EXCLUSION OF COPYRIGHT PROTECTION FOR

CERTAIN LEGAL COMPIIATIONS

HEARING
BEFORE THE

SUBCOMMITTEE ON INTELLECTUAL PROPERTY

AND JUDICIAL ADMINISTRATION
OF =
COMMITTEE ON THE
HOUSE OF REPRESENTATIVES
ONE HUNDRED SECOND CONGRESS
SECOND SESSION
ON

H.R. 4426
EXCLUSION OF COPYRIGHT PROTECTION FOR CERTAIN LEGAL
COMPILATIONS
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MAY 14, 1992

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Serial No. 105

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Printed for the use of the Comniittee on the Judiciary

U.S. GOVERNMENT PRINTING OFFICE

65-153 CC WASHINGTON : 1993

For saic by the U.S. Govemment Printing Office

Superintendent of Documents, Mail Siop: SSOP, Washington, DC 20402-9328
ISBN 0-16-040799-0

HLC 00011995
 COMMrITEE ON THE JUDICIARY
JACK BROOKS, Texas, Chairman
DON EDWARDS, California HAMILTON FISH, JR., New York
JOHN CONYERS, JR., Michigan CARLOS J. MOORHEAD, California
ROMANO L. MAZZOLI, Kentucky HENRY J. HYDE, Illinois
WILLIAM J. HUGHES, New Jersey F. JAMES SENSENBRENNER, JP.,
MIKE SYNAR, Oklahoma Wiscons4n
PATRICIA SCHROEDER, Colorado BILL McCOLLUM, Florida
DAN GLICKMAN, Kansas GEORGE W. GEKAS, Pennsylvania
BARNEY FRANK, Massachusetts HOWARD COBLE, North Carolina
CHARLES E. SCHUMER,.New York LAMAR S. SMITH, Texas
EDWARD F. FEIGHAN, Ohio CRAIG T. JAMES, Florida
HOWARD L. BERMAN, California TOM CAMPBELL, California
RICK BOUCHER, Virginia STEVEN SCHIFF, New Meidco
HARLEY 0. STAGGERS, JR., West Virginia JIM RAMSTAD, Minnesota
JOHN BRYANIT, Texas GEORGE ALLEN, Virginia
MEL LEVINE, California
GEORGE SANGMEISTER, Illinois
CRAIG A. WASHINGTON, Texas
PETER HOAGLAND, Nebraska
MICHAEL J. KOPETSKI, Oregon
JACK REED, Rhode Island
JONATHAN R. YARowsKy, General Counsel
ROBEirr H. BRINIC, Deputy General Counsel
ALAN F. COFFEY, JR., Minority Chief Counsel

SuBcommrrrEE ON INTELLECTUAL PROPERTY AND JUDICIAL ADMINISTRATION

WILLIAM J. HUGHES, New Jersey, Chairman
JOHN CONYERS, JR., Michipn CARLOS J. MOORHEAD, California
MIKE SYNAR, Oklahoma HOWARD COBLE, North Carolina
PATRICIA SCHROEDER, Colorado HAMILTON FISH, JR., New York
DAN GLICKMAN, Kansas F. JAMES SENSENBRENNER, JR.,
BARNEY FRANK, Massachusetta Wisconsin
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CHARLES E. SCHLTMER, New York CRAIG T. JAMES, Florida

RICK BOUCHER, Virginia
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TOM CAMPBELL, Califomia

MEL LEVINE, California
GEORGE E. SANGMEISTER, Illinois
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HAYDEN W. GREr-ORY, Counsel

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WILUAM PATRY, Assistant Counsel

EDWARD (YCONNELL, Assistant Counsel
LINDA C. HALL, Editor
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PHYLIJS HENDFRSON, StaffAssistant

VERONICA L. EliCAN, StaffAssistant
THOMAS E. MOONEY, Minority Counsel
JOSEPH V. WOLFE, Minority Counsel

(11)

HLC 00011996
 CONTENTS
HEARING DATE
Page
May 14, 1992 ........................................................................................................ .... 1

TEXT OF BILL
H.R. 4426
OPENING STATEMENT
H hes, Hon. William J., a Representative in Congress from the State of
Wllw Jersey, and chairman, Subcommittee on Intellectual Property and
Judicial Administration .......................................................................................
WITNESSES
Denicola, Robert C., Margaret Larson Professor of InteHectual Property Law,
Uru*versit of Nebraska Law School ................................................................... 58
Downing, Kath7n M., president and chief operati officer, Thomson
Electronic. Pub ishing Co., on behalf of Thomson ATIessional Publishing,
accompanied by Robert D. Hursh, chairman, Lawyers Cooperative
Publishing Co . ...................................................................................................... 78
Gasaway, Laura N., professor of law and director, law library, University
of North Carolina, on behalf of the Association of Amexican Law Libraries .. 194
Joyoe, Craig, professor of law and codirector, Intellectual Pmperty Law
Institute, University of Houston Law Center .................................................... 33
Metalitz, Steven J., vice president and general counsel, Information Industry
Association ............................................................................................................ 211
Oman, Ralph, Register of Copyrights, Library of Congress, accomptinied by
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Dorothy Schrader, General Counsel ................................................................... 5

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Opxrman, Vance K., Esq., 0 perman, I-leins & PaTin, on behalf of West
blishing Co., accompanilsby Donna Bergsgaa manager, Manuscri9t
Department for Reporter & Digests, West lisMni Co., and Robert .
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Berrint, professor of law, University of California, Be eley .......................... 114

Pravel, rnarr R., chair, Section of Patent, Trademark and Copyright Law,
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American Bar Association, accompanied by Mike Cleary ................................. 189

LETTERS, STATEMENTS, ETC., SUBMITTED FOR THE HEARING
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Berring, Robert C., professor of law, University of California, Berkeley: Letter

to Chairman William J. Hughes, June 5, 1992 ................................................. 164
Denicola, Robert C., Margaret Larson Professor of Intellectual Property Law,
Umversit of Nebraska Law School: Prepared statement ................................ 60
Downing, Kathryn M., president and chief operating officer, Thomson
Electronic Publishing Co., on behalf of Thomson Professional Publishing:
Prepared statement .............................................................................................. 81
Gasaway, Laura N., professor of law and director, law hbrary, University
of North Carolina, on behalf of the Association of American Law IAbrazies:
Prepared statement .............................................................................................. 196
Jofce, Craig, professor of law and codirector, Intellectual Property Law
ns itute, University of Houston Law Center. Prepared statement ................ 35
Metalitz, Steven J., vice president and general counsel, Information Industry
Association: Prepared statement ........................................................................ 213

(III)

HLC 00011997
 IV
i
Page
Oman, Ralph, Register of Cogrights, Library of Congress, accompanied by
Dorothy Schrader, General ounsel:
Prepared statement .......................................................................................... 7
Report on copy7litable authorship under West Publishing System .......... 24
0 ia] Es Opperxnan, Heins & Paquin, on behalf of West
Pgbrrh!Fihiiig Co.: Pre ar-eei.,statement ...................................................................
egair, 117
Pravel, Bemarr R., c Section of Patent, Trademark and Copyright Law,
American Bar Association:
Prepared statement .......................................................................................... 190
Roster of the members of the ABA/PTC Committee 308 .............................. 236
APPENDIXES
Appendix l.-Statement of concemed compilation _publishers ............................ 239
Appendix 2.-Attachments to statement of Vance K. Opperman:
1. Publishers of Federal and State case reports ............................................ 241
2. Publishers of Federal and State case statutes ........................................... 250
3. Case report and statutory publications published after West v. Mead .... 255
4. West Publishing Co. v. Mead Data Central, Inc., 616 F. Supp. 1571,
(Dldinn. 1985) .............................................................................................. 259
5. West Publishing Co. v. Mead Data Central, Inc., 799 F. 2d 1219,
(8th Cir. 1986) ............................................................................................... 276
Appendix 3-Letter from Craig Joyce, pr-ofessor of law, University of Houston
Law Center, to Chairman William J. Hughes, Subcomrnittee on Intellectual
Property and Judicial Administration, May 22, 1992 ....................................... 306
Appendix 4-Letter from Barbara A. Munder, senior vice president and
executive assistant to the chairman, McGraw-Hill, Inc., to Chairman
William J. Hughes, May 22, 1992 ....................................................................... 308
Appendix 6-Letter from Eileen D. Cooke, director, American Library Asso-
ciation, Washington office, to Chairman William J. Hughes, May 27, 1992 ... 311
Appendix 6-Letter and statement from Alan D. Sugarinan, president and
CEO, HyperLaw, Inc., to Chairman Wflliam J. Hughes, May 29, 1992 .......... 313
Ap,vendix 7.-Letter from Chairinan William J. Hughes, to Prof. Robert
Liorman, the Law School, University of Pennsylvania, October 27, 1992 ....... 334
ndix 8 -Letter from Prof Robert Gorman, to Chairman William J.
h November 30, 1992 ................................................................................ 336
9-Letter fr-om Chairman William J. Hughes, to ProL Leo Raskin,
ng
lairman, Intellectual Property Committee, Association of American Law
Schools, December 22, 1992 ................................................................................ 337
Ap n!x 10-Letter and statement from Prof. Paul Goldstein, Stanford Law
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= 1, Stanford University, to Chairman William J. Hughes, May 8, 1992 .. 339

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Appendix ll.-Letter from Chairman William J. Hughes, to Prof. Paul

Golctstein, October 27, 1992 ................................................................................ 347
Appendix 12-Letter from Pr-of. Paul Goldstein,,to Chairman Wilham J.
er

Hughes, November 12, 1992 ................................................................................ 349

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HLC 00011998
 EXCLUSION OF COPYRIGHT PROTECTION FOR
CERTAIN LEGAL COAIPIIATIONS

THURSDAY, MAY 14, 1992

HousE OF RLPRESENTATIVES
SUBCOMMIrrTEE ON INTELLECTUAL
AND JUDICIAL ADMINISTRATION
COMMrrrEE ON THE JUDICiARY,
The subcOmmittee met, pursuant to notice,Washington, DC.
in
Raybum House Office Building, Hon. William J. Hughes room 2226
of the subcommittee) presiding.
Present: Representatives William
Carlos J. Moorhead, Howard Coble, F.J.James
Hughes, Bamey Frank,
Sensenbrenner, Jr.,
and Craig T. James.
Also present: Representative Jim Ramstad.
Staff present: Ha7den Gregory, counsel; William Patry, assistant
counsel; Veronica ligan, staff assistant; and Thomas E. Mooney,
minority counsel.
OPENING STATEMENT OF CHAIRMAN HUGHES
Mr. HUGHES. The Subcoinmittee on Intellectual Property and
Judicial Administration will come to order.
Good morning. The Chair has received a request to covei- this
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hearing in whole or in part by television broadcast, radio broadcast,

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still photography, or by other similar methods. In accordance with

committee rule 5(a), permission will be granted unless there is ob-
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jection. Is there objection?

[No response.]
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Mr. HUGHES. Hearing none, permission is granted.

We welcome you today to the subcommittee's hearing
4426, a bill introduced by Mr. Frank to amend section 105onofH.R.
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Copyright Act. H.R. 4426 has two parts. The first the
hibit copyright in names, numbers, or citations by part would pro-
which the text
of State or Federal laws are identified. The second part would pro-
hibit copyright in any volume or page number by which State or
Federal laws, regulations, or judicial opinions are identified.
This subcommittee frequently delves into highly technical areas
such as animal patenting, gene splicing, and artificial intelligence.
Today's hearing, however, concerns a subject that all members of
the Judiciary Committee can feel right at home with, law books.
Computers are not very far away, though, and I look forward to ex-
ploring with the witnesses the way in which computers have
changed the publishing and delivery of judicial opinions and stat-
utes.

HLC 00011999
 2

We have a full slate of very qualified, interesting witnesses for

what promises to be a very, very good hearing.
[The bill, H.R. 4426, follows:]
H
R
H
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102D CONGRESS
2D SESSION H* R* 4426
To amend title 17, United States Code, to exclude copyright protectiori
for certain legal compilations.

IN THE HOUSE OF REPRESENTATrVES

MARCH 11, 1992
Mr. FRANK of Massachusetts intrGduced the foHowing bill; which was referred
to the Comraittee on the Judiciary

A BILL
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To amend title 17, United States Code, to exclude copyright

protection for certain legal compilations.
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1 Be it enacted by the Senate and House of Representa-

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2 tives of the United States of America in Congress assembled,

3 Section 105 of title 17, United States Code, is
4 amended to read as follows:
5 "§ 105. Subject matter of copyright: United States
6 Government and other works
7 "(a) IN GENERAL.-Copyright protection under this
8 title is not available
9 "(1) for any work of the United States Govern-
10 ment, but the United States Govemment is not pre-

HRHL

HLC 00012000
 3

1 eluded from receiving and holding copyrights trans-

2 ferred to it by assignrnent, bequest, or otherwise;
3 "(2) for any name, number, or citation by
4 which the text of State and Federal laws or regula-
5 tions are, or ever have been, identified; or
6 "(3) for any volume or page number by which
7 State or Federal laws, regulations, judicial opinions,
8 or portions thereof, are, or ever have been, identi-
9 fied.
10 "(b) FEES FOR CERTAIN SERVICEs NOT Ap-
11 FECTED.-The provisions of subsection (a) of this section
12 does not expand or reduce any right of any State to chai-ge
13 reasonable fees for services incidental to making available,
14 as part of the public domain, laws, regulations, or judicial
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15 opinions. ".
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-HR 4426 m

HLC 00012001
 4

Mr. HuGHEs. The gentleman from California.

Mr. MooRBEAD. Thank you, Mr. Chairman.
The Copyright Act provides copyright protection for "original
works of authorship fixed in any tangible medium of expression."
The standard for "ori*ginaliV. is low." It is not necessarily that the
work be novel or unique, wnich is the standard used for determin-
ing whether someone is entitled to a patent, but only that the work
have its origin with the author and that it be independently cre-
ated.
The Copyright Act also provides protection for an arrangement
"the
of
sub-
preexistiing materials. Section 103 of the act states that
ject matter of copyright... includes compilations and derivative
act as a "work form by
works." A "compilation" is defined in thematerials
the collection of assembling of preexisting or of data that
are selected, coordinated, or arrangedan in such a way that the re-
sulting work as a whole constitutes onginal work of autbor-
ship."

reporter like West Publishing Co. is or is not a copyrittabI

One of the questions we'll be reviewing this morning is wbether
an arrairigement of opinions, citations, and page numbers b a work.
Mr. Chairman, this is an important issue, and I'm loo ing forward
case

to this morning's testimony.

Thank you.
Mr. HuGHEs. I thank the gentleman.
The gentleman from Massachusetts, the author of the legislation
pending, before the committee, any opening statement?
Mr. FRANK. Thank you, Mr. Chairman. Yes, I'm very much look-
ing forward to the liearing. I think this is anthe evolving area of the
country. I was ap-
law that is very important to the economy of
proached, I was asked at one point if I would offer this as an
amendment. I said, while I thought there was a lot of merit to the
argument, I did not feel sufriciently competent in it at that point
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to offer it as an amendment, and I do think it was useful to have

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a hearing on it.
I vei-y much look forward to this hearing. Some hearings we
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come to prepared to make our arguments. Occasionally Members of

ess come to a hearing to listen and be influenced by what
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Con
peopyce have to say. I think this may very well be one of thoseIt's in
that latter category. It!S useful that ies being captured on tape.
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in some cases a rarity. Thi 's not one where we have ideological
or the
predispositions or substantial political interests one way law. I look
other. It!s an important and, as I say, evolving area of
forward to being enlightened by people on wbat approprifite public
policy ought to be. .1, obviously, start out with an inclination of the
direction-in the bill I filed, but I look forward to listening.
Mr. RuGHEs. I thank the gentleman.
We've been joined by a very distinguished member of the full Ju-
diciary Committee who doesn't serve on this particular subcommit-
tee but who we're delighted to have with us. That!s Jim Ramstad
of Minnesota, who has more than just a passing interest in the leg-
islation. The gentleman from Minnesota.
Mr. RAmSTAD. Thank you, Mr. Chairman, for permitting me to
this legislation is
participate in the hearing today. Youre West Publishing
6f obvious concern, of very deep concern. is one of

HLC 00012002
 the largest employers in my district. It's an honest company. It per-
forms magnificently. It provides a valuable service to American
consumeirs of legal publications. Ies a proud employee-ovmed enter-
prise, and it's one of the premiere businesses in our entire State
and truly a model corporate citizen. No other corporation gives
more to charities or does better deeds than West Publishing.
In my judgment, Mr. Chairman, what we.'re about to witness -s
an attack on a company for performing its Job too well. I feel thiis
attack is unwarranted. It's precisely this type of unjustified assault
that has caused America to lose its competitive edge in the world
marketplace. The legislation being considered today represents an
effort by one of the largest and most powerful foreign conglom-
erates in the world, led by an English lord, to win in the U.S. Con-
gress what it knows it cannot win in the courts. The courts, Mr.
Chairman, have spoken on West copyrights and upheld them.
I see no reason whatever for Congress to act in response to the
siren call of Lord Thompson. This is, if I may say so, Mr. Chair-
man, naked special interest legislation. I appreciate the open-
mindedness of the author of the bill, wbom I respect very much,
and the other members of the subcommittee ' to truly listen to the
testimony here today and to those not present. I believe it's abso-
lutely imperative that they carefully review the record of this hear-
ing because it is up to the proponents to demonstrate that there
is a serious problem before we strip thousands of hard-workiiiq, in-
dustrious Americans of their employment just because they nave
performed too well.
Let me close by sa 'ng, Mr. Chairman, this legislation sets us on
a slippery slope anTlwill have wide ramifications for the entire
issue of compilation copyright protection. On this point, I would
ask that this statement of compilation publishers opposed to H.R.
4426 be made part of the record. Again, I would implore the
bers of this subcommittee to read the statement of concemed mem-
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pilation publishers. com-

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Again, Mr. Chairman, I thank you for allowing me to participate

in this very, very critical hearing. Thank you.
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Mr. HuGHES. Without objection, the statement will be so re-

ceived.
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[The prepared statement of concemed compilation publishers ap-

pears in the appendixes.]
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Mr. HUGHEs. The first witness this moming is Ralph Oman, the
very distinguished Register of Copyrights. Mr. Oman was here just
last Wednesday testifying on H.R. 191. He's accompanied toda b
Dorothy Schrader, able General Counsel of the Copyright 0W-1c)ey,
who also joined us last week.
Ralpb, your written statement will be included in the record in
full. As you know, we appreciate when you summarize for us, so
we can get rigbt to questions, but you may proceed as you see fit.
Welcome.
STATEMENT OF RALPH OMAN, REGISTER OF COPYRIGHTS,
LIBRARY OF CONGRESS, ACCOMPANEED BY DOROTHY
SCHRADER, GENERAL COUNSEL
Mr. OMAN. Thank you very mucb, Mr. Chairman.

HLC 00012003
 6

Representative Frank's bill would clarify that public domain ele-

ments like case names, numbers, citations, and volume and page
numbers are mearLt to be freely accessible and not subject to pro-
prietary rights that might inhibit commercial copying. The Cop,V-
right Office supports the general principle of this bill that copyriglit
should not be available to protect these elements.
Of course, the question always occurs: Is this bill necessary? I
would contend that the material covered is probably not copyright-
able under current law, particularly after the recent Supreme
Court decision in Feist.
If Congress does decide to legislate, I have two suggestions. First,
the legislative history should make clear that the bill only clarifies
existing law and applies to both legal and nonlegal materials. Sec-
ond, because of this broad application section 102 of the general
subject matter section of the Copyright Act should be amended,
rather than section 105, which is the Government works section.
Although the Copyright Act does not protect facts, the compila-
tion of such unprote-etable elements may be protected given enough
original selection, coordination, or arrangement. For a century and
a half, before the ei5hth circuit decision in West Publishing v. Mead
Data, no court ha protected case arrangement and pagination
standing alone. Original headnotes, orical summaries of facts,
and ori&mal summaries of bold--.--- - t e other hand, have been
held to be copyrightable, and this i the type of service that West
routinely provides.
The Mead Data decision was a substantial de_parture from exist-
ing precedent. The court appliec't equitable and sweat-of-tbe-brow
considerations and some inherent notions of unfair competition re-
lief to Ve protection against copYI in g. :rhose are compelling argu-
ments. ven if the eigbth circuit's decision were consistent with ex-
isting law, Feist tolled the death knell for creations based exclu-
sively on sweat-of-the-brow instead of on originality. The Constitu-
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tion requires an element of originality before copyright protection

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will kick in.

Feist teaches us that even thoiigh only a modest level of creativ-
ity is required for copyrightability, that creative spark is still a con-
er

stitutional prerequisite, and originality is necessary in the selec-

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tion, coordination, or arrangement of a compilation. The subject

matter that the bill would exempt from copyright protection con-
tains no more creativity than the alphabetical arrangement of
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names in the white pages of telephone directories that the Supreme

Court concluded in Feist was, using the words of Justice O'Connor,
dinot only unoriginal, but practically inevitable."
This concludes my oral statement, Mr. Chairman. I would be
pleased to answer any questions now or in writing.
[The prepared statement of Mr. Oman follows:]

HLC 00012004
 Statement of Ralph Oman
Register of copyrights and
Associate Librarian for copyright services
Before the SubcOMMittee on Intellectual Property
and Judicial Administration
House Committee on the Judiciary
102d Congress, Second Session
MAY 14, 1992

Mr. Chairman and members of the Subcommittee, I am

pleased to appear before this distinguished body. Thank you and
your staff for the opportunity to appear here today to testify on
H.R. 4426.
The bill, introduced by Representative Barney Frank, was
referred to the House Judiciary Committee on March 11, 1992, and
would amend section 105 of the Copyright Act ' to exempt from
protection the names, numbers and citations of state and federal
laws and regulations, and the volume and page numbers of state and
federal requlations and judicial opinions, even if compiled by a
private sector publisher. H.R. 4426 would also clarify that states
could continue to charge reasonable fees for making available laws,
regulations and judicial opinions.
The Copyright Office supports the general principle of
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the bill that copyright should not be available to protect these

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facts.
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1
17 U.S.C. §105 (1976).
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HLC 00012005
 BACKGROUND

The Copyright Act defines a compilation as:

[A] work formed by the collection
and assembling of preexisting
materials or of data that are
selected, coordinated, or arranged
in such a way that the resulting
work as a whole constitutes an
original work of authorship. 2

However, copyright protection

extends only to the material
contributed by the author of such
work, as distinguished from the
preexisting material employed in the
work, and does not imply any
exclusive right in the preexisting
material. The copyright in such
work is independent of, and does not
affect or enlarge the scope,
duration, ownership, or subsistence
of, any copyright protection
'
in the
preexisting material.
Thus, for laws, regulations and judicial, opinions, all the compiler
could protect would be the selection, coordination and arrangement
of these public domain elements; they themselves are not
protectible. ' while original headnotes, statements of facts and
summaries of holdings, given sufficient authorship, are certainly

Id., S101.
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2
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3
jd. , S103.
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4
See Banks v. Manchester, 128 U.S. 244 (1888) (neither
court nor reporter may have exclusive rights in written or oral
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court opinions) ; Wheaton V. Peters, 33 U.S. 591, 668

(1834)(reporter could not claim copyright in judicial opinions).
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HLC 00012006
 copyrightable, no case before West Publishing gompany v. mead Data
Central. Inc. , ' held that copyright existed in paginatioxi and
volume numbers, standing alone. Indeed, the Eighth Circuit ignored
contrary precedent to reach this result.
In Wheaton v, Peters, ' the Supreme Court held that an
official court reporter was entitled to copyright protection for
marginal notes or synopses of cases, statements of cases, abstracts
of arguments of counsel, and indexes to volumes. 7

The Court reached a similar result in Callac[han v. Myers.

Myers, wtio held the copyrights for several volumes of the Supreme
court of Illinois reports, sued the publishers of a competing
reporter who had copied material from his reports, including the
arrangement and pagination of some volumes. The Court affirmed the
lower court's holding of infringement because a substantial portion
of Myers' reports had been taken, but the Court specifically held
that case arrangement and pagination were not copyrightable:
Undoubtedly, in some cases, where
are involved labor, talent, judg-
ment, the classification and dis-
position of subjects in a book
5
799 F.2d 1219 (8th Cir. 1986), cert. denied 479 U.S. 1070
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(1987) .
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6
33 U.S. 591 (1834).
7
;3ee also West Publishing Co. V. Lawyer's Coolperative
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Publishing Co., 79 F. 756 (2d Cir. 1887) (injunction and damages

granted for unauthorized use of copyrighted headnotes and digests) .
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128 U.S. 617 (1888).

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HLC 00012007
 10

entitle it to copyright. But the

arrangement of law cases and the
paging of the book may depend simply
on the will of the printer, of the
reporter, or publisher, or the order
in which the cases have been
decided, or upon
'
other accidental
circumstances.
Thus, even though the totality of the compilation was protectible,
the component elements -- case arrangement and pagination -- did
not represent sufficient authorship.
Addressing the narrower question of the copyrightability
of certain compilation elements, the Second Circuit later helcl in
Banks Law Publishing Co. v. LawVers' Co-Oioerative Publishing Co. , "
that the arrangement, division into volumes, table of cases and
star pagination of U.S. Supreme Court reports, were not
protectible. Judge Hazel wrote:
To intelligently prepare the
headnotes or syllabuses of the
cases, the official reporter
manifestly had to become familiar
with the opinions of the court and
discussion of the points passed
upon. Such intelligent labor and
skill beyond doubt is correctly
classified as being that of an
author who by his writings is
entitled to the protection of the
(copyright] statute; but concededly
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it was the duty of the reporter

under his appointment to make a
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report of the decisions of the

court, cause them to be printed and
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Id. at 662.
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:0 169 F. 386 (2d Cir. 1909).

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HLC 00012008
 11

published, and constitute them into

volumes. A reasonable interpreta-
tion of the statute prescribing his
duties implies pagination, volumes
of uniform size and reasonable
thickness, together with a suitable
and convenient arrangement of the
cases. If the reporter, owing to
his familiarity with the decisions,
chooses to arrange them in the order
of their importance, or so far as
possible conveniently group the
opinions of each justice instead of
in order of time or date of filing,
he does so voluntarily and in
evident compliance with the proper
and faithful discharge of his
official duties. True, the statute
prescribing his duties does not
point out how the cases shall be
arranged into volumes and printed,
but to fittingly reproduce the
decisions and opinions in volumes it
is necessary to supply pagings,
together with an orderly arrangement
of the cases. It is inconceivable

orriciai renorter. A different

question would be presented if, for
instance, infringement of the
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headnotes, or syllabuses, index

digest, synopses of arguments or
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statements of the cases, or an

abridgement thereof were claimed. 11
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Id. at 390 (emphasis added). See Eacrers v. Sun Sales

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Corporation, 263 F. 373, 375 (2d Cir. 1920) (copying of pamphlet

(continued... )
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HLC 00012009
 12

Despite 150 years of settled contrary precedent, the

Eighth circuit, in West Publishing Co. v. Mead Data Central, Inc. I "
affirmed, on interlocutory appeal, the district court's award of a
preliminary injunction to West, protecting the arrangement, and
thereby the pagination, of West's published legal reports. "
In reaching its conclusion, the court stressed the
minimal amount of creativity required for copyright protection,
and, based on this premise, rejected Mead's argument that case
arrangement is per ae uncopyrightable. " Curiously, the West
court cited Callaghan v. Myers and Banks Law Pub. Co. v. Lawyer's
Co-OperativePub. Co. for the proposition that case arrangement and
pagination are not uncopyrightable. The West court noted that, in
Callaghan, arrangement and pagination were included as elements of
the whole copyrightable compilation and were, therefore, matters to

11( ... continued)

pagination is not infringement).
12
799 F.2d 1219.
13 Mead, a computerized legal research system, proposed to
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introduce a feature called "star pagination," that keyed its LEXIS

system with West's reports, providing jump cites to the location in
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the West reporter of LEXIS material without the need for physical
reference to the West volume. 799 F.2d at 1222.
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14
Id. at 1224 ("An arrangement of opinions in a case
reporter, no less than a compilation and arrangement of
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Shakespeare's sonnets, can qualify for copyright protection").

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HLC 00012010
 13

be considered in an infringement action. " Yet, despite the

clear
language in Callacthan that case arrangement and
pagination are not
protectible, the West court concluded that "Callacrhan establishes
at least that there is no Per m-e rule excluding case arrangement
from copyright protection, and that instead,
in each case the
arrangement must be evaluated in light of the originality and
intellectual-creation standards.-' 16
The Eighth Circuit similarly distinguished the
clear
holding in Banks, permitting unauthorized
reproduction of case
arrangement and the use of star pagination, by maintaining
that the
Banks holding was based on the official status
of the court
reporter-, and not the inherent lack of
copyrightability of
arrangement and pagination. "
As with its citation of Callacthan, the West court's
reasoning, here, was equally flawed. Even if a compilation is
required by law, unless the particular selection, arrangement or
coordination is mandated, or choice is so narrowed
that there is
15
West, 799 F-2d at 1224-25.
two separate the issues of
copyrightability and infringement However,
elements that may be considered are for putposes
inquiries, and
of substatitial
similarity -- particularly in the context of compilations,
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the factual elements are not protectible -- where

themselves copyrightable. are not necessarily
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Ld. at 1225. Although the Eighth Circuit's conclusion

that there is no Per je rule
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is technically correct, it ignored the

substantive holdings of Callacrhan and Banks that arrangement
pagination lack sufficient originality to be copyrightable. and
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17
Id.
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HLC 00012011
 14

Indeed, the
not sufficient authorship, the work is protectible.
Banks court noted that the statute prescribing the reporter's
duties did not point out how the cases should be arranged into
volumes and printed. ' Moreover, it was also the duty of the
reporter to report on decisions of the court, and the Banks court
to
correctly concluded that headnotes and syllabuses were entitled
status of
copyright protection. " Thus, it was not the official
from protecting
the reporter that prevented the Banks court
headnotes and
arrangement and pagination, yet allowed protection of
authorship in the
syllabuses; it was the lack of copyrightable
arrangement and pagination.
After construing Callaghan and Banks to mean that there
pagination are
is no per se rule that arrangement and
that West's
uncopyrightable, the Eighth Circuit concluded
to
arrangement of state and federal court decisions was subject
on pages are not
protection. 2' It then concluded that numbers
copyrightable, but that "page numbers ... occurring within the body
The
of individual court opinions" are subject to protection.
21

court reasoned that:

H
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1B 169 F. at 390.
Id. at 388.
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19

20 799 F.2d at 1226-27.

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21 Id. at 1227.
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HLC 00012012
 15

The key to this case, then, is not

whether numbers are copyrightable,
but whether the copyright on the
books as a whole is infringed by the
unauthorized appropriation of these
particular numbers. "
Logically, however, it is difficult to conceive how the
smaller subset of page numbers within court opinions can be
protectible, if the larger set of all page numbers is not
copyrightable. This inconsistency may be explained by the nature
of cornpilation authorship: the whole is greater than the sum of the
parts. But arrangement and pagination contain such minimal
authorship that, alone, they do not even rise to the level of
original compilation. More likely, the West decision was based on
a mixture of "sweat of the brow" copyright protection, 2' equity,
and notions of unfair competition relief. Based on its finding of
copyrightability, the Eighth Circuit affirmed the lower court's

22
Id.
23
The court noted:
1-d. As MDC points out, the specific goal of this
suit is to protect some of West's page numbers, those
occurring within the body of individual court opinions.
But protection for the numbers is not sought for their
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own sake. It is sought, rather, because access to these

particular numbers -the "jump cites'l- would give users of
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LEXIS a large part of what West has spent so much labor

and industry in compiling, and would pro tanto reduce
anyone's need to buy West's books.
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HLC 00012013
 16

conclusion that Mead's use of the page numbers would infringe

West's arrangement . 24

Even were sweat of the brow a viable theory of protection

for factual works at the time of West, the doctrine has since been
eliminated by the Supreme Court's recent decision in Feist
Publications v. Rural Telephone Service Co. 25 Although a modest
level of creativity is required for copyrightability, a "creative
spark" is nevertheless a constitutional prerequisite. '6 And since
copyright does not protect facts, a later author may take them with
impunity. "
24
Id.
25
111 S. Ct. 1282, 1295 (1991) ("In summary, the 1976
revisions to the Copyright Act leave no doubt that originality, not
'sweat of the brow,' is the touchstone of copyright protection in
directories and other fact-based works. Nor is there any doubt
that the same was true under the 1909 Act").
26
Id. at 1287-88.
27
Feist, 111 S.Ct. at 1289 (11[o]thers may copy the
underlying facts from the publication, but not the precise words
used to present them"); Harper Row, Publishers v. Nation
&
Enterprises, 471 U.S. 539, 556 (1985) ("No author may copyriqht his
ideas or the facts he narrates"); M. Nimmer and D. Nimmer, Nimmer
on Coiovrictht §13.03[B)[2](b] p. 13.64 (II(F]eist stands for the
proposition that even admitted literal copying is not actionable
when limited to unoriginal expression") . See 17 U.S. C. §102 (b) ("In
no case does copyright protection for an original work of
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authorship extend to any idea, procedure, process, system, method

of operation, concept, principle, or discovery, regardless of the
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form in which it is described, explained, illustrated, or embodied

in such work").
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In Feist, the Supreme Court permitted the admitted

verbatim copying of 1,309 of 46,878 white page telephone directory
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(continued...
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10

HLC 00012014
 17

Although facts enjoy no protection, compilations of facts

may be copyrighted if they contain originality in selection and
arrangement. 28 But the copyright in the whole does not protect
every element of the work: factual elements like volume and page
numbers, for example, simply contain insufficient originality to
warrant protection. 2' And since copyright in factual compilations
is extreniely thin, a subsequent user is free to take these limited
factual elements. In any event, pagination and volume numbers
contain no more creativity than the alphabetical arrangement of
names i-n the white page telephone directory that the Court
concluded was "not only unoriginal, (but) practically inevitable. 11 "
No later case has protected pagination, although West's
arrangement of Texas state statutes was the subject of a later
declaratory judgment action. State of Texas v. West Publishing
21 ( ... continued)
listings because the Court considered them unprotectible facts, not
original within the meaning of the Copyright Act and, thus, free
for the taking. 111 S.Ct. at 1287.
28 Id. at 1289 ("The compilation author typically chooses
which facts to include, in what order to place them, and how to
arrange the collected data so that they may be used effectively by
readers. These choices as to selection and arrangement, so long as
they are made independently by the compiler and entail a miriimal
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degree of creativity, are sufficiently original that Congress may

protect such compilations through the copyright laws").
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29
See Id. at 1296 (selection and arrangement of facts
cannot be so mechanical or routine as to require no creativity
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whatsoever) and 1290, 1294 (selection, coordination and arrangement

must be original to be protectible).
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30
Id. at 1297.
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11

HLC 00012015
 18

Co.. " But since the Fifth Circuit found that there was no actual
controversy, the state's action was dismissed on procedural
grounds, and the court never reached the copyright issue. "

ANALYSIS OF H.R. 4426

H.R.. 4426 was introduced by Representative Barney Frank,
and referred to the House Judiciary Committee on March 11, 1992.
The bill would add three additional clauses to section 105, which
now provides that there is no copyright protection for works of the
United States Government, but permits the transfer of copyrights to
the Government. "
31
882 F.2d 171 (5th Cir. 1989).
12
I_d. at 175. In 1925, the Texas legislature revised its
JaWS into three major areas: civil, criminal and criminal procedure
statutes. However, several changes and additions were not given
placement designations and had to be arranged within West's
existing annotated statutes, Vernon's Annotated Revised Civil
Statutes. 882 F.2d at 173. West identified the new statutes
without placement designation by a 1925 article or section number,
and a West-generated identifier. It claimed copyright only in the
Vernon arrangement, not in the text, official compilation or other
arrangement of the statutes. Id. at 173-74.
Concluding that Texas engaged in limited noncommercial
publishing for intergovernmental use of pamphlets containing
portions of Vernon's, and that there was no evidence that the state
intended to engage in commercial publication, the Fifth Circuit
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held that Texas's interests were not adverse to West's, and that
declaratory judcjment could not be entered. Id. at 175.
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33
Section 105 currently reads:
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Copyright protection under this

title is not available for any work
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of the United States Government, but

(continued...
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12

HLC 00012016
 19

The legislation's first clause would prohibit copyright

protection for names, numbers, or citations for state and federal
laws and regulations. The second would prohibit protection for
volume or page numbers of state or federal regulations and judicial
opinions. The final provision would clarify that states could
continue to charge reasonable fees for making available laws,
regulations and judicial opinions.
H.R. 4426 would also expand the scope of section 105 from
"United States Government works" to "United States Government and
other works" -- the "other works" presumably being state laws,
regulations and judicial opinions.
COPYRIGHT OFFICE OBSERVATIONS
H.R. 4426 clearly exempts from copyright protection the
names, numbers andcitations of state and federal laws and
regulations, as well as the volume and page numbers of state and
federal regulations and judicial opinions. It is not clear,
though, what effect it would have on other factual works.
In application, H.R. 4426 is Probably only relevant to
factual works, since the exempted factual elements have no
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... continued)
33(
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the United States Government is not

precluded from receiving and holding
copyrights transferred to it by
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assignment, bequest, or otherwise.

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17 U.S.C. §105.
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13

HLC 00012017
 20

proprietary significance with works of fiction. Thus, the problem

that the bill seeks to remedy is confined to uses where the names,
numbers, citations, and volume and page nunbers have proprietary
import. Outside of contexts where there is use of an official
format -- and the elements thereby become valuable -- the bill has
limited application, and this narrow drafting is probably adequate.
Moreover, because the scope of fair use is broader with factual
than fiction works, the mere taking of these limited eleTnents would
be permitted . 34

Assuming sufficient originality, conpilations of legal

headnotes, syllabuses and factual summaries, are clearly eligible
for copyright protection. However, since the underlying facts are
not protectible, the compilation of factual elements must contain
adequate original selection, coordination and arrangement to be
protectible. Under existing precedent before West, and certainly
after Feist, compilations of names, numbers, citations, and volume
and page numbers of state and federal laws, regulations and
judicial opinions, are not copyrightable. Representative Frank's
bill would clarify that these public domain elements are meant to
be freely accessible, and not subject to proprietary rights that
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inhibit use, research, or other access.

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The Copyright Office has soine concern that the bill

addresses a concern that the courts themselves will sort out given
er
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34
See Harper & Row, 471 U.S. at 563.
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14

HLC 00012018
 21

time. It may be unnecessary legislation since the matter covered

by H.R. 4426 -- names or citations of state and federal laws and
regulations; volume or page numbers of state and federal
regulations and judicial opinions -- is uncopyrightable under
existing law, especially post-Feist. If Congress decides that
clarification of the law by legislation is appropriate, the Office
urges that the legislative history make very clear that this bill
merely clarifies existing law, with respect to both legal and
nonlegal materials.
Finally, if Congress decides to act, amendment of section
102 rather than section 105 should be considered. The matter
covered by the bill is uncopyrightable in the case of nonlegal as
well as legal materials. Therefore, the general subject matter
section of the Copyright Act could be amended instead of the
government works section, which now relates only to the federal
government.
Thank you. I will be pleased to respond to your
questions.
H
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is

HLC 00012019
 22
Mr. HUGHES. Has the Copyright Office issued a certificate of reg-
istration to West Publishing for its national reporter system as a
whole?
Mr. OmAN. Yes, we have and we continue to do so. The work as
a whole is given a copyright certificate.
Mr. HUGHES. Has the Copyright Office issued certificates of reg-
istration to the West Publishing Co. for individual volumes of judi-
cial reporters?
Mr. OmAN. We do issue certificates of registration for individual
volumes, if they are submitted in that way. The volume itself rep-
resents a work of authorship. It includes the headnotes, and other
original elements, not just the pagination and the arrangement of
the cases.
I should add that many of the things that West does-for in-
stance, the "Fed. a great deal of original selection
of cases. Ver_y few of the district court cases are actually published
West, and that selection by West is entirely copyrightable under
the copyright law.
Mr. HuGHES. Any other areas, in your judgment, that are copy-
rightable to West Publications? Page numbers?
Mr. OmAN. I suspect there
Mr. HUGHES. Are page numbers copyrightable?
Mr. OmAN. Under the rules of the Copyright Office, we don't reg-
ister individual elements of a work; we register the one work and
that registration covers the copyrightable elements. If someone
were to specify page numbers, we would request that they change
the authorship statement on the application form.
Mr. HUGHES. I see. Star pagination, copyrigbtable?
Mr. OmAN. No, that would not be.
Mr. HUGHES. In your view, what do the certificates of registra-
tion for each judicial opinion cover besides what we just talked
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about?
Mr. OmAN. It covers the work as a whole, and I think that there
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is certainly sufficient authorship involved with the works produced

by the West Publishing Co.
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Let me ask Ms. Scbrader to add anything that sbe might have
in mind.
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MS. SCHRADER. In addition to selection, it's possible that the ar-

rangement of the cases in the sense of one case in relation to an-
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other, not the breakdown of pages or the pagination, but the ar-
rangement, or the ordering of the cases, migbt be the basis of origi-
nality.
The Copyright Office doesn't really take a position on that be-
cause we haven't really reqUiTed West or any other legal publisher
to specifically indicate the basis on wbich they have ordered their
cases. But if the work is ordered on the basis of some arbitrary cri-
teria, sucb as the subject matter or the importance of the case, pos-
sibly that might be an element of originality, especially if there is
i ificanc originality in the selection of the cases. As Mr. Oman
s il
s aTd, each of these publications tends to have clearly copyrightable
authorship, such as the headnotes, and the Copyright Office then
doesn't go any deeper into the claim in deciding to make registra-
tion. We would exclude pagination, if that element were specifically
claimed.

HLC 00012020
 23
Mr. HUGHES. The gentleman from California.
Mr. MOORHEAD. West v. Mead made clear, and I quote, that "Pro-
tection for the numbers is not sought for their own sake. It is
sought rather because access to these particular numbers to jump
cites would give users of Lexis a large part of what West has spent
so much in labor and industry and compiling. It would pro tanto
reduce anyone's need to buy West books. The key to this case then
is not whether numbers are but whether the copy-
right on the books as a whole is intringe ny the unauthorized ap-
propriation of these particular numbers. We, therefore, hold that
the West case arrangements, an important part of which is internal
ppge citations, are original works of authorship entitled to copy-
rignt protection."
Do you disagree with this holdin 9
Mr. OmAN. We do disagree with tEat holding in the Copyright Of-
fice, and we think that the Supreme Court in the Feist decision
would 4gree with our determination of the state of the law.
Mr. MOORHEAD. That basically dealt with the telephone book,
didn't it?
Mr. OMAN. Yes, sir.
Mr. MOORHEAD. It ruled that the telephone book was not an
original work. West tries to say that they differ substantially from
the automatic listings in the telephone book. What I'm trying to get
at, and I think some of us are unclear just exactly what does this
bill do. Does it do anything? Does it change what you think is the
present interpretation of the Court? If it doesn't, is it necessary. If
it does, exactly what does it change?
Mr. OmAN. It does clarify what we consider to be the existing
state of the law on the point of requirement of authorship and orig-
inality in a compilation. West does far more than the compilers of
a telephone book do, and those things are copyrightable and
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protectable. The page numbers, however, which are so inevitable,

don't rise to the level of being the creative spark that the Court re-
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quires in applying cop n*ght protection. The volume itself, which is

the work uct of t'Ke employees of the West Publishing Co., is
u
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copyrightAle under the U.S. copyright law.

Mr. MOORHEAD. I wonder for our own use and better understand-
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ing if you could, wben you get a little time-and I know you don't
get much spare time-but could you give us a 1-page or 2-page re-
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port on just exactly wbat is copyrightable under West system and

what is not?
Mr. OmAN. I'd be happy to do that.
Mr. MOORHEAD. I have to admit it's a little bit unclear to me,
and what I would like to know specifically is what this bill
changes, if anything, in those lists that you might compile about
what is and what isn't, because I'd like to know what we're doing.
Mr. OmAN. We'd be happy to do that, sir.
[The information followsJ

HLC 00012021
 24

A publisher of legal reference works like West Publishing publishes a

variety of legal materials. Publications range from original legal treatises to
compilations of statutory or decisional materials. The compilations may be
annotated or otherwise edited. The nature of copyrightable authorship therefore
varies depending upon the nature of the legal reference work.
In the case of a compilation of judicial opinions, as a general rule, the
copyright protects the original authorship, if any, in the selection, arrangement, or
coordination of the opinions, any original headnotes or other annotations by the
publisher, any other original writings such as introductory or explanatory text,
and possibly the overall editing of the publicaticn, if the editing rises to the level
of creative expression. The text of the judicial opinion itself is not subject to
copyright. Page or volume numbers or the typographical arrangement or breakdown of
pages should not be copyrightable based on the Supreme Court decision in Feist v.
Rural Telephorie.
Beyond these few points, further generalizations are probably not helpful.
For a given compilation of judicial opinions, originality may or may not be found
in the selection or arrangment of the cases. Generally, if a relatively few items
are selected from a large universe, the judgment and discretion involved in making
the selection constitutes original expression. if the opinions are arranged
Or,
within the publication on the basis of arbitrary criteria such as subject matter
H

or precedential significance, that arrangement constitutes original expression.

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HLC 00012022
 25
Mr. MOORHEAD. Professor Joyce will testify this moming that
West v. Mead was wrongfully decided and that this case clearly
overrules that case. You, obviously, agree with that. Professor
Denicola disagrees with Joyce and believes that West v. Mead was
correctly decided. He says in his testimony, "The only use that
would involve an infringement of the protected selection and ar-
rangement of cases is the publication of a competing compilation of
cases that copies the overall selection and arrangement of cases
from the first compilation. The dispute to which H.R. 4426 re-
sponds does not in any real sense involve public access to the law.
It is a commercial dispute between a small number ofxublishers
in the business of marketing compilations of cases an statutes.
There is nothing unique about this particular dispute that justifies
or requires special legislation of the kind presently before the sub-
committee."
Is there any truth to what the professor is saying?
Mr. OmAN. Well, that always is the risk you run, when you strike
down protection for something that takes a lot of time and effort
and mone to produce. I suppose if there wasiA a tremendous
amount o7cross-subsidy in the production of the telephone books
after the Feist decision, very few people would produce telephone
books unless they were required to by law in exchange for their
monopoly rigbts as a telephone company.
In this case, I tbink that there is some danger of West not con-
tinuing to do what tbey're doing, if someone can just rip them off
after all the time and effort they spent producing the work, but I
think that does not necessarily follow because so much of what
they do is unique and valuable and copyrightable. Someone who is
'ust photoreproducing their work product would have to block out
all that copyrightable material, and what they would be left with
probably wouldn't be all that useful and probably wouldn't be that
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marketable, so people would still continue to buy the West Publica-

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tion.
Mr. MOORHEAD. Should West v. Mead have been decided as a fair
use case, not just a straight cop . ht case?
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Mr. OmAN. I suppose it cou d ave been decided as a fair use

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case, and that theory I don't think was pursued in the courts. Ms.
Schrader says that the district court considered that theory but re-
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jected it, but I would think that it would be a perfectly respectable

theory to pursue. Whether or not the courts would buy it is another
question.
Mr. MOORHEAD. I guess this is an interesting subject because
most of us that are lawyers grew up with West in our youth at
least, and it's sometbing tbat's been with us for a long time. This
does appear to be a major change in what has been held through
the years.
Mr. OmAN. It would have been a closer question before the Su-
preme Court spoke so authoritatively in the Feist decision when
Justice O'Connor struck down this type of "sweat-of-the-brow," com-
pilation in itself as qualify' fior copyrigbt protection.
Mr. MOORHEAD. West v. Nead never went to the Supreme Court
tbough?
Mr. OmAN. No, it didn't.
Mr. MOORHEAD. Thank you.

HLC 00012023
 26
Mr. FRANK [presiding]. Thank you.
I don't think-I know the chairman and the ranking minority
member both referred to the familiarity of the members with the
product that we're talking about here. In the cases of a number of
us, I think that is a recedin'Ife familiarity. I don't know that too
many members have been in t books that much lately.
[Laugbter.]
Mr. MOORHEAD. That's true.
Mr. FRANK. We may have seen a highlighted Xerox of a page or
two from time to time, but I don't think that there's been much
work.
[Laughter.]
Mr. FRANK. I appreciate your discussing the law, and obviously
one of the functions is to clarify this legally one way or the other.
I think that's one of the things that makes me think we u ht to
look at this, because it is not useful to have the law unsett ed. I
think you've covered that well.
But let me ask now about the public policy implications, because
obviously we're dealing here witb a statutory fact, so that I assume
people wbo might even agree with you as to the implication of the
Feist decision might then tbink that we should act statutorily to
overtum tbat. What's the public policy implications? Assuming ei-
ther that we pass this bill or that you are correct in your interpre-
tation of what the Court would do, the Supreme Court, what then
happens? Would West stop doing this, do you tbink?
Mr. OmAN. That is the public policy consequence that you've got
to look at very closely. If West stops doin this and they've got to
be printed at public expense, thaes certainfy a-
Mr. FRANK. I understand tbat, but the question is, do you think
West would?
Mr. OmAN. I don't think so because they're so embedded in the
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leqal syitem. People have become so familiar with them and they're
reiied on so heavily. Their keynotes and other explanatory informa-
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tion are so valuable and so heavily relied on that they will continue
to prosper. They'll continue to be a major contributor to charities
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in the State of Minnesota and around the country; and they will
not suffer an economic reversal as a result of this decision.
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Mr. FRANK. I don't suppose copyright bas ever been made condi-
tional on a certain level of charitable contribution. Probably not.
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[Laugbter.]
Mr. OmAN. Not to my knowledge.
Mr. FRANK. That's probably not a constitutional condition.
In otber words, your view is that the indisputably copyrightable
elements of West that would not be affected either by a Supreme
Court decision in the phone company case or this bill would con-
tinue to* guarantee them, or not guarantee them but provide them
incentive, the people wbo would still want it?
Mr. OmAi-.,. That is the case. Of course, I am thinking of today
and the immediate future, wbere people still rely on the printed
books, the volumes that sit on the shelf. You might want to take
a closer look at what the implications will be 20 years down the
road wben we're entirely in
Mr. FRANK. That was my next question: What are the implica-
tions ofthis both contemporaneously and even more so in the fu-

HLC 00012024
 27
ture for computer technology,,if we were to pass this bill? Your
view, of course, is that we wouldn't be changing the law much, but
if the public policy that is embodied in this bill were to become the
law of copyright, either tbrougb a Supreme Court decision that
went the way you think it would go or by this bill, wbat would the
implications be for nonprinted works in terms of copyright? Would
it have any negative or positive effects?
Mr. OmAN. It could have an effect not just limited to the West
and Mead situation, but the access of people to data bases in other
contexts. This could have a strong bearing on that situation. I
would be reluctant to make a prediction what the electronic me-
dium is going to be like 20 years down the road. Maybe Ms.
Sebrader would be a little bit-
Mr. FRANK. Yes, because particularly I think we want to very
clear that we don't weaken, and there is this constant tension on
what we do now, which is to look at the printed works and make
sure that we don't do anything that's aimed at printed works that
would have a negative effect witb regard to electronics. Ms.
Schrader.
MS. SCHRADER. Well, my opinion is, no, there wouldn't be that
negative effect, even witb computer technology. The bill covers very
narrow elements-names, volume designations, page numbers, and
so on. Ies been our view in the Copyright Office that those ele-
ments are not copyrightable, and but for the decision of the eighth
circuit in West v. Mead, we don't tbink there would have been a
question about that. In deciding West, the court we tbink ignored
earlier precedent, including a Supreme Court decision from the
19th century, Callaghan v. Myers.
So we don't think there would be that negative impact. If there
is a problem in the future, then possibly one tums to some other
kind of intellectual property relief, other than a 75-year copyright
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tenn in page numbers.

Mr. FRANK. You mention that the Copyright Office says that the
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eighth circuit case was incorrectly decided. Prior to that decision,

was the Office following a different policy?
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Mr. OMAN. We do not change our policy as a result of one deci-

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sion in one circuit.

Mr. FRANK. So you don't follow that? What's the effect of the de-
cision on Copyrigbt Office policy?
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Mr. OmAN. If West were to submit an application for registration

of pa e numbers in their Federal citators, their Federal reports, we
WOU19 not register
Mr. FRANK. But, as you said, you don't get a piece-by-piece cop
right. If you can get the whole thing copyrighted, you would To-
that. Btit, in other words, your view is that you're not bound by
what one circuit did?
Mr. OMAN. No.
Mr. FpaNK. Unless, I assume, it was a D.C. circuit, which you
might be more bound, unless you move to some other-
Mr. OMAN. Or the second circuit. Some circuits speak more au-
thoritatively on the subject of copyright than others, but, as a gen-
eral rule for something like this, we would wait for more of a con-
sensus to build around the country.

HLC 00012025
 28
Mr. FRANK. So you're not now-you do not consider yourself
bound by the eight circuit decision?
Mr. OmAN. No, we don't.
Mr. FRANK. OK Mr. James.
Mr. JAREs. I'm sort of fascinated by this. It seems to me this was
resolved in court and involves primarily two parties. So it seems
to me that what Lexis is perhaps attempting to do is to obtain a
special act, in effect, to relieve themselves from their settlement
and perhaps their court judgment that they effectively lost. How
perhaps am I in error in that assumption or statement?
Mr. OmAN. The licensing arrangement that Mead entered into
with West after the decision in the court case in Minnesota gave
them access to the materials that they needed to continue doing
what they were doing. I would suspect that after the Feist decision
they would-I don't know what the terms of the license were-be
on much surer grounds to dispense with the license and do what
they wanted to without authorization from West. Maybe they're
being congenial; maybe they're being cautious. They're continuing
to operate under the license to do what they want to do.
Mr. JAMES. Well who else does it involve besides West and
Lexis? I know in theory it can cover a lot of people, but was it
drafted specifically because of the license obligation and payments
by Lexis in relationsbip to West? Is that your conclusion?
Mr. OMAN. I tbink there was a genuine lack of clarity in the
minds of some people as to what the law permitted.
Mr. JAmEs. Wasn't the court pretty clear?
Mr. OmAN. The court was, but that was just one circuit. It has
not been repeated in otber circuits around the country, and in
many ways there seems to be a consensus building the other way,
that the eighth circuit decision wasn't necessarily the ideal deci-
sion; that it swept too broadly and that it should have been more
narrowly refined.
H

Mr. JAMES. What we're dealing with here is West has a particu-
yp

lar system of headnotes, where in a case the7, will sit down and de-
scribe the case in a synopsis form in front o every case. They have
done it for years, and they have a key system that keys it to that
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interpretation of their lawyers or their researchers.

La

Mr. OmAN. Absolutely.

Mr. JAMES. And corpus juris surcumdum and most texts give you
w

a West case cite number that prior to computers was a way, a de-
vice, to get into the case law regardless of the text that you were
using; is that correct?
Mr. OmAN. That is correct, and all that, the material that you've
just mentioned-headnotes and the key system notes-are
protectable under the copyright law.
Mr. JAmEs. Right.
Mr. OmAN. No one can copy it; no one can commercially exploit
it.
Mr. JAmEs. But when you get into the computer systems, what
you, in effect, are doing is using that copyrightable material, and
the issue is wbether or not you pay a license for the use and the
reference to those numbers; is that the issue?
Mr. OmAN. What Mead wants to do is just to use the page num-
bers, so they can use the West system of citation, which is required

HLC 00012026
 29
by the U.S. court system. les the page numbers, not the original
material in the case notes or the keynotes or the summations of
the-
Mr. JANES. But, rightfully or wrongfully, a court has ruled in
that specific case, a istrict court, and it hasn't gone to the Su-
preme Court; is that correct?
Mr. OmAN. It was in the circuit court in the eighth circuit, but
it was not taken by the Supreme Court.
Mr. JANEs. Either side, they worked out an agreement?
Mr. OmAN. They worked-
Mr. JANES. Did they not?
Mr. OmAN. Yes.
Mr. JAmEs. OIZ, but it still boils dow-n to the only reason it came
up is because of Lexis and West having an agreement; is that true
or not? Who are the otber parties that are interested in this, other
computer people that want to use the West system or-
Mr. OmAN. I'm not aware of any other parties, Mr. James, that
are involved, but I suspect it has broader implications. There are
other people 'that would want to jump in and do what Mead is
doing, if it were authorized clearly by this law or by subsequent
court decision.
Mr. JAmEs. Is that a legitimate suspicion that I might have,
though, that we're, in effect, dealing with a special act that is real-
ly designed to interfere with the specifics of a particular judgment,
even thougb it's couched in general terms? Is that a legitimate sus-
picion?
Mr. OmAN. I would say not in terms of the reason we're here
today and why the bill was introduced. There is a genuine concem
that the type of citations and page numbers that are so important
to our judicial system not be monopolized by one individual com-
pany, but that there be general access across the board in the in-
terest of having an opein society.
H

Mr. JAmEs. We're only dealing with page numbers?

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Mr. OMAN. Only with page numbers, but by locking in the page
numbers and allowing another company to use those pa&e num-
er

bers, you're eVectively encouraging other people to do wnat the

originator did more cheaply. So it has important public policy im-
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plications.
Mr. FRANK. Mr. James, are you finished?
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Mr. JAMEs. Thank you very much.

Mr. FRANK. I will briefly recognize myself, because the gen-
tleman was asking a question of the Register that would have been
more appropriately directed to me. I would say, yes, it was a court
decision wbich provoked tbis. I would say about a third of the legis-
lation that this committee deals witb is a result of court decisions.
Most recently, the subcommittee whicb I Chair is dealing witb leg-
islation that was filed to overtum a couple of circuit court decisions
that we're filed by the Justice Department of the United States of
America, which didn't like a couple of circuit court decisions re-
garding the right of Federal employees to bring qui tam suits. So
ges, as is often the case wlien a statutory interpretation is rendered
a court, people who think that the decision is poor public policy
resort to legislation and the notion that a specific court decision
has triggered it is both accurate and fairly routine.

65-153 0 - 93 - 2

HLC 00012027
 30
Mr. JAMES. Precisely a legitimate point, and that's why I was
asking what other people are involved, other than the two parties
to that transaction. It may well be that this is general
language
Mr. FRANK. Yes. Oh, yes.
Mr. JAmEs [continuing]. And that it applies in a general sense.
It's not like naming the parties, as some bills do.
Mr. JAmEs. No, it's a general bill.
Mr. JANEs. But I think that's the whole point: it's not just that
one case. If it were, indeed, we probably couldn't do it; it would
probably be unconstitutional if we were trying to interfere with a
court ruling as it relates only to two parties, but we're not here.
Mr. FRANK. It's a statutory interpretation.
Mr. JAws. Yes, but what I'm trying to determine is: Are we in
substance doing that? Apparently, we're not, but I want to see
what other companies are involved. In other words, obviously,
there are two companies that are primarily involved.
Mr. FRANK. In fact, I must say my own concem in part is what
are the broader implications, As we said, whenever we do do this,
we clearly have a broader implication we want to look at.
Mr. Ramstad.
Mr. RAmSTAD. Thank you, Mr. Chainnan.
Mr. Oman, just one question. I'm a bit puzzled by your emphasis
on page numbers. Has West Publishing Co. ever asked for registra-
tion to cover page numbers?
Mr. OmAN. No, they haven't, to my knowledge, and I didn't mean
to suggest that they did. They do seek registration for the work as
a whole, and I suspect they never would request the specific protec-
tion for the pagination in seeking registration.
Mr. RAMSTAD. Mr. Chairman, anotber question: Mr. Oman, I'm
also a little bit puzzled. It's true, I haven't even revisited copyright
H

law for quite some time. I certainly never practiced in that area,
but I'm trying to ascertain the problem which this proposed solu-
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tion is trying to fix in a general sense, as a followup to my col-

leagues' questions.
er

Based on the registrations in your office and your general knowl-

edge, is there a problem as to the availability of this kind of mate-
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ria
Mr. OmAN. I think clearly the material is available, and it seems
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to be fulfilling the need of the users. It is available in several for-

mats now. It's available in book form. It's available on line from the
electronic data bases. So, to answer your question, there is no prob-
lem that we see, that the material is widely available.
Mr. RAmSTAD. Thank you, Mr. Chairman.
Mr. FRANK. Let me say, I wonder if the gentleman would allow
me for a minute, counsel has brought to my attention on page 5
of the complaint filed by West, under count 1, copyright infringe-
ment, point 23, "Each volume of West National Reporter System
Publications contains material wholly original to West, including
editorial features, enhancements, arrangements of reports, and the
numbering and paging of volumes, all of wbich is copyrigbtable
subject matter." I tbinK it should bave been "all of which are copy-
right subject matter," but tbat's not a major problem.

HLC 00012028
 31
But it does, at least in the complaint, West was asserting that
the paging was a separate copyrightable item. So while it nasn't
been registered there, that has been a claim that was made and
that was in the litigation.
Mr. Coble.
Mr. COBLE. Thank you, Mr. Chairman.
Mr. FRANK. Let me just ask: Do you want to go to vote now or
do you want to take your questions?
Mr. CoBLE. I will be very brief
Mr. FRANK. All right, then we'll finish.
Mr. MOORHEAD. This iSn't a vote; this is a quorum just before we
go into session.
Mr. FRANK. Oh, the ligbt's out. I see two lights.
Mr. MOORHEAD. Yes, we have 15 minutes before we go into ses-
sion.
Mr. FRANK. Oh, OK. They've got to fix the lights here.
Mr. Coble.
Mr. COBLE. Tbank you, Mr. Chairman.
Mr. Oman, did you earlier say, in reSponse to a question-that
it was your belief that West would not suffer economically? Did I
hear you correctly on that?
Mr. OmAN. I do think that they can protect their market niche,
if that's what you want to call it, based on the other important con-
tribution they make in the volumes that we do register for copy-
right. Their headnotes are valuable; their case summaries are valu-
able; the whole organization of the legal reporting system is valu-
able.
Even thougli they won't be able to prevent someone from using
their citations or cross-referencing their page numbers-so people
can use a competing service-I suspect that they will continue to
prosper.
H

Mr. COBLE.
,
From a practical point of view, do you see any reason
for this le slation? That is to say, is there currently a problem, to
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your knowledge, and based on registrations in your office, witb the

availability of this kind of material?
er

Mr. OmAN. I think the bill might have been more useful prior to
the Supreme Court's decision in the Feist case, which made clear
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in my mind that those efforts, that we call "sweat-of-the-brow," are

not sufficient to justify a claim to copyn'ght. Under the law prior
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to the Supreme Court decision, West could have claimed that the
effort involved in pagination, the arrangement of the cases, and the
volume numbers was entitled to copyright protection.
But the Supreme Court in the Feist case made clear that that
t pe of effort is not subject to copyright protection. So I will say
tK atthe requirement for the clarifying law today is not as great as
it would bave been last year.
Mr. COBLE. One final question, Mr. Chairman. Without the pro-
tection currently afforded to unofficial compilers of legal and statu-
tory materials, do you believe that such private publisbers would
still have the incentive to publish?
Mr. OmAN. That's an important policy question that ou've got to
consider. We wouldn't want to force West to abandon ta effort be-
cause people are going to copy them whenever they produced a vol-
ume and destroy their market. I would think that would be one of

HLC 00012029
 32
your considerations. If the Govemment had to pick up the tab be-
cause West couldn't subsidize this service through sales of volumes,
that might be something you would want to consider.
Mr. COBLE. Thank you.
Mr. MOORHEAD. Would the gentleman yield for a question?
Mr. FRANK. I reco ize the gentleman.
Mr. COBLE. Thaneyou, Mr. Chairman.
Mr. MOORHEAD. One thin this is a new area for many of us,
and really we haven't zeroef-lin on this. I'd like to know what the
difference in size of the combatants. Is Lexis about the same size
as West and do'n' gabout the same amount of work, or what?
Mr. OmAN. I don't know the combatants personally. I didn't even
know that an English lord was the head of Mead Data. It's not like
we're dealing with two vastly disparate entities, one with tremen-
dous economic power and the other with very little. I would say
they're able to negotiate on equal terms with equal economic
power.
Mr. MOORHEAD. Thank you.
Mr. FRANK. I would say, given the Constitution which is still in
effect in this regard, since we are, I think estopped from granting
titles of nobility, that one we won't be Zle to address; we'll have
to try to equalize it in other ways. But there's no way we can make
the head of West a baron because I think constitutionally Congress
is not allowed to grant titles of nobility-or a letter of mark and
reprisal. So he couldn't get even that way.
[Laughter.]
Mr. FRANK. That is a vote. So we're going to take a break. We
will come back.
Is everyone throu h? Can we let the Register and Ms. Schrader
leave? Then we wilf come back witb our next panel. We'll take a
quick break.
Mr. OmAN. Thank you, Mr. Chairman.
H

[Recess.]
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Mr. HUGHES. The committee will come to order.

Our first panel consists of two very distinguished professors of
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law who in copyright law. Prof. Craig Joyce is professor

of law at the University of Houston Law Center and codirector of
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the University of Houston Intellectual Property Law Institute. Pro-

fessor Jo ce is also very active in the field of legal history, includ-
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ing the Eerican Society for Legal History and in bis role as an
editor for the Journal of Supreme Court History.
Mr. Jbyce, if you'll come forward, we'd appreciate that. We wel-
come yoli.
I mifht also add that Professor Joyce is the original and lead au-
thor o a case book on copyrigbt law and of numerous articles on
copyright law and legal history.
Professor Denicola is Margaret Larson Professor of Intellectual
Property at the University of Nebraska School of Law. He is the
coauthor of a treatise of copyright law. I guess the West and Thom-
son witnesses are not the only competitors in the legal field appear-
ing before us today. Professor Denicola has written extensivety on
copyright law, and since 1986 has been one of two reporters for the
American Law Institute's forthcoming "Restatement of the Law
and Unfair Competition." We welcome you.

HLC 00012030
 33
Both professors had articles cited by the Supreme Court in the
Feist opinion, I might say. We welcome both of you bere today.
We're so happy you could come such a long distance to be with us
today.
We have your statements, which we've read and which will be
made a part of the record, without objection, and you may proceed
as you see fit. Why don't we begin with you, Professor Joyce? Wel-
come.
STATEMENT OF CRAIG JOYCE, PROFESSOR OF IAW AND
CODERECTOlt, INTELLECTUAL PROPERTY IAW INSTITUTE,
UNIVERSITY OF HOUSTON IAW CENTER
Mr. JOYCE. Mr. Hughes, Mr. Frank, members of the committee,
thank you for having me.
I support H.R. 4426 enthusiastically.
With respect to the terms of the bill, what I have to say about
its drafting is contained in my prepared statement.
My view on the merits is that, but for the eighth circuit's 2-to-
1 decision in West Publishing v. Mead Data Central, few today
would seriously argue that the identifying matter of the sort tar-
geted in the bill-not the headnotes and other concededly original
matters discussed by Mr. James, but volume and page numbers-
.could be protected by copyright law. Indeed, if this bill were to be
turned inside out and this committee were to attempt to protect
that matter afrirmatively, I think the legislation would contradict
existing provisions of the Copyrigbt Act, exceed the powers vested
in Congress by the copyright clause of the Constitution; and run
afoul of the Supreme Court's decision in Feist Publishing v. Rural
Telephone.
The Mead case, however, is still very much alive. Mead itself was
settled. It is now beyond review. Attempts to undo Mead in the
courts have failed and will fail, for the reasons noted in my state-
H

ment. There is no realistic prospect that subsequent judicial deci-

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sions will create a split in the circuits or that the matter will be
otherwise brought to the Supreme Court for its scrutiny. Thus, the
er

error in Mead, the misbegotten notion that the identifying matter

of public domain documents can be owned by a private publisher,
La

must be corrected, if at all, by Congress.

The two key issues confronting the subcommittee in deciding
w

whether to recommend passage of H.R. 4426, in my view, are:

First, are page and section numbers, etcetera, which identify laws,
and so on, protectable at all under standard principles of copyright
law? My answer is no. And, second, even if such identifying matter
were otherwise protectable, should protection be witbheld by Con-
gress in order to enhance access to public domain documents to
whose location the identifying matter refers? My answer to that
question is yes.
On the issue of nonprotectability, I believe that the identifying
matter of public domain documents protected by Mead, or sought
to be protected by its autbority, fails the most basic prerequisite of
copyrigbtability; namely, the authorship or originality test. That
requirement is constitutionally mandated. The Supreme Court said
in Feist the mere fact that a work is copyrightable does not mean
that every element of the work may be protected. Copyright protec-

HLC 00012031
 34
tion may extend only to those components of the work that are
ori,Tnial th the author.
I as Feist notes, no one can claim originality as to facts, it fol
lows that a work for which there is a valid, subsisting copyright
may yet contain matter-page numbers, et cetera-which are not
the subject of the copyright's protection.
The situation just described is, I think, precisely the situation of
the identifying matter to which H.R. 4426 would deny protection.
This is obviously so with respect to volume and page numbers, such
as those in Mead itself, which would be the subject of new sub-
section 105(a)(3). The location of public domain matter within
West's Reports is a fact. Pagination by its nature is systematic.
There is no idea being expressed here that is authored. "Page 700,"
for example, expresses nothing more than that the page comes be-
fore page 701 but after page 699. To say, as the court of appeals
majority said in Mead, that what is being protected is the arrange-
ment of the cases contained in the volume is to engage in factual
and legal fictions.
Similarly, new subsection 105(a)(2) would deny copyright protec-
tion to names, numbers, et cetera, of State and Federal laws. The
problems which exist in the law today are exemplified by the legal
purgatory in which the chapter and section numbers of legislation
in m home State of Texas now exist. Since 1925, West has num-
beZ that were not officially numbered by the legisla-
ture-that is, session laws-for inclusion in Vernon's, which is
West's statutory compilation. In essence, West claims that it has
created, and therefore owns, those chapter and section numbers.
But West exercises no selectivity in determining which Texas laws
to compile. Nor can its claim to arrangement in assigning numbers
to the statutory identifying matter be termed authorship when
West's choices are limited to a "mere handful" of options.
The second question I posed to you this moming was this: Even
H

if the identifying matter targeted in this bill were otherwise

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protecta e, shou d protection, nevertheless, be withheld by Con-

gress in order to enhance access? Clearly, the answer is yes. Con-
er

gress has no responsibility to accord copyright protection to all sub-

ject matter within its constitutional empowerment. Even if the
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copyright clause permitted Congress to accord protection, say., to

the page numbers of West's Federal Reporter, I think it would be
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a positively bad idea for Congress to do so. The people of the Unit-
ed States have an overriding interest in regular, cbeaper, easier
availability of access to the law through old and new technologies
alike, wbether the medium is books, services like Lexis or Westlaw,
CD-ROMS, or technolo not yet developed. The American public
benefits by encouragin ggegal publishers to compete through inno-
vation ahct service rather than by relying on spurious claims to con-
gessional protection of page numbers and the like, which merely
identify where the law is to be found.
The last word is Justice O'Connor's from Feist. "It may seem un-
fair that much of the fruit of the compiler's labor may be used by
otbers without compensation. As Justice Brennan has correctly ob-
served, however, this is not some unforeseen byproduct of a statu-
tory scheme. It is, rather, the essence of and a constitu-
tional requirement.... Copyright protects originality, not ef-

HLC 00012032
 35

fort .... As this Court noted more than a century ago, great praise
for their
may be due to the plaintiffs their beingindustry an(i enterprise; yet,
the law does not contemplate rewarded in this way."
Thank you.
Mr. HUGHES. Thank you, Professor Joyce.
[The prepared statement of Mr. Joyce follows:]

PREPARED STATeAENr OF CRAIG JOYCE,

PROFWZOR OF IAW AND CO-DULECTOR,
EffEULECTUAL PROPERTY LAW [NsffnJTE,
UNIVERSYrY OF HOUSTON LAW CENTER

BEFORE THE SUBCOMMITEE ON DnTLLECTUAL PROPERTY

AND JUDICLAL ADNEUqLSTRATION,
HOUSE JUDICIARY CObUdIlTM

H.R. 4426

MAY 14, IM

INTRODUCnON

Thank you, Chairinan Hughes and members of the Subcommittee, fbr inviting me here today to

help in whatever way I can in your consideration of H.R. 4426, *a bill ... to exclude copyright
I am honored by
protection for cerLain legal compflations" by amending § 105 of the Copyright Act.

your invitation and genuinely grateful fbr the oppormnity to appear.

in compliance with what I gather is the custDm here, I wgl begin by telling you a bit about
H
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there is Professor of Law and

myself. I teach at the University of Houston Law Center. My position

Co-Director, with ProL Paul Janicke, of our new lntellectuW Property Law Institute.
er

in addition to my teaching aDd work with the lotitute, I have been active in a nuinber of
La

professional activities, split about equally between copyright law and American legal history. In
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copyright, I am a-member ofthe Copyright Society ofthe U.S.A. and serveon the Board ofEditors of

its Journal. In addition, Fm, by invitation, a member of ATRIP, the bftemational Association for the

Advancement of Teaching 4nd Research in Intellectual Property. In legal history, I am the chair of the

Publications Conunittee, and a past Treasurer, of the American Society for Legal History. Also, I am

a long-time member of the Supreme Court Historical Society, where I serve on the Board of Editors of

the Journal of Supreme Court History. Finally, I have been modestly active in the American Bar
Association, particularly Committee 308 on Govermnent Relations to Copyright.

HLC 00012033
 36

As to scbolarship, my mlicles have appeared in a number of joumals, including Michigan Law

Review, UCZ-4 La- Review and Vanderbilt Law Review, as well as the Supreme Court
Historical
Society's Journal. I am the original and lead author of
a casebook devoted exclusively to the law of
copyright, now in its second edition, and have contributed to a number of other publications, including

the entries on Copyright and last Term's important Supreme Court decision on authorship and
compilation
copyrights in the forthcoming Oxford Cw?Wanion to the Supreme C-ourt of ihe United States.
I will
provide citations later in my statement to those publications that are relevant to the Subcommittee's

inquiry here today.

So much for biography.

Here is my position on H.R. 4426. 1 support the bill. IDdeed, I

support it enthusiastically.
In speaking to the issues which H.R. 4426 presents, I hope I have special credibility.
I have a
long association with these particular issues of copyright doctrine and history through
the research and
writing I described to you generally a moment ago. Two of my principal articles,'
as well as my
copyright casebook,' relate direedy to the protectibility - or rather, West Publishing Co. v. Mead Data

I
Mo-poILzing the La- 7he Scope of Copynght Protection for Law Reports
Compilations, 36 UCLA L. REV. 719 (1989) (with L.R. Patterson); and 7he Rise and Statutorj
RePOrter: An Instkutional Perspective on M42rshall ofthe Supreme Court
Court Ascendancy, 83 NUCH. L. REV. 1291 (1985).
H

2 COPYRIGHT LAW (2d ed. 1991, published by Matthew Bender

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& Co., Inc.).

cited anicies and the casebook, my other writings that have relevance to H.R. 4426 Besides the two
are: Viheaton v.
Peters: 7he Untold Story f the Early Reporters, 1985 YEARBOOK OF THE SUPREMIE
COURT
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HISTORICAL SOCIETY 35 (1986); Wheaton v. Peters: Its Importance to Institwional History and the
American Law of Copyright (address to American
Bar Association Section on General Practice and
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Supreme Court Historical Society, delivered July 5, 1986); 'Reach Out and Touch Someone':
Supreme Coun Hang Up on Copyilght Proteawn for 'White Pages' Directories?, 10 Should the
CENTER BRIEFCASE No. 2, at 6 (1991); and six entries in OXFORD COMPANION U. HOUS. L.
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SUPREME COURT OF THE UNrMD STATES (forthcoming) (subjects of entries: TO THE

Publications, Inc. v. Rural Telephone SerWce Copyright; Feist
Inc.; Alexander James Dallas; William Cranch;
Henry Wheaton, Richard Peters, Jr.).

HLC 00012034
 37

Central, InC.3 notwithstanding - the aQnprotectibility of volume and page numbers, as well as names,

numbers and citations, by which state and federal laws, regulations, judicial opinions or portions thereof

are, or ever have been, identified.

I should note that my opposition to such protection is the product simply of my desire to preserve

- and, after the termination of the Mead litigation, to reestablish - basic, important principles of

copyright law. My position on those principles, and on H.R. 4426, has been entirely uncompensated.

In fact, I have not been paid by anyone, other than my law school and my casebook publisher, for my

writings or for any other of my activities, relating to any subject whatsoever, since I entered teaching.

I am here today solely because you asked me to be.

THE BELL AND THE ISSUES

With respea to the term of H.R. 4426 itself, let me say that I am not a legislative draftsperson.

I have no panicularly consequential criticisms of the mechanics of the bill as drafted,' although I will

he interested to hear what others may say on the subject. If I had myself drafted a proposed arnendment

for attachment as an appendix to an article - which, light of current interest in these issues, I probably

should have done! - I would have wished to broaden what is subsection (a)(1) of H.R. 4426 to include

most works produced by state goveminent officials.'

616 F. Supp. 1571 (D. Minn. 1985) (grant of preliminary injunction on copyright issue), afd, 799
H

F.2d 1219 (gth Cir. 1986)-, cert. denied, 479 U.S. 1070 (1987) (hereinafter "Mead").
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4
1 might, for exampie, wish the reference to "state and federal laws" in proposed subsection
105(a)(2) to be conformed to the reference to "state DI federal laws" in subsection 105(a)(3), but the
er

matter is not one of enormous concem.

La

I For discussion of the histDry of § 105 and its failure to cover "works of state govemments," see

Monopolizing the Law, 36 UCLA L. Rev. at 751-757. My position is that other provisions of the 1976
Act, particularly §§ 102 and 103, largely overcome this deficiency in § 105. But then, my reading of
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§§ 102 and 103 - a reading I share with many other scholars in this field - would have precluded the
decisions in the Mead case. Prudence dictues that matters on which Congress has a firm intention not
be left to speculation by the courts.

HLC 00012035
 38

I might also have given serious consideration to addressing the problems created by the Mead case

in § 103(b), where the reasoning of those opinions might seem to suggest. But I am fully prepared to

accept the argument that, given the sui generis characteristics ofjudicial reports, statutory compilations

and the like, an ainendment protecting such works from claims of private ownership "feels" most at home

in § 105.

Ilose observations aside, I ain here, really, to speak to the issues which H.R. 4426, as written,

addresses.

As you know, the bfll adds language to the existing provisions of § 105. Setting aside as

unimportant to the central issues here the new language in subsection (b),' the "guts" of the matter to

be added by H.R. 4426 is the language in new subseaions 105(a)(2) and 105(a)(3), which wfll, in effect,

overrule Mead.

'Mose core provisions of the bill - subsections 105(a)(2) and 105(a)(3) - correctly treat two

different sets of subject matter in a consistent manner. Subsection 105(a)(2) would deny copyright

protection to "any name, number, or citation" which identifies, or in the past has identified, "the text of

state and federal laws or regulations." Subsection 105(a)(3) would deny such protection to identifying

.volume or page number[s]" of"state or federal laws, regulations, judicial opinions, or portions thereof."

But for the Eighth Circuit's 2-1 decision in Mead, I doubt that anyone could seriously urge that

identifying matter of the sort targeted by H.R. 4426 is or rould be protected by copyright law.'
H
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'
er

Subsection (b) preserves, notwithstanding what would be newly added matter in subsection (a),
any right of any state to charge reasonable fees for services incidental to making available, as part of
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the public domain, laws, regulations, or judicial opinions."

' I have no doubt, on the other hand, that truly original matter contributed by legal publishers to
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their compilations - fbr example, 'key numbers" in judicial reports and substantive annotations to
statutory compilations - are and should be protected, assuming that they satisfy copyright law's quantwn
requirement and are not barred from protection by reasons of public policy.

HLC 00012036
 39

Indeed, if the bill were to be tumed inside out and enacted, so that Congress now purported to

secur copyright protection for page numbers of judiciai reports or section numbers of statutory

compilations, I think the legislation clearly would contradict existing provisions of the Copyright Act,

exceed the powers vested in Congress by the Copyright Clause of the Constitution, and run afoul of the

Supreme Court's strong and unaniinous decision last Term in Feist Publications, Inc. v. Rural Telephone

Service Company, Inc.'

Unhappily, the Mead case - which, in my view, did nothing more or less than accord the

protection of U.S. copyright law to the page numbers of one legal publisher's volumes of reports of

concededly public domain judicial opinions in derogation of the rights both of competitors and of the

people of the United States - is not dead. Nor can its influence be killed off without passage of H.R.

4426, or something very much like it.

Here is why. The Eighth Circuit's split decision in Mead itself is now beyond review. Ilat

opinion concemed oidy the District Court's grant of a preliminary injunction. Tle Supreme Court,

perhaps expecting to see the case at a later stage (that is, after the development of the facts at trial and

after further decisions by the District and Circuit Courts), denied certiorari. After the hearing of

evidence at the trial, however, the parties setded the matter, precluding any possibility of High Court

correction.

Tlius, Mead provided judicial blessing for the principle that the identifybg matter of public
H

domain documents - where to locate cases or statutes, fbr example - can be owned by a private
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publisher.
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Attempts to undo Mead in the courts have fafled, and wdl fail. 'Me West Publishing Company
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is an able litigator. If it decides on a "preemptive strike," it sues competitors asserting the right to use

"its" identifying matter - that is, the matter for which it claims protection by virtue of the Mead case -
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I
I I I S. Ct. 1282 (199 1).

HLC 00012037
 40

in the federal trial court for the District of Minnesota,* the very jurisdiction in which it filed and won

in Mead. For quite proper reasons, West's likelihood of success in that court, or anywhere in the Eighth

Circuit, is very high."

If, however, West is sued elsewhere by a potential competitor seeking to employ in its own works

the identifying matter in which West claims ownership, West can in all likelihood get the case trarisferred

to the District of Minnesota." Again, West's chances there are good.

If, finally, suit is brought not by a commercial rival but by a political jurisdiction attempting to

establish, for example, that section numbers of state statutes are "owned" by the people of the state, if

anyone, and not by any private proprietary interest, the likely reply of the courts is that the case must

he dismissed because no "actual controversy" exists between West and the political jurisdiction itself.

