10/09/96 HyperLaw, Inc.®

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LAW OFFICES OF PAUL J. RUSKIN
Paul J. Ruskin (PR 1288)
72-08 243rd Street
Douglaston, New York 11363
Telephone (718) 631-8834
Facsimile (718) 631-5572
Attorney for Intervenor-Plaintiff
HyperLaw, Inc.


UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

末末末末末末末末末末末末末末末末末堀

MATTHEW BENDER
& COMPANY, INC.,

Plaintiff,

and

HYPERLAW, INC.,

Intervenor-Plaintiff;

- v. -

WEST PUBLISHING COMPANY,

< Defendant.
末末末末末末末末末末末末末末末末末堀


94 CIV 0589 (JSM)

HYPERLAW'S MEMORANDUM IN SUPPORT OF ITS MOTION FOR PARTIAL
SUMMARY JUDGMENT AS TO THE COPYRIGHT OF THE TEXT OF LEGAL
OPINIONS AND PAGINATION
THIS DOCUMENT CONTAINS INFORMATION THAT WEST PUBLISHING
COMPANY HAS DESIGNATED AS EITHER CONFIDENTIAL OR ATTORNEY'S
EYES ONLY AND IS BEING SUBMITTED UNDER SEAL PURSUANT TO A
PROTECTIVE ORDER DATED APRIL 13, 1994.
[Note Unsealed as per West letter Sept. 26, 1996]


TABLE OF CONTENTS


INTRODUCTION
I. BACKGROUND
2
A. HYPERLAW'S INTENT TO COPY WEST TEXT
2
B. HYPERLAW'S INTENT TO COPY WEST PAGINATION
4
C. HYPERLAW'S INTENT TO COPY ADDITIONAL MISCELLANEOUS
INFORMATION
4
II. PRELIMINARY ISSUES
5
A. THE PREDICATE ISSUE OF THE RELATIONSHIP OF THE
COPYRIGHTABILITY OF TEXT TO THE COPYRIGHTABILITY OF
PAGINATION 5
B. COPYRIGHTS CLAIMED BY WEST PUBLISHING COMPANY IN THE
TEXT OF LEGAL OPINIONS
8
C. MATERIAL ADDED BY WEST IS NOT DISTINGUISHABLE FROM THE
ORIGINAL COURT TEXT
10
D. BECAUSE WEST CHANGES TO TEXT DO NOT MEET THE STANDARD OF
ORIGINALITY, THE NUMBER OF CHANGES IS IRRELEVANT 11
1. CHANGES MADE BY WEST IN FIRST VOLUME FEDERAL REPORTER
THIRD SERIES
13
2. WEST MAKES NO CHANGES TO SUPREME COURT OPINIONS
14
3. MECHANICAL CHANGES MADE BY WEST
15
ANALYSIS
III. HYPERLAW MAY COPY THE OPINION PORTION OF WEST CASE
REPORTS WITHOUT INFRINGING ANY WEST COPYRIGHT 17
A. THE TEXT OF WEST'S OPINIONS LACKS THE REQUISITE
ORIGINALITY FOR COPYRIGHT PROTECTION 19
B. THE TEXT OF WEST'S CAPTIONS LACKS THE REQUISITE
ORIGINALITY FOR COPYRIGHT PROTECTION 29
C. THE TEXT CONTAINED IN CERTAIN OF WEST'S HEADNOTES
WERE OBTAINED FROM FEDERAL COURTS, AND THEREFORE LACK THE
REQUISITE ORIGINALITY FOR COPYRIGHT PROTECTION 30
D. WEST HAS MERGED TEXT, WHICH RESULTS IN THE LOSS OF ANY
COPYRIGHT
31
E. IF WEST ARGUABLY HAS A COPYRIGHT INTEREST IN SOME
SMALL AMOUNT OF TEXT AND HAS NOT MERGED THAT TEXT, IT
HAS INTENTIONALLY MISUSED THE COPYRIGHT, AND THIS
RESULTS IN THE LOSS OF ANY SUCH RIGHTS. 32
IV. HYPERLAW'S USE OF FIRST PAGE CITATION AND
INTERNAL PAGE CITATION 37
A. BECAUSE A WEST COMPETITOR MAY USE THE FIRST PAGE
CITATION, INTERNAL PAGINATION DISCLOSES NO FURTHER
INFORMATION ABOUT THE WEST SELECTION AND ARRANGEMENT
41
B. WEST HAS CONCEDED BY ITS ACTIONS AND STATEMENTS
THAT THE FIRST PAGE CITATION IS IN THE PUBLIC DOMAIN 41
C. FIRST PAGE CITATIONS REFLECT ALL SELECTION AND
ARRANGEMENT 45
D. ASSUMING THAT THERE IS NOT PROTECTIBLE SELECTION,
WEST'S ARRANGEMENT OF CASE REPORTS ARE NOT COPYRIGHTABLE47
E. THE SECOND PRONG OF COMPILATION傍HE ARRANGEMENT OF
CASES. 47
V. A FINAL PROCEDURAL CONSIDERATION: HYPERLAW'S MOTION
IS RIPE FOR SUMMARY JUDGMENT, AND IN DECIDING IT THE
COURT SHOULD NOT ALLOW WEST TO CREATE "NEW",
CONTRADICTORY "FACTS" 52


TABLE OF AUTHORITIES
Cases
Alfred Bell & Co. v. Catalda Fine Arts, 191 F.2d 99 (2d Cir.
1951)
20
American Dental Association v. Delta Dental Plans
Association, 1996 U.S. Dist. LEXIS 5809 (N.D. Ill.
1996) 38, 39
Annie Lee v. Deck The Walls, Inc., 925 F. Supp. 576
(N.D.Ill. 1996)
26
Apple Computer, Inc.. v. Microsoft Corp. 35 F.3d 1435 (9th
Cir. 1994)
27
Banks v. Manchester, 128 U.S. 244 (1888)
28
Bentley v. Tibbals, 223 F. 247 (2d Cir. 1915) 31,
33, 35
Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905 (2d Cir.
1980)
21, 28
Eckes v. Card Prices Update, 736 F.2d 859 (2d Cir. 1984)
46
EFS Marketing, Inc. v. Russ Berrie & Company, Inc., 836
F.Supp. 128 (S.D.N.Y. 1993)


Eggers v. Sun Sales Corporation et al., 263 F. 373 (2d Cir.
1920) 28 Entertainment Research Group, Inc. v. Genesis
Creative Group, Inc., 853 F.Supp. 319 (N.D. Cal. 1994)
28
Feist Publications v. Rural Telephone Service Co., 499 U.S.
340 (1991)
Passim
Folio Impressions, Inc. v. Byer California, 752 F.Supp. 583
(S.D.N.Y. 1990)
27
G. P. Putnam's Sons v. Lancer Books, Inc., 239 F.Supp. 782
(S.D.N.Y. 1965)
23, 27
Gerlach-Barklow Co. v. Morris & Bendien, 23 F.2d 159 (2d
Cir. 1927)
20, 22
Grove Press, Inc. v. Collectors Publications, Inc., 264
F.Supp. 603 (C.D.Ca. 1967)
23
Harper & Row, Publishers, Inc. v. Nation Enterprises, 471
U.S. 539 (1985)
26, 29
Hearn v. Meyer, 664 F. Supp. 832 (S.D.N.Y. 1987) 26,
27, 29
Key Publications, Inc. v. Chinatown Today Publishing
Enterprises, 945 F.2d 509 (2d Cir. 1991)
45
L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d Cir.
1976)21, 22, 28, 33
Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970 (4th Cir.
1990)31, 35, 36
Lipton v. The Nature Company, 71 F.3d 464 (2d Cir. 1995)47,
48, 49
Marketing, Inc. v. Russ Berrie & Company, Inc., 836 F.Supp.
128 (S.D.N.Y. 1993)
26
Mid America Title Co. v. Kirk, 59 F.3d 719 (7th Cir. 1995)
45, 46
Morrissey v. Procter & Gamble Company, 379 F.2d 675 (1st
Cir. 1967)
29
O.W. Donald v. UARCO Business Forms, 478 F.2d 764 (8th Cir.
1973) 24
Practice Management Information v. American Medical,
877 F.Supp. 1386 (C.D.Cal. 1994) 37
ProCD v. Matthew Zeidenberg, 908 F.Supp. 640 (W.D.Wis. 1995)
37
Stewart v. Abend, 495 U.S. 207, 110 S.Ct. 1750, 109 L.Ed.2d
184 (1990)
19, 27
Sweet Home Chapter Of Com. For A G. OR. v. Babbitt, 1 F.3d
1 (D.C. Cir. 1993)



Waldman Publishing Corp. and Playmore Inc. v. Landoll, Inc.,
et al., 43 F.3d 775; 33 U.S.P.Q.2d (BNA) 1266; 23
Media L. Rep. 1065 (2d Cir. December 22, 1994) 22, 23
Weissmann v. Freeman, 868 F.2d 1313 (2d Cir. 1989)
22
West Publishing Co. v. Mead Data Central Corp., 799 F.2d
1219 (8th Cir. 1986) cert. denied 479 U.S. 1070 (1987)
Passim
West Publishing v. Gross et al, No. 1-93-CV-2071 (N.D.
Ga., filed September 10, 1993) 9
Wheaton v. Peters, 8 Pet. 591 (1834)
28
Statutes
11 U.S.C ァ 105
19
17 U.S.C. ァ 101
18
17 U.S.C. ァ 102
17 17 U.S.C. ァ 103
18
Other Authorities
Anne W. Branscomb, Lessons for the Past: Legal and Medical
Databases, 35 Jurimetrics 417 (Summer 1995)
37
Craig Joyce and L. Ray Patterson, Monopolizing the Law: The
Scope of Copyright Protection for Law Reports and
Statutory Compilations, 36 UCLA L. Rev. 719 (1989)
37
Dan L. Burk, Transborder Intellectual Property Issues on the
Electronic Frontier, 6 Stan. L. & Pol'y Rev. 9 (1994)
37
Dragich, Martha, "Will The Federal Courts of Appeals Perish
if They Publish: 44 The American University Law Review
757 (1995) 37
Hearings on H.R. 4426, Serial No. 105 (May 14, 1992)
43 </SCAP>
<

INTRODUCTION


This memorandum is submitted in support of HyperLaw's
motion for summary judgment pursuant to Rule 56(c),
Federal Rules of Civil Procedure, seeking a
declaration by the Court that:
(1) Defendant West Publishing Company does not have a
valid copyright to the text of court opinions contained in
the case reports which West publishes in its Supreme Court
Reporter, Federal Reporter, Federal
Supplement, Federal Rules Decisions,
Bankruptcy Reporter, and other reporters containing
decisions of state and federal courts and agencies.

(2) By merging copyrightable and uncopyrightable
materials, West has lost any copyright it claims to the text
of opinions published in West's case law reporters.

(3) Copying of the text of court opinions from case
reports published in West's reporters by HyperLaw does not
infringe any West copyrights.

(4) Case syllabi and headnotes prepared by federal
judges and published by West as part of its case reports may
not be copyrighted by West.

(5) Because it is not possible to distinguish between
those headnotes and syllabi authored by West and those
authored by federal judges, West has no valid copyright in
any headnotes and case syllabi contained in West case
reports which West cannot affirmatively demonstrate were not
authored by federal judges.

(6) West has no valid copyright claims to the initial
and internal page citations to opinions published in West's
case law reporters.

(7) By virtue of express waiver of copyright, West has
lost any claims it may have to the copyright of first page
citations to opinions published in West case law reporters.

(8) By virtue of copyright abuse, West has lost any
claims it may have to the copyright of initial pagination,
internal pagination and text of opinions published in West
case law reporters.

(9) HyperLaw may include, in its CD-ROM products, the
initial page and internal page citations to West's federal
appellate reporters without infringing West copyrights ; and

(10) HyperLaw may include in its CD-ROM products, the
initial page and internal page citations to opinions
published in West's Federal Supplement, Federal
Rules Decisions, Bankruptcy Reporter other West
reporters which contain decisions related to opinions
appealed to the Supreme Court or the United States Courts of
Appeals as those decisions are reported in HyperLaw's CD-ROM
product.


I. BACKGROUND

HyperLaw is a CD-ROM publisher specializing in
legal information. One product that it publishes is a CD-
ROM product containing all opinions that HyperLaw is able to
obtain from the thirteen United States Courts of Appeals for
the period from 1993 to present, and from the United States
Supreme Court for the period from 1991 to present.[FNR1] At
the hearing on June 21, 1996, HyperLaw demonstrated that its
Second Quarter 1996 CD-ROM contains over 36,000 opinions, of
which approximately 22,000 are published by West in its
print reporters, and 14,000 are not. See Transcript
of Hearing before Judge Martin, June 21, 1996, at 25.
A. HyperLaw's Intent to Copy West Text

As an example of what HyperLaw will copy from
West's reporters with respect to Volume 1 of the Federal
Reporter Third Series, HyperLaw will to copy the opinion
text[FNR2] from the West case reports for the following
cases which HyperLaw was not able to obtain electronically:
1 F.3d 202 Olde Discount Corp. v. Tupman <July
30 1993 <3rd 92-7557
1 F.3d 287 Keystone Consol. Industries v. C.I.R.
August 25 1993 <5th 91-4208
1 F.3d 855 U.S. v. Nielsen < <July 29 1993
<9th 92-10329
1 F.3d 920 USA V Soto < <August 4 1993 <9th
95-50230
1 F.3d 972 U.S. v. Nguyen < <April 13 1993
<10th 92-8032
1 F.3d 985 U.S. v. Cooley < <July 19 1993
<10th 92-3076
1 F.3d 1018 U.S. v. Muniz < <July 22 1993
<10th 92-2192
1 F.3d 1071 Hatfield v. Burlington Northern R. Co.
July 30 1993 <10th 91-3158
1 F.3d 1101 Coffey v. Healthtrust < August
3 1993 <10th 92-6202
1 F.3d 1105 U.S. v. Reed < <August 3 1993
<10th 92-6216
1 F.3d 1112 USA v. Arutunoff < August 3
1993 <10th 91-5146
1 F.3d 1122 Sauers v. Salt Lake County <August
9 1993 <10th 91-4223
1 F.3d 1137 U.S. v. Kelly < <August 13 1993
<10th 92-5045
1 F.3d 1144 U.S. v. Kimmons < August 26 1993
<11th 90-5413
1 F.3d 1317 Frank v. Relin < <July 28 1993
<2nd 92-9026

With respect to Volume 1 of the Federal Reporter
Third Series, HyperLaw also intends to copy the names of
counsel published by West in its case reports for opinions
from the Fifth and Eleventh Circuit as well as other
circuits in which West is not the slip opinion printer.
West has filed copyright registrations for Volume 1
of the Federal Reporter Third Series and its other
reporters at issue here. West contends that HyperLaw would
infringe upon West's properly registered copyrights by
copying the opinion text from these West reporters.

