United States
Court Of Appeals
For The Second Circuit
Hyperlaw, Inc.
Plaintiff-Appellee,
v.
West Publishing Company
Defendant-Appellant.
On Appeal From The United States District Court
For The Southern District Of New York
BRIEF FOR AMICI CURIAE
AMERICAN ASSOCIATION OF LAW LIBRARIES
AMERICAN LIBRARY ASSOCIATION
ASSOCIATION OF RESEARCH LIBRARIES
MEDICAL LIBRARY ASSOCIATION
SOCIETY OF AMERICAN ARCHIVISTS
SPECIAL LIBRARIES ASSOCIATION
Arnold P. Lutzker
Carl H. Settlemyer, III
FISH & RICHARDSON, P.C.
601 13th Street, N.W.
Washington, DC 20005
(202) 783-5070
TABLE OF CONTENTS
page
TABLE OF AUTHORITIES
i
INTEREST OF AMICI CURIAE
1
SCOPE OF THIS BRIEF
5
SUMMARY OF ARGUMENT
7
ARGUMENT
9
I. Shorn of Embellishment, West's Editorial Revisions
To Judicial Opinions Are Trivial, Obvious Facts
Unworthy Of Copyright Protection
10
II. West's Editorial Revisions Are Trivial And
Cannot Merit Protection As Derivative Works
12
A. The Batlin Standard Of Originality
Requires A "Substantial Variation" From The
Underlying Work
12
B. West's Editorial Revisions
Should Be Tested Against The Definition Of "Derivative Works"
13
C. Only Some Editorial Revisions
Constitute Copyrightable Expression
13
D. West's Editorial Revisions
Do Not Result In "Substantial Variations" From The Courts'
Original Opinions
15
III. As West's Editorial Revisions Are Trivial
And Display No Creativity In Selection, Coordination, Or
Arrangement Of Data, They Do Not Merit Protection
As Compilations
18
A. The Supreme Court's Decision
In Feist Requires Creativity, Not Just Selection,
Coordination, And Arrangement
Of Preexisting Materials
18
B. West's "Compilations" Are
Not Sufficiently Creative To Merit Copyright Protection Under
Feist And This Court's Precedent
20
IV. West's Alleged Copyrights Are Invalid Or Unenforceable
For Lack Of Adequate Notice To The
Public As To The Portions Of Its Republications
Of United States Government Works On Which It
Claims Copyright
27
A. West's Alleged Copyrights
Are Not Valid For Case Reports Published Between January 1,
1978 And February 28, 1989
7
B. West's Alleged Copyrights
Are Invalid Or Unenforceable For Case Reports Published Prior
To January 1, 1978
29
V. Public Policy and the Fundamental Principles
Of Copyright Law Favor Affirmance Of The Decision
Below
31
A. Public Policy Favors Liberal
Access To Federal Case Law And Other United States
Government Works
32
B. West's Legitimate Commercial
Interests Are Not Harmed By The Decision below
34
C. Private Commercial Interest
Must Yield To Public Welfare
35
CONCLUSION
36
TABLE OF AUTHORITIES
Cases
Banks v. Manchester, 128 U.S. 244 (1888)
34
Bellsouth Advertising & Publishing Corp. v.
Donnelley Information Publishing, Inc., 999 F.2d 1436
(11th Cir. 1993)(en banc), cert. denied, 510 U.S.
1101 (1994)
23
Bently v. Tibbals, 223 F. 247 (2d Cir. 1915)
29
Bleistein v. Donaldson Lithographing Co., 188 U.S.
239 (1903)
10
Building Officials & Code Admin. v. Code Technology,
Inc., 628 F.2d 730 (1st Cir. 1980)
34
Burgo v. General Dynamics Corp., 122 F.3d 140 (2d
Cir. 1997), reh'g denied, 1997 WL 713947
5
CCC Information Services, Inc. v. Maclean Hunter
Market Reports, Inc., 44 F.3d 61 (2d Cir. 1994),
cert. denied, 116 S. Ct. 72 (1995)
21, 22, 23
Childress v. Taylor, 945 F.2d 500 (2d Cir. 1991)
14
Computer Associates Int'l, Inc. v. Altai, Inc.,
982 F.2d 693 (2d Cir. 1992)
20, 35, 36
Corsearch, Inc. v. Thompson & Thompson, 792
F. Supp. 305 (S.D.N.Y. 1992)
26
Feist Publications v. Rural Tel. Serv. Co., 499
U.S. 340 (1991)
passim
Financial Information, Inc. v. Moody's Investors
Svc., Inc., 808 F.2d 204 (2d Cir. 1986), cert.
denied,, 484 U.S. 820 (1987)
6, 23-24
Gracen v. Bradford Exchange, 698 F.2d 300 (7th
Cir. 1983)
13
Grove Press v. Collectors Publication, Inc., 264
F. Supp. 603 (C.D. Cal. 1967)
14
Grove Press, Inc. v. Greenleaf Publishing Co.,
247 F. Supp. 518 (E.D.N.Y.)
30
Hasboro Bradley, Inc. v. Sparkle Toys, Inc., 780
F.2d 189 (2d Cir. 1985)
27
Hearn v. Meyer, 664 F. Supp. 832 (S.D.N.Y. 1987)
16
Howell v. Miller, 91 F. 129 (6th Cir. 1898)
16
Key Publications, Inc. v. Chinatown Today Publishing
Enters., Inc. 945 F.2d 509 (2d Cir. 1991)
22
Kregos v. Associated Press, 731 F. Supp. 113 (S.D.N.Y.
1990), rev'd, 937 F.2d 700 (2d Cir. 1991)
22
Kregos v. Associated Press, 937 F.2d 700 (2d Cir.
1991)
22
Kregos v. Associated Press, 795 F. Supp. 1325 (S.D.N.Y.
1992), aff'd, 3 F.3d 656
22
Kregos v. Associated Press, 3 F.3d 656 (2d Cir.
1993), cert. denied, 510 U.S. 1112 (1994)
22
L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486
(2d Cir.) (en banc), cert. denied, 429 U.S. 857 (1976)
passim
Lipton v. Nature Company, 71 F.3d 464 (2d Cir.
1995)
21
Matthew Bender & Co., Inc. v. Kluwer Law Book
Publishers, Inc., 672 F. Supp. 107 (S.D.N.Y.
1987)
25
Mid-America Title Co. v. Kirk, 59 F.3d 719 (7th
Cir.), cert. denied, 116 S. Ct. 520 (1995)
20
Nash v. Lathrop, 6 N.E. 559 (Mass. 1886)
34
Sanga Music, Inc. v. EMI Blackwood Music, Inc.,
55 F.3d 756 (2d Cir. 1995)
30-31
Signo Trading Int'l, Ltd. v. Gordon, 535 F. Supp.
362 (N.D. Cal. 1981)
17
Skinder-Strauss Assoc. v. Massachusetts Continuing
Legal Educ., Inc., 914 F. Supp. 665 (D.
Mass. 1995)
25
State of Georgia v. Harrison Co., 548 F. Supp.
