1996-09-27-letter-sugarman-to-doj-request-for-text-amicus

HyperLaw LetterTo Attorney General Reno - Request DOJ To File Amicus Brief for Text Case - September 27, 1996

HyperLaw, Inc.
P.O. Box 1176
New York, New York 10023
212-787-2812

September 27, 1996

Attorney General Janet Reno
United Stated Department of Justice
10th & Constitution Ave., N.W.
Washington, D.C. 20530

Dear Attorney General Reno:

I am requesting in the enclosed letter that the Department file an amicus brief in support of HyperLaw's motion in Matthew Bender & Company and HyperLaw v. West Publishing Company for a determination that the text of court opinions, apart from the headnotes and syllabus, may be copied from West reporters and used by competing publishers in their products without infringing West copyrights.

The Antitrust Division has filed a brief in support of Matthew Bender's motion with respect to the citation of page numbers and an amicus brief in support of the same position in Oasis v. West. In some ways this is an even more important motion, because it is not possible to obtain the copies of many historical opinions from court archives. Even where opinions are obtainable, the opinions do not include corrections made by judges and communicated to West. Moreover, it is an extremely costly process. Matthew Bender attempted to obtain five years worth of opinions from court files in New York, and, ultimately disbanded the project.

This problem is highlighted by the release, this week, of the FLITE (Air Force)-JURIS (DOJ) archive of United States Reports opinions. However, that archive does not opinions after 1985.

Many may ask why are there no opinions after 1985? In 1985, the DOJ and the Air Force stopped keying in this data, and instead relied upon data provided from West and its Supreme Court Reporter. Further, according to the DOJ's position, it entered into a license agreement that required it to give the West data back to West at the end of the contract [others interpret the contract to permit DOJ to keep the opinion text portion of the data.]

Clearly, this was a policy mistake. Had DOJ continued to key in Supreme Court opinions from the public document or negotiated a clear contract to assure that DOJ owned its archive of opinions, then the public would have benefited greatly by the announcement this week because it would have received a complete set of opinions.

Why does DOJ not have its own archive of federal court opinions? Again, one must go back to 1976. FLITE and DOJ wanted to create their own court opinion database. West had not yet gone electronic. When DOJ and FLITE approached West, West took the position that DOJ and FLITE could not key in the court opinions from West Reporters -- even if DOJ and FLITE did not key in the West headnotes and digests.

DOJ and FLITE then had the following choices:

1.     Challenge West's copyright assertions and key in the court opinions over the West objections.

2.     Obtain the opinions from the courts and key them in.

3.     Obtain a license from West to permit DOJ to key in non-copyrighted court opinions. [West did not have the data in electronic form at that time].

There was apparently no political will to confront West which would be required in choice 1. Choice 2 was very expensive and impossible as well -- many opinions were missing and many changes were found only in West books, and not in the court file . DOJ and FLITE selected choice 3, obtaining a license from West(and opted not to select choice 2 for new opinions, a choice still available today.) In selecting choice 3, DOJ and FLITE keyed in the data, but retained the right to keep the court opinions at the termination of the contract -- but West extracted the promise that DOJ and FLITE would not provide the purely public domain court opinions to the public. In the process, the government keyed West books for West and helped West jump-start Westlaw. Lexis complained bitterly about this unfair competition. Lexis complained to Congress and even filed lawsuits citing this transaction. See Mead Data Central, Inc. v. United Sates Department of the Air Force, 566 F.2d 242 (D.C. Cir. 1977).

One may wonder how was it possible that Lexis was able to create its database of opinions -- if as I claim, it is impossible to obtain the original opinions and corrections from the courts.

The answer is simple -- Until West sued Lexis in 1988 for copyright infringement, Lexis keyed in the opinions from West case reports.

When West and Lexis entered into the secret 1988 agreements for case citations, they also settled the text copyright claims as well. [The docket sheet in the 1988 copyright case shows that the copyright claims on text were settled.] We understand that Lexis stopped keying in from West books around 1988, and it is fair to conclude that this was one of the terms of the secret 1988 settlement agreements.

