11/26/96 HyperLaw, Inc.®


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On November 22, 1996, Judge Martin heard oral argument on the motions of Matthew Bender and HyperLaw for summary judgment against West and granted summary judgment on star- pagination. 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 both HyperLaw's and Matthew Bender's motions on star-pagination. At points for discussion purpose Judge Martin characterized the star-pagination motions as the Matthew Bender's issues and the text copyright motion as HyperLaw issues. HyperLaw's motion. Matthew Bender has a parallel action against West in which some of the same text issues are raised.

Table of Contents. [to be revised]

  • Summary Judgment re Star-Pagination Summary
  • Court's Fair Use Analysis -- Star Pagination
  • Text Issues Analysis


  • Page Breaks are Accidents
    THE COURT: The essence of the protectable expression here, the essence of the protectable compilation has nothing to do with the accident as to the page upon which a particular portion of text falls. MR. MUSILEK: Your Honor, the arrangement has everything to do with where case reports are found in volumes and how they are displayed and how they are reported by West.
  • Why We Fought the Revolution

    THE COURT: That is what the framers meant in Article 1, Section 8: The progress of science in the useful arts, deciding which parallel citation to use.
    MR. MUSILEK: Absolutely, your Honor.
    THE COURT: I knew we fought the Revolution for some reason and now I know.
  • Court: why can't they reproduce the West compilation by simply using the first page? (paraphrase)
  • "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 deiced 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."

    	v.							94 Civ. 0589 (JSM)
    ------------------------------ x
    November 22, 1996
    2:35 p.m.
    New York, N.Y.
    		HON.  JOHN S. MARTIN, JR.,
    		District Judge
    	Attorney for plaintiff (Matthew Bender)
    MORGAN CHU (Argued)
    Page 2
    APPEARANCES (cont'd)
    	Attorney for defendant West Publishing
    CARL J. HARTMANN (Argued)
    Attorneys for Intervenor-Plaintiff (HyperLaw)
    	(In open court)
    	THE COURT: Let me start by saying I have reviewed the papers, and when I 
    tell my law clerk to set an hour down for an argument I don't really expect to 
    have to respond to three different calls from lawyers telling them I really did 
    mean what I said.  My law clerks have other things to do than to respond to 
    phone calls and I really don't appreciate that type of conduct.
    	Now, let's talk about the issues.  It seems to me that for the sake of 
    this argument, we can take it assumed that when West puts together a volume of 
    the Federal Reporter there is a compilation that is entitled to copyright 
    protection.  However, I think that is not what's at issue in this case.
    	The issue is, as I see it in this case, starts, to quote from Judge 
    Leval's opinion in CCC Information Services, "The facts set forth in the 
    compilation are not protected and may be freely copied.  The protection extends
    Page 3
    only to those aspects of the compilation that embody the original creation of 
    	Now, let's talk first about the Matthew Bender case.  There is no question 
    that if Matthew Bender took a volume of F.3d, ran it through its Xerox machine 
    or its computer and printed it out and called it Bender's Federal Third 
    Reporter, that that would violate West's copyright.
    	But it seems to me to start with the proposition that the title and the 
    citation to a West reported decision are facts, facts that anybody is free to 
    use.  It is a fact that the opinion of Judge Leval is reported at 44 F.3rd 61.  
    That is not as a result of the creative activity that West engaged in to put 
    that page at, they didn't decide that the best place for the Leval opinion is 
    at 44 F.2d page 61.  They decided that a group of cases should be compiled 
    together in a certain order, and a consequence of that compilation was that the 
    case with that title appeared at that page.    That's a fact.
    	It is a fact that the words in Judge Leval's opinion beginning 
    "compilations that devise new and useful selections" and ending with the words 
    "McLean, Hunt" appear on page 66 of 44 F.2d. That's a fact.
    	Again, that is a consequence of the way the compilation is put together, 
    but it is not any part of the aspect of the compilation that embody the 
    original creation
    Page 4
    of the compiler.
    	Why don't I have West's counsel address themselves to that part of the 
    	MR. MUSILEK: Your Honor, I am Joe Musilek and I will be speaking on behalf 
    of West this afternoon.
    	Addressing just those first two questions, your Honor, there is a 
    difference in the law between pre-existing facts which exist independent of the 
    work and facts which result as a result of the creation of the work.  And to 
    make the most easiest example I can think of, everyone has an address, a name 
    and a telephone number regardless of whether or not those are ever compiled 
    into a telephone directory.  However, a slip opinion from Judge Leval does not 
    have a volume number, West Reporter publication name and page number 
    independent of the compilation and creation of an arrangement by West in 
    Federal Supplement or Federal Reporter.
