." See Patterson & Joyce at 764-65 ("As to page numbers in law reports, one strains mightily to identify anything therein which expresses the `unique personal reaction' of the compilation author upon the subject matter — that is, anything which contributes `some substantial, not merely trivial, originality' to the preexisting matter which the compilation author has taken from the public domain. Authorship originates not on a piece of a paper or a computer disk, but in the author's mind, whereas generally pagination is an element added mechanically by the printer long after the author has departed the scene."). Any copyright claim in that element necessarily fails.

 

In Any Event, Use Of Internal Star Pagination To State Facts About Page Breaks Does Not Copy The Internal "Arrangement"

 

If, contrary to fact, West had expended creativity in determining where to place page breaks in the interior of reported cases and how to arrange text on the page, such creativity is not "reflected" in Matthew Bender's New York product by virtue of its inclusion of internal star pagination. The New York product does not organize cases into columns, as are found in West's reporters. Neither does the user see on his or her computer a block of text corresponding to a West page. The user has no way of knowing if a given heading or paragraph occurs at the bottom of the left column on the West page or in the center of the right column, or elsewhere. Instead, the only element that the CD-ROM user sees is a notation at the appropriate place indicating that a West page break exists.[16] That tenuous similarity is anything but substantial — a comparison of Exhibits 19 and 20, showing the same material as published by West and as displayed on a screen from the New York product, reveals no actionable similarity.[17]

 

Any Alleged Copying Based On The Potential Reconstruction Of West's "Arrangement" From Star Pagination Is Irrelevant To Determining Matthew Bender's Alleged Infringement

 

West's theory of "infringement by reflection" relies on the further leap that the addition of star pagination enables a user of Matthew Bender's New York product to determine the arrangement of each case (as well as the location of each page break within a case) and thereby reproduce West's overall arrangement. See West v. Mead, 799 F.2d at 1227. Putting aside the issue of why any sane person would actually choose to use Matthew Bender's New York product in that manner, Matthew Bender notes that the infringement, if any,[18]under those circumstances would lie solely with the hypothetical quixotic user who has created a copy of West's arrangement. See Patterson & Joyce at 766, n.166 (1989). Matthew Bender could not be directly liable for such hypothetical infringement by third parties. The only remaining question is whether it could be contributorily liable. Given that the New York product serves primarily a substantial noninfringing usage, as a matter of law Matthew Bender could not be held a contributory infringer. See Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 442, 104 S. Ct. 774, 779 (1984) (sale of accused product "does not constitute contributory infringement if the product is widely used for legitimate, unobjectionable purposes. Indeed it need merely be capable of substantial noninfringing uses."). West's imaginary spectacle accordingly illuminates nothing in dispute at bar.[19]

Alleged Copying Of West's Arrangement Of Cases Unrelated To Pinpoint Citations Is Irrelevant

 

Matthew Bender anticipates that West will argue that it has exercised originality in determining the arrangement between opinions — i.e., the relative ordering — within a reporter. But this aspect of the West arrangement is irrelevant to determining the sole contested issue at bar — whether Matthew Bender's use of internal star pagination to state facts about the location of page breaks is copyright infringement. See § I.B.2.f, supra. For, as already noted, West concedes that competitors are free to publish rival case compilations along with pertinent first page parallel citations to West reporters. That concession removes from live dispute the issues of selection and arrangement of whole cases, as opposed to arrangement within the interior of individual cases. For even if, arguendo, West could control "reflection" of its selection and arrangement of cases, both are necessarily and fully "reflected" in the initial parallel citations to West reporters, which citations West has conceded to be free to use by all.[20] See § I.B.2.c, supra.

 

To give a concrete example, the "selection and arrangement" of the following Second Circuit decisions — Matter of Jacobs, decided Dec. 23, 1994; US v. Gay, decided Dec. 27, 1994; and Williams v. Bartlett, decided Dec. 28, 1994 — is conveyed 100% through their respective first page citations, 44 F.3d 84, 44 F.3d 93, and 44 F.3d 95. Once West has conceded the permissibility of copying those first page citations, it can point to literally nothing left over to which its purported "selection and arrangement" copyright may attach.

 

The foregoing arguments underline the critical impact of West's admission that Matthew Bender's use of first page citations does not constitute copyright infringement. In other litigation involving the copyrightability of West pagination, West focuses on the supposed originality in its reporters deriving from the various "editorial" choices West employees make in selecting and arranging cases. The foregoing arguments reveal that these alleged editorial choices play no part in resolving any issue currently disputed between the parties. For whether West publishes a given case, and whether West publishes that case adjacent to (or far from) a different related (or unrelated) case, the first page citation to the case conveys all information about that placement. West concedes that Bender's use of that initial page citation gives rise to no claim of copyright infringement.

 

Accordingly, as noted above, this case revolves solely around the purported originality of West's page breaks in the interior of reported cases. To return to the foregoing example, the only matters relevant to the case at bar are exemplified by the page breaks in Matter of Jacobs between pages 84 and 85, between pages 85 and 86, between pages 86 and 87, etc. The location of those internal page breaks is independent of whether West arranges cases alphabetically, chronologically, topically, or by joining related cases. Given West's concession, any argumentation that it advances concerning first page cites — or matters that determine such first page cites, such as ad hoc decisions to publish various related cases adjacent to one another — is simply a pointless distraction from the issue at bar.

 

The Second Circuit Has Explicitly Held That Providing Information About The Location Of Page Breaks Through The Use Of Star Pagination Does Not Constitute Infringement

 

The U.S. Supreme Court's recent Feist decision mandates judgment against West. In addition, law in this circuit directly on point compels the identical conclusion. In Banks Law Publishing Co. v. Lawyers' Co-operative Publishing Co., 169 F. 386 (2d Cir. 1909), app. dism'd, 223 U.S. 738 (1911) ("Banks"), the Second Circuit concluded that "the arrangement of reported cases in sequence, their paging and distribution into volumes, are not features of such importance as to entitle the reporter to copyright protection of such details." Id. at 391 (emphasis added).[21] That holding by itself provides a sufficient basis upon which to grant Matthew Bender summary judgment.[22]

Diverse Independent Doctrines Of Copyright Law Lead To The Same Result — Summary Judgment For Matthew Bender

 

Section I demonstrates that West cannot demonstrate "copying of constituent elements of the work that are original," Feist at 361, 111 S. Ct. at 1296, and that Matthew Bender is accordingly entitled to summary judgment, a result further required by on-point precedent of this circuit. The same result is also mandated by diverse doctrines of U.S. copyright law that have evolved to keep copyright within its constitutional limits and true to its underlying purposes.

Application Of The Idea/Expression Dichotomy And Merger Doctrine Precludes A Finding Of Infringement

 

It is a maxim of U.S. copyright law that copyright "protection is given only to the expression of the idea — not the idea itself." Mazer v. Stein, 347 U.S. 201, 217, 74 S. Ct. 460, 470 (1954); see also 17 U.S.C. § 102(b) (copyright does not extend to ideas). A corollary of the idea/expression dichotomy is that "even expression is not protected in those instances where there is only one or so few ways of expressing an idea that protection of the expression would effectively accord protection to the idea itself." Kregos v. Associated Press, 937 F.2d 700, 705 (2d Cir. 1991). This latter rule is known as the "merger doctrine."

 

In analyzing the infringement of compilations, the Second Circuit has observed that "[g]iven the nature of compilations, it is almost inevitable that the original contributions of the compilers will consist of ideas." CCC Info. Services, Inc. v. Maclean Hunter Market Reports, Inc., 44 F.3d 61, 70 (2d Cir. 1994), cert. denied, 116 S. Ct. 72 (1995) (emphasis original); see also Kregos, 937 F.2d at 706 ("every compilation of facts can be considered to represent a merger of an idea with its expression"). Because ideas — and expression that "merges" into ideas — are not protectible, expansive application of the idea/expression and merger doctrines to compilations would effectively nullify protection for the compiler's contribution to a compilation. See CCC Info. Services, Inc. 44 F.3d at 72 ("Unbridled application of the merger doctrine would undo the copyright protection the copyright law intends to accord to compilations."). "Complete failure to apply [the merger doctrine,] however, would result in granting protection to useful ideas." Id.

 

To resolve this dilemma, the Second Circuit has endorsed application of the idea/expression and merger doctrines to compilations based on a "balancing of interests" between the policy of preserving public access to ideas against the policy of granting copyright in original compilations. Id. at 73. This approach accords well with the insight that in "copyright law, an `idea' is not an epistemological concept, but a legal conclusion prompted by notions — often unarticulated and unproven — of appropriate competition. Thus, copyright doctrine attaches the label `idea' to aspects of works which, if protected, would (or, we fear, might) preclude, or render too expensive, subsequent authors' endeavors." Ginsburg Article at 346.