B. HyperLaw's Intent to Copy West Pagination
HyperLaw also intends to insert West's first page
citations and its internal page number citations to
Federal Reporter and Supreme Court
Reporter[FNR3] at the location where these page breaks
would appear in those same opinions as they are published on
HyperLaw's CD-ROM product.[FNR4]
C. HyperLaw's Intent to Copy
Additional Miscellaneous Information

In addition to text and pagination which will be
copied from West's Supreme Court Reporter and Federal
Reporter series, HyperLaw also intends to copy:
(1) text and pagination from other West reporters for
cases which are either the lower court decisions of federal
appellate decisions reported by HyperLaw, or are otherwise
referenced in those appellate decisions[FNR5], and

(2) HyperLaw will also copy such digests and syllabi
from West case reports where West cannot affirmatively
distinguish between digests and syllabi written by federal
judges and those authored by West.


II. PRELIMINARY ISSUES

A. The Predicate Issue of the Relationship of the
Copyrightability of Text to the Copyrightability of
Pagination

Initially, HyperLaw sought to file a summary
judgment motion regarding text almost two years ago, long
before the pending pagination motions were filed.[FNR6]
Because West argues that its reporters are compilations of
individually copyrightable versions of public domain
information, it is an important predicate to any analysis of
pagination that the Court be informed<[FNR7]
regarding the text issues as they relate to the
individual case reports[FNR8] within the compilation.
The degree of originality in the material compiled is,
at the very least, relevant to the consideration of the
thinness of the compilation copyright. West is not
compiling abstracted sections of court documents, but,
rather, the entirety of each document as a whole work.
An analysis of West's claims in its case reports
must address two facts which are not in dispute. First, a
reader of a West case report cannot determine where West
changed the original court opinion without a word-by-word
comparison to the original court opinion. Second, even
after such a comparison, a reader cannot determine which of
the changes she might so identify were authored by West and
as opposed to authoring by courts.[FNR9]
It is the burden of a party claiming copyright to
show exactly what changes were o its original works. West
has improperly attempted to shift this burden to publishers
seeking to copy from the case reports. At the same time
West conceals information about changes, and the identity of
the authors of those changes, from those publishers.
Because West does not identify the changes or source of its
changes, HyperLaw is forced to present an analysis of
changes from the original court opinions in 100 pages of a
representative volume坊olume 1 of the Federal
Reporter Third Series. (Exhibit 1-1) Although
this exhibit makes West's game clear, it is HyperLaw's hope
that the Court will require West to demonstrate exactly what
changes West has claims to have made to actual text in at
least one entire volume, change-by-change, word-by-word,
before the Court considers West's highly questionable
statistical claims or its vague assertions regarding West's
authorship. HyperLaw also hope that in explaining what
specific changes West claims it has made, West will
state which of those changes it can prove were
written by West (as opposed to changes authored or approved
for insertion by judges.)
< A clear statement of what West has changed, item by
item, will reveal that while West has stated to
HyperLaw[FNR10] (and to numerous others) that to determine
what changes to the original text were authored by
West, a reader merely needs to compare the slip opinion
to the opinion text in West's reporter. West knows this to
be an utter fabrication. The truth is that after an opinion
is released by a court, judges, parties and others contact
West to provide changes膨hanges not authored by West.[FNR11]
This charade of "compare to the slip opinions to find our
authorship" incorrectly credits West with whatever
authorship one might find. This cannot be maintained if
West is ever put into the position of having to first
identify all changes actually authored by West--as
opposed to the ones it merely inserts.[FNR12]

B. Copyrights claimed by West Publishing
Company in the Text of Legal Opinions
West claims copyright in the text of original court
opinions, with its mechanical changes and any changes
authored by courts.[FNR13] In preparing opinion text for
publication in its reporters, West obtains the original
opinion from the court, reorganizes the caption information
obtained from the Court, makes mechanical changes to the
text of the opinions, and then adds clearly
identifiable headnotes, digests and syllabi. West may
also make substantive changes authored or directed by
judges. West then claims that even when the headnotes,
digests or syllabi are not copied, the text of the
original court opinion cannot be copied from West reporters,
because West's "changes" would also be copied. In short,
West uses the vagueness and lack of actual word-by-word
identification of changes to convince others that all
changes originate with West and to thereby threaten those
who would copy the text of court opinions from West's
reporters.

An expression of West's all-encompassing claims can
be found in the following excerpt from a complaint filed
against another CD-ROM publisher during the same period in
which West was threatening HyperLaw:
[E]ach West Reporter contains the following editorial
enhancements which West contends was [sic.] created entirely
by West: (a) West citation for the case; (b) case
synopsis, including summary of the facts, the court's
holding and the procedural history of the case; (c) numbered
headnote(s) summarizing portions of the opinion relating to
specific points of law, including the editorial designation
of the statutes that relate to each headnote; (d) topic
designation for each headnote; (e) topic designations for
each headnote with individual "Key Number System" registered
trademark symbols (keys) and numeric designations; (f)
<miscellaneous information prepared by West inserted
within the text of the judicial opinion including
parallel citations, corrections and cross- reference
numbers relating back to corresponding headnote numbers; and
a West trademark at the end of each case report.
(Emphasis added.).[FNR14]

West reiterated this position in its deposition testimony in
this cause.[FNR15]
Bergsgaard, p. 439, ln. 3 A. Yes. We claim a
copyright in all of our editorial
Bergsgaard, p. 439, ln. 4 enhancements that we
provide to a case report, and
Bergsgaard, p. 439, ln. 5 also to the selection,
arrangement and coordination of
Bergsgaard, p. 439, ln. 6 our case reports in each
volume.[FNR16]

 

C. Material Added by West is Not
Distinguishable from the Original Court Text
The copyright notices which appear in West's
reporters are non-specific as to the identification, basis
or extent of its copyright claims to the original court
opinions as they are changed and then published by West:
Copyright is not claimed as to any part of the original work
prepared by a United States Government officer or employee
as part of that person's official duties.

West readily admits that a reader cannot determine
where West has made editorial enhancements to the original
court text without comparison to the original text of the
opinions obtained from the court. West concedes the
following in its response to Matthew Bender's 3(g)
statement:


.

WEST'S RESPONSE:
Admitted.

West has also conceded the practical impossibility
of ascertaining which of the changes to the original court

MATTHEW BENDER STATEMENT
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


opinion were authored by West.
West adds only trivial changes (such as parallel
citations, correct citation form and spelling changes)
without instructions from the authoring court or judge.
West does not make any substantive
changes to original court opinions not supplied by or
directed by the authoring court. Documents obtained from
West in discovery provide examples of letters and telephone
calls to court personnel and judges to obtain correction or
directions to insert text.[FNR17] See also Ginnow
Affidavit submitted by Bender.
The fact that West does not change anything other
than spelling errors, citation form, parallel citations and
other mechanical items without specific instruction from or
corrections by the court, presents West with a quandary: To
the extent that there might be originality in any specific
change, West always receives such a change or
instruction to insert a change from the issuing court. If
there original authorship, the "author" is not West.


D. BECAUSE WEST CHANGES TO TEXT DO
NOT MEET THE STANDARD OF ORIGINALITY,
THE NUMBER OF CHANGES IS IRRELEVANT


Before proceeding to a word-by-word analysis of
West's actual changes, HyperLaw will briefly address the
issue of West's exaggerated claims to the number of these
changes. It is clear that the number of non-creative
changes to public domain text is irrelevant, and decisions
discussed below make it clear that even 40,000 such changes
will not establish copyright. But West's red herrings
relating to these numbers, and its "statistics" must be
addressed in passing吠f only because of West's boldness.
In its deposition testimony, West produced no
statistical records of the number of changes it made to
original court opinions. However, outside of depositions,
this did not keep West from public pronouncements.
See Exhibit 1, Sugarman Aff. at ¶¶ 13-14 and
Exhibit 1-9 and 1-10. Now, without any definition as to
what constitutes a "change", without any actual examples and
without any explanations, that deposition witness, Ms.
Bergsgaard, professes the (newly-found) "statistics" about a
surfeit of changes. However, even the most superficial
review of these numbers reveals that West must be counting
as 'a change': every capitalization of a judge's name; every
addition of a parallel citation to Supreme Court Reporter,
every deletion of LEXIS citations used by courts, and every
spelling correction. West also appears to count it addition
of easily distinguished headnotes and syllabi as changes to
text, and equate with these mechanical changes in a blurry
combination. All of these changes are lumped and counted
together and called "enhancements", not distinguishing
between the authorship in headnotes and the thousands of
mechanical changes. Then West makes its overarching
copyright claims.
These changes should be understood for what they
are99% of them appear to be page numbering, capitalization,
spelling corrections and cites. This is a classic case of
'sweat of the brow". The 1% of actual authorship is
distinct and can be identified--and HyperLaw does not seek
to copy that 1%.
1. Changes Made by West in First Volume
Federal Reporter Third Series
Exhibit 1-1 is an analysis the initial pages of 1
Federal Reporter Third Series. West's
counting and its statistics would claim hundreds of changes
in this sample. Included are items such as adding parallel
citations[FNR18], updating citations changed since the slip
opinion[FNR19], deleting LEXIS and U.S. Law Week
citations[FNR20], and changing slip opinion cross-reference
page numbers to Federal Reporter cross-reference page
numbers.[FNR21] Once these changes are removed from the
count, one is left with the following 15 trivial changes in
100 pages墨ot one of which is even arguably original撲r
anything other than mechanical:
Change of citation form: a short citation form to full form.
Correct spelling in a quote: "prescribed" to "proscribed".
Correct citation: "18 U.S.C. § 1542(a)" to "18 U.S.C.
§ 1542".
Correct citation spelling: "Consul" to "Consaul".
Correct typographical error: periods at end of 2 sentences.
Correct citation: "445 A.2d" to "455 A.2d".
Correct citation: "575 F.2d 1079" to "575 F.2d 1097".
Correct citation: "U.S.S.G. § 4A2.1" to "U.S.S.G. §
4A1.2"
Change "Labor-Management" to "Labor Management" (delete
hyphen)
Correct citation: "29 U.S.C. § 412" to "29 U.S.C. §
411"
Correct citation: "1993" to "1990"
Change of citation form: a short citation form to full form.
Correct citation spelling: "McGuiness" to "MacGuineas"
Correct citation spelling: "NMF Hosp." to "NME Hosp."
Correct citation from "15 U.S.C. 4034" to "15 U.S.C. 4304"

See Sugarman Aff. at ¶¶ 3-4.
It is offensive that, at this late date, it is
HyperLaw, not West, which has to try to delineate the basis
of West's copyright claim in its reporters, and, in
particular, its claims regarding the text of the Mendell
v. Gollust decision in its reporter. Years ago, at the
dawn of this dispute, HyperLaw sent letters to West trying
to determine what changes West had made in the Mendell v.
Gollust decision穆o that HyperLaw could copy whatever
was not subject to West's copyright claims. See
HyperLaw Complaint Exhibits 12 and 13. In 1991 HyperLaw
sent West a copy of that opinion, redacting headnotes and
syllabi, and asked West to identify anything else in that
specific text in which West claimed copyright. West evaded
HyperLaw's simple inquiry with derision, obfuscation and
deception. (Now, however, the Declaration of Michelle
Kramer in Support of Matthew Bender's Motion for Summary
Judgment provides the simple answer that West has
steadfastly refused to give--that "West has reproduced the
slip opinion letter-for-letter, except for the
aforementioned mechanical changes.") In addition, West has
provided the edited slip opinion--West's dead copy. Exhibit
1-2. (Marked as "Attorney's Eyes Only", HyperLaw's
management could not see the document until August of 1996,
five years after Schatz' letter") The hundreds of changes
that West claims in the Gollust case are primarily
mechanical or typographical-- predominately formatting
changes. In short, HyperLaw should have been able to copy
and use that opinion and the others in question years ago.
2. West Makes No Changes
To Supreme Court Opinions
Even fewer changes are made by West to Supreme
Court opinion text than to text in other West reporters.
West usually obtains Supreme Court opinions directly from
the Court's HERMES computer system. See Bergsgaard
Deposition at 552-553. For example, in preparing the case
report for the Supreme Court Reporter from the slip
opinion from Feist Publications, Inc. v. Rural Telephone
Service Company, 111 S.Ct. 1282 (1991), West made
no corrections to erroneous citations, no
typographical corrections, and no corrections in
citation form. What did West change that gives it a
copyright claim? Though West has never answered this for
the Court, HyperLaw will--West deleted the Court's syllabus
and rearranged the caption, inserted information regarding
counsel obtained from the Court, and inserted
parallel citations and cross-references.[FNR22]
3. Mechanical Changes Made by West
West's testimony in deposition was far less than
forthcoming with regard to its changes, but straining
through the fog one can determine that, according to West,
the following are the only "enhancements" that are
made to the opinion text and caption portions of the
original court opinions in creating case reports.[FNR23]
West's Rule 30(b)(6) representative, Ms. Bergsgaard, was
questioned extensively concerning changes West made to the
original court opinions as reflected in Volume 1 of
Federal Reporter Third Series.<TestFNR.[FNR24].
i. Text Portion
West alleges that it:
(a) deletes slip opinion pagination and references
(e.g., supra and infra references) to slip
opinion pagination, replacing such references with the West
Federal Reporter pagination.

