10/05/96 HyperLaw, Inc.®
I, Alan D. Sugarman, an attorney admitted to this Court, makes the following affirmation.
1. This Affirmation describes misstatements of fact and mistaken conclusions occurring in the Supplemental Affidavit of Donna Bergsgaard In Opposition to HyperLaw's Motion For Summary Judgment ("Sup.Aff.") and the statements made in the other opposition papers.
2. Ms. Bergsgaard's Supplemental Affidavit purports to provide information to justify the copyrightability of the selection and arrangement of cases published in West's Supreme Court Reporter and Federal Reporter.
3. The affidavit attempts to provide new examples of West "enhancements" not described in discovery responses or deposition testimony.
4. Once again, West has refused to go through a volume of its Supreme Court or Federal Reporter and state for the Court what changes it makes, and state the basis for its claim that the changes are sufficient for copyright protection.
5. On at least 5 occasions, HyperLaw has attempted to get West to simply state what changes West claims it makes to an actual volume of text, and the corresponding bases for copyright claims: twice in letters, twice in discovery, and (most recently) in its motion for summary judgment.
6. HyperLaw's complaint in this cause alleges that West has never stated what changes it made to 1 F.3d, and the bases for any copyright claims in the text of judicial opinions in that volume. West has never done this.
WEST'S EXAMPLE—THE DAYHOFF CASE:
JUST CHANGES MADE BY A COURT
FOR WHICH WEST SEEKS COPYRIGHT
(CHANGES A REASONABLE READER COULD NOT IDENTIFY)
7. Ms. Bergsgaard refers to the Dayhoff case (86 F.3d 1287, Sup.Aff. Exhibit 8) to advance the peculiar proposition that when West follows the instruction of a court to incorporate an amendment into an initial opinion, West should obtain a copyright on the resulting opinion:
Sometimes we elect to report the correcting order itself and arrange it as a "combine" with our report of the original opinion. Other times we decide to revise the affected text of our case report to incorporate the changes. For example, Exhibit 8 is a copy of an order amending the Third Circuit's opinion in Dayhoff, Inc. v. H.J. Heinz Co., 86 F.3d 1287 (3rd Cir. 1996). Also, attached as Exhibit 8 is a copy of West's report of that decision. As can be seen from comparing the case report (see 86 F.3d at 1303). we combined a portion of the correction order with our report of the original decision. but also incorporated the correction itself into the body of the West case report. (Emphasis added.)
8. The original opinion in Dayhoff was filed June 24, 1996.
9. On July 24, 1996, the Court amended its opinion (included in Supplemental Exhibit 8.)
10. When the court amended its opinion, the court included instructions on insertion—by with an order.
At [a specified point in the text], two paragraphs
reading as follows shall be inserted.
West simply followed the instructions of the court on page 1296 (included as a part of Bergsgaard Supplemental Exhibit 8) and inserted the amending paragraphs in its case reports.
11. West now seeks a copyright based on that effort.
12. Additionally, absolutely nothing on page 1296 (or anywhere else) indicates whether the two paragraphs starting in the second column were inserted by West's decision or a decision which comes from the amending order of the court.
13. West has perfectly illustrated the point HyperLaw made in it motion—it made what it calls a "change", but did only what a court ordered. Moreover, West did not note anywhere that the "change" was made exactly where and how the judge defined it in a specific court order.
14. Neither HyperLaw or any other reader could determine, by a comparative reading of the original case and West's reporter, that the Court (rather than West) had changed the opinion.
15. A reader following the instructions West gave to HyperLaw and others, regarding how its own "changes" can be identified, would incorrectly believe that West had made the changes.
16. No reasonable reader can determine which changes in the text of court decisions in its reporters were made by courts, and which were made by West.
WEST'S OWN EXAMPLE DEMONSTRATES THE
WHAT WEST CALLS COMBINES
ARE COMMON, MECHANISTIC CHANGES
17. West also uses this same Bergsgaard Supplemental Exhibit 8 to illustrate what it calls a 'combine" which Ms. Bergsgaard (finally) defines as follows:
Sometimes we elect to report the correcting order itself and arrange it as a "combine" with our report of the original opinion. (Emphasis added.)
