January 30, 1998 HyperLaw, Inc.®
"Back to HyperLaw Home Page"
Back to HyperLaw v. West Page
United States Court of Appeals
for the Second Circuit
West Publishing Company,
On Appeal From The United States District
Court for the Southern District of New York
BRIEF FOR AMICUS CURIAE
AMERICAN ASSOCIATION OF LEGAL PUBLISHERS
ARNALL GOLDEN & GREGORY LLP
Attorneys for Amicus Curiae
2800 One Atlantic Center
1201 West Peachtree Street
Of Counsel: Atlanta, Georgia 30309-3450
L. Ray Patterson (404) 873-8500
School of Law
University of Georgia
Athens, Georgia 30602
TABLE OF CONTENTS
Table of Authorities ..................................... ii
Interest of Amicus Curiae................................. 1
Argument ................................................. 2
I. JUDICIAL OPINIONS OF UNITED STATES JUDGES
ARE WORKS OF THE UNITED STATES GOVERNMENT
AND ARE NOT SUBJECT TO COPYRIGHT PROTECTION
BY VIRTUE OF 17 U.S.C. §105 .................... 2
II. EVERY CITIZEN HAS A DUE PROCESS RIGHT OF
ACCESS TO LAW THAT COPYRIGHT FOR LAW WOULD
INHIBIT ........................................ 12
III. ALLOWING A PRIVATE PUBLISHER TO CONTROL
ACCESS TO LAW THROUGH COPYRIGHT COMMERCIALIZES
THE CONSTITUTIONAL RIGHT OF UNINHIBITED ACCESS
AND ALLOWS COPYRIGHT TO REASSUME ITS ONCE
DOMINANT ROLE AS A DEVICE OF CENSORSHIP........... 14
IV. COPYRIGHT FOR LAW SERVES NO PUBLIC PURPOSE
AND, INDEED, MAY CONSTITUTE AN INVASION OF
THE SOVEREIGN POWER OF THE GOVERNMENT THAT
MAKES THE LAW .................................. 19
Conclusion ............................................... 21
Certificate of Service ................................... 22
TABLE OF AUTHORITIES
Bobbs-Merrill Co. v. Straus
210 U.S. 339 (1908) ................................. 18
Building Officials & Cod Admin. v. Code Technology, Inc.
628 F.2d 730 (1st Cir. 1980) ........................ 16
Callaghan v. Myers
128 U.S. 617 184 (1888) ............................. 8
Computer Associates International, Inc. v. Altai, Inc.
982 F.2d 693 (2d Cir. 1982).......................... 20
DC Comics, Inc. v. Reel Fantasy, Inc.
696 F.2d 24 (2d Cir. 1982) .......................... 12
Feist Publications, Inc. v. Rural Tel. Service Co.
499 U.S. 340 (1991) ................................. passim
Fox Film Corp. v. Doyal
286 U.S. 123, 127 (1932) ............................ 12
Harper & Row, Publishers, Inc. v. Nation Enterprises
471 U.S. 539 (1985) ................................. 19
Leon v. Pac. Tel. & Tel. Co.
91 F.2d 484 (9th Cir. 1937) ......................... 7
Mills Music, Inc. v. Snyder
469 U.S. 153 (1985) ................................. 6
Mitchell Bros. Film Group v. Cinema Adult Theatre
604 F.2d 852 (5th Cir. 1979) ........................ 17
Oasis Pub. Co. v. West Pub. Co.
924 F. Supp. 918 (D. Minn. 1996)..................... 20
Ringgold v. Black Entertainment Television, Inc.
1997 WL 570161 (2d Cir. (N.Y.)) ..................... 12
Seminole Tribe of Florida v. Florida
517 U.S. 609, 116 S. Ct. 1114, 1122 (1996) ........ 20
Stewart v. Abend
495 U.S. 207 (1990) ................................. 12
West Publishing Co. v. Edward Thompson Co.
176 F. 833 (2d Cir. 1910) ........................... 8
West Publishing Co. v. Lawyers Cooperative Publishing Co.
79 F. 756 (2d Cir. 1897) ............................ 8
West Pub. Co. v. Mead Data Central, Inc.
