COMPLETE TRANSCRIPT - JUDGE MARTIN'S
BENCH OPINION GRANTING SUMMARY JUDGMENT NOVEMBER 22, 1996
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
MATTHEW BENDER & CO.,
v. 94 Civ. 0589 (JSM)
WEST PUBLISHING, INC.
WEST PUBLISHING, INC.,
November 22, 1996
New York, N.Y.
HON. JOHN S. MARTIN, JR.,
IRELL & MANELLA, LLP
Attorney for plaintiff (Matthew Bender)
MORGAN CHU (Argued)
WEIL, GOTSHEL & MANGES
Attorney for defendant West Publishing
JOSEPH MUSILEK (Argued)
CARL J. HARTMANN (Argued)
PAUL J. RUSKIN
Attorneys for Intervenor-Plaintiff (HyperLaw)
(In open court)
THE COURT: Let me start by saying I have reviewed the papers, and when I
tell my law clerk to set an hour down for an argument I don't really expect to
have to respond to three different calls from lawyers telling them I really did
mean what I said. My law clerks have other things to do than to respond to
phone calls and I really don't appreciate that type of conduct.
Now, let's talk about the issues. It seems to me that for the sake of
this argument, we can take it assumed that when West puts together a volume of
the Federal Reporter there is a compilation that is entitled to copyright
protection. However, I think that is not what's at issue in this case.
The issue is, as I see it in this case, starts, to quote from Judge
Leval's opinion in CCC Information Services, "The facts set forth in the
compilation are not protected and may be freely copied. The protection extends
only to those aspects of the compilation that embody the original creation of
Now, let's talk first about the Matthew Bender case. There is no question
that if Matthew Bender took a volume of F.3d, ran it through its Xerox machine
or its computer and printed it out and called it Bender's Federal Third
Reporter, that that would violate West's copyright.
But it seems to me to start with the proposition that the title and the
citation to a West reported decision are facts, facts that anybody is free to
use. It is a fact that the opinion of Judge Leval is reported at 44 F.3rd 61.
That is not as a result of the creative activity that West engaged in to put
that page at, they didn't decide that the best place for the Leval opinion is
at 44 F.2d page 61. They decided that a group of cases should be compiled
together in a certain order, and a consequence of that compilation was that the
case with that title appeared at that page. That's a fact.
It is a fact that the words in Judge Leval's opinion beginning
"compilations that devise new and useful selections" and ending with the words
"McLean, Hunt" appear on page 66 of 44 F.2d. That's a fact.
Again, that is a consequence of the way the compilation is put together,
but it is not any part of the aspect of the compilation that embody the
of the compiler.
Why don't I have West's counsel address themselves to that part of the
MR. MUSILEK: Your Honor, I am Joe Musilek and I will be speaking on behalf
of West this afternoon.
Addressing just those first two questions, your Honor, there is a
difference in the law between pre-existing facts which exist independent of the
work and facts which result as a result of the creation of the work. And to
make the most easiest example I can think of, everyone has an address, a name
and a telephone number regardless of whether or not those are ever compiled
into a telephone directory. However, a slip opinion from Judge Leval does not
have a volume number, West Reporter publication name and page number
independent of the compilation and creation of an arrangement by West in
Federal Supplement or Federal Reporter.
Your Honor, a novel which is clearly completely comprised of the original
writings of the author is clearly copyrightable and yet it is also true that I
could say it is a fact that this novel says this.
THE COURT: But every word in the novel is the author's original creation.
That's not case you have here.
MR. MUSILEK: Your Honor, after the novel is created it is in fact the
case. Those facts did not exist
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prior to their being written down and put into a novel but after that they are
fact. And if I start off by saying it is a fact that this novel says, and then
reproduce the novel, I cannot rely on, as my defense, that I have only stated a
fact, your Honor. You have taken the say essence of the protectable
THE COURT: The essence of the protectable expression here, the essence of
the protectable compilation has nothing to do with the accident as to the page
upon which a particular portion of text falls.
MR. MUSILEK: Your Honor, the arrangement has everything to do with where
case reports are found in volumes and how they are displayed and how they are
reported by West.
It is a group of slip opinions that come into West that are arranged in a
volume. If not for the citation, if not for the very material that's copied by
Matthew Bender, there would be no arrangement.
I think I would cite to you, your Honor, back to the CCC case, which is
very good on this point in stating that very clearly, obviously you have to
have facts and you can't copyright them; but to the extent a compilation, the
protectable expression in a compilation is an arrangement, anything that copies
that arrangement is indeed copying the
protectable expression. That really in a nutshell is the sum and substance of
West's position on star pagination, your. And you cannot rely on the defense
that these are facts because they are not the kind of pre-existing facts dealt
with by the Supreme Court in Feist. They are not the kind of pre-existing
facts, namely what a used car is sold for at auction in the CCC case.
