UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
------------------------------x
MATTHEW BENDER & CO.,
Plaintiff,
v. 94 Civ. 0589(JSM)
[ORDER]
WEST PUBLISHING, INC.,
Defendant.
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HYPERLAW, INC.,
Intervenor-Plaintiff,
v.
WEST PUBLISHING, INC.,
Defendant.
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November 22, 1996
2:35 p.m.
New York, N.Y.
Before:
HON. JOHN S. MARTIN, JR.,
District Judge
[Begin Page 34]
. . .
THE COURT: What difference is there between using the
star pagination as simply the first NAME, the first page
pagination?
MR. MUSILEK: Your Honor, that's a very important fact
question that goes to the fair-use portion of the case.
That is in essence the fair-use portion of the case. One
use is a reference to a West work. It is fair use. One
use. Star pagination, on the other hand, is a supplanting
use, not a fair use.
THE COURT: Star pagination, though, you say if by using
the star pagination they can duplicate through their
computer the West system, why can't they do that, why they
can't they reproduce your compilation simply by using the
first page?
MR. MUSILEK: Your Honor, they can. They cannot show
where in fact page breaks occur; they cannot show the page
numbers associated with those page breaks for finding
specific portions of text.
THE COURT: I have enough of what I need.
I am going to grant summary judgment to Matthew Bender
and to the star pagination.
As I indicated at the outset of this argument, with the
quote from Judge Leval in CCC, that the facts set forth in
the compilation are not protected and may be freely
[begin page 35]
copied, the protection extends only to those aspects of the
compilation that embody the original creation of the
compiler.
Here, the original creation of West is not in the
number of lines in any case, it is not in the number of any
pages of any case. The original creation may be in the way
West selects cases for reporting, the cases that it puts,
any headnotes that it adds to the report and similar
additional material when put together with the official
report that that they obtain from the Court.
However, where and on what particular pages the text of a
court opinion appears does not embody any original creation
of the compiler, and, therefore in my view, is not entitled
to protection.
Even if the Court were to find that this matter were
entitled to protection, the use of star pagination would in
the Court's view constitute fair use.
I think it is important in looking at the fair use
analysis to start with the decision in the Second Circuit in
Weissman v. Freeman which underscores an important factor
which I think is often overlooked by lawyers, mechanical
arguments about fair use, and that is the statement that
appears, if I am not violating any copyright, on page 1323
of 868 F.2d. "Analysis begins not by elevating the statutory
guides to inflexible rules but
[Begin page 36]
with a review of the underlying equities."
It seems clearly the underlying equities here lie with
allowing use of star pagination. On the one hand it can be
said that somehow Matthew Bender is taking advantage of the
sweat of West's brow. But Feist did away with that concept.
What West is attempting to do by trying to inhibit star
pagination is to create a monopoly over reported court
decisions. That, in my view, is not an equitable activity
and therefore should play some role in the analysis of
whether or not there is fair use here.
The purpose and character of the use is, yes, that it
is commercial, but it is only concluding whether it is
commercial. Matthew Bender is not using the star pagination
to take advantage of some structure in West's compilation
that has these bits of text appear on a particular pages.
It is simply providing a method whereby users of its product
who wish to look at the text in its hard copy form can go to
the volumes and find it. It is also providing a method by
which the users of its product can in their legal writings
refer others to the official reports as is often required by
the rules of courts and the rules of individual judges, such
as my rules.
So that if we look at the purpose and character of the use,
even though it is commercial, it still seems to me that it
has purposes here that make it a worthwhile
[[Begin page 37]
purpose and that there is no great advantage to West from
that use.
Again, we look at the nature of the copyrighted work.
It is a compilation. The star pagination does not in any
way take advantage of that part of West's effort in making
the compilation that reflects its intellectual effort. It
simply, as I indicated earlier, reflects the accident of
where a particular portion of an opinion ended up in a West
reporter.
Similarly, the star pagination does not take a
substantial amount in relation to the copyrighted work as a
whole. West has its copyright because of the compilation,
not because of where a particular portion of court-authored
text falls on a page.
As to the effect of the use upon the potential market
for a value of the copyrighted work, it does not seem to me
that this factor weighs heavily in West's favor because the
use of the star pagination does not necessarily impact on
the market for those who want printed books in which they
can look at the decisions of the court and want to have
compilations; that is, works that lay out those opinions in
a specific creative order that West has compiled. It simply
will affect the market for text of court decisions. But
West has no copyright on the text of the court decision. It
only has a copyright in a
[Begin page 38]
compilation. So for all of those reasons the Court
concludes that summary judgment should be issued on the
question of the use of star pagination.
