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A Tilting of the Tables The Connecticut Law Tribune 2/3/97

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This article appears courtesy of The Connecticut Law Tribune. 
Copyright 1997.  American Lawyer Media, L.P. All rights reserved. 
For reprints of recent articles, please contact Yvette Otero at
203-256-3600, or by email at (clt@counsel.com).

         PAPER: The Connecticut Law Tribune

DATE: 02-03-97

SECTION: News, page 1

HEADLINE: A Tilting of the Tables

DECK: A federal judge tells West -- a company 
famous for getting the law right -- that its pet 
theory for owning the contents of its books is a 
legal loser.

BY: THOMAS SCHEFFEY          In the final moments 
of a two-day federal trial last week in a 
Manhattan, the legal and factual tables appeared 
to tilt disastrously against West Publishing Co.'s 
battle to keep competitors from copying case law 
directly from its books.

West's recently-appointed lead counsel in the 3-
year-old case, James F. Rittinger, of Manhattan's 
Satterlee, Stephens, Burke & Burke, failed in his 
attempt to limit the case's scope and keep the 
focus on West's pet theory of compilation 

Rittinger responded with shock and outrage as he 
watched the scope of the case widen, in his eyes 
at least, from a bid to copy just 1 percent to 2 
percent of West federal cases into "wholesale 
copying" of tens of thousands of those decisions 
by New York CD-ROM publisher HyperLaw Inc.

Under cross-examination from Rittinger at the 
trial, held on Jan. 27 and 28, HyperLaw president 
Alan D. Sugarman explained his plan: If West was 
found to have no copyright preventing it, HyperLaw 
wishes to copy West text, working back from 
current cases in the Supreme Court and federal 
appellate courts, and create computer "hyperlinks" 
to historic cases. Sugarman said it could 
ultimately add up to thousands of cases selected 
in this manner.

Even more disturbing for West, U.S. District Judge 
John S. Martin Jr. made it clear in the final 
minutes of arguments that, because HyperLaw isn't 
planning to copy West's own selection or 
arrangement of cases, he wasn't buying West's main 
legal theory -- that a "compilation copyright" 
could protect individual West cases.

"I tell you right now you are going to lose that 
issue," Martin told Rittinger.

West's strategy was to keep the scope of the claim 
narrow in Matthew Bender & Co and HyperLaw Inc. v. 
West Publishing, an action for a declaratory 
judgment. There was some basis to construe it that 
way. In HyperLaw's Sept. 24 motion for summary 
judgment, it listed 15 federal 1993 cases it 
wanted to copy from West books because they had 
not been omitted from federal Circuit Courts, 
releases to the public on computer-accessed 
electronic bulletin boards.

But it had always asked for more. In its initial 
complaint in 1994, HyperLaw explicitly asked for a 
declaratory ruling that it could copy attorney 
names, citations, corrections "and other factual 
and identifying material" contained in West's 
Supreme Court Reporter and Federal Reporter 
series. It stipulated that West's inventive key 
numbering system and its headnotes are 
copyrightable and that HyperLaw would not copy 
those. But it sought a ruling that copying the 
remainder of the decisions was not a copyright 
infringement or unfair competition.

West, based in Eagan, Minn., was purchased last 
June for $3.4 billion by the Thomson Publishing 
Corp., and is the unrivaled leader of state and 
federal case law publishing. Thomson, a global 
information conglomerate based in Toronto, has its 
U.S. headquarters in Stamford. Final approval of 
the merger by a judge reviewing the antitrust 
settlement has been delayed on the grounds of 
West's copyright claims and is still pending.

In a related development last Wednesday, Thomson 
and West announced the sale to Lexis-Nexis' parent 
company, Reed Elsevier, of 52 legal reference 
products it promised to divest under a consent 
decree negotiated by the U.S. Department of 
Justice and seven states' antitrust divisions. 
Connecticut's Attorney General Richard Blumenthal 
is one of the plaintiffs in the merger deal. (See 
related story, page TK.)

Tougher Standard

Rittinger, accompanied by Joshua M. Rubins at 
trial, has worked on important copyright cases for 
Thomson in the past. On the first day of trial, 
Thomson General Counsel Michael S. Harris attended 
the proceedings. Thomson's substitutions bumped 
longtime West copyright litigator Joseph Musilek, 
of Minneapolis' Schatz, Paquin, Lockridge, Grindal 
& Holstein, to third chair.

Rittinger and Rubins replaced Weil Gotschal & 
Manges lawyers Jeffrey Kessler and Katherine 
Daniels as New York counsel.

The new players continued to follow a litigation 
strategy West had initiated before Thomson bought 
it in June 1996. At the inception of the case, 
West argued that Matthew Bender's request for a 
copyright ruling was not yet ripe and 
nonjusticiable because Bender did not yet have its 
competing product, a planned CD-ROM of New York 
cases and statutes called Authority, as a viable 

When Bender's product became a reality, West, in a 
statement from its then-general counsel Vance 
Opperman, took a different tack. It promised never 
to sue Bender over the copyright claim at issue, 
Bender's use of West's book and page number "star 
pagination," and then contended there was no case 
or controversy.   