THE COURT: In CCC, Judge Leval I'm not sure would have found what the used
car price was alone. It was because that was combined with certain judgments
by the author as to those valuations that he found them protected.
MR. MUSILEK: I think that's correct. But what the judge in CCC also
found, what the court found in that decision was that an arrangement, in other
words the ordering by even something as simple as the geographic region from
which the car sales were compiled, was sufficient.
THE COURT: Are you telling me every time I write an opinion in which I
give the citation to a West opinion, I violate West's copyright because I put
down the name of the case and the citation?
MR. MUSILEK: Absolutely not, your Honor, because you are citing to a West
Reporter. You are referring the reader to a West Reporter.
And in the singular sense what we are talking
about here --
THE COURT: What does that have to do with
whether or not that citation is protectable?
MR. MUSILEK: Because, your Honor, the issue here isn't a compilation
copyright. It is not any one piece of it that is claimed to be copyrightable.
It is a protectable expression of the entire work as a whole.
The works we are talking about here are advance sheets and bound volumes
of a reporter, not an individual citation. So no issue even arises when you
simply cite someone to a citation in a West book. This is only an issue in
this case in star pagination because you are talking about providing someone
else with a copy of the entirety of the West arrangement.
So it goes far beyond. And I think it is truly a red herring for Matthew
Bender or HyperLaw to try to make reference of the need of the bar to access to
the law, the need of judges and lawyers to cite to West cases. That is not the
issue here. All that is in issue here is whether a commercial, for-profit
competitor of West may copy West's arrangements in their entirety.
THE COURT: They are not copying your arrangements in their entirety. All
they are doing is making reference in copies that they make. Matthew Bender
doesn't copy any of the text that's in West. All it is
doing is making reference to a specific cites within a West Reporter.
MR. MUSILEK: Your Honor, that is not what they are doing. What they are
attempting to do is supplant the market for West's books by providing a copy --
THE COURT: That's absolutely true. But they are not --
Look, I think the best case for you would be if they took the Federal
Rules decision and put out a CD ROM called Bender's Federal Rules Decision in
which they simply took all of the cases that you have on Federal Rules
decisions and used those. That would be using your compilation because they
would take the skill that and creativity you used in selecting those cases for
publication and using them to their own benefit.
But that's not the case here. They have put on the CD ROM cases that are
some reported by West, others that are not.
MR. MUSILEK: Your Honor, that's a very important point and I'm glad you
raised it because that's is another red herring in the law of copyright
infringement. Judge Preska, your fellow judge on this bench, in the Robinson
case in 1995 addressed that issue. And the point of law which is not in
controversy is that it does not matter how much additional other material is in
the infringing work.
All that matters is how much of the original work did they copy.
You can not get outside of a copyright infringement by copying the West
arrangement and then throwing in a bunch of nondispositive orders and
scheduling orders and whatever and say: Oh, we have a lot of things West
The point is, your Honor, and I think it is most evidenced most clearly by
the Tritippo affidavit submitted in conjunction with this motion, by taking the
Matthew Bender product you can recreate an entire volume of case reports from
New York Supplement, with every page break, every page number, every volume
designation, every publication title name as if you had the West book.
The statutory definition of "copies" in the Copyright Act makes it clear
that's an infringement. Nimmer On Copyright, a treatise written by one of the
counsel for Matthew Bender says in unequivocal terms that such copying
constitutes an infringement when it is input into the computer, and nothing you
do thereafter, whether it to be to strip out additional material or add in
other noninfringing material can remove the infringement that occurs at that
The Tritippo affidavit shows that using the
Matthew Bender product you can print out volumes of West
Reporters, you can printout individual pages of West Reporters. That can only
be because they have copied West's arrangement. Without copying West's
arrangement, that could not be done.
THE COURT: Sure it could because the computer could sort anything but
MR. MUSILEK: Your Honor, I can go out and knock on doors and come up with
names and addresses and telephone numbers for everyone on the block. I defy
Matthew Bender's counsel to stand up and tell you that they can go out without
reference to a West book and find those facts outside of a West book and star
page to West Reporters. it cannot be done. That is the critical difference
between the facts that are addressed in Feist and the protectable expression
that is at issue when you talk about star pagination.
THE COURT: Let me hear from counsel to Matthew Bender.