(b) deletes LEXIS and United States Law Week
citations.[FNR25]

<(c) inserts parallel citations to other sources
for cited materials, the majority of which are parallel
citations to West's Reporters, West's United States Code
Congressional & Administrative News, West's United
States Code Annotated, and to Lawyer's Cooperative's
Lawyers Edition.

(d) updates citations with citation information not
available when the opinion was written by the court.

(e) conforms any shortened, incorrect, or clearly
erroneous citation to the standard citation form.

(f) makes insertions, deletions, changes or corrections
upon the instructions of, or with the approval of, the
issuing court or judge.

(g) where the change is mechanical or typographical, it
may make other extremely minor insertions, deletions or
changes to citations, or may correct typographical errors
without obtaining the approval of the issuing court or
judge. West makes no substantive changes to the body of the
opinion, including correction of citation errors, without
the approval of the Court. See Bergsgaard Deposition
at 363-370,567-569.

ii. Caption Portion
Different courts have slightly different ways of
organizing the information in the caption portion. Some
courts include the names of counsel with the opinion, either
in the caption or at the end of the opinion. Some do not.
There are a limited number of ways in which a caption may be
organized, and it would be safe to say that publishers and
reporters explored every possible combination long before
West arrived on the scene. The captions of slip opinions
from courts are organized in substantially the same way they
appear in West's reporters. HyperLaw Exhibit 1-12. The
basic organization of a West caption has remained
essentially unchanged for over 75 years. (As described in
part iii below, West also inserts into the caption headnotes
and syllabi.) Thus, West has testified that the only
changes it makes to the caption portions are that:
(a) it may reorganize information in the caption
provided by the court.

(b) it may delete information such as the docket number
of the case below.

(c) it changes the case of the names of Judges to all
uppercase, if not already in that order.

<(d) where counsel names are not included in the
opinion received from the court, it adds the names, cities,
and states of counsel from other documents provided by the
court to West.

iii. Headnotes/Syllabi
West also adds headnotes with headnote numbers,
topic references, cross-references in the text of the
opinions (back to the headnotes) and a synopsis. In some
instances, West's editors draft new text for use in the
headnotes. West has testified, however, that in some
instances headnotes or syllabi are copied verbatim from the
Court's original, or the headnotes and syllabus are drafted
by the court and supplied directly to West by the judge. At
other times West creates such material under contract to
federal courts.[FNR26]
Deposition testimony shows that West's case report
for Sweet Home Chapter Of Com. For A G. OR. v.
Babbitt, 1 F.3d 1 (D.C. Cir. 1993) as well as the
balance of Volume 1 of Federal Reporter Third
Series, was prepared by West as described above.
See Bergsgard Deposition at 429-548.
ANALYSIS
III. HYPERLAW MAY COPY THE OPINION PORTION OF WEST CASE
REPORTS WITHOUT INFRINGING ANY WEST COPYRIGHT

The Copyright Act of 1976[FNR27] ("the Act")
affords copyright protection only to "original works of
authorship fixed in any tangible medium of expression". 17
U.S.C. § 102[FNR28]:
(a) Copyright protection subsists, in accordance
with this title, in original works of authorship
fixed in any tangible medium of expression, now known or
later developed, from which they can be perceived,
reproduced, or otherwise communicated, either directly or
with the aid of a machine or device. . . .
(b) In no case does copyright protection for an
original work of authorship extend to any idea, procedure,
process, system, method of operation, concept, principle, or
discovery, regardless of the form in which it is described,
explained, illustrated, or embodied in such work.. Section
103 of the Act provides that such copyright protection
includes 'compilations' and 'derivative works'[FNR29]
(Emphasis added.)

While the Act does protect "compilations and derivative
works", Section 103, 17 U.S.C. §103 provides that:
(b) 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.[FNR30] (Emphasis
added.)

A. THE TEXT OF WEST'S OPINIONS LACKS THE
REQUISITE ORIGINALITY FOR COPYRIGHT
PROTECTION
Works of the federal government are not subject to
copyright protection.[FNR31] Decisions, headnotes and
synopses authored by the judges and justices of the federal
appellate courts are works of the federal government. West
may only protect against copying of material which West
authored.[FNR32] Under the Copyright law, the term "author"
is a term of art and the term is consistently misused by
West to apply to each and every one of its so-called
enhancements, regardless of originality.
The starting point for any such analysis of
copyright must be based on examination of the elements on
which the claim is based in light of the U.S. Constitution.
In Feist Publications v. Rural Telephone Service Co.,
499 U.S. 340 (1991) the Supreme Court reviewed the
Constitutional limitations of copyright. While Feist
addressed "compilation", the underlying theories stated
apply equally to derivative claims.
Originality is a constitutional requirement. The source of
Congress' power to enact copyright laws is Article I, §
8, cl. 8, of the Constitution, which authorizes Congress to
"secur[e] for limited Times to Authors . . . the exclusive
Right to their respective Writings." In two decisions from
the late 19th Century, The Trade-Mark Cases, 100 U.S. 82
(1879); and Burrow-Giles Lithographic Co. v. Sarony, 111
U.S. 53 (1884)釦his Court defined the crucial terms
"authors" and "writings." In so doing, the Court made it
unmistakably clear that these terms presuppose a degree of
originality.
In The Trade-Mark Cases, the Court addressed the
constitutional scope of "writings." For a particular work
to be classified "under the head of writings of authors,"
the Court determined, "originality is required." 100 U.S.,
at 94. The Court explained that originality requires
independent creation plus a modicum of creativity: "[W]hile
the word writings may be liberally construed, as it has
been, to include original designs for engraving, prints,
&c., it is only such as are original, and are founded in the
creative powers of the mind. The writings which are to be
protected are the fruits of intellectual labor, embodied in
the form of books, prints, engravings, and the like." Ibid.
(emphasis in original).
In Burrow-Giles, the Court distilled the same requirement
from the Constitution's use of the word "authors." The
Court defined "author," in a constitutional sense, to mean
"he to whom anything owes its origin; originator; maker."
111 U.S., at 58 (internal quotations omitted). As in The
TradeMark Cases, the Court emphasized the creative component
of originality. It described copyright as being limited to
"original intellectual conceptions of the author," ibid.,
and stressed the importance of requiring an author who
accuses another of infringement to prove "the existence of
those facts of originality, of intellectual production, of
thought, and conception." Id., at 59-60.
The originality requirement articulated in The
Trade-Mark Cases and Burrow-Giles remains the touchstone of
copyright protection today. See Goldstein v. California,
412 U.S. 546, 561-562 (1973). It is the very "premise of
copyright law." Miller v. Universal City Studios, Inc., 650
F.2d 1365, 1368 (CA5 1981). Leading scholars agree on this
point. As one pair of commentators succinctly puts it: "The
originality requirement is constitutionally mandated for all
works." Patterson & Joyce, Monopolizing the Law: The Scope
of Copyright Protection for Law Reports and Statutory
Compilations, 36 UCLA L. Rev. 719, 763, n. 155 (1989)
(emphasis in original) (hereinafter Patterson & Joyce).
Accord id., at 759-760, and n. 140; Nimmer § 1.06[A]
("originality is a statutory as well as a constitutional
requirement"); id., § 1.08[C][1] ("a modicum of
intellectual labor . . . clearly constitutes an essential
constitutional element").
It is this bedrock principle of copyright that
mandates the law's seemingly disparate treatment of facts
and factual compilations. "No one may claim originality as
to facts." Id., § 2.11[A], p. 2-157. This is because
facts do not owe their origin to an act of authorship. The
distinction is one between creation and discovery: the first
person to find and report a particular fact has not created
the fact; he or she has merely discovered its existence. To
borrow from Burrow Giles, one who discovers a fact is not
its "maker" or "originator." 111 U.S., at 58. "The
discoverer merely finds and records." Nimmer § 2.03[E].

499 U.S. 346 - 347.
Under the 1909 Act, this Circuit held, in two
cases, that to support a copyright a derivative work must be
a distinguishable variation from the original
material. Alfred Bell & Co. v. Catalda Fine Arts,
191 F.2d 99, 102 (2d Cir. 1951); and Gerlach-Barklow Co.
v. Morris & Bendien, 23 F.2d 159 (2d Cir. 1927).[FNR33]
Reaffirming the requisite originality of variations, the
court in Alfred Bell held that what
is needed to satisfy the Constitution and the statute is
that the "author" contributed something more than a "merely
trivial" variation, something recognizably "his own."

191 F.2d at 103. In L. Batlin & Son, Inc. v. Snyder,
536 F.2d 486 (2d Cir. 1976) , the court stated that "while a
copy of something in the public domain will not, if it be
merely a copy, support a copyright, a distinguishable
variation will". Id. at 490. 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.
In 1980 the Second Circuit applied this L.
Batlin & Son concept of harassment and appropriation by
minuscule variation, in the context of the 1976 Act
Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905
(2d Cir. 1980).33 That court held that there was
insufficient originality to give rise to a derivative
copyright where there was "no independent creation, no
distinguishable variation from preexisting works[FNR34],
nothing recognizably the author's own contribution."
Id. at 910. While reaffirming the availability of
derivative copyrights under the Act, the court held that
they are subject to two important and related limitations.
First, to support a copyright the original aspects of a
derivative work must be more than trivial. Second, the
scope of protection afforded a derivative work must reflect
the degree to which it relies on preexisting material and
must not in any way affect the scope of any copyright
protection in that preexisting work. (Emphasis added.)

Id. at 909.
Recently, the Second Circuit reaffirmed L.
Batlin and Durham in Weissmann v. Freeman,
868 F.2d 1313 (2d Cir. 1989) and Waldman Publishing Corp.
and Playmore Inc. v. Landoll, Inc., et al., 43 F.3d 775,
33 U.S.P.Q.2d (BNA) 1266; 23 Media L. Rep. 1065 (2d Cir.
December 22, 1994). In Weissmann the plaintiff and
defendant were co-authors of a prior work upon which the
plaintiff's derivative work was based[FNR35]. The court
discussed the nature of the elements in a derivative work
which would confer it with the requisite minimal
originality:
[T]he manner of expression, the author's analysis or
interpretation of events, the way he structures his material
and marshals facts, his choice of words, and the emphasis he
gives to particular developments" are protected under the
copyright laws. [Citation omitted.]

Id. at 1321. That court then examined the additions
by the plaintiff in her derivative work, reversed the
district court's findings that plaintiff's additions were
too trivial to qualify for copyright protection, and found
that they were deserving of copyright protection because
they included the following new additions:
(1) a selection and arrangement of photo illustrations and
associated captions; (2) references to recent reports in the
pertinent literature; (3) selection, condensation, and
description of additional source material; (4) several new
textual additions; (5) substantial rearrangement of the
manner and order of presentation of material contained in
the parties' prior joint works; and (6) the addition of a
section. . .a revised treatment. . and the incorporation of.
. .studies.

Id. at 1322.
[P]ublication of the derivative work does not mean that use
of the original work in other works is precluded; and
publication does not mean that a copyright in the original
work shall be secured, e.g., if the work was in the
public domain, or extended. . .

495 U.S. at 231. Similarly in Waldman Publishing Corp.,
Waldman's books were deemed to be original because of
the "selection of what episodes [from] classics to include
in the books, the redrafting of the text to tailor the books
to young readers and the illustrations add more than a
quantum of originality to the original works." Id.
at. 43 F.3d 782.
It is important to note that even if a court were
to find that some minimal originality exists with regard to
such changes--it must be more than a quantum of
originality. See e.g. Grove Press, Inc. v.
Collectors Publications, Inc., 264 F.Supp. 603 (C.D.Ca.
1967) (citing a similar case in the Southern District of New
York, G. P. Putnam's Sons v. Lancer Books, Inc., 239
F.Supp. 782 (S.D.N.Y. 1965)[FNR36].) One of the 40,000
changes made in that action was described by the
court where it was required to decide whether editorial
changes made to a 19th century autobiography were
sufficiently non-trivial as to afford derivative copyright
protection to the new work:
"I've read many books," said Professor Mephesto, with
an odd, weary finality, placing his hands flat on the
podium. * * *

was altered to read:

"I've read many books," said Professor Mephesto, with
an odd finality, wearily flattening his hands on the podium.
* * *

Id. at 783. (At least these were arguably
editorial, authored changes--as compared to what West does.)
The court considered the vast number of editorial changes
and found them to be trivial.
Plaintiff made approximately forty thousand<
changes from the Verlag copy in producing its
edition. These changes consisted almost entirely of
elimination and addition of punctuation, changes of
spelling of certain words, elimination and addition of
quotation marks, and correction of typographical errors.
These changes required no skill beyond that of a high school
English student and displayed no originality. These changes
are found to be trivial. (Emphasis added.)