616 F. Supp. 1571 (D. Minn. 1985) ................... 9
Wheaton v. Peters
33 U.S. (8 Pet.) 591 (1834) ......................... 6,11
1 Stat. 124 (Copyright Act of 1790)....................... 15
28 Stat. 608 (Printing Act of 1895)....................... 9
17 U.S.C. § 8 (1909 Act) ................................. 8
17 U.S.C. § 10 (1909 Act) ................................ 9
17 U.S.C. § 27 (1909 Act) ................................ 15
17 U.S.C. § 101 (definition of work of U.S.Government).... 2,4,5
17 U.S.C. § 103(b) ....................................... 4,5
17 U.S.C. § 105 .......................................... 2,5
17 U.S.C. § 106 .......................................... 10,12
17 U.S.C. § 109 .......................................... 15
17 U.S.C. § 201(b) ....................................... 3
17 U.S.C. § 301 .......................................... 20
Star Chamber Decrees of 1586 and 1637..................... 14
Statute of Anne, 8 Ann. c. 15 (First Copyright Act)....... 14
Benjamin Kaplan, An Unhurried View of Copyright
(1967) .............................................. 14
Lyman Ray Patterson, Copyright in Historical Perspective
(1968) .............................................. 14
Patterson, "Copyright and 'the exclusive Right' of
Authors," 1 Jour. of Intell. Prop. Law 1 (1993) ..... 15
Patterson & Joyce, "Monopolizing the Law: The Scope of
Copyright Protection for Law Reports and Statutory
Compilations," 36 U.C.L.A. L. Rev. 719 (1989) ....... 9,10
L. Ray Patterson & Stanley W. Lindberg, The Nature of
Copyright (1991) .................................... 15
INTEREST OF AMICUS CURIAE
The American Association of Legal Publishers is a trade association of small publishers of legal materials. It desires to file this amicus brief because copyright protection for judicial decisions of United States judges is an issue of high public importance. Affording such protection constitutes a dire threat both to the rule of law in our society and to the existence of members of the AALP. These conclusions follow from the fact that, while the rule of law requires uninhibited access to the law, West Publishing Co. and its amicus, Reed Elsevier, seek judicial approval of their monopolistic control over electronic dissemination of judicial opinions by reason of their WESTLAW and LEXIS databases.
If this Court gives its imprimatur to such an economic monopoly, two foreign corporations (one Canadian, the other British/Dutch) will have the power to license the use of judicial opinions of United States judges. They will thus be able to determine whether and to what extent Americans shall have electronic access to the law that governs in the U. S., but not in Canada, England, or Holland.
Xenophobia, however, is not a basis for denying West's claim. Private publishers are not entitled to copyright protection for law in the U.S. whether foreign or domestic. Such a copyright overrides the due process right of access to law; it results in a commercialization of a constitutional right, which is equivalent to censorship.
Moreover, West's efforts, on which it bases its claim of copyright, only improve the marketability of federal judicial opinions. But American copyright is not, and was never, intended to reward a publisher for improving the marketability of works produced by others, in this case, officers and employees of the United States Government.
I. JUDICIAL OPINIONS OF UNITED STATES JUDGES ARE WORKS OF THE UNITED STATES GOVERNMENT AND ARE NOT SUBJECT TO COPYRIGHT PROTECTION BY VIRTUE OF 17 U.S.C. § 105.
Judicial opinions of federal judges are works of the U.S. Government, 17 U.S.C. § 101 (definition of work of the United States Government), for which copyright is not available. "Copyright protection under this title is not available for any work of the United States Government, . . ." 17 U.S.C. § 105 (emphasis added). West, however, ignores section 105/Footnote1 and seeks to avoid its application by using a false premise: That a publisher, by making "editorial additions and revisions . . . in adapting judicial opinions for publication," West's Brief, p. 1, can override section 105 and obtain copyright protection for such works of the U.S. Government.
West begins by dividing judicial opinions into two categories: 1) "unedited judicial opinions of federal judges" that anyone can publish, West's Brief, p. 21; and 2) "West's annotated, expanded, and revised case reports," id., for which West contends it is entitled to copyright protection. Thus, West in effect claims that the judicial opinions of federal judges that it edits and publishes cease to be works of the U.S. Government in a deliberate attempt to avoid the prohibition of section 105.
Since West's sale of the reports ultimately depends upon the accurate reproduction of these works of the U.S. Government, this is intellectual sleight of hand. Perhaps this tactic is best demonstrated by West's argument that as "an author of a compilation and of a derivative work, West demonstrated the originality of its expression . . . at trial." West's Brief, p. 23. Disregarding for the moment whether the "originality of its expression" is sufficient to make section 105 irrelevant, the point is this: West (an author only by legal fiction, 17 U.S.C. § 201(b)) claims that it is entitled both to a compilation and a derivative copyright on U.S. Government works that it publishes.
