UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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HYPERLAW, INC., :
JURY TRIAL
Intervenor-Plaintiff, : DEMANDED
- against - : INTERVENOR
COMPLAINT
WEST PUBLISHING COMPANY, :
Defendant. :
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MATTHEW BENDER & COMPANY, INC., :
Plaintiff, :
- against - :
WEST PUBLISHING COMPANY, : CIV. NO. 94-0589
Defendant. :
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Intervenor-Plaintiff, HyperLaw, Inc., for its
Complaint against West Publishing Company, alleges as follows:
JURISDICTION AND VENUE
1. This Court has subject matter jurisdiction pursuant
to 26 U.S.C. §§ 1331 and 1338(a). This action arises under
Article I, § 8, cl. 8, of the U.S. Constitution (the
"Copyright Clause"), the Copyright Act, 17 U.S.C. § 101 et.
seq. (the Copyright Clause and the Copyright Act hereinafter
"the Copyright Laws") and the Lanham Act, 15 U.S.C. § 1051 et
seq., and seeks relief pursuant to 28 U.S.C. § 2201.
2. Intervenor-Plaintiff HyperLaw, Inc., ("Hyperlaw") is
a privately held corporation duly organized and existing under
the laws of the State of Delaware, is qualified to do business
in the State of New York, and has as its principal and sole
place of business the County, City, and State of New York,
within this District.
3. Defendant West Publishing Company ("West") is a
privately held corporation duly organized and existing under
the laws of the State of Minnesota, with its principal place
of business in Eagan, County of Dakota, Minnesota. West
maintains offices in the County, City, and State of New York,
within this District, where it conducts substantial business.
4. Venue is proper in the Southern District of New York
pursuant to 28 U.S.C. §§ 1391(b) and 1400(a).
NATURE OF THIS OF ACTION
5. HyperLaw seeks declaratory and related relief as
against the defendant West to determine that defendant West
does not hold copyrights to citations, page numbering,
corrections, parallel citations, names of counsel, and other
factual and identifying material contained in two specific
West publications, Supreme Court Reporter* and Federal
Reporter*, and that HyperLaw's planned use of that information
neither infringes any valid copyright of West, nor constitutes
unfair competition.
6. This action concerns acts by defendant West to
privatize and misappropriate the text of laws of the United
States by asserting copyrights in citations to judicial
opinions, and by asserting claims of copyright over factual
material and material created by the federal government.
Defendant has attempted to copyright the body of the law
itself—perverting the purposes of the Copyright Clause of the
Constitution and the Copyright Act by stifling creativity and
erecting a barrier between the citizenry and their law.
7. The Copyright Act does not make copyright available
for a work of the United States Government. The Constitution
authorizes copyrights only to "secure for limited Times to
Authors the exclusive Right to their respective Writings."
Copyright presupposes originality by the originator, the
author of the work. As to the federal case law, the
originator(s) are the federal courts.
8. Citation of judicial opinions is the password to
accessing the law. In the legal system of the United States,
the opinions of the federal courts are the law, ignorance of
which may result in civil and criminal liability or penalty.
9. West has erected restrictions and encumbrances upon
such access to federal judicial opinions, privatizing the law,
and interfering with the due process rights of the citizenry,
inconsistent with the Copyright Act and the Constitution of
the United States, including the Copyright Clause, the First
Amendment, the Sixth Amendment, the Seventh Amendment, and the
Fourteenth Amendment; as the law, and citation thereto, is
entitled to substantially less protection under the Copyright
Clause and the Copyright Act than are names and addresses in
telephone books.
10. HyperLaw publishes CD-ROM ("Compact Disc Read-Only-
Memory") discs containing computer readable versions of recent
opinions of the United States Supreme Court and the United
States Courts of Appeals. HyperLaw desires to incorporate and
use information to which defendant West has wrongfully claimed
copyright, in HyperLaw's CD-ROMs.
11. HyperLaw has communicated with defendant West to
determine whether such uses by HyperLaw would infringe on
West's copyrights--and to clarify West's vague, broad
assertions regarding copyright. In response, West warned
HyperLaw that if HyperLaw included information as to which
West made such claims without a license from West, there would
be legal consequences and, further, specifically and
wrongfully asserted that HyperLaw would thereby be engaged in
unfair competition against West.
12. HyperLaw contends that it has an unqualified right
to copy information for which protection under the Copyright
Laws is not available to West.