Id. at 605. Having made this finding of fact that
court concluded,
[s]ince the new matter in the Grove edition was trivial, the
Grove edition is uncopyrightable as a derivative work or
otherwise. . . .The words in an uncopyrightable book are in
the public domain and may be copied by anyone without
infringing any copyright.

Id. at 606.
The Eighth Circuit reached the same conclusion in
O.W. Donald v. UARCO Business Forms, 478 F.2d 764
(8th Cir. 1973). There, the plaintiff had produced and
copyrighted a legal form which the defendant had copied
(without the plaintiff's copyright notice). The court found
that the plaintiff was not entitled to a copyright on the
form because the fact that plaintiff was the first to use
such language in a service contract was nothing more than "a
trivial variation from that already in the public domain."
Id. at 766.
In determining whether the changes in a derivative work were
of sufficient originality to warrant the protection of
derivative copyright, the court in Moore Publishing, Inc.
v. Big Sky Marketing, Inc., 756 F.Supp. 1371 (D. Idaho
1990) drew upon the analyses in Batlin, supra,
and Gracen v. Bradford Exchange, 698 F.2d 300 (7th
Cir. 1983). The court quoting from Gracen concluded:
[T]he originality requirement "is not to guide aesthetic
judgments but to ensure a sufficiently gross difference
between the underlying and the derivative work to avoid
entangling subsequent artists depicting the underlying work
in copyright problems." Id. at 303. In words more
applicable to this case, if Moore's contribution was only
slight, there is a great potential for future artists
working from the original logos. . .to unknowingly
incorporate Moore's variations, leading to endless hair-
splitting copyright litigation. This situation can
be avoided. . .by only affording copyright protection to
those contributions that rise above minimal or trivial:
"A derivative work must be substantially different from the
underlying work to be copyrightable." Id. at 305.
(Emphasis added.)

Id. at 1374-5. That court held that almost
imperceptible changes, including the simplification, sizing,
spacing and arrangement of lettering (and such textual
changes as "John M. Barker Realty" to "Barker Realty" at the
request of the realty firm owner) did not amount to
"originality." As noted in HyperLaw's analysis of 100 pages
of 1 F.3d, West makes very similar enhancements--changing a
short citation form to full form, "prescribed" to
"proscribed", ."Consul" to "Consaul", "Labor-Management" to
"Labor Management" (deleting the hyphen), "McGuiness" to
"MacGuineas", and "NMF Hosp." to "NME Hosp." Moreover

[Any] aspect of a "sculptural work" which is driven
primarily by a function, utilitarian or mechanical
consideration will not merit copyright protection. Any
differences in appearance between a derivative work and the
preexisting work which are driven primarily by a
functional, utilitarian or mechanical purpose cannot be
considered when seeking artistic differences for the purpose
of originality. (Emphasis added.)

Entertainment Research Group, Inc. v. Genesis Creative
Group, Inc., 853 F.Supp. 319, 322-323 (N.D. Cal. 1994).
This Court reached the same conclusion regarding
minuscule variations in EFS Marketing, Inc. v. Russ
Berrie & Company, Inc., 836 F.Supp. 128 (S.D.N.Y. 1993).
Judge Keenan held that with regard to figures which were
derivative works of ones in the public domain were not
entitled to copyright protection because, "[m]inuscule
variations of otherwise preexisting craftsmanship that
are imperceptible to the reader are insufficient
to obtain copyright protection." Id. at 133. West
has trodden all over this standard.[FNR37]
In Hearn v. Meyer, 664 F. Supp. 832
(S.D.N.Y. 1987) Judge Leisure analyzed changes to passages
one-by-one, ultimately dismissing claims of infringement
despite some changes to 22 passages紡ffirming that when a
"one-at-a-time" analysis reveals only minor alterations of
quotations from a public domain work, there can be no
copyright[FNR38] even if there are many such changes.
West's changes per number of pages ratio is similar to the
work analyzed in Hearn謀espite the fact that its
total number of pages is far greater. In Hearn it
was at least arguable that there were actual changes
of something more than spelling and punctuation紡nd that the
new work was changed by the 'author' rather than by federal
judges! Nor would it matter, pursuant to Judge Leisure's
reasoning, if West made 100 spelling corrections and added
100 parallel citations per page if they are all mechanical
or do not exceed a quantum of originality.
Finally, there is the issue of the effect of any
derivative copyright West argues it might have. In
Stewart v. Abend, 495 U.S. 207, 110 S.Ct. 1750, 109
L.Ed.2d 184 (1990), the Supreme Court interpreted the
effect of a derivative copyright secured under
§7 of the 1909 Copyright Act. The Court explained,
[P]ublication of the derivative work does not mean that use
of the original work in other works is precluded; and
publication does not mean that a copyright in the original
work shall be secured, e.g., if the work was in the
public domain, or extended.

495 U.S. at 231.[FNR39]
West must explain what changes it maintains it made
to the original text as was the case in G. P. Putnam's
Sons v. Lancer Books, Inc. and Hearn v. Meyer紡nd
only then can the court individually examine each of the
claimed changes-- at least in representative volumes. See
also Apple Computer, Inc.. v. Microsoft Corp. 35
F.3d 1435 (9th Cir. 1994). Each "change" must be
explicitly identified before it can be evaluated, and once
identified, must be evaluated separately to determine
whether it rises to the level of originality and
copyrightability necessary to confer a derivative
copyright.[FNR40] Even then, only that particular change,
which must be identified as such so that it is
possible to distinguish original authorship from the public
domain material, cannot be copied.
Finally, there are additional, particularly strong
public policy and constitutional considerations which attach
to attempts to abuse copyright claims to appropriate,
monopolize and privatize judicial opinions. Despite West's
creative efforts to interpret a limit to the
applicable opinions, the issue of copyrightability of
judicial decisions has been well- settled law for more than
one hundred and fifty years. See Wheaton v.
Peters, 8 Pet. 591 (1834) and Banks v.
Manchester, 128 U.S. 244 (1888). This Circuit addressed
many of these considerations in Eggers v. Sun Sales
Corporation et al., 263 F. 373 (2d Cir. 1920).
B. THE TEXT OF WEST'S CAPTIONS LACKS
THE REQUISITE ORIGINALITY FOR
COPYRIGHT PROTECTION
In preparing the caption portion of a case report,
West starts with the caption as provided in the original
opinion which provides the names of the parties, the date
the opinion was filed and other such information. If the
caption from the court does not include the names of the
counsel, then West obtains that information from the Court
and simply inserts it in the opinion. [FNR41]
Facts are not themselves copyrightable. See
Harper & Row, Publishers, Inc. v. Nation Enterprises,
471 U.S. 539 (1985). Thus, even minor modifications to the
expression of names cannot be afforded copyright protection,
given the very limited number of ways of expressing the
names. Morrissey v. Procter & Gamble Company, 379
F.2d 675 (1st Cir. 1967). West's addition of the names,
cities, and states of counsel does not possess even a
quantum of original expression.[FNR42] It is nothing more
than factual recitation, and West's "expression" of those
facts is identical to the facts themselves. As Judge
Leisure stated in a similar context in Hearn v.
Meyer, supra at 846, "It is well settled that
facts are not copyrightable."

C. THE TEXT CONTAINED IN CERTAIN OF
WEST'S HEADNOTES WERE OBTAINED
FROM FEDERAL COURTS, AND THEREFORE
LACK THE REQUISITE ORIGINALITY FOR
COPYRIGHT PROTECTION

West has admitted that federal judges write some of
the headnotes and syllabi that appear in West case reports
in the reporters in issue. Bergsgaard Deposition at 388-
389, 630-632. West also admits that federal judges revise t,
and therefore are the final authors of other of West's
headnotes. West never mentioned this fact in its letters to
HyperLaw stating how to determine in what text West claimed
a copyright.
West does not, and in fact cannot any longer
designate which of its headnotes and syllabi were authored
in full or part by federal judges, and, of course, no casual
reader of the opinions can determine the which of the text
is the work of a federal judicial author. In addition, many
headnotes consist of verbatim lifting of text from the
opinion.
First, the authorship of federal judges cannot be
copyrighted--and so West must identify which of its
headnotes were written by judges. Second, to the extent
that West does not (and cannot) distinguish its work from
that of federal judges, West has invalidated its
copyright.[FNR43]
D. WEST HAS MERGED TEXT, WHICH
RESULTS IN THE LOSS OF ANY
COPYRIGHT

In its moving papers, Matthew Bender argues that
West has merged any original efforts so completely that they
cannot be distinguished from public domain materials.
Bender cites the Second Circuit's 1915 holding in Bentley
v. Tibbals, 223 F. 247 (2d Cir. 1915) as well as
Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970 (4th
Cir. 1990)[FNR44] for the propositions that "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. In
the section below, HyperLaw discusses the additional effect
of intentionally merging copyrightable and non-
copyrightable materials朴articularly where that intent is to
abuse the Act, to use the lack of clarity like a weapon to
slow litigation to control a market, and to intimidate and
threaten much smaller competitors.
E. IF WEST ARGUABLY HAS A COPYRIGHT
INTEREST IN SOME SMALL AMOUNT OF
TEXT AND HAS NOT MERGED THAT TEXT, IT
HAS INTENTIONALLY MISUSED THE
COPYRIGHT, AND THIS RESULTS IN THE
LOSS OF ANY SUCH RIGHTS.

HyperLaw's determined efforts to avoid infringing
on any legitimate claims have been met with a calculated
series of tactics including shifting definitions,
vagueness[FNR45], threats, personal attacks[FNR46], and
anti-competitive activities[FNR47]. 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.
In its moving papers, Matthew Bender argues that
HyperLaw has been the victim of intentional merging as a
form of misuse of copyright.
West has attempted to leverage the value of its copyright
impermissibly. West's scheme emerges most clearly from its
correspondence with intervenor HyperLaw, threatening
copyright liability to the extent that HyperLaw reproduced
any of West's minimal revisions to the public domain case of
Mendell v. Gollust. . . .West's post-Feist letter advances,
in short, the very position that the Supreme Court rejected
in that case.

Id. at 36-39. 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[FNR48]撲ne of which is a result of West's
own acts.[FNR49] 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紡s 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[FNR50] makes it
absolutely clear that West has had a definite institutional
strategy of using abusive copyright litigation to
delay entry of others into markets.[FNR51]. West then tools
up its own products and saturates the market before its
competitors can liberate themselves from the fly-paper of
West's abusive litigation.)
Seldom does a company persist in such a cynical and
reprehensible set of maneuvers after it has been exposed.
West, faced with its directly contrary statements to another
court, does not stop肪ut then again, why should it.
West has maintained control of a multi-billion dollar market
and its behavior right up to this very moment demonstrates
that it expects only minimal punishment when it
eventually loses. Even if this Court were to find against
West and provide declaratory relief the day after this brief
is submitted, West's 8 year jump from the time of West v.
Mead and its 3-4 year head start on HyperLaw at a
seminal period in the development of the CD-ROM legal market
has resulted in hundreds of millions of dollars in illicit
profits. HyperLaw again notes that it produced and was
selling its CD-ROM products before West had even
entered the CD-ROM market for full text federal appellate
decisions肪efore anyone had entered that market.
HyperLaw was the first publisher to produce such a
product.
A review of West's letters to HyperLaw, its
testimony before this court (and the Supreme Court of
Wisconsin) and its pleadings in other cases against small
publishers, demonstrates that its use of the merger of
minuscule variation into court opinions, it vague assertions
and its pattern of copyright litigation on the subject makes
it clear that West's actions have not been coincidental or
peripheral釦hey have been intentional. Those actions are the
centerpiece of an effective, well-planned strategy. Use of
the copyright laws for such purposes strips the actor of its
rights.
In both Bentley v. Tibbals and Lasercomb
Am., Inc. v. Reynolds, 911 F.2d 970 (4th Cir. 1990) two
sets of works could be compared to reveal differences紡nd
those differences would demonstrate the changes made by the
original publishers紡lbeit with extensive and grinding
effort. Here, even if HyperLaw could still locate the slip
opinions as specifically suggested by West, because of how
West made its changes (and because of how it documented
those changes internally) even a meticulous comparative
reading would yield absolutely nothing. West has
known this fact all along, and thus its statements to
HyperLaw that such a comparison would allow identification
of changes by West were patently false.
West has known all along that many of the "changes"
in its reporters were the sole authorship of judges, but
that the comparison suggested would yield a contrary
impression.
West has known all along that in many instances
when it has made changes, the original slip opinion was not
changed, and West's suggested comparison would result in
false information.
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[FNR52] Moreover, West misled
HyperLaw about this in its letters, and has since deceived
this and other courts about its activities and its
positions.