 

This case presents compelling reasons to apply the idea/expression dichotomy and merger doctrine to permit use of internal star pagination to West's reporters. Even assuming, arguendo, that West's internal page "arrangement" constituted an "original" expression that is "copied" by internal star pagination, forbidding the practice of internal star pagination to West's reporters would effectively preclude the efforts of subsequent authors to create competing compilations of judicial opinions. Citations referring to internal page numbers of West's reporters are ubiquitous in the opinions of our nation's courts, as well as in countless articles and treatises that discuss and interpret our laws. To find the authority referenced in any of these sources by a pinpoint cite to a West reporter requires one either to refer to the pages of the relevant West reporter, or to a copy of the referenced decision that identifies what portions of the text are found on which page of the West reporter — information that is traditionally conveyed by the shorthand of star pagination. Both the Second Circuit and the U.S. Supreme Court have long upheld the validity of star pagination as an indexing vehicle to inform users precisely where the relevant body of law is located: "Here the object on the part of the defendants seems to have been that there should not be confusion in the references and examination of cases." Callaghan v. Myers, 128 U.S. 617, 662 (1888); Banks at 390 (quoting Callaghan v. Myers); Mead Data Central, Inc. v. West Pub. Co., 679 F. Supp. 1455, 1458 (S.D. Ohio 1987) ("The volumes and pages are then numbered to allow judges, lawyers, and scholars to communicate precisely and efficiently the location of the specific text with a West report.").

 

Moreover, star pagination to West reporters is necessary for citation of authority, which is the basis of all argument in our common law system. The rules adopted by many of the federal courts (including the rules of this Honorable Court) require citations to West reporters. See Standing Order of Judge John S. Martin, Jr., revised May 1995, at 2. The Bluebook also requires citation to the volume and page number of the West federal reporter on which the decision begins, as well as a pinpoint cite. Its adoption by local rules further extends the official status of citation to the volume and page numbers of West's reporters. In accord with the standards promulgated by the Bluebook and many local rules of practice, pinpoint citation to West reporters is considered by the legal community to be the proper method of citation in memoranda of law submitted to the state and federal courts. See p. 3, supra.

 

Opinions without internal star pagination are cut off from this pervasive system of reference.[23] Accordingly, even if, arguendo, it were determined that Matthew Bender's use of internal star pagination "copies" "original" constituent elements of West's reporters, this Court should nonetheless apply the merger doctrine to permit Matthew Bender and others to have access to the "idea" expressed in internal star pagination — the location of judicially created text. Invoking copyright to bar "copying" of West's page numbers by internal star pagination confers on West a monopoly in conveying to the world the facts of where various doctrines of law — as cited by the Supreme Court, by the lower courts, and by commentators — may be found. All others who attempted to reference public domain law by the predominant method of reference would be interlopers on West's property, subject to exclusion by West. "We cannot recognize copyright as a game of chess in which the public can be checkmated." Morrissey v. Procter & Gamble, 379 F.2d 675, 679 (1st Cir. 1967). The merger doctrine, applied to deny West's infringement claim, safeguards against that result.

 

West's Citation Scheme Is A "System," And Therefore Not Copyrightable

 

West has long boasted of the utility, and the success with its target audience of lawyers and judges, of "its National Reporter System® publications." Affidavit of Robert C. Berring, West v. Mead, August 23, 1985, ¶ 15 ("Within the legal research community, West's National Reporter System publications have long had a reputation for comprehensiveness, reliability and accuracy. West's National Reporter System publications have succeeded in the marketplace substantially because of these attributes.") [Ex. 23]. West's very nomenclature proclaims that its method of categorizing cases by volumes and page numbers — the precise matter for which it is now seeking copyright protection — is nothing other than a system.[24]

 

The sole purpose of this West system of citations is utilitarian: to serve as a tool for indexing case materials. The Copyright Act speaks directly to such useful systems: "In no case does copyright protection . . . extend to any . . . system [or] method of operation . . . ." 17 U.S.C. § 102(b); see Baker v. Selden, 101 U.S. 99, 107 (1879) (holding that copyright on book did not extend to system described therein). Therefore no copyright protection can be accorded to West's citation system, and others are free to adopt it wholesale.[25]

 

A recent decision of the First Circuit illuminates how the prohibition on granting copyright in a "method of operation" was applied in a context implicating policy concerns similar to those at bar. In a series of cases under the caption Lotus Dev. Corp. v. Borland Int'l, Inc., the District of Massachusetts accepted the claim of plaintiff Lotus that the hierarchy of menu commands (e.g., "Copy," "Print" and "Quit") used to operate its popular 1-2-3 spreadsheet program was copyrightable and infringed by competitor Borland's spreadsheet product that contained a feature ("emulation mode") exactly reproducing Lotus' entire menu command hierarchy. See, e.g., 788 F. Supp. 78 (D. Mass. 1992).

 

The First Circuit reversed. 49 F.3d 807 (1st Cir. 1995), aff'd by an equally divided court, 116 S. Ct. 804 (1996). It found that regardless of how commercially successful and useful to consumers Lotus' menu command hierarchy had proven, it consisted fundamentally of a "method of operation," which (like a "system") by definition lies beyond statutory protection. 17 U.S.C. § 102(b). Even the assumption that the menu tree included "expression" could not relieve it of its ineligibility for protection. 49 F.3d at 816.[26] This unanimous panel opinion thereby safeguarded interoperability between computer programs, disallowing any one purveyor from monopolizing a method that consumers find useful.

 

Lotus v. Borland applies to the facts at bar a fortiori, by its ruling that concededly creative choices in developing a copyrightable literary work (in the form of computer software, in that case) still cannot exclude competitors from wholesale copying of all the elements that go into the method of operation of that work. All the more so, this court should reject West's claim that whatever "creative choice" determined the location of page breaks into the interior of cases in its literary work (in the form of a compilation of judicial opinions, in this case) can prevent competitors such as Matthew Bender from reproducing that method. West's citations have become a system deeply embedded by the judiciary in the corpus juris and in citations used in a vast secondary literature not authored by West. In order to permit others to create case compilations that are interoperable with that system, copyright protection cannot extend to West's system of citation. See also id. at 819-20 (Boudin, J., concurring) ("Requests for the protection of computer menus present the concern with fencing off access to the commons in an acute form. A new menu may be a creative work, but over time its importance may come to reside more in the investment that has been made by users in learning the menu and in building their own mini-programs — macros — in reliance upon the menu. Better typewriter keyboard layouts may exist, but the familiar QWERTY keyboard dominates the market because that is what everyone has learned to use.") (emphasis original).

 

The Fair Use Defense Bars Any Claim By West Against Matthew Bender's CD-ROM

 

The fair use defense incorporated into the Copyright Act furnishes an independent basis on which to grant summary judgment to Matthew Bender. See 17 U.S.C. § 107. The statute lists four non-exclusive factors to be weighed in determining fair use. In its preamble, the statute lists several applications that are paradigmatically "not an infringement of copyright." Id. Included in that enumeration is "research." Id. Inasmuch as Matthew Bender's New York product — albeit sold commercially[27]— is a quintessential research tool, the fair use doctrine must be construed expansively to validate this socially beneficial purpose.

 

Purpose And Character Of The Use

 

The first factor inquires into the purpose of Bender's usage. Although the New York product is admittedly for sale commercially, the Supreme Court has recently clarified that that circumstance alone is less significant than any "transformative" feature that the product may offer. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 114 S. Ct. 1164, 1171 (1994) ("the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use"). "Transformation" in turn refers to whether the CD-ROM "adds something new, with a further purpose or different character" than West's copyrighted reporters. Id. See also American Geophysical Union v. Texaco Inc., 60 F.3d 913, 923 (2d Cir. 1994), cert. dismissed, 116 S. Ct. 592 (1995) (citing Campbell). Given its "hot links" to Matthew Bender treatise materials, concordance, Boolean searching ability, customized features, and limitation to New York practice, the CD-ROM offers a host of features transformative of West's advance sheets and bound volumes.[28] Most salient are the volatile "hot links" between the case law and Matthew Bender's treatise commentary, a paradigmatic transformation of the static words on the page of a judicial reporter. See p. 7, supra. This factor therefore favors Bender.