BACKGROUND
13. HyperLaw is a publisher of CD-ROMs, and was
incorporated in 1991.
14. In January, 1992, HyperLaw began publishing Supreme
Court on Disc*, an annual CD-ROM containing recent opinions of
the United States Supreme Court, the first CD-ROM publication
of this nature. (A copy of the latest release of this CD-ROM
is attached hereto as Exhibit 2.)
15. In July 1993, HyperLaw began publishing Federal
Appeals on Disc*, a quarterly CD-ROM of substantially all
recent opinions of all of the United States Courts of Appeals,
excepting the Federal Circuit (which is being included in
HyperLaw's March, 1994 release).
16. Federal Appeals on Disc was the first CD-ROM case
reporter of all or substantially all of the opinions of the
U.S. Courts of Appeals for a given year. The CD-ROM contains
approximately 10,000 opinions from 1993; equivalent to 200,000
pages of typed text. A copy of the latest release of that CD-
ROM is attached as Exhibit 1.
17. HyperLaw offers its CD-ROMs for sale to lawyers, and
to the general public; including, but not limited to,
libraries, students, and public interest groups.
18. HyperLaw obtains the text of substantially all
"published" opinions and, for some courts, also unpublished
opinions, directly from the federal appellate courts.
19. HyperLaw formats each opinion; prepares an initial
section or "header" of bibliographic information; inserts
codes and tags ("hyper-links") utilized by a computer program
to permit automatic cross-references; organizes the cases by
date; and generates a full-text searchable computer file for
inclusion on a CD-ROM.
20. Defendant West is a legal publisher. For
approximately 100 years, West has been engaged in publishing
opinions of federal courts.
21. West's practice has been to create "case reports"
from federal appellate judicial opinions by preparing
editorial notes and other editorial materials which it
integrates with the opinions.
22. West publishes and sells its federal circuit court
and United States Supreme Court case reports in various ways,
including, but not limited to, two series of volumes referred
to as "reporters"—West's Supreme Court Reporter and Federal
Reporter.
23. HyperLaw makes no use of materials from West's
Supreme Court Reporter or Federal Reporter publications,
except to prepare a separate table which provides a cross-
reference to the initial page and volume citation to the
West's Federal Reporter. In the course of preparing this
table, opinions which were missing or amended are identified
by HyperLaw.
24. HyperLaw has sought, and presently seeks to copy
information not subject to copyright from the West
publications: the text of those opinions not provided to
HyperLaw by the courts, corrections, amendments, names of
counsel, parallel citations, West citation, and the interior
pagination from volumes of West's Supreme Court Reporter and
the Federal Reporter.
25. Defendant West does not hold valid copyrights for
the material HyperLaw has sought and presently seeks to copy.
26. The non-copyrighted information from the West
publications will be incorporated into the text of opinions as
now appear in HyperLaw's present CD-ROMs.
27. In a recent copyright infringement action against a
Georgia publisher of CD-ROMs containing judicial opinions,
West stated that:
each West Reporter contains the following
editorial enhancements which West contends
was created entirely by West:(a) West
citation for the case; (b) case synopsis,
including summary of the facts, the
court's holding and the procedural history
of the case; (c) numbered headnote(s)
summarizing portions of the opinion
relating to specific points of law,
including the editorial designation of the
statutes that relate to each headnote; (d)
topic designation for each headnote; (e)
topic designations for each headnote with
individual "Key Number System" registered
trademark symbols (keys) and numeric
designations; (f) miscellaneous
information prepared by West inserted
within the text of the judicial opinion
including parallel citations, corrections
and cross-reference numbers relating back
to corresponding headnote numbers; and a
West trademark at the end of each case
report. (Emphasis added).
See Exhibit 3, Par. 10, Complaint, West Publishing v. Gross et
al, No. 1-93-CV-2071 (N.D. Ga., filed September 10, 1993).
28. For the purposes of this action only, the term "West
Editorial Additions" shall mean only the following:
(i) case synopsis, including West's
summary of the facts and the court's
holding; (ii) numbered headnote(s)
summarizing portions of the opinion
relating to specific points of law,
including the editorial designation of the
statutes that relate to each headnote;
(iii) topic designation for each headnote;
(iv) topic designations for each headnote
with individual "Key Number System"
registered trademark symbols (keys) and
numeric designations; (v) cross-reference
numbers relating back to corresponding
headnote numbers; and (vi) a West
trademark at the end of each case report.