Martin ruled the Bender action justiciable, and 
both West and Bender filed motions for summary 
judgment. Bender rested on its briefs, but Martin 
heard oral arguments from West's Musilek and 
HyperLaw litigator Carl J. Hartmann III on Nov. 
22. Martin then ruled from the bench that West's 
page numbers are not sufficiently original to 
warrant copyright protection, citing the 1991 U.S. 
Supreme Court landmark case of Feist v. Rural 
Telephone. That case found White Pages telephone 
listings of alphabetical names, addresses and 
phone numbers to be facts and uncopyrightable 
"sweat of the brow" effort, insufficiently 
creative to warrant a copyright.

Martin's ruling on West's star pagination is now 
on appeal to the U.S. Court of Appeals for the 2nd 

Repeating the strategy it used against Bender, 
West last year contested the justiciability of 
HyperLaw's text case. But Martin ruled on May 15, 
1996, that HyperLaw had legitimate reason to fear 
suit from West, preparing the way for last week's 

Rittinger began the trial with a windy opening 
statement and motion that West would, reluctantly, 
consider 1 percent or 2 percent copying of its 
cases fair use, and granting that, would ask that 
the case be dismissed.

"It may very well be an infringement of our 
copyright for [HyperLaw] to copy even that 1 or 2 
percent if it includes our protected 
compilations," said Rittinger.

The judge broke in: "Well, let me interrupt you 
for a minute because I am not sure this is a 
compilation case," said Martin.

Without letting him say what kind of case he did 
consider it to be, Rittinger argued back: "I 
definitely think it's a compilation case. . . . "

Martin tried to explain: "Let me tell you what I 
think. I think the compilation issue was raised in 
connection with the [Matthew Bender] star 
pagination [trial in November] but what we are 
getting to right now is the copying of individual 
cases, cases authored by judges of various courts, 
and it seems to me that is really what is at issue 
in this part of the trial. All they are doing is 
copying cases that were authored by some judge out 
of your various reports."

Theory Unveiled

It was not until the end of the following day that 
Martin considered the West changes to individual 
cases to fall more logically under the category of 
a "derivative work" copyright -- the kind that 
arises when one work is transformed into a 
different one. As set out in the briefs of the 
parties, there is a world of difference between 
the level of creativity needed for a compilation 
copyright and a derivative work copyright.

In its Sept. 24 motion for summary judgment, 
HyperLaw's Paul Ruskin, a Douglasville, N.Y., 
solo, argued that West's small editorial changes 
to court opinions do not change the underlying 
work nearly enough to warrant a derivative work 
copyright -- as when a novel is recast as a movie 

HyperLaw cited Grove Press v. Collectors 
Publications, a 1967 District Court case from the 
Central District of California in which 40,000 
minor editorial changes were deemed insufficient 
to create a derivative work copyright in an 18th 
century autobiography.

In West's Oct. 14 opposition to HyperLaw's motion, 
it dismissed the derivative work concept with acid 
scorn: "HyperLaw begins its unsound legal analysis 
by evidencing a fundamental misunderstanding of 
copyright law; it asserts that West's Reporter 
volumes are derivative works," when they are 
actually compilations, argued West's Weil Gotschal 

West and Thomson chose to pursue only the 
compilation copyright theory, and called West 
manager Donna M. Bergsgaard to establish that 
West's changes to court opinions exceed the 
minimal levels of creativity needed for a 
compilation copyright.

Rittinger argued Jan. 27, the first day of trial, 
that West, under definitions for originality in 
fact compilations set forth in Feist, may need to 
do no more than "clean up" a court citation. "But 
even probably cleaning up a cite may very well be 
a modicum [of creativity]. It may be humble. It 
may be crude, and it may be obvious, but that is 
all we have to do."

West's Spark

Bergsgaard is West's star witness on copyright 
issues. An attorney and a West executive, she is 
manager of West's Reporter Digest, and testified 
in the 1986 Mead v. West case in the U.S. Court of 
Appeals for the 8th Circuit. That case established 
that West's book and page numbering warranted 
compilation copyright protection. That has since 
been placed in doubt by Feist.

Bergsgaard testified on Jan. 27 that West 
exercises editorial choice and discretion in 
styling the case titles, captions, the line 
identifying the court, the line identifying the 
date argued and filed, and made decisions about 
when to print as one case decisions that are 
rendered in two or more parts, which West calls 

She said that it takes six months of training to 
become a West attorney-editor cite checker, and 
that only attorneys decide where pinpoint 
citations fall when West adds parallel citations 
to a decision, to reference competitors' case 

The most difficult task, she testified, was 
establishing the correct names and cities for the 
attorneys who argue the cases, since some lawyers 
die or are "terminated" before final argument, and 
are replaced.

She said that West used procedures it has had in 
place for over 20 years to select, arrange and 
prepare the decisions for publication. No other 
witnesses were called for the copyright issue.