    	Your Honor, a novel which is clearly completely comprised of the original 
    writings of the author is clearly copyrightable and yet it is also true that I 
    could say it is a fact that this novel says this.
    	THE COURT: But every word in the novel is the author's original creation.  
    That's not case you have here.
    	MR. MUSILEK: Your Honor, after the novel is created it is in fact the 
    case.  Those facts did not exist
    Page 5
    prior to their being written down and put into a novel but after that they are 
    fact.  And if I start off by saying it is a fact that this novel says, and then 
    reproduce the novel, I cannot rely on, as my defense, that I have only stated a 
    fact, your Honor.  You have taken the say essence of the protectable 
    	THE COURT: The essence of the protectable expression here, the essence of 
    the protectable compilation has nothing to do with the accident as to the page 
    upon which a particular portion of text falls.
    	MR. MUSILEK: Your Honor, the arrangement has everything to do with where 
    case reports are found in volumes and how they are displayed and how they are 
    reported by West.
    	It is a group of slip opinions that come into West that are arranged in a 
    volume.  If not for the citation, if not for the very material that's copied by 
    Matthew Bender, there would be no arrangement.
    	I think I would cite to you, your Honor, back to the CCC case, which is 
    very good on this point in stating that very clearly, obviously you have to 
    have facts and you can't copyright them; but to the extent a compilation, the 
    protectable expression in a compilation is an arrangement, anything that copies 
    that arrangement is indeed copying the
    Page 6
    protectable expression.  That really in a nutshell is the sum and substance of 
    West's position on star pagination, your.  And you cannot rely on the defense 
    that these are facts because they are not the kind of pre-existing facts dealt 
    with by the Supreme Court in Feist.  They are not the kind of pre-existing 
    facts, namely what a used car is sold for at auction in the CCC case.
    	THE COURT: In CCC, Judge Leval I'm not sure would have found what the used 
    car price was alone.  It was because that was combined with certain judgments 
    by the author as to those valuations that he found them protected.
    	MR. MUSILEK: I think that's correct.  But what the judge in CCC also 
    found, what the court found in that decision was that an arrangement, in other 
    words the ordering by even something as simple as the geographic region from 
    which the car sales were compiled, was sufficient.
    	THE COURT: Are you telling me every time I write an opinion in which I 
    give the citation to a West opinion, I violate West's copyright because I put 
    down the name of the case and the citation?
    	MR. MUSILEK: Absolutely not, your Honor, because you are citing to a West 
    Reporter.  You are referring the reader to a West Reporter.
    	And in the singular sense what we are talking
    Page 7
    about here --
    	THE COURT: What does that have to do with
    whether or not that citation is protectable?
    	MR. MUSILEK: Because, your Honor, the issue here isn't a compilation 
    copyright.  It is not any one piece of it that is claimed to be copyrightable.  
    It is a protectable expression of the entire work as a whole.
    	The works we are talking about here are advance sheets and bound volumes 
    of a reporter, not an individual citation.  So no issue even arises when you 
    simply cite someone to a citation in a West book.  This is only an issue in 
    this case in star pagination because you are talking about providing someone 
    else with a copy of the entirety of the West arrangement.
    	So it goes far beyond.  And I think it is truly a red herring for Matthew 
    Bender or HyperLaw to try to make reference of the need of the bar to access to 
    the law, the need of judges and lawyers to cite to West cases.  That is not the 
    issue here.  All that is in issue here is whether a commercial, for-profit 
    competitor of West may copy West's arrangements in their entirety.
    	THE COURT: They are not copying your arrangements in their entirety.  All 
    they are doing is making reference in copies that they make.  Matthew Bender 
    doesn't copy any of the text that's in West.  All it is
    Page 8
    doing is making reference to a specific cites within a West Reporter.
    	MR. MUSILEK: Your Honor, that is not what they are doing.  What they are 
    attempting to do is supplant the market for West's books by providing a copy --
    	THE COURT: That's absolutely true.  But they are not --
    	Look, I think the best case for you would be if they took the Federal 
    Rules decision and put out a CD ROM called Bender's Federal Rules Decision in 
    which they simply took all of the cases that you have on Federal Rules 
    decisions and used those.  That would be using your compilation because they 
    would take the skill that and creativity you used in selecting those cases for 
    publication and using them to their own benefit.
    	But that's not the case here.  They have put on the CD ROM cases that are 
    some reported by West, others that are not.
    	MR. MUSILEK: Your Honor, that's a very important point and I'm glad you 
    raised it because that's is another red herring in the law of copyright 
    infringement.  Judge Preska, your fellow judge on this bench, in the Robinson 
    case in 1995 addressed that issue.  And the point of law which is not in 
    controversy is that it does not matter how much additional other material is in 
    the infringing work.