This is demonstrated on page 1303 where the order denying rehearing appears. Here, West seeks a copyright for having done nothing more than placing two contemporaneous orders in the same case together. (This is done by West when the second order is available before the first is printed.) This is West's example of its mysterious, creative "combine" arrangement methodology. It is-an utterly common, mechanical, simplistic ordering of cases—one used by virtually all reporters from the dawn of the reporting of cases. The "secret sauce" is ketchup. A "combine" puts two orders in the same case together if, coincidentally, they happen to come out closely enough in time so that it can be accomplished prior to the printing of the permanent edition.
18. In addition, it is high irony that the Dayhoff case report selected by Ms. Bergsgaard to illustrate a "combine" appeared in an advance sheet volume No. 31 first published by West on July 29, 1996: — the "combine" does not appear therein, even though the court had already issued its amending order. According to the inside first page of the advance sheet, the closing date for advance sheet volume 31 was August 19, 1996. By August 19, West apparently discovered its "mistake" and made the amendment as instructed by the court; appending the part of the order denying a rehearing to the end of the case report. In other words, West's "idea" about combining the two did not occur to them when they first reviewed the cases—but did after the court ordered it. (Interestingly, this revelation occurred merely two weeks after this Court denied West's motion to dismiss HyperLaw.)
19. West asserts that appending the July 24, 1996 order to the June 24, 1996 opinion, it has created a copyrighted work. However, the publisher of a print product has essentially three options when deciding how to arrange an order affecting an previous opinion: (1) place the order next to the opinion it affects, (2) place it elsewhere in the book, or (3) place the order in the next current volume to be released. Of course, if the opinion has already appeared in permanent volumes, the publisher has no choice but to place the order in a separate volume—so West really has only two options.
20. In Dayhoff, West had the amending order in time to include in the permanent volume. West claims a copyright, and to bolster the claimed creativity, concocts fanciful names like "combine" and "precede-and-follow" to describe one of the two or three options available to all publishers—and used universally forever.
DAYHOFF ALSO EXPOSES THE CLAIM OF
ARRANGEMENT REGARDING STAR PAGINATION
21. West, not HyperLaw selected the Dayhoff case as an example.
22. The Dayhoff exhibit illustrates another facet relating to a West claim—that there is originality or creativity in its case reports beyond the syllabi, digests, and key number system resulting a copyrightability of the the internal star-page numbers. I have attached hereto as HyperLaw Exhibit 11 the Dayhoff case as it appears in the advance sheet volume of 86 F.3d, interleaved with the same case report as it appeared in the permanent volume of 86 F.3d. This shows that the West star-pagination breaks are completely different in the advance sheet as compared to the pagination breaks of the same case in the permanent bound volume, which fact is not disclosed in any way to the reader.
23. Thus, the documents submitted by West have now shown that there are at least four different ways in which West may break pages for star pagination for the very same case report: (1) the breaks occurring in the printed advance sheet, (2) the Westlaw version of the advance sheet, (3) the different breaks in the printed permanent version, and (4) the Westlaw version of the permanent version. These conflicting "arrangement" decisions from West's own example shows that the arrangement of star pagination consists of automated page breaks, with no creativity whatsoever.
WEST'S BLUEBONNET WAREHOUSE EXAMPLE
DISPROVES WEST'S CLAIM THAT "ENORMOUS DIFFERENCES"
MAY BE "EASILY DEMONSTRATED".
24. It is not at all apparent what point West is attempting to make by filing Bergsgaard's Supplemental Exhibit 5, which is a Seventh Circuit slip opinion—Bluebonnet Warehouse, dated July 17, 1996. It is placed together with Ms. Bergsgaard's Supplemental Exhibit 6, which is West's case report for Bluebonnet as it appeared at 89 F.3d 292.) According to Ms. Bergsgaard, at page 11, comparison of the decisions as issued with the actual case reports of those decisions easily demonstrates the enormous difference between the two.
25. HyperLaw has repeatedly asked West (and asked the Court to ask West) to state what changes West makes to text on an actual volume of its reporter. West has not done this.