110 (N.D. Ga. 1982), vacated in light of settlement,
559 F. Supp. 37 (N.D. Ga. 1983)
26
Victor Lalli Ent., Inc. v. Big Red Apple, Inc.,
936 F.2d 671 (2d Cir. 1991)
6, 24
Warren Publishing, Inc. v. Microdos Data Corp.,
115 F.3d 1509 (11th Cir. 1997) (en banc), cert.
denied, 1997 WL 561953 (U.S. Nov. 3, 1997)
23
West Pub. Co. v. Lawyers' Co-operative Pub. Co.,
79 F. 756 (2d Cir. 1897)
15, 16
Wheaton v. Peters, 33 U.S. 591 (1834)
30, 32
Woods v. Bourne Co., 60 F.3d 978 (2d Cir. 1995)
passim
Statutes, Regulations, and Legislative History
17 U.S.C. § 8
33
17 U.S.C. § 101
13, 18, 19
17 U.S.C. § 103
18
17 U.S.C. § 105
33
17 U.S.C. § 304(b)
31
17 U.S.C. § 403
27, 33
Pub. L. 94-553, 90 Stat. 2541, § 403
27
37 C.F.R. § 202.1(a)
10
H.R. Rpt. No. 94-1476, 94th Cong., 2d Sess. 145
(1976)
28, 33
H.R. Rep. No. 100-609, 100th Cong., 2d Sess. 46
(1988)
28
Miscellaneous
Francine Biscardi, The Historical Development of
the Law Concerning Judicial Report Publication, 85
Law Libr. J. 531 (1993)
1, 32
L. Ray Patterson & Craig Joyce, Monopolizing
the Law: The Scope of Copyright Protection for Law
Reports and Statutory Compilations, 36 UCLA L.
Rev. 719 (1989)
32, 33
Andrea Simon, A Constitutional Analysis of Copyrighting
Government-Commissioned Work, 84
Colum. L. Rev. 425 (1984)
34
John B. West, Multiplicity of Reports, 2 Law Libr.
J. 4, (1909)
1
Thomas A. Woxland, "Forever Associated With The
Practice of Law": The Early Years of the West
Publishing Company, 5 Legal Reference Svc. Q. 115
(1985)
1
Melville D. Nimmer & David Nimmer, Nimmer on
Copyright § 7.02[C]
27-28
Melville D. Nimmer & David Nimmer, Nimmer on
Copyright § 7.14
27
Register's Report on the General Revision of the
U.S. Copyright Law (1961)
35
U.S. Copyright Office Report on Legal Protection
for Databases (August 1997)
1, 35
Furnishing the Internet, The Washington Post A24
(Nov. 8, 1997)
35
Gary Ruskin, America Off-Line: Gingrich's Unfulfilled
Internet Promise, The Washington Post C2
(Nov. 16, 1997)
35
INTEREST OF AMICI CURIAE
This case raises important issues concerning public access
to public domain works of the United States
Government. Although the case specifically deals with
access to federal court case law that is binding on
United States citizens, the lower court's ruling also
provides important precedent for no fee public access to
other information published by the United States Government.
Such information includes census data, Labor
Department statistics and information (e.g., the Consumer
Price Index, wage information, unemployment
figures), Congressional information (e.g., text and status
of legislation), trade statistics, regulatory
information, and medical data. Amici are library and
archive organizations (the "Libraries") active in
defending the public's fundamental right of access.
The Libraries respect West Publishing and its many contributions
to legal scholarship over the past century.
1 However, this case typifies a growing trend of publishers
laying claim to government information by making
trivial alterations, which do not create copyrightable
matter and which are neither annotated nor highlighted,
and using those minuscule changes to assert statutory
copyright protection. If West's position were
sustained, it would "extend copyrightability to minuscule
variations" to preexisting texts and "would simply
put a weapon for harassment in the hands of mischievous
copiers intent on appropriating and monopolizing
public domain work." L. Batlin & Son, Inc. v. Snyder,
536 F.2d 486, 492 (2d Cir.)(en banc), cert. denied, 429
U.S. 857 (1976).
The Libraries join in this brief and urge that the May
17, 1997 judgment of the district court be affirmed.
Contrary to West's assertion (West Br. at 4), to afford
copyright protection to West's editorial revisions to
judicial opinion's would impede public access to government
information and because this case does raise
special policy concerns that extend far beyond its own
confines. Moreover, the Libraries believe that
adoption of West's position in this case would not only
chill West's commercial competitors, but also would
compromise the ability of noncommercial entities, like
libraries, to place federal court decisions or portions
thereof online without infringing West's alleged copyrights.
Further, West's claims would set a dangerous
precedent, permitting a republisher of United States
Government information to embellish it with trivial
variations and a few snippets of obvious, commonplace
facts -- without giving the public any notice or
indications of where those revisions have been made --
and obtain a "stealth" copyright over the entire work.
This outcome would stifle no fee access to public domain
works and wrongfully discourage their use. It would
be contrary to the public interest and an anathema to
the purposes of copyright law.
The Amici are the following organizations:
The American Association of Law Libraries ("AALL") is
a nonprofit association founded in 1906 for
educational and scientific purposes. Its membership of
more than 4,800 institutions and individuals includes
1700 law libraries at both for-profit, governmental,
and nonprofit organizations. Among other things, the
AALL provides leadership in the field of legal information.
The American Library Association ("ALA") is a nonprofit
educational organization of 58,000 librarians, library
educators, information specialists, library trustees,
and friends of libraries representing public, school,
academic, state, and specialized libraries. It is dedicated
to the improvement of library and information
services and the public's right to a free and open information
society.
The Association of Research Libraries ("ARL") founded
in 1932, is a nonprofit association of 121 of the
largest and most comprehensive research libraries in
the United States and Canada. ARL's members include
university libraries, research-oriented public libraries,
and certain government libraries. The mission of ARL
is to identify and influence forces affecting the future
of research libraries in the processing of scholarly
communication.
The Medical Library Association ("MLA") is a professional
organization of more than 5,000 individuals and
institutions in the health sciences information field.
MLA members develop programs for health sciences
information professionals and health information delivery
systems, foster educational and research programs
for health sciences information professionals, and encourage
an enhanced public awareness of health care
issues.
The Society of American Archivists ("SAA") cooperates
with other professional organizations, develops
training standards, and advances archival administration.
The SAA exerts leadership on significant archival
issues while promoting high quality archival education
programs, increasing public awareness of the value of
archives, and advancing the identification, preservation
and use of electronic records.
The Special Libraries Association ("SLA") is an international
professional association serving more than
14,000 members of the information profession, including
special librarians, information managers, brokers,
and consultants. The Association has fifty-six regional/state
chapters in the U.S., Canada, Europe, and the
Arabian Gulf States and twenty-eight divisions representing
subject interests or specializations.
SCOPE OF THIS BRIEF
In this brief, the Libraries will address the legal issues
raised in the briefs of West and Reed Elsevier relating
to the copyrightability of West's editorial revisions.
In addition, the Libraries will discuss whether West's
allegedly copyrightable revisions have been injected
into the public domain due to inadequate copyright
notices and the manner of West's publication of judicial
opinions. This issue was raised below and appears to
be a proper ground for affirmance of the District Court's
judgment. Burgo v. General Dynamics Corp., 122
F.3d 140, 145 (generally, without cross-appeal, an appellee
may urge in support of a decree any matter
appearing in the record even if the relief sought is
based on grounds ignored by the lower court), reh'g
denied, 1997 WL 713947 (2d Cir. 1997). The Libraries
will not attempt to address HyperLaw's fair use claim,
even though portions of this brief may be relevant to
that issue.
Finally, in its opening brief, West states that the District
Court's decision is subject to de novo review by this
Court. We believe that conclusion is wrong. The District
Court's factual and legal determination regarding
copyrightability of West's editorial revisions (considered
either under the "derivative work" or the
"compilation" rubric) should be overturned only if clearly
erroneous:
To determine whether a work is sufficiently
original to be a derivative work, the judge in a bench trial
must make findings of fact based upon
a comparison of two works. The judge must then apply the
legal standard of originality to the
facts to determine whether the standard has been met. Although
this seems at first blush to be a
two step process, with review of the factual findings governed by a
clearly erroneous standard and the
legal conclusions subject to de novo review, most courts,
including this one, apparently view
the process as purely a factual inquiry, reviewable for clear error
alone.