West apparently hopes that this Court will infer that these copyrights provide plenary copyright protection for the legal opinions it publishes. Such an inference, however, is contrary to section 103 of the Copyright Act, which provides that "[t]he copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material." 17 U.S.C. § 103(b) (emphasis added)./Footnote2
Since West ignores section 103 as well as section 105, a brief comment on the compilation copyright and the derivative copyright is appropriate. The selection and arrangement of public domain works in a compilation may receive copyright protection. The Supreme Court, using facts as the exemplar of public domain material, has explained this point in detail. Noting that facts cannot, but compilations of fact can, be copyrighted, the Court said:
Copyright treats facts and factual compilations in a wholly consistent manner. Facts, whether alone or as part of a compilation, are not original and therefore may not be copyrighted. A factual compilation is eligible for copyright if it features an original selection or arrangement of facts, but the copyright is limited to the particular selection or arrangement. In no event may copyright extend to the facts themselves.
Feist Publications, Inc. v. Rural Tel. Service Co., 499 U.S. 340, 350-51 (1991).
Thus the selection and arrangement of public domain material may receive limited, "thin" copyright protection as part of a compilation, but such a compilation copyright does not protect the public domain material itself. "This is the point of § 103 of the Act." Feist, 499 U.S. at 359.
To put the point simply, copyright can protect the compilation as a whole, but not the contents of the compilation./Footnote3 Thus, even if West is entitled to a compilation copyright for compiling its database of federal judicial opinions, that copyright cannot protect any of the opinions that are compiled. These are public domain materials. 17 U.S.C. § 105.
A derivative work is one based on a preexisting work that "as a whole represents an original work of authorship."/Footnote4 But, once again, only the original contribution of the derivative author is protected by the derivative copyright not the preexisting work. 17 U.S.C. § 103(b). Thus, even if West is entitled to a derivative copyright in, for example annotated cases, West's copyright of such cases would only extend to the annotations added by West, and not to the opinions of United States judges themselves.
The fact that limited copyright protection is available for public domain material contained in a compilation or a derivative work, however, does not mean that such protection is available for works of the U.S. Government. This is because section 105 puts U.S. Government works into a special class: public domain works for which copyright is not available. Therefore, to hold that the selection and arrangement or the editing of U.S. Government works in a copyrighted compilation or derivative work provides the selector, arranger or editor with any protection for the U.S. Government works is contrary to the ordinary meaning of the language used in the statute./Footnote5
The ordinary meaning of section 105's language is that no one can claim copyright protection for any U.S. Government work regardless of their effort in publishing such work. Otherwise, in providing that "[c]opyright protection is not available for any work of the United States Government," Congress shall have "legislated in vain." Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 665 (1834).
In fact, by devoting so much of its brief to proving originality in compiling and "editing" the cases, West protests too much. The processes it describes bespeak more of unprotectable "industrious collection" or "sweat-of-the-brow" protectable, original, authorship. For over a half-century, lower courts protected compilations (primarily telephone directories) without regard to originality because the production of the compilations required time, effort and money. See, e.g., Leon v. Pac. Tel. & Tel. Co., 91 F.2d 484 (9th Cir. 1937). These were "industrious collection" or "sweat-of-the-brow" copyrights, which the Supreme Court in Feist held to be unconstitutional because the works they protected were not original works and because originality is a constitutional condition for copyright. Since Feist cited Leon as an example of the unoriginal, and thus unconstitutional, industrious collection copyright, it is useful to compare the court's description of the telephone company's efforts in Leon/Footnote6 with West's description of its own efforts./Footnote7
Two additional points refute West's claim that it can use industrious effort to override section 105. First, one can assume that Congress did not intend that courts disregard the ordinary meaning of section 105's language in order to enable a publisher to do indirectly what it can not do directly, i.e., use copyright to gain a monopoly in works of the U.S. Government.
Second, the cases West relies on/Footnote8 are no longer valid precedent because in the 1976 Act Congress clarified the confusion surrounding copyright protection for U.S. Government works in the same way it clarified the confusion about the requirement of originality, as explained in Feist, 499 U.S. at 354-55.
The 1909 Copyright Act provided that "no copyright shall subsist . . . in any publication of the United States Government, or any reprint, in whole or part thereof," 17 U.S.C. § 8 (1909 Act)./Footnote9 This provision was ambiguous for two reasons: 1) copyright at that time could be had only by publishing a work with notice, 17 U.S.C. § 10 (1909 Act); and 2) a publication of a U.S. Government work by a private publisher was technically not a "publication of the United States Government." The language in the 1976 Act--"Copyright protection . . . is not available for any work of the United States Government"--removed all ambiguity and, indeed, could not be clearer.