With respect to the Hyperlaw issues, the Court is going
to deny summary judgment to Hyperlaw because I think under
the standards of the Second Circuit there are disputed
issues of fact, and although on the facts as they have been
presented to me I would decide in Hyperlaw's favor, and
indeed if I were a circuit judge I might well find that the
issue was clear enough that there were not disputes of
material fact. I'm not at all confident that the Second
Circuit would adopt that position and I am very confident
that it is not in anybody's interest given the extended
nature of this case that we simply set off a round of
briefing in the Second Circuit and then if I am correct that
that court might find that there are factual issues to have
to come back here two or three years from now to deal with
that issue. I think it is a more practical approach and I
think required here that the issues of fact be developed at
the trial.
Whether at the end of the trial it showed no more than
the record before me, I would direct a verdict or enter a
judgment NOV is a question that will be left open. But I
think that summary judgment is not the appropriate vehicle
to deal with this case.
[Begin page 39]
MR. HARTMANN: Your Honor, may I inquire. At 6 of our
reply brief we conceded that the matter was ripe for summary
judgment with regard to pagination and made the parallel
motion.
THE COURT: As to parallel motion, with respect to
pagination it applies completely and I am happy to enter
summary judgment for you and to have that entered as a final
judgment and so that it may be taken up because it should go
up and there is no difference in my view.
MR. HARTMANN: Thank you, your Honor.
THE COURT: This is going to be a jury trial?
MR. MUSILEK: Your Honor, yes, at this point I think all
parties have asked for a jury.
THE COURT: And after what I've just said I would be
very surprised if West would waive a jury.
How long do you anticipate this trial will take?
MR. HARTMANN: Your Honor, Hyperlaw suggests as Mr.
Musilek represented earlier in the argument that all of the
witnesses are known, all of the basic testimony is already
before the court, we would expect it not to take more than
three days.
MR. MUSILEK: Your Honor, I think that's a gross
underestimate of the time. It is going to take all the West
attorney-editors to tell what they do and show what's in the
books. I think it is a two-week trial.
[Begin page 40]
THE COURT: January 27th.
MR. HARTMANN: Thank you, your Honor.
THE COURT: Give me a pretrial order by January 17th.
Thank you.
(Proceeding adjourned)
BENCH OPINION GRANTING SUMMARY JUDGMENT Re CITATIONS NOVEMBER 22, 1996
The Court issued a summary order re the bench opinion on March 12, 1997.
On November 22, 1996, Judge Martin heard oral argument on
the motions of Matthew Bender and HyperLaw for summary
judgment against West.
Both Matthew Bender and HyperLaw moved for
summary judgment on the star-pagination issue -- HyperLaw
alone moved for summary judgment on the issue of the
copyrightability of the text of judicial opinions in West
case reports.
Judge Martin granted the motions for summary judgment concerning star-pagination.
"The facts set forth in the compilation
are not protected and may be freely copied, the protection
extends only to those aspects of the compilation that embody
the original creation of the compiler."
* * *
"[w]here and on what particular pages the
text of a court opinion appears does not embody any original
creation of the compiler ..."
* * *
What West is attempting to do by trying
to inhibit star pagination is to create a monopoly over
reported court decisions. That, in my view, is not an
equitable activity and therefore should play some role in
the analysis of whether are not there is fair use here."
"With respect to the HyperLaw issues, the
Court is going to deny summary judgment to HyperLaw because
I think under the standards of the Second Circuit there are
disputed issue of fact, and although on the facts as they
have been presented to me I would decide in HyperLaw's favor
... Whether at the end of the trial it showed not more than
the record before me, I would direct a verdict or enter a
judgment NOV is a question that will be left open."
On March 12, 1997 he Court issued a summary order re the bench opinion which stated:
After hearing argument on motions for summary judgment, the Court granted the motions of both Matthew Bender and Hyperlaw for summary judgment that their use of references to the particular page in the West reports where a portion of an opinion appeared did not violate West's copyright in the compilation. This is to certify pursuant to Rule 54(b) of the Federal Rules of Civil Procedure that there is no just reason to delay entry of judgment on this claim and to direct entry of summary judgment on this issue.
The issue of West's copyright interest in its pagination is the only issue present in the action by Matthew Bender. While other issues are presented in the Hyperlaw action they are totally distinct from the pagination issue. Given the fact that West's [*2] assertion that it has a copyright interest in the pagination of its volumes may deter competitors from entering the market, it is particularly important that the final determination of this issue not await the decision on the other issues raised by Hyperlaw.