Woods v. Bourne Co., 60 F.3d 978, 991 (2d Cir. 1995)(derivative
work case). Accord Victor Lalli Ent., Inc. v.
Big Red Apple, Inc., 936 F.2d 671, 673 (2d Cir. 1991)
(compilation case); Financial Information, Inc. v.
Moody's Investors Svc., Inc., 808 F.2d 204, 207-08 (2d
Cir. 1986) (compilation case), cert. denied, 484 U.S.
820 (1987). Nevertheless, the case for affirmance is
so compelling, the Libraries believe that even if the facts
are reviewed de novo, Judge Martin's decision should
be affirmed.
SUMMARY OF ARGUMENT
This case involves West's claim that commonplace editorial
revisions to public domain judicial opinions are
copyrightable as derivative works or compilations. As
the District Court found, this claim must be denied.
The decision should be affirmed on appeal for three key
reasons.
First, West is trying to obtain a copyright for minuscule
changes in government information, namely public
domain judicial opinions. By any dispassionate analysis,
West's editorial revisions are trivial and insufficient
to support a claim of originality as a derivative work
or a compilation. West's edits are not substantial
variations from the underlying judicial opinions; rather,
they simply represent predictable and uncreative
changes by a competent republisher. The edits do not
involve a sufficiently original selection, coordination or
arrangement of data to merit copyright protection under
the Supreme Court's decision in Feist. The
categories of data that West compiles are mundane and
ones traditionally compiled by legal publishers. They
lend themselves to only a few narrowly circumscribed
alternative formulations. Despite West's attempt to
elaborate on their formulation, the editorial revisions
do not involve evaluative judgment of the type that has
previously been found protectible by this Court.
Second, notice requirements in the Copyright Act of 1976
make it clear that at a minimum, West's claim to
copyright should be held invalid for all works published
prior to March 1, 1989. Section 403 of the Copyright
Act, which protects the public's interest in access to
government information, requires any copyright
claimant seeking dominion over a work originated by the
United States Government to identify the portions of
the work in which it claims copyright. For works published
between January 1, 1978 and February 28, 1989,
failure to comply with this provision, unless cured,
forfeited all copyright rights to such works. West has failed
to provide notice of copyright as required by Section
403. Moreover, for works published prior to January 1,
1978, the manner of West's republication of judicial
opinions never suggested to readers that any portion of
the text of the rulings (as distinct from the syllabi,
headnotes or key numbers) was in any way protected by
copyright. Indeed, the essence of West's republication
was to satisfy the public that the text of the opinions
were the authentic works of the federal government. Even
assuming (which we do not) that West's
contributions were not trivial, case law teaches that
West's failure to identify clearly its own contributions
effectively constituted an abandonment of any claim to
copyright in the editorial revisions.
Third, reversing the District Court would seriously undermine
fundamental principles of copyright law and
public policy. Accepting West's claims would establish
the precedent that publishers may obtain a "stealth"
copyright in public domain information, such as judicial
opinions and statistics of the United States
Government. By merely adding trivial editorial changes
to government works and not advising the reader
what those changes are, or by selecting, coordinating
or arranging common facts in an unoriginal or
uncreative manner, West claims publishers are entitled
to the full benefits of a copyright proprietor, including
the right to enforce the copyright against users of their
"revised" works. If adopted, this approach would
severely limit the public's right of access to a vast
amount of public domain information, contrary to Section
105 of the Copyright Act and longstanding copyright policy
supporting the public's right of unfettered access
to the works of the federal government. It should be
stressed that there is no overriding private interest
which would justify granting copyright protection to
minuscule changes and garden-variety arrangements of
information with the effect of limiting public access
to public domain opinions of federal judges. In light of the
public domain works at issue in this case, the policies
of public access to the law reflected in Sections 105
and 403 of the Copyright Act, and the policy judgment
of the Supreme Court and this Court, the District
Court's ruling below should be affirmed.
ARGUMENT
West's claim to copyright in its trivial, mechanical,
and silent revisions to federal court opinions stretches
copyright law to its limits and then breaks them. Not
only is West's position unsound legally, it has substantial
policy ramifications for public access to United States
Government works. In advancing its copyright claim,
West has relied upon glorified accounts of its editorial
process which only manage to prove that its
refurbished "sweat of the brow" arguments are manifestly
more creative than the editing process West
describes. In this respect, this case is unique among
copyright cases in that it presents no danger that
"persons trained only to the law" will "constitute themselves
judges of the worth" of works outside their
training and expertise. Bleistein v. Donaldson Lithographing
Co., 188 U.S. 239, 250 (1903). What is required
here is that persons trained to the law evaluate the
copyrightability of editorial revisions to their own legal
works. For the reasons set forth below, the Libraries
believe that the District Court's opinion was correct and
should be affirmed.
I. Shorn Of Embellishment, West's Editorial Revisions
To Judicial Opinions Are Trivial, Obvious Facts
Unworthy Of Copyright Protection
West enumerates with fanfare and discusses in detail several
types of editorial revisions it makes to the
public domain judicial opinions it republishes in its
case reporters. West's effort to embellish its relevant but
nonetheless trivial editorial variations is strained
and logically uncompelling.
Taking a closer look at what West does to court opinions,
West basically makes four categories of editorial
changes which it claims merit copyright consideration.
2 Shorn of the numerous adjectives and adverbs that
West uses to describe them, these are:
(1) Citations: West will update, revise,
and expand the citations in opinions and add new citations.
Variations of this act include adding
parallel citations to cases and statutes, sometimes substituting
citations to other sources, and sometimes
adding citations to named cases. It will also sometimes
change the form of a citation to make
it consistent with other instances of the citation (e.g., change
"M'Cullough" to "McCullough") and
correct any citation errors it spots. West Br. at 6-12; Matthew
Bender & Co., Inc. v. West Publishing
Co., 42 U.S.P.Q.2d 1930, 1934 (S.D.N.Y. 1997) (Judge Martin's
decision below).
(2) Subsequent History: West may add
"file lines" reflecting subsequent history in a case (e.g.,
adding "rehearing denied" or "as amended
on denial of rehearing and rehearing en banc"), or make
amendments or errata indicated in
a subsequent court order and/or publish the subsequent order
with the original. West will also
sometimes make decisions as to the timing of and whether to
republish a revised opinion entirely
if the original opinion has been changed sufficiently. West Br. at
12-15; 42 U.S.P.Q.2d at 1933-34.
(3) Attorney Information: West will
add information provided by the Supreme Court identifying only
the arguing attorneys and their city
and state of practice. For Circuit Court of Appeals decisions,
West will edit information from the
opinions (or add information from court docket sheets) to reflect
the names and roles of briefing and
arguing attorneys, their law firms, and cities of practice. West
Br. at 15-18; 42 U.S.P.Q.2d at 1934.
(4) Procedural Data: West will sometimes
revise, edit, and reorganize certain procedural data in
opinions to conform with its editorial
guidelines. The changes to procedural data include editing of
case captions (usually shortening
case names and sometimes deleting lower court information),
court lines, date and disposition
lines (to include the dates of argument and decision). West Br. at
19-20; 42 U.S.P.Q.2d at 1933.
No matter how one elaborates on the process of selecting
the data, the selections are commonplace and
these editorial revisions merely add obvious facts. Moreover,
West's edited opinions bear no indication, such
as bracketing or typeface, as to which material is added
or revised by West.