That scenario already has played out in my own state of Texas, where the Attorney General

unsuccessfully challenged West's claimed monopoly of the chapter and section numbers in the statutory

compilation published by West." (Not roincidentally, in both Texas and Illinois, the state legislatures

'See, e.g., West Publishing Co. v. ROM Publishers, Inc., No. 4-88-803 (D. Minn. filed Sep. 16,
1988) (copyright and noncopyright claims against publisher seeking to provide judicial opinions in CD-
ROM forinat). The case eventually settled.
H

" Quite apart from the precedential effect of Mead within the Circuit, West may, of course, be fully
entitled to prevail on a theory -- copyright or noncopyright - other than its claimed ownership of the
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identifying matter which is the subject of H.R. 4426.

" See, e.g., Bancroft-Whitney Co. v. West Publishing Co., No. 3-85-2541 (N.D. Tex. filed Dec.
er

16, 1985), transfeffed to the District of Minnesota as Bancroft-Whitney Co. v. West Publishing Co., No.
4-86-473 (D. Minn. by Opinion and Order filed May 7, 1986) (declaratory judgment action re West's
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claims of copyright in annotated compilations of Texas statutes). Like the ROM case, this one settled
short of any decision on the merits.
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" See, e.g., State of Texas v. West Publishing Co., 882 F.2d 171 (5th Cir. 1989) (declaratory
judgment action re West's claims to ownership of chapter and section numbers of Texas statutes).

HLC 00012038
 41

have been unable, in the face of threatened litigation by West, to muster the votes necessary to declare

Lhat such identifying matter is part of the public dornain.)"

Accordingly, the situation which the Subcommittee conftonts is, in certain respects, not unlike

the judiciary's overextension of state govermnent sovereign immunity tO SUitS fOT COpyright infringement,

which Congress ultimately had to undo in the Copyright Remedy Clarification Act of 1990. But the

unwarranted extension of copyright protection created by the Mead case is, in other respem, an even

worse problem, because there is no realistic prospect that subsequent judicial decisions wfll create a split

in the Circuits, or that the matter will otherwise be brought to the Supreme Court for its scrutiny.

In short, the effor in Mead is unlikely to be coffected by the courts. It must be corrected, if at

all, by Congress.

My conclusion that the Mead courts erred, however, depends on analysis which I have set forth

voluminously in my writings (of which the Subcommittee has copies), but which I have not yet addressed

here this morriing.

Let me turn, then, to discussion of what I think are the two key issues that confront you in

deciding whether to recommend passage of H.R. 4426:

(1) Are page and section numbers, etc., which identify laws, reguiations, judicial reports,

and portions thereof, proteWble at all under standard principles of copyright law? (My

answer is "no.")
H

(2) Even if s=h identifying matter were otherwise protectible, should protection be withheld
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by in order to enhance access to the public domain documents, e.g., opinion

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of the courts or statutes enacted by legislative bodies like Congress, to whose loration

the identifying matter refers? (My answer is "yes.*)

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See Monopolizing the Law, 36 UCLA L. Rev. at 725 n. 16.

HLC 00012039
 42

NONPROTECnBILITY

On the issue of nonprotectibility, let me speak initially to fundainental principles of American

copyright law as established by the Copyright Clause of the Constitution and the Copyright Act of 1976

(as amended), and then to the source of the error into which I believe the Mead courts fell. In both

efforts, I will refer liberally to Monopolizing the Law", the article I coauthored with Prof. Ray Patterson

of Georgia, and to Feist v. Rural Telephone," which cites Monopolizing the Law six times - favorably,

I am relieved to report - and generously conunends its authors as "fileading scholars." Whether or not

that assessment is coffect, its source lends support, I hope, to the views you are about to hear.

I should note that, in what follows, I will urge that the two types of identifying matter specified

in subsections (a)(2) and (a)(3) of H.R. 4426 should be treated in exactly the same way - that is, be

denied protection. In my view, while the two types of identif*g matter are different in ways that can

be described and discussed, their differences do not amount to a distinction ofsignificance when measured

against copyright law's fundamental principles.

T'he Coristitution"

As you are well aware, the Copyright Clause empowers Congress "To Promote the Proeress of

Science . . . by securing for limited Times, to Authors . . . , the exclusive Right to their Writings . . ."

T'hus, while providing for incentives to encourage the creation of protectible matter as a means to Lheir

end, the dominant purpose of the Framers was to promote such creation s to enhance ipublic welfar .
H

I will spare you citation-m the array of cases - Mazer v. Stein and the like - to which you must be
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referred every time someope like me comes up here. The principle which I have just stated is widely
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accepted and not open to serious debate.

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14 36 UCLA L. REV. 719 (1989),

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11
111 S.Ct. 1282 (1991).

16 See generally Monopolizing the Law, 36 UCLA L. REV. at 781-814.

HLC 00012040
 43

implementation of what I have described as the dominant purpose of the Copyright Clause

requires due attwtion by Congress and the courts to the delicate balance which exists between the

provision of incentives - i.e., the copyright monopoly - to creators, on the one hand, and the public

domain, on the other.

Ile Copyright Clause itself provides three means by which this balance is preserved:

(1) ". . . for limited Times . . . " Even if the prerequisites of fixation and originality (see

immediately below) are satisfied, even a work protected in all of its component aspects

eventually passes into the public domain because the copyright monopoly, by

constitutional command, is of limited duration.

" * Even if a work satisfies the prerequisite of originality, it
(2) . . . their Writings . . .

must nonetheless, again by command of the Constitution, b-e denied copyright unless it

is, to use the words of the present statute, 'fixed in a tangible medium of expression."
"
(3)
*
. . . to Authors . . -
Finally, and most importantly, no work - and no part of any

work otherwise protectible - is entided to the protection of U.S. copyright law unless

it is 'Author[edl." To satisfy this test, the matter sought to be protected "must be

original to the author," meaning that it "was independently created by* him or her and

"Ossesses at least some minimal degree of creadvity."" As with lin-dted duration and

the fixation requirement, authorship is not a consideration that can be ignored or

H
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Feist, I I I S.Ct. at L287. An author is *he to whom anything owes its origin; originator; maker."
Id., I I I S.Ct. at 1288, quoting Burrow-Gdes Lithographic Co. v. Sarony, I I I U.S. 53, 58 (1884).
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Thus, "'the one pervading prerequisite to copyright protection regardless of the fbrm of the work' is the
requirement of originality - that the work be the original product of the [author]," L. Badin & Son, Inc.
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v. Snyder, 536 F.2d 486, 489-490 (2d Cir.) (quoting M. Nimmer, Nimmer on Copyright § 10 (1975)),
cert. denied, 429 U.S. 957 (1976); and a work entided to copyright protection must contain something
.recognizably '[the author's) own,'" Alfred Bell & Co. v. Cataida Fine Arts, Inc., 191 F.2d 99, 106 (2d
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Cir. 1951) (citing Chamberlin v. Uris Sales Corp., 150 F.2d 512 (2d Cir. 1945), and arising from the
.singularity" of the author's "unique ... personal reaction" to his or her subject. Bleistein v. Donaldson
Lithographing Co., 188 U.S. 239, 250 (1903).

HLC 00012041
 44

dispensed with by Congress or the courLs. 'ne originality requirement," as the Supreme

Court reminded Lis all in Feist, "is ronstitutionally mandated . . .

""

West Publishing v. Mead Data Central is bad law, and requires coffection by Congress, because

it fails to apply the constitutional requirement of authorship as implemented by the Copyright Act of

1976.

Tlte CoMight Act

Under § 102(a) of the Act, *[clopyright proWion subsists . . . in ori.inal works of authorship-
(emphasis added), and only in such works. Under § 103(a), "[tjhe subject matter of copyright as
speciried by section 102 includes compilations . . ." Tlius, by statute as well as constitutional mandate,
compilations are subject to the authorship (or originality) Tequirement.11

Moreover, § 102(b) of the Act denies copyright protection to any aspect of a work which,

although otherwise original and subject to copyright, embodies an "idea, procedure, process, system,

[etc.].` ne Act thereby codifies the "idea/expression" dicbotomy first recognized in Baker v.

Selden2' and vigorously reaffirmed as the "fact/expression* dichotomy in Feisr, and its corollary, the

" I I I S.Ct. at 1288, quoting Monopolizing the Law, 36 UCLA L. REV.

at 763 n. 155 (emphasis
in original and retained by the Court).
H

" For an extended 17scussion of §§ 102(a) and 103(a), see Monopolizing the Law, 36 UCLA L.
REV. at 757-767.
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Section 102(b) receives detailed consideration in Monopolizing the Law, 36 UCLA L. REV. at
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767-773.
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21
101 U.S. 99 (1879) (no protection for blank fornm expressing or embodying copyright claimant's
idea of presenting certain accounting data at a glance on a single page or facing pages). The basic point
of the idea/expression dichotomy is that copyright protem the expression of an idea but not the idea
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itself.
11
111 S.Ct. at 1288-1290.

10

HLC 00012042
 45

. merger" doctrine, as illustrated by such later decisions as Morrissey v. Proaer & Gamble Co.,' and

Kern River Gas Trwumission Co. v. Coastal Corp.'

'Mese provisions ofthe CopyrightAct give statutoryflesh to the constitutional principle expressed

by the Supreme Court in Feist:

The mere fact that a work is copyrighted does not mean that every element of the work may be

protected. Originality remains the s*na qua no of copyright; accordingly, copyright protection

may extend only to those components of a work that are original to the authon'

If, as Feist riotes, "fnio one may claiin originality as to facts,' it follows that a work which otherwise

is protectible - a work, indeed, which has a valid, subsisting copyright - may yet contain matter, notably

facts, which themselves are not the subject of the copyright's protection,21

Application to 1dentifying matter* On H.R- 442

The situation just described is, I think, precisely the sibiWou of the identifying matter to which

H.R. 4426 would deny protedion.

" 379 F.2d 675 (ist Cir. 1967) (no protection fbr one of only a 'mere handful" of ways in which
the idea of a particular sweepstakes rule could be expressed). Ile point of the merger doctrine is this:
where there exist only a very limited number of ways of expressing an idea - with the result that
protecting the claimant's expression (and, subsequently, the handfid of remaining possible expressions
created by other claima ts) would establish monopoly or oligopoly ownership of the idea from which the
various expressions are, as a practical matter, inseparable - the idea and its expression merge and
protection must be denied to both. In my view, Baker v. Selden is itself an Hlusu-Aon of the merger
H

doctrine in action.
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21
899 F.2d 1458, cert. denied, I I I S.Ct. 374 (5th Cir. 1990) (no protection fbr features of map
showing only plausible location for pipeline in difficult terrain).
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21
11] S.D. at 1299, citing Monopolizing the Law, 36 UCLA L. REV. at 1299, and Ginsburg,
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Creation and CommercW Value: Copyright Protectionfor Works oflnfonnation, 90 COLUM. L. REV.
1865, 1868, and n.12 (1990).
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26
111 S. Ct. at 1288, citing M. Nimmer & D. Niwmer, COPYRIGHT § 2. 11 [A], at 2-157.

I See aiso the discussion of § 103(b) of the Copyright Act in MonopoILzing the Law, 36 UCLA L.
REV. at 773-777.

II

HLC 00012043
 46

This is obviously so with respect to the identifying matter which wOuld be the subject of new

subsection 105(a)(3): "any volume or page number by which state or federal laws, regulations, judicial

opinions, or portions thereof, are, or ever have bftn, identified."

'Me judicial reports considered in Mead itself provide a perfect example. West sued Mead

because Mead had announced its intention to provide, in LEXIS, star pagination (or "jump cites") based

in part on West's National Reporter Systein volumes. Specifically, Mead sought to apprise its subscribers

of the location of certain public domain matter - i.e., words contained in judicial opinions - within the

reports published by West.

I assume, without seeing any need to elaborate on the point, that West's reporEs were the subjects

of valid, subsisting copyrights. But what exacdy did Mead seek to use from those reports? Ile short

answer is: "identifying matter.* Which leads to the next question, nainely: on what basis can such

identifying matter - not any of the reports as a whole, but this particular component of the work - be

protected under the 1976 Act? 'Tbe short answer is: "It can't be.'

Take page numbers.' Ile locatio of public domain matter within West's reports is a _fW.
Pagination, by iLs nature, is systematic if not mechanical." There is no :iJ&A being expressed when West

locates a particular case - or, stfll more clearly, language within a particular case - on page I or page

I I or page I I I of any National Reporter System voittme.

To say, as the Court of Appeals majority did in Mead, that what is being protected is an
H

arrangemen is to engage-in factual and legal fictions.' (To speculate further, as the Mead majority did,
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' Pagination of judicial reports is discussed specifically in Monopolizing the Law, 36 UCLA L.
REV. at 764-765, 769-772.
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' Cf. Toro Co. v. R&R Products Co., 787 F.2d 1208 (8th Cir. 1986) (no copyright protection for
professional lawn care machine replacement part numbers).
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West's arrangement of cases also is discussed in Monopolizing the Law, 36 UCLA L. REV. at
765-767, 769-772.

12

HLC 00012044
 47

that LEXIS users would infringe West's copyrighted an-4ngement in a volume of reports by utdizing

LEXIS's LEXSEE feature to determine the sequence of all the casm - thereby, presumably, making

Mead Data CentrW a contributory infringer - pushes the fiction to fancifid extremes.)"

I have reviewed the Circuit and District Court opinions in Mead with care, and I read the

transcripts of the subsequent trial at the time in connection with preparing my article. In my view, West

exercises dtmiaimia creativity in arranging the cases within its National Reporter System volumes - as

well as de Minimi creativity in selecting them.

Without the 'dispiay [ofl some minomal level of creativity,"' a compflation of preexisting works

- all of which, in the instance ofjudicial reports and statutory compilations, are public domain matter

themselves - fails the 1976 Act's authorship requirement under § 103(a) as delineated by Feist."

3' See Monopolizing the Law, 36 UCLA L. REV. at 766 n. 166.

'2 Feist, I I I S.Ct. at 1294.

" See I I I S.Ct. at 1292-1295. Section 103(a) describes a copyrightable compilation as consisting
of the combinatio of three eletnents:
A "compilation" is a work formed by (11 the collection and assembling of preexisting
materials or of data [2) that are selected, cDordinated or arranged [31 in such a way that the
resulting work as a whole constitutes an original work of authorship.
17 U.S.C. § 101 (definition of "compilation*) (bracketed nWnerals added).
'Me statute requires that the three elements cited above be considered coniunctivel . Obviously,
H

no copyright would arise if Qniy the first or third prongs of the test were satisfied: collecting and
assembling materials isMere unprotectible labor, whUe prodticing a work original to the copyright
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clairrmt (and not, to state the altemative, the work of another) is simply the avoidance of copying.
Thus, the key to protection fbr compilations is the second prong of the definition: selecting,
er

coordinating or an-anging the data or preexisting material. If the compiler exercises judgment in deciding
which items to take from a given universe of data, see, e.g., Eckes v. Card Prices Update, 736 F.2d 859
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(2d Cir. 1994) (selection and categorization of baseball cards for inclusion in guide fbr colleaors), or
provides a distinctive sequence for the presentation of preexisting matter chosen for inclusion in the
compilation (one can imagine, fbr example, an anthology of country-and-westem lamenm coordinated or
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arranged to illustrate the many wayS in which the marriage alliances in such opuses seem to come
unglued), the requirement of authorship is satisfied.
In my view, the copyright claimants in both Feist ad Mead, when subjected to this statutory test,
flunk.

13

HLC 00012045
 48

if the pM numbers of West's National Reporter System volumes are not protectible, what of the

numbers of the volumes themselvo - which would also, under H.R. 4426, be denied copyright?

Here, the result is, if anydiing, more clear. Listen to the Mead majority's discussion of the

process by which West selem and arranges cases for inclusion in the National Reporter System series:

West publishes opinions not from just one rourt, but from every state and all the federal

courts in the United States. As it collects those opinions, West separates the de-cisions of state

courts from federal-court decisions. West further divides the federal opinions and the state

opinions and then assigns them to the appropriate West reporter series. State court decisions are

divided by geographic region and assigned to West's corresponding regional reporter. Federal

decisions are first divided by the level of the court they come from into district court decisions,

court of appeals decisions, and Supreme Court decisions; Court of Claims and mUitary court

decisions are also separated out. Before being assigned to a reporter, district court decisions are

subdivided according to subject matter into bankruptcy decisions, federal rules decisions, and

decisions on other topics.3'

It is difficult to imagine any activity more clearly nonprotectible under § 102(b) - the 1976 Act's

codification of the idea/expression dichotomy - than the activity described by the Mead majority:

separating federal cases from state cases, dividing federal cases ainong the various types and levels of

federal courts, allocating state cases to different series of reports based on geographic regions (the specific
H

composition of which surely is subject to a "mere handM' of possible variations, to recall the merger
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doctrine), and so on.' .

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799 F.2d at 1226.

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Obviously, within individual volumes, the "arrangement" of, for example, federal appellate
decisions among the various Circuit denominatioris suffers from the saine § 102(b) problems.

14

HLC 00012046
 49

So much for discussion of the identifying matter which would be the subject of new subsection

105(a)(3).

New subsection 105(a)(2) simflarly would deny copyright protection to "any name, number, or

citation by which the text of state and federal laws or regulations are, or ever have been, identified."

As noted earlier, the fundainental principles and statutory provisioas applicable here are the same

as for the page and volumes numbers whieb are the concem of subsection 105(a)(2)'s companion

provision.

The problem is exemplified by the legal purgatory - not limbo, but purgatory - in which the

chapter and section numbers of Texas's compfled statutes now exist. Since 1925, West has performed

the (quite prosaic) function of numbering statutes not officially numbered by the Legislature - session

laws, in other words - for inclusion in Vemon's, the statutory compilation published by West.

In essence, West claims that it has "created," and therefore "owns,' those chapter and section

numbers. The Texas Attomey General has asserted that, in compUing and printing session laws under

contract witli the state govenunent, West "has been operating as an agent of the State of Texas and

[therefore lacks] any independent copyrightable interest in the statutory citations," cf. 17 U.S.C. § 201 (b),

and that the chapter and section numbers generated by West have become so intertwined with r-hapter and

section numbers jenerated by the State as to "ma[k]e it iinpossible ibr any legislator, judge, lawyer or

other citizen" to obtain "sensible access to Texas law" if West's copyright claims are recognized.'
H

I agree" - and believe that such arguments would provide compelling policy justifications even
yp

if "West's" chapter and sWion numbers otherwise qualified for copyrigbt protection. But they do not.
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' Letter ftm Tex. Att'y Gen. Jim Mattox to State Rep. James H. Hury, Jr., reprinted in LEXIS
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Stwes Library, Txag file (May 15, 1987).

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17 You know from my remarks earlier this morning, however, that neither the State of Texas nor
Bancroft-Whitney, a private legal publisher desiring to produce a statutory compflation to compete with
Vemon's, has succeeded in persuading the courts to declare West's claimed protection for *its" chapter
and section numbers invalid.

15

HLC 00012047
 50

In § 103(a) terms, West (I hope) exercises no "selectivity" in determining which Texas laws to compile.

And when the Legislature enacts a new provision conceming pretermitted heirs, how much "creativity,"

"originality' or 'authorship' can West exercise in determining where to place that provision within the

existing statutory arrangement? Clearly, its choices are limited within a relatively small range - indeed,

to a "mere handful' of choices.

In short, such efforts again fail the constitutionally mandated requirement of authorship: they are

de minimus, or, if not, offend the idea/expression dichotomy and the doctrine of merger.

Accordingly, I urge that you enact proposed subsection 105(a)(2) for the very saine reasons which

counsel enactment of new subsection 105(a)(3). Neither type of identifying matter, in my judgment,

is - or, the Mead case notwithstanding, should be - protectible under the most faniiliar doctrines of

American copyright law.'

The source of the Eighth Circuit's error in

Given the strength of my conviction that West Publishing v. Mead Data Cewal was wrongly

decided and flagrandy so, I believe I should address how the Court of Appeals' majority could have fallen

into such error.

" The professor in me requires adding one small clarifying point before proceeding. West has, from
H

time to time (and, I presu-me, as a litigation tactic), indicated a willingness to condone certain citations
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to the identifying matter in which it claims protection - e.g., citation to the first page of a case in a
National Reporter System volume, but not citation to language on any "interior" page of that case by an
attomey using LEXIS to write a brief - as "fair use."
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As the struc'ture of Chapter I of the Copyright Act makes clear, the § 107 fair use privilege is
available to a defendant ordy if he/she/it has committed a Rrima faci infringement of a § 106 exclusive
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right - and the existence of such a right tums largely on whether the matter sought to be reproduced,
adapted, etc., by the defendant is protected by the plaintiffs copyright.
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As applied to the issues before the Subcommittee, this statutory srheme means that, if West has
no copyright protection for a page number or other matter, even though the remainder of its
volume ofjudicial reports (or other work) is protected by a copyright, West's gracious offer of limited
"fair use" is like offering the supposed potential infringer the sleeve from West's vest.

16

HLC 00012048
 51

I have discussed this question in a short article tided 'Reach Out and Touch Sonteone": Should

the Supreme CourT Hang Up on Copyright Protection for *W*e Pages' Directories?,, of which the

Subcommittee has been provided copies. Fortuitously, the article - predicting the outcome in Feist and

comparing that case to Mead - appeared on the very same day as the Supreme Court's decision in Feist

itself. Fortunately, I got the call right, as you will see if you read the piece.

My point in "Reach Out and Touch SLvneone' is that the Eighth Circuit majority got Mead wrong

because it "experienced" the case, and decided it as if it were, a classic *sweat of the brow" case - a case

in which, in other words, the putative author's industrious collection of materials, and its concomitant

expenditurt- of resources, was deemed by some courts, prior to Feist, to justify an award of ropyright

protection even in the absence of creative expression or true authorship.

Tte Mead majority, to be sure, did riot explicitly found its decision on "sweat of the brow."

Rather it spoke in terms ofthe protectibility ofWest's arrangements - and hence, derivatively, of its page

numbers - in the vocabulary of § 103(a).

In this statement, however, I have consistently referred to the Circuit Court and District Court

opinions in Mead because I believe that the analysis and rhetoric of the lower court opinion influenced

the Eighth Circuit majority.

T'he complaint in Mead contained ten counts of unfair competition and only one of copyright

infringement. Relying only on the infringement claim, the District Court granted West the preliminary
H

injunction which becarne Me basis for all later proceedings. Ile unfair competition claims, however, also
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had their effect. AlthougiL the court granted the injunction on the ground of infringement, it obviously
er

concluded that LE)aS's plan to star-paginate to West's reports would require Mead to engage in unfair
La

competitive practices.
w

10 U. HOUS. L. CENTER BRIEFCASE No. 2, at 6 (1991).

17

HLC 00012049
 52

Tle result is a classic case of consequentialist reasoning: in substance, the court concluded not

that West was hanned because it had copyright protection, but that it had copyright protection because

it was harmed, "Tliere can be little doubt," said the opinion ordering the preliminary injunction, "that

MDC's fMead Data Central's] incorporation of West's page numbers into the LEXIS reports database

will supersede a substantial use of West's hard bound volumes of reporters . . . and supplant the need

for West's National Reporter System publications . . ."' Ile premise - that West's copyrights protect

the arrangement and pagination of its reports - deterniined the conclusion: "the public need for access

to the law, which is currently embodied in West's publications, should [not] reduce or eliminate West's

exclusive rights in its material.""

ln the Court of Appeals, over a forceful and thorough dissent," the majority affirtned the

District Court's grant of the preliminary injunction. Like the lower court, the Eighth Circuit treated the

case as one of unfair competition in the guise of copyright infringement. Access to West's intemal page

citations, the majority observed, "would give users of LE)US a large part of what West has spent to much

labor and industa cornpiline, and pro tanto reduce anyone's need to buy West's books."' LEXIS star

pagination "would adversely affect West's market position."" Ila "key" to the case, then, "fwa]s not

' 616 F. Supp. at 1581. Elsewhere, in a tone of similar alarm, the court suggested that, with the
implementation of LEXIS star pagination, LEXIS users would "never again need to purchase West's
books in the marketplace . . ." Id. at 1579. Or again (but more sweepingly), "MDC's star pagination
H

may do away with the nQ for West's reporters . . ." Id. at 1582-1583.
yp

" 616 F. Supp. at 15S3. MDC had argued that its intended star pagination "would give judges,
lawyers and citizens freer access to the entire body of the law." Id.
er

I The dissent, by Oliver, J., relied in part on an article which I published in two fora, but which
La

is now most readily avaUable as 7he Rise ofthe Supreme Court Reporier: An Institutional Perspective on
Marshall Court Ascendancy, 83 MICH. L. REV. 1291 (1985).
w

799 F.2d at 1227 (emphasis added).

Id.

18

HLC 00012050
 53

whether [West's page] numbers (welre copyrightable, but whether the copyright on the books as a whole

[would be] infiinged by the unauthorized amproation of these particular numbers."

T"ne Mead majority, as we know, found a basis for denying MDC access to the page numbers

of West's voiume by discerning a protectible interest, which star pagination would infringe, in West's

arranffement of cases, rather than explicitly on unfWr compedtion or "sweat of the brow" grounds.

Even in justifying its arrangement ratiorWe, however, the Mead majority coWd not escape, at

least at a hidden level of which it was surely not aware, the reality that what was being protected was not

West's creativity but its investmeiit. For the court cited" as the lead precedent for its analysis the

earlier Eighth Circuit decision in Hutchinson Telephone Co. v. Fronteer Directory Co.' - an opinion,

as the dissent pointed out, preraised explicidy on Leon v. Pacific Telephone and Telegraph Co_' the

now discredited granddaddy of all directory compflation cases which the Feist Court has repudiated by

name."

The long and short of my view of Mead, then, is that the majority there unwittingly protected

West's industrious collection of cases. The Supreme Court offered a succinct answer in giving that

theory its quietus in Feist: "[Clopyright protects originality, not effort.""

Congress should now toss the last shovelfid of dirt on the grave.
H
yp

Id. at 1228 (emphasis added),

799 F.2d at 1223.

er

47 770 F.2d 128 (1995).

La

91 F.2d 494 (9th Cir. 1937).

w

III S.Ct. at 1291-1292.

I I I S.Ct. at 1297.

19

HLC 00012051
 54

ACCESS TO THE LAW

I come now to my last point. Ile issue, as I phrased it earlier, is this. Even if the identifying

matter targeted in H.R. 4426 were otherwise protectible, should protection be witliheld by Congress in

order to enhance access to the public domain documents to whose location the identifying matterrefers?

Clearly, the answer has to be yes.

Congress has no responsibility to accord copyright protection to all subjea matter within its

constitutional empowerinent. Even ifthe Copyright Clause permitted Congress to accord protection, say,

to the page numbers of West's Supreme Court Reporter, I would think it a positively bad idea for

Congress to do so.

For all of the reasons that Professor Patterson and I argued in Monopolizing the Law, I believe

that the people of the United States have an overriding interest in readier, cheaper, easier availability of

access to the law througli old and new technologies alike. Whether the medium is books, services like

LEXIS and Wesdaw, CD-ROMs or technology not yet developed, the American public benefits by

encouraging legal publishers to compete dirough innovation and service, rather than by relying on

spurious clainis to Congressional protection of page numbers and the like which identify where the law

is to be found.

I do not wish to belabor the point, because I think it is self-evident. The doctrine of West

Publishing v. Mead Data Central is bad copyright law at a technical level, grossly anticompetitive,"
H

and terrible public policy7-

yp
er

" The "real world' effect of the preliminary injunction in Mead was to buy West, the proprietor not
La

oidy of the National Reporter System but also of Wesdaw, 28 months to catch up with MDC's star
pagination technology in LEXIS and introduce its own equivalent in Wesdaw. By the time MDC was
forced to setde with West and pay over what the New York Times reported as "tens of millions of
w

dollars" to share in West's corporate monopoly over page numbers, the parties' rompetitive advantage
with respect to star pagination had been reversed. See Monopolizing the Law, 36 UCLA L. REV. at 722
n.6 and accompanying text.

20

HLC 00012052
 55

I mentioned to you earlier my longish article concetning the fLrst Supreme Court copyright case,

Wheaton v. Peters.' I recommend the article to you as a *good read," if you like A shorter

version of my views on the case appears in Monopolizing the Law.'

I have the fortune or misfbrtune to know (or have forgotten) more about Vlheaton v. Peters than

probably anyone else. You will recall that the case concerned a dispute between the 'Mird and Fourth

Reporters of the Supreme Court over the copyright in volumes of cases published by the former, an

admirable scholar and public servant nained Henry Wheaton.

To state the matter broadly, Wheaton had made the Musball Court's fame by reporting its

decisions fuliy, accurately and promptly after years of sometimes desultory efforts by earlier Reporters.

But Wheaton's reports, in large print, on fine-quality paper and so on, were relatively expensive.

Lawyers who wanted to purchase thein could not afford them. Access to the law, in other words, was

being impeded by Wheaton's claimad rwnopoly over the cases.

Enter Wheaton's successor, Richard Peters, a person of much lesser intellectual attaimnent and

less lofty motive. Peters began publishing condensed versions of Wheaton's reports (smalier type,

flimsier paper, etc.), making the cases contained in Wheaton's volumes more readfly accessible to judges,

lawyers, law libraries and simple citizens around the country.

Wheaton *sued. Apart from some highly technical but highly important issues conceming

WheatDn's compliance with the then-existing statutory formalities, the question was: Who owned the cases
H

in Wheaton's reports? -
yp
er
La

33 U.S. (8 Pet.) 591 (1834).

w

7he Rise of the Supreme Coun Reporter. An Insikutional Perspecnve on Marshall Couri
Ascendancy, 83 MICH. L. REV. 1291 (1985).

See 36 UCLA L. REV. at 731-734.

21

HLC 00012053
 56

Wheaton had collected the cases. In some instances, he had transcribed oral opinions, in

circumstances where the opinions might not otherwise have been preserved. He had assisted several of

the justices in thinking through the legal issues treated by the cases 4micularly on aspem of Continental

law, in which he was a renowned scholar). He even had written assignments perhaps improvidently

granted by several of the Justices.

So who owned the cases? Was it Wheaton? Was it the Justices? Or were they a part of the

public domain - indisputably works of authorship, but denied copyright status and owned, in effect, by

the people of the United States?

In the fmal paragraph of a length opinion reflecting furious disagreement on all other issues

before the Court, Justice McLean provided the answer:

It may be proper to remark that the court are unartimously of opinion, that no reporter

has or can have any copyright in the written opinions delivered by this court; and that the judges

hereof cannot confer on any reporter any such right.'

Wheaton, obviously, was the loser; Peters and the public, which had gained the right of access to judicial

opinions by more readily affordable meam, the winners.

Tlkc problem which you as members of the Subcommittee confront today is not urdike that which

faced the Supreme Court in Wheaton v. Peters in 1834. No one denies that the West Publishing

Company has been a generally benevolent monopolist; and it may be that West and any other legal
H

publishers similarly situated in the future wdl continue to be benevolent. Nor does anyone deny that
yp

West has invested large amounts of time, effort and capital in its publications.
er

But that is not the ground on which copyright is based.

On this matter, I think the ftnal word should be Justice O'Connor's wise observation in Feist:
La
w

-" 33 U.S. (8 Pet.) at 668.

22

HLC 00012054
 57

It may seem unfair that much of the fruit of the compiler's labor may be used by others

without compensation. As Justice Brennan has correctly observed, however, this is not Some

unforeseen byproduct of a statutory scheme." [Quoting Harper & Row, Publishers, Inc. v.

Nation Enterprises, 471 U.S. 539, 589 (1985 (dissenting opinion).] It is, rather, "the essence

of copyright," ibid., and a constitutional requirement....

. . . As this Court noted more than a century ago, "'great praise may be due to the

plaintiffs for their industry and enterprise . . . , yet the law does not contemplate their being

rewarded in this way [i.e., through copyright]." [Quoting Bakr v. Selden, 101 U.S. 99, 105

(1879).r

'rbarLk you. H
yp
er
La
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I I I S.Ct. at 1289-1290, 1297.

23

HLC 00012055
 58
Mr. HUGHEs. Professor Denicola, welcome.
STATEMENT OF ROBERT C. DENICOIA, MARGARET LARSON
PROFESSOR OF INTELLECTLJAL PROPERTY IAW, UNIVERSITY
OF NEBRASKA IAW SCHOOL
Mr. DENICOLA. Thank you. I'd like to thank the subcommittee for
the opportunity to comment on H.R. 4426. M name is Robert
Denicola. I am the Margaret Larson Professor WIntellectual Prop-
erty at the University of Nebraska College of Law.
The bill before the subcommittee apparently rests on the as-
sumption that copyright protection for rivately created compila-
tions of cases and statutes inhibits pubFic access to the law. I do
not believe that that assumption is correct.
I would like to begin by emphasizing the exceedingly narrow
scope of copyright protection accorded compilations of cases and
statutes under existing law. First, there is universal agreement
that no publisher can claim copyright in the text of either judicial
opinions or statutes. Everyone remains free to use sucb materials
in whatever way they wish, including the creation and sale of case
and statutory compilations.
Second, despite occasional claims to the contrary, no publisher,
to my knowledge, has ever claimed copyright in the citations that
identify the location of particular cases or statutes within a specific
compilation. Certainly no court has ever upbeld such a claim. Law-
yers, judges, members of the public, and even competing publishers
are free to use such citations to designate the location of a particu-
lar case or statute within a published compilation.
There is evidently some confusion concerning the holding in West
Publishing Co. v. Mead Data Central, the case to which H.R. 4426
apparently responds. The court in that case emphasized that West
was not claiming, and the court was not recognizing, copyright pro-
tection for case citations. The court was very clear wben it stated,
H

'Ve do not agree with MDC that West's claim here is simply one
yp

for copyrigbt in its page numbers. Instead, we concur witb the dis-
trict court's conclusion that West's arrangement is a copyrightable
er

aspect of its compilation of cases."

No copyright was recognized in the text of any judicial opinion,
La

nor in the citation that identifies the location ot- any particular
opinion or portion of an opinion. Copyright was recognized only in
w

the overall selection and arrangement of the opinions appearing in

West's Reporters. What kind of use by others would infringe the
copyright in the overall selection and arrangement of cases recog-
nized by the court in West v. Mead? Use of case reporters by a law-
yer quoting or citing case law on behalf of a client will not infringe
the copyright in the selection and arrangement of cases. Citation
to the compilation by an author writing about the law in an article
or treatise will not infringe. The only use that would infringe the
copyrighted selection and arrangement of cases is the publication
of a competing compilation that copies the overall selection and ar-
rangement of cases from the first compilation.
The dispute to which H.R. 4426 responds does not in any real
sense involve public access to the law. It is a commercial dispute
between a small number of publishers in the business of marketing
compilations of cases and statutes. The legal issues involved in the

HLC 00012056
 59
dispute, what counts as a work of authorship and when are the ex-
clusive rigbts in works of authorship infringed, are precisely the
questions that general principles of copyriqht law have been suc-
cessfu"y e solv''i* for ov- er 206 years, -
nothing- unique about
this partcular d's ute tha usti les or requi re s speclial legislation
of the k-nd present y before t e subcommittee
For more than t 0 centuri s co yright laws enactecd by Congress
have been pr emis ed 0n he t pnn lple that any sh0rt term benefits
re'suIting f om Jnre_s tr cted copyin g of wor ks of aut orsbip would
_ _
be outweighed by the long-te rm caused by the loss of eco-
nomic incentives necessary to ensure the continued production of
valuable works.
What would be the consequences of enacting H.R. 4426? In the
short run, permitting publisbers to copy the selection and arrange-
ment of cases and statutes that have been produced by others
might result in cheaper access to such materials, particularly on
the part of large law firms that rely on computer access. The long-
term consequences of the bill, however, are more troubling. I'm not
an economist, but it seems sensible to begin with the assumption
that if we reduce the economic incentives to produce a particular
kind of product, we will end up with less of that product rather
than more. I would be particularly concerned about the continued
viability of compilations of legal materials with limited markets,
perhaps inclucting materials from small States such as my own.
Eventually, however, even more popular works might be affected.
It has been argued that the dispute over copyrigbt in case and
statutory compilations is somebow unique because some courts re-
quire citations to the compilations produced by a particular pub-
lisher. First, let me again emphasize that the scope of copyright
protection that has been recognized in case and statutory compiia-
tions does not in any way interfere with the citation of those mate-
rials by lawyers in the practice of law. The argument is instead
H

that because of the existence of such rules of court, other publish-

yp

ers ougl-'i to be able to reproduce and sell the copyrighted compila-

tion in competition with the original producer.
er

I do not think that it is sound policy to conclude that because a

court requires lawyers to cite to a particular compilation, the pub-
La

lisher of that compilation should lose its copyright protection. If a

public school district requires all of its eighth grade students to
w

purchase a particular workbook because it's the most efficient

means of teaching some valuable skill, we would not conclude that
other publishers should, therefore, be free to reproduce the work-
book and sell it in competition with the author. If a State univer-
sity requires all of its engineering students to buy a particular com-
puter program, we would not say that eve other software manu-
facturer sbould be permitted to reproduce t7at program in order to
compete witb the copyrigbt owner.
More generally, 1 do not think that it is sound public policy to
say that we will grant copyrights in order to stimulate the produc-
tion of works of authorship, but if a particular work of autborship
becomes successful, we will take the copyright away. In my view,
there is nothing special or unique about the issue underlying H.R.
4426. It involves a commercial d *IS ute between those publishers
who create original compilations 7cases and statutes and those

HLC 00012057
 60
publishers who would like to improve their competitive position by
copying certain aspects of the other's copyrighted works.
My recommendation to the subcommittee is to leave this entire
dispute to be resolved under general principles of copyrigbt law al-
ready embodied by Congress in the 1976 Copyright Act. Thank you.
Mr. HUGHEs. Thank you, Professor Denicola.
[The prepared statement of Mr. Denicola follows:]

PuPARED STATEmENT oF ROBERT C. DENicoLk, MaGAM LARSON

PRoFEssoR oF INTELLEcTuAL PRoPERTY LAw, UNivERsrry OF
NEBRAsKA COLLEGE OF LAw

I would like to thank the SubcoTAmittee for the opportunity to

comment on H.R. 4426. My name is Robert Denicola. I am the
Margaret Larson Professor of Intellectual Property at the
University of Nebraska College of Law. I received my undergraduate
degree from Princeton University, iriagna cum laude, in 1971, my J.D.
degree, magna cum laud , from Harvard University in 1974, and an
LL.M degree from Harvard in 1976. 1 have taught copyright law for
16 years at the University of Nebraska and at the Cornell Law
School. I am the co-author of a casebook on copyright law that is
used each year in about twenty-five law schools throughout the
country. I have written a number of articles on copyright law, and
since 1986 1 have been one of the two Reporters for the American
H

Law Institute's forthcoming Restatement of the Law of Unfair

yp

Competition.
er
La

The bill before the Subcommittee apparently rests on the

assumption that copyright protection for privately-created
w

compilations of cases and statutes inhibits public access to the

law. I do not believe that such an assumption is accurate. I
would like to begin by emphasizing the exceedingly narrow scope of
copyright protection accorded case and statutory compilations under
existing law. First, there is universal agreement that no
publisher can claim copyright in the text of either judicial
opinions or statutes. More than one hundred and fifty years ago
I

HLC 00012058
 61

the Supreme court declared that copyright could not be claimed in

the opinions of the Court. Wheaton v. Peters, 33 U.S. 591, 668
(1834). The Supreme Court later reached the same conclusion with
respect to opinions issued by state cour.ts. Banks v. Manchester,
128 U.S. 244 (1888). The text of federal and state statutes are
similarly beyond the reach of any claim of copyright. see, e.g.,
Building officials & Code Adm. v. Code Technolocry. Inc., 628 F.2d
730 (ist Cir. 1980); Georgia v. Harrison Co., 548 F. Supp. 110
(N.D. Ga. 1982), vacated on gtipulation, 559 F. Supp. 37 (N.D. Ga.
1983). Everyone remains free to use such materials in whatever way
they wish, including the creation and sale of case and statutory
compilations. Second, despite occaSionai asserrions Lo Lne
contrary, no publisher to my knowledge has ever claimed copyright
in the citations that identify the location of particular cases or
statutes within a specific compilation. Certainly no court has
ever upheld such a claim. Lawyers, judges, members of the public,
and even competing publishing companies are free to use such
citations to designate the location of a particular case or statute
within a published compilation. This includes the use of so-called
jump citations that identify the page within an opinion on which
H

a particular portion of text appears.

yp
er

There is evidently some confusion concerning the holding in

West Publishing Co. v. Mead Data Central, Inc., 799 F.2d 1219 (8th
La

Cir. 1986), cert. denie , 479 U.S. 1070 (1987), the case to which
w

H.R. 4426 apparently responds. The court in that case emphasized

2

65-153 0 - 93 - 3

HLC 00012059
 62

that West was not claiming, and the court was not recognizing,
copyright protection for case citations. The court was very clear
when it stated:

We do not agree with MDC that Westfs claim here is simply one
for copyright in its page numbers. instead, we concur with
the District Court's conclusion that West's arrangement is a
copyrightable aspect of its compilation of cases *** .

No copyright was recognized in the text of any judicial opinion,

nor in the citation that identifies the location of any particular
opinion or portion of an opinion. Copyright protection was
recognized only in the overall selection and arrangement of the
opinions appearing in West's reporters. This narrow scope of
protection for compilations of public domain materials is mandated
by the 1976 Copyright Act, which limits copyright in compilations
to the original contributions made by the author of the
compilation. 17 U.S.C. § 103(b).

What kind of use by others would infringe the copyright in

the overall selection and arrangement of cases recognized by the
H

court in Use of case reporters by a lawyer quoting

yp

or citing case law on behalf of a client will not infringe the

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copyright in the selection and arrangement of cases. Citation to

La

the compilation by an author writing about the law in an article

or treatise will not infringe. The only use that would involve an
w

HLC 00012060
 63

infringement of the protected selection and arrangement of cases

is the publication of a competing compilation of cases that copies
the overall selection and arrangement of cases from the first
compilation. The dispute to which H.R. 4426 responds does not in
any real sense involve public access to the law. It is a
commercial dispute between a small number of publishers in the
business of marketing compilations of cases and statutes. The
legal issues involved in the dispute -- what counts as a work of
authorship, and when are the exclusive rights in a work of
authorship infringed -- are precisely the questions that general
principles of copyright law have been resolving successfully for
over 200 years. There is nothing unique about this particular
dispute that justifies or requires special legislation of the kind
presently before the Subcommittee.

The Supreme court has recently issued a significant opinion

dealing with copyright protection for compilations. in Feist
Publications, Inc.. v. Rural Telephone Service Co., ill Sup. Ct.
1282 (1991), the Court rejected the conclusion reached by a number
of lower courts and held that the preparation of a white pages
H

telephone directory did not involve sufficient creativity to merit

yp

copyright protection. At the same time, however, the Court

emphasized that 11(t]he requisite level of creativity is extremely
er

low; even a slight amount will suffice." In my view, the

La

creativity involved in selecting and arranging the cases included

w

in West's case reporters as described in the opinion in West v.

4

HLC 00012061
 64

Mead is quantitatively and qualitatively greater than that involved

in alphabetizing names in the white pages of a telephone book. The
court in West concluded that the arrangement of cases "is the
result of considerable labor, talent, and judgement." 799 F.2d at
1226. Indeed, the Supreme Court itself had earlier indicated that
copyright in a compilation of case reports would extend to "the
order of arrangement of the cases, the division of the reports into
volumes, the numbering and paging of the volumes *** .11 Callaghan
v. Myers, 128 U.S. 617, 649 (1888). The ultimate consequences of
the Feist decision on the protection of compilations, however,
remain uncertain. The federal courts will likely spend the next
several years resolving both the statutory and constitutional
implications of the Supreme Court's decision. This does not seem
to be an opportune time for legislation creating a special, and in
my view unjustified, exception to the general principles governing
copyright protection for compilations.

I have read that a section of the American Bar Association

has come out in favor of restricting copyright in case and
statutory compilations. It is perhaps not surprising that some
groups of lawyers would support legislation that in the short run
H

might reduce the cost of such materials. That does not distincluish
yp

this situation, however, from any other involving copyright in

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works of authorship. The students in my classes at the law

La

college, for example, would no doubt be in favor of legislation

that precluded copyright protection for the casebooks required in
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HLC 00012062
 65

their courses. For more than 200 years, however, the copyright
laws enacted by Congress have been premised on the principle that
any short-term public benefits resulting from unrestricted copying
of works of authorship would be outweighed by the long-term harm
caused by the loss of economic incentives necessary to insure the
continued production of valuable works.

What would be the consequences of enacting H.R. 4426? In the

short run, permitting other publishers to copy the selection and
arrangements of cases and statutes that have been produced by
others might result in cheaper access to such materials,
particularly on the part of large law firms that rely on computer
access. The long-term consequences of the bill, however, are more
troubling. I am not an economist, but it seems sensible to begin
with the assumption that if we reduce the economic incentives to
produce a particular kind of product, we will end up with less of
that product rather than more. I would be particularly concerned
about the continued viability of compilations of legal materials
with limited markets, perhaps including municipal ordinances,
administrative regulations, or materials from small states such as
H

my own. Eventually however, even more popular works might be

yp

affected.
er

It has been argued that the dispute over copyright iri case
La

and statutory compilations is somehow unique because some courts

w

require citations to the compilations produced by particular

6

HLC 00012063
 66

publishers. First, let me again emphasize that the scope of

copyright protection as it has been recognized in case and
statutory compilations does not in any way interfere with the
citation of those compilations by lawyers in the practice of law.
The argument is instead that because of the existence of such rules
of court, other publishers ought to be able to reproduce and sell
the copyrighted compilation in competition with the original
producer. I do not think that it is sound policy to conclude that
because a court requires lawyers to cite a particular compilation,
the publisher of that compilation should lose its copyright
protection. If a public school district requires all of its eight
grade students to purchase a particular workbook because it is the
most efficient means of teaching a valuable skill, we would not
conclude that other publishers should therefore
be free to
reproduce the workbook and sell it in competition with the author.
If a state university requires all its engineering students to buy
a particular computer program, we would not say that every other
software manufacturer should be permitted to reproduce that program
in order to compete with the copyright owner. More generally, I
do not think that it is sound public policy to say that we will
grant copyrights in order to stimulate the production of works of
H

authorship, but if a particular work of authorship becomes

yp

successful, we will take the copyright away.

er
La

Parties urging passage of special legislation that would

exempt them from adhering to the general principles of law that
w

HLC 00012064
 67

are applicable to everyone else should be required to carry a

substantial burden of explaining why the existing rules are somiehow
inappropriate in their particular case. In my view, there is
nothing special or unique about the issue underlying H.R. 4426.
It involves a commercial dispute between those publishers who
create compilations of cases and statutes, and those publishers who
believe that their competitive position would be enhanced if they
could copy certain aspects of the others' copyrighted works. My
recommendation to the Subcommittee is to leave this entire dispute
to be resolved under the general principles of copyright. law
already embodied by the Congress in the 1976 Copyright Act. rhank
you. H
yp
er
La
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HLC 00012065
 68
Mr. HUGHES. Professor Joyce, in your statement you concede that
West mia a copynight in its overall selection of cases. If an-
other p ugliown
sher were to take West's volumes, rip off the binding,
take out the headnotes, and send the pages to a computer input
company with instructions to reproduce the entire volume in a
database format, would this constitute infringement, in your judg-
ment?
Mr. JOYCE. Well, I think I said, as I believe the Register said,
that any work "may" embody protectable selection. I don't want to
concede, because I don't see selection in West's volumes, that there
is selection there. If there were selection there and the selection
were to be reproduced in its entirety by someone else, yes, I think
that would be an infringement.
Mr. HUGHES. But only if they were selective?
Mr. JOYCE. Yes.
Mr. HUGHES. You dismiss the possibility of future I elpslative vic-
tories by West's competitors, it seems to me, iri parU Decause you
I

believe West would preempt jurisdiction by bringing suit in the

eight circuit, referring to the Bancroft- Whitney case, brought in
Texas, but removed to Minnesota.
Don't you think that case was removed to Minnesota because the
West v. Mead case was there? Now that West v. Mead bas been set-
tled, don't you think a new suit brought, for instance, in the second
circuit would bring about a far different result than the eighth cir-
cuit?
Mr. JOYCE. I don't have any reason to think that it would bring
a different result elsewhere, although I hope that it would.
Mr. HUGHES. Do you bave any reason to believe that it would be
transfer, however, to the eightb circuit?
Mr. JOYCE. 1 bave to tell you honestly that it's been my view that
there would be a transfer, but that I'm not an expert on jurisdic-
tion. I really can't go fartber with you.
H

Mr. HUGHES. Professor Denicola, would you agree that material

doesn't become copyrightable merely because it has been copied?
yp

Mr. DENICOLA. Yes, tbat's certainly true.

Mr. HUGHES. Would you agree that a determination of whether
er

a particular use harms the market for a work is relevant to a fair

use defense, but is not relevant in determining whether a work is
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copyrightable?
Mr. DENICOLA. I think you would only reach the fair use defense
w

if u had already concluded that you were dealing with copyright-

adeo material.
Mr. HUGHES. Would you agree that, even if you have a work that
is copyrightable, the copyright does not extend to ideas, facts-
Mr. DENICOLA. That's certainly true.
Mr. HUGHES [continuing]. Systems, or other uneopyrigbtable ma-
terial?
Mr. DENICOIA. Yes, tbat's correct.
Mr. HUGHES. It seems to me the Supreme Court was rather em-
phatic in its Feist decision and holding that for compilations copy-
rigbt only extends to the compiler's selection, coordination, or ar-
rangement, wasn't it?
Mr. DENICOLA. Yes, and that's also specified specifically in the
1976 Copyright Act.

HLC 00012066
 69

Mr. HUGliEs. The court was equally emphatic, it seemed to me,

in holding, as a matter of constitutional law, that everyone is free
to copy all of the facts or other unprotectable material from a com-
pilation, so long as they don't copy the selection, coordination, or
arrangement, was it not?
Mr. DENICOLA. Yes, I agree with that.
Mr. HUGHES. The reproduction right is violated only by the copy-
ing of a substantial amount of expression, isn't it?
Mr. DENICOLA. Thafs true.
Mr. HUGHES. Pagination, is that icopyrightabl 09.
Mr. DENICOLA. Individual page numbers, in my opinion, would
not be copyrightable, nor would individual citations.
Mr. HUGHES. On pages 3 and 4 of your written remarks, you
state that, "The only use that would involve an infringement of the
protected selection and arrangement of cases is the publication of
a competing compilation of cases that copies the overall selection
and arrangement of cases from the first compilation." by an on-line
Please explain to us bow the use of star pagination
computer service wbich does not reproduce the actual opinions
from the first compilation can constitute the copying of the overall
selection and arrangement.
Mr. DENICOLA. The eighth circuit, in the West v. Mead case,
held-and I agree witb their analysis-that by taking not simply
individual page number, but by taking every page number tbrough-
out a copyrighted volume, all of the page breaks, in other words,
that that was, in effect, appropriating the selection and ai-range-
ment of fhe cases in that particular volume. Again, I don't think
the court held that taking any particular citation or a small num-
ber of citations to particular cases would be infringing. They were
focusing on the arrangement and selection of the cases in the par-
H

ticular reporter.
Mr. HuGHEs. As a practical matter, who would be interested in
yp

basically doing just that?

Mr. DENICOLA. Only another competitor who is interested in
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marketing compilations of cases.

Mr. HuGHEs. OK The gentleman from Massachusetts.
La

Mr. FRANK. Thank you. I appreciate that.

I concede my lael-, of familiarity. Selection-and, obviously, selec-
w

tion is important-am I correct that with regard to district court

cases there's selection, but witb regard to circuit court cases there
is not? Don't they print every circuit court case, every circuit court
opinion?
Mr. DENICOLA. I don't pretend to be an expert on all of West's
procedures.
Mr. FRANK. But if they did-
Mr. DENicoLA. I think it!s important to keep in mind that the
originality which the court required, for example, and emphasized
in the Feist case can come from the combination of selection, ar-
rangement, and coordination.
Nlr. FPANK. But you've got to do one tbing at a time. Selection-
assuming they were printing every opinion they could get their
hands on, then there would be no selection; correct?

HLC 00012067
 70
Mr. DENICOLA. Well, for any particular
there still would be some selection, becausevolume, I assume that
they do choose, for ex-
ample, to put cases
Mr. FILkNx. Don't they put them in
cided? What's their order? chronological order of de-
Mr. DENICOIA. I don't believe that that's correct.
Mr. FRANK. They don't? OK.
Mr. DENICOLA. They're grouped by the issuing
to court, in addition
Mr. FRANK. Well, if they're circuit opinions,
then they're all the
same issuing court, aren't they? They're all the circuit court?
Mr. DENIcoiA. Well, I think theyre grouped by individual
cuit, at least in partI in the volumes. But, cir-
gest that there would be selection in thatagain, I would first sug-
particular
cause they have chosen which particular group of casesvolume
to
be-
Mr. FRANK. You mean even if they just
chose-all right, we're
going to start with every opinion and we start
and we ended with the Ilth, that that would be with the lst case
selection? In decid-
ing how many pages it would have, it would be selection?
Mr. DENICOLA. If what a particular compiler did
was simpl to
take all the material that they received and simply take
fill up one volume- enoug"K to
Mr. FRANK. Suppose you said, "I'm going to
chronological order?" print every case in
Mr. DENICOLA. I would say that probably
Mr. FRANK. That would not be selection, would not be-
I would think. That
would probably also not be arrangement, would it, if you took them
in chronological order?
Mr. DENicoLA. That's right; probably there
would not be sufri-
cient creativity in that arrangement to be copyrightable.
Mr. FRANK. Yes. So if you did that-I just want to understand
whaes thepoint at which we've done enough so
able-if you simply printed every opinion fromthaties copyright-
H

chronological order, would you then have a problemeach circuit in

yp

if someone re-
produced all the page numbers in that situation, assuming you
went "1, 2, 3 4 5` ypli didn't go "1, 6, 11, 14 " because,
er

ably, if you Qan'odd pagination, that would &e creative9 presum-

Mr. DENICOLA. I think that's rl* ht.
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Mr. FRANK. But if ou just gid sometbing mundane like

chronological order of t e pages? the
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Mr. DENICOLA. The case would turn on the

standard for originality that the Supreme Court application
talks
of the
Feist case. about in the
Mr. FRANK. How would you decide it? I
printed every case that
was issued in chronological order and I numbered in normal num-
bering. Would that be copyriThtable?
Mr. DENICOLA. If that's al that went into
that that is probably not sufficient. the book, I would say
Mr. FRANK. Not copyrightable, even though
bave to decide how long the pages would be? I obviously I would
sion-how many words per page, et cetera. could copy your deci-
The next question I have then is this, and I
should not lose your copyright just because some agree with you, you
something to you, although I gather--do we do that?other agency does
I'm told if we

HLC 00012068
 71

put something in the Congressional Record, we may weaken some-

one's copyright; that they can take the record from us.
But, leaving that aside, if the court does do that, it creates a
problem. The public policy of that botbers me. I will confess that
I was not previously aware of that. Maybe then we ought to be ad-
dressing that to the court, but it does bother me. I do not think it
is analogous to a university-it's certainly not public policy analo-
gous-to a professor saying, "All right, I want you to buy this par-
ticular book." For one thing, there's much more competition. There
are a lot of different professors prescribing different ones.
But for the circuit court to say, "Everybody in this circuit will
have to cite to tbis" seems to me a very inappropriate-ies confer-
ring kind of a letter patent on the particular publisher, and that
does bother me. Now I understand-maybe we ought to then say
that the publisher has to consent to that, and if he doesn't consent
to it, be or she loses it.
From the public policy standpoint, if a circuit court says every-
body in this circuit has to cite to these page numbers, that seems
to me a public policy problem. Does it to you?
Mr. DENICOLA. Well, I think we do have to keep in mind that the
scope of copyrigbt as it is now recognized, or as the eighth circuit
recognized it-
Mr. FRANK. No, I understand. I understand. We're the Congress.
We make laws. We cbange laws. I'm talking about public policy
now. I'm not talking about statutory interpretation.
I am bothered by the notion that a judge says, "Everybody in this
circuit will have to buy a set of West because you ve got to cite to
p

the page numbers." I understand it's not Weses fauft; tl-iaes the
lazy judges maybe, because they can't look up different page num-
bers. But that seems to me to make it beyond purely a commercial
dispute between two individuals. If this is a 14th amendment case,
H

it would be a State action element. The judges have said youve got
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to do tbis.
Mr. DENICOLA. I think one of the things we're already seeing is
increasing flexibility in the materials that lawyers can cite to.
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We're already seeing forms of citations, for example, to computer

databases containing opinions. But I think your instinct may be
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right; perhaps the issue ought to be directed toward the citation re-
w

quirements of the court.

Mr. FRANK. OK. I'd like to think I had rationalized it beyond the
level of instinct, but thaes a quibble.
[Laugbter.]
Mr. FILkNK. Thank you, Mr. Cbairman.
Mr. HUGHES. The gentleman from California.
Mr. MOORHEAD. Thank you, Mr. Chairman.
This is a question that I'd like each of you to answer. Do you
agree with the Register of Copyrights that H.R. 4426 is merely a
clarification of existing law? That it does nothing but clarify exist-
ing law, do you agree with that?
Mr. JOYCE. No, because there is confusion in the law presently.
I think that if the eigbth circuit had properly applied sections 102
and 103 of the Copyright Act, and the decision had gone the other
way, tb6;law would be clear. The statutory law is not unclear, but,

HLC 00012069
 72
thanks to the courts, the interpretation of the Copyright Act is. For
that reason, I think es, clarification is useful.
Mr. MOORHEAD. Vat would you say, Mr. Denicola?
Mr. DENICOLA. In all honesty, I think it's difficult to
cause I think the impact of the legislation as now draftedanswer be-
tain. I think it can be read in a number of different ways,isanduncer-
de-
pending on how it's interpreted, it may or may not change existing
law. I would not feel comfortable making a prediction based on the
current statutory language.
Mr. MOORHEAD. You know, if Mead is wrong, wh
U.S Supreme Court just overrule the case? Obviousry_,,couldn't the
they didn't
specifically overrule it in the telephone book case.
Mr. JOYCE. The cert petition in Mead was on the grant
liminary injunction, and the facts had not been developed.ofIta may
pre-
well be that the Court, had it thought about the matter in those
terms, would have said, "We'll see this case again." One has no way
of knowing.
As to Feist itself, there was no reason in that case for the Su-
preme Court to reach out to overrule other cases which had not
been argued to it. I've written a very short piece called, Reach Out
and Touch Someone, which compares the two cases and I think an-
swers ye-ur question more ftilly.
Mr. MOORHEAD. If this is a major problem, though, of any kind,
wouldn't there be other cases that would be taken up by the Su-
preme Court, so that the decision there as to what the law is would
be determined?
Mr. JOYCE. The eigbth circuit's opinion bas been very influential.
You've heard people bere today suggestin that it's cu"ently the
law and there's no need to overturn it. I TO not see the likelihood
immediately of a Supreme Court decision in the matter.
Mr. MOORHEAD. We've received comments from Stanford Univer-
sity law professor Paul Goldstein, that state that H.R. 4426 "is a
H

bad bill."' He says, "It's a bad bill because, ambiguous at best, it

threatens to destabilize a corner of copyright law that has evolved
yp

over years of careful judicial decision.... H.R. 4426's central prob-

lem is it tries and necessarily fails to convert a fact-based question
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that can only be asked on a case-by-case basis into a generalized

category that can be applied across all cases." Is there any merit
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to his statement?
Mr. JOYCE. Well, I know Professor Goldstein and I'm graduate
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of that law school. So I'm not likely to say tbere's no amerit to a

comment by the faculty of Stanford.
[Laughter.]
Mr. JQ'YCE. In fact, I don't believe that this is a fact question,
though it may be fact-based. The Mead court has told us, in effect,
although the decision is in substantial part not written this way,
that the effort whieb West put into the compilation of its reports
lends protection to the fact of the location of public domain matter
within those reports. That is, it seems to me, both a question which
can and should be resolved differently under sections 102 and 103
of the Copyrigbt Act, and it's also a very important public policy
question.
'See appendix 10,

HLC 00012070
 73

If it is the case that West owns those page numbers, then com-
petitors are not likely to enter the field. It's not just that the Reg-
ister hasn't seen attempts to register their works. They simply
won't be fortbcoming.
My 3-year-old likes to watch a television sbow called "Star Trek:
The Next Generation," and tbere's a bolograpbic room people walk
into where images are created. If someone in that technology some-
time in the future were to wisb to do what Mea(i attempted to do
through star pagination, you can be very sure that they'd be thor-
ougbly chilled by the 2-to-1 decision in the eighth circuit. So I
think there is sonriething in that decision which, in fact, needs to
be corrected. The law in this area is out of whack.
Mr. MOORHEAD. Mr. Denicola.
Mr. DENICOLA. It's not clear to me that the Supreme Coures deci-
sion in the Feist case does necessarily bave implications for the
West v. Mead result, because in the Feist case, although the Court
did hold that the white pages of a telepbone book don't reflect sulTi-
cient creativity to be copyrightable, it turned right around and
said, the necessary level of creativity is very low and most compila-
tions will easily meet the standard. So I certainly would not as-
sume, and would not advise a client, that the result in West v.
Mead was necessarily in question because of the Supreme Court's
decision, but obviously that is an issue that may well be litigated
in the aftermath of the Feist case.
Mr. MOORHEAD. You know, it just seems to me-and I haven't
made up my mind on this bill, but it just seems to me that when
a decision of the court that has not been overturned, it's very spe-
cific in nature and deals with obviously not many parties, two basi-
cally in this case, it's kind of dangerous for us to pass legislation
on the subject. I'm willing to be convinced to the contrary, but I am
really concerned about wbat seems to be something to take care of
one company's need over anotber, and especially since the Supreme
H

Court can solve the whole tbing in a future case by determining

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wbat tbey tbink the law is.

Mr. JbYCE. Yes, I would comment, if I could.
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Mr. MOORHEAD. Yes.

Mr. JOYCE. If there were no other reason to doubt that the Su-
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preme Court will take the matter, the Court is tremendously busy;
and althougb it's become more interested in intellectual property
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questions recently, it isn't taking them by the busbelful.

As to the question of whetber this is simply a dispute between
two parties, I think there are a couple of points to consider. One,
you're only seeing West Publishing and Mead Data Central because
of that case itself. When someone tries to publish in ROM, that
case, at least in the past, has been transferred to the district of
Minnesota wbere it dies. In Texas, when somebody else wants to
publish statutory coynpilations, they lose their cases; the State of
Texas cannot establish in court, because there's no actual con-
troversy, the right of the people of the State of Texas to own the
numbers or the statutes by whicb they're governed.
We in the United States have bad since 1834 a Supreme Court
decision-Wheaton v. Peters-which says that judicial opinions are
the property of the people of the United States. Section .105 says
statutes are public domain. It's bizarre, now, for case law to state

HLC 00012071
 74
that, nonetheless, some private person can own the means by
which law is identified. That needs correction.
Mr. MOORHEAD. Well, of course, as a practicing lawyer for many
years, I know that those laws can be picked up in many, many
ways and West Publishing Co. doesn't have a monopoly on that in
any way, shape, or form.
Mr. JOYCE. West has an effective oligopoly now with MDC over
star pagination in computer-assisted legal research.
Mr. MOORHEAD. It's done such a good job that they may have put
themselves out of business, it sounds like.
Mr. JOYCE. I should add that I don't, and haven't ever, rep-
resented MDC. They may have a reasonable deal, although the set-
tlement is under seal. On the other hand, in Texas we would very
much like to have someone, as in Wheaton v. Peters, publishing our
law cheaply, perhaps more quickly, perhaps better than it's pub-
lished now. You get that through competition. You don't get that
through a legal monopoly.
Mr. MOORHEAD. Well, it's eligible for people to develop a better
system right now, isn't it?
Mr. JOYCE. What's happened is this. West, through its Vernon's
Texas Codes Annotated, takes session laws and, when the legisla-
ture passes a law with respect to 'X' but doesn't say precisely
where that goes, West slots it in at the place where West thinks
it should go. There are a tiny handful of places it could go. That's
the merger doctrine in c nght.
West sa-ys pu can't ta e that compilation, which includes the
number of "X' as Vernon's list "X," and publish a competing com-
pilation. So, no, people are not free to create a competing compila-
tion of Texas statutes.
Mr. MOORHEAD. But the company that wants to come in, as I un-
derstand, has a system of their own and they're about 10 times as
large as West, at least that's what I've been told. They're perfectly
H

capable of developing a new system, but the problem is too many

people depend on West; I think that's what you're saying. They de-
yp

pend on West, but the other company's big enough and stron
enough so that they could develop another system of their own ang
er

become the one was that dependent upon, so that they can create
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competition if they want to.

Mr. JOYCE. That, however, would create a lack of uniformity in
citation in Texas statutory law, which is undesirable. It seems to
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me West is large-I don't know anything about the comparative

sizes-and is capable of competing in terms of speed, accuracy,
quality of work, that sort of thing.
Mr. MOORHEAD. Do you have any comments, Mr. Denicola?
Mr. DENICOLA. I think the statute as a general matter penalizes
success, which is rather odd since the thrust of the copyright stat-
ute is to provide economic incentive for the production of works. It
seems sirange that we would then tum around and reduce or
eliminate copyright on the argument that the work has become too
successful.
I view this as a purely commercial dispute between, if not two,
a small number of publishers, and it's the kind of dispute that, in
my view, ought to be resolved under general principles of copyright
law as they currently exist in the 1976 statute.

HLC 00012072
 75
Mr. MOORHEAD. Thank you both very much. Thank you.
Mr. HUGHES. The gentleman from Minnesota.
Mr. RAmSTAD. Thank you, Mr. Chairman.
Professor Joyce, I've read all 23 pages of your testimony, and I'm
particularl interested in your comments, your anal sis of the se-
lection anyarrangement process of West. Fo on page 13,
you state that, and I'm quoting now, "West exercises de minimis
creativity in arranging cases within its national reporter system, as
well as de minimis creativity in selecting them."
Just if I may focus on the selection process and looking at Fed-
eral district court cases, do you know wbat percentage of district
court cases in this country that West publishes?
Mr. JOYCE. No. The question that would be interesting is, NVhat
percentage of cases which are sent by district judges, and in fact
do more, than provide a two-paragraph string cite, are published by
West? I think the percentage would be extraordinarily bigh.
Mr. RAmSTAD. If I were to tell you that the answer is they select
less than 30 percent, would that change your view?
Mr. JOYCE. I can't agree, without knowing more than you just
told me, that they select those cases. The district judges, in fact,
are the spigot initially whicb provides the flow, and a great number
of cases, by far the greatest number, I believe, are cut off by the
district judges themselves. I presume you'll have further testimony
on this in a subsequent panel.
Mr. RAmSTAD. But were that factually correct, of the universe of
cases, that 30 percent only are selected for publication, you still
would assert that this constitutes de minimis creativity in a"ang-
ing cases, selecting cases?
Mr. JoYcE. I don't mean, of course, to argue witb you, but you
haven't told me on which basis the 30 percent were selected. If the
basis is a plain and obvious basis, theii I would think that was not
H

selection.
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The qttestion is not unlike the arrangement question, although I

believe it's true that West does not claim, and certainly has not
er

been recognized to bave, copyrigbt in the entire National Reporter

System;.and I may have misheard the Register on this issue ear-
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lier. If AVest were to do so, it's clear to me from the portion of the
eightb circuit's opinion I quote in my testimony that what is being
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done there in terms of arrangement is purely functional and based

on matters which couldn't conceivably be original: "Let us separate
the Federal from the State cases. Within the Federal cases, let us
separate court of appeals decisions from district court decisions.
Within those, let us separate based on wbich circuit." There's noth-
ing there that was "created" by West.
Rob Denicola says the purpose of the Copyright Act is to spur the
production of "works." The purpose is to spur the creation of origi-
nal works. If tbere's originality in the selection or a"angement,
fine; otberwise, no copyrigbt.
Mr. RAmSTAD. Professor, let's talk a little bit more about ar-
rangement. Also in critiquing West, you state, in terTyis of a"ange-
ment, that there is just a handful of possibilities. That's on page
14 of your testimony. Could they conceivably be arranged alpha-
betically?

HLC 00012073
 76
Mr. JOYCE. Would it be possible? Surely. And, in fact, Federal
cases, the entire body of Federal decisions pnor to 1880 when Fed-
eral Reporter was created, is arranged alphabetically; and no one
suggests there's a copyright in the principle of alphabetizing cases.
Mr. RAMSTAD. Could they conceivably be arranted by topic?
Mr. JbYCE. Yes, and if the topics were topics w ich were original,
not distinctly dictated or substantially dictated by the subject mat-
ter, that would be something else. There's an interesting case ou
may have seen called Matthew Bender v. Kluwer, which invoives
the arraying of damage and settlement awards in tort injury cases
accordin to body part and range of award, $10,000 to $25,000, et
cetera. The district court there held, I tbink very correctly, that
that's not original arrangement. The categories, the possibilities,
are too few. The same is true if one were to arrange cases accord-
ing to tofts, contracts, property-no originality.
Mr. RAmSTAD. It could also, then, be arranged by issuing judges
or by judicial district, could they not?
Mr. JOYCE. Yes, not original, but they could be arranged in that
way.
Mr. RAmSTAD. By the name of the defendant or the plaintifr.
Mr. JOYCE. Yes, not original, but they could be arranged in that
way.
Mr. RAmSTAD. By the city? By the circuit?
Mr. JOYCE. Yes, the same reply.
Mr. RAmSTAD. And could they also be arranged so that all opin-
ions in a particular case-district court, circuit court, or Supreme
court-were together?
Mr. J6YCE. Yes, they' could. That wouldn't lead to protection for
that arrangement.
Mr. RAmSTAD. These are just but a few of the possibilities that
I was able to think of. It just seems to me it's more than a bandful
of possibilities; is it not?
H

Mr. JOYCE. Well, "handful" is a term of art from the Morrissey

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case, Morrissey v. Procter & Gamble. I would think that that's a

"handful."
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Mr. RAMSTAD. I believe, Mr. Chairman, the record speaks for it-
self. I have no further questions.
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Mr. HUGHES. I just have a couple more questions. It's rny under-
standing that-and I tbink West conceded this in the affidavits
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they filed with the court in the West Publishing v. Data Central
case, in affidavits submitted b their editor-in-chief, that basically
decisions, for instance in the Meral court, are dictated by wbat
the judges tbink sbould be published. They indicate what should be
published. That being the case, is that original?
Mr. JOYCE. No.
Mr. HUGHES. Is that a matter of selection, in your judgment?
Mr. JOYCE. No.
Mr. HUGHES. Mr. Denicola.
Mr. DENICOLA. As a factual matter, I don't know if that is, in
fact, accurate or not, but if they did publish every case that was
given to'tbem in the order they received it, there would be no selec-
tion involved.
Mr. HuGHEs. I'm not talking about arran ement; I'm talking
about selection, selection of cases. If the juTeges determine-an

HLC 00012074
 77

the often indicate what is to be published; the judges do tbat-

anY that is the policy tbat's followed, is there any selection in-
volved that is original? Thaes tbequestion.
Mr. DENICOLA. No, I would say there would not be under those
circumstances.
Mr. HUGHES. You could argue, I presume, that if they are ar-
ranged in a particular sequence wbich was original, that there
could be some degree of originality and that would be a factual
matter for the court to determine.
I understand that all the circuit opinions are basically published.
Mr. JOYCE. Substantially all, although the tenth circuies opinion
in Feist was not published because it was a two-paragraph string
cite. I bave no reason to tbink it was forwarded to anybody, for
publicatioii, by the judges.
Mr. HUGHES. I don't tbink I have any more questions.
The gentleman from Massacbusetts.
Mr. FRANK. No, Mr. Chairman.
Mr. HuGHEs. OK Well, tbank you very mucb. You have been
very, very helpful to us.
Your full statement, which is part of the record, was excellent,
both of you, and we appreciate the contributions you have made to
this very interesting debate. Tbank you very much.
Mr. FRANK. I agree.
Mr. JOYCE. Thank you very much.
Mr. DENICOLA. Thank you.
Mr. HUGHES. Our second panel, and the first from the private
sector, consists of Kathryn Downing, president and chief operating
officer of Thomson Electronic Publishing Co. Ms. Downing is ac-
companied by Mr. Robert D. Hursh, cbairman, Lawyers Coopera-
tive Publishing Co. Ms. Downing will deliver the panel's testimony
with Mr. Hursh standing ready to answer questions.
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In her current position, Ms. Downing has the responsibility for

the development, marketing, and sales of electronic products based
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on the legal information published by Thomson's Legal Publishing

Cos. Before joining Thomson, Ms. Downing worked for Mead Data
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Central wbere sbe was the senior director with responsibility for
all Lexis product development and data base operations. She's a
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graduate of Stanford Law Sebool.

Mr. Hursh's employment with Lawyers Cooperative began in
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1949 upon bis graduation from the University of Virginia Law

School. As a member of Lawyers Cooperative editorial staff, he spe-
cializeCin Federal and constitutional law. He is the author of
"American Law Products Liability."
We welcome botb of ou today. We bave your statements wbich
we have read and whU will be part of the record in full. We hope
you can summarize for us. Without objection, bowever, your full
statements will be part of the record.
Mr. FRAN-K. Mr. Cbairman-
Mr. HUGHES. The gentleman from Massachusetts.
Mr. FRANK [continuing]. This is relevant to something which I
think arose when you had to temporarily absent yourself, but I just
wondered whether Ms. Downing has any title of nobility that we
sbould put into the record.
[Laughter.]

HLC 00012075
 78
Mr. FRANK. That issue arose when you were not here. Apparently
not.
Mr. HUGHES. Well, I can assure the gentleman she is, indeed, a
lady.
[Laughter.]
Mr. HUGHES. Welcome.
STATEMENT OF KATHRYN M. DOWNING, PRESIDENT AND CHIIEF
OPERATING OFFICER, THOMSON ELECTRONIC PUBLISHING
CO., ON BEHALF OF THOMSON PROFESSIONAL PUBIASHING,
ACCOMPANIED BY ROBERT D. HURSH, CHAIRMAN, IAWYERS
COOPERATIVE PUBLISHING CO.
Ms. DOWNING. Thank you, Mr. Chairman. We appreciate the op-
portunit to testify before you this morning.
We fNy support H.R. 4426. Let me take just a moment and tell
you about Tbomson Professional Publisbing. That is the V?up
within Tbomson U.S., Inc., which has responsibility for the PUDiica-
tion and sale of information to the law, tax, accounting, and profes-
sional markets. Some of our companies include Lawyers Coopera-
tive Publishing, Thomson Electronic Publisbing, Bancroft-Whitney,
Clark Boardman Callagan, Researcb Institute of America
Mr. FRA.NK [presiding]. Wby don't we just put those into the
record and get right to the substance of it?
Ms. DOWNING. All right. My company, Thomson Electronic Pub-
lisbing, publisbes Thomson's legal information in electronic form,
both in an on-line environment and on CD-ROM. The advent of
CD-ROM technology has created a very new opportunity in legal
publishing, and it creates new access methods and opportunity for
publication of legal information for the lawyers in this country.
There is, however, very little of U.S. primary law on CD-ROM
today, and the reason for that is the 1986 decision in the eighth
circuit court of appeals, West v. Mead Data Central. That decision
H

bas made it commercially impossible for Tbomson, or for an one

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else, to publish with page number citations the decisions o7tbe

lower Federal courts, the decisional law of a number of States, in-
er

cluding Delaware, Florida, Iowa, and the statutes in a number of

States such as Illinois, Texas, Louisiana, and Pennsylvania.
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I assume that the members of the subcommittee are familiar

with legal citations, and I will not go into that, but it certainly
w

should e noted that to participate in the U.S. legal system a per-

son must be able to find the decisions of the courts and the enact-
ments of our legislatures, and that can only be done by means of
the citations.
You bave heard already this morning from otbers on the majority
opinion in West Publishing and its injunction against the referenc-
ing of pa e numbers, which constituted a distortion of the U.S.
copyrightlaw. No decision before or since bas ever beld that page
numbers could be protected by copyright or that copyright was a
means for excluding others from referencing a work. Star pagina-
tion, in fact, the reference to page numbers of other judicial re-
ports, has existed for hundreds of years and has been used by
many legal publishers, including West Publishing.
But I'pi not here to talk about the legal theory of the West case,
but ratbpr to talk about the actua.] effects the West Publishing deci-

HLC 00012076
 79
sion has had on the publication of statutes and case law. This bill
is in response to those effects.
The West Publishing decision has enabled a single private pub-
lisher to monopolize the publication of lower Federal court deci-
sions; statutory law in Illinois, Texas, and elsewhere; and the ap-
pellate case law of many States. This has forced libraries and otil-
ers to pay millions of dollars in monopoly charges for access to the
legal texts, and bas deprived users of the improved choices, quality,
and timeliness that competition could bave provided.
Let me illustrate wbat I'm talking about with two particular ex-
amples. The first involves the judicial decisions of the State of
Delaware. Many U.S. corporations, of course, are incorporated in
Delaware, and, accordingly, Delaware State law governs the con-
duct of numerous directors, officers, sbareholders, insurers, and
others. In the 1960's, the State of Delaware stopped publishing the
decisions of its courts. They were publisbed only in Atlantic Re-
porter, second series, from then on. Briefs filed in Delaware State
courts are required by the Supreme Court rules of court to cite to
only Atlantic Reporter, second series volumes. Tbat's true even for
the earlier Delaware cases whicb were originally published by the
State. The page numbers of Atlantic Reporter, second series, were
among those covered by the injunction in the West Publishing deci-
sion. Ac'eording to that decision, no one other than the publisher of
Atlantic Reporter can publisb the decisional law of the State of
Delaware in the form that the State requires.
I cite the example of Delaware because its laws are especially
widely cited and relied upon. Delaware case law surely would be
published in the form required by the Court by more than one pub-
lisher if it were possible to do so. H.R. 4426 would make this pos-
sible.
The second example I wish to bring to your attention involves a
publishin project which our company,_Bancroft-Whitney, bad to
H

abandon in the mid-1980's. Bancroft-Whitney planned to publish

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the first new compilation of Texas statutes in more than 50 years.

We planned to build this compilation from the ground up, using
er

session law sources, adding our own bistorical references, annota-

tions, indexes, and all the otber features whicb characterize our
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publications.
The Texas Code Service was never publisbed. Why? Because we
w

were tbreatened with a copyrigbt infringement suit and later were

in a suit with a publisber of the only existing Texas statutes. That
publisher contended that if Bancroft-Whitney wanted to publish
the Texas statutes, Bancroft-Whitney would have to identify the
some otber names and numbers than those wbich bave
been used by the Texas courts and legislature since 1927.
The publisber's copyright claim on the Texas statutory citations
appears to bave been bolstered by the eigbtb circuit decision in the
West-Mead case. Not wanting to suffer the same fate as that of the
defendant in West Publishing, we abandoned the Texas Code Serv-
ice. To this day, there exists in Texas only one published compila-
tion of Texas statutes.
Our experiences with the Delaware judicial decisions and the
Texas statutes dramatically illustrate the need for H.R. 4426. H.R.
4426 would overrule the West Publishing decision and enable

HLC 00012077
 80
Thomson and others to publish Delaware State law and other pri-
mary legal text.
The bill would also make possible the development and publica-
tion of new and onginal case reports and would accelerate the in-
troduction of CD_ROM and other new publisbing tecbnologies. En-
actment of H.R. 4426 would accomplish these goals without inter-
fering with the properly protectable portions of compilation copy-
rights, such as annotations and commentaries, and witbout inter-
fering with the organization systems developed by private compa-
nies to aid legal researchers in locating statutes or judicial deci-
sions concerning a particular point of law.
The copyright law was never intended to suppress the develop-
ment of new and valuable works. Yet, that is exactly the result of
the West Publishing decision. Without the ability to identi stat-
!ites and judicial decisions by reference to their locations =exist-
ing sources, Tbomson and others are foreclosed from creating new
compilations of statutes or other laws.
The question raised by H.R. 4426 is not whether the standard of
originality should be affected. Ratber, the question is whether ex-
istingalaws Promote the progress of science, as the Constitution
man tes. That is an empirical question as to whieb our Nation's
experience since 1986 provides a clear and undeniable answer. Ex-
isting law is suppressing, not enc ouraeng, the publication of stat-
utes and judicial opinions. Existing la is suppressing, not encour-
aging, the creation of new annotations, indexes, digests, and all
other editorial material that typically is involved in statutory com-
pilations.
These effects of existing law are not only contrary to the purpose
of copyright, but undermine a longstanding public policy to foster
the publication and dissemination f our laws. Since the West Pub-
lishing case was decided in 1986, no publisber bas published com-
plete texts of the Texas statutes, the Illinois statutes, the Penn-
H

sylvania statutes, lower Federal court decisions, or any other pri-

mary legal text whose citations are claimed to be subject to copy-
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right colitrol.
H.R. 4426 would restore the law to its pre-1986 state and the 150
er

years of law that provided for star pagination references to other

case reports and make it possible for us, and otbers, to engage in
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the creative activity that the copyrigbt laws are designed to foster.
Thank you very mucb for the opportunity to testify. We would be
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pleased to answer any questions the subcommittee may bave.

Mr. FRANK [presiding]. Thank you, Ms. Downing.
[The prepared statement of Ms. Downing follows:]

HLC 00012078
 81

PmARm STAT=u oF KATHzYN M. DowmG, PRmEn AND Cm

OpmTmG OFmcA THomsoN EumoNic PuBusENG Co., oN
BEmu oF THomsoN NoF=om PuBLLgmG
Mr. Chairman and members of the Subcommittee, my name
iS Kathryn M. Downing. I am the President of Thomson Electronic
Publishing. I am testifying on behalf of Thomson Professional
Publishing and its operating companies, Lawyers Cooperative
Publishing Company ("Lawyers Coop"), Clark Boardman Callaghan
Company, Bancroft-Whitney Company, Research Institute of America,
Inc.., Warren, Gorham and Lamont, and Thomson Electronic
Pub'-ishing. I am grateful for this opportunity to testify before
this Subcommittee and to express strong support for enactment of
H.R.