One inherent difficulty for West is that the 
quality of its product is measured by its 
faithfulness to the original court decisions, 
which in federal courts are, by federal law, not 
subject to copyright. And as Bergsgaard testified, 
West's changes to judicial opinions follow strict 
quality control procedures.

HyperLaw Inc., represented at trial by Hartmann, a 
New York solo, argued in closing that West's 
system was itself an argument against 
copyrightability. He cited the federal copyright 
statute at 17 U.S.C.  402, "which says that you 
can't have a copyright in ideas, procedures, 
processes, systems, method of operation, concepts 
and  principles.

West's additions to the cases are either ordinary 
facts, minuscule variations, or a process or 
system, none of which is copyrightable, Hartmann 

But even if individual enhancements don't 
separately warrant copyright, don't the collective 
improvements add up to one, Martin asked.

"Haven't they added enough new material to satisfy 
that modicum that Mr. Rittinger keeps telling me 
about in toto?" Martin asked.

The size of the phone book in Feist was not 
determinative, Hartmann responded -- even tens of 
thousands of non-copyrightable changes don't add 
up to a copyright. "You certainly can't do it 
under the provisions of 17 U.S.C. 403 to 
government work," said Hartmann, citing 
legislative history from the congressional 
subcommittee that cited as specifically 
objectionable the practice of taking public, 
governmental work product and adding 
"introductions, editing and illustrations" to 
convert it to private copyrighted material. "So 
the answer to your Honor's question is no, that 
won't do it," Hartmann concluded.

Martin gave HyperLaw 30 days to file a post-trial 
brief, with an additional two weeks for West's 
reply. He said he expected to have argument once 
again before ruling.

"If these things were easy, I would have ruled 
from the bench, like I did last time," he said, 
adding that he's well aware of the possibility of 
being reversed on appeal. "I bat about .500," he 
said in a quiet tone. "I have a pretty well-
balanced coin."

TITLE: Lexis Agrees to Buy West-Thomson Spinoffs

In a quick quiet deal that may solve most of the 
outstanding West-Thomson merger problems, Thomson 
signed papers to sell West's 52 antitrust 
divestiture properties -- printed reference works 
and AutoCite, an electronic citation service -- to 
New York-based Reed-Elsevier Inc., the parent 
company of Lexis-Nexis.

Three transaction documents were signed by Reed-
Elsevier, West Publishing Co. and Thomson 
Publishing Corp. on Jan. 26, according to a joint 
status report filed with the U.S. District Court 
for Washington, D.C., on Jan. 28.

Thomson's merger with West awaits final antitrust 
approval from U.S. District Judge Paul J. 
Friedman, who, on Dec. 23, denied approval of the 
merger under his federal Tunney Act review of the 
deal. Friedman specifically approved the 
divestiture portion of the merger plan, worked out 
between Eagan, Minn.-based West, Toronto-based 
Thomson, the U.S. Department of Justice and 
antitrust enforcement officials in seven states, 
including Connecticut.

Friedman's objection to the plan centered on a 
provision to license West book and page numbers to 
publishers for a fee, at a time when federal 
courts are divided on whether West owns any 
intellectual property right to its page numbers in 
the first place.

Lexis, which last year entered into a joint 
venture with New York-based Matthew Bender and Co. 
to purchase Shepard's Inc., will be buying another 
major citation service, AutoCite, if the sale 
remains unchallenged.

Shepard's is the nation's leading print and 
electronic citation checking tool. Thomson-owned 
AutoCite is a product that evolved from the case 
history tracking system used in-house at 
Rochester-based Lawyer's Cooperative Inc.

The three documents in the deal are a sales 
agreement, a license agreement and a transition 
services agreement. The parties also agreed to 
sign mutual antitrust releases at closing.

Justice Department antitrust attorney Lawrence D. 
Fullerton could not be reached for comment. Two 
Thomson lawyers also could not be reached.

The sale, if approved, may well moot Lexis' 
contractual challenges of Thomson's sale of 
AutoCite in U.S. District Court in Dayton, Ohio. 
In the status report, Reed-Elsevier states "upon 
closing, its concerns with respect to the 
acquisition of West by Thomson will be fully 
satisfied (assuming no subsequent breach of 
contract by Thomson)."

West attorney James E. Schatz, of Minneapolis' 
Oppenheimer, Wolff & Donnelly, says the agreement 
is subject to the approval of the Justice 
Department and the seven state plaintiffs, and is 
currently being reviewed by those parties.


:: Alan D. Sugarman       Federal Appeals on Disc tm CD-ROM  ::
:: President              Opinions of US Courts of Appeals   ::
::                        1993 to Date - All Circuits        :: 
:: HyperLaw, Inc.         Registered Trademark               :: 
:: New York, NY 10023    	                                 ::
:: sugarman@hyperlaw.com   212-787-2812   212-496-4138(fax)  ::
::                                                           ::
::              http://www.hyperlaw.com                      ::
::                                                           ::
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