 

Nature Of The Copyrighted Work

 

The second factor looks at the nature of the copyrighted work. Unpublished and creative work are given the broadest protection under this factor, published and less imaginative works the least. See Campbell at 1175, citing 3 Nimmer on Copyright § 13.05[A][2]. Given that West's reporters are published compilations of unprotected judicial opinions, they require the widest possible fair use construction. See Consumer's Union of United States, Inc. v. General Signal Corp., 724 F.2d 1044, 1049 (2d Cir. 1983), cert. denied, 469 U.S. 823, 105 S. Ct. 100 (1984) ("Since the risk of restraining the free flow of information is more significant with informational work, the scope of permissible fair use is greater."). This factor massively favors Bender.

 

Amount And Substantiality Of The Portion Used In Relation To The Copyrightable Work As A Whole

 

The third factor asks whether "the amount and substantiality of the portion used in relation to the copyrighted work as a whole" is "reasonable in relation to the purpose of the copying." Campbell at 1175. Matthew Bender has "used" or referred to only that information about West's reporters that is necessary to facilitate cross-referencing to legal propositions, an activity that the Second Circuit has explicitly approved. See Banks at 390. See § I.C, supra. Given that West's page break notations represent only a tiny fraction of West's entire compilation when contrasted with other elements (syllabi, headnotes, key numbers, etc.), the amount and substantiality of allegedly protectible elements purportedly copied by star pagination is minuscule and no greater than what the norms of sensible legal research require. Accordingly, this factor massively favors Bender.

 

Effect Of The Use On Potential Market For Copyrighted Work

 

To determine the facts on this issue, Matthew Bender propounded a series of interrogatories to West designed to elicit information concerning the potential market for pagination, the value of pagination licensing agreements, and the precise terms of extant licenses that West had concluded in this area. See Matthew Bender's Fourth Set of Interrogatories to West [Ex. 25]; Matthew Bender's Sixth Set of Interrogatories to West [Ex. 26]. West responded with the self-serving proclamation that such value "could, in the aggregate, result in license fees to West in excess of $1,000,000 annually." West Publishing Company's Amended & Supplemental Responses to Matthew Bender's Fourth Set of Interrogatories at 3 (emphasis added) [Ex. 27]. Matthew Bender attempted to analyze West's inflated, unsubstantiated figure by focusing on the pagination license that West gave to Mead Data Central in settlement of the Eighth Circuit litigation. Matthew Bender's Fourth Set of Interrogatories to West at 3 [Ex. 25]. West refused to provide more specific information, and objected to Bender's interrogatory "on the grounds that it seeks information not reasonably calculated to lead to the discovery of admissible evidence, and on the ground that the information sought by the interrogatory is extremely confidential." West Publishing Company's Amended & Supplemental Responses to Matthew Bender's Fourth Set of Interrogatories at 2 (emphasis added) [Ex. 27]. Judge Preska sustained West's objections in the face of Matthew Bender's application to compel West to respond. See id. at 2 (referring to Judge Preska's oral order).

 

Given West's strategic choice to conceal the details of its only important pagination license, Matthew Bender has been precluded from developing any meaningful record on this issue. Basic equity therefore precludes West from arguing that the evidence on this fourth factor favors its position. See, e.g., Unigard Security Insur. Co. v. Lakewood Eng'g & Mfg. Corp., 982 F.2d 363, 367-69 (9th Cir. 1992) (holding that the district court's decision to exclude plaintiff's expert testimony regarding a boat that was destroyed by plaintiff was within the court's "inherent power" even though plaintiff had not violated any court order and no finding of bad faith had been made).[29]

 

Public Interest

 

Congress has directed that the four statutory factors not be considered exhaustive; other considerations serving the public interest must also inform the fair use analysis. See, e.g., New Era Publications Int'l, ApS v. Henry Holt & Co., 873 F.2d 576, 588 (2d Cir. 1989), (Oakes, Chief Judge, concurring), cert. denied, 493 U.S. 1094, 110 S. Ct. 1168 (1990); Lynn I. Miller, Fair Use, Biographies, and Unpublished Works: Life After H.R. 4412, 40 J. Copr. Soc'y 349, 398-99 (1993) (factor of promoting significant social benefit). The overwhelming public interest favors efficient, accurate and universal access to the law of the land, which West claims is "reflected" by star pagination to its reporters. See Banks v. Manchester, 128 U.S. at 253 ("the authentic exposition [of the law], binding every citizen, is free for publication to all"). Access to the citation scheme of West reporters is essential, as the "principles of stare decisis would be fatally undermined were it otherwise." Lowenschuss v. West Publishing Co., 402 F. Supp. 1212, 1216 (E.D. Pa. 1975), aff'd, 542 F.2d 180 (3d Cir. 1976); see also Garfield v. Palmieri, 193 F. Supp. at 143 (essential that West reporters "be readily accessible to the legal profession generally and to the courts for purposes of research, citation," etc.).[30]

 

Balancing The Factors Favors Bender

 

All factors but one weigh decisively in Bender's favor and that factor has been excluded from consideration by West's own strategic election. "Because this is not a mechanical determination, a party need not `shut-out' her opponent on the . . . factor tally to prevail." Wright v. Warner Books, Inc., 953 F.2d 731, 740 (2d Cir. 1991) (affirming holding of fair use on summary judgment, notwithstanding that one factor favored copyright owner). "Nor may the four statutory factors be treated in isolation, one from another. All are to be explored, and the results weighed together, in light of the purposes of copyright." Campbell, 114 S. Ct. at 1170-71. Under the circumstances here presented, Bender should be granted summary judgment based on the fair use doctrine.

 

In Any Event, West's Own Misconduct Bars It From Asserting Any Copyright Infringement Claim Based On Its Reporters

 

Even if, contrary to fact, West enjoyed copyright protection in the copied aspects of its reporters, West's own misconduct would still bar it from enforcing any rights therein.

 

West's Misconduct Constitutes Copyright Misuse, Barring Any Enforcement Of Its Rights

 

In Feist, plaintiff Rural conceded that defendant Feist could collect and publish its own telephone subscriber information, but maintained that it was barred from copying the listings out of Rural's concededly copyrighted directory. The Court disposed of Rural's argument in terms that apply equally to West:

It may seem unfair that much of the fruit of the compiler's labor may be used by others without compensation. As Justice Brennan has correctly observed, however, this is not "some unforeseen byproduct of a statutory scheme." It is, rather, "the essence of copyright," and a constitutional requirement. The primary objective of copyright is not to reward the labor of authors, but "[t]o promote the Progress of Science and useful Arts." To this end, copyright assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work. This principle, known as the idea/expression or fact/expression dichotomy, applies to all works of authorship. As applied to a factual compilation, assuming the absence of original written expression, only the compiler's selection and arrangement may be protected; the raw facts may be copied at will. This result is neither unfair nor unfortunate. It is the means by which copyright advances the progress of science and art.

 

Feist, 499 U.S. at 349-350, 111 S. Ct. at 1289-90 (citations omitted). The lesson of Feist to the motion at bar is unambiguous. Far from being unfair that Bender should be able to copy judicial opinions directly out of West reporters, such copying is to be encouraged, as it advances the progress of science and the useful arts, thus fulfilling copyright's purpose; its permissibility is indeed constitutionally mandated.

 

In contrast to that constitutionally protected course of conduct, West has attempted to leverage the value of its copyright impermissibly. West's scheme emerges most clearly from its correspondence with intervenor HyperLaw, threatening copyright liability to the extent that HyperLaw reproduced any of West's minimal revisions to the public domain case of Mendell v. Gollust. In a letter to Alan Sugarman dated October 9, 1991, West's counsel admonishes as follows:

 

[T]he copyright notice in 909 F.2d clearly states that "Copyright is not claimed as to any part of the original work prepared by a United States Government officer or employee as part of that person's official duties." You should point out [to your copyright attorney] that the "original work" in question here is the enclosed slip opinion which is on file with the Second Circuit and can be obtained (as West did) directly from that Court.

 

Letter from James E. Schatz to Alan Sugarman at 2 [Ex. 28]. West's position is that HyperLaw and Matthew Bender are free to obtain slip opinions directly from their issuing courts, but will incur copyright liability by copying those opinions from the West reporters.[31] West's post-Feist letter advances, in short, the very position that the Supreme Court rejected in that case.