The term "Full Text Case Reports" shall mean the text of
opinions of the federal appellate courts, and shall not
include these West Editorial Additions.
29. West stated in the copyright infringement action
referred to in paragraph 27 above, that "[e]ach volume of
West's ... publications includes a copyright notice and
contains material wholly original to West including, without
limitation, the editorial enhancements to each case report as
specified [above], and the selection, coordination and
arrangement of cases reported therein, including the numbering
of pages of volumes which reflect that arrangement." See
Exhibit 3, Paragraph 16.
30. Illustrative of West's attempt to broadly assert
copyright to non-original, factual, and "sweat of the brow"
material is the West advertisement "The difference between raw
text and a West Full-Text Plus tm opinion is black and
white...", appearing in the National Law Journal, July 27,
1992, Pages 6-7. See Exhibit 7.
MISCELLANEOUS INFORMATION
31. Parallel citations and names of counsel
("miscellaneous information" for which West also claims
copyright) are merged into the text of the cases in such a way
that it is not reasonably possible to distinguish between such
additions by West, and the works of the government. These
additions are also factual, and do not evidence originality or
creativity.
32. Citations and page numbering ("miscellaneous
information" for which West claims copyright) are factual or
identifying material not subject to copyright, and, to the
extent they may have otherwise been subject to copyright, such
claims are based upon compilation not subject to copyright, as
described below.
CORRECTIONS
33. West also claims that corrections to opinions in
West's Supreme Court Reporter and Federal Reporter are further
"miscellaneous information" for which West claims copyright.
34. Upon information and belief, after the release of an
initial federal opinion, corrections (including typographical
corrections, substantive amendments, and modifications) may be
made to opinions by (or with the approval of) the federal
appellate courts.
35. Depending on the Circuit and the nature of the
correction to the opinions, and unless the court or clerk of
the court issues a formal order or notice, these corrections
are not always docketed and filed in the files maintained by
the clerk of the court.
36. Employees of the federal judiciary advise West of
corrections to slip opinions or advance sheets, or West may
advise employees of the judiciary of suggested corrections.
Employees of the federal judiciary may approve or disapprove
of the changes.
37. Employees of the federal judiciary provide
corrections to West and approve or disapprove of corrections
made by or provided to West as part of their official duties.
38. Some circuits provide corrections to defendant West
on a preferential basis, not similarly available to HyperLaw.
39. The Reporter of the Supreme Court of the United
States provides West with "marked-up" copies of slip opinions
indicating corrections made in the Preliminary Print, and West
then makes those corrections in the Supreme Court Reporter.
40. In preparing volumes of the Federal Reporter and
Supreme Court Reporter, West engages in no significant
corrections or additions to the texts of the opinions other
than those made by or approved by judges, clerks or other
employees of the judiciary.
41. In the copyright notice in West's Supreme Court
Reporter and Federal Reporter, West makes the assertion of
copyright by claiming copyright on the entire contents with
the following "exception":
Copyright is not claimed as to any part of
the original work prepared by a United
States Government officer or employee as
part of that person's official duties.
42. Corrections to cases, which West defines as
"miscellaneous information" and for which West claims
copyright, are works of the government for which copyright
cannot be claimed.
43. Corrections to cases consists of factual information
for which copyright cannot be claimed.
44. Corrections to cases are not original works within
the meaning of the Copyright Laws, and thus copyright cannot
be claimed.
45. Corrections to federal judicial opinions may not be
copyrighted under the Copyright Clause.
SELECTION, ORGANIZATION, AND ARRANGEMENT
46. The Federal Reporters contain the opinions
designated as "published" by the United States Courts of
Appeals for the First, Second, Third, Fourth, Fifth, Sixth,
Seventh, Eighth, Ninth, Tenth, Eleventh, District of Columbia
and Federal Circuits.
47. HyperLaw's Federal Appeals on Disc CD-ROM contains
all or substantially all of the Full Text Case Reports that
appear in recent volumes of the Federal Reporter.
48. HyperLaw's Federal Appeals on Disc CD-ROM also
contains certain unpublished opinions not published in full-
text form in the Federal Reporter.
49. HyperLaw's Federal Appeals on Disc CD-ROM, attached
as Exhibit 1, contains substantially all of the Full Text Case
Reports that appear in Volume 1 of the Third Series of West's
Federal Reporter (1 F.3d).