    Page 9
    	All that matters is how much of the original work did they copy.
    You can not get outside of a copyright infringement by copying the West 
    arrangement and then throwing in a bunch of nondispositive orders and 
    scheduling orders and whatever and say: Oh, we have a lot of things West 
    doesn't have.
    	The point is, your Honor, and I think it is most evidenced most clearly by 
    the Tritippo affidavit submitted in conjunction with this motion, by taking the 
    Matthew Bender product you can recreate an entire volume of case reports from 
    New York Supplement, with every page break, every page number, every volume 
    designation, every publication title name as if you had the West book.
    	The statutory definition of "copies" in the Copyright Act makes it clear 
    that's an infringement.  Nimmer On Copyright, a treatise written by one of the 
    counsel for Matthew Bender says in unequivocal terms that such copying 
    constitutes an infringement when it is input into the computer, and nothing you 
    do thereafter, whether it to be to strip out additional material or add in 
    other noninfringing material can remove the infringement that occurs at that 
    	The Tritippo affidavit shows that using the
    Matthew Bender product you can print out volumes of West
    Page 10
    Reporters, you can printout individual pages of West Reporters.  That can only 
    be because they have copied West's arrangement.  Without copying West's 
    arrangement, that could not be done.
    	THE COURT: Sure it could because the computer could sort anything but 
    	MR. MUSILEK: Your Honor, I can go out and knock on doors and come up with 
    names and addresses and telephone numbers for everyone on the block.  I defy 
    Matthew Bender's counsel to stand up and tell you that they can go out without 
    reference to a West book and find those facts outside of a West book and star 
    page to West Reporters. it cannot be done.  That is the critical difference 
    between the facts that are addressed in Feist and the protectable expression 
    that is at issue when you talk about star pagination.
    	THE COURT: Let me hear from counsel to Matthew Bender.
    	MR. CHU: Good afternoon, your Honor.  Morgan Chu and Elliot Brown from 
    Irell & Manella for Matthew Bender.  The principal argument being made by West 
    is that there is protectable copyrightable expression in a series of Arabic 
    numerals that are in order, 1, 2, 3, 4, and are inserted by a computer.  It is 
    an astounding position and we have nothing to add to our briefs.
    Page 11
    	THE COURT: All right.  Let's talk then about the HyperLaw.  Let me ask 
    counsel for West the following question.  
    	Assume Justice O'Connor said to her law clerk: I'm giving a lecture over 
    Georgetown Law School tonight and I want the students to have a copy of my 
    opinion in Feist v. Rule Telephone.  Go to the Supreme Court Reporter, just 
    copy the caption and then that portion of the report that begins "O'Connor, J. 
    delivered the opinion of the court.
    	That is done.
    	Has Justice O'Connor violated your copyright?
    	MR. MUSILEK: Justice O'Connor clearly has not for two reasons.
    	One, under the standard of de minimus copying, which we cite in our briefs 
    and as the Warner v. ABC case in the Second Circuit which stands for that 
    proposition, de minimus copying even of copyrighted material is not an 
    infringement, does not rise to the level of an infringement.
    	Two, it would certainly be a fair use for a judge or justice of a court to 
    photocopy and use in connection with official duties or in connection with 
    teaching, which is of course one of the expressly enumerated exceptions stated 
    in the Fair Use statute; but in either event, it is either de minimus copying 
    	THE COURT: So the entire text of the opinion
    Page 12
    	MR. MUSILEK: Either de minimus copying or it is a fair use.
    	Now, your Honor, just so can make clear the hypothetical here, if in fact 
    there is nothing in that case report as published by West that did not issue 
    from the court, then there is with respect to taking one case report, taking 
    one case, there is nothing copyrightable to be taken.  West has never claimed, 
    and this case is not at all about, any claim by West to any portion of the text 
    of a judicial decision issued by a court.  Whether it be a correction issued by 
    a court or the original language of the original opinion issued by the court.  
    That is not the issue.
    	If you look carefully at a Supreme Court Reporter, that is the West 
    publication case reports you will see, however, it is editorially enhanced 
    text.  There will be headnote reference numbers, there will be parallel and 
    alternative citations which are creatively selected and compiled and arranged 
    by attorney editors at West from among a myriad variety.  Especially with 
    Supreme Court decisions, they are reported and cited in hundreds of places.
    	You will find that West editors have chosen with parallel citation or 
    replacement citations to include in that case report.  If you take and start 
    adding those things in and you start talking about a commercial competitor of 
    West copying all of the text -
    Page 13
    	THE COURT: Are the parallel citations any substantially different than the 
    street address of a subscriber to a phone?
