ARCHIVED: Brief for Amici Curiae of the AALL

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97-7910

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

cover sheet


TABLE OF CONTENTS

TABLE OF AUTHORITIES . . . . . . . . . . . . . . . . . . . . . . . i

INTEREST OF AMICI CURIAE . . . . . . . . . . . . . . . . . . . . . 1

SCOPE OF THIS BRIEF . . . . . . . . . . . . . . . . . . . . . . . .5

SUMMARY OF ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . .7

ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9

  1. Shorn of Embellishment, West's Editorial Revisions To
    Judicial Opinions Are Trivial, Obvious Facts Unworthy Of
    Copyright Protection . . . . . . . . . . . . . . . . . . . .10

     

  2. West's Editorial Revisions Are Trivial And Cannot Merit
    Protection As Derivative Works . . . . . . . . . . . . . . .12

     

    1. The Batlin Standard Of Originality Requires A
      "Substantial Variation" From The Underlying Work . . .12

       

    2. West's Editorial Revisions Should Be Tested Against
      The Definition Of "Derivative Works" . . . . . . . . .13

       

    3. Only Some Editorial Revisions Constitute
      Copyrightable Expression . . . . . . . . . . . . . . .13

       

    4. West's Editorial Revisions Do Not Result In
      "Substantial Variations" From The Courts' Original
      Opinions . . . . . . . . . . . . . . . . . . . . . . .15

       

  3. 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

     

    1. The Supreme Court's Decision In Feist Requires
      Creativity, Not Just Selection, Coordination, And
      Of Arrangement Preexisting Materials . . . . . . . . .18

       

    2. West's "Compilations" Are Not Sufficiently Creative
      To Merit Copyright Protection Under Feist And This
      Court's Precedent . . . . . . . . . . . . . . . . . . 20

       

  4. 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

     

    1. West's Alleged Copyrights Are Not Valid For Case
      Reports Published Between January 1, 1978 And
      February 28, 1989 . . . . . . . . . . . . . . . . . . 27

       

    2. West's Alleged Copyrights Are Invalid Or
      Unenforceable For Case Reports Published Prior To
      January 1, 1978 . . . . . . . . . . . . . . . . . . . 29

       

  5. Public Policy and the Fundamental Principles Of Copyright
    Law Favor Affirmance Of The Decision Below 31

     

    1. Public Policy Favors Liberal Access To Federal Case
      Law And Other United States Government Works . . . . .32

       

    2. West's Legitimate Commercial Interests Are Not Harmed
      By The Decision below . . . . . . . . . . . . . . . . 34

       

    3. Private Commercial Interest Must Yield To Public
      Welfare . . . . . . . . . . . . . . . . . . . . . . . 35

       

CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . 36

 

PAGE i-ii


 

 

 

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., . . . . . . . . . .passim
499 U.S. 340 (1991)

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

 

PAGE iii


 

 

 

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

 

PAGE iv


 

 

 

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

 

PAGE v


 

 

 

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

2 Melville D. Nimmer & David Nimmer, Nimmer on Copyright
� 7.02[C]. . . . . . . . . . . . . . . . . . . . . . . . . . . .27-28
� 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 . . . . . . . . . . . 35
A24 (Nov. 8, 1997)

Gary Ruskin, America Off-Line: Gingrich's Unfulfilled
Internet Promise
, The Washington Post C2 (Nov. 16, 1997). . . . . .35

 

PAGE vi


 

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,

PAGE 1


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

PAGE 2


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

PAGE 3


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.

PAGE 4


 

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,

PAGE 5


 

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.

 

PAGE 6


 

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

PAGE 7


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

PAGE 8


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"

PAGE 9


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.

 

  1. 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:

    PAGE 10


    (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.

    PAGE 11


    (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.

  2. West's Editorial Revisions Are Trivial And Cannot Merit Protection As Derivative Works

     

    1. 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.

      PAGE 12


      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).

    2. 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.

    3. 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

      PAGE 13


      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).

      PAGE 14


    4. 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:

      PAGE 15


       

      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

      PAGE 16


      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

      PAGE 17


      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.

       

       

       

       

       

       

     

     

 

  • 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.

     

    1. 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)

      PAGE 18


      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

      PAGE 19


       

      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

       

    2. 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

      PAGE 20


      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

      PAGE 21


      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

      PAGE 22


      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

      PAGE 23


      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

      PAGE 24


      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

      PAGE 25


      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," "rehearning denied" and "Kyler Knobbe, Cimarron, Kan. for petitioner" are merely facts, no different from the names and

      PAGE 26


      addresses in Feist, West cannot escape the ineluctable conclusion that it fails to meet the statutory test for originality.

       

  • 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

     

    1. 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

      PAGE 27


       

      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

      PAGE 28


       

    2. 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

      PAGE 29


      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

      PAGE 30


      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).

       

  • 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.

    PAGE 31


    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.

     

    1. 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

      PAGE 32


      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

      PAGE 33


      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.

       

    2. 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

      PAGE 34


      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

       

    3. 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

      PAGE 35


      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.

       

      PAGE 36


      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
      80801.W11

       

      PAGE 37


      Footnotes:

      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).

       

       

       

       

       

       

       

       

       

       

       

       

       

       

       

       

       

       

       

       

       

       

       

       

       

       

      CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . 36 CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . 36
    1. CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . 36