50. Not included on HyperLaw's CD-ROM, but reproduced in
West's 1 F.3d, are one Full Text Case Report from the Fifth
Circuit, two from the Ninth Circuit, six from the Tenth
Circuit, and one from the Eleventh Circuit.
51. The selection of what is a "published" United States
Court of Appeals opinion is made initially by each of the
respective courts.
52. In preparing volumes of the Federal Reporter, West
engages in no, or substantially no, original "selection."
53. After initial release by a court, an unpublished
opinion may later be "published" because it is appealed to the
Supreme Court or because of a determination by the respective
court.
54. In preparing volumes of the Federal Reporter, West
engages in no, or substantially no, original "selection."
55. In publishing volumes of the Federal Reporter, West
initially publishes the opinions in paperbound advance
volumes. Within a paperbound volume, West generally, but not
always, organizes the opinions by Circuit, and, within each
Circuit, by date.
56. Case reports in West's Federal Reporter do not
appear in a date order within or across volumes, as earlier
cases may appear after later cases.
57. When preparing a bound permanent volume of Federal
Reporter, West combines several paperbound volumes.
58. In the permanent volume of Federal Reporter,
opinions from a particular Circuit are not found consecutively
and appear in several separated locations.
59. Within Federal Reporter, opinions are not arranged
with the creativity or originality required under the
Copyright Laws.
60. Accordingly, there is no "arrangement" or
"coordination" of the opinions in the final bound volumes of
Federal Reporter sufficient to support a claim of copyright.
61. Upon information and belief, in preparing volumes of
the Supreme Court Reporter, defendant West obtains opinions
directly or electronically from the Court or engages in the
wholesale scanning or keying-in of all of the Court's slip
opinions, Preliminary Print of the United States Reports, and
the United States Reports.
62. Opinions in the Supreme Court Reporter are ordered
substantially as they will appear in the public domain United
States Reports: by date, seniority of the Justice announcing
the opinion, and as otherwise indicated by employees of the
Court to West. In so publishing the Supreme Court Reporter,
West engages in no "arrangement" or "coordination."
63. West publishes all orders and opinions that the
Supreme Court makes public.
64. In publishing Supreme Court Reporter, therefore,
West engages in no substantial or original "selection" of the
cases and orders that appear therein.
65. In publishing Supreme Court Reporter, West does not
engage in "arrangement" or "coordination" of the cases and
orders that appear therein in a manner sufficient to support a
claim of copyright.
66. The page number which happens to be placed on the
first page of an opinion along with the volume number of
West's Federal Reporter or Supreme Court Reporter in which a
given opinion appears (referred to hereinafter as a "Case
Citation") are not subject to copyright pursuant to the
Copyright Laws.
67. The page numbers placed on the pages subsequent to
the first page of each opinion within West's Federal Reporter
and Supreme Court Reporter(referred to hereafter as "pin-point
citations") are not subject to a claim of copyright pursuant
to the Copyright Laws.
68. West has no interest in the selection, coordination,
and arrangement of the cases reprinted in, Case Citation, or
citation to the page numbers therein, of the Federal Reporter,
subject to copyright.
WEST'S USE OF GOVERNMENT PROPERTY
69. For certain Circuits, including the Fifth and
Eleventh Circuits, West has entered into contracts with, and
is thus paid by the judiciary, to print slip opinions.
70. Upon information and belief, in printing Federal
Reporter, Defendant West directly uses the electronic
typesetting computer files prepared under these slip opinion
printing contracts. See Exhibits 20, 21 and 22, correspondence
of May and June 1993 between Alan D. Sugarman, HyperLaw, Inc.
and Dwight D. Opperman, President, West Publishing Co.
71. Except for corrections provided by the Fifth and
Eleventh Circuits to West, and not to other publishers, the
text of opinions appearing in the Federal Reporter for the
Fifth and Eleventh Circuit is identical to the text printed by
West when it prints the slip opinions. See, Exhibits 21, 22
and 23.
72. Upon information and belief, those slip opinion
printing contracts between West and the Administrative Office
of the United States contain a provision substantially as
follows:
All furnished workproduct, materials, and
all other items made or furnished by the
Contractor as required, and paid for by
the Government, shall remain or become the
property of the United States, and shall
not be submitted, loaned, leased,
displayed or sold to any other party by
the Contractor. (Emphasis added.)
See Exhibit 23, letter dated March 17, 1993 from the
Administrative Office of United States Court to Alan D.
