HyperLaw Summary Judgment Reply Brief Re Text in Matthew Bender/HyperLaw v. West 94 Civ. 0589, U.S.D.C. S.D.N.Y., November 4, 1996.

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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

–––––––––––––––––––––––––––––––––––x

MATTHEW BENDER
& COMPANY, INC.,

Plaintiff,

and

HYPERLAW, INC.,

Intervenor-Plaintiff;

- v. -

WEST PUBLISHING COMPANY,

Defendant.

–––––––––––––––––––––––––––––––––––x
94 CIV 0589 (JSM)

HYPERLAW'S REPLY TO WEST'S OPPOSITION TO HYPERLAW'S MOTION FOR SUMMARY JUDGMENT AS TO THE COPYRIGHT OF THE TEXT OF LEGAL OPINIONS AND PAGINATION

NOT FILED UNDER SEAL

UPON HYPERLAW, INC.'S REQUEST, THIS DOCUMENT HAS BEEN UNSEALED BY WEST PUBLISHING CO. PURSUANT TO THE PROTECTIVE ORDER DATED APRIL 13, 1994.


TABLE OF CONTENTS


I. INTRODUCTION .................................... 1

a. Text of Judicial Decisions in the Supreme Court .................................... 1
Reporter and Federal Reporter.

b. HyperLaw Temporarily Withdraws its Motion .................................... 3
for Summary Judgment Regarding Text
On Issues Other Than Text of Judicial
Opinions in Federal Supplement and
Federal Reporter

c. West Agrees that the Pagination Issue .................................... 5
is Ripe for Summary Judgment

II. ARGUMENT .................................... 6

a. West's Attempt to Respond on The .................................... 6
Issue of The Text of Judicial Decisions

i. The Intermediate Copying Non-Issue .................................... 6

ii. The "'Changes' to Text" Non-Issue .................................... 10

b. West's Attempt to Respond on The .................................... 12
Issue of The Pagination of Judicial Decisions

i. Arrangement .................................... 12

ii. Selection .................................... 18

c. West Makes a Number of Other Incorrect .................................... 25
Arguments as to Why HyperLaw's Motion
Should Not be Granted

i. Waiver .................................... 25
ii. Misuse .................................... 28
III. CONCLUSION .................................... 42

TAble of authorities
Cases
Gund, Inc. v Swank, Inc., 673 F Supp 1233, 5 USPQ2d 1070 (S.D.N.Y. 1987) 35
Lake v Columbia Broadcasting System, Inc., 140 F.Supp. 707 (D.Ca. 1956) 34
Reyher v Children's Television Workshop, 387 F.Supp. 869, 185 USPQ 277 (S.D.N.Y. 1975) affirmed 533 F2d 87, 190 USPQ 387 (2d Cir. 1976) cert. denied 429 U.S. 980, 50 L.Ed.2d 588, 97 S.Ct. 492, 192 USPQ 64 (1976) 34
Suid v Newsweek Magazine, 503 F.Supp. 146, 211 USPQ 898 (D.C.D.C 1980) 34
Statutes
17 U.S.C. § 103 33
17 U.S.C. § 105 34
17 U.S.C. § 403 34
17 U.S.C.§101 35
Act October 19, 1976, P.L. 94-553, ¶ 102, 90 Stat. 2598 35
Other Authorities
5th Cir. Internal Operating Procedures 21
House Judiciary Committee Report No. 94-1476 and House Conference Committee Report No. 94-1733. 35
Levine and Squires, "Notice, deposit and registration: The importance of being formal" 24 U.C.L.A. Law Rev. 1232 36
Rules
4th Cir. R. 36(b). 22
9th Cir. R. 36-6. 21
Fed. R. Evid. 801(d) 2

I. INTRODUCTION
a. Text of Judicial Decisions in the Supreme Court Reporter and Federal Reporter

It is clear that West now seeks a trial on the merits of its putative copyrights in the text of judicial opinions. West's Opposition to HyperLaw's Motion for Summary Judgment ("Opposition") brims with assertions that "HyperLaw seeks. . .to raise scores of clearly disputed issues". Id. at 1.

There are, however, no material issues regarding the text of court opinions published in the Supreme Court Reporter and Federal Reporter–old or new. What has really happened is that for the nth time in this case, West asserts that it adds some great and mysterious authorship to the text of court opinions–but has again refused HyperLaw's nth request[1]that West specify what authorship it really adds to actual text. This refusal does not create an issue, nor does it entitle West to side-step summary judgment.

West uses sophistry and obfuscation to try to create the appearance that there is an issue–that something original or creative is done to judicial text. There are only two or three material facts. There is no issue regarding these material facts.

First, West adds nothing to the text of court opinions in its federal appellate reporters that is even arguably copyrightable. A simple run-through of actual text from actual volumes demonstrates this beyond question.

Second, as West is pressed against the wall of closer and closer scrutiny, its efforts to manufacture issues has become strained, almost farcical. To contrive an issue, West attempts to interject a completely inapplicable old chestnut[2], "intermediate copying" . This is an heroic effort to distract the Court from the total lack of original or creative changes to judicial text.

Third, West mixes such diversion with more of its ubiquitous efforts to change facts previously stated in deposition, use successive affidavits to state new facts it did not "reveal" previously[3], and distance itself from its own prior statements. (As discussed below, there is no merit to West's attempt to dismiss as "hearsay", admissions against its interest[4].)

Although HyperLaw would welcome the revelations which would attend a trial on the merits of these mysterious, creative changes (and would certainly look forward to the examination of West's witnesses on such complex issues as exactly what West does add to the text of judicial decisions in a single volume) HyperLaw submits that trial is not necessary. Despite manufactured "disputes" about non-critical issues, the essential facts are present.
b. HyperLaw Temporarily Withdraws its
Motion for Summary Judgment Regarding Text–
On Issues Other Than Text of Judicial Opinions
in Supreme Court Reporter and Federal Reporter

West seeks to impede summary disposition on the text of judicial decisions by asserting that HyperLaw never noticed West that HyperLaw intended to use the text of lower court decisions referenced in its CD-ROM. In the Response numbered 22 of its Rule 3(g) Statement, West states that

HyperLaw has never previously expressed any intent to copy text and pagination from 'the lower court decisions of federal appellate decisions reported by HyperLaw'. . .

However, more than four years ago, HyperLaw stated that it considered the lower court decisions which are referenced in federal appellate decisions to be an integral part of the text it will copy–to be included by reference in those federal appellate reporters.

Lower Court Decisions

The next type of information that HyperLaw wishes to add to its CD-ROM is the text and star-pagination of the decisions of the lower courts which were on appeal, or on certiorari to the Supreme Court. . . .These decisions are of three types: lower federal court opinions reported in the Federal Supplement. . .state court decisions published in an official state reporter. . .and state court decisions reported only in a West reporter. (Note: The caption "Lower Court Decisions" was both underlined and set off in the original.)

Exhibit 14 to HyperLaw's Complaint, HyperLaw's letter to James Schatz dated May 21, 1992. West has always known that HyperLaw considers lower court decisions which underlie the federal appellate decisions to be included by reference–and documents evidencing West's understanding are clearly appended as exhibits to the Complaint.[5]

With regard to West's position that Headnotes and Syllabi were not raised initially in this proceeding, prior to this action West always maintained it was the sole author of these materials. HyperLaw bought this story along with everyone else. It was only after this litigation was commenced–and in fact quite recently, that HyperLaw came to understand and be able to prove that many of these were not authored (or solely authored) by West.[6] It came as quite a shock that despite West's many contentions to the contrary, federal judges write some headnotes, and participate in writing others.[7]

West now seeks to take advantage of its own prevarications. West cannot seriously contend that HyperLaw should have known this little secret in advance–nor can it seriously contend that it has any copyright claim in government works. But West's real intent is to again delay this Court's determination of the motion regarding the main body of text.

It is unfortunate for West that these lower court decisions and headnotes are completely severable points. Thus, HyperLaw temporarily withdraws its motion for summary judgment regarding text of headnotes authored by judges, syllabi taken directly from court opinions, and judicial decisions in other reporters[8]referenced in cases HyperLaw reports. Summary judgment as to the text of court decisions can proceed. This removes the appellate issues West tries to create in sections I(A), I(B), IV(D)(2) and IV(D)(3) of its Opposition. (HyperLaw does, however, ask the Court to review West's arguments in sections IV(D)(2-3) to get a sense of exactly how weak West's claims are regarding such headnotes and syllabi–those written in whole or in part by courts.)