1. BACKGROUND

Thomson Electronic Publishing is engaged in the

business of publishing judicial opinions and statutes in CD ROM
form. "CD ROM" stands for "compact disk read only memory." CD

ROM is a technology that enables vastly more information to be

H

stored in less space, and at less cost, than traditional print or

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magnetic storage media.

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In the legal publishing field, CD ROM technology can

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greatly reduce the cost of acquiring, storing, and retrieving

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primary legal source materials. The contents of 500 case report

volumes, for example, could be stored in just two CD ROM disks.
The technology also has the potential to store case reports in a
form resembling typeset pages.

-1-

HLC 00012079
 82

CD ROM's optical recording technology is clearly the

wave of the future in legal publishing. we believe that
widespread implementation of this technology will reduce the cost
of legal services and in turn make the United States more
competitive.

Why then is so little of American decision and

statutory law available on CD ROM?

There is a simple answer: a 1986 deci-sion by the

Eighth Circuit Court of Appeals, called West Publishing Co. _v.
Mead Data Central, Inc., 799 F.2d 1219 (Bth Cir. 1986), cert.
denied, 479 U.S. 1070 (1987). That decision has made it
commercially impossible for Thomson or anyone else to publish,
with page number citations, the decisions of the lower federal
courts, the decisional law of Delaware, Florida, Iowa, and
numerous other states, or the statutes of the States of Illinois,
Texas, Louisiana, Arizona, or Pennsylvania.

Ii. LEGAL CITATIONS

To understand why the West Publishing decision has had

H

such severe and far-reaching effects, it is necessary to

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understand how case law and statutes are referred to, or "cited,"
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by U.S. courts and legislatures, and how critically important it

La

is to be able to cite such legal authorities in a manner that

users can comprehend.
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HLC 00012080
 83

For nearly as long as we have been a nation, U.S.

courts have been interpreting, applying, or overruling their own
past precedents. For this reason, the existing body of U.S.
decisional law contains innumerable "citations" to legal
authority. ."Citations" are abbreviated references that courts
and legislative bodies use to refer to existing law. In other
words, citations to cases and statutes are like addresses. They
tell the person where to find the information they are seeking,
jJust as an address tells you where to locate a house.

in the case of judicial decisions, citations typically

consist-of references to a volume title (e.g., "900 F.2d") and a
page number (e.g., "900 F.2d 1, 311) where particular opinion text
can be found. In the case of statutes, citations typically
consist of references to titles (e.g., "17 U.S.C."), and section
numbers (e.g., "17 U.S.C. S 105") where particular statute text
can be found.
To comprehend the decisions of any U.S. court, a person
must be able to locate the cases or statutes that the court has
cited in its decisions. Similarly, to participate in the U.S.
H

legal system, a person must be able to refer to, or cite, laws by

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reference to their locations in books or other reference sources

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used by courts, legislatures, or others.

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There are an estimated 1,494 private and public law

libraries in the United States. These existing libraries contain
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an enormous accumulated body of precedents which U.S. courts,

-3-

HLC 00012081
 84

both state and federal, have incorporated into their decision

making process.

Virtually every United States Ci-rcuit Judge, for

example, has ready access to a set o-r prJvately-pubiished books
entitled Federal Reporter, Second Series, Durchased aL Government
expense. Every day, new decisions of the United States Courts of
Appeals are handed down which refer to their Drior decisions with
citations to "F.2d" volume and page numbers. To comDrehend these
deci-sions, a reader must be able to locate authorities by
reference to the "F.2d" citations used by the court.

III. THE WEST PUBLISHING DECISION

For most of our nation's history, the courts' practice

of citing to privately-published sources, like "F.2d," posed no
problem, because legal citations were universally understood to
be in the public domain. The LEXIS service, for examnle. was
introduced in 1973, largely on the basis of its abiiity to
di-splay citations to the volume and Dage numbers of privately
published reports of federal and state decisions. Prior to 1986,
H

no court had ever held that citations to published legal texts

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could be prevented by copyright law.

er

But then in September 1986, in a radical departure from

La

past precedent and industry practice, a two-judge majority of the

Eighth Circuit held, over a vigorous dissent, that the page
w

numbers of Federal Reporter and other published sources of law

- 4 -

HLC 00012082
 85

were protected by copyright, and that citations to those numbers

by a rival publisher was actionable copyright infringement. West
Publishing Co. v. Head Data Central, Inc., 799 F.2d 1219 (8th
Cir. 1986), cert. denied, 479 U.S. 1070 (1987).

The majority in West Publishing affirmed an

unprecedented injunction against "referencing or including the
page numbers of [West publications] . . . within or in relation
to the text of court opinions." The injunction extended even to
the page numbers of the official reports of decisions in Alabaina,
Colorado, Delaware, Florida, Iowa, Indiana, Kentucky, Maine,
Minnesota, Missouri, Texas, Wyoming, and various other states.

You will hear from otbers how the majority opinion in

West Publishing, and its injunction against the "referencing" of
"page numbers," constituted a most extreme distortion of U.S.
copyright law. No decision, before or since, has ever held that
"page numbers" could be protected by copyright, or that conyright
was a means for excluding others from "referencing" a work.

I am not here, however, to talk about legal theory.

H.R. 4426 is not about legal theory. The bill, rather, is a
H

response to the actual effects that the West Publishing decision

yp

has had on the publication of statutes and case law.

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-5-

HLC 00012083
 86

IV. THE NEED FOR CONGRESSIONAL ACTION

Simply put, the West Publishing decision nas enabled a

single private publisher to monopolize tne publication of lower
federal court decisions, statutory law In Illinois and Texas and
elsewhere, and the appellate case law of many states. This has
forced libraries and others to Day tens of millions 4-n monopoly
charges for access to legal texts, and has dearived users of the
improved choices, quality, and timeliness the comoetition could
nave provided.

Let me illustrate what I am talking about wi-th two

examr)les. First, many corporations are incorporated in Delaware,
and accordingly Delaware state law governs the conduct of
numerous directors, officers, shareholders, insurers, and others
throughout the country.

In the 1960's, the State of Delaware stopped publishing

-he decisions of its courts. The State decreed that thenceforth
Delaware decisioris appearing in volumes entitled Atlantic
Reporter, Second Series would be the official reports of
decisions in Delaware. Briefs filed in Delaware state courts are
H

required, by law, to cite to Atlantic Rer)orter, Second Series

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volumes.
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The page numbers of Atlantic Reporter, Second Series

La

volumes were among those covered by the injunction in the West

w

Publishing decision. According to that decision, no one other

-6-

HLC 00012084
 87

than the publisher of Atlantic Reporter, Second Series volumes

can publish the decisional law of the State of Delaware in the
form that state requires. Anyone who wants to practice Delaware
law must either buy a set of Atlantic Reporter, Second Series
volumes, or borrow from someone who has. According to West
Publishing, neither Thomson, nor anyone else, can provide the
citation iriformation that Delaware law requires.

1: cite the example of Delaware because its law is

especially widely cited and relied upon. Delaware case law
surely would be published by more than one publisher if it were
OOSS4 ble tc) do so. H.R. 4426 would make this possible.

The second example I would like to describe concerns

the statutes of the State of Texas.
-n the mid-1980's, our sister company Bancroft-Whitney
planned to publish the first new compilation of Texas statutes in
more than 50 years. We planned to build this compilation from
the ground up, using session law sources, and adding our own
historical references, annotations, indexes, and all of the other
features which characterize Lawyers Coop publications. Attached
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to this testimony are copies of pages from a prototype volume of

yp

a statutory compilation that was to have been called the Texas

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Code Service. I invite the Subcommittee to inspect the pages

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from this prototype volume carefully.

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-7-

HLC 00012085
 88

The Texas Code Service was never published. Why?

Because we were threatened with suit and later sued by the
publisher of the only existing Texas statutes for copyright
infringement. That publisher contended that if Bancroft-Whitney
wanted to publish the Texas statutes, Bancroft-Whitney would have
to identify the statutes by some other titles and section numbers
than those which have been used by the Texas courts and
legislature since 1927.

The publisher's copyright clairr, on Texas' statutory

citations appears to have been bolstered by the 7-ighth Circuit's
deci-sion in West Publishing Co. v. Mead Data Centrall, inc., 799
F.2d 1219 (8th Cir. 1986), cert. denied, 479 U.S. 1070 (1987).
Not wanting to suffer the same Eate as that of the defendant in
Wes- Publishing, we abandoned the Texas Code Service. To chis
day, there exists in Texas only one published compilation of
Texas statutes.

Our experiences in the states of Delaware and Texas are

dramatic illustrations of the need for H.R. 4426. The West
Publishing decision robbed Texans and others o-I what would have
H

been a nighly original and valuable compilation of Texas

yp

statutes. You can see the prototype volume and judge for
yourself. Is the public better off because the Texas Code
er

Service was abandoned to avoid copyright infringement claims?

La

We

do not believe so.

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-8 -

HLC 00012086
 89

Existing law is suppressing, not encouraging, the

publication of statutes and judicial opinions. Existing law is
suppressing, not encouraging, the creation of new annotations,
indexes, digests, and all the other editorial material that
typically is involved in statutory compilations.
These effects of existing law are not only contrary to
the purpose of copyright, but undermine a long-standing public
policy of this nation to foster the publication and dissemination
of laws.

V. TEtE DOCTRINE OF WHEATON V. PETERS

Judicial opinions and statutes have long been treated

specially under U.S. copyright law. More than 150 years ago, in
a case called Wheaton v. Peters, 33 U.S. (B Pet.) 591 (1834), the
Supreme Court declared that as a matter of public policy, copy-
riqht protection could not be extended to judicial opinions.
Subsequent cases extended the doctrine of Wheaton v Peters to
statutes and laws generally. The prohibition against copyright
in statutes or judicial opinions has been a fundamental tenet of
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U.S. copyright law since 1834.

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Judicial opinions and statutes are uniquely intertwined

er

with the public interest. To participate in the U.S. legal

La

system, citizens must be able, readily and inexpensively, to

w

determine what laws they are subject to, and to order their
conduct accordingly. And to be accessible to the public, laws
must be published.

-9-

HLC 00012087
 90

Wheaton v. Peters held that a reporter of decisions

could not, by copyright, prevent another person from re-
publishing the same opinions. Between 1834 and 1986, U.S. public
policy was consistently held to bar copyright claims in judicial
opinions, statutes, and closely related matter. This treatment
of legal texts was distinct from that afforded compilations of
purely private matter.

In Howell v. Miller, 91 F. 129 (6th Cir. 1898) (Harlan,

J.), the doctrine of Wheaton v. Peters was cited as a bar to
copyright claims in statutes contained in a pre-existing
compilation. A subsequent publisher, the court stated, could re-
publish statute texts "found in any printed book." 91 F. at
137. That decision confirmed the right of legal publishers to
reprint and re-publish opinions found in pre-existing
compilations -- in sharp contrast to the treatment given
telephone books, for example.

In Banks Law Publishing Co. v. Lawyer's Co-Operative

Publishing Co., 169 F. 386 (2d Cir. 1909) (per curiam), appeal
dismissed, 223 U.S. 738 (1911), the doctrine of Wheaton v. Peters
H

was cited to bar to copyright claims in the page numbers of

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reported judicial decisions. As a result of that decision, legal

publishers for years, until 1986, were free to "star paginate" to
er

one another's reports. "Star pagination" indicates where, within

La

a parallel set of case reports, corresponding passages of

w

judicial opinions appear.

- 10 -

HLC 00012088
 I

91

In State of Georgia v. Harrison Co., 548 F. Supp. 110

(N.D. Ga.), vacated per stipulation, 559 F. Supp. 337 (1982), the
doctrine of Wheaton v. Peters was held to bar claims to copyright
in statute chapter and section numbers. The court in that case
surmnarized the doctrine:

The courts of this country have long held

that neither judicial opinions nor statutes
can be copyrighted . . . . The oublic must
have free access to state laws, unhampered
by any claim of copyright, whether that
claim is made by an individual or the state
itself.
548 F. Supp. at 113-14. As a result of this decision, Georgia is
(or at least was) a state whose statutes can be published by
anyone who chooses to do so.

Vi. THE EFFECTS OF ENACTMENT OF H.R. 4426

H.R. 4426 would overrule the West Publishinq decision

and enable Thomson and others to publish Delaware state law and
other primary legal texts. The bill would also make possible the
development and publication of new and original case reports, and
H

would accelerate the introduction of CD ROM and other new

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publishing technologies. Enactment of H.R. 4426 would accomplish

these goals without interfering with the properly protectable
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portions of compilation copyrights (such as annotations and

La

commentaries) and without interfering with organization systems

w

developed by private companies to aid legal researchers in

locating statutes or judicial decisions concerning a particular
point of law.
- 11 -

HLC 00012089
 92

The merits of E.R. 4426 should be assessed within th

framework Congress established more than 80 years ago:

The enactment of copyright legislation by

Congress under the terms of the Con;titution
is not based upon any natural right that the
author has in his writings . . . . but upon
the ground that the welfare of the public
will be served and progress of science and
useful arts will be promoted by securing to
authors for limited periods the exclusive
rights to their writings . . . .

In enacting a copyright law Congress must

consider . . . two quesrions: first, how
much will the legi-slation stimulate the
producer and so benefit the oublic; and,
second, how much will the granted
be detrimental to the public? T-he granting
of such exclusive rights, under the proper
terms and conditions, confers a benefit uoon
the public that outweighs the evils of the
temporary monopoly.

.R. Rep. No. 2222, 60th Cong., 2d Sess. 7 (1909), quoted in Sony
HI

Corp. v. Universal City Studios, Inc., 464 U.S. 417, 429 n.10
(1984).

In this case, the answers to these two questions lead

inevitably to the conclusion that H.R. 4426 should be enacted.
First, there is no evidence that the "writing" of page
H
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numbers is "stimulated" by the recognition of copyright claims in

such matter. Book page numbers are generated by machines in the
er

process of manufacturing books, long after any authorship effort

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has been completed. Page numbers of books are more closely

w

related to glue and binding than they are to the writings of

authors.

- 12 -

HLC 00012090
 93

Reports of decisions had page numbers long prior to the

West Publishing decision, and the Congress can be sure that
reports of decisions will continue to have page numbers if that
decision is legislatively overruled. There is simply no basis in
history or common sense on which to conclude that copyright
protection for page numbers, as recognized in the West Publishiaa
decision, Ls necessary to "stimulate" the "writing" of such
material.

Similarly with regard to statutes, there is no evidence

that copyright protection for statutory names and numbers is
necessaty to "stimulate" the publication of statutes. In states,
such as New York, where the state itself assigns names and
numbers to statutes prior to or following enactment, legal
publishers are all free to publish the statutes and to compete
with one another based on price, annotations, timeliness, and
other fact(Drs on the merits. It is absurd to suppose that if
E.R. 4426 were to become law, statute publishers would suddenly
stop assigning names or numbers co the statutes that they
publish.
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With regard to the second question posed above, namely,

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"how much will the monopoly granted be detrimental to the

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public," the answer is even clearer. As indicated at the outset

La

of my remarks, Thomson and others are not now publishing the

decisional law of the State of Delaware and numerous other
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states, the statutory law of Texas, Illinois and other states, or

- 13 -

65-153 0 - 93 - 4

HLC 00012091
 94

the decisions of the lower federal courts, because of the

uncertainty created by the West PublishiEL2 decision. The public
is being deprived of the lower prices, improved choices, quality,
and tirneliness that competition could provide.

CONCLUSION

At these hearings you will undoubtedly hear testimony

on how copyright protection, as an abstract matter, is in the
public interest. No one quarrels with this proposition. No one
needs copyright protection more than Lawyers Coop whose stock i-n

trade ig published authorship.

The copyright law was never intended to suppress the

development of new and valuable works. Yet that is the exact
result brought about by the West Publishing decision. Without
the ability to identify statutes and judicial decisions by
reference to their locations in existing sources, Thomson and
others are foreclosed from creating new compilations of statutes
or other laws.

The question raised by H.R. 4426 is not whether the

H

standard of originality, or any other principle of copyright,

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should be affected. Rather, the question is whether existing law

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is promoting the progress of science, as the Constitution

La

mandates. That is an empirical question as to which our nation's

experience, since 1986, provides a clear and undeniable answer.
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- 14 -

HLC 00012092
 95

since West PubliShing was decided in 1986, no publisher

has attempted to publish complete texts of the Texas statutes,
the Illinois statutes, the Pennsylvania statutes, lower federal
court decisions, or any other primary legal texts whose citations
are claimed to be subject to copyright control.
H.R. 4426 would restore the law to its pre-1986 state,
to engage in the
and make it feasible for Lawyers Coop and others
creative activity that the copyright laws are designed to foster.

H
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HLC 00012093
 96

TEXAS CODE SERVICE

FAMILY CODE
§§ I-End

EDITORIAL PROTOTYPE

T'his prototype volume is published for editorial review a-nd com-

ment only. It is not intendad for research use.
H
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TMJUII 1ANCA0"-WN1TN1YC0.
301 Srannon St,est
Son Frafte.&CO, Calliotm-a 94107

BEO

HLC 00012094
 97

TEXAS CODE SERVICE

FAMILY CODE

TITLE 1
HUSBAND AND WIFE
(Enacted by 61st USA (1969) ch 888 11. etTective JitnuiLry 1, 1970.1

Subtitle
A. The Mxrringe Relationship. if 1.01-4.05
B. Propwy Rights and Liabilities. §j 3.01-5.87

SUBTITLE A
THE MARRIAGE
RELATIONSHIP
aapter
1. ZnterinS the Marriage ReLationship. §§ 1.01-1.95
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2. Validity of Marriage, if 101-2.47

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3. Diasolution of M&rri&j& if 3.01-3.77

4. Rights, Duties, Powers, and Liabilities of Spouses. 114.01-4.05
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HLC 00012095
 98

MARFJACE

CHAPTER I
ENTERING THE MARRIAGE
RELAnONSHIP
Subchapter
A. Applic4tion for Marriage License. §§ 1.01-1.09
B. Medical Examination. J§ 1.21-1.39 [Repealed]
C. Underage Apphcanu- if 1.5 1- 1.53
D. Ceremony and Recum of License. 10 1. & 1- 11. 86
E. -Mmitle Without Formalities. J§ 1.91-1-95

SUBCHAPTER A
APPLICATION FOR MARRIAGE
LICENSE
(Title 1, Husband and Wire-Subtitle A. ne Marria4e Relationahip-Chapter 1,
Entering the MarrisS4 Relationship-Subchipter A. Application for Marna
License; Title tnacted by 61st LeSis (1969) ch $83 1, afrcccive January 1, 1970.r

1.01. Marriage License

1.02. Application for LicerLm
1.03. Application Pom
1.04. Proof of Identity and Age
1.05. Absent Applicant
1.06. Execution of Application
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1.07. Issuitnr-e or Licenst

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1.08. Recording
1.09. Viola4on by County Clerk
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Cram References
Letislation:
La

Validity of rnarriage where licerm procured by fr&ud, inistakp, or illettlity: 12.02.

Bigamy-. rc 125.01.
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Incat: PC 125.02.
Court Rules.
Effcct of marriage on pending litiption: RCP Rule 157.
Collateral Raferences
Texts:
Tex Jur 3d. Family lAw j; 17-27.
Texas Family Law (Speer's 5th Ed) if 1:9, 1:24, 1:25, 1:37. 36:19.
Govcrnmental control of marriage, jenerally; tilht to rnjirry. 52 Am lur 2d,
Marriage 19.
LAw Review Articies.,
A constitutional critique of teatrictions on the riSht to metry. (1994) 10 1 Contemp
Law 33.
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HLC 00012096
 99

AYFLICATION FOR MARJUAGE 11.01

C,Iir,, v lobtL Zablocki v Radhail. and tM kndw=tLI right to muTy. (1979) it

J of Family La- 587.
Howje few Aft they constitudomn (1970) 17 J of FunUy LAw 703.
Tho riiiht or ths rnantafly dimbled to anarrp A tutuwry evaluatim (1976) 13 1 or
Family LA- 463.
E&A and Tetu marital law. (1973) 9 Texas LP. 590.
Msmggt &Ad divomG unda tha ToiLu Fainily Code. (1970) 1 Houston LIL lot.
Recodification and rdorm or tht law of busband And wihL V 970) 21 Twm BJ 34.
Annoistiori:
1. In Genual
2. VL]iditiy Of perticulat Marriages
1. In centrot
Statutory chinte or tsc or majority u affecting pro-ex!tUnj status or riihui. 75
ALR3d 229,
PJght of married woman to use maidan sumarne. 67 ALR3d 126&
what conatitutog promise made In or upon consideration of marriago within statute
of frauds. 75 ALR2d 633.
Measure end clernents of damages for breach of contract to marry, 7S ALIL2d 533.
State isw as to marriep ss affecting rilhu under National Service Ufe lnturtnes.
94 L Ed 433.
2. Validity of PartieWar Marriages
kimrialc bciwcen penons of the lanis mx. 63 ALA34 It".
Mental capuity to marr.y. 92 ALR2d 1040.
Vaiidity of oolgmnized mamage u affected by abbence of licme roquirbd by statute-
61 ALR2d 847,
Presuinption as to validity of moond marriotge. 14 ALR2d 7.
Validity of marriale u sifrected by intention or the panics tht It should be only it
rnatter of fcwm or jut. 14 ALR2d 624.
Forms and Prsctke Works:
Marriage. I Tex Jur Pi tt Pr Poms 2d 01 167tl et seq.. if 167:11 at oaq.
M&rriala. 17 Am Jur Pt A Pr Forrns (Rev), Form I 4t uq.
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MLrria It 12 Am lur Lelal Pomu 2d 1171:1 et seq.

ContrRet to mirry. 12 Am Jur Legal Forms 2d, Marriage 1171:14.
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§ 1.01. Marriage License

A man and a woman desiring to enter into A ceremonial marriage
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shall obtain a marriage license from the county clerk of any county of
this state. A license may not be issued for the miLrriale ot persons of
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the same sex.

Lellis
EngcW by 61st LelO (1%9) ch $81 f i, effiectivit January 1. 1970. Amended by 63rd
(1973) ch s77 11. effective jlaa"ry 1, 1974.
Prior LAwt Formar RS art 4604.

Amendinental
1913 Amendmant (1) Substituted 'A man and a wofna'D' fcf "PtrIC1116" at the
bcginning of the saclion; and (2) added the se=d totcn"
cm" Refffenm
Legislation:
Validity Of mlffilgg where tiCtMt PrOcUrcd bY fF'%d- mi&Lgkk Of illegality'- 12-02-
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HLC 00012097
 100

11.01
MARRJAOE
C*niOns Of Lhe Attome" rwnd.
Joint OPP"fgnct fOf
license; prosy mJrTI211c; M-12117 (1972).
S"me"cx msrriale: M.1277 (19;2).
Collateral Refipl-gite,
Taxis:
Tex jut 3d. Fxmily L&w 17.
LictnSL 32 Am Jur 2d, Martriall j7.
LJw Rcvltw Articles,
Analysts of Sqction 1.0 1. T#Aaj Fantily Codc
611, Sy"'Pcs"Im (1982) *3 Taut Tolh Llt
MetcrcitixuAlity: A prereQutsltg 10 marrIsSe in TaxLs?
(1972) 14 So Ttxu Li 220.
AnnotaLions:
IM4rrulle betwftn pemns or the some sex. 63
Validity of solemnized marriage as ikilected by absence:199.
of:icank
61 A LIL24 $47. -CquLred by stAtute.

§ 1.02. Application for License

Exccpt as otherwise provided by Section 1.05
applying for a licanse shall: of thit code. Persons
(1) appear together or separately before the county
clerk;
(2) submit for each applicant:
(A) proof of identity and age as prescribed by Section
code; 1.()4 of this
(B) a medical examination certificate or an exemption
prescribed by Subchapter B of this chapter; and, crdel" as
(C) if required, the documents establishing parental
consent, or a
court order, as prescribed by Subchapter C of this chapter;
(3) provide the information for which spaces
are provided in the
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application for a marriage license; and,

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(4) take the oath printed on the application

before the county and sign the application
clerk.
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Enacted by 61st Legii (1969) ch 338 11, efrective lantlary 1. 1970.

(1973) ch 577 12, effective January 1, 1974. Arntnded by 63rd Lto
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Editor's Note-Sabehigpter B, if 1.21 to 1.33. wu repWed in 1983.

Prior Lawi Former R3 an 4605.
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Amandmeaw
1973 Aifteaftents (1) Added tite cxocption at tiu beiinnint
deleltd forma &-jbd (2XC) which md: -(C) it app ic&b,4, of the smtlon; (2)
order prmribed by section 1.05 Of this codc; and"; &nd (3) the county judSt's
jubd (2XD) to be subd (2)(C). redesitniiiLd formitr
Crou R4(erences
Conitirution.,
Applicability of pcdury rules to oitths and affirmations: Texas Const Art 1,
LegiWation:
f 3.
Requirgnwnt or parental oonsent for underage applicant: f I.S2.
Vaidabibly of licemed marrijkle of undcmge person: 12.41.
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HLC 00012098
 101

A2PLICATION FOR MAUIAGE 11.03

OpiniCiU at the Atforncy7 ClcnaW.
Authority otcoun to ordcr waiver otinfamstion riquirwmLs: H.X)3 (1975
Joint sMarance for licenn. proxy msrriajv- M-1217 (1972).
Waiver by county udge of requimment that license applicanLa fumish Inrcrmation
rtprdins prior m&rria8e: M-604 (1970).
Collators] References
TcxU:
Tex Jut 3d. Family Law f 13.
Texes Family lAw (Speer's 5th Ed) Of 1:15, 1:26. 101. 12:3.
Liccn&L 52 Am Jut 2d, bUrriass j 37.
Law Jteview Ardeles:
Analysis Of SeCtiOA 1.-02, Texas FamilY Code SYMPOsium- 0 982) 13 Texu I wh LR
613.
Annotstlank
- Validity ottolemnized msffiale as &ITected by absence of license requirtd by statu"
61 ALR2d &47.

§ 1.03. Application Form

(a) The county clerk shall furnish the application form u prescribed
by the Bureau of Vital Statistics of the State Department of Health.
(b) The application form shall contain:
(1) a heading entitled "Applioation for Marriage License,
County, County, Texas";
M spaces for each iipplicant's full name (includin; the woman's
miLiden surname), address, social security number, if any, date of
birth, and place of birth (including city, county, and state);
(3) a space for indicating the document tendered by each applicant as
proof of identity and age;
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(4) spaces for indicating whether each applicant has been divorced
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within the last 30 days;

(5) printed boxes for the applicant to check "true" or "false" in
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respon3c to the following statement: "I am not presently married.";

(6)1.printed boxes for each applicant to check "true" or false" in
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response to the following statement: "The other applicant is not

related to me as:
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"(A) an ancestor or descendant, by blood or adopdon;

"(B) a brothcr or sister, of the whole or half blood or by adoption; or
"(C) a parcnt's brother or sister of the whole of half blood.";
a printcd oath reading: "I SOLEMNLY SWEAR (OR AFFIRM
Q AT THE INFORMATION I HAVE GIVEN IN THIS APPLI-
CATION IS CORRECT.";
(8) s*es immediately below the printed oath for the applicants'
signatures;
(9) a certificate of the c ounty clerk that the applicants made the oath

HLC 00012099
 102

11.03 MARIUAOE

and the date itnd place thst it wu made (or that Lhe
applicant did not
9PPeu personay but the prcrequisites for the lietam
fulfilled as prescribed by Section have been
1.05 of this code);
(10) spaces for indicating the date Of the
which it is performed; &nd marriage and the c-ounty in
(11) a space for the address to which the
executed license to be mailed. applicants desire the
Enseted by 61st Legis (196 ch I 88 j I. efflective Januit
(1971) ch 713 11, effective June a. 1971. Ainendcd b y 10. Amendtd by 62nd L is
January 1, 1974. Uz:s (1973) ch 377 f 3, efflece't,
Prior EAw: Pomer RS art 460S.

Amendments:
1971 Atosndmout: Pfior to 1971 subeec (b) read. -(b) T.'ke application forTn &hill
contain:
"(1) & beadinS antiUad 'Application for Marriage tAcense.
- County, Texas';
"(2) spaces fot edch aPplicant*8 full name (includini the woman's maiden sumjkme),
addreu, date of binh, placa of birth (including city. county, and stata and race;
1.0) a "oe for itidicatinS the document tendered by esch applitint u proof of
identity and &Sr.
"(4) spaca for Indicatino whethe? each a pplitaint h&s betrt divarted, and If io.
whether the iipplicant hu been divorced during the six-month penod preceding
the dsts of the applicAdon;
"(5) it printed -oath reading: 'I SOLF-MNLY SWP-AR (OR AFFIRK TliAT THE
INFOILtdATION I RAVE GIVE-V IN TMS APPLICATION 13 CORRECT,
THAT I AM NOT PRESENTLY MARRIED. A%D THAT I AM. NOT
RELATED TO THE OTHER APPLICAN-T WITHIN THE DEGREES PRO-
HIBITED BY LAW.';
11(6) spaces immediately below the printed oath for the applicariLs' signatures;
"(7) the jurat of the county clefk.
I,(&) spaces for indicatint the date ot the marriage and the county In which It is
performed; and
"(9) a space for the addrau to which the applicanto desire the executed license to be
maila"
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1971 Amendment &dd*d "wcisl sairurity number, It any," after "jiddreu," in subsec
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(b)(2)_
11073 AraeansenL- Substituted subw (b) for forrner subm (b).
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Cro" Rotsrenew
Cmstitution:
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Applicabifity of pe4ury rules to oaths and affirmstions: Texas Const Art I I S.

LCIWation..
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DeciamLion and fegistration. informal marriage: 11.92.

Validity of marrials when limse procured by fraud, mistake, or lUeSjility: f 2.01
Pmhibidon against incestuous miLrriale: 12.21.
Remarries* within 30 days after divai c as Irounds for annulment: j 2.46.
Probibitioa against remarriage within 30 days after divorce. 13.66.
Opiniou of the Attorneys Omeral.
Application of limitatiort an rtmarriage following divorce to out:of-state d1vorces:
IM-768 (1971).
Issuance of lkmm to nm and woznan who aro leSally mLrried to eLch othsr: M-
717(1970).
Waiver by county jvd4e of requirement that license tipplicants tumish information
rtlpwdinj prior mitrtmge: M-604 (1970).
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HLC 00012100
 103

AYFLICATION FORIMARRIAGE 11.05

verification of answer on applicallon form: M-502 (196n
CollatifAl Retennea
Tests-
Tex Jut 3d. Family Law 119.
Tc.xu Family Law (Spftr'l 3th Ed) #1 1:9. 1:24, 1:26. 1:21, 1:31, 12:3. 3:81.
L:cwsc. 52 Am Jur 2d, MLrringe 137.
Ljtv R"jew Articles:
Analysis or Sectlon 1.03, Texu F&Lmily Code Symposium. (1982) 13 Texu Tech Lit
614.

'
§ 1.04. Proof of Identity and Age
The county clerk shall require proof of identity and aSe of each
applicant to be established by a certified copy of the applicant's birth
certificate or by some certificate, license, or document issued by this
state or another state, the United States, or a foreign governmtnt.
Enacted by 61 it Lelis (1%9) ch 188 11. effective January 1, 1970.
Prior Law: Former RS ikrt 4603.
Cram References
Lgoislttion-
Validity of ms"isge where license procured by fraud, mism" or Waplity: j 2.02.
CoUtand Raterenew
7exts:
Tex Jur 3d, Pamily Law # 20.
Texas Pamily Law (Spotr's Sth Ed) if 1:15 1:41, 123.
Minimum age, generally. 52 Am Jut 24. Mirriage 114.
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§ 1.05. Abaent Applicant

(a) If only oae of the applicanu is able to appear personally before
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the county clerk to apply for a marriage license, any adult person or
the other applicarit may ikpply on behalf of the absent applicant.
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(b) The person applying on behalf of an absent applicant shall present

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to the clerk:
(1) the affidavit of the absent applicant as prescribed by Subsection (c)
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of this section;
(2) proof of the identity and age of the abseat appheant u provided
by Section 1.04 of this code;
(3) a medical examination certificate or an exemption order for the
absent applicant a3 pracribed by Subebapter B of this chapter; and
(4) if required, the documents establishing parental consent, or a
r-ourt order, for the absent applicant as prescribed by Subchapter C of
this chapter.
(c) The affidavit of an absent applir-ant must include:
(1) the absent applicant's full name (including the maiden sumame, if

HLC 00012101
 104

f IAS MARMAft
appbcable), address, date of birth, Place of birth (including city,
county, tnd state), citizenship, and sOcial wurity number, it
any;
(2) a declaration that the absent applicant has
within the last 30 days; not been divorced
(3) a declaration that the absent applicant is
not presently married
(unless to the other Applicant and they wish to marry again);
(4) a declaration that the other applicant is not related to the absent
applicant as:
(A) an Ancestor or desccndant, by blood or adoption;
(B) a brother or sister, of the whole or half blood or by adoption; or
(C) a parent's brother or aister of the whole or half blood, '
(5) a declaration that the absent applicant desires to marry. and the
name, age, and address of the person to whom the absent applicant
desires to be married;
(6) the approximate date on which the marriagc is to occur;
(7) the reason the absent applicant is unable to appear personally
before the county clerk for the issuance of the license; and
(8) if the absent applicant will be unable to attend the ceremony, the
appointment of any adult, except the other applicant, to act as proxy
for the purpose of participating in the ctreniony.
EnacW by 61st Legis (1969) ch 893 11. effective January 1. '1970. Arnended by 63rd Legis
(1973) ch 577 14. effective January 1. 1974. Amended by 64:h Legis (1975) ch 254 11.
effective September 1. 1973.
Editor's Note-Subch2ptcr B. if 1.21 to 1.38, was repealed in 1983.
Prior lAw- Fomer RS srt 4605(c).
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Ameadmants:-
1973 Amendment: Substituted the section for Lhe former uction which rud: "Any
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infOfmgtiOn pgftainint to an applicant. other than the applicant's nArne, miky be

omitted from the lLpplicatioti, and any formality required by Subehapten A, B.
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anid D of this chapter may be waived on the ounty judges written order, issued
for good cause shown, and submitted to the county clerk at the time the
iLpplication is made."
La

1973 Ameadmaiih (1) Added subsee (c)(2); iLmd (2) redesignAted former subdees
(cX2)-(c)(7) to be substes (c)(3)-(c)(3).
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Cross Refertnea
Opitilons of the Attorneys General:
Authority to inue license bcfore expiration or 30-dsy period fobowing divotte: H.
531 (1973).
Authority of court to order waiver of Information requirements.- H-303 (1915).
Joint oppearance for license; proxy marriagc: M-1297 (1972).
A plication or limitation on remarriage faiJowint divorce to out-of-state divorces:
W768 (1971).
Issuance of lictut to tnan and woman who are IcSilly married to each other. M.
717(1970).
Collateral Relanneet
Tex Jut M. Fikinily Law if 21. 22.
Texu Family LAw (Speer'# Sth Ed) ff 1:24, 1:31, 1:41. 1:42, 12:3.

HLC 00012102
 105

APPLICATION FOR MARRIAGE 1 1J7

Ucmt 12 Am lur 2d. Marriji3c 137.
Ljw Revitw Articles:
Ansly3is or Section 1.05, Texu Family Code Symposiurn. (1982) 13 Tezu Twh Lit
61L
Forms and Prectice Works:
ProiLy marria#*--Affidavit of okbsant appliciLnt for marriaga license. I Tex" FLmily
Law (3rA#r a Sth Ed) f 1:42.
General forms of &Mdavim I Am Jur Legal Forrns 2d. Affidikvits ind DeelsmijoaL

6 1.06. Execution of Applicjition

(a) The county clerk shall:
(1) determine that aU necessary information (other th&n the date of
the marriage ceremony, the county in which it is conducted, and the
name of the person who performs the cercrnony) is entered in the
application and that all necessary documents are submitted to him;
(2) administer the oath to each applicant appearing before the clerk;
(3) have each applicant appearing before the clerk sign the application
in his presence; and
(4) execute his certific-ate on the application.
(b) A person appearing before the clerk on behalf of an absent
applir-ant is not required to take the oath on behalf of the abgent
applicant.
Enacted by 61st Ugis (1969) ch $99 11. effactive JLnuary 1, 1970. Amended by 63rd L4Ws
(1973) ch 577 # 5. etTective January 1. 1974.
Ilrior lAw: Former RS art 48DS(b).

Amendmentr.
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1913 Amendmcnt: (1) DesiSnated the rormer section to be sub3oc (a); and (2) added
suftec (b
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Crux ReforeAtu
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OPintOtIS dt tlid A itattitYi Otjlcr&l:

Authotity to issue sicarm before exicitiLtion of 30-day period followinj divorce: H-
581 (1975).
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Collaterai Retartnees
Tex lur 3d, Foinily lAw 6 23,
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Texas Faniily Law (SpeWs Sth Ed) f 1:11.

Licenw. 52 Am Jur 2d. Mirriale 137.

§ 1.07. Issuance of License

(a) The county clerk rnay not issue a license to the applicants if:
(1) either appl'icant fails to provide information as required by
Sections 1.02 and 1.05 of the code;
(2) either appHcant fafls to submit proof of age and identity;
(3) either applicant is under 14 years of age and has not received a
court order under Section 1.53 of this code;
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HLC 00012103
 106

11-07 MARRlAGE

(4) either itpplicant is 14 years of age or older but under 18 Ye&n of

age and h&s received neither pareaW consent nor it court ordp-r under
Section 1.53 of this code;
(5) either applicant fails to comply with Lhe requirements of Subchap.
ter B of this chapter;
(6) r-ither applicant checks "false' in response to a statement in the
application, except as provided in Subsection (b) of this 3ection, or
fails to make a required declaration in an affidavit required of iLn
absent applicant; or
(7) either applicant indicates th&t he or she has been divorced by a
decree of a court of this state within the last 30 days.
(b) If an applicant checks "false" in response to the. statement "I am
not presently married," the county clerk shall inquire aii to whether
or not the applicant is presently married to the other applicant. If the
applicant states that he is presently maiTied to the other applicant,
the county clerk shall record that statement on the license prior to the
administration of the oath. The county clerk may not refuse to issue a
license on the ground that the applicants are already married to each
other.
(c) On the proper execution of the application, the clerk shaU prepare
the license. On the reverse side of the license he sha.11 enter the names
of the licensees and, for each of them, the date of the medir-al
examination or the fact that an exemption was obtained, and the
name of the person appointed to act as proxy for an absent applicant,
if any.
Enacted by 61st LeXis (1969) ch 888 11, etTective JanuM 1, 1970. Amended by 63rd Ltlis
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(1973) ch 377 j 6, effective Janusry 1, 1974. Amcnded by 64th Lelis (1973) ch 234 12,
etTective Septanber 1, 1975.
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Editor's Noi"ubehapter & if 1.21 to 1.33 was repealed in 1993.

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Prior lAw: Former RS art 46D4d j 7.

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Amendmentw
1973 Amendmaft Substituted the section for the former section whlch read: ' A)
On sAnution of the application. tht county clerk shall pr ths licann. 0 'go
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revene tide of the license he shall enter the nomm of and, for each
of them. the dAte of the medical exomination or tho fact that in exwnption ordot
as obtained.
7C county clerk shoJI not issue a lkow to the appiimnts ir he knows any
faas which would make the marriale void or voidable under this codo.
"(*) It it is ftvc" that either mppOcant hu ban divorced durinj the six-month
period precedial the dago of the application. the county clerk shall not inue the
licame unleas it is shown that the subsequent mLrriikSe wiihin the six-month
period is pamitted under Section 166 of this code."
1975 Amendment: (1) Substituted subm (W) for fomer subuc (a)(3) which read:
"(3) either appliunt is under 16 yeefs of age and the waiver of &Is requiremenu
has not begn ordend under the provisions of Section 1.51(c) of this cocig"; (2)
added subsee (aX4)-. 0) reduipated former subsecs (&X4) and (a)(5) to be
subam (aX5) and (sXG); and (4) addad subsee (aXI).
j to

HLC 00012104
 107
Mr. FRANK. Let me ask you-you mentioned some States; what
about other States? Do you publish in otber States?
Ms. DOWNING. We publisb the case law in tbree States-Califor-
nia, New York, and Micbigan-in print and in a number of States
electronically, and the statutes in
Mr. FnANK. Is the difference that those are not areas wbere the
courts of the particular jurisdictions require a citation to one form?
Ms. DOWNING. In those States-the court rules vary, but in those
States we publish on behalf of the State the court decisions; West
publishes the decisions of the court as well in their reporter sys-
tem, and they paginate to our reporter system.
Mr. FRAN-K. And are you planning to invoke the eighth circuit
and say that they can't do that any more?
Ms. DOWNING. No, we are not and we have not.
Mr. FRANK. But you do that with the imprimatur of the State?
Are there any States that just let anybody publish wbo want to and
don't have a uniform requirement?
Ms. DOWNING. In terms of the case law?
Mr. FRANK. Yes. That you publish tbere-are there any States
wbere you or West, or anybody else wbo wants to publish, and are
free to cite any of several-are there any States like that?
Ms. DOWNING. We publish case law in a number of States using
the official reporter citations wbere there is a competing citator,
but-
Mr. FRANK. And you always use the competitor's paginations?
Ms. DoWNING. We use the competitor's pagination where it ex-
ists. In one State, we publisb the case law, and for the last 10
years it has only been published by West. So there is no reference
to intemal pagination there.
Mr. FRANK. All rigbt. You're not aware of any States wbere there
is not an-does every State have an official reporter? I guess we'll
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bave to ask that.

Ms. DOWNING. No, I believe the number is about balf of the
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States.
Mr. FRANK. All right, in the States that have no official reporter,
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do you publisb the cases?

Ms. DOWNING. We publish the cases in Rhode Island-
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Mr. FRANK. Please, please, please, please-that's a yes or no

question. Then we can go beyond tbat; all rigbt?
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Ms. D6WNING. Yes.

Mr. FRANK. I mean, in the States where there is no official re-
porter, do you publish the opinions?
Ms. DOWNING. Yes.
Mr. FRANK. And does West also?
Ms. DOWNING. Yes.
Mr. FRANK. OK, so where can you not publish, only iri those
States wliere there is an official reporter? And we're talking about
cases now; we'll get to statutes in a minute. Your claim is, then,
that you can't publisb in those States wbere there is an officially
designated reporter and that officially designated reporter uses
copyright protection to keep you from similar pagination, the same
pagination?
Ms. DOWNING. No, there are two issues.
Mr. FRANK. OK.

HLC 00012105
 108
Ms. DOWNING. One is, the first one is we cannot publish in any
State where West is the only publisber unless we find an alter-
native source to the case law.
Mr. FRANK. Ob, you mean the judges-it is a case
States give a monopoly and they say they'll only let youwhere the
publish?
mean
Ms. DOWNING. It's a State such as in Rhode Island; West is
only publisher for the last- the
Mr. FRANK. But how do they become the only publisher? The
judges won't sbow you their opinions? I mean, aren't these public?
The judge says, "I wrote this opinion and I'm only giving it to
West," and if you send a messenger who says, "Judge, may I have
that opinion?" The judge says, "No, I'm putting it in a credit union
somewhere where you'll never get it again," like it was your
money?
[Laughter.]
Mr. FRANK. I mean, how does this work that only West gets the
opinion? I'm serious. I don't understand this.
Ms. DowNiNG. In the States where West is the only publisher in
print, what bas happened up to this point is that they are cur-
rently the only publisber-
Mr. FRANK. No, no, you're not answering my question. Please, if
you don't know the answer, the answer is you don't know the an-
swer, and you may not know it. I'm asking you a very specific ques-
tion. Please don't respond with general information.
Ms. DOWNING. All right.
Mr. FRANK. How does it bappen that in the State of Rhode Island
only West gets the opinions? Do the judges refuse to give them to
anybody else? You said only West publishes the opinions in Rbode
Island. 1 mean, if you went to the judges in Rhode Island and said,
"May we have your opinions? We want to publish them," would
H

they say no?

Ms. DOWNING. No. The judges would say yes in Rhode Island.
yp

Mr. FRANK. So then why don't you publisb them in Rhode

Island
er

Ms. DOWNING. We do-

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Mr. FRANK [continuing]. The opinions?

Ms. DOWNING. We went to Rhode Island and asked the judges for
the last 10 years of the decisions and they gave them to us, and
w

we do publish them on CD-ROM.

Mr. FRANK. Well, wby don't you publish them contemporaneously
in printed reporters?
Ms. DOWNING. We bave not made the decision to publish them
in print.
Mr. FRANK. All right, but is there any legal bar to doing it?
Ms. DOWNING. To publishing them in print?
Mr. FRANK. Yes.
Ms. DOWNING. Not if they were collected directly from the court,
I don't think so, prospectively.
Mr. FRANK. That's my question: Why is it that you can't do that?
This is the issue. You're saying you want to be able to go and use
West, and the logical question West has is, "Hey, wait a minute.
We did all this work. Wby don't you do it yourseIP" And that's the

HLC 00012106
 109
question: Why don't you do it yourselP Why don't you go get the
opinions and print them?
Ms. DOWNING. We can go get the opinions and we could print
them, as we have done on CD-ROM, and publish them?
Mr. FRANK. Yes.
Ms. DOWNING. The issue is what information you give the law-
yers with the case law. Do you give them the citations that are re-
quired by the court.
Mr. FRANK. Tbat's wbat I'm trying to get at. You're saying that
the only problem is where the court requires the citations to be the
West's form of citation? Absent that, you bave no barrier to print-
ing tbem, correct, legally?
Ms. DOWNING. That's right.
Mr. FRANK,. Correct?
Ms. DOWNING. Yes, that's correct.
Mr. FRANK. In how many States does the State give that ofricial
imprimatur to one particular reporter?
Ms. DOWNING. In well over half the States and in the Federal ap-
pellate and district-
Mr. FRANK. Ikt me ask you this question because we can't tell
the Staies, but suppose-tbis is the thing that botbers me. If the
States weren't enforcing them, then it seems to me people could do
whatever they wanted with these things. Suppose we were to pass
a statute which said no Federal court may require citation that
would implicate a copyrigbt; that is, that the Federal courts may
not serve as the business-getters for the holders of a copyright?
Would that resolve your problem at the Federal court level? It
wouldn't at the State level, obviously. But suppose we said no Fed-
eral court can discriminate; the Federal courts have got to say to
anybody who prints a compilation that they can accept those cita-
tions, and the judges would have to be able to use botb. Particu-
H

larly as you incireased computerization, that would be easier.

Maybe they would bave too big a library or something now, but
yp

suppose we were to pass such a statute; went at it the other way

and said j'udges may not enforce, in effect, that copyrigbt advan-
er

tage? Would that ease your problem?

La

Ms. DOWNING. It would help prospectively, althougb I think

tbere's a second question that the subcommittee would need to con-
sider, and that is the public policy of having a number of citation
w

systems out there and whether that helps the administration of

justice. It would not help the 200 years of case law that exists
today. '.

Mr. IiiiANK. Well, thaCs a point, but in terms of the future, I

don't know bow many that would be, and it would seem to me that
would be manageable. Of course, we do have the problem that we
don't have any jurisdiction over the States, but I am impressed. I
didn't understand this before I came in. The problem really comes
from the judges specifying more tban-because if the judges didn't
specify, then you would be-to the extent that you are at a com-
petitive disadvantage to anybod , any otber compiler, it is entirely
a function of judges requiring tLt to be the citation; is that cor-
rect?
Ms. DOWNING. It is the judges requiring that it be the citations
and tbat, tberefore, it's the standard in the industry.

HLC 00012107
 110
Mr. FRANK. Yes; right. I mean the judges make it a standard.
Ms. L'OWNING. Congressman Frank, I think Mr. Hursh would
like to a4d something to that.
Mr. FRANK. Go ahead.
Mr. HURSH. Could I try to amplify that a little bit? The situation
in Delaware, where now only West publishes the Delaware reports,
arose in a way that is typical of a number of States which once had
official reporters that were published side by side with West for
many years, and then stopped publishing the official reporters. At
that point only the West version was available, and the courts re-
quired, in effect, gave
Mr. FRANK. Before that, you could bave, of course, reprinted the
official reporter because that wasn't copyrighted, I assume?
Mr. HURSH. We would have, and we bave used pagination from
the official reporter. We probably would not have used the same ar-
rangement. There bave been many references to arrangement of
cases and I don't want to digress now, Congressman Frank, but I
think this is important. U.S. Supreme Court reports are published
by the U.S. Government in the official reports; West Publishing in
their version; and by Lawyers Cooperative in our version. All three
bave the official pagination inserted.
Mr. FRANK. From the Supreme Court itselP
Mr. HURSH. From the Supreme Court. But none has the same ar-
rangement of cases.
Mr. fillANK. Right.
Mr. HtJRSH The aren't the same. So the arrangement of cases
*

is not the issue as see it. It's the identification-

Mr. FRANK. It's the pagination. And your problem then exists
where the courts don't have their own pagination but pick up
West's? Where the U.S. Supreme Court has its own pagination, it's
not a problem?
Mr. HURSH. Right; exactly. Precisely.
H

Mr. FRANK. All right, thank you. That's helpful.

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Mr. Ramstad.
Mr. RAmSTAD. Thank you, Mr. Cbairman.
er

Ms. Downing, 1, too, read your complete testimony, and else-

where your claim, as I understand it, that legislation is necessary
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to reverse West v. Mead, because West claims copyright in citations

through its various legal publications; is that a correct statement?
w

Ms. DOWNING. Yes, it is.

Mr. RAmSTAD. I, in fact, have a letter bere that you wrote to as-
sociation members, members of the Information Industry Associa-
tion, and I'm quoting now, "Prior to 1986, legal citation s'!--and the
one you use, the example you use is 900 F. 2d at pages 1 and 3-
9twere universally thought to be in the public domain." That sud-
denly cbanged-and I'm paraphrasing here-when the West v.
Mead c4se was decided. Quoting again: "In our view, the public pol-
icy prohibits copyrights in judicial opinions and statutes
equally prohibits copyright in legal citations. That precise and nar-
row point is all that we seek to establisb by legislation." That was
your letter and that is your position?
Ms. DOWNING. Yes.
Mr. RAMSTAD. Well, then my question is: Despite these similar
claims, Ms. Downing, isn't it true that various Thomson companies,

HLC 00012108
 ill
like Lawyers Coop, Bancroft-Wbitney, Clark Boardman, these com-
panies have been freely including citations to West's legal compila-
tions, literally millions of these citations, for over 100 years; isn't
that true?
Ms. DOWNING. Yes Convessman. The difference in the proposed
legislation and our about citations versus what we bave done
in the past is tbis: The references to the West published documents
and our information, as in all legal publishing information, is to a
particular point. It is a mere reference. This legislation goes to the
publication of the text of the laws or the text of a judicial decision
accompanied by its citation. So it is a very narrow piece of that.
Tbere's no doubt that all of us bave cited as legal publisbers Fed-
eral decisions from the West Federal 2d and Federal Supp. deci-
sions for many, many years because those are the sources of those
decision.,,. So this is a very small piece of tbat. They're different sit-
uation s.
Mr. RAmSTAD. Mr. Cbairman, Ms. Downing, I'm not sure yet that
I understand the problem. I've got one page here out of the really
millions published by your companies, and this example is taken
from a publication of Lawyers Cooperative by the name of "Mis-
souri Tort Law." On this one page there are-I have highlighted
them in yellow-there are seven citations to West reporters, includ-
' in g five jump citations like to Taylor v. Hitt at 342 SW 2d page 489
and 496. You're aware of that?
Ms. DOWNING. Yes.
Mr. RAmSTAD. Well, then it seems like-I hate to use the word
"misleading," but I'm still not sure I understand the problem.
Ms. DOWNING. Let me see if I can help in terms of an example.
In American Law Reports, where we analyze various specific is-
sues, and in doing that look at the laws of the various jurisdictions,
we may cite to, for example, a Rhode Island decision. In doing that,
H

we will follow the traditional practice of wben you cite to a particu-

lar point in a case indicating a citation number and the subsequent
yp

page upon which that point is made. That would be consistent with
the page from our publication that you have in front of you. It's
er

been a standard in the industry. I believe that may be one issue

La

that all the legal publisbers agree on.

A different example would be in Rbode Island, where we publish
a CD-ROM product that contains the case law in Rhode Island, for
w

the last 10 years West has been the only publisher of the Rhode
Island decisions in print. Due to the ei hth circuit decision, our
publication of those opinions on CD-RE does not include ref-
erences to the page numbers of those decisions in the West books.
So it is the combination of the citation with the text.
Or another example would be, if we were going to produce a CD-
ROM in Texas, we would not, because of West claims, include the
Texas statutes.
So this bill is addressed to those two situations. When we have
taken decisions and added value and offered them to the market,
can we give them in that product the references they need to cite
in the courts? So that's the specific star pagination question. And,
in a State like Texas, are the section numbers and beadings part
of the laws and in the yublic domain, so that we can, as any other
publisber could, add va ue and give to the bar and to the bench al-

HLC 00012109
 112
temative ways of access to the Texas statutes? So it's very different
than the citation in our publications. Does that help, Congressman?
Mr. RAmSTAD. Well, Mr. Chairman and Ms. Downing, let's shift
gears for a minute. I know my time is limited and I'll submit the
remainder of the questions in writing. Let me just ask you
Mr. MLkNK. I'm more patient here than in our subcommittee.
Mr. RAmSTAD. You sure are, Mr. Chairman.
[Laughter.]
Mr. FRANK. It's not my subcommittee; I've got to be nicer.
[Laughter.]
Mr. RAMsTAD. Ms. Downing, I'm aware of the major cop nght
case you won yesterday involving your refusal to license one Jyour
competitor's, CorSearch. I'm referring to the CorSearch case.
Ms. DOWNING. The Thomson and Thomson and CorSearch case?
Mr. RAmSTAD. Yes. The court upheld your "selection, coordina-
tion, and arrangement of trademark materials." That's at page 38
of the slip opinion.
I'm also quoting: "The court found that if CorSearch was able to
identify which items of information were State-generated items ob-
tained from the 50 States and Puerto Rico, CorSearch mi t select
them and rearrange them in CorSearch's own origina format,
without violating your copyright."
Isn't this exactly the same situation that you're complaining
about in regard to West and its publication?
Ms. DOWNING. Congressman, if.you have read the slip opinion,
you know more about the decision than I do. Let me share witb you
two observations, and then if tbat's not a sufficient answer to your
questiori I would request that we get back to you witb more infor-
mation.:.7
There are two important distinctions, I believe, between that
case and the situation that we're talking about here. First of all,
that case involved trademarks, not the decisions of the courts and
H

the laws of the legislatures of this country. So it's an entirely dif-

yp

ferent subject matter.

It's also my understanding that that case was decided on anti-
er

trust grounds, not on copyright grounds. But I would be happy to

provide the subcommittee with additional information, if that
La

would be helpful.
Mr. RAmSTAD. With or without reference to the case, Mr. Chair-
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man, Ms. Downing, let me just ask you point blank: Couldn't you
create your own original format in case opinions and statutes?
Ms. DOWNING. Absolutely. The question is one of public policy
and whether it serves the interest of the public to have a large
number or a different number of citation systems. The American
Bar Association's Committee on Patent, Trademark, and Copy-
rights' resolution says that they believe as a public policy matter
that it is fundamental that the statutory numbering schemes be
considered part of the laws and, therefore, not subject to copyright.
Mr. RAmSTAD. Well, Mr. Chairman, I'm just going to take advan-
tage of your good graces today and ask one more question of this
witness.':
I know that one of your subsidiaries-I believe it was Bancroft-
Whitney--origin ally sought to challenge the principle of copyright
'

protection for private unofficial corhpilations of State statutory ma-

HLC 00012110
 113
terials in a suit filed in the district court in Texas in 1985. Ban-
croft-Whitney and its parent company, Lawyers Cooperative Pub-
lishing Co., were not successful in pursuing the same goal in legis-
lation introduced in both Texas and Illinois. But after Thomson
took control of the company, you sought, your company-and I
don't know if the lord had anything to do with it directly or not,
Mr. Chairman, but your company sought and achieved dismissal of
the case just last summer, 6 years after suit was filed and several
months after Feist. So I am really incredulous and I just don't un-
derstand. Is it your position that Feist protects West copyrigbts?
Ms. DOWNING. Congressman, I would like to give you
Mr. RAmSTAD. Could you answer yes or no? Is that our position?
Ms. DOWNING. It is the position West has taken wU us.
Mr. RAmSTAD. But what is your position? Is your position that
Feist protects West copyrights?
Ms. DOWNING. Our position, no.
Mr. RAMSTAD. Then I don't understand why, I guessgecu don't
pursue vour case in court. Mter the Supreme Court ba d down
the Feiit decision, why didn't you pursue the case judicially?
Ms. DOWNING. Congressman, I would like Mr. Hursb to address
this question, since he was involved in the original litigation, if
that would be acceptable.
Mr. HURSH. Yes. We undertook a plan to publish the statutes of
Texas after the decision of the district court bad been banded down
in the Mead Data Central case. At that time, because the Mead
Data Central litigation witb West involved pagination of cases and
we woere talking about statutes, we thought this might--this was
certainly a distinguisbable issue and we corresponded witb the
West Publishing Co. and told them our intention, and their re-
sponse was that if we used the numbers they had assigned to these
public documents in Texas, they would, indeed, sue us. Indeed,
H

the di'd sue us.

'%e had instituted a suit for declaratory judgment. It was re-
yp

moved to the eigbth circuit. West counterclaimed on the basis of

their copyright. And during the pendency of this, the decision of
er

t'he Court of Appeals for the Eigbth Circuit was handed down af-
firming the district court decision, and we abandoned our suit, Con-
La

gressman, as a business judgment: To undertake to publish the

statutes of the State of Texas requires a huge investment of time
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and money. It's a very difficult decision. We were adding a lot of

things that West Publishing Co. does not add. We were undertak-
ing a miijor publishing effort in a bighly risky situation. We felt the
decision of the court of appeals in the West and Mead case was
wrong but tbat's what the court said and we decided, as a business
jud nt, rather than risk the resources to pursue that, we would
appiymthem some place else, and that's exactly what bappened.
Mr. RAmSTAD. Thank you, Mr. Chairman.
Mr. FRANK. Thank you. I thank the panel. If there is anytbing
you wish to amplify, feet free. The record will be open for a little
while. So if you can get anything further in quickly-you indicated
you wanted to do that-you can.
We will take our final panel today: Mr. Vance Opperman, wbo
is'a artner in the law firm of Opperman, Heins & Paquin, and
he s tZ lead counsel in West v. Mead. He has been counsei to West

HLC 00012111
 114
for 20 years or more. Accompanying Mr. Opperman will be Ms.
Donna Bergsgaard, who is the manager of West Reporter & Digests
section, and Robert Be"ing, who is a consult to West and is the
law librarian and professor of law. They are our last panel. Oh, I'm
so , it's not the last panel.
A71 right, please go ahead. Mr. Opperman, go ahead.
STATEMENT OF VANCE K OPPERMAN, ESQ., OPPERMAN, HEINS &
PAQUINI ON BEHALF OF WEST PUBLISIUNG CO., ACCOMPANIED
BY DONNA BERGSGAARD, MANAGER, MANUSCRIPT DEPART.
MIENT FOR REPORTER & DIGESTS, WEST PUBLISIUNG CO., AND
ROBERT C. BERRING, PROFESSOR OF LAW, UNrVERSITY OF
CALIFORNL4, BERIKELEY
Mr. OPPERMAN. Thank you, Mr. Frank. I have been properly
identified. I realize my full statement is in the record.
Mr. FRANK. Yes, without objection, your statement will be in the
record.
Mr. OPPERMAN. Sitting with me is Donna Bergsgaard as
manager-
Mr. FRANK. I've already introduced tbem, I believe. So why don't
you get right to your statement?
Mr. OPPERMAN. All right-and Professor Berring.
Mr. Chairman, rather than read a staYment, I'd like to take a
few minutes to respond to some of the issues that have come up
today. What you have not heard is anyone coming before you-and
you will not hear it, and you haven't heard it for many than 100
ears in this country-that there is a problem witb access to the
'aw. You've never heard it.
Mr. Oman was here, Register of the Copyright. He was asked a
question.. He said material is available and in several formats; no
problem" 'Ve see the material as available."
H

The fifth circuit, not the castigated eighth circuit, which I'll get
yp

to in a minute-tbe fifth circuit in the action brought by the State

of Texas, when it affirmed the dismissal in the district court, made
er

specific notice of the fact that there is no problem with the access.
There is free and open access to the Texas statutes in the State of
La

Texas. While people are looking for that citation, let me fumish
that for you. That's at 882 F. 2d. 177.
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And, of course, there is no problem with access, which is the pub-

lic policy question addressed by copyrigbt. Let me take Texas, hav-
ing mentioned it. First of all, we didn't sue Bancroft-Wbitney; they
sued us. They decided, I guess, we heard a few minutes ago, not
to pursue the case, although they could have since Feist had al-
ready come down, and they told the court they were not going to
use any of the West arrangements.
The fifth circuit says no roblem with access in Texas. Now how
can that be? Is it because tEere are States that refuse to give opin-
ions to someone or statutes to someone? Of course not. There is no
State, there is no State agency, there is no Federal court, there is
no Federal agency we've ever heard of who has ever refused to give
their materials to any publisher, and those publishers are as free
as we are-as free as we are-to publisb their own compilations of
that

HLC 00012112
 115

As a niatter of fact, I gave the committee not a complete list, but

a list of over 65 new publishing entities that have come up in this
very narrow area, trying to cban e the law here in a very narrow
area. Over 65 new publications %ve come up just since West v.
Mead, and I gave a list of tbose, and that's not complete.
To get back to Texas, bere's the situation in Texas: Texas has the
official session laws, very mucb like the statutes at large in the
U.S. Congress. Anyone is free to use the session laws. We publish
them under separate contract. The arrangement of the session laws
is totally different-totally different-than the codified code of
Texas. Anyone is free to publisb; anyone is free to seek the con-
tract. As a matter of fact, Bancroft-Whitney bad that contract for
2 years. They couldn't perform. But tbey're free to go through the
bidding process of the State of Texas and publish the official ses-
sion laws. And as anybody else is free to do, they can have their
own compilation of those Texas statutes, but nobody bas been will-
ing to spend the money to do that.
Texas decided in 1962-1962-24 years before West v. Mead, to
go abead and recodify their own statutes, and tbat's proceeding
apace. It's a complicated task. It takes a lot of time and a lot of
monepfg,oney apparently the Texas Legislature has wanted to
spen something else in their own decisionmaking. But the
point is there is no problem of access in the State of Texas, as the
fiftb circuit found, nor could there have been, because anyone is
free to use the session laws or to do their own codification, as West
has done.
The situation is the same witb regard to case law. First, of
course, there is no State that refuses to give its opinions to people
that wish to publish, and there are literally hundreds-hundreds-
of publisbers and different publications that take those cases and
use them in various kinds of compilations, and we have given a
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short but incomplete list to this committee.

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Now Delaware, of course, whenever you have a lawyer tell you

they want to give you an example, you can be sure it's the best for
er

their case. There isn't any question wbo is the result and who is
the point of this very limited piece of legislation; it's West Publish-
La

ing Co. It isn't anybody else. The law is not of general applicability.
It doesn't apply to all compilations. It doesn't even apply to para-
w

grapb numbers. It applies solely to West.

We've done sometbing in Delaware. Well, the case law in the
State of Delaware-again, I would be sbocked to hear that Dela-
ware refused to give its opinions to anyone who wisbed to compile
them. I couldn't believe such a thing, nor do we support sueb a re-
sult.
If you wisb to look up the case law of the State of Delaware, if
you wanted to be an entrepreneur and do your own compilation,
fine; it's open for anyone to do so. You can also get it on Westlaw.
You can get it, of course, in the Atlantic Reporter. You can get
them on Lexis, and a ou used to be able to get them on Veralex.
Veralex was availade' througb LCP before Lloyd Tbomson and
Thomson International bought Lawyers Cooperative Publishing for
$810 million, along with the otber 25 American publishers they
have bought in the last 8 years. They then phase out Veralex.

HLC 00012113
 116
So, quite differently than the impression given, there are at least
three sources presently available to anyone for the law of the State
of Delaware. If there's an entrepreneur in the crowd who wants to
compile that information, they can go to that State and do so, as
everyone else is free to do so.
Your Honor-Mr. Chairman-
Mr. FRANK. Not yet, and I hope never.
[Laughter.]
Mr. uppERmAN. Well, I think people that serve in public office,
frankly, do serve in an honorific position, and I recognize that there
are some who may feel differently, but I don't tbink there's anyone
in this room that feels differently.
The point is this legislation is being pushed by one commercial
enterprise, Thomson, previously called International Thomson.
They do not want to go into Texas and do what the Texas Legisla-
ture is starting to do or what we have done since 1926, althougb
they're free to do it. They want to copy our arrangement.
They apparently don't want to go into the States like Delaware,
small States, not a large market, and they don't want to compete
with Westlaw, Atlantic Reporter, and Lexis. They don't want to go
to the court to get those opinions and put them on whatever kind
of format they think they can sell. They'd like to copy ours. That's
not competition.
And what you heard today is, when that question was asked-
and, Mr. Chairman, you asked it-when that question was asked,
they said, well, yes, it's true, we could of course-I we could
do that, but then we wouldn't have one form of citation. What that
is is an admission by International Thomson that, unlike the otber
American publishers and unlike the otber entrepreneurs, including
all the other publisbers that have gone to the source and gotten the
source, sold those compilations, and done their marketing, they
want to use one citation: West's. They want to do it witbout com-
H

pensation and they want to do it by flat from Congress. We don't

tbink that ought to be allowed and that's wby we oppose the bill.
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Thank you.
[The tittachments to Mr. Opperman's
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appendix.] statement appear in the

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[The prepared statement of Mr. Opperman followsj

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HLC 00012114
 117

PREPARED STATMNT OF VANCE K OppmtmAN, EsQ., Hms & PAQuiN,

oN BEHALF oF WEsr PniisiuNG Co.
Introductio

Good morning, Chairman Hughes and distinguished Members of the

Subcommittee. I am Vance K. Opperman, senior partner of Opperman,
Heins & Paquin with offices in Minneapolis, Minnesota and
Washin,4ton, D.C. I appear today on behalf of my client, West
Publishing company of Eagan, Minnesota. I have been counsel to
West for over twenty years and have acted in that capacity in a
variety of judicial and legislative proceedings including the
District Court, Court of Appeals, and Supreme Court proceedings in
West Publishing Company. v. Mead Data Central, Inc., 616 F. Supp.
1571 (D. Minn. 1985), affirmed, 799 F.2d 1219 (8th Cir. 1986),
cert. denied, 479 U.S. 1070 (1987) ("West V. Mead"). On behalf of
West, my firm filed an amicus curia brief in the Supreme Court in
Feist Publications. Inc. v. Rural Inc.,
Ill S.Ct. 1282 (1991) ("Feist").

The issues that H.R. 4426 poses are far-ranging, complex and
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varied. Therefore, to assist the Subcommittee in gaining a fuller

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understanding of the issues, Donna Bergsgaard, Manager of the

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Manuscript Department for Reporters and Digests at West is with me

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to address questions concerning West's editorial processes.

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Also accompanying me today on behalf of West Publishing

Company is Professor Robert Berring, one of the nation's foremost
experts on legal research. Professor Berring is a Professor of Law
and Law Librarian, University of California, Berkeley, School of

HLC 00012115
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Law. From 1985 to 1989, he was Dean of Berkeley's School of

Library and Information Services. He is also a past President of
the American Association of Law Librarians. Professor Berring has
consulted with many legal, publishers and has agreed to consult with
us on this hearing. He is prepared to answer questions from the
subcommittee about the current level of competition among providers
of legal information from the perspective of a long-time user of
legal materials as well as the effect on the market that passage of
H.R. 4426 would have.

overview

West has been publishing report and statutory

case
Publications since the late 1800-s. West's National Reporter
System publications are innovative, unique works that have been,
and continue to be, of great iinportance to American
legal
practitioners and scholars. West I s success in the market, however,
is certainly not because it is a "monopolist, 11 as some have wrongly
asserted. Rather, West remains successful because it provides
innovative products on a timely and cost-effective basis. The
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legal publishing raarket has always been extremely competitive and

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remains so today. This is because the text of statutes and

judicial opinions is in the public domain and freely available to
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all compilers. All that is needed to compete is a willingness to

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innovate.
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HLC 00012116
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H.R. 4426 would have the eventual effect of driving West and
other legal publishers from the market by removing copyright
protection for the creative elements of their compilations. This
will necessarily reduce the public's access to judicial decisions
and statutes, and force the public to rely upon federal and state
goverrments to make these materials available. The cost to public
treasuries, if governuLents were forced to undertake the work now
performed by private compilers, would be immense.

The genesis of this legislation can be found in a commercial

dispute between West and one of its competitors -- the Canadian-
owned and based Thomson corporation. Thomson has in the past
attempted to have West's copyrights in its legal publications
declared invalid in both legislative and judicial forums. Those
efforts have uniformly. failed. H.R. 4426 -- strongly advocated by
Thomson -- represents the latest manifestation of this ongoing
dispute between two competitors, but it would have a far broader
effect. H.R. 4426 seeks to have Congress reverse the Supreme
Court's recent decision in Feist as that decision applies to
compilations of legal materials. Feist, of course, held that a
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compiler's original selection, coordination and arrangement of

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public domain material was protected by copyright. This was

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precisely the issue the Courts in West v. Mead examined and

affirmed.
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HLC 00012117
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Legal publishers exercise enormous amounts of editorial

judcjment and creativity in creating their case report and statutory
publications. These aspects of original contribution are precisely
what the Supreme Court addressed in Feis . The critics of West
simply are unaware of the many editorial efforts and decisions West
makes in selecting, coordinating and arranging the legal materials
it compiles.

COPYing will always be cheaper and easier than creating. H.R.

4426 will reward copiers at the expense of editorial innovators and
will ultimately reduce both the number and the quality of the case
report and statutory compilations which are available to the
American people today.

The West Publishing Company

West Publishing Company is an employee-owned company that has

specialized in legal publications for 116 years. As a prominent
publisher of legal materials -- including case reporters, digests,
legal treatises, case books, text books, dictionaries,
and
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encyclopedias -- West occupies a distinct place in our nation's

heritage. As lawyers, you know that West pioneered
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a unique
headnote and a key numbering system that in large part organized
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the American legal system. In addition, West created and publishes

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the United States-Code Annotated and annotated statutes for

many
states.
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HLC 00012118
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Legislators, judges, practicing lawyers, legal scholars and

law students all rely on West's products, which continue to make a
significant contribution to our nation's legal system. West enjoys
a reputation for thoroughness, accuracy and timeliness. There can
be no doubt that West is an American success story.

Plest began business operations on the banks of the

Mississippi River in St. Paul at a time when Minnesota was still
called the "Northwest" and the state of American law reporting was
far from what we know today. Lawyers in states like Minnesota were
largely dependent upon official state case reports to learn about
decisions in their state appellate courts. These official reports
were often long, unhelpful publications and they were not published
on a timely basis. obtaining information and decisions from courts
in other states, or from federal courts, was even more difficult
and time-consuming. Most of the decisions issued by federal
district and circuit courts prior to 1880 had never been reported
despite their importance to the American legal process.

West's first publication of case reports began in 1876 and

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initially contained opinions of the supreme court of Minnesota and

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selected decisions of the state district courts and the U.S.

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district court located in Minnesota. Coverage was quickly expanded

La

to include decisions from Iowa, North and South Dakota and

Wisconsin.
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HLC 00012119
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West soon recognized and met the demand for similar

publications of case reports in other states. Over the course of
the next fifteen years, West created a series of regional case
report publications, as. well as the Federal Reiporter and the
Suipreme Court Reporter publications, using uniform methods for
reporting those various decisions. Largely -because of the
company's efforts, American legal practitioners and scholars for
the first time had ready access to case reports of the precedent-
setting decisions of the states' highest courts as well as those of
the federal courts.

From the beginning, West has always faced stiff competition in

the marketplace, but I do not believe that anyone disputes that one
major advantage of West's particular method of selecting,
coordinating and arranging case reports is that West has provided
Arnerican legal scholars and practitioners with timely and readily
usable sources of information on important court decisions. West's
more thorough case reporting has fostered harmonization of the law
among widespread jurisdictions in the United States, and West
publications have thereby increased the public's understanding and
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knowledge of our laws, which is essential in a democratic society.

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In addition to publishing case reports, West has also been

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involved in creating compilations of state and federal statutes.

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This was a natural outgrowth of westis experience and expertise in

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creating and publishing compilations of case reports. When West

HLC 00012120
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first began publishing in this area, some states maintained

official codifications of their laws and published them -- although
often at irregular intervals. other legislatures simply collected
their statutes into voluiLes of session laws. They did not codify
these laws or enact any official statutory arrangement. As a
consecluence, the bench, bar and citizens of those states found that
correctly ascertaining the state's law -- literally spread
throughout decades of session law publications -- depended upon a
combination of herculean research efforts and sheer good fortune.

West undertook to create useful compilations of the statutes

of Illinois, Texas and several other states that had no official
codification -- or no current codification -- of their statutes.
These unofficial statutory compilations generally involved first
editorially creating a new, or modifying an existing, subject
matter framework. Every existing and newly enacted permanent
session law was carefully reviewed, selected, and then coordinated
and arranged where West believed it should be within such subject
matter framework, and assigned an appropriate combination of
numerals and/or letters that sensibly expressed the location of the
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law within the modified framework.

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West was but one of many private companies that published

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compilations of all or part of the various state statutes, often in

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competition with official publications -- put out by state

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goverrments -- or other private compilations. Competition in the

7

HLC 00012121
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field of state and federal statutory materials has always been

vigorous and is now increasing dramatically. West currently
publishes unofficial compilations of statutes covering 21 states.
in addition to West's and other private publishers' compilations,
the public is still free to seek information about state statutes
from official sources.

Because of the availability of these unofficial compilations

of state statutes and case reports, hundreds of millions of
taxpayer dollars are saved across the country. If taxpayers had to
shoulder the entire burden of publishing these materials, the
expense to public treasuries would be immense.

West also contributed to the compilation of federal statutes.

In 1924, members of the United States Senate asked West and another
legal publisher to aid in preparing a codification of the nation's
laws. The state of the federal statutes was so horrendous that
Congress had enacted numerous conflicting laws and had even amended
repealed laws, and there were delays in the federal courts that
greatly increased the cost of legal work.
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West and its fellow publisher offered to perform the

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codification for a nominal appropriation of $10,000, and the

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Chairman of the House Committee on Revision of the Laws stated,

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11[t]hese two [publishing] houses . . . subordinated their private

interests to the public
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good and . . . produced a result which

would have been impossible without them."

HLC 00012122
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Congress also retained the two publishers to prepare an index

to what became the new. United Stater. Code. The two companies
agreed to perform this important, but burdensome, task for a mere
$5,000.

In addition to West's traditional publications, West began

offering WESTLAW, its computer-assisted legal research service, in
1975. WESTLAW now provides access to a full-text, interactive
database containing many of West's printed case reports and
statutory compilations, plus much more. Most recently, West began
producing a series of CD-ROM products that provide its customers
with access to a wide-range of West publications and the
publications of others on easily stored compact disks. West faces
strong competition from a number of companies in both of these
electronic product areas as well as in the print product area.
However, no matter the format in which West chooses to produce its
publications, it continues to editorially select, coordinate and
arrange legal materials in the ways that West believes are most
useful to its customers.
H

over the last twenty years, technological innovations have

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created more opportunities and new challenges for west and its
competitors. The main reason for West's success in the competitive
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legal publishing arena is its commitment to quality. From the

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founding of the company, West has used only the highest quality
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inputs -- from the best editors and quality control personnel to

top quality paper and bindings. West continues to uphold these
same quality standards today in all its product offerings.
9

65-153 0 - 93 - 5

HLC 00012123
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West is, in my admittedly subjective view, justifiably proud

of its products and services, and West is forever cognizant that
timeliness and quality are two of the most important assets in a
very competitive marketplace. Above all, West knows that its
products help make information about our nation's laws more widely
available. By designing well-organized and useful legal products
and by producing comprehensive, accurate and easily usable
reference sources for the bench, bar and public, West has helped to
ensure that Americans continue to have knowledge and understanding
of the laws under which we all live.

West as a Ta e 0 H-P_ AAIA

H.R. 4426 is of great concern to West. Its title states that

its purpose is to tfexclUde copyright protection for certain legal
couipilations.11 (emphasis added) The lobbying materials in support
of the bill contain ominous. references to West and explicitly
mention a case I will discuss later. Moreover, the
copyright exclusions of subparagraphs (2) and (3) omit any mention
of other known citation systems, for example paragraph numbers, by
which other prominent publishers of legal compilations organize
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their materials. For these reasons, it is fair to assume that H.R.

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4426 is aimed principally, if not solely, at West and that its

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dominant purpose is to put West's copyrighted legal compilations

La

into the public domain.

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HLC 00012124
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However, H.R. 4426, as drafted, is ambiguous at best. The

text of the bill would amend Section 105 of the Copyright Act,
among other things, to make protection unavailable "for any name,
number, or citation by which the text of State and Federal laws or
regulations are, or ever have been, identified" and "for any volume
or page number by which State or Federal laws, regulations,
judicial opinions, or portions thereof, are, or ever have been,
identified." As discussed more fully below, neither West, nor any
other publisher, claims copyright in citations to case reports or
statutory products. However, West and other publishers do claim
copyright in the compilations of those materials -- that is, in the
selection, coordination and arrangement of such materials. The
text of H.R. 4426 in no way addresses those compilations.

Effect of H.R. 4426 on Comvetition and Consumers

congress must consider the public policy implications of any

legislation before it, even a measure purportedly as narrowly drawn
as H.R. 4426. In this larger context, I believe the bill would
have the eventual effect of driving West and other legal publishers
H

from the market by removing the copyright protection traditionally

yp

granted to publishers who compile public domain information.

Rather than increasing the availability of the laws and rulings of
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state and federal goverrments, enactment of H.R. 4426 would produce

La

the opposite result and likely force legal researchers to undertake

w

much more laborious and expensive methods of research. In short,

11

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H.R. 4426 would have an adverse effect upon the broad

range of
legal publications that are currently available.

The reasoning behind,H.R. 4426 appears to be that, by removing

the compilation protection granted under the current Copyright
Act
and thereby placing those materials in the pUblic domain, more
providers of legal information and more innovative products
will
emerge. Some materials circulated
by the private proponents of
this legislation have stated that the current Copyright
Act has
permitted certain legal publishers to erect barriers to the
publication of judicial opinions and state statutes. As a result,
the public is supposedly denied access to public domain materials
because other publishers are purportedly inhibited
from entering
into competition for case report or state statutory
publications.
This reasoning is totally inco-rect. An analysis of the current
legal publishing industry makes it abundantly
clear that no legal
publisher has created or could create barriers to the publishing of
case reports or state statutes. Indeed, the legal publishing
industry is highly competitive and is currently changing in
a
dramatic fashion -- a change driven by more
competition employing
new formats and featuring new entrants on the information
H

scene.
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Precisely because Judicial opinions and state

statutes are in
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the Public domain, there are a vast array of legal

publications and
La

computerized legal research services available

today -- both
official and unofficial -- that give members of the
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public broad
12

HLC 00012126
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access to state and federal judicial opinions and state statutes.

competition exists not only in price, but in format, reliability,
timeliness and service -- indeed, in all of the areas that make up
product quality. By denying copyright protection for editorial
creativity, H.R. 4426 would undermine the incentive for private
publishers to innovate and compete in an important component of
product quality.

I have provided as a part of my testimony lists of some of the

current publishers of state and federal case reports and state
statutory publications. These publishers provide reports of
literally hundreds of thousands -- and even millions -- of federal
and state court decisions. Some tend to be more comprehensive in
their reporting, while others are specialty case report
publications like the Bureau of National Affairs' ("BNAII) United
(ItCCH,I)
states Patent Ouarterly and Commerce Clearing House's
CopVright Law Reporter.

I would stress that these are by no means comprehensive lists.

For example, we have not included the many publishers who provide
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case silm-aries, or case excerpts, nor have we included the scores

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of legal newspapers that often provide full text case reports of

state appellate decisions on a weekly basis. Further, we have not
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included the numerous publishers who publish portions, usually on

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a topical basis, of state statutes.

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HLC 00012127
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The presence of so many products and publishers

clearly shows
that the copyright Act has not erected barriers to
entering the
field of case report and state statute Publications
but has
Provided incentives to compete.

Just to illustrate the multiplicity of publishers of federal

judicial opinions, the full text of each opinion of the United
States Supreme Court currently can be obtained
from at least seven
different sources: (1) the official United States Relports; (2)
West's u reme Court Re orter; (3)
the United States Supreme Court
Reports, Lawyers's Eclition,
published by Lawyer's Cooperative
Publishing Company; (4) BNA's L-aw Week publication;
(5) WESTLAW;
(6) LEXIS; and (7) the Supreme Couri, Bulletin
published by CCH.
Many of these opinions are fully reported in local
bar publications
as well. In addition, U.S. Supreme Court opinions
involving
particular legal topics or areas are also reported
in many of the
specialty case report publications we have identified
on the list
of case report publishers.

Let me now turn tocompilations of state statutes, where there

is also a high degree Of cOmPetition. At present, 21
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states have
at least two competing printed sets of state
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statutes that are

Published by either the state or by private publishers.
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Five
states (including Michigan, New York and Florida)
have thre
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competing printed sets of state statutes.

in addition, the WESTLAW
and LEXIS services contain the statutes of
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every state in the

14

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country. As a result, there are at least three sources of state

statutes for everV state, and some states have five sources of
statutory material. Again, these ficjures and the list of state
statute publishers I have submitted do not include the numerous
publications containing Portions of a state's statutes, usually on
a topical basis. They also do not include the official session law
volumes that are published by most states.

For example, a consumer interested in obtaining access to all

California statutes has four unofficial sources to choose from:
Bancroft-Whitney's Deering's California Codes Annotated, West
Publishing's West's Annotated California Codes, and the online code
libraries on WESTLAW and LEXIS. These four sources are in addition
to the session laws available in the official Statutes of
California. it is clear, therefore, that no private compiler has
anything close to a monopoly on the publishing of state statutes.