II. West's Editorial Revisions Are Trivial And Cannot Merit Protection As Derivative Works
A. The Batlin Standard Of Originality Requires A "Substantial Variation" From The Underlying Work
The standard of originality for a derivative
work to merit copyright protection is set forth in the
Second Circuit's en banc decision
in L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d Cir. 1976) (en
banc): "there must be at least some
substantial variation [from the underlying work], not merely a
trivial variation." Batlin, 536 F.2d
at 491 (emphasis added); Woods v. Bourne Co., 60 F.3d 978, 990
(2d Cir. 1995). "[T]he requirements
of originality [cannot] be satisfied simply by the demonstration of
'physical skill' or 'special training'...."
Batlin, 536 F.2d at 491; Woods, 60 F.3d at 990.
This "substantial variation" standard
is important when the underlying work is in the public domain,
because "[t]o extend copyrightability
to minuscule variations would simply put a weapon for
harassment in the hands of mischievous
copiers intent on appropriating and monopolizing public
domain work." Batlin 536 F.2d at 492;
Woods, 60 F.3d at 990 (1995). See also Woods, 60 F.3d at 990
("there must be 'sufficiently gross
difference between the underlying and the derivative work to
avoid entangling subsequent artists
depicting the underlying work in copyright problems.'") quoting
Gracen v. Bradford Exchange, 698 F.2d
300, 305 (7th Cir. 1983).
B. West's Editorial Revisions Should Be Tested Against The Definition Of "Derivative Works"
Judge Martin correctly evaluated the
copyrightability of West's editorial revisions to court opinions
under the rubric of potential "derivative
works." Section 101 of the copyright statute instructs that
works "consisting of editorial revisions,
annotations, elaborations, or other modifications" be treated
as "derivative works" if the modifications
"as a whole, represent an original work of authorship...."
17 U.S.C. § 101. Although West
believes its modifications to judicial opinions are also, in part,
miniature "compilations", the underlying
Constitutional standard of originality applies to all
categories of copyrightable works.
C. Only Some Editorial Revisions Constitute Copyrightable Expression
In its capacity as "a derivative work
author" (West Br. at 23), West contends that all of its editorial
revisions are creative and copyrightable.
This Court, however, has properly recognized that some,
but hardly all, editorial revisions
to a preexisting text will be copyrightable. As observed in Childress
v. Taylor, 945 F.2d 500 (2d Cir. 1991)
(a case concerning the required originality and intent for a
"joint work"):
[A] writer
frequently works with an editor who makes numerous useful revisions to
the first
draft, some
of which will consist of additions of copyrightable expression. Both intend
their
contributions
to be merged into inseparable parts of a unitary whole, yet very few editors
and even fewer
writers would expect the editor to be accorded the status of joint author,
enjoying an
undivided half interest in the copyright in the published work. Similarly,
research assistants
may on occasion contribute to an author some protectible expression
or merely
a sufficiently original selection of factual materials as would be entitled
to be
regarded as
a joint author of the work in which the contributed material appears.
Childress, 945 F.2d at 507 (emphasis
added). Indeed, part of the reason "very few editors and even
fewer writers would expect the editor"
to be considered a joint author of an edited text is the
common sense understanding that most
editorial revisions are not copyrightable acts of authorship.
See also Grove Press v. Collectors
Publication, Inc., 264 F. Supp. 603, 605-06 (C.D. Cal. 1967)
(thousands of changes to public domain
work consisting "almost entirely of elimination and addition
of punctuation, changes of spelling
of certain words, elimination and addition of quotation marks and
correction of typographical errors"
held "trivial" and not copyrightable).
D. West's Editorial Revisions Do Not
Result In "Substantial Variations" From The Courts' Original
Opinions
The insufficiency of West's alleged
originality in its editorial matter is illustrated by comparison with
the facts of Woods v. Bourne Co.,
60 F.3d 978 (2d Cir. 1995). In Woods, it was claimed that an
arrangement of a song was sufficiently
original to merit copyright protection as a derivative work. In
applying the "substantial variation"
test of Batlin, the Court affirmed the district court's
determination after a bench trial
that the changes made to the original song were not sufficiently
original. These included things like
changing a bass line consisting of quarter notes on beats one
and three into a "moving" bass line,
addition of conventional harmonies, and other "cocktail pianist
variations" on the original song.
60 F.3d at 991-93.
The editorial matter that West seeks
to protect here is as unoriginal as the new song arrangement in
Woods, because its edits consist of
adding routine facts about case histories, such as a parallel
citations. These notations do not
rise above "trivial changes dictated . . . by applying conventional
rules of harmony to the melody in
the lead sheet," or making "cocktail pianist variations of the piece
that are standard fare in the music
trade by any competent musician." Id. at 991-92. This Court's
observation a century ago, in West
Pub. Co. v. Lawyers' Co-operative Pub. Co., 79 F. 756 (2d Cir.
1897), about legal text is a trenchant
commentary about West's claim to ownership of editorial
remarks, such as file lines:
The language
of the law is largely technical. There are very many words, phrases, and
expressions
which naturally suggest themselves to the trained lawyer who speaks or
writes
that language....
[T]he briefer the sentence, or the more familiar the concept, the greater
the likelihood
that independent editors will express themselves in like terms.
79 F. at 765. See also Howell v. Miller,
91 F. 129, 141-42 (6th Cir. 1898) (Harlan, J.) (allegedly copied
annotations to statutory compilation
incorporated into competing compilation "relate principally or
often to previous statutes and judicial
decisions which would be referred to by annotators in
substantially the same way, even if
they resorted exclusively to the original common sources of
information, and did not have before
them at the time the books of others who had been engaged in
the same kind of work.").
Similarly, West's editorial changes
do not surpass the minor modifications to the public domain
sculpture which were at issue in Batlin,
and which involved mere "physical skill" or "special
training". The changes to that public
domain statue were simply changes to a number of "very
minute details" and were "not perceptible
to the casual observer." Batlin, 536 F.2d at 489. See also
Hearn v. Meyer, 664 F. Supp. 832,
839 (S.D.N.Y. 1987) (reproductions of public domain illustrations
not original, even though shades of
color differed and required "great time and effort"). The changes
West makes to judicial opinions, such
as addition parallel citations and attorney names, are
imperceptible even to lawyers trained
in reading judicial opinions. From a copyright perspective,
these edits merely involve a mechanical
process equivalent to converting Fahrenheit temperatures
to Celsius temperatures. Though useful,
it does not merit copyright protection. See Signo Trading
Int'l, Ltd. v. Gordon, 535 F. Supp.
362, 364 (N.D. Cal. 1981) (transliteration of Arabic words, using
standard Roman letters, held not sufficiently
original to be copyrightable).
To further understand why West's edited
judicial opinions fail to qualify for copyright protection as
derivative works, it is reasonable
to compare a court's writing and West's "version," in order to
determine whether the latter can be
deemed to have more than trivial variations. The following are
pertinent lines of inquiry in determining
whether the derivative work deserves new and independent
copyright protection:
1. Does a reader know what editorial
changes West made? The answer is no. There is no way that
even an astute reader can know, for
example, whether a court's slip opinion contained the parallel
citations originally or whether West
made the additions to the original court opinion. All the varieties
of editorial revision noted by West
could have been, and in many instances, were made by courts as
an initial matter.
2. Does West insert facts which create
more than trivial differences between the two texts? Again,
the answer is no. West's editorial
remarks are solely designed to supplement a public domain
judicial opinion with commonly available
factual data, such as attorney names, parallel citations and
information derived from supplemental
court orders. None of the editorial changes constitute
addition of information which evidence
any creative spark. Even though some choice may be made
to resolve what information or how
much of it to include, once this routine, garden-variety
determination of categories is made,
the creation of the additional information can only be viewed as
trivial in comparison to the original
work. See 17 U.S.C. § 101 (derivative work must consist of
editorial revisions which "as a whole"
represent an original work of authorship). Otherwise, West's
editors would be rewriting case law,
a practice no court would countenance.