Insofar as amicus is aware, no court has ever recognized what West really seeks in this case: plenary copyright protection for each judicial opinion published by West, by reason of its "editorial" work./Footnote10 Despite this claim, West makes a show of conceding that works of the U. S. Government are not subject to copyright. But its actions (as well as its arguments in its brief) belie its words. For example, West's disclaimer of any copyright protection for works of the U.S. Government in its WESTLAW copyright notice--of which this Court should take judicial notice--is false because the notice says that no one may copy any portion of the database./Footnote11 In its copyright notice, then, even as it disclaims copyright protection for U.S. Government works, West asserts the right of a copyright owner under 17 U.S.C. § 106(1), the exclusive right to reproduce those government works. The WESTLAW copyright notice, in short, is a classic example of doublespeak.
Interestingly, if West's argument is accepted by this Court, and if copyright protection for legal opinions is made available to private publishers, these publishers as copyright holders can (by the express terms of section 105) transfer the copyright to the U.S. Government. This, in turn, would provide the government with the very copyright section 105 is intended to deny! For example, West could transfer its copyright of the Federal Reporter to the Department of Defense for a lucrative Pentagon contract, although such a copyright would arguably be contrary to the first amendment, due process, and the copyright clause.
Apart from this unfortunate result, which helps explain why Congress used the language it did--"Copyright protection . . . is not available"-- there are three reasons why this Court should not empower publishers to override section 105 and make copyright protection available for law: 1) copyright empowers the copyright holder to control access to the copyrighted work, and, thus, copyright for law is patently contrary to public policy because it commercializes the due process right of access to the law;/Footnote12 2) history supports the plain meaning of the statute, that American copyright protection is not available for law regardless of the efforts of its publisher;/Footnote13 and 3) copyright for law serves no public purpose.
II. EVERY CITIZEN HAS A DUE PROCESS RIGHT OF ACCESS TO THE LAW THAT COPYRIGHT FOR LAW, HOWEVER LIMITED, WOULD INHIBIT.
That every U.S. citizen has a due process right of access to law is so fundamental that there are few citations to support the point and none is needed./Footnote14 That copyright for law would inhibit this right is also fundamental. This is because the essence of copyright is the right to control access to the copyrighted work./Footnote15 Thus, as this Court has recently ruled, the "exclusive rights [in 17 U.S.C. § 106] normally give a copyright owner the right to seek royalties from others who wish to use the copyrighted work... DC Comics, Inc. v. Reel Fantasy, Inc., 696 F.2d 24, 28 (2d Cir. 1982) (noting that one benefit of owning a copyright is the right to license its use for a fee)." Ringgold v. Black Entertainment Television, Inc., 1997 WL 570161 (2d Cir. (N.Y.)) at p. 3. This is a commercialization of access, which may be permissible as to creative works--poems, novels, dramas--because they are original creations of an author.
But this reasoning should not apply to law because to commercialize the due process right of access to law is to subject the exercise of that constitutional right to the control of entrepreneurs, whose primary interest is profit. In this instance, private censorship, being for profit, is even more pernicious than governmental censorship, for political purposes are not so pervasive as the profit motive.
This concern is precisely why Congress provided that copyright protection is not available for U.S. Government works. The same concern also explains why the Supreme Court constitutionalized copyright with two holdings in Feist: 1) Originality is a constitutional requirement of copyright, 499 U.S. 340, passim; and 2) there is a constitutional right to use and copy uncopyrightable materials contained in a copyrighted work, id. at 349. Therefore, a ruling for West would require this Court both to deny the due process right of access to law and to override the copyright clause as the Supreme Court interprets it.
West's claim that it does not abuse the power "arbitrarily to refuse" access to the law is both wrong--as the doublespeak in its WESTLAW copyright notice proves--and also irrelevant. If this Court finds that the power exists, it will be available for abuse at the whim of West. It is axiomatic that the opportunity for additional profit provides ample occasion for that abuse.
III. ALLOWING A PRIVATE PUBLISHER TO CONTROL ACCESS TO LAW THROUGH COPYRIGHT COMMERCIALIZES THE CONSTITUTIONAL RIGHT OF UNINHIBITED ACCESS TO THE LAW AND ALLOWS COPYRIGHT TO REASSUME ITS ONCE DOMINANT ROLE AS A DEVICE OF CENSORSHIP.