MR. CHU: Good afternoon, your Honor. Morgan Chu and Elliot Brown from
Irell & Manella for Matthew Bender. The principal argument being made by West
is that there is protectable copyrightable expression in a series of Arabic
numerals that are in order, 1, 2, 3, 4, and are inserted by a computer. It is
an astounding position and we have nothing to add to our briefs.
THE COURT: All right. Let's talk then about the HyperLaw. Let me ask
counsel for West the following question.
Assume Justice O'Connor said to her law clerk: I'm giving a lecture over
Georgetown Law School tonight and I want the students to have a copy of my
opinion in Feist v. Rule Telephone. Go to the Supreme Court Reporter, just
copy the caption and then that portion of the report that begins "O'Connor, J.
delivered the opinion of the court.
That is done.
Has Justice O'Connor violated your copyright?
MR. MUSILEK: Justice O'Connor clearly has not for two reasons.
One, under the standard of de minimus copying, which we cite in our briefs
and as the Warner v. ABC case in the Second Circuit which stands for that
proposition, de minimus copying even of copyrighted material is not an
infringement, does not rise to the level of an infringement.
Two, it would certainly be a fair use for a judge or justice of a court to
photocopy and use in connection with official duties or in connection with
teaching, which is of course one of the expressly enumerated exceptions stated
in the Fair Use statute; but in either event, it is either de minimus copying
THE COURT: So the entire text of the opinion
MR. MUSILEK: Either de minimus copying or it is a fair use.
Now, your Honor, just so can make clear the hypothetical here, if in fact
there is nothing in that case report as published by West that did not issue
from the court, then there is with respect to taking one case report, taking
one case, there is nothing copyrightable to be taken. West has never claimed,
and this case is not at all about, any claim by West to any portion of the text
of a judicial decision issued by a court. Whether it be a correction issued by
a court or the original language of the original opinion issued by the court.
That is not the issue.
If you look carefully at a Supreme Court Reporter, that is the West
publication case reports you will see, however, it is editorially enhanced
text. There will be headnote reference numbers, there will be parallel and
alternative citations which are creatively selected and compiled and arranged
by attorney editors at West from among a myriad variety. Especially with
Supreme Court decisions, they are reported and cited in hundreds of places.
You will find that West editors have chosen with parallel citation or
replacement citations to include in that case report. If you take and start
adding those things in and you start talking about a commercial competitor of
West copying all of the text -
THE COURT: Are the parallel citations any substantially different than the
street address of a subscriber to a phone?
MR. MUSILEK: Actually not, your Honor. It is not the parallel citation
text that is copyrightable. It is the selection and arrangement and
coordination of the parallel citation in the case report. And I always want to
bring the court back to that distinction because it is so important in this
There is protection both for original creative texts and there is
protection for any selection, coordination or arrangement of pre-existing
material. With respect to parallel citations, we are talking about the
collection, selection, coordination and arrangement of pre-existing facts,
i.e., the citation as that case appears.
However, your Honor, that's very different when you talk about copying one
case report or making reference to one parallel citation from a commercial
competitor taking the West books and scanning them wholesale, which is what
HyperLaw in testimony, in deposition in this case has said it intends to do if
you authorize it.
THE COURT: If they can do it to one case why can't they do it to them all?
MR. MUSILEK: Because that is when you start talking about the issue that
goes beyond de minimus copying
and you get into the work as a whole. And I think if I understood, your
initial presumption was that the West works as a whole are copyrightable
THE COURT: That's correct.
MR. MUSILEK: So you have a continuum.
THE COURT: To the extent that they made selections of what order in which
they are going to put the opinions. But it is not in the context of what is in
each individual opinion, and that's where I go back to what I started with from
Judge Leval. The protection extends only to those aspects of the compilation
that embody the original creation of the compiler.
MR. MUSILEK: Your Honor, I would cite you to Judge Leval's Law Review
article which is cited in our brief where he makes the very important point
that there can be justifications for a taking a little bit of a work which
cannot be used to justify taking more of the work. And the issue with
commercial competitors such as Matthew Bender and HyperLaw is that they are
taking entire arrangements and entire compilations.
So when you are talking about, for instance, parallel citation and
alternative citations selected and compiled by West, if they take them out of
one case report it is no big dial, it is de minimus fair use, however you want
to characterize it. But when they take volume afte
volume and use the need to obtain corrections, for instance, as the excuse for
scanning entire case reports, your Honor, you are on a continuum now where you
get into a very hazy fact situation as to what they are taking, how much they
are taking and what effect it is going to have on West, which are all directly
relevant fact issues as to whether or not there has been a copyright
It cannot be dealt with in this manner on summary judgment, your Honor.