Because West should not be allowed to create appellate issues on procedural matters, to address West's procedural concerns HyperLaw will submit a motion for leave to amend its complaint regarding these other text issues.[9] This leaves the issue of West's claimed copyrights in the text of judicial opinions published in Federal Reporter and the Supreme Court Reporter standing alone for summary disposition.

c. West Agrees that the Pagination Issue

is Ripe for Summary Judgment

In its Opposition, West states that the issue of its copyright claim regarding pagination is ripe for summary judgment.[10] This comports with Matthew Bender's view.

II. ARGUMENT

HyperLaw first discusses West's refusal to respond to the majority of the points raised in HyperLaw's motion, and its absolute inability to prevail on those few points it did try to address (in sections a and b below). This includes a brief initial discussion of the manufactured issue of intermediate copying.

In Section c, HyperLaw responds to various points raised in the Opposition which don't quite fit anywhere else–West's tortured reading of the law to protect its efforts to misuse copyright claims, and backtracking on its prior statements that first page citations are in the public domain.

a. West's Attempt to Respond on The
Issue of The Text of Judicial Decisions
i. The Intermediate Copying Non-Issue

West expends almost 4 full pages of its Opposition on the ultimate red-herring–a discussion of intermediate copying relating to scanning non-copyrighted materials. This is utter, deceptive and calculated nonsense. All of Section III of West's Opposition is unrelated to this action.

As West well knows, the scanning methods which HyperLaw has (repeatedly) described to West involve absolutely no intermediate copying. This has always been a non-issue with regard to HyperLaw's stated methods, and West knows this. It has been stated, and stated, and stated, and then stated some more.

HyperLaw's oft-detailed method of scanning involves first redacting any copyrighted materials, and then scanning or keypunching only the non-copyrighted information. This was described in detail in Mr. Sugarman's Deposition–and long before that West was given actual pages from Mendell v. Gollust, specifically stating that HyperLaw would not do any intermediate copying. Years ago West received a comparison copy of text appearing in West's reporter, pre-scanning redacted materials without West's enhancements, and the resultant scanned text. This has never been an issue in this case. More than five years ago now (in the fifth letter of the correspondence with West) Mr. Sugarman wrote to Mr. Schatz, on September 19, 1991, that

it is a mystery known only to your client as to what it is in its reporters in which it does not claim a copyright.

Let me be clear: it is premature to discuss a license agreement until such time as West Publishing asserts a specific copyright or other interest in specific material that HyperLaw wishes to use. Because of the broad, sweeping and non-specific copyright claims and assertions made by West, it is also premature. . .until such time as West articulates that West indeed asserts copyright claims in the specific material we wish to publish.

HyperLaw has redacted (blocked out) all portions of the (Mendell v. Gollust) decision[11]. . .in which West might assert a copyright or other claim. The "Redacted Version" is enclosed herewith and HyperLaw in good faith believes that everything in the Redacted Version is public domain information.

The Redacted Version was then prepared for scanning. Introductory material (including the caption, docket numbers, etc.) was reorganized into HyperLaw format, footnotes were moved, the court was correctly identified. . .and other additional information was added. I enclose a copy of the "Scanning Version".

HyperLaw then scanned the Scanning Version, reformatted the text and created the "HyperLaw Version, which is also enclosed.

HyperLaw intends. . .to publish the HyperLaw Version. . . .

We respectfully request that you advise HyperLaw as to what copyright or other interest West asserts in the HyperLaw version were it to be published by HyperLaw as described. In other words, if West asserts any interest in the material, we demand that West delineate specifically. . . (Emphasis added.)

Exhibit 12 to HyperLaw's Complaint. Moreover, attached to Exhibit 12 was the redacted version of the Mendell v. Gollust case, the scanned version, and the resulting HyperLaw version.[12]

West's attempt to interject this inveiglement[13]is yet another hapless stab at misdirection and delay. HyperLaw has always stated that it will redact anything that is subject to copyright, and only then scan or keypunch the text.

If specific letters, specific examples and everything HyperLaw has ever said on the issue is not enough, there is the fact that HyperLaw presented deposition exhibits at the Bergsgaard deposition consisting solely of the exact same type of redacted text for the Feist and Sweet Home cases–about which Ms. Bergsgaard was questioned for days. See e.g.

Bergsgaard Deposition at 320-330.
14 Q. Okay. And is it the entirety of the case report as
15 published by West?
16 A. It appears that there have – that there are – there
17 is material that has been blocked out or whited out
18 from our case report.
19 Q. Okay. I will use the term "redacted" to refer to
20 material that has been whited out.
21 A. Okay.
22 Q. Do you understand that term?

23 A. Yes, I do.
24 Q. Okay. So is it your understanding that this is a copy
25 of Feist Publications versus Rural Telephone Service
1 Company as printed in the – as printed in the West
2 Publications Supreme Court Reporter with materials
3 redacted out?
4 A. That is what it appears to be.

West's eleventh hour effort to equate Alan Sugarman's reference to "scanning" to "scanning of copyrighted materials" seeks to forget the entire history of this case–every single document and every single statement by HyperLaw about its methods. The very inclusion of this argument is non-responsive to HyperLaw's motion, completely without foundation, intentionally dilatory, and a filing made consciously in bad faith.[14]

ii. The "'Changes' to Text" Non-Issue

Turning to the only real issues before the Court, HyperLaw again notes that West has not stated any changes it made to the Feist or Sweet Home cases beyond those it described in days of extensive deposition. That is an uncontested fact. That deposition is before the Court.

West has never stated what changes it made to the actual text in Volume 1 of Federal Reporter, Third Series beyond its deposition testimony. That is another uncontested fact.

Nor has West given a single example of a change it made to that volume which is even arguably copyrightable. Every one of West's pleadings in this case is before this Court, and there is still no statement of any change which would support copyright in the text of 1 F.3d. That is also an uncontested fact. HyperLaw has written and questioned, and cajoled, and ridiculed, and challenged–but West has not been able to point to even one instance of protectable change to the text in that volume.

Moreover, West has never stated what other changes it made to the 100 pages of text in Volume 1 of Federal Reporter, Third Series, as described in HyperLaw's exhibit–which is also before this Court. That is also a fact. Not one single "change" located by HyperLaw is even arguably "authorship", even arguably "creative". Not one single change to that text is original.

With the exception of its clearly distinguishable work such as headnotes, West has done nothing other than simple, basic proofreading and cross-reference. It is classic sweat of the brow. West has not been able to point to a single change to the content, of actual text in 1 F.3d which reflects any creativity, authorship, or originality. That too is a fact.

These are the only relevant facts about the text of judicial opinions published by West in 1 F.3d. Similarly, West has not pointed to a single change to the text of Volume 111 of Supreme Court Reporter beyond what was stated in deposition testimony, nothing which reflects any creativity, authorship, or originality. There is nothing more which is relevant with regard to the text of judicial decisions in these two reporters. West prints the opinions of courts exactly as written with regard to content. Any changes to actual content were made solely by, or with the approval of a court. At this late date West cannot point to any non-mechanical changes. There are no other relevant facts. There are no material issues of fact in dispute. All of the other issues West attempts to interpose are irrelevant. At the very least, partial summary judgment should be granted immediately as to these two volumes.

Nor has West been able to point to any other sufficient changes to court text, in any volume of Federal Reporter or Supreme Court Reporter. Summary judgment should also be granted as to the balance of these reporters.

b. West's Attempt to Respond on The
Issue of The Pagination of Judicial Decisions
i. Arrangement

There is no unique, creative or artistic arrangement to cases in the Supreme Court Reporter. Ms. Bergsgaard's Affidavit (at page 3, paragraphs 5-6) states that

headnoted case reports are then arranged by filing date and then, within the filing date, by seniority of the Justice and then by docket number. Per curiam opinions are placed at the end of this arrangement...

Separate opinions within a single captioned case report, such as concurring and dissenting opinions, are reported by seniority of the authoring Justice.