 

The depth of West's misuse is illustrated by the particulars of West's publication of Mendell v. Gollust in Volume 909 of Federal Reporter - Second Series, as compared to the Second Circuit's slip opinion of the same decision. See Declaration of Michelle Kramer, filed concurrently, ¶¶ 2-8 ("Kramer Decl."). Upon minute inspection, it is clear that West has published roughly 98% of the slip opinion unaltered. Id. ¶ 8.[32] To the extent that West has edited in minor revisions, their content is impossible to ascertain absent painstaking comparison between those original sources, for nowhere in 909 F.2d are West's revisions specified through printing the revisions in {inverted brackets}, in a SPECIAL TYPE FONT, or otherwise. Thus, it is disingenuous in the extreme for West to maintain that competitors such as Matthew Bender or HyperLaw are free to copy the judicial opinions out of West reporters, but may not copy therefrom any West emendations. For West has willfully made it impossible for purchasers of its reporters to know what material is subject to West's claims. In other words, it is unfeasible, as a practical matter, to copy any of the 98% (or greater) public domain materials out of Mendell v. Gollust, because the user has no way of knowing whether West will claim that its 2% (or less) revisions are thereby implicated.

 

The above course of conduct demonstrates that West has attempted to take its copyrightable contributions (e.g., syllabi, headnotes) to public domain materials and translate them into a bar in the marketplace of copying from its reporters even public domain judicial opinions. West is thereby attempting to leverage its copyright protection into a realm specifically prohibited by Congress. The result is that even its copyrightable expression may not be given any enforcement.

 

That result follows from hoary principles in this circuit: "In our opinion one who so embodies copyrighted with uncopyrighted matter that one reading his work cannot distinguish between the two has no right to complain if the book is republished by third parties." Bentley v. Tibbals, 223 F. 247, 256 (2d Cir. 1915) (refusing to afford protection when copyright notice and publication were such that reader "is left to ascertain [what is original and what is unprotected] for himself by a verbal comparison, word for word"). It is reinforced by Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970 (4th Cir. 1990). In Lasercomb, plaintiff had a subsisting copyright in original software; it attempted to leverage that copyright to obtain protection for 99 years, longer than the 75 years that Congress authorized. On that basis, the court held that plaintiff's anti-competitive conduct barred it from bringing any suit as long as such misuse continued. Id. at 979 & n.22. The reasoning of Lasercomb is applicable to the facts at bar. At present, West is subverting Feist's mandate by attempting to prevent third parties effectively from copying out of its industrious compilations uncopyrightable material contained therein. It therefore must be barred from any enforcement of copyright claims in its reporters.

 

West Has Violated The Copyright Notice Provisions Applicable To Federal Case Law Compilations For Anticompetitive Purposes

 

The letter from Mr. Schatz to Mr. Sugarman quoted above specifically adverts to the copyright notice affixed to 909 F.2d. It is therefore relevant to cite, in addition to the general misuse doctrine canvassed above, Congress' particular regulation of the notice features applicable to compilations of public domain material containing federal cases, such as 909 F.2d.

In deliberating the omnibus reform of the Copyright Act in 1976, Congress recognized an unfair practice in which publishers of judicial opinions — such as West — engaged under then extant law:

 

[There is a] publishing practice that, while technically justified under the present law [i.e., the 1909 Act], has been the object of considerable criticism. In cases where a Government work is published or republished commercially, it has frequently been the practice to add some "new matter" in the form of an introduction, editing, illustrations, etc., and to include a general copyright notice in the name of the commercial publisher. This in no way suggests to the public that the bulk of the work is uncopyrightable and therefore free for use.

 

H.R. Rep. No. 94-1476, 94th Cong., 2d Sess. 145 (1976); S. Rep. No. 94-473, 94th Cong., 1st Sess. 128 (1975). To redress that deficiency, Congress incorporated into the law a new provision:

Whenever a work is published in copies or phonorecords consisting preponderantly of one or more works of the United States Government, the notice of copyright . . . shall also include a statement identifying, either affirmatively or negatively, those portions of the copies or phonorecords embodying any work or works protected under this title.

 

17 U.S.C. § 403 (1976) (emphasis added). That feature governed from January 1, 1978 until March 1, 1989, at which point copyright notice was made voluntary. See 2 Nimmer on Copyright § 7.02[C][3].

In contrast to that explicit statutory mandate, the copyright notice that West affixed to its reporters from 1978 forward consists of a meaningless disclaimer as follows:

Copyright is not claimed as to any part of the original work prepared by a United States Government officer or employee as part of that person's official duties.

 

The informational content of West's copyright notice is nil. It simply restates the legal import of 17 U.S.C. § 105, without offering any indication, as Congress desired, concerning which parts of the subject West reporters are protected by copyright and which are not. West cannot seriously maintain that its tautological formulation meets the statutory mandate of providing explicit identification of specified elements. For West has neither included a statement affirmatively identifying, e.g., the 2% portion of Mendell v. Gollust over which it claims protection, nor included a statement negatively identifying the 98% public domain material over which it disclaims copyright.[33] In short, the statute affords two methods of satisfying its strictures; West has complied with neither. Because West has shirked its statutory duty of "identifying, either affirmatively or negatively" those portions of the work over which it claims copyright protection, until it purges itself of this misuse, West cannot enforce the copyright in any of its federal reporters published from January 1, 1978, to March 1, 1989.

 

The Eighth Circuit's Decision In West v. Mead Concerning Star Pagination Has No Bearing On This Court's Determination

 

In West v. Mead, a divided panel of the Eighth Circuit reached a provisional[34]ruling that the inclusion in the LEXIS database of star pagination to West's reporters likely infringed West's copyright in the arrangement of its reporters. That ruling contravenes Second Circuit law, and therefore must be rejected in this district. It also cannot survive the Supreme Court's Feist ruling, and therefore is no longer good law even in the Eighth Circuit.

 

The Eighth Circuit Misconstrued Second Circuit Law

 

In West v. Mead, the majority opinion rejected the Second Circuit's Banks ruling because "the denial of copyright protection in Banks was based upon the official status of the reporter." 799 F.2d at 1225. That characterization misconstrues Judge Hazel's district court ruling in Banks. More importantly, it ignores the Second Circuit's deliberate language in affirming: "It is not necessary to discuss so much the opinion below as deals with the questions of assignment and of the right of the official reporter to secure copyrights." 169 F. at 391. In the Second Circuit, that language is binding, regardless of the Eighth Circuit's decision to ignore it.

 

A fuller appreciation of the background of Banks reveals the full extent of the Eighth Circuit's misinterpretation. In its first copyright case ever, the United States Supreme Court confronted a claim of copyright protection by the Supreme Court's third reporter, Henry Wheaton, against his successor, Richard Peters, for publishing competing reporters of Supreme Court decisions. Wheaton v. Peters, 33 U.S. (8 Pet.) 591 (1834). The Court enunciated the bedrock principle that judicial opinions themselves are not subject to copyright protection. Id. at 668. See Patterson & Joyce at 731-49. Shortly thereafter, the Supreme Court confronted a case in which defendant copied from plaintiff's Illinois Supreme Court reports not only the underlying judicial opinions and other materials created by the court, but also the reporter's own original material, such as summarized arguments of counsel. In reaching its conclusion of infringement, the Supreme Court relied on Judge Drummond's conclusion in the court below:

 

The fact appears to be, and indeed, it is not a subject of controversy, that in arranging the order of cases, and in the paging of the different volumes, the Freeman edition has been followed by the defendants; but, while this is so, I should not feel inclined, merely on that account, and independent of other matters, to give a decree to the plaintiff, although it is claimed that the arrangement of the cases and the paging of the volumes are protected by a copyright. Undoubtedly, in some cases, where are involved labor, talent, judgment, the classification and disposition of subjects in a book entitle it to a copyright. But the arrangement of law cases and the paging of the book may depend simply on the will of the printer, of the reporter, or publisher, or the order in which the cases have been decided, or upon other accidental circumstances. Here the object on the part of the defendants seems to have been that there should not be confusion in the references and examination of cases; but the arrangement of cases and the paging of the volumes is a labor inconsiderable in itself, and I regard it, not as an independent matter. . . .[35]

 

Callaghan v. Myers, 128 U.S. 617, 661-62 (1888), quoting Myers v. Callaghan, 20 F. 441, 442 (C.C.N.D. Ill. 1883) (emphasis added).