As a result, only West and Lexis have an historic archive, and no one else, or will. That is why these parties need to keep the 1988 agreements secret. It appears that some in the Antitrust Division may be embarrassed that they have allowed these two big companies to have entered into a deal which results in total domination of the on-line legal research market.

After 1988, Lexis stopped making a public issue about the FLITE deal and made no statements at the 1992 Congressional hearing. One familiar with litigation settlement agreements would conclude that Lexis is gagged by the secret 1988 agreements.

There was another company that could have challenged West and keyed in opinions from West books. That was Thomson. Indeed Thomson had an on line service that they shut down in 1988. As Vance Opperman stated in his testimony to Congress in 1992, at page 115 of the hearing on HR 4426:

You can get them [court opinions] on LEXIS, and you used to be able to get them on Veralex. Veralex was available through LCP before Llyod Thomson and Thomson International bought Lawyers Cooperative Publishing for $810 million, along with the other 25 American publishers they have bought in the last 8 years. They then phase out Veralex.

LCP (Lawyers Cooperative) was obtaining its data from LEXIS and the secret 1988 agreement between West and Lexis relates to Veralex.

One of the results of the merger is that Thomson will never have to confront West with the text issue as it had started. Thomson, by 1994, had already confonted on the text issue. Thomson did this by buying a database of Texas opinions from Curtis Hill Publishing Company and releasing those opinions on a CD-ROM. The database Thomson was publishing was keyed in from the West case reporters. Thus, Thomson was directly confronting West on the very same text issue that dogged Juris and FLITE in 1976 and Lexis in 1988.

In 1993 Matthew Bender & Company acquired the same Curtis Hill database. West then immediately threatened Matthew Bender about the use of that database. This was described by Judge Martin's in his decision of May 1, 1996. Matthew Bender & Co., Inc. and HyperLaw, Inc. v. West Publishing Company, 1996 U.S. Dist. LEXIS 5871, 39 U.S.P.Q.2d (BNA), 1079 Copy. L.R. (CCH) (P. 27,505)(S.D.N.Y May 1, 1996) (Note that West also includes corrections to the body of the opinions in the term "West textual additions."):

Many of the opinions that Bender collected for the planned enhancement of the Texas product were purchased in database form from Curtis Hill Publishing. West has contended that the Curtis Hill database includes certain textual additions copied from West's South Western Reporter, including parallel citations, case titles, docket number, judge and attorney names, and rehearing information (the "West textual additions").

In its complaint, Bender alleges that West has threatened to sue it if it includes star pagination to West reporters in Bender products, and that West has also threatened suit over use of the West textual additions contained in the Curtis Hill database. Bender thus seeks a declaration that its use of these features in the enhanced Texas product does not infringe any West copyright.

The foregoing may explain why Lexis has been silent regarding the text issue in their challenge to the West- Thomson merger ... because Lexis already has its deal with West for the historic data.

It is imperative that DOJ go on record, as it should have in 1976, that West copyrights are not infringed when the government or a competing publisher keys in the text of the court opinions from a West case reporter, but does not key in the West headnotes and syllabi.

We ask, therefore, that DOJ immediately file an amicus brief in support of this proposition in the pending action in New York.

Thank you very much.

Sincerely,

Alan D. Sugarman

HyperLaw filed a narrow FOIA request in 1993 for this exact same Juris-Flite Supreme Court data that was released this week. Our FOIA request did not seek any other information and it was denied by DOJ. Therefore, I was chagrined to see that a publisher of court opinions, Villanova Law School (which did not file such a FOIA request at that time) was given a copy of this data when HyperLaw was not provided the data on the same terms and conditions. It was wrong to give West the first crack at the data in 1976. It is wrong to give Villanova first crack at the newly released data in 1996 while withholding it from others which have filed specific clear requests for the data.

Attorney General Reno