It is not clear why Ms. Bergsgaard makes this statement to support West's creativity and originality, as the rule of arranging opinions enunciated by Ms. Bergsgaard is exactly the same sequencing used by the Reporter of Opinions of the Supreme Court. Sugarman Affidavit at ¶ 27. Inspection of a volume of the United States Reports shows that the opinions are ordered by date, seniority, etc. in exactly the same manner. Id. at 27.

Attached to the Sugarman Affidavit is a simple, side-by-side listing of the 1990 Term Supreme Court opinions appearing in Volume 111 of Supreme Court Reporter. As the Court can see, when one simply compares this ordering in Volume 111 to the ordering in Volumes 498 to 501 of United States Reports, they are virtually identical. In those 2 instances where there is not an exact overlap, it is West's sequencing which ignores its own alleged "rules"–as these opinions are out of the professed order. In the real world this would be called an infrequent anomaly–although West will no doubt invent some arcane sounding name for this; and try to convince the Court that these two situations have their roots in years of diligent research by generations of legal reporting masterminds. (These goof-ups are set out in bold.) Sugarman Affidavit at ¶ 30.

In short, West follows the same non-original organization followed by the Reporter of Decisions of the Court, with minuscule variations which would certainly not support copyright. Id.. at 31.

Moreover, although Ms. Bergsgaard (at Par. 12 of her newest affidavit) claims that "West editors may override the general arrangement guidelines for Supreme Court Reporter to create combines, precedes-and-follows, same-volume-and-issue, file lines and corrections", West editors did not do so in West's example–Volume 111. West uses as vanilla an ordering system as is imaginable. West's claims rest on post facto efforts to invent "systems" out of this vanilla topped with one or two anomalies gleaned from hundreds and hundreds of cases. In the end, West simply asserts that it is entitled to a copyright because it made the "choice" to adopt the very same arrangement as the court issuing the opinion.

It is also instructive to consider West's continuous effort to state that "the arrangements of the final bound volumes in each of West's series generally reflect the arrangement of the advance sheet volumes that West publishes in each series." West Publishing Company's Rule 3(g) Statement of Undisputed Facts at 12. First, there is a whole lot of room between "generally" and any protectable methodology. Second, though the generic ordering in the advance sheets makes at least arguable sense, albeit common sense, by the time cases are published in the final volumes, nothing more of this order remains than a mush of advance volumes–with no useable or actual arrangement carrying into the final. (Thus, the minimal ordering of the advance sheets almost totally lost in the final volume–and there is no longer any order which is even arguably a protectable "arrangement". )

And what does West say about all of this? West's Opposition only contains "analysis" of tiny bits of two or three selected cases–just snippets.[15] Moreover, West's own examples fail to support a copyright claim. One of West's examples shows how West made a completely non-original, non-creative "arrangement decision" which was, in any case, actually ordered by a court. Sugarman Affidavit to the Reply at ¶ 7 through ¶ 16.

Another West example demonstrates that West's "combine"[16]is nothing more than putting two decisions in the same case together if they happen to come out at approximately the same time. (This is not even arguably done when the second decision is issued after the first one has already been printed in hardcover–and thus, the final publications do not have that ordering system except where it coincidentally works out.) West uses Bergsgaard Supplemental Exhibit 8 to illustrate what it calls a 'combine" which Ms. Bergsgaard defines (?) as follows:

Sometimes we elect to report the correcting order itself and arrange it as a "combine" with our report of the original opinion. (Emphasis added.)

West states that a "combine" is demonstrated on page 1303 where the order denying rehearing appears. Thus, West seeks a copyright for having done nothing more than placing two contemporaneous orders in the same cause together in its reporter. (Again, this is only done if, by sheer coincidence, the second order is available before the first is printed in the final.) This is West's example of its mysterious, creative "combine" arrangement methodology. It is an utterly common, mechanical, simplistic ordering of cases–one used by virtually all reporters from the dawn of the reporting of cases. A "combine" puts two orders in the same case together if they happen to come out closely enough in time. However, a reader cannot rely on this, and it is not a consistent feature of the collection.

In addition, it is ironic that the Dayhoff case report selected by Ms. Bergsgaard to illustrate a "combine" appeared (or more accurately did not appear) in West's advance sheet Volume No. 31–first published by West on July 29, 1996. The "combine" does not appear therein despite the fact that the second order was already out when that advance sheet came out.[17] By August 19, West apparently discovered its "mistake" and made the amendment as instructed by the court; appending the part of the order denying a rehearing to the end of the case report. In other words, West's original "idea" about combining the two did not 'occur' to it when the orders were first printed–but did after occur to it after the court ordered it.[18]

West asserts that by appending the July 24, 1996 order to the June 24, 1996 opinion, it has created a copyrighted work.

The publisher of a print product has essentially three options when deciding how to arrange an order affecting an previous opinion: (1) place the order with the opinion it affects, (2) place it elsewhere in the same book, or (3) place the order in the next current volume to be released. Of course, if the opinion has already appeared in permanent volumes, the publisher has no choice but to place the order in a separate volume–so West really has only two options. Thus, In West's example, Dayhoff, West had the amending order in time to include the change in the permanent volume. West then claims a copyright, and to bolster the claimed creativity, concocts fanciful names like "combine" and "precede-and-follow" to describe one of the two or three options available to all publishers–and used universally forever. Id. at ¶ 17 through ¶ 20.

Therefore, West's arrangement in Supreme Court Reporter is the same as the arrangement used by the Court. West's arrangement of its other reporters is as described in HyperLaw's moving papers. To the extent there is any variation, it is either chance or the result of simplistic mechanical concepts.[19]

ii. Selection
There is no selection of Supreme Court decisions. It appears that West concedes this.
West's claim of selection for the Federal Reporter is equally specious. Ms. Bergsgaard does not discuss the detailed exhibits that HyperLaw provided in it moving papers demonstrating that that the essential arrangement of opinions in the Federal Reporter is by circuit and then by date. See HyperLaw Exhibit 1-24 and 1-29. These exhibits are extensive and specific–and cannot be rebutted by a couple of anecdotal illustrations gleaned from disparate West volumes. In short, when a publisher prints thousands of cases, there will be a few odd situations. West seeks to use a handful of such "example" to try to create some inexplicable "system"–in an effort to overcome tens of thousands of other, actual cases.

Ms. Bergsgaard similarly avoids the entire topic of how opinions are selected for full reporting in the Federal Reporter. It is critical to note that West, in its response to the 3(g) statement, apparently now concedes that the Federal Reporter "does not include the text of opinions of the United States Courts of Appeals where the Circuit Court issuing the opinion designates as 'unpublished', 'not for publication', or 'not citable as authority.'" See Response 109 in West's Statement of Disputed Material Facts Pursuant to Rule 3(g).

109. West's Federal Reporter does not include the text of opinions of the United States Courts of Appeals where the Circuit Court issuing the opinion designated it as "unpublished", "not for publication", or not citable authority.

RESPONSE: Admitted. . .[20]

However, West, tries to slip around the fact hat the Federal Reporter contains the text of all opinions "citable as authority under the rules of the Circuit Court issuing the opinion." Id. at Response 108. In its Response 83 West again tries to wiggle out of what is meant by the term "published" opinions as used by West in the context of the Federal Reporter. However, Ms. Bergsgaard in her affidavits does not identify any published or citable opinions of Circuit Courts for which West has not published the full text in the Federal Reporter. Certainly a few anecdotal errors might be located–no doubt to form the basis of yet another fanciful "system".

Alan Sugarman of HyperLaw has previously testified to this Court regarding the fact that HyperLaw maintains a database of opinions it downloads from the circuit courts–and how HyperLaw methodically inserts the first page citations from West's Federal Reporter in HyperLaw's database. In the last few years, Sugarman has not seen anything more than one or two random errors where any opinions from Circuit Courts marked for publication, or citable were not published in the Federal Reporter. (Perhaps by searching 250,000 opinions Ms. Bergsgaard may find some anecdotal published opinions that were not published in the Federal Reporter – but, interestingly, she has not even done that.) Sugarman Affidavit at

¶ 38-¶ 39. And the real import of this point is that West has not provided any example of this to the Court.