 

Against that background, the Second Circuit's decision in Banks falls into focus. See also Eggers v. Sun Sales Corp., 263 F. 373, 375 (2d Cir. 1920) ("identity of pagination" in reprint of preexisting public domain materials "is not of sufficient importance to constitute infringement of copyright"). Plaintiff Banks Law Publishing Company produced volumes containing U.S. Supreme Court decisions. Defendant Lawyers' Co-operative Publishing Company republished certain portions of those volumes. Banks' complaint charged Lawyers' Co-operative with infringement "arising out of the arrangement of the cases, the division into volumes, the table of cases, and the numerical or star pagination to indicate where in the official reports the different cases and points decided may be found." Banks at 386. At trial, Judge Hazel evaluated this star pagination case by concluding:

It is inconceivable to me that to merely arrange the cases in sequence (though concededly the reporter uses good judgment in so doing) and paging the volumes — things essential to be done to produce the volumes — are features or characteristics of such importance as to enable him to copyright protection for such details. In my estimation no valid copyright for these elements or details alone can be secured to the official reporter. A different question would be presented if, for instance, infringement of the headnotes, or syllabuses, index digest, synopses of arguments or statements of the cases, or an abridgement thereof were claimed.

* * *

No authority is cited which supports the contention that complainant is entitled to be protected in its pagination and arrangement of cases where the substance of the origination is not pirated . . . . [F]or another to simply adopt the plan of grouping of the cases, and making marginal reference to the paging of the volumes issued under his direction, without in any way pirating the substance of his origination, is not enough, in my judgment, to establish infringement . . . . Such labor, under the circumstances presented, like the decisions and opinions of the court, became the property of the public.

 

Banks at 390. Although the above touches upon the plaintiff's status as official reporter, that circumstance formed no basis for the Second Circuit's per curiam affirmance. Its opinion reads in full as follows:

It is not necessary to discuss so much of the opinion below as deals with the questions of assignment and of the right of the official reporter to secure copyrights.[36] We concur with Judge Hazel in his reasoning and conclusion that the arrangement of reported cases in sequence, their paging and distribution into volumes, are not features of such importance as to entitle the reporter to copyright protection of such details.

The decree is affirmed, with costs.

 

Id. at 391. In sum, the Second Circuit's holding in Banks is that a competitor's use of star pagination in a law reporter cannot form the basis for a copyright infringement case. Inasmuch as that case is on all fours with the matter at bar, binding authority in this circuit entitles Bender to summary judgment notwithstanding the Eighth Circuit's misreading.[37]

 

West v. Mead Enunciates A Theory Of Infringement Incompatible With The Supreme Court's Formulation In Feist

 

After the Eighth Circuit handed down its decision in West v. Mead, the U.S. Supreme Court for the first time in its history defined the necessary ingredients that must underlie any successful claim of copyright infringement. See § I.A, supra. Plainly, that earlier lower court authority remains valid today only to the extent that it comports with the currently governing standard laid down by the Supreme Court.

 

As set forth above, West's copyright claim cannot prevail under the governing Feist standard. See § I.B, supra. The Eighth Circuit reached the contrary result, based on a unique "reflection theory" of copyright infringement. See 799 F.2d at 1227. The errors in that theory have been ventilated above. See § I.B.3, supra. Suffice it to say that nothing in Feist validates the Eighth Circuit's detour into the metaphysics of reflective authorship; under Feist's controlling standard, West loses.

 

Only three other courts, to Matthew Bender's knowledge, have ever followed anything even remotely similar to the Eighth Circuit's esoteric "reflection" reasoning to find "copying." First, in Bellsouth Advertising & Publishing Corp. v. Donnelley Info. Publishing, Inc., 933 F.2d 952 (11th Cir. 1991), a panel held that the publisher of a copyrighted yellow pages telephone directory was entitled to summary judgment of copyright infringement against a competitor that appropriated "formatted" information from the copyrighted directory. Id. at 961. In so holding, the panel stated that even though the competitor had "distilled the [] compilation down to its basic elements," the competitor retained the ability to "reconstitute the compilation." Id. at 959. The full Eleventh Circuit, sitting en banc, vacated the panel's ruling. 999 F.2d 1436 (11th Cir. 1993), cert. denied, 114 S. Ct. 943 (1994).

 

Second, in Lotus Dev. Corp. v. Borland Int'l, Inc., 831 F. Supp. 223 (D. Mass. 1993), the district court held infringing defendant's "key reader" function, which allowed a user to utilize defendant's computer program to perform operations compatibly with what plaintiff's program would do under comparable circumstances. Specifically, in parallel fashion to West's allegation that star pagination allegedly creates a "reflection" of West's National Reporter System, the court reasoned that the "key reader" inevitably must have created a "phantom menu structure" corresponding to plaintiff Lotus' system used to interpret macros. 831 F.Supp. at 232. The First Circuit reversed that holding. 49 F.3d 807 (1st Cir. 1995), aff'd by an equally divided court, 116 S. Ct. 804 (1996). See § II.B, supra.

 

The third relevant decision is Oasis Publishing Co. v. West Publishing Co., 924 F. Supp. 918 (D. Minn. 1996), a recent case challenging West's ability to control star pagination through copyright law, like the case at bar. Because that opinion uncritically restates and adopts the Eighth Circuit's reflection theory, when subjected to scrutiny, it should fare no better than the two other cases to adopt a reflection theory, both of which have been reversed in the post-Feist environment. But even beyond the fact that it was wrongly decided, nowhere does that court analyze the sole live issue at bar — star pagination to the interior of reported decisions.[38] For that reason, the analysis in Oasis fails to address any matter of relevance to the instant motion.

 

Feist's Rejection Of "Sweat Of The Brow" Protection Undermines Any Continuing Validity Of West v. Mead

 

In addition to deviating from the law of this circuit, the Eighth Circuit's decision must be rejected because it relies on an old line of copyright decisions — which it termed "modern" — that accorded protection on an equitable basis to those who had expended considerable "sweat of the brow" into producing an "industrious compilation." See, e.g., West v. Mead at 1226 (West's pagination was entitled to protection because it "requires a greater degree of intellectual creativity than the trend of modern cases") (citing Rockford Map Publishers v. Directory Service Co., 768 F.2d 145 (7th Cir. 1985)); id. at 1227 (permitting star pagination "would give users of LEXIS a large part of what West has spent so much labor and industry in compiling, and would pro tanto reduce anyone's need to buy West's books") (emphasis added). The Eighth Circuit majority's citation to Rockford Map is apposite, as that case indeed reflects the trend of "modern" cases in the Seventh and Eighth Circuits to protect mere industrious compilations — a trend which Feist obliterated.[39] Feist unanimously held that copyright protection does not extend to mere "sweat of the brow." See Feist 499 U.S. at 345, 111 S. Ct. at 1287. On that basis, the Supreme Court rejected not only the decision below, but an active line of Seventh and Eighth Circuit cases according copyright protection to industrious compilations. See, e.g., Illinois Bell Tel. Co. v. Haines & Co., Inc., 905 F.2d 1081 (7th Cir. 1990), vacated based on Feist, 499 U.S. 944, 111 S. Ct. 1408 (1991); Hutchinson Tel. Co. v. Fronteer Directory Co., 770 F.2d 128 (8th Cir. 1985). Accordingly, the Eighth Circuit's divided panel opinion can no longer represent good law, even in the Eighth Circuit. See William F. Patry, 1 Copyright Law and Practice 660 n.595 (1994) ("West [v. Mead] was bad law before Feist, . . ., and in light of Feist, which firmly established originality and infringement of expression as the bases of copyright, it should no longer be cited as precedent even in the Eighth Circuit.").

 

West v. Mead has been roundly criticized by scholars. See, e.g., William F. Patry, Latman's The Copyright Law 63, n.212 (1986) (case is "a most extreme misreading" of the Copyright Act); 1 Nimmer on Copyright § 3.03 ("this case extends compilation copyright too far"). Indeed, two scholars devoted a hundred-page article to criticizing the West v. Mead case and decrying the majority's position as disturbing "a century-and-a-half of precedent dating from the Supreme Court's first copyright decision, Wheaton v. Peters, in 1834." Patterson & Joyce at 723. In Feist, the Supreme Court cites lavishly to the Patterson and Joyce article in reaching the conclusion that no compilation copyright protected the telephone book there at issue. See Feist 499 U.S. at 347, 348-349, 351, 361-362, 111 S. Ct. at 1288, 1289 (twice), 1291, 1296 (twice).

 

Those scholarly criticisms have been seconded by the Register of Copyrights (the senior official of the U.S. government charged with the formulation of copyright policy) in testimony before Congress regarding proposed legislation to amend the U.S. Copyright Act to clarify that there is no copyright in the volume and page numbers of judicial reporters. The Register of Copyright testified that in the view of the Copyright Office, West v. Mead was a "substantial departure" from "150 years of settled contrary precedent." Testimony of Ralph Oman, Subcommittee on Intellectual Property and Judicial Administration of the House Judiciary Committee, Hearings on H.R. 4426, Serial No. 105 at 6, 12 (May 14, 1992) ("Hearing Transcript") [Ex. 30].[40] He further elaborated that even if that ruling had been consistent with previous doctrine, its reliance on sweat-of-the-brow considerations means that Feist "tolled the death knell" for West v. Mead. Id. at 6. In fact, the Copyright Office labeled H.R. 4426 "unnecessary legislation" on the basis that the Eighth Circuit ruling represented bad law post-Feist. Id. at 21, 31.