If enacted, H.R. 4426 will ultimately result in the

publication of few-er compilations of case reports and state
statutes. If other publishers of legal materials may freely
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reproduce existing publishers' compilations, those reproductions

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will adversely affect the markets for the existing compilations.

It will always be easier and cheaper to simply copy than it will be
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for the original compiler to make the editorial selection,

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coordination and arrangement decisions necessary to create the

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compilation. The main component of the compiler's editorial work

15

HLC 00012129
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would thus be freely available to any other publisher without the

other publisher's incurring any of the expenses required to produce
the compilation.

Under these circumstances, if H.R. 4426 were enacted, it is

likely that large numbers of legal compilations, beginning with the
smaller circulation, specialty case reports, will cease to be
published because the public will be able to obtain replicas --
whether in print or other formats -- of these compilations at much
lower cost from those who merely copy. Ultimately, more
comprehensive legal compilations will be affected because the
editorial expenses involved in selecting, coordinating and
arranging the materials will necessarily be greater than the cost
of simply copying. If editorial innovation in legal compilations is
no longer protected, the incentive to continue publishing, or to
create new, innovative legal compilations, will obviously be
seriously eroded.

The copyright laws are designed precisely to encourage further

progress by protecting originality and innovation. copying,
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however, is not innovative. The truth of the matter is that

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editorial innovation occurs oniv when innovators can protect their

original expression.
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16

HLC 00012130
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Commercial Copying and West's Successful DefenSe Of Its Business.

I believe that the genesis of the current effort to alter

general compilation copyright protection in order to have
compilations of legal materials placed in the public domain can be
found in a recent commercial dispute between West and one its
competitors. That particular competitor, Bancroft-Whitney Company
(11B-W11), sought to use -- without permission -- West's copyrighted
arrangements of Texas statutes. B-W is now wholly owned by Thomson
Corporation.

Thomson Corporation is a multinational, inulti-billion dollar

conglomerate owned by Lord Kenneth Thomson. It has purchased many
companies in the American legal publishing industry over the last
few years. In addition to Bancroft-Whitney, Thomson also owns
Lawyers I Cooperative Publishing company, Clark Boardman Company and
Callaghan & Company (now Clark Boardman Callaghan), Research
Institute of America, and Warren, Gorham & Lamont. All of these
Thomson-owned enti ies c M C
compilations.
H
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In 1985, B-W filed suit in U.S. District Coux-t in Dallas

seeking a declaratory judgment that West's unofficial, copyrighted
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compilations of Texas statutes, which Bancroft-Whitney sought to

La

publish, were in the public domain. B-w claimed that it could use
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those compilations without West's permission. There is currently

no complete official codification of Texas statutes.

17

HLC 00012131
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At the order of the District Court in Texas, the case was

transferred to Minnesota. While the suit was still pending,
however, Bancroft-Whitney attempted to have the Texas Legislature
pass a bill that provided.that the Texas Legislative Council would
assign an "official citation" to each Texas law by simply adopting
the statutory designations contained in West's compilations of the
state's statutes. This bill failed.

DUring this same period, the Texas Attorney General filed suit
against West in Federal District Court in Austin, also seeking a
declaratory judgment that West's copyrighted compilations of Texas
statutes were in the public domain. That suit was dismissed by the
Texas District Court within four months and that decision was
upheld by the Fifth Circuit. Significantly, the Fifth Circuit's
opinion noted that 11[flor several decades Texas and West have
enjoyed an amicable publishing relationship" regarding Texas
session laws and that West had never given any indication of any
intent to limit the State's use of West's compilations of Texas
statutes. State of Texas v. West Publishincr Company, 882 F.2d 171,
173, 175-77 (5th Cir. 1989). The Supreme Court denied certiorari
in this case. 110 S.Ct. 869 (1990).
H
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As these events were unfolding in Texas, West's competitors

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sought to accomplish a similar objective in Illinois. There, Mead

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Data Central, Inc. ("Mead") joined with Lawyers' Cooperative

Publishing Company (now owned by Thomson) in having a measure
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introduced the Illinois Legislature. That bill provided that the

classification of Illinois statutes in West Is copyrighted statutory
compilations, together with the chapter and paragraph designations
contained therein, would,be "codified and enacted" and adopted as
"official." The bill passed the Illinois legislature twice and was
vetoed twice by the Governor. In one of his veto messages, the
Governor stated that enactment of the legislation would put the
state "into the middle of a private copyright fight where it does
not belong." Veto Message of Hon. James R. Thompson, Governor,
State of Illinois, on H.B. 1924, Sept. 25, 1987.

After these efforts in Texas and Illinois failed and the

federal courts rejected the suit filed by the TexaS Attorney
General, Bancroft-Whitney -- by then a subsidiary of Thomson -- was
left with its long moribund lawsuit regarding the Texas statutes
against West in Minnesota. However, rather than pursue its claims
in Federal District Court, Bancroft-Whitney sought dismissal of the
case in 1991. The Court granted that motion in July 1991. In
November 1991, B-Wls new parent Thomson began seeking introduction
of legislation very similar to H.R. 4426.
H
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The West v. Mead Decisions and Their Impact

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Thomson's dogged pursuit of its commercial dispute with West

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is not, of course, the first time that West has faced challenges
w

from its commercial competitors who want to copy West's

19

HLC 00012133
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compilations rather than create their own independently authored

compilations. Unauthorized use and copying are a matter of extreme
concern to West, as they are to other copyright holders.
Particularly in this age of advanced copying technology, which
includes electronic scanning, copying is much cheaper than
independently creating an original compilation.

Perhaps the most striking single example of unauthorized use

is West v. Mead. For the convenience of the Subcommittee, I have
attached to my testimony copies of the opinions of both the
District Court -- which gives a good silminary of the facts -- and
the Court of Appeals.

As you are no doubt aware, the West v. Mea suit involved the
interplay between LEXIS, Mead's online couLputerized legal research
service, and West's National Reporter System publications. When
Mead first offered LEXIS in 1973, it included, where applicable, on
the first computer screen of each LEXIS case report a citation to
the first page of West's published report of the decision. This
was, and is, a common practice in the legal publishing field, and
as has been its continuing policy, West did not object.
H
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In 1985, however, Mead decided that it would provide its users

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with a so-called "star pagination" feature that would basically

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entirely replicate West's copyrighted compilations of case reports.

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In essence, Mead planned to designate page breaks and related page

20

HLC 00012134
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numbers in its LEXIS database that would reflect exactly each and
every page of a decision as reported in West Is copyrighted volumes.
As a result, LEXIS customers would, in effect, be able to use
West's case report publications without having to consult those
original works of authorship.

Mead's primary argument in defense of its plan was that West'

was simply trying to claim a copyright in volume and page numbers.
Mead also went further and challenged whether case report
compilations like those of West's could ever be protected by
copyright.

Those who disagree with the decisions in West v. Mead have

consistently distorted a central fact. I cannot state often enough
that, contrary to Mead's assertion in the case and some assertions
that Thomson Corporation is now making, West did not and does not
claim copyright protection for page numbers and citations per se.
it is ridiculous to think that any publisher could or would claim
copyright for terms like "Volume 53411 or "Page 42.11 Neither does
west claim that its citations-- such as 11681 F. Supp. 122811 are
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in and of themselves copyrightable. Moreover, West has not and

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does not -- object to others using so-called "jump cites" such

as 11683. F. Supp. 1228, 123011 -- which are commonly employed to
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give a more specific reference to a quote or summary from a

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reported opinion.
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In fact, it is to West's advantage and the advantage of

other publishers in the same situation to have its unique
citations used and published as widely as possible. This includes
such usage by competing publishers. As a result, West has actually
encouraged the use of citations to West publications by others,
even its competitors.

What West continues to object to and what was really an issue

in West v. Mead is the wholesale takincr of its oriciinal coipvrighted
compilations of case law materials for direct commercial use by a
competitor.

To prevent this result, West brought suit in United States

District Court in Minnesota for copyright infringement and moved
for a preliminary injunction. Mead, vigorously defended by able
counsel, opposed the motion. After extensive hearings, West
successfully obtained a preliminary injunction against Mead.
Significantly, the District Court focused particularly on West's
editorial processes -- more fully described later in my testimony
-- and concluded that:
H
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West does not ... simply take any cases that it has on
hand, put then together in any order, and bind in a hard-
back volume. They first separate state court decisions
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from federal court decisions. The state court decisions

are further subdivided into regions and placed in a
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regional reporter appropriate for the case in question.

The federal decisions are divided at the district court
and appellate court level. District court decisions and
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are further subdivided according to the subject matter of

the decision be they bankruptcy, federal rules or other
22

HLC 00012136
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miscellaneous matter. This comprehensive process

involves considerable planning, labor, talent and
ludcrment on West's Part. 616 F. Supp. at 1576 (emphasis
added).

Having taken notice of "West's successit in its field, and the

"genius" of West's contributions, the District Court granted West
a preliminary injunction.

On appeal, the United States Court of Appeals for the Eighth

circuit upheld the preliminary injunction, concluding that Mead's
planned star pagination feature would infringe West's case report
arrangements. The Eighth Circuit's opinion spoke clearly to
several legal principles. First -- and most significantly -- the
Court determined that "the arrangement West produces . . . is the
result of considerable labor, talent and judgment . . . . [T]o meet
intellectual creation requirements a work need only be the product
of a modicum of intellectual labor; West's case arrangements easily
meet this standard." 799 F.2d at 1226-27 (emphasis added).

Clearly, contrary to the claims of some critics who would re-

write that opinion, the holding is not based on the so-called
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"sweat of the brow" theory, which is keyed only to the compiler's

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labor. Rather, the Eighth Circuit's opinion is explicitly based on

er

the Copyright Act's requirement of original authorship -- i.e.,

La

sufficient selection, coordination, or arrangement. In fact, the

"sweat of the brow" theory is never mentioned in the Eighth
w

circuit's opinion.
23

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Second -- contrary to Mead's assertion in the case and

Thomson's assertion to Members of the Subcommittee -- the Court
explicitly foun that West's claira was not one for "copyright in
its page numbers." The Court stated as follows:

[W]e concur in the District Court's conclusion that

West ' s arrangemenis a copyrightable aspect of its
compilation of cases, that the pagination of West's
volumes reflects and expresses West's arrangement, and
that MDC I s intended use of West I s page numbers infringes
West's copyright in the arrancfement. 799 F.2d at 1223
(emphasis added).

rTIhe copyright we recognize here is in West I s

arranciement, not its numberincr system, MDC's use of
West's page numbers is problematic because it infringes
West's copyrighted arrangement, not because the numbers
themselves
added).
are copyrighted. 799 F.2d at 1228 (emphasis

Mead appealed this decision to the Uriited States supreme Court, but
certiorari was denied. 479 U.S. 1070 (1987).

It is also important to remember that the Eighth Circuit's

ruling in West v. Mead affects more than West, Mead, Thomson and
their products. All case report publications contained on the
H

lists I have provided to the Subcomnittee have their own particular

citation form so that researchers will be able to find and
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reference the case reports contained within them. Similarly, most

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also have their own internal pagination that was created by the
La

publisher of the particular publication.

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24

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Citations to many specialty case reports are extremely

valuable. For example, BNA's United States Patent Ouarterly is
acknowledged to be a leading print reporter for many cases. This
is also true of many CCH publications. Assuming it applies to
paragraph numbers as well as page numbers, H.R. 4426 would
negatively affect these too, and leave legal researchers without
the current iLultitude of sources for state and federal case
reports. If other publishers are free to replicate the selection,
coordination and arrangement of these specialty case reports, the
incentive to continue publication will be eliminated.

While West v. Mead was limited to case report publications,

the principles of copyright law involved in the decision also apply
to compilations of statutory material. Publishers may -- and do --
make use of citations to statutory provisions contained in
competing publishers' statutory compilations. A publisher
certainly zaay use the original desicjnation assigned to a statutory
provision by another publisher as a means to reference and identify
that source, just as with citations to cases.
H

However, a publisher may not copy the unofficial statutory

yp

compilation of another publisher or use the other publisheris

original statutory designations in a way that would result in a
er

wholesale taking of the first publisher's statutory compilations.

La

Thus, a competitor may not publish a set of statutes that simply

w

copies the original compilations of another publisher, or that

25

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identifies all or a significant portion of the statutes by the

statutory designations of another publisher, because these
statutory designations express the original publisher's
compilations and, specifically, its statutory arrangements. This
gives publishers the ability to freely use citations to particular
statutory provisions contained in other publishers' unofficial
compilations but does not allow them to create replicas of the
other publishers' statutory compilations to sell as substitutes.

The situation in Michigan is illustrative of the fact that a

true competitor can compete even if copyrighted legal compilations
are already present. In the mid-1960's, only one company --
Callaghan & Company ("Callaghan"), now owned by the Thomson
Corporation -- was selling a set of annotated Michigan statutes in
addition to the official, unannotated statutory set being sold by
the state. Callaghan had created its own statutory compilations in
1936 and was the only private publisher of Michigan annotated
statutes. The arrangement of these compilations was well known and
accepted by the public.
H

In 1967, West began publishing its own compilations of

yp

annotated Michigan statutes, following the official statutory

codification that had been recently enacted by the Michigan
er

Legislature. Today there are two competing private compilations of

La

annotated Michigan statutes, one published by Callaghan and one

w

published by West. Each publisher provides cross references to the

26

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competitor's compilations and Michigan courts provide citations to

each publisher's compilations in their opinions. The two competing
statutory compilations are quite different, but they compete
vigorously in the marketplace and Michigan courts now accept
citations to both compilations.

Thus, copyright law has certainly not inhibited competition,

but it instead has provided publishers with the incentive to create
new compilations. other publishers are free to do what West did in
Michigan -- innovate and compete. All that is required is a simple
willingness to create rather than copy.

What effect has West v. Meakd had on competition? It has

enhanced competition. We have compiled a'list of case report and
state statute publications that were first published after the
Eighth Circuit's decision in West v. Mead. This list includes a
large number of CD-ROM publications that contain state and federal
case reports and state statutes. This area of the legal
information industry is growing tremendously.
H

It is clear from this list that a significant number of new

yp

case report and state statutory publications have entered the

market after the West v. Mead decision. In sun, there are
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approximately thirty-five publishers, including west, which began

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offering over forty new case report or statutory compilations since

w

the case was concluded. The presence of these new products

27

HLC 00012141
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demonstrates that the decision in West v. Mead has in no way

blocked competition or created any barriers to competition among
these publications.

What the West v. mead decision does prohibit is the copyin of

the original selection, coordination and arrangement decisions of
one publisher by another publisher. That result has been a benefit
to the legal marketplace -- it has produced a highly competitive
marketplace. Purchasers of state and federal case reports and
state statutory publications, be they private law firms, law
libraries, government entities or the public, have an extremely
wide -- and growing -- range of choices when deciding to purchase
these publications. That is precisely what is contemplated by the
Copyright Act, and -- as designed -- the protection accorded
compilations of legal materials has raade possible the wider
availability of this information.

In closing this section of my testimony, I think that two

points are irrefutable. First, the legislative proposal you are
considering, H.R. 4426, is merely the latest chapter in a larger,
H

ongoing, high-stakes commercial dispute in which West Is competitors

yp

are seeking to copy and use, without compensation to the owner,

West's copyrighted compilations of case reports and statutory
er

materials rather than compiling their own. That dispute has now
La

escalated from state legislatures and the federal courts -- where

w

in every instance West has prevailed -- to the U.S. Congress.

28

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second, the materials that Thoiuson has distributed to the

Subcommittee contain patent misrepresentations of the extent of
west's copyrights and copyright claims, its prior positions, and
the holdings of various courts that have considered the relevant
issues.

Analysis of West v. Mead, Feist and H.R. 4426

In March 1992, subsequent to West's victory in West v. Mea

(but during the pendency of the Bancroft-Whitney case), the Supreme
Court handed down its decision in Feist. As you well know, the
Feist case was the first instance in which the Supreme Court
considered the scope of cozmpilation copyright protection under the
1976 Copyright Act. The court in Feist denied copyright protection
to the "white pages" telephone directories at issue in the case and
clearly rejected the "sweat of the brow" test in favor of a
Constitutionally-based test keyed to "[o]riginality," which "does
not signify novelty." 116 S.Ct. at 1287.

The Court made clear that, for compilations to be protected,

H

only "some minimal degree of creativity" is required and that even

yp

a purely factual compilation meets the requirements if it is "an

original selection or arrangement." Id. at 1289-90, 1294. The
er

court made clear that only original components of a copyrighted

La

work are protectible. Id. at 1289. In sum, the Court concluded

w

that -[n]ot every selection, coordination, or arrangement will pass

muster," and that "the vast majority of compilations will pass this
test, but not all will." id. at 1294.
29

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Feist calls for a case-by-case factual determination on

whether "some minimal level of creativity" is present in the
particular components of a compilation. The decision applies to
all compilations, legal 4nd non-legal. Those legal compilations
that have the requisite level of creativity will pass muster.

Under the Feist test, West's case report and statutory

compilations easily meet the requirements for copyright protection.
The District Court and Court of Appeals opinions in west v. mead
were explicitly based on a legal analysis that looked to
originality, not "sweat of the brow." Both Courts extensively
discussed the originality of West's compilations of case report
publications, and specifically the selection, coordination and
arrangement expressed therein. Those Courts' reasoning thus
remains entirely consistent with Feist.

In this regard, it is significant that Thomson has chosen to

pursue its commercial interests legislatively in congress rather
than through litigation. The Bancroft-Whitney case was pending in
District Court when Feist came down, yet B-W nonetheless chose to
seek to dismiss the case, rather than pursue it under the
H

principles of Feist.
yp

The dismissal of the case and Thomson's

nearly immediate shift in stratecjy to pursue enactment of H.R. 4426
er

is nothing if not an admission by conduct that the current legal

La

rules protect West's legal compilations. otherwise, there would be

w

no need for Thomson to try and gain through federal legislation the
right to copy West's works.

30

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 147

Again, I would stress the wider policy implications of H.R.

4426. The measure is intended to do away with aU copyright
protection for compilations of legal materials no matter how

original or creative the selection, coordination and arrangement of

materials included might be. In doing so, the bill would overturn
not only West v. Mead, but Feist as it applies to legal
compilations.

suppose, for example, a compiler were to collect and review

all of the opinions of state appellate courts dealing with a
particular topic such as civil rights, matrimonial disputes, hotel
and office building fires, or landlords' liability. suppose
further that only those opinions deemed important by the compiler
were selected for publication. R.R. 4426 would not protect such a
compilation even though it would represent a substantial number of
selection, coordination and arrangement decisions made
independently by the coyapiler and would undoubtedly constitute a
protectible work under Feist. Such a compilation could also
constitute a valuable contribution to legal scholarship, but would
not be protected if H.R. 4426 were enacted.
H
yp

West's Activities in Selectincr, Coordinating and Arranctinct its

compilations
er
La

Clearly then, when read together, West v. Mead and Feist

w

stress the creative efforts -- however mininal -- that qualify

compilations of all kinds, including those of legal materials, for
copyright protection as a work of original authorship. The amount
31

HLC 00012145
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of creative, editorial enhancementr. that West employs in its

selection, coordination and arrangement of case reports and
statutory materials therefore deserve a fuller explanation. I
believe West's editorial, decisions and efforts clearly go far
beyond the standard of "minimal degree of creativity" contemplated
by Feist. Certainly, this was the conclusion of the Courts in West
v. Mead. I an going to emphasize the reporting of federal
decisions because those decisions may be of the greatest interest
to the Subcommittee, as they were at the heart of the controversy
in West v. Mead.

1. Selection. Cnordination and Arrangement of Judicial opinions

West has made an editorial decision that it will concentrate

on reporting the decisions of courts, not state or federal
agencies. Other publishers have chosen to report administrative
decisions in their publications, but West has elected not to do
this on any significant scale. West also decides from which courts
it will report opinions. It does not select opinions from every
court in the 6ountry. Currently, West gathers selected opinions
H

from all state appellate courts, from some state trial courts, from
yp

all Federal district courts, from all federal appellate courts, and
from some federal courts of special jurisdiction such as the U.S.
er

Claims Court and the Court of International Trade. The number of

La

court opinions West collects is enormous, with approximately 600

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opinions from state and federal courts arriving at West each day.

32

HLC 00012146
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west has made an editorial decision that it will generally

report federal and state jUdiCial decisions in separate reporter
publications. Because of this decision, West initially separates
the opinions it collects, by jurisdiction into state and federal
opinions.

West has decided to report federal court opinions by the court

rendering the decision; in other words, decisions of particular
federal courts are placed in the same case report publications.
Thus, west separates the opinions it collects from the U.S. Supreme
court, the U.S. Courts of Appeals, the U.S. District Courts, the
Bankruptcy Courts, as well as specialty jurisdiction courts.

West then determines whether to report a particular opinion at

all, and, if it will be reported, whether it will be reported in a
print publication, on WESTLAW, or both. With limited exceptions,
West has decided to publish reports of all U.S. Supreme Court and
Court of Appeals decisions that it receives from those courts.
West attorney-editors evaluate the content of each decision in
determining whether the decision presents important matters of law.
H

If it does, the editor will prepare a synopsis and syllabus that

yp

are used in West's reports, digests, and electronic products to

facilitate research. In addition, West determines on a case-by-
er

case basis whether the full teict of subsequent orders (such as

La

orders for rehearing) will be reported with the case or simply

w

noted in the file line.

33

HLC 00012147
 150

Finally, West determines whether to report decisions without

written opinions or decisions designed,"not for publication," and
how to report them if it chooses to do so. West generally reports
these decisions in a table format in its print publications, but it
also has decided to report some decisions designated "not for
publication" on WESTLAW.

For U.S. District Courts, each opinion West receives is

reviewed by West editors who decide whether the opinion will be
reported at all, and, if so, whether it will be reported in a print
publication or solely on WESTLAW, or both. Generally, the West
editor must conclude that the opinion is important or will advance
the law before it is designated for print publication. In making
such decisions, West editors examine such factors as whether they
believe the opinion changes the law, takes a position among
conflicting authorities, addresses an issue of first impression in
a jurisdiction or summarizes an area of the law. These are all
subjective decisions.

West editors also seek out or select particular decisions that

H

are cited in recent opinions, are discussed in legal newspapers or

yp

periodicals, or that are on appeal, to determine if those opinions

merit reporter publication. West also selects and collects certain
er

opinions of U.S. Magistrate Judges if the opinions have been

La

accepted by a district judge or involve matters tried with the

w

consent of the parties.

34

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The editorial decision to report a district court opinion also

involves determining or selecting in which West publication the
opinion will be reported. opinions that involve application of a
Rule of Civil or Criminal Procedure may be designated for
publication in Federal Rules Decisions. opinions that involve
appeals from Bankruptcy Courts or that involve a bankruptcy issue
are, or may be, reported in Bankruptcy ReRorter. These selection
and coordination decisions are often not clear cut, as many
opinions involve both procedural and substantive issues; West's
editors must determine which of these issues are most significant
in making their selections for each publication.

West also selects, collects and reports the text of certain

amendments and proposed anandments to federal rules of procedure in
its case report publications. West editors determine whether to
publish these materials, and, if so, in what publication these
rules changes or proposals should be included.

West decides as well whether to include appendices that have

been filed with an opinion and in what form they should be
H

reported. This decision is made by West editors, who determine if

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in their opinion an appendix will be of sicjnificant use to a

researcher or if it is important to understanding the opinion.
er
La

After West has selected and coordinated the various opinions

w

it will report, its headnote editors slim-arize the facts of each

case and write a synopsis. They also identify points of law in
each decision and write headnotes -- some 310,000 headnotes every
35

HLC 00012149
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year. Headnotes are added at the beginning of most case reports to

summarize in a few words the principles of law that are involved in
the case. Finally, classification editors determine which of
West's unique key numbers should be included with each of the
headnotes. Key numbers help researchers locate cases that directly
relate to the issue or issues being researched. The key numbers
represent permanent topical categories developed by West, and are
based on subject matter. A special index contained in each volume,
called a Key Number Digest, arranges each headnote under the proper
topic and key nurnber and gives the location of the case report that
includes that particular headnote.

West also collects, revieWB and decides whether to include

reports of subsequent actions (such as orders regarding rehearing)
to a case report. After selecting a subsequent action for
reporting, West then decides the manner in which to report it.
West has generally decided to report these actions with the main
case report and West usually reports the action in an abbreviated
form. However, West can, and often does, decide to report the full
text of a subsequent action, and also may report the action
H

separately from the main case report.

yp

Finally, West opinion verifiers check every case report and

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statutory citation contained in a court opinion and add selected

La

parallel citations and new citations for the cases referred to in

w

the opinion. By the end of each year, West has checked over
1,000,000 citations and added about 400,000 parallel citations.

36

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it is only after all these steps have been followed that West
is finally ready to create a new volume in a case report series.
creating a new volume involves making an editorial decision as how
best to arrange the case reports selected for reporting in that
particular volume. The arrangement of case reports selected for
inclusion in volumes of West's various case report publications
differs widely. Some publications are arranged by type of decision
(for example, full case reports may be followed by memorandum
reports) , while others are arranged by such criteria as federal
judicial Pircuit, state within the circuit, selected groupings of
states, state within such a grouping, hierarchy of court, or
combinations of these criteria. Additional material such as court
rules or proposed court rules are often arranged within the volume.

If two or more opinions are related in some way, then West

often decides to arrange reports of those opinions consecutively,
in what West calls "precede and follow" order. opinions involving
the same parties or similar issues of law are often arranged
together in this manner. obviously, there are many possible
arrangement criteria, and these are just some of the ones West has
H

chosen in order to make the material in its publications more

yp

useful and accessible to legal researchers.

er

In sum, each West case report volume involves a multitude of

La

editorial decisions regarding the selection, coordination and

w

arrangement of the public domain material and editorial features

included therein. Donna Bergsgaard and her colleacjues at West make
hundreds and perhaps thousands of these editorial decisions eve
37

HLC 00012151
 154

dav. They are challenging decisions and require West editors to

use their creativity and experience in order to produce a valuable,
usable publication for its customers. In sum, each volume
represents an original work in which public domain information has
been greatly enhanced and organized to create a uniquely and easily
usable publication.

I wouldstress that West's decisions on selecting,

coordinating and arranging these materials are entirely its own,
and are different than any other publisher's case reporting
decisions. As I have indicated, in addition to the numerous
instances in which West editors question, and sometimes correct,
the words and citations contained in court opinions, they also make
their own judgments as to whether a case is worthy of reporting by
West and, if so, in full or abbreviated form. Some judges deem
every one of their decisions worthy of reporting, and conversely
some courts occasionally request that an opinion not be published,
but West makes its own independent editorial decisions.

For example, the California Supreme Court often orders a

H

California court of appeals opinion "depublished", meaning that the

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opinion may not be cited as precedent. Such "depublished" opinions

are not reported in the official California Reports. West,
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however, has elected not to remove such depublished opinions from

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its California Reporter reports, although West does indicate that

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a particular opinion has been ordered "depublished.11 My point is

that West alone makes the final determination as to what decisions
will be selected for reporting in its case report publications and
38

HLC 00012152
 155
formats --
-- in all case is
PUbliCatiOnS
All Of Wegt'S whether a particular and
judgment on
so, how to coordinate
on WESTLAW.

reflect its important to report and, if

independent

sufficiently case.
the report of thq
arrange of Statutes
and ArrarLaament
Coordination
2. Selection, statutes
annotated
West also publishes Depending on the
earlier, statutes.
As I mentioned
as well as federal West -- and other
for 21 states, body's efforts,
of the enacting tasks in reporting
completeness editorial official
-- perform various do not have complete West has
publishers for example,
statutes.
Some states, In such circumstances, of these
of their statutes. compilations of portions
codifications unofficial that are
created statutory designations to
on occasion assigned provisions
and statutory
states' statutes or alphabetical to the West has created.
usually numeric compilation
or
framework
express the statutory to create these
that are made
editorial decisions
If a statutory
The challenging.
are quite selects and
West first
H

compilations in existence, used to

statutory
is not already chapters or titles that are ways
yp

codification of broad in certain

creates an arrangement statutes that are related
generally given
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and organize or titles are

collect this overall subject
La

The chapters
by West. that express
selected statutory
or other designationsthen determines which topic and
w

numerical West
title or chapter
matter arrangement. to a certain in
are relevant the title in a manner
provisions
selected provisions within
arranges those 39

HLC 00012153
 156
that West thinks most
alphabetical or appropriate.
numerical Finally, West
within the chapter designation to creates an
mechanical or
or title. These
express that
simple editorial location
provisions they because
editors must decisions are not
order the believe most
related relate to determine which
provisions should be each other, and in
arranged. what
Because newly
only a enacted state
public law number legislation
placed in an with no sometimes
existing indication includes
whathe to statutory
place these nev arrangement, West
of where it should be
statutory must often
organization and, if provisions within the decide
so, wher
enacted
provisions are
to arrange them. existing
example, placed in a Not all
newly
temporary or statutory
West transitional compilation.
determines that laws may not be For
a new law
compilation, West
then decides should be included. if
provision should be in what included it its
that title. placed and where title the
to locate selected new
Finally, West the provision
will best editors within
express the
location of thedetermine a designation
selected new that
The provision.
editors in charge of
H

skilled
lawyer/editors, for theyco-mpiling statutes are all
to determine
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an must have the highly-

for statutory appropriate selection, background
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provisions that necessary

coordination and
are not arrangement
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officially
organized.
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40

OLC 0()012154
 155

on WESTLAW. All of West's publications -- in all formats --

reflect its independent judgment on whether a particular case is
sufficiently important to report and, if so, how to coordinate and
arrange the report of thq case.

2. Selection. coordination and Arrangement of Statuteg

As I mentioned earlier, West also publishes annotated statutes

for 21 states, as well as federal statutes. Depending on the
completeness of the enacting body's efforts, West -- and other
publishers -- perform various editorial tasks in reporting
statutes. Some states, for example, do not have complete official
codifications of their statutes. In such circumstances, West has
on occasion created unofficial compilations of portions of these
states' statutes and assigned statutory designations that are
usually numeric or alphabetical to the statutory provisions to
express the statutory framework or compilation West has created.

The editorial decisions that are made to create these

statutory compilations are quite challenging. If a statutory
H

codification is not already in existence, West first selects and

yp

creates an arrangement of broad chapters or titles that are used to

collect and organize statutes that are related in certain ways
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selected by West. The chapters or titles are generally given

La

numerical or other designations that express this overall subject

w

matter arrangement. West then determines which statutory

provisions are relevant to a certain title or chapter topic and
arranges those selected provisions within the title in a manner in
39

HLC 00012155
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that West thinks most appropriate. Finally, West creates an

alphabetical or numerical designation to express that location
within the chapter or title. These editorial decisions are not
mechanical or simple because editors must determine
which
provisions they believe most relate to each other, and in what
order the related provisions should be arranged.

Because newly enacted state legislation sometimes includes

only a public law number with no indication of where it should be
placed in an existing statutory arrangement, West must often decide
whethe to place these new statutory
provisions within the existing
organization and, if so, where to arrange them. Not all newly
enacted provisions are placed in a statutory compilation. For
example, temporary or transitional laws may not be included. if
West determines that a new law should be
included it its
compilation, -Xest then decides in what title the selected new
provision should be placed and where to locate the provision within
that title. Finally, West editors determine a designation that
will best express the location of the selected new provision.

The editors in charge of compiling statutes are all highly-

H
yp

skilled lawyer/editors, for they must have the background necessary

to determine an appropriate selection, coordination and arrangement
er

for statutory provisions that are not officially organized.

La
w

40

HLC 00012156
 157

West also employs skilled lawyer/editors to research, write

and organize annotations for its statutory publications. The tens
of thousarids of annotations West creates each year tell the reader
if and how a court has interpreted, construed or applied a statute
-- or if a court has declared the statute unconstitutional.
Annotatioiis make finding important cases much easier for
practitioners.

3. Summary

in sum then, West's editorial decisions in selecting,

coordinating and arranging the various public domain and editorial
materials in its case report and statutory publications add
substantial value to the public domain information West chooses to
publish. West's decisions in selecting the material, then
coordinating it with similar data and West's own editorial
expression, and finally arranging and organizing it into and within
its various publications are solely West's own. Each volume West
is a work in and of itself, encompassing the added value
that West has contributed to the disparate opinions and statutes
H

that form the raw material and expressing its own decisions on how
yp

best to enhance and present that information. It is West's own

unique enhancement and presentation of the information that is the
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key to its success and the basis of the copyright protection its
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publications enjoy.
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41

65-153 0 - 93 - 6

HLC 00012157
 158

Conclusion

There is no controversy about the fact that court decisions

and statutes -- whether. state or federal -- are in
the public
domain. For well over a century, many private publishers have
added value to these materials through the process of selecting,
coordinating and arranging them in a manner that
has provided
Americans with timely, reliable and easily usable
sources of
inforination about the laws under which we all live.
These private,
unofficial publishers have been willing to undertake
this enormous
task precisely because our copyright laws protect
their original
editorial decisions and efforts in compiling these data.

H.R. 4426 would strip this copyright

protection under the
SUPPOSed theory that compilation copyright forestalls
the wider
dissemination of legal and statutory materials
and precludes
innovative means of providing this information.
However, the
reality is that there is active and cLlZgwiM competition in the
field of legal publishing, especially afte
the Kggt_y._Bead case.
Nothing in the Copyright Act prevents any publisher
from
undertaking its own original compilation of public domain
H

data to
create its own unique and different works.
yp

However, the copyright

law prevents, and should continue to prevent,
the wholesale copying
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of compilations for commercial purposes.

La
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42

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Copyright protection for compilations is a policy that was

initiated by our courts over 100 years ago, adopted and codified by
Congress in the 1909 Copyright Act, and reaffirmed and recodified
in the Copyright Act of 1976. Moreover, as I have explained, it
has been repeatedly reaffirmed by the federal courts such as in the
Feist and West v. Mead cases.

Perhaps more disturbing is the motive of the primary proponent

of H.R. 4426, Lord Thomson and his foreicjn-based Thomson
conglomerate. We have all witnessed past efforts by foreign firms,
acting under the cjuise of the U.S. subsidiaries they have bought
up, to alter or dismantle fundamental American laws for their own
profit and at the expense of Araerican jobs and prosperity. If
Congress should enact H.R. 4426, a foreign conglomerate will have
succeeded in gaining a specific exception to the long-held
principle of compilation copyright for no purpOBe other than to
enhance its own profits at the expense of Ainerican competitors and
jobs. Similar efforts by these foreign interests against other
types of compilations or other types of copyrighted property would
likely follow.
H
yp

The existing scope of copyright protection for compilations,

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including private, unofficial compilations of legal materials, has

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served the country well. In no other nation are so many publishers

making so much public domain legal material so widely,
w

inexpensively and readily available. Because of the general

43

HLC 00012159
 160

protection for compilations granted under the 1976 Copyright Act,

legal publishers need not fear that their original editorial
decisions in selecting, coordinating and arranging this material
will go for naught beca%ise another competitor can simply steal
their final product. Nothing other than the desire for easy
profits at little or no expense prevents any private publisher,
domestic or foreign, from collecting its own public
domain
materials and producing its own copyright-protected compilations.
without that limited protection -- which is what our copyright laws
are designed to and do achieve -- very few, if any, publishers
would continue to create and produce innovative compilations. The
loss would not be only in American jobs, profits and taxes, but
more importantly in the free flow of information on which our
democracy is based.

Rather than accept the notion that sorae types of private

information Products are so important to our society
that they
should not be granted copyright protection, I would remind the
Subcommittee of the Supreme Court's statement in Harper & Row
Publishe s v. ation Ente rises, 471 U.S. 539, 559, 105 S.Ct.
H

2218, 2229-30 (1985):

yp

It is fundamentally at odds with the scheme of copyright

to accord lesser rights in those works that are of
er

greatest importance to the public. Such a notion ignores

the major premise of copyright and injures author and
public alike. . . . And as one commentator has noted:
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"If every volume that was in the public interest could be

pirated away by a competing publisher, . . . the public
[soon] would have nothing worth reading."
w

I encourage the subcommittee to reject H.R. 4426. Thank

you.

44

HLC 00012160
 161
Mr. FRANK. I have one particular question, which is, given all
that you have said, the problem I then have is those situations
where a court, either a Federal or a State court, without a bidding
process, says, "Oh, and by the way, you have to cite to this one sit-
uation." What would you think about a statute where we said to
the Federal Government you can't do that; that you have to say
that it has to be an acceptable form, but you don't single out one
particular commercial venture?
Mr. OPPERMAN. Chairman Frank, we wouldn't oppose it. We
wouldn't oppose it for the following reason: there aren't any ani-
mals that that would be directed at. I don't know of any court that
says, "You can't use this citation." And, as a matter of fact, as a
practicing lawyer, I see this pattern: when a system comes into
being-take Delaware, and someone's going to say, 'Vell, they
won't accept our method of citation. Of course, we don't have a
method of citation." "Well, yes, I guess that's probably true." But
when the-re has become a method of citation that has any kind of
reality to it, any kind of reliability, courts adopt tbem.
Mr. FRANK. So you're saying that there is-and I may bave got-
ten the wrong impression this moming. I bave gotten the impres-
sion from what people have said, not being expert on it, that there
were courts at the Federal and State level, circuits or State courts,
that required the use of a particular form of citation; Le, page num-
bers and volumes. Is that incorrect?
Mr. OPPERMAN. There are a few of those left, Mr. Frank, very
few.
Mr. FRANK. It sounded to me like you just said there weren't. So
I'm not sure, did I misunderstand your previous answer?
Mr. OPPERMAN. Well, then I misspoke. In the district courts I be-
lieve there is one district court-
H

Mr. FRANK. So there are some that do, and you would have no
problem then, you said, if we were to say that you couldn't do that?
yp

Mr. OPPERMAN. Tbat's right; we would not.

Mr. FRANK. 01z, because I think that adds an element. I don't
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know exactly how much it is tbere, but that is

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Mr. OPPERMAN. Well, Mr. Frank, I don't think that's mueb of a

problem'because, just as 5 years ago-and when West v. Mead was
started- --
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Mr. FRANK. I really just want you to answer the specific ques-
tion. The other one you said, with the statutory compilations, you
said in Texas that was put out to bid?
Mr. OPPERMAN. The sessions laws were out for bid.
Mr. FRANK. For wbat period, 3 or 5 years?
Mr. OPPERMAN. I believe ies 2 years, because I believe Texas
only meets once every 2 years.
Mr. FRANK. That's right.
Mr. OPPERMAN. We have had it for a number of years. Bancroft-
Whitney came in at a lower price, got it-
Mr. FRANK. Is it just dollars? Do they just-because I assume
that what you're talking about, at least in the Massacbusetts ses-
sion laws, it's ebronological.
Mr. OPPERMAN. That's right.

HLC 00012161
 162
Mr. FRANK. The citation is chapter 1, chapter 2, chapter 7, so
that there's really no editing you just make sure you get it right
and you put them in order. o ies a dollar price situation.
Mr. OPPERMAN. That's right, and it's a totally different arrange-
ment free to anyone, just as anyone is free to take those and codify
them.
Mr. FRANK. OK, thank you.
Mr. Ramstad.
Mr. RAmsTAD. Thankyou, Mr. Chairman.
Mr. Opperman, how clo you respond to the claim made earlier by
a proponent of the legislation that West has a monopoly in the
market here?
Mr. OPPERMAN. Well, I've heard monopoly, joint monopoly, and
oligopoly all at one time. Assuming that those are all the same eco-
nomic analysis, it's preposterous, and it's preposterous for the fol-
lowing reason:
First, in any kind of monopoly analysis, you would try to define
the market. I don't know of a market where ou can say that West
is the only source, wbicb would be the very Cginning of a monop-
oly analysis. There isn't any.
I can give you many examples. We've used the Supreme Court
example. In my testimony-you know, I forgot one-in my testi-
mony, as a practicing lawyer, I gave you the seven that I know of
for finding Supreme Court opinions. Actually, sitting back there
and seeing Mr. Sugarman in the crowd, I'm reminded that
Hyperlaw is yet an eighth way. The New York Times comes to my
doorstep at 4:30 in the morninj,, yet anotber way. There isn't any
monopoly; there isn't i em; there isn't any concern about
access to the law, and y;u'won-'t hear anyone saying there is, be-
cause there isn't.
Mr. BERRING. Can I add-
Mr. OPPERMAN. Sure, Professor Berring.
H

Mr. BERRING. One of the reasons that I think this wbole thrust
yp

is very odd is that I've been in the business 20 years; I've never
seen such a fertile time for new publishers. The compact disk pub-
er

lishers coming on the market in various States bave come on very

strong in the last 5 years in a way that I think has never been
La

seen. So, in fact, tbings are changing quite a bit.

If I could add one point on citation, something was, I think, fac-
w

tually misspoken today. A number of States have given up the pub-

lication of their official reports, oftentimes because a State is not
a good provider of information or it wasn't done cheaply enough or
the State decided not to fund it. But in States where that's hap-
pened-that doesn't necessarily mean the State then says you have
to cite to West.
I did an informal study of courts a few years ago to try to figure
this out, and, as far as I can tell, there are only three States, one
district court, and one Federal circuit that do require and take seri-
oUsl a specific form of citation. It!s become very loose, and I would
pre ffict it will continue to be loose. You can even see it in the Har-
vard s stem of citation. Many places now even take electric cita-
tions. 916-it's a very fluid environment.
Mr. FiANk. Would the gentleman yield? I want to be very precise
because this is, to me, an important point. You said there are only

HLC 00012162
 163
three States, one district court, and one circuit that require "and
take seriously"-are there some that require and don't take seri-
ously? I don't mean to be picky, but-
Mr. BERRING. No-well, there are some that-
Mr. FRANK. Let's forget "take seriously." Let's talk about require
or have a rule.
Mr. BERRING. Just the ones that I know of.
Mr. FP-ANK. Would you submit for me a list of those?
Mr. BERRING. I'd be happy to.
Mr. FRANK. If we get it all on one piece of paper, there won't be
any page number uestions, so we won't have a problem. We can
copy it and it woul3n't be a problem.
[Laughter.]
Mr. BERRING. I'd be glad to.
Mr. FRANK. I would like to know who has a specific-not a cus-
tom, but a requirement by rule I would assume it would be rule
of court, not a statute. Thank I appreciate it.
[The information followsd
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HLC 00012163
 164

UNIVERSITY OF CALIF'ORNIA, BERKELEY

BE-LEY - DAVIS - 1811- - LOS -ELES - RIN'ERSME - SAN DIECO - SAN FI,ANCH,o
-.--A-
S-N- - SA--

ROBERT C BERRING
LA" LIBRARIA' S C HOoL OF LAW (BOALT HALLI
BE RKELEY. CALIFORNIA 94720
TELEPHONE. (415)"24205

June 5, 1992
Hon. William J. Hughes
Chairman, Subcommittee on intellectual
Property and Judicial Administration
House Committee on the Judiciary
207 Cannon House Office Building
Washington, D.C.. 20515

Dear Chairman Hughes:

When Representative Frank was chairing the May 14 hearing regarding HR. 4426,
he
asked me to make an infbrmal survey of the rLiles for federal district and circuit courts
and those state courts which do not have official case reporters to determine which, if
any, required cites to the National Reporter System publications of West Publishing
Company. The resWts of the survey are enclosed with tWs letter.
There are currently eighty-seven federal district courts and fourteen federal circuit
cour-ts (including the Temporary Emergency Court of Appeals). In conformity with
Representative Frar&s request, I have conducted an informal survey of the rules for
each of these courts. A cursory review, adopting the broadest possible interpretation
of the rules of the federal district and circuit courts, finds that fifteen out of the one
hundred and one courts surveyed appear to reqtdre citation to West publications.
Taking the language of each rule on its face yields the above count However, in
practice the required citafion to West publications may be a flexibly enforced
guideline, as only a few courts threaten rejection of briefs containing nonconforming
H

cites.
yp

A search of court rules for the states without official reporters (again,
broadest possible interpretation of the rules), revealed that seven statesadopting the
(Delaware,
er

Indiana, Iowa, Kentucky, Mississippi, Oklahoma and Tennessee) appear to reqwre

citafion to WesVs National Reporter System publications for state cases. Some of
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these court rules, however, apply only to selected situafions, such as the Tennessee
rules wWch only require citafions to National Reporter System publicafions if the case
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is h-om a jurisdiction other than Tennessee.

Ms inforrnal survey was not comprehensive. Ihe search did not go beyond a review
of the court rules and state statutes, and, as pointed out above, it may be that there is a
flexibi4ty in practice not accounted for, even in the seven states wWch apparently
require cites to West publications.

HLC 00012164
 165

UNIVEESIT' 01, CALIFORNIV BERKELE)

ROBERT C BERRIIG SCHOOL Of LA% HALI

I AA LIBRARJA BERKELEN.
I ELEPHONL 1---6201

I also would like to emphasize that citation practice is not fixed. Citation
reqLiirements reflect the available sources of iriformation. If reliable altemative
information sources were to develop, it is certain that citation to these new souices
would be allowed.
I hope that this information will prove of value to.the Subconunittee. If you have
any questions regarding the above, please do not hesitate to contact me at the above
address a-nd phone number.
Sincerelli,

Robert C. Berring
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HLC 00012165
 166

COURT CITATION REQUIREMENTS

(An informal survey)
1. STATE COURTS

A. Uniform System of Citation Suggested Reporters for Citation [underlined

states are those without official reporters; dates in () are last year in wwch cases were
published in official reporters for that state]
STATE R PORTER CT. CT. CT. CT.
Ala. So. Rptr S.Ct. (1976) C.CApp. (1976)
Alask Pac. Rptr S.Ct. (1960) Ct. App. (1980)
Ariz. Ariz. Rpts S,Ct. Ct. App.
Pac. Rptr S.Ct. Ct App
Ark. Ark. Rpts S.0. App. Ct.
Ark AppRpts App. Ct.
S.W. Rptr S.Ct. App. Ct.
Cal. Cal. Rpts S.Ct.
Cal. AppRpts Ct. App.
Pac. Rptr S.Ct. Ct. App.
West's C.Rptr S.Ct. Ct App.
Colo. Pac. Rptr S.Ct (1980) Ct.App. (1980)
Conn. Conn. Rpts S.Ct.
Conn. AppRpt CtApp.
Conn.Supp. Super. Ct.
Atl. Rptr S.Ct. CtApp. Super. Ct.
Del. Atl. Rptr S. Ct. (1966) CtCha.(1968) Sup.Ct. Fam.Ct.
Fia. Fla.LawWkly S.Ct.
Fla. Supp. Circ.Ct. city ct.
So. Rptr S.Ct. D.Ct.App.
Ga. Ga. Rpts S.Ct.
Ga.AppRpts Ct.App.
S.E. Rptr S.Ct. CtApp.
B. H. Rpts S.Ct.
H

I-E.AppRpts CtApp.
Pac. Rptr S.Ct. CtApp.
yp

Id. Id. Rpts S.Ct. CtApp.

Pac. Rptr S.Ct. CtApp.
er

Ill. 111. Rpts S.Ct

M. A.Ct.Rptr CtApp.
La

El. Ct.Clms.Rpts Ct.of Claims

N.E. Rptr S.Ct CtApp.
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Ilid. N.E. Rptr S.CL(1981) CtApp. (1979)

id. N.W. Rptr S.Ct.(1968) CtApp.
Kansas Kan. Rpts S.Ct
Kan. C.A.Rptr CtApp.

HLC 00012166
 167

Pac. Rptr S.Ct. Ct.App.

EX. S.W. Rptr S.Ct.(1951) Ct.App.
La. So. Rptr S.Ct.(1972) Ct.App. (1932)
Maine Ati. Rptr S. Ct. (1965)
Md. Md. Rpts S.Ct.
Md. AppRpts Ct.App.
Atl. Rptr S.Ct. Ct.App.
Mass. Ma.Rpts S.Ct.
Ma.A.C.Rpt Ct.App.
AppDiv. Rpts Dist. Ct.
N.E. Rptr S.Ct. Ct.App.
Mich. Mich. Rpts S.Ct.
Mich. AppRpts Ct.App.
N.W. Rptr S.Ct. Ct.App,
Minn. N.W. Rptr S.Ct.(1977) Ct.App.
Miss. So. Rptr S.Ct.(1966)
Mo. S.W. Rptr S.Ct.(1956) Ct.App. (1952)
Mont. Mont. Rpts S.Ct.
Pac. Rptr S. ct.
Neb. Neb. Rpts S.Ct.
N.W. Rptr S.Ct.
Nev. Nev. Rpts S.Ct.
Pac. Rptr S.Ct.
N.H. N.H. Rpts S.Ct.
Atl. Rptr S.Ct.
N.J. N.J. Rpts S.Ct.
N.J.Sup.Ct.Rpts Super.Ct.
Atl. Rptr S.Ct. Super.Ct.
N.Mex. N.M.Rpts S.Ct. Ct.App.
Pac. Rptr S.Ct. Ct.App.
N.Y. N.Y. Rpts Ct.App.
West's NYSupp. Ct.App. S.Ct other lower cts
N.Y. Misc.Rpts other lower cts
H

AppDiv. Rpts S.Ct.

N.F- Rptr Ct.App.
yp

N.C. N.C. Rpts S.Ct.

N.C.Ct.App. Rpts Ct.App.
er

S.F- Rptr S.Ct. Ct.App.

N.Dak. N.W. Rptr S.Ct(1953) Ct.App,
La

Ohio Oh.St Rpts S.Ct.

OIL App. Rpts Ct.App.
other
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OL Nusc.
Oh. Bar Rpts other
N.E. Rptr S,Ct. CtApp.
Okla. Pac. Rptr S.Ct. (1953) CtApp. Crim. App. (1953)
Ore. Ore. Rpts S.Ct.

HLC 00012167
 168

Ore. Rpts C.A. Ct.App.

Pac. Rptr S.Ct. CtApp.
Penn. Pa. St. Rpts S.Ct.
Pa.Sup.Ct.Rpts Super.Ct.
Pa.Com.Ct.Rpts
C0mmw.Ct,
Pa.Dist.&City Rpts
Ati. Rptr other
S.Ct. Super.Ct. Commw.ct.
1_ Atl. Rptr S.Ct. (1980)
S.C. S.C. Rpts S.Ct. Ct.App.
S.E. Rptr S.Ct. CtApp.
S.Da N.W. Rptr S-Ct. (1976)
Tenn. S.W. Rptr S.Ct. (1971) Ct.App- (1971) Crirn.Ct.Ap. (1971)
TX. TX.S.Ct.j. S.Ct.
S.W. Rptr S.Ct. Ct.App. (1911) Crim.Ct.Ap. (1963)
iLt- Pac. Rptr S-Ct. (1974)
Vt. Vt. Rpts S.Ct.
Att. Rptr S.Ct.
Va. Va. Rpts S.Ct.
Va. Ct.App. Rpts CtApp.
S.E. Rptr S.Ct. CtApp.
Wash. Wa. Rpts S.Ct.
Wa.App. Rpts CLApp.
Pac. Rptr S.Ct. CtApp.
W.Va. W.Va. Rpts S.Ct.App.
S.E. Rptr S.Ct.App.
Wisc. Wis. Rpts S.Ct. CtApp.
N.W. Rptr S.Ct. Ct.App.
Wy. Pac. Rptr S.Ct. (1959)
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HLC 00012168
 169

B. STATE COURT RULES (For states without official reporter)

ALABAMA Code of Alabama Vol. 23, Rules of Alabama Suprenie Court,

Alabama Rules of Appellate Procedure
Rule 28 Briefs
28(a)(5) [Brief shall contain] "An argument (The argunient mav bt,
preceded by a sumrnary. 'rhe argunient shall contain the contentions of the
appellant with respect to the issues presented, and the reasons therefor, with
citations to the authorities, statutes and parts of the record relied on); and,"
Rule 32 Form of Briefs, the appendix and other papers. (nothing)
ALASKA Alaska Statutes and Coiirt Rules
1. Rules of Civil Procedure, Part XI, Superior Court and Clerks
Rilie 77 Motions.
77(b)(2) [There shall be served and filed Nvith the niotion] "A brief,
complete written statement of the reasons in support of the motion, which shall
include a memorandum of the points and authorities upon which the moving
party will rely-."
11. Rules of Appellate Procedure, Procedure on Appeals as of Right
Riile 212 Briefs
212(c) SubstaTitive Requirements
212(c)(1)(i) Argument. "The argument may be preceded by a sumiyiary.
The argument shall contain contentions of the appellant with respect to the issues
presented, and the reasons therefor, with citations to the authorities, statutes and
parts of the record relied on ......
COLORADO Colorado Revised Statutes Arinotated, Chapters 18 to End, Court
Rules, Colorado Appellate Rules
Rule 28 Briefs
28(a)(4) [Brief shall contain] "An argument. The argument must be
preceded by a summary. The argument shall contain the contentions of the
appellant with respect to the issues presented, and the reasons therefor, with
citations to the authorities, statutes, and parts of the record relied on;"
H

Rule 32 Form of Briefs (nothirig)

yp

DELAWARE Delaware Supreme Court Rules

Rule 14(g) Form of Citations "Except as provided below, citations will be
er

deemed to be in acceptable form if made in accordance with the "Ui-dform System of

La

Citation" published and distributed from time to time by the Harvard Law Review
Association. The style of citation of all Delaware opirdons which are reported in any
series of the Atlanfic Reporter shall be set forth in the following examples:
w

Melson v. Allman, Del. Supr., 244 A.2d 85 (1968)

Rnnce v. Bensinger, Del. Ch., 244 A.2d 89 (1968)
State v. Pennsylvariia Railroad Co., Del. Super., 244 A.2d 80 (1968)
All further references to the previous State Reporter System shall be omitted. The
citation of repor-ted opirdons of other jurisdictions shall similarly designate the

HLC 00012169
 170

court, the National Reporter System citation and the date, omitting reference to any
state reporter system."

INDIANA Title 34, Indiana Code, Rules of AppeUate Procedure

Rule 8.2(B)(1) Citation of Cases. "Cases decided prior to May 5,1981, in
the Indiana Supreme Court and November 7,1979, in the Indiana Cour-t of Appeals
shall be cited by giving the title of the case followed by the year of final disposition,
the volume and page of the state report and the volume and page of the regional
reporter. [e.g., Warren v. Indiana Tel. Co. (1940),217 Ind. 93,26 N.F-2d 399.] Cases
decided after the above noted dates shall be cited by giving the title of the case,
followed by the year of final disposifion, the Court of disposition, and the volume
and page of the regional reporter. [e.g., Condon v. Patel (1984), Ind.App., 459 N.E.2d
1205]"

IOWA Iowa Rules of Court, Rules of Appellate Procedure, Appeals in Civil

Cases
Rule 14 Briefs
14(e) References in Briefs to Legal Authorities "In citing cases the
names of the parties must be given. In citing Iowa cases, reference must be made to
the volume and page where the case may be found in the Iowa Reports, if reported
therein, and in the North Westem Reporter, if reported therein. In citing cases
reference must be made to the court that rendered the opinion and the volume and
page where the same may be found in the National Reporter System, if reported
therein. E.g., _ Iowa __, _ N.W. _(19_j; _ N.W.2d _(Iowa 19_j;
N.W.2d
-, -
S. ct.
_ (Iowa Ct.App.19
L.Ed.2d _ - S.W.2d
F.2d. _
_ (Mo.Ct.App.19__); _U.S.
_ _
(_ Cir. 19-); F.Supp. (S.D.Cal.
19_). When quoting from authorities or referring to a specific point within an
authority, the specific page or pages quoted or relied upon shall be given in addition
to the required page references. Unpublished opirdons of the Iowa appellate courts
or of any other court may not be cited as authority .....

KENTUCKY Kentucky Rules of Civil Procedure

Rtfle 76.12(4)(g) Form of citations. ...... The citation of Kentucky cases
reported after January 1, 1951, shall be in the following form for decisions of the
H

_
Supreme Court and its predecessor court: Doe v. Roe., Ky., S.W.2d _ (date), or
for reported decisions of the present Court of Appeals, Doe v. Roe, Ky. App., _
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S.W.2d _ (date). For cases reported prior thereto both Kentucky Reports and
Southwestern citations shall be givem"
er

LOUISIANA Lotfisiana Revised Statutes, Vol. 8 §§13: 4431 to 13:End,

La

1. Uniform Rides - Courts of Appeal

Rule 2-12.4 AppellanVs Brief. ...... Citations of cases shall be to volume
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and page of the official reports (and when possible to the unofficial reports). It is
recommended that where United States Supreme Court cases are cited, all three
reports be cited, e.g., Nhranda v. Arizona, 384 U.S. 436,86 S.Ct 1602,16 I-Ed.2d 694

HLC 00012170
 171

(1966). When a decision froni another state is cited, a copy thereof stiould be
attached to the brief."

11. Stipreme Court Rules, Practice and Procedure

Rule VE. Briefs. (nothing)

MAINE Maine Rules of Civil Procedure

Rule 75A(a)-75A(g) Briefs (nothing)

MINNESOTA Minnesota Rules of Court, Civil Appellate Procedure

Rule 128 Briefs. (nothing)

MISSISSIPPI Nbssissippi Court Rules, Mississippi Suprerrfe Court Rules

Rule 28 Briefs.
28(a)(6) [Brief shall contain] Argument. "The argument shall contain
the contentions of appellant with respect to the issues presented, and the reasoris for
those contentions, with citations to authorities, statutes and parts of the record
relied on."
28(e) References in Briefs to the Record and Citations.
Furthermore, afl Mississippi cases shall be cited to both the Southern Reporter,
and, in cases decided prior to 1967, the official Nbssissippi Reports ......

The Comment on Rtfle 28 states further: "Rule 28(e) requires paraflel citations prior
to 1967 because the Southern Reporter is the official reporter only for decisions
published since 1966."

MISSOURI Missouri Rules of Court, Rules of Civil Procedure, Supreme

Court Rules
Rule 94.04 Briefs -- Contents. (-nothing)
84.04(d) Points Relied On. "Tle points relied on shall state briefly and
concisely what actions or rulings of the court are sought to be reviewed and wherein
and why they are claimed to be erroneous, with citations of authorities thereunder.
ff more than three authorities are cited in support of a point made, the three
H

authorities principally relied on shall be cited first. All authorities discussed in the
argument shall be cited under the "Points Relied On." Long lists of citations shoidd
yp

not be included ......

er

NOR'M DAKOTA North Dakota Century Code Annotated: Court Rules,

Rules of Appellate Procedure
La

Rules 28-32 Briefs. (nothing)

OKLAHOMA Oklahoma Court RWes and Procedure

w

L Rules of Appellate Procedure in Civil Cases (nothing)

E. Court of Crin-dnal Appeals tt
Rule 3.5 Briefs - Contents - Citation of Authorities

HLC 00012171
 172

3.5(C) Argument and Citation of Authorities. "Both parties must

provide a brief argument, exhibiting a clear statement of the point of law or fact to be
discussed, with a reference to the pages of the record filed and the authorities relied
conform to the following- _
upon in support of each point raised. The citation of Oklahoma criminal cases shall
v.
opinions are not to be cited as authority."
_ P.2d _ (Okl.Cr.year). Unpublished

RHODE ISLAND Rhode Island Court Rules Annotated, Appellate Procedure

Rules 16-17 Briefs (nothing)

SOUTH DAKOTA South Dakota Codified Laws, Vol. 6, Title 15, Civil
Proced ure
15-26A-60 through 15-26A-87 Briefs (nothing)

TENNESSEE Tennessee Court Rtdes Annotated, Rules of Appellate

Procedure
Rule 27 Content of Briefs.
27(h) Citation of Authorities. "Citation of cases must be by title, to the
page of the volume where the case begins, and to the pages upon which the
pertinent matter appears in at least one of the reporters cited. It is not sufficient to
use only supra or infra without referring to the page of the brief at wwch the
complete citation may be found. Citation of Tennessee cases may be to the official or
South Westem Reporter or botK Citation of cases from other jurisdictions must be
to the National Reporter System. If only the Nafional Reporter System citation is
used, the court rendering the decision must also be identified. All citations to cases
shall include the year of decision .....

UTAH Utah Court Rules Annotated, Utah Rules of Appellate Procedure

Rules 24-26 Briefs (notWng)

WYOMING Wyoming Court Rules Annotated, Rules of Appellate Procedure

Rule 5 Briefs. (nothing)
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HLC 00012172
 173

fl. FEDERAL COURTS

A. FEDERAL RULES OF APPELLXrE PROCEDURE

These Rules "shall govern all proceedings in appeals and petitions for review or
enforcement of orders- . . ."

1. Rule 15.1 Briefs & Oral Argument in NILRB Proceedings (contains

nothing about method of citing cases)
2. Rules 28, 29, 31,32 ( dealing with Mefs)
Rule 28 (a)(5) The Argument shall contain the contentions of the
appellant with respect to the issue presented, and the reasons therefore, with
citations to the authorities, statutes and parts of the record relied on."

B. FEDEFLAL DISTRICT COURT RULES

ALABAMA -
1. U.S. District Court for the Northem District of Alabama
(nothing)
11. U.S. District Court for the Southern District of Alabama
Rule 6 Briefs (notWng)
III. U.S. District Court for the Middle District of Alabama
(nothing)

ALASKA - U.S. District Court for the District of Alaska

Rule 6(K)(1) Briefs or Memoranda (notWng)
Rule 12 Briefs to be Submitted Prior to Trial -- "The trial briefs shall
contain a clear, concise, complete and candid statement of reasons in support of each
question of law or evidence, together with an adequate citation of authorities."
Rule 32(A)(1)(c) Appeals - Briefs (nothing)
32(B)(1) Magistrate - Briefs - "....Briefs filed to be in accordance
with General Rule 6(K) ......
H

ARIZONA - U.S. District court for the District of Arizona

yp

Rule 10 Forms of Papers -- Civfl and Crin-dnal (nothing)

Rule 11 Motions - Civil and Chminal
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11(b) "Upon any motion, the moving party shall serve and file with the
motion papers, a memorandum setting forth the points and authorities relied upon
La

in support of the motion."

ARKANSAS - U.S. District Courts for the Eastem and Westem Districts of
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Arkansas
Rule 3 Pleadings and Fflings (nothing)
Rule 20 Motions

HLC 00012173
 174

20(a) shall be accompaTiied by a brief consisting of a concise

statement of relevant facts and applicable law...."

CALIFORNIA -
1. U.S. District Court for the Central District of California
Rule 2.10 Communicafions with judge. Forms of Pleadings and Papers
Filed with the Court -- Amended Pleadings (notWng)
Rule 3.9 Citations
3.9.3 Citations -- Cases "Iriitial citafion of an United States Supreme
Court case shall include parael citations to United States Reports, Lawyers Edition,
and Supreme Court Reporter. Federal Reporter, Federal Supplement or Federal
Rules Decisions citations shall be used where available. lnifial state court citations
shall include both the official reports and any regional reporter published by West
Publishing Company. California parallel citations may be limited to the official
reports and California Reporter."

11. U.S. District Court for the Northem District of Califomia

Rule 120 Format of Pleadings and Amendment - Filing of Papers
(nothing)
Rule 220 Motion Practice - Extensioris, Enlargements or Shortening of
Time -- Submission of Orders.
220.4 Briefs and Memoranda set forth succinctly the relevant facts
and the argument of the party with supporting authorifies..."
M. U.S. District Court for the Southem District of Califorrda
Rule 5.1.1 Citations (nothing)
IV. US. District Court for the Eastern Mtrict of Califon-da
Rule 130 General Format of Papers (nothing)
Rule 134 Filing and Contents of Documents
134 (d) Citations "Citations of federal cases shall be to the Urdted
States Supreme Court Reports, Federal Reports, Federal Supplement, or Federal
Rules Decisions, if so reported and shall indicate the court and year of decision....
H

Citations of California cases shall be to the official California Reports. Citations of

other state cases shall be to the National Reporter System, showing state and year of
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decisiorL Other citations may be added. If case, statutory, or regtdatory authority is

relied upon which has not been reported, published, or codified in any of the
er

foregoing references, a copy of that authority shall be appended to the brief or to the
document in which it is cited. Ms requirement shall include, but not be Hmited to,
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the Statutes at Large, the Public Laws of the Uriited State, the Califorriia
Administrative Code, administrative regulations not contained in the Code of
Federal Regtdations or the Federal Register, and decision and other matters
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published in specialized reporter services."

COLORADO U.S. District Court for the District of Colorado

Rule 408 Briefs and Citations (nothing)

HLC 00012174
 175

CONNEC11CUT U.S. District Court for the District of Connecticut

Rule 7 Filing and Service of Pleadings and Other Papers (nothing)
Rule 9 Motion Procedures (nothing)
DELAWARE - U.S. District Court for the District of Delaware
Rule 3.2 Form and Contents of Briefs, Memoranda, Motions, and Appeals
3.2.B. -- Memoranda and Points and Authorities - "...shall succinctly
state eacii legal proposifion urged by the par-ty and, following each proposition, cite
supportirig cases and legal authorities..."
3.IC(6) "Citations will be deemed to be in acceptable form if made in
accordance with "A Uniform System of Citation" published and distributed from
time to time by the Harvard Law Review Association. State reporter citafions may
be omitted but citation to the National Reporter System must be included except as
to United States Supreme Court decisions where the official citation shall be used."

DISTRICT OF COLUMBIA U.S. District Court for the District of Colurnbia

Rule 106 Form and Filing of Pleadings and Other Papers (nothing)
Rule 108 Motions
108(a) "Each motion shall include or be accompanied by a statement of
the specific points of law and authorities that support the motion, ..." ,

FLORIDA
U.S. District Court for the Southem District of Florida
1.
Rule 10 Motions, Interrogatories, Depositions and Orders
10.A.1 "Every motion when filed shall be accompanied by a
memorandum of law citing supporting authorities, ..."
11. U.S. District Court for the Northern District of Florida
Rule 3 (A) Form of Pleadings (nothing)
Rule 6 Motion Practice
6 (A) "...with citation of authorities in support..."

E[I. U.S. District Court for the Middle District of Florida

H

Rtfle 1.05 Forms of Pleadings; General Requirements (nothing)

Rule 1.06 Forms of Pleadings; Special Requirements (nothing)
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Rule 3.01 Motions; Briefs and Hearings

3.01 (a) "...with citafion of authorities in support..."
er

3.01 (b) "...with citation of authorities in support..."

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GEORGIA
1. U.S. District Court for the Northem District of Georgia
Rule 200 Format and Filing for Pleadings, Amendments, and Other
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Papers
200.1 Paper; format; Legibitity
200.1(e) Citations (notWng)

HLC 00012175
 176

11. U.S. District Court for the Middle District of Georgia

RLfle 3 Filing and Service of Pleadings and Papers (nothing)
Rule 6 Motions
6.1 Filing "...accompanied by a memorandum of law citing supporting
authorities."

GUAM U.S. Distiict Court for the District of Guam

Rule 117 Citation of Authority (nothing)
RLde 237 Pretrial Statement & Conference, Memoranda of Contention of
Fact and Law, Witness & Exhibit Lists, and Pretrial Order
237.4(g) Points of Law "...with reference to statutes and decisions
relied upon."
237.5 Memorandurn of Contention of Fact and Law
237.5(2)(a) "...a legal brief discussing the issues of law necessary to
determination of the case with authorities cited in support thereof."
RLfles of Appellate Procedure For the District Court of Guam
Rule 14 Briefs
14.a)4) "Tbe argument shall contain the contentions of the appellant
with regard to the issues presented, and the reasons therefor, with citations to the
authorities, ..."

HAWAII U.S. District Court for the District of Hawaii

Rule 120 Format of Pleadings, Papers and Amendments - Filing of Papers
120.2 Form; Copy
120.2.(a) Format (nothing)
Rule 220 Motion Practice (nothing)

IDAHO U.S. District Court for the District of Idaho

Rule 5.1 General Format of Papers presented for Filing (notNng)
RWe 7.1 Motion Practice
7_1.(a)(2)(b) "-..a brief..., including the points and authorities relied
upon..."
Rule 16.1 Pre-Trial Procedures
H

16.1(c)(2)(G) Points of Law "Reference shall be made to statutes and

decisions relied upon..."
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YLLINOIS
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1. U.S. District Court for the Central District of Elinois

Rule 16 Mofions Generally
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16(B) Memorandum of Law; Time for Response (nothing)

U. U.S. District Court for the Northem District of Illinois
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Rule 12 Motions (nothing)

IH. U.S. District Court for the Southern DistTict of Illinois

HLC 00012176
 177

Rule 6 Motion Practice

6.(a) All briefs shall contain a short, concise statement of the party's
position, together with citations of authority, if any."
INDIANA
1. U.S. District Court for the Northern District of Indiana
Rule 9 Separate Briefs for Motions (nothing)
Rule 38 Citation to Legal Authorities "ff a par-ty relies on a legal decision
not published in the Federal Supplement, Federal Rules Decisions, Federal
Reporter, Federal Reporter Second, Supreme Court Reporter, Bankruptcy Reporter,
North Eastern Reporter or the North Eastem Reporter Second, then the partNI shall
furnish the court with a copy of the relied upon decision."
11. U.S. District Court for the Sotithern District of Indiana
Rule 12 Length of Briefs Rule 38
Citation to Legal Authorities "If a party relies on a legal decision not published in
the Federal Supplement, Federal Rules Decisions, Federal Reporter, Federal
Reporter Second, The United States Reports, Bankruptcy Reporter, North Eastern
Reporter, the North Eastern Reporter Second, or on a statute or regulation not
found in the current publication of the United States Code, the Code of Federal
RegWations..., then the party shall furrdsh the Court with a copy of the relied upon
decision, statute or regulation. With regard to decisions of the Supreme Court of
the United States not yet available in United States Reports, citafion should be made
to the Supreme Court Reporter and to Lawyers Edition Second."
IOWA U.S. District Cour-t for the Northern and Southern Districts of Iowa
Rule 14 Motions and Other Requirements for Court Action
14.d. Briefs on Motions "...a brief written statement of the reason in
support of the motion and a list of citations of any authorities on which couTisel
relies..."

KANSAS U.S. District Court for the District of Kansas

RWe 112(a)(4) "The argument, wl-dch shall refer to all statutes, rWes and
H

authorities relied upon."

112(b) "Unpublished decisions may be cited only if the unpublished
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decision is fumished to the court and to opposing counsel.... Unpublished decisions

should be cited as follows: Smith v. Jones, No. 87-2302 (D. Kans., March 1, 1987)"
er

KENTUCKY U.S. District Court for the Eastem and Westem Districts of
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Kentucky
Rule 7 Briefs, Pleadings and Memoranda; Proof of Service
w

7(e) Whenever a brief or memorandum contains a citation to a

case other than a United States Supreme Court decision, or an opinion published in
the Federal Reporter, Federal Reporter Second, Federal Supplement, Federal Rules
Decisions, Kentucky Reports, or Kentucky Decisions, or a statute other than a

HLC 00012177
 178

Kentucky or federal statute, a copy of the cited case or statute shall be fumished to
the Court."

LOUISIANA U.S. District Court for the Eastem, NEddle and Westem Dis'ricts
of LoWsiana
Rule I Pleading, Filings, and Withdrawal of Files (nothing)
Rule 2 Motions
2.05 Motions Must Be Accompanied by Memorandum
2.05(2) "...citations of authorities on which he relies or copies of the
these authorities."

MAINE U.S. District Court for the District of Maine

Rule 11 Form of Pleadings, Motions and Other Papers (nothing)
RLde 19 Motions and Memoranda of Law
19(a) "... a memorandum of law, including citations and supporting
authorities ......
19(c) Objections to Motions a separate memorandum of law, in
duplicate, including citations and supporting authorities,

MARYLAND U.S. District Court for the District of Maryland

Rule 105 Motions, Briefs and Memoranda
105.1 "... a memorandum setting forth the reasoriing and authorities in
support of it...."
105.5 Appendices "Every memorandum or brief shall be accompanied
by an appendix containing opinions cited therein which are not reported in Lexis,
WESTLAW or West's Federal or regional reports ......

MASSACHUSETTS U.S. District Court for the District of Massachusetts

Rule 5.1 Form and Filing of Papers (nothing)
Rule 7.1 Mofion Practice
7.1.(A)(1) "...a memorandum of reasons, including citation of
supporting authorities,
H

MICMGAN
I. U.S. District Court for the Eastem District of Michigan
yp

Rule 16 Pleading, Mofions and Other Papers (nothing)

Rule 17 Mofion Practice
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17.(f) Brief Supporting and Opposing Motion "... and citation of

authorifies upon which the parties rely...."
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Il. U.S. District Court for the Westem District of Nfichigan

Rule 24 Form of Pleadings and Other Papers; Ffling Requirements
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(nothing)
Rule 27 Mofions
27.(a) Briefs "... and shall cite... and other authorities upon which the
party relies."

HLC 00012178
 179

MINNESOTA U.S. District Court for the District of Minnesota

Rule 7.1 Civil Motion Practice (nothing)
Rule 15.1 Forni of Motion to Amend and Its Supporting Documentation
(nothing)
MISSISSIPPI U.S. District Court for the District of Northem and Southern
Districts of Mississippi
Rule 7 Briefs and Memoranda
7(c) Citation of Authorities "If any brief or other paper submitted in
support of a legal argument in any case cites or relies upon any authority other than
a Mississippi Statute, Federal Statute, Federal Rule, United States Supreme Cour-t
case, or a case reported in the Southern Reporter, Southem Reporter Second,
Federal Supplement, Federal Reporter, Federal Reporter Second, or Federal Rules
Decisions, a copy of such authority must accompany the brief or other paper citing
it,"

MISSOURI
1. U.S. District Court for the Westem District of Missouri
Rule 13 Motions (nothing)
H. U.S. District Court for the Eastem District of Missouri
Rule 7 Motions
7.(B)(1) "... a brief wriften statement of the reasons in support of the
motion, and a list of citations of any authorities on which he relies."
MONTANA U.S. District Court for the District of Montana
Rule 120 File and Filings
120.5.(a) "All documents filed with the Court shall follow the citation
form described in the current edition of "A Uniform System of Citation," published
by the Harvard Law Review Association (commonly referred to as the "Harvard
Citator"). The use of intemal citations referring to a particular page of a cited
authority, is strongly encouraged."
120.5.(c) "For any violation of the rules stated in (a) or (b), the Court in
its discretion may return the document for correction."
H
yp

NEBRASKA U.S. District Court for the District of Nebraska

Rule 6 Form oi Pleadings (nothing)
Rule 8 Briefs (notWng)
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Rule 20 Motions
20.A(l) : .... The brief shall contain a concise statement of the reasons for
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the motion and a citation of authorities relied upon."

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NEVADA U.S. District Court for the District of Nevada

Rule 130 Forin of Papers
130.4 Citations

HLC 00012179
 180

130.4(b) "When a decision of the Supreme Court of the United

States citation of the United States Reports shall be given. Whenever a decision of a
court of appeals or a district court or other court of the United States has been
reported in the Federal Reporter System, that citation shall be given. Whenever a
decision of an appellate court of one of the states has been reported in West's
National Reporter System, that citation shall be given. All citafions shall include
the specific page or pages upon which the pertinent language appears."

NEW HAMPSMRE U.S. District Court for the District of New Hampshire
Rule 8 Service and filing of Pleadings and Other Papers (nothing)
Rule 9 Form and Filing of Papers (notWng)
Rule 11 Motions
11(c) Briefing "... a memorandum with citation of supporting
authorities..."
Rule 34 Written Memoranda and Requests in Nonjury Cases "Counsel
are requested to cite cases in full. The Court has Northeastem Second and Atlantic
Reporters, but no state reports except New Hampshire."

NEW fERSEY U.S. District Court for the District of New Jersey
Rule 8 Filing of Papers, Form (nothing)
Rule 12 Applications; Motions and Arguments (notWng)
Rule 27 Affidavits, Briefs and Trial Memoranda (nothing)
NEW M-EXICO U.S. District Court for the District of New Mexico
Rtile 7 Motion Practice
7.3 Opposed Motions "... a brief or supporting points with citations or
authorities."
NEW YORK
I. U.S. District Court for the Southem and Eastem Districts of New York
CML RULES
Rule 1 Filing Papers (nothing)
Rule 3 Motions
3(b) "... a memorandum setting forth the points and authorities relied
H

upon in support..."
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11. U.S. District Court for the Eastern District of New York
(nothing)
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Ul. Rules of the US. District Court for the Westem District of New York
La

Rule 7 Form of Pleadings (nothing)

Rule 30 Review and Appeal of Magistrate Judge's Actions
w

30(b)(1) Appeal from Judgments in Nftsdemeanor Cases "... a

typewTitten memorandum ... stating specific facts, points of law, and authorities on
which the appeal is based ......
Rtde 42 Appeals

HLC 00012180
 181

Rule 5 Motions (iiothing)

Rule 6 Briefs
6(c) "... memorandum shall contain: ... citation of the authoritv upon
which the party relies, ..."

NORTHERN MARIANA ISLANDS U.S. District Court for the Norther

Mariana Islands
Rule 120.5 Citation Form "All citations shall be in a generally
recognizable form, enabling both the Court and opposing counsel to locate the cited
work. Parties shall provide the Court a copy of any case or other authority cited or
relied upon and which is unavailable in this Court's library."
OFHO
1.U.S. District Court for the Southern District of Ohio
Rule 7.2 Motions and Other Papers
7.2(b)(2) "In citing authorities, the Court prefers that counsel rel), upon
cases decided by the Supreme Court of the United States, the United States Court of
Appeals for the Sixth Circuit (or in appropriate cases the Federal Circwt,) the
Supreme Court of Ohio, and this Court."
7.2(b)(3) "Citation to United States Supreme Court decisions shoiild be
to the official U.S. Reports if published. Supreme Court Reporter and Lawyer's
Edition shall be used when the official U.S. Reports are not yet published. Foi- more
recent decisions, United States Law Week, Lexis, or Westlaw citafions are
acceptable."
7.2(b)(4) "If unreported or unofficially published opinions are cited,
copies of the opinions shall be attached to the memorandum and shall be furilished
to opposing counsel."

11. U.S. District Court for the Northem District of 01-do

(nothing)
OKLAHOMA
U.S. District Court for the Westem District of Oklahoma
1.
Rule 13 Briefs
H

13(E) "Citations of federal cases shall be to the United States Supreme

Court Reports and Lawyer's Edition, Federal Reporter, Federal Supplement, or
yp

Federal Rules Decisions, if so reported, and shall indicate the court and year of
decision ......
er

11. U.S. District Court for the Eastern District of Oklahoma

La

Rule 13 Briefs
13(e) "Citations of federal cases shall be to the United States Supreme
w

Court Reports, and Lawyer's Edition, Federal Reporter, Federal Supplement, or

Federal Rules Decisions, if so reported, and shall indicate the Court and year of
decision."

HLC 00012181
 182

U.S. District Court for the Northem District of Oklahoma

111.

Rule 14.E Briefs "Citations of federal cases shall be to the United States
Supreme Court Reports, and Lawyees Edition, Federal Reporter, Federal
Supplement, or Federal Rules Decisions, if so reported, and shall indicate the Court
and year of decision."

OREGON U.S. District for the District of Oregon

Rule 120-1 Forrn; Paper; Legibility (nothing)
Rule 220 Motions
220-3(d) "Briefs on motions... with supporting authorities,..."
PENNSYLVANIA
1. U.S. District Court for the Eastem District of Pennsylvania
Rule 7 Review and Appeal
7.rV.(e)ZD Memoranda "... stating the specific facts, points of law, and
authorities on which the appeal is based....
Rule 20 Motion Practice
20(c) "... a brief containing a concise statement of the legal contentions
and authorities relied upon..."

U.S. District Court for the Middle District of Pennsylvariia

11.
Rule 401 Motions
401.8 Contents of Briefs "Briefs shall contain complete citations of all
authorities relied upon, including wherever practicable, citations both to official and
unofficial reports. A copy of any unpublished opinion which is cited must
accompany the brief as an attachment ......
Rule 509 TriaI Briefs "...shall contain... the legal authorities relied
upon ... 11
Rule 602 Post Trial - Filing of Briefs... Contents of Briefs "...governed by
rule 401.8"

111. US. District Court for the Westem District of Pennsylvania

(nothing)
H

PUERTO RICO U.S. District Court for the District of Puerto Rico
yp

Rule 311 Motions

311.2 "... brief shall contain a concise statement of reasons in support of
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the motion, and citation of authorities relied upon..."

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RHODE ISLAND U.S. District Court for the District of Rhode Island
Rule 12 Motions
12(a)(1) "... memorandum of law contairdng the authorities and
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reasoning supporting his position..."

12(a)(2) "... memorandum of law containing the authorities and
reasoriing supporting Ms position..."

HLC 00012182
 183

SOUTH CAROLINA U.S. District Coui-t for the District of South Carolina
Rule 12 Motion Practice
12.05 Form and Content of Memoranda
12.05(c) "The argument (brevity is expected) relating to the matter
before the Court for ruling with appropriate citations;"
Rule 12 Civil Pretrial Briefs (nothing)

SOUTH DAKOTA U.S. District Court for the District of South Dakota
Rule 4.8 Motion
4.8(B) Briefs "... with authorities in support thereof on which the
moving party will rely,..."

TENNESSEE
1. U.S. District Court for the Eastern District of Tennessee
Rule 3.7.1 Motion Practice "...Memorandum shall include a concise
statement of the factual and legal issues which justify the relief sought."
Rule 3.7.4 Citation of Authority "Citation to decisions of the United
States Supreme Court shall include citations to the United States Reports, Supreme
Court Reporter, and to the Urtited States Supreme Court Reports, Lawyer's Edition,
where such citations exist. For more recent decisions, United States Law Week
citations or computer assisted legal research citations will be accepted. Citations to
any federal court decision or administrative opinion not fully reported in one of the
publications of the West Publishing Company, or citations to any decisions of a state
court other than Tennessee, shall be accompanied by a copy of the entire text of the
decision.... Citations to reported state cases shall include at least the "official" state
reporter citation and the regional reporter when available. 'fhe court will not
consider improperly cited authority."

