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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
copyright.
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
product.
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
Circuit.
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
trial.
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
screenplay.
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
attorneys.
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
"combines."
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
volumes.
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
argued.
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.
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:: 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 ::
:: P.O. Box 1176 DO NOT SHORT CIRCUIT YOUR CLIENTS ::
:: New York, NY 10023 ::
:: sugarman@hyperlaw.com 212-787-2812 212-496-4138(fax) ::
:: ::
:: http://www.hyperlaw.com ::
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