26. Notably absent from Bluebonnet (and all of West's other examples) is a mark-up showing all of these "easily demonstrated differences." Other than the headnotes and syllabi and the addition of counsel names (which were obtained from the court), I am not able to discern any enormous differences. Indeed, I cannot discern any difference except for: (1) a reference to a rehearing and (2) a footnote on the first page. (And there is no indication whatsoever in the West case report that this information was actually added by the court rather than West!) Attached as a HyperLaw Exhibit 12 are the first pages of the Ninth Circuit slip opinion in Gomez v. Garcia, originally filed April 5, 1996 and amended on June 28, 1996. This opinion shows the Ninth Circuit adding "file lines" such as "amended June 28, 1996" and "The petition for rehearing is Denied" and even doing a "combine" by placing the amending order with the opinion.
THE SEQUENCE OF FULL REPORTS OF SUPREME COURT OPINIONS IN SUPREME COURT REPORTER IS VIRTUALLY THE SAME ORDER USED BY THE UNITED STATES SUPREME COURT IN UNITED STATES REPORTS
27. Bergsgaard's Affidavit (at page 3, paragraphs 5-6) states that...headnoted case reports are then arranged by filing date and then, within the filing date, by seniority of the Justice and then by docket number. Per curiam opinions are placed at the end of this arrangement..]\
Separate opinions within a single captioned case report, such as concurring and dissenting opinions, are reported by seniority of the authoring Justice.
Once again, it is not clear why Ms. Bergsgaard makes this statement to support West creativity and originality. The rule of arranging opinions enunciated by Ms. Bergsgaard is exactly the same sequencing rule used by the Reporter of Opinions of the Supreme Court.
28. Inspection of a volume of the United States Reports shows that the opinions are ordered by date, seniority etc. in exactly the same manner.
29. I have carefully analyzed the sequence of opinions in the United States Reports and have had correspondence with the Reporter of Decisions on this subject. See correspondence between Alan D. Sugarman and Frank Wagner, Reporter of Decisions, United States Supreme Court, HyperLaw Exhibit 13. The Reporter of Decision of the Court acknowledges that HyperLaw has accurately described the sequencing of opinions. See Letter Dated June 2, 1993 from Frank Wagner to Alan D. Sugarman. (The Reporter further indicates the routine communications between the Reporter's office and some publishers providing them with the publication information.)
30. Attached hereto as Exhibit 15 is an analysis of the 1990 Term Supreme Court opinions appearing in volume 111 of Supreme Court Reporter and compares this ordering to the ordering in volumes 498 to 501 of United States Reports. In one or two instances West's sequencing ignores its alleged "rules"—as these one or two opinions are out of date order. (These are set out in bold type.)
31. In short, West follows the same non-original organization followed by the Reporter of Decisions of the Court, with minor variations, if any.
32. Although Ms. Bergsgaard (at Par. 12) claims that "West editors may override the general arrangement guidelines for Supreme Court Reporter to create combines, precedes-and-follows, same-volume-and-issue, file lines and corrections", West editors did not do so in West's example (volume 111).
33. West claims rest on a post facto effort to invent a system out of one or two errors or anomalies out of thousands of cases—not in what it does. Moreover, West seems to assert that it is entitled to a copyright because it made the "choice" to adopt the very same arrangement as the court issuing the opinion.
FEDERAL REPORTER IS IN THE ORDER DESCRIBED IN
HYPERLAW'S MOVING PAPERS
34. Ms. Bergsgaard does not discuss the detailed exhibits that HyperLaw provided in it moving papers demonstrating that that the essential arrangement of opinions in the Federal Reporter are by circuit and then by date. See HyperLaw Exhibit 1-24 and 1-29. These exhibits are more specific than a couple of anecdotal illustrations gleaned from disparate West volumes without any methodical approach. In short, when a publisher prints thousands of cases, there will be a few odd situations. West seeks to use a handful of such "example" to try to overcome the thousands.
35. Ms. Bergsgaard similarly avoids the entire topic of how opinions are selected for full reporting in the Federal Reporter.
36. It is critical to note that West, in its response to the 3(g) statement, apparently does now concede that the Federal Reporter "does not include the text of opinions of the United States Courts of Appeals where the Circuit Court issuing the opinion designates as 'unpublished', 'not for publication', or 'not citable as authority.'" See Response 109 in West's Statement of Disputed Material Facts Pursuant to Rule 3(g).