H. IJ.S. District Court for the Middle District of Tennessee

Rule 8 Pleadings, Motions, Briefs, Summonses, Subpoenas, Etc.
8(c)(2) Briefs "Citations to United States Supreme Court decisions
shall include "triple cites" (U.S. Reports, Supreme Court Reporter, and Lawyer's
Edition) where such citations exist. For more recent decisions, United States Law
H

Week citations are acceptable."

8(c)(3) "Citations to reporter state cases shall include at least the
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,.official" state reporter citation and the regional reporter citation where available.
Any citations to state cases other than Tennessee cases shall be accompanied by a
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copy of the entire text of the opir-don."

8(c)(5) "Citations to any federal court decision or administrative
La

opinion not reported in one of the publications of the West Publishing Company
shall be accompanied by a copy of the entire text of the decision."
w

IH. U.S. District Court for the Westem District of Tennessee

Rule 8 Motions in Civil Cases (nothing)
Rule 20 Citations of Cases and Statutes

HLC 00012183
 184

20(a) "Unless a case being cited in a brief or memorandum by counsel

appears in a standard reporting series to which the Court and opposing counsel
could reasonably be expected to have access, counsel shall attach to brief of
memorandum a copy of the cited cases and furriish opposing counsel a copy."
TEXAS
1. U.S. District Court for the Southern District of Texas
Rule 6.A.2 Motions "[shall] Iriclude or be accompanied by authority."

11. U.S. District Court for the Westem District of Texas

Rule CV-7(e) Brief Supporting Motions "... and a citation of authorities
upon which movant relies..."

111. U.S. District Court for the Northem District of Texas

Rule 5.3 Briefs (nothing)
IV. U.S. District Court for the Eastem District of Texas
Rule 6.(c) Brief Supporfing Motions "... and citation of authorities upon
which the movant relies..."

UTAH U.S. District Court for the District of Utah

Rule 202 Motions and Memoranda
202(b)(1) "Memoranda shall be concise and state a basis for the motion
and limited citation to case or other authority."
202(b)(5) "Unpublished decisions of the district judges of this court
may be cited, but only if ... furnished.... Unpublished opinions of other courts shall
not be cited as authority .....

VERMONT U.S. District Court for the District of Vermont

Rule 5 Motions in General
5.A.I. "... and authorifies relied on..."

VIRGIN ISLANDS U.S. District Court of the Virgin Islands

Rule 6 Motions
H

6(e) Brief Supporting Motion "...and citation of authorities upon

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which the movant relies."

6(f) "... and citation of authorities..."
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VIRGINIA
1. U.S. District Court for the Eastem District of Virgiriia
La

Rule 11 Motions
ll(F) Briefs Required "... along with a citation of authorities upon
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which the movant relies ......

11. U.S. District Court for the Westem District of Virgirkia
(nothing)

HLC 00012184
 185

WASHINGTON
1. U.S. District Court for the Eastern District of Washington
Rule 7 Motion Practice
7(g)(1) "Citations to cases in briefs shall include volumes, page iind
year as follows:
Washington Cases: cite Washingion Reports and year of decision.
Federal Cases: For decisions of the United States Supreme Court,
cite United States Reports, or if not yet published therein, Supreme Court Reporter,
or if not yet published thei-ein, United States Law Week For all other federal cases,
cite Federal Reporter, Federal Supplement, Federal Rule Decisions, or BankrLiptcy
Reporter including the district or circuit and year of Decision."
7(g)(2) "Unpublished reports may not be cited."
7(g)(3) "Photocopies of significant cases relied on by counsel published
in reporters and publications other than those listed in paragraph (1) above shall be
attached to the chambers copy of the memorandum."
11. U.S. District Court for the Western District of Washington
CIVIL RULES
Rule 7 Pleadings Allowed; Form of Motions
7(b)(1) "... and a list of citations of authorities on which he relies ......
WEST VIRGINIA
1. U.S. District Court for the Northern District of West Virginia
Rule 2.07(h) Content of Briefs "Briefs shall contain complete citations of
all authorities relied upon, including whenever practicable, citations both to official
and unofficial reports. A copy of any unpublished opinion which is cited mtist
accompany the brief as an attachment ......

U.S. District Court for the Southern District of West Virginia

11.
Rule 2.03 Motions and Response in Civil Actions (nothing)
Rule 2.09 Suggested Findings of Fact and Conclusions of Law Ihe
proposed conclusion of law should contain a ftfli exposition of the legal theories
that counsel urges, with statutes and case citations."
H

WISCONSIN
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1. U.S. District Court for the Eastern District of Wisconsin

Rule 6 Motion Practice (nothing)
er

U. U.S. District Court for the Westem District of Wisconsin

La

(nothing)
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WYOMING U.S. District Court for the District of Wyoming

Rule 206 Motions and Motion Practice
206(c)(1) Biiefs on Mofiom "... and a list of authorities upon which he
relies ......

HLC 00012185
 186

C. CIRCUrr COURTS
DISTRICT OF COLUMBIA CIRCUI -- General Rules of the United States
Court of Appeals for the District of Columbia Circuit
Rtde 11 Briefs
11(a)(2) Authorities Principally Relied On (notWng)
11(b) Citations to Published Opinions and to Statutes "Citations to
decisions of this Court shall be to the Federal Reporter. Dual or parallel citation of
cases is not required. Citations of state court decisions included in the National
Reporter System shall be to that system in both text and the table of authorities ......

FIRST CIRCUIT - Rules of the United States Court of Appeals for the First
Circuit
Rule Loc.R.28.1 Citafions "All citations to State or Commonwealth
Courts shall include both the official state court citation and the National Reporter
System citations when such decisions have been published in both reports."
SECOND CIRCUIT - Rules of the United States Court of Appeals for the
Second Circuit
Rule 28 Briefs (nothing)
TMRD CIRCUIT -Rules of the United States Court of Appeals for the Third
Circuit
Rule 21 Briefs
21(l)(A)(i) The arg-ument shall contain contentions of the
appellant with regard to the issues presented, the reasons for each contentiori, with
citations to the authorities, statutes and parts of the record relied orL Citation to
cases which have been reported shall be to the United States Reports, the Federal
Repor-ter, Federal Supplement or Virgin Islands Reports and shall contain the
idenfity of the judicial Circuit, District, and year of decisiorL Citations to the United
States Supreme Court cases wWch have not yet appeared in the official reports
should include the month, date and year of decision or reference to United States
Law Week. Citations to federal decisions which have not been forinally reported
should identify the court, docket number and date. Citations to services and topical
reports, whether permanent or looseleaf, shall not be used if the text of the case cited
H

has been reported in the United States Reports, United States Law Week, Federal
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Reporter, Federal Supplement or Virgin Islands Reports. Citations to state court

decisions should be to the West Reporter System whenever possible with an
idenfification of the state court"
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FOURTH CIRCU - Rules of the United States Court of Appeals for the
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Fourth Circuit
(nothing)
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FIFTli CIRCUIT - Rules of the Urtited States Court of Appeals for the Fifth
Circuit

HLC 00012186
 187

Rule 28 Briefs (nothing)

SIXTH CIRCUIT -- Rules of the United States Court of Appeals fo r the Sixth
Circuit -

Rule 10 Briefs (nothing)

SEVENTH CIRCUIT --Rules of the United States Court of Appeals for the
Seventh Circuit
Rule 28 Briefs (nothing)

EIGHTH CIRCUIT - Rules of the United States Court of Appeals for the
Eighth Circuit
Rule 28A Briefs (according to FRAP 28(a)(I)-(5))

NINTH CrRCUIT -- Rtfles of the United States Court of Appeals for the
Ninth Circuit
Rtde 28.1-28.3 Briefs (in accordance with FRAP 28, 29, 31, 32 urdess
otherwise stated [nothing])

TENTH CIRCUIT -Rules of the United States Court of Appeals for the Tenth
Circuit
Ride 28- Rule 32 Briefs (fonn: FRAP 28,29, 31, 32)

ELEVENTH CIRCLJIT --Rules of the United States Court of Appeals for tile
Eleventh Circuit
Ride 28-20) "Citations of authority in the brief shall comply with the rules
of citation in the latest edition of A Unifornz System of Citatidn. State case
references should also cite national reporter cross references."

TFMPORARY CIRCUIT - General Rules of the Temporary Emergency Court

of Appeals of the United States
Rule 21 Briefs and Certificate of Counsel "... shall be prepared in
accordance with the provisions of Rule 28, Federal Rules of Appellate Procedure."
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FEDERAL CIR - Rules of the United States Court of Appeals for the
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Federal Circuit
Rule 28 Briefs
28(e) Citations "It is preferred that opinions of this court and its
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predecessors be cited as found in the Federal Reporter, Second Series, and, if

reasonably available, the United States Patents Quarterly and the United States
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Court of Appeals for the Federal CircWt InVI Trade Cases. Parallel citations to any
other reports are discouraged."
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HLC 00012187
 188
Mr. RAMsTAD. Thank you, Mr. Chairman. Given that distinction,
I'm breathing a great sigh of relief. I would ask one more question.
Mr. Opperman, let's assume bypothetically that H.R. 4426 be-
comes law; copyright protection is no longer available. I know your
company, has faced many, many legal and commercial challenges
over the years. What would a legal publishing company do to en-
sure its continued viability, were this to become law?
Mr. OPPERMAN. Well, I was interested in Mr. Oman's comments
when he said that maybe that's a policy question; that we may be
in the situation where the Federal Government or some govern-
ment would have to step in and fund some of that activity. That
is, of course, what concems us. Obviously, private publishers who
have taken these kinds of market positions and have put their
money and time into some of these compilations, some of which
have gone on for 60 and 70 years, are not going to be "incentivated"
to do that if somebody can come along and steal it. If that were
to be the case, the first groups that would drop off would be the
small States where the market is very small.
I heard Professor Denicola be concerned because he comes from
a relatively small market in Nebraska. I think some of the otber
States would also not be compiled because, as soon as you compile
them, somebody would steal it; you'd have no protection; and there
would be very few people to whom you could sell your product.
I think you would not see the startup, the tremendous amount
of entrepreneurial activity in the CD-ROM market that Professor
Berring,just talked about and wbich is evident to anyone in the
marketplace. The barriers to entry by those publishers is very low.
Again, they would probably be put out of business, at least on
small products-on municipal code compilations. Compilations of
that kind where there is a small, but very important interest would
be the first to go.
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Then I think the large publishers would probably have restrictive

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contracts. You'd go to your top 200 or 300 law firms and you'd say,
"You can use our arrangement by Westlaw or by CD-ROM or by
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our publications, but here are the restrictions. You can't use them
outside the practice. You can't sublicense. You've got to pay us a
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royalty fee." There would be a variety of contractual restrictions

that would try to return to you the benefit of your investment, but
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it would not be the broad access you have today.

So yo&d lose the access in two ways. The small guys would be
out of business. They couldn't compete. The small States and the
small compilations-for example, municipal codes-where there's a
small market, nobody would do those; it just wouldn't pay. They'd
be gone.
The larger publishers would survive, I tbink, but they would use
their positions for contractual protection, whieb would limit access
and make it a much different kind of environment for information
sharing.- would hope that the dire prediction of them coming back
here and saying, "Well, the people that do U.S. Code can't do it an
more because it ets pirated and they can't afford it. They can't -
ford the tremenf(ous amount of editorial selection, the tremendous
amount of intellectual effort that goes into this. It's got to be paid
for by Congress."

HLC 00012188
 189
And I would hope that would not happen, and I would hope in
the various States we would not get back in this situation we were
in 30 and 40 years ago where States continued to publish case re-
ports 2 and 3 years late, inaccurately, but expensively; where they
tried to do their own statutory arrangements, which took 30 and
40 years and were never completed, at great taxpayer expense. I
would hope we wouldn't revert to that, but I'd be very concerned
that that would be the exact result if this kind of legislation passes.
Mr. RAmSTAD. Thank you, Mr. Chairman.
Mr. FRANK. Thank you. You are finished.
And well take our final panel now. We have Mr. Bemarr Pravel,
who is testifying on behalf of the Patent, Trademark, and Copy-
rigbt Section of the ABA, which he chairs. He's a partner in Hous-
ton law firm of Pravel, Gamble, Hewitt, Mmble, and Krieger.
We have Prof. Laura Gasaway, on bebalf of the Association of
America n Law Libraries. Sbe is director of the law library at the
'

University of North Carolina, Cbapel Hill.

Steveii Metalitz is representiny the Information Industry Asso-
ciation and is vice president an general counsel of that associa-
tion.
Mr. Pravel, we'll begin with you.
STATEMENT OF BERNARR IL PRAVEI4 CELuit, SECTION OF
PATENT, TRADEMARK AND COPYRIGHT IAW, AMERICAN RAR
ASSOCIAIION, ACCOMPANIED BY MM CILEARY
Mr. PRAVEL. Thank you, Mr. Chairman. I speak today on behalf
of the Patent, Trademark and Copyright-
Mr. FRANK. Please, try not to repeat anything I've said; OK? I
said that. Let's iust get right to the testimon
Mr. PRAvEL. With your permission, I wo% like to introduce the
person I'm accompanied by, Mike Cleary, who is also with the
American Bar.
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Mr. FRANK. Certainly, and when we get to questions, if be wants

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to join you, that will be permissible.

Mr. PRAVEL. The purpose of my statement is simply to bring to
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our attention the view of the American Bar Association Patent,

rademark and Copyrigbt Section with respect to the bill wbich is
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pending, in connection with H.R. 4426. The section of the American

Bar Assd.ciation met in Atlanta in August 1991, and they resolved
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as follows:
That the Section of Patent, Trademark and Copyright Law favors
in principle an amendment to the Copyright Act that would make
copynght protection expressly unavailable for numbers or names
by which State statute texts are identified. The purpose bere is to
support that resolution in connection with the bill which is before
Congress now, H.R. 4426.
There is another provision of H.R. 4426 which we are not per-
mitted to speak to, which is paragraph sub (a)(3), and that is be-
Fause our section did not take a position on that. So our support
is xnmarily with respect to H.R. 4426, section (a)(2).
t this point, we ask that our entire statement be made a part
of the record, and we thank you.
Mr. FRANK. Without objection. Thank you.
[The prepared statement of Mr. Pravel followsJ

65-153 0 - 93 - 7

HLC 00012189
 190

PRF,PARED STATEmENT op BERNARR R. PRAVEL, CHAIR, SECrION OF

PATF,NT, Twmm AND CopyRiGHT LAw, AmmcAN BAR AswciATioN

Mr. Clinirman and members of the Subcommittee, I appreciate

the opportunity to testify an the proposed amendments to the
Copyright Act of the United States.

I am Bill Pravel, of the Houston, Texas law firm of Pravel,

Cambrell, Hewitt, Kimbell & Krieger. I serve as Chair of the
American Bar Association's Section of Patent, Trademark and
Copyright Law. Thank you for the invitation to participate in
today's hearing.

The purpose of my statement is to bring to your attention the

views of the American Bar Association's Section of Patent,
Trademark and Copyright Law (hereinafter designated as "PTC-
Section") in connection with your consideration of H.R.4426.
These views are being presented only in behalf of the
PTC-Section. They have not been submitted to, nor approved
by, the liouse of Delegates or the Board of Governors of the
American Bar Association -- and, accordingly, should not be
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construed as representing the position of the American Bar

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Association.
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HLC 00012190
 191

-2-
At its 1991 Annual Meeting in Atlanta, the membership of the
PTC-Section adopted the following Resolution 308-1:

RESOLVED, that the Section of Patent, Trademark and

Copyright Law favors in principle an amendment to the
Copyright Act that would make copyright protection
expresslv unavailable for nurnbers or names bv which
state statute texts are identified.

This resolution is pertinent to H.R.4426 which would amend

Sect.105 of Title 17, United States Code to make copyright
protection expressly unavailable "for anY name, number, or
citation by which the text of State and Federal laws or
regulations are, or ever have been, identified."

H.R.4426 would implement the PTC-Section's Resolution 308-1

whicii is specific onlv to names or numbers bv which state
statute texts are identified, and it would extend the same
principle to federal laws and regulations.
H
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In line with the foregoing, the PTC-Section supports the

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proposed "(a)(2)" provision in the H.R.4426 bill.

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On the other hand, the PTC.-Section is unable to comment

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either affirmatively or negativelv upon the proposed "(a)(3)"

provision in H.R.4426.

HLC 00012191
 192

-3-
The PTC-Section's Resolution 308-1 does not encompass the
proposed law in "(a)(3)" which would amend Section 105 of the
Copyright Act to make copyright protection expressly
unavailable "for any volume or page number by which State or
Federal laws, regulations, judicial opinions, or portions
thereof, are, or ever have been, identified,"

The following characterization of "(a)(3)" was provided in a

legal publication shortly after H.R.4426 was introduced by
Representative Barney Frank:

"By precluding copyright protection 'for any volume or

page number by which State or Federal laws. regulations,
Judicial opinions, or portions thereof, are, or ever
have been, identified,' the bill responds to the 1985
West Publishing ruling on the copyrightabilitv of
pagination and arrangement of legal opinions." (See page
431 of the 3/19/92 BNA's Patent, Trademark & Copyright
Journal]
H
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This matter is understood to be a contentious issue among

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legal publishing entities within the private sector

commuiiity. It is also my understanding that the 2 to
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appellate judge holding in West Publishing v Mead Data

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Central Inc still stands -- that is, an affirmance of the

district court's holding that West Publishing's copyright

HLC 00012192
 193

-4-
extended to its arrangement and pairination of cases. [See
799 F.2d 1219, 230 USPQ 801 (CA 8 1986)]

Matter directly bearing upon the copvrightabi-lity of

pagination and arrangement of legal opinions was not a topic
tipon wliich the PTC-Section foctised. A reading of the
I'TC-Section's report makes it clear that tiie West
flublishing v Mead Data case as such was not in issue during
the PTC-Section's Committee study -- and, accordinglv, not a
matter upon which PTC-Section members voted either in
Committee or at the 1991 Annual Meeting.

,his explanation is being provided in order to underscore the

reason for the PTC-Section's inabilitv to comment either for
or against the "(a)(3)" provision. Stated another wav, we
TnUSt abstain on the proposed "(a)(3)" because there is no
current PTC-Section position on the matter.

'rhis completes my testimony. Thanks again for the opporttinity

H

co participate in the hearing. I am prepared to address

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questions raised by you, Mr. Chairman, and other members of

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the Subcommittee.
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HLC 00012193
 194
Mr. FRANK. And to be clear, you're in support of part of it and
neutral on the otbers, baving no position on the otbers?
Mr. PRAVEL. Yes, sir.
Mr. FRANK. Thank you.
Ms. Gasaway.
STATEMENT OF IAURA N. GASAWAY, PROFESSOR OF LAW AND DI-
RECTOR, IAW LEBRARY, UNIVERSITY OF NORTH CAROLINA, ON
BEHALF OF THE ASSOCIAIION OF AMERICAN LAW LIBRARIES
Ms. GASAwAy. Tbank you. I speak on bebalf of the American As-
sociation of Law Libraries-
Mr. FRANK. Yes, I said that. Again, please, just get right to
Ms. GASAWAY. I just want to tell you what we see the goal of our
association is: To increase the access of legal information, not only
to legal practitioners, but also to members of the general public.
This is a very important thrust of our statement.
The AALL supports subsection (a) of the proposed amendment,
but opposes subsection (b) on public policy grounds, because of ac-
cess to information. L-et me address my remarks just to our support
for subsection (a) and leave the statement as written for subsection
(b).
Mr. FRANK. Without objection, that will be made part of the
record.
Ms. GASAWAY. Thank you.
We believe that access to the law sbould be controlled by no one
publisher, wbether that control occurs because of doing good work
or because the control exists because a State bas given its stamp
by saying, "This is the statutory compilation or the report that will
be cited in our court.-
We have another concem in that the introduction of electronic in-
formation is not free to the public. True, we do have competing
electronic formats in law with Westlaw and Lexis, but traditionally
H

legal materials have been available in the public libraries, in the

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public law libraries in this country, to members of the general pub-

lic.
er

This will not be true to the same extent with the electronic
media. They are very expensive. Public law libraries in law schools
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are govemed by their contracts which restrict the access to mate-

rials to our own students and faculty. If members of the general
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public are to have this electronic access, it will be at some commer-

cial rate. So, therefore, the publisbed West materials may be the
only format that is available to the general public.
We atso believe that citations are the signposts in the road map
of legal research. They provide the authoritative shorthand that
interconnects materials, and they are the way that we have used
to locate materials for many, many years.
The AALL does recognize the contribution that West Publisbing
Co. has made in the publication of court reports and statutory com-
pilations, but these are public domain materials and we do not be-
lieve that citations are coFyrightable. We think subsection (a) is
narrowly drawn to deal on ly with the copyright status of citations.
We believe the compilations themselves are copyrightable, but the
assignment of volume, page, and section numbers are performed
after the original work is cione, the arrangement and the indexing

HLC 00012194
 195
and such. So the mechanical assignment of section and page num-
bers we do not believe is copyrightable.
Several previous witnesses have testified to what we believe one
of the most serious problems is, the existence in many jurisdictions
of only one publisher; the requirement by the courts in that juris-
diction that citation be to these materials; and the inability of other
publishers to use the jump pagination in their publications to make
them acceptable to the court.
I'll be giad to answer any questions, and I thank you for letting
me appear.
Mr. FRANK. Thank you.
[The prepared statement of Ms. Gasaway followsJ

H
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HLC 00012195
 196

PREPARED STATEMENT OF LAuRA N. GASAIVAY, PROFESSOR OF LAiv AND

DIRECTOR OF THE LAw LIBRARY, Uivmsuy oF NoRTH CARoijNA
AT CHAPEL Hui, ON BEHALF OF TBE AmFyjcAN AsSOCIATION
OF lAw LmRARiEs

ABSTRACT'

The American Association of Law Libraries lends its qualified

support for H.R. 4426. The Association believes the bill will
increase public access to the law by revitalizing competition
among legal publishers (1-2) and by permitting all sectors of the
public to systematically use legal citation information (2-3).
H.R. 4426 will not disturb the existing copyright protection for
compilations. The bill is narrowly drafted to place only
citation information in the public domain (4-5). A legal
publisher's intellectual contributions to a compilation - topic
and key numbers, headnotes, annotations, table of contents and
indexes - remain protected under Sections 101 and 103(b) of the
Act (4-5).
Copyright protection should not extend to information used to
cite judicial cases. First, there is no orginality in the simple
division of text by volume and page numbers. Such information is
mechanically applied to compiled text after the creative process
has ended (6-7). Second, extending copyright protection to
citation information could enable dominant firms in this branch
of legal publishing to preclude other publishers from entering
the market (7-8).
Citation information relating to statutes should be placed in the
public domain. First, statutes their citations are
functionally inseparable. Since, byand law, statutes cannot be
copyrighted, their citations should also belong in the public
domain (9-10). Second, legal citation manuals vest preferred
statutory codes with a quasi-official status. Unless others can
H

freely use the citation information for a preferred

publishers cannot enter that publishing market (10).code, new
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Third,
preparing a statutory code is a governmental operation and the
resulting code arrangement should reside in the public domain
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(11-10).
The AALL cannot support the final subsection of H.R. 4426 since
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it implicitly suggests that governments may charge fees for

access to their legal publications (12). This is simply unwise
pUbliC PoliCy (11-12).
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I Page references to the prepared statement appear in parenthesis.

HLC 00012196
 197

I. INTRODUCTION.

Good morning Mr. Chairman and members of the Subcommittee.

I am Laura N. Gasaway, Professor of Law and Director of the Law
Library at the University of North Carolina at Chapel Hill. I
have taught intellectual property law since 1978, first at the
University of Oklahoma Law School and now at the University of
North Carolina. I am here today to express the views of the
American Association of Law Libraries on H.R. 4426.

The American Association of Law Libraries (AALL) is a non-

profit professional organization devoted to improving the
operation of law libraries and, enhancing the distribution of
legal iniormation. Nearly 5, 000 AALL members work in
approximately 1,100 law libraries. Law librarians serve the
vital legal information needs of judges, legislators and
executive officials at all levels of government as well as
scholars, the bar and the public.

The American Association of Law Libraries is pleased to

H

offer its qualified support for H.R. 4426. This support rests on
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a belief that citizens of a democratic society must have maximum

access to the laws that govern them. Public access to the law
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can be maximized by preserving robust competition within a mixed

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market of public and private publishers. The AALL recognizes

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that certain publishers - notably the West Publishing Company-

1

HLC 00012197
 198

have made outstanding contributions to the development of

American legal literature. The Association also believes that
access to law should be controlled by no publisher. citizen
access to the law is jeopardized if, by exerting copyright
control over citation information, any publisher can exclude
other publishers from the field.

This is not a hypothetical problem. As the Subcommittee no

doubt knows, recent litigation electronic law
between two
publishers suggests that the mere mechanical application of page
numbers in a compilation by itself may be protectible as a part
of a copyrighted work.1 As expressions of public policy, those
decisions are wrong as they weaken market competition. Such
competition is further undermined by the fact that many legal
style manuals direct researchers to cite the reporters and code
volumes produced by a single publisher that has long dominated
that branch of legal publishing.2 Indeed, in certain
jurisdictions, court rules admonish researchers to cite to the
dominant reporters.3 H.R. 4426 is needed to restore balance and
competition in the legal publishing industry.
H
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Quite apart from the need to foster competitive publishing,

H.R. 4426 is needed to secure within the public domain a
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strategic body of information that unlocks the text of the law.

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Although taken for granted, legal citations are the sinews of

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legal research. citations serve as direct physical finding aids

2

HLC 00012198
 199

which enable researchers to locate law or reports without

consulting any intermediate index or digest. Citations are also
cross reference devices which enable authors to direct researcher
to related information. So used, citations provide
interconnectiveness in legal publications.

Legal citations fulfill an infrastructural role in legal

circles which is similar to that of currency in a modern society.
Just as the currency system allows financial transactions to
occur, so the system for citing law materials facilitates
information exchanges from authors to researchers. Page-specific
citations are increasingly important as legal literature
increases in bulk and complexity. Until legal literature
completes its evolution from print to electronic form,
corresponding citations are needed to ensure that researchers can
access statutes, regulations and reports in either format. All
sectors of the public, from publishers to = Ig litigants, have
an immense if not obvious interest in placing legal citation
information in the public domain.
H

II. H.R. 4426 WILL NOT UNDERMINE THE

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COPYRIGHT PROTECTION FOR COMPILATIONS.

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H.R. 4426 will not disturb the traditional protection

accorded to compilations. opponents of the bill have overstated
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its impact by suggesting that it will undermine the traditional

3

HLC 00012199
 200

protection accorded to compilations. The wording of the bill is

narrow and specific. Its effect is limited to placing in the
public domain only the traditional means of referring to legal
materials which are themselves not copyrightable. The bill
addresses only the issue of volume and page numbers for judicial
opinions, and the name, number or other citation for statutory
and regulatory materials. Only the opponents of H.R. 4426
suggest that the bill has any broader scope.

Section 101 of the Copyright Act defines a compilation as:

a work formed by the collection and assembling of
preexisting materials or of data that are selected,
coordinated, or arranged in such a way that the resulting
work as a whole constitutes an original work of
authorship ... 4

As explained by no less an authority than the Counsel to

this Subcommittee,5 three elements are required for a work to be
a compilation under the Act: (1) a collection and assemblage of
preexisting materials that are (2) selected, coordinated or
arranged into (3) a new work which may be said to be an original
work of authorship. Moreover, section 103(b) of the Act makes
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clear that copyright protection extends only to the material

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contributed by the author of the compilation but not to the

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underlying preexi sting material.6 Such contribution would

include any editorial matter as well as the selection,
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coordination, and arrangement of the material.

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HLC 00012200
 201

Unquestionably traditional legal compilations as entire

intellectual works deserve copyright protection. The
Association does not believe, however that this protection
should extend to mere page numbers or to the common means of
citing legal materials as required by both Federal and state
courts.

Nothing in H.R. 4426 changes the law as it applies to

compilations. The bill speaks gnl_y to information commonly used
to cite an item in a compilation. If the bill passes, those
parts of the compilation which represent the real intellectual
work would remain protected.

III. CITATION INFORMATION RELATING TO JUDICIAL

OPINIONS SHOULD BE PLACED IN THE PUBLIC DOMAIN.

The American Association of Law Libraries supports the

subsection of the bill that would preclude copyright for volume
and page numbers for laws, regulations, and judicial decisions.
Copyright protection should not extend to volume and page numbers
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of these materials for two reasons because page numbers lack

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sufficient originality to merit protection and allowing one

publisher to control the means of citation to important public
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domain materials gives that publisher the power to exclude

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others from the market. Such protection would become a mechanism

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by which one publisher could turn public domain materials into

5

HLC 00012201
 202

protected materials that they can control.

Last year, in the Feist decision,7 the Supreme Court

reiterated the Constitutional requirement that only an original
work of authorship is entitled to copyright protection.
According to the Court, originality may be found in the
selection, arrangement, and coordination of the parts of the
compilation. This requirement applies with no less force to the
world of legal publishing.

More than a century before Feist, the Supreme court was

presented with a powerful argument that volume and page
references is too mechanical to be worthy of copyright
protection. As counsel foi the appellant in Callaahan v. Mvers8
noted:

Celver since the invention of printing, books have been

paged in numerical order, and [the copyright holder] might
with eclual propriety claim an exclusive property interest in
the system of Arabic numerals as in the paging of his books.
Moreover, the printed paging is merely the mechanical labor
of the printer, and is never performed by the author or
publisher.
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As persuasive as this argument was, it did not carry the

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decision because the infringement claim also involved the

copyright owner's headnotes and other genuinely intellectual
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editorial enhancements. Still, counsel's basic point is valid:

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volume and page numbers of judicial decisions are mechanically

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applied after the creative work of selecting, arranging, and

HLC 00012202
 203

coordinating is complete. There is no originality - no

selection, arrangenent or coordination - in the simple division
of text by volume and page. The citation information created by
this wholly mechanical process should not become proprietary by
the operation of the copyright law.

Beyond the legal argument concerning originality, the need

to provide parallel references in different reporter series led
very early to the practice of star paging, a practice which has
been followed in legal publishing for at least a hundred years.
Star paging is an honored tradition in which the reports of one
publisher show the citation and page breaks of another. In most
cases, this tradition allows an unofficial reporter to cite to
the official so that an attorney need use only one set of
reporters.

Unfortunately, an increasing number of jurisdictions have no

official publishers; in most of these cases, one private
publisher has substantially dominated the field. This is true
for both the Federal Circuit and District Court opinions as well
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as for the opinions of several states.9 In these jurisdictions,

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one must cite to the established private reporter, because that

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is the means dictated by the Courts of that jurisdiction as well

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as by the standard legal citation manuals. To permit a private

publisher to claim a copyright in the page numbers is to preclude
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others from entering the field. Since public policy clearly puts
7

HLC 00012203
 204

these materials in the public domain, it appears contrary to

that policy to permit a publisher to use something as artificial
as page numbers to restrict other publishers from entering the
market.

To be sure, legal publishers should be able to claim a

copyright in the original parts of the work such as the
selection, arrangement, and coordination of materials but not in
the mere application of page or volume numbers.

IV. CITATION INFORNATION RELATING TO STATUTES

SHOULD BE PLACED IN THE PUBLIC DOKAIN.

For the earlier noted reasons of public policy, the

Association supports the subsection of H.R. 4426 dealing with
statutory and regulatory imaterials. Citation information for
statutes should be placed in the public domain.

Admittedly, the factual and legal circumstances surrounding

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statutory compilations differ somewhat from those of court

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reports. Several jurisdictions were slow to develop code systems

for their legislative acts. Private publishers stepped into the
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breach and devised systems for organizing and identifying

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statutes. Clearly, these codes systems are intellectual

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accomplishments which ordinarily would be copyrightable.

HLC 00012204
 205

However,extending copyright protection to these private code

arrangements poses at least three difficulties.

The first is that statutes and their citatiozis are

functionally inseparable. A long line of cases deny publishers
any copyright interest in the text of statutes.10 This
prohibition stems from, in the words of one judge, "the very
important and practical policy that citizens must have free
access to the laws that govern them".11

Access to the law is the very reason why citation

information must be treated differently from other elements of a
compilation. Citation information is always needed to access
the text of statute. other finding aids which have been
a
protected by copyright, such as indexes, tables of contents,
digests, margin notes and the like, invariably lead a researcher
to citation information because that information alone allows a
researcher to locate a law. Since a statute cannot be
copyrighted and since a statute and its citation are inseparable,
the citation itself belongs in the public domain.
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Recognizing this interrelationship, the ABA Section of

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Patent, Trademark and Copyright Law has approved a resolution

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which supports, in principle, an amendment to the Copyright Act

that would deny copyright protection to "numbers or names by
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which state statute texts are identified". This resolution rests

9

HLC 00012205
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on a conclusion that names and numbers are actually parts of a

statutory code and so are non-copyrightable. While AAJL takes no
position on that particular conclusion, the Association agrees
with the spirit of the resolution.

A second difficulty is that legal style manuals have

conferred a quasi-official status on selected codes. As is true
with court reports, the style manuals used by courts direct
lawyers to cite to specific statutory codes in briefs and
memoranda. This virtually elevates a preferred code arrangement
to an "official" status and confers a great advantage to that
code publisher.

Unless others can freely and systematically use the

preferred code arrangement, no new publisher can hope to enter
that market. This is antithetical to the spirit of the copyright
Act to promote, not stifle the creation of new works.

A third difficulty is that preparing a statutory arrangement

is an inherently governmental operation. It makes no difference
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that this work was sometimes performed by private publishers at

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the behest of a government. History cannot transform a

governmental activity into private enterprise.
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The refusal to
grant a copyright over the text of statutes suggests that the
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copyright law cannot serve as a vehicle to convert public

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resources into private property. The same logic suggests that

10

HLC 00012206
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citation information used to locate statutes should be preserved

as national legal resources.

V. THE FEE SECTION OF H.R. 4426 IS UNWISE PUBLIC POLICY.

Despite AALL's support for the copyright portion of H.R.

4426, the Association cannot support subsection (b) of the bill
which implicitly authorizes states to charge fees for access to
their legal publications. The Association believes that this
subsection is poor public policy and. recommends that it be
stricken from the bill.

Federal, state and local governments operate under a general

duty to disseminate government information to their citizens.
This duty arises from two inherent characteristics of government
information. The first is that government information is
created at taxpayer expense. As a valuable public resource, it
should be made available for public use at the least possible
cost. The second factor is that a broad category of government
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information is needed for citizens to monitor the acts of

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officials, to exercise their political rights and to obtain

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judicial redress.
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This last point underscores the critical need for public

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access to legal information. As the cost of legal assistance

11

HLC 00012207
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escalates, more Americans may perform their own research to

conduct personal legal transactions. Never has it been so
important for citizens to have free access to their laws.

Unfortunately some states already charge substantial fees

for access to court opinions, statutes and recjulatory materials.
California, Colorado, and New York sell legal information to
publishers and, in some cases, to citizens. Representatives from
the library community and various publisher organizations
continue to meet with state officials to discuss these issues.
These discussions may yield sensible policies that resolve the
issue. However these discussions might be cut short if the fee
section of H.R. 4426 is enacted.

The fee section seems to be neutral but it invidiously

alters the status quo. Unfortunately, the section lends
legitimacy to the emerging trend of goverrments to exact fees for
government information. The section may actually prompt more
states to charge higher fees for access to legal information.
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In light of these considerations, the AALL recomm nds the

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deletion of this subsection of the bill.

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Vi. CONCLUSION.
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In this country, it is clear public policy that both case and

12

HLC 00012208
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statutory law is in the public domain. Allowing a publisher to

preclude other publishers from entering the field through the
artificial mechanism of controlling the means of citation,
defeats that all important policy. The American Association of
Law Libraries believes that in furtherance of the policy of
promoting widespread access to the law, the means of citation to
the law - volume and page numbers for decisions, and names,
titles, and section numbers for statutes - should be made
expressly beyond the bounds of copyright protection.

NOTES.

1. See West Publishing Co. v. Mead Data Central, Inc., 616 F.

Supp. 1571 (D. Minn. 1985), affld, 799 F.2d 1222 (8th Cir.
1986), cert denied, 479 U.S. 1070 (1987).
2. The 'Bluebookl, a generally accepted legal citation manual,
directs researchers to West publications as the source-of-choice
if no official court report is published for a jurisdiction. For
example, researchers are instructed to cite to Federal Supplement
or Federal ReRgrter for opinions from lower Federal courts. See
The Bluebook; A Uniform System of Citation tbl. T.1, at 165-6
(15th ed. 1991).
Similarly, for state courts covered by both a West regional
reporter and an alternative, the Bluebook advises a researcher
to cite both reporters if the document is to be submitted to a
state court. So attorneys submitting a brief to the Washington
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Supreme Court are directed to cite both the Washington Re2orts

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Second Series =d West's Pacific ReRgrter Second series. See Th&

Bluebook; A Uniform System of Citation tbl. T.1, at 169 (15th ed.
1991).
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3. For example, local court Rule 11(b) of the District of

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Columbia Circuit provides that "Citations to the opinions of this

court shall be to the Federal Reporter ... Citations to state
court decisions included in the National Reporter System shall
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be to that system... 11
Similarly, the Federal Circuit, through its local court Rule
13

HLC 00012209
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28(e) requires practitioners to cite to Federal ReDOrter. Second

Series if cases appear in that set.
4. See 17 U.S.C. Section 101 (1988).
5. See Latman's The Copyricht Law 63 (William F. Patry ed., 6th
ed. 1986).
6. See 17 U.S.C. Section 103(b) (1988).
7. Feist Publications v. Rural TeleRhone Service Co., 663 F.
Supp. 214 (D. Kan. 1987), affld in an unpublished opinion, 916
F. 2d 718 (loth Cir. 1990), revld, 111 S. Ct. 1282 (1991).
8. Callaghan v. Myers, 128 U.S. 617, 641 (1888).
9. In the following jurisdictions a court report published by the
West Publishing Company has been designated as an official
report: Alabama (1976), Alaska (1960), Colorado (1980), Delaware
(1966), Florida (1948), Indiana (1981), Kentucky (1973), Maine
(1966), Minnesota (1978), Mississippi (1966), Missouri (1956),
North Dakota (1953), Oklahoma (1953), South Dakota (1976),
Tennessee (1972), Utah (1974), Wisconsin (co-official with the
Wisconsin Reports since 1975) and Wyoming (1959).
Source: Morris Cohen, Robert Berring, and Kent Olsen, How to Find
the La Appendix B (9th ed. West 1989).
The Bluebook lists four other states that have abandoned their
official reporter, leaving the West reporter the principle court
report for the jurisdiction: Iowa (1968), Louisiana (1972), Rhode
Island (1980) and Texas (1962).
10. See State of Georgia v. Harrison Co., 548 F. Supp. 110, 133-4
(N.D. Ga.) vacated per stipglation, 559 P. Supp. 37 (N.D. Ga
1982); Banks v. Manchester, 128 U.S. 244, 253-54 (1888):
Buildin officials & Code Adm. v. Code TechnolM . Inc., 628 F.2d
730, 734 (lst Cir. 1980); Howell v. Miller, 91 P. 129, 138 (6th
Cir. 1898).
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11. See State of Georaia v. Hmrrison Co., 548 F. Supp. 100, 114
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(N.D. Ga. 1982).

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Mr. FRANK. Mr. Metalitz.
STATEMENT OF STEVEN J. METAIM, VICE PRESIDENT AND
GENERAL COUNSEI.4 INFORMAnON INDUSTRY ASSOCIATION
Mr. METALrrz. Thank you, Mr. Chairman. The Information In-
dustry Association urges Congress not to enact H.R. 4426. We've
heard a lot about public access to the law this morning and we be-
lieve that there is broad public access because of two key le&al doc-
trines that work together. First, the text of statutes, regulations,
and court decisions are clearly in the public domain. Second, there
is strong copyright protection available for original compilations of
these materials. That tTves incentives for that wide dissemination
of this information in e format that the public finds most useful.
We're concerned because, in our view, H.R. 4426 could weaken
both of these aspects of current law, and, tberefore, unlike the
other witnesses on this panel, our association is not bringing you
a split decision. We feel that both section (a) and section (b) of the
proposed amendments to section 105 of the Copyright Act should
not be enacted.
On the West v. Mead case, thaes obviously a controversial case.
IIA doesn't take an position on whether that case reached a prop-
er result. But we iKnk there are some strong arguments on legal
grounds and on policy grounds against enacting legislation to over-
turn this decision.
Even after West v. Mead, the courts are free to decide on the ex-
istence and scope of rotection when particular legal compilations
are brought before tgem for decision. Congress in this situation
usually awaits further judicial development of the law on a case-
by-case basis. It doesn't always do so, but we think this is a very
good instance for it to take that approach.
There's also been a lot of discussion of the effect of the Feist deci-
sion. The Register of Copyrights seemed quite certain and quite
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emphatic that Feist meant the death knell of the West v. Mead de-
cision. Others bave taken an opposing view. We're not so sure, but
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we would want to emphasize what Feist said and how this bill
takes an antithetical approach.
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In Feist, the Court told the lower courts to focus on whether a

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compilation, a particular compilation, shows originality in selection,

coordination, or arrangement of public domain materials. H.R. 4426
would deny copyright protection to the selection, coordination, or
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arrangement, no matter how original it was, of certain kinds of

legal materials, if it's expressed in volumes and across page num-
bers. We think that Congress should not reject the Feist approach;
it should allow the courts an opportunity to apply the Feist ap-
proach to particular compilations that will come before them.
We also mention in our statement that this is a time of extraor-
dinary flux in the legal environment for the protection of data
bases and of compilations generally. There is not only the Feist de-
cision, but also the pending proposal by the European Community
for copyright protection for data bases in Europe, wbich includes a
reciprocity provision. The European Community proposal is in ef-
fect, a challenge to the United States to conform our law with the
European proposal. All these factors can dampen the investment
that the previous panel talked about, the investment tbat's needed

HLC 00012211
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to create useful compilations, and, therefore, we think this is not
the time to act to cut back copyright protection for these compila-
'iW b statllte.
Flnally wlth respect to section (b), the issue of public access to
public n ,ormation we're concerned that this bill is an inappropri-
ate response to a disturbing trend of increased government restric-
tions on public access to this information. Aggressive assertions of
ppyright by State govemments, even by the Federal Govemment,
in proposed legislation, and other restrictions are tending to under-
mine the public domain status of the underlying legal materials.
We think what Congress should be doing is encouraging the States
to dismantle these barriers to public access, rather than enshrining
in Federal law a purported right to condition public access upon
paympt of whatever fees the State considers reasonable. Thaes an
open invitation that we fear far too many States would be all too
eager to take up and impose abusive conditions upon access to pub-
lic information.
Thank you, Mr. Chairman.
[The prepared statement of Mr. Metalitz followsJ
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HLC 00012212
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PREPARED STAIMNT OF STEVEN J. METALM, VICE PRESIDENT An

GENERAL CouNsEL, INFORMAUON INDUSTRY ASSOCIAnON

Mr. Chairman, and members of the Subcommittee:

The Information Industry Association (IIA) appreciates the opportunity to provide

its perspectives on H.R. 4426, a bill to exclude copyright protection for certain legal
compilations.

IIA is a trade association representing some 600 leading companies thal pursue
business opportunities associated with the creation, distribution and use of information.
Our members develop and distribute innovative information products and services in
order to meet the information needs of AmeHcan business, professions, and the public.
Most of the leading national publishers and distributors of legal matehals such as case
reports and statutory compilations, whether in hard copy or electronic format, are IIA
member companies.

Copydght and government information policy have been IIA's paramount public
policy concerns since its founding in 1968. We have consistently defended the right
of pubfic access to public information gathered or created by government at all levels.
However, we have just as consistently advocated a leading role for the private sector
information industry in meeting the public's needs for public information.
A
fundamental prerequisite for achieving that goal is the availability of strong, clear
copyright protection for the authorship involved in selecting, coordinating, or arranging
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public domain materials. Copyright is the key method for encouraging the considerable
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investment of time, resources and skill required to bring information to the public on
a timely basis, with maximum accuracy, and in media and formats that meet a diverse
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range of consumer needs.

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Current law seeks to promote two crucial goals: facilitating public access to
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public information, and giving incentives for the creation and distribution of valuable

HLC 00012213
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information products and services. While some may perceive an inherent tension
between these goals, in fact they are mutually reinforcing.

H.R. 4426 would weaken both these cdtical aspects of current law. Its
enactment would reduce incentives by weakening copyright protection for a valuable
element of many compilations of public domain materials, and would also give
unwarranted federal recognition to the efforts of some states to restrict full public
access to these materials. For these reasons, IIA urges Congress not to enact H.R.
4426.

1. CURRENT LAW SEEKS TO GUARANTEE PUBLIC ACCESS TO PUBLIC

INFORMATION, WHILE USING COPYRIGHT TO ENCOURAGE PRIVATE
DEVELOPMENT OF INFORMATION PRODUCTS AND SERVICES

Under current law, two propositions are fundamental to the analysis of copyright
concems in legal compilations. First, the subject matter of these compilations -- the
texts of statutes and regulations, the opinions and decisions of courts and other
tribunals -- are indisputably in the public domain. No copydght can subsist in these
matedals, whether as a mafter of statute on the federal level', or on constitutional
grounds on the state level, as articulated in a series of unchallenged decisions relying
upon constitutional considerations of due process. 2 Second, copydght does subsist in
privately authored compilations of matedals that are not in themselves protected by
copydght. The copyright protection extends to the original authorship contdbuted by
the compiler, aJthough the compiled matedal remains in the public domain.3
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'Section 105 of the Copydght Act, 17 U.S.C. 105, bars copydght in "any work of
the United States Govemment." Indisputably, this comprehends decisions of federal
courts and tdbunals, Acts of Congress, and regulations issued by federal agencies or
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departments.
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'See Davidson v. Wheelock, 27 F. 61,62 (C.C.D. Minn. 1866); Howell v. Miller, 91

F. 129, 137 (C.C.A. Mich. 1898); Building Officials & Code Administmtors v. Code
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Technology, Inc., 628 F.2d 730, 734-35 (lst Cir. 1980).

3 See 17 U.S.C. 103(b).
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HLC 00012214
 215

As the U.S. Supreme Court recently explained in its first decision interpreting the
compilation copyright provisions of the Copyright Act o f' 1976, determining wtiether a
given compilation displays protectible authorship requires a "focus ... on whether the
selection, coordination or arrangement [of the material) are sufficiently original to merit
protection." Feist Publications, Inc., v. Rural Telephone Service Co., Inc., 111 S.Ct.
1282, 1294 (1991). Although the Feist decision involved a white pages telephone
directory , the pdnciples involved are cleady applicable to all compilations of otherwise
unprotected materials, including compilations of court decisions and statutory texts. Just
as the names and addresses in the white pages are not themselves protectible by
copydght, neither are the judicial and legislative work products contained in
compilations of legal materials. But in both cases, an original selection, cool-dination
or arrangement of the material will receive copyright protection.

As a result of these two well-established doctdnes -- the public domain status

of statutes, court decisions, and the like, and the availability of copyright protection for
original compilations of these matedals -- Americans enjoy access to legal materials
unparalleled in the world. The ban on copyright in the materials themselves hzis made
it difficult for governments to suppress, distort, or withhold access to the law under
which citizens must live. Because these materials are readily available from
government without restrictions on their use, a wide range of private sector entities
have been able to assemble and edit these materials, and distribute them in a variety
of formats to meet a wide range of information needs. To enhance their usefulness,
publishers have added considerable value to their compilations of legal materials, from
basic organization and arrangement of materials drawn from disparate sources, to
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sophisticated annotations, indexing, and cross-referencing systems. The availability of

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copydght protection for this value-adding activity has given publishers the incentive to
invest heavily in developing the most useful, user-friendly, and understandable
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selections and arrangements of materials, as well as in maintaining

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comprehensiveness, accuracy and timeliness in order to meet vigorous competition.

The range and quality of information products and services available to American
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consumers and researchers in this field, as in many others, is far superior to the
situation in many other couniries, where government assertions of copyright, inadequate
3

HLC 00012215
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protection of pdvate sector compilations, or both, lead to diminished availability of legal

materials for the citizenry.

Il. THE WEST V. MEAD DECISION

The stated aim of proponents of H.R. 4426 is to persuade Congress to overturn

a single federal appellate decision, predating the Egig case: West Publishing Co. v.
Mead Data Central, Inc., 799 F.2d 1219 (8th Cir. 1986), cert. den., 479 U.S. 1070
(1987). In the West v. Mead case, a divided panel of the U.S. Court of Appeals for
the Eighth Circuit upheld the grant, under the Copyright Act, of a preliminary injunction
against the defendant's use of the pagination reflected in the plaintiff's compilation of
state and federal court opinions. The panel majorily concluded that:

West has shown that it will probably succeed on the merits of its claim
at tdal: West's case arrangements are entfled to copyright protection and
MDC's intended use of West page numbers would infringe West's
copydght in fts arrangements!

Given the intense competition in legal publishing, it is not surprising that this
decision engendered considerable discussion, and that it remains controversial in some
circles. But controversy is not a sufficient reason for Congress to reach out to
overturn a particular court decision. Congress must keep its focus on whether the
current state of the law advances the intended goal: providing incentives for the
development and distribution of works bf authorship, while maintaining the public
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domain status of reports of court decisions, and other public information.

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West v. Mead involved a dispute between two IIA member companies. IIA had
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no involvement in the case, and takes no position on whether the decision on West's
preliminary injunction reached the proper resuft. Nevertheless, we believe that
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important considerations militate against the proposal that Congress overturn the 8th
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4 799 F.2d at 1229.

HLC 00012216
 217

Circuit's decision by statute at this time. We also believe that H.R. 4426 goes well
beyond a simple overruling of West v. Mead, and that its additional provisions would
not be constructive additions to the U.S. Code.

111. ON LEGAL GROUNDS, CONGRESS SHOULD AWAIT FURTHER JUDICIAL

DECISIONS BEFORE ACTING IN RESPONSE TO WEST V. MEAD

The argument of proponents of H.R. 4426 -- that Congress must overturn the
West v. Mead decision -- rests on two unarticulated assumptions that require closer
examination. The first assumption concerns the status of the West v. Mead decision
itself. The second assumption concerns the impact of the legislation on the Supreme
Court's decision in Feist.

The decision by the Court of Appeals in West v. Mead came upon review of
the Distdct Court's finding that West would probably succeed on the merits of its
copydght claim at Idal. The probability of success on the merits is, of course, one of
the traditional factors a court examines in ruling on a request for a preliminary
injunction. The majority opinion of the Court of Appeals was careful to note that "'our
observations as to the governing law made in this provision are tentative and
provisional, in the sense that different findings or conclusions might be warranted after
a trial on the merits.'"' Although a trial on the merits did follow the exhaustion of
appeals on the preliminary injunction, no verdict was reached because the parties
settled their dispute. Thus, this decision is only provisionally the law even within the
Eighth Circuit. In any event; it is not binding upon the courts of appeals in any other
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circuit, although of course it should be given proper consideration to the extent that it
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is applicable to a case adsing in one of those other circuits.'

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'799 F.2d at 1229, quoting Indep. Fed. of Flight Attendants v. Trans World
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Aidines, 655 F.2d 155, 159 (8th Cir. 1981).

'It does not appear that any other circuit has either adopted or rejected West v.
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Mead. Duhng this subcommittee's consideration of legislation on the fair use of

unpublished works, it was sometimes argued that Congress needed to react to certain
decisions of the Second Circuit Court of Appeals because of the paramount status of
5

HLC 00012217
 218

Parties aggrieved by ihe result in a single Court of Appeals decision are free
to apply to Congress for the case to be overruled by statute. Occasionally Congress
agrees to do so. Far more frequently, however, Congress decides to stay its hand.
Surely this course of action has much to commend it. ft gives the courts a chance
to decide how a challenged decision applies to the particular facts of another case,
and whether the precedent should be followed, modified, or rejected. Of course, there
is also the possibility of Supreme Court review of one of these cases, or of another
case that is closely enough related to have obvious implications for the challenged
decision. Through this process of case-by-cass development of the law, opponents
of the decision have the opportunity to stress their view of ds shortcomings, either as
a whole or as applied to particular facts, and to seek to persuade the courts to their
point of view.

Certainly it remains open after West v. Mead for one publisher to seek to test
through litigation the limits of another's copydght claim in the arrangement of case
reports! So far, publishers have not chosen to invoke this process, or at least to see

that court in copyright jurisprudence. To the extent that the subcommittee found that
argument persuasive in acting upon H.R. 4412, it is inapplicable here: the Second
Circuit has never even cited the Eighth Circuit deCision in West v. Mead in any of its
reported decisions.
'H.R. 4426 would amend the Copydght Act to create a new secbon 105(a)(3)
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aimed at the specific holding of West v. Mead. But in addRion, proposed section
105(a)(2) would divest of copyfight protection "any name, number or citation by which
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the text of State and Federal laws or regulations are, or ever have been identified."
It is far from evident that the same kind of claim of authorship is involved in this
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situation as in the case of volume divisions or pagination of case reports or statutes.

For instance, the arrangement decisions involved in assigning an enacted statute its
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proper place in an overall organizational arrangement of statutes is more analogous

to a subject-matter arrangement of case reports than to the arrangement of cases
within volumes and across pages. In this regard, H.R. 4426 goes well beyond the
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scope of legislation overturning the West v. Mead decision.

HLC 00012218
 219

it through to a definitive resolution. ' These facts counsel against premature legislative
action in response to a single decision that some find controversial.

These considerations, always relevant when parties ask Congress to legislate

in response to a single appellate decision, are particularly compelling here because of
the intervening Supreme Courl decision in Feist. That unanimous decision, rendered
on March 27, 1991, marked the Court's first discussion of the existence and scope of
copyright protection for compilations under the 1976 Copyright Act. As such, it is an
unavoidable and dominant feature of the legal terrain that an,y case testing the viability
of West Y. Mead would have to traverse.

The proponents of H.R. 4426 seem to assume that West v. Mead is a case of
general applicability, which bestows copyright protection on the volume aild page
arrangements of all compilations of public domain legal materials. Of course, that was
never the case. The West v. Mead decision involved the protectibility of a series of
particular compilations in published case reports. In finding that these particular "case
arrangements are entitled to copyhght protection," the Eighth Circuit made rio ruling
on the protectibility of other compilations of the same kind of material.

If there were any doubt about the scope of West v. Mead, the Feist decision
should have dispelled it. Indeed, a phncipal message of the Feist decisiori is that
neither the Copyhght Act, nor perhaps the Constitution, supports per se rules on the
copyrigfitability of particular kinds of compilations based on their subject malter. As
Justice O'Connor's opinion for a unanimous Court explained:
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"While one appellate court has found that there was no "actual controversy"
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sufficient for invocation of the Declaratory Judgment Act in a case challenging a claim
of copydght in an arrangement of state statutes, Texas v. West Publishing Co., 882
F.2d 171 (5th Cir. 1989), that case clearly would not be dispositive of a case brought
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by a commercial competitor under conditions of "reasonable apprehension of litigation."

882 F.2d at 175.

HLC 00012219
 220

... Mhe statutory definition ... instructs courts that, in determining whether a fact-
based work is an oeiginal work of authorship, they should focus on the manner
in which the collected facts have been selected, coordinated, or arranged... The
statute dictates that the pdncipal focus should be on whether the selection,
coordination, or arrangement are sufficiently original to medt protection.'

This instruction to courts to base their copyright decisions on the examination

of how facts are selected, coordinated or arranged in a specific compilation is clearly
applicable to other compilations of otherwise unprotected matedal, such as court
decisions, statutes, and the like. It is anthhotical to the approach taken by H.R. 4426,
which would create a rule that the selection, coordination or arrangement of these
materials within volumes and across pages, no matter how original to the author, is
never protectible by copydght. Thus, in the name of overturning a single decision of
a federal court of appeals, proponents of H.R. 4426 are asking Congress to reject the
approach announced by a unanimous Supreme Court less than 14 months ago.

The Feist dedision instructed the lower federal courts on how to decide whether
the selection, coordination or arrangement found in a particular compilation is
.sufficiently odginal to medt protedon." The Court noted that "the originality
requirement is not particularly stdngent"; that "novehy is not required"; that the claimed
authorship simply must not have been copied and must *display some minimal level
of creativity." In language fully applicable to the kinds of compilaflons addressed by
H.R. 4426, the Court said, *Presumably, the vast majority of compilations will pass this
test, but not all will."lo
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The lower courts are now engaged in the task of applying these general
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concepts to specific compilations of all kinds and descriptions. Their efforts would be
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hindered, not aided, if Congress were to enact legislation discarding these slandards
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9111 S.Ct. at 1294.

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'old.

HLC 00012220
 221

in the case of one particular category of compilations, and denying copyright protection
regardless of the presence of originality, which the Feist court called "the sine qua non
of copyright.""

For these reasons of legal doctrine, Congress would be well advised to stay its
hand and allow the opportunity for judicial consideration of the viability of the decision
in the new, post-Feist legal environment. This would give the courts the chaiice, in
the context of actual cases; to determine whether the selection, coordination or
arrangement of court decisions, statutes, and other matehals of any publisher satisfied
the originality standard set forth in Feist, and, if so, whether a competitor's actual or
proposed use infringed that compilation authorship. Allowing time for the development
and elaboration of the law through jLjdicial decisions would enable Congress to
legislate, if it chose to do so, far more wisely than it could possibly do today."

IV. POLICY CONSIDERATIONS ALSO COUNSEL AGAINST ENACTMENT OF

LEGISLATION IN REACTION TO WEST V. MEAD

The subcommittee is considedng H.R. 4426 at a time of unprecedented flijx and

uncertainty in the legal environment for the creators and publishers of databases of
public domain material, such as the legal compilations addressed by this legislation.
A sharp shift in the law, placing in the public domain considerable materials which may
be protected by copyright today, would create enormous instability and upheaval in the
marketplace. Inevitably, incentives to invest in the development and distribu?ion of
such matedals, in whatever format, would be reduced, whether by the prospect of the
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"Id., Eit 1287.

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12 Another legal issue which Congress would have to consider if it enacted H.R.
4426 is whether the elimination of copyright protection for certain aspects of the
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compilation of legal matehals amounted to a taking of the property of the authors of

such compilations, and, if so, what compensation would be due. See U.S. CONST.,
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Amdt. V. Given the considerable investment over many decades in such

arrangements, the fiscal impact of H.R. 4426, which is specifically intended to apply
retroactively, could be significant.
9

65-153 0 - 93 - 8

HLC 00012221
 222

withdrawal of copyright protection, or simply by the risk associated with the pendency
of legislative change. The ultimate losers in such a circumstance woufd be the
American public, the consumers of these diverse and valuable source of information,
who would find fewer choices and less innovative options available in their search for
current, complete and accurate information.

The main source of the current uncertainty is, of course, the Feist decision.
This landmark ruling marked the Court's first definitive statement on compilation
copyhght, but it raised as many questions as it answered, not only because of what
the Court decided, but also because of how it decided it. Feist firmly rejected the
"sweat of the brow" or "industHous collection' docthne that accorded protection directly
to the effort and investment that undedie all commercially significant databases, thus
immediately wiping out important precedents in those judicial circuits that continued to
embrace that doctrine. Furihermore, although the compilation at issue in Feist -- a
white pages directory - was found completely unprotected by copyright, the Feist
decision includes a lengthy disquisition on the scope of protection for those
compilations which do satisfy the originality standard. Finally, although the decision
rested upon the application of the Copyhght Act of 1976, the decision includes a
considerable constitutional dimension, including fts extraordinary pronouncement that
its statements on the scope of protection under the statute expressed "a constitutional
requirement.""

Not surprisingly, applying this sweeping decision in cases adsing in the lower
courts is not an easy task. In cases decided by the courts of appeals since Feist, the
courts have cited the decision in weighing copydght claims in works ranging from
H

yellow pages directodeS14 and summaries of state telecommunications regulations'5 to

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er
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"ll 11 S.Ct. at 1290.

"See BellSouth Adv. & Pub. Corp. v. Donnelley Info. Pub., Inc., 933 F.2d 952
w

(11 lth Cir. 1991), and Key Publications v. Chinatown Today Put. Enterp., 20 U.S.P.Q.
2d 1122 (2nd Cir. 1991).
10

HLC 00012222
 223

baseball pitching forms" and televisiori newscastS17. The courts have beerl called
upon to parse not only the court's holding on the existence of protection, but also
statements that are arguably dicta on the scope of protection. While some trends are
beginning to emerge, the dust is far from settling on the Feist decision and its impact
on compilations oi all kinds, including databases containing legal materials.

Nor is Feist the only public PolicY development contributing to uncertainty in the
database industry. On January 29, 1992, the Commission of the European
Communities unveiled a proposed directive on the legal protection of databases. This
proposal, neady four years in the making, aims to create uniform standards for
intellectual property rules, including compilation copyright provisions, applicable to
databases throughout the 12 member states of the EC. The directive iricludes
copyright provisions somewhat similar to U.S. law, but also establishes a new, non-
copyhght form of protection that restricts the use of factual material found in
databases, even those that do not meet the directive's standards for copyright
protection on the grounds of insufficient originality.

While the announcement of this proposal would, in any case, have been a
significant event for the growing number of database producers seeking to penetrate
European markets, one of its provisions has attracted considerable debate from all
quarters: the proposal to make the non-copydght database protection available only to
compilations originating in Europe, or in countries that offer equivalent protection. This
thinly veiled challenge to the United States to enact legislation changing the contours
of protection for databases under U.S. law has further roiled the waters zilready
H

troubled by the fallout of the Feist case.

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"See U.S. Payphone Inc. v. Executives Unltd. of Durham, Inc., 931 F.2d 888,
La

1991 U.S. App. LEXIS 7599 (4th Cir. 1991).

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"See Kregos v. Associated Press, 937 F-2cl 700 (2d Cir. 1991).
"See Cable News Network Inc. v. Video Monitoring Svcs. of America, inc., 940
F.2d 1471 (1 lth Cir. 1991).
11

HLC 00012223
 224

Progress toward enactment of H.R. 4426 would create further uncertainty

throughout the industry. This reaction would by no means be limited to the publishers
of legal compilations directly implicated by the legislation. While statutory, regulatory
and case report materials have some unique characteristics, they also share many
characteristics with other types of material that are not themselves protected by
copydght, but that are included in compilations which also currently enjoy protection.
While legal materials are essential to self-government and responsible citizenship, other
types of information can equally well claim to be essential to other aspects of personal
and social well-being in modern society. Just last week, for instance, the director of
the National Library of Medicine sought to convince this subcommittee that the impact
upon public health of data contained in some of NLM's databases justified practices
that might well be deemed a violation of section 105 of the Copydght Act. There is
very little confidence within the industry that legislation aimed at removing copyright
protection from editodal activities related to legal materials could successfully be limited
to that specific topic. Even if it could, the precedential value of such legislation would
certainly be cited whenever a proposal was made to stdp copydght protection from
some aspect of another valuable compilation of interest to members of the public.

All these developments -- the Feist decision and its judicial progeny, the
proposed EC directive, and the pending legislation -- represent both threats and
opportunities to members of the information industry. Database providers are, of
course, vigilant to guard against threats to their intellectual property rights, which to a
great extent rely on long-standing compilation copyright pdnciples. On the other hand,
many database developers are consumers as well as generators of information, and
H

cutbacks in copyright protection -- as with, for example, the elimination of copyright

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protection for white pages directories -- represent potential market opportunities for
some companies. On balance, however, the longer and more pervasive the
er

uncertainty about copydght protection, the greater the net dampening effect on new
La

investment in innovative information products and services.

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Another consequence of uncertainty about copyright is an increased interest in

alternative means of protection. In the wake of Fe-ist, for instance, many database

12

HLC 00012224
 225

proprietors have revised their licensing agreements to incorporate into them contract
restrictions on use which may previously have been handled as a matter of copyright.
This new stress on contract could undermine the growing trend toward ubiquitous.
spontaneous information access through telecommunications networks without the need
for whtteii contracts. An acceleration of this trend because of heightened uncertainty
about the contours of copyright protection would hardly serve the best interests of
information users.

V. H.R. 4426 IS NOT A CONSTRUCTIVE RESPONSE TO TRENDS THAT ARE

REDUCING ACCESS TO GOVERNMENT INFORMATION

In two significant ways, enactment of H.R. 4426 would destabilize the current
policy baiance in which the public dorriain status of statutory and decisional materials
is reinforced by the availability of copyright protection for original compilations of these
materials, By elliminating copyright protection for a valuable feature of such
compilations, the bill would cripple the key legal mechanism for encouraging
dissemination of such information to ttie public. At the same time, proposed section
105(b) would recognize and enshrine in federal law a purported right of state
governments to restrict access to these critical materials to those who can pay
.reasonable fees for services incidental to making [them] public." Such a provision
would send precisely the wrong signal to state governments around the country, which
are increasingly exploiting the potential of using public information as a source of
government revenue.
H
yp

IIA is alarmed to observe a growing trend toward government-imposed

restdctions on access to a wide variety of information held by state governments,
er

including statutory, regulatory and decisional materials. This trend has been
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manifested in several forms, including more aggressive assertions of copyright over

government information, vastly increased fees for obtaining access to state government
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databases, and the imposition of restrictions on subsequent uses of those databases.

As a result, a wide variety of public information held by state governments is now
13

HLC 00012225
 226

available to citizens only at higher pdces, or in less useful formats, than it should be."
Enactment of proposed section 105(b) could not help but encourage this trend.

Several states have employed the seemingly innocuous rubric of "reasonable

and incidental fees" to carry out the most extreme assertions of state control over
public information. A leading example is Colorado, which asserts copydght over its
own statutes and forbids any "publication, reprinting, or distribution of all or any part
of the statutes of the state of Colorado" without the approval of a state agency." A
central element of Colorado's effort to oontrol fts citizens' access to the laws that
govern them is the requirement that pdvate publishers pay a fee to the state for the
privilege of providing such access. This fee covers not only the actual costs of
making the matedal available to publishers, but the amount *necessary to pay. for state
property interests in the statutes, to pay for the use of any material copyrighted by the
state, and to pay for expenses incurred ... to ensure the accuracy of the statutes."'O

While the Colorado law, which is cleady constitutionally questionable on a

number of grounds, represents an extreme example, many other states have sought
to impose fees far exceeding actual costs as a condition of access to public records

'BUnfortunately, similar trends are evident on the federal level. The pending
proposal (H.R. 2056) to require the Federal Maritime Commission to charge royalties
for access to, and subsequent uses of, automated tahff information, is a leading
example. So is the Senate-passed provision of H.R. 2507, the National Institutes of
Health Reauthorization Act, which approves licensing resthctions on databases of the
National Library of Medicine.
H

"Section 2-5-118(l)(c), Colorado Revised Statutes. Subsection 5(a) of this law

provides that "any person, agency or political subdivision who publishes, reprints or
yp

distributes all of any part of the statutes of this state without obtaining the permission
of the [state agency] as required by this section shall forfeit to the state the sum of
five hundred dollars for each and every book, volume, computer representation or
er

pamphlet so published, printed or distributed...".

La

2OSection
2-5-118(2)(c)(1). A publisher must also convince the state agency that
its publication will "accurately reproduce" the statutes. Section 2-5-118(2)(b). Even
w

so, it appears that the state is authorized to withhold permission (and thus outlaw the
publication) unless it finds that the publication "will not be detrimental to the interests
of the citizens of the state." Section 2-5-1 18(3)(a).
14

HLC 00012226
 227

filedwith courts and administrative agencies, as well as to legislative tracking

information. In some cases, these exorbitant fees have been accompaiiied by
limitations on who may gain access, and for what purposes, and even by state
government assertions of copyright over the databases in question."

Rather than fan the flames of this growing brushfire of reduced public access
to public information, Congress should be considehng ways to curb the manifestations
of this trend, including abusive state government assertions ot copyright over public
domain legal materials. In response to this trend, IIA has developed a series of
public information access principles, and has urged state policymakers to adopi them.
These include:

... encouraging the development of a diversity of sources of access lo public

information;

-making information available to all parties on an equal and timely basis, while
avoiding exclusive arrangements for dissemination of the information;

... eschewing government claims of copydght in public information, as well as

other restrictions on how citizens use and disseminate such information; and,

-making government information available at a price not exceeding the

marginal cost of dissemination.
H

Congress could do much to encou ' rage state governments to adhere to these
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principles and similar guidelines that would enhance and strengthen public access to
public information. This would be a far more constructive response to the real problem
er

of reduced public access than H.R. 4426's superficial acceptance of a purported right
La

2'Building on the precedent of statutory matedal, the Colorado legislature is now

w

considedng a bill to authodze the state or its subdivisions to "obtain and enforce ...
copydght protection for any public record." House Bill 92-1195, sec. 3 (58th Gen.
Assembly, 2d Reg. Sess., 1992) (emphasis added).
15

HLC 00012227
 228

for states to treat public information including information essential to self-

government and responsible citizenship as a revenue source. Even in its current
form, which purports to neither *expand [n]or reduce" state fees for access to "laws,
regulations, or judicial opinions," proposed section 105(b) could be read to place a
federal impdmatur on a state's decision to charge whatever fees it considers
.reasonable." Its enactment would send the wrong message to state policymakers and
invite further abuses that reduce the public's dght to know.

Mr. Chairman, thank you for the opportunity to share the perspectives of the
Information Industry Association on H.R. 4426. We look forward to working
with the
Members and staff of the subcommiftee as it considers the important issues raised by
this proposal.

H
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16

HLC 00012228
 229
Mr. FRANK. Let me begin on that last one. I guess English
doesn't always mean wbat it says, at least not to these witnesses.
It's seems to me to say nothing. I don't understand how people get
a negative out of it, but I don't think there's any problein with
dropping it out altogether; how saying that you don't expand or re-
duce a right creates one, I will not understand, but I think that's
just a side issue of no particular importance.
Let me ask particularly Mr. Metalitz-1 guess I get a little con-
cemed when the thrust of your argument seemed to be more soit
of procedural than substantive in a sense, that we should just leave
it to the courts. Let me ask, Do you think, as a matter of'public
policy, if there is no selection, sbould page numbers be copyright-
able?
Mr. METALITZ. As a matter of'copyright law under Feist
Mr. FRAN-K. No, no, no. See, we're Congress; we make laws-
under this, over tbat-what's public policy to be? Again, I ktiow it's
hard sometimes for lawyers to think like people, but what people
do is sometimes they say here's this issue and here's the way we'd
like it to come out. Yes, if you're in court, you are compelled to op-
erate within the framework of judicial decisions and statutes, et
cetera. But, to the extent that we are dealing here with statutory
interpretation and not the constitutional issue, we have some obli-
gation to say wbat we tbink public policy should be. But to guess
what a court would do seems to me to be not our primary function.
Our primary function is to decide wbat we think the law ought to
be.
That's wbat I'm trying to understand. Should there be copyright
protection-now understand if there is selection, then I think selec-
tion is clearly an editorial function, and I tbink wben you are talk-
ing about district court opinions, print some and not others, thaes
a differ6nt story. But where you're talking about a compilation
where th-'ere is no selection, that's the question I have: What should
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be copyrightable in that regard?

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Mr. Mr!,,TALrrz. Well, as a public policy matter, I'm certainly not

persuaded that the status quo, which recognizes protection for ar-
er

rangement, including arrangement tbat's expressed through page

numbers, bas diminisbed public access to the law. That's what I
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think the public policy issue is: Do the people have access to the
law?
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Mr. FRANK. So you're in favor of copyrighting those tbings? I

mean, ou 3re not persuaded that-
Mr. OALITZ. Unless it's a public policy matter.
Mr. FRANK. Yes, and you said you weren't persuaded-I'm say-
ing: What do you think the policy ought to be? Do you tbink that
'

we should copyright, as a matter of law, pagination of compilations

where there isn't any selection involved?
Mr. METALrrz. I think if it reflects an original arrangeinent of
the material, yes, it should be protected by copyright.
Mr. FRANK. What would you mean by "original arrangement?" I
mean, if we're not talking Eibout selection-literally, these are the
kinds of issues that we're talking about, deciding where you cut off
the page or how you do it, double column or single column. I mean,
literally,, these are tbe-I understand if you're printing some opin-
ions and'not otbers, I think tbat's a different story. But where

HLC 00012229
 230
you're printing every opinion, what would be copyrightable in that
reprd?
bir. METAUTZ. Then you would have to look to whether the ar-
rangement shows sufficient originality.
Mr. FRANK. All right.
Mr. METALITZ. The testis, was it copied from somebody else and
did it have a modicum of creativity, or was it purely mechanical,
purely routine?
Mr. FRANK. Right. So if it was purely mechanical and not so se-
lective, then you would not-
Mr. METAIATZ. If it's purely mechanical and purely routine, then
it should not be protected.
Mr. FRANK. OK.
Mr. METALrrz. But, of course, this bill would go far beyond that.
This would-
Mr. FRANK. I understand that. But you understand, too, we're
not restricted to passing-we don't vote yes or no. You start with
it; you amend it; you discuss it. So that!s the, as I said, public pol-
icy situation.
Let me ask again, Mr. Pravel and Ms. Gasaway, because you
would have more understanding of this-I'm left unclear here as to
how many jurisdictions do, in fact, certify that this particular form
of citation shall be followed in submissions to this court. Do You
have any sense of that? What would you think about our saying
you can't do that where it's copyrighted, but that any reasonable
form of citation should be.used? Ms. Gasaway.
Ms. GAsAwAy. I like that idea, as another way to address this.
I, like you, gave some thought to what is original in page numbers,
as you begin to look at some of that, and I wanted to tell you that
I did one time in my career know of some original volume number-
ing. Back in the late 1960's, Matthew Bender came out with a se-
ries in which the volumes were numbered by symbols such as dia-
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monds and circles and stars. Those were original. No one knew how
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to shelve them in a library.

Mr. FRANK. Was that for the purpose of copyright or-
Ms. GAsAwAy. I have no idea what the purpose was. And, fortu-
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nately, they learned the errors of their ways and went back to se-
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quential Arabic numbers, but that was one time I saw original vol-
ume numbers. I've never seen original pagination.
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Mr. FP-ANK. It's not relevant to anything, but I guess I was naive.
I guess I should have realized that Arabic meant only as opposed
to Roman, because when I went to Egypt for the first time I was
surprised when I couldn't read the number on the door of my room
because they don't write Arabic numbers the way we write Arabic
numbers. Hey, they're Arabs; they're entitled. We're wrong; they're
right. I was disappointed. when I couldn't recognize any of the num-
bers.
[Laughter.]
Mr. FRANK. Mr. Pravel, is that widespread? How widespread is
it? And let me ask you another question, too, because I shouldn't
be too formalistic. I realize that in some cases it may be required,
but custom can have the force of law in our society, particularly
among people in a common tradition. Are you disadvantaged as a
practicing iawyer in many jurisdictions if you don't cite to the pre-

HLC 00012230
 231
vailing reporter in that jurisdictiOn? Do you have any particular
sense on that, Mr. Pravel?
Mr. PRAVEL. Well, if you have a place where you can find a case,
of course, you're not disadvantaged, but there may be a disadvan-
tage with respect to the provision that we are talking about here
in the bill, wbich if you were precluded from citing the name or the
place where you could get that particular statute, then you would
be disadvantaged.
Mr. FRANK. The chairman has returned. Mr. Hughes.
Mr. HUGHES [presiding]. I just have a couple of questions. Mr.
Pravel, both in your oral and your written statements, you note
that while the ABA supports H.R. 4426 in its denial of copyright
to statutory names, numbers, and citations, the ABA abstains from
the bill's denial from copyright for the volume or page numbers for
regalations and opinions. I wonder if you can share with us the
legal distinction between these two categories of materials?
Mr. PRAVEL. The legal distinction between the two paravaphs
that we're talking about here in the bill? Is that the question.
Mr. HUGHES. Yes.
Mr. PPLAXEL. Well, obviously, the first paragrapb, No. 2, relates
to the statutory names-
Mr. HUGHEs. No, no, I'm talking about the two categories of ma-
terials. In other words, in your oral and written statement you note
that the ABA does support H.R. 4426's denial of copyright to statu-
tory names, numbers, and citations, but abstains from the bill's de-
nial of copyrigbt for the volume or page numbers for regulations
and opinions.
Mr. PRAVEL. Well, the basis for the abstaining is because our
ABA section bas not studied that or taken a position that we can
assert here. The first part of it, wbich we support, is based upon
the fact that names and numbers of statutory text sbould be per-
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missible use and not subject to copyrigbt. That shouldii't be pre-

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cluded by copynght- Copyright protection would appear to be a lim-

itation that shouldn't be present in dealing with a statutory mat-
er

ter.
Mr. HUGHES. OK So you basically just did not focus in on that
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issue, and that's whv you abstained? There's not any basis-
Mr. PRAVEL. Thaes correct.
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Mr. HUGHES. There's no legal basis for abstention?

Mr. PRAVEL. That's correct.
Mr. HUGHES. Professor Gasaway-
Ms. GASAWAY. Yes?
Mr. FIUGHES [continuing]. You acknowledge on page 8 of your
that the private codes systems clearly are intellectual ac-
complishments whicb, and I quote, "ordinarily would be copyright-
able." You go on, however, to give a number of reasons why copy-
rights should, nevertheless, not be available. Aren't you coneemed
that if copyrigbt protection is not available, no private pliblisher
will undertake the expensive and time-consuming process that is
required to create a compilation of statutes?
Ms. GAsAwAy. There is some concern about that, but, of course,
there are some States in which there is an ofricial statutory com-
pilation, and so the State has undertaken that. The more serious
issue, I think, for the AALL, of course, is the States where there

HLC 00012231
 232
is only one, and so there is a stamp that is piven or an emphasis
to this private publisher that creates a disadvantage for the mar-
ket. We think that the broad market is beneficial to members of
the public as they try to use legal information.
Mr. HUGHES. As you also point out in the pastprivate publish-
ers stepped into the breach causedb; States' failure to develop
their own codes systems.
Ms. GAsAwAy. Yes.
Mr. HUGHES. Havin provided a valuable public service by doing
what a State should tave done themselves but didn't, doesn't it
seem unfair to come along and now say, in effect, "Thanks. Your
work.is greatys.o good in fact that we're going to expropriate it?"
Ms I don't think that anyone is recommendin that
e
the entire work be expropriated, because there is work in t edi-
torial comments, some of the bistorical notes, et cetera, that would
be copyrightable. The text of the statute itself, and indeed once the
State has adopted that official arrangement, then that reall be-
comes State action in effect. That's all that the AALL bXieves
should not be subject to copyright, not any of the traditional ele-
ments that compilations protect.
Mr. HUGHES. Mr. Metalitz, on page 4 of your statement, you indi-
cate IIA does not take a position on whether the West-Mead deci-
sion was correctly decided.
Mr. METALITZ. That's correct.
Mr. HUGHES. Yet, on page 13, you state that H.R. 4426 would
eliminate copyright for a valuable feature of legal compilations.
Aren't ou, in fact, takin a definite position that West v. Mead was
correctiy, decided, by dec aring that protection is being eliminated?
By the way, the IIA submitted an amicus brief in the Feist case,
didn't it?
Mr. METALITZ. We did not in the West v. Mead case. We did in
the Feist case-
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Mr. HUGHEs. Do you recall favorably citing West v. Mead on page

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17 of yoiir Feist?
Mr. METALITZ. We did comment on the fact that the petitioners
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in that case had described West v. Mead as a decision, a decision

under the sweat-of-the-brow doctrine, and then we disagreed, say-
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in that from reading the case it appears to be an application-

fAr. HUGHEs. But you cited it favorably, did you not, in that
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case?
Mr. METALITZ. We cited it as an example of the selection, coordi-
nation, or arrangement approach to compilation copyright. We dis-
agreed with the characterization that had made of it by some of its
opponents. So I guess if the opponent of your opponent is your
friend, maybe we did cite it favorably in that sense.
Mr. HUGHES. I see. I wonder if you can explain to me how H.R.
4426 removes compilation protection that West v. Mead protected?
Please describe precisely what West v. Mead, in fact, properly pro-
tected?
Mr. METALrrz. Well, Mr. Chairman, if I can go back to your ear-
lier questions, maybe this would help to answer it. H.R. 4426 goes
far beyond overruling West v. Mead. It does overrule West v. Mead,
but it doe.s more. it says that no matter how original your selection,
coordination, or a"angement of these legal materials, that you ex-

HLC 00012232
 233
press in volume numbers and in pagination, no matter whether
that's clearly original under Feist, we're still going to deny protee-
tion to Ciat.
Now in the West v. Mead case, the court had to look at a particu-
lar compilation which was selected, coordinated, or arranged in a
particular way, and these factual questions that we've heard about
this morning-did West simply publish everything that eame in
through the door? Did it simply go in chronological order? How did
it organize this material?-those became extremely relevant and,
indeed, the basis for that decision.
We're not taking a position on whether the court was correct in
finding that there was enough originality in how West arranged
t'he cases in their national reporter system, but we do object to the
assumption in the bill that, no matter how original your arrange-
ment of cases, it should not enjoy copyright protection.
Mr. HUGHES. OK Well, given the Feist decision, what do you
think a court hearing a case raising the identical issues in West v.
Mead would decide today?
Mr. METALITZ. Mr. Chairman, I, frankly, don't know how they
would decide it. The Register of Copyrights said earlier that clearly
they would decide it differently. Professor Joyce in his article said
that the only justification for the West v. Mead decision is the
sweat-of-tbe-brow doctrine, and since the Supreme Court has elimi-
nated in Feist, that would mean the death knell of West v.
Mead. He may be rigbt. I don't know, but I tbink the court sbould
have an opportunity to apply the Feist test to particular compila-
tions that come before it.
Mr. HUGHES. Let me try to approacb it anotber way, since you
can't say whether a court would reach a contrary result, aiid I un-
derstand tbat. Will your members invest in an on-line computer or
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a CD-ROM service that offers star pagination to West reporters

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witbout getting West's permission and paying whatever licensing

fees that they demand?
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Mr. METALITZ. That's a business decision that our companies

would have to make. There's obviously an element of legal risk
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there. There is the West v. Mead decision which is still on the

books. On the otber band, while it's been very controversial in aca-
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demic circles, no court of appeals bas adopted it other than the

eighth circuit. So that would be a decision that they would have to
make, based on all the factors.
Mr. HIJGHES. The gentleman from Minnesota.
Mr. RAmSTAD. Thank you, Mr. Chainnan.
Mr. Pravel, if I may ask you-I hope I'm pronouncing your name
correctly-a question: The resolution upon wbich you base your tes-
tiniony,,that's merely a resolution of the Section on Patents, Copy-
right, aild Trademark Law? That is not the entire ABA?
Mr. PRAVEL. It is not the entire ABA; that's correct, although the
American Bar Association does provide this vebicle for the section,
wbich in this case is made up of about 10,000 members.
Mr. RAmSTAD. But wben you talk about ABA!s support, you're re-
ferring to this section endorsing this resolution; is that correct?
Mr. PRAVEL. That's correct.