Sugarman, HyperLaw, Inc.
73. Upon information and belief, West purchases from
other slip opinion printers their databases created pursuant
to similar agreements with the Administrative Office of the
United States Courts, and uses those databases to create the
Federal Reporter.
74. West has no valid copyright claim to these works of
the United States Government.
CORRESPONDENCE BETWEEN WEST AND HYPERLAW
75. Since July 1, 1991, HyperLaw has repeatedly
attempted to obtain, from West, a description and
clarification of what is claimed (or not claimed) under these
asserted West copyrights. See Exhibits 8 through 21.
76. HyperLaw sought, among other things, clarification
of the extent West copyright claims with regard to HyperLaw's
intended publications, including, among other things, use of
Case Citations, Pin-Point Citations, corrections, names of
counsel, and parallel citations.
77. In response to requests by HyperLaw, West has
repeatedly refused to clarify or otherwise specify the extent
of its copyright claims, insisted, instead, that HyperLaw
obtain a license from West, and on August 1, 1991 warned
HyperLaw that "[i]f you proceed in any other way, you do so at
your own risk." See Exhibit 9 attached hereto.
78. On August 21, 1991 West reiterated its August 1,
1991 warning: "Finally, I believe that the last sentence of my
previous letter was -- and remains -- clear." See Exhibit 11.
79. In May of 1992, HyperLaw continued to request
clarification from West, and requested that West permit
HyperLaw to include only the Case Citation, that first page
and volume citation, to the Supreme Court Reporter in
HyperLaw's Supreme Court on Disc CD-ROM.
80. In a letter to West dated May 21, 1992 (Exhibit 14)
HyperLaw sought to clarify the copyright claims from West's
present President's sworn testimony to the Subcommittee on
Intellectual Property and Judicial Administration of the House
Committee on the Judiciary on May 14, 1992 that "[n]either
does West claim that its citations—such as '681 F.Supp. 1228'—
are in and of themselves copyrightable." West responded only
that "'in and of itself' has its normal English meaning." See
Exhibit 15, Letter from West to HyperLaw dated May 28, 1992.
But see Exhibit 24, Statement of Ralph Oman, Register of
Copyrights.
81. HyperLaw learned of a prior copyright infringement
action brought by West against a publisher of case law CD-ROMs
in Nebraska. West Publishing v. ROM Publishers, Inc., No. 4-
88-803 (D.Minn. filed September 16, 1988) Upon information
and belief, as a result of that action, that publisher is now
defunct.
82. Immediately after commencing the referenced action
in the Northern District of Georgia, West issued a press
release announcing the action and warning others of West's
plans to utilize litigation to assert such copyrights. This
warning resulted in an apprehension that any activity such as
was described in that complaint would result in similar legal
action by West. (See Exhibit 4, West Publishing Company,
Press Release dated September 10, 1993.) Press inquiries were
directed by the Press Release to attorney Joseph Musilek, of
Opperman, Heins & Paquin.
83. Upon information and belief, Joseph Musilek of
Opperman, Heins & Paquin then spoke, on the record, with a
reporter for the National Law Journal, which resulted in an
article entitled "West Moves to Protect Opinions" in the
December 27, 1993, edition of the National Law Journal. The
article announced other West litigation which created
additional, similar apprehension. See Exhibit 5.
84. HyperLaw's Federal Appeals on Disc and Supreme Court
on Disc are published without the pagination, citation,
correction, and other non-original factual materials contained
in the West Reporters.
85. West's copyright claims and warnings to HyperLaw,
its, public warnings, public statements, willingness to engage
in litigation, and ability to engage in such litigation have
created an apprehension by HyperLaw that it will be sued by
West for publishing public, non-copyrightable information from
West's Federal Reporter and Supreme Court Reporter, which is
thus impairing HyperLaw's ability to publish public, non-
copyrightable information from West's Federal Reporter and
Supreme Court Reporter.
FIRST CAUSE OF ACTION FOR DECLARATORY JUDGMENT
86. HyperLaw repeats and realleges the allegations of
paragraphs 1 through 85 above, and incorporates herein those
paragraphs, and other paragraphs hereafter, by reference.
87. Factual material such as names of counsel, parallel
citations, corrections, and amendments (other than the West
Editorial Additions set forth in paragraph 28 above) made by
West in West's Supreme Court Reporter and Federal Reporter are
not original material and are not otherwise subject to
copyright protection pursuant to the Copyright Laws.