37. However, West, does not concede that the Federal Reporter contains the text of all opinions "citable as authority under the rules of the Circuit Court issuing the opinion." Id., Response 108.
38. At Response 83, West wiggles out of what West means by the term "published" opinions as used by West in the context of the Federal Reporter. However, Ms. Bergsgaard in her affidavits does not identify any published or citable opinions of Circuit Courts that West for which West has not published the full text in the Federal Reporter.
39. I have previously testified to this Court as to how HyperLaw maintains a database of opinions it downloads from the Circuit Courts and how HyperLaw methodically inserts the first page citations from West's Federal Reporter in HyperLaw's database. In the last few years, I am not aware of anything more than one or two random errors where any opinions from Circuit Courts marked for publication, or citable which I have been unable to locate in the Federal Reporter. (Perhaps Ms. Bergsgaard may find an anecdotal published opinion that was not published in the Federal Reporter — but, interestingly, she has not even done that, and certainly is unable to provide a list for a particular period of numerous published opinions not included in the Federal Reporter.)
40. West has also taken credit for the various tables of unpublished opinions appearing in the Federal Reporter.
41. It is instructive to review the tables of "Decisions Without Published Opinions" appearing in a typical West volumes, such as at 86 F.3d 1146. Even though West professes not to have a definition for the word "published", West certainly uses the phrase "published" with precision on pages 1146, 1148, 1155, 1158, 1159, 1161, 1167, 1168, and 1173.
42. The Court's attention is drawn to 86 F.3d 1173, where at the beginning of Federal Circuit table the following appears:
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
The following opinions, judgments or affirmance without opinion and dismissal orders will not be published in a printed volume because they do not add significantly to the body of law and are not of widespread interest. They are public record. They are not citable as precedent. These dispositions will appear in tables published periodically.
West does not indicate the source of this statement, however, each unpublished or non-precedential opinion of the Federal Circuit contains the following statement:
NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition is not citable as precedent. It is a public record. The disposition will appear in tables published periodically.
The Federal Circuit tables to which this note refers are the tables published by West in the Federal Reporter. So, here to, West is either following the instruction of the respective court, or copying the court's work.
43. The Ninth Circuit table titled Decisions Without Reported Opinions at 86 F.3d 1161 is representative. The corresponding Ninth Circuit rule states:
CIRCUIT RULE 36-6PERIODIC NOTICE TO PUBLISHING COMPANIES
A list of all cases that have been decided by written unpublished disposition will be made available periodically to legal publishing companies for notation in its reports. The list shall set forth concluding disposition in each case, such as, "Affirmed," "Reversed," "Dismissed," or "Enforced."
FIFTH CIRCUIT INTERNAL OPERATING PROCEDURES
This appears to be more than a statement of fact, and suggests that the lists of unpublished opinions are being provided by the Fifth Circuit to West for publication in the format desired by the Fifth Circuit.
See, HyperLaw Exhibit 16 appended hereto. Thus, the explicit reference is to the Federal Reporter.
47. The Fourth Circuit is equally forthright in specifying how West is to handle unpublished opinions:
48. Similarly, the District of Columbia Circuit in its opinions marked for publication is again quite specific that these opinions are to be published in the Federal Reporter:
See HyperLaw Exhibit 16.
49. Similarly, the Fifth Circuit distinguishes opinions designated for publication in the Federal Reporter. As recently as On October 30, 1996 the electronic bulletin board of the Fifth Circuit, which makes new published opinions available, carried the following notice:
50. The foregoing is based upon the only public records available to HyperLaw: West objected to discovery of its dealings with the Fifth Circuit and other federal courts on these issues and refused to answer questions relating thereto. Accordingly, West cannot now be heard to make new claims regarding facts relating to its dealings with these courts.
51. West assiduously avoids any type of page by page, case by case analysis of even a single volume of one of its reporters. Ms. Bergsgaard's attempts at statistical analysis are clever, but fail, not only by definition, but in the lack of supporting foundation, as shown by the bald assertion that "taking volume 112 as representative, more than 6% of the full case reports and mems contain file lines or are combines."