HLC 00012233
 234
Mr. RAmSTAD. And this 1991 resolution, again, upon which you
base your testimony, do you recall who chaired that subcommittee
that brought that resolution forward?
Mr. PRAVEL. James W. Dabney.
Mr. RAmSTAD. And isn't it true that Mr. Dabney was also the
main speaker, the main proponent of this resolution at the conven-
tion of the section?
Mr. PRAVEL. Well, he certainly was the presenter of it, as the
chair of that subcommittee, yes.
Mr. RAmSTAD. Is this, to your knowledge, Mr. Chairman and Mr.
Pravel, is this the same Mr. James W. Dabney who is the attorne
representing Thomson on this bill, as well as the same James 7
Dabney who served as counsel for Mead in the West v. Mead case?
Mr. PRAVEL. I'm not sure whetber be represented Mead in the
West case, but he is, as I understand-at tne time resolution was
drafted by the committee from the American Bar Association's Pat-
ent, Trademark and Copyright Section, be was not involved in that
drafting.
Mr. RAMSTAD. But you're aware of Mr. Dabney's involvement
representing Thomson?
Mr. PRAVEL. I understand he does represent Tbomson, but he
wasn't at the time this was drafted.
Mr. RAmsTAD. Well, Mr. Chairman, for the record, I'll submit
documentation confirming his representation on both counts. I un-
derstand that it was in 1991, and perhaps you didn't bave direct
knowledge. I certainly can understand tbat.
Mr. HUGHES. Without objection, your submission will be received
in the record.
[Tbe information was not supplied.]
Mr. RAmSTAD. Ut me ask, Mr. Chairman, just a couple ques-
tions, if I may, of Ms. Gasaway. What, in your judgment-and you
H

obviously bave a great deal of expertise in this area-let's say hy-

pothetically competing publishers were allowed to reproduce the
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legal compilations of other publisbers; that is, the selection, coordi-

nation, and arrangement, as we talked about today, of the public
er

domain material. Isn't it likely, since copyinig nowadays is surely

a lot chpaper than creating, that the market for the original com-
La

pilationF.' will be totally destroyed?

Ms. GASAWAY. Certainly, and the AALL does not support a posi-
w

tion that says copyright and compilation should come to an end.

We simply support that the citations to compilations are in the
public domain.
Mr. RAMSTAD. So you agree that the market for original compila-
tions would be destroyed if any statute were to go further; that is,
to selection, coordination, or arrangement of the public domain ma-
terial?
Ms. GAsAwAy. If not destroyed, certainly harmed. Certainly
harmed.
Mr. RAmSTAD. Just a couple of other questions, Mr. Chairman,
if I may.
Ms. Gasaway, do you know of any instance wbere a publisher
has objected to the use of citations to its publications?
Ms. GASAWAY. Well, we did hear one today.
Mr. RAMSTAD. Other than the one today?

HLC 00012234
 235
Ms. GASAWAY. We bave beard some aneedotically. I don't person-
ally know because I'm not involved in publishing but in legal edu-
cation. So I'm sorry I don't know any personal examples.
Mr. RAMSTAD. It's my understanding of West's position that it ac-
tually encourages the uses of its citations to its publications by
other Is that your understandine.
Ms. GXSAWAY. It certainly does not seem to encourage the use of
jump pagination or star pagination witbout payment of license fees,
whieb would mean it bas some sort of-that it believes that it has
some sort of copyright or some otber interest in the page numbers.
Mr. RAmSTAD. But do you know of any situation where West has
objected to the use of its citations to its publication?
Ms. GAsAwAy. Well, the citation includes the pagination and the
jump pagination.
Mr. RAmSTAD. But as opposed to the star pagination that it ob-
jected to in West v. Mead?
Ms. GAsAwAy. No, but tbat's certainly the big instance. If a com-
peting publisher cannot use the pagination to the standard format
t'hat is required as citation iri courts, then wby would other pub-
lishers begin to try to do it, once there has been a decision and an
agreement for a license fee with that?
Mr. RAmSTAD. So is your answer no, with that exception?
Ms. GASAWAY. No, but that is a huge exception. It's not a little
exception; it's a big exception.
Mr. RAmSTAD. Thank you, Mr. Cbairman.
Mr. HUGHES. I just want to clarify sometbing, Mr. Pravel. I un-
derstand that there were 28 members on committee 308?
Mr. PfZAVEL. That's correct.
Mr. H"LTGHEs. They actually drafted resolution 308-1?
Mr. PRAVEL. Yes, that committee was responsible for drafting it.
How many of them participated, we don't know, but they were all
H

involved and all permitted to participate.

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Mr. HUGHES. Just as a followup to what my colleague from Min-

nesota was alluding to relative to the membership that had some
er

interest because of an affiliation with Thomson, I understand that

there were 5 members of that particular committee that had some
La

affiliation with West and 4 with Tbomson, and 19 unaffiliated. Do

you bave any knowledge?
w

Mr. PRAVEL. That is my information as well.

Mr. HUGHES. All right. I wonder if you can check that and sub-
mit it for the record?
Mr. nIAVEL. We will certainly try to do that.
[The information follows:]

HLC 00012235
 236

Based upon my investigation, there were

five members of the 1990-1991 Committee 308 that had
affiliation with West and four who had affiliation with
Thomson or Mead. Although my information is limited because
I did not receive responses from all members of that committee
to my inquiry regarding this question, I believe my
information is correct.
A copy of the complete 1990-1991 Roster of the members of
ABA/PTC Committee 308 is enclosed. So far as I know, other
than the committee members who were affiliated as indicated
above, the other members were not affiliated with either West,
Thomson or Mead. H
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HLC 00012236
 237

AMERICAN BAR ASSOCIATION

SECTION OF PATEZIT, TRALDEMUK AND COPYRIGHT LAV

AUGUST 1990 - AUGUST 1921

D M SION III - COPYRICRTS

COMMITTEE NO. 308

GOVERN M T RZLATIONS TO COPYRIGHTS
Scope of Comittest
(1) The practices Of government agencies and of private publishers
conc*rning ths, copyrigILt of works created by government
employees or created or published with financial or other
assistance from goverment;
(2) the acquisition and administration of copyrights aimed or
controlled by go"rnment agencies or government cm-ployees;
(3) us* and infringesent by tht government of copyrighted works; and
(4) allocation of private right@ in writing created through or vith
governmental support.
Kevlin, Mary L., Chai 605 3Rd AVG. Now York. NY 10158 2121503-6216
Anderson. Bradley W. 2200 gash Sq. 100 Vash AVG. S Minn. mm 55401 612/339-6900
Andorks, Frank H. 3200 Hat City Ctr Clevoland. ON 44114 216/a6l-7615
Attaway, Fritz E. 1600 1 St.. mv Vash.. DC 20006 202/293-1969
Bair. Stephen L. Tho Time Inc Bk Co 277 S Wash St. Alez.. VA 22314 703/838-7324
Bernstein, Jeffrey A Apt 521 1545 18th St. NV Wash. DC 20036 202/546-8046
Dabney, James V Paimis & Edsonds 1255 Av of Amer Now York. NY 10036 212/790-6210
Dirksen, Linda K. Harcourt Brace Jov 6277 Sea Harbour Orlando. FL 32097 407/345-3964
Fargo, John J. 3925 Brian PI Carml, lu 46032 202/724-7415
Gibson, Robert P. 5009 Prestwick Dr Fairfaz, VA 22030 202/274-8040
Grahn. Barbara J. 2200 Vash. Sq 100 Wash Ave.. S Minn. UN 55401 612/339-6900
Harriman, David P. Hichi* Co PO Box 7567 Charlott. VA 22906 804/972-7607
Haynes, Stephen L. PO Boz 64526 St Paul. EN 55164 612/228-2473
Hynes, Mary Am 2700 Lak* Cook Rd R.iverwoods,IL 60015 312/463-0074
Lathrop, Trayton L. PO Box 2507 ma"son. 91 53701 6081257-7766
Levine, Sanford U. State Univ Piz State UnLv of NY Albany, MY 12246 516/443-5400
Lyons, Patrice Ann Haley Bader& Potts 2000 N St. Ng Vath. Dr 20036 202/331-0606
Martin, Ruscell V Jr. Assoc Gent Couvool Ed. Testing Princeton. NJ Oa54l 609/734-5019
McDonnell, Sue Kartin Thompson Hine et:al 2000 Crthouse PI& Dayton. OB 45401 513/443-6980
Nash. Nancy A 800 Duckinghm Rd Dayton. On 45419 523/865-7207
Olive, Susan Frays Olive & Olive PO Box 2049 Durhm, MC 27702 929-683-3524
oppermiLn. Vance X. 2200 Vash. Sq. 100 Vath Av*., S Him.. UK 55401 612/339-6900
Qualls, John R PO Box 1576 Cincin.. OR 45201
Schatz, Jmes E
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2200 Washington Sq 100 Vash. Ave., 5 Hizm.. MN 55401 622/339-6900

Smrt. Patricia S 28th PI 33 V Nmroo St Chicago. IL 60603 322/641-1500
Taft. John A. Oppermm Helms-etallOO Wash. Ave.. S
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Minn.. mg 55401 6121339-6900

Twoney, ThoKaB Nathan ITT Defense Pat D 1000 Vilson Blvd AriLngton, VA 22209 703/427-2990
Worthey, Patricia Kay Apt 1007 2951 S Ling Drive Chicago. IL 60616 312/567-9858
er
La
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HLC 00012237
 238
Mr. HUGHES. It sounds to me like it was pretty balanced there
at the committee.
Mr. PRAVEL. That's my opinion.
Mr. HUGHEs. And I gather that the resolution was adopted by
some 16,000 members of the section?
Mr. PRAVEL. Well, no, the section only has about 10,000, a little
more than 10,000, 1 believe, at this present time. You're talking
about the vote? The way we vote and-
Mr. HuGHES. Tell me how it was reported out of the section.
Mr. PRAVEL. Out of the section? The section actually proposed
the resolution. The resolution then was placed on the floor at the
annual meeting in Atlanta where anvbody that's in our section was
permitted to attend. At that particular meeting, we had, I believe,
in the neighborhood of 200 of our members present and voting on
this resolution. We don't have a record as to the number who voted
in favor of it, but normally if it's a close vote, it is recorded.
Mr. HUGHEs. All right. Well, thank you very much. I want to
apologize for having to slip out twice, but we had a markup in an-
other committee, a markup means reporting out legislation, and I
had to be present. Also, Mikhail G-orbachev is here on Capitol Hill
and just addressed the Congress over in the Capitol Rotunda, the
Statutary Hall really. So that's the reason a number of members
left during this process.
It's been a very, very interesting hearing, and ies an interesting
issue. The panelists have really provided us with excellent testi-
mony. The statements were very comprehensive and very helpful,
and we appreciate your testimony here today. Thank you very
much.
That concludes the testimony, and the subcommittee stands
adjourned.
[Whereupon, at 1:15 p.m., the subcommittee adjourned, to
H

reconvene subject to the call of the Chair.]

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HLC 00012238
 APPENDIXES
APPEnix 1.--STATEMENT OF CONCERNED COMPILATION PUBLISHM

The undersigned organizations are, or represent,

factual and public domain material who oppose H.R. compilers
4426.
of
legislation is drafted in the context of concerns about This the
availability of public domain material, but its clear result would
be to remove traditional compilation copyright protection for
certain types of publications.
We create, or represent entities that create, compilations
containing information that has beer. "selected, coordinated, or
arranged in such a way that the resulting work as a whole
constitutes an original work of authorship" as defined in the
Copyright Act of 1976, 17 U.S.C. Sect. 101.
Copyright protection for compilations was established by the
courts early in our Nation's history, with specific statutory
protection granted under the 1909 Copyright Act. It is therefore
a long-standing principle of American copyright law that protection
be extended to works which contain original selection, coordination
or arrangement of factual and public domain data.
The Supreme Court has recently spoken on this issue. In Feist
Publications. Inc.v. Rural Telephone Service Comoany, Inc., the
Court stated:
H
yp

The compilation author typically chooses which facts to

include, in what order to place them, and how to arrange the
collected data so that they may be used effectively by
er

readers. These choices as to selection and arrangement, so

long as they are made independently by the compiler an entail
La

a minimal degree of creativity, are sufficiently original that

Congress may protect such compilations through the copyright
w

laws. 111 S.Ct. 1282 (1992), 1289.

Our products, or the products of those we represent, are
designed and organized in a manner that makes available data that
would otherwise often be too remote, cumbersome or expensive for
most citizens to obtain. These valuable resource materials clearly
qualify as works that "promote the Progress of Science" and whose
creators therefore deserve "for limited Times . . the exclusive
.
Right to their . . .
-_ and has grantedWritings" that Congress is empowered to
-- under Article I, Section 8 ofgrant the
Constitution.
(239)

HLC 00012239
 240

H.R. 4426 would set a worrisome precedent by selectively

removing copyright protection for certain compilations. There is
no need to alter -- either selectively or generally -- the
statutory protection currently and specifically granted
compilations under the Copyright Act of 1976. To do so would lead
to a diminution of the innovative and useful compilations presently
available to the American public that increase the free flow of
information so crucial to a democratic society.
We therefore oppose H.R. 4426 and urge that Congress not act
on this bill.

AT&T

The Bureau of National Affairs, Inc.

Commerce Clearing House, Inc.
Congressional Information Service, Inc.
Database Development
DIALOG Information Services, Inc.
Disclosure, Inc.
Dun & Bradstreet Corporation
The Foundation Press, Inc.
The Harrison Company
Information for Public Access
Infonnation Handling Services, Inc.
McGraw-Hill, Inc.
Public Utilities Reports, Inc.
H
yp

Rand McNally & Company

SEC Online, Inc.
er

Simon & Schuster, Inc.

La

VNU - Business Information Services, Inc.

VU/TEXT Infonnation Services, Inc.
w

John Wiley & Sons, Inc.

West Publishing Company

HLC 00012240
 241

APPENDix 2.-Ammmws To STATMNT OF VANCE K OPPERMAN

PUBLrOMMS OF FEDERAL AND 87X7E CXSE RZP0a79

1. American Indian Lawyer Training Program, inc.

Indian Law Reporter
2. American Maritime Cases, Inc.
American Maritime Cases
3. Anderson Publishing Co.
Anderson's Unreported Ohio Appellate cases
Unreported Ohio Appellate Cases CD-ROM
4. Aspen Publishers, Inc.
virainia circuit court Opinions
5. State of Ariz,na/Contract Publisher (West Publishing
Company)
Arizona Reportq
6. State of Arkansas/Contract Publisher (Darby Printing
Company)
Arkansas Reports
Arkansas Court of Appeals Reports
7. BDL (SwiftSearch)
Georgia cases CD-ROM (Georgia Appellate Court Decisions)
H

B. The Bureau of National Affairs

yp

Bankruptcy Law Reporter

Criminal Law Reporter
er

Employee Benefits cases

Environment Reporter
Family Law Reporter
La

Labor Relations Reporter (including)

- Fair Employment Practice Cases
-
w

Individual Employment Rights Cases

Wage and Hour Cases
Iriter;at ional Trade Reporter Cases
evorter
occupational Safet
United States Law Week
United States Patent Ouarterly (USPOI
0006272 1

HLC 00012241
 242

9. Butterworth Legal Publishers/Equity Publishing

American Samoa Reports
Guam Reports
Trust Territory Reports
Massachusetts Appellate Tax Board Reporter
Washington Tax Decisions
10. State of California/Contract Publisher (Bancroft-Whitney
Co.)
California Reports
California Appeals Reporta
11. CD-Law, Inc. (Seattle, WA)
CD Law Washington Decisiona (Washincjton Appellate Decisions)
12. CD/Law, Inc. (Marlow, NH)
New Hampshire Cases (New Hampshire Supreme Court Decisions)
13. CD-Media
Nebraska La (Nebraska Appellate Decisions)
14. Commerce Clearing House
All State Sales Tax Reiporter
Automobile Law Reports
Aviation Law Reports
Bankruptcy Law Rep rter
Blue Sky Advantage CD-ROM
Blue Sky Law Reporter
Business Franchise Guide
CCH Access (database service)
Commo ity Futures Law Reporter
Consu er Credit Guide
H

Consu er Product Safety Guide

Copyr ght Law Reporter
yp

Employment Practices Decisions

Enercry Manaaement
Federal Banking Law Reporter
er

Federal Ca riers Reports

Federal Securities Law Reporter
La

Fire and Casualty cases

Food. Drug and Cosmetic Law Reporter
Government Contrac
w

Labor Cases
Life, Health and Accident Insurance cases
Medicare & Medicaid Guid
occup tional Safety
0006272 2

HLC 00012242
 243

Products Liability Repor er

Secured Transactions Guide
Standard Federal Tax Repor s
Standard Federal Tax ReDOrts CD-ROM (announced)
State Tax Cases
Trade Recmlation Reporter
Unemployment Insurance Reporter
U.S. Tax Cases
Workers' c nSatiOn LaW Reporter
15. Code Company ,

Arizona Advance sheets

.Utah Advance sheets
16. State of Connecticut
Connecticut Reports
Connecticut Appellate Reports
Connecticut Supplement
17. Darby Printing Company
Georgia Appellate Decisions cp-gom (announced)
1C. Ditabasics
Nebraska Cases CD-R
19. Digital Legal Research
Minnesota Family Law-P--
20. District of Columbia circuit/contract Publisher (West
Publishing Company)
United States Court of ApPeals, District of Columbia
22. Environmental Law Institute
H

Environmentai Law Reporter

yp

21. State of Georgia/Contract Publisher (Darby Printing Co.)

er

Georgia Reports-
Georgia Cou --!evorts
La

22. Geronima Development

w

CaseFinder (Virginia Appellate Decisions)

0006272 3

HLC 00012243
 244

23. State of Hawaii/Contract Publisher (Fisher Printing Co.)

Hawaii Beports
Hawaii Appeals Reports
24. HyperLaw, Inc.
Supreme Court on Disk (U.S. Supreme Court Decisions)
25. State of Idaho/Contract Publisher (West Publishing company)
Idaho Reports
26. State of Illinois/Contract Publisher (Lawyer's Cooperative)
Illinois Reports
Illinois Appellate Report&
27. InfoSaft Electronic Publishers
Caselaw Nevada Reports on CD-ROM (Nevada Appellate
Decisions)
28. State of Iowa/IoWa Bar Association
Iowa Cases Qlt Disk (Iowa Appellate Decisions)
29. JAG Corporation
Idaho Supreme Court Reports
Idaho Court of Appeals Reports
30. Judicial and Administrative Research Services Inc.
Florida Law Weekly
Florida Supplement
31. State of Kansas
H

Kansas Reports
Kansas Court of Appeals Reports
yp

32. Laser Law Corp. (Enumclaw, WA)

er

Laser Law Illinois Caselaw on Compact Disc (Illinois Supreme

Court and Appellate Court Decisions)
La

33. Legal Communications, Ltd.

w

Pennsylvania District and County Reports

Fiduciary Reporter

0006272 4

HLC 00012244
 245

34. Legal Software Systems

opinions on Disk (South Carolina Decisions)
35. Legal Systems, Inc.
Alabama Appellate Decisions
California Appellate C u ec*s'onn
Florida Appell !L12na-Laugunced)
Georgia Appellate Court D -

Louisiana Appellate Couii Decisions (announced)

Mississippi Apipellate Cou
36. LegaSearch
LegaSearch (Utah Supreme Court and Appellate Court
Decisions)
37. LRP Publications
Bankruptcy Court Decisions
38. Marshall Law
Florida Cases CD-ROM
39. State of Maryland/Contract Publisher (West Publishing
Company)
Maryland Reports
Maryland Appella
40. State of Massachusetts/Contract Publisher (Darby Printing
Company)
Massachusetts Reports
Massachusetts Apneals Courlt-Es2g=
41. Matthew Bender
H

California C
yp

Collier Bankruiptcy Cases

Oil and Gas Reporter
er

42. Mead Data Central, Inc./Michie Company

La

Georgia Law on Disc (Georgia Supreme Court and court of

Appeals Decisions)
w

New Mexico Law on Disc (New Mexico Supreme Court and Court
of Appeals Decisions)
Utah Law on Disc (Utah Supreme Court and Court of Appeals
0006272 5

HLC 00012245
 246

Decisions) (announced)
rinia Law on Disc (Virginia Supreme Court and Court of
Appeals Decisions)
LEXIS (federal and state case reports)
43. State of Michigan/Contract Publisher (Lawyer's Cooperative)
Michigan Reports
MichicTan Court of Appeals Reports
44. State of Montana/Contract Publisher (State Reporter
Publishing Company)
Montana Reports
45. National Legal Databases
Lawpisc (California Civil Appellate Cases)
46. State of Nebraska
Nebraska Reports
47. State of Nevada
Nevada Reports
48. State of New Hampshire/Contract Publisher (Equity Publishing
Corporation)
New Hampshire Reports
49. State of New Jersey/Contract Publisher (West Publishing
Company)
New Jersey Reports
New Jersey Superior Court Reports
New Jersey Tax Reports
H

50. State of New Mexico/Contract Publisher (West Publishing

Company)
yp

New Mexico Reports

er

51. State of New York/Contract Publisher (Lawyer's Cooperative)

La

New York Reports

New York Appellate Division Reports
w

New York Miscellaneous Reports

0006272 6

HLC 00012246
 247

52. State of North Carolina/Contract Publisher (Commercial

Printing Company)
North Carolina Reports
North Carolina Court o -orts
53. State of Ohio/Contract Publisher (West Publishing company)
Ohio State Reports
Ohio Appellate Reports
Ohio Miscellaneous Reports
54. State of Oregon
Oregon Reports
Oregon Court of Appeals Reports
Oregon Tax Court Reports
55. State of Pennsylvania/Contract Publisher (West Publishing
Company)
Pennsylvania Reports
Pennsylvania Cc] irt Reports
Pennsylvania Superior Court Reports
56. PuDlic Utill'it-Jes Reports, Inc.
Public Utilities Reports 4th
57. State of South Carolina/Contract Publisher (R.L. Bryan
Company)
South Carolina Reports
58. Thomson Corporation (Bancroft-Whitney company, Clark
Boardman Callaghan, Lawyers Cooperative Publishing company,
Law Office Information Systems, Inc., Maxwell Macmillan)
American Federal Tax Reporter
H

American Law
American Law Ret
yp

American Law ReRorts. Thiid-

American Law Reports. Fourth
American Law Reports. Fifth
er

American Law Reports - Federal

California Of
La

- 2=11--m-ROM
and Appellate Court Decisions)
(California Supreme Court
(announced)
CaseBase Arkansas CD-R (Arkansas Supreme Court and
Appellati Court Cases)
w

CaseBase Connecticut CD-ROM (Connecticut supreme Court and -511

Appellate Court Decisions)

0006272 7

HLC 00012247
 248

caseBase Georgia CD-R (Georgia Appellate Decisions)

(announced)
case ase Kansas CD-ROM (Kansas Appellate Court Decisions)
Case ase Massachusetts CD-RO (Massachusetts Appellate
Decisions) (announced)
caseBase Rhode Island CO-RO (Rhode Island Supreme Court
Decisions)
Fede al Rules of Evidence service
Federal Rules Ser ice
LawDesk (New York Court of Appeals, Appellate Division and
Miscellaneous Decisions)
Tax ourt Decisions
Tax Court Unreno ed Decisions
Uniform Commercial Code Reporting Service
United States Rep rts - Lawyer's Edition
59. United States of America/Government Printing Office
United States Reports
60. State of Vermont/Contract Publisher (Butterworth Legal
Publishers)
Vermont Reports
61. Commonwealth of

Virginia Reports
Virginia Reports
of Reports
Reports
Reports
63. West Publishing Company
Atlantic Reporter
H

Bankruptcy Reporter
california Reporter
yp

claims Court Reporter

Federal Reporter
Federal Rules ecisions
er

Federal Suppleinent
Federal Tax Cases
La

Illinois Decisions
Military Justice Reporter
w

New York Supplement

North Eastern Reporter
North Western Rep rter
Pacific Reporte
0006272 8

HLC 00012248
 249

SOUth Eastern Reporter

South Western Reporter
Southern Reporter
Supreme Court Reporter
veteran's Appeals geporter
WESTLAW (federal and state case reports)
64. State of West Virginia/contract Publisher (West PUblishing
Company)
West Virginia Reports
65. State of Wisconsin/Contract Publisher (Lawyer's Cooperative)
Wisconsin Reports

H
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La
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0006272 9

HLC 00012249
 250

PUBLISNER8 OF FED STATE STATUTES

1. Anderson Publishing Company
Ohio Revised Code Annotated
2. Banks-Baldwin Publidhing co.
Baldwin's official Edition. Kentucky Revised Statutal
Annotated
Ken cky Annotated Statutes on CD-ROM
Ohio Revised Code Annotated
Ohio Revised Code Annotated on CD-R
3. Butterworth Legal Publishers/Equity Publishing Co.
New Hampshire Revised Statutes Annotated
Orecon Revised Statutes Annotated
Laws of Puerto Rico Annotated
Vermont Statutes Annotated
Virgin Island Code Annotated
4. CD-Law, Inc. (Seattle, WA)
CD LAW Revised Code of Washincfton and Washington
Administrative Code
S. CD-Media
Nebraska La (Nebraska Statutes Unannotated)
6. CD-ROM Resource Group, Inc.
Colorado Revised Statutes on Disc
7. State of Colorado/ Contract Publisher (Bradford Publishing Co.)
Colorado Revised Statutes
H

8. Compass Data Systems

yp

Computerized Florida Statutes on CD-ROM; Coznouterized Florida

Statutes -- Hard Disk Edition
er

Computerized New Jersey Statutes -- Hard Disk Edition

Computerized Minnesota Statutes (announced)
Computerized Utah Statutes (announced)
La

9. State of Connecticut/Legislative Commissioner

w

General Statutes of Connecticut

0005099.01 1

HLC 00012250
 251

10. Darby Printing Company

Georgia Code (announced)
11. Databasics
Nebraska Cases CD-R (Nebraska Statutes)
12. Electronic Text Corporation
Utah Code CD-
13. State of Florida/Division of Statutory Revision
Florida Statutes
14. Gann Law Book Co.
New Jersey Statutes Unannotated (announced)
15. Gould Publishers
Gomldls Consolidated Laws of New York
United States Code Unannotated
16. Harrison Company
Florida Statutes Annotated
Code of Georgia Annotated
17. State of Hawaii/Legislative Reference Bureau
Hawaii Revised Statutes
18. State of Indiana/ Contract Publisher (Banks-Baldwin Publishing
Co.)
Indiana Code
19. InfoBasix
H
yp

Utah Code
20. InfoSoft Electronic Publishers
er

Caselaw Nevada on CD-ROM (Nevada Revised Statutes)

La

21. State of Iowa

w

Code of Iowa

0005099.01 2

HLC 00012251
 252

22. State of Kansas/Kansas State Printing Plant

Kansas Statutes Annotated
23. Legal Research Systems
Florida Statutes on Computer Disk
24. Legal Scan
Oklahoma Code on Disk
25. Legal Systems, Inc.
AlaCode: Alabama Code on computer Disk
Florida Statutes on Computer Disk
Georgia code Unannotated (announced)
Louisiana Code Unannotated (announced)
Mississippi code Unannotated (announced)
26. LegaSearch
LegaSearch (Utah Statutes Unannotated)

27. Commonwealth of Massachusetts/ Contract Publisher (West

Publishing Co.)
General Laws of Massachusetts
28. Mead Data Central, Inc./Michie Company
Code of Alabama
Alaska Statutes
Arizona Revised Statutes
Arkansas Code Annotated
Delaware Code Annotated
official Code of Georgia Annotated
Georgia Law on Disc (Georgia Code Annotated)
H

Hawaii Revised Statutes Annotated

Idaho Code
yp

Burn Indiana Statutes Annotated. Code Edition

Kentucky Revised Statutes Annotated. Official Edition
Annotated Code of Maryland
er

Nevada Revised Statutes Annotated

New Mexico Law on Disc (New Mexico Statutes Annotated)
La

New Mexico Statutes Annotated

General Statutes of North Carolina
Nortb Dakota Century Code
w

General Laws of Rhode Island

Sout Dakota Codified Laws Annotated
Tennessee Code Annotated
0005099.01 3

HLC 00012252
 253

Utah Code Annotated

Utah Law on Disc (Official Utah Code Annotated) (announced)
code of Virainia Annotated
Virainia Law on Disc (Virginia Code Annotated)
Wes Virginia Code
Wyo ing Statutes
LEXIS (federal and state statutes)
29. State of Michigan/Legislative Service Bureau
Michigan Compiled Laws (19791
30. state of Minnesota/Revisor of Statutes
Minnesota Statutes
Minnesota Statutes CD-ROM
31. State of Missouri/Revisor of Statutes
Missouri Revised Statutes
32. State of Montana/ Contract Publisher (Eastwood Printing and
Publishing Co.)
Montana Code Annotated
Montana Code Annotated Disk
33. State of Nebraska/Revisor of Statutes
Revised Statutes of Nebraska
34. State of Nevada/State Printing office
Nevada Revised Statutes
35. State of Oregon/State Printer
Oregon Revised Statutes
36. ProInfo
H

United States Codl

yp

37. Thomson Corporation (Bancroft-Whitney Co., Lawyer's

er

Cooperative Publishing Company, Clark Boardman Callaghan, Law

Office Information Systems, Inc.)
La

CaseBase Arkansas CD-ROM (Arkansas Code Unannotated)

CaseBase Connecticut CD-ROM (Connecticut Statutes)
w

CaseBase Georaia CD-ROM (Georgia Code) (announced)

CaseBase Kansas CD-ROM (Kansas Code)
Deer nals Annotated California Code
0005099.01 4

65-153 0 - 93 - 9

HLC 00012253
 254

Annotated Laws of Massachusetts

sfg:2.ffatutes Annotated
Code Annotated
New York Con s Service
COde Of Laws Of SOuth Carolina 1976 Annotated
United States Code Service
38. United States Government/Goverrment Printing office
United States Code
United States code CD-ROM (announced)
39. State of Washington
Revised Code-of Washington
40. West Publishing Company
ArizOna ReVised Statutes Annotated
West's Annotated California Codes
West's Colorado Revised statutes Annotated
Colorado Revised Statutes Annotated
Connecticut General Statutes ed
West's Florida StatuteS Annotated
Sm th-Hurd Illinois Annotate
i
Statutes linois Revised
H
yp

41 State of Wisconsin/Revisor of Statutes

er

Wisconsin Statutes
La

Wisconsin Statutes 1989-90 on Cp-goM

w

0005099.01 5

HLC 00012254
 255

CASE REPORT AND BTATUTORY PUBLXCATIONS

ER WEST V. MEAD

1. Anderson Publishing Company

Unreported Ohi ases CD-
2. Banks-Baldwin Lav Publishing Company
Kentucky Annotated Statutes on CD-ROM
Ohio Revised Code Annotated
3. BDL (Swiftsearch)
Georgia Cases CD-ROM (Georgia Appellate Decisions)
4. CD/Law, Inc. (Marlow, KH)
New Hampshire Cases (Now Hampshire Supreme court Decisions)
5 CD-Law, Inc. (Seattle, WA)
CD LAW Revised Code of Washincrton and Washinetton
Administrative Code (Washington Statutes)
Cp LAW Washington Decisions (Washington Appellate Decisions)
6. CD-Media
Nebraska La (Nebraska Appellate Decisions/Nebraska
Statutes Unannotated)
7. CD-ROM Resource Group, Inc.
Colorado Revised Statutes on Disc
8. Commerce Clearing House
CCH Access (database service)
H

Standard Federal Tax Reporter CD-ROM (announced)

yp

9. Compass Data Systems

Computerized Florida Statutes on CD-ROM; Computerized Florida
er

Statutes -- Hard Disk Edition (Florida Statutes Annotated)

Computerized New Jersey Statutes -- Hard Disk Edition (New
La

Jersey Statutes)
C puterized Minnesota Statutes (announced)
Computerized Utah Statutes (announced)
w

0004658 1

HLC 00012255
 256

10. Darby Printing Company

Georgia Appellate Court Decisions (announced)
Georgia Code (announced)
11. Databasics
Nebraska Cases CD-RO (Nebraska Appellate Decisions/Nebraska
Statutes)
12. Electronic Text Corporation
Utah Code CD-ROM (Utah State Code)
13. Gann Law Book Co.
New Jersey Statutes Unannotatid (announced)
14. Geronimo Development
caseFinder (Virginia Appellate Decisions)
15. Gould Publishing
United States Code Unannotated
16. HyperLaw, Inc.
Supreme Court on Disk (U.S. Supreme Court Decisions)
17. InfoBasix
Utah Code
18. InfoSoft Electronic Publishers
Caselaw Nevada Reports on CD-R (Nevada Appellate
Decisions/Nevada Revised Statutes)
19. State of Iowa
H

Iowa Cases on Disk (Iowa Appellate Decisions)

yp

20. LaserLaw
er

LaserLaw Illinois Caselaw on Compact Disc (Illinois Supreme

Court and Appellate court Decisions)
La

21. Legal Research Systems

w

Florida Statutes on Comiputer Disk

0004658 2

HLC 00012256
 257

22. Legal Software Systems

opinions on Disk (South Carolina Decisions)
23. Legal Systems, Inc.

ecisions (announced)
ter Disk
(announced)
(announced)
Decisions (announced)
(announced)
rt Decisions (announced)
tad (announced)
24. LegaSearch
LegaSearch (Utah Statutes Unannotated/Utah Supreme Court and
Appellate Court Decisions)
25. Marshall Law
Florida Cases CD-RO
26. Mead Data Central, Inc./Michie Company
Arizona Revised Statutes
Georcria Law on Disc (Georgia Code Annotated/Georgia Supreme
Court and Court of Appeals Decisions)
New Mexico Law on Disc (New Mexico Statutes Annotated/New
Mexico Supreme Court and Court of Appeals Decisions)
Utah Law on Disc (Official Utah Code Annotated/Utah Supreine
Court and Court of Appeals Decisions) (announced)
Vircrinia Law on Disc (Virginia Code Annotated/Virginia Supreme
Court and Court of Appeals Decisions)
LEXIS (addition of federal and state statutes)
H

27. State of Minnesota/Revisor of Statutes

yp

Minnesota Statutes CD-

er

28. State of Montana

La

Montana Code Annotated Disk

MONTI-A (database service)
w

29. National Legal Databases

LawDisc (California Civil Appellate Cases)
0004658 3

HLC 00012257
 258

30. ProInfo
United States Code
31. Thomson Corporation (Bancroft-Whitney Co., Lawyer's co-
operative Publishing Company, Law Office Information Systems,
Inc.)
CaseBase Arkansas CD-ROM (Arkansas Code Unannotated/Arkansas
Court Rules/Arkansas Supreme Court and Appellate Court
Cases)
California Official Reports CD-ROM (California Supreme
Court and Appellate Court Decisions) (announced)
CaseBase Connecticut CD-ROM (Connecticut Statutes/ Connecticut
Supreme Court and Appellate Court Decisions)
CaseBase Georgia CD-ROM (Georgia Appellate Decisions/Georgia
Code) (announced)
CaseBase Kansas CD-ROM (Kansas Appellate Decisions/Kansas
Code)
CaseBase Massachusetts CD-ROM (Massachusetts Appellate
Decisions) (announced)
LawDesk (New York Court of Appeals, Appellate Division and
Miscellaneous Decisions)
CaseBase Rhode Tsiand CD-ROM (Rhode Island Supreme Court
Decisions)
32. United States of America/Goverriment Printing Office
United States Code CD-ROM (announced)
33. Washington gtate Bar
Revised Code of Washington (Bulletin Board Service)
34. West Publishing Company
Colorado Revised Statutes Annotated
WESTLAW (addition of federal and state statutes)
35. State Of Wisconsin/Revisor of Statutes
H

Wisconsin Statutes 1989-90 on Cp-goM

yp
er
La
w

0004658 4

HLC 00012258
 259

Database Mode
'IE F.Supp. IE-11 FOUND DOCUMENT DCT p
54 U.S.L.W. 2230, 2Z7 U.S.P.Q. 631, IgeS Copr.L.Dec. P 2S,845
Cite a5: BIG F.Supp. 1571)
WEST PUBLISHING CO.
V.
MEAD DATA CENTRAL, INC.,
Civ. No. 4-85-931.
United StataB District Court,
D. Minne5ota.
Fourth Division.
Oct. 3, 1985.
Legal publisher brought action alleging copyright infringement by competitor
in ccnnection with computer assisted legal research system. On motion by
for preliminary injunction and by competitor to dismiss for failure
tc slate a claim on which relief could be granted, the Di5trict Court,
J., held that: (1) West Publishing Company*s page riumbers and its
arrangement Cf cases in Its National Reporter System are necessarily within the
Ecope of protection; (2) competitor's proposed use of '5tar
in Its computer system, keyed to the second and succeeding page
numte,s cf Opinions In We5t's National Reporter System, infringed on We5t*5
ano went beyond fair use; and (3) preliminary injunction was
E-Ianted beted con5ideratione of probable success on the merits,
i-r*;erecle ha-m, balance of harms. and the public interest.
Msticn fcr preliminary injunction granted; motion to dismiss denied.

1SES.
E:siric4 'ccjrt tele notice of legal publisher's SUCCe55 in its field.
west -it. Co. v. M;,z Date Cent., Inc.
EIS 1S71, 54 U.S.L.W. 2230. 227 U.S.P.G. 631,
F
H

Lile!,.,vod' cf succe55, or presence of substantial questions, combined wilh

cthe-
yp

D.C.Minn. 19ES.
' Fa:tors tc be considered in decision to grant or deny preliminary injunction
ere: prrzoability Of MOVaMt'5 success on the merits;.. threat of irreparable
er

harm to mcvant if preliminary injunction is denied; balance between this harvn

ano the ha-r, the preliminary injunction, if granted. would cause to the other
La

and the public Interest in granting or denying the preliminary

We5l PUb. Co. v. Mead Data Cent., Inc.
w

EIE F.Supp. 1571, 54 U.S.L.W. 2230, 227 U.S.P.Q. 631,

;SEE Copr.L.Dec. F 25,845
1Z)

COPR. (C) WEST 1992 NO CLAIM TO DRIS. U.S. GOVT. WORKS

HLC 00012259
 260

I E F Sup r: . 157, 1 FAGE 2

Cit. ..: 616 F.S.pp. 1571)
i. Ealancing hard!hips or equities.
D.--.Minn. 1985.
N:, cne of the applicable factors determines whether preliminary injunction
should issue; rather, the equities must be balanced to achieve a ju5t
determination.
West Pub. Co. v. Mead Data Cent., Inc.
EIE F.Supp. 1571, 54 U.S.L.W. 2230, 227 U.S.P.G. 631.
ISES Copr.L.Dec. P 2S.845
143
99K63(3.S)
COFVRIGHTS AND INTELLECTUAL PROPERTY
K. Certificate as prima facie proof, In general.
D.C.Minn. 1985.
Copyright registration generally constitutes prima facie evidence of a valid
copyright. 17 U.S.C.A. a 410(c).
4,e5t Fub. Co. v. Mead Data Cent., Inc.
ElE F.Sucp. 1571, 54 U.S.L.W. 2230, 227 U.S.P.Q. 631,
!EES Copr.L.Dec. P Z5,845
zz- E7
AND II,7ELLECTUPL PROPERTY
r.. and burden of proof.
i,fringer has the burden of overcoming presumption of valid copyright
ri!in; from copvright registration. 17 U.S.C.A. 5 410(c).
Co. v. Mead riate Cent., Inc.
EIS IS71, 54 U.S.L.W. 2:30, :27 U.S.P.Q. 631,
F ZE,645
4
-n- 1'JE'-LE--,TJA-1 FSOFERTY
t. :-.e1jie5 and law, reports.
J9--5.
J-..'er el-:10priate circumstBnces, pagination and arrangement of judicial
o;iniTm! ascend to a level appropriate for corjyright pt-otection; but if the
and paging depend simply on the will of the printer. on the orcer
11 "!:r. !he cases have been decided, or on other accidental circumstances,
t.", are r-Ot subject to copyright protection because they then involve no
H

lator, talent or judgment.

West Pub. Co. v. Mead Data Cent., Inc.
yp

'lE F.Supp. IS71, 54 U.S.L.W. 2230, 227 U.S.P.Q. 631,

1H,7- Copr.L.DeC. F 2S,845
er

14
AIJE) 114TELLECTUAL PROPERTY
La

K. Statutes and law relDorts.

D.C.Minn. 198S.
West Publi5hing Company's page numbers and it5 arrangement of cases in the
w

NE41onal Reporter System are necessarily within the scope of copyright

Prctect;on because West's arrangement of the cases Involves considerable
COPR. (C) WEST 1992 NO CLAIM TO ORIG. U.S. GOVT. WORKS

HLC 00012260
 261

PAEE 3
Cite a !7 616 F.Supp. 1571)
labor, talent, and judgment and because of the self-inde.ing nature
Cf West's editorial worl. based on volume number, ser4es designation, and page
n,jr-ber. 17 LI.S.C.A. s5 101 et Beq., 103.
west Fuo. Go. v. Mead Daie Cent., Inc.
EIE F.Eupp. 1571, 54 U.S.L.W. 2:30, 227 U.S.P.Q. 631.
igES Copr.L.Dec. P 25,64S
[6)
HK14
CDPYFIGHTS AND INTELLECTUAL PROPERTY
K. Statutes and law reports.
C.C.Minn. ISSS.
When one is fnandated as an official reporter to collate and arrange judicial
opinions, the result Is not an exercise of indtpendant judgment or discretion
but inheres in the official process and becomes part of the public domain, and
tnus no copyright protection can be granted for arrangement or pagination by
person who stands in this official position, but this rule does not prohibit a
putli5hing company which is not an official reporter fropi obtaining a
copyrignt in the pegination or arrangement of its publications.
west Fut. Co. v. Mead Date Cent., Inc.
E-- JS71. 54 U.S.L.W. 2230, 227 U.S.P.G. 631.
P 25,84S

111c- .1 INTE'LECTU11L FROFERTY

Cc,,-;1aticnt and derivative worE5; copies and reproductions.
--.-.Minn. 1:;H
E,;n w-e-e ih;'b2fe cats ef particular lies in the public sphere,
anc pagination cf this PUbliC materiolv reflecting the 51.ill,
ono effort of the person crafting the arrangement, is 5ubject io
-rctect;cn. 17 U.Z.C.A. 5 103.
--o. . V'eaz DAte Cant., Inc.
16-1, :;4 LI.E.L.W. -230, 227 U.S.P.G. 631,
rz Dec. P 25.;45

7- PROPERTY
&no ia, re;c.r%5.
H

decisicr is not itself susceptible to copyright, but publishing

yp

s arrangement of decisions, constituting a significant work of 5kill

and enterprise, is entitled to copyright protection. 17 U.S.C.A. s 103.
Fib. Co. v. tlead Date Cent., Inc.
er

EIE F.-:Ipr-. 1571. 54 U.S.L.W. 2230, 227 U.S.P.O. 631.

P 25,645
La

C--F,F-!Cr7-- PND PROFERTY

-
w

and law reports.

D.'-.Minn. 19ES.
.:t cr,7, tre ove-all arrangement of judicial opinions by West Fublishing
COPR. (C) WEST 1992 NO CLAIM TO ORIG. U.S. 60VT. WORKS

HLC 00012261
 262

,I= IS.'I FAGE 4

Ci t e a5t GIS F.Supp. 1571)
Ccrpar, in it5 National Repcrter SY5tem, but the 5ucceeding page numbers of
each csee, are protected by copyright, and thus West has the right to
reproduce and cisirioute this arrangement. 17 U.S.C.A. s 106.
weit Fut. Co. v. Mead Data Cent., Inc.
E16 F.=upp. IS71, 64 U.S.L.W. 2230, 227 U.S.P.G. 631.
ISES P 25,845
[IT]
991.57
00FYRIGHTS AND INTELLECTUAL PROPERTY
Y. Ccpying.
O.C.Minn. 1965.
U5e by a competing producer of a computer assisted legal research sy5tem of
tar pagination" or "jump cite' tck the second and 3ucceeding page numbers
following the initial citation to West Publishing Coripany's arrangement of
cases in its National Reporter System infringes on West's copyright by
tuzplarting 13art of the normal market for the copyrighted work. 17
55 101, lez, 106.
,e!t Put. Cc. v. Mead Daie Cent., Inc.
EIE F.S-zp. 1571, 54 LI.S.L.W. 2--3e, 227 U.S.P.Q. 631,
1;CH Ccpr.L.E-ec. P -25,645
ill-]
CE-F,97-7= INrELLECTUAL PROPERTY
t. c-ia*..-.es and law reports.
cle C;rnol copyr.ght the Aratic numbering 3y3tem, the page numbering in
,e!! ::-!nin; Comp6ny's Natisnal ;eporter System publications, being the key
t: irt- !elf-inoe, by wnicn West's arrangement is accessed, is within meaning of
If-ien a- 1 whole." within the copyright (jefinition 117 U.S.C.A.
c 5

Nead Cent., Inc.

F. 1=_ C4 U.-.L.w. ::30, U.S.P.G. 631,
:ee Zrcs eno rnra5as for other judicial construction! and

FF.---,FERTY
H

general.
yp

IcE5.
For cop,rignt infringement purpo5a5, producer of a computer astisted legal
re--ee-ch tysier, need not physically arrange its opinions within its computer
cen) in orcer to reproduce, and thereby infringe, legal publisher's protected
er

a-ran;ewent cf opinions in its reporter system.

,le!t Co. v. Mead Date Cent., Inc.
La

EIE .c-pp. 1571, S4 U.S.L.W. 2Z30, ZZ7 U.S.P.G. 631,

ISES P ZS,S46
iisl
w

HKEE
hNr 114TELLECTUAL PROPERTY
COFF. (C) WEST 1952 NO CLAIM TO ORIG. U.S. GOVT. WORKS

HLC 00012262
 263

16 F.Supp. IS71 PAGE S

Cite as: 616 F.Supp. 1571)
Fair uze in general.
D.C.Minn. 192S.
Use by producer of computer assisted legal rp-search system of '3tar pagination"
referring to the second and 5ubsequent pages of legal opinions &5 they appear
in West Publishing Ccmpany*5 National Reporter System would not be legal fair
use where acknowledged purpose of such use was to enhance the position in the
marietplace of the producer of such system, where such use, though claimed to
be miniscule, was the key to the West arrangement of the opinions, and was thus
both quantitatively and qualitatively substantial. and where such pagination
would supersede a substantial use of West's hardbound volumes of reporters.
West Pub. Co. v. Mead Data Cent., Inc.
616 F.Supp. IS71, 54 U.S.L.W. 2230. 227 U.S.P.G. 631,
ISSE Copr-L.Dec. P ZS,845
1161
99KS9
INTELLECTUAL PROPERTY
Compilations, abridgments. digests, or translations.
D.C.Minn. !SEE.
C-riginal are generally accorded a higher degree of fair use protection
tnan that granted to compilations, but compilations may nonetheless be
e5pe:lally where the purported fair use is commercial. 17
u.S.C.A. s 11-7.
lett Put. C-c. .. Mead Date Cent., Inc.
E:E F.iL,;:. !S71, 54 U.S.L.W. :230, 227 U.S.P.Q. 631,
!H5 C.Zpr.L.Dec. F 25,E45
17]

kN- INTP_LE--TUAL PROFERTY

ccr5!ituting infringement.
-r.,.
2r:5-zancee of minor copyright infringements, when multiplied many
timet, be--,me in ihe eggregete a major intrusion upon the copyrighted material
-: -itt be prevenied.
e!t Cz,. v. Mead Data Cent., Inc.
!S71. SA U.S.L.W. 2230, 227 U.S.P.Q. 631,
EI6
H

A'Z INTELLECTUAL PROPERTY

yp

r..reir u;e and other permitted uses in general.

D.C.rinn. 15:5.
F=ir uze acctrine ha5 always precluded a use that supersedes use of the
er

criginal, and thus if both copyright holder's and alleged infringer's works are
5ec for the 5ame purpose and fulfill the 3ame function in terms Of ACtUal or
La

rotentiel cusiomer demand, fair use cannot be found. 17 U.S.C.A. s 107.

,e!t Pub. Cc. v. Mead Date Cent.. Inc.
SIE IE71, 64 U.S.L.W. 2230, 227 U.S.P.Q. 631,
w

IHS Copr.L.Dec. P 75,645

1191
EE
COPP. (C) WEST 1992 NO CLAIM TO OR16. U.S. GOVT. WORKS

HLC 00012263
 264

IE F.Sip;. 1571 PAGE 6

C;te as: 616 F.Supp. 1571)
:F,=.R16mTS AND INTELLECTUAL PROPERTY
1. Prelim:nary injunction.
D.C.M;nn. IHS.
--sea of preliminary injunction, West Publishing Company met the test of
5uccess on the merits of its claim of copyright infringement ano lack
Df fair ute in proposed "star pagination" system by producer of computer
as5istec legal rebearch prog,am which would provide references to second and
5ubsequeni pages of judicial opinions as they appear in West's National
Repcrter System.
wett. Pub. Co. v. Mead Date Cent., Inc.
EIG F.Supp. IS71, 54 U.S.L.W. 2230, 227 U.S.P.Q. 631,
ISAS Copr.L.Dec. P 2S,645
[203
59mGs
:0* AND INTELLECTUAL PROPERTY
K. Preliminary injunction.
-.`.Minn. 196S.
rule in alleged copyrioht infringement cases is that, for a preliminary
.r, jinctior. P.-*iLn, irreparable injury is presumed once movant has establizhed a
,-Ir.e fecie ;a5e of copyriohi infringement.
,e!t Fut. Co. v. tiead Deta Cent.. Inc.
c. 125. 54 LI.S.L.W. 2230. 227 U.S.P.G. 631,
Cop-.L.Dec. F 26,845
zs
AK INTELLECTUAL PROPERTY
t_ Frelirinery injunction.
I.C.Minn. 15H *
of irreparable harm, for purposes of ppeliminary injunction agair.5t
u5e cf a tter system in a competitor's computer assistea legal
s)stee. t:; refer io second and subsequent pages of legal Opinions 05
nty ePpear in West Publishing Company's National Reporter System, aroae from
s5i a sircn; clair, for copyright infringement and, in any event, sufficient
E,z_inp c-f irreparable injury was made by showing that defendent*5 USe Of
!i 5 ccp..-r-g1;te_- rroduct might materially reduce the demand for such preduct.
-e=-. ' -it. Cc. Y. Mean Deta Cent., Inc.
:;
.zz=
!571. 64 U.S.L.U. 2230, 227 U.S.P.G. 631,
De 2S.645
H
yp

C1,_FvRIG.HTS AND INTELLECTLIAL PROPERTY

t:. Preliminary injunction.
O.C.Minn. 1985.
er

Ciair. of harr. to alleged copyright infringer, for purposes of imposing

r-e!:-,inery injunction, cannot be based on any market supremacy which it has
La

gt,eratez! as a function of its ability to infringe a copyright.

i,ezz Fub. Co. v. Mead Date Cent., Inc.
EIF F.Supp. 1571, 54 U.S.L.W. 2230, 227 U.S.P.G. 631,
w

19:5 Ccpr.-.Dec. P 25,645

COPR. (C) WEST 19K NO CLAIM TO ORIS. U.S. GOVT. WORKS

HLC 00012264
 265

PA6E 7
:6 F.S.PP. 1S71
:ite as: 616 F-Supp. 1571)
-u AND IN7ELLECTUAL PROPERTY
". Preliminery injunction.
2.C.Minn. ISSS.
Dn motion for preliminary inauriction against competitor's use of "star
Degination' in its computer assisted legal research system, keyed to West
uc;li5hing Company's National Reporter System, competitor failed to shcj4 that
any 5peculative harm to it from loss of market lead time would outweigh the
=robable harm to West from alleged infringement of it5 copyrights.
West PUb. CO. v. Mead Date Cent.. Inc.
516 F.Supp. 1571. S4 U.S.L.W. 2230, 227 U.S.P.G. 631.
192S Copr.L.Dec. P 25,845
1241
9SK95
COPYRIGHTS AND INTELLECTUAL PROPERTY
K. Preliminary injunction.
.C.Minn. 196S.
utlic :rtere5t favored preliminary injunctive relief agoinst probable
in of judicial reports. U.S.C.A.
:cn!*.. 1, --
8, cl. E.
Co. v. rieed Data Cent., Inc.
IE71, 54 U.S.L.W. Zn-30, 227 U.S.P.Q. 631,
Ccp-.L.Oec. P 25,845

AliL !NTELLECTUAL PROPERTY

F,t,irinary injunction.
i nr, . 1 SEE .
eti Famlithin; Company wom entitled to preliminary injunction against
5 r-cpc5ed introduction of "star pagination" in its computer
research 5ystem, eyed to West's National Reporter System, based
c- Of West's proDable success on the fnerils, irreparable harm,
bEiarcin; of harTt. and the public interest. U.S.C.A. Const. Art. 1, s 8, cl.
17 C.E.C.F.. 55 101-103, 106, 107; Fad.Rules Civ.Proc.Rule 65, 28
u--5t Co. v. Xead Data Cent.. Inc.
54 U.S.L.W. 2230. 2227 U.S.P.Q. 631,
H

;EEE :c;--1-ez. P ZS,845

*lS74 1,ence K. Oppermar,. Diane M. Helland, Joseph R. Kernan, Jr.,
yp

-p,err,a & Paouln, Minneapolis, Minn., for plaintiff.

ichn D. French, Duane W. Krohnke. John F. Beukema, Faegre & 6enson,
Minn., for ciefendant.
er

MEMORANDUM ORDER
La

015trict Judge.
Jr. tnie acizc-ri, plaintiff Weet Publishing Company (West) alleges copyright
w

irfring-ty.ent by defendant Mead Date Central, Inc. (MOC) an the basis of MDC's
prc.pcted 2ntroductiOn of `5tar pagination' keyed to West's report5 in its LEXIS
le;al research 5y5teh. West 15 before the Court seeking a preliminary
COPR. (C) WEST 1992 NO CLAIM TO ORIS. U.S. GOUT. WORKS

HLC 00012265
 266

1z ISl PkGE
Cite ast 616 F.Supp. 1571, *1574) E

injunction enjoining this introduction pursuant to Rule 65 of the Federal Rules

cf Civil Procedure (F.R.Civ.P.). MDC has answered, and moves for dismi55el of
all countz, alleging plaintiff'a failure tO 5tate a claim upon which relief may
be granted, pursuant to Rule 12(b)(6), F.R.Civ.P. The Court heard oral
cn September 17, 1985. Based upon the files, briefs, affidavits,
arguments of counsel, and all other matter 5ubmitted. the Court grant&
P152ntiff's motion for preliminary injunction and denies defendant's motion for
d15MI53al.-
Baci,ground
For all purpozes relevant to these
collecting, selecting, compiling and motions, West is engaged in the business of
reporting the judicial opinions of state
and federal courts. West arranges these opinions into a series of books
collectively known as the *National Reporter System' publications. Each case
report West publishes (West report) is a5signed to one of the individual
within the overall National Reporter System. This is done an the basis series
c6urt and/or subject matter of the opinion. West reports are further of
categorized, arranged and assigned to a voluiqe within the series. The volumes
ar p&ge! are then sequentially numbered to allow detailed reference to West's
re:;ort--. The e-act location of each West
report in the overall arrangement of
case re;-rt5, car. be found ("cited") by 5tating the volume number, series
a-ib page number of the report. West represents that upon
-,,-,1eiicn of each volume it registers a copyright claim 6tith the Register of
Cc; and receives a separate Certificate of Registration. (See,
Plfic6,it of Arncld 0. Ginnow; Affidavit of Darrin Pepper.) Copies of the
Ce-t:tizates of Pegi5tration were provided during argument of the
-157S ,-etent mciion. For purposes Of this decision, the
are nCt in question. vaiidity of the
11) Tre [our! tales nDtice of West's succe5s in its field. Judicial decisions
a-a rcutinely identified by the names of the parties and the West citation,
:.e. series designation, and first page of the opinion.
and oceratee LEXIS, a computer-a351sted legal research
ccrtairirg deZ1!10n5 Of state and federal courts (LEXIS reports)tool in its
::51EC65c. Tne judicial opinions 5tored
in the LEXIS database note the
c:taticnE to tne first page of the judicial opinions as reported in We5t*s
Sy5lem. This is done by di5playing at the tos) of the LEXIS
screen a West series designation, volume number, and page number on
tre opinion begins.
1 Of MDC announced its plan to include *star Pagination' within
H

,r,e te-i of repcrt5 by October of 1985. MDC's announcement and

sutseQuent adverti5ement5 of this new feature indicate that star pagination
yp

wili contist of "the addition of the official Page cites to the full text of
Online C65e law material." (See defendant*s Exhibit E.) Star pagination was
a.1rowledged at oral argument to be the insertion of numbers
er

from Waot's
Naticnal Fteporter System publications within the body of LEXIS reports.
This
will permit the LEXIS U5er to determine the West page number coinciding with
La

tne te.,t of a LEXIS report taken from the LEXIS screen or computer printout,
wittout the phy5ical neces5ity of referring to the volume of the National
Fecvrier Syste pumlication in which the report appears.
w

We5t claims that MDC'3 intended 5tar pagination conalitutes an appropriation

cf We5i's comprehenBive arrangement of cast reports in violation of the
COPR. (C) WEST 1992 NO CLAIM TO OR16. U.S. GOVT. WORKS

HLC 00012266
 267

16 F.Supp. 1571 - PfiGE 9

Cite as: SIS F.Supp. 1571, *IS75)
Copyright Re,ision Act of 1976, 17 U.S.C. 5 101 et 5eq. On this basis, West
this preliminary injunction to enjoin MDC's alleged infringement.
DitCU5sion
[Z][3] The factors to be con5idered in the decision to grant or deny a
preliminary injunction are 5et forth by the Eighth Circuit in Dataphase
Sy5tem5 Inc. v. C.L. Systems, Inc., 640 F.2d 109 (Sth Cir.1981). Datephaiie
mandated an analysis of the probability of the movant's success on the merits;
the threat of irreperabie harm to the movant if the preliminary injunction is
denied; the balance between this harm and the harm the preliminary injunction,
if granted, would cause to the other party; and the public interest in
granting or denying the preliminary injunction. No one of the above factor3
determines whether a preliminary injunction should issue. Rather, the equities
must be balanced to achieve a just determination. Id. at 113, 114.
I. West's probability of success on the merits.
[4)[S) West's probability of success on the merits at trial depend5 an the
validity of its copyright infringement claim. West claims that its N4tional
Reporter Svstem publications are protected by copyright. At the hearing of its
motion lJest presenied certificates of copyright registration for each of its
reporter volumes. A copyright registration generally constitutes prima facie
of a valic copyright. 17 U.S.C. s 418(c); Eckes v. Card Prices
Upuete, 36 859, 861 (2nd Cir.1984). Defendant has the burden of
c-erco-.:r th.z presumption. Southwestern Bell T. Co. v. Nationwide Ind.
Dir. Ser,.. Inc., 371 F.Supp. 900, 905 (W.D.Ark.1974).
Neither party questions that some parts of West's National Reporter System
pati.cation5 are appropriate subjects for copyright protection. The focus is
n :hich portion5 of those publications are under the protection of the
laws. West claims that its arrangement of cases in its volumes and
tne re-,e numver5 it sets forth can be copyrightod. MDC denies West's claim.
ine Court f:ncs two cases of particular interest and importance in providing
oIS76 6r anelyiic framework in which to consider the claims of the parties.
Tme, a-e Ca-a;nan v. Myers, 128 U.S. 617. 9 S.Ct. 177, 32 L.Ed. 547 (1896)
an Een, 5 Le': Fub. Co. v. Lawyers Co-operative Pub. Co., IS9 F. 386 (2nd
It is to these two cases that the Court must first turn.
In callegv.&r. the plaintiff, Mayers. become the ownor of several volumes of
tne re:crii of the Supreme Court of the State of Illinois. These volumes were
re;:arecc L, and acquired frop, the official reporter of the Supreme Court of the
o; ':Iincis. The volumes contained not only the opinions of the Court,
H

b &Isc c:nEiderable matter original to the reporter including the title page,
,atie of ce5et, headnotes, statements of facts, arguments of counsel, indices,
yp

etc. The Court held that all the matter in the law reports, excluding the
opinions cf the Court, were the appropriate subject matter of copyright
proteztion. Callaghan, 128 U.S. at 647, 9 S.Ct. at 184 '
er

The Court in Callaghan specifically delineated the caprightable portions of

tht law reports, 5aying:
La

Sucr, worl of the reporter, which may be the lawful subject of copyright,
comprehends ... the order of arrangement of the cases. the division of the
reporit into volumes, the numberinQ and paging of the volumes, the table of
w

ca5es cited in the opinions, (where such table is made,) and the subdivision of
the indep. into appropriate, condensed titles, involving the distribution of the
subjects of the various headnotes, and cross-reforences, where such exist.
COPR. (C) UEST 1992 NO CLAIM TO DAIS. U.S. GOVT. WORKS

HLC 00012267
 268

. ; z . z -p . 1S71 I LI
Ci t e as: 616 F.Supp. 1571. -IS76)
Em;nasis eoded).
Callagnen, ZS U.S. at 649. 5 S.Ct. at 165.
[6, It 15 clear the Supreme Court found that under appropriate circumstances
paginatior. and arrangement ascend to a level appropriate for copyright
prc-tection. If the arrangement of cases and the paging of the book depend
simnly on the wiil of the printer, or the order in which the cases have been
decided, or upon other accidental circumstances. they of course are not 3ubject
to ccpyrighi protection because they then involve no labor, talent, or
judg-ient. Callaghan, 128 U.S. at 661, 662. 9 S.Ct. at 189, 190.
[71 West's comprehensive arrangement of caaes satisfies the Supreme Court's
Cs!laghan test of labor, talent, and judgment. West collects cases froM
every state and federal court in this country. West does not then 5imply take
any cases it has on hand, put them together in any order, and bind in a
hardbaci, volume. They first separate 5tate court decisions from federal court
decisions. The 5tate court decisions are further subdivided into reoions and
placed in a regional reporter appropriate for the cost in question. The
federal deciBions are divided at the district court and appellate court level.
LiEtrict court decisions are further 5ubdivided according to the subject matter
cl tne decition be they bankruptcy, federal rules or other miscellaneous
This comprehensive process involves considerable planning, labor,
ta:ert, ent judDment on We5t*s part.
rcr it5 propoEltien that the arrangement and pagination of We5t*a National
Pe;crie are nDi appropriate subject matter for copyright
p-iezticn. MDC relie5 primarily on Banks Law Pub. Co. v. Lawyers Co-
rze-etile Pub. Co., 169 F. 386 (2nd Cir.1909). In Banks, the plaintiff was
the to the official reporter of the United States Sup-eme
r:jrt. ie engaged in the busine55 of printing, publishing, and selling the
cecitaor-. es comPiled, eclited and arranged by the official reporter.
E

-ne aefencent we! in the buEine5s of printing, publishing and selling a

of the Supreme Court's decisions. Plaintiff claimed that
t ecition infringed Its copyright since the arrangement of cases in
- as well as the division of the decisions into volumes were
et ir. pleintiff's Plaintiff also claimed that defendant's
ec:t:c-n star pa;inated to plaintiff*5 official reports. The Court held that
.he cffi:-,a. repDrter'5 arrangement of cases within his volumeb #IS77 and
*.ne pa;:nation of those volumes were not appropriate subjects of
protection. Banks, 169 F. at 390.
Tr..! ' findt tneA MLIC, in relying upon has chosen a fragile barl,
H

;cn -n;cn zz- 5til tne rocky shoals of copyright law. While is offered
fcr the p-zposition that "mare* pagination and arrangement do not rise to a
yp

czgnity sufficient to justify the grant and protection of a copyright, this

es5ertion bears further 5crutiny. In Banks. the Court dealt with the righta
of the astignee of the official reporter, whose statutory duty it was to report
er

!Me atC1510n5 Of the Supreme Court. He was required, by law. to organize them
intc olvmee, and have them printed and published. According to the Court, it
La

L,as the reporter's statutory duty tO 5UPPlY paging for the volumes together
it- an crderly arrangement of the cases. Banks. 169 F. at 389.
claims that any distinction between the official or unofficial status
w

(C-) MD-1-

cf ine Court's reporter is trivial. This Court disagrees. The Banks Court
emphesized the cfficial nature of the reporter's duties and declined to flatly
COPR. (C) WEST 1992 NO CLAIM TO ORIG. U.S. 60VT. WORKS

HLC 00012268
 269

iz- IS7' FAH 11

Cite as: E16 F:Supp. 1571. *IS77)
dery copyrighi proiection to pagination and arrangement. 'In my eatimatior.. no
.611d copyright fOr these elements or details alone can be 5ecured to ttie
c 'f ic ial reperter. - - - [Aln action for infringement does not lie if the
aefendant*5 asserted wrongdoing simply consisted of reprinting the decisions of
the ccurt with the paging. (Emphasi5 supplied)." Banks, 169 F. at 390,
-!. Tne Court could easily have said. "We hold that copyright protection may
n;t be had for printed arrangement and pagination.* Why did it not do to?
The answer lies in the inherent nature of printing when one Is mandated to
cfficially record a court*5 decision. The raw (3lip) opinions must be collated
and arranged. They then must be placed with a printer whose selection of
typefece and page 5ize dictate a certain nufnber of words or line5.for each
page. Each page must be numbered 5eQuentially. When one is mandated C&B an
official reporter) to perform these functions, the result Is not an exercise of
independent judgment or discretion. The arrangement and pagination inhere in
the official process and become part of the public dopkein. For a person who
stends in this official position, no copyright protection can be granted for
arrangement or pagination.
The holding in Sani,5, then, does not stand for the proposition that
arren;emeni and pagination are not copyriohtable per se. Rather, it indicates
inat when recwirec to do so by law, those labors do not reflect any independent
jj=gmert o- discretion and as 5uch become part of the public domain. BanKs
cce! not rchiDii West Publishing Company from obtaining a copyright in the
4;lne!ID-, or ar,angement of its publications. West is not the official
rep:,ter for any court in th15 country nor iB it reQuired by 5tatute to arrange
=t;t itt olumes. It does these things of its own initiative expending
lator, talent, and judgment in the process. West's page numbers
e-z it! arrengemeni of cases are nece5sarily within the scope of copyright
crctecilcn.
[E', If in.!z were not so, one could not collect Shakespeare's plsy5--themseive5
nci to cc;oyright--into a copyrighted work. See, 17 U.S.C. s 103.
---ecne - -er!lcr of the bible would be able to be duplicated by another.
ee, !7 V.i.C. 5 103. One could photoduplicate them in whole without
c-:,,e.-t;cn. w,y are theie works subject to copyright? Because while the baae
liez in tne public 5pnere, the arrangement and pagination of this public
eje-ja; reflezts thC 5till, discretion and effort of the person crafting the
e-ran-ement .
int Ccurt feelt it appropriiste to indicate its belief that neither
H

*r.e C;Ila;nan Zeurt in ISES, nor the Banks court in *1578 1909, could
:!!itl ' v heve ccriiiaered the effect of the computer with Its nearly infinite
yp

in;ormeti,cr-r5thering capability. There now exist5 a cybernetic technology

wnizh will random access the entire body of decisional law in a unified
oatabe5e. Wnile matching arrangement and pagination once may have made one
er

worl pe-allel to another, it now enables one work to be totally ingested into
e,cther. These facts beggar a simple one-to-one analogy between one printed
La

format and another. The courts in Callaghan and Banks could not have
reali=ed trat the taking of an arrangement or page numbers from a collection of
C:S!eS OL'50.'UtelY oo away with the underlying work.
w

Eased cn the fcregDing, this Court finds that Callaghan supports and Banks
CZt5 not te, copyright protection for West'B laboriously prepared, voluntary
arrangeneri Of Cates.
COPR. (C) WEST 1992 NO CLAIM TO ORIG. U.S. GOVT. WORKS

HLC 00012269
 270

-!E F.Supp. 1671 PA&E 12

'Cite as: 616 F.Supp. 1571. *1578)
Eeyond of ca5elaw, this Court finds further rea5on to extend
copyright protection to We5t'5 arrangement and pagination of its law reports:
There is an additional contribution by West Publishing Company which goa5
beyond the simple copyright which exists for their editorial work. The genius
of this worV is that it is self-inde.ing. rFNll By assembling cases as they
have been arranged In sequenced volumes, a case can be indexed by following its
name with a volume number, series designation, and page number. In fact. this
is the most common method of referencing cases in the field of Itgal research.
By this device, the case of United State* ex ral. Miller v. Twomey, consisting
of 5everal printed pages, and issued on May 16, 19739 by the Seventh Circuit
Court of Appeals, is transformed.
FUl. The significance of thi5 indGKinC function 15 seen by the fact that
another whole anterpriset Shepard's Citationso has boon established which
inde.,e5 West's internal indax. This Is not unlike the system dealt with
in New York Times Co. v,. Roxbury Data Interfmce, Inc., 434 F.Supp. 217
(D.N.J.1977). This has proven to be an invaluable tool for promoting legal
research.
1101 The statement of the mere existence of the case of United States ox ral.
Miller v. TwDmey, standing alone is useless. It Is useless because that
deciticn. as itsued, connot be accessed. Its voice is silent, and its
teachings are unheeded. This is so, as long as no person. beyond the Seventh
Circwii Court &I author. errange5 it in accessible form and indexes the case.
Irterestirlly, both parties to the present cause have done so. It to mutually
as accese:ole in both LEXIS and the West publications. For ntither party is
trie ceci5ion Itself susceptible to copyright, since It is the Low as expounded
by the Seventh Circuit Court of Appeals. In LEXIS, the case, in full text, is
avaiiable by keying in appropriate signals to a computer in the memory of which
the decision is meld.
Or, yo can refer to it as 479 F.2d 701.
.,at cocE 475 F.2d 701 mean? It means that the decision is found on the
seven-huncrec-end-fir5t page of the four-hundred-seventy-ninth volume of the
ee-ond teries of the Federal Reporter, according to West Publishing Company's
0'rengen-ent of cases.
The We:t publishing Company's arrangement is a significant work of skill and
enterprise which is itself entitled to copyright protection. 17 U.S.C. s
H

IC3. Tnot r-rotection has been properly perfected and is of a nature cognizable
in thI5 Court.
yp

Thiz 5ei arrangement is either a virtue or a defect depending on how it is

Viewea. LEXIS hold3 as one of its strengths in the morketplact. that unlike
the West Company's static arrangement, in LEXIS a case*s location is variable.
er

Where the case is forever locked in Volume 479 of West's Federal second
volume5. in the LEXIS system It is computer accessible at any time. It may be
La

random accessed in any order, preceded and followed by whatever cases the mind
and 5kills of the legal researcher compels. Dofendant's Memorandum in
Opposition to Plaintiff'5 Preliminary Injunction Motion. at 13..
w

&1579 LEXIS has long noted at the beginning of each of its cases the *cite*
to the West Publishing Company's arrangement. This West acknowledges
65 a fair use of its copyrighted material. Plaintiff's Reply Memorandum of Law
COPR. (C) WEST 1992 NO CLAIM TO ORIS. U.S. GOVT. WORKS

HLC 00012270
 271

E F.Su;z. !S71 P66E lZ

:lte as: 616 F.Supp. IS71, *IS79)
in cf Motion fcr Preliminary Injunction, at 17; 17 U.S.C. 5 107. it
be ncied. parentmetically, that th15 is not necessarily altrul5V, On
,e5j 5 part. That cite calls a researcher to West's bOOk5--which they are in
zu!ine5! t,' Etll &5 6'ell a5 create.
flil Eut this ca5e turn5 on whether or not the succeeding page number5
tremEelye5 are protected by copyright, even if the overall arrangement i5 a
zopyrightatle entity. Th15 Court hcId5 that they are so protected.
EIZI In the pre5ent case, the text of the decision5 is held in both the bound
.clumes of the Uest arrangement and the computer memory of the MOC access
ieviceb. IFN23 AB such the body of the deci5ional law in our courts is equally
accessible to both partie5. But the Court finds that the use of the second and
5ucceeding number5 following the initial citation to We5t's arrangement, the
5o-called "jump cite" (i.e. 479 F.2d 701, 702 ). infringes on West's
copyright. It doe5 so becau5e it Uoe3 beyond fair use. Once one ha5 access to
the MO date base, u5ing the LEXIS keyboard, one has the full text of the
opinion. Once one has the jump cite, one h&3 accoss to the copyright-protected
arrangement as delineated by We5t Publishing Company.
FN2. While the parties may, at this early stage of the litigation di5pute
whether or not the precise worc15 of each decision are exactly the 5ame or
ary Ei;nificantly fror. West to MDC, for the purposes of thi5 opinion, the
Ite,ts cf -,he decision are rager-ded as sub5tantially identical.
immet;ate aCCC55 to the jump cite, there is instant access to West's
,h:,e arren;ement; you never again need to purchase West*5 books in the
t get each and every a5pect
' of We3t*5 copyrighted arrangement of
:25e!. Th!5 iE the instance 6-hen '... a use that supplants any part of the
ns-nel ma-t.el fcr a copyrighted wort. would ordinarily be considered an
:nfrirge-ert.' Senate Report [No. 94-4731," cited in Harper & Row Publisher5
tvz!ion U.S. 105 S.Ct. 2216, 223S, SS L.Ed.2d 588
Tre ccwputer "owns" We5t*5 copyrighted arrangement.
ML- e-;,je5 that We5t's effort to claim copyright protection for 13age
iz an attempt ic copyright a numbering system. Thi5 ergument is a
rtDC u-pe5 that the pagination of West's volumes i5 simply a
cf aratic numbers, in serial order commencing with %" and
11--ougl L, booL. Of cour5e thi5 13 so, but the statement is
"t 15 be)ond that one cannot copyright the arabic numbering
H

i-I But as 15 Been above, this is not just a 5ei-ies of

U.S.C. s IZ2.
ee:1r ri5ing b one over its predece5sor, it is the basi5 of the We5t
yp

to the 5elf-inde. by which West's arrangement is

cce!5eo. Th15 15, the Court finds, what 15 meant by the words "taken a5 a
in the copyright definition of "compilations'. 17 U.S.C. 5 101. The
er

scpr.:stry 15 apperent when one considers that just as one cannot copyright the
i-ranic number, 5o one cannot copyright the Latin alphabet or the English
La

if MDC*s argument were to be taken seriously, West*a headnates and

:ase e)nDpses would be 5u5ceptible to MDC*5 computers, too. They are all
of Latin ietter5 and words in the English language.
w

West h&5 made an aaequate showing, for Dataphase purpose5, that its National
;eporte- Sy5iem publication5 con3titute a copyrightable arrangement of which
tre and pagination of its Yolumes are a part. Since West's claim
COPR. (C) WEST 1992 NO CLAIM TO ORIG. U.S. 60VT.

HLC 00012271
 272

.z 1E71 PAGE 14
Zite as: SIS F.Supp. 1571, *1579)
tnet it ha! copyrighted these publications is not currently disputed, West has
the e,.c1,j5ive righi to reproduce and distribute this arrangement. 17
j.S.C. s los.
1143 MUC claims that its 5tar pagination will not infringe Went's
arrangement #1580 because its random generated arrangement in entirely
different from West's arrangement. It argues that 5ter pagination will not
oring the arrangements closer together. But for infrinoement purposes, MDC
need not physically arrange It's opinions within its computer bank in order to
-eproduce West's protected arrangements. EFN31 '(Dlataba5e3 are simply
automated COMPIlat2on5--collections of information capable of being retrieved
in various forigs by an appropriate search prograti ... Ellt 15 OftOn Gen5elOSS
to 5eei in them a specific fixed arrangement of data." Rand McNally & Co. v.
Ieet Management Systems, 600 F.Supp. 933, 941 (N.D.111.1984). This Court
finds that MOC will reproduce West's copyrighted arranooments by systematically
in5erting the pagination of West's reporters into the LEXIS database. LEXIS
w5er5 will have full computer access to West's copyrighted arrangement.
FN3. In a sense, the whole concept of serial order In a computer memory is
In LEXIS, the "opinions" are actually only recorded,
aCCet51ble, electronic impulses.
11E) MCC claims tnot ever. if its star pagination would otherwise constitute
it ie legal fair use under 17 U.S.C. a 107. This provision
orc-:de5 am foliow5:
7;me fai, use ef a copyrighted work for purposes such as criticism, comment,
re, repzriing, teachino, ... scholarship, or research is not an infringement
cf cc:;.yrignt. lr. determining whether the use made of a work in any particular
came it a fair use the factors to be con5idered 3hall include--
me p,,-cc-5e and character of the use, including whether such use is of a
cz-e-cia; nature or Is for nonprofit educatibnal purposes;
-re retwre of the copyrighted work;
ttie and 5ubstantiality of the portion used;
the e;fect of the use upon flie potential market for or value of the
cc;,,rigniez
L,;:sn contiaeration of lhe statutory factors, this Court concludes that MDC'5
;rAen:;td !tar pejination does not constitute fair use.
1. Furpcze and charecter of the u5c.
V-7: azinowledges that it hopeB to introduce star pagination to enhance its
H

ir. the marietplace. In other words, MDC's star pagination is a

yp

:cmre-:181 use intended for profit. The Supreme Court in Harper L Row
v. Notion Enterprises, --- U.S - ----- 105 S.Ct. -218, 2.-31. es
L.E;.-d SBE '1985) indicated that such a use tends to weigh against a finding
er

of fa-,r use. commercial u5e of copyrighted material is presumptively

an unfair cf the monopoly privilege that belongs to the owner of
La

tne copyright." Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417,
451, 104 S.Ct. 774, 793, 78 L.Ed.2d 574 (1984). Therefore, considering MDC's
5t6te= purpcee of star pagination, it is difficult to find a fair use.
w

Nature of the copyrighted work.

EIE' Ori;.mal worl:5 are generally accorded a higher degree of fair u5e
prcte:tion then that granted to compilations. Harper & Row Publishers v.
COPR. (C) UEST 1992 NO CLAIM TO ORIS. U.S. GOVT. WORKS

HLC 00012272
 273

'E F.Supp. !E71 F6GE IS

Cite as; 616 F.SuPP. 1571, -1590)
Enie-Pri5e5, --- U-S - ----- 105 S.Ct. 2.218. 2?32, 85 L.Ed.2d 588
While the fact that the protected worL is an arrangement might
Otherwise mitigate in MOC'5 favor, fair use claims involving compilations
been rejected. See, e.g. Schroeder v. William Morrow & Co., 566 F.2d 3 (7th
Cir.1977). This 15 eSPeCiallY true when the purported fair use 15
comme-cial. Financial Information, Inc. Y. Moody's Investors, 751 F.2d 501,
SOQ Cir.1984). As acknowledged at argument, 5tar pagination is being
:n;roduced to increase MDC's revenues, and enhance Its market position. Under
this facior, it cannot prevail on it5 fair use clai".
3. Amount and substantiality of the portion used.
MDC claims that West's page numbers constitute a miniscule portion of the
total #1581 material contained in a given volume of a West reporter. While
this may be true, it 15 not necessarily enlightening. When viewed in the light
of MOC's intent and ability to expropriate each and every page number from each
and every volume of West's reporters, the appropriation takes on a greater
magnitude. This Court holds, above, that this "small amount* is the key to the
WeEt arrangement.
[171 Th15 Court is convinced that MDC's star pagination of West*a arrangements
is both quantitatively and qualitatively substantial. 15olated instances Of
minor infringement5, when multiplied many times, becorte in the aggregate a
r8jcr intrusion upon the copyrighted material and must be prevented.
re-per & ROW FUb!15her5 v. Nation Enterprises, --- U.S - ----- 105 S.Ct.
22_iE. Z:'3S, 6:5 L.Ed.21d SOS (1985). BY taking We5t*5 PaQe numbers, MOC Is
te,ing wett - arrangement JU5tifying the grant of a preliminary injunction.
4. Effect of the infringing use on the market.
Ttie final factor to examine in determinLng the validity of MDC's fair u5e
:1jim 1 the el-fect that 5tar pagination will have on the market for West
Pepo-ters. The fair use doctrine has always precluded a use that supersedes
tnt u5e cf the original. Harper & Row Publi5hers v. Nation Enterprises, ---
L:.S. IOS S.Ct. Z:16, 222S, 2226, BE L.Ed.2d S88 (ises). If both
5 art defendant's works are uBed for the same purpose and they
tre same function in terms of actual or potential customer der.and, then
fal- ,5e cannot be found. Metro-Goldwyn-Viayer v. Showcase Atlanta Co-op
-S 351. 361 (N.D.Ga.1979).
Tnere can be little doubt that MDC'B incorporation of West's page numbers intc
tr,e LE,1S -epcrts dat6b&5e will supersede a 5ubstantial use of West's hard
b-,und vclumes of reporters. Although each is a different medium, both MDC'5
H

co,pute?-5 ant We5i'5 boois, serve the function of providing the text of
juticia,' cpinion5 to the public. MDC'5 star pagination will 5upplant the need
yp

fc, we!t'E t.atiCnal Reporter System publications; this is not a fair u3e.
[151 mED: na5 thus far failed tO 5how that its proposed star pagination is not
a tating, cf West's copyrightable arrangements, and MOC haB not established that
er

5t8!- pagination constitutes a fair use. For Dataphase purpo5e5, West has
It's
met the tett of probable success on the merits in its claim of copyright
La

infringement.
11. The threat of irreparable harm to West if the preliminary injunction is
aenled.
w

in c,der for a p-eliminery injunction to issue in this case, West must 5how
that it w1il be threatened with irreparable harm if the preliminary irijunction
is aen2ed. This Court finds that West hae made the required 5howing of harm,
COPR. (C) WEST 1992 NO CLAIM TO ORIG. U.S. GOVT. WORKS

HLC 00012273
 274

a s-li
C-i t a asi iiG, F.Supp. 1571. 01581)
PAGE 16

for Detaphase purpo5es.