It simply cannot. At the one end of the continuum where you are talking about
scanning whole case reports it can be, and the court can find, as other courts
have all found, that that's an infringement.
At the far end of the
THE COURT: What other courts have found that?
MR. MUSILEK: We cite a number of them, your Honor, in our briefs, but
there is a Walt Disney animation case.
THE COURT: Nothing to do with case reports?
MR. MUSILEK: No, your Honor, I do not believe there is a scanning decision
on case reports other than a consent judgment in Atlanta where Judge Shoop
found based on the consent of the defendant after it had been found out
that scanning was in fact an infringement. But that was not a contested
But the principle applies, your Honor
Intermediate copying and scanning is infringement.
THE COURT: If you had a copyrightable product to begin with, but I have
real question that you have a copyright in my opinions if you publish in your
volume and that you can stop anybody from copying my opinion.
MR. MUSILEK: We have never tried to stop anybody from copying your
opinions. They can get them from the court, from Lexis, from the Internet.
They can't scan them out of a West book.
THE COURT: That's why I have a problem.
MR. MUSILEK: Your Honor, that's the essence of the CC case. The CCC case
says you can go and make the same compilations, you can get the same data as to
used-car values and create your own publication, but you can't copy the McLean
Reports and say that they are just facts and I can do it myself.
THE COURT: That's true. But it would be true if you added something to my
Now, you may clean up my citations, but I don't think you've added
anything substantial to my opinion that gives you a copyright interest in my
opinion that would prevent somebody from scanning it out of your text.
MR. MUSILEK: Your Honor, I don't disagree as long as we are talking about
a single case report. But again, the work is a copyrightable work as a whole
THE COURT: But that's opinion and you don't have any more right to Judge
Wood's opinion or Judge McKenna's opinion or Judge Sand's opinion when you put
them all together.
MR. MUSILEK: Your Honor, that's not true because at that point we have
compiled them and we have a protective interest in the compilation.
THE COURT: But that doesn't give you any protectable interest in the text
of any one of those opinions.
MR. MUSILEK: It does with respect to things like headnote reference
numbers, parallel citations, synopsis, headnotes, all of the various material
which clearly is original to West.
If you take a little of it, that's one issue, perhaps de minimus. If you start
taking all of it out of the entire volumes you are doing massive, substantial
copying of designated portions of original material.
THE COURT: You are taking advantage of the sweat of West's brow.
MR. MUSILEK: Absolutely not. Not in the least. It is a matter of copying
protectable expression and that is the whole arrangement of copyrights. Of
course it takes sweat, it takes labor to compile something and arrange it, but
it takes intellectual labor.
What the court protects is the intellectual labor, not the physical labor.
It is not the labor of clerical people who put the parallel citation by keying
it into the computer after the attorney-editor has chosen which one to use. It
is the selection of which one to use and where to put it that involves
intellectual effort. That is something that cannot be found. I defy --
THE COURT: That is what the framers meant in Article 1, Section 8: The
progress of science in the useful arts, deciding which parallel citation to
MR. MUSILEK: Absolutely, your Honor.
THE COURT: I knew we fought the Revolution for some reason and now I know.
MR. MUSILEK: Your Honor, when this case started three years ago Matthew
Bender came into this court and
said: this is a simple case, the Feist case by the Supreme Court has come down
and you know what, you can't copyright facts and you can't have a copyrightable
arrangement unless it is creative, the West arrangement is not creative and so
we can copy it.
Two years later there are a series of very favorable Second Circuit
decisions, favorable to West, and they are in here turning 180 degrees around
and saying forget all that we said about the copyrightability of the
compilation, what we're really here to say is that we are
not copying it.
Your Honor, that is a lie and it is not true. You cannot look at the
Tritippo affidavit where they create West volumes and say we haven't copied the
arrangement. That is what they copied.
If they haven't copied that, what have they copied? If you say it is
facts, I say, explain how, your Honor, if they can go door to door, go
somewhere else and find those facts outside of a West book if they are truly
pre-existing facts. They are not pre-existing facts.
Where an alternative or parallel citation is going to go and which one is
going to be chosen cannot be ascertained.
You cannot look at Justice O'Connor's slip opinion from the Supreme Court
and say which parallel citation, which alternative citations are going to be
used, where headnote reference numbers are going to be put, what headnotes are
going to be drafted by West, what syllabus will be drafted but West. It
doesn't exist absent West's intellectual labor in creating all of them and that
is copied by HyperLaw.
MR. HARTMANN: Your Honor, Carl Hartmann for HyperLaw.
