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Matthew Bender v. West Pub. Co. (I)

Matthew Bender v. West Pub. Co. (I)

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Published by: gesmer on Dec 09, 2008
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 United States Court of Appeals, SecondCircuit.MATTHEW BENDER & COMPANY,INC., Plaintiff,Hyperlaw, Inc., Intervenor-Plaintiff-Appellee,v.WEST PUBLISHING CO. and WestPublishing Corporation, Defendants-Appellants.
Docket No. 97-7910.
Argued March 16, 1998.Decided Nov. 3, 1998. Before:CARDAMONEandJACOBS, Circuit Judges, and SWEET,
DistrictJudge.FN*The Honorable Robert W.Sweet, of the United States DistrictCourt for the Southern District of  New York, sitting by designation.Judge SWEET dissents in a separateopinion.JACOBS, Circuit Judge:West Publishing Co. and West PublishingCorp. (collectively West”) publishcompilations of reports of judicial opinions(“case reports”). Each case report consists of the text of the judicial opinion withenhancements that for the purposes of thiscase can be put in two categories: (i)independently composed features, such as asyllabus (which digests and heralds theopinion's general holdings), headnotes(which summarize the specific points of lawrecited in each opinion), and key numbers(which categorize points of law intodifferent legal topics and subtopics), and (ii)additions of certain factual information
to the text of the opinions, including parallelor alternative citations to cases, attorneyinformation, and data on subsequent procedural history. HyperLaw, Inc. publishes compact disc-read only memory(“CD-ROM”) compilations of SupremeCourt and United States Court of Appealsdecisions, and intervened as a plaintiff toseek a judgment declaring that the individualWest case reports that are left after redactionof the first category of alterations (
theindependently composed features), do notcontain copyrightable material. West nowappeals from a judgment of the UnitedStates District Court for the SouthernDistrict of New York (Martin,
), followinga bench trial, granting declaratory judgmentin favor of HyperLaw.
0589, 1997 WL 266972 (S.D.N.Y. May 19, 1997).It is true that neither novelty nor invention isa requisite for copyright protection, butminimal creativity is required. Aside fromits syllabi, headnotes and key numbers-noneof which HyperLaw proposes to copy-Westmakes four different types of changes to judicial opinions that it claimed at trial arecopyrightable: (i) rearrangement oinformation specifying the parties, court,and date of decision; (ii) addition of certaininformation concerning counsel; (iii)annotation to reflect subsequent proceduraldevelopments such as amendments anddenials of rehearing; and (iv) editing of  parallel and alternate citations to cases citedin the opinions in order to redact ephemeraland obscure citations and to add standard permanent citations (including Westreporters). All of West's alterations to judicial opinions involve the addition andarrangement of facts, or the rearrangementof data already included in the opinions, andtherefore any creativity in these elements of West's case reports lies in West's selectionand arrangement of this information. In lightof accepted legal conventions and otheexternal constraining factors, West's choiceson selection and arrangement can reasonably
 be viewed as obvious, typical, and lackingeven minimal creativity. Therefore, wecannot conclude that the district courtclearly erred in finding that those elementsthat HyperLaw seeks to copy from West'scase reports are not copyrightable, andaffirm.
West obtains the text of judicial opinionsdirectly from courts. It alters these texts asdescribed above to create a case report, andthen publishes these case reports (first inadvance sheets, then in bound volumes) indifferent series of “case reporters.”
 These case reporter series cover all state andfederal courts and are collectively known asWest's “National Reporter System.” Twoseries of case reporters are at issue in thiscase: the
Supreme Court Reporter,
inter alia,
all Supreme Courtopinions and memorandum decisions; andthe
 Federal Reporter,
which contains,
inter alia,
all United States Court of Appealsopinions designated for publication, as wellas tables showing the disposition of unpublished cases.FN1.West also functions as the publisher of slip opinions-
theofficial versions of court opinions-for the Fifth and Eleventh Circuits,and West does not claim a copyrightfor any alterations it makes to thoseslip opinions other than its syllabi,headnotes, and key numbers.HyperLaw markets two compilations thatcover approximately the same ground:
Supreme Court on Disc,
an annual CD-ROMdisc containing opinions of the United StatesSupreme Court starting from 1990; and
 Federal Appeals on Disc,
a quarterly CD-ROM disc containing nearly all opinions(published and unpublished) of the UnitedStates Courts of Appeals from January 1993on.