III. As West's Editorial Revisions Are Trivial And Display
No Creativity In Selection, Coordination, Or
Arrangement Of Data, They Do Not Merit Protection As
Compilations
West asserts that West's edited court opinions should,
in part, be considered as miniature "compilations", in
addition to being, in part, "derivative works." This
position fundamentally makes no sense because the
"compiled" information is not separately published, and
has no independent value outside of the opinion with
which it is published. Equally true, if the edited opinions
do not exhibit sufficient creativity in their selection,
coordination or arrangement of compiled information,
they will not merit special copyright protection for
West under 17 U.S.C. § § 101 and 103.
A. The Supreme Court's Decision In
Feist Requires Creativity, Not Just Selection, Coordination, And
Arrangement Of Preexisting Materials
The Supreme Court held in Feist Publications, Inc. v.
Rural Telephone Svc. Co., Inc., 499 U.S. 340 (1991), that
the Copyright Act identifies "three distinct elements
and requires each to be met for a work to qualify as a
copyrightable compilation." It requires: "(1) the collection
and assembly of pre-existing material, facts, or
data; (2) the selection, coordination, or arrangement
of those materials; and (3) the creation, by virtue of the
particular selection, coordination, or arrangement, of
an 'original' work of authorship." Id. at 357.
The Court specifically states that "[i]t is not enough
for copyright purposes that an author collects and
assembles facts. To satisfy the statutory definition,
the work must get over two additional hurdles. In this
way, the plain language indicates that not every collection
of facts receives copyright protection. Otherwise,
there would be a period after 'data.'" Id. at 357.
Since Feist, every compiler of facts has tried to distinguish
its activities from those of the publisher of
telephone white pages, and West is no exception. The
teaching of the Supreme Court in Feist, is clear:
Not every selection, coordination,
or arrangement will pass muster. This is plain from the statute. It
states that, to merit protection,
the facts must be selected, coordinated, or arranged 'in such a way'
as to render the work as a whole original.
This implies that some 'ways' will trigger copyright, but
that others will not.
Id. at 358, quoting 17 U.S.C. § 101. 3
This learning is particularly relevant to demonstrating
the circularity of Reed Elsevier's arguments relating to
"'Step One' creativity" (which are the lynchpin of its
brief). Reed Elsevier claims that a compiler's decision as
to "what categories of facts or material will be presented
to the reader ('Step One' creativity, or 'category
selection')" involves "creativity at a categorical level...."
Reed Br. at 5. This argument, however, assumes its
own conclusion because not every "Step One" categorization
is "creative." Some category decisions, like
those at issue in this case, are trivial, commonplace,
expected as a matter of course, and are subject to only
a few narrowly circumscribed and institutionalized variations.
4
B. West's "Compilations" Are Not Sufficiently
Creative To Merit Copyright Protection Under Feist
And This Court's Precedent
West goes to great lengths to describe every excruciatingly
tiny segment of its editorial process. Regardless
of how detailed West makes its description of its editorial
process -- and regardless of how useful, thorough,
and meticulous that process may be -- there is no escaping
the fact that West's mundane contributions to the
public domain judicial opinions it publishes are simply
"sweat of the brow" and are not protectible works of
authorship. West is merely seeking backdoor copyright
protection for its "industrious collection," and no one
should be distracted from this by the number of times
West substitutes the word "nuanced" for the word
"trivial" in its elaborate and repetitive description
of its editorial process.
In CCC Information Services, Inc. v. Maclean Hunter Market
Reports, Inc., 44 F.3d 61 (2d Cir. 1994), cert.
denied, 116 S. Ct. 72 (1995) this Court observed that
"[g]iven the nature of compilations, it is almost
inevitable that the original contributions of the compilers
will consist of ideas." Id. at 70 (emphasis in original,
fn. omitted). It went on to make a useful distinction,
in deciding when to apply the merger doctrine, between
two different types of compilations. First, there are
compilations which reflect ideas "that undertake to
advance the understanding of phenomena or the solution
of problems, such as the identification of the
symptoms that are the most useful in identifying the
presence of a particular disease" Id. at 71. These ideas
are "building blocks of understanding". Id. The second
category of ideas contributed by compilers is that of
"soft" ideas "infused with taste and opinion...." Id.
at 72.
This Court will often withhold application of the merger
doctrine in cases involving this second category of
"soft" ideas, where the compilation reflects a subjective
or evaluative judgment. See, e.g., Lipton v. Nature
Company, 71 F.3d 464, 470 (2d Cir. 1995) (compilation
of terms of venery through selection and translation of
numerous variations of hundreds of available terms assembled
from 15th century texts held copyrightable);
CCC Information, 44 F.3d 61 (holding valuation information
for used vehicles sufficiently original to merit
copyright protection where author makes subjective assessments
of value with adjustments for geographic
market, age of car, mileage, etc.); Kregos v. Associated
Press, 937 F.2d 700, 706-07 (2d Cir. 1991) (reversing
district court holding that selection of nine statistical
categories for use on baseball pitching form failed to
demonstrate necessary originality as a matter of law)5;
Key Publications, Inc. v. Chinatown Today Publishing
Enterprises, Inc., 945 F.2d 509, 514 (2d Cir. 1991) (holding
selection, from a more general list, of businesses
of special interest to Chinese-Americans merited copyright
protection).
The Second Circuit has been less inclined to protect compilations
where the selection is less fanciful and
more functional and involves "building blocks of understanding",
as it does here, because to afford such
protection would "impair[] the policy that requires public
access to ideas of a more important and useful
kind." CCC Information, 44 F.3d at 72 (fn. omitted);
71 n.23; 71-72.6 Here, the categories of selected data
include items like listing of basic factual information
about attorneys who participated in arguing and briefing
issues before the courts, and listing basic information
about the subsequent history of a case. There is no
element of "taste or opinion" involved.
This case is much more akin to Financial Information,
Inc. v. Moody's Investors Service, Inc., 808 F.2d 204 (2d
Cir. 1986) (a pre-Feist decision consistent with and
cited with approval in Feist, 499 U.S. at 360), than it is to
CCC Information, Key Publications, and Kregos. In Moody's,
this Court affirmed a district court ruling after a
bench trial that a publisher's financial reporting service
("Daily Bond Cards") was not sufficiently original to
merit copyright protection. The selection of information
was limited to only five basic facts about the bonds
listed on the Daily Bond Cards: the name of the issuer
and a description of the bond, the redemption date, the
identification of the specific bonds being called, and
the redemption price. The process for collecting this
information required the plaintiff's researchers to look
through newspapers and write down this information
from "tombstone" advertisements. The clerks would occasionally
telephone the issuers to clarify or verify
information. 808 F.2d at 206. The Second Circuit affirmed
the district court's determination that the only
selectivity involved was principally one of format, with
no room for selection, choices or judgment, and that
the Daily Bond Cards were not copyrightable. 808 F.2d
at 207.7 In reaching its decision, the district court
rejected testimony by the plaintiff that gave an "inflated"
version of the training process and that was
apparently "an attempt to enlarge and embellish a straight
forward, simple, but time consuming" process. Id.
at 206.