The historical roots of American copyright reach over four centuries back to a period of religious controversy in England when copyright was a device of governmental censorship,/Footnote16 protected by Star Chamber Decrees/Footnote17 and the Licensing Act of 1662, 13 & 14 Car. II, c. 33. This press control era in England did not cease until the religious controversy was ended by the Glorious Revolution of 1688. This religious strife, which resulted in a government-controlled press, explains why the first amendment protects freedom of religion as well as freedom of the press. The framers, relying on history, forbade the result, censorship, and eliminated the primary cause, a state religion.
The end of press control led to the first English copyright statute, the Statute of Anne in 1710, 8 Anne, c. 19, the title of which is the source of the language in the copyright clause,/Footnote18 and which was the model for the 1790 U.S. Copyright Act. 1 Stat. 124, 1st Cong., 2d Sess., c. 15.
A major purpose of the Statute of Anne was to prevent the erstwhile copyright of the publishers (the stationers' copyright) from continuing to be used as a device of censorship./Footnote19
This anti-censorship policy of copyright is embodied in the copyright clause, a point made abundantly clear by the policies of that clause: the promotion of learning (because it so states); the protection of the public domain (because copyright is only for limited times and only for original writings); and public access (because the "exclusive Right" protects the exclusive right to publish writings and publication ensures access)./Footnote20
The English background thus provides the context for the adoption of the copyright clause in the American Constitution. This history also provides the answer to the crucial question of the meaning of the phrase in the copyright clause: "To Promote the Progress of Science," (i.e., learning)./Footnote21 Unfortunately, few are familiar with this history.
Although the phrase "To Promote the Progress of Science" has received relatively little attention, the choice of interpretation seems to be one of two: Either the policy of promoting the progress of learning requires a content-based copyright, or it requires copyright protection for all works that conform to statutory requirements regardless of content. Mitchell Bros. Film Group v. Cinema Adult Theatre, 604 F.2d 852 (5th Cir. 1979).
Neither interpretation is wholly satisfactory, however. The former violates the first amendment,/Footnote22 the second renders the policy meaningless. Common sense, however, tells us that there is only one reason to make "the encouragement of learning" the purpose of a statute that grants a monopoly to sell printed books./Footnote23 That reason is to prevent the monopoly from being used for censorship purposes. And in this instance, common sense is confirmed by history, as noted above, and by logic.
The logic is that copyright is a monopoly to encourage the marketing of books (and other copyrightable works) which, in turn, makes them accessible. Since learning requires access to the material to be learned, the marketing monopoly serves a useful public purpose: it encourages the publication of books, which makes them accessible to those who wish to learn. But, if the marketing monopoly is extended to allow and encourage the copyright holder to control access to a book after it has been published and sold, then the public's right of access is inhibited, if not defeated. Thus to extend the marketing monopoly to books in the classroom, the library, the home study--or the law office--is to give the copyright holder the power of censorship. This puts a fee on the exercise of a constitutional right--in this instance the right of access to the law--and such commercialization of a constitutional right is the equivalent of censorship.
Fortunately, the constitutional purpose of copyright--to promote the progress of learning--prevents this result because it prevents copyright holders from controlling access to works they have sold. Thus the Supreme Court limited the copyright monopoly to the marketplace with the first sale doctrine in 1908. Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908) (copyright owner cannot control price of book for resale)./Footnote24
Thus excluding U.S. Government works from copyright protection is congruent with--and demanded by--the anti-censorship policy embodied in the copyright clause of the U.S. Constitution. Indeed, any other rule would violate the first amendment, for copyright would then be a law to control the press.
IV. COPYRIGHT FOR LAW SERVES NO PUBLIC PURPOSE AND, INDEED, MAY CONSTITUTE AN INVASION OF THE SOVEREIGN POWER OF THE GOVERNMENT THAT MAKES THE LAW.
Although law is an authoritarian discipline--lawyers and judges insist on a citation of authority for every statement--there is no rule that precludes the use of common sense in dealing with legal issues. A good starting point for the common sense approach in this case is the logical inference that Congress in enacting section 105 determined that there is no public purpose to be served by copyright for U.S. Government works.
Common sense tells us that this inference is particularly important as to law, the basis of order, which, as Milton told us, is the basis of liberty. Law is of vital importance in the protection of freedom, a point proven by a single fact: Law is the only publication to which every citizen of the U.S. has a constitutional right of access. To subject law to the monopoly of copyright that empowers the copyright holder to charge a license fee for its use is a situation analogous to imposing a poll tax on the right to vote.