West also takes credit for the various tables of unpublished opinions appearing in the Federal Reporter. It is instructive to review the tables of "Decisions Without Published Opinions" appearing in typical West volumes, such as at 86 F.3d 1146. Even though West professes not to have a definition for the word "published", West certainly uses the phrase "published" with precision on pages 1146, 1148, 1155, 1158, 1159, 1161, 1167, 1168, and 1173. The Court's attention is also drawn to 86 F.3d 1173, where at the beginning of Federal Circuit table, the following appears:

UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT

The following opinions, judgments or affirmance without opinion an dismissal orders will not be published in a printed volume because they do not add significantly to the body of law and are not of widespread interest. They are public record. They are not citable as precedent. These dispositions will appear in tables published periodically.

West does not indicate the source of this statement, however (coincidentally) each unpublished or non-precedential opinion of the Federal Circuit contains the following:

NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition is not citable as precedent. It is a public record. The disposition will appear in tables published periodically.

The Federal Circuit tables to which this note refers are the tables published by West in the Federal Reporter. West is either following the instruction of the respective court, or copying the court's work.

The Ninth Circuit table titled Decisions Without Reported Opinions (at 86 F.3d 1161) is representative. The corresponding Ninth Circuit rule states:

NINTH CIRCUIT RULE 36-6
PERIODIC NOTICE TO PUBLISHING COMPANIES

A list of all cases that have been decided by written unpublished disposition
will be made available periodically to legal publishing companies for notation in its reports. The list shall set forth concluding disposition in each case, such as,
"Affirmed," "Reversed," "Dismissed," or "Enforced."

West has not suggested that 86 F.3d 1161 is anything other than a reprint of the list made available by the Ninth Circuit to "legal publishing companies", e.g. West and Lexis.

The Fifth Circuit is even more specific and candid as to the preparation of lists of unpublished opinion; its rule states:

FIFTH CIRCUIT
INTERNAL OPERATING PROCEDURES
Unpublished Opinions-The style of all unpublished opinions is published in table form in the Federal Reporter. See e.g. 40 F.3d 384.

5th Cir. Internal Operating Procedures.

The lists of unpublished opinions are either provided by the Fifth Circuit to West for publication in the format desired by the Fifth Circuit, or West copies the court's suggestions.

Although West professes a complete ignorance as to the meaning of "published" and "unpublished" in relation to court opinions, reference to the local rules, internal operating procedures, and notations appearing on opinions from the various Circuits are clear. In the Second Circuit, all summary orders contain the following statement:

THIS SUMMARY ORDER WILL NOT
BE PUBLISHED IN THE FEDERAL REPORTER

(Emphasis added.) Thus, there is explicit reference to the Federal Reporter. The Fourth Circuit is equally forthright in specifying how West is to handle unpublished opinions:

LOCAL RULE 36(B)

UNPUBLISHED DISPOSITIONS
The Federal Reporter periodically lists the result in all cases involving
unpublished opinions.

4th Cir. R. 36(b).

Similarly, the District of Columbia Circuit in is opinions marked for publication is again quite specific that these opinions are to be published in the Federal Reporter:

Notice: This opinion is subject to formal revision before publication in the Federal Reporter or U.S.App.D.C. Reports. Users are requested to notify the Clerk of any formal errors in order that corrections made be made before the bound volumes go to press. (Emphasis added.)

See HyperLaw Exhibit 1-1. Similarly, the Fifth Circuit distinguishes opinions designated for publication in the Federal Reporter. As recently as October 30, 1996 the electronic bulletin board of the Fifth Circuit, which makes new published opinions available, carried the following notice:

Please Note: Opinions are maintained on this system for 30 days from date of
the opinion. During this 30 day period, the opinion is subject to corrections
prior and subsequent to the printing process, and to its availability in the
Advance Sheets of the Federal Reporter. (Emphasis added.)

The foregoing is just a sample, based on the only public records available to HyperLaw: West objected to discovery of its dealings with the Fifth Circuit and other federal courts on these issues and refused to answer questions relating thereto. Accordingly, West cannot now be heard to make new claims regarding facts relating to its dealings with these courts.

Although West's responsive papers to both HyperLaw's motion and Matthew Bender's motion contain inch thick examples of raw copies from books and print-outs from CD-ROMs without any supporting analysis, West refuses to provide HyperLaw or the Court with meaningful back-up information for its conclusory assertions and junk statistics.

Similarly, for the purpose of determining West copyrights in the Federal Reporter and the Supreme Court Reporter, West practices pertaining to its other reporters are an irrelevant smokescreen–statements such as "West makes different choices for reporting different states' decisions within one Reporter, and for different Reporters." Id. at par. 15 or "West chooses to collection opinions from over 600 courts and 3,500 judges". Id. at par. 25.[21]Ms. Bergsgaard claims that "West's correction process is inaccurately discussed throughout HyperLaw's Memorandum" id. at 21, but fails to provide any specific examples of micharacterization. Ms. Bergsgaard claims at Par. 22 that "HyperLaw misleads the Court on pages 15 and 16 of its Memorandum by listing only a small number of the types of changes that West makes." Id. at 22. But Ms. Bergsgaard was examined at length as to the changes made by West to the text of opinions. After hours of examination, Ms. Bergsgaard finally admitted she could think of no other changes made by West. Now, without providing any specificity whatsoever, Ms. Bergsgaard suggests there are more types of changes, but will not tell anyone, including the Court, what these new elements are. Ms. Bergsgaard then alleges that

HyperLaw makes numerous assertions based upon its review of 100 pages of West dead copy. However, changes and corrections to court opinions are made throughout the publication process and continue after publication. West does keep track of the changes and who made them.

Again, Ms. Bergsgaard does not disclose any specific changes to the first volume of 1 Federal Reporter not shown in HyperLaw's list of changes. (HyperLaw's complaint makes specific reference to this volume.) In addition, Ms. Bergsgaard was questioned at length about this volume and these pages, and, stated there were no other changes of which she was aware.[22]

c. West Makes a Number of Other Incorrect Arguments
As to Why HyperLaw's Motion Should Not be Granted
The arguments in this section are relevant only if the Court first determines there is some minute amount of copyrightable material. They are arguments in the alternative.

i. Waiver

In a semantic tour d'force, West argues that West's specific and explicit waiver of first page copyright should not be taken into account by the Court because "HyperLaw may not assert A waiver defense." Section I(D) of West's Opposition, at 4. This is predicated on the fact that "Waiver is one of the specific defenses set forth in Rule 8(c). . . .[a]ccordingly, a party seeking to rely on the defense of waiver must state so affirmatively." It is instructive to briefly revisit reality here–to review the timeline of this case.

First, HyperLaw filed a complaint (several years ago) alleging that West was tactically misusing and abusing copyright claims by threats, lies and vagueness.

Then (more than two years ago) on August 17, 1994 HyperLaw finally pinned West down in a situation where West was saying one thing to the Congress, another to the Supreme Court of Wisconsin, and West knew that Vance Opperman's deposition was going to be reported back to all of these interested parties. (West repeatedly pointed to this as a reason HyperLaw should not be allowed into this action.)

With his back firmly against the wall, Mr. Opperman finally conceded that HyperLaw could use West's first page citations at the beginning of all of the cases reported in HyperLaw's product. No mention was made in either that deposition or in the subsequent Matthew Bender's deposition of him, of "fair use" as a basis for this concession. The masses cheered, life was good, and HyperLaw did just that–inserting the West first page citations to thousands and thousands of cases on its CD-ROM.

What West seems to miss in all of this complex interplay is that its total and complete surrender on this point came for a reason, and only after the suit was running for years–in direct response to the pressures of this suit. It did not say "fair use" because it could not say "fair use" because of its position. West now seeks to skip back over that line.

To make this less confusing to West (since explicit post-filing capitulation on a point well after the suit has been filed appears to be indistinguishable to West from a pre-existing waiver) HyperLaw will not use the term "waiver"–instead it will use the terms "conceded", "gave up", "stipulated to avoid humiliation", and "retreated and retrenched when caught full out". That will avoid any confusion with the completely different concept of pre-existing waiver as a defense embodied in Rule 8(c).[23]

Or perhaps the Court should impose this by estoppel–since West was trapped on this issue, and after "conceding" wanted to trumpet its liberal views to avoid a neutral citation system. West then made explicit statements in other courts, in deposition, and in letters to hundreds on the Internet. That would do it! It isn't simply waiver. It is just that West is estopped as to lying–prevented from retreating from positions it had to take to put off informed inquiry into its abusive and ever-shifting effort to use copyright as a weapon.[24]

Obfuscate, delay, toss out inane arguments: Defame competitors: Steal markets: This argument is just the latest in a campaign. It is even more pathetic than the malicious foray into "intermediate copying".

ii. Misuse

West makes yet another toss-away argument that requires time and space and response–no matter how ludicrous the argument may be. West alleges that its misuse of copyright law was never noticed in HyperLaw's complaint.