    	MR. MUSILEK: Actually not, your Honor.  It is not the parallel citation 
    text that is copyrightable.  It is the selection and arrangement and 
    coordination of the parallel citation in the case report.  And I always want to 
    bring the court back to that distinction because it is so important in this 
    	There is protection both for original creative texts and there is 
    protection for any selection, coordination or arrangement of pre-existing 
    material.  With respect to parallel citations, we are talking about the 
    collection, selection, coordination and arrangement of pre-existing facts, 
    i.e., the citation as that case appears.
    	However, your Honor, that's very different when you talk about copying one 
    case report or making reference to one parallel citation from a commercial 
    competitor taking the West books and scanning them wholesale, which is what 
    HyperLaw in testimony, in deposition in this case has said it intends to do if 
    you authorize it.
    	THE COURT: If they can do it to one case why can't they do it to them all?
    	MR. MUSILEK: Because that is when you start talking about the issue that 
    goes beyond de minimus copying
    Page 14
    and you get into the work as a whole.  And I think if I understood, your 
    initial presumption was that the West works as a whole are copyrightable 
    	THE COURT: That's correct.
    	MR. MUSILEK: So you have a continuum.
    	THE COURT: To the extent that they made selections of what order in which 
    they are going to put the opinions.  But it is not in the context of what is in 
    each individual opinion, and that's where I go back to what I started with from 
    Judge Leval.  The protection extends only to those aspects of the compilation 
    that embody the original creation of the compiler.
    	MR. MUSILEK: Your Honor, I would cite you to Judge Leval's Law Review 
    article which is cited in our brief where he makes the very important point 
    that there can be justifications for a taking a little bit of a work which 
    cannot be used to justify taking more of the work.  And the issue with 
    commercial competitors such as Matthew Bender and HyperLaw is that they are 
    taking entire arrangements and entire compilations.
    	So when you are talking about, for instance, parallel citation and 
    alternative citations selected and compiled by West, if they take them out of 
    one case report it is no big dial, it is de minimus fair use, however you want 
    to characterize it.  But when they take volume afte
    Page 15
    volume and use the need to obtain corrections, for instance, as the excuse for 
    scanning entire case reports, your Honor, you are on a continuum now where you 
    get into a very hazy fact situation as to what they are taking, how much they 
    are taking and what effect it is going to have on West, which are all directly 
    relevant fact issues as to whether or not there has been a copyright 
    	It cannot be dealt with in this manner on summary judgment, your Honor.  
    It simply cannot.  At the one end of the continuum where you are talking about 
    scanning whole case reports it can be, and the court can find, as other courts 
    have all found, that that's an infringement.
    At the far end of the
    	THE COURT: What other courts have found that?
    	MR. MUSILEK: We cite a number of them, your Honor, in our briefs, but 
    there is a Walt Disney animation case.
    	THE COURT: Nothing to do with case reports?
    MR. MUSILEK: No, your Honor, I do not believe there is a scanning decision 
    on case reports other than a consent judgment in Atlanta where Judge Shoop 
    found based on the consent of the defendant after it had been found out 
    that scanning was in fact an infringement.  But that was not a contested 
    	But the principle applies, your Honor
    Page 16
    Intermediate copying and scanning is infringement.
    	THE COURT: If you had a copyrightable product to begin with, but I have 
    real question that you have a copyright in my opinions if you publish in your 
    volume and that you can stop anybody from copying my opinion.
    	MR. MUSILEK: We have never tried to stop anybody from copying your 
    opinions.  They can get them from the court, from Lexis, from the Internet.  
    They can't scan them out of a West book.
    	THE COURT: That's why I have a problem.
    	MR. MUSILEK: Your Honor, that's the essence of the CC case.  The CCC case 
    says you can go and make the same compilations, you can get the same data as to 
    used-car values and create your own publication, but you can't copy the McLean 
    Reports and say that they are just facts and I can do it myself.
    	THE COURT: That's true.  But it would be true if you added something to my 
    	Now, you may clean up my citations, but I don't think you've added 
    anything substantial to my opinion that gives you a copyright interest in my 
    opinion that would prevent somebody from scanning it out of your text.
    	MR. MUSILEK: Your Honor, I don't disagree as long as we are talking about 
    a single case report.  But again, the work is a copyrightable work as a whole
    Page 17 
    	THE COURT: But that's opinion and you don't have any more right to Judge 
    Wood's opinion or Judge McKenna's opinion or Judge Sand's opinion when you put 
    them all together.
    	MR. MUSILEK: Your Honor, that's not true because at that point we have 
    compiled them and we have a protective interest in the compilation.