IV. HYPERLAW'S USE OF FIRST PAGE CITATION AND INTERNAL
PAGE CITATION

Matthew Bender has filed a Motion for Summary
Judgment in connection with the copyrightability of West's
pagination. Rather than burden the Court with a repetition
of the law and fact ably placed before the Court by Matthew
Bender, HyperLaw incorporates by reference the arguments and
the supporting documents filed by Matthew Bender. Moreover,
HyperLaw will not attempt to refute each and every one of
the many factual and legal inaccuracies in West's
papers[FNR53]. HyperLaw will address issues not covered by
Matthew Bender, and will focus on specific, narrower
applications of the law which might be applied to the facts
particular to HyperLaw: citations to the Federal
Reporter and the Supreme Court Reporter.
< HyperLaw is seeking to use the pagination from
West's Federal Reporter and West's Supreme Court
Reporter on a CD-ROM that included all or substantially
all of the "published" and many unpublished opinions of
those courts- -almost 50% more opinions than printed in the
Federal Reporter for the same periods.[FNR54]
Earlier this year, in American Dental
Association v. Delta Dental Plans Association, 1996 U.S.
Dist. LEXIS 5809 (N.D. Ill. 1996), the court analyzed a
compilation for creativity and originality with regard to
selection and arrangement. The court looked at what
constituted the minimal creativity required.
The Copyright Office has suggested that "selection . . . may
refer to the choice of less than all the data in a given
body of relevant material, regardless of whether it is taken
from one source or multiple sources." Copyright Office,
Guidelines for Registration of Fact-Based Compilations 1
(Rev. Oct. 11, 1989). Essentially this means that creativity
will not be found unless there is some real sense of choice
in the decision to include or exclude material in a
compilation. Thus, there is selective creativity in
"choosing among the 18,000 or so different baseball cards in
order to determine which were the 5,000 premium cards."
Eckes, 736 F.2d at 863.
The less choice, the less creativity. The Seventh Circuit
came to this conclusion in Mid America Title Co., when it
denied plaintiff copyright protection for the compilation of
land title data. The Mid America Title Co. Court found that
because there was a "limited universe of available data,"
there was "no room for creativity in determining which liens
and encumbrances to include." 59 F.3d at 722. It follows
from this that if a compilation includes all existing data,
there is similarly no "choice." See Patry at 200 ("Where
the entire universe of particular data is included, there
can be no selection, and thus absent some original
coordination or arrangement, there can be no
copyright."). Deciding to include all 18,000 baseball
cards from among 18,000 possible ones involves no creative
discernment and therefore no choice. Eckes, 736 F.2d at 862-
63. Emphasis added.)

Here, it is clear that West selects all
decisions of the U.S. Supreme Court, and substantially
all[FNR55] "published" decisions of the federal
courts of appeals.[FNR56] HyperLaw selects all decisions of
the U.S. Supreme Court, and all decisions (published or
unpublished) of the federal courts of appeals which it can
obtain. It is clear that neither West nor HyperLaw employs
creativity or originality in their selections, and in any
event, HyperLaw's selection could not possibly copy West's
as it is simply the inclusion of the entire possible
universe of opinions.
A. BECAUSE A WEST COMPETITOR MAY USE
THE FIRST PAGE CITATION, INTERNAL
PAGINATION DISCLOSES NO FURTHER
INFORMATION ABOUT THE WEST
SELECTION AND ARRANGEMENT
As explained below, West has clearly conceded that
other publishers, and more particularly HyperLaw, may use
the first page citations to West reporters because these
citation are "in the public domain". All that remains for
this Court to determine is whether, therefore, HyperLaw may
use West's internal pagination because the internal
pagination reveals no additional information regarding
either West's selection or arrangement.
B. WEST HAS CONCEDED BY ITS ACTIONS
AND STATEMENTS THAT THE FIRST PAGE
CITATION IS IN THE PUBLIC DOMAIN
West has repeatedly stated that its first page
citations are in the public domain, and thus, competitors
may use them in competing publications貌ven where such a use
completely reveals West's selection and arrangement.
For generations, Shepard's has been publishing
lists and tables of each and every case reported in each and
every West reporter. Its current CD-ROM product includes
the names of cases and has the ability to link to other CD-
ROMs which would clearly allow a full reflection of West's
claimed selection and arrangement. Starting in the early
1970's, LEXIS began to use the first page citation to West
case reports for the comprehensive databases that it was
creating, without any license by West. See West v.
Mead. Prior to 1985, West did not object to the use by
LEXIS of the first-page citation, again permitting LEXIS to
recreate, on-line, the purported West selection and
arrangement of its case reports.[FNR57] Even today, LEXIS
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 system that the first
page citation may be used freely by competitors because it
is "in the public domain". West's litigation attorney
in this case, Michael A. Trittipo (the same attorney who has
submitted an affidavit on behalf of West in the pending
motions) stated in writing to every law librarian, attorney,
public interest advocate and other person on the Internet
forum involving this issue, that:
On 4/15/95, Cindy Chick wrote " that the initial page cite
is not an issue (as shown by) the fact that LEXIS has been
using it for years, and has never been sued by West for
doing so. Nor has anyone else."

In response the same day, John Lederer wrote that he thought
Ms. Chick was "missing a crucial fact when you talk of LEXIS
using West cites as proof of the fact that anyone could. . .
.Lexis is a licensee of West, and pays West to use its page
numbers and cites. "The next day, Carl Hartmann [counsel to
HyperLaw, Inc.] wrote to "point out. . .that West does not
concede its first page citations--and that the use by LEXIS
is pursuant to a secret contractual agreement."

Ms. Chick was right; Messrs. Lederer and Hartmann wrong.
Simple fact: Lexis uses (and has used since its
inception in 1973) the "initial page cites" without any
license and without being sued for doing so, and so have
many other publishers.

Even if this weren't clear, Mr. Lederer could have read in
the West brief filed in Wisconsin: "West Publishing does not
object to other publishers using initial citations to its
case reports-- the volume number, the West reporter
designation, and the first page number of its case report .
. ." (Emphasis added.)

Internet Mail from Michael A. Trittipo, at
spilght@primenet.com (Schatz Paquin[FNR58]), to Law-
Lib@ucdavis.edu., Monday, April 17, 1995, Exhibit 9
hereto.[FNR59] (Attorney Trittipo was specifically quoting
from and referring all of those people to West's filings to
the Supreme Court of Wisconsin which explicitly stated that
the first page citations were in the public domain.)
West has waxed and waned, as necessity demanded,
regarding its claim to the first page citation, as well as
the basis for that claim. In the last few years, whenever
West has tried to discourage legislative or judicial changes
relating to citation claims, West has taken the position
that the first page citations were clearly in the public
domain--to discourage alternative systems: West has simply
maintained that there was no need for alternatives because
as anyone could use their public domain first page
citations. When confronted with these statements and
actions by Bender in this litigation, West responds to
Bender by describing trying to distance itself from the
statements of its counsel--referring cryptically to
"certain< unsworn statements
allegedly< made by West representative< on
occasions outside the litigation<."
In its supplemental brief to the Wisconsin Supreme
Court, dated April 3, 1995, West stated:
West Publishing does not object to other publishers using
initial citations to its case reports釦he volume number, the
West reporter designation, and the first page number of the
case report. It has stated that position repeatedly and
<contrary to the suggestion of one of West's critics,
Alan Sugarman, in his letter to the Courts膨onsistently
in deposition testimony, in the briefs it has submitted in
federal copyright cases, and in its statements to this court
on March 21. Since West has no objection to the use of
initial citations to its case reporters, even by its
competitors, those initial citations are effectively "in
the public domain<." (Emphasis added.)

In 1991, the Library Program Subcommittee of the
Automation and Technology of the Judicial Conference of
United States Courts held a hearing in the United States
Courthouse in Washington, D.C. concerning a Judicial
Conference initiative to allow the use of parallel
electronic citations to the Federal court opinions. Dwight
Opperman offered testimony on behalf of West. Also present
was Donna M. Bergsgaard. The following appears at page 78
under specific questioning on this exact point by the
Honorable Robert F. Kelly, United States District Judge,
Eastern District of Pennsylvania:
Judge Kelly: <There would be a licensing fee
for using that cite, for
< <putting the volume and page number? If that
were added to
< <the electronically recorded opinion?

Mr. Opperman: No. People can use our
Reporter citations at the
< <beginning of the page.

West's Vance Opperman then appeared before the
United States Congress. This time, he was accompanied by
not only Donna Bergsgaard, but also Professor Robert
Berring, identified as a paid "consultant" to West.
<In his Congressional testimony Mr. Opperman stated:
I cannot state often enough that, contrary to Mead's
assertion in the case and some assertions that Thomson
Corporation is now making, West did not and does not claim
copyright protection for page numbers and citations per se.

Hearings on H.R. 4426, Serial No. 105 (May 14, 1992)
at 137. West attempts to walk away from the formal
statements and admissions of the counsel it used to make
"deniable" statements to the Judicial Conference of the
United States, the United States Congress, the Wisconsin
Supreme Court, the American Bar Association, the American
Association of Law Libraries and in a large tape recorded
meeting before the American Associations of Law Libraries.
This is not only evidence of an admission regarding public
domain status of first page number, it is also evidence of
the type of copyright abuse discussed above. See the
extensive discussion of the overwhelming proof that these
statements were made in context and authorized at the very
highest level at West at Sugarman Aff. at ¶¶ 19-27
and Exhibits 1-14 through 1-23.
Moreover, in this action West has
specifically stated that HyperLaw can insert first
page citations to West reporters in its CD-ROM product.
Even if West maintains that it does not allow others to use
its first page citations despite its repeated statements,
West surely cannot argue that it has not stated that
HyperLaw can use them without reservation. At his
deposition by HyperLaw, after going around on the question
for a dozen pages, Vance Opperman (then President of West,
and at one time its counsel in West v. Mead) was
flatly asked if HyperLaw could use West's first page
citations on its CD-ROM. Caught between this case and what
West was representing to the U.S. Congress, state courts,
and others--and seeking to assure that alternative citation
systems would not displace West's first page as the standard
citation method--he stated that HyperLaw could use the first
page citations. Mr. Vance Opperman was clearly aware that
if he stated HyperLaw could not use the first page
citation, that position would be transmitted to the several
courts and professional organizations considering this issue
at that time.
< BY MR. HARTMANN:

Opperman, Page 194, Line 11 Q: Okay, I will ask
you a fact question. Does West
Opperman, Page 194, Line 12 object to putting the
first page numbers on the
Opperman, Page 194, Line 13 first page of HyperLaw, of
the cases in HyperLaw's
Opperman, Page 194, Line 14 federal appeals on its CD-
ROM disk?

< BY MR. OPPERMAN

Opperman, Page 194, Line 15 A: No.

Thus, in addition to West's statements that first page
citations were in the public domain before the Wisconsin
Supreme Court (specifically mentioning HyperLaw's president
in that statement) West expressly conceded in both this
deposition and later in the deposition by Matthew
Bender[FNR60] that HyperLaw could use those citations.

C. FIRST PAGE CITATIONS REFLECT ALL
SELECTION AND ARRANGEMENT
In its summary judgment papers, West makes a great
deal of a computerized database's ability to reflect the
selection and arrangement of a West Reporter volume. West
is correct in stating that by a series of steps a reader
could probably use HyperLaw's CD-ROM product to do so.
Indeed, in its response to the Bender motion for summary
judgment, West goes to great effort trying to "perceive" or
to create a West volume from the Bender CD-ROM, adding
another inch to their motion papers. This could have been
as easily accomplished had Bender not used West's internal
pagination, but had only used West's first page citation.
Indeed, a user of the Shepard's CD-ROM, HyperLaw's cross-
reference tables, or even LEXIS' on-line system could
accomplish the same end.
D. ASSUMING THAT THERE IS NOT
PROTECTIBLE SELECTION, WEST'S
ARRANGEMENT OF CASE REPORTS ARE
NOT COPYRIGHTABLE
It now appears that West has conceded that it
cannot establish any creativity or originality in the
selection of opinions in the Federal
Reporter[FNR61] and the Supreme Court Reporter.
The Seventh Circuit considered the minimal requisite
originality in selection for a factual compilation in Mid
America Title Co. v. Kirk, 59 F.3d 719, (7th Cir. 1995).
The court concluded that
the selection process used. . .fails to meet this minimal
level of creativity. Selecting which facts to include in
this compilation of data was not a matter of discretion
based on Mid America's personal judgment or taste, but
instead it was a matter of convention and strict industry
standards. . . .In essence, Mid America's selection of the
facts that were allegedly copied. . .was too rote and
mechanical a task to constitute an original element of the
work.

Id. at 722. The court distinguished the facts from
both Eckes v. Card Prices Update, 736 F.2d 859, 863
(2d Cir. 1984) and Key Publications, Inc. v. Chinatown
Today Publishing Enterprises, 945 F.2d 509, 512 (2d Cir.
1991):
[T]he case at bar is distinguishable both from Eckes v.
Card Prices Update, 736 F.2d 859, 863 (2d Cir. 1984), in
which a baseball card price guide was held to be
copyrightable because subjective judgment was shown in
selecting which 5,000 cards among a total of 18,000 cards
should qualify as "premium" cards, and from Key
Publications, Inc. v. Chinatown Today Publishing
Enterprises, 945 F.2d 509, 512 (2d Cir. 1991), in which
a Chinese-American telephone directory was held to be
copyrightable because subjective judgment was shown in
selecting which businesses in New York City would be of
greatest interest to the Chinese-American community.

Id. West's selection criteria is comparable to that
found in Mid America Title Co. v. Kirk吠t is "a
matter of convention and strict industry standards. . . .too
rote and mechanical a task to constitute an original element
of the work." Both Eckee and Key Publication
involved some subjective judgment in the selection process--
some criteria that were not simple industry standards. West
employs no such subjective judgment with regard to
Supreme Court and Federal Reporters吠t
publishes what the courts designate, and will not publish
what the courts determine is not to be cited or what they
mark 'not for publication'.