SECOND CAUSE OF ACTION FOR DECLARATORY JUDGMENT
88. HyperLaw repeats and realleges the allegations of
paragraphs 1 through 87 above, and incorporates herein those
paragraphs, and other paragraphs hereafter, by reference.
89. Factual material such as names of counsel, parallel
citations, corrections, and amendments (other than the West
Editorial Additions set forth in paragraph 28 above) made by
West in Volume 111 of West's Supreme Court Reporter and
Volume 1 of the Third Series of West's Federal Reporter are
not original material and are not subject to copyright
protection pursuant to the Copyright Laws.
THIRD CAUSE OF ACTION FOR DECLARATORY JUDGMENT
90. HyperLaw repeats and realleges the allegations of
paragraphs 1 through 89 above, and incorporates herein those
paragraphs, and other paragraphs hereafter, by reference.
91. Corrections, and amendments made by West in West's
Supreme Court Reporter and Federal Reporter (other than the
West Editorial Additions set forth in paragraph 28 above) are
not original material, because they are factual material, and
are also works of the government of the United States, and
thus are not subject to copyright protection pursuant to the
Copyright Laws.
FOURTH CAUSE OF ACTION FOR DECLARATORY JUDGMENT
92. HyperLaw repeats and realleges the allegations of
paragraphs 1 through 91 above, and incorporates herein those
paragraphs, and other paragraphs hereafter, by reference.
93. Corrections made by West in Volume 111 West's
Supreme Court Reporter and Volume 1 of the Third Series of
West's Federal Reporter (other than the West Editorial
Additions set forth in paragraph 28 above) are not original
material and are also works of the government of the United
States, and are not subject to copyright protection pursuant
to the Copyright Laws.
FIFTH CAUSE OF ACTION FOR DECLARATORY JUDGMENT
94. HyperLaw repeats and realleges the allegations of
paragraphs 1 through 93 above, and incorporates herein those
paragraphs, and other paragraphs hereafter, by reference.
95. Even if factual material such as the names of
counsel, parallel citations, corrections, and amendments made
by West in West's Supreme Court Reporter and Federal Reporter
(other than the West Editorial Additions set forth in
paragraph 28 above) were susceptible to copyright, that
material is indistinguishably merged with material not subject
to copyright protection to such an extent that the material is
not subject to copyright protection pursuant to the Copyright
Laws.
SIXTH CAUSE OF ACTION FOR DECLARATORY JUDGMENT
96. HyperLaw repeats and realleges the allegations of
paragraphs 1 through 95 above, and incorporates herein those
paragraphs, and other paragraphs hereafter, by reference.
97. Even if factual material such as the names of
counsel, parallel citations, corrections, and amendments made
by defendant West and contained in Volume 111 of West's
Supreme Court Reporter and Volume 1 of the Third Series of
West's Federal Reporter (other than the West Editorial
Additions set forth in paragraph 28 above) were subject to
copyright protection, that material is indistinguishably
merged with material not subject to copyright protection to
such an extent that the such material is not subject to
copyright protection pursuant to the Copyright Act.
SEVENTH CAUSE OF ACTION FOR DECLARATORY JUDGMENT
98. HyperLaw repeats and realleges the allegations of
paragraphs 1 through 97 above, and incorporates herein those
paragraphs, and other paragraphs hereafter, by reference.
99. The Case Citation (to the initial page and volume
number) of the full text of opinions in West's Supreme Court
Reporter and Federal Reporter is not subject to copyright
protection by reason of insufficient collection, arrangement,
and coordination of the full text of the opinions, and
HyperLaw may use those Case in publishing comprehensive
competing publications without infringing any valid West
copyright.
EIGHTH CAUSE OF ACTION FOR DECLARATORY JUDGMENT
100. HyperLaw repeats and realleges the allegations of
paragraphs 1 through 99 above, and incorporates herein those
paragraphs, and other paragraphs hereafter, by reference.
101. The citation and pagination to each individual page
within the full text opinions in West's Supreme Court Reporter
and Federal Reporter ("Pin-Point Citation") are not subject to
copyright protection by reason of insufficient collection,
arrangement, and coordination of the full text of the
opinions, and HyperLaw may use such Pin-Point Citation in
publishing comprehensive competing publications without
infringing any valid West copyright.