HyperLaw's complaint alleged that West threatened HyperLaw and other West competitors with suit by the knowing and calculated use of sham copyright claims. Every sentence on every page in the complaint and every document filed thereafter by HyperLaw screams out that West's management became abusive bad guys–that somewhere along the line West went off the road of serving the profession, crashing through the landscape–a juggernaut of payments to judges sitting on its cases, deceptions to Congress and courts, statements by lawyers that it later denies, and (most of all) the tactical use of the now famous Damoclean Sword; edged with knowingly specious copyright claims to oppress, bully, abuse, and frighten small competitors.

This action concerns acts by defendant West to privatize and misappropriate the text of laws of the United States by asserting copyrights in citations to judicial opinions, and by asserting claims of copyright over factual material and material created by the federal government. Defendant has attempted to copyright the body of the law itself—perverting the purposes of the Copyright Clause of the Constitution and the Copyright Act. . .

Amended Complaint at ¶ 6. Is it necessary for HyperLaw to trot out the dictionary definitions of "pervert"[25]and "misappropriate"[26]?

If pervert and misappropriate weren't sufficient to give West notice of what was bothering HyperLaw, how about the statement that

West's copyright claims and warnings to HyperLaw, its public warnings, public statements, willingness to engage in litigation, and ability to engage in such litigation have created an apprehension by HyperLaw that it will be sued by West for publishing public, non-copyrightable information from West's Federal Reporter and Supreme Court Reporter, which is thus impairing HyperLaw's ability to publish public, non-copyrightable information"

or the statement that

West has erected restrictions and encumbrances upon such access to federal judicial opinions, privatizing the law, and interfering with the due process rights of the citizenry, inconsistent with the Copyright Act and the Constitution of the United States.

West seems to suggest that HyperLaw did not allege that even if a very few changes to text were subject to copyright protection, those few changes were indistinguishably merged with material not subject to copyright protection–to such an extent that the material is not subject to copyright protection pursuant to the Copyright Act. HyperLaw alleged exactly that.

Even if factual material such as the names of counsel, parallel citations, corrections, and amendments made by defendant West and contained in Volume 111 of West's Supreme Court Reporter and Volume 1 of the Third Series of West's Federal Reporter (other than the West Editorial Additions set forth in paragraph 28 above) were subject to copyright protection, that material is indistinguishably merged with material not subject to copyright protection to such an extent that the such material is not subject to copyright protection pursuant to the Copyright Act.

West also seems to suggest that HyperLaw's "text merger theory" is a startling new concept. HyperLaw's Memorandum noted that there is an existing view regarding unintentional merger–when some slight merger occurs, but it was not the intentional tool of a party exploiting the confusion created by the merger.

West has merged any original efforts so completely that they cannot be distinguished from public domain materials. . . .Bentley v. Tibbals, 223 F. 247 (2d Cir. 1915) as well as Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970 (4th Cir. 1990) . . . ."one who so embodies copyrighted with uncopyrighted matter that one reading his work cannot distinguish between the two [has no copyright claim]" and there is no copyright where the reader "is left to ascertain for himself by a verbal comparison, word for word."

West has so merged its efforts with those of the courts that there is no way to distinguish between them. . . .

HyperLaw also discussed, as an additional, separate issue, the effect of a factual finding that such merger was used as a execrable tool–the confusion created and exploited with wrongful intent.

HyperLaw's determined efforts to avoid infringing on any legitimate claims have been met with a calculated series of tactics including shifting definitions, vagueness, threats, personal attacks, and anti-competitive activities. [Footnotes omitted.] West has played a high-stakes game with the copyright laws–bludgeoning HyperLaw and others. As damaging as these abuses are, however, even more destructive has been West's continual shifting of positions on its copyrights, and its determined and purposeful refusal to identify what changes it makes that are its own authorship as distinguished from original text and changes made by federal judges. See Sugarman Aff. at ¶¶ 15 - 16 and Exhibit 1-11.

* * * *

While it is true that West has done what was described in Bentley v. Tibbals, West has also gone far beyond the acts in that case. West has not only merged its alleged work and then tried to force HyperLaw to do futile word-by-word comparisons, it has done so with intent to obscure; and it has done so knowing that such a comparative reading is impossible for two distinct reasons[27]–one of which is a result of West's own acts.[28] Again,

[t]o extend copyrightability to minuscule variations would simply put a weapon for harassment in the hands of mischievous copiers intent on appropriating and monopolizing public domain work.

L. Batlin & Son, 536 F.2d at 492. HyperLaw asks this Court to consider going beyond the mere declaratory denial of copyright–as the Court may provide attorneys fees and punitive relief against West for knowingly and intentionally undertaking such a calculated misuse. (The memorandum from West's counsel Steve Haynes[29]makes it absolutely clear that West has had a definite institutional strategy of using abusive copyright litigation to delay entry of others into markets.[30].

* * * *

West might argue that it is not responsible for the fact that when judges gave changes to West, the courts did not make corresponding changes to the official documents by amending their original decisions. But, West certainly is responsible for giving knowingly false information to HyperLaw to the effect that such a comparison would reveal West's changes rather than a mixture of West's changes and changes by judges.

West gave HyperLaw false information and HyperLaw initially followed that information, and (mistakenly) understood all of the changes to have been made by West. HyperLaw had to sift and strain to learn even the slightest bits of the truth. Thus, West's actions go beyond merely mixing in trivial changes in an effort to abuse copyright–they even go beyond an intentional effort to do so as was present in Lasercomb.

When a publisher makes a very few changes to a larger body–particularly where it is a government work, the publisher must identify which work copyright is claimed on.[31]

Section 103 of the Act, 17 U.S.C. § 103[32] makes it clear that the "copyright in a compilation or derivative work extends only to the material contributed by the author of such work[33], as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material."

Moreover, subsection (b) states that "the copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material." See e.g. Lake v Columbia Broadcasting System, Inc., 140 F.Supp. 707 (D.Ca. 1956); Reyher v Children's Television Workshop, 387 F.Supp. 869, 185 USPQ 277 (S.D.N.Y. 1975) affirmed 533 F2d 87, 190 USPQ 387 (2d Cir. 1976) cert. denied 429 U.S. 980, 50 L.Ed.2d 588, 97 S.Ct. 492, 192 USPQ 64 (1976); and Suid v Newsweek Magazine, 503 F.Supp. 146, 211 USPQ 898 (D.C.D.C 1980) (Selecting and arranging quotations in a book about movies did not provide the author with a copyright in quotations or their selection to such an extent that using quotations from book was infringement.)

As stated by HyperLaw previously, Section 105 of the Act[34]states "Copyright protection under this title is not available for any work of the United States Government. . . ." When 105 is read in conjunction with Section 403, 17 U.S.C. § 403[35]it is clear that West has an affirmative burden to not merge[36]its own text with government text absent a clear distinction between the two. Section 403 states:

Sections 401(d) and 402(d) shall not apply to a work published in copies or phonorecords consisting predominantly of one or more works of the United States Government unless the notice of copyright appearing on the published copies or phonorecords to which a defendant in the copyright infringement suit had access includes a statement identifying, either affirmatively or negatively, those portions of the copies or phonorecords embodying any work or works protected under this title.[37]

West provides no statement identifying, either affirmatively or negatively, those portions of the copies. . .protected, and a failure to meet this requirement should be treated as an omission of the notice, subject to the provisions of section 405. Nor is there any great mystery regarding why this section was enacted–to stop exactly what West has tried to do–expropriate governmental works by vaguely identified, minuscule variation (created by editing or providing introductory materials). House Judiciary Committee Report No. 94-1476 and House Conference Committee Report No. 94-1733.