    	THE COURT: But that doesn't give you any protectable interest in the text 
    of any one of those opinions.
    	MR. MUSILEK: It does with respect to things like headnote reference 
    numbers, parallel citations, synopsis, headnotes, all of the various material 
    which clearly is original to West.
    If you take a little of it, that's one issue, perhaps de minimus.  If you start 
    taking all of it out of the entire volumes you are doing massive, substantial 
    copying of designated portions of original material.
    	THE COURT: You are taking advantage of the sweat of West's brow.
    	MR. MUSILEK: Absolutely not.  Not in the least.  It is a matter of copying 
    protectable expression and that is the whole arrangement of copyrights.  Of 
    course it takes sweat, it takes labor to compile something and arrange it, but 
    it takes intellectual labor.
    Page 18
    	What the court protects is the intellectual labor, not the physical labor.  
    It is not the labor of clerical people who put the parallel citation by keying 
    it into the computer after the attorney-editor has chosen which one to use.  It 
    is the selection of which one to use and where to put it that involves 
    intellectual effort.  That is something that cannot be found.  I defy --
    	THE COURT: That is what the framers meant in Article 1, Section 8: The 
    progress of science in the useful arts, deciding which parallel citation to 
    	MR. MUSILEK: Absolutely, your Honor.
    	THE COURT: I knew we fought the Revolution for some reason and now I know.
    	MR. MUSILEK: Your Honor, when this case started three years ago Matthew 
    Bender came into this court and
    said: this is a simple case, the Feist case by the Supreme Court has come down 
    and you know what, you can't copyright facts and you can't have a copyrightable 
    arrangement unless it is creative, the West arrangement is not creative and so 
    we can copy it.
    	Two years later there are a series of very favorable Second Circuit 
    decisions, favorable to West, and they are in here turning 180 degrees around 
    and saying forget all that we said about the copyrightability of the 
    compilation, what we're really here to say is that we are
    Page 19
    not copying it.
    	Your Honor, that is a lie and it is not true.  You cannot look at the 
    Tritippo affidavit where they create West volumes and say we haven't copied the 
    arrangement.  That is what they copied.
    	If they haven't copied that, what have they copied?  If you say it is 
    facts, I say, explain how, your Honor, if they can go door to door, go 
    somewhere else and find those facts outside of a West book if they are truly 
    pre-existing facts.  They are not pre-existing facts.
    	Where an alternative or parallel citation is going to go and which one is 
    going to be chosen cannot be ascertained.
    	You cannot look at Justice O'Connor's slip opinion from the Supreme Court 
    and say which parallel citation, which alternative citations are going to be 
    used, where headnote reference numbers are going to be put, what headnotes are 
    going to be drafted by West, what syllabus will be drafted but West.  It 
    doesn't exist absent West's intellectual labor in creating all of them and that 
    is copied by HyperLaw.
    	MR. HARTMANN: Your Honor, Carl Hartmann for HyperLaw.
    	As is frequently the case with West, we are mixing lots of apples and lots 
    of oranges.  Let's go back
    Page 20
    for a second to the question you asked specifically about the HyperLaw 
    argument, which is text.
    		West adds nothing to the Supreme Court text.  Period.  End of 
    	Now, it may correct a spelling mistake, although it didn't in the examples 
    it gave.  And it may take out parallel citation that the court puts in, or add 
    some, but that's it.
    	It's a government work.  West doesn't dispute that.  West, as far as I 
    know, doesn't dispute Section 403 or the language that the Congress stated 
    which underlies 403: 403 is aimed at a publishing practice that while 
    technically justified under the present law has been the object of considerable 
    criticism in cases where government work is published or republished 
    commercially where it has frequently been the practice to add some new matter 
    in the form of an introduction, editing, illustrations, et cetera, and to 
    include a general copyright notice in the name of the commercial publisher 
    suggests publicly that the bulk of the work is not copyrightable and therefore 
    free for use.,,
    	What could be more public governmental work than a Supreme Court case, 
    your Honor?
    	What could be less intellectual, less creative than a parallel cite or 
    citation or a correction to text?  I mean, everything else I think is pretty 
    much in our briefs,
    Page 21
    your Honor.
    	Furthermore, now to get to the other question that West is kind of trying 
    to bring into the back door with regard to the Supreme Court Reporter, there is 
    no selection, there is no arrangement.  They arrange it in the same way the 
    Supreme Court does.  They select it in the same way the Supreme Court does.  
    They say so in their answers.  There's not even the minimum.  Doesn't even come 
    close on the Supreme Court.