 Currently, HyperLaw obtains the textof the opinions directly from the courts.However, HyperLaw intends to expand itsCD-ROM product to include any recentcases it could not obtain directly from thecourts (and attorney information that isomitted from slip opinions by certaincircuits), as well as pre-1990 Supreme Courtcases and pre-1993 court of appeals casesthat are cited in recent Supreme Court andcourt of appeals cases (so that users can jump to those cases). HyperLaw
intends to achieve this expansion by copyingWest's case reports (after redacting thesyllabi, headnotes and key numbers) fromthe
Supreme Court Reporter 
and the
 Federal  Reporter.
The total number of opinionsHyperLaw intends to copy is unclear; butHyperLaw's President Alan Sugarmantestified that in time it could reach 50 percent of Supreme Court and court of appeals decisions published by West.FN2.The record seems to indicatethat since the commencement of thissuit, HyperLaw has combined thesetwo products into one.Following the commencement of suit byMatthew Bender & Co. in the United StatesDistrict Court for the Southern District of  New York seeking a judgment declaring thatBender's insertion of star pagination toWest's case reporters in its CD-ROM versionof judicial opinions did not infringe West'scopyright, HyperLaw intervened andrequested the same relief. In addition,HyperLaw sought a declaration thatHyperLaw's redacted versions of West's casereports contain no copyrightable materialand thus may be copied withoutinfringement. On the star pagination issue,the district court granted summary judgmentto Bender and HyperLaw, and final judgment was entered pursuant toFed.R.Civ.P. 54(b). (We affirm that ruling ina separate opinion issued today).
158 F.3d 693 (2d Cir.1998). But the districtcourt denied summary judgment allowingHyperLaw to copy redacted versions of West's case reports, and conducted a benchtrial on this issue.The principal trial witness was DonnaBergsgaard, the manager of West'smanuscript department. She specified four kinds of alterations made by West to theopinions that it publishes in the
SupremeCourt Reporter 
 Federal Reporter 
andthat HyperLaw intends to copy: (i) thearrangement of prefatory information, suchas parties, court, and date of decision; (ii)the selection and arrangement of theattorney information; (iii) the arrangementof information relating to subsequent procedural developments; and (iv) theselection of parallel and alternative citations.Following the bench trial, the district courtruled that West's revisions to judicialopinions were merely trivial variations fromthe public domain works, and that West'scase reports were therefore notcopyrightable as derivative works.
*4. In reaching this conclusion, the districtcourt reviewed each type of alteration andfound that “West does not have a protectibleinterest in any of the portions of the opinionsthat HyperLaw copies or intends to copy” because West's alterations lack even minimalcreativity.
As a threshold matter, West argues that the judgment should be vacated and the actiondismissed as moot because HyperLaw failedto demonstrate through admissible evidencea sufficiently real intent to copy West's casereports in quantities beyond what Westconceded (immediately prior to trial) would be permissible under the fair use doctrine,
one to two percent of its publishedreports of Supreme Court and court of appeals cases.Early in the litigation, the district court helda justiciability hearing and concluded thatHyperLaw had the ability and intent to copycertain elements of West's case reports andthat if HyperLaw did so, it faced areasonable apprehension of suit. But adispute remained as to the scope oHyperLaw's intended copying. Prior to trial,West argued that HyperLaw intended nocopying of West's case reports other than thefew recent court decisions that HyperLawhad not obtained from the courts, and West preemptively conceded that such copyingwas permitted under the fair use doctrine.HyperLaw contested West's characterizationof the scope of its intended copying, and pointed to an affidavit (submitted earlier inthe litigation) in which Alan Sugarman,HyperLaw's president, expressedHyperLaw's intent to copy opinions fromearlier years cited in opinions included ontheir CD-ROM discs.Faced with West's last-minute concession,the district court reserved decision on West'smotion to dismiss for mootness and proceeded with the bench trial, at whichHyperLaw would have the opportunity tooffer testimony on the percentage of Westcase reports it
intended to copy. After the close of evidence, West moved todismiss for mootness on the ground thatHyperLaw neglected to adduce suchevidence. The district court, however, permitted HyperLaw to remedy its omission by offering Sugarman's affidavit on thatsubject for the truth of the matters statedtherein, subject to West's opportunity tocross-examine Sugarman. During this cross-examination, Sugarman testified thatHyperLaw intended to copy most olde

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