As is frequently the case with West, we are mixing lots of apples and lots
of oranges. Let's go back
for a second to the question you asked specifically about the HyperLaw
argument, which is text.
West adds nothing to the Supreme Court text. Period. End of
Now, it may correct a spelling mistake, although it didn't in the examples
it gave. And it may take out parallel citation that the court puts in, or add
some, but that's it.
It's a government work. West doesn't dispute that. West, as far as I
know, doesn't dispute Section 403 or the language that the Congress stated
which underlies 403: 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 government work is published or republished
commercially where it has frequently been the practice to add some new matter
in the form of an introduction, editing, illustrations, et cetera, and to
include a general copyright notice in the name of the commercial publisher
suggests publicly that the bulk of the work is not copyrightable and therefore
free for use.,,
What could be more public governmental work than a Supreme Court case,
What could be less intellectual, less creative than a parallel cite or
citation or a correction to text? I mean, everything else I think is pretty
much in our briefs,
Furthermore, now to get to the other question that West is kind of trying
to bring into the back door with regard to the Supreme Court Reporter, there is
no selection, there is no arrangement. They arrange it in the same way the
Supreme Court does. They select it in the same way the Supreme Court does.
They say so in their answers. There's not even the minimum. Doesn't even come
close on the Supreme Court.
Moving now to -- by the way, your Honor, we believe that partial summary
judgment, despite whatever else happens here today, partial summary judgment
should be granted with regard to both the text and the pagination with regard
to Supreme Court Reporters.
Moving now to the courts of appeals. West has taken the position that its
intellectual value, its creative value is nothing more than cross references.
Mr. Musilek just said it.
We've pointed out to text over and over and over, your Honor, and we've
said to West, point this Court to one thing you do so that the Court can
examine anything you claim is. They have never done it.
We have taken a hundred pages, given it to your Honor. We said: These are
the changes they make, tell us differently.
I refer your Honor to West's statements in its opposition to our statement
of uncontested fact. it is dribble. There is not one single statement by West
about text that it adds to the first hundred pages of 1 F.3d. Nor has it
pointed to anywhere else anywhere else in F.3d or F.2d where into the text of a
court's opinion it has added anything of value. Anything.
It says today -- I guess what we have devolved to after five years of
fighting this issue, what we have basically devolved to I guess is that West is
claiming that there's some value in its cross-reference to other books.
I have no answer for that at all, your Honor. I don't. They are taking
government works, written by judges.
Furthermore, I know that this has been briefed over and over --
THE COURT: Do you have section 403?
MR. HARTMANN: Page 35 of our reply brief is the Conference Committee
report to 403 which is what I was reading from. And 403 is at 34 of the reply
THE COURT: Your reply brief page 35?
MR. HARTMANN: Yes, your Honor, 34 is the text of 403 and 35 toward the
bottom is the text of the Conference Committee report. Your Honor, the
Conference Committee report describes exactly, word for word, exactly what West
Now, your Honor, I know that we have gone over this a half dozen times in
the brief and I don't want to belabor the point, but I think that it is as
critical to note West's response to number 81, which is at 40 of our brief. It
says "other editor enhancements on comparison of case reports to slip opinions.
While it may not be possible to show who authored certain corrections to the
text of opinions, West's understanding is that many judges do see to it that
corrections made by them are noted in the court's files."
Your Honor, West gets corrections from judges. West puts them into West's
version of these opinions. West doesn't have the records, and I know it
because I have been through their records, your Honor, everything they say that
they have got.
West does not keep the records to tell you what changes were made by
judges and which ones were made by West. They are now using this word
"suggest." Judges don't really make the changes, you see, they suggest the
changes to West. But after they've suggested the changes to West, West puts
them into those decisions and West now can't tell you what in that decision
So even if there was the slightest bit of creativity, the slightest bit of
value in those hundred pages of 1 F.3d that we have cited your Honor to or
else in F.3d in correcting a word, which is all they've ever done, we don't
even know that they did it. There's nothing more that can be said.
Now, with regard to the pagination issue, your Honor, West has told
HyperLaw without any reference to fair use that HyperLaw can use its first page
citations. It has told everybody else in the world that too. They are just
moving the shells around in different ways. The truth is once you know the
first page you know everything about the order and arrangement.
With regard to the internal, they say it is done by machine, and even when
it isn't, your Honor, we have shown in our brief that those breaks occur in
four or five different places. There is no value to the breaks. They are
facts. Period. End of discussion. There is nothing else I can add.
THE COURT: What about the head notes?