[20JE711 The general rule in alleged copyright Lnfringement cases is thai, for
e rel;minary injunciion notion, irreparable injury is presumed once the movant
he: established a prima facie case of copyright infringement. Video Views,
Inc. v. Alexander, No. 4-84-623, slip op. (D.Minn. Feb. 19. 1985);
tiorthweitern Bell Tel. Co. Y. Sedco of Minn., Inc., 501 F.Supp. 299, 303
(D.Minn.1980). Although this Court has noted that the genaral rule is more
commonly applied to copyrighted materials other than compilations. it
nonetheless recognizes the presumption when tho oqovant has a strong claim for
copyright infringement. Northwestern Bell, 591 F.Supp. at 303. This Court
Sets forth its,holding that West has made a strong) claim for copyright
infringement. Therefore, the presumption of irrepariible harm can be applied.
Even if the Court did not apply the presumption of irreparable harm, it is
apparent *1582 tnat West has still Piade the necessary showing of harm for
Dataphase purpo5es. If the defendant's use of plaintiff's copyrighted
product may materially reduce the demand for West's product, a sufficient
5hOWIng Of irreparable injury for preliminary injunction purposes has been
made. Wainwright Sec. Y. Wall Street Transcript Corp., S58 F.2d 91, 94 (2nd
Cir.1977). West has asserted by affidavit that star pagination may reduce the
need for its services and, in fact. claims that cancellation of a subscription
to We5t'S low repcrt5 has already occurred as a result of MOC's impending star
oagination. See, Affidavit of Thomas A. Woxland. Therefore, West has made the
requisite showing of irreparable injury.
III. T" harm to West if the injunction is denied compared to the harm to MDC
if the injun-tion is granted.
Daiepne5e r;qjire5 balancing the harm inflicted by the grant of a
oreliranary injunction against any harm that will result from its denial. At
oral ergumeni on this 5ubject. the principal harm suggested by MDC is loss of
nerlet swpremacy for its having achieved this claimed advance in legal
re5ear:!h. Inert was also a possibility that West might use the delay caused by
an injunctior. tc develop its own star pagination technique. This Court finds
t .el neithe- poattion is substantial enough to seriously weigh in the Dataphose
oa I ;r, c.
EZZ', --re marlei supremacy claim is easily dealt with: this Court finds that
any ma,;et supremacy which MDC has Generated is a function of its ability to
infrinQt a This the Court will not protect.
127-1 6E to MOC's second claim, it is true that We3t has a computer assisted
H

le;tl retee-ch 5ystem 5imilar to LEXIS known as WESTLAW. MDC states that
L,Ez7Lhv does nct have a 5tar pagination feature and indicates that if a
yp

preliyina,y injunction is issued, West will have time to develop such a

feetore, inus destroying any market lead time MOC vqai have had in introducing
Eter pagination. This claim is speculative at best. MOC cannot possibly know
er

whal features We3t intends to introduce in its WESTLAW system. Even if West
were to 2niroduce a star pagination feature, it should be noted that We3t would
La

be referring to its own page numbers, from its own volumes of law reports, from
its own National Reporter System publications. MDC has failed to show that any
5PeZU18tive harm to it will outweigh the probable harm to West.
w

IV. Fublic Interesi.

(241 The final factor to con51der in determining whether a preliminary
injunction 5hould is5ve under Dataphase is the public interest in granting or
COPR. (C) WEST 1992 NO CLAIM TO ORIG. U.S. GOVT. WORKS

HLC 00012274
 275

;6 P.S-pc. 1E711 F A. & E I

Ci t a as: 616 F.Supp. 1571. -1582)
denying the proposed injunction. The Court finds that the Public interest
favors preliminary injunctive relief.
The Ccnstitution grants to Congress the power 'Itlo promote the progress
Of ... useful arts, by Becuring for limited times to authors ... the exclu5ive
right to their respective writings'. U.S. CONST. art. I. sec. 8, cl. 8, This
is a means by which an important public purpose may be achieved. It is
intended to motivate creative activity by the provision of a special reward,
a-id eventually allows the public total access to the products of their genius
efter ihe limited period of exclusive control has expired. The monopoly
created by copyright thus rewards the individual author in order to benefit the
public. Harper & Raw Publishers v. Nation Enterprises, --- U.S ----- 18S
S,Ct. 2218, 2223 (1985). -
Without the economic Incentive to create which
copyright protection provides, this incentive and the advantages it creates for
the society may well be lost.
MOC in Its briefs and memoranda finds it both 'ludicrous' and 'absurd' to
believe that West would abandon its currently lucrative business if copyrioht
protection was not extended to itB page numbers. Considering, however, that
MDC's star pagination may do away with the need for West's *1583 reporters.
this conclusion is not so hard to believe.
MDC claims that the public Interest favors denying a preliminary injtjnction
because Its intended star pagination would give judges. lawyers and citizens
freer access to the entire body of law. That is, the public need for access to
the law, which is currently embodied in West's publications, 5hould reduce or
eliminate West's exclutive rights in its material. This Court is not
porsuaoed. In dealing with a similar a5sertion, the Supreme Court in
Harper & Row Publl5hers v. Nation Enterpriaes, --- U.S. ----t 105 S.Ct.
ZZIE, 2ZZC, ES L.Ed.2d 588 tiSSS) stated that:
it it funce-mentally at odds with the scheme of copyright to accord lesser
rigmit in tnose works that are of greatest importance to the public. Such a
rcticn ignores the major premiee of copyright and injures author and public
aliie. 'ETIc propose that fair use be imposed whenever the 'Social value [of
, ic n! ... outweighs any detriment to the artist,* would be to propose
copyright cwners of their right in the property precisely when they
enco"rier those users who could afford to pay for it.' ... 'If every volume
that "! In the public interest could be pirated away by a competing
puti.sner, ... the public [soon] would have nothing worth reading."
As the Supreme Court males clear, reducing copyrlght protection to works of
H

Public Import would create an economic ditlinsentive to create the work which
ultimately the creation of theae very works. Therefore, the
yp

public interest mandates that MDC's star pagination be restrained.

Con: 1,.;si on
1253 Fased upon the above analy5is of the factors necessary for a preliminary
er

injunction under Dataphase Systems, Inc. v. C.L. Systemsv Inc., 640 F.2d 109
(Bth Cir.1981) and for the reasons 5et forth herein,
La

IT IS ORDERED that:
1. Plaintiff's motion for a preliminary injunction pursuant to Rule 65,
F.R.Civ.P. Is granted.
w

2. Thit preliminary injunction shall be effective upon the plaintiff's filing

with the Cierk of this Court a bond pursuant to Rule SS(c), F.R.Civ.P., in the
amount of $100.000. 1

COPR. CC) WEST 1992 NO CLAI 10 DRIG. U.S. 60VT. WORKS

616 F.Supp. 1571
(Cito as: SIG F.Supp. 1571, *1583)
3. Defendant's motion to dismiss plaintiff's co"plaint pursuant to Rult
12(b)(6) of the Federal Rules of Civil Procedure is denied.
END OF riOCUMENT
COPR. (C) WEST 1992 NO CLAIN ORIG. U.S. GM. WOUS

HLC 00012275
 276

WEST PUBLISHING
COMPANY. Appellee.
V.

MEAD DATA CENTRAL,

INC., Appellant.
No. 85-53q9.
United States Court of Appeah,
Eighth Cimuit.
Submitted Feb. 11, 1986.
Sept. 4, 1986.

West Publishing Company brought ac-

tion against computerized legal research
service, alleging copyright infringement in
service's proposed use of WesVs armnge-
ment and pagination of legal reports. The
United States District Court for the Dis-
trict of Minnesota, James M. Rosenbaum,
J., 616 F.Supp. 1571, entered preliminary
injunction against service, and it appealed.
The Court of Appeals, Amold, Circuit
Judge, held that: (1) Weses particular ar-
mngement of legal decisions was entitled
to copyright protection; (2) service's whole-
sale appropriation of pagination from
Weses legal case reports would infringe its
copyright in arrangement; (8) West would
suffer irreparable harrn from services in-
H

fringing action; and (4) West was entitled

to preUminary injunction against service's
yp

use of page numbers.

er

Afftrmed.
John W. Oliver, Senior District Judge,
La

sitting by designation, concurred in part,

dissented in part, and filed opinion.
w

1. Injunction 4-13&21
Whether preliminary injunction should
issue tums upon four factors: probability
that movant will succeed on merits, Ukreat
of irreparable harin to movant should pre-
liminary injunction be denied, balance be-
tween this harm and harm that gmnting
injunction will cause to other parties liti-

HLC 00012276
 277
1220 799 FEDERAL REPORTER, 2d SERIES
gant, and public interest; none of these
factors by itself is deterrninative, but in
each case, factors must be balanced to de-
terrnine whether they tilt toward or away
from granting injunction.
2. Federal Courts e=415, 862
On appeal, Court of Appeals may not
disturb district court!s balancing of equities
in determining whether to grant prelimi-
nary injunction, absent clearly erroneous
factual determination, error of law, or
abuse of discretion.
3. Copyrights and Intellectual Property
4=12
Standard for "originality" requisite to
copyright protection is minimal; it is not
necessary that work be novel or unique,
but only that work have its origin with
author, i.e., that it be independently cre-
ated, and little more is involved in this
requirement than prohibition of actual
copying. 17 U.S.C.A. § 102(a).
4. Copyrights and Intellectual Property
-8---12
To be original work of author, and
thus subject to copyright protection, work
must be product of some creative intellec-
H
tual or aesthetic labor, however, very
slight degree of such labor, and almost any
yp
ingenuity in selection, combination, or ex-
pression, no matter how crude, humble, or
er
obvious, will suffice. 17 U.S.C.A. § 102(a).
La
5. Copyrights and Intellectual Property
4-12.2
w
It is possible for arrangement of
preexisting materials to be independently
produced work of intellectual creation sub-
ject to copyright protection. 17 U.S.C.A.
§§ 101, 103.
6. Copyrights and Intellectual Property
4-12.2
Armngement of opinions in legal case
reporter, no less than compilation and ar-
mngement of Shakespeare's sonnets, can
qualify for copyright protftdon. 17 U.S.
C.A. §§ 101, 102(a), 103.
7. Copyrights and Intellectual Property
4=14
There is no per se rule excluding legal
c"e arrangement from copyright protec-
tion; in each case, arrangement must be
evaluated in light of originality and intellec-
tuai creation standards. 17 U.S.C.A.
ff 101, 102(a), 103.
8. Copyrights and Intellectual Property
t-14
West Publishing Company's arrange-
ments of legal decisions in its reporter ser.
ies, including intemal page citations, were
original works of authorship entitled to
protection; arrangement of deci-
sions was original with West which exer.
cised considemble labor, talent, and judg-
ment in organizing its compilations. 17
U.S.C.A. §§ 101, 102(a), 103.
9. Copyrights and Intellectual Property
e=59
Computerized legal research service's
wholesale appropriation of page numbers
from West Publishing Company's legal
case reports would infringe West's copy-
right in its particular arrangement and pre-
sentation of cases by permitting users of
service to discern precise location in West's
umngement of particular portion of case
viewed on computer. 17 U.S.C.A. §§ 101,
102(a), 103.
10. Copyrights and Intellectual Property
e-53
Work which infringes copyright does
not lose its infringing nature merely be-
cause consumers rnay find it uneconomical;
author's rights in copyrighted work protect
author not only against infringing works
less expensive than original, but against
more expensive infringements as well.
11. Copyrights and Intellectual Property
4-59
Names, addresses, and phone numbers
in telephone directory are "facts," and,
though isolated use of these facts is not
copyright infringement, copying each and
every listing is infringemenL
HLC 00012277
 278

WEST PUB. CO. v. MEAD DATA CENT., INC. 1221

ate " 7" F.2d 1219 (" Cit. t986)
12. Copyrights and Intellectual Property puterized legal research service's appropri-
e-59 ation of page numbers from West's legal
Computerized legal research service's case reports; West was entitled to copy-
"Star Pagination," by which it proposed to right protection in its particular armnge-
use page numbers from West Publishing ment and presentation of cases, made
Company's legal case reports, would not be strong showing that service's actions
"fair use" of West's copyright in its partic- would infringe that copyright, would suffer
ular arrangement of legal 'decisions. 17 irrepamble commercial harm if injunction
U.S.C.A. § 107. did not issue, and established public inter-
est in protection of original works in its
13. Copyrights and Intellectual Property favor. 17 U.S.C.A. § 102(a).
4=85
In copyright infringement cases in 18. Fe4gral Courts 0-682
which preliminary injunction is soughk Pendency of interlocutory appeal from
geneml rule is that showing of priina facie order granting or denying preliminary in-
case mises presumption of irreparable junction does not wholly divest district
bar7n. court of jurisdiction over entire case; trial
on merits may be held during pendency of
14. Copyrights and Intellectual Property interlocutory appeal.
4=95
For purposes of determining propriety
of preliminary injunction, West Publishing
William E. Willis, New York City, for
Company, which made strong claim that appellant
computerized legal reseamh service's Vance K. Opperman, Minneapolis, Minn.,
wbolesale appropriation of page numbers for appellee.
from WesCs legal case reports would be
copyright infringement, was entitled to pre-
Before ARNOLD and FAGG, Circuit
sumption of irrepamble hami by service's Judges, and OLIVER,* Senior District
Judge.
4etions.
15. Copyrights and Intellectual Property ARNOLD, Circuit Judge.
4-85
H

Mead Data Centmi, Inc. (MDC) appeals

Balance of harms weighed in favor of from a preliminary injunction issued by the
yp

West Publishing Company seeking prehmi- District Court for the District of Min-
nary injunction against computerized legal nesota I in a copyright-infringement action
er

research service's appropriation of page brought by West Publishing Company

numbers from West's legal case reports. (West). WesVs claim is based upon MDC's
La

proposed introduction of "star pagination,"

16. Copyrights and Intellectual Property keyed to West's case reports, into the LEX-
e-85 IS system of computer-assisted legal re-
w

Public interest favored issuance of pre- search.

liminary injunction prohibiting computer-
ized legal reseamh serviee's appropriation
of page numbers from West Publishing
Company's legal case reports.
17. Copyrichts and Intellectual Property
4-85
West Publishing Company was entitled
to preliminary injunction - preventing com-
*The Hon. John W. Oliver, Senior United States
District Judge for the Westem District of Mis-
souri, sitting by designation.
799 F.26-26
For more than a century, West has been
compiling and reporting opinions of state
and fedemi courts. West publishes these
opinions in a serits of books known as the
"National Reporter System." Before it
publishes an opinion, West checks the aecu-
mcy of c:ase and statutory citations in the
opinion and adds parallel citations, pre-
1. T'he Hon. Janits M. Rosenbaum, United Stmes
District Judge for the District of Minnesota.

HLC 00012278
 279

1222 799 FEDERAL REPORTER. 2d SERIES

pares headnotes and a synopsis for the
opinion, and arranges the opinion in West's
style and format. West then assigns its
report of each opinion to one of the individ-
ual series in the National Reporter Systern,
such as Federal Reporter, Second Series
or Bankruptcy Reporter; this assignment
is based on the court and/or the subject
matter of the opinion. Next, West assigns
the case to a volume in the series, further
categorizes and arranges the cases within
the volume, and prepares additional materi-
als, such as indices and tables of cases, for
each volume. Volumes and pages are num-
bered sequentially to facilitate precise ref-
erence to West reports; citing the proper
volume number, series name, and page
number communicates the exact location of
a West report, or a portion thereof, within
the National Reporter System. West rep-
resents that upon completion of each vol.
ume, it registers a copyright claim with the
Register of Copyrights and receives a Cer.
tificate of Registration for the volume.
MDC developed, owns, and operates
LEXIS, a computer-assisted, on-line legal-
research service first marketed in 1973.
LEXIS, like West's National Reporter Sys-
tem, reports the decisions of state and fed.
e-I courts. Since LEXIS's inception, MDC
has included on the fimt computer screen
H
to the portion of an opinion viewed on
LEXIS without ever physically referring to
the West publication in which the opinion
appears.
In response to MDC's announcement,
West brought this action, claiming, inter
alia, that the LEXIS Star Pagination Fea-
ture is an appropriation of West'r, compre-
hensive armngement of case reports in vio.
lation of the Copyright Act of 1976, 17
U.S.C. H 101-810. West sought, and was
gmnted, a preliminary injunction. West
Publishing Co. v. Mead Data Ceniral,
Inc., 616 F.Supp. 1571 (D-Minn.1985). The
District Court held that there is a substan-
tial likelihood that West's armngements of
case rePorts are protected by copyright
law, that MDC's copying of WesCs pag-
ination constitutes copyright infringement,
and that MDC's star pagination is not a
fair use of West's copyrighted works. 616
F-SuPP. at 1575-1581. The Court further
held that the balance of the harms to West
and to MDC involved in granting or deny-
ing a preliminary injunction weighed in fa.
vor of gmnting an injunction, and that the
public interest also favored preliminary in-
junctive relief. 616 F.Supp. 1581-1593.
We affwm.

of each LEXIS case report the citation to

the first page of West's report of the opin- ANALYSIS
yp

ion. West concedes that citation to the [1,21 Whether a preliminary iiijunction
first page of its reports is a noninfringing should issue tums upon four factors: (1)
er

"fair use" under 17 U.S.C. § 107, so these the Probability that the movant will suc-
citations are not at issue here. ceed on the merits; (2) the threat of irrepa-
La

On June 24, 1985, MDC announced that it mble harrn to the movant should a prelimi-
planned to add "star pagination" to the nary injunction be denied; (3) the balance
w

text of opinions stored in the LEXIS data- between this harm and the ham that
base. This new service, named the LEXISgranting the injunction will cause to the
other parties litigant; and (4) the public
Star Pagination Feature, was to be avail.
able to LEXIS users by September or Octo-
interest. Dataph-e Systenw, Inc. v. C L
ber of 1985. This feature would insert SYste-s. Inc 640 F-2d 109, 113 (8th Cir.
page numbers from WesVs National Re. 1981) (en banc). None of these factors by
porter System publications into the body of itself is determinative; in each cise
LEXIS providing "jump" or "pin- the four factors must be balanced to deter-
point" citations to the location in West's mine whether they tilt toward or away
reporter of the material viewed on LEXIS. frotn granting a preliminary injunction.
Thus, with the LEXIS Star Pagination Fea- Id. On appeal, we may not disturb the
ture, LEXIS users would be able to deter- District CourVs balancing of the equities
mine the West page number corresponding absent a clearly erroneous factual deterrai-

HLC 00012279
 280

WEST PUB. CO. v. MEAD DATA CENT., INC. 1223

Cite " 7" F.Zd 1219 (Uh Cir. 1986)
nation, an error of law, or an abuse of
discretion. O'Connor v. Peru State Col-
lege, 728 F.2d 1001, 1002 (8th Cir.1984);
Edudata Corp. v. Scieniijtc Computers,
Inc., 746 F.2d 429. 430 (8th Cir.1984) (per
curiam).
MDC's principal contention here is that
there is no likelibood that West will suc-
ceed on the merits of its copyright claim.
MDC readily concedes that portions of
West's National Reporter System publica-
tions that are not at issue here, such as
headnotes prepared by West, merit copy-
right protection.2 Yet MDC maintains
that any aspects of West's reporters affect-
ed by the LEXIS Star Pagination Feature
are not copyrightable. The dominant chord
of MDC's argument is that West claims
copyright in mere page numbers. MDC
adds that in any event whether West
claims copyright in its case armngement or
simply in its pagination, WesVs claim must
fail because neither case armngement nor
pagination can ever qualify as the original
work of an author. Even were this'possi-
ble, MDC goes on, Weses case arrange-
ment and pagination do not in fact meet
this standard. Finally, MDC contends that
even were West's arrangement of cases photographs and legal descriptions is copy-
H
thorship fixed in any tangible medium of
expression." 17 U.S.C. § 102(a). The stan-
dard for "originality" is minimal. It is not
necessary that the work be novel or
unique, but only that the work have its
origin with the author-that it be indepen-
dently created. Hutchinson Telephone
Co. v. Fronteer Directory Co., 770 F.2d
128, 131 (8th Cir.1985). Little more is in-
volved in this requirement than "a prohibi-
tion of actual copying." Alfred Bell & Co.
v. Cataida FYne Arts, 191 F.2d 99, 102-103
(2d Cir.1951); see also M. Nimmer, I Nim-
mer on CopyTight § 101 (1985).
(41 To be the original work of an au-
thor, a work must be the product of some
.,creative intellectual or aesthetic labor."
Gok(stein v. California, 412 U.S. 546, 561,
93 S.Ct. 2303, 2312, 37 LEd.2d 163 (1973).
However, "a very slight degree of auch
labor[j ... almost any ingenuity in selec-
tion, combination or expression, no matter
how crude, humble or obvious, will be suffi-
cient" to make the work copyrightable. M.
Niinmer, 1 Nimmer on Copyright, supra,
§ 1-08[C)[1]; id, § 1.06. See Rockford
Map Publishers v. Directory Service Com-
pany 768 F.2d 145, 148-149 (7th Cir.1985)
(map based on Agriculture Department

protected by copyright, the proposed use of rightable, no matter how quickly or with
yp

West's page numbers in LEXIS reports what little effort it is produced), cert. de-
would not constitute infringement nied, - U.S. -, 106 S.CL 806, 88
er

We do not agree with MDC that WesVs LEd.2d 781 (1986); Universal Athletic
claim here is simply one for copyright in its Sales Co. v. SalkeK 511 F-2d 904, 908 (Sd
La

page numbers. Instead, we concur in the Cir.) ("even a modicum of creativity may
District Court's conclusion that Weses ar- suffice for a work to be protected"), cert.
rangement is a copyrightable aspect of its denied, 423 U.S. 863, 96 S.CL 122, 46
w

compilation of cases, that the pagination of L.Ed.2d 92 (1975).

West's volumes reflects and expresses [5,61 MDC argues that case arrange-
West's arrangement, and that MDC's in- ment is per se uneopyrightable because it
tended use of West's page numbers in- cannot meet these standards. However, it
fringes West's copyright in the arrange- is apparent on the face of the Copyright
menL Act that it is possible for an arrangement
A. Copyright Protection of pre-existing materials to be an indepen-
(31 The Copyright Act provides copy- dently produced work of intellectual cre-
right protection for "original works of au- ation. Section 103 of the Act, 17 U.S.C.
2. West does notiand So?lj not claim any copy- LEd. 1055 (1834) ("no reporter ... can have
right in the jud cial opinions themselves. See any copyright in the wiitten opinions delivered
Vlheaton v. Pelm, 8 Pet. 591, 668. 33 U.S. 591. 8 by this court").

HLC 00012280

1224 799 FEDERAL REPORTEP, 2d SERIES
§ 103, establishes that "the subject matter
of copyright ... includes compilations and
derivative works." A "compilation" is de-
fined in the Act as:
a work formed by the collection and as.
sembling of preexisting materials or of
data that are selected, coordinated, or
arranged in such a way that the result-
ing work as a whole constitutes an origi-
nal work of authorship.
17 U.S.C. § iol. An arrangement of opin-
ions in a case reporter, no less than a
compilation and arrangement of Shake.
Speare's sonnets, can qualify for copyright
protection.
We find support for this view in Calla-
ghan v. Myers, 128 U.S. 617, 9 S.CL 177, 32
L.Ed. 547 (1888), which indicates that an
original arrangement of opinions is copy-
rightable iyhenever it is the product of
labor, talent, or judgmenL The plaintiff in
that case, Myers, held copyrights for sever-
al volumes of reports of the Supreme Court
of Illinois. He had purchased these rights
from the official reporter of that Court,
who had prepared the volumes. In addition
to the Court's opinions, the volumes con-
tained a substantial amount of material
original to the reporter, including head-
notes, statements of facts, tables of cases,
H
indices, and so on. Myers brought an in-
fringement action against the publishers of
yp
a cornpeting reporter of Illinois Supreme
Court opinions who had copied from
er
Myers's rePOrts material cmted by the
official reporter, as well as the arrange.
La
ment and pagination of some volumes.
The trial court found Myers's copyrights
valid and infringed. The Supreme Court
w
affirmed, holding that the fact that Myers
sought to PrOtect material Prepared by the
official court reporter did not bar his claim,
since no Illinois legislation forbade ttke m
porter to obtain a coPYright for matter that
was the product of his intellectual labor.
128 U.S. at 646-647, 95 S.CL at JS4.
As MDC points out the treatment of
case arrangement and pagination in Caaa-
ghan was not crucial to the Coures deci.
sion, since the defendants had ako made
use of other portions of Myers's volumes,
281
such as headnotes and staternents of facts.
Nonetheless, we find Callaghan's discus.
sion of the copyrightability of case ar-
rangements instructive. The Supreme
Court noted that while the reporter could
claim no copyright in the opinions them-
selves, 128 U.S. at 649, 9 S.CL at 185,
citiug Wheaton v. Peters, 8 PeL 591, 668,
S3 U.S. 591, 668, 8 LEd. 1055 (1834), he
could copyright other portions of his re.
Ports. Mr. Justice Blatchford wrote that,
in addition to headnotes, statements of
facts, RWYnents of counsel, case tables,
and indices,
[aluch work of the reporter, which may
be the lawful subject of copyright, com.
prehends ... the order of arrangement
of the cases, the division of the reports
intO volumes, the nurnbering and paging
Of the volumes, the table of the cases
cited in the opinions, (where such table is
madeJ and the subdivision of the index
intO RPProPriate, condensed titles, involv-
ing the distribution of the subjects of the
vanous head-notes, and cross-references,
where such exist.
Callaghan, 128 U.S. at 649, 9 S.Ct. at 185
(emphasis ours).
[71 Later in its opinion, however, when
considering seveml volumes that Myers
claimed the defendants had infringed by
COPYing their case arrangement and pag-
ination, the Court quoted with approval the
opinion of the Circuit CouM which stated:
Undoubtedly, in some ca-ses, where are
involved labor, talent, judgment the clas-
sification and disposition of subjects in a
book entitle it to a copyright. But the
arrangement of law ewes and the paging
of the book may depend simply on the
will of the printer, of the reporter, or
Publisher, or the order in which the cases
have been deeided, or upon other acciden-
tal cimumstances.
128 U.S. at 662, 9 S-CL at 190, quoting
JfYers V. Callagha?4 20 Fed. 441, 442 (C.C.
N.D.I11.1883). Evaluating the volumes at
issue, the Circuit Court concluded that
their case arrangement and pagination in-
vOlved fittle labor, ir therefore found the
defendants' copying of the case armnge-
HLC 00012281
 282

WEST PUB. Co. v. MEAD DATA CENT., INC. 1225

cut 7" F2d 1219 (Sth Cir. 19"1
ment and pagination of Myers's volumes each volume with what he considered to be
not an independent infringement, but a the most important cases on hand and to
matter to be considered in connection with group cases on the same subject matter
other similarities in the partiet' reporters. together. The Banks court responded by
Id. The teaching of Callaghan with re- noting that the official reporter was re-
spect to the issues before us does not come quired by statute to prepare reports of
through with unmistakable cMty. But as Supreme Court decisions, gather them into
we read it, Callaghan establishes at le-t volumes, and have them printed and pub-
that there is no per ee mle excluding cue lished. To fuirill this duty, the court con-
armngement from copyright protection, tinued, the reporter must of necessity pro-
and that instead, in each case the arrange- vide an orderly arrangement of cases and
ment must be evaluated in light of the pagination for the volumes. The court con-
originality and intellectual-creation stan- cluded that "no valid copyright for these
dards. elements or details alone can be secured to
For the proposition that case arrange- the official reporter." 169 Fed. at 390.
ment and pagination cannot as a matter of Although it acknowledged that ll[tlhe trend
law, meet originality and intellectuat-em of some of the decisions and of the text-
ation requirements, MDC relies heavily writers indicates that an armngement of
upon Banks Law Publishing Co. v. Law- the material matter of a book may be the
yer's Co-Operative Publishing Co., 169 subject of a valid copyright," the cotut
Fed. 386 (2d Cir.1909) (per curiam), appeal rejoined that,
dismissed by stipulation, 22S U.S. 7S8,32 [Alny principle upon which guch cases
S.CL 530, 56 LEd. 636 (1911). The plain- are based is not thought applicable
tiff in Banks was the sucemor to the where the armngement of the cases,
copyrights of an official reporter of the though invotving some merit so obvious-
United States Supreme Court in published ly was necessary to produce the volumes
volumes of opinions compiled by the report- required by the statute. Such labor, un-
er. The defendant published a competing der the circumstances presented, like the
edition of the Supreme CourVs decisions. decisions and opinions of the eourt, be-
The plaintiff claimed copyright infringe- came the property of the public.
ment based on the defendant!s reproduc-
H

tion of the plaintiffs arrangement of cases Id. We conclude that the ultimate mtio-
nale for the Banks decision was that while
yp

and on the defendant!s star pagination to

the plaintiffs reports. The trial court re- under Callaghan the official reporter could
jected the plaintiffs claim that its case copyright any material that was the prod-
er

arrangement and pagination merited copy- uct of his intellectual labor, because the
right protectiow, the Second Circuit in a reporter's statutory duties required case
La

per curiam opinion, reproduced the trial arrangement and pagination, these should
court's opinion in full, adopting the opinion not be considered the product of the report-
w

as its own. er's intellectual labor.

In our view, Banks does not support MDC contends that Banks did not tum
MDC's claim that case arrangement is u- on the reporter's official status. It points
copyrightable per se, we agree with the out that the statate prescribing the report-
District Court that instead, the denial of ees duties in Banks did not specify how
copyright protection in Banks was based cases were to be armnged or how volumes
upon the official status of the reporter. of-reports were to be paginated, so that the
See 616 F.Supp. at 1577. The plaintiff in reporter -ercised judgment and discretion
Banks argued that its mu armngements in these matters. MDC concludes that
were the product of sufficient intellectual Banks must therefore be read to hold
labor to be copyrightable because the re- broadly that armngement and pagination
porter's genemL though not unaltemble, am publishing details involving too little
approach in arranging cam was to begin intellectual labor to be copyrightable. We

HLC 00012282
 283

1226 799 FEDERAL REPORTEP, 2d SERIES

agree with MDC that the reporter in Banks any State, with a salary and duties fixed by
exercised independent judgmenL How- statute, and with the details of its work
ever, the Banks court dismissed the mat- controlled by statute or rule. But even if it
ters in which the reporter exercised discre- is, the facts of this case, as found on the
tion as things done "voluntarily and in evi- present record by the District Court, con-
dent compliance with the proper and faith- vince us that West has used sufficient tal.
ful discharge of his officiar duties." 169 ent and industry in compiling and arrang-
Fed. at 389-390. While we would be in-
ing cases to entitle it to copyright protec.
clined to examine the official reporter's in-
dependent efforts in arrangement and pag- tion under the 1976 Act as construed by the
more recent cases.
ination on their merits to see if they meet
originality and intellectual-creation require- Having detemined that there is no per
ments, the Banks court did not do so be. se rule that case arrangements are not
cause it was unwilling to look past the fact copyrightable, we tum to examine the Dis-
that they were done to meet the reporter's trict COUrCs findings that West's arrange-
statutory obligations. ments in fact meet originality and int,,Ilec-
Seveml other reasons persuade us not to tital-creation requirements.
give Banks the full force for which MDC West publishes opinions not from just
contends. If it involved the eopyright one court, but from every state and all the
claims of an official reporter, so too did fedeml eourts in the United States. As it
Callaghan, and Yet Callaghan does not collects these opinions, West separates the
seem so hostile to the very idea that c=e decisions of state courts from fedeml-court
compilation, arrangement, and paging can decisions. West further divides the federal
be protected by copyright. To the extent opinions and the state opinions and then
that Banks diverges from Callaghan, we assigns them to the appropriate West m-
of course follow the Supreme Court. porter series. State court decisions are
Banks, moreover, requires a greater de. divided by geogmphic region and assigned
gree of intellectual ereativity than the to West's corresponding regional reporter.
trend of modern cases, see, eg., Rockford Federal decisions am fwst divided by the
Map, supra. And it was written at a time level Of the court they come from into
when the statute did not in express words district court decisions, court of appeals
H

declare that "compilations and derivative decisions, and Supreme Court decisions;
works," defined to include "the collection
yp

Court of Claims and military court deci-

and assembling of preexisting materials,- sions are also separated out. Before being
can be copyrighted. See Act of March 3, "signed to a reporter, district court deci-
er

1905, ch. 1432, Pub. L No. 58-165, s3 stat sions are subdivided according to subject
1000 (1905) (repealed 1909).
La

matter into bankruptcy decisions, federal

MDC argues, citing, e.g., Order of June rules decisions, and decisions on other top.
7, 1978, Minnesota Supreme Court (unre- ics. After an opinion is assigned to a m
w

ported), that West is the "official reporter" porter, it is assigned to a volume of the
for some states, and that, therefore, even a reporter and then arr-anged within the vol-
narrow reading of Banks supports its posi- ume- Fede-I court of appeals decisions,
tion. We are inclined to think that the for example, - arranged according to cir-
terin "Official reporter". in orders discontin- e-uit within each volume of West's Fedemi
uing, for example, the Afinnoota Reports, Reporter, Second Senes, though there
and providing that the Northwestern Re- MaY be more than one group of each cir-
porter should henceforth be the "official cuies OPinions in each volume.
reporter" for the opinions of the Supreme
Court of Minnesota, means something quite 181 We conclude, as did the District
different from the tide "official reporter" Court, that the arrangement West pro.
held by Messrs. Wheaton and Peters. We duca through this proceess is the result of
do not believe that West is employed by considemble labor, talent and judgmenL

HLC 00012283
 284

WEST PUB. CO. v. MEAD DATA CENT., INC. 1227

ace as 7" F.2d 121t (" Cir. 19")
As discussed above, supra pp. 1223-1224,
to meet intellectual-creation requirements a
work need only be the product of a modi-
cum of intellectual labor; WesCs case ar-
rangements easily meet this standard.
Further, since there is no allegation that
West copies its case arrangements from
some other source, the requirement of orig-
inality poses no obstacle to copyrighting
the arrangements. In the end, MDC's posi-
tion must stand or fall on its insistence that
all West seeks to. protect is numbem on
pages. If this is a correct characterization,
MDC wins: two always comes after one,
and no one can copyright the mere se-
quence of Arabic numbers. As MDC
points out, the specific goal of this suit is to
protect sorne of WesVs page numbers,
those occurring within the body of individu-
al court opinions. But protection for the
numbers is not sought for their own sake.
It is sought mther, because aecess to these
particular numbers--the "jump cites"-
would give usem of LEXIS a large part of
what West has spent so much labor and
industry in compiling, and would pro tanto
reduce anyone's need to buy WesCs books.
The key to this case, then, is not whether
numbem are copyrightable, but whether
the copyright on the books as a whole is
H
view the armngement of cases in every
volume of West's National Reporter Sys-
tem. LEXSEE enables the LEXIS user to
have his or her terminal display a case by
"inputting" the citation to the fimt page of
West's report of the ease. With the LEXIS
Star Pagination Feature, a LEXIS user
could summon up the fimt case in a West
Volume, page through it until he or she
reache, the end of the case, and discern
from the "jump cite" for the final page of
the case the citation for the first page of
the next case in the volume. The LEXIS
user could then use LEXSEE to call up the
next case. By repeating this procedure,
the LEXIS user would be able to page
dirough each succeeding case in the West
reporter. MDC conceded at oml argument
that this opemtion would be possible, but
argued that LEXIS usem would be unlikely
to perform it because of the cost involved
in doing repeated LEXSEE searches.
However, MDC has cited no authority, nor
do we see any pemuasive argument for
the proposition that because consumers
may find an infringing work uneconomical,
the work is not an infringement. An au-
thor's rights in a copyrighted work protect
the author not only against infringing
works less expensive Um the original, but

infringed by the unauthorized appropria-

tion of these particular numbers. On the against more expensive infringements as
yp

record before us (and subject to reconsider- well. Further, though this use of LEXIS
ation if materially new evidence oomes in at may presently be uneconomical, changes in
technology and other market conditions
er

the plenary trial on the merits), the District

Coures findings of fact relevant to this could well alter the situation.
La

issue are supportable. We therefore hold Even if the LEXIS Star Pagination Fea-
(again subject to reexamination after the ture did not make it possible to use LEXIS
record has closed) that West's case ar- to page through cases as they are armnged
w

mngements, an important part of which is
internal page citations, are original works
of authorship entitled to copyright protec-
tion.
B. Infringement
[9, 101 We further hold (with a similar
qualification) that MDC's proposed use of
West page numbers will infringe West's
copyright in the arrangement 7be LEXIS
Star Pagination Feature, when used in con-
junction with another LEXIS feature called
"LEXSEE," will permit LEXIS uaers to
in West volumes, we would still hold that
MDC's use of West's page numbers in-
fringes West's copyright in 6e arrange-
ment. Jump cites to West volumes within
a case on LEXIS are infringing because
they enable LEXIS users to discern the
precise location in West!s arrangement of
the portion of the opinion being viewed.
MDC oontends that these page numbers
communicate nothing about WesVs ar-
rangement. This might be true if MDC
proposed to use the numbers in some way
unconnected to their position in West's re-

HLC 00012284
 285
1228 799 FEDERAL REPORTER, 2d SERIES
porters, for example by simply printing a
list of the numbers. However, M-DC un-
derstandably has no interest in making
such a use of the numbers; instead, it
plans to replicate on LEXIS every page
break in West's volumes and to note the
corresponding West paie number. Com-
munication to LEXIS users of the location
in West's arrangement of specific portions
of text is precisely what the LEXIS Star
Pagination Feature is designed to do.
With MDC's star pagination, consumers
would no longer need to purchase West's
reporters to get every aspect of West's
arrangement. Since knowledge of the loca-
tion of opinions and parts of opinions with-
in West's arrangement is a large part of
the reason one would purchase West's vol-
umes, the LEXIS star pagination feature
would adversely affect West's market posi-
tion. "[A] use that supplants any part of
the normal market for a copyrighted work
would ordinarily be considered an infringe-
ment." S.Rep. No. 473, 94th Cong., lst
Sess. 65 (1975), quoted in Harper & Row
Publishers v. Nation EnteTprises, - U.S.
-, 105 S.Ct. 2218, 2235, 85 LEd.2d 598
(1985).
MDC asserts that enjoining its use of
West page numbers is tantamount to giv-
H
ing Wes c a copyright in the Ambic number-
ing sys tem. West cannot, MDC argues,
yp
claim ti at its use of the numbering system
is an o -iginal work of authorship. It is
er
true tha L some uses of a numbering system
cannot meet originality requirements for
La
copyriglit. See Toro Co. v. R & R Prod-
ucts Co., 787 F.2d 1208 (8th Cir.1986) (arbi-
w
trary assignment of mndom numbers to
replacement parts did not qualify for copy-
right protection). However, as already not-
ed, the copyright we recognize here is in
West's arrangement, not in its. numbering
system; MDC's use of Weses page rum-
bers is problematic because it infringes
3. in the District Court MDC also argued that its
star pagination, like its citation to the first page
of West's report of a case. is "fair use of copy-
righted material under 17 US.C. § 107. The
District Court rejected this contention, noting
that MDCs use is commercial. that MDC is
appropriating the whole of Weses arrangement.
and that MDCs use will supersede a substantial
65-153 0 - 93 - 10
West's copyrighted armngement, not be-
cause the numbers themselves are copy-
righted.
[11, 121 MDC also argues that the LEX-
IS Star Pagination Feature does not in-
fringe West's copyright because its cita-
tions to page numbers in West reporters
are merely statements of pure facL The
flaw in this argument is that it does not
distinguish between isolated use of the fac-
tual aspects of a compilation or armnge-
ment and wholesale appropriation of the
arrangement. "Isolated instances of minor
infringements, when multiplied many
times, become in the aggregate a major
inroad on copyright that must be prevent-
ed." S.Rep. No. 473, 94th Cong., Ist Sess.
65 (1975), quoted in Harper & Row, 105
S.Ct. at 2235. The names, addresses, and
phone numbers in a telephone directory are
"facts"; though isolated use of these facts
is not copyright infringement, copying eg(ch
and every listing is an infringemenL See
Hutchimon Telephone v. Fronteer Direc-
tory, 770 F.2d. 128 (8th Cir.1985). Similar-
ly, MDC's wholesale appropriation of
West's an-angement and pagination for a
competitive, commercial purpose is an in-
fringement.3
We hold that West's arrangement of
cases in its National Reporter System pub-
lications is entitled to copyright protection
and that the LEXIS Star Pagination fea.
ture infringes West's copyright in the ar-
mngemenL On the basis of the present
record, it is probable that West will succeed
on the merits at trial.
Il.
MDC also contends that the District
Court did not accumtely assess and weigh
the three remaining Dataphase factors:
the threat of irreparable ham to West the
use of West's volumes. 616 FSupp. at 1580-
1581. See Sony Corp. ol America v. lJniversity
City St"os. Inc., 464 US. 417, 451. 104 &Ct.
774. 793. 78 LEd.2d 574 (1984); Harper & Row,
105 S.CL at 2226. 2235. MDC did not raise this
issue in its briefs or its argument on appeal, and
we find the masoning of the District Court per-
Suasive
HLC 00012285
 286

WEST PUB. CO. v. MEAD DATA CENT., INC. 1229

Cite " 7" F.2d 12 19 (Sth Cir. 1%6)
relative harm to MDC, and the public inter-
esL We disagree.
[13-151 In copyright infringement
ewes, the genemi rule is that a showing of
a prima facie case raises a presumption of
irrepamble harm. Apple Computer, Inc.
v. Franklin Computer Corp., 714 F.2d
1240, 1254 (3d Cir.1993), cert, dismissed,
464 U.S. 1033, 104 S.CL 690, 79 L.Ed.2d 158
(1984). West has made a strong claim for
copyright infringement and is therefore en-
titled to this presumption. Furthermore,
MDC's intended use of West's page num-
bers may significandy affect demand for
West's volumes; this further supports
West's claim of irreparable injury. See
Wainwright Securities, Inc. v. Wall Street
Transcript Corp., 558 F.2d 91, 94 (2d Cir.
1977), cert denied, 434 U.S. 1014, 98 S.CL
730, 54 L.Ed.2d 759 (1978). On the other
hand, the harin which MDC claims it will
suffer is principally loss of the market
share and revenues it would garner from
use of West's page numbers. Yet, West
has demonstmted that it will probably suc-
ceed on its claim that MDC's ttse of West!s
page numbers is a copyright infringemenL
[161 Finally, the public interest favors
issuing a preliminary injunction. While
H
of equities in this case favors issuing a
preliminary injunction.
CONCLUSION
West has shown that it will probably
succeed on the merits of its claim at trial;
West's case arrangements are entitled to
copyright protection and MDC's intended
use of West page numbers would infringe
WesVs copyright in its arrangements. The
District Court correctly balanced this
factor with the threat of irreparable harm
to West, the relative harm to MDC, and the
public interest to determine that West
siLiould be gmnted a preliminary injunction.
Accordingly, the decision of the District
Court will be affirmed.
[181 We add a word about the procedur-
al posture of this case. It comes to us on
appeal from an order gmnting a prelimi-
nary injunction. The case has yet to be
tried. We tmst it wfll be tried soon. (In-
deed, so far as any requirements of law are
concerned, it could have been trW already:
the pendency of an interlocutory appeal
from an order gmnting or denying a pre-
liminary injunction does not wholly divest
the District Court of jurisdiction over the
entire case.) When it is tried, and when
judgment is entered, another appeal can be

MDC argues that there is a public intemst fded. At that time it wfll be our duty to
in free access to the law embodied in examine anew, on the basis of the fuU
yp

West!s reporters, we note that Wese reeord, the issues discussed in th6.-Optnion.
works are not the only reports of judiz As we have observed before, e.g., Indepen-
er

opinions available-MDC itself reports the dent Fedn of Flight Attendanti; v. Trans
decisions on LEXIS. More importantly, World Airliztes 655 F.2d 155, 159 (8th
La

MDC's argument ignores the purpoae of Cir.1981), "[t]he District CourVs findings,
affording authors a monopoly in their copy- and our observations as to the goveming
w

rightable material; "'[ilf every volume law made in this opinion, are tentative and
that was in the public interest could be provisional, in the sense that different fmd-
pirated away by a competing publisher, . . .
ings or conclusions might be warmnted
the publie (soon] would have nothing worth
after a trW on the merits."
reading."' Harper & Row, 105 S.CL at
2230, quoting Sobel, Copyright and the For this reason, the attention of the dis-
FYrst Amendment. A Gatheving Sto"n 21 trict courts in this Circuit is called to Fed.
19 ASCAP Copyright Law Symposium 43, R.Civ.P. 65(aX2), under which, in appropri-
78(1971). ate ewes, those courts have dLqcmtion to
combine the hearing on a motion for pre-
(171 We conclude that the District liminary injunction with the trial on the
Court correctly assessed the various Data- merits. This procedure is a good one, and
phase factors and that it did not abuse its we wish to enooumge it In the present
discretion in determining that the balance case, for example, we got the defmite im-

HLC 00012286
 287

1230 799 FEDERAL REPORTER, 2d SERIES

pression at omi argument that most of the lead of the First Circuit as stated in Build-
evidence on both sides had already been ing OfJicials & Code AdvL v. Code Tech,
put in. If this is true, the case could have Inc., 628 F.2d 730 (lst Cir.1980), in which a
been tried with little additional effort, and not dissimilar question was presented on a
the result could have been one appeal in- Section 1292(aXI) appeal.
stead of two, with a final resolution of the That case, as does this case, involved the
case instead of a provisional one. application of principles fwst enunciated in
Affirmed. Wheaton v. Petem 33 U.S. (8 Pet.) 591
(1834), and later applied in Banks v. Man-
OLIVER, Senior District Judge, concur- chester, 128 U.S. 244, 9 S.Ct. 36, 32 LEd.
ring in pwt and dissenting in parL 425 (1888). and Callaghan v. Myers, 128
This case pends on an interlocutory ap.. U.S. 617, 9 S.Ct. 177, 32 LEd. 547 (1888).
peal noticed pursuant to Section 1292(aXI) The First Circuit reversed the district
of Iltie 28, U.S.C., from a modified order of court!8 gmnt of a prelimkkmy injunction
the district court which "preliminarfly en- and remanded the case for a trW on the
joined [MDC] from displaying, referencing merits without making any definitive rul-
or including the page number of any and ing on the merits of legal issues presented
all publications within plaintiff's National on the Section 1292(aXI) appeal that pended
Reporter System * * * published during in that CoUrL2
the period from January 2, 1910 to the
present within or in relation to the text of
court opinions contained in the LEXIS data-
base." Addendum at 25a-26a.1 A.
I concur in what the majority stated in MDC, for reasons I find difficult to un-
regard to the procedumi posture of the derstand, invoked the appellate jurisdiction
case and its discussion of Fed.R.Civ.P. of this Court pursuant to 28 U.S.C.
65(aX2). At 1229. It is my view, however, J 1292(aXl). MDC argued in the district
that the majority's analysis of this case court that the gmnting of a preliminary
exceeds the limited scope of appellate re- injunction restraining MDC from adding
view provided by a Section 1292(aXl) ap..
H

the "star pagination" feature "would give

peal. West the time it would need to do the
yp

I therefore dissent because I do not be- eonsiderable work necessary to add its own
lieve, &-light of the meager record before pagination feature to Westlaw." (App.
er

the district court, that the majority's analy- 1043

sis is consistent with the applicable law. It MDC obviously invited further delay that
La

is my view that our panel should follow the would perinit West to play catch-up when it
1. The "publications within plaintiffs National L 7be First Circuit concluded that: 'We do not
w

Reporter System" were listed as follows: Su-
preme Court Reportet Federalfieporrer and Fed.
eral Reporier Second Seriei; Federal Supplemen4
United States CZainu Courr Reporter, Federal
Rules De=ions, Bankruptcy Reporten Atlandc
Reporter and Atlantic Reporter Second Sgries.
California Ri;porrer; North Eastem Reporter and
North Eastern Reporter Second serte.4 North
Wesiern Reporter and North Watern Reporter
Second Senes, New York Supplement and New
York Supplement Second Serl&& Pacific Reporter
and Padfic Reportcr Second Scriej, Southern
Reporter and Southem Reporter Swand SwifA
South Eastern Reporter and South Eastern Re-
porter Swond Series, and South Westem Report.
er and South Western Reporter Second Sffies.
Addendum at 26a.
agree with the district court's conclusion that
BOCA's probability of success on the mcrits
justWies preliminary relief. We stop short. how-
ever. of ruliiig definitely on the underlying legal
issum since we feel titat our final judgnient
should &wait the more completc hearing on the
merits which may be anticipated in due course.'
628 F.2d at 732.
3. MDC also complains on appeal that the pre-
liminary injunction granted by the district oourt
pvc West 'a second chancc to ptay c-atr-h-up
and develop a feature similar to the I PX S Star
Psonation FeattLre for West's WESTIAW ser-
vice." (MDC Brief at 22; sm also pp. 20-1, 45).

HLC 00012287
 288
WEST PUB. CO. v. MEAD DATA CENT.. INC.
Cite " 7" F.2d 1219 (M Cir. 19")
elected to notice a Section 1292(aXl) appeal
in this case. Certainly MDC was not re-
quired to notice such an appeal. See Scar-
relia v. Midwest Federal Savings & Loan,
536 F.2d 1207, 1209 (8th Cir.1976), ("[a]
party is not required to take an interlocu-
tory appeal authorized by statute").'
MDC's citation and reliance on'O'Connor
v. Peru State College, 728 F.2d 1001, 1002
(gth Cir.1984), see page 24 of MDC brief,
establishes that it knew that the scope of
appellate review on a Section 1292(aXl) ap-
peal from an "interlocutory order" is neces-
sarily more narrow than the scope of appel-
late review of a "final decision" on an
appeal taken pursuant to 28 U.S.C. § 1291.
O'Connor and Edudata Corp v. Scien- - tentative and provisional, in the sense that
tific Computers, Inc., 746 F.2d 429, 480 different findings or conclusions might be
(gth Cir.1984) (per curiam), both cited in the
4. See also A & R Realty Co. v. Northweitern
Mutual Life Insurance Co., 95 F.2d 703, 707 (8th
Cir.1938); ("if the right to appeal from the inter-
locutory order was not availed Gf. the failure to
appeal would not diminish the right to a review
of such order upon appeal from the final de-
cree"); Caradelis v. RefincHa Panama, &A., 384
F.2d 589, 59 1. n. I (Sth Cir. 1%7); and 9 Moore's
Federal Practice 1110.18 (1985), entitled "A Par.
ty Is Not Required to Take an Interlocutory
Appeal Authorizcd by Statute," and the c-se
cited thercin.
Di Giorgio v. Causey, 488 F.2d 527. 528 (5th
Cir.) (1973), appropriately stated that "an appeal
H
from the issuance or denial of a preliminary
injunction is ordinarily no way to obtain appel-
yp
late disposition of a case on its merits." That
case emphasized that the "one fact which liti-
gants and their counsel should not overlook is
er
that on an appeal from a preliminary injunction
this Court does not concern itself with the mer-
its of the controversy."
S. The Eighth Circuit rule goes back at least as
far as Judge Walter Sanborn's opinion in ary of
Council Bluffs v. Omaha & CR & St Ry. Ca, 9
F.2d 246, 249 (Sth Cir.1925). Bomon MoteJ Cor-
poration v. Woods, 168 F.2d 694. 697 (Sth Cir.
1948), in reliance on City of Council Blu#; and
other Eighth Circuit cases, made clea that
"[t]he decision of the trial court on granting the
motion for preliminary injunction will not tuop
either of the parties on the trial of the case on
iLs merits, nor would any, determination of
those questions by this court on appeal be bind-
ing on the trial cour-t nor upon either of the
parties in considering and determining the mer-
its of the controversy." Ciry of Des Moines v.
Continentat nlinois NaL B. & T. Co., 205 F.2d
729 (Sth Cir.1953), vnitten by Judge John B.
Sanborn, stated that "[aln appellate court, in
1231
majority opinion (Supra, at 1222-23), are
but two recent Eighth Circuit cases that
recognize the established Eighth Circuit
mle in regard to the limited scope of appel-
late review on a Section 1292(aXl) appeal.6
The majority opinion recognized that the
scope of appellate review on a Section
1292(aXl) appeal is limited and circum-
scribed. For on page 1229 of the opinion it
quoted that portion of Independent Fedln
of Right Attendants v. Trans World Air-
lines, 655 F.2d 155, 159 (8th Cir.1981),
which concluded that "[t]he District CourVs
fmdings, and our observations as to the
goveming law made in this opinion, are
waffanted after a trial on the merits."
reWewing an order giranting or denying a pm
liminary injunction, vAll not consider the merits
of the controversy between the parties htrther
than is necessary to deftrmine whether the trial
court abused its discretion in making the order
and this is particularly uue where the rights of
the parties can better be determined upon fuU
proof of the facts." 205 F.2d at 733. And sm
Mesabi Iron Company v. Rwaw Mining Compa-
ny, 270 F.2d 567, 570 (Bth Cir.1959), which stat-
ed that in 'the instant case the rnerits of the
crucial issues not having been determined by
the trial court, we should not pass upon them"
for the reason that "under the well-established
rLdi. to do so %hiould be futile, and we express no
opinion on the merits of the issues involved in
this case.'
The rule established in the ewlier F-ighth Cir-
cuit cases has not been altered. Indeed, Ad. -
ta Corp. was recently quoted and followed in St.
fude Medical, Inc. v. Carbomedics, Inr-, 764 F.2d
La
SW (Sth Cir.1985) (per curiam). Sw aLso Sterra
Club v. US Carps ot Engineem 771 F.2d 409
(Sth Cir.1985). which relied on St. Jude Medlca4
w
Ina and other recent Eighth Circuit cases to
support its conc[Ltsion that -[olur mview of a
grant or denial of pmlirninary relief Is limited
to determining whether the dLahct court
abused its discretion." 771 F.2d at 412. 7liat
case also stated that "lw]e am mindful that
findings of fact and conclusions of law made by
a court in gmnting or denying a preliminary
injunction are not binding at the trial on the
merits. University of Texas v. Cameniscii, 451
U.S. 390, 395, 101 S.Ct. 1830, 1334, 68 LEd.2d
t75 (1981)." liL at 413.
6. Tram World Airlines stated immediately be-
fore the portion of that opinion quoted by the
majority that "[w)e emphasize the procedural
posture of this case--an appeal from a ruling on
HLC 00012288
 289
1232 799 FEDERAL REPORTER, 2d SERIES
The reason the scope of appellate review
on a Section 1292(aXi) appeal is circum-
scribed is because the grant of a prelimi-
nary injunction by a district court is re-
viewed solely under an abuse of discretion
standard. Olin Water Services v. Mid-
land Research Lab., 774 F.2d 303, 307 (8th
Cir.1985), the most recent Eighth Cimuit
case on that point, concluded that:
Our sole task in reviewing an order of
the district court granting a preliminary
injunction is to detemine whether the
court abused its discretion. Ferry-Morse
Seed Co. v. Food CoM Inc., 729 F.2d
589, 592 (Sth Cir.1984); Dataphase Sys-
te7w, Inc. v. C L Systems, Inc., 640 F.2d
109, 114 & n. 8 (8th Cir.1981) (en banc);
accord University of Temw v. Camen-
isch, 451 U.S. 390, 393, 101 S.Ct. 1830,
1832-33, 68 L.Ed.2d 175 (1991). (Empha-
sis added).
Any possible doubt about the liniited
scope of review on a Section 1292(aXI) ap-
peal, in my view, was resolved by Universi-
ty of Texas v. Camenisch, supm 451 U.S.
390, 101 S.CL 1930, 68 I.Ed.2d 175 (1981).
That case held that "the issue before the
Court of Appeals [on an appeal from an
order granting a preliminary injunction]
H
a motion for preliminary injunction. In this
situation our reviewing tunction is circum-
yp
scribed" (Emphasis added).
Alabama v. United Statei, 279 US. 229, 49
er
S.Ct. 266, 73 LEd. 675 (1929). cited with approv-
al in University ol Te=s, concluded that the
La
duty of the appellate court upon an appeal from
an order either granting or denying an interloc-
utory. injunction "at least generally, is not to
decide the merits but simply to determine
w
whether the discretion of the court below has
been abused." 279 U-S. at 230-31, 49 S.CL at
266.
S. I recognize, of course, that MDC, like the Sec-
tion 1292(a)(1) appellant in Di Giorgio, tended
to brief and argue this appeal "as if it were from
a final judgment on the merite 488 F.2d at
528. Although MDC cited Dataphase Syslent4
Inc. v. C L Systenu, Inr-, 640 F.2d 109 (8th
Cir.1981) (en banc), it is clear that the major
portion of MWs argument was made under a
bold face heading which argued that 'The Dis.
trict Court Erre-d La ConeWding That the LEX-
IS Star Pagination Feature Infringes Copy.
rights Clabned by West.' That MDC did so
was * *
* whether the District Court had
abused its discretion in issuing a prelimi-
nary injunction." I Id. 451 U.S. at 393, 101
S.Ct. at 1832.
While I concur in the majority's recogni-
tion of the established Eighth Circuit rule,
I am not able to join the majority opinion
because that opinion exceeds the limited
scope of appellate review accorded by a
Section 1292(aXl) appeal.9 The majority
opinion, as I read it, states much more than
a tentative view of the merits of this =e.
B.
I concur with what the majority stated in
its final pamgraph in regard to the utiliza-
tion of Fed.R.Civ.P. 65(aX2). I quite agree
that if the hearing on West's application
for a preliminary injunction had been con-
solidated with an advanced trial on the
merits, that the entire case could have been
tried with little additional effort, with the
result of having one mther than two ap-
peals. This case, in my view, is precisely
the type of case in which Rule 65(aX2)
should have been used. For it is reason-
ably certain that once this case is tried on
the merits, the losing party wfll notice a
second appeal of right under Section 1291.9
does not, in my judgment, expand the circum-
scribed scope of appellate review applicable to a
Section 1292(a)(1) appeal.
9. The Fifth Circuit in Di Giorgio appropriately
noted that it was encountering Section
1292(a)(1) appeals with "more and more fre-
quency." It then pointed out that '[wle note
that while such appeats are pending the general
tendency is to allow the case on the mcrits to lie
dormanL Then, after the lapse of considerable
time. it is found that two appeals are required
for the disposition of the case. This causes
frustmtion attributed to judicial delays, when
the fault lies not with the judiciary, beleagured
though it is by an unprecedented torrent of
c-se, " 488 F.2d at 529.
The 'torrent of casm" the Fifth Circuit notod
in 1973 continues unabated in 1996. The Di-
rector of the Adritinistrative Office has recendy
noted that 'between 1%9 and 1985 * - - ap..
peals fflinp are up 226 per cent." 18 77se Third
Branck No. S. p. 6 (August 1986). 1 do not
believe that parties should be encouraged to
notice Section 1292(a)(1) appeals. For the de-
termination of such an appeal, absent exception-
al circumstances. can serve no useM purpose
HLC 00012289
 290
WEST PUB. CO. v. MEAD DATA CENT., INC.
Cite " 7" F2d 1219 (ath Cir. 1986)
11.
A.
Neither the district court nor the majori-
ty discussed any pait of the record before
the district court to support their respec-
tive conclusions that West on the merits,
will probably succeed in proving as matters
of fact, that (1) West!s armngement of the
cases in all of its publications since January
8, 1910 to the present may be subject to
copyright; (2) that West's pagirtation of all
those publications is an important part of
such an armngement and that, as such, is
also subject to copyright; and (8) that
MDC's intended use of star pagination may
be said to constitute an infringement of
West's copyright of all its postjanuary 2,
1910 publications.
Although West reHed on Hutc/timon
Telephone Co. v. Di-rectory co.,
770 F.2d 128 (8th Cir.1995) (Tr. 11), in the
district court, that court did not make any
findings of fact or indicate in any way that
it believed that the publication of a law
report could be said to be comparable to
the publication of a telephone directory.
The majority cited and relied on Hutch-
im0n, bOth in regaH to its discuasion of
11 copyright protection," at 1223, and in dis-
H
cussion of "infringement" at 1227 and
1228. Ile majority, however, like the dis-
yp
trict eouM did not make any reference to
the record to support its ultimate concur-
er
rence with "the District Court!s conclusion
that West's arrangement is a copyrightable
aspect of its compilation of cases, that the
pagination of West's volumes reflects and
expresses West's arrangement, and that
MDC's intended use of West!s page num-
bers infringes Weses copyright in the ar-
mrigement." Supra at 1223.
for either the partiom the district court, or for a
later panel of the Court of Appeats that will. in
y. if not most cins, be required to nde a
-tid aPPeal nodcod under Section 1291.
10.The record In this cue does not oontain any
copies of a Certificate of Registmtion for any
volunit in which a State com opinion is pub.
lidied. Thus h is impwdble to know what
claims of copyright West niay have made in
regard to its repmu of State coun opinions.
1233
1 find nothing in the record to support
the requisite findings of fact upon which
both the district court's and the -'U-; .Y 6
conclusions of law are based. This is not a
case, in my judgment, that permits an ap-
plication of the clearly erroneous standard
of Fed.R.Civ.P. 52(a) because the district
court did not make any fmdings of fact in
regard to the relevant factual circumstanc-
es of this case. Further, as a member of
the panel that decided Hutchinson, I am
satisfied that case should be distinguished
from this case on much the aame grounds
it was recently distinguished in Toro Co. v.
R & R Products Co., 787 F.2d 1208, 1213
(8th Cir.1986).
West's armngement of cases, however
that arrangement may be made, is con-
tained in each volume of its various publi-
cations. West has no geneml copyright on
its "National Reporter System"; each sepa-
mte volume published by West carries its
own individual copyrighL Most, but not
all, of the exceedingly few Certificates of
COPYright Registration in the record estab-
lish that West has recognized that it may
not obtain a copyright on the major part of
what it published in a particular volume of
any one of those law reports.'11
The record shows, for example, that al-
though West clairned authorship of the "en-
tire work" encompassed in Volume 753
F-2d, West's Certificate of Registration
Forrn TX 1-607-203 (Exh. 3, A63) did not
make any claim of copyright for the page
La
numbers that the majority opinion conclud-
ed -as "an important part!' of the whole of
such a Volume." One of the questions on
w
the copyright registration form required
West to "(g]ive a brief, genemi statement
of the material that has been added to this
work and in which copyright is claimed"
The reoord includes copies of only twelve of
Wesfs Certificates of Copyright Rggistrations
for volumes in which lower federal court deci.
sions are published. See Exhibits 1-12 (A59-
ABO).
It. Wws Certificate of Copyright Registrataon
expreWy stated that "Iclopyright is nm clainied
as to -y p- of the odginal w-k MvWM by
a United States Govemment ofricer or employee
as part of dwi person's official dudes.* (A64).
HLC 00012290
 291

1234 799 FEDERAL REPORTER, 2d SERIES

(A64). West's answer stated "[cjornpila- B.

tion of previously published case reports Nor does the record, as I read it support
including but not limited to opinions, sy- any finding of fact upon which the majority
nopses, syllabi or case law pamgmphs, key could base its conclusion that "the LEXIS
number classifleations, tables and index di- Star Pagination feature infringes WesCa
gest, with revisions and additions." 12 copyright in the arrangement." 14 At 1228.
(A64). I hold that view even if it is assumed that
West stated- on Form TX 1-607-203 that the majority's assumption that WesCs pag-
the '"ntle of the Work" was "Fedeml Re- ination, as an "important part" of a West
porter. Second Series. Volume 753 F.2d." publication, is entitled to copyright may be
The title to a law report is obviously a very valid. For I do not believe that anything in
important part of the whole of such a Vol- the sketchy record in this case can support
ume, however the published court opinions a factual finding that MDC's intended star
may he armnged.13 Yet, it is beyond dis- pagination of West's published court opin-
pute, I believe, that the title to a volume of ions would in any way infringe West!s "ar-
law reports, certainly a most important mngement of cases."
part of the whole volume, simply is not
subject to copyright. See 1 Nimmer on The record, as I read it, merely establish-
Copyright '"ntles," § 2.16, p. 2-186 and es that MDC only intends to add star pag-
the cases cited therein, including Duff v. mation to the court opinions contained in its
Me Kansas City Star, 299 F.2d 320 (8th LEXIS data base. MDC, as I understand
Cir.1962). the record, does not intend to make, nor
The fact that the sequential numbering has it in fact made any use of Weses
"synopses, syllabi or case law pamgmphs,
of the pages of any volume, including a
volume of law reports, is an important part key number classifications, tables and in-
of the volume, does not support a :finding dex digest, with revisions and additions"
of fact that such a part of the whole of a for which West claimed in its Certificates
particular volume of West's publications is of Copyright Registration. The record, as
subject to copyright. Nor, in my judg- I read it, cannot be said to support a fmd-
ing of fact that MDC intends in any way to
H

ment, does such a fact support a finding of

fact that West's armngement of cases is duplicate or reproduce WesCs "armnge-
yp

subject to copyright All parts of a copy- ment of cases," whatever those arrange-
righted volume may not be automatically ments may be.
er

considered a subject to copyright simply Thus, on the district court!s record, the
because a publisher claims a copyright on ultimate question presented on this Seetioik
La

the whole volume. 1292(aXI) appeal is reduced to whether,

12. West's limited claim of copyright for other of Mersky, Fundamentals of Legal Reseamh, (The
w

its federal court reports is made in simitar lan-
guage in Exhibits 4 to 12, inclusive. Exhibits I
and 2 are cWms for the renewal of copyrights
first registered on January 14. 1925 and Novem-
ber 5, 1924, respectively. The record does not
show what claims of copyright were made in
regard to the original registration of thow vol-
umes.
Foundation Press, 1981) at 36. When West
commenced publication of its Federal Reporw
series in 1880, the casm were "arranged" in a
more tmditional manner. The reoord shows
West claimed in its Preface to its Federal Reporl-
er series that 'within a few yearC after 1890.
West "came to be recognized as the official
Reporter of the Federal Courts." (Add. 46a).

13. In 1880, West Publishing Company reprinted
all previously repor-ted lower federW court deci-
sions between 1789 and 1879 in one set of 31
volumes called Federal Casa& 'Unlike most sets
of court reports whem the cam are armnged
chronologically, the decisions in this set are
an-anged alphabedcally by name of cam and
are numbered consecutively." Jacobstein and
14. 1 have the sme view in regard to the disuict
cotLWs conclusion, unsupported as it is by any
refcrence to the record, that "the use of the
second and succeeding numbers following the
Wtial citation to Weses arrangement. the so-
calW 'jump cite (i.e. 479 F.2d 701, 702). in-
fringes on Weses copyright.* 616 FSupp. at
1579.

HLC 00012291
 292

WEST PUB. CO. v. MEAD DATA CENT.. INC. 1235

Cite " 7" F.2d 1219 (gth Cit. 1986)
under the applicable law, MDC's intended support the gmnting of the preliminary
use of West's page numbers, standing injunction in this case." Whether a new
alone, may be said to infringe some copy- "compilation" of Shakeapeare's work may,
right to which West may be entitled under in fact, be subject to copyright as an origi-
factual circumstances yet to be established nal work of authorship does not answer the
on a trial of the merits of this case. It question of whether West's "page numbers
cannot be said that it is probable that West and its arrangement are necessaiily with-
will succeed on the rnerits unless it can also in the scope of copyright protection," as
be said that West will be able to establish the district court concluded. 616 F.Supp.
that its page numbers are entitled to copy- at 1577. Neither the district court nor the
right; one simply cannot infringe a non-ex- majority cite any cases which suggest that
istent copyright.16 the page numbers of a new compilation of
The probability of whether West will suc- any work of Shakespeare must be con-
ceed on the merits must, in my judgment, sidered a subject of copyrighL Nor is any
be viewed in light of the fact that law book authority cited to support the notion that
publishers in the United States have long the citation of the page numbers in a copy-
and traditionally used atar pagination in rlghted compflation of Shakespeare's work
their publication of court opinior, which would somehow infringe an earlier publica-
have been taken verbatim from earlier pub. tion of Shakespeare's plays and sonnets.
lished and copyrighted works of both off, Current litemry pmcdce suggests that
cial and unofficial court reporters." I do such page citations may not be said to
not believe that the reeord in this case can cOnstitut'e an infringement.'s
saiu to support a Dataphase concluzion A judicial opinion mnnot, under *7teaton
that West will probably succeed on the w. Petm be considered a subject of copy-
merits when that record can be said only to right. Nor, in my view, may a compilation
support a fmding of fact that MDC intends of judicial opinions be considered a subject
to do no more than what other law book of copyright unless such a work is "forined
publishers have been doing for a long, long by the collection and assembling of preex-
period of time. isting materials or of data that are * ' *
arranged in such a way that the resulting
H

C. work as a whole constitutes an original

Both the district court and the majority work of authorship." 17 U.S.C. § 101.
yp

referred to the works of Shakespeare to (Emphasis added)."

er

15. The majority more or less agrees that this is cornpilation of Shakespeare's sortnets, can quali-
true. For it stated that if MDCs position is that fy for a copyright protection." At 1224.
"all West seeks to protw is numbers on pages
La

* * * is a correct characterization, MDC wins: I& My copy of John Bardetfs Familiar Q&wa-
two always comes after one. and no one can tions (Eleventh ed. Utfle. Brown and Company
copyright the mere sequence of Arabic num.
w

1939). for example. shows that the quotations

bers." At 1226.
16. Indeed. it is apparent that West has long used
and presently uses star pagination inthe court
opinions published in its Supreme Court Report-
er, its New York SWlement, and its alllornia
Reporter.
17. Ite district court stated that unless "WWs
page numbers and its arrangement of camC are
considered 'necessarily within the scope of
copyright protection," that 'one could not col-
lect Shakespeares plays-themselves not subject
to copyright-into a copyrighted work." ld. at
1577. ne majority swted that an "arrangement
of opinions in a case reporter. no less than a
from plays aitil sonnets in that
work contain "jump citeC to the Act. the Scenes.
and the Lines of the text of the plays and son-
nets as earlier published in WJ. Craig's 771e
Co-plate Worki of ShakeWcam copyrighted by
Oxford UrLiversity Press. I seriously doubt that
the addition of a page number citation by Bart-
L-tt to the other citations to Craig's earlier work
wouW consdtute an infringement of Oxford
University Press' copyright.
19. Section 103 makes clear that 'copyrigM in a
compilation or derivative uvrk extends only to
the material contributed by the author ol swh
%vrk, as distinguished from the preWsting ma.
terW employed in the work. and does not imply

HLC 00012292
 293

1236 799 FEDERAL REPORTEP., 2d SERIES

While there may be some intemsting phasis added). The district court further
copyright questions presented in mgard to recognized, however, that even under its
a compilation of Shakespeare's work,20 I do reading of Callaghai; that the Court held
not believe that the references made to his in that case that "[i]f the armngement of
work can be said to support the view of cases and the paging of the book depend
either the majority or that of the district simply on the will of the printer, or the
courL order in which the cues have been decided,
or upon other accidental cimumstanew,
III.
they of course are not subject to copyright
A. protection because they then involve no
The district court recognized that "this labor, talent, or judgment." Iti at 1576.
case turns on whether or not the succeed- To support the issuance of its broad pre.
ing numbers themselves are protected by liminary injunction the district court stated
copyright," 21 616 F.Supp. at 1579. It atat that Weses pagination "is not just a series
ed, however, that the "Court finds two of numbers each arising by one over its
cases of particular interest and iinportance predecamr." Without any reference to
in providing an analytic fmmework in
the record, the district court further stated
which to consider the claims of the par- that such pagination "is the basis of the
ties," citing Callaghan v. MyeM 128 US.
West arrangement-the key to the self-in-
617, 9 S.Ct. 177, 32 LEd. 547 (1888), and
Banks Law Pub. Co. v. Lawyers Covpenz- dex by which WesVs armngement is ac-
cessed." 23 Id. at 1579.
tive Pub. Co., 169 F. 386 (2nd Cir.1909).
Id at 1575-76. (Emphasis added). The The district court then stated that "Ctlhis
district court also stated that "this Court is, the Court finds, what is meant by the
finds that Callaghan supports and Banks words 'taken as a whole' in the copyright
does not bar copyright protection for definition of 'compilations,"' citing 17
West's laboriously prepared, voluntary ar- US.C. § 101. Id. (Emphasis added).'"
rangement of cases." 22 IaL at 1578. (Em- The district court concluded as a matter of
any exclusive right in the preexisting material." right the arabic numbering system." Id at
H

(Emphas,is added). 1579.

yp

20. 1 Nimmer on Copyright, § 2011A], pp. 2-9.

put and answcred the following question in re- 2L The distnct coum of course, was staWW a
gard to an original work of Shakespeam: conclusion of law rather than making a finding
of fact in stating its view in regard to what 'Cal-
er

Suppose a scholar were to PainstakinglY ex-

plore the stacks of the British Museum for a kghan supports" and what "Banks does not
numbcr of years. and finally after much cffort bar.* The same thing is true of its statement
La

find that which he was seeking. Le., a forgot- that it "findC that Callaghan and Banks am of
ten Shakespeare manuscripL The -holar "particular intemt and importance in providing
may well have cxemised much skill, training, an analytic framework" for its decision of Lhis
w

knowledge and judgment. but should this en- case.

tide him to a,copyright in the manuscript?
Clearly not, since he did not cngage in any act
of authorship.
See also Judge Learned Hand!s comment in
regard to Keats' work in Sheldon v. Metro-
Goldwyn pictures Corp., 81 F.2d 49, 54 (2d Cir.
1936), afficl, 309 U.S. 390. 392, 60 S-Ct- 681 84
LEd. 825 (1940). whem he stated that - - - 1* If
by some magic a man who had never known it
were to compose anew Kcates Ode On a Gm
cian Urn, he would be an 'author: and. if he
copyrighted it, others might not copy that pOeIM
though they might of course copy Kcals's."
21. The district court also purponed to recognize
that 'Jilt is beyond cavil that one cannot copy-
23. The district court did not explain what a
.Self-index" might be or how an an-angement of
cas" may be "accessed.'
24. That "finding," like the others above noted, is
soually a statement of a conclusion of taw.
That conclusion of law, in my judgment. is not
tenable for the reawn the words "taken as a
whoie do not appear in Section 101's definition
of a 'compilation." That definition expressly
proovides that a "compilation" is a work "ar-
ranged in such a way that the resulting work as
a whole constitutes an original twrk of author-
ship." let (Emphasis added).

HLC 00012293
 294
WEST PUB. CO. v. MEAD DATA CENT., INC.
Cite " 799 Fld 1219 (ath Cir. 1966)
law, without any reference to the record,
that "WesCs page numbers and its ar-
rangement of cases are necessarily within
the scope of copyright protection." Id. at
1577. (Emphasis added).
I do not agree that Caliaghan and
Banks provide "an analytic fmmework in
which to conside the claims of the par-
ties." Id at 1576. Nor do I agree that
"West's page numbers and its arrange-
ment of cases are necessaiily within the
scope of copyright protection." Id at
1577. (Emphasis added).
B.
The record in this mse does not indicate
in any way how or by whom WesVs page
numbers are, in fact, created. West's affi-
davits do not identify any person as the
"author" of any of the page numbers. The
only thing the record in this case shows, as
I read it, is that West's bouLnd volumes
carry the same volume numbers and the
same page numbers as West's advance
sheets.25 How those page numbers are
assigned West!s advance sheets is a tota
mystery so far as the record is concerned.
Judicial notice may be taken of the fact
that the original page numbers that appear
on a slip opinion submitted by a judge for
H
publication never appear in any West ad-
vance sheet" There is indeed substantial
yp
doubt whether those page numbers could
be considered part of the judge's work of
er
authorship. For the pagination of a
25. The Berring affidavit (A31-39), for example.
simply states that West "an-anges American judi-
cial decisions within its National Reporter Sys-
tem publicationC (A34 % 13). There is no state-
ment made in regard to how those cases are
"arranged" or, more particularly, how the page
numbers are placed in any of Weses volumes.
The only mention of WeVs pagination is in
paragraph 16 of the affidavit which states that
there is, in fact, 'identical numbering and pag-
ing of the volumes in both the advance sheets
and the permanent, hardbound editions."
(A38).
The Ginnow affidavit (A40-48) is likewise si-
lent in regard to how, when or by whom the
page numbers are. in fact, placed on West's
volumm Ginnomes affidavit. like that of Ber.
ring, simply reiterated that "decisions published
in [West's) hard-bound, perinanent volunws re-
tain the same volume number and pagination
1237
judge's slip opinion is, at best, the work of
a judge's secreta" or, in this day of ad-
vanced technology, the work of the secre-
tary's word processor in electronic re-
sponse to the secretary's punch of a button
on a maciiine.27
Thus, the factual question in regard to
how or by what process, electronic or oth-
erwise, West assigns a completely new set
of page numbers to a judge's slip opinion is
an open factual question that can only be
determined on a trial of the merits. It is
my view that West's probability of success
on the merits simply cannot be measured
on a record that does not provide any infor-
mation in regard to whether WesVs new
advance sheet pagination, like a judge's
secretary's original pagination of his slip
opinion, is nothing more than an electronic
response to a direction given a machine or
whether, as a matter of fact, West!s new
pagination may be considered an original
work of authorship.
If, on the trial of the merits, it is estab-
lished that West's new page numbers are
assigned a judge's slip opinion by some
automatic electronic process, it is inconceiv-
able to me that the public policy that denies
all right of copyright to a court opinion
would nevertheless gmnt copyright to the
page numbers of the volume in which such
a court opinion is published. Therefore, I
do not believe that the district court's dis-
cussion of Callaghan and Banks within
the structure of its "analytic fmmework"
can be said to support its Dataphase con-
La
used in the advance sheet volumes" and that
"each volume in ever-y Reporter series retains
identical pagination between advance sheet vol-
w
ume and perrnanent volume to promote reliable
and consistent citation." (A48, f 24 and 25).
26. The page numbers on this slip opinion, for
e"mple, vdIL, like Clementine, be lost and gone
forever once the opinions in this case are pub-
lished in a West advance sheet.
27. This is also true where the judge dmfts his
opinion in long hand and "authors" the page
numbers on his legal pad. For his secretary
does not copy the judge's page numbers when
the judge's long hand draft is tmnscribed; the
secretary or the word processor, mther than the
Judge, is the "author" of the page numbers on
the slip opinion in its typewritten forin.
HLC 00012294
 295

1238 799 FEDERAL REPORTER, 2d SERIES

elusion that West will probably succeed on had most recently held that "sorne uses of
the trial of the merits of this case. a numbering system cannot meet originali-
ty requirements for copyright." 10 At 1228.
C. It, however, purported to distinguish Toro
It :z my view that the majority's analysis
Co. by stating that "the copyright we rec-
is based on what I beligve is an incomplete ognize here is in West's arrangement not
and untenable view of Callaghan and in its numbering system; MDC's use of
Banks. Although the majority, in its dis- Weses page numbers is problematic be-
cussion of Banks stated that "we would be cause it infringes West!s copyrighted ar-
inclined to examine the official reporter's rangement, not because the numbers
independent efforts in arrangement and themselves are copyrighted." Id. at 1228.
paginatiDn on their merits to see if they The majority therefore concluded that the
meet originality and intellectual-emation re- principles of copyright law stated in Hutch-
quirements," at 1226, and although it stat- inson rather than those stated in Toro Co.
ed that "Callaghan establishes at least were applicable to this case. I disagree.
that * * * in each ewe the armngement
must be evaluated in light of the originality In Hutchinson, this court recognized
and intellectual-creation standards," at that the principle that "telephone directo-
1225, the majority nevertheless definitely nes and similar publications" were subject
concluded that "West's case arrangements, to copyright was established by a "long
an important part of which is internal page line of cases." Hutchinson, of course, was
citations, are original works of authorship based on and merely extended that "long
entitled to copyright protection." 28 At 1-ne of cues." Leon v. Pacific Telephone
13. Co., 91 F.2d 484, 486, (9th Cir.1937), the
The majority, I believe correcdy, conclud- first cue cited and relied upon in Hutchin-
ed that "the treatrnent of case arrange- son, quoted Justice Holmes' statement
ment and pagination in Callaghan was not made in 1903 in Bleistein v. Donaldson
crucial to the Court's decision." 29 At 1224. Lithographing Co., 188 U.S. 239, 250, Z3
The majority nevertheless concluded, I be- S.CL 298, 300, 47 LEd. 460 (1903), that
* *
lieve erroneously, that we must "follow the "directories and the like, * may be
Supreme Court!' for the reason that "Cal- copyrighted." Sampson & Murdock Co. v.
H

laghan does not seem so hostile to the very Seaver-Radford Co., 140 Fed. 539, 542 (lst
yp

idea that case compilation, arrangement, Cir.1905), also cited in Leon, traces the
and paging can be protected by copyright." origin of the directories' rule back to at
Id. at 1226. (Emphasis added). least 1839.31
er

The majority recognized that Toro Co. v. Professor Nimmer puts the directory
La

R & R Products Co., supm 787 F.2d 1208, cases in an entirely different category from
28. The majority stated that the "key to this case 29. The majority's suggestion that the -teaching
w

* * * is not whether numbers are copyrighta-
b,e,, b.t whethcr the copyright on the books as a
whole is infringed by the unauthorized appro-
priation of these particular numbers." (Empha-
sis added). At 1227. The majority aLso stated
that "we concur in the District Court's conclu-
sion that West's arrangement is a copyrightable
aspect of iLs compilation of cases, that the pag-
mation of West's volumes reflects and expresses
West's. arrangement, and that MDCs intended
use of West's page numbers infringes West's
copyright in the arrangement." At 1223. It fur-
ther stated that "we agree with the Disuict
CourL that * * * the denial of copyright protec-
tion in Banks was based upon the official status
of the reporter." At 1225.
of Callaghan with respect to the issues before us
does not come through with unmistakable clari.
ty," at 1225, was not made in regard to its
recognition that "the treatment of case arrange.
ment and pagination was not crucial to the
Court's decision" in Citllaghan.
30. The majority further stated that "no one can
copyright the mere sequence of Arabic num-
bers." At 1227. The preliminary injunction is-
sued by the district court, of course, granted
precisely that protection; that interlocutory or-
der did not so much as mention West's ar-range-
ment of cases.
31. That case held that "[d]irectories and works
of like character have been specific-ally protect-

HLC 00012295
 296
WEST PUB. CO. v. MEAD DATA CENT., INC.
Cit. - 7" F.2d 1219 (Sth Cir. 1966)
the cases involving the publication of law
reports.32 The fact that the slight amount
of intellectual labor necessary to produce a
plat map may be eonsidered sufficient to
estaDiish copyright, as illustrated by Ro -
ford Map Pub. v. Dir. Ser-pice Co. of Colo-
rado, 768 F.2d 145 (7th Cir.1985) (cited by
the majority, at 1223 and 1226), does not, in
my judgment, support the majority's con-
clusion that Banks "requires a greater de-
gree of intellectual creativity than the
trend of the modern cases." Id. at 1225-
1226.
1 find nothing in the record in this case
to support a finding of fact that it takes
more intellectual m-eativity to put page
numbers on a volume of law reports today
than it did in the yesterdays in which Cal-
laghan and Banks were decided in 1888
and 1909, respectively. Indeed, the trial on
the merits of this case may establish that
West's pagination is no more than the work
of a machine responding to a punch of a
button, mther than the exercise of the will
of a printer, who yesterday, was at least
required to set type for the pagination of a
volume of law reports.
IV.
I do not agree with the majority's state-
H
ment that "the denial of copyright protec-
tion (in Banks ] was based upon the official
yp
status of the reporter," at 1225; its state-
ment that Banks "diverges from Catia-
er
ed, at least sinoe 1--wis v. FuLfarroP4 2 Beav. 6,
decided in 1839, and that they are to be protem.
ed is now firmly established.' ieweJer5r Circu.
lar Pub. Co. v. Keystone Pulk C%, 281 Fed. 83.
(2d Cir.). cem danh-A 259 M& 581' 42 S.CL 464,
66 LEd. 1074 (1922). was also cited in Loam
That case was dedded by the same panel that
decided BankL Judge Henry Wade Rogm con-
cluded that "(ilt was at one time intimated in
certain judicial opinions that directories were
not entided to copyright. But the law is now
well euablished to dw conuary in Fmgland.
[Citing many English cases]. It is equally well-
established law in this country. (Citing many
federal cases). And in BkLocin v DonakEwn
Lithograph-g Cx, 198 UJIL 239. 250. 23 S.CL
298. 47 LEd. 460. Mr. Justice Holmek wridng
for the court, speaks of dimctories as being
capable of copyright." IdE at 85.
Judge Rogen treated CaUaghan in subsuntial.
ly the same numner Cagaghen would be treated
1239
ghan"; or its conclusion that Callaghan,
as a Supreme Court decision, must there-
fore be followed rather than Banks. Id. at
1226.
Professor Nimmer makes clear that the
judicial opinions of both state and fedeml
courts are in the public domain and are
therefore not subject to copyright 1 Nim-
mer on Copyright, § 5.06[C] at 5-58-5-59
(1985). Professor Nimmer cited Wheaton
w. Peters, 33 U.S. (8 Pet.) 591, 8 LEd. 1055
(18SQ, to support his conclusion in regaM
to fedemi court opinions. Banks v. Man-
chester, 128 U.S. 244, 9 S.Ct. 36, 32 LEd.
425 (1888), and Building Offu-ials & Code
Administrators International, Ina w.
Code Technology, Ina, 628 F.2d 730 (ist
Cir-1980), were eited in regard to state
court opinions; the latter was cited "for a
discussion of the older cases." ld. at &-58,
n. 30. CallWhan, together with a "see"
citation to the Second Circuies opinion in
Banks, and a "cf." citation to Wheaton v.
Petem was cited to support Professor
Nimmer's statement that: "With respect to
the public domain status of judicial opin-
ions, somewhat anomalously the older de&
sions held that an official reporter paid by
the state may personally claim copyright in
the headnotes ahd synopses of court opin-
ions, written as a part of his official duties,
in the absence of an agreement to the
contmry." Id. at 5-60, n. 32.
Banks v. Manchester, which the Court
decided in tandem with Callaghan, was not
ma yews later in Eggers v. Sun Sda Corpora.
La
don, 263 Fed. 373 (2d Cir.1920). The fewekrk
C&Cular court quoted Justice Blatchford's obser.
vation that, on the facts of Callaghan. -one of
w
the most significant evidences of inffirWmnt
exists fivquendy in the defendant's volumes,
namly the copying of emrs made by Mr. Fret,
man." 14L at 95.
3L I Nannw an Copyright, § 2.04(B]. pp. 2-40-
2-42. dismtsses 'catalogs and directorice and
stom dat "(alhhough some may question
whether catalogs, directories and the like shotdd
be regiLrded as works of authorship subject to
copyright: protection. -h p-t-u- h- I-W
been recognized, so that the present Copyright
Act breaks no new ground in this respect.' ho-
feuw Nimmer does the sam thing in regard to
'maps." U § 2.08[Al. p. 2-7S to 2-82.
HLC 00012296
 297

1240 799 FEDERAL REPORTER, 2d SERIES

cited or discussed by the majority. Both he published between 1816 and 1827. The
emes must, in my view, be given appropri- inclusion of that material in those volumes
ate consideration, for both applied the prin- substantially increased the cost of Whea-
ciples of law established in Wheaton v. ton's ReportS.34 Peters compressed the
Peters. The majority opinion has not, in twenty-four volumes of opinions published
my view, given appropriate consideration to by all three earlier reporters into only six
or recognition of the rationale of the three volumes of his Condemed Reports, which
Supreme Court cases that control the deter- he published between 1830 and 1934. He
mination of this case. was able to reduce the price for all the
Part III of Professor Craig Joyce's arti- Court's opinions from $130 to $36 for his
cle 7he Rise of the Supreme Court Re- reports by using smaller type, omitting the
porter: An Institutional Perspective on arguments of counsel and appendix notes,
Marshall Court Ascendancy, 83 Mich.L. and by substantial elimination of some con-
Rev. 1291, 1351 to 1391 (1985) (hereafter curring and dissenting opinions. Id at
cited as Joyce), is devoted to Wheaton v. 1365.
Peters.' While I agree with Professor Both Justice Story and Justice Wash-
Joyce's suggestion that "[f]ew cases tell ington "enthusiastically supported Peters'
stories so fascinating as Wheaton v. Pe- undertaking." Id. at 1366. Wheaton's ad-
ters," id at 1391, it is sufficient for verse reaction was predictable.35 Wheaton
present purposes to state that' Peters, employed Elijah Paine and Daniel Webster
shortly after he succeeded Wheaton as the to represent him. In May, 1831 Wheaton
Court's official reporter, decided to publish filed a bill in equity in the Circuit Court for
a work entitled the Condensed Reporb of the Eastern District of Pennsylvania "pmy-
Cases in the Supreme Court of the Unit- ing for an injunction to prevent the further
ed States, Containing the Whole Seiies of printing, publication or sale of volume 3 of
the Decisions of the C&urt From Its Orga- the Condemed Reporte and an accounting
nization to the Commencement of Pe- of profits." Id at 1370. That bill alleged
ters's Reports at January Term 1827. Pe- that volume 3 of Peten' Condensed Re-
ters' motive was basicalLv a commercial ports "contained 'without any material ab-
one. breviation or altemtion, all the r-eports of
H

cases' in volume 1 of Wheaton's Reports."