 

CONCLUSION

 

The essence of copyright protection is the right to prevent others from copying one's original expression. Because Bender's CD-ROM does not copy anything out of West materials, it is non-infringing. In addition, whatever material that originates with West and is "reflected" by Bender's CD-ROM fails to constitute expression; it is simply a series of sequential numbers generated by a computer program rather than original expression. The Supreme Court's most recent pronouncement on compilation copyright, ancient law of this circuit, and a host of apposite copyright doctrines require entry of summary judgment in favor of plaintiff Matthew Bender.

Respectfully submitted,

 

Dated: August 5, 1996 IRELL & MANELLA LLP

Morgan Chu MC 3911

David Nimmer DN 7049

Elliot Brown EB 0135

Perry Goldberg PG 1281

 

 

DEUTSCH, KLAGSBRUN & BLASBAND

David Blasband DB 7069

 

 

 

By:_________________________________

David Nimmer DN 7049

Attorneys for Plaintiff

Matthew Bender & Company, Inc.

 

_______________________________

[1] West was recently acquired by international publishing giant The Thomson Corporation, which owns, inter alia, Lawyers Cooperative Publishing Company, Bancroft-Whitney Company, and Clark Boardman Callaghan. That merger is the subject of a complaint and proposed consent decree filed in the United States District Court for the District of Columbia by the United States Department of Justice and the Attorneys General of seven states. United States v. The Thomson Corp. and West Publishing Co., Case No. 1:96 CV01415 (D.D.C. June 19, 1996). West's counsel has stated that after the merger, West will continue to be the entity holding a copyright in West's reporters. Return to text.

[2] West has long portrayed its reporters as the de facto official standard of U.S. courts. See, e.g., 1 F. Cas. iii (1894) (West refers to itself as "the official reporter of the federal courts"); L. Ray Patterson & Craig Joyce, Monopolizing the Law: The Scope of Copyright Protection for Law Reports and Statutory Compilations, 36 UCLA L. Rev. 719, 727, n.21 (1989) ("Patterson & Joyce") ("As to the federal judiciary, West operates as the functional equivalent of an official reporter for all courts below the Supreme Court.") (citing numerous local rules). So intimately connected are West's reporters to official government business that it has been held that not only is West immune from defamation liability for material contained in a judicial opinion, but the judge's conduct in forwarding opinions to West for publication are also immune as part of the judge's official duties. Garfield v. Palmieri, 193 F. Supp. 137, 143 (S.D.N.Y. 1961), aff'd, 297 F.2d 526, 527-28 (2d Cir.), cert. denied, 369 U.S. 871, 82 S. Ct. 1139 (1962). Return to text.

[3] New York's official reporter is published by Lawyers Cooperative, another subsidiary, along with West, of The Thomson Corporation. West publishes decisions of the New York Court of Appeals in the North Eastern Reporter and North Eastern Reporter - Second Series. In addition, West publishes the decisions of New York Court of Appeals, New York Appellate Division, New York Supreme Court and other lower New York courts that have been designated for publication in the New York Supplement and New York Supplement - Second Series reporters. West's reporters containing New York state opinions are referred to collectively herein as "West's New York reporters." Return to text.

[4] Indeed, the Bluebook requires citation to West's reports of state judicial opinions in the National Reporter System in documents submitted to federal and state courts in every single state. See generally Bluebook at 169-216. Return to text.

[5] Star pagination appears to have derived its name from West's and others' practice of inserting an asterisk in the text indicating the fact of a page break in another source, coupled with marginal notes of the form "*1289," "*1290," "*1291," etc. to indicate the page number associated with that page break in the alternative source. See, e.g., 1 S. Ct. passim (1883) (West includes star pagination to parallel sources). The same facts conveyed via the shorthand of star pagination could also be conveyed through narrative footnotes inserted at the appropriate places (e.g., "In volume 806 of West's Federal Supplement, a page break occurs here between pages 1288 and 1289"). Return to text.

[6] West itself cites to every single page break in parallel sources. A comprehensive exploration of West's Supreme Court Reporter, as an example, demonstrates that West has included star pagination to the United States Reports in every opinion. The same phenomenon is at work, inter alia, in New York Supplement - Second Series, a West publication, which star paginates to every single opinion in New York Reports - Second Series, a copyrighted publication of the State of New York, and in West's California Reporter, which star paginates every single opinion to Bancroft-Whitney's copyrighted California Reports and California Appellate Reports. Return to text.

[7] All exhibits cited herein are attached to the concurrently filed Declarations of Ken Halajian, Michelle Kramer, Laurie Kaplan and Perry Goldberg. Return to text.

[8] The same is true of all the federal district court opinions, as well as the state Court of Appeals, Appellate Division, and trial level opinions — i.e., for each type of court Matthew Bender has arranged the cases in strict chronological order. Return to text.

[9] The difference in West's arrangement can be easily confirmed by simply comparing any randomly selected series of opinions in any West volume to the ordering of the same opinions in the New York product. The specifics of West's arrangement are nonetheless explained in certain of the accompanying exhibits. See Federal Reporter Third Series Master Layout And Specifications, Federal Reporter Advance Sheets ("Master Layout And Specifications") [Ex. 7] and Deposition of West's Donna Bergsgaard, Vol. 1 at 202:5-204:18 ("Bergsgaard Depo") (discussing additional rules regarding arrangement not set forth in the "Master Layout And Specifications") [Ex. 8]; West Internal Memorandum dated August 28, 1987 re: Revised Arrangement Orders for Federal Supplement, Federal Rules Decisions, and Bankruptcy Reporters [Ex. 9] and Bergsgaard Depo., Vol. 2 at 224:2-21 (confirming that the arrangement described in the August 28, 1987 memorandum is "the same order [West] use[s] today") [Ex. 8]. The arrangement of cases within a volume of West's reporters is a function of the arrangement of those cases within West's advance sheets, several of which are combined to form a hardbound volume without any rearrangement of opinions. Bergsgaard Depo. at 195:8-12 [Ex. 8]. Return to text.

[10] Professor Berring has long served as an advocate for West in its efforts to protect its alleged intellectual property interest in page numbering. He was a West expert witness in West's lawsuit against LEXIS involving star pagination, West Publishing Co. v. Mead Data Central, Inc., 799 F.2d 1219 (8th Cir. 1986), cert. denied, 479 U.S. 1070, 107 S. Ct. 962 (1987) ("West v. Mead"), as well as in the recent reprise of West v. Mead within the Eighth Circuit, Oasis Publishing v. West Publishing Co., 924 F. Supp. 918 (D. Minn. 1996). Return to text.

[11] In contrast to the above admissions that first page citations lie in the public domain, when West is litigating this issue, it artfully (albeit inconsistently) limits its admissions to conceding that the use of first page citations is a "fair use." See, e.g., West v. Mead, 799 F.2d at 1222 ("West concedes that citation to the first page of its reports is a non-infringing fair use"); Joint Stipulation of Facts, Oasis Publishing Co. v. West Publishing Co., D. Minn. Case No. CV3-95-563, ¶ 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 § 107 of the Copyright Act.") [Ex. 12]. This "fair use" concession is based on the false premise that first page citations are copyrightable subject matter. See § IV.A n.37, infra. Nonetheless, even that tepid admission suffices to remove Matthew Bender's use of West first page citation from matters in dispute at bar. Return to text.

[12] These rare changes are made when the computer program violates one of its instructions or if the change would "make the publication easier to read." See West Publishing Company's Supplemental Responses to Matthew Bender's Fifth Set of Interrogatories at 4 [Ex. 14]. For example, "[i]f there are too many footnotes that are marked up at the end of a line on one page, and we don't have room to drop all of those footnotes, then we'll have to transfer some of the information to the next page to force the footnote to drop from that page." Bergsgaard Depo., Vol. 2 at 252:1-6 [Ex. 8]. In light of that testimony, it is worth highlighting the very different way that the New York product handles footnotes, segregating them en masse to the very end of the affected case. See p. 9, supra. Also, a user of Bender's New York product cannot determine what West page breaks, if any, occur in the middle of footnotes. Goldberg Decl. ¶ 29. Return to text.

