INTERVENOR-PLAINTIFF HYPERLAW, INC.'S POST-TRIAL BRIEF-IN-CHIEF - CHALLENGE TO WEST TEXT COPYRIGHT CLAIMS - March 4, 1997

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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

MATTHEW BENDER & COMPANY, INC.,
Plaintiff,
against
WEST PUBLISHING COMPANY,
Defendant. :


HYPERLAW, INC., :
Intervenor-Plaintiff, :
against
WEST PUBLISHING COMPANY,
Defendant.


94 CIV 0589 (JSM)

TABLE OF CONTENTS

---

TABLE OF CASES	ii
TABLE OF STATUTES AND OTHER AUTHORITIES	v
REQUESTED FINDINGS OF FACTS	1
ARGUMENT	21
I. West has no Enforceable Copyright in the Text of Individual Judicial Decisions in its Supreme Court Reporter and Federal Reporter Series, redacted to remove headnotes and syllabi.	21
II. Section 403 of the Copyright Act is a partial or total bar to West's claim of copyright in the text of judicial decisions.	37
III. Even If the Court Finds That West Has a Copyright in the Text of Judicial Decision, HyperLaw's Stated Intended Use of Them in its Product Is a Fair Use	44
A. Purpose And Character Of The Use	45
B. Nature Of The Work	46
C. Amount And Substantiality Of The Portion Used In Relation To The Copyrightable Work As A Whole	46
D. Effect Of The Use On Potential Market For Copyrighted Work	47
E. Public Interest	48
F. Section 403 of the Copyright Act, as Applied to Fair Use	49
G. Balancing The Factors Favors HyperLaw	50
CONCLUSION	51

TABLE OF CASES

Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951)	27
American Geophysical Union v. Texaco Inc., 60 F.3d 913 (2d Cir. 1994), cert. dismissed, 116 S. Ct. 592 (1995)	45
Bentley v. Tibbals, 223 F. 247 (2d Cir. 1915)	27, 44
Building Officials & Code Adm'rs Int'l, Inc. v. Code Technology. Inc., 628 F.2d 730 (1st Cir. 1980)	48, 49
Campbell v. Acuff-Rose Music. Inc., 510 U.S. 569, 114 S. Ct. 1164 (1994)	45-47, 51
CCC Information Services, Inc. v. MaClean Hunter Market Reports, Inc., 44 F.3d 61, 68 (2d Cir. 1994)	25, 26, 48
Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992)	23
Consumer's Union of United States, Inc. v. General Signal Corp., 724 F.2d 1044 (2d Cir. 1983), cert. denied, 469 U.S. 823, 105 S. Ct. 100 (1984)	46
Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905 (2d Cir. 1980)	29, 31
Eckes v. Card Prices Update, 736 F. 2d 859 (2d Cir. 1984)	43
EFS Marketing, Inc. v. Russ Berrie & Company, Inc., 836 F.Supp. 128 (S.D.N.Y. 1993)	34
Entertainment Research Group, Inc. v. Genesis Creative Group, Inc., 853 F.Supp. 319 (N.D. Cal. 1994)	31
F.E. I. Publications, Ltd. v. Catholic Bishop of Chicago, 214 U.S.P.Q. 409 (7th Cir. 1982)	44
Feist Publications v. Rural Telephone Service Co., 499 U.S. 340 (1991)	22, 23, 29, 34
Financial Information, Inc. v. Moody's Investors, 751 F.2d 501 (2d Cir. 1984)	36
Folio Impressions, Inc. v. Byer California, 752 F. Supp. 583 (S.D.N.Y. 1990)	22
G. P. Putnam's Sons v. Lancer Books, Inc., 239 F.Supp. 782 (S.D.N.Y. 1965)	32
Gerlach-Barklow Co. v. Morris & Bendien, 23 F.2d 159 (2d Cir. 1927)	27-29
Gracen v. The Bradford Exchange, 698 F.2d 300 (7th Cir. 1982)	27, 33, 34
Grove Press, Inc. v. Collectors Publication, Inc., 264 F.Supp. 603 (C.D.Ca. 1967)	31-33
Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985)	24, 49
Hearn v. Meyer, 664 F. Supp. 832 (S.D.N.Y. 1987)	35, 36
Knitwaves Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995)	30
Kregos v. Associated Press, 937 F.2d 700 (2d Cir. 1991)	25
L. Batlin & Son, Inc. V. Snyder, 536 F.2d 486 (2d Cir. 1976)	27-29, 31, 33
Lasercomb Am., Inc. v. Reynolds, 911 F. 2d 970 (4th Cir. 1990)	43
Lowenschuss v. West Publishing Co., 402 F. Supp. 1212 (E.D. Pa. 1975), aff'd, 542 F.2d 180 (3d Cir. 1976)	48
Moore Publishing, Inc. v. Big Sky Marketing, Inc., 756 F.Supp. 1371 (D.Idaho 1990)	33
Morrissey v. Procter & Gamble Company, 379 F.2d 675 (1st Cir. 1967)	24, 25
National Basketball Association v. Motorola, Inc., 1997 WL 34001 (2d Cir. January 30, 1997)	23
New Era Publications Int'l' Apes v. Henry Holt & Co., 873 F.2d 576 (2d Cir. 1989)	48, 49
O.W. Donald v. UARCO Business Forms, 478 F.2d 764 (8th Cir. 1973)	33
ProCD, Inc. v. Zeidenberq, 86 F.3d 1447 (7th Cir. 1996)	23
Salinger v. Random House. Inc., 650 F. Supp. 413 (S.D.N.Y. 1986)	45
Sony Corp. v. Universal City Studios, Inc. , 104 S. Ct. 774 (1984)	49
Stewart v. Abend, 495 U.S. 207, 110 S. Ct. 1750, 109 L. Ed. 2d 184 (1990)	22
Unigard Security Insur. Co. v. Lakewood Eng'; & Mfg. Corp., 982 F.2d 363 (9th Cir. 1992)	47
Waldman Publishing Corp. v Landoll, Inc., 43 F.3d 775 (2d Cir. 1994)	29
Weissmann v. Freeman, 868 F.2d 1313 (2d Cir. 1989)	29, 30, 49
Whimsicality, Inc. v. Rubie's Costume Co., Inc., 891 F. 2d 452 (2d Cir. 1989)	43
Wright v. Warner Books. Inc., 953 F.2d 731 (2d Cir. 1991)	50

TABLE OF STATUTES AND OTHER AUTHORITIES

17 U.S.C. § 101	21
17 U.S.C. § 102	21, 28
17 U.S.C. § 103	21, 22
17 U.S.C. § 105	22, 37
17 U.S.C. § 107	45
17 U.S.C. § 301	23
17 U.S.C. § 401	41
17 U.S.C. § 403	37-41, 43, 49, 50
17 U.S.C. § 405	38, 40
2 Nimmer on Copyright § 7.14.	39
3 Nimmer on Copyright '' 13.05	45, 46
Berne Convention Implementation Act, Public Law 100-568, 102 Stat. 2853 (1988)	37, 41
Copyright Act of 1976, 17 U.S.C. § 101, et seq.	21, 37
H.R. Rep. No. 100-609, 100th Cong., 2d Sess. 46 (1988)	42
Rep No. 94-1476, 94th Cong. , 2d Sess. 145 (1976); S. Rep. No. 94-473, 94th Cong., 1st Sess. 128 (1975)	.39
Levine and Squires, "Notice, deposit and registration: The importance of being formal" 24 U.C.L.A. Law Rev. 1232	39
Pierre N. Leval, Towards a Fair Use Standard, 103 Harv. L. Rev. 1105 (1990)	47
Public Law 94-553, 90 Stat. 2541 (1976)	37
William F. Patry, The Fair Use Privilege in Copyright Law at 363 (1985)	49

[Page1] REQUESTED FINDINGS OF FACTS

What West sells, and what it represents it sells, are renditions of federal courts' decisions which are accurate. In fact, West's "intent is to make a very accurate report." Trial Transcript. at 35.

West receives, in at least some cases free of charge[1], copies of the works of the federal government. West does not dispute that its selection criteria for Supreme Court's decisions is to simply print all published decisions. When West receives decisions from the Supreme Court, it receives the slip copy in electronic form—downloaded directly from text placed by the Court's clerk on the Supreme Court's Hermes' system. Id. at 13. West will not accept decisions at any level of the federal courts unless that case comes directly from the court's clerk.

When asked if there is anything in the Feist text from the Supreme Court Reporter that West authored (independent of the Court's authorship) Ms. Bergsgaard stated that

we would be the author of expanding citations. We look at every citation that is in the opinion and we expand upon those citations. We create the caption of the case and indicate how that is going to be cited. [Emphasis added.]

Id. at 15.[2] Even after discovery, motions and trial, HyperLaw does not know of any other clear

[Page2]claims of original authorship in West's publication of Supreme Court cases. However, after this one actual statement of such a claim, Ms. Bergsgaard then admitted that "we don't author it but we do compile the attorney information and add information to it from other sources." Id. at 15-16. Those sources were described as, "for the Supreme Court the attorneys are listed on what the court calls a docket sheet or the order list that lists all of the cases that are going to be argued before the Supreme Court on that particular day. And what we do then is use that as the basis for our attorneys' summary." Id. at 16. West will also "look up and add the city names." Id. at 16. Thus, West receives that text from the Court, the names of the attorneys, and then will "physically cut up that sheet and paste the attorneys' names on another sheet." Id. at 17. Moreover, West cannot tell by looking at a case in its Supreme Court Reporter whether the names have been changed since they were received from the court without looking at the dead copy. Id. at 19. The city and state information is looked up in other publications, including "Bar Association journals, Bar journals and telephone directories." Id. at 19. Up until a few years ago this information came from Martindale-Hubbell. Id. at 19.

When asked whether West authors the names of the parties in a Supreme Court case, Ms. Bergsgaard responded that

in this instance we didn't do editing. Sometimes we do editing of captions. In this case we didn't. But our capitalization is unique to West and the capitalization to us indicates to our readers what we believe the title of the case will be for citing and the capitalization here would be something that West chose to put in and how we are going to caption this case. . . .in long captions West chooses what will be in capital letters and that will be what the case is going to be.

Id. at 20. In addition, West claims authorship in the fact that it "characterizes" the parties—it

[Page3]

actually uses a compilation of titles. There is a title that appears on the order list. There is a title that appears for the case on the syllabus that comes from the court and one that comes from the slip opinion. They are all slightly different, and we use a compilation of those titles to get the full names of the parties, as well as their position like petitioner or appellant. So it's more of a compilation of the titling.

Id. at 22.

West gets the docket number "from the slip copy" which is prepared by the Court and sent to West. Id. at 23. West claims authorship in the fact that "we cut and paste it from the slip copy and we style it. We put >NO' period, that is our style, and we put a period at the end and we rearrange it." Id. at 23.

