Excerpts:

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.

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.

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

------------------------------x

MATTHEW BENDER & CO.,

		Plaintiff,

	v.							94 Civ. 0589 (JSM)

WEST PUBLISHING, INC.

		Defendant.

------------------------------x

HYPERLAW, INC.,

		Intervenor-Plaintiff,
	v.
WEST PUBLISHING, INC.,
Defendant.
------------------------------ x

November 22, 1996
2:35 p.m.
New York, N.Y.
Before:

		HON.  JOHN S. MARTIN, JR.,
		District Judge
APPEARANCES:

IRELL & MANELLA, LLP
	Attorney for plaintiff (Matthew Bender)

MORGAN CHU (Argued)
ELLIOT BROW


Page 2


APPEARANCES (cont'd)

WEIL, GOTSHEL & MANGES
	Attorney for defendant West Publishing

JOSEPH MUSILEK (Argued)
JEFFREY KESSLER
KATHERINE DANIELS

CARL J. HARTMANN (Argued)
PAUL J. RUSKIN
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 
compiler.
	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 
question.
	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 
expression.
	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 
point.
	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 
criteria.
	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 
or
	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 
case.
	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 
compilations.
	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 
infringement.
	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 
proceeding.
	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 
opinion.
	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 
use.
	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 
discussion.
	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 
brief.
	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 
does.


  
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 
anywhere


  
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 
things.
	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


  
26


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.


  
28


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 
created.
	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 
Asia.
	THE COURT: He's not going to have to try this.  He's got a different 
issue.
	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. 
	(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 rea