    	Moving now to -- by the way, your Honor, we believe that partial summary 
    judgment, despite whatever else happens here today, partial summary judgment 
    should be granted with regard to both the text and the pagination with regard 
    to Supreme Court Reporters.
    	Moving now to the courts of appeals.  West has taken the position that its 
    intellectual value, its creative value is nothing more than cross references.  
    Mr. Musilek just said it.
    	We've pointed out to text over and over and over, your Honor, and we've 
    said to West, point this Court to one thing you do so that the Court can 
    examine anything you claim is.  They have never done it.
    	We have taken a hundred pages, given it to your Honor.  We said: These are 
    the changes they make, tell us differently.
    Page 22
    	I refer your Honor to West's statements in its opposition to our statement 
    of uncontested fact. it is dribble.  There is not one single statement by West 
    about text that it adds to the first hundred pages of 1 F.3d. Nor has it 
    pointed to anywhere else anywhere else in F.3d or F.2d where into the text of a 
    court's opinion it has added anything of value.  Anything.
    	It says today -- I guess what we have devolved to after five years of 
    fighting this issue, what we have basically devolved to I guess is that West is 
    claiming that there's some value in its cross-reference to other books.
    	I have no answer for that at all, your Honor.  I don't.  They are taking 
    government works, written by judges.
    	Furthermore, I know that this has been briefed over and over --
    	THE COURT: Do you have section 403?
    	MR. HARTMANN: Page 35 of our reply brief is the Conference Committee 
    report to 403 which is what I was reading from.  And 403 is at 34 of the reply 
    	THE COURT: Your reply brief page 35?
    	MR. HARTMANN: Yes, your Honor, 34 is the text of 403 and 35 toward the 
    bottom is the text of the Conference Committee report.  Your Honor, the 
    Conference Committee report describes exactly, word for word, exactly what West 
    Page 23
    	Now, your Honor, I know that we have gone over this a half dozen times in 
    the brief and I don't want to belabor the point, but I think that it is as 
    critical to note West's response to number 81, which is at 40 of our brief.  It 
    says "other editor enhancements on comparison of case reports to slip opinions.  
    While it may not be possible to show who authored certain corrections to the 
    text of opinions, West's understanding is that many judges do see to it that 
    corrections made by them are noted in the court's files."
    	Your Honor, West gets corrections from judges.  West puts them into West's 
    version of these opinions.  West doesn't have the records, and I know it 
    because I have been through their records, your Honor, everything they say that 
    they have got.
    	West does not keep the records to tell you what changes were made by 
    judges and which ones were made by West.  They are now using this word 
    "suggest." Judges don't really make the changes, you see, they suggest the 
    changes to West.  But after they've suggested the changes to West, West puts 
    them into those decisions and West now can't tell you what in that decision 
    West did.
    	So even if there was the slightest bit of creativity, the slightest bit of 
    value in those hundred pages of 1 F.3d that we have cited your Honor to or 
    Page 24 
    else in F.3d in correcting a word, which is all they've ever done, we don't 
    even know that they did it.  There's nothing more that can be said.
    	Now, with regard to the pagination issue, your Honor, West has told 
    HyperLaw without any reference to fair use that HyperLaw can use its first page 
    citations.  It has told everybody else in the world that too.  They are just 
    moving the shells around in different ways.  The truth is once you know the 
    first page you know everything about the order and arrangement.
    	With regard to the internal, they say it is done by machine, and even when 
    it isn't, your Honor, we have shown in our brief that those breaks occur in 
    four or five different places.  There is no value to the breaks.  They are 
    facts.  Period.  End of discussion.  There is nothing else I can add.
    	THE COURT: What about the head notes?
    	MR. HARTMANN: The head notes, this is one of those don't-get-me-started 
    	The headnotes are sometimes as shown in the affidavit from our expert 
    that's attached here -- who is a noted law librarian -- are sometimes copied 
    verbatim out of Federal court opinions.  When they are, they are text of 
    government works.  They can't be copyrighted.  Period.  End of discussion.  The 
    text can't be.
    Page 25
    	The fact that they order them in the headnotes, fine, that's great.  But 
    not the text.  Never the text of a Federal work.
    	THE COURT: The fact is when they do a headnote they put a key number in 
    the opinion.
    	MR. HARTMANN: Fine.  Then you can't copy it without the key number and I 
    can't copy all the stuff -
    	THE COURT: But you are copying the key number, are you not --
    	MR. HARTMANN: Not me.
    	THE COURT: When you scan --
    	MR. HARTMANN: We don't, your Honor.  That's just a bold outright known 
    lie.  West has said this over and over and over again.  We've put five pages on 
    it in our reply.  HyperLaw does not do intermediate copying.