The "argued" and "decided" dates appears on the Supreme Court slip opinion. West argues that this information appears "on the slip opinion but not in the exact form" as published by West—"West has chosen to publish both the >argued' and the >decided' date and we put them in the style and the format with the abbreviations that we have chosen to use." Id. at 24.

"The syllabus is prepared by the Reporter Decisions Office for the Supreme Court and is attached as kind of a front matter to the slip opinion." Id. at 25. West makes two changes to the syllabus. It adds "the footnote to the syllabus, as you see the star from the syllabus dropping down to the footnote. That is not the way it appears in the slip copy and we remove a portion". In response to the Court's inquiry, West admitted that the language that appears in its reporter is taken from the Court's syllabus.[3]

[Page4]

At the end of the syllabus it says, "916 F.2d 718, see 8/10/1980 reversed", "generally the Court Report of Decisions included that as the lower court reference. . . .[West] will add parallels to that and check that cite but generally that is coming right on the copy." Id. at 27.

Similarly, the "judge's listing is on the slip opinion and [West] do[es] style it" into [West's] own style with abbreviations and the capitalization. Id. at 28. "In the listing in the Supreme Court they have their judges listed in a couple of different places. It is [West's] style to indicate that the Chief Judge is a capital C period, capital J period always listed first, and the other judges have the abbreviation JJ after them. The way that West does this is that they receive a document from the court and they physically cut it out and they paste it onto their own copy sheet." Id. at 28-29. West does not add names of judges or take any judges names out. Id. at 29.

With regard to the actual text of judicial opinions, West states that it "checks every citation, the court citation that the court referred to and [has] chosen to add in and expand the court cite with parallel citations to the Supreme Court Reporter and the Lawyers Co-op Edition." Id. at 30-31. West also checks statute citations and changes them or calls the court and notifies them of change.

[Page5] Id. at 31. West also receives official corrections from the Court. See Plaintiff's Exhibit 39. "Alternative citations would be something where the court had used a slip opinion number and we would have deleted that and added in a citation of a case. So there might be an alternative cite [replaced by West]." Id. at 31.

It may be that the judge has a volume and a page number doesn't go at all with the title and we read both opinions and it's clear to us that the court is missing a line. Maybe the court intended to cite both cases. And then we would contact the court out of a matter of professional courtesy. [When this occurs, the Court] sometimes tells [West] in response to such a call that it was okay to make the change [and] there some times they might tell [West] not to make the change.

Id. at 34-35. If West calls the Court and asks about a change and the Court told West not to make the change, Ms. Bergsgaard could not "recall a situation like that" where West nevertheless made the change. For, as she testified, "[West's] intent is to make a very accurate report." Id. at 35.

Although Ms. Bergsgaard is a lawyer, has testified repeatedly on this subject by affidavit and examination, and has headed this department at West for many years[4], when asked by the Court, at 31-32, if such parallel citation "is that also called for in the uniform system of citations that are generally used lawyers, those two parallel cites?"

Ms. Bergsgaard testified "In the blue book, your Honor, I don't know."[Page6]

West also adds extension pages—"when the court is referring to a particular point at 471 U.S. at 556," West would insert where that same text can be found in the Supreme Court Reporter. This information can come from the Court, or West finds where that point is located in the parallel volume. Id. at 32. As part of this editorial choice, West removes the Court's citations to its competitor's product—unless that is the "only source or LEXIS is referring to something that there was no other parallel cite." Id. at 34.

West also claims authorship in "situations where there are dissents that come in on separate slip opinions which we then combined with the opinion, and the reverse happens in the Supreme Court where we choose to publish the separately if they go to two or more cases. . . .So there is combination of putting the >concurs' and >dissents' together." Id. at 36.[6] In addition, although "it's fairly rare. . .there are occasionally rehearings in the Supreme Court and we would add information as a file line. . . .that information would come on the order list from the court." [Emphasis added.] Id. at 36.

Most of the same methods and practices used in the Supreme Court Reporter are the same

[Page7]for Federal Reporter—with very few real differences. First, West admits that with respect to the Federal Reporter, for each circuit, with the exception of some orders, West publishes everything that courts put out as an opinion.[7] Second, for the names, court, docket numbers, date lines and attorney names West merely cuts the information out of other text and pastes it into West's text.[8]

[Page8]

With regard to the names of the parties "West would receive the slip opinion and we would again characterize the parties. . . .[West doesn't] cap the first name or his title. . . .In some instances if the title is very long [West] may shorten it with an >et al.'" Id. at 47. Ms. Bergsgaard recalled "one case where [West] put the titles into an appendix or put them into a footnote" because there were "many, many titles." Id. at 47. "In some instances [West] will delete duplicate names from a title. Maybe there are two titles and [West] will combine them." Id. at 47.

In any case, West gets the names of the parties "from the court," id. at 48, although in some circuits, West "happens to be the slip printer" and creates that slip opinion. For example, in at least the Fifth Circuit and the Eleventh Circuits "[West does] style the caption according to the West style and that becomes part of contract." Id. at 48.[9] Moreover, "at the bottom of the Fifth and Eleventh Circuit opinions as they are put out by the court," there is a West copyright notice that says that West claims a copyright in the syllabi and the headnotes—a copyright notice which does not list the names of the parties as one of the things in which West claims a copyright. Id. at 49.[10] See also

[Page9]West's examination of Alan Sugarman on this issue, Id. at 132:

Q. In your many years of litigation and your review of all the dead copy, were you ever able to identify one caption that was identical as it came from the court and as it was published by West?

MR. HARTMANN: Objection.

Q. Can you identify one?

A. The Fifth Circuit and the Eleventh Circuit captions are identical.

Q. Other than the Fifth Circuit and the Eleventh Circuit, can you identify one?

As was the case in the Supreme Court Reporter, with regard to federal courts of appeals "the docket number comes from the court documents," although West is quick to point out that "it generally is not located in the exact position where West has chosen to organize it." If West ever discovered an error in a docket number on a document, [West] would call the court to check about the change. Id. at 51. West's "style is always to include the capital >NO' period. And the other thing [West] will do there is. . .combine docket numbers. If there is a large case that maybe has ten different docket numbers, we will combine those and put dash through there to show a combination, a consolidation, or [West] may expand the number if the court has truncated it." Id. at 51-52.

Similarly, "the court line comes from the slip opinion. They generally identify the court." Id. at 52. And, again, although West contends that it "has chosen to have its own court line language for each of the circuits and each of the courts that reports", this is routine and in at least the Fifth and Eleventh Circuits West has "chosen" to use the exact language the courts use. Id. at 52. (It is important to note that Ms. Bergsgaard repeatedly testified about things West had "chosen" to do—but upon examination it turned out it was the court which had written the text—what West "chose" was to do exactly what the Court had done.[11]) It is apparently so routine that the person who has been

[Page10]the head of this department for West, and their principal (if not only) witness on this issue on many occasions, could not tell whether this "overlap" of West's choice and the courts' styles occurred in other circuits without resort to the "dead copy". Id. at 52. "Sometimes the court line is at the top of case, sometimes it is after captions, sometimes it's after attorneys. It can be all over the place. . .[West] always take[s] out the extraneous language [and] put[s] it into our style." Id. at 54.

Next are the "date lines" and the "appeal line". Some circuits include both dates on the slip opinion. Other circuits do not—and they come from other court documents. Id. at 54. "The appeal line can come from different sources. . .Sometimes it is on the slip opinion, sometimes it comes on other court documents that are related to the case." Sometimes this is moved by West into the synopsis. Id. at 59. West also removes this information in some cases.

THE COURT: In some places where you get official report which will tell you or give the lower court docket number and then you remove it, does that happen?

[Page11]

THE WITNESS: Yes.

Id. at 59.

Although West suggests that the attorney information "is compiled by West", it admits that "it may be on the slip opinion." See e.g. Plaintiff's Exhibit 45. "It may be coming in a separate letter from the court clerk. It may come from the docket sheet filed in the clerk's office and the dead copy will show you many different examples of where the attorney comes from." Id. at 60. Then West "may add in" the city of practice, which, as was the case with the Supreme Court Reporter, can come from such sources as West's Legal Directory, telephone books or Bar Association books. Id. at 60. Finally, West deletes duplicate names of counsel, combines the names of all counsel on one side of an appeal, and will delete deceased attorneys' names or attorneys that had been terminated the case. Id. at 64.

It should be noted that even though West attempt to describe these minor changes as authorship or arrangement or compilation, Ms. Bergsgaard admits that such changes are made pursuant to a "style that we have set up has been existence for more than the 20 years that [she has] been there." Id. at 65.[12]

[Page12]

The judge line information "would be on the slip opinion" as well. West may "capitalize the names. . .and put them a format that West has chosen to use." Id. at 69.

COURT: What do you mean by that?

THE WITNESS: We will use "before Mikva" with the Chief Judge coming first and followed by the circuit . . . .One other thing we do is we will add the name of the judge. If there are two judges on the bench with the same last name we will add in the full name so there is no confusion.

Q. Where do you get all that information again, like

A.. We will look through the court document. We may have to call the court.

Q. Do you ever change the names of the judges?

A. No, we do not. We may correct it if misspelled.

Again, when asked whether such changes were made pursuant to "an internal policy or rule or a system that West uses—is there like a manual"—Ms. Bergsgaard testified that "Yes, we have guidelines for how we would like to present the judge information in the clearest way that we can" Id. at 70. The following colloquy appears at 71:

THE COURT: The issue is no matter how the opinions may vary, does West have guidelines so they appear the same once they are published in West?

THE WITNESS: Yes.

Q. Thank you.

Finally, West gets the text of the opinion from the court—it "comes from the slip opinion." Id. at 72. When asked what West does to that text, the response was the same as was given regarding the Supreme Court Reporter—discussed above.

West expands citations, adds parallel citations and "verifies"—"if there is an error in statute cite [West] will correct it. . .[and] will also add parallel cites to a statute to U.S. Code and Congressional News." Id. at 73. In "the Fifth and the Eleventh Circuits [as] part of that contract

[Page13][West does] the cite checking and verification." Id. at 73. And, as was the case above, where, at the bottom of those slip opinions West prints "copyright West Publishing Company" and there is no "mention anything about changes to the text, corrections to cites," West stated that

A. No, it does not, and we would not claim a copyright in the work

that we did for the slip opinion except for the synopsis and the headnotes.[13]

Finally, West states that it does "information. . .amending orders, supplemental opinions, additional information that may pertain to the case." Id. at 80.

We may choose not to publish the order at all but to put the information in file line. That would be such as a rehearing denied, and West would create the file line but not publish the order. We may choose to publish the order with cross references between the two. We may choose to incorporate the entire order into the text of the opinionand we may or may not put a file line in there indicating what has been amended. Or we can do a combination of things. We can publish the subsequent order in part incorporate part of that order directly into the opinion.