MR. HARTMANN: The head notes, this is one of those don't-get-me-started
The headnotes are sometimes as shown in the affidavit from our expert
that's attached here -- who is a noted law librarian -- are sometimes copied
verbatim out of Federal court opinions. When they are, they are text of
government works. They can't be copyrighted. Period. End of discussion. The
text can't be.
The fact that they order them in the headnotes, fine, that's great. But
not the text. Never the text of a Federal work.
THE COURT: The fact is when they do a headnote they put a key number in
MR. HARTMANN: Fine. Then you can't copy it without the key number and I
can't copy all the stuff -
THE COURT: But you are copying the key number, are you not --
MR. HARTMANN: Not me.
THE COURT: When you scan --
MR. HARTMANN: We don't, your Honor. That's just a bold outright known
lie. West has said this over and over and over again. We've put five pages on
it in our reply. HyperLaw does not do intermediate copying.
What we do is take the West document, ablate, redact anything that has any
intellectual claim, even a claim, we ablate that. We then copy it. We then
key stroke or scan. When we say scan, we don't mean scan the whole page. We
mean scan the text of a judicial decision as written by a judge. That's all we
THE COURT: Do you block out all of the key
numbers in the text?
MR. HARTMANN: Yes. And that was done years ago, your Honor, five of them.
We sent the original text, the
ablated text, the scanned text and the resultant text to West and said: Tell us
what in here do you claim a copyright.
Now, we played this game for five years, and what it comes down to, what
Mr. Musilek just said if I understood him right, your Honor, is there is an
intellectual, some value, some choice, some decision in putting cross-
Nothing more, your Honor.
MR. MUSILEK: Your Honor, this is not closing argument at a trial. This is
a summary judgment motion, and yet what I heard from Mr. Hartmann was not
nothing more than personal testimony as to what he thinks the facts are. Of
course, those facts are highly contested in sworn affidavits.
THE COURT: But you are saying they are highly contested. You put in some
generalized statements in an affidavit. That doesn't establish the detail that
you need to sustain your claim.
MR. MUSILEK: Your Honor, if I may, this is out of Alan Sugarman's
deposition. This is not generalized. This is specific testimony by Alan
Sugarman, the owner and president of HyperLaw.
Q: What plans do you have with respect to scan? Do you have
particular groups of material that you
"A. Well, the first group would be to fill in pieces of the court's
information whatever reason are not made available to us even though they might
make them available to others in digital form. Then we would work back with
regards to, perhaps, to depending on the upon the court's opinion we would fill
in Federal, we would take the decisions from the Federal Reporter and have them
converted. Again, that is basically an economic decision.
"With regard to scanning these materials in"
THE COURT: I don't give tests to the court reporter.
MR. MUSILEK: "Question: With regard to scanning these materials in, are
there any other preparations you would need to make? Are there any
preparations you would need to make with regard to the beginning of this
operation if the court's decision gives you permission to do so?
"A. In the older decisions all you would have to do is purchase a set of
used books from a law book dealer.
"Q. In terms of technology and products and in terms of procedures, is
there anything you have not yet put in place?
Mr. Sugarman testified that he intended to scan.
That is evidence in the record. That fact and every inference from it must be
granted to West on a summary judgment motion, your Honor, and so you have to
assume that what they intend to do is scan.
THE COURT: Suppose all I am going to do is grant summary judgment that
says that HyperLaw may copy, may scan the text of a West opinion, not including
any headnotes, identity of counsel, or any key number, without any key numbers
in the opinion?
MR. MUSILEK: What about alternative and parallel citations?
THE COURT: Let's just deal with that. I can do that.
Then the question is whether I think that the alternative and parallel
citations are really a substantial contribution that gives you a separate
copyright with the exception of me, the author.
MR. MUSILEK: Your Honor, with regard to a summary judgment motion, and
again that's a standard we are dealing with here, not a summation at trial,
with regard to summary judgment motion, we have an affidavit from Donna
Bergsgaard that is specific on that point which is that alternative citations
are creatively selected, created and prepared by West attorney-editors. That
fact must be taken as true.
THE COURT: The fact that alternative citations are selected has to be
selected. I don't have to take it as a matter of law what the law is saying is
MR. MUSILEK: Your Honor, the law does say and no one disputes it that if
it is a creative selection that is copyrightable. That is statutory language.
That is Section 101 of the copyright.
The selection, coordination or arrangement, any one of these three things
is entitled to protection. When you tell someone they can scan all of our
selection of alternative and parallel citations you are telling them they can
copy our selection. That's an infringement.
And what I am saying is on a summary judgment motion that's entirely
inappropriate and you cannot really piece out and parse out of pieces --
THE COURT: Are you ready for trial next week?