    	What we do is take the West document, ablate, redact anything that has any 
    intellectual claim, even a claim, we ablate that.  We then copy it.  We then 
    key stroke or scan.  When we say scan, we don't mean scan the whole page.  We 
    mean scan the text of a judicial decision as written by a judge.  That's all we 
    ever scan.
    	THE COURT: Do you block out all of the key
    numbers in the text?
    	MR. HARTMANN: Yes.  And that was done years ago, your Honor, five of them.  
    We sent the original text, the
    ablated text, the scanned text and the resultant text to West and said: Tell us 
    what in here do you claim a copyright.
    	Now, we played this game for five years, and what it comes down to, what 
    Mr. Musilek just said if I understood him right, your Honor, is there is an 
    intellectual, some value, some choice, some decision in putting cross-
    references in.
    	Nothing more, your Honor.
    	MR. MUSILEK: Your Honor, this is not closing argument at a trial.  This is 
    a summary judgment motion, and yet what I heard from Mr. Hartmann was not 
    nothing more than personal testimony as to what he thinks the facts are.  Of 
    course, those facts are highly contested in sworn affidavits.
    	THE COURT: But you are saying they are highly contested.  You put in some 
    generalized statements in an affidavit.  That doesn't establish the detail that 
    you need to sustain your claim.
    	MR. MUSILEK: Your Honor, if I may, this is out of Alan Sugarman's 
    deposition.  This is not generalized.  This is specific testimony by Alan 
    Sugarman, the owner and president of HyperLaw.
    	Q:	What plans do you have with respect to scan?  Do you have
    	particular groups of material that you
    Page 27
    	would scan?
    	"A. Well, the first group would be to fill in pieces of the court's 
    information whatever reason are not made available to us even though they might 
    make them available to others in digital form.  Then we would work back with 
    regards to, perhaps, to depending on the upon the court's opinion we would fill 
    in Federal, we would take the decisions from the Federal Reporter and have them 
    converted.  Again, that is basically an economic decision.
    	"With regard to scanning these materials in"
    	THE COURT: I don't give tests to the court reporter.
    	MR. MUSILEK: "Question: With regard to scanning these materials in, are 
    there any other preparations you would need to make?  Are there any 
    preparations you would need to make with regard to the beginning of this 
    operation if the court's decision gives you permission to do so?
    	"A. In the older decisions all you would have to do is purchase a set of 
    used books from a law book dealer.
    	"Q.  In terms of technology and products and in terms of procedures, is 
    there anything you have not yet put in place?
    	"A.    No."
    	Mr. Sugarman testified that he intended to scan.
    That is evidence in the record.  That fact and every inference from it must be 
    granted to West on a summary judgment motion, your Honor, and so you have to 
    assume that what they intend to do is scan.
    	THE COURT: Suppose all I am going to do is grant summary judgment that 
    says that HyperLaw may copy, may scan the text of a West opinion, not including 
    any headnotes, identity of counsel, or any key number, without any key numbers 
    in the opinion?
    	MR. MUSILEK: What about alternative and parallel citations?
    	THE COURT: Let's just deal with that.  I can do that.
    	Then the question is whether I think that the alternative and parallel 
    citations are really a substantial contribution that gives you a separate 
    copyright with the exception of me, the author.
    	MR. MUSILEK: Your Honor, with regard to a summary judgment motion, and 
    again that's a standard we are dealing with here, not a summation at trial, 
    with regard to summary judgment motion, we have an affidavit from Donna 
    Bergsgaard that is specific on that point which is that alternative citations 
    are creatively selected, created and prepared by West attorney-editors.  That 
    fact must be taken as true.
    Page 29 
    	THE COURT: The fact that alternative citations are selected has to be 
    selected.  I don't have to take it as a matter of law what the law is saying is 
    	MR. MUSILEK: Your Honor, the law does say and no one disputes it that if 
    it is a creative selection that is copyrightable.  That is statutory language.  
    That is Section 101 of the copyright.
    	The selection, coordination or arrangement, any one of these three things 
    is entitled to protection.  When you tell someone they can scan all of our 
    selection of alternative and parallel citations you are telling them they can 
    copy our selection.  That's an infringement.
    	And what I am saying is on a summary judgment motion that's entirely 
    inappropriate and you cannot really piece out and parse out of pieces --
    	THE COURT: Are you ready for trial next week?
    	MR. MUSILEK: I understand Mr. Chu is gone for three weeks to Southeast 
    	THE COURT: He's not going to have to try this.  He's got a different 
    	MR. MUSILEK: Your Honor, I don't know if we are ready for next week.  Our 
    witnesses are ready to testify and to testify in front of a jury about what 
    they do.