NINTH CAUSE OF ACTION FOR DECLARATORY JUDGMENT
102. HyperLaw repeats and realleges the allegations of
paragraphs 1 through 101 above, and incorporates herein those
paragraphs, and other paragraphs hereafter, by reference.
103. The citation and pagination of the full text
opinions and orders in Volume 111 of West's Supreme Court
Reporter and volume 1 of the Third Series of Federal Reporter
are not subject to copyright protection by reason of
insufficient collection, arrangement, and coordination of the
full text of the opinions, and Intervenor-Plaintiff may use
such citations and pagination in publishing comprehensive
competing publications without infringing any valid West
copyright.
TENTH CAUSE OF ACTION FOR DECLARATORY JUDGMENT
104. HyperLaw repeats and realleges the allegations of
paragraphs 1 through 103 above, and incorporates herein those
paragraphs, and other paragraphs hereafter, by reference.
105. Publication by HyperLaw of a CD-ROM containing all
or substantially all of the opinions contained in a volume or
volumes of the Federal Reporter, and including citations, page
numbers, corrections, the names of counsel, and parallel
citations taken from the Federal Reporter does not and would
not constitute unfair competition under the Lanham Act.
106. Publication by HyperLaw of a CD-ROM containing all
or substantially all of the opinions also contained in a
volume or volumes of the Supreme Court Reporter, and including
the page numbers, corrections, names of counsel, and parallel
citations taken from the Supreme Court Reporter, does not
constitute unfair competition under the Lanham Act.
ELEVENTH CAUSE OF ACTION FOR DECLARATORY JUDGMENT
107. HyperLaw repeats and realleges the allegations of
paragraphs 1 through 106 above, and incorporates herein those
paragraphs, and other paragraphs hereafter, by reference.
108. For a period of up to three years after the initial
release of an opinion by the Supreme Court, there is not a
standard or official federal judicial citation acceptable for
use in court documents and legal publications with the
exception of private citations of the Supreme Court Reporter,
United States Reports, Lawyers Edition®, and U.S. Law Week®.
Use of one or more of these private citations are required by
federal courts, and the preferred use is the citation to
Supreme Court Reporter.
109. The Federal Reporter is the only source which
contains corrected versions of the slip opinions issued by the
federal Courts of Appeal. The Case Citation and internal Pin-
Point Citation in both the Federal Reporter and the Supreme
Court Reporter have practical (and in many instances judicial)
recognition as the "official" citation.
110. This recognition has been made possible as a result
both by the actions of the federal judiciary, specifically the
assistance provided by the federal judiciary to West, and the
federal judiciary willingness to accept and adopt the West
citation, with the active encouragement and support of West.
111. Thus, if the West copyrights were otherwise valid in
any part, then HyperLaw's intended use is a fair use and by
that reason, a valid defense to infringement.
WHEREFORE, Intervenor-Plaintiff HyperLaw prays that this
Honorable Court enter a judgment declaring the rights and
other legal relations of the parties as follows:
1. That West does not possess a federal statutory
copyright in the Case Citation or the Pin-Point Citation to
the Supreme Court Reporter and the Federal Reporter;
2. That West does not possess a federal statutory
copyright of corrections, names of counsel, and parallel
citations included in the Supreme Court Reporter and the
Federal Reporter;
3. That HyperLaw will not infringe any valid West
copyright by its intended use of Case Citations, Pin-Point
Citations, page numbering, corrections, counsel names, and
parallel cites taken from the Supreme Court Reporter and the
Federal Reporter;
4. That HyperLaw's intended use of the Case Citations,
Pin-Point Citations, page numbering, corrections, counsel
names, and parallel cites taken from the Supreme Court
Reporter and the Federal Reporter are protected under the
Constitution of the United States, including the Copyright
Clause, the First Amendment, the Sixth Amendment, the Seventh
Amendment, and the Fourteenth Amendment;
5. That HyperLaw will not be engaged in unfair
competition as against the defendant in using Case Citations,
Pin-Point Citations, page numbering, corrections, counsel
names, and parallel cites taken from the Supreme Court
Reporter and the Federal Reporter in HyperLaw's publication of
Supreme Court on Disc and Federal Appeals on Disc;
6. For the recovery of full costs and reasonable
attorney's fees pursuant to 17 U.S.C. 505; and
7. For such additional and further relief, in law and
equity, as may be deemed just and appropriate.
Dated: New York, New York
March 2, 1994
Respectfully Submitted,
LAW OFFICES OF
PAUL J. RUSKIN
By: _______________________
Paul J. Ruskin, Esq.