E. THE SECOND PRONG OF COMPILATION
THE ARRANGEMENT OF CASES.[FNR62]
Mechanistic arrangements have been held to lack
sufficient creativity to warrant copyright protection. The
author must employ some modicum of creativity in arranging
the particular selected works. In Lipton v. The Nature
Company, 71 F.3d 464 (2d Cir. 1995), the Second Circuit
restated the Feist definition of the term "original":
'Original, as the term is used in copyright, means only that
the work was independently created by the author . . . and
that it possesses at least some minimal degree of
creativity.' Feist, 499 U.S. at 345

Id. at 470. The court applied this definition to
Lipton's selection and arrangement in his compilation of
terms of venery[FNR63]. First the court found originality
in Lipton's selection, holding that, "[i]n compiling his
work, Lipton assembled terms from various fifteenth century
texts and manuscripts. These terms were selected from
numerous variations of hundreds of available terms."
Id. Thus, the Court found originality in Lipton's
arrangement because there was no material dispute that, "the
arrangement was the product of his creative and aesthetic
judgment".[FNR64] Id. (Emphasis supplied.)
West does not select its U.S. Supreme Court cases
from among a larger "universe" of available cases擁t simply
includes all cases. It does not arrange them in anything
but a simple, obvious, previously used manner. Similarly,
West includes all decisions of federal appeals courts and
publishes the text of all opinions designated by the courts
"for publication". West's arrangement, unlike Lipton's is
mechanical預n obvious ordering. Grouping decisions by sub-
division within the whole court system has been used by
other reporters historically.[FNR65] A publisher arranging
Federal Circuit Court decisions in any thing other than
random manner simply has a very limited number of possible
arrangements:
1. Docket Number
2. Date of filing
3. Date of Decision
4. Alphabetical
5. By circuit, district or other obvious
subdivision of the whole
6. By Subject matter
7. By Judge
8. By Name of Counsel
9. By Docket Number
9. A combination of the foregoing.

Even if West actually adhered to the
arrangement is says it uses (which it does not when
it is inconvenient for it to do so[FNR66]) arrangement by
circuit is hardly a revelation. Reporting of decision by
grouping according to courts within a given court system
goes back to England紡nd perhaps beyond even that. There is
certainly less originality in arranging cases by numerical
circuit in numerical order than there is in creating and
arranging business phone numbers in a telephone directory by
common business groupings紡t least with business groupings
it is more than strict numerical ordering. The issue here
isn't merely whether West's arrangement is creative. The
issue must include the fact that there are an extremely
limited number of useful arrangements預nd West merely
employs one of them.
West is not so bold [yet] to claim that there is
some novelty or aesthetic artistry to its arrangement.
Instead it resorts to a concoction of fictions such as
precede and follow and the placement of full text opinions
before something it terms "jacketed opinions". Sometimes
West even forgets about the fiction, such as Bergsgaard's
forgetting that Circuit Judicial Council opinions are part
of the concoction. Her testimony at page 653 of her
deposition shows the real arrangement without all of the
window dressing. If one reviews 1 F.3d, one just does not
see any evidence of this elaborate concoction. West's
arrangement in the permanent bound volume is so senseless
that a single bound volume may have two or more locations
for Second Circuit opinions. See Bergsgaard
Deposition at 654-656. Clearly, the so-called arrangement is
nothing more than something resulting from the necessity to
package up the opinions in some serial order, and to monitor
the opinions at the publication level as each advance sheet
is prepared.
Finally, when a collection of public domain
information is larger, more complete than another (smaller)
collection, or where the larger collection represents the
total available domain of things, can there be a copyright
violation simply by cross- reference to another
collection which is a smaller sub-set of that whole? Such
reference will always give away both selection and
arrangement. Is this really what West argues? To hold this
would be to hold that no publisher of large collections- -or
complete collections--can ever provide references to
any other collections that are less than the whole.[FNR67]
Under this strained logic, LEXIS and Westlaw certainly give
away the selection and arrangement of other specialty
reporters!

V. A FINAL PROCEDURAL CONSIDERATION: HYPERLAW'S MOTION
IS RIPE FOR SUMMARY JUDGMENT, AND IN DECIDING IT THE COURT
SHOULD NOT ALLOW WEST TO CREATE "NEW", CONTRADICTORY "FACTS"
The proper standards to be applied to determine
whether the movant has met its summary judgment are
discussed at length in the cross motions by West and Bender
for partial summary judgment regarding citations. HyperLaw
wishes only to add the following in an effort to focus in on
how issues of fact can (and cannot) be created in
summary judgment proceedings. Although West may now
'dispute' many facts stated in this motion in an effort to
avoid summary judgment, it is clear that an issue of fact
cannot be created by a conclusory denial by West, nor by
'new facts' in affidavits that contradict its discovery
responses and testimony by its designated 30(b)(6)
witness.[FNR68]
First, as can be seen in its cross-motion papers on
pagination, West attempts to create issues of fact through
conclusory statements, made without support in its moving
papers, or through affidavits by counsel for West.
(At the same time that West relies upon its counsel to make
factual assertions, it seeks to walk away from other
statements of its counsel made in other forums. By now, it
is clear that that West uses its outside counsel to provide
statements from which West may distance itself later with
plausible deniability.[FNR69])
Second, West cannot create issues of fact by
reversing previous positions and admissions in discovery
responses and West's 30(b)(6) testimony肪y suddenly
'discovering' evidence that West had previously refused to
provide, had evaded in discovery, or had simply claimed did
not exist. (West's counsel once represented that it did not
have the transcripts to the Mead v. West case釦hat
they had been burned.) HyperLaw notes in this regard that
the factual findings made by the court in West v.
Mead were based entirely on West "facts" submitted by
affidavits, with no evidentiary hearings and with no
cross-examinations. Subsequently, these same "affidavit
facts" recited in West v. Mead were then relied upon
again by the district court in Oasis v. West.
West's history, both in this case and in similar
actions, appears to be replete with evasive discovery
responses followed almost inevitably by factual revelations
contained in affidavits on summary judgment[FNR70]頬ust as
it broadly claims confidentiality in these proceedings and
then argues about the same, allegedly confidential matters
in the press, before groups addressing related issues[FNR71]
and in attempting to convince other courts[FNR72].
West should be restricted to what it begrudgingly
provided during discovery, and at deposition紡nd where
things were not available then, they should not be available
to West now. However, if West does attempt to submit new
"facts" (as it did in its cross-motion papers with Bender)
untested by cross- examination (and in some instances
directly contradictory to its original discovery responses)
HyperLaw would certainly request the benefit of examining
West regarding such revelations in an
evidentiary proceeding.[FNR73]
Dated:< New York, New York
<September 24, 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 (LK )
< < 1825 I Street, N.W.
< < Suite 400
< < Washington, D.C. 20006


<
CERTIFICATE OF SERVICE

<
I hereby certify that on September 24, 1996, copies
of PLAINTIFF HYPERLAW'S MOTION FOR SUMMARY JUDGMENT,
MEMORANDUM IN SUPPORT, RULE 3(G) STATEMENT, and 3 BINDERS OF
EXHIBITS were served, by stipulation of the parties, by
FEDERAL EXPRESS - OVERNIGHT SERVICE on:

ELLIOT BROWN, ESQ.
<IRELL & MANELLA
Attorneys for Plaintiff Matthew Bender & Company, Inc.
1800 Avenue of the Stars
Suite 800
Los Angeles, CA 90067-4276


JOSEPH MUSILEK, ESQ.
<SCHATZ, PAQUIN, LOCKRIDGE, GRINDAL & HOLSTEIN
Attorneys for Defendant West Publishing Company
2200 Washington Square
100 Washington Avenue South
Minneapolis, MN 55401

 

 

< < <



< < <Carl J. Hartmann III, Esq.




<FNOTES>
[FNT1]
HyperLaw's selection criteria for collecting U.S.
Court of Appeals opinions is as follows: HyperLaw publishes
all Courts of Appeals opinions it is able to obtain
electronically from courts or other sources of computer
data紡nd then adds all other opinions which were not
electronically available that it can locate. When HyperLaw
determines that a Court of Appeals has designated an opinion
as 'published' despite the fact that the opinion has not
been placed on a court's electronic bulletin board system,
HyperLaw attempts to locate and publish that opinion--even
if this requires reference to non-electronic sources. One
way in which HyperLaw locates opinions designated as
'published' by a court is to review West's Federal
Reporter. West also reviews the products of competitors
to identify missing cases. See Deposition of West's
Publisher John C. Smith, August 17, 1994 at 23-24. See
also Bergsgard Deposition at 737. The full text
opinions and orders published in the Federal Reporter
have either been specifically designated by the court as
"published" or are orders relating to those opinions紡s West
does not include the full text of 'unpublished' decisions in
these reporters.
In recent years, HyperLaw has published all United
States Supreme Court opinions and orders which it can obtain
in the same manner.

[FNT2]
It is probably impossible for any definition to be
provided which will not result in later quibbling by West,
but HyperLaw uses the term "original court opinion" herein
to mean all of what was initially filed or promulgated in
writing by the issuing court. (Often, this is
inappropriately referred to as a slip opinion. District
courts do not issue slip opinions. And Circuit Courts
sometimes release the opinion in manuscript form first. By
definition, unpublished opinions never appear in slip form.)
"Caption portion" of the original court opinion
includes such factual information as the names of the
parties, the docket number, information about the case
below, the names of judges and counsel, and the dates the
case was argued, decided, filed, and amended.
"Original opinion text" as used herein refers to
the body of the court's opinion殆hich is generally located
after the caption.

[FNT3]
The United States Reports, the official
reporter of the United States Supreme Court, is not
published by the Supreme Court until two or even three years
after slip opinions are released. In the interim
West's Supreme Court Reporter functions as the
standard reporter. All legal literature citing these recent
opinions and published during this interim period includes
West's citations, but does not include citations to the
United States Reports. Because of the persistence of
this legal literature (including permanently bound case law
reporters) the importance of West's Supreme Court
Reporter citations continues indefinitely.

[FNT4]
Prior to 1994, HyperLaw did not include parallel
citations to the first page and volume of the Federal
Reporter and Supreme Court Reporter. In early
1994, HyperLaw added a table which allowed users to cross-
reference cases reported by HyperLaw to the corresponding
West citations. (West has stated that HyperLaw's table does
not infringe West's copyrights.) HyperLaw only began to
place the first page citations to West's reporters at the
beginning of cases on its CD-ROM's in October, 1994--
as a result of the admissions made in the deposition
of West's president Vance Opperman. Exhibit 5 hereto, as
described in detail below.

[FNT5]
These "related cases" will be accessible by
hyperlink from the federal appellate cases on HyperLaw's
CD-ROM釦he reader will be able to "click" on the reference
to one of these related cases in the text of a reported
federal appellate decision, and the referenced opinion will
immediately appear on the computer screen.

[FNT6]
Not only was the Court asked not to decide the text
issue simultaneously with the pagination issue, the Court
was asked not to allow HyperLaw to even file its text
motion until after pagination was decided. West, LEXIS
(and, through LEXIS, Matthew Bender) all have what amounts
to an exclusive access to the opinion text for many federal
and state courts--as a result of secret agreements between
West and LEXIS in 1988, and LEXIS and Matthew Bender
(believed to be 1995-96). In addition, LEXIS has
represented the existence of a March 1996 agreement with
West-Thomson卜ade after the announcement of the merger of
West and Thomson. HyperLaw has repeatedly attempted to
obtain these documents and place them before this Court for
its review. See Deposition testimony of Vance
Opperman dated August 17, 1994 at 184-187 (Exhibit 5) in
which he stated that he, as West's president, did not know
the content of those agreements溶or did anyone else at West-
-except its attorneys.

[FNT8]
See discussion of West's use of the term case
reports, infra.
[FNT9]
As discussed below, West has testified that even it
cannot identify the actual source of all of these changes.

[FNT10]
See Exhibit 10-13 to the HyperLaw Complaint.
West stated: "Second, you should carefully compare
the enclosed copy of the public domain slip opinion
in Mendell to the West case report." (Emphasis as in
original.) Letter dated October 9, 1991 from James Schatz,
Exhibit 13 to the Complaint.
[FNT11]
West acknowledges that corrections to citations,
corrections of typographical errors, and changes to text may
have originated from the courts. West solicits the courts
to correct text for its case reports as they appear in the
advance sheets: The West advance sheets contain the
following notice on the inside cover:
NOTICE
Volume 68, Federal Reporter 3d, closes with the issue
of DECEMBER 11. Any CORRECTIONS for this volume MUST BE
RECEIVED on or before JANUARY 1, for incorporation into the
permanent edition.

[FNT12]
Moreover, as opposed to stating what changes it
makes and thus, the basis of its alleged claims, West
further conceals the exact changes that it makes to
particular opinions, by among other things, claiming that
the marked up copy of the court text, as obtained from the
courts, is Attorney's Eyes Only-- Confidential.

[FNT13]
See generally Deposition of Donna Bergsgaard
at 355-381. Also, West argues that it does not publish
"court opinions", but instead publishes "case reports"紡
semantic exercise intended by West to assign significance to
a number of nebulous activities which are all completely
devoid of originality.

[FNT14]
See Para. 10 of the Complaint in West
Publishing v. Gross et al, No. 1-93-CV-2071 (N.D. Ga.,
filed September 10, 1993), appended as Exhibit 3 to
HyperLaw's Complaint. West's takes the position that these
enhancements are "created entirely by West" simply because
they may have been inserted by West. )Frequently a court
may amend an opinion without reissuing the opinion. The
court may issue an order that says simply: "insert the
following footnote as footnote number 5 on slip page 3436
...". West then may actually insert the new footnote in the
opinion text, following the court's instruction. In order to
suggest complexity and creativity, West calls this a
"combine" and then claims a copyright in the "combined"
opinion.)