52. Ms. Bergsgaard's statistic treats in identical fashion so-called 'file lines' and combines. Ms. Bergsgaard had the opportunity to provide the court with substantiation for her statement, and, a breakdown of full case (or better yet a full volume) of file lines, of full case combines, of mem file lines, and mem of combines. West did not do so in discovery, in response to specific questions at deposition of Ms. Bergsgaard, or in its responsive papers here.
53. Although West's responsive papers to both HyperLaw's motion and Matthew Bender's motions contain inch thick examples of raw copies from books and print-outs from CD-ROMs, without any supporting analysis, West refuses to provide HyperLaw or the Court with meaningful back-up information for its conclusory assertions and junk statistics.
54. Similarly, for the purposes of determining West copyrights in the Federal Reporter and the Supreme Court Reporter, West practices pertaining to its other reporters are irrelevant smokescreen—statements such as "West makes different choices for reporting different states' decisions within one Reporter, and for different Reporters. Id. at par. 15 or "West chooses to collection opinions from over 600 courts and 3,500 judges" id. at par. 25. Here, West is merely attempting to suggest more sweat of the brow, and suggests some elaborate process by which West, starting in a massive mail room with green shaded clerks sifting through opinions from different jurisdictions. If fact, case reports for the courts at issue in the Federal Reporter and the Supreme Court Reporter are delivered to West in a focused manner. (West is the slip opinion printer in the Fifth, Eleventh, First, and District of Columbia Circuits, and Thomson Publishing Company, a Canadian company which recently acquired West, is the slip printer in the Ninth and Fourth Circuit.
55. Thus, in at least six circuits West knows which cases to publish in full in the Federal Reporter because the paper and electronic files are sitting in the West editorial offices, and, West merely transfers the electronic files over into its system.
56. Ms. Bergsgaard claims that "HyperLaw mischaracterizes the manner in which West prints slip opinions for the Fifth and Eleventh Circuit. The contract is competitively bid." Id. at Par. 20. This is a bold assertion, unsupported by any documentation, which is at conflict with the fact that both of these Circuits (which at one time were one circuit) use West and only West as its slip printer, because apparently those circuits wish to have the slip opinions contain the West digests and summaries.
57. Ms. Bergsgaard does not specify even one micharacterization made by HyperLaw. West loads onto Westlaw Fifth and Eleventh Circuit slip opinion (together with West headnotes) only hours after release of the opinions by those Courts. The West printed case reports appear to the untrained and even trained eye as virtually identical to the slip opinion West printed for the Fifth Circuit.
58. Ms. Bergsgaard claims that "West's correction process is inaccurately discussed throughout HyperLaw's Memorandum" id. at 21, but fails to provide any specific examples of micharacterization.
59. Ms. Bergsgaard claims at Par. 22 that "HyperLaw misleads the Court on pages 15 and 16 of its Memorandum by listing only a small number of the types of changes that West makes." Id. at 22. But Ms. Bergsgaard was examined at length as to the changes made by West to the text of opinions. After hours of examination, Ms. Bergsgaard finally admitted she could think of no other changes made by West. Now, without providing any specificity whatsoever, Ms. Bergsgaard now suggests there are more types of changes, but will not tell anyone including the Court what these new elements are.
60. Ms. Bergsgaard then alleges that "HyperLaw makes numerous assertions based upon its review of 100 pages of West dead copy. However, changes and corrections to court opinions are made throughout the publication process and continue after publication. West does keep track of the changes and who made them." But Ms. Bergsgaard does not disclose any specific changes to the first volume of 1 Federal Reporter not shown in HyperLaw's list of changes. (HyperLaw's complaint makes specific reference to this volume.)
61. In addition, Ms. Bergsgaard was questioned at length about this volume and these pages, and, stated there were no other changes of which she was aware.
62. Ms. Bergsgaard also stated in deposition that there were no documents other than the dead copy produced to HyperLaw which would show other changes made by West. Now, she reverses her testimony and claims there are other documents including "changes made directly on the page proofs of advance sheet pages" and claims that "changes and corrections are noted on the advance sheet page proofs " (significantly, Ms. Bergsgaard does not provide any of this other documentary proof with respect to 1 Federal Reporter, Third Series).