Id. at 80. Although West admits that "the court, when it's writing its amending order will certainly direct that this language be changed[,] [t]hat is not a direct [sic.] to West as to what West should do with it. Id. at 80-81. Thus, one of the editorial changes West claims it makes is the "decision" to print exactly what the Court prints, or to make a change exactly as the Court orders it. Again, according to West, this is West's "choice" to follow exactly what the routine method or court defined method may be. When asked if she knew of any instance where West ever did other than what was directed by a court, Ms. Bergsgaard replied that "I don't know. I don't know whether the court has ever said >add this footnote' and we didn't do it." Id. at 81. Similarly, as can be seen in Plaintiff's Exhibit 34, a letter from the Chief Deputy Clerk of the Fourth Circuit to Ms.

[Page14]Bergsgaard, it is clear that West was told exactly what to put into the file line (or more to the point, exactly what it should stop putting into file lines). West was told in no uncertain terms that it should

not reflect in the file line that the opinion has been amended. If the amendment is signifcant, the Court will issue an amended, supplemental or superceding opinion.[14]

Similarly, when asked if West would ever re-publish a volume to make changes, or whether such changes were simply a matter of circumstance of when a supplement was published, Ms. Bergsgaard tried to evade by suggesting that this happened frequently—although she could not think of an instance where it had happened with the Federal Reporter

THE WITNESS: Oh, I don't know the statistics We republish cases maybe a couple come up every week at least. We also have the option of withdrawing an from advance sheet.

Q. I am sorry, a couple of reprints come up the bound volume has come out?

THE COURT: After the advance sheet.

A. Again —

Q. In Federal Reporter?

A. Again, I am thinking of the National System.

THE COURT: Let's keep it to Federal system.

A. I don't know. I don't have any statistics that.

THE COURT: Let's move on.

Id. at 85-86.

In any case, although it took some doing to get to this critical point, West admits that whatever the "combine", however it choses to deal with supplemental information, all of the resultant text is governmental text.

Q. On these combines, and this may be a bad way to phrase this question, but is everything to the north of combine and the south of the combine government text? In other words, when West does a combine, it's adding something that the court has written to something that was already there, isn't that correct?

[Page15]

A. Not always. Sometimes we will take the court order and we will remove the correcting part of the order and merge that into the text and then we add an editor's note indicating what we have done, and then we will publish the remainder of the order.

Q. And I guess what I am asking is in all the text — let's take a situation where you append a subsequent order to the end of a text, do you ever append something that the court doesn't write, anything other than exactly what the court writes?

A. We will append the order from the court after have done our editing and our modification to it.

Q. I understand that. What I am asking is is the actual stuff that you append, it's always things that come from the court, isn't it?

A. Yes.

Id. at 86-87. See also id. at 88-89.[15] In addition, in any case, it is uncontested that HyperLaw does not arrange its reports in the same manner as West with regard to these combines.[16]

[Page16]

There are also several miscellaneous things done by West. Occasionally West will redraw maps and plates where exhibits come in and West can't reproduce them in color. West both redraws them "based on the original" and "to make it look like the original" although because West does not "reproduce color so yellow will become hash marks. Blue may become dots." Id. at 91. "Footnotes may not be marked up in text. There may be three different footnotes numbered 3. There may starred footnotes that cannot be reproduced. There may be footnote A and B. There may be some headings that are missed. It may go from one sub-heading to three." Id. at 92. "Sometimes when that happens [West] calls the court. . .and the court tells [West] to make that change". Ms. Bergsgaard stated that she "does not know" if West is sometimes the only publisher that has that change. Id. at 96. Mr. Sugarman's testimony that this does occur, therefore, continues to stand uncontested.[17] (HyperLaw also notes the admissions by West in response to HyperLaw's 3(g) statement—which also support this point.) West also "make[s] changes to italic and bold and other styling changes", as well as corrections of spelling and corrections to quotes.

Finally, on the issue of text, Ms. Bergsgaard stated that as far as she knows she testified to all of the changes that West makes in the Federal Reporter. Id. at 98-99. To make absolutely certain of that, HyperLaw examined Ms. Bergsgaard in minute detail regarding the Mendall v.

[Page17]Gollust case. Ms. Bergsgaard was taken through the case point by point, and was able to identify no other changes. Id. at 104-119. (See also, Plaintiff's Exhibit 16, HyperLaw's letter regarding Mendall v. Gollust, along with the various versions of the case.)

HyperLaw's position in this matter can be summed up in six brief points.

First, HyperLaw has continuously produced a product which reports all available decisions of the U.S. Supreme Court and Federal Courts of Appeals. Id. at 281-284.

Second, HyperLaw will copy and add non-copyrighted materials from the Supreme Court and Federal Reporters to its product. Id. at 284-285. That would include: (a) information such as attorney names for cases that HyperLaw reports but has not obtained specific items of information—this would include citations; (b) cases that HyperLaw had not been able to obtain for its exisitng period of coverage; and c) cases from (prior) periods not covered by HyperLaw's product, where those cases were referenced in cases already in HyperLaw's product.[18] Id. at 123-124[19]and 285-291.

[Page18] Mr. Sugarman stated HyperLaw's intent in response to cross-examination:

Q. If you haven't decided what to do, you want to get them from West instead of getting them from the Supreme Court, is that what you want to do?

MR. HARTMANN: Objection, your Honor.

THE COURT: Overruled.

A. I feel that if it's not —

Q. The question —

THE COURT: Let him answer.

A. If it's not copyrighted I have an absolute right to copy it from West, even if I can walk across the street and get it from another source. That is my position.

Id. at 141-142.

Third, in publishing its product HyperLaw has always stated that it will redact, directly on the original text (with no intermediate copy) any text which it can identify as being West's authorship—such as those headnotes and syllabi that were authored by West. All of HyperLaw's examples to West over the years have used this method. Id. at 122-124.

Fourth, there are significant differences between the HyperLaw CD ROM product as compared to West's Federal Reporter and Supreme Court Reporter. HyperLaw has both sets of opinions on the same CD ROM so that one can go back and forth between Supreme Court opinions and appellate opinions. HyperLaw's product is fully text searchable. It has billing and searching capability on it. It has hyperlinks on it. It permits one to create a concordance of every single word that appears in it. It permits the user to see, or assists him in searching for, particular words or language. HyperLaw includes the unpublished opinions, id. at 124-125, an increase by almost 50% over the number of published cases. What HyperLaw does not produce is digests, headnotes, and tables of history. In fact, HyperLaw has never described a product that has indices, headnotes and

[Page19]or a cross index. Id. at 125-126.

Fifth, HyperLaw's product is generally used[20]by people that do not need the assistance of the West digest and headnotes, generally smaller practitioners who also may not want to pay the extra money for it, and in the general public there are people who may not even be attorneys and don't need or want or can afford the many extra features in the West products.[21] One of West's present units (Lawyer's Coop.) commercially purchases HyperLaw CD-ROM cases—presumably for this same reason. Id. at 127-128.

Sixth, HyperLaw notes two procedural issues: (1) that all of Mr. Rittinger's questions to Ms. Bergsgaard were predicated on a precedent limitation of the inquiry—to the effect that she should testify by excepting the Fifth and Eleventh Circuits. Thus, HyperLaw maintains that none of her answers should be applied in those circuits[22]—and they should be treated as conceded for the purpose of the Court's determination; and (2) there were numerous times when Ms. Bergsgaard's testimony was less than entirely candid, where she stated that HyperLaw had absolutely received materials and was unable to explain her counsel's letters to the contrary, or where she suddenly didn't know things—such as standard Bluebook citation form. HyperLaw asks the Court to weigh her credibility,

[Page20] and particularly her propensity to state that West chose to do things—when in fact it was court produced work which West chose to duplicate exactly. In most of West's testimony, because there was insufficient discovery production[23], it is impossible to tell when West's editorial choices are simple copying of uncopyrightable federal court material or instructions. Of the materials which were supplied there is abundant evidence that West chooses to rely on the instructions from courts[24].

[Page21] ARGUMENT

I. West has no Enforceable Copyright in the Text of Individual Judicial Decisions in its Supreme Court Reporter and Federal Reporter Series, redacted to remove headnotes and syllabi.

The Copyright Act of 1976[25]("the Act") affords copyright protection only to "original works of authorship fixed in any tangible medium of expression". 17 U.S.C. ' 102[26]

(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'[27][Emphasis added.]

While the Act does protect "compilations and derivative works", Section 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.[28][Emphasis added.]

[Page22]

17 U.S.C. ' 103.

Moreover, works of the federal government, including decisions authored by the judges and justices of the federal appellate courts, are not subject to copyright protection[29]. Thus, the most protection the Act confers to the author of a derivative work is protection against the copying of original, material authored and added to the underlying work[30].

The starting point for any analysis of copyrightability is, of course, the Constitution. In Feist Publications v. Rural Telephone Service Co., 499 U.S. 340, 111 S. Ct. 1282 (1991), the Supreme Court reviewed the Constitutional limitations of copyright. While Feist addressed "compilation",

[Page23] the underlying principles apply equally to derivative copyright[31].

Originality is a constitutional requirement. The source of Congress' power to enact

[Page24]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) — this 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.

* * *

. . .originality requires independent creation plus a modicum of creativity. . . .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).

* * *

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]. . . * * *

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]. [Emphasis added.]

499 U.S. 346 - 347. Thus, it is the Constitution which mandates that the text of judicial decision, as changed by West must possess originality—independent creation plus a modicum of creativity—the portions for which copyright is sought must owe their origin to West, and West may not obtain copyright with regard to facts.

Facts are not themselves copyrightable. Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985). Even minor modifications to the expression of facts cannot be afforded copyright protection, given the very limited number of ways of expressing them. Morrissey v. Procter & Gamble Company, 379 F.2d 675 (1st Cir. 1967).

Thus, West must face the insurmountable obstacle that almost all of the changes it makes to

[Page25]judicial opinions are facts. Such facts as the names of parties (as expressed by the caption); the names and addresses of attorneys; parallel citations; correct citations; correct spelling, grammar and punctuation; subsequent history of the case (such as contained in file lines); docket numbers; and similar changes can only be expressed in a very limited number of ways. Morrissey teaches that copyright protection is not available under such circumstances.

Moreover, the Second Circuit, in CCC Information Services, Inc. v. MaClean Hunter Market Reports, Inc., 44 F.3d 61, 68 (2d Cir. 1994), reaffirmed the merger doctrine:

It is also well established that, in order to protect the immunity of ideas from private ownership, when the expression is essential to the statement of the idea, the expression also will be unprotected, so as to insure free public access to the discussion of the idea. See Kregos, 937 F.2d at 705; Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971) ("When the 'idea' and its 'expression' are . . . inseparable, copying the 'expression' will not be barred, since protecting the 'expression' in such circumstances would confer a monopoly of the 'idea' upon the copyright owner free of the conditions and limitations imposed by the patent law.") [Emphasis added.]