Section 403. Notice for Publications
Incorporating United States Works
Section 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 a Government work is published or republished commercially, it has frequently been the practice TO ADD SOME "NEW MATTER" IN THE FORM OF AN
INTRODUCTION, EDITING, illustrations, etc., and to include a general copyright
notice in the name of the commercial publisher. [which] suggests to the
public that the bulk of the work is [not] uncopyrightable and therefore free for use.
To make the notice MEANINGFUL RATHER THAN MISLEADING, section 403 requires that, when the copies or phonorecords consist "preponderantly of one or more works of the United States Government," the copyright notice (if any) identify those parts of the work in which copyright is claimed. A failure to meet this requirement would be treated as an omission of the notice, subject to the provisions of section 405[38].

See also Levine and Squires, "Notice, deposit and registration: The importance of being formal" 24 U.C.L.A. Law Rev. 1232. Since the very beginning of this case, this is what HyperLaw has attempted to make West do. See the Mendell v. Gollust letter to Schatz, Exhibit 12 to the Complaint; and HyperLaw's letter to Schatz, May 29, 1992, Exhibit 16.

we very carefully prepared, from the West version, a redacted version of the Mendell case, stripping out all material that is arguably copyrightable, such as headnotes and key numbers. The issue is comparing the slip opinion to the redacted version. . .

Nor is there any merit whatsoever to West's protestations to the effect that a reader can somehow distinguish or intuit these "changes". For a recent example of West's evasion on this subject, see its Response numbered 27 in it Rule 3(g) statement:

27. A reader of a West case report cannot determine where West added changes to the original court opinion without a word by word comparison to the original.

RESPONSE: Denied. Many of West's editorial enhancements, such as headnotes. . .are readily apparent without a word by word comparison. Identification of other enhancements, such as parallel and alternative citations, may require closer inspection, but West's customers are aware that West adds such materials to its case reports. (Emphasis added.)

The situation is simple, if a reasonable reader[39] cannot determine what few changes the publisher has made to court opinions (as opposed to those of a judge in this case) it cannot stop copying of the slightly altered original. West effectively appropriates the original government work. West does this with malicious intent, for huge profit. When it is a governmental text, there is a affirmative statutory burden to distinguish designed to prevent this exact type of abuse.[40]

HyperLaw has stated this time and again, but West persists. Not only did HyperLaw provide arguments for this proposition in its Memorandum[41], this concept is statutory. (Moreover, West cannot go back and retroactively identify the text where it has testified that it cannot determine with certainty which changes were suggested by courts.[42])

Time and time again, in its Rule 3(g) statement, West attempts to skip around the fact that neither a reader nor West can determine which of these "changes" were made–and which were the work of West–as opposed to judges. (West now, in a valiant final effort, tries to float the idea that judges merely "suggest" changes–as if this somehow saves them from the fact that West can no longer tell this Court that West makes them, or which of those changes were "suggested" by, and are, therefore, the original authorship of judges!)

32. West acknowledges that many corrections to citations, corrections of typographical errors, and changes to the text originated from the courts. West solicits the courts to correct the text. . .

RESPONSE: Admitted.

33. Often when, after an opinion is release by a court, judges, parties and other contact West to provide changes–changes not authored by West.

Response: West admits that judges, parties, and other sometimes contact west to suggest changes. (Emphasis in the original.)

The Rule 3(g) statement is just a series evasions. HyperLaw implores this Court to carefully read West's statement–particularly ¶¶ 32-38. To get a real sense of what West does to evade this most basic truth, a reading of its Response numbered 47 is critical.

47. Exhibit 1-1 is an accurate description of the changes made to the initial 100 pages of Volume 1 of Federal Reporter, Third Series.

RESPONSE: Denied. Each case is unique. What can be said, however, is that changes and corrections to court opinions are made throughout the publication process and continue even after the publication. West does keep track of the changes and who made them. A notation is usually made in the margin of the case indicating who authorized the change. Communications with the court, such as letters, amending orders, or telephone call slips are pinned to the back of the case. Some changes are made directly on the page proofs of advance sheet pages. After advance sheet publication, the changes and corrections are noted on the advance sheet pages and stored with the correspondence. After publication of the bound volume, the corrections and changes are noted for Westlaw.

With apologies to the Court, this is a load of utter rubbish. This is evasive as to what West did in the first hundred pages–and is a lie as to West's ability to actually state who made what "suggestions" and changes. West has testified, and stated, and has since confirmed that

A notation is usually made in the margin of the case indicating who authorized the change. (Emphasis added.)

That means that many times it isn't. That means that WEST SIMPLY CANNOT TELL THIS COURT, OR ANYONE ELSE, WHICH CHANGES WERE ACTUALLY MADE BY JUDGES. West's non-retention of this material seems to be a result of cold calculation–to achieve exactly what it has achieved; a blur in which it can claim West makes changes rather than judges. But this is irrelevant–whatever its intent West has not retained the information necessary to identify which materials were the authorship of judges–and it admits this.

Then, to try to minimize this, West attempts to suggest that there is some other supporting 'paper' for all such changes. West directly contradicts its own deposition testimony–and the documents provided to HyperLaw, stating that

Communications with the court, such as letters, amending orders, or telephone call slips are pinned to the back of the case.

A lie. Sometimes West captures this information. Many times it does not. West cannot tell this Court what changes were made or, as West calls this, were "suggested" by judges[43]. See also West's answer in Response numbered 81 to HyperLaw's assertion that despite West's statements to HyperLaw, such a reading would not reveal authorship.

Other editorial enhancements. . .are apparent upon comparison of case reports to slip opinions. WHILE IT MAY NOT BE POSSIBLE TO IDENTIFY 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. (Emphasis added.)

This is a hustle, a con job. West lied to HyperLaw and others about how its changes could be identified–and now it says that we all should have gone through not only the slip opinions, but back to individual case files where (it says) it is "West's understanding is that many judges do see to it that corrections made by them are noted in the court's files." That certainly gives good and clear notice as required by the statute, as to which of the materials in West's reporters are the works of the government. This is methodical deception.

Once again, HyperLaw begs this Court–it beseeches, it implores, it entreats the Court to focus on West's refusal to go through even one single volume of actual text published before this suit was initiated and state what it claims it makes that supports a copyright claim to the text of judicial decisions and to prove that they are not changes "suggested" by judges–and, if nothing else at this point, grant partial summary judgment with regard to the first hundred pages of 1 F.3d, as West simply refuses to say what it does. A corollary to this is that summary judgment should be granted with regard to everything sought where there can never be any specificity under 17 U.S.C. § 403 as to what West actually does to actual judicial text–West admits that it can never provide the statutory notice. West won't tell the Court which changes it made because either there are no more than those HyperLaw noted–and thus none which would support a copyright claim, because there were more but they were made by judges, or because West simply can't do it.

49. Once the changes described in the previous paragraph are removed from the count, a reader is left with 15 mechanical or typographical changes in 100 pages.

RESPONSE: Denied. There is no record to support these assertions. . .

Record? HyperLaw identified the specific 100 pages, identified the 15 changes actually made by direct comparison with West's own working papers, and stated that there were 15 changes. Were there, or weren't there?

III. CONCLUSION

HyperLaw asks that summary judgment be entered against West on both the pagination and text issues–there being no material issues of fact regarding any point necessary to the determination.

DATED: New York, New York

November 4, 1996

RESPECTFULLY SUBMITTED,


LAW OFFICES OF PAUL J. RUSKIN
Attorney for HyperLaw, Inc.
Intervenor-Plaintiff


BY: ___________________________________
PAUL J. RUSKIN, ESQ. (PR 1288)
72-08 243rd Street
Douglaston, New York 11363
Telephone: (718) 631-8834
Facsimile: (718) 631-5572

and

CARL J. HARTMANN III, ESQ.
Pro hac vice (CH 6715)
134 W. 88th Street
New York, New York 10024

and

LORENCE L. KESSLER, ESQ.
Pro hac vice
1825 I Street, N.W.
Suite 400
Washington, D.C. 20006

_______________________________

[1] Such requests were made in letters, in discovery requests, in depositions, and (most recently) in HyperLaw's motion on this issue. Return to text.

[2] HyperLaw discusses the intermediate copying non-issue first–as it is acutely enlightening as a window into West's desperation. Return to text.