[13] In addition, a circumscribed sixth right was added effective February 1, 1996, limited to certain digital performances of sound recordings; that amendment has no relevance to the case at bar. Digital Performance Right in Sound Recordings Act of 1995, Pub. L. 104-39, 109 Stat. 336 (Nov. 1, 1995). Return to text.

[14] West recently represented to the District of Minnesota that "West has always admitted that it claims no copyright in page numbers." Transcript of Oral Argument, Oasis Pub. Co. v. West Pub. Co., Civ. No. 3-95-563, April 26, 1996, at 6 [Ex. 17]. That representation is false. The complaint that West filed before that very same court a decade ago claimed, as "copyrightable subject matter" and "material wholly original to West," inter alia, "the numbering and paging of volumes." Complaint, West v. Mead at ¶ 23 [Ex. 18]. Return to text.

[15] See Banks Law Publishing Co. v. Lawyers' Co-operative Publishing Co., 169 F. 386, 387 (2d Cir. 1909), app. dism'd, 223 U.S. 738 (1911) (protection denied notwithstanding that compiler made "personal examination in every case" and chose the arrangement "with reference to what [he] considered the importance of the cases"). See also Patterson & Joyce at 771 n.182 (West's arrangement of decisions "is dictated by functional considerations"). Return to text.

[16] In addition, when viewing opinions in the New York product responsive to a search, users can move directly from one retrieved opinion to the next. Kaplan Decl. ¶ 9. Cf. Jane C. Ginsburg, No "Sweat"? Copyright and Other Protection of Works of Information After Feist v. Rural Telephone, 92 Colum. L. Rev. 338, 345 (1992) ("Ginsburg Article") (computer databases actually "may lack any `arrangement,' for they are designed to permit the user to impose her own search criteria on the mass of information").

[I]n most cases the test for "substantial similarity" is the so-called "ordinary observer test" . . . . * * * However, . . . where we compare products that contain both protectible and unprotectible elements, our inspection must be "more discerning"; we must attempt to extract the unprotectible elements from our consideration and ask whether the protectible elements, standing alone, are substantially similar. * * * The plaintiff must show that the defendant appropriated the plaintiff's particular means of expressing an idea, not merely that he expressed the same idea. The means of expression are the "artistic" aspects of the work; the "mechanical" or "utilitarian" features are not protectible.

 

Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995). Return to text.

[18] This fanciful reconstruction, in any event, would relate solely to small fragments of West's federal reporters and advance sheets, as Matthew Bender's product contains only opinions from the federal courts located in New York state. West's federal reporters, by contrast, contain a comprehensive collection from all federal jurisdictions. Return to text.

[19] This infringement argument based on a user's potential reconstruction also fails independently because "even if someone did perform [the meaningless chore of reconstructing the West volume] there can be no possible infringement, since no right has been violated. With respect to the reproduction right, there has been no copying, and thus no infringement." William F. Patry, 1 Copyright Law and Practice 659-60, n.595 (1994) (criticizing "outrageous flouting of basic copyright principles" in West v. Mead, which relied on West's user reconstruction argument). In other words, as noted above, West cannot demonstrate any "copying." Return to text.

[20] It should be noted, however, that it is not possible to determine from the New York product the arrangement of West's table opinion citations, i.e., those opinions that are reported by one line citations, with many such citations appearing in one table. Goldberg Decl. ¶ 28. For example, the 44 Second Circuit cases codified in 999 F.2d at 537 are each notated identically to one another in the New York product. There is no possibility of determining, even from a minute parsing of the CD-ROM, that West has "arranged" Settembre v. Scully before Creator's Educ. v. NYC and after U.S. v. Elechi, and that all three appear before U.S. v. Coiro. Indeed, in the New York product, Settembre not only is not "arranged" before Creator's, but the two cases are separated by cases appearing in volumes 995 and 996 of Federal Reporter — Second Series. See Ex. 32. Return to text.

[21] For some reason, the version of this case that appears on WESTLAW has been garbled (many paragraphs are out of order), and therefore resort to a copy from the bound volume is necessary. For the Court's convenience, a copy of the Second Circuit's opinion is attached as Exhibit 21. Return to text.

[22] The Eighth Circuit has claimed that Banks is questionable authority because it was decided at a time before statutory copyright extended to compilations. West v. Mead at 1226. That quibble ignores the fact that compilation copyright was an extant common law doctrine at the time Banks was decided, which subsequently — as with many copyright doctrines originating in the common law — was codified by statute. The standard treatise on copyright law from the 19th century launches its seven-page treatment of copyright in compilations with the observation: "The doctrine is well settled in England and the United States, that existing materials selected from common sources, and arranged and combined in an original and useful form, become a proper subject of copyright. * * * [These compilations] are entitled to, and will receive, the same protection extended to productions wholly original." Eaton S. Drone, Drone on Copyright at 152 (Boston, 1879) [Ex. 22]. Return to text.

[23] The only conceivable way around this barrier to entry would be to retrofit all existing judicial opinions and secondary legal literature with parallel citations to a sui generis citation format that does not refer to West pagination. Such an undertaking would not only be wholly impracticable, but would be equally vulnerable to West's assertion that the resulting efforts are infringing "translations" that "reflect" West's original expression. Return to text.

[24] Its retained expert in a recent litigation could not be more explicit on the subject: "The page numbers . . . are the products of the system and efforts at West Publishing Company." Expert Report of Robert C. Berring, Oasis Pub. Co. v. West Pub. Co., Civ. 3-95-563 (D. Minn.), dated Nov. 1, 1995 and filed Mar. 7, 1996, at 3 (emphasis added) [Ex. 24]. That statement combines uncopyrightable systems together with uncopyrightable sweat of the brow, the other primary basis for Mr. Berring's declaration. See § IV.C infra. References to "systems" are constant in his report:

"When one refers to a case by its citation in a volume of the West National Reporter System and its derivatives, one is referring to the product of the entire system." Id. at 2 (emphasis added). "Good information systems always prevail in citation practice." Id. (emphasis added). "In many jurisdictions the West National Reporter citation is preferred because it represents the system of legal information that West has developed." Id. at 3 (emphasis added). "Good citation systems are always built on good publication systems." Id. (emphasis added).

Occasionally, efforts are made to circumvent the prohibition on copyright in systems by resorting to what may be euphemistically called "symbolic authorship." An early example is seen in Baker v. Selden, 101 U.S. 99 (1880), where plaintiff unsuccessfully argued that the lines on his blank accounting form were "symbols to convey the idea of the method or plan." See [also West v. Mead] (the Eighth Circuit effectively accorded protection to the pagination of law reporters under a theory that the pagination was a symbolic representation of the larger compilation of cases). . . . West [v. Mead] seriously undermine[s] the statutory and constitutional requirements of authorship and should not be followed.

 

William F. Patry, 1 Copyright Law and Practice 156, n.143 (1994). Return to text.

[26] As the court further explained, "while original expression is necessary for copyright protection, we do not think that it is alone sufficient. Courts must still inquire whether original expression falls within one of the categories foreclosed from copyright protection by § 102(b), such as being a `method of operation.'" Id. at 818. Return to text.

[27] This Court has recognized that it is the norm in our society for research tools to be created for-profit, and that this commercial aspect does not negate what is otherwise fair use. See Salinger v. Random House, Inc., 650 F. Supp. 413, 425 (S.D.N.Y. 1986) (Leval, J.) ("The protection of the statute should not turn on sackcloth and missionary zeal. It rather directs the court to make an appraisal of social usefulness and fairplay."), rev'd on other grounds, 811 F.2d 90 (2d Cir.), cert. denied, 484 U.S. 890 (1987). See generally 3 Nimmer on Copyright §§ 13.05[A][1][c] (commercial uses compatible with fair use), 13.05[A][2][b] (Congressional amendment in wake of Salinger). Return to text.

[28] It is not contended that Bender's product is in all respects better. Users desiring West's key numbers and nationwide coverage, for example, will automatically prefer West's publications. The point is that Bender offers transformative uses not available from West's copyrighted reporters. Return to text.

[29] Insofar as the evidence admissible on this motion is concerned, West has unilaterally "destroyed" its pagination license with Mead Data Central every bit as much as did the plaintiff who was sanctioned in Unigard. Putting Unigard aside, West's "potential market" has been harmed if one defines that potential "as the theoretical market for licensing the very use at bar." 3 Nimmer on Copyright § 13.05[A][4]. But that type of circular reasoning begs the question. Id. See American Geophysical Union v. Texaco, Inc., 802 F. Supp. 1, 21 n.18 (S.D.N.Y. 1992), aff'd, 60 F.3d 913, 929 n.17 (2d Cir. 1994), cert. dismissed, 116 S. Ct. 592 (1995). To the extent that this Court deems evidence on this fourth factor dispositive, West must be ordered to respond meaningfully to Matthew Bender's discovery on this issue. But because four of the five fair use factors weigh so heavily against West, Matthew Bender submits that it should be granted summary judgment on the fair use defense without the need to reopen discovery. See § II.C.6, infra. Return to text.