Writing for the court, Judge Leval applied Kregos v. Associated Press, 937 F.2d 700 (2d Cir. 1991), stating,

Kregos, thus, makes a policy judgment as between two evils. Unbridled application of the merger doctrine would undo the protection the copyright law intends to accord to compilations. Complete failure to apply it, however, would result in granting protection to useful ideas. . . .Kregos adopts a middle ground. In cases of wholesale takings of compilations, a selective application of the merger doctrine, withholding its application as to soft ideas infused with taste and opinion, will carry out the statutory policy to protect innovative compilations without impairing the policy that requires public access to ideas of a more important and useful kind. n25

n25 See Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971) ("The guiding consideration in drawing the line is the preservation of the balance between competition and protection reflected in the patent and copyright laws. What is basically at stake is the extent of the copyright owner's monopoly — from how large an area of activity did Congress intend to allow the copyright owner to exclude others?"); Kern River Gas Transmission Co. v. Coastal Corp., 899 F.2d 1458, 1464 (5th Cir.) cert. denied, 498 U.S. 952, 112 L. Ed. 2d 336, 111 S. Ct. 374

[Page26](1990) ("To extend protection . . . would be to grant Kern River a monopoly of the idea for locating a proposed pipeline in the chosen corridor, a foreclosure of competition that Congress could not have intended to sanction through copyright law . . . .") [Emphasis added.]

Id. at 72. While the court found copyrightability in CCC, it did so because

the valuations copied by CCC from the Red Book are not ideas of the first, building-block, category described in Kregos, but are rather in the category of approximative statements of opinion by the Red Book editors. To the extent that protection of the Red Book would impair free circulation of any ideas, these are ideas of the weaker category, infused with opinion; the valuations explain nothing, and describe no method, process or procedure. Maclean Hunter makes no attempt, for example, to monopolize the basis of its economic forecasting or the factors that it weighs; the Red Book's entries are no more than the predictions of Red Book editors of used car values for six weeks on a rough regional basis. As noted above, Red Book specifies in its introduction that "you, the subscriber, must be the final judge of the actual value of a particular vehicle. Any guide book is a supplement to and not a substitute for expertise in the complex field of used vehicle valuation." This language is remarkably similar to our observation in Kregos, that the author "has been content to select categories of data that he obviously believes have some predictive power, but has left it to all sports page readers to make their own judgments as to the likely outcomes from the sets of data he has selected."

* * *

Because the ideas contained in the Red Book are of the weaker, suggestion-opinion category, a withholding of the merger doctrine would not seriously impair the policy of the copyright law that seeks to preserve free public access to ideas. If the public's access to Red Book's valuations is slightly limited by enforcement of its copyright against CCC's wholesale copying, this will not inflict injury on the opportunity for public debate, nor restrict access to the kind of idea that illuminates our understanding of the phenomena that surround us or of useful processes to solve our problems. [Emphasis added.]

Id. at 72-73. To the contrary, here, any impairment of the public's access to the opinions of the federal judiciary or to federal law generally will most certainly inflict injury on the opportunity for public debate, and restrict access to public illumination and understanding of the phenomena that is federal case law. Any balancing test, therefore, must weigh heavily against granting West a monopolistic copyright in the law.

Under the 1909 Act, this Circuit held that to support a copyright, a derivative work must be

[Page27]a distinguishable variation[32] from the original material. Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 102 (2d Cir. 1951); see also, Gerlach-Barklow Co. v. Morris & Bendien, 23 F.2d 159 (2d Cir. 1927). Reaffirming the requisite originality of the variations, the court held, in Alfred Bell, 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." [Emphasis added.]

191 F.2d at 103.

In L. Batlin & Son, Inc. V. Snyder, 536 F.2d 486 (2d Cir. 1976), the seminal case on derivative copyright in this circuit and others[33], the court stated that "while a copy of something in

[Page28]the public domain will not, if it be merely a copy, support a copyright, a distinguishable variation will." [Emphasis added.] Id. at 490. In Batlin, the court reaffirmed its holding in Gerlach-Barklow, and repeated that in order to find originality sufficient to support a derivative copyright, the "author [must have] contributed something more than a >merely trivial' variation, something recognizably >his own'. Id. "We do follow the school of cases in this circuit and elsewhere supporting the proposition that to support a copyright there must be at least some substantial variation, not merely a trivial variation." Id. at 491. As the Batlin 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.

West's witness, Ms. Bergsgaard testified for one and a half days regarding the skill and training of its attorney-editors and others who make the changes to the text of judicial opinions for West reports[34]. But that skill and training is not a substitute for originality, for as the Batlin court said,

Nor can the requirement of originality be satisfied simply by the demonstration of "physical skill" or "special training"

Id. at 491.

Thus, West cannot take material from the public domain, make minor and trivial variations

[Page29]to it, assert a derivative copyright—and use that assertion of copyright to appropriate and monopolize the material which was in the public domain. As discussed below, this is particularly true of such critical public documents such as statutes and judicial decisions.

Subsequently, the Second Circuit reaffirmed Batlin and applied it to the 1976 Act in Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905 (2d Cir. 1980). The 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[35], nothing recognizably the author's own contribution." Id. at 910. Again, the instant issue relates to West's changes to the individual text of the individual judicial decisions which West copied directly from materials supplied by the federal courts. 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 Batlin and Durham in Weissmann v. Freeman, 868 F.2d 1313 (2d Cir. 1989)[36]. In Weissmann the court discussed the nature of the elements in a

[Page30]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. The 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.

At trial, Ms. Bergsgaard, who testified extensively regarding the changes West makes to the text of case reports, did not testify that West selects and arrange photo illustrations and associated captions; adds references to recent reports in the pertinent literature; selects, condenses, and describes additional source material; adds new textual additions (other than headnotes and synopses—which are not at issue, here); substantially rearranges the manner and order of presentation of material contained in the judicial opinions; revises court opinions; or incorporates material discussing the opinions. In short, West does none of the indicia which the Weissmann court held that, in toto, constituted originality.

Moreover, the utilitarian changes West makes to text of judicial opinions in its reporters are not copyrightable. In Knitwaves Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995), the court

[Page31]reaffirmed that, ">useful articles' . . . having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information, 17 U.S.C. ' 101, . . .are not copyrightable." The Court reiterated:

The plaintiff must show that the defendant appropriated the plaintiff's particular means of expressing an idea, not merely that he expressed the same idea. The means of expression are the "artistic" aspects of a work; the "mechanical" or "utilitarian" features are not predictable. Fisher-Price, 25 F.3d [119 (2d Cir. 1994)] at 123. [Emphasis added.]

Id.

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. This court found that the individual aspects which constitute the differences between a the derivative work and the work from which it was derived must not be driven primarily by functional, utilitarian or mechanical purposes.

Thus, the utilitarian function of the West reports, that of reproducing judicial opinions, is not copyrightable. Nor are the utilitarian function of presenting such facts as: parallel citations, the names of parties, the names and addresses of counsel, the names of judges, docket numbers, typographical corrections, citation corrections or subsequent history of a case copyrightable. The only things that can possibly be copyrightable are original expressions of those elements.

Even if a court were to find that some minimal originality exists with regard to such changes, the scope of the derivative copyright protection must be determined, and copyright protection must be strictly limited to such specifically original changes. See e.g. Grove Press, Inc. v. Collectors Publication, Inc., 264 F.Supp. 603 (C.D.Ca. 1967). Grove Press cited a similar case in the Southern

[Page32]District of New York--G. P. Putnam's Sons v. Lancer Books, Inc., 239 F.Supp. 782 (S.D.N.Y. 1965), in which 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'." 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]. One of the changes made in G. P. Putnam's Sons was described by the court:

"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. Such a change is very similar to West's changes in its case reports, where West makes such changes as: putting "No. in front of a docket number which it obtained from the slip opinion; putting "argued" and "decided" next to the dates provided by the Supreme Court; capitalizing names of judges; or taking language from the courts, such as "in the matter of. . .," and insert it into the caption.

In Grove Press, supra, the district court 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. 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.)

[Page33]

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 Grove Press court could easily have been speaking about West's reporters. West's claims of cite checking and correction, spelling and punctuation corrections, and similar non-creative editorial changes are virtually indistinguishable from the claims of the Grove Press defendant.

Similarly, the Eighth Circuit, in O.W. Donald v. UARCO Business Forms, 478 F.2d 764 (8th Cir. 1973), denied a derivative copyright where changes were trivial. There, the plaintiff had produced and copyrighted a legal form which the defendant had copied. The court found that the plaintiff was not entitled to a copyright on the form because the plaintiff "had knowledge of, and drew upon, legal forms which already existed in the public domain when he drafted his forms," and 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

[Page34]lying 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. Thereupon, the court held that almost imperceptible changes, including the simplification, sizing, spacing and arrangement of lettering, and such textual changes as changing "John M. Barker Realty" to "Barker Realty", did not amount to "originality."

At trial, in most instances, Ms. Bergsgaard was unable to identify specific changes in specific case reports, without reference back to the "dead copy" for that opinion. Any changes made by West were, therefore, imperceptible even to the West official responsible for those changes. Many of the changes which Ms. Bergsgaard did testify to generally included capitalization, font changes, and standardizing and simplifying names—all similar to the changes in Gracen.

Judge Keenan in this district reached the same conclusion in EFS Marketing, Inc. v. Russ Berrie & Company, Inc., 836 F.Supp. 128 (S.D.N.Y. 1993). In this post-Feist case, Judge Keenan held that 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 casual observer are insufficient to obtain copyright protection." Id. at 133.

Again, the revisions and changes West makes to judicial decisions, as demonstrated by Donna Bergsgaard's inability to identify revisions and changes without reference back to the "dead copy," are imperceptible and trivial changes which lack independent creativity—and cannot be afforded copyright protection.

In another derivative copyright case from this district, Judge Leisure of the analyzed

[Page35] passages from a work in the public domain, a derivative work based upon it, and a work that allegedly infringed on the derivative work. In Hearn v. Meyer, 664 F. Supp. 832 (S.D.N.Y. 1987). Judge Leisure dismissed the claims of infringement concerning 22 passages which he found to be verbatim quotations of the public domain work[37]. The passages included the following ones:

Derivative Work: "He wished her shoes >weren't quite so like mussel shells'..."

Alleg. Infringing Work: "...her feet were like >mussel-shells'..."

Public Domain Work: ">He wished her shoes "weren't quite so like mussel shells," her roses "like truffles," her "suns and moons like straw hats," her lilies "crumpled like handkerchiefs,"'."

Derivative Work: "He finally demanded either a higher fee or at least a small royalty, and when the publishers refused both, he discontinued the series"

Alleg. Infringing Work: "...when the publishers refused to renegotiate a contract what would give Crane royalties—instead of the flat fees they had paid previously—Crane went on to illustrate different kinds of children's books..."

