Connecticut Law Tribune November 9, 1998, Vol. 24, No. 45

The 2nd Circuit rules that edited cases
are not original or creative enough to take
from the public domain, setting up a
U.S. Supreme Court showdown.


The world's largest legal publisher, West Publishing, has no
intellectual property rights in its pagination system or the edited
text of federal opinions, the U.S. Court of Appeals for the 2nd
Circuit ruled Nov. 3. "The cost of legal research should go down"
says Carl Hartmann, a New York-based appellate lawyer for small
CD-ROM publisher HyperLaw Inc., the plaintiff in the text case.

The cases set the stage for an ultimate U.S. Supreme Court
resolution, and call for a tough strategic decision by West.

Courts in the 8th Circuit, which encompasses West's home state of
Minnesota, have steadfastly held that West has a copyright in its
pagination system. It remains the most popular method for
directing a reader to specific [jump to page 9]
legal points in case law. Eighth Circuit courts deem the
page cites to be the embodiment of the West genius.

The 2nd Circuit strongly disagrees. "Because the internal
pagination of West's case reporters does not entail even a modicum
of creativity, the volume and page numbers are not original
components of West's compilations and are not themselves
protected by West's compilation copyright:' writes Judge Dennis C.
Jacobs, who is joined by Senior Circuit Judge Richard J.

U.S. District Judge Robert W. Sweet, of the Southern District of
New York, sat by designation and dissents on both cases.

Law librarians are particularly sensitive to the price of legal
research tools and had opposed West's appeal through an amicus
curiae brief. Darcey Kirk, director of the University of Connecticut
Law Library, who also heads the government relations committee
for the American Association of Law Librarians, says the two
decisions are "good news for the American public, to have easier
and cheaper access to the courts' opinions."

Other electronic publishers predict an equalizing of access to case
law between big firms and small practitioners. "There's almost a
caste system in the legal world, because unlike big firm lawyers,
most solos and small practitioners can't afford to pay $4 a minute
to access WestLaw and Lexis," says Joseph Acton, a lawyer and
founder of Intemet-based Versuslaw in Redmond, Wa.

The service, which Acton says has lately "exploded" in popularity,
charges $7 a month for Internet access to bare-bones federal and
state case law. He would not reveal the number of subscribers.

Acton says he will probably begin adding West "star pagination"—
notations signifying where pages break in West's books, so that
researchers can cite to points of law in West books, without
actually having them.

The two appeals stem from decisions by U.S. District Judge John
S. Martin Jr., in Manhattan. Last year he dramatically ruled from
the bench in Matthew Bender v. West, that West's page numbers
were mere "facts" and not a creative element warranting copyright
protection. (See "A Tilting of the Tables," The Connecticut Law
Tribune, Feb. 3, 1997, page 1.) The plaintiff,
Matthew Bender, was seeking to cross-cite to West's specific page
numbers in its New York CD-ROM product, Authority, which
West contended would violate its copyright.

An intervenor in the Bender case, a smaller New York CD-ROM
legal publisher, HyperLaw Inc., went after the actual text of West's
Federal Reporter and Supreme Court Reporter series. HyperLaw,
in Matthew Bender and HyperLaw v. West, sought a declaratory
judgment allowing it to copy directly from those books everything
except West's syllabus, key numbers and headnotes, which
HyperLaw concedes are proprietary.
Picture of Alan Sugarman with Caption

"At the trial, HyperLaw president Alan D. Sugarman
testified that he wanted to include about 50 percent of
West’s federal collection."

Martin ruled that West's restyling of case names, addition of
lawyer information, its cite checking and amplification, and
inclusion of subsequent case history were not original enough to
warrant copyright protection.

At the trial, HyperLaw president Alan n Superman testified that he
wanted to include about 50 percent of West's federal collection, so
that a computer user could jump to older federal cases cited in
current decisions with a mouse click.

Bender and HyperLaw argued both cases March 16, with West
bringing in nationally famed Harvard Law School professor Arthur
R. Miller. An amicus brief supporting West was filed by Lexis, the
online legal information service owned by British-Dutch
conglomerate Reed Elsevier.


West is the crown jewel in British-Canadian Thomson
Corporation's collection [begin page 10]of U.S. legal publishing
houses, which include Lawyers Co-op; Bancroft-Whitney; and Clark,
Boardman Callaghan. Thomson, with U.S. headquarters in Stamford,
acquired West in a 1996 merger for $3.4 billion, when the Bender and
HyperLaw challenges were nascent.

A few months before trial on the three-year-old cases, Thomson
general counsel Michael Harris called in James F. Rittinger, of
New York's Satterlee, Stephens, Burke & Burke, to handle the
Bender and West trials, on issues with resounding legal
significance to West and legal publishing generally.
Harris referred a call for comment to a nonlawyer company
spokesman in West's hometown of Eagan, Minn., who said the
company is considering its appeal options.

West's trial counselor Rittinger, says, "We could seek a rehearing
en bane, or seek cert., and will definitely do one or the other.
Thomson is going to continue to vigorously defend its intellectual
property, with respect to wholesale copying."

"This is a limited 2-1 decision in the 2nd Circuit, that relates only
to the Supreme Court Reporter and Federal Reporter. West is going
to continue to be diligent and aggressive, in the 2nd Circuit, using
unfair competition or breach-of-licensing agreements," Rittinger

Furthermore, he says, "There's a reasonable chance that the
database protection act will be passed in the next Congress. Win or
lose, this doesn't have a financial impact on West."