Similarly here, West has offered an inflated account of
what is, at its core, simply a time consuming, "sweat of
the brow" process of obtaining a few basic, common, "garden
variety" facts about a court case and plugging
them into a configuration with, at most, a very narrow
range of possible presentations. The facts in each case
are of the "building block of understanding" variety,
and West's obvious, time-honored formats for collecting
and presenting these facts are not copyrightable. See
also Victor Lalli Enterprises, Inc. v. Big Red Apple,
Inc., 936 F.2d 671, 672-74 (2d Cir. 1991) (affirming
district court finding that charts compiling "winning
number" information gleaned from horse racing statistics
did not merit copyright protection; plaintiff
gathered, verified, and rearranged published factual
materials from commonly ascertainable external
sources; compilations were functional grids that offered
no opportunity for variation, and were formatted in
conventional manner).
The decision of Judge Martin, below, is certainly consistent
with this Court's case law on compilations. It is
also in accord with the decisions of other district courts
denying copyright protection to similar types of
information in the legal publishing field where the purportedly
original "selection" was typical of any attempt
to compile information to produce a work in the same
genre. See, e.g., Skinder-Strauss Assoc. v.
Massachusetts Continuing Legal Educ., Inc., 914 F. Supp.
665, 674-77 (D. Mass. 1995) (elements of plaintiff's
attorney directory held not copyrightable; attorney listing
did not exhibit creativity required by Feist; merger
doctrine applied because there are so few ways of compiling
listings of attorneys; "The 'selection' of other
directory data, including the attorney name, address,
telephone and fax numbers, year of bar admission, and
so forth, are equally unoriginal and determined by forces
external to the compiler."); Matthew Bender & Co.,
Inc. v. Kluwer Law Book Publishers, Inc., 672 F. Supp.
107 (S.D.N.Y. 1987) (law book publisher had no
protectible interest in organization of public domain
data regarding damages in tort actions because
categories chosen were "the only sensible ones" and conveyed
ideas capable of expression in a limited
number of ways); see also State of Georgia v. Harrison
Co., 548 F. Supp. 110, 115-16 (N.D. Ga. 1982) (court
would find no valid copyright in title, chapter and article
headings for statutory compilation; headings had no
value separated from the public domain text they described),
vacated in light of settlement, 559 F. Supp. 37
(N.D. Ga. 1983).
This case is also readily distinguishable from Corsearch,
Inc. v. Thompson & Thompson, 792 F. Supp. 305
(S.D.N.Y. 1992), a case relied upon by Reed-Elsevier
in its amicus brief (at 13-14). In Corsearch, Thomson &
Thomson ("T&T") assembled a new work, a comprehensive
data field of state trademark information, and
organized it into a searchable whole with a complex of
categorized subunits. It also analyzed what
information was corrupt and arranged it in a manner as
to be more useful.
By contrast, in publishing public domain judicial opinions,
West makes limited editorial decisions, which are
essentially dictated by the structure of the public domain
opinion written by the Court, not West's original
thinking. Further, unlike T&T in Corsearch, West
does not endeavor to arrange its editorial facts into a new
work, independent of the original opinion. The data selected
by West and the fields of information in which it
chooses to organize the data, are only incorporated into
the public domain opinions. Since "111 S. Ct. 40,"
"rehearing denied" and "Kyler Knobbe, Cimarron, Kan.
for petitioner" are merely facts, no different from the
names and addresses in Feist, West cannot escape the
ineluctable conclusion that it fails to meet the
statutory test for originality.
IV. West's Alleged Copyrights Are Invalid Or Unenforceable
For Lack of Adequate Notice To The Public As To
The Portions Of Its Republications Of United States Government
Works On Which it Claims Copyright
A. West's Alleged Copyrights Are Not
Valid For Case Reports Published Between January 1, 1978
And February 28, 1989
For works published between January 1, 1978 and February
28, 1989, Section 403 of the Copyright code
required that:
Whenever a work is published in copies
or phonorecords consisting preponderantly of one or more
works of the United States Government,
the notice of copyright provided by sections 401 or 402
shall also include a statement identifying,
either affirmatively or negatively, those portions of the
copies or phonorecords embodying any
work or works protected under this title.
Pub. L. 94-553, 90 Stat. 2541, § 403 (amended, current
version at 17 U.S.C. § 403), reprinted in, 8 Melville B.
Nimmer & David Nimmer, Nimmer on Copyright at App.
4A-46. Failure to provide an adequate copyright
notice on a work published prior to March 1, 1989 forfeited
copyright in the protected portions. 2 Nimmer on
Copyright §§ 7.02[C][1]-[2] and 7.14; see also
Hasboro Bradley, Inc. v. Sparkle Toys Inc., 780 F.2d 189,
193-94 (2d Cir. 1985). The record below appears to support
the conclusion that West did not provide a
copyright notice in compliance with this provision, never
corrected this defect, and therefore waived its
alleged copyrights to its editorial revisions that it
published during the decennial period.
Denial of copyright protection in this
circumstance is consistent with Congressional policy: Section
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 a Government work is published or republished
commercially, it has frequently been
the practice to add some "new matter" in the form of an
introduction, editing, illustrations,
etc. and to include a general copyright notice in the name of the
commercial publisher. This in no way
suggests to the public that the bulk of the work is
uncopyrightable and therefore free
for use.
H.R. Rpt. No. 94-1476, 94th Cong., 2d Sess. 145 (1976),
reprinted in 8 Nimmer on Copyright at App. 4-149.
The courts have tried to mitigate the perceived harshness
of the Copyright Act provisions forfeiting copyright
protection for failure to comply with statutory formalities.
This is particularly true since U.S. adherence to the
Berne Convention. However, there is no basis for such
mitigation here where the circumstances show no
ordinary failure to comply with a statutory formality,
but also present important public policy issues relating
to access to public domain U.S. Government works.8
B. West's Alleged Copyrights Are Invalid
Or Unenforceable For Case Reports Published Prior To
January 1, 1978
As to works published under the 1909 Copyright Act, this
Court's precedent indicates that West's alleged
copyrights in its editorial revisions to judicial opinions
should be held unenforceable as a matter of public
policy. In Bentley v. Tibbals, 223 F. 247 (2d Cir. 1915),
the plaintiff published a copyrighted work, then
republished it in a subsequent, expanded version not
protected by copyright (for failure to comply with
certain formalities applicable at the time). The defendant
copied the larger, uncopyrighted work in its
entirety. The plaintiff alleged infringement of the first,
copyrighted work. The Court denied an injunction
because there was nothing in the larger work to identify
the copyrighted from the uncopyrighted matter. The
Court stated in that case:
If one intends to assert his exclusive
right to publish and sell copyrighted matter, he must so clearly
indicate the matter in which he has
the exclusive right that the public upon inspection can determine
the question of its own rights therein.
He cannot require the public to . . . compare it word by word
with the uncopyrighted work.
Id. at 257. Although the Court in Bentley did not reach
the question of whether the plaintiff forfeited copyright
in the first work entirely, it did refuse to enforce
any copyright against the defendant. Id. at 257. See also
Grove Press, Inc. v. Greenleaf Publishing Co., 247 F.
Supp. 518, 522-23 (E.D.N.Y. 1965).9
The Court's statement in Bentley is consistent with the
Court's contemporary precedent. In Sanga Music, Inc.
v. EMI Blackwood Music, Inc., 55 F.3d 756 (2d Cir. 1995),
the Court affirmed a grant of summary judgment to
a copyright infringement defendant because the allegedly
infringed work (from the 1950s) had been placed in
the public domain by publication without proper notice.
The plaintiff claimed copyright in one verse she
added to a public domain folk song, which was subsequently
published with her permission in 1957, in a
magazine dedicated to publishing folk music. The magazine
text accompanying the song indicated that the
entire work was in the public domain. Id. at 758-59.