    	There are a couple of other things that I do want to bring to the Court's 
    attention because I think we hav
    Page 30
    gotten afield.  West does take very much umbrage at the notion that they are 
    coming in and arguing about the copyright provision 403 without having ever 
    pleaded it and given the clear fact dispute that arises simply by looking at 
    the copyright notion that Matthew Bender and HyperLaw uses on their products.
    	The legislative history cited by Mr. Hartmann made mention of using 
    government works with a general copyright notice.  There is no general 
    copyright notice here.  We are talking about a very specific copyright notice 
    in West books, in Matthew Bender CD-ROMs and in HyperLaw CD-ROMs that states 
    clearly that no copyright is claimed in government works.
    	Your Honor, Section 403 states that you may show affirmatively or 
    negatively in your copyright notice what you claim a copyright in.  West, 
    Matthew Bender and HyperLaw all show it the same way.  They all claim a 
    copyright in the text of the opinions that's entirely enhanced, and we cite 
    that in the briefs and it is there, and given that it seems implausible even if 
    it weren't procedurally improper, it seems implausible and in fact impossible 
    to grant a summary judgment motion on the issue when there is no testimony in 
    the record, no discovery in the case on that issue and we have as known fact 
    that all three parties use the same copyrights.
    Page 31
    	The other thing I do want to say they make statements about what they have 
    seen and what they did in discovery.  They don't rebut what West says it does 
    and how it says it does it.
    	Your Honor, I would take issue with the notion that the affidavits of West 
    are not specific.  In large part they are very specific.  Certainly as to the 
    arrangement of the works.  Certainly as to the arrangement of Supreme Court 
    Reporter being different from U.S. Reports.  All you have to do, your Honor, is 
    take judicial notice by looking at a single volume of Supreme Court Reports, 
    and if you look and I am looking at Volume 106, if you look at the very first 
    case that is referenced there, there is a parallel citation to the U.S. Reports 
    which shows that it is in Volume 473 U.S. 1308.
    	If you then go to the next case that's reported by West it is 473 U.S. 
    1307, followed by 473 U.S. 1315 which means we have three cases in a row.  You 
    then turn to the next case and you go back two volumes to look 471, 473, 473.  
    Your Honor, there is not an identical arrangement.  There never has been.  How 
    different it is, is, of course, a fact question.
    	Finally, of course with no offense to the government but with respect to 
    Supreme Court decisions, it is West that comes out with Supreme Court Reporter 
    two years
    Page 32
    before U.S. Reports, so they obviously are not copying it from U.S. Reports.
    	THE COURT: Let's take a five-minute recess. 
    	THE COURT: Do both sides agree in the Matthew Bender case that the issue 
    can be decided on summary judgment?
    	MR. CHU: We do, your Honor.
    	MR. MUSILEK: Your Honor, West takes the legal position that it can be 
    decided on summary judgment with the assumption that West has a creative 
    arrangement and that the copying that is done by Matthew Bender has been 
    admitted to be done.  If they are going to contest either of those, then of 
    course we think we have a fact dispute.
    	THE COURT: I don't think what Matthew Bender has done is contested.
    	MR. MUSILEK: It says in its brief and statement of undisputed facts that 
    it has copied nothing from a West book.
    	THE COURT: It has copied nothing from a West book that is inserted in star 
    pages.  They copied them from other sources.  The text of the opinion comes 
    from other sources.
    	MR. MUSILEK: I guess all I am saying is in
    response to the question is the standard is the fact that we
    Page 33
    have cross-moved --
    	THE COURT: That I know, but I am trying to find out whether anybody thinks 
    there are really any facts in dispute here, material issues of fact in dispute.
    	MR. MUSILEK: Applying the undisputed facts asserted by West, West believes 
    summary judgment is appropriate that star pagination is an infringement.
    	THE COURT: Let's assume I disagree with that.  What is not factually 
    disputed that would prevent me from granting summary judgment for Matthew 
    	MR. MUSILEK: The facts as set forth in all of the material by West as 
    applying Section 106 of the Copyright Act, which defines copies and says that 
    copies are anything that results in the underlying working capable of being 
    perceived, communicated.
    	We are saying that can be done, and in our statement of undisputed fact we 
    are saying the Matthew Bender product allows you to perceive and communicate 
    the West arrangement.  If that is accepted as fact in the Court's factual 
    findings, then we are prepared to have the Court rule on summary judgment.
    	If the Court says that the Matthew Bender product does not communicate or 
    that the arrangement cannot be perceived by using the West arrangement, cannot 
    be perceived using the Matthew Bender product, then there is a fact
    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 
    	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
    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
    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 
    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
    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