[FNT15]
A graphic expression of West's claim that it adds
original authorship to original court text can be
found in the advertisement attached as Exhibit 7 to
HyperLaw's Complaint. Marked in red are examples of the
various enhancements. It is claimed that these changes
shown were made by West (which implies a claim of original
authorship.)

[FNT16]
See also the following West response to Matthew
Bender's 3(g) statement:

<IN>MATTHEW BENDER STATEMENT OF UNDISPUTED FACT:
<IN><TestFNT40. West contends that rival publishers,
including Matthew Bender, are free to obtain slip opinions
directly from their issuing courts, but will incur copyright
liability by copying those opinions from a West reporter.

WEST'S RESPONSE:
<IN>West cannot admit or deny this statement, which is
actually a hypothetical situation, rather than a "fact,"
without having specific facts about how much copying has
been done from a West Reporter. This statement also
incorrectly refer [sic.] to opinions rather than case
reports.

[FNT17]
Senior District Judge Oliver, in his dissent to the
Eighth Circuit opinion in West v Mead states at
footnote 61, page 304.

<IN>I have additional doubts about the record before the
district court. For one of West's affidavits stated that
"West does not give any judge the opportunity to approve
West's corrections prior to publication." (A 51).

Apparently, Judge Oliver was more correct than he thought.
West never changed its policy of obtaining the approval of
the issuing court or judge before making substantive changes
to a court opinion, and the affidavit referred to by Judge
Oliver was misleading, if not intentionally false.
Unfortunately, other courts, such as the court in Oasis
v. West have repeated such statements out of the Eighth
Circuit opinion--merely repeating incorrect statements in
affidavits which were ultimately proven to be incorrect See
Oasis v. West (the paragraph beginning "The Mead
court held West's arrangement of cases in ..." It is also
noteworthy that the Oasis court states that: "Turning
to the present case, West's method of arrangement for the
Southern Reporter is undisputed" and then continues with a
recitation drawn not from West's statement of undisputed
facts, but apparently from an affidavit filed by Donna
Bergsgaard which is replete with "facts" under dispute.)

[FNT18]
See Bergsgaard Deposition at 333-335.
[FNT19]
See Bergsgaard Deposition at 359.
[FNT20]
West apparently counts, as creative changes to be
protected, even such commercially competitive acts as
stripping out cites to competitors' products (such as LEXIS
cites) placed in opinions by courts, and removing
docket numbers which would allow use of other reference
sources.

[FNT21]
West also makes typographical and formatting
changes such as double columns, font, font size, tab
spacing, indentation- -and presumably counts these as well.

[FNT22]
See Bergsgaard Deposition at 333-381.

[FNT23]
See Bergsgaard Deposition at 329-381 (as to
changes in Feist) and 429-548 (as to changes in
Sweet Home); regarding West's changes.

[FNT24]
See Bergsgaard Deposition at 355, 376-381,
552- 553.

[FNT25]
With respect to opinions in Supreme Court
Reporter, West also deletes the comprehensive syllabus
prepared by the Reporter of the Supreme Court.
[FNT26]
See Bergsgaard Deposition at 692-693.

[FNT27]
Codified at Title 17 of the United States Code.

[FNT28]
Sec. 102. Subject matter of copyright: In general

[FNT29]
Sec. 103. Subject matter of copyright: Compilations
and derivative works

[FNT30]
As defined in 17 U.S.C. ァ 101
.
<IN> A 'collective work' is a work, such as a periodical
issue, anthology, or encyclopedia, in which a number of
contributions, constituting separate and independent works
in themselves, are assembled into a collective whole.
A 'compilation' is a work formed by the collection
and assembling of preexisting materials or of data that are
selected, coordinated, or arranged in such a way that the
resulting work as a whole constitutes an original work of
authorship. The term 'compilation' includes collective
works.
<TestFNT* * * *
A 'derivative work' is a work based upon one or
more preexisting works, such as a translation, musical
arrangement, dramatization, fictionalization, motion picture
version, sound recording, art reproduction, abridgment,
condensation, or any other form in which a work may be
recast, transformed, or adapted. A work consisting of
editorial revisions, annotations, elaborations, or other
modifications which, as a whole, represent an original work
of authorship, is a 'derivative work'.. Section 101
provides that a work which is based on one or more pre-
existing works is a 'derivative work', provided however that
it must, taken as a whole, (including editorial revisions,
annotations, elaborations, or other modifications) represent
an original work of authorship.

[FNT31]
Sec. 105. Subject matter of copyright: United
States Government works. 11 U.S.C ァ 105.

[FNT32]
This was also the case under the 1909 Act. In
Stewart v. Abend, 495 U.S. 207, 110 S.Ct. 1750, 109
L.Ed.2d 184 (1990), the Supreme Court interpreted the effect
of a derivative copyright secured under ァ 7 of the 1909
Copyright Act.

[FNT33]
The Act as presently constituted requires that a
party making a copyright claim must identify the specific
material which gives rise to its claim. As a preliminary
issue, West has not done so穆omething that makes the entire
exercise of analysis of its claims extremely difficult.

[FNT34]
In Gerlach-Barklow Co. v. Morris & Bendien,
the court held (in the context of artwork) that "[w]hile a
copy of something in the public domain will not, if it be
merely a copy, support a copyright, a distinguishable
variation will, even though it presents the same theme."
Id. at 23 F.2d 161.

[FNT35]
The defendant in Weissmann did not simply
use the text for which he was properly a co-author. Rather,
he lifted the entire derivative work, deleted plaintiff's
name, replaced it with his own, and added three words to the
title.

[FNT36]
In G. P. Putnam's Sons v. Lancer Books,
Inc., supra, the court reiterated that "[i]n
order to copyright revisions or changes made in a work in
the public domain, the revisions must not be 'trivial'."
Although finding it unnecessary to decide whether the
plaintiffs had a derivative copyright, the court questioned
whether such a copyright was available where "the revisions
made were so slight as not to meet even this lenient
standard [of non-trivialness].

[FNT37]
Recently, in Annie Lee v. Deck The Walls,
Inc., 925 F. Supp. 576 (N.D.Ill. 1996) the court looked
to the Second Circuit to analyze minuscule variations in
derivative copyright.

<IN>The court finds the Second Circuit to support its
finding that an alleged infringing "derivative work" must
contain sufficient creativity and originality to deem it a
copyright infringement. Woods v. Bourne Co., 60 F.3d
978, 993 (2nd Cir. 1995). According to the Second Circuit,
in order for a work to constitute a "derivative work," it
must itself be "independently copyrightable." Id. at 990. To
be copyrightable, "a derivative work must demonstrate the
author's originality. Originality is more than merely
desirable; it is both a statutory and constitutional
requirement." American Dental Assoc. v. Delta Dental
Plans Assoc., 1996 U.S. Dist. LEXIS 5809, No. 92 C 5909,
1996 WL 224494, at *7 (N.D. Ill. May 1, 1996).

[FNT38]
"No copyright can be claimed in the verbatim
reproduction of the statements of quotations of others.
Harper and Row Publishers v. Nation Enterprises, 471
U.S. 539". Hearn v. Meyer, 664 F.Supp. at 845-6.

[FNT39]
Similarly, in Folio Impressions, Inc. v. Byer
California, 752 F.Supp. 583 (S.D.N.Y. 1990) the court
held that where the portion of a derivative work that was
copied was already in the public domain, no infringement
results.

[FNT40]
In Entertainment Research Group, Inc. v. Genesis
Creative Group, Inc., 853 F.Supp. 319 (N.D. Cal. 1994),
the court looked to the Second Circuit's analyses of
derivative copyright in Batlin, supra, and
Durham Industries, supra, and adopted the
Durham test for derivative copyright. As set forth
in the quoted holding, however, the court refined the test.

< Just as the court in Entertainment
Research Group found that the individual aspects which
constitute the differences between a sculpture and the work
from which it is derived must not be driven primarily by
functional, utilitarian or mechanical purposes, so too here
the differences between the text of decisions in West's
reporters and the work of the courts from which that text
was derived must be not be driven primarily by ideas (as
opposed to the expression of those ideas), facts, or
expression for which there are very limited expressions.

[FNT41]
For example, the Eleventh Circuit does not include
the names of counsel in its printed slip opinions, which,
not coincidentally, are printed by West under a contract
with the Court. However, the court then provides to West
the docket sheet or brief covers so that West can insert the
names of counsel into its case reports. Indeed, since the
Eleventh Circuit slip opinions include the West digests,
the primary difference between the slip opinion as printed
by West and the case reports printed by West is the addition
of counsel names. West claims a copyright as to the names
of counsel, a fact. See HyperLaw Exhibit 1-3 and
Sugarman Aff. at 7.
Similarly, the Reporter of Decisions for the United
States Supreme Court does not include counsel names in the
printed slip opinions; however, these names are then added
three years later when the Reporter releases the Preliminary
Print. The Supreme Court inserts counsel names in the
exact same location as does West, after its syllabus
and just before the beginning of the text of the opinions.
For the interim period, the Supreme Court provides to
West the names of counsel which West inserts into its
Supreme Court Reporter that comes out shortly after release
of the slip opinion. West then seeks to claim a
copyright on the counsel names as they appear in the Supreme
Court Reporter.

[FNT42]
See Bergsgaard Deposition at 373-375, 477,
552- 554.
[FNT43]
In addition, many of West's headnotes were written
more than 75 years ago. Many of the key numbers, topics,
and topic phrases used in the headnotes in West case reports
were initially published in West reporters more than 75
years ago. See e.g. Bergsgaard Deposition at 633-
636. Clearly, HyperLaw may copy any such portions of West's
"system".

[FNT44]
223 F.2d 247, 256 (2d. Cir. 1915).

[FNT45]
West has argued that it's completely non-specific,
vague and circular answers to HyperLaw's interrogatories on
the very central factual question in this case are
adequate. In Defendant's Memorandum in Opposition to
HyperLaw's Motion to Compel Discovery at 17-18, West stated:

<IN>West has done its best to answer HyperLaw's discovery
requests. For example, HyperLaw's Interrogatory No. H-1-
Int-1 asked West to "identify all material for which
defendant West claims any copyright or other rights in [a
redacted copy of a West case report]." West's response. .
.was:

<IN>West claims ownership and a copyright in the material
which is the subject of this interrogatory to the fullest
extent permitted by law. Subject to the general objections,
West states that each volume of Federal Reporter --
as with all West National Reporter System publications --
contains the following editorial enhancements created
entirely by West: (a) West citation of the case; (b) case
synopsis, including a summary of the facts, the court's
holding(s), and the procedural history of the case; (c)
numbered headnote(s) summarizing portions of the opinion
relating to specific points of law, including the editorial
designation of the statutes that relate to each headnote;
(d) topic designations for each headnote; (e) topic
designations for each headnote with individual "Key Number
System" registered trademark symbols (keys) and numeric
designations (key numbers) to which headnotes are
referenced; (f) miscellaneous information prepared by
West inserted within the text of the judicial opinion
including parallel citations, corrections, and cross-
reference numbers relating back to corresponding headnote
numbers; and (g) at the conclusion of each West case
report, a West trademark, the symbol of a key enclosing the
words 'West Key Number System.'. . .(Emphasis added.)

It is abundantly clear that West simply sidestepped
the interrogatory, refusing to point to the actual elements
in a redacted case report, to which it claimed copyright.

[FNT46]
See HyperLaw's Opposition to West's Motion
to Dismiss.

[FNT47]
See HyperLaw's Opposition to West's Motion
to Dismiss.

[FNT48]
The original slip opinions either do not exist (or
cannot realistically be obtained) for many of the older
decisions. Sugarman Aff. at 31 and Exhibit 1-27. More
important, however, is the fact that even if they were
obtainable (West has testified 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

[FNT49]
West has testified that is has not kept records
which would reflect which of these changes were its own
work.
<
[FNT50]
See Sugarman Aff. at 13 and Exhibit 1-13,
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."

[FNT51]
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.

[FNT52]
The fact that West cannot actually identify which
"changes" came from judges in all instances of change is,
alone, enough to destroy any copyright claims--particularly
where the original was a work of the government. The fact
that they then did not identify the changes that they could
determine with particularity only compounded the problem--
and then their deceptions hid the problem. Their counsel
simply put the icing on the cake by intentionally hiding
these facts in their contradictory and evasive statements
both as West's throwaway surrogates and in submissions to
courts.