Hartmann, the HyperLaw trial lawyer, bet that West would not
seek certiorari from the U.S. Supreme Court, for fear of losing.
"Right now they feel they have a split in the circuits ' says
Hartmann. Under an antitrust ruling by U.S. District Judge Paul
Freedman, in Washington, D.C., if the U.S. Supreme Court does
not settle the question of West's pagination copyright by the year
2000, West can charge fees to other publishers who use its system,
Hartmann notes.

Rittinger countered there was no chance West would simply sit on
its hands.

Matthew Bender's lead trial attorney, Morgan Chu, of Los Angeles'
Irell & Manella, was deeply gratified by the win.

"This has been a very long battle over many years, fought by many
people," he says. "Not just Matthew Bender, but many in the legal
publishing industry. It may not yet be over, but we're seeing the
light at the end of tunnel.

Chu says the decisions lower "what has been a significant barrier to
both competition and innovation and begins to open the door for
brand new creative products for the legal publishing industry."
Electronic and other products can now cross-reference cites and
use text from West's archive, so that "people who use legal
materials will benefit from more vibrant competition, in terms of
price, as well as fierce competition that will spur innovation."

Indeed, Chu ventured, lawyers could wind up paying less and
getting more—"the best of all possible worlds."

Chu said Bender has not heard from West about any appeal plans.
He said he does not consider Bender's recent sale to Reed-Elsevier,
Lexis' parent company, to be an impediment to the justifiability of
an appeal. "There is still a dispute that is live, active and real
between the parties in the litigation. The next move is West's 'he


In the majority pagination decision, Jacobs tackles West's
argument that Bender's Authority product would allow Bender to
copy the West Reporter selection and arrangement, infringing its
copyright directly or as a contributory infringer. An in-house West
lawyer had testified that a user could use a computer printer to
duplicate, case by case, the West collection.

But Jacobs finds that "a copyrighted arrangement is not infringed
by a CDROM disc if a machine can perceive the arrangement only
after another person uses the machine to re-arrange the material
into the copyrightholder's arrangement." The case might be dif-
ferent if there were more invitation or incentive to recreate the
original than in this case, Jacobs writes.

West admits the page breaks are created automatically, by a
computer program, "and West does not seriously claim that there is
anything original or creative in that process:' Jacobs writes.
Furthermore, because West allows the book and first page number
of a case to be copied without infringement, a recreation of the
West volume and page system does not create a copy of any of the
protected elements of West's compilations, Jacobs concludes.

Sweet, in dissent, says that the page breaks result "from West's
arrangements, selections, syllabi, headnotes, key numbering,
citations and descriptions.

The page number, arbitrarily determined, is the sole result of the
West system, appears nowhere else, and is essential to its
coordinated method of citation. It is, so to speak, an original fact
resulting from West's creativity." Sweet protests that the majority's
opinion "threatens to eviscerate copyright protection for


In the HyperLaw text case, West contended that its copyright claim
is based on a compilation theory—the admittedly thin copyright
that applies to anthologies—even collections of wholly public
domain materials. HyperLaw wanted the courts to apply a
"derivative copyright" theory, the copyright earned when an earlier
work is recast, through creative effort, as a new work.


Picture of Carl Hartmann with Caption
"The cost of legal research should go down,
says Carl Hartmann, a New York-based appellate
lawyer for small CD-ROM publisher, HyperLaw, Inc.,
the plaintiff in the text case."

The majority doesn't characterize West products under either
theory, but instead goes through each of four elements that West
adds to raw court opinions and finds them too uncreative to
warrant copyright protection.

West's restyling of plaintiff-defendant names was unremarkable: its
addition or editing of attorney names lack even "a modicum of
creativity"; its addition of subsequent history (such as "rehearing
denied") is usually a choice between one or two ways to put it.

The fourth and most intellectually lively exercise—adding parallel
or alternate citations to opinions—was the toughest of the four
features to evaluate, Jacobs concedes. When West adds citations to
its own products, it is simply following Bluebook citation style, a
standard convention that's not inventive, the majority concludes.

Ironically, the court notes, it is West's accuracy and faithfulness to
the public-domain document that makes copyrightable creativity
invisible, in that "the creative is the enemy of the true."

Copyright precedents for factual compilations have a low threshold
of creativity, Jacobs writes. "But those cases involve the exercise
of judgments more evaluative and creative than West exercises in
the four elements of the case reports that HyperLaw intends to

Thomas Scheffey’s e-mail address is

(*) Re-Printed with the Permission of
the Connecticut Law Tribune




Connecticut Law Tribune November 9, 1998, Vol. 24, No. 45

This Connecticut Law Tribune article describes the Second Circuit's two opinions upholding the Challenges of HyperLaw and Matthew Bender to the copyright claims of West Publishing Company.


Second Circuit Text Decision: Matthew Bender v. West, 158 F. 3d 674 (2nd Cir. 1998), aff'g, No. 94 Civ. 0589, 1997 WL 266972 (S.D.N.Y. May 19, 1997), cert. denied sub. nom. West v. Hyperlaw, 526 U.S. 1154 (1999).

Second Circuit Citation Opinion: Matthew Bender v. West Publishing Co., 158 F.3d 693 (2d Cir. 1998), cert. denied, 526 U.S. 1154 (1999), The Second Circuit affirmed a summary order dated March 12, 1997 re a bench opinion granting summary judgment on citation issues to Matthew Bender and HyperLaw dated November 22, 1996.