Cyberlaw Encyclopedia

West Loses U.S. Case Copyright Battle

By Alan Gahtan - June 27, 1997

A New York court has ruled that West Publishing Group, the merged entity resulting from Thompson Corporation’s acquisition of West Publishing Co., is not entitled to copyright protection in its publication of U.S. Supreme Court and federal appeals court decisions.

In Hyperlaw, Inc. v. West Publishing Co., United States District Court Judge John S. Martin acknowledged that West expends considerable time and money reviewing each opinion, checking the citations, adding parallel citations, modifying the caption to conform to its style, and adding information concerning the attorneys involved and subsequent history of the case. However, the court held that the editorial changes made by West were primarily the mechanical application of pre-existing rules and lacked a sufficient degree of creativity and originality to warrant copyright protection.

As a result of the decision, Hyperlaw and other competitors will be free to copy the full text of the opinions contained in Supreme Court Reporter and Federal Reporter, the West reporters that were the subject of the action. Hyperlaw has indicated that it intends to scan up to 75% of West’s reported decisions into its electronic database. The decision does not affect head-notes added by West to each decision which both sides agreed were protected under copyright law.

Hyperlaw publishes a CD-ROM containing recent opinions of the United States Supreme Court and the United States courts of appeals. It obtains the text of substantially all "published" opinions and, for some courts, also unpublished opinions, directly from the federal appellate courts. However, after release of an initial opinion from the court, corrections may be made to the opinion by, or with the approval of, the federal appellate courts. In some cases, these corrections are not inserted in the court files. Hyperlaw brought the action against West to obtain access to these corrections as well as other additions or changes made by West.

In reaching its decision, the court had to balance competing policy considerations. On the one hand, it felt that it would be fundamentally unfair to allow Hyperlaw to take advantage of the substantial time and expense invested by West in its reporter by allowing wide-range copying of the opinions published by West. On the other hand, the court stated that the opinions published by West were written by federal judges and it seemed unfair to allow West to preclude others from copying what the court felt was basically a government document.

West was not successful in persuading the court that Hyperlaw had infringed on a compilation copyright because Hyperlaw was copying individual opinions rather than the order of the cases used by West. As well, the court held that the changes made by West were not themselves protected as original works, but rather resulted in the revised opinions constituting a derivative work.

The court then relied upon a recent review by the Second Circuit of the standards to be applied in determining whether a derivative work is entitled to copyright protection, which require at least some substantial variation from the underlying work, and not merely a trivial variation. After reviewing each type of addition or change made by West, the court found that each was trivial and that, taken separately or collectively, they did not result in a distinguishable variation of the opinion written by the court. It concluded that since West had no copyright interest in those elements of the reported opinions which Hyperlaw was copying and intended to copy, Hyperlaw was entitled to judgement that its copying of the opinions from the West reports did not violate West’s copyrights.

The decision in Hyperlaw follows an earlier decision by Judge Martin last November 22, which denied West copyright protection in its internal page number system. Matthew Bender & Co. and Hyperlaw were seeking to cross reference West’s page numbers in their CD-ROM case law collections. West had successfully used its so called star-pagination for decades as a means of protecting its turf in the state and federal case law publishing market.

Judge Martin’s decision was contrary to conclusions reached in previous federal cases in the Eighth Circuit Court of Appeals which have held that the star pagination system is a protected part of West’s compilation copyright. West is appealing both of Judge Martin’s decisions. If upheld by the Second Circuit, Judge Martin’s decision would create a split ripe for consideration by the U.S. Supreme Court.


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