Public Domain Work: "...Crane demanded that the publisher give him either a higher fee or at least a small royalty."

Upon this analysis, the court concluded that the derivative work passages were "in no way original to plaintiff, they are not copyrightable and cannot form the basis for an infringement action." Id. at 846.

Interestingly, Judge Leisure treated as verbatim quotations not only exact copying of the public domain work, but also copying which contained trivial, non-substantial, or imperceptible changes. West faces the same obstacle with regard to its claims of copyright. This point is

[Page36]particularly germane to West's claim of originality in its "file lines." The information contained in the file lines is clearly fact. Almost all file lines are taken, with slight modification, from the public domain judicial opinions. Any phrasing modifications by West are trivial, non-substantial, or imperceptible, and cannot be afforded copyright protection.

As Judge Leisure stated in Hearn v. Meyer, supra at 846, "It is well settled that facts are not copyrightable." (Citing, Financial Information, Inc. v. Moody's Investors, 751 F.2d 501 (2d Cir. 1984). Thus, Judge Leisure dismissed the infringement claims of the plaintiff with regard to passages which the court concluded were "statements of pure fact." Some of such statements of pure fact which the court found were not copyrightable included,

Plaintiff's Work: "...the book was being published at the author's own expense."

Defendant's Work: "The author Lewis Carroll published Alice's Adventures in Wonderland at his own expense."

Plaintiff's Work: "Throughout his life, he suffered from a weak heart and tuberculosis..."

Defendant's Work: "Throughout his life, Caldecott waged a constant battle with ill health..."

Plaintiff's Work: "...this twentieth child of a family...."

Defendant's Work: "He was the twentieth child born in the family...."

Judge Leisure also considered passages in the plaintiff's work which contained facts that could only be expressed in a limited number of ways. With regard to such passages the court noted that, "Copyright protection is afforded rarely where a fact permits only a narrow continuum or spectrum of expressions." Id. at 487.

Here, West has included in its case reports statements of pure fact and facts that can only be expressed in a limited number of ways. These include the names of parties (as expressed by the caption); the names and addresses of attorneys; parallel citations; correct citations; correct spelling,

[Page37]grammar and punctuation; subsequent history of the case (such as contained in file lines); docket numbers; and similar changes can only be expressed in a very limited number of ways. All of these convey factual information which are independent of any original copyrightable expression of such pure facts, and accordingly are not copyrightable.

II. Section 403 of the Copyright Act is a partial or total bar to West's claim of copyright in the text of judicial decisions.

In 1976, Congress passed a major revision to the Copyright Act[38], which went into effect on January 1, 1978[39]. Section 105 of the Act states that, "Copyright protection under this title is not available for any work of the United States Government." Congress also included Section 403 in the Act, to ensure that ' 105 would have meaning when works of the federal government were re-published by private publishers. As set forth in the 1976 Act, ' 403[40]stated:

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

West omitted from its copyright notices during this period, any identification, either affirmatively or negatively, of those portions of its case reports embodying any work or works of

[Page38]the federal judiciary, or those parts of the text of judicial opinions in which West claims copyright[41]. Failure to meet this requirement of ' 403 was to be treated as an omission of the notice, subject to the provisions of ' 405[42]. Nor is there any great mystery regarding why ' 403 was enacted—to stop exactly what West has tried to do—expropriate governmental works by vaguely identified, minuscule variations. The House Judiciary Committee Report No. 94-1476 contains a discussion of ' 403:

Section 403. Notice for Publications Incorporating United States Works

[Page39]

Section 403 is aimed at a publishing practice that, while technically justified under the present law, has been the object of considerable criticism. In cases where a Government work is published or republished commercially, it has frequently been the practice to add some "new matter" in the form of an introduction, editing, illustrations, etc., and to include a general copyright notice in the name of the commercial publisher. [which] suggests to the public that the bulk of the work is [not] uncopyrightable and therefore free for use.

To make the notice meaningful rather than misleading, section 403 requires that, when the copies or phonorecords consist "preponderantly of one or more works of the United States Government," the copyright notice (if any) identify those parts of the work in which copyright is claimed. A failure to meet this requirement would be treated as an omission of the notice, subject to the provisions of section 405.

H.R. Rep. No. 94-1476, 94th Cong. , 2d Sess. 145 (1976); S. Rep. No. 94-473, 94th Cong., 1st Sess. 128 (1975) . See also Levine and Squires, "Notice, deposit and registration: The importance of being formal" 24 U.C.L.A. Law Rev. 1232.

To prevent that illegitimate business practice, Congress in 1976 provided the ultimate penalty for those who, like defendant West, reprint U.S. government works in such a manner as to claim false proprietorship therein: forfeiture of all copyright protection. Id. ("failure to meet the requirement would be treated as an omission of notice.") Congress implemented the forfeiture penalty through the vehicle of copyright notice formalities, which at that time were mandatory and would cause the loss of copyright if not followed. See 17 U.S.C. ' 403 (1976) ("Whenever a work is published in copies . . . consisting preponderantly of one or more works of the United States Government, the notice of copyright . . . shall also include a statement identifying . . . those portions of the copies . . . embodying any work or works protected under this title" ); 2 Nimmer on Copyright ' 7.14.

Thus, West's failure to meet the requirements of ' 403 must be treated as an omission of the copyright notice, subject to ' 405. Section 405 would excuse the omission if a relatively small number of copies had been publicly distributed without notice (not applicable here), or if the

[Page40]omission is corrected within five years and a reasonable effort is made to add notice to copies publicly distributed in the United States[43]. There is no evidence that West attempted or effectuated a correction of the omissions within five years of the publication of each volume for the period during which this statutory scheme was in place[44]. In fact, West continued using the identical copyright notice through 1995[45].

[Page41] As a consequence of West's failure to provide proper copyright notices which satisfied the requirements of ' 403, West's inadequate copyright notices must be treated as omitted. While ' 405 would have permitted West to correct this omission for a five year period following the publication of each volume, West did not avail itself of this remedial statute. Thus, all West volumes published between January 1, 1978 and February 28, 1989 (the effective date of the 1988 amendment) have forfeited any copyrights to which they might have been eligible.

In 1989, incident to U.S. accession to the Berne Convention, Congress was forced to amend the notice provisions of the Copyright Act. In particular, Berne Convention's antiformalistic tenor necessitated an amendment to the notice provisions, including 17 U.S.C. ' 403, so that failure to comply with the notice provisions would no longer cause copyright forfeiture[46].

[Page42]

It is vital to focus on what Congress did and did not intend via that 1989 amendment with respect to works consisting preponderantly of works of the U.S. government such as reports of judicial opinions in West's reporters. Inasmuch as U.S. membership in the Berne Convention forbids copyright subsistence from hinging on copyright notices in any form or manner, Congress did intend to displace all notice formalities as a means to cause copyright forfeiture. Congress did not, however, intend that there would be no remedy against the unfair and misleading business practice exemplified by West. Rather, Congress shifted implementation of the forfeiture remedy from the notice provisions of the act to the courts. As explained in the legislative history:

The legislation prescribes no penalty for failure to comply, leaving the penalty to the judgment of the courts in infringement actions. At a minimum, it is intended that failure to comply with the regulations issued pursuant to section 403, if not cured by appropriate disclosure at the time of copyright registration, will constitute fraud on the Copyright Office. Even if disclosure is made at the time of registration, a reviewing court may consider that the copyright claimant has "unclean hands" unless the publicly distributed copies of the work bear an appropriate identifying statement, in accordance with the regulations to be issued by the Copyright Office. [Emphasis added.]

H.R. Rep. No. 100-609, 100th Cong., 2d Sess. 46 (1988). In sum, in 1989 Congress shifted the remedy for punishing the conduct in which West has engaged in the case at bar from the copyright notice formalities to equitable remedies under the common law.

As the quoted extract from the legislative history demonstrates, in the post-1989 time frame, Congress intended publication of judicial opinions without meaningful notice to the public of what portions remain in the public domain to be treated as species of "fraud on the Copyright Office" or "unclean hands." Id. Application of these related doctrines to West's inequitable practice—fraud

[Page43]on the Copyright Office or unclean hands—results in West being barred from enforcing its copyright against HyperLaw[47]. See, e.g., Whimsicality, Inc. v. Rubie's Costume Co., Inc., 891 F. 2d 452, 456 (2d Cir. 1989) (finding of fraud on the Copyright Office vitiates "valid copyrights capable of enforcement"); Eckes v. Card Prices Update, 736 F. 2d 859, 861 (2d Cir. 1984) ("knowing failure to advise the Copyright Office of facts which might have occasioned a rejection of the application constitute [a] reason for . . . denying enforcement on the ground of unclean hands.") (citation omitted); Lasercomb Am., Inc. v. Reynolds, 911 F. 2d 970 (4th Cir. 1990) (anti-competitive use of

[Page44]copyright constituted copyright misuse barring enforcement of the copyright); F.E. I. Publications, Ltd. v. Catholic Bishop of Chicago, 214 U.S.P.Q. 409, 413 n.9 (7th Cir. 1982) ("it is copyright misuse to exact a fee for the use of a musical work which is already in the public domain.") .

In short, West comes to court with unclean hands in attempting to evade the congressional requirements concerning copyright notice. Congress has explicitly directed courts to craft appropriate relief on that basis. This court should accept that mandate and deny protection to West's overreaching conduct under the facts here presented[48].

That result comports with established doctrine in the Second Circuit. In Bentley v. Tibbals, 223 F. 247, 256 (2d Cir. 1915), the Second Circuit denied a request for protection to a work published with a copyright notice that left the reader "to ascertain [what is original and what is unprotected] for himself by a verbal comparison, word for word." Though Bentley v. Tibbals did not deal with judicial opinions, the Second Circuit's concern to avoid a fraud on the public is equally present in the case at bar.

III. Even If the Court Finds That West Has a Copyright in the Text of Judicial Decision, HyperLaw's Stated Intended Use of Them in its Product Is a Fair Use

Only if the Court makes a predicate finding of copyright, or as an alternative in the case

[Page45]that the Court finds such a copyright in error, HyperLaw seeks a finding of fair use. The fair use defense incorporated into the Copyright Act furnishes an completely separate basis on which to grant summary judgment to HyperLaw. See 17 U.S.C. ' 107. The statute lists four factors to be weighed in determining fair use. In its preamble, the statute lists several applications that are "not an infringement of copyright." Id. Included in that list is "research." Id. Inasmuch as HyperLaw's product — although it is sold commercially[49]— is first and foremost a research tool, the fair use doctrine must be construed expansively to validate this socially beneficial purpose.