The Second Circuit found that "notwithstanding the
copyright notice on the masthead of the magazine, the
overall message informed the public that this was an
old folk song, of unknown authorship, and in the public
domain." Id. at 761. It held that "where the manner of
publication so clearly suggests to the readers that the
material is available for public use, the danger is
rather of unfair deception of a reader who reasonably
assumes the right to use the material, only to be sued
for infringement." Id. (emphasis added). Accordingly,
the 1957 publication placed the new verse in the public
domain. Similarly, West has consistently published its
editorial revisions to public domain judicial opinions in
such a manner as to indicate to readers that the body
of those opinions is an accurate and true rendition
thereof, and in no way to suggest that even some small,
undiscernible elements of that text were contributed
by West. It would therefore be unjust for West to be
permitted to assert a copyright in any such editorial
contributions now.
Finally, West states that to prevail in this action, HyperLaw
must prove that none of its case reports "reaching
back to the 19th century" is protected by copyright.
If anything is clear in this case, it is that West has no
valid claim to copyright in any work created and published
more than seventy-five years ago as any such
copyright would have necessarily expired. 17 U.S.C. §
304(b).
V. Public Policy And The Fundamental Principles Of Copyright Law Favor Affirmance Of The Decision Below
Reversal of the decision below would chill public access
to other United States Government works. It would
open the door to allowing publishers to obtain copyright
control over public domain information, including
statistics of the United States Government by adding
silent, trivial editorial changes throughout those works,
or to select, coordinate or arrange facts in an unoriginal
or uncreative manner and to enforce those rights
against unsuspecting users of their products. Moreover,
the specter of liability for infringing such sketchy
"stealth" copyrights would add needless costs to the
dissemination of United States Government works. To
be certain to avoid an infringement suit, subsequent
publishers of all or portions of such documents would
have to seek out original sources of government works
in all instances, even if a more readily available
commercial source of the document contained no such silent
revisions. Given the Supreme Court's emphatic
rejection in Feist of the premise that "each subsequent
compiler must start from scratch and is precluded
from relying on research undertaken by another," 499
U.S. at 359, this result would be particularly
unwarranted.
A. Public Policy Favors Liberal Access
To Federal Case Law And Other United States Government
Works
This case must be primarily understood in the context
of Section 105 of the 1976 Copyright Act, its
predecessors, and the century and a half of case law
that preceded it. The Supreme Court, of course, held in
Wheaton v. Peters, 33 U.S. 591 (1834) that no copyright
may be claimed in federal court opinions. This
prohibition was maintained in subsequent Supreme Court
decisions10 and was broadened by statute to
provide that "[n]o copyright shall subsist in the original
text of any work which is in the public domain...or in
any publication of the United States Government, or any
reprint, in whole or in part, thereof...." 17 U.S.C. § 8
(repealed and replaced with 17 U.S.C. § 105, reprinted
in 8 Nimmer on Copyright at App. 6-9).
That provision was subsequently revised by Congress, in
adopting the 1976 Copyright Act,11 and is now
Section 105, which reads:
Copyright protection under this title
is not available for any work of the United States Government,
but the United States Government is
not precluded from receiving and holding copyrights
transferred to it by assignment, bequest,
or otherwise.
17 U.S.C. § 105. As discussed in the House Report
on the 1976 Act, "[t]he basic premise of section 105 of the
bill is the same as that of section 8 of the present
law -- that works produced for the U.S. Government by its
officers and employees should not be subject to copyright."
H.R. Rpt. No. 94-1476, reprinted in 8 Nimmer on
Copyright at App. 4-24. Moreover, as discussed in Section
IV, supra, this provision was reinforced by Section
403 of the 1976 Copyright Act, which was intended to
deter publishers from republishing United States
Government works in such a way as to obscure which portions
were in the public domain. See 17 U.S.C. §
403; H.R. Rpt. No. 94-1476, reprinted in 8 Nimmer on
Copyright at App. 4-149.
These express statutory provisions, and the substantial
body of case law following Wheaton v. Peters, make
it clear that the importance of public access to the
law and other government documents cannot be
overemphasized. "The whole work done by the judges constitutes
the authentic exposition and interpretation
of the law, which, binding every citizen, is free for
publication to all, whether it is a declaration of unwritten
law, or an interpretation of a constitution or statute."
Banks v. Manchester, 128 U.S. 244, 253-54 (1888). "The
decisions and opinions of the justices are the authorized
expositions and interpretations of the laws which are
binding upon all the citizens. They declare the unwritten
law, and construe and declare the meaning of the
statutes. Every citizen is presumed to know the law thus
declared, and it needs no argument to show that
justice requires that all should have free access to
the opinions...." Nash v. Lathrop, 6 N.E. 559, 560 (Mass.
1886). See also Building Officials & Code Admin.
v. Code Technology, Inc., 628 F.2d 730, 733-35 (1st Cir.
1980); Andrea Simon, A Constitutional Analysis of Copyrighting
Government-Commissioned Work, 84 Colum.
L. Rev. 425, 428-33 (1984) (discussing policies underlying
prohibition of United States Government
copyright). This right of access is not only essential
for due process. It is also important because the citizens
are rightly considered to be the authors of the law and
other official documents of their government. See
Building Officials, 628 F.2d at 734.
B. West's Legitimate Commercial Interests Are Not Harmed By The Decision Below
Although to a minor extent this case pits West's commercial
interests against the public interest in access to
federal court opinions, it is important to keep in mind
that West's legitimate commercial interests are not
jeopardized by the District Court's ruling. As noted
in the recent report of the Copyright Office on the legal
protection for electronic databases,
a market clearly exists for databases
combining text with facts or other public domain materials.
EMBASE, for example, is an on-line
database from Elsevier Science; its index of titles from
international biomedicine, pharmaceutical
research and related disciplines includes bibliographical
information. American Statistical
Index, from Congressional Information, Inc., provides abstracts as
well as indexing of all federal statistical
publications. The reports of judicial opinions published by
West Publishing Company include synopses
of the cases.
U.S. Copyright Office Report On Legal Protection For Databases, at 20 (Aug. 1997).12
C. Private Commercial Interest Must Yield To Public Welfare
Even if any legitimate commercial interest of West were
harmed by the decision below, that does not end the
inquiry. The Supreme Court and the Second Circuit have
recognized in no uncertain terms that even if a lack
of copyright protection will be a disincentive to commercial
investment, commercial interest in rewarding
industrious persons must yield to the public welfare.
See Computer Associates Int'l, Inc. v. Altai, 982 F.2d
693, 711-12 (2d Cir. 1992); Feist 499 U.S. at 349-50;
see also Register's Report on the General Revision of the
U.S. Copyright Law (1961) (when the author's interests
and those of the public conflict, "the public interest
must prevail"), reprinted in 8 Nimmer On Copyright at
App. 14-17. Moreover, "[w]hile incentive based
arguments in favor of broad copyright protection are
perhaps attractive from a pure policy
perspective...ultimately, they have a corrosive effect
on certain fundamental tenets of copyright doctrine."
Altai, 982 F.2d at 712. Judge Martin clearly struck the
appropriate balance between West's commercial
interests and the public interest and his decision should
be affirmed.
CONCLUSION
The public should have broadest possible access to its
laws and the works of the United States Government,
and copyright law is structured so as to provide this
public access. Judge Martin's decision below is clearly
in accord with this goal and governing precedent. His
decision does not reduce any legitimate incentive for
authors of derivative works or compilations.
Those who make available meaningful information and create
databases and other works will be rewarded
for selecting and coordinating the ever growing avalanche
of information being made available in printed and
electronic form as we enter the 21st Century. There is
clearly a market for authors who will make the type of
judgments necessary to separate the wheat from the chaff
by making useful and creative selections of
materials to include in their compilations. And, there
is incentive to make this universe of information more
useful by digesting it, indexing it, annotating it, and
summarizing it.