 

[30] The reasoning of Building Officials & Code Adm'rs Int'l, Inc. v. Code Technology, Inc., 628 F.2d 730 (1st Cir. 1980), is also applicable here. In that case, a private organization, BOCA, developed a model building code; it thereafter encouraged the State of Massachusetts to enact that code into law. Because BOCA's intellectual property had, with its own consent, become governing law, the court reversed the trial court's entry of a preliminary injunction and held that BOCA failed to establish a likelihood of success on the merits on the issue of whether copying would constitute copyright infringement. Id. at 736.

 

In a recent case, the Second Circuit declined to follow Building Officials to place in the public domain a compilation of valuations of used cars that had been adopted as an alternative valuation standard in the insurance statutes or regulations of several states. See CCC Info. Servs., Inc. v. Maclean Hunter Market Reports, Inc., 44 F.3d 61, 74 (2d Cir. 1994), cert. denied, 116 S. Ct. 72 (1995) ("We are not prepared to hold that a state's reference to a copyrighted work as a legal standard for valuation results in loss of the copyright."). CCC is readily distinguishable from the facts at bar. As with the plaintiffs in the Building Officials case, but unlike the copyright holder in CCC, West has encouraged the bench and bar to elevate citation of West's reporters as the official standard and thus, through its own actions, has caused it to become a necessary incident of legal practice. Further, unlike CCC, Matthew Bender does not assert that West has forfeited all copyright protection to its work, but rather seeks to permit factual reference to West's page breaks — which at best represent a minimal aspect of West's compilation efforts. In CCC, by contrast, the defendant sought to cast into the public domain not just some minor aspect of the arrangement, but rather the entire work. In addition, Building Officials involved a copyrightable composition consisting of a model code that was intended to serve as a governing standard. The different result in CCC reflects the circumstance that the work at issue there was created to serve commercial purposes quite apart from embodying the law. As between those two paradigms, the facts at bar are far closer to those of Building Officials: West's works exist solely to set forth the law; the citation system based on West's compilation has value solely as a system to find the law. Return to text.

 

[31] West explicitly advanced that argument to the Supreme Court in Feist. Vance Opperman and James Schatz, Brief of West Publishing Co. as Amicus Curiae in Support of Respondent Rural Telephone Service Co., filed December 14, 1990, at [Lexis page] 16 [Ex. 29]. As discussed above (see § I.B.2.a., supra), Feist explicitly rejected that proposition; Feist also rejected West's argument (id. at 9) that the decision below was not based on "sweat of the brow." See § IV.C, infra. Return to text.

 

[32] As set forth in the Kramer Declaration, the material from the text of the majority opinion in Mendell v. Gollust as it appears in West's reporters tracks the slip opinion almost exactly. In particular, West has intermingled emendations into the text of the slip opinion that, on a volume basis, account for approximately 2% of the total. Qualitatively, those emendations are even less significant, as most reflect simply a mechanical addition of a parallel citation or like material, rather than any substantive addition to the opinion. Therefore, one could reasonably evaluate the weight of the public domain materials in the subject materials as between 98% to 99.99%. For present purposes, West is given the benefit of all calculations, as having contributed 2% of the total. Return to text.

 

[33] West admits the impossibility of identifying those elements through inspection of its published reporters alone. See Letter from James E. Schatz to Alan Sugarman, dated October 9, 1991, at 1 ("you should carefully compare the enclosed copy of the public domain slip opinion in Mendell to the West case report") (emphasis original) [Ex. 28]. Return to text.

 

[34] The divided opinion of the Eighth Circuit in West v. Mead arose as an interlocutory appeal from a preliminary injunction without discovery having been taken. 799 F.2d at 1229. The two judges who swung the vote themselves recognized that following trial, the court must "examine anew, on the basis of the full record" the basis for its analysis, which at that juncture was acknowledged to be merely "tentative and provisional." Id. A subsequent settlement of the case precluded that fresh examination based on a complete record from taking place. See Patterson & Joyce at 728 ("we believe that a thorough examination of the relevant considerations compels a result radically different from that reached by the courts in West [v. Mead] — a result now beyond appeal and correction, at least in the present litigation, by virtue of the parties' settlement"). Return to text.

 

[35] Earlier in its analysis, the Court adverted in dictum to "the order of arrangement of the cases, the division of the reports into volumes, the numbering and paging of the volumes" as parts of the volume over which protection may potentially subsist. Id. at 649, 661. As scholarly commentary has noted, that "fleeting observation" is "contradicted by other aspects of the Court's opinion . . . ." Patterson & Joyce at 744. Moreover, this obiter dictum is nowhere referenced by the Second Circuit decision in Banks, indicating it was given no weight by the Second Circuit, and hence plays no role in ascertaining the law of this circuit. Return to text.

 

[36] This express language negates attempts to distinguish the Second Circuit's rationale as hinging on the reporter's official status. Return to text.

 

[37] Beyond validating internal star pagination, this case also proves that copying first page citations not only constitutes a fair use, as West concedes, but further fails to even raise a prima facie case of infringement. Return to text.

 

[38] In discussing West's Southern Reporter, the court points out that West divides the cases by state and court level; it treats some cases as fully headnoted and arranges those before jacketed memoranda and table dispositions; West "editors" decide whether to report cases more quickly or more slowly. See Oasis, 924 F. Supp. at 924. Every conceivable bit of data relating to each of those decisions is "reflected" in the first page citation to those various cases, which West concedes at bar to be non-infringing. See p. 9, supra. None of West's efforts summarized by the Oasis court relate at all to page breaks in the interior of reported decision, which is the sole contested matter in this summary judgment motion. Return to text.

 

[39] For references to "industrious compilation" in Rockford, see 768 F.2d at 148, 149. Note further that Rockford cites repeatedly (id. at 149) to the 1921 Jewelers' Circular case, which Feist highlights as the "classic formulation" proving that "some courts misunderstood the statute." 499 U.S. at 352, 111 S. Ct. at 1291. Professor Ginsburg singles out Rockford as a prime example of "`sweat of the brow' jurisprudence." Ginsburg Article at 349 & n.52 (1992). By the time Feist was decided, the Second Circuit, unlike the Eighth, had "fully repudiated the reasoning of [the Jeweler's Circular] decision. Feist, 499 U.S. at 360, 111 S. Ct. at 1295 (citations omitted). Return to text.

 

[40] H.R. 4426 would have clarified that copyright protection is not available "for any volume or page number by which State or Federal law, regulations, judicial opinions, or portions thereof, are, or ever have been, identified." Hearing Transcript at 2-3 [Ex. 30]. West's rival-turned-owner, The Thomson Corporation, supported H.R. 4426 because it "would overrule the West [v. Mead] decision and enable Thomson and others to publish . . . primary legal texts." Id. at 91. West's then outside counsel, later president, and now chairman, Vance K. Opperman, derided the bill as a nefarious attempt by Thomson to steal an American company's assets. See, e.g., Prepared Statement of Vance Opperman, id. at 159 ("Perhaps more disturbing is the motive of the primary proponent of H.R. 4426, Lord Thomson and his foreign-based Thomson conglomerate. We have all witnessed past efforts by foreign firms, acting under the guise of the U.S. subsidiaries they have bought up, to alter or dismantle fundamental American laws for their own profit and at the expense of American jobs and prosperity."); see also Testimony of Minnesota Congressman James Ramstad, id. at 5 ("The legislation being considered today represents an effort by one of the largest and most powerful foreign conglomerates in the world, led by an English lord, to win in the U.S. Congress what it knows it cannot win in the courts."). Now that the "English Lord" and his "foreign conglomerate" have acquired West (and Vance Opperman now heads a "U.S. subsidiary" of a company that would "dismantle fundamental American laws for [its] own profit") The Thomson Corporation appears to have experienced a profound conversion to West's views on star pagination. See Vera Titunik, That Was Then, This Is Now, American Lawyer 21 (April 1996) (quoting Thomson's general counsel Michael Harris as saying "We believe star pagination is copyrightable"). Return to text.

 

 

 

 

 

 

 

 

 

MATTHEW BENDER BRIEF IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT - August 5, 1996