A. Purpose And Character Of The Use

The first factor inquires into the purpose of HyperLaw's usage. Although the HyperLaw CD-ROM product is admittedly for sale commercially, the Supreme Court has recently clarified that that circumstance alone is less significant than any "transformative" feature that the product may offer. Campbell v. Acuff-Rose Music. Inc., 510 U.S. 569, 114 S. Ct. 1164, 1171 (1994) ("the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use"). "Transformation" in turn refers to whether the CD-ROM "adds something new, with a further purpose or different character" than West's copyrighted reporters. Id. See also American Geophysical Union v. Texaco Inc., 60 F.3d 913, 923 (2d Cir. 1994), cert. dismissed, 116 S. Ct. 592 (1995) (citing Campbell). Given its

[Page46]"HyperLinks" to related cases, word concordance, Boolean searching ability with visual results display on requests, customized features such as paragraph level searching, and expansion to all cases rather than just the published ones (almost 40% more coverage), the CD-ROM offers a host of features transformative of West's advance sheets and bound volumes.[50]

B. Nature Of The Work

The second factor looks at the nature of the copyrighted work. Unpublished and creative work are given the broadest protection under this factor, published and less imaginative works the least. See Campbell at 1175, citing 3 Nimmer on Copyright ' 13.05[A][2]. Given that West's reporters are published compilations of all of the published, wholly unprotected judicial opinions, they require the widest possible fair use construction. See Consumer's Union of United States, Inc. v. General Signal Corp., 724 F.2d 1044, 1049 (2d Cir. 1983), cert. denied, 469 U.S. 823, 105 S. Ct. 100 (1984) ("Since the risk of restraining the free flow of information is more significant with informational work, the scope of permissible fair use is greater."). This factor massively favors HyperLaw.

C. Amount And Substantiality Of The Portion Used In Relation To The Copyrightable Work As A Whole

The third factor asks whether "the amount and substantiality of the portion used in relation to the copyrighted work as a whole" is "reasonable in relation to the purpose of the copying."

[Page47]Campbell at 1175. HyperLaw has "used" or referred to only that information which is government works in the form of judicial decisions, or minute variations thereof[51]—which the Second Circuit has approved. See Banks at 390.

D. Effect Of The Use On Potential Market For Copyrighted Work

The advertisements in which West promotes it products, and in fact all West statements about its product defines its market as being one driven by the cross-referencing system and key numbers. West stresses that it sells not decisions, but rather case reports. HyperLaw does not do this. There is no cross-referencing, there are no topics, or (unless the court provides them) syllabi. One cannot get into or out of West's Digests. In short, HyperLaw's product does not compete in the same market or to supply the same services.

West does appear to have a text license with another vendor which would allow some valuation or analysis of this issue, but it has refsed to produce it, and West's then president, Vance Opperman said nobody at West could testify about its contents. Given West's strategic choice to conceal the details of its only important text license, HyperLaw has been precluded from developing any meaningful record on this issue. Basic equity therefore precludes West from arguing that the evidence on this fourth factor favors its position. See e.g. Unigard Security Insur. Co. v. Lakewood Eng'; & Mfg. Corp., 982 F.2d 363, 367-69 (9th Cir. 1992) (holding that

[Page48]the district court's decision to exclude plaintiff's expert testimony regarding a boat that was destroyed by plaintiff was within the court's "inherent power" even though plaintiff had not violated any court order and no finding of bad faith had been made).

E. Public Interest

Congress has directed that the four statutory factors not be considered exhaustive; other considerations serving the public interest must also inform the fair use analysis. See e.g. New Era Publications Int'l' Apes v. Henry Holt & Co., 873 F.2d 576, 588 (2d Cir. 1989), (Oakes, Chief Judge, concurring), cert. denied, 493 U.S. 1094, 110 S. Ct. 1168 (1990); Lynn I. Miller, Fair Use' Biographies and Unpublished Works: Life After H.R. 4412, 40 J. Copr. Soc'y 349, 398-99 (1993) (factor of promoting significant social benefit). The overwhelming public interest favors efficient, accurate and universal access to the law of the land. See Banks v. Manchester, 128 U.S. at 253 ("the authentic exposition [of the law], binding every citizen, is free for publication to all"). Access to the corrected opinions, corrected by courts is essential, as the "principles of stare decisis would be fatally undermined were it otherwise." Lowenschuss v. West Publishing Co., 402 F. Supp. 1212, 1216 (E.D. Pa. 1975), aff'd, 542 F.2d 180 (3d Cir. 1976).[52]

[Page49]

F. Section 403 of the Copyright Act, as Applied to Fair Use

403 of the Copyright Act, as Applied to Fair Use

Even putting aside the congressional invitation to bar West from enforcing its purported copyrights under the doctrine of "unclean hands," the fair use doctrine of copyright law also prevents West from inequitably asserting copyright over government works by commingling them with indiscernible "new matter." As is well recognized, the fair use doctrine requires courts "to apply an >equitable rule of reason' analysis to particular claims of infringement." Sony Corp. v. Universal City Studios, Inc. , 104 S. Ct. 774, 792 (1984); see also Harper & Row, Publishers, Inc. v. Nation Enters., 105 S. Ct. 2218, 2226 (1985) (emphasizing the "equitable nature" of the fair use doctrine). Accordingly, it is appropriate to look beyond the four statutory factors enumerated in 17 U.S.C. ' 107 to equitable factors bearing on the public interests served by copyright law. See, e.g., Weissmann v. Freeman, 868 F. 2d 1313, 1323 (2d Cir. 1989) ("Analysis begins not by elevating the statutory guides into inflexible rules, but with a review of the underlying equities."); New Era Publications, Int'l, ApS v. Henry Hold & Co., 873 F.2d 576, 588 (2d Cir. 1989) (Oakes, C.J., concurring) (emphasizing that the four statutory factors are non-exclusive), see also William F. Patry, The Fair Use Privilege in Copyright Law at 363 (1985) ("Courts are not, however, limited to

[Page50]the four enumerated factors, and a number of courts have considered additional factors where relevant."). Here, Congress specifically condemned as inequitable West's practice of commingling minor editorial revisions with public domain judicial documents without apprising the reader of where one ends and the other begins. Congress furthermore specifically invited courts to redress this inequitable conduct in the context of infringement actions. This consideration serves as a powerful "fifth factor" favoring a broad construction of the fair use defense in the case at bar to permit HyperLaw's intended copying from West's reporters.

Clearly, the Court cannot find minor, non-descript, unidentifiable changes to the works of the federal government as anything other than trivial, fraud on the copyright office and public, and unclean hands—especially in light of the congressional intent behind both the 1976 and 1988 versions of ' 403. It would be manifestly improper and unjust for the Court to give West a monopoly over the words of Federal judges, where West has purposefully failed to comply with ' 403, and has used its intentional failure to confuse and obfuscate, for almost 20 years, the true extent of what it does to the works of federal judges.

G. Balancing The Factors Favors HyperLaw

All factors but one weigh decisively in HyperLaw's favor and that factor has been excluded from consideration by West's own strategic election. "Because this is not a mechanical determination, a party need not >shut-out' her opponent on the . . . factor tally to prevail." Wright v. Warner Books. Inc., 953 F.2d 731, 740 (2d Cir. 1991) (affirming holding of fair use on summary judgment, notwithstanding that one factor favored copyright owner). "Nor may the four statutory factors be treated in isolation, one from another. All are to be explored, and the

[Page51]results weighed together, in light of the purposes of copyright." Campbell, 114 S. Ct. at 1170-71. Under the circumstances here presented, HyperLaw should prevail on the issue of the fair use doctrine.

CONCLUSION

For the foregoing reasons, the Court should find that West does not have valid copyrights in the text of judicial decisions as contained in West's Supreme Court Reporter and Federal Reporter Series; and thereafter the Court should enter such a declaratory judgment in favor of HyperLaw. Should the Court determine that West does hold some valid copyrights over text of judicial decisions as contained in West's Supreme Court Reporter and Federal Reporter Series, the Court should find that HyperLaw's intended use, as described by Alan Sugarman at trial, is a fair use; and thereafter the Court should enter such a declaratory judgment in favor of HyperLaw.

[Page52]

Dated: New York, New York

March 4, 1997

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

[Page53][Page53] CERTIFICATE OF SERVICE

I hereby certify that on March 4, 1997 a copy of PLAINTIFF HYPERLAW'S POST-TRIAL BRIEF-IN-CHIEF was served, by first class mail, 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

JAMES RITTINGER, ESQ.

SATTERLEE STEPHENS BURKE & BURKE LLP

Attorneys for Defendant

230 Park Avenue

New York, New York 10169

______________________________

Paul J. Ruskin, Esq.

_______________________________

[1] See Plaintiff=s Exhibit 23, a November 22, 1995 letter from the Clerk for the Fifth Circuit, stating that 7 cases requested by HyperLaw, which West received free of charge, would cost HyperLaw $35.00. This would make HyperLaw=s expense for obtaining cases West obtains for free in the 10's of thousands of dollars. Return to text.

[2] West has stipulated, as part of the record in this trial, that it does not have a copyright notice with regard to parallel citations, and more specifically to any alternative citations. Id. at 97. (Stipulation by Mr. Rittinger in response to questioning of Ms. Bergsgaard.) In addition, a review of West=s copyright notices (see Plaintiff=s Exhibit 11) reveals that none of those notices specifies any of the Aauthorship@ West contends exists.

MR. RITTINGER. . . .We will stipulate we don't have a copyright notice that says parallel citations, specifically alternative citations, if that will move it along more quickly.

THE COURT: Good. Let's move on. Return to text.

[3] At p.26, line 9, Ms. Bergsgaard testified as follows:

Q. So the phrase "The syllabus constitutes no of the opinion of the court" doesn't appear on the Supreme Court version?

A. That does but you asked me whether it was verbatim.

THE COURT: What has been changed?

THE WITNESS: We have deleted a sentence and we have also added parallel citations to that cite. We expanded the citation.

Q. Except for the citation is the language there taken out of the Supreme Court docket?

A. Yes, after we have modified and added, expanded it, yes.

Q. Now, the actual syllabus itself, the text that occurs in the syllabus, are there any changes made to that by West?

A. Yes. [Begin Page 27]

Q. What would that be please?

A. Well, we add the cross references. If you notice on page 1285 under the word held we have added pages 1287 to 1297 so our readers will be able to find the holding of the court, and we have done that throughout the syllabus. We also verify the syllabus for the citations and we would add any parallel citations to that as we determined to.

[p.27, ln.13]

Q. Does West do anything else to the syllabus of the opinion?

A. No, I think that is probably all we do to it. Return to text.

[4] Id. at 12 and 39. Return to text.

[5] As was the case in most of the descriptions given by Ms. Bergsgaard, she characterized things which she knew full well to be standard matters as some sort of dramatic choice by West. Even the parallel citation to the three parallel cites required by the Abluebook@ and used by virtually everyone was an innovative West editorial Achoice@. Id. at 32.