(PR-1288)
Attorney for Hyperlaw, Inc.
Intervenor-Plaintiff
72-08 243rd Street
Douglaston, New York 11363
Telephone: (718) 631-8834
Facsimile: (718) 631-5572
Of Counsel:
Carl J. Hartmann III, Esq.
EXHIBITS TO THE COMPLAINT
Exhibit 1:
Federal Appeals on Disc™ CD-ROM, December, 1993 Release,
HyperLaw, Inc.
Exhibit 2:
Supreme Court on Disc™ CD-ROM, November, 1992 Release,
HyperLaw, Inc.
Exhibit 3:
Complaint in West Publishing v. Gross et al, No. 1-93-CV-2071
(United States District Court, N.D. Ga., filed September 10,
1993)
Exhibit 4:
West Publishing Company, Press Release dated September 10,
1993
Exhibit 5
"West Moves to Protect Opinions", New York Law Journal,
December 27, 1993.
Exhibit 6:
Complaint in Matthew Bender v. West Publishing Company, No. 1-
93-CV-2071 (United States District Court, S.D.N.Y., filed
1994)
Exhibit 7:
West Publishing Company, Advertisement, "The difference
between raw text and a West Full-Text Plus tm opinion is black
and white...", National Law Journal, July 27, 1992, Pages 6-7.
Exhibit 8:
Letter Dated July 1, 1991, Alan D. Sugarman, HyperLaw, Inc. to
Timothy Blank, Esq., West Publishing Co.
Exhibit 9:
Letter Dated August 1, 1991, James E. Schatz, Opperman Heins
Paquin to Alan D. Sugarman, HyperLaw, Inc.
Exhibit 10:
Letter Dated August 12, 1991, Alan D. Sugarman, HyperLaw, Inc.
to James E. Schatz, Opperman Heins Paquin
Exhibit 11 :
Letter Dated August 21, 1991, James E. Schatz, Opperman Heins
Paquin to Alan D. Sugarman, HyperLaw, Inc.
Exhibit 12:
Letter Dated September 19, 1991, Alan D. Sugarman, HyperLaw,
Inc. to James E. Schatz, Opperman Heins Paquin.
Exhibit 13:
Letter Dated October 9, 1991, James E. Schatz, Opperman Heins
Paquin to Alan D. Sugarman, HyperLaw, Inc.
Exhibit 14:
Letter Dated May 21, 1992, Alan D. Sugarman, HyperLaw, Inc. to
James E. Schatz, Opperman Heins Paquin.
Exhibit 15:
Letter Dated May 28, 1992, James E. Schatz, Opperman Heins
Paquin to Alan D. Sugarman, HyperLaw, Inc.
Exhibit 16:
Letter Dated May 29, 1992, Alan D. Sugarman, HyperLaw, Inc. to
James E. Schatz, Opperman Heins Paquin.
Exhibit 17:
Letter Dated June 2, 1992, James E. Schatz, Opperman Heins
Paquin to Alan D. Sugarman, HyperLaw, Inc.
Exhibit 18:
Letter Dated June 11, 1992, Alan D. Sugarman, HyperLaw, Inc.
to James E. Schatz, Opperman Heins Paquin.
Exhibit 19:
Letter Dated June 18, 1992, James E. Schatz, Opperman Heins
Paquin to Alan D. Sugarman, HyperLaw, Inc.
Exhibit 20:
Letter Dated May 23, 1993, Alan D. Sugarman, HyperLaw, Inc. to
Dwight D. Opperman, President, West Publishing Co.
Exhibit 21:
Letter Dated June 14, 1993, Dwight D. Opperman, President,
West Publishing Co. to Alan D. Sugarman, HyperLaw, Inc.
Exhibit 22:
Letter Dated June 21, 1993, Alan D. Sugarman, HyperLaw, Inc.
to Dwight D. Opperman, President, West Publishing Co.
Exhibit 23:
Letter dated March 17, 1993, from the Administrative Office of
United States Court to Alan D. Sugarman, HyperLaw, Inc.
Exhibit 24:
Exclusions of Copyright Protection for Certain Legal
Compilations: Hearings on H.R. 4426 Before the Subcomm. on
Intellectual Property and Judicial Administration, House Comm.
on the Judiciary, 102nd Congress, 2nd Session, (7-32) (1992).
Statement of Ralph Oman, Register of Copyrights.