However, that is not what West seeks to protect in this
case. West seeks backdoor copyright protection for
its "industrious collection," by claiming copyright in
trivial variations it makes to public domain judicial
opinions, thereby allowing it to control public access
to its publications of public domain works. Closing this
door, as the lower court has done, is both required by
law and is a matter of sound public policy. The decision
below should therefore be affirmed.
Respectfully submitted,
Arnold P. Lutzker
Carl H. Settlemyer, III
FISH & RICHARDSON, P.C.
601 13th Street, N.W.
Washington, DC 20005
(202) 783-5070
November 26, 1997
1. West's digest system, key numbering, headnotes, and
case synopses have been valued by legal
researchers for generations. As noted in a recent report
of the Copyright Office, "[l]awyers have long found
the West Publishing Company's indexing system of cases
by key number to be a valuable research tool." U.S.
Copyright Office Report on Legal Protection for Databases
at 21-22 (August 1997). For a summary of the
history of West Publishing, see Francine Biscardi, The
Historical Development of the Law Concerning Judicial
Report Publication, 85 Law Libr. J. 531, 533-34 (1993);
Thomas A. Woxland, "Forever Associated With The
Practice of Law": The Early Years of the West Publishing
Company, 5 Legal Reference Svc. Q. 115 (1985);
see also John B. West, Multiplicity of Reports, 2 Law
Libr. J. 4, 4-8 (1909) (article by West's founder).
2. One type of change which the Libraries submit exemplifies
the overreach of West's claim is its
capitalization of certain names in case captions. See
West Br. at 20 n. 29; at 45 n.61. This change is so trivial
that it should not even merit serious analysis. See 37
C.F.R. § 202.1(a) ("mere variation of typographical
ornamentation" not copyrightable).
3. Though Feist states that a compiler "may settle upon
a selection or arrangement that others have used,"
499 U.S. at 358, this does not extend copyright protection
to obvious and conventional types of selections
and arrangements substantially identical to those almost
everyone uses. In fact, the Court held that the
alphabetical arrangement of the white pages directory
was "an age-old practice, firmly rooted in tradition
and so commonplace that it has come to be expected as
a matter of course." Id. at 364.
4. The type of selections that can be made in preparing
simple republications of federal court decisions are
constrained to a few obvious and substantially indistinguishable
variations dictated by convention and
industry standards. Under this circumstance, the selections
are unprotectible. See Computer Associates
Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 709-10 (2d
Cir. 1992)(freedom of computer program design choice
circumscribed by extrinsic factors like mechanical specifications,
compatibility requirements of other
programs, computer manufacturer design standards, demands
of industry being served, and widely
accepted programming practices in the industry); Mid-America
Title Co. v. Kirk, 59 F.3d 719, 722 (7th Cir.)
("matter of convention and strict industry standards"),
cert. denied, 116 S. Ct. 520 (1995).
5. West relies heavily on this Court's decision in Kregos
v. Associated Press, 937 F.2d 700 (2d Cir. 1991). It
should be noted that the procedural posture of that decision
was very different from that of this case. In
Kregos, the district court had originally dismissed the
plaintiff's complaint on a motion for summary
judgment, ruling as a matter of law that his pitching
form was not copyrightable. 731 F. Supp. 113 (S.D.N.Y.
1990). On appeal, this Court reversed the district court
because the issue could not be decided adversely to
the plaintiff as a matter of law. It held that remand
was necessary principally to determine whether Kregos'
selection of pitching statistics reflected sufficient
originality to be copyrightable as a compilation. 937 F.2d at
704-05; see also Kregos v. Associated Press, 3 F.3d 656,
659 (2d Cir. 1993), cert. denied, 510 U.S. 1112
(1994). On remand, the defendants did not challenge plaintiff's
copyright. Kregos v. Associated Press, 795 F.
Supp. 1325, 1331 (S.D.N.Y. 1992), aff'd, 3 F.3d 656 (2d
Cir. 1993).
6. See also Bellsouth Advertising & Publishing Corp.
v. Donnelley Information Publishing, Inc., 999 F.2d 1436
(11th Cir. 1993) (en banc) (heading structure for yellow
pages directory represented such obvious labels for
the entries appearing beneath that they lacked required
originality for copyright protection; geographical
limits and closing date for listings were uncopyrightable
acts common to compilations), cert. denied, 510
U.S. 1101 (1994). Although Bellsouth has been criticized,
both within the Eleventh Circuit and by Reed
Elsevier in this case, it is consistent with the decisions
of this circuit, such as Key Publications. See Warren
Publishing, Inc. v. Microdos Data Corp., 115 F.3d 1509,
1525, 1528-29, 1529 n.7 (11th Cir. 1997) (en banc)
(dissenting opinion interprets Bellsouth in manner consistent
with Key Publications and does "not suggest
that Bellsouth be abandoned...."), cert. denied, 1997
WL 561953 (U.S. Nov. 3, 1997).
7. Cf. Reed Elsevier Br. at 7 (suggesting this case can
be resolved in West's favor even if "once [the
compilation's] categories are determined, the expression
is obtained largely by the relatively non-creative
process of finding and adding the facts' called for
by the categories selected.") (footnote omitted).
Notably, Reed Elsevier includes no discussion of how
this Court's decision in Moody's fits within the
theoretical structure Reed Elsevier advances.
8. For works published after the effective date of the
Berne Amendments, copyright is not automatically
forfeited. The Berne Amendments merely limit the remedies
to which a plaintiff is entitled for failure to
comply with the notice requirement. 2 Nimmer on Copyright
§ 7.02[C][3]. However, the legislative history of
the Berne Amendments indicates that the courts may retain
the equitable power not to enforce West's
copyrights. In discussing an earlier version of the revised
Section 403, which (unlike the version that
ultimately passed) had no express penalty for insufficient
notice, the House Report states: "The legislation
prescribes no penalty for failure to comply, leaving
the penalty to the judgment of the courts in infringement
actions." H.R. Rep. No. 100-609, 100th Cong., 2d Sess.
46 (1988), reprinted in 9 Nimmer On Copyright at
App. 32-46. For such works, it would be appropriate for
the courts to act in accordance with case law relating
to works subject to the 1909 Copyright Act, which had
no provision strictly analogous to Section 403 of the
1976 Act.
9. See also Wheaton v. Peters, 33 U.S. 591 (1834), in which the defendant argued that:
A book composed in part of [judicial]
opinions, and in part of other matters, does not change the
nature of the opinions themselves.
An individual who thus mingles what cannot be exclusively
enjoyed, with what can, does, upon
familiar principles, rather forfeit the power over his own peculiar
work, than throw the chain around
that which is of itself as free as air.
33 U.S. at 624.
10. For general summaries and discussions of the case
law relating to publication of judicial opinions, see
Francine Biscardi, The Historical Development of the
Law Concerning Judicial Report Publication, 85 Law
Libr. J. 531 (1993); L. Ray Patterson & Craig Joyce,
Monopolizing the Law: The Scope of Copyright
Protection for Law Reports and Statutory Compilations,
36 UCLA L. Rev. 719, 728-49 (1989).
11. For a general summary and discussion of the legislative
history of Section 105, see Patterson & Joyce,
Monopolizing the Law, 36 UCLA L. Rev. at 751-57.
12. See also Furnishing the Internet, The Washington Post
A24 (Nov. 8, 1997) (discussing need for increased
availability of government documents and value of institutional
imprimatur in providing guideposts to reliable
information on the Internet); Gary Ruskin, America Off-Line:
Gingrich's Unfulfilled Internet Promise, The
Washington Post C2 (Nov. 16, 1997) (discussing continued
unavailability of important government documents
from United States Government on Internet).
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