A. There are perhaps more than 20 different locations of a Supreme Court case now so there would be many different choices that we could make when we select parallels we want to put in. We have chosen those two because we think it would help the reader. Now, as far as where we get those from, we have a library at West, as well as using our Insta-Cite system, the in-house version of the system.

Q. So you look them up somewhere?

A. Yes, we do. (Emphasis added.) Return to text.

[6] Ms. Bergsgaard testified, at 38, that the resultant text is only text written by governmental employees.

Q. . . .You said that you might reorder where concurrences or dissents came. Did you say that?

THE COURT: She said they might where they have dissent or concurrence that applies in two cases.

Q. If that occurs, do you ever change the text the concurrence or the dissent?

A. I am not sure I understand what text means.

THE COURT: You do the same type of thing you do to any opinion, I take it.

THE WITNESS: Yes.

THE COURT: But nothing more or less.

THE WITNESS: That is correct. Return to text.

[7] This was in response to an inquiry by the Court at 238-239.

THE COURT: Let me just ask you this: I'm sure I understand what's going on. With respect to the Federal Reporter, for each circuit, you published everything that they put out as an opinion, is that correct?

THE WITNESS: That gets a little bit into the selection, which we haven't talked about here, but basically the Court has issued opinions under their Court rules that you're familiar with that are precedential opinions for precedential value. They also issue, as I mentioned before unpubs, but there's many different orders that aren't labeled, either one, and West makes the decision as to opinions and those orders how we're going to treat them.

THE COURT: And those are basically the rehearing denieds?

THE WITNESS: There's rehearings and amendings and many different types of orders.

THE COURT: Thank you.

See also Plaintiff=s Exhibit 27, a letter from West Publishing=s Managing Editor to a Professor at the University of Maryland School of Law, stating that:

We rely completely on the determnation of the United States Courts of Appeals as to which of their opinions are to be published. That is to say we publish only those opinions which they, pursuant to their various publication plans, select for publication. Over the years we have always followed the wishes of the Courts as to publication. (Emphasis added.) Return to text.

[8] Id. at 55, see also 68-69.

Q. I am not asking that, ma'am. I am asking is material physically cut out of the document you get from the court and pasted down?

A. We do. We have to merge it so it is in the that we have determined editorially where we want it to be placed.

THE COURT: The question is is that done by cutting and pasting?

THE WITNESS: Yes, it is.

THE COURT: Thank you.

Q. For the information we talked about, the names of the parties, the name of the court and the date lines, is the way that West does this is they take the copy from court, cut it up and actually paste it onto their documents?

A. Yes, we do rearrange it. We take it from —

THE COURT: But it is a cut-and-paste job?

THE WITNESS: That part of it is. The reorganization is a cut-and-paste job, yes, your Honor. Return to text.

[9] See p.49, at line 6.

THE COURT: Let's get to the bottom line. Does the caption that appears in the Fifth Circuit cases slip opinions, is that the exact same that you find in Fed. 3d?

THE WITNESS: Yes, it would, your Honor.

Q. How about the Eleventh Circuit?

A. The same is true for the Eleventh Circuit is treated like the Fifth Circuit, yes. Return to text.

[10] Although West apparently claims to be the Aauthor@ of the Arunning head@, it admits that this is used as a part of the citation, id. at 55-57, and thus, this issue has been addressed in the Court=s summary judgment determination on citations. Return to text.

[11] See e.g. 243-245, where Ms. Bergsgaard describes, using an example selected and introduced into evidence by West, how West determines its Acombines@, and upon examination West=s actual practice was revealed.

p.244, ln.15 Q. Who incorporated the amendments for the purpose of publication?

A. We incorporated those into our case report.

Q. So, that would you take a look back at what the Ninth Circuit did?

A. The Ninth Circuit when they do their slip opinions, they always do the order and they do republish the entire order with their corrections.

Q. So, it was the Ninth Circuit that did that?

A. In — and they republish their — they reprinted their slip opinion.

Q. So, it was the Ninth Circuit that did that?

A. West chooses how it's going to do this. And the Ninth Circuit reprint all of their orders that way. Sometimes we will incorporate them in this instance like in this instance and other times we will not.

Q. The editor's note that says, amends incorporated for the purpose of publication, states that, but the Ninth Circuit did exactly that in its publication, is that correct?

A. Well, we added the editor's note to let our readers know because we are incorporating the amendments into the case report.

Q. I understand that. But what you published is identical to what the Ninth Circuit published?

A. No.

Q. Except for your editor's note?

A. This is not identical to our case report and I don't think we need to go through step by step.

THE COURT: Other than the stylistic changes you made in parallel cites, etc., the text? Return to text.

[12] See also, id. at 66:

Q. And when you say it's been in effect for 20 years, so West always does it that way and they always follow that basic rule, is that correct?

A. Well, I wouldn't characterize it that way. We make editorial judgments as to the best format for a particular case report and we want to be consistent and we will consistently organize the material in the order that our editors deem is most usable to our readers.

Q. I understand that, ma'am. I guess what I am asking is you just said for 20 years you have been putting it in the same place. I guess what I am asking is, is that pursuant to some sort of an internal style manual or a rule or a system that you use?

A. That is the style that our editorial department has set up and determined that that was the most or the best location for people to locate the attorneys is right after the editorial work.

. That has been in place, as far as you know, for at least 20 years?

A. Yes.

Q. Thank you.

See also id. at 77-78. Return to text.

[13] This testimony leads to the obvious questions, does West do the Aexpansion@ of citations to add parallels in the 5th and 11th Circuits; and how can you tell which were added by the courts and which by West? Return to text.

[15] Ms. Bergsgaard=s similar efforts in testimony regarding the frequency of these alleged Acombines@ should also be noted. At 88-89, she testified as follows:

Q. About how many times does it happen?

A. About 15 and a half percent. 13 to 15 percent.

Q. 13 to 15 percent of all cases in the Reporters have combines?

A. In a particular volume, yes, or file line.

Q. I am sorry, you just slid something else in there.

THE COURT: You weren't asked about file lines.

Q. Skip file lines. I want actual physical combines.

A. Well, the combine and the file line are together. They are related.

THE COURT: They may be, but that is not question you were asked. Please just answer the question you were asked.

Q. Let me help you. Isn't it true you found 6 out of about 800 cases?

A. No.

Q. I am sorry, 8 out of 600 cases.

A. That are —

Q. That are actual combines. Leaving aside file lines.

A. I don't know. We did them together. We didn't separate them out when we took a look at them because to us they are related, file lines and combines.

THE COURT: Please, you have answered question. Return to text.

[16] HyperLaw places any identifiable combines at the beginning of reported decisions at the beginning of its cases—so that the reader does not have to go throught the entire decision only to find that it has been amended. This is a completely different method of arrangement. Again, HyperLaw=s selection is also different—it=s selection being everything. Id. at 148-149. Return to text.

[17] Mr. Sugarman testified that even if he had an unlimited amount of funding, he could not obtain all official copies of circuit court cases because West received corrections from courts not available to publishers other than HyperLaw by any means. Id. at 128.

Q. If you had an unlimited amount of money, could you go out and get the court opinions of the Court of Appeals from courts?

A. With all the corrections that were added, no, I could not. Return to text.

[18] HyperLaw would obtain cases referenced in its product, and make those cases available to researchers by a Ahyperlink@—a reader could simply press a mouse button on a referenced decision, and she would immediately be able to read the referenced case. Another press of a button would return her to the original text. Thus, HyperLaw=s selection criteria would be to include all cases during its period of coverage (which at prior hearing in this matter was determined to be some 60% more material than West provides for the same period) as well as cases referenced therein. Return to text.

[19] Mr. Sugarman stated on his original direct eaxmination that:

Q. Could you tell me why you selected the Mendell v Gollust decision to use as the example to West of what you wanted to scan or wanted to copy out of their Reporter?

A. Yes, that case had been appealed to the Supreme Court.

Q. So it was a case that was the lower case of a Supreme Court case?

A. Yes.

Q. And —

A. And the name of the case on appeal I believe I recall as Gollust v. Mendell. I think it's reversed.

Q. And in your product, what is the relationship of this case to the case that is on your Supreme Court Disc?

A. On the Supreme Court Disc, as I was working on putting it together, this would have been the case that had resulted in the Supreme Court opinion that was on appeal to the Supreme Court so the concept would be to have the lower court case that would link into the Supreme Court opinion.

Q. When you say "link in," I know the judge has heard enough about hypertext to last a lifetime, when you read Supreme Court case it cites to Mendell and you click and it copies to Bendell v. Gollust?

A. That is the concept I had, yes. Return to text.

[20] HyperLaw=s users are licensees. HyperLaw never sells its products. Id. at 126. West has stipulated that HyperLaw=s license agreement is similar to that used in West=s WestLaw on-line and CD-ROM products. Id. at 149. However, HyperLaw=s license provides that the court decisions are not copyrightable. Return to text.

[21] HyperLaw has attempted and been unable to obtain any information on the effect of its product on the West product. West has not provided or placed any such information in evidence. Id. at 126-128. Return to text.

[22] At 207, Mr. Rittinger proceeded his questioning with the following:

Q. Now, when I ask you these type of questions I am going to exclude the Fifth and Eleventh Circuits for the reasons you testified to yesterday. But other than the Fifth and Eleventh Circuits. . . Return to text.

[23] See e.g. Plaintiff=s Exhibit 42, West=s Responses to HyperLaw=s Interrogatories, as well as Plaintiff=s Exhibit=s 47 and 48 (West=s letters to and from both HyperLaw and Bender regarding non-production of documents.) Return to text.

[24] See Plaintiff=s Exhibit 33, a letter to the Clerk of the Court from West=s Editorial Counsel stating, AUnless the Court enters an order which specifically states that such a three-judge opinion is to be withdrawn from publication, we will include it in the bound volume [of Federal Reporter].@ Return to text.

[25] Codified at Title 17 of the United States Code. Return to text.

[26] Sec. 102. Subject matter of copyright: In general Return to text.

[27] Sec. 103. Subject matter of copyright: Compilations and derivative works Return to text.

[28] As defined in ' 101,

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.

* * * *

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.

Return to text.

[29] Sec. 105. Subject matter of copyright: United States Government works Return to text.

[30] 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 ' 7 of the 1909 Copyright Act.

[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. . .

495 U.S. at 231. 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. Return to text.

[31] West=s failure to understand Feist and its implications was demonstrated during closing argument when West's counsel asserted that Feist Arecognized that as a result of doing away with the sweat-of-the-brow theory, a great deal of inequity could take place in this arena . . .@ Trial Transcript at 302. In reality, the unanimous Feist Court spoke to the equities involved in abolishing sweat-of-the-brow copyright as follows:

It may seem unfair that much of the fruit of the compiler's labor may be used by others without compensation. As Justice Brennan has correctly observed, however, this is not Asome unforeseen byproduct of a statutory scheme.@ Harper & Row, 471 U.S. at 589, 105 S. Ct., at 2245 (dissenting opinion). It is, rather, "the essence of copyright," ibid., and a constitutional requirement.