[3] In other litigation, West has obscured depositions answers and then showed up at summary judgment with new, unchallenged facts. This time, West cannot do this effectively, and so it seeks a trial. Return to text.

[4] West continually refers to every statement made outside of this proceeding and every statement not made in a deposition as "hearsay". This includes statements by its own counsel testifying and writing on its behalf on the exact matters before this Court. Rule 801(d)(2) of the Federal Rules of Evidencemakes it fairly clear that a statement is not hearsay when it is "offered against a party" and is "by a person authorized by the party to make a statement concerning the subject" or "by the party's agent. . .concerning a matter within the scope of agency." Return to text.

[5] See also HyperLaw's prior letter to West dated July 1, 1991 stating "[i]t is our intention to obtain copies of Federal Reporter and Federal Supplement. . .we will remove all West Key Numbers and West Digests." Exhibit 8 to the Complaint. See also HyperLaw's letter to Mr. Schatz dated August 12, 1991, which states the indication to obtain "cases from the Federal Reporter 2d and Federal Supplement." Exhibit 10 to the Complaint. Return to text.

[6] See West's discussion about "suggestions" federal judges make for changes to text, set forth below. Return to text.

[7] Indeed, West has copied headnotes of official reporters and passed those off as West's editorial product, as coincidently shown in the random exhibits to the Affidavit of Kendall Svengallis attached to the Sugarman Affidavit in Reply as HyperLaw Exhibit 14. See the examples of case reports for kentucky, Oregon, Pennsylvania, South Carolina, Tennessee, Vermont and Wyoming and compare them to the corresponding West reports. Return to text.

[8] Such as reporters containing cases appealed in or referenced by federal appellate cases. Return to text.

[9] As the text of lower court decisions is the subject of Matthew Bender's complaint, and as West agrees that this issue will be dealt with later, there can be no prejudice claimed by West as a result of such a motion. Return to text.

[10] West states there is "one issue in this case that is ripe for summary treatment, that is [pagination]. . ." Id. at 1. Return to text.

[11] For actual production, Mr. Sugarman has testified that (and all deposition testimony from Ms. Bergsgaard used HyperLaw's exhibits in which) redacting is done directly on pages of West's Reporters. As Mr. Sugarman has repeatedly stated, states again now, and "stipulates" just in case West seeks to try this dodge again. . .There is no intermediate copy. Return to text.

[12] Schatz responded, saying (in Exhibit 13 to the Complaint , dated October 9, 1991)

You should carefully compare the enclosed copy of the public domain slip opinion in Mendell to the West case report. In addition to the West editorial material added to produce the case report. . .you will see that the slip opinion and the case report vary substantially in their selection, coordination and arrangement of material included. . .the copyright notice in 909 F.2d clearly states Copyright is not claimed as to any part of the original work prepared by a United States Government officer or employee". . .the "original work" in question here is the enclosed slip opinion which is on file with the Second Circuit and can be obtained. . .from that Court.

Return to text.

[13] See also Responses numbered 11 and 12 in West's Statement of Disputed Facts Pursuant to 3(g) (to HyperLaw's motion), dated October 14, 1996 ("3(g) statement"). West repeatedly tries to assert what it knows to be nothing more than flat out deception: "Mr. Sugarman indicated that he indicated that he intended to use scanning equipment. . .even if certain West materials were properly subject to copying by HyperLaw (e.g. text authored by courts), HyperLaw would still be infringing West's copyrights by scanning protected headnotes, synopsis and other editorial enhancements." Return to text.

[14] This is just another completely baseless legal filing by West's counsel. It is akin to West's counsel's statements to other courts and to organizations trying to understand West's claims. As set forth in HyperLaw's moving papers here, West makes these outrageous assertions about its positions and its competitors. When caught full in the act, West attempts to distance itself or simply lie about the inconsistencies. Where was the responsive affidavit of Steven Haynes after West's counsel made all sorts of representations in papers? It never materialized. See also West's Response numbered 79 in its 3(G) statement, where West "admits that this statement was made by Mr. Haynes" in a "memorandum concerning the West v. Mead litigation."

Where is the deposition of Brady Anderson stating that he did not say the things to the Supreme Court of Wisconsin set forth in HyperLaw's moving papers in the instant motion–in a recorded hearing? Missing. And where is Michael Trittipo's affidavit stating that he did not write the letters sent on the Internet? The answer is simple–Trittipo was available to do another affidavit full of horse hockey opposing Bender's motion–but once again there is only silence when West was caught masking open statements to hundreds of law librarians about HyperLaw and West's positions. It is simply abusive litigation by deception and misdirection–racking up legal fees for opponents while always delaying. Return to text.

[15] West assiduously avoids any type of page by page, case by case analysis of even a single volume of one of its reporters. Ms. Bergsgaard's attempts at statistical analysis are clever, but fail, not only by definition, but in the lack of supporting foundation, as shown by the bald assertion that "taking volume 112 as representative, more than 6% of the full case reports and mems contain file lines or are combines." Ms. Bergsgaard's statistic treats in identical fashion so-called 'file lines' and combines. Ms. Bergsgaard had the opportunity to provide the court with substantiation for her statement, and a breakdown of a full case (or better yet a full volume) of file lines, of full case combines, of mem file lines, and mem of combines. West did not do so in discovery, in response to specific questions at deposition of Ms. Bergsgaard, or in its responsive papers here.

Return to text.

[16] Again, any order of the alleged combine is lost when the advance volumes are simply jammed together to make the final volumes. The order is lost–and proceeds and follows and combines are just bits of the resultant flotsam in a blurry, unordered mix. The final volumes cannot obtain "arrangement" by some sort of derivation–even if the advance sheets once had it–which is inconceivable. Return to text.

[17] According to the inside first page of that advance sheet, the closing date for advance sheet Volume 31 was August 19, 1996. Return to text.

[18] It is interesting, as a passing matter, that this revelation by West occurred two weeks after this Court denied West's motion to dismiss HyperLaw. Return to text.

[19] The same is true with regard to any originality, creativity, value or even meaning in the choice of where West places its page breaks. West, not HyperLaw selected the Dayhoff case as an example. The Dayhoff exhibit gives some insight into the "arrangement" decision by West in placing its page breaks–for what it insists on calling star-pagination. Attached to Sugarman's Affidavit as HyperLaw Exhibit 11 is a copy of the Dayhoff case as it appears in the advance sheet volume of 86 F.3d, interleaved with the same case report as it appeared in the permanent volume of 86 F.3d. This shows that the West star-pagination breaks are completely different in the advance sheet as compared to the pagination breaks of the same case in the permanent bound volume, a fact which is not disclosed in any way to the reader. Thus, the documents submitted by West have demonstrated that there are at least four different ways in which West breaks pages for the very same case report: (1) the breaks occurring in the printed advance sheet, (2) the Westlaw version of the advance sheet, (3) the different breaks in the printed permanent version, and (4) the Westlaw version of the permanent version. These conflicting "arrangement" decisions from West's own example shows that the arrangement of star pagination consists of automated page breaks, with no creativity whatsoever. Id. at ¶ 22 through ¶ 23. See also West's admission at Response 98 in its 3(g) statement–stating that the break moves all around, and its admission at Response 110.

Return to text.

[20] This specifically contradicts West's contention at ¶ 20 of its 3(g) Statement in Support of it Motion for Summary Judgment against Matthew Bender, where West states "[n]o law, court rule, or court order dictates the selection. . .of case reports of any of West's compilations." Return to text.

[21] Even with this, however, West is merely attempting to turn more sweat of the brow into authorship–and suggests some elaborate process starting in a massive mail room with green shaded clerks sifting through opinions from different jurisdictions. In fact, case reports for the courts at issue in the Federal Reporter and the Supreme Court Reporter are delivered to West in a focused manner. (West is the slip opinion printer in the Fifth, Eleventh, First, and District of Columbia Circuits, and Thomson Publishing Company, a Canadian company which recently acquired West, is the slip printer in the Ninth and Fourth Circuit.)

Thus, in at least six circuits West knows which cases to publish in full in the Federal Reporter because the paper and electronic files are sitting in the West editorial offices, and, West merely transfers the electronic files over into its system. Ms. Bergsgaard also claims that "HyperLaw mischaracterizes the manner in which West prints slip opinions for the Fifth and Eleventh Circuit. The contract is competitively bid." Id. at Par. 20. This is a empty assertion, unsupported by any documentation, which is at conflict with the fact that both of these Circuits (which at one time were one circuit) use West and only West as its slip printer, because apparently those circuits wish to have the slip opinions contain the West digests and summaries. (Even 40,000 mechanical changes do not create authorship.)