EXAMPLES OF WEST CASE REPORTS HEREIN FILED AS EXHIBITS SHOW THAT WEST'S CHANGES TO THE NAMES OF PARTIES IS BOTH
63. West submits Supplemental Exhibits 1 and 2 (Sup.Aff. at 9) for the proposition that "West captions certainly are not copies of court captions as issued, as HyperLaw states." Although this is irrelevant to the issues at hand, it is also a disingenuous example for the following reasons.
64. Bergsgaard Supplemental Exhibit 1 is the cover page to a 1992 Seventh Circuit slip opinion (Matter of Luster) which is a consolidated appeal of two district court cases. West combined the two cases into one. Bergsgaard Supplemental Exhibit 2 is the caption to the opinions it appeared at 981 F.2d 277.
65. West asserts that it may obtain copyright protection for the compilation due to its infrequent, sweat of the brow combining of party names.
66. West's example demonstrates that the change in party names provided by Ms. Bergsgaard is the minuscule exception to West's almost uniform practice. As demonstrated below, West almost uses the party names without change from the court's original in virtually all cases.
67. When Bergsgaard Supplemental Exhibit 2 is compared to Bergsgaard Supplemental Exhibit 8, it is apparent that a reader cannot distinguish between on one-hand a West case report where names of parties are slightly edited by West (Bergsgaard Supplemental Exhibits 1 and 2) and with on the other hand a case report where the names of parties are copied verbatim by West from the court's opinion (See e.g., Bergsgaard Supplemental Exhibit 8).
68. All other samples of West opinions filed by West, HyperLaw and Matthew Bender herein demonstrates that West does not change the names of parties as provided by the courts (except to occasionally delete "et al"). This is illustrated by simple inspection of other case reports filed as exhibits. See case report dead copy at HyperLaw Exhibit 1-1 and HyperLaw Exhibit 1-2. Compare the names of parties in Bergsgaard Supplemental Exhibit 5 with Bergsgaard Supplemental Exhibit 6.
69. Attached hereto as Exhibit 14 is the Affidavit of Kendall F. Svengalis, State Law Librarian for the State of Rhode Island. Mr. Svengalis has reviewed opinions the official reports from a number of jurisdictions and compared the captions in those official reports to those appearing in the West case report for the same opinion and reaches conclusions similar to my own. He has as well reviewed the arrangement in the United States Reports and Federal Reporter and reached similar conclusions.
EXHIBITS:
THIS SUMMARY ORDER WILL NOT BE PUBLISHED IN THE FEDERAL REPORTER
LOCAL RULE 36(B). UNPUBLISHED DISPOSITIONS.
The Federal Reporter periodically lists the result in all cases involving unpublished opinions. Notice: This opinion is subject to formal revision before publication in the Federal Reporter or U.S.App.D.C. Reports. Users are requested to notify the Clerk of any formal errors in order that corrections made be made before the bound volumes go to press.
Please Note: Opinions are maintained on this system for 30 days from date of the opinion. During this 30 day period, the opinion is subject to corrections prior and subsequent to the printing process, and to its availability in the Advance Sheets of the Federal Reporter.
AN INFREQUENT ANOMALY, AND IS TOTALLY MECHANICAL.
HyperLaw Exhibit 11 Comparison of Dayhoff case report in Advance Sheet and in Permanent Bound Volume.
HyperLaw Exhibit 12 Ninth Circuit Slip Opinion Illustrating Combines and File Lines Inserted by the Court.
HyperLaw Exhibit 13 Correspondence between Alan D. Sugarman and Frank Wagner, Reporter of Decisions, United States Supreme Court.
HyperLaw Exhibit 14 Affidavit of Kendall Svengalis dated November 4, 1996
HyperLaw Exhibit 15 Table Comparing Arrangement of Opinions in Volume 111 of Supreme Court Reporter with Arrangement in United States Reports.
HyperLaw Exhibit 16 Rules, Procedures, and Policies of Circuit Courts Excerpts
SO AFFIRMED
_______________________________________
ALAN D. SUGARMAN
November 4, 1996
_______________________________