MR. MUSILEK: I understand Mr. Chu is gone for three weeks to Southeast
THE COURT: He's not going to have to try this. He's got a different
MR. MUSILEK: Your Honor, I don't know if we are ready for next week. Our
witnesses are ready to testify and to testify in front of a jury about what
There are a couple of other things that I do want to bring to the Court's
attention because I think we hav
gotten afield. West does take very much umbrage at the notion that they are
coming in and arguing about the copyright provision 403 without having ever
pleaded it and given the clear fact dispute that arises simply by looking at
the copyright notion that Matthew Bender and HyperLaw uses on their products.
The legislative history cited by Mr. Hartmann made mention of using
government works with a general copyright notice. There is no general
copyright notice here. We are talking about a very specific copyright notice
in West books, in Matthew Bender CD-ROMs and in HyperLaw CD-ROMs that states
clearly that no copyright is claimed in government works.
Your Honor, Section 403 states that you may show affirmatively or
negatively in your copyright notice what you claim a copyright in. West,
Matthew Bender and HyperLaw all show it the same way. They all claim a
copyright in the text of the opinions that's entirely enhanced, and we cite
that in the briefs and it is there, and given that it seems implausible even if
it weren't procedurally improper, it seems implausible and in fact impossible
to grant a summary judgment motion on the issue when there is no testimony in
the record, no discovery in the case on that issue and we have as known fact
that all three parties use the same copyrights.
The other thing I do want to say they make statements about what they have
seen and what they did in discovery. They don't rebut what West says it does
and how it says it does it.
Your Honor, I would take issue with the notion that the affidavits of West
are not specific. In large part they are very specific. Certainly as to the
arrangement of the works. Certainly as to the arrangement of Supreme Court
Reporter being different from U.S. Reports. All you have to do, your Honor, is
take judicial notice by looking at a single volume of Supreme Court Reports,
and if you look and I am looking at Volume 106, if you look at the very first
case that is referenced there, there is a parallel citation to the U.S. Reports
which shows that it is in Volume 473 U.S. 1308.
If you then go to the next case that's reported by West it is 473 U.S.
1307, followed by 473 U.S. 1315 which means we have three cases in a row. You
then turn to the next case and you go back two volumes to look 471, 473, 473.
Your Honor, there is not an identical arrangement. There never has been. How
different it is, is, of course, a fact question.
Finally, of course with no offense to the government but with respect to
Supreme Court decisions, it is West that comes out with Supreme Court Reporter
before U.S. Reports, so they obviously are not copying it from U.S. Reports.
THE COURT: Let's take a five-minute recess.
THE COURT: Do both sides agree in the Matthew Bender case that the issue
can be decided on summary judgment?
MR. CHU: We do, your Honor.
MR. MUSILEK: Your Honor, West takes the legal position that it can be
decided on summary judgment with the assumption that West has a creative
arrangement and that the copying that is done by Matthew Bender has been
admitted to be done. If they are going to contest either of those, then of
course we think we have a fact dispute.
THE COURT: I don't think what Matthew Bender has done is contested.
MR. MUSILEK: It says in its brief and statement of undisputed facts that
it has copied nothing from a West book.
THE COURT: It has copied nothing from a West book that is inserted in star
pages. They copied them from other sources. The text of the opinion comes
from other sources.
MR. MUSILEK: I guess all I am saying is in
response to the question is the standard is the fact that we
have cross-moved --
THE COURT: That I know, but I am trying to find out whether anybody thinks
there are really any facts in dispute here, material issues of fact in dispute.
MR. MUSILEK: Applying the undisputed facts asserted by West, West believes
summary judgment is appropriate that star pagination is an infringement.
THE COURT: Let's assume I disagree with that. What is not factually
disputed that would prevent me from granting summary judgment for Matthew
MR. MUSILEK: The facts as set forth in all of the material by West as
applying Section 106 of the Copyright Act, which defines copies and says that
copies are anything that results in the underlying working capable of being
We are saying that can be done, and in our statement of undisputed fact we
are saying the Matthew Bender product allows you to perceive and communicate
the West arrangement. If that is accepted as fact in the Court's factual
findings, then we are prepared to have the Court rule on summary judgment.
If the Court says that the Matthew Bender product does not communicate or
that the arrangement cannot be perceived by using the West arrangement, cannot
be perceived using the Matthew Bender product, then there is a fact
THE COURT: What difference is there between using the star pagination as
simply the first name, the first page pagination?
MR. MUSILEK: Your Honor, that's a very important fact question that goes
to the fair-use portion of the case. That is in essence the fair-use portion
of the case. One use is a reference to a West work. It is fair use. One use.