Ms. Bergsgaard does not specify even one micharacterization made by HyperLaw. West's Fifth and Eleventh Circuit slip opinions (together with West's headnotes) load onto Westlaw only hours after release of the opinions by those Courts. The West printed case reports appear to the untrained (and even trained) eye as virtually identical to the slip opinion West printed for the Fifth Circuit.

Return to text.

[22] Ms. Bergsgaard also stated in deposition that there were no documents other than the dead copy produced to HyperLaw which would show other changes made by West. Now, she reverses her testimony and claims there are other documents including "changes made directly on the page proofs of advance sheet pages" and claims that "changes and corrections are noted on the advance sheet page proofs." (Significantly, Ms. Bergsgaard does not provide any of this other documentary proof with respect to Volume 1 of Federal Reporter, Third Series). Return to text.

[23] West's response in its 3(g) statement regarding pre-existing waiver in its relationship to LEXIS is instructive however.

89. LEXIS presently uses the first page citations without any statement of license, and West points to LEXIS' use of the first page citation (without any mention of any license) as proof to those considering alternative citation systems that the first page may be used freely by competitors.

RESPONSE: Admitted.

What West admits here is that it specifically tells courts, lawyers and law librarians that West's first page citations are "in the public domain" (verbatim from West's statement to the Wisconsin Supreme Court as echoed by West on the Internet in response to HyperLaw) and points to LEXIS' use as an example–knowing full well that this is nothing more than a total sham–as LEXIS operates under a license. See also West's response that Tritippo's statements about this were "inadmissible hearsay" despite the fact that it was a statement against interest–and tops this by saying he didn't quote the specific Wisconsin testimony despite the fact that Tritippo said that he was doing exactly that! West statement in Response numbered 90 that it "denies that it ever testified that first page citations are in the public domain" is sanctionable in light of the clearly non-hearsay statement against interest West's lawyer made in filings and testimony before the Wisconsin Supreme Court–notwithstanding the effort to use the word "effectively" to escape in Response numbered 91. See also West's two admissions about "testimony" by Dwight Opperman in response to Judge Kelley at Responses 191-92, and Vance Opperman's testimony before Congress in Response numbered 94.

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[24] Or perhaps the Court should consider this a statement under oath before the Court–a "stipulation". Though, this would mean that West would hardly be forced to go along with anything it explicitly says.

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[25] "To turn to an improper use."

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[26] "To put to wrong use." Return to text.

[27] As proved by Matthew Bender in this case, the original slip opinions either do not exist (or cannot realistically be obtained) for many of the older decisions. See also the original Sugarman Aff. at ¶ 31 and Exhibit 1-27. More important, however, is the fact that even if they were obtainable (West has testified in its 3(g) statement that) many corrections are made verbally to West by courts, and a parallel reading would not reveal which of the "changes" West makes are its own and which are the court's

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[28] West has testified that is has not kept records which would reflect all of these changes were its own work. Se the discussion, infra, regarding what records West keeps.

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[29] See Sugarman Aff. at ¶ 13 and Exhibit 1-13, the internal West memorandum from West executive, attorney Stephen Haynes dated June 25, 1985. This memorandum states: "If we obtain a preliminary injunction, this will provide us the breathing room to bring up star paging ourselves."

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[30] The competitors are put at a competitive disadvantage while West's intentional misuse of both the copyright and the judicial system served to profit the company handsomely. This activity goes on to this very day–it is embodied in the directly contrary statements West makes before this Court in comparison to its statements by James Schatz and West before the Supreme Court of Wisconsin. Return to text.

[31] HyperLaw stated in its Memorandum that:

L. Batlin & Son, affirming the holding of Gerlach-Barklow, stated that to demonstrate originality sufficient to support a derivative copyright, the "author [must have] contributed something more than a 'merely trivial' variation, something recognizably 'his own'. Id. As that court further explained,

[t]o extend copyrightability to minuscule variations would simply put a weapon for harassment in the hands of mischievous copiers intent on appropriating and monopolizing public domain work. (Emphasis added.)

Id. at 492. This is the very essence of what West does–it uses the weapon of indistinct claims to unidentified, minuscule variations to original court text to appropriate and monopolize public domain works. West cannot be permitted to continue to take material in the public domain, make minor, mechanical variations to it, and then assert a derivative copyright. This is particularly true of critical public documents such as judicial decisions. Return to text.

[32] Subject matter of copyright: compilations and derivative works Return to text.

[33] Subsection (a) states that "protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully. This does not say "used criminally"–is says "unlawfully".

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[34] Subject matter of copyright: United States Government works. Return to text.

[35] Notice of copyright: Publications incorporating U.S. Government works. Return to text.

[36] This comes back to the fact that the failure to identify was unintentional and was do with malicious or predatory intent. See e.g. Gund, Inc. v Swank, Inc., 673 F Supp 1233, 5 USPQ2d 1070 (S.D.N.Y. 1987) (Harmless errors committed without deceptive intent and do not invalidate copyright.)

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[37] Act October 19, 1976, P.L. 94-553, ¶ 102, 90 Stat. 2598, provided that this section "becomes effective on January 1, 1978". Oct. 19, 1976, P.L. 94-553, Title I, § 101, 90 Stat. 2577; October 31, 1988, P.L. 100-568, § 7(c), 102 Stat. 2858.

Act Oct. 31, 1988 (effective as provided by Sec. 13 of such Act, which appears as 17 U.S.C.§101 note) merely substituted this section for one which read:

Whenever a work is published in copies or phonorecords consisting preponderantly of one or more works of the United States Government, the notice of copyright provided by sections 401 or 402 shall also include a statement identifying, either affirmatively or negatively, those portions of the copies or phonorecords embodying any work or works protected under this title."

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[38] Notice of the wrongful nature of West's notice practices was given by HyperLaw years ago. The legislative history of section (a) of section 405 provides that '. . .Section 405(a) takes a middle-ground approach in an effort to encourage use of a copyright notice without causing unfair and unjustifiable forfeitures on technical grounds. Clause (1) provides that, as long as the omission is from "no more than a relatively small number of copies or phonorecords,' there is no effect upon the copyright owner's rights except in the case of an innocent infringement covered by section 405(b); there is no need for registration or for efforts to correct the error if this clause is applicable. The phrase 'relatively small number' is intended to be less restrictive than the phrase 'a particularly copy or copies' now in section 21 of the present law.

Under clause (2) of subsection (a), the first condition for curing an omission from a larger number of copies is that registration be made before the end of 5 years from the defective publication. This registration may have been made before the omission took place or before the work had been published in any form and, since the reasons for the omission have no bearing on the validity of copyright, there would be no need for the application to refer to them. Some time limit for registration is essential and the 5-year period is reasonable and consistent with the period provided in section 410(c).

The second condition established by clause (2) is that the copyright owner make a 'reasonable effort,' after discovering the error, to add the notice to copies or phonorecords distributed thereafter." (Emphasis added.) Return to text.

[39] And for that matter, anyone. Return to text.

[40] –West admits that it did not do this.

MATTHEW BENDER STATEMENTS OF UNDISPUTED FACT:

39. To the extent that West has edited in minor revisions, their content is impossible to ascertain absent comparison between the original source and the case as it appears in West's reporters. Nowhere in West's reporters are West's revisions specified through printing the revisions in {inverted brackets}, in a SPECIAL FONT, or otherwise. (Emphasis in original.)

WEST'S RESPONSE:

Admitted. Return to text.

[41] At 10 and 33-35. Return to text.

[42] If West suddenly discovers documentation that would allow this–after stating that there was none, and producing none–it should be both estopped and sanctioned. Return to text.

[43] West admits later in its Responses that some of the corrections which come from judges and courts are made verbally and that a parallel reading of judicial text in a West Reporter and the original text would not reveal this. There is no record.

78. Many corrections are made verbally to West by court, and a parallel reading would not reveal this fact.

RESPONSE: West admits that some corrections are suggested verbally to West by courts. Return to text.