[FNT53]
West's papers are replete with unsupported
conclusory statements預nd inaccurate references to
supporting authority. One example, is West's vain attempt to
characterize West Publishing Co. v. Mead Data Central
Corp., 799 F.2d 1219 (8th Cir. 1986), cert.
denied, 479 U.S. 1070 (1987) as "good law", West claims
that "a number of courts have cited West v. Mead with
approval after Feist." West's Opposition to Matthew
Bender's Motion for Summary Judgment at 22. In fact, West
only cites two cases: Practice Management Information v.
American Medical, 877 F.Supp. 1386 (C.D.Cal. 1994) and
ProCD v. Matthew Zeidenberg, 908 F.Supp. 640
(W.D.Wis. 1995). Neither of these cases cited West v.
Mead with approval for the proposition at issue here as
West asserts. In Practice Management, the California
district court cited West v. Mead for the proposition
that, "required use of West numbering system for its
reporters in the practice of law" would not invalidate
West's copyright." 877 F.Supp. at 1391. This was a
required use case, and did not address the underlying
validity of the copyrights themselves. In ProCD, a
case which has been reversed by the Seventh Circuit, the
Wisconsin district court noted the holding of West v.
Mead, contrasted a law review article critical of the
West v. Mead decision (Craig Joyce and L. Ray Patterson,
Monopolizing the Law: The Scope of Copyright Protection for
Law Reports and Statutory Compilations, 36 UCLA L. Rev. 719
(1989)), and merely noted that the ProCD plaintiff's
arrangement lacked the minimal creativity for copyright.
Neither the Practice Management nor the ProCD
courts analyzed or determined that West v. Mead was
"good law"釦hat is, survived in the post-Feist era.
Nor have post-Feist writers "accepted"
West v. Mead as consistent with Feist, as West
argues. West's Opposition to Matthew Bender's Motion for
Summary Judgment at 24. One such writer cited by West, Anne
W. Branscomb, Lessons for the Past: Legal and Medical
Databases, 35 Jurimetrics 417 (Summer 1995), does not even
mention West v. Mead or Feist in the section
from which West quoted, and the quote cited by West was
merely a comment in passing墨ot an analyzed or researched
point of law. The quote from the Burk article (Dan L. Burk,
Transborder Intellectual Property Issues on the Electronic
Frontier, 6 Stan. L. & Pol'y Rev. 9 (1994)) is misleading.
It does not mention West v. Mead, but merely states
that order, format and arrangement are copyrightable. Of
course, as Feist teaches, those elements are
copyrightable only if they possess the requisite
originality.

[FNT54]
Each of the United States Courts of Appeals has a
rule by which opinions are designated as citable authority,
"published" or "for publication". Dragich, Martha, "Will The
Federal Courts of Appeals Perish if They Publish: 44 The
American University Law Review 757, 761 (1995). Such
designated opinions are published in slip opinion format吠n
most of the courts by private contractors. (For example,
the private slip opinion printer for the First, Fifth,
Eleventh, and District of Columbia Circuits is West, and the
slip opinion printer for the Ninth and Fourth Circuits is a
subsidiary of Thomson Publishing, which now owns West.)
When a court amends an opinion, it may issue a formal order
which may be disseminated widely, or it may engage in more
informal processes, including communicating the changes to
West without benefit of a formal order. West's Federal
Reporter reprints these published opinions with the
addition of headnotes and syllabi紡nd calls these reprints
"case reports." In determining which opinions to publish in
full text in the Supreme Court and Federal
Reporters, West engages in virtually no selection.
The Court should not lump all West reporters
together when analyzing selection and arrangement, although
West tries this in an attempt to confuse with complexity.
Although Bender and the Department of Justice are correct in
arguing that internal pagination may be copied even if the
arrangement and selection to a reporter is original,
HyperLaw does not concede the Supreme Court Reporter
and Federal Reporter selection and arrangement of
opinions is sufficiently creative and original to warrant
copyright protection. A compilation copyright rests upon
selection and arrangement. A compilation of public domain,
non-copyrighted material is necessarily "thin". For these
two reporters, West's selection is thin to the point
of non-existence, and the arrangement is so thin as
to force West to resort to hypothetical inventive
categorizations.

[FNT55]
See Deposition of West's Publisher John C.
Smith, dated August 17, 1996, stating that West has a LEXIS
subscription, and regularly runs searches to find any cases
West may have missed which LEXIS somehow obtained.
Id. at 23- 24.
[FNT56]
The American Dental Association court also
looked at the necessary modicum of creativity in the context
of a work which does not exhibit the imprimatur of its
author's personality. Questioning whether, "creation by
committee" is an oxymoron, the court noted that "the more
participants that contribute, the less individual紡nd
therefore the less personal釦he result. Collectivism, by its
very nature, necessitates dilution of the individual
creative impulse." Id. West consistently maintains
that its efforts are based on a system that is a hundred
years old釦he result of the efforts of untold masses
yearning to select and arrange. West would be hard pressed
to identify the individual personality in its selection or
arrangement. To the contrary, West's purported selection
and arrangement of its Federal Reporters are merely
the mechanical processes determined by committee殆hich have
devolved to an institutional reliance on the dictates of the
courts and the relationship which has become the system
over the past 100 years.

[FNT57]
It is interesting to note that it was not until the
West v. Mead case, years after such use had been
going on openly, that there was ever an expression that West
consider this copying of its selection and arrangement to be
"fair use" rather than use of something in the public
domain預 thought which appears to have surfaced in West
v. Mead, not as a finding of the court, but as a
stipulation of the parties. Given West's silence during all
the years when LEXIS used the first page citation which
fully disclosed the selection and arrangement of cases in
West reporters, it is not at all surpassing that West
decided to stipulate, rather than litigate a losing
position. Moreover, it is not surprising that the
stipulation after that time in light of two secret 1988
alleged agreements between West and LEXIS, the off-docket
administration of those alleged agreements by the district
court--leaving no record of the joint efforts, the alleged
meeting outside the United States between West and LEXIS to
manage those agreements, and the alleged March 1996
agreement between West-Thomson and LEXIS immediately after
the announcement of the West-Thomson merger.
<
[FNT58]
West's Internet messages specifically identify
Schatz Paquin, and its role as West's counsel, in such
messages--of which there were many.

[FNT59]
See "Gopher://liberty.uc.wlu.edu:70/0R993751-
995714- /library/law/law-lib-list/law-ib_archive/lawlib.9504
[FNT60]
Mr. Opperman never mentions "fair use". He stated
that West did not consider HyperLaw any real competitive
threat紡nd he did not even suggest that West premised
this waiver on fair use. Such a concern would not even be
relevant if "fair use" was the applicable concept.

[FNT61]
Throughout this litigation, West has steadfastly
refused to identify cases in its Federal Reporters in
which its "selection" differed from the cases designated for
publication by the issuing court. See e.g., West
Publishing Company's Responses to Matthew Bender's Third Set
of Interrogatories, No. 1., (Exhibit 7 hereto) in which West
objected the request, "with respect to case reports of
federal appellate decisions, on the grounds that it has
already produced and specified records (i.e. the "dead copy"
containing actual slip opinions received by West) from which
the answer to this interrogatory may be derived or
ascertained..." In fact, West never specified or identified
the actual cases which would have provided an answer to the
interrogatory.

[FNT62]
West's argument that the location of the page
breaks involves creativity has fallen from its own weight.
As is aptly demonstrated in Bender's 3(g) statement, page
break insertions are done by automatic computer programs.
It now appears that these computer programs are less than
state-of-the-art, even for such mechanical systems--and that
West page breaks may occur within citations or within
hyphenated words. And the supposed magical nature of a page
break location is belied by West's own exhibits. Where page
breaks in a printed West Reporter may appear in the middle
of a hyphenated word, when West places the opinion on
Westlaw, it moves the page break to the end of the
word. See 71 F.3d 471-2 in West's Swanson Exhibit E
and compare to 71 F.3d 471-2 in the Westlaw version in West
Swanson. So, one wonders which of these break points is
copyrighted by West. See Sugarman Aff. at
33.
To sidestep this problem, West has concocted the
artifice it terms proceed and follow: related cases
or orders related to a case are placed together. First,
this is not an example of anything other than purely
mechanical arrangement. Second, and more telling, is the
fact that even this 'precede and follow' concoction is not
always followed穆eemingly depending on whether the "precede"
case has already been printed prior to the time the "follow"
case is rendered. (Because a case may always be vacated or
amended long after West has published a bound volume, a user
can take no comfort in the absence of a "follow" opinion--it
is absolutely a meaningless convention紡nd in all cases must
resort to tools such as Shepard's to determine if a case has
been superseded or modified in some fashion.)
It suffices to say that the page breaks are not
only mechanical, but that the computer program which West
uses reflects no special considerations. It is simply the
computerized version of a human typesetter. Words break at
odd places, citations are mangled, critical terms are not
kept together, and very odd results are apparent throughout.
In short this is nothing more than one of hundreds of
generic, old style typesetting programs, and which certainly
has no "creativity". To claim that there is value in where
these page breaks occur or in sometimes putting two related
decisions together if they happen to come out in time to do
so is not only a legal error, it is absurd in light of how
it is done.

[FNT63]
The Lipton court explained:

<IN>The phrase "terms of venery" is Lipton's. "Venery" is
defined by Webster's Third New International Dictionary as
"game" or "animals that are hunted." Examples of such terms
include "a pride of lions," "a rafter of turkeys," "a gaggle
of geese," "a shrewdness of apes," "a murder of crows," and
"a parliament of owls." Lipton's third edition includes
"human" terms of venery including "a bench of judges," "a
college of cardinals," and "a board of trustees."

Id. at fn. 2.

Lipton works had numerous non-mechanical, creative aspects:

First, the entire project that Lipton engaged upon was
creative, imaginative and original in its conception ab
intiio.

Next, he researched 15th century texts which must have
entailed knowledge of locating the texts and determining
which texts covering many subjects should be read.

Lipton then identified and extracted individual pieces of
information that he deemed to be interesting, not entire
documents, from this mass of information.

Then, Lipton translated the Middle English to modern
English, which is clearly not a straightforward exercise,
and surely required creativity in the translation.

Fourth, as the court noted, he arranged the terms of venery
according to their "'lyrical and poetic potential.'"

Lipton's lyrical and poetic creativity and originality can
nowhere be compared to the act of collecting and reprinting,
wholesale, entire court opinions.

Id. at 467.

[FNT64]
The Lipton Court specifically distinguished,
as lacking originality, "mechanical" arrangements where the
selection is a pre-existing and unremarkable act.

<IN>We have held that while "mechanical" arrangements, such
as alphabetical or chronological order, do not display the
requisite originality, any minimal level of creativity is
sufficient to render an arrangement protectible. Key, 945
F.2d at 514 (finding arrangement of businesses in directory
to be protectible where "the arrangement is in no sense
mechanical" and "entailed the de minimis thought needed to
withstand the originality requirement")

Id.

[FNT65]
In her deposition, Bergsgaard testified:

<IN><TestFNT4 A. [BY MS. BERGSGAARD] The date order is
you take the 末we have the advance
<TestFNT5 sheet, and we have decided that we're going
to publish
<TestFNT6 cases by circuit, first of all, so we take
the D.C.
<TestFNT7 Circuit and we take the First Circuit cases
and the
<TestFNT8 Second, and so on and so on. Actually, we
start with
<TestFNT9 the U.S. Conference and then follow it by
the D.C.
<TestFNT10 opinions. Then within each of those
groups, we put
<TestFNT11 them in chronological order by the filing
date of the
<TestFNT12 opinion. And then one or more advance
sheets
<TestFNT13 generally it's two; sometimes it's one
advance sheet
<TestFNT14 is combined to make the bound volume.

Bergsgaard Deposition at 653.

[FNT66]
Certainly if this was not a completely vacuous
argument on all of the other grounds asserted, the fact that
West does not actually use the stated arrangement when it is
inconvenient or clumsy to do so must carry the day!

[FNT67]
Under this theory Shepard's CD-ROM, all tables of
cross- references to smaller copyrighted collections
(including HyperLaw's) whether in print, on CD-ROM, on the
Internet or on- line, infringe on copyrights紡s they all
clearly reveal or "give away" both selection and
arrangement.

[FNT68]
HyperLaw directs the Court's attention to West's
previous argument that there were various issues of fact
pertaining to the two prongs for case or controversy.
Without any witness affidavits, West's counsel repeatedly
made statements of fact which were never supported--
no witness ever appeared, and West simply abandoned its
conclusory representations when challenged. Assertions were
made in moving papers regarding what Mr. Haynes did or did
not say, about what HyperLaw could or could not do, and
other similar facts. There never was any support other than
the statements in papers--When put to the test, West
provided no affidavits from Mr. Haynes or others to contest
HyperLaw's statements--and produced only one witness, who
did not testify as to most of these "attorney assertions" at
the hearing.

[FNT69]
An example of a bare denial of fact without
substantiation which relates to the instant issues is West's
efforts to backtrack on its knowing and intentional
admission that first page citations are in the public
domain, as discussed. To support the West claim that the
statements were "allegedly"< made, where is the
affidavit of West's counsel Brady Williamson denying that he
stated what is found in the transcript that he personally
filed with the Wisconsin Supreme Court? Where is the
affidavit of West's counsel Jim Schatz denying that he
stated what can be clearly heard on a tape recording of a
presentation in front of several hundred law professors, law
librarians, and publishers?

[FNT70]
Ms. Bergsgaard's present statistical studies being
just one flagrant example紡s she claimed at deposition that
the information to create such statistics simply did not
exist. HyperLaw will not burden the record with a lengthy
comparison of the paucity and vagueness of West's discovery
responses to its revelatory assertions on summary judgment,
but would welcome the invitation from West or the Court to
do so.

[FNT71]
Again, HyperLaw would be more than willing to
provide a recitation of the applicable facts regarding this
point if West wishes to contradict the fact.

[FNT72]
While maintaining before this Court that methods of
preparing case reports was highly confidential, West's
representatives (including Ms. Bergsgaard) have ranged far
and wide, strenuously arguing West's position using the same
"confidential" facts貌ven passing out informational handouts
containing information on the topic.

[FNT73]
It is noteworthy that West's President, Vance
Opperman, in his Supplemental Affidavit, dated June 22,
1995, first stated that that although Matthew Bender's New
York Product was star paginated to West's reporters, West
did not object to that product. This was directly contrary
all prior testimony of both Mr. Opperman and Ms. Bergsgaard-
-the "change" being predicated on the fact that West could
then understand the product--whereas it had not been able to
throughout the long discovery period. Opperman Supplemental
Affidavit at 10, 13.

</FNOTES>


 

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