Star pagination, on the other hand, is a supplanting use, not a fair use.
THE COURT: Star pagination, though, you say if by using the star
pagination they can duplicate through their computer the West system, why can't
they do that, why they can't they reproduce your compilation simply by using
the first page?
MR. MUSILEK: Your Honor, they can. They cannot show where in fact page
breaks occur; they cannot show the page numbers associated with those page
breaks for finding specific portions of text.
THE COURT: I have enough of what I need.
I am going to grant summary judgment to Matthew Bender and to the star
As I indicated at the outset of this argument, with the quote from Judge
Leval in CCC, that the facts set forth in the compilation are not protected and
may be freely
copied, the protection extends only to those aspects of the compilation that
embody the original creation of the compiler.
Here, the original creation of West is not in the number of lines in any
case, it is not in the number of any pages of any case. The original creation
may be in the way West selects cases for reporting, the cases that it puts, any
headnotes that it adds to the report and similar additional material when put
together with the official report that that they obtain from the Court.
However, where and on what particular pages the text of a court opinion
appears does not embody any original creation of the compiler, and, therefore
in my view, is not entitled to protection.
Even if the Court were to find that this matter were entitled to
protection, the use of star pagination would in the Court's view constitute
I think it is important in looking at the fair use analysis to start with
the decision in the Second Circuit in Weissman v. Freeman which underscores an
important factor which I think is often overlooked by lawyers' mechanical
arguments about fair use, and that is the statement that appears, if I am not
violating any copyright, on page 1323 of 868 F.2d. "Analysis begins not by
elevating the statutory guides to inflexible rules but
with a review of the underlying equities."
It seems clearly the underlying equities here lie with allowing use of
star pagination. On the one hand it can be said that somehow Matthew Bender is
taking advantage of the sweat of West's brow. But Feist did away with that
concept. What West is attempting to do by trying to inhibit star pagination is
to create a monopoly over reported court decisions. That, in my view, is not
an equitable activity and therefore should play some role in the analysis of
whether or not there is fair use here.
The purpose and character of the use is, yes, that it is commercial, but
it is only concluding whether it is commercial. Matthew Bender is not using
the star pagination to take advantage of some structure in West's compilation
that has these bits of text appear on a particular pages. It is simply
providing a method whereby users of its product who wish to look at the text in
its hard copy form can go to the volumes and find it. It is also providing a
method by which the users of its product can in their legal writings refer
others to the official reports as is often required by the rules of courts and
the rules of individual judges, such as my rules.
So that if we look at the purpose and character of the use, even though it is
commercial, it still seems to me that it has purposes here that make it a
purpose and that there is no great advantage to West from that use.
Again, we look at the nature of the copyrighted work. It is a
compilation. The star pagination does not in any way take advantage of that
part of West's effort in making the compilation that reflects its intellectual
effort. It simply, as I indicated earlier, reflects the accident of where a
particular portion of an opinion ended up in a West reporter.
Similarly, the star pagination does not take a substantial amount in
relation to the copyrighted work as a whole. West has its copyright because of
the compilation, not because of where a particular portion of court-authored
text falls on a page.
As to the effect of the use upon the potential market for a value of the
copyrighted work, it does not seem to me that this factor weighs heavily in
West's favor because the use of the star pagination does not necessarily impact
on the market for those who want printed books in which they can look at the
decisions of the court and want to have compilations; that is, works that lay
out those opinions in a specific creative order that West has compiled. It
simply will affect the market for text of court decisions. But West has no
copyright on the text of the court decision. It only has a copyright in a
compilation. So for all of those reasons the Court concludes that summary
judgment should be issued on the question of the use of star pagination.
With respect to the HyperLaw issues, the Court is going to deny summary
judgment to HyperLaw because I think under the standards of the Second Circuit
there are disputed issues of fact, and although on the facts as they have been
presented to me I would decide in HyperLaw's favor, and indeed if I were a
circuit judge I might well find that the issue was clear enough that there were
not disputes of material fact. I'm not at all confident that the Second
Circuit would adopt that position and I am very confident that it is not in
anybody's interest given the extended nature of this case that we simply set
off a round of briefing in the Second Circuit and then if I am correct that
that court might find that there are factual issues to have to come back here
two or three years from now to deal with that issue. I think it is a more
practical approach and I think required here that the issues of fact be
developed at the trial.
Whether at the end of the trial it showed no more than the record before
me, I would direct a verdict or enter a judgment NOV is a question that will be
left open. But I think that summary judgment is not the appropriate vehicle to
deal with this case