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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 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 Bender? 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 dispute. THE COURT: What difference is there between using the star pagination as simply the first name, the first page pagination? MR. MUSILEK: Your Honor, that's a very important fact question that goes to the fair-use portion of the case. That is in essence the fair-use portion of the case. One use is a reference to a West work. It is fair use. One use. Star pagination, on the other hand, is a supplanting use, not a fair use. THE COURT: Star pagination, though, you say if by using the star pagination they can duplicate through their computer the West system, why can't they do that, why they can't they reproduce your compilation simply by using the first page? MR. MUSILEK: Your Honor, they can. They cannot show where in fact page breaks occur; they cannot show the page numbers associated with those page breaks for finding specific portions of text. THE COURT: I have enough of what I need. I am going to grant summary judgment to Matthew Bender and to the star pagination. As I indicated at the outset of this argument, with the quote from Judge Leval in CCC, that the facts set forth in the compilation are not protected and may be freely 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 worthwhile 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