On a more practical level, the public purpose for granting the copyright monopoly is to provide an economic incentive to authors to encourage the creation and dissemination of works to promote learning. "By establishing a marketable right to the use of one's expression, copyright supplies the economic incentive to create and disseminate ideas." Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 558 (1985). The U.S. Government, however, needs no economic incentive for its employees either to create or to publish works when to do so is part of their official duties.
Moreover, although state judicial opinions are not the subject of this litigation, this Court may take judicial notice of West's claim for copyright of the opinions of state judges. Oasis Pub. Co. v. West Pub. Co., 924 F. Supp. 918 (D. Minn. 1996). A ruling for West in this case will serve as precedent for West's claim of copyright for state law. But in our federal system, states are sovereign entities, Seminole Tribe of Florida v. Florida, 517 U.S. 609, 116 S. Ct. 1114, 1122 (1996) ("each State is a sovereign entity in our federal system"), and the sovereign that makes law has a duty to provide the public with access to that law. Thus, adopting West's argument, federal copyright for law that vests control of access to the law in a private publisher means two things: 1) The federal government has abdicated a sovereign duty and, in doing so, 2) the federal government has invaded the sovereignty of state governments./Footnote25 Section 105 prevents the first, section 103 prevents the second.
While a private publisher has a right to publish law, it does not have the right to a copyright monopoly for its efforts. "Feist teaches that substantial effort alone cannot confer copyright status on an otherwise uncopyrightable work." Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693, 711 (2d Cir. 1992). Even a competitor can copy West's "annotated, expanded, and revised case reports." West's Brief, p. 21. This "may seem unfair," but it is not '"some unforeseen byproduct of a statutory scheme.' -Feist, 499 U.S. at 349. Rather, it is the way in which the public's access to law is guaranteed. It is the way censorship is avoided. It is the way that the sovereign power of the states is preserved. "It is . . .'the essence of copyright,' and a constitutional requirement." Feist, 499 U.S. at 349. Therefore, the order of the district court should be affirmed.
ARNALL GOLDEN & GREGORY LLP
Stephen M. Dorvee
2800 One Atlantic Center
1201 West Peachtree Street
Atlanta, Georgia 30309-3450
L. Ray Patterson
School of Law
University of Georgia
Athens, Georgia 30602
CERTIFICATE OF SERVICE
I hereby certify that I have this day served the following persons each with two copies of the accompanying brief, together with the Motion for Leave to File, by depositing same in the United States mail properly addressed with sufficient postage thereon.
James F. Rittinger, Esq.
Satterlee Stephens Burke & Burke LLP
230 Park Avenue
New York, New York 10169
Paul J. Ruskin, Esq.
72-08 243rd Street
Douglaston, New York 11303
Jon A. Baumgartner, Esq.
Proskauer Rose LLP
New York, New York 10036
This ___ day of November 1997.
Stephen M. Dorvee
/ West does not cite section 105 in its brief, and its amicus miscites it as section 104. Brief of Amicus Reed Elsevier, Inc., p. 1.
/ "As § 103 makes clear, copyright is not a tool by which a compilation author may keep others from using the facts or data he or she has collected. 'The most important point here is one that is commonly misunderstood today: copyright . . . has no effect one way or another on the copyright or public domain status of the preexisting materials.' H. R.Rep. at 57." Feist Publications, Inc. v. Rural Tel. Service Co., 499 U.S. 340, 359 (1991).
/ This follows from the fact that the only originality required for a compilation is the selection, coordination or arrangement of the material so that "the resulting work as a whole constitutes an original work of authorship." 17 U.S.C. § 101 (definition of compilation). And, of course, originality is a constitutional requirement for copyright. Feist, 499 U.S. 340, passim.
/ "A derivative work is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole represent an original work of authorship, is a 'derivative work.'" 17 U.S.C. § 101 (definition of derivative work).
/ "In construing a federal statute it is appropriate to assume that the ordinary meaning of the language that Congress employed 'accurately expresses the legislative purpose.'" Mills Music, Inc. v. Snyder, 469 U.S. 153, 164 (1985).
/ "The collection, editing, compilation, classification, arrangement, preparation of the material in said [telephone] directories (plaintiff's) involved a large amount of detail and required great effort, discretion, judgment, painstaking care, skill, labor, accuracy, experience and authorship of high order. . . .Said directories constitute new and original literary works, and are the proper subject of copyright." Leon, 91 F.2d at 485 (emphasis added).