Id. at 111 S. Ct. 1289-90.

During his opening argument, counsel for West suggested that although Feist eliminated sweat-of-the-brow as a basis for copyright protection, it left open the possibility of Aan unfair competition@ theory to prevent the Awholesale copying@ of sweat-of-brow publications. Trial Transcript at 3. Just three days later, however, in National Basketball Association v. Motorola, Inc., 1997 WL 34001 (2d Cir. January 30, 1997), the Second Circuit held that virtually all remnants of state unfair competition and commercial immorality law are preempted by Section 301 of the Copyright Act. See id. at *3. The Second Circuit specifically agreed with an earlier ruling of the Seventh Circuit which stated,

One function of ' 301(a) is to prevent states from giving special protection to works of authorship that Congress has decided should be in the public domain which it can accomplish only if "subject matter of copyright" includes all works of a type covered by sections 102 and 103, even if federal law does not afford protection to them.

Id. at *9 (quoting ProCD, Inc. v. Zeidenberq, 86 F.3d 1447, 1453 (7th Cir. 1996)).

Under 17 U.S.C. ' 301, Aa state law claim is preempted when (i) the state law claim seeks to vindicate >legal or equitable rights that are equivalent= to one of the bundle of exclusive rights already protected by copyright law under 17 U.S.C. ' 106 — styled the >general scope requirement=; and (ii) the particular work to which the state law claim is being applied falls within the type of works protected by the Copyright Act under Sections 102 and 103 — styled the >subject matter requirement.=@ National Basketball Ass'n, id. at *7; see also Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 716 (2d Cir. 1992) (Copyright Act preempts Athose state law rights that may be abridged by an act which, in and of itself, would infringe one of the exclusive rights provided by federal copyright law@) (citation omitted). Return to text.

[32] The Second Circuit, in Bentley v. Tibbals, 223 F. 247 (2d Cir. 1915), held

[O]ne who so embodies copyrighted with uncopyrighted matter that one reading his work cannot distinguish between the two has no right to complain if the book is republished by third parties. . . .One cannot ascertain what part of the [work]contains the copyrighted matter. . .unless he is able to obtain from some source a copy of the original work and compare it letter by letter and word by word. . . .This we do not think he is called upon to do. If one intends to assert his exclusive right to publish and sell copyrighted matter, he must so clearly indicate the matter in which he has the exclusive right that the public upon inspection can determine the question of its own rights therein. He cannot require the public to. . .compare it word by word with the uncopyrighted work. [Emphasis added.]

Id. at 256-7. Ms. Bergsgaard, West=s own witness and manager, was unable to determine particular changes made by West without comparing West=s reporters to the related Adead copy@—material unavailable to HyperLaw or the public—or slip opinions (which would not reveal subsequent changes made by judges, and known only to West). Yet West has consistently maintained that this is exactly what one would need to do to determine what changes it made to judicial opinions. Return to text.

[33] See for example, Gracen v. The Bradford Exchange, 698 F.2d 300 (7th Cir. 1982), in which the court stated:

a derivative work must be substantially different from the underlying work to be copyrightable. This is the test of L. Batlin & Son, Inc. v. Snyder, supra, 536 F.2d at 491, a decision of the Second Circuit — the nation's premier copyright court — sitting en banc.

Id. at 305. Return to text.

[34] Ms. Bergsgaard testified that many of the changes West makes are according to a policy manual—systems or processes that had been in place at West for many years. Such systems are not copyrightable. 17 U.S.C. ' 102. Return to text.

[35] In Gerlach-Barklow Co. v. Morris & Bendien, 23 F.2d at 161 the court held (in the context of artwork) that A[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 present the same theme.@ Return to text.

[36] Since Feist, the Second Circuit has reaffirmed and applied Batlin in Waldman Publishing Corp. v Landoll, Inc., 43 F.3d 775 (2d Cir. 1994), a case in which the, Aselection of which episodes in the classics to include in the books, the redrafting of the text to tailor the books to young readers and the illustrations,@ was found to be of sufficient originality to support derivative copyright. Here, to the contrary, West does not rewrite the text of opinions, select out parts of opinions to print, or illustrate judicial opinions. Return to text.

[37] ANo 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@. in Hearn v. Meyer, 664 F. Supp. at 845-6

Return to text.

[38] The Copyright Act of 1976. Public Law 94-553, 90 Stat. 2541 (1976). Return to text.

[39] The Act was amended in 1988, effective March 1, 1989. Berne Convention Implementation Act, Public Law 100-568, 102 Stat. 2853 (1988). The effect of the 1988 amendments are discussed, infra. Return to text.

[40] Sec. 403. Notice of Copyright: Publications Incorporating United States Government

Works. Return to text.

[41] A copyright notice from the Supreme Court Reporter during this period:

0 A copyright notice from the Federal Reporter series during this period:

0 Although ' 405, in the 1976 Act, contained saving provisions to avoid forfeitures of copyrights under certain conditions—here, the applicable provision might have applied to West, if West had complied with ' 403 within five years of publication of each volume. Return to text.

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

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

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

[44] As discussed below, effective March 1, 1989, both '' 403 and 405 were amended. Return to text.

[45] The following are the copyright notices for volume 1 of Federal Reporter 3rd Series (1993) and volume 111 of Supreme Court Reporter (1995):

0

0 In 1988, in order to comply with the Berne Convention, Congress passed the Berne Convention Implementation Act of 1988, Public Law 100-568, 102 Stat. 2853 (1988), which became effective March 1, 1989. These amendments to the Copyright Act removed the mandatory copyright notice provisions from '' 401 et seq. As a consequence, ' 403 was amended to read:

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

[47] During closing argument at trial, the Court suggested that West focus its post-trial brief on several questions, including

whether or not [HyperLaw] is entitled to an item-by-item declaration here. In other words, is it the caption, the court line, the date line, the file line or is it only if you establish, taken in combination those items are copyrighted.

Trial Transcript at 311. A determination that ' 403 mandates that West cannot enforce a copyright in a work consisting predominantly of one or more works of the United States Government without identifying, either affirmatively or negatively, those portions of the copies embodying any work or works protected under the copyright act, would put this question to rest. Where West has not identified (on an item by item basis in its copyright notice) what it claims to be its original work, equitable defenses will bar it from asserting copyright infringement.

As the Court pointed out, it may be that

There may be a small percentage of cases where you have that complex subsequent history that requires detailed study and the exercise of great judgment as to how you articulate that.

Trial Transcript at 312. Where West has not identified each original file line as something it authored (as opposed to simply cutting and pasting or reporting an unoriginal fact stated by the federal judiciary), ' 403 would render moot West=s later assertion that any particular file line is entitled to copyright protection.

Thus, the question is not whether HyperLaw is entitled to an item by item declaration. The question is whether West is entitled to carve out exceptions on an item by item basis from HyperLaw=s broad declaratory judgment that West has no derivative copyright. Return to text.

[48] In light of this clear congressional intent, the Court should look even more critically at the trivial nature of West=s changes to the text of judicial opinions. Judged by any quantitative or qualitative analysis, the amount, degree, and substance of such changes are, indeed, very minor. They are so minor and non-descript that even West=s spokesman and witness, Donna Bergsgaard, was unable to identify most of them without a comparison with the Adead copy@. If West itself cannot discern the changes it makes without resort to an external source, surely the changes are to trivial for everyone else to discern. Return to text.

[49] This Court has recognized that research tools may be created for profit, and that this commercial aspect does not negate what is otherwise fair use. See Salinger v. Random House. Inc., 650 F. Supp. 413, 425 (S.D.N.Y. 1986) (Leval, J.) (AThe protection of the statute should not turn on sackcloth and missionary zeal. It rather directs the court to make an appraisal of social usefulness and fairplay.@), rev'd on other grounds, 811 F.2d 90 (2d Cir.), cert. denied, 484 U.S. 890 (1987). See generally 3 Nimmer on Copyright '' 13.05[A][l][c] (commercial uses compatible with fair use), 13.05[A][2][b] (Congressional amendment in wake of Salinger). Return to text.

[50] It is not contended that HyperLaw=s product is in all respects better. Users desiring West's key numbers and nationwide coverage, for example, will automatically prefer West's publications. The point is that HyperLaw offers transformative uses not available from West's copyrighted reporters.—and equally important, creates a product that is at the same time far less—allowing a completely different market access to the decisions without all of the bells and whistles. Return to text.

[51] West's counsel asserted that Mr. Sugarman was a Apirate,@ and attempted to justify this name-calling by arguing that motivations bear on fair use. The better view is that the motivations of the copier are irrelevant to determining fair use. As one leading commentator on the subject has stated, AThe [fair use] inquiry should focus not on the morality of the secondary user, but on whether her creation claiming the benefits of the doctrine is of the type that should receive those benefits. . . . No justification exists for adding a morality test.@ Pierre N. Leval, Towards a Fair Use Standard, 103 Harv. L. Rev. 1105, 1126 (1990) (emphasis in original). Return to text.

[52] The reasoning of Building Officials & Code Adm'rs Int'l, Inc. v. Code Technology. Inc., 628 F.2d 730 (1st Cir. 1980), is also applicable here. In that case, a private organization, BOCA, developed a model building code; it thereafter encouraged the State of Massachusetts to enact that code into law. Because BOCA's intellectual property had, with its own consent, become governing law, the court reversed the trial court's entry of a preliminary injunction and held that BOCA failed to establish a likelihood of success on the merits on the issue of whether copying would constitute copyright infringement. Id. at 736.

In a recent case, the Second Circuit declined to follow Building Officials to place in the public domain a compilation of valuations of used cars that had been adopted as an alternative valuation standard in the insurance statutes or regulations of several states. See CCC Info. Servs.. Inc. v. Maclean Hunter Marl;et Reports Inc., 44 F.3d 61, 74 (2d Cir. 1994), cert. denied, 116 S. Ct. 72 (1995) (AWe are not prepared to hold that a state's reference to a copyrighted work as a legal standard for valuation results in loss of the copyright.@). CCC is readily distinguishable from the facts at bar. As with the plaintiffs in Building Officials, but unlike the copyright holder in CCC, West has encouraged the bench and bar to elevate citation of West's reporters as the official standard and thus, through its own actions, has caused it to become a necessary incident of legal practice. In addition, Building Officials involved a copyrightable composition consisting of a model code that was intended to serve as a governing standard. The different result in CCC reflects the circumstance that the work at issue there was created to serve commercial purposes quite apart from embodying the law. As between those two paradigms, the facts at bar are far closer to those of Building Officials: West's works exist solely to set forth the law; the citation system based on West's compilation has value solely as a system to find the law.

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