/ See pp. 2-3 of West's Brief where West claims authorship for, inter alia, updating, revising, expanding and adding new citations based upon "editorial judgments," adding information of subsequent case developments, adding attorney-related data, and reorganizing procedural data in opinions. This really says only that West improves the marketability of the opinions (for the benefit of West). Such efforts are ministerial, not intellectual, and do not contribute to learning. The point of Feist is that copyright is not a reward for improving the marketability of a work, but for creating an original work, not for salesmanship, but authorship. This is why West's efforts "do not satisfy the minimum constitutional standards for copyright protection," any more than "[t]he selection, coordination, and arrangement of Rural's white pages." Feist, 499 U.S. at 362.
/ Claiming that "[i]t has long been settled that a publisher owns a protectable copyright interest in original editorial enhancements to judicial opinions," West's Brief, p. 21, West cites cases that were decided prior to the enactment of section 105 making copyright protection unavailable for U.S. Government works. Thus, West explains:
In Callaghan v. Myers, 128 U.S. 617, 647, 9 S. Ct. 177, 184 (1888), the Supreme Court held that the preparer of a volume of case reports is fully entitled to a copyright 'which will cover the matter which is the result of intellectual labor.' The courts have followed Callaghan consistently and found that any original editorial elements which a publisher adds to bare-bones judicial opinions are protected by the publisher's copyright. See, e.g., West Publishing Co. v. Lawyers Cooperative Publishing Co., 79 F. 756, 761 (2d Cir. 1897); West Publishing Co. v. Edward Thompson Co., 176 F. 833, 837 (2d Cir. 1910)." West's Brief, 21-22. (West does not explain the meaning of a "bare-bones judicial opinion.")
/ The first statute providing that government publications could not be copyrighted was a printing act in 1895 entitled "An Act providing for the public printing and binding and the distribution of public documents." That statute provided that the Public Printer could sell duplicate stereotype or electrotype plates from which any Government publication is printed. One of the provisos was "That no publication reprinted from such stereotype or electrotype plate and no other Government publication shall be copyrighted." Act of Jan. 12, 1895, 28 Stat. 608 (1895), printed in Copyright Enactments: Laws Passed in the United States Since 1783 Relating to Copyright, C.O. Bull. No. 3 (Revised) 55 (1973).
/ West has thus gone beyond its claim of copyright protection for the law by using the fiction of copyright for page numbers. West Pub. Co. v. Mead Data Central, Inc., 616 F. Supp. 1571 (D. Minn. 1985) (grant of preliminary injunction on copyright issue), aff'd 799 F.2d 1219 (8th Cir. 1986), cert. denied, 479 U.S. 1070 (1987). See Patterson & Joyce, "Monopolizing the Law: The Scope of Copyright Protection for Law Reports and Statutory Compilations," 36 U.C.L.A. L. Rev. 719 (1989).
/ West's WESTLAW copyright notice reads: "Copyright (c) 1997 by West Group. Copyright is not claimed as to any part of the original work prepared by a U.S. government officer or employee as part of that person's official duties. All rights reserved. No part of a WESTLAW transmission may be copied, downloaded, stored in a retrieval system, further transmitted or otherwise reproduced, stored, disseminated, transferred or use, in any form or by any means, except as permitted in the WESTLAW Subscriber Agreement or with West's prior written agreement. Each reproduction of any part of a WESTLAW transmission must contain notice of West's copyright as follows: 'Copr. (C) West 1997 No claim to orig. U.S. govt. works.'" (emphasis added) Translated, this language means that West, and only West, has the right to copy the text of cases contained in the database, and that it has the right to grant--or deny--others permission to do so.
/ West asserts that it "has never objected to the copying, even by competitors, of individual case reports, notwithstanding their protection by copyright. It is only the threat of wholesale copying of reports by a 'free-riding' competitor that compels West to assert and defend its clear entitlement to protection under the Copyright Act." West's Brief, p. 2 n. 2. In view of its WESTLAW copyright n/otice, the assertion is of dubious good faith. Moreover, in view of West's claim of "copyright protection to hundreds of thousands of case reports," Point II, West's Brief, p. 28, West may well be the "free-riding" champion of all time since it pays no royalty to the "author," the U.S. Government, for reproducing any one of these hundreds of thousands of cases. To paraphrase Churchill, never in the history of copyright has any publisher received such a large return for so small an investment as West has made in publishing judicial opinions royalty free.
/ Copyright protection for law was available in England, but never in the U.S. See Patterson & Joyce, "Monopolizing the Law," 36 U.C.L.A. L. Rev. 719, 723 n. 11 (1989). The Supreme Court, when it held in Wheaton v. Peters, 33 (8 Pet.) U. S. 591 (1834), that opinions of the Court could not be copyrighted was undoubtedly aware of the English custom by reason of its reliance on English precedent, which makes the ruling all the more meaningful.
/ See Building Officials & Code Admin. v. Code Technology, Inc., 628 F.2d 730, 734 (1st Cir. 1980) ("the very important and practical policy that citizens must have free access to the laws . . . is, at bottom, based on the concept of due process").
/ "[N]othing in the copyright statute would prevent an author from hoarding all of his works during the term of the copyright. In fact, this Court has held that a copyright owner has the capacity arbitrarily to refuse to license one who seeks to exploit the work. See Fox Film Corp. v. Doyal, 286 U.S. 123, 127 (1932)." Stewart v. Abend, 495 U.S. 207, 228-29 (1990).
/ For a comprehensive treatment of this topic, see Lyman Ray Patterson, Copyright in Historical Perspective (1968); for a shorter treatment, see Benjamin Kaplan, An Unhurried View of Copyright 4 (1967) ("To mangle Sir Henry Maine's aphorism, copyright has the look of being gradually secreted in the interstices of the censorship.")
/ The major decrees were the Star Chamber Decrees of 1586 and 1637, reprinted in Patterson, Copyright in Historical Perspective, supra.
/ The title to the English statute reads: "An act for the encouragement of learning [the Progress of Science], by vesting the copies [the exclusive Right] of printed books [Writings] in the authors or purchasers of such copies [authors], during the times therein mentioned [for limited Times]." The bracketed words are from the copyright clause, which reads as follows:
"The Congress shall have Power . . . To Promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." U.S. Const., Art. I § 8, cl. 8.
The copyright clause is in the intellectual property clause, which also contains the patent clause. The copyright clause is underlined. Note that the word science was used with its eighteenth century meaning of knowledge or learning, defined in part as: "The state or fact of knowing; knowledge or cognizance . . ." Oxford English Dictionary.
/ See L. Ray Patterson & Stanley Lindberg, The Nature of Copyright 23-27 (1991).
/ See Patterson, "Copyright and 'the exclusive Right' of Authors," 1 Jour. of Intell. Prop. Law. 1 (1993). Publication was a condition for copyright in every U.S. copyright statute until the 1976 Act. The reason, of course, was that publication ensures public access, essential for learning.
/ That copyright is to promote learning is worth emphasizing in view the statement of West's amicus Reed Elsevier that "the Copyright Clause and its underlying policy of inducing publication in the public service surely permit such authors to enjoy the benefits of copyright so as to promote the Progress of . . . useful Arts, by securing for limited Times to Authors . . . the exclusive Right to their respective Writings . . ." Reed Elsevier Brief, p. 29 (emphasis added). But it is the "Discoveries" of "Inventors" that promote "the progress of . . . useful Arts;" it is the "Writings" of "Authors" that promote "the Progress of Science," i.e., learning.
Reed Elsevier's error on this basic point suggests either it misunderstands the copyright clause or it seeks to have this Court misunderstand it. On the other hand, the slip may be Freudian. West's industrious collection and sweat-of-the-brow efforts are more appropriate for the useful arts than for writings.
/ Mitchell Bros. Film Group v. Cinema Adult Theater, 604 F.2d 852, 857 (5th Cir. 1979) ("Congress in not enacting an obscenity exception to copyrightability avoids . . . delicate First Amendment issues.")
/ The title of the 1790 U.S. Copyright Act was "An Act for the encouragement of learning, by securing the copies of maps, charts, and books, to the authors and proprietors of such copies during the times therein mentioned." 1 Stat. 124; 1st Cong., 2d Sess., c. 15. The language tracks the copyright clause because the 1790 Act was modelled on the Statute of Anne, from the title of which the drafters took the language for the copyright clause. The repeated use of the purpose of learning suggests that it was used with a serious purpose.
/ The first sale doctrine is that the copyright holder's exclusive right to sell a particular copy, e.g., a book, is exhausted with its first sale. This is why Bobbs-Merrill Co. v. Straus, supra, can be said to have limited copyright to the marketplace. Congress codified the first sale doctrine in both the 1909 and the 1976 Acts. 17 U.S.C. § 27 (1909 Act); 17 U.S.C. § 109.
/ The problem is exacerbated by the fact that copyright law is exclusively federal law. Thus, the copyright statute preempts state law and denies the states any right to adjudicate the claim of West that it has a copyright for state law. 17 U.S.C. § 301.