A glance at any one of Wheaton's Re- Id at 1370.36 A prelintinary injunction was
yp

ports shows that the scholarly Wheaton, initially issued by Justice Baldwin, sitting
aided and encoumged by Justice Story, in- as a Circuit Justice with Judge Hopkinson,
er

cluded elaborate head notes, a full summa- but was dissolved two years later by Judge
ry of the arguments of counsel, together Hopkinson who acted alone during one of
La

with a large number of appendices in the Justice Baldwin's not infrequent "derange-
twelve volumes of Supreme Court reports ment of the mind." Id at 1371. The ease
w

33. A shorter version of Professor Joyce's re-
search was also published under the title of
Vlhcaton v. Peters: 7'he Untold Story ot the Early
Reportas in Yearbook 1985 of the Supreme
Court Historical Society, pp. 34-92. Part III of
the Yearbook ar-ticle is substantially the same as
Part III of the Michipn Law Review Article.
34. To obtain copies of all the Coures opinions
since 1790, one would be required to purchase
three volumes of Dallas' Repam, nine volumes
of Cranch's RepoM and the twelve volumes of
Wheaton's Report4 at a total cost of $130.
35. Joyce states that: 'Wheaton, * * * first
learned of Peters' plans from this publisher)
who informed him also that the proposal had
put almost an cntire stop to the sales of both the
Reports and the Digest of Decisions,- I& at
1376. Viheaton's publisher urged Wheaton to
bring an action for infringement pointing out
that 'until an example is made of these literary
Pirates thm can be no smaity for the labours
of authors and Publishm." M at 1376.
36. Although I do not believe it legally agnifi-
Cant. CXCept tO the extent it niay relate to the
majority's preoccupation with whedier a report-
cr may or wtay not be an "official" reporter. it is
to be noted that Wheaton was mm an offidal
reporter of the Court when he published Vol-
ume I of his reports. Volume I of WheatoWs
Repom was published in 1816 before the Re-
Portees Act became cffmdve on Mamh 3. 1917.

HLC 00012297
 -298
WEST PUB. CO. v. MEAD DATA CENT., INC.
CAte - 7" F.1d 1219 (Sth Cl, 198Q
then went on direct appeal to the Supreme
Court.
Joyce accurately stated that "Wheaton's
central point (on appeal]--that the deci-
sions of the Court as rendered by the Re-
porter had always been regarded as subject
to copyright by him-was not without sub-
stantial foundation." 37 Ict at 1373. Whea.
ton's counsel recoguized, however, that
11 unless Wheaton had aomehow obtained
copyrights in the manuscript opinions of
the Justices in every significant decision
handed down during his tenure as Report.
er, the Condemed ReporU had infringed
no interest of any real value in the market,
place." id. at 1377. Wheaton's counsel
therefore argued that "Wheaton had ac-
quired a copYrightable interest in all such
opinions by judges' et' 11 33 Id. at
1377.
Thom- Sergeant argued on behalf of
Peters that, as a matter of public policy,
the opinions of the Court must be con.
sidered to be in the public domain and not
37. Joyce explained that "Wheaton's expectations
regarding the copyrightability of his Reports
had an entirely remnable basis." a at 1374.
In a preargument memorandum Wheaton wrote
Daniel Webster. he recognized that it could be
held that the opinions of the Court may not be
subject to copyrighL Wheaton recognized that
H
if the Court should so hold, he would be "re-
duced to arguing that the Reporo:4 berause they
yp
included parts individually susceptible to copy-
right, cortstituted compilations entitled to pro-
tection in their entirety.* Id. at 1374.
er
The majority opinion, as I read it. is based on
its acceptance of Wheatores argument, which
La
was rejected by the Supreme Court.
38. Paine argued in part that "lw)ere not the
opinions of the judges their own to give away?
w
Are opinions matter of record, as is pretended?
* * * [Tjhere is no law or custom to put opin-
ions upon record, * * * Nor were they ever put
on record in this case. * * * The copy(right) in
the opinions, as they were new, original and
unpublished, must have belonged to some one-
If to the judges. they pvc it to Mr. Wheaton.
That it did belong to them is evident; ber-ause
they are bound by no law or custom to vnite out
such elaborate opinions. * * * What right,
then, can the public claim to the manuscript?
The reportees duty is to write or utke down the
opinions. If the court choose to aid him by
giving them theirs. can anyone complain?"
That argument is reported in 33 US. (B Pet.) at
614.
1241
subject to copyright. Id. at 1378. After
listening to four days of omi argument the
Court convened on March 19, 1934 to an-
nounce their opinions." Joyce accumtely
stated that "McLean's (majority) opinion
left open the possibility that a tiny, unspec-
ified portion of the matter claimed by
Wheaton as author-* ' * 'the statements
of the cases ... and the abstmcts thereof
-might indeed have been infringed by Pe.
ters."'O Id. at 1384. He added, however,
that for "all pmctical purposes," * . * the
controversy had come to an end when Me-
Lean stated that:
It may be proper to remark that the
court are unanimously of opinion, that no
rePorter has or can have any copyright in
the written opinions delivered by this
court; and that the judges thereof can-
not confer on any reporter any such
righL
I& at 1385.
Although both Justices Thompson and
Baldwin dissented in regard to other issues
39. On March 18, 1834, after oral arguments
were closed on March 14, 1834, Justice Story
took the extraordinary wdon of conducting a
conference with both Wheaton and Peters the
day before the Court handed down its decWon
to try to get them to settle their controversy.
Story pve both men a copy of a memorandum
which advised the parties that the decision of
the Court. if handed down, would unanimously
hold that no right of property did or could exist
in the Court's opinions, and that the Justices
wem without power to confer upon its Repor-t-
ers any copyright thereto. As to the marginal
notes and indices prepared by Wheaton, how-
ever. the Court had touched upon but not finally
determined the litigants' rights. 'Under the eir-
cumstances.* the memorandum concluded, 'the
Court thinks, that it is a fit subjcct for honoura-
bit compromise between the parties." liL at
1380. On the advice of Webster, Wheaton re-
jeded the suggested compromise.
40. Joyce also noted that '[i]n his dissent, Justice
Baldwin carefully noted that, in the proceedings
on remand, Wheaton might still prove his rights
to literary property in 'the raarginal nolm or
syllabus of the cases and points decided, the
abstract of the rewrd and evidence. and the
index to the several volumes: 33 U.S. (B Peo.) at
69gg (F. Brightly ed. 1893)." ld. at 1394-85 n.
515.
HLC 00012298
 299

1242 799 FEDERAL REPORTER, 2d SERIES

decided in Wheaton v. Peters, Joyce appro- Although the majority cited and quoted a
priately noted that "on the decision's cen- short portion of Wheaton v. Peters in a
tral point-the noncopyrightability of the footnote, at 1223, n. 3, it did not distuss
opinions of the Justices-there was una- that leading case in any detail. It did not
nimity: the Court could allow no impedi- even cite Banks v. Manchester. Rather,
ment to the fullest possible dissemination the majority discussed Callaghan in a
of its judgments." Id at 1390. manner that suggested that Callaghan
must be viewed as having somehow quali-
The impact of Wheaton v. Peters, in my fied Wheaton v. Peters' rationale and its
judgment, has been both broad and last- direct holding. I do not agree that Calla-
ing." The concluding sentence of Justice ghan can be read in that manner. Nor do I
McLean's opinion destroyed "a presump- agree with the majority's suggestion that
tion of ownership, long shared by Wheaton, the teaching of Callaghan "does not come
his predecessors and the Justices them- through with unmistakable clarity." Slip
selves, which if given the force of law op. at 8. For I believe Callaghan's teach-
would have bestowed upon the Reporters ing is clear when that case is read in tan-
of the Supreme Court exclusive title to dem with Banks v. Manchester, 128 U.S.
those classic expressions of American law 244, 9 S.CL 36, 32 LEd. 425 (1898), as I
that constitute the Court's essential legacy believe it must."
to the nation." Id. at 1386. Banks v. Manchester, on its facts, in-
In 1883, West published the annotation volved a case in which the defendant pub-
lished only the court opinions that had been
"Literary Ilroperty at Common lAw," 17 earlier published by the plaintiff.
Calla-
Fed. 593 (1983), authored by Henry Wade ghan, on the other hand, on its facts was a
Rogers .12 Rogers quoted the concluding
case in which the defendant not only pub-
sentence of Wheaton v. Peters, and added lished the plaintiffs earlier-published court
that "[a]ll that the reporter can copyright opinions, the defendant also copied that
is his own individual work-the head-notes, part of the plaintiffs law reports-the
the statement of the case, analysis or sum- head notes and the statements of the cases
mary of the arguments of counsel, the in- prepared by the plaintiff-that Wheaton v,
H

dex, etc." Id- 33 U.S. (8 Pet.) at 596.43 Peters recognized was subject to copyright.
yp

41. Joyce noted the immediate impact of %%ea- of the Supreme Court of Iowa in its Morthwest.
ton v. Peters in regard to the publication of em Reporter in the face of an Iowa statute
Johnson's Chancery Reports Condemed in 1836 which purported to give a copyright to Banks.
er

in which the earlier published opinions of Chan- West's argument that "there is no such thing as
cellor Kent were -released from the state of a copyright or other property right in the opin.
La

confinCMCrLt in which they are at present kept
by means of the large sums asked for the vol-
umes which contain them." id. at 1386, n. 524.
ions of the judges" was sustained. as it should
have been. M at 56.
Circuit Judge Brewer relied on the lower
w

Vlheaton v. PLters produced the flood of litip-

tion between law book publishers reflected by
the "older caseC to which Professor Nimmer
made reference by his citation of Building Olfi-
cials, cited in I Nimmer on Copyright, § 5.06[Cl,
p. 5-58, n. 30.
42. Henry Wade Rogers was Tappen Professor Gf
Law at the University of Michigan School of
Law in 1883. He later served on the law facul-
ties of Northwestem and Yale Law School. He
was appointed to the Court of Appeals for the
Second Circuit in 1913, serving until his death
in 1926. See Judges of the United Staw (Judi-
cial Conference of the United States, 1983).
43. A few years later, in Banks v. West PubUshing
Co., 27 Fed. 50 (C.C.Minn.1886). West success-
fully sustained its right to publish the opinions
court opinion in Banks v. Mancjhesfcr, 23 Fed.
143 (1885), which in turn had relied oii VAea-
ton v. Petm and on both of the lower coures
opinions in Myen v. CWlaghan reported in 5
Fed. 726 (1881) and 20 Fed. 441 (1883). which
were also based on "caton v. Peters. The
Supreme Court, of course, affirmed the lower
court decisions on which Circuit Judge Brewer
relied when it decided Banb v. Mancheiter and
Calbnhan in 1888.
44. Banks v. Manchester was decided on Novem-
ber 19. 1888, less than a month before Calla-
ghan was decided on December 17, 1888. The
opinions in both r-ases were written by Justicc
Blatchford.

HLC 00012299
 300

WEST PUB. CO. v. MEAD DATA CENT.. INC. 1243

Clot - 7" FJd 1219 (Uh Cir. 1956)
The Court concluded in Banks v. Man- thentic exposition and interpretation of
chester that application of the principles the law, which, binding every citizen, is
enunciated in Wheaton v. Peters estab- free for publication to all, whether it is a
lished that the defendant should prevail on deciamtion of unwritten law, or an inter-
the facts of that cue. In Callaghan, the pretation of a constitution or a statute.
Court concluded that the application of the 1& 128 U.S. at 253, 9 S.CL at 39. The
same principles of law supported a judg- Court then quoted the final sentence of
ment that plaintiff was entided to injunc- K%eaton v. Peters and added that "[w]hat
tive relief on the facts of that case. a court, or a judge thereof, cannot confer
The record in this case establishes a fac- on a reporter as the basis of a copyright in
tual situation compamble to Banks v. Man- him, they cannot confer on any other per-
chester mther than that presented in Cal- son or on the State." Itt at 254, 9 S.Ct. at
laghan. Hence, it is my view that our 40.
panel must follow Banks v. Manchester's In Callaghan, the defendant had copied
application of the principles enunciated in the plaintiff's head notes and statements of
Wheaton v. Petm and distinguish Calla- e-ach case-the only part of a law report
ghan on its facts. subject to copyright The Court cited
In Banks v. Manchester it is clear the Banks v. Manchester to support its conclu-
defendant published only the opinions of sion that "there can be no copyright in the
the Supreme Court of Ohio together with opinions of the judges, or in the work done
the syllabus and the statement of case that by them in their official capacity as
had also been prepared by the judges." In judges." Iti 128 U.S. at 647, 9 S.Ct. at 184.
affirming the circuit courV s dismissal of It also concluded, consistent with Wheaton
the plaintiffs infringement action, the v. Peters, that there is "no ground of public
Court 'concluded in Banks v. Manchester policy" which prohibits a reporter from ob-
that: taining a copyright in that part of a law
The question is one of public policy, and report "which will cover the matter which
there has always been a judicial consen- is the result of his intellectual labor." Ict
sw, from the time of the decision in the at 647, 9 S.CL at 184." Callaghan, in its
case of *%eaton v. Peien, S. PeL 591 [, application of the principles stated in both
H

33 U.S. 591], that no eopyright could Wheaton v. Peters and in Banks v. Man-
under the statutes passed by Congress, chester expressly adopted the circuit
yp

be secured in the products of the labor courVs findings of fact in regard to all
done by judicial officem in the discharge volumes of Freeman's Illinois Reports in
er

of their judicial duties. The whole work litigation.47 Callaghan noted in regard to
done by the judges constitutes the au- volumes 32 to 38, inclusive, that Judge
La

4S. The Couri stated that "it is to be taken as 47. The Court did so by quoting with approval
true, I * * that what the defendant published in the findings of fact made in Circuit Judge
w

'rhe American Law Journal' was exclusively the
work of the judges, comprising not only the
opinion or decision of the court or the conunis-
sion but also the statement of the case and the
syllabus or head note." 12S U.S. at 251, 9 S.CL
at 39.
46. CWtaghan expreWy adopted Justice Storys
view of %%eaton v. Pwers as expressed in Gray
Y. Russell, as repor-ted in I Story, 11 (1839) (and
reported as Case No. 3,728 in 10 Fed. Cases
1035). Justice Story stated in that case that it
was "little doubted by the court (in Whwton v.
Peters ]. that Mr. Wheaton had a copyright in his
own marginal notes. and in the arguments of
counsel as prepared and arranged in his work."
Id 128 US. at 650, 9 S.CL at 185.
Drummond's first opinion in Myen v. Call4ghan
(which dealt with volumes 32 to 38 of plaintifrs
Freeman's flaois Reports) as reported in 10
Bissell 139 (1891) and from his second opinion
in Myen v. Callagham (which dealt with vol-
umes 36 to 46 of the same reports) as reported
in 20 Fed. 441 (C.C.N.D.111.1883). Judge DnLm-
mond's first opinion is also reported in 5 Fed.
726 (C.C.N.D.111.1881). Both Judge Drum-
nmud's opinions show that he relied solely on
%%earon v. Peters and that he made his ftndings
of fact consistent with the principles stated in
that case.

HLC 00012300
 301

1244 799 FEDERAL REPORTER, 2d SERIES

Drummond had stated in his first opinion to give a deciee to the plaintiff, although
that although there was an "appearance of it is claimed that the armngement of the
independent labor performed" by defend. cases and the paging of the volumes are
ant's editors, he found as a fact that it was protected by a copyright."
Id, (Emphasis
apparent that "Mr. Freeman's volumes
were used; in some instances words and added). The Court accepted Judge Drum-
sentences copied without chapge, in othem, mond's conclusion that "the armngement
changed only in form; and the conclusion is of law cases and the paging of the book
irresistible, that for a large portion of the may depend simply on the will of the p-int-
work [defendants] obtained that informa- er, of the reporter, or publisher, or the
tion from the volumes of Mr. Freenian." order in which the cases have been decided,
128 U.S. at 660, 9 S.Ct. at 189.48 or upon other accidental circumstances."
In regard to volumes 39 to 46, the Court Id at 662, 9 S.CL at 193.50
quoted Judge Drummond's finding of fact Callaghan, as I read that case, treated
made in his second opinion that: "Upon the plagiarized pages of the plaintiff's vol-
-mparing parts of each of the volumes, unies solely as a question of fact and that
' * * I think there can be no doubt that in it applied
the principles enunciated in
some respects, in each case, the Freenian
Wheaton v. Peters to all factual circum-
Yolume has been used by the defendants in
the head-notes, the statements of facts, and
stances presented in that case. Those fac-
the arguments of counsel." 128 U.S. at tual circumstances, as I have stated, were
661, 9 S.CL at 189.49 in sharp contrast to those presented in
Banks v. Manchester, decided in tandem
Judge Drummond observed in his second with Callaghams'
opinion in regard to volumes 39 to 46 that
the "fact appears to be, and indeed it is not Our panel must of course, follow Calia-
a subject of controversy, that in arranging ghaiL But our panel must also follow
the order of cases, and in the paging of the Wheaton v. Peters and Banks v. Manches-
different volumes, the Freeman edition has ter. Callaghan, as I read that case, sim-
been followed by the defendants." Iti at ply applied the principles enunciated in
661, 9 S.CL at 189. He, however, added in Wheaton v. Peters to entirely different fac-
H

the same sentence, that "while this is so, I tual circumstances than those presented in
should not feel inclined, merely on that either Wheaton v. Peters or in Banks v.
yp

account and independent of other matters Manchester.

4& Judge Drummond found, again as a matter
er

of fact. that the defendant plagiarized plainWs the two editions. when I say, taking the whole
together, the Freeman volumes have been used
head notes and statements of the cases in such a in editing and publishing the defendants' vol.
La

manner that 'the paging of the [defendant's] umes." M at 662. 9 S.Ct. at 190.
volumes is substantially the same [as plaintiffs
page numbers] so that the cases in the corre. St. It is not unlikcly that the Court quoted Judge
w

sponding volumes appear on the sam page

Id
49. The Couri apparently made its own examina-
tion of volumes 39 to 46. For it added its own
finding that "one of the most signiricant evi-
dences of irLfringement exists frequently in the
defendants' volumes, namely, the copying of the
errors made by Mr. Freeman." Id 128 U.S. at
662, 9 S.Ct. at 190.
50. The Court also quoted Judge Drunnnond's
finding Lhat although the objeo of the defend-
ant's plagiary of the plaintiffs page nLLmben
was to avoid 'confusio. in the referenoes and
examination of the cases." he did not regard
that fact -as an indepcndent matter, but in con.
nection with other similiarities existing between
Drummond's discussion of the identiral pag-
ination of the volumes in response to a legai
argument made by the defendant in C411agha&
Defendant argued that "ftlhc paging of the
Freeman edition is equally wanting in any ele-
ment of literar-y property, orginality or exclusive
ownership. Ever since the invention of print-
ing. books have been paged in numerical order,
and appellee might with equal propricty claim
an exclusive propeny in the system of Arabic
numerals as in the paging of his books. More.
Over. the Printed paging is merely the mechani-
cal labor of the printer. and is never perforTned
by the author or pubiishcr." 128 U.S. at 641, 9
S.Ct. at 183.

HLC 00012301
 302
WEST PUB. CO. v. MEAD DATA CENT., INC.
Cite m 7" F.2d 1219 (Sth Ck. 1936)
The principles of law stated and applied
in all three of the Supreme Court cases are
the same. I believe that an appropriate
application of those principles requires that
the district court's interlocutory order be
reversed rather than affirmed.
For it is my view that if pagination of a
law report had been at issue in any of
those three cases, the Court would not
have hesitated to hold that star pagination
in a volume of published law reports would
not be subject to copyrighL That was the
conclusion of the only court that has con-
sidered that precise issue.u I turn now to
the Second Circuies decision in Banks.
For I agree with the majority's conclusion
that "the treatment of case armngement
and pagination in Callaghan was not cru-
cial to the Court's decision" in that case.
op. At 1224.
V.
I dissent from the majority's acceptance
of the district coures conclusion that
"Banks does not support MDC's claim." 53
At 1225. The Second Circuit concluded in
Banks that the plaintiff's infringement ac-
tion was properly dismissed.54 The plain-
tiff claimed in Banks that the eleven vol-
umes (Vols. 38 to 49) of defendant!s
H
"L.Ed." reports, which contained forty vol-
umes (Vols. 156 to 171, 173 to 178, and
yp
180-195, inclusive) of plaintiff's "U.S." re-
ports, infringed its copyright on its "U.S."
er
reports.ss
52. The Second Circuit has, of course, held that
La
the pagination of a publication of other material
that is in the public domain is not subject to
copyright. Sm the discussion of Eggers v. Sun
Sales Corporatiom 263 Fed. 373 (2d Cir.1920),
intra. at page 1247.
53. The district court stated that 1(t]his Court
finds that MDC. in relying upon Banks, has
chosen a fragile bark upon which to sail the
rocky shoals of copyright law" and that "Banks
does not prohibit Wea Publishing Company
from obtaining a copyright in the pagination
* * * of its publications." 616 F.Supp. at IS77.
34. The Second Circuit held that 'Ewle concur
with Judge Hazel in his remning and conclu-
sion that the arrangement ot reported casa in
sequenct, their paging and dLqtpibution into vol.
umes, are not features of such importance as to
entitle the reporter to copyright protection of
1245
The defendant, cons stent with long-es-
tablished pmctice in the publication of law
reports, both in Englan d and in the United
States, used star pagi nadon in order to
permit jump citations to particular pages in
plaintiff's "U.S." re rt . It is thus clear,
that on the facts in Banks, the purchase of
defendant's "L.Ed." because of defendant's
use of star pagination, completely eliminat-
ed the need to purchase any of plaintiff's
"U.S." reports. Plaintiff in Banks, as had
the plaintiff in Wheaton v. Peten, sought
to enjoin all of defendant's law reports."
Plaintiff, however, substantially amend-
ed its original complaint. Judge Hazel
stated that by "stipulation of the parties
the bill was amended to include only the
charge of infringement arising out of the
arrangement of the cases, the division into
volumes, the table of cases, and the nu-
merical or star pagination to indicate
where in the official reports the different
cases and points decided may be found."
Id. at 386. (Emphasis added). Banks thus
directly presented questions concerning the
plaintiff's "arrangement of the cases" and
the defendant's use of "star pagination."
Defendant broadly argued that "the re-
porter cannot have a copyright for any of
the work produced by him in his official
capacity" and further "broadly suggested
that such labor is that of a paid employee
and accordingly vests in the employer."
Id. at 387-88. (Emphasis added). Judge
Hazel rejected both those broad argu-
such details." (Emphasis added). 169 Fed. at
391.
w
35. Defendant was able to include 40 volumes of
the "US." reports in only I I volumes of its
'LEd." reports because the defendanfs reports
were printed in substantially smaller type and
the argurnents of counsel were omitted, The
syllabuses and other editorial matters in the
defendarifs volumes wem atso more precise and
substantially shorter than those published in
plaintifrs volumes.
S& Judge Hazel noted that plaintiffs "original
bill charged the defendant with reproducing the
syllabuses of the cases. table of -ses Index
digest. together u4th the pagination and order at
affangement of printing the decisions copyright-
ed by compWnant and its predecessors." (Em.
phasis added). liL at 386.
HLC 00012302
 303

1246 799 FEDERAL REPORTER, 2d SERIES

menLs. He recognized that the right to ground of complaint." Judge Hazel then
copyright the work of a paid employee, concluded that "an action for infringement
generally speaking, did vest in his employ- does not lie if the defendant's asserted
er. He concluded, however, that under wrongdoing simply consisted of reprinting
Banks r. Manchester the "official reporter the decisions of the court with the paging,
of the Supreme CouM though a sworn the defendant independently supplying
public officer, is not, however, confined to headnotes, statements of cases, etc." " Id
this strict rule." Id. at 388.67 at 391. (Emphasis added).
Citing Banks v. Manchester, Judge Ha- It is important to note that Banks con-
zel held that "[n]either the court nor the sidered the factual circumstances relating
reporter from motives of public policy, to that plaintiff's armngement of cases.
can have any exclusive rights in the written In regard to both the plaintiff's armnge-
or oral opinions of the eourt." Id. at 388. ment of the cases and its pagination of the
(Emphasis added). Judge Hmi concluded, voluines, Judge Hazel concluded that for a
and the Second Circuit concurred, that "the mporter "to merely arrange the cases in
reporter's right to protection must be Enlit- sequence (and to page) the volumes [were
ed to his intellectual labor" and that "for not) features or chamcteristics of such im-
another to simply adopt the plan of group. portance as to entitle him to copyright pro-
ing of the cases, making marginal refer- tection of such details." 169 Fed. at 390.
ence to the paging of the volumes issued (Emphasis added). That conclusion, when
under his direction, without in any way read with Judge Hazel's discussion of all
pirating the substance of his origination, is three of the controlling Supreme Court
not enough, in my judgment, to establish cases, was obviously based on the reason
infringement." Id. at 390. that such an arrangement and the pag-
Judge Hazel expressly relied on Justice ination 6f the volumes were not original
Harlan's opinion written as a Circuit Jus- works of authorship within the meaning of
tice in Howell v. Miller, 91 Fed. 129, s3 the Copyright Act.59
C.C.A. 407 (1898). He quoted with approv- Attention should therefore be focused on
al Justice Harlan's statement that 'jilf Mfl- whether the opinions reported in the vol.
ler had cut from Howell's books, delivered umes of the "U.S." reports in litigation
to him by the state, the Genemi Laws of had, in fact, been merely arranged "in se.
H

Michigan as therein printed, and the pages quence." For I do not believe that it can
so cut out had been used when his compila- be doubted that all the volumes in litigation
yp

tion was printed--ff this had been done and were in the record considered by the dis-
nothing more-there would have been no trict court and Second Circuit in Bank&
er

57. ludgc Hazel explained that '[t]hem is abun- SL It is to be noted that Justice Harlan was a
La

dant precedent for holding Lhat a salwied re. mcmber of the Court that decided Banks v.
porter of the roum unless forbidden by statute, Manchester and Callaghan. He summarized
may secure copyright of the headnotes. stme- what each case held in his opinion in Howell v.
w

ments of cases, title of the volume. arrangement
or grouping of cases, index digest, synopsis of
the argumenm and in short such portions of his
compilation or authorship as requires the exer.
cise of intelleaual thought and AM,' citing
Banks v. Manchester, 128 US. 244, 9 S.Ct. 36, 32
LEd. 425. Id. at 398.
Judge Hawl added that it 'W been held in
the federal courts previous to the date of that
decision [CaMaghan I that an ofricial court re-
porter is entided to copyright protection for his
marginal notes or synopsis of ca , gatement of
cases, abstract of arguments of counsel, and
indexes to volumes. See Wheaton v. Peters, 8
Pet. 591, 8 LEd. 1055; Gray v. Russel( I Story,
11 Fed.Cas. No. 5,728." lgt at 388.
Atiller. Justice Harlan did not suggest that the
official status of the reporter was a factor that
played a part in either decision.
llic passage of tirnc has not eroded the preoc-
dent of Ho"ll v. Mifkr. For Justice Harlan's
stattment was recently quoted with approval in
State ot Geomia v. Harrison Co., 549 F.Supp.
110. 114 (N.D.Ga.1982). vacated per stipulariork
559 FSupp. 37 (1983).
59. 71M Second Circuit expressly concurred in
Judge Hazel's "reawaing and conclusion that
the arrangCnlent of reported cases in sequence.
their paging. and distribution into volumes, are
not features of such importancc as to entitle the
:porter to copy-right protection of such de-
tails." AL at 391.

HLC 00012303
 304
WEST PUB. Co. v. MEAD DATA CENT., INC.
C1,. 7" F.2d U19 (Ikh Cl, 19")
Examination of each "U.S." volume in liti-
gation establishes that the Court!s official
reporter, Bancroft Davis (whose testimony
was quoted in Judge Hazel's opinion)
meant exactly what he said when he testi-
fied that he simply took the cases "as they
came." Id. at 389.60 Examination of those
"U.S." volumes establishes that the cases
were, in fact, published in tAe sequence in
which they had been decide(L
The record in this case shows that the
district court asked West's counsel whether
it was West's theory that "the page num-
bers express the arrangement!' of West!s
cases. (A301). West's counsel replied that
"they certainly do, your Honor." (Id.).
West's counsel directed the district courVs
attention to 300 F.Supp. 100 to illustrate
West's arrangemenL (A203).
MDC attached an addendum to its brief
(A32a-A38a) that compared how the cases
would have been arranged in 300 F.Supp.
had the cases been armnged by date of
decision with the actual arrangement of the
cases as they were, in fact, reported in 300
F.Supp. That addendum shows that
West's actual arrangement of cases was
inconsistent with the method stated in
West's affidavits. West, in its brief filed in
this Court, replied to MDC's argument by
stating that its affidavits set forth only district court's disniissal of plaintiff's in-
H
West's "current pmetice" and stated that fringement action.
yp
300 F.Supp. "was published in 1969 before
[West's] current pmcdce was adopted."
(West's brief, p. 15, n. 11).
er
West's answer to MDC's argument rais-
La
es two factual questions, neither of which
were considered by the distriet court or by
the majority. First, if the West affidavits
w
cover only the manner in which West has
60. Both Judge Hazel and the Second Circuit
obviously refused to accept portions of Mr. Da-
vie quoted testimony which n-dght be said to
suggest the cases were armnged in some other
manner.
61. 1 have additional doubts about the record
before the district court. For one of West's
affidaviu stated that "West does not give any
judge the opportunity to approve Wesfs correc-
tions prior to publication." (A 51). While that
statement rnay be accurate in regard to West's
current practice, judges. appointed before 1969
will recall West!s pre-1%9 practice of sending
1247
ar-nged its cases since 1969, there is noth-
ing in the record to support any finding of
fact in regard to how West may have ar-
mnged its cases in all the volumes of re-
ports published by it from January 2, 1910
to 1969.6' Second, and perhaps of greater
importance, if West simply publishes cases
in the chronological sequence that cases
a- handed down by a particular court,
such an arrangement would fall within the
0--+.. a c rcum.+
1 .1 -A A-;.;- -
Banks.
I disagree with the majority's augges-
tion, at 1225-1226, that time has somehow
eroded Ban/cs' application of the principles
of law that were settled by Wheaton v.
Peters. The Second Circuit followed
Banks in Eggers v. Sun Sales Corpora-
tioiz, supra, 263 Fed. 373. That case re-
jected a plaintiff's argument which was
substantially the same as WesVs Calla-
ghan argument in this case. The question
presented was whether the defendants' use
of the same pagination used by the plain-
tiff in its copy-righted publication of Gener-
al Pemhing's World War I Official Report
to the Secretary of War, a document in the
public domain, could be said to infringe
plaintiff's copyrighL A panel of the Sec-
ond Circuit that included Henry Wade Rog-
ers (see footnote 42, supra ) affirmed the
On the facts of that case, defendants did
not reproduce any of the drawings, photo
graphs or any other feature of plaintiff's
pamphlet that were admittedly subject to
copyright. Defendants did, however, use
plaintiffs page numbers in its publication
after learning that "there was a good mar-
ket for the report"; there was no question
the plity proof of an opinion designated for
publication back to the judge who wrote the
opinion for corrections prior td publication.
The record, as I read it. does not reflect.
either the pre-1%9 pmctice or the reasons for
West's apparent abandonment of that practice.
Those factual circumstances may, in my view,
be relevant to the determination of the factual
questions preunted on the merits in regard to
how West has 'arranged" its cases both before
and after 1%9. For the permanent injunctive
relief sought by West covers both periods of
time.
HLC 00012304
 305

1248 799 FEDERAL REPORTElt. 2d SERIES

that the defendants did, in fact, imitate the pages of the volumes in which those
"plaintiff's attractive get-up." Id, The opinions are published.
SU'n SaleS Court recognized that defend-
ants' conduct "may be called mean" and As I suggested at the outset, I would
that, on the facts, it was "even possible follow the lead of the First Circuit in
that defendants' printers set up the official Building Offlcials & Code Adm., supra,
report from a copy of plaintiff's book; and reverse the district court's grant of a
preliminary
identity of pagination leads to'that suspi- injunction on this Section
cion." 263 Fed. at 375. 1292(aXI) appeal. For I believe, as did the
First Circuit, that final judgment in this
The court, however, in express reliance case should await a more complete hearing
on its earlier decision in Banks, stated in on the merits in the district court and a
that regard that "legally that is not of later review of that coures final decision on
sufficient iMPOrtanee to constitute infringe- a Section 1291 appeal.
ment of copyright." Id- at 375. The court
concluded that "(a]ssuming, * * * that I concur in pwt and respectfully dissent
plaintiffs pamphlet contains any copyright- in part for the reasons stated.
able matter, we are of the opinion * * *
that defendants' is not an infringement
Id- at 375.
It is thus clear that the Second Circuies
decision in Banks does not stand alone. I
suspect the reason that there are but few
cases that involve questions of whether the
pagination of a document in the public do-
main is subject to copyright is because few
plaintiffs have ever tried to make such a
claim in regard to the page numbers on
their copyrighted publication.42 But what-
ever the reason, such a claim has been
rejected by every court that has had occa-
sion to decide the question.
H

West has cited no authority to support

yp

its contention that it is entitled to copyright

protection of either its arrangement of
er

cases or the Pagiriation of all the volumes it

has Published since January 2, 1910 under
La

either its past or its current practice. I

believe that this court, particularly on a
Section 1292(a)(1) appeal, should hesitate to
w

suggest that the scope of the copyright act

can be said to protect West's arrangement
of cases which may, on the facts, be no
more than the sequential publication of
court opinions in the chronological order in
which the cases are handed down. Nor do
I believe on the record in this case that we
should suggest in any way that the scope
of West's copyright is broad enough to
protect the placement of arabic numbers on
62. See the discussion of the pagc numbers on a
new compilation of Shakespeare's work, supra,

HLC 00012305
 306

PROFMOR OF LAw,
APPENDix 3.-Imm FRom CRAIG JOYCE,
UNAmm oF HousroN lAw CENTER, To CHAmiAN WiuAm
J. HTiGBn, &womwm oN INTmEmAL PRopEm AxD
JuDiciAL Ammmnw, MAY 22, 1992
Incorrect
McGraw-Hill, Inc. Heading -
10020 Joyce is at
512-1074
T1.ei-m,-,-:,-
FAY 212 5 2-?305
1

308
May 22, 1992

The Honorable William J. Hughes

Chairman, Subcommittee on Intellectual Property
an Judicial Administration
United States House of Representatives
207 Cannon House office Building
Washington, D.C. 20515
Dear Chairman Hughes:
on behalf of McGraw-Hill, I respectfully request that this letter
of opposition to H.R. 4426 be submitted for the record. As a major
U.S. publisher of numerous compilations developed by, among other
divisions, Standard & Poorls, Shepard's and Data Resources,protection
McGraw-
Hill has an obvious interest in the scope of copyright
for databases. However, it is not this reason alone that McGraw-
unnecessary.
Hill considers this legislation to be ill-advised and
First, to the extent that this legislation is put forward as an
attempt to clarify that federal or state laws, statutes,
regulations or judicial opinion are public domain, the legislation
for
is unnecessary. No publisher has claimed copyright protection
H

such material.
to clarify that the
yp

Second, to the extent that the bill attempts

names of laws or regulations are public domain, the legislation by
is
inapposite. Such names, if protected at all, are protected
er

trademark law and not, as the legislation would seem to suggest,

copyright law.
La

Third, to the extent this legislation is intended to overrule the

decision in West Publishing Co. v. Mead Data Central, In . , we
w

consider this bill to constitute an inappropriate reaction to that

case since the scope of the legislation is much broader than that
decision.
Fourth, to the extent that this bill to
represents an effort to
authorize states to charge for access official laws, statutes,
regulations or similar material, the legislation constitutes a
perhaps unintended but nevertheless very real departure from
longstanding precedent. States have, as a general rule, made those
materials available for little or no charge. Indeed, the ultimate
effect of this legislation could be to and
restrict access to the very
opponents of the bill
material which both the proponents
believe to be in the public domain.

HLC 00012306
 307

Th Supreme Court decided Ee-ist Publications, Inc. v. Rural

TeTen one Service co - Inc. a little over a year ago.
of this landmark decision, the courts have just begun theInnecessary
the wake
work of determining, on a case by case basis, the precise degree of
selection, coordination and arrangement which must be present in
order for particular databases to be found copyrightable. H.R.
4426 represents an attempt to legislate the scope of protection for
databases in an ad hoc manner which is counterproductive to that
process. It seems inevitable that H.R. 4426, if passed, will be
only the first in an onslaught of attempts to legislate in
which is heavily fact oriented and inappropriate for an area
piecemeal
legislative treatment.
We urge you not to support H.R. 4426.
Sincerely,

f.

cc: Members of the House Subcommittee on Intellectual Property

and Judicial Administration
H
yp
er
La
w

HLC 00012307
 308

APPENDix 4.-LETTER PRom BARBARA A. MUNDER, SENIOR VICE

PRESIDENT ExEcuTin ksiffANT To THE Caom,
AND
McGRAw-HiLL, INC., TO CHAumm Waim J. HuGHEs, MAY 22,
1992
L:N TVERS]Ti OF HOUSTON LAW CENTER
HOLSTON. TEXAS '7204-6371 Incorrect Heading
- Munder is at 306

UNIVERSITY OF HOUSTON May 22, 1992

LAWCENTER

Hon. William J. Hughes, Chair

Subcommittee on Intellectual Property
and Judicial Administration
U.S. House of Representatives
207 Cannon Office Building
Washington, D.C. 20515

Re: May 14, 1992 Hearing on H.R. 4426

Dear Chairman Hughes:

Thank you again for the opportunity to testify coneeming H.R. 4426 and for the
courtesies shown me by the Subcommittee and its staff in connection with the hearing.

You asked me at the hearing about venue transfer. While it is true, as I said, that the
H

Subcommittee would be best served by an answer from someone more knowledgeable

concerning procedure, I probably should have been more complete in my response, based
yp

simply on what I know as a professor of copyright law. Perhaps I can remedy that here.
er

The thrust of your question concemed whether the F-ighth Circuit's error in Mead --
according copyright protection to the identifying matter of public domain documents (in that
La

instance, judicial opinions) -- might not be corrected in due course by the courts themselves.
To put the inquiry most pointedly, won't the district courts in future cases similar to Mead
likely declin to transfer those disputes to the District of Minnesota -- thereby possibly
w

producing a split in the Circuits which could then be resolved by the Supreme Court, applying
the principles of Feist ?

I believe that such a scenario is Unlikely.

The three cases I cited in my prepared statement support that belief. And, to the best
of my knowledge, they comprise the entire body of copyright cases, decided during or since
Mead, which involved the issue that is the subject of H.R. 4426.

Let me review each of those three cases briefly.

HLC 00012308
 309

(1) The 1989 suit cited in note 12 of my prepared statement was a declaratory
judgment action brought by a political jurisdiction -- the State of Texas -- in an attempt to
establish public ownership of identifying indicia of the law -- in that instance, statutory
chapter and section names and numbers -- on a Rmns 2aWae basis. There has been no
subsequent litigation on that theDry, and likely will not be, because states see no realistic
possibility of surmounting the "actual controversy" hurdle erected by the Fifth Circuit in
dismissing Texas's chatlenge to West's claims of copyright ownership.

(2) The Bancroft-WWitney case (filed in 1985 and cited in note 11 of my prepared
statement) was indeed filed elsewhere but umsfen-ed to the District of Minnesota while Mead
was pending. Ilis is the case to which you referred specificafly in your question to me.

I mn unable to locate my other venue transfer case involving copyright for the
identifying matter of public domain legal documents, and brought by one of West's
competitors, decided aftr the settlement in Mead.

Why? One would think that, if potential competitors saw this as a viable means of
establishing the public's ownership of (and therefore a competitor's right to use) the
nonprotectible matter which is the subject of H.R. 4426, several actions of this type would
have been filed in the six years since Mead ended. If so, we would by now have seen a test
of the theory -- which your question tD me suggested -- that a district court eventually will
say "no" to venue transfer and litigate the Mead issues itself

rMe probable explanation for the complete absence of any such litigation, i.e.,
challenges to Mead fded outside the Eighth Circuit by West's coml&tit , is that no
competitor thinks a challenge of this sort wifl succeed.

28 U.S.C. § 1404(a) permits transfer of venue "[flor the convenience of parfies and
witnesses (and] in the interest ofjustice . . . * If the central issue in any challenge to West's
claims is the originality of West's publications, the majority of the witnesses required to be
heard pTobably reside in or near St. Paul, Nfinnesota -- West's home -- and West would, I
presume, argue that their convenience weighs heavily in favor of a venue transfer. Likewise,
West might well assert that the accumulated expertise of the District of Minnesota conceming
the assembling of West's publications, and thus judicial economy, also weigh in favor of
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transfer.
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More importantly, why would any competitor take the risk? The downside of losing
to West on the issue of protecfing the identifying matter of its judicial reports and statutory
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compilations is simply enormous. Ile start-up costs for competitor legal services -- all of
which nead to provide consumers fkm (e.g., the seefion number of a pertinent statute) which
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West cWms it owns -- run into the millions, if not tens of millions, of dollars. Few if any
potenfial competitors can afford to take on West and lose. Fewer still could justify to
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stockholders even Lddng the risk.

65-153 0 - 93 - 11

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(3) This brings me to the third and final type of case in which West's cwms might
be litigated: the *preemptive strike* filed by West itself in the District of Minnesota. Ile
ROM Publishers case, cited in note 9 of my prepared statement, illustrates this variety of
post-Mead litigation.

Filed by West in 1988, ROM Publishers is the Qn-Iy post-Mead case I can find
involving a private competitor to West -- not just the only suit brought by West, but the only
suit since 1986 brought by West gr a potential chaUenger. 'ne effect of ROM Publishers on
potential challengers to West - including smaller concems contemplating the publication of
legal documents that compete with West's statutory compilations and case reports, but in non-
print media -- appears to have been dramatic. The Subcommittee may, at some point, want
to get testimony from representatives of such concems, so that it can hear directly about the
barriers which Mead poses to their ventures. My own understanding is that such effort have
been significantly chilled.

In summary, then, I remain unconvinced that Mead will be corrected by the courts
themselves. As indicated, there have been n2 actions filed by competitors -- nQ actions in
which the availability or unavailability of venue transfer could be tested -- since Mead. The
one post-Mead challenge to West's claims filed by apolitical jurisdiction fOed. Andtheone
post-Mead lawsuit involving a Vj= competitDr to West was filed by Wes -- a "preemptive
strike" in the District of Minnesota, where West is almost assured of victory on H.R. "26-
type issues.

nus, as I testified, the needed corrective for the Eighth Circuit's damaging
misconstmction of copyright law in Mead can only come from the Congress. Until it does,
potential competitors -- who, like Richard Peters, Jr., in Wheaton v. PL-ters a century ago --
would like to provide the public altemative, innovative, more readily affordable access to the
law will remain understandably unwilting to take on West's present monopoly over page
numbers, statutory chapter titles and the tike, which are literally the keys that unlock access
to the vital public domain matter in West's publications.

I hope that the Congress wiU act soon to clarify the scope of § 105 of the Copyright
Act, and will do so in a way consistent with sound copyright doctrine and good public policy.
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Respectfully,
yp
er

Craig Joyce
Professor of Law
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APPENDix 5.-LEMR FRom Emm D. CooKE, DmEcmit, AMMCAN

LiBRay Amocunm, WAmGToN Omq To CHAaw
Wuim J. HuGBn, MAY 27, 1992
WASHINGTON OFFICE

AMERICAN LIBRARYASSOCIA-nON
110 MARYLAND AVENUE. N.E. - WASHINGTON. D.C. 20002 - 1202) 347-4440

May 27, 1992

The Honorable William J. Hughes

Chairman
Subcommittee on Intellectual Property
and Judicial Administration
Judiciary Committee
U.S. House of Representatives
Washin(Iton, D.C. 20515
Dear Rep. Hugheas
This letter is submitted for the hearing record of May 14, 1992 on HR 4426,
to amend title 17, United States Code, to oxclude copyright protection for
certain legal compilations. It in submitted on behalf of tho American Library
Association, a nonprofLt educational organization of more than 54,000 librarians,
library and information science educators, library trustees, and other friends
of librarios dedicated to the improvmmnt of library services for the American
people.
ALA wishes to associate itself with the testimony presented by Laura N.
Gasaway on behalf of the American Association of Law Libraries. The AALL
H

statment wan carefully developed by those in the library comunity with special
expertiso in the organization and use of legal materials. The points made by
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AALL are thoroughly developed and clearly not out, it is necessary only to
summarize them and indicate American Library Association agreement.
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ALA also lends its qualified support for HR 4426, believing the bill will
increase public access to the law by revitalizing competition among legal
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publishers and by permitting all sectors of the public to systematically use

legal citation information.
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HR 4426 would not disturb the existing copyright protection for

compilations. It is narrowly drawn to place only citation informatiori in the
public domain. A legal publisher's intellectual contributions to a compilation-
topic and key numbers, headnotes, annotations, tables of contents, and indexeo--
remain protected under the Copyright Act.
Copyright protection should not extond to information used to cite judicial
cases; there in no originality in the simple division of toxt by volume and page
numbers. Such information is mechanically appliod to compiled text after the
creative process

HLC 00012311
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The Hon. William J. Hughes

May 27, 1992
Page Two

has ended. Further, extending copyright protection to citation information could

enable dominant firms in this branch of legal publishing to preclude other
publishers from entering the market.
Citation information relating to statutes should be placed in the public
domain for several reasons. Statutes and their citations are functionally
inaeparable. By law, statutes cannot be copyrighted, so their citations should
also belong in the public domain. Legal citation manuals vest preferred
statutory codes with a quhai-official status. Unless others can freely use the
citation information for a preferred code, now publishers cannot enter that
publishing market. Finally, preparing a statutory code is a governmental
operation, and the resulting code arrangement should reside in the public domain.
ALA cannot support the final nubsection of HR 4426 since it implicitly
suggests that goverrments may charge fees for access to their legal publications.
ALA, like AALL, believes that this subsection is poor public policy and
recommends that it be stricken from the bill.
Governments at all levels have an affirmative duty to diosemlnate
government information to their citizens. Legal information created at taxpayer
expense should be made available for public use at the least possible cost. In
a democracy, a broad category of goverranent information is needed for citizens
to monitor the acts of officials, to exercise their political rights, and to
obtain judiclal redress.
As the cost of legal assistance rises, more people may perform their own
research to conduct personal legal transactions. It io crucial for individuals
to have free access to the laws affecting them. Some states already charge
substantial fees for access to their legal information, and subsection (b) of HR
4426 lands legitimacy to the troubling trend of governments to exact fees for
goverrunent information.
In conclusion, ALA joins AALL in believing that in furtherance of the
policy of promoting wideopread access to the law, the means of citation to the
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law should be made expressly beyond the bounds of copyright protection.

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Sincerely,
er

Eileen D. Lon.
La

Director
ALA Washin(jton office
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EDC/pm

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313

APPENDix 6.-LErmR AND STATEaNT FRom AiAN D. SuGARmAN,

PRESMENT MD CEO, HypulAw, INc., To CHAmw Waim
J. HuGHM, MAY 29, 1992
RECEIVED
JUN3 1992

Sub on Court'.

May 29, 1992

The Honorable William J. Hughes
Chairman Subcommittee on Intellectual Property
and Judicial Administration
House Committee on the Judiciary
United States House of Representatives
207 Cannon House office Building
Washington, D.C. 20515
Dear Congressman Hughes:
Enclosed herewith is our statement to be submitted to
the Subcommittee on Intellectual Property and Judicial
Administration of the House Judiciary Committee in support
of the intent of H.R. 4426.
HyperLaw, Inc., was formed in 1991 for the purposes of
engaging in electronic publishing of legal information. In
early, 1992, it published Supreme Court on Disc on CD-ROM,
the first CD-ROM case reporter of United States Supreme
court decisions. Because of the lack of clarity in
copyright law, HyperLaw was unable to include useful
information and features in the CD-ROM, including pagination
information and the text of lower court opinions on appeal.
H

Although we support the intent of the bill, we have

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identified ambiguities in the bill and believe the bill as

drafted will not work. The bill needs to address
compilations explicitly. It should also address "sweat-of-
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the-brow" claims such as case selection, correction of

typographical and citation errors in opinions, and make it
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clear that neither pagination nor such "sweat-of-the-brow"

activities may be used as evidence to support a claim of
original work in a compilation.
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We attended the hearings held on May 14, 1992 and were

advised that the record would remain open for at least ten
legislative days to supplement the record.
Sincerely

Al D. Sugarman
President and CEO

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314

Statement of Alan D. Sugarman

President, HyperLaw, Inc.
Submitted to the Subcommittee on Intellectual Property
and Judicial Administration
House Committee on the Judiciary
102nd Congress, Second Session
In Support of H.R. 4426
May 29, 1992
This statement is submitted to supplement the record of
the hearings held on May 14, 1992 concerning H.R. 4426.
We are in support of the purposes of the bill; however,
we believe that the bill must be redrafted so that there is
no question the bill's intent is effectuated.
I am the President and CEO of HyperLaw, Inc., a new
company formed in 1991 for the purposes of engaging in
electronic publishing of legal information. I have
practiced law for 20 years, and am a graduate of the
University of Chicago Law School. In February, 1992,
HyperLaw published Supreme gourt on Digc, the first CD-ROM
case iFeporter of opinions of the United States Supreme
Court. The CD-ROM contains the opinions for the Court's
1990-1991 term.
Our comments herein will be confined to publication of
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federal court decisions, even though the bill applies to

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other issues.
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HLC 00012314
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315

I have read the statements submitted at the May 14,

1992 hearing of the Subcommittee.1 I will attempt not to
duplicate other testimony. We support in general the
statements by the Register of Copyright, Professor Craig
Joyce, and the American Association of Law Libraries.
In our view, the bill is not an example of special
interest legislation for the Thomson Corporation. Thomson
may have brought to the attention of the Congress the
present untenable, anticompetitive, and undemocratic
situation. But the attacks by West on Thomson are
inappropriate and irrelevant.
As an independent publisher, and a competitor of
Thomson companies, we applaud their efforts. We believe
that most of the independent publishers referred to in the
exhibits to the West Publishing Company statement would
support the purposes of the bill. In our opinion, West,
fortified by West v. Head and its willingness to litigate,
has established a stranglehold on many aspects of legal
publishing. We will describe some of those below.
As a CD-ROM publisher, we are particularly aware of the
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stranglehold as it relates to the publication of federal law

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materials. One of the advantages of the CD-ROM media is

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that it is possible to disseminate a complete legal treatise

and the full text of many thousands of cases cited in the
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We will cite the statements submitted at the

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1
Hearing by the name of the person making the statement, and
the page number.

HLC 00012315
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316

treatise, on a single CD-ROM.2 However, the practicalities

are that legal writers generally need to reduce their
research to a brief or article, and that citations to
judicial decisions must include both the preferred official
or standard citation and also citation to interior pages
where specific issues are discussed.
Thus, a publication of the full text of cases is
hobbled unless such citation information is available to the
legal writers using the publication. Indeed, West has
published such a CD-ROM treatise on federal court practice -
- and the CD-ROM contains the full text of the cases in the
only citation form directly accepted by federal courts. But
no other publisher may do this without the permission of
West.
It is largely irrelevant how or why West got itself in
the position of being able to assert monopoly control of
federal judicial decision pagination -- but clearly,
whatever efforts West expended were done with the full
knowledge of Wheaton v. Peters, 33 U.S. 591 (1834),
described in Professor Joyce's Statement, Page 21. Moreover
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innovation and sweat alone, as West contends, do not account

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for the West success in establishing dominance of its

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2 Such a CD-ROM treatise was described in a recent

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article by Professor Ronald W. Staudt of the IIT Chicago-

Kent College of Law. Such a CD-ROM will remain an academic
ideal, unless published by West. Legal Mindstorms: Lawyers
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Computers and Powerful Ideas, 32 Jurimetrics Journal 171

(1991).

HLC 00012316
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317

citation system; even at present, West Publishing Company is

attempting to undermine efforts of the federal judiciary to
establish a public domain citation for federal court
opinions.3

Chilling Effect of West CgMaht Claims on HypgrLaw

Vance opperman in his oral testimony referred to
HyperLaw's Supreme Court on Disc CD-ROM to support the
proposition that there is abundant competition in publishing
federal cases. Mr. Opperman has clearly missed the point.

3 See the discussion on page 15. Submitted with

this statement are the following documents which we request
be submitted into the record.
Standard Citation to Electronic opinions, Draft Report,
July la, 1991, Library Program Subcommittee of the
Automation and Technology Committee of the Judicial
Conference.
Letter dated August 22, 1991 from West Publishing
Company to the Administrative office of the United States
Courts.
Transcript of the Proceedings of the Library Program
Subcommittee of the Automation and Technology Committee of
the Judicial Conference Regarding Electronic Citation
System, September 13, 1991. (See the Testimony of Dwight D.
Opperman at Page 78 which is somewhat inconsistent with the
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testimony of Vance Opperman to this Subcommittee).

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Standard Citation to Electronic Opinions, Revised Draft

Report, October 17, 1991, Library Program Subcommittee of
the Automation and Technology Committee of the Judicial
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Conference.
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Letter dated April 9, 1992 from HyperLaw, Inc. to the

Administrative Office of the United States Courts.
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Letter and proposal dated April 15, 1992, from

HyperLaw, Inc. to the United States Supreme Court.

HLC 00012317
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318

in is our opinion, West's threats coupled with the lack

of clarity of the present state of copyright law has injured
the marketability of the Suipreme Court on Disc CD-ROM, in
that we were not able to include citation and pagination
information from West's Suiprese Court Reporter. The
pagination in West's Supreme Court Relporter is the
"standard" citation for Supreme Court opinions, until the
Court releases the Preliminary Print. For Supreme Court
slip opinions, the Supreme Court Reporter citation
information is required by the Blueboo and is in practice
required to be included in all briefs submitted to federal
courts.
As an example, the HyperLaw CD-ROM contains the full
text of Feist Publications, Inc. v. Rural Telephone Service
Company Inc, decided during the Court's 1990-1991 term.
However, we did not include the Supreme Court Reporter
citation to the opinion -- 111 S.Ct. 1282 -- at the
beginning of the opinion. Our CD-ROM was a complete
compilation of the 1990-1991 term opinions. Based on our
correspondence with West and West v. Mead, we believed we
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would be sued by West if we did.4

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4 Accompanying this statement is a copy of the

correspondence between HyperLaw and West. Letters of July
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1, 1991, August 12, 1991, September 19, 1991, May 21, 1992,
and May 29, 1992, from HyperLaw to West; Letters of AUgUst
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1, 1991, August 21, 1991, October 9, 1991, and May 28, 1992
from West to HyperLaw.
See also footnote 9 of the Statement of Professor Joyce
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concerning an action brought by West against ROM Publishers,

Inc., a Nebraska publisher. We believe that the company and
owners suffered bankruptcy as a result of the action.

HLC 00012318
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319

Similarly, we were afraid to insert the interior

pagination for Feist as it appear in the West Supreme Court
Reporter This interior pagination is sometimes referred to
as 11star pagination.,,5 As an example, we could not show
where page 1285 of the Feist case began and ended. Thus, a
legal writer preparing a brief for a federal court who

5 It is evident that there is some confusion as to

definition of terms and we offer here some suggested
definitions.
Case citation. The citation to the volume and initial
page location (or a case number) of a particular decision,
for example, Mead, 799 F.2d 1219.
Pinpoint location. An interior location within a
decision such as a page break, beginning of a paragraph, or
other arbitrary segment break.
Pinpoint Citation. A reference (that may be contained
in an article, case, or brief) to a "pinpoint location" in a
decision. Most writers seem to use this as a synonym for
"jump cite". For example, 799 F.2d 1219, 1222.
Jump Cite. See Pinpoint Citation.
star-pagination. A scheme or system identifying or
marking pinpoint locations (usually page numbers) located in
another published version of the same decision. This phrase
apparently was coined by Lexis to describe its insertion of
West interior page numbers in Lexis' text.
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TtLus, one might state that pagination information

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permits "pinpoint citation." In the same sense, a "jump

cite" "jumps" to a specific page. Some commentators equate
"jump cite" with "star pagination". We disagree with this
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usage. Indeed, West v. Mead , 700 F.2d at 1222, contributes

to the confusion: "This feature would insert page numbers
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from West's National Reporter System publications into the

body of LEXIS reports, providing 'jump' or 'pinpoint'
citations to the location in West's reporter... 11 It would
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have been more accurate to say "permitting 'jump' or

'pinpoint' citations" rather than "providing".

HLC 00012319
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320

wished to cite to a statement on page 1285 of Feist would

still need obtain a copy of West's Supreme Court
Reporter.
Accordingly, HyperLaw's Supreme Court on Disc CD-ROM
could not be the sole research tool for the legal writer.
The damaging effect of the West's claims and the lack of
clarity of copyright law upon our CD-ROM is easy to see.
We also could not include on the CD-ROM citable
versions of the lower court decisions being appealed to the
Supreme Court because these generally were from West's
Federal Reporter 2d. Additionally, we might even have
chosen to include the full text of the West v. Mead case, to
read in conjunction with Feist -- again, we could not do so
without fear of litigation.
Ironically, efforts by HyperLaw to wage an effective
intellectual challenge to West by publishing a CD-ROM with
citations to West v. Mead and Feist would be chilled by the
threat of litigation from West. We leave to constitutional
lawyers whether there are First Amendment principles
involved here.
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We should emphasize as well that the burden is not only

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fear of litigation (and for a small publisher, bankruptcy) -

- any publisher even thinking of a publication that may in
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West's view infringe West copyrights must disclose its

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competitive plans to West, pay license fees to West, and in

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any event have to engage is what amounts to a time consuming

HLC 00012320
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321

and debilitating process to obtain a Itpublication permit"

from West.
Perhaps well funded litigation in independent courts
would eventually clarify the law to establish HyperLaw's
freedom to publish the decisions of the federal courts using
the federal court endorsed citation and star pagination. On
the other hand, other circumstances may intervene, and the
issue may not be settled. We believe that the expectation
that litigation will resolve the issues, although appealing
in theory, ignores the realities of publishing, standing to
bring declaratory judgment actions, and the ability of large
competitors to abuse the litigation system and copyright
laws.6
6 The argument for waiting for courts to review the
decide how a
issues is that "it gives the courts a chance tofacts
challenged decision applies to the particular of
another case, and whether precedent should be followed,
modified or rejected." Information Industry Association
Statement at 6. Courts doFor not always do this, and a perfect
example, one could argue that
example is West v. Me4d.
the factor of selection in West's Supreme CougtisReporter,
much
where all Supreme Court opinions are selected,
different than for example, West's Federal Rules Decision,
where a small percentage of federalthatdistrict court cases are
selected (ignoring for the moment LEXIS and WESTLAW
make no selection -- they strive to select everything). Ttie
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West v. Mead court further "glommed" together state

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reporters with federal reporters. It was a woefully weak

that
display of intellectual analysis, even accepting
clerical tasks of separating decisions into state courts and
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federal courts were somehow worthy of copyright protection.

There is no reason that Congress cannot do a better jobfact
than
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the courts -- and we suggest that it analyze specific

patterns, and determine whether they deserve protection.
defines sote
Certainly, a bill could be fashioned that
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elements of compilatioh that may not be used as evidence of

original work of authorship -- and perhaps the more
problematic issues may be left to the courts.

65-153 0 - 93 - 12

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322

The possibility that the courts may some day clarify an

issue is not a reason for Congress to delay, especially
where the subject matter involves statutory and judicial law
which is fundamental information required for the
functioning of our democracy and system of justice.
Does the Bill Do What It Should

The purpose of the H.R. 4426 is "to exclUde copyright

protection for certain legal compilations." We are not at
all sure that the bill as drafted will accomplish what it
intends to do. In order to assist in this analysis, we will
discuss only the copyright of federal court decision
citations.
The bill proposes to amend Section 105(a)(2) to provide
that copyright protection is not available
for any volume or page number by which ... Federal ...
judicial opinions,'or portions thereof, are, or ever
have been, identified.
This language will not cure the problem caused by the West
v. Mea case.
West's spokesman, Mr. Vance Opperraan, in his May 14,
1992 to the Subcommittee, perhaps in an effort to create a
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legislative record, by implication illustrates the

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inadequacy of the present language of the bill:

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Those who disagree with the decisions in West v.

Mead have consistently distorted a central fact. I
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cannot state often enough that, contrary to Mead's

assertion in the case and some assertions that Thomson
corporation is now making, West did not and does not
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claim copyright protection for page numbers and

citations per se. It is ridiculous to think that any
publisher could or would claim copyright protection for

-1

HLC 00012322
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323

terms like "volume 534" or "Page 42." Neither does

West claim that its citations -- such as 11681 F. Supp.
122811 -- are in and of themselves copyrightable.
Vance Opperman Statement, Page 21.
we are not so sure that commentators have distorted
West v. Mead. But West may have fairly read the bill
language which some may reasonably conclude addresses only
"copyright protection for page number and citations per sell.
West says it has never claimed a copyright on for
example the words "681 F. Supp 1228". Taken literally, the
bill says the same thing, that one cannot copyright "volume
or page numbers". Were the bill to be enacted as drafted,
the bad law of West v. Mead would persist, since the issues
determined there related to compilations of cases.
Thus, if the current bill version were to be enacted,
West would likely continue to assert that its copyright in,
for example, the compilation of cases found in Volume 111 of
the Supreme Court ReRorter had been violated were a
commercial publisher to publish the Feist decision with all
of the West Supreme Court Reporte interior "star
pagination." This is because a compilation of
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uncopyrightable elements could be copyrightable.

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That West would continue to claim copyright

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infringement for commercial publication of even a single

opinion with West interior pagination is illustrated by what
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is not said in another part of the West statement:

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What West continues to object to and what was

really an issue in West v. Mead is the wholesale ta ina
of its original copyrighted compi-ations of case law
materials for direct commercial use by a competitor.

HLC 00012323
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324

Vance Opperman Statement, Page 22.

This sentence requires closer scrutiny. First,
Opperman does not state that West's only objection is
"wholesale taking" -- and he begs the cluestion whether West
objects to something less than "wholesale" use. Second, Mr.
Opperman states that "wholesale taking" was issue in
the Mead, not "the" issue. once again, it is not clear what
the other issues in W-est v. Mead were, in West's view.7
This is another reason the language of the bill needs to be
clarified.
We would agree that West v. Mead was directed more to
compilations of cases, and not to the citations itself. But
the bill language is not adequate -- arguably, it would only
except from copyright protection the "case citation" or
"jump citation.,, It would not, on its face, protect a
compilation which uses all of the volume and page number
identifiers from another publisher's case reporter.
Nor might the bill protect a commercial republication
of a single case using the interior pagination from a West
reporter. Moreover, the bill's language ignores the claims
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by West and other publishers that their copyright on case

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7 Indeed, HyperLaw's correspondence with West,

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footnote 4, above, makes it clear that West objects to a lot

more than "wholesale" use -- clearly, it objects to the
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commercial use of pagination and "corrective editing" in

compilations of isolated cases from different reporters.
But West never makes this clear to judicial units
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considering establishment of their own citation system, such

as the Judicial Conference.

HLC 00012324
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325

reports also includes "sweat of the brow" efforts such as

correcting spellings and typographical errors, adding
parallel citations, and incorporating amendments of the
decision in a single restated decision. We note that this
is just the type of activity engaged in by Henry Wheaton.
Wheaton v. Peters. 38 U.S. 591 (1834), discussed at pages 21
and 22 of the Statement of Professor Joyce, and rejected as
not evidence of original work in Feist.
The language of the bill needs to be revised so as to
make it abundantly clear that copyright protection is not
available for:
those elements of compilations of Federal judicial
opinions which consist of volume and initial page
numbers, case numbers, text breaks such as page numbers
or paragraph numbers, and other identifying material as
well as corrections of typographical errors, additions
of parallel citations, and incorporation of amending or
modifying language
I must admit that this language may not complete the
job - there is still the issue of selection and
organization. Perhaps Section 103 should be amended to add
a statement such as "a compilation of decisions of the
federal courts do not constitute an original work of
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authorship under this section." Another possibility would

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be to amend Section 103 to state:

Elements of Federal judicial opinions or compilations
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thereof which consist of volume and initial page

numbers, case numbers, text breaks such as page numbers
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or paragraph numbers, and other identifying material as

well as corrections of typographical errors, additions
of parallel citations, corrections of citations,
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changes of case name references, and incorporation of

amending or modifying language, selection of opinions
by coqrt or by perceived importance, organization of

HLC 00012325
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326

opinions by date or court, and results of other similar

efforts, may not be introduced as evidence to support a
claim of original work of authorship, either alone or
as part of a compilation.
By excluding certain aspects of a compilation from
being introduced into evidence to support a claim of
original work of authorship, judicial proceedings
considering compilation of judicial opinions will be greatly
simplified, and all will be spared the diversion that
occurred in the RmgJ_y._JWad case. Of course, anyone who
republished a West reporter volume with all of the
headnotes, key numbers, and other original West material
would still violate West's copyright. Admittedly, there are
some compilations that may deserve protection; compilation
of important Rule 11 cases may deserve protection; a
compilation of all precedential value cases concerning the
federal rules probably should not. The language suggested
is merely a starting point,
The Committee should also understand that concepts of
selection and organization are not as meaningful in the CD-
ROM and on-line envirortment. In a sense, the selection and
organization is performed by the user, not by the
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publishers. But the mere selection, coordination, and

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arrangement of a set of federal court opinions would just

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not be protected.
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Having pointed out the problem, I leave it to those

more knowledgeable in the structure of the Copyright Act and
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legislative drafting to perform the redrafting and

codification of Feist.

HLC 00012326
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327

It is our assumption that the,bill should protect a

publication of the Feist decision with all of the page
breaks from West's Supreme Court Revorter, publication of
the West v. Mead with text obtained from, and including all
of the page breaks from, West's Federal Reporter 2d;
publication of a dompilation of all of the opinions of the
United States Supreme Court using West's Supreine Court
Reporter paginatiob: and a compilation of all or
substantially all federal lower court decisions which
includes'the pagination from West's Subreme C2Mrt Reporter
or ement.
Thus, the bill needs to be amended to make it clear,
that certain elements of compilations may not be uged as
evidence of original work to support copyright of a
not only the volume and page numbers.

QmmeM on Specific r&Mnhm by Vftst

At the hearing., Congressman Frank expressed an interest
in the policy issues including the fairness to publishers
who have published,c9apilations. Thus, some response is
nee ded to the ramblirig opposition of W66t. We do not intend
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to respond to all of thehyperbole and diverting stAtemonts

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in the West statemont. We believe th4t a-few examples will

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suffice.
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HLC 00012327
 [HyperLaw - Alan D. Sugarman]
328

West claims that its success results because it

"innovates and competes".8 We do not know, for example, why
Delaware decided to stop publishing the Delaware reports and
we do not know what was said or done or offered by West at
the time. Nor do we know whether the Delaware legislature
and judiciary understood that it was conferring a monopoly
upon West or that West would sue other publishers that used
the Atlantic Reporter pagination, if even a small number of
opinions were published.
However, we would like to bring to the Subcommittee's
attention the proposal of the United Stated Judicial
Conference to establish an electronic citation system.9
8 Some of the success of West may result in the
preferential access it receives to the federal judiciary.
See, Information Recruests. Courts Can Provide Documents in a
More Cost-Efective Manner, General Accounting Office, B-
242498, February 13, 1991. U.S. Dent. of Justice v. Tax
Analysts, 492 U.S. 136, 109 S.Ct. 2841 (1989). Clearly,
access to judicial opinions is not open to all. Indeed,
only certain publishers, including West, currently are
permitted to participate in the Supreme Court's Hermes
electronic dissemination system, violating one of the basic
information principles enunciated by the industry
Information Association. See footnote 9.
9 See footnote 3 above. We would also support the
comments made by the Industry Information Association that
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policymakers adopt principles "encouraging the development

of a diversity of sources of access to public information
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... making information available to all parties on an equal

and timely basis ... making governmental information
available at a price not exceeding the marginal cost of
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dissemination." We urge the Judiciary Committee to hold

hearings on the Judicial Conference projects concerning the
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Electronic Dissemination of opinions System and the

Electronic Citation System, and the dissemination of
decisions by the United States Supreme Court under its
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Hermes project. Moreover, the Committee should investigate

the relationships between West and the federal judiciary,
and in particular those relationships that have made West

HLC 00012328
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RT41

Such a system, if iinplemented, would eliminate the West

citation monopoly for federal court decisions. West is
making every effort to undermine and thwart the proposal --
it first campaigned against a central repository of
electronically disseminated federal cases, and is now
campaigning against the federal courts adoption of their own
"star-pagination" of cases.10 West also has not been candid
with the Judicial Conference; West implies that it would
consent to use of the West volume and first page citation in
a commercially published coinpilation; this is misleading.11

the unofficial publishing arm of thelegislation

federal judiciary- The
prohibiting,
Judiciary committee should consider or approving
for example, a federal judge from proofreading
unless the publisher
an opinion revised by a publisher
releases all copyright claims be ifi the opinion. Another
alternative, we suggest would to amend the copyright laws
to state that submission of a corrected opinion to a federal
judge or employee for review and/or approval is tantamount
to assignment of the Courts
copyright in the corrected decision to
the United States. could also contract for editing
services to I'vet" opinions, if needed.
10 The involvement of West Publishing Company in the
federal court system is legendary. It even extends to the
annual $15,000 Edward J. Devitt Distinguished Service to
Justice Award paid by West to a federal judge. In an era of
H

ethical scrutiny and awareness, we do no know how such an

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award is permitted, and perhaps the Judiciary Committee

should look into this. The public would not accept an
to a Member of Congress.
annual $15,000 award from West
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11 See Dwight D. Opperman testimony at page 78 of the

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Judicial Conference Transcript cited at footnoteof3the

("People
can use our Reporter citation at the beginning page.
Contrast with page 22
There is no license fee for that.'')quoted on page 10 hereof.
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of the Statement of Vance Opperman has no copyright in the

Is Dwight opperman saying that West
citation, or that West just doesfirst
not charge a license fee.
page citation only in
At to the use of the volume and

HLC 00012329
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330

West opposed the Judicial Conference Subcommittee official

Electronic Citation System on the grounds, among others,
that the parallel citation would make decisions longer and
more unwieldy. Before this Subcommittee, West heartily
endorses duplicative parallel citations from numerous
publishers of case reports. West is of course free to lobby
as it wishes, but there is a certain inconsistency in fact
and approach.
West also makes an effort to illustrate the extent of
competition in publication of case reporters.:
Just to illustrate the multiplicity of publishers
of federal judicial opinions, the full text of each
opinion of the United States Supreme Court currently
can be obtained from at least seven different
sources...
Vance Opperman Statement, Page 14.
West is actually arguing against itself. First, it is
a little disingenuous for West to count West's Supreme Court
Reporter, WESTLAW, and LEXIS as three sources - since LEXIS
uses the Supreme Court Reporter pagination under a license
from West, and West's SUpreme Court Reporter and WESTLAW are
published by the same publisher. West has only one private
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permanent bound Supreme Court reporter competitor, and that

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is Lawyer's Edition.
er
La
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a commercial compilation, see the letter date May 29, 1992,

cited in footnote 4.

HLC 00012330
 [HyperLaw - Alan D. Sugarman]

331

The viability of a permanent bound case reporter

versions of Supreme court opinions is feasible commercially
only because of the existence of the official citation
provided by United States Reports. These official
citations, however, are not released until two years after
the opinions are decided; in the interim, the so called
advanced sheets must use a proprietary citation or the slip
opinion citation form. HyperLaw decided to publish Supreme
Court on Disc CD-ROM because for opinions over two year old,
the United States Reports are available.
"Advance sheet" versions for opinions released within
the prior two years of Lawyer's Edition. and the CD-ROM
equivalent on Supreme Court on Disc, remain at a commercial.
disadvantage because of the inability to use the "standard"
Supreme Court Reporte pagination for slip opinions. Many
librarians do not bother to even purchase the advance sheet
version of Lawyer's Editio , because it does not contain
standard or official citation information.
The real lesson, then, from West's Supreme Court
example is that existence of a public domain official
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citation with interior pagination stimulates competition. A

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cursory inspection of Westes other examples of new legal

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publications since West v. Mead was decided would support

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this statement.
For example, where is the vaunted competition in the
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publication of the full text of decision of the lower

federal. courts? West (and WESTLAW and West's licensee

HLC 00012331
 [HyperLaw - Alan D. Sugarman]

332

LEXIS) are the only publisher of comprehensive federal

decision reporters.. on CD-ROM, West is the onlv publisher
of CD-ROM's that contain the full text of opinions of any
selected lower federal court decisions.12 We assume that
the West license to Mead Data Central which owns LEXIS,
prohibits Mead from including West star-pagination on CD-ROM
or print publication. West has the field entirely to
itself. As to availability of case material in a variety of
formats, West has declined to publish CD-ROM versions of
Federal SuipRlement and Federal Reporter 2d. West also will
not publish microfiche versions of current volumes of those
reporters. Why? We believe, not lack of demand, but lack
of competition.
West further states at page 43 of its statement that
"In no other nation are so many publishers making so much
public domain legal material so widely, inexpensively and
readily available". This is not true. First, only West
could suggest that WESTLAW is "inexpensive".
As to other nations, one example will suffice. In
Italy, there are several companies publishing CD-ROM
H

12 If there are others, we assume that the

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publication is being done under a license from West.

Indeed, it would be interesting to know what publishers
er

other that Mead are publishing federal court decisions with

a license or waiver from West. Although West claims that it
is "benevolent", it does not provide a standard written
La

policy of copyright licenses, copyright claims or what it

considers fair use. No will West cooperate with publishers
by responding to specific requests for permission. In our
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opinion, even were West copyright claims valid, West's

conduct as a whole may very well constitute copyright
misuse.

HLC 00012332
 [HyperLaw - Alan D. Sugarman]
KKK

reporters of full text decisions of the Italian national

courts including IPSOA srl, Giuffre Editore Spa, and
LaserData spa. In the United States (with the exception of
Supreme Court on Disc), there are no federal court case
reporters on CD-ROM. CD-ROM Law publication in the United
States is behind that in other Western European countries,
and, without clarification of the copyright laws, will only
fall further behind.
Condusion
We support the purposes of H.R. 4426. However, we
believe the language needs to be changed to address the
compilation and "sweat of the brow" issues. We believe that
lancluage limiting the use of certain elements as evidence of
originality is a proper and sound approach.
H
yp
er
La
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HLC 00012333
 334

Appumix 7.-LEnTR FRom CHAmw Wuim J. HuGBEs, To PROF.

RoBERT Gomm, mE lAw ScHooi UNmmrry OF
PENNsyLvANLA, OcToBER 27, 1992

ow NUKOM SECOND commss

IZOngrtss of tht 'Unittd $tarts

%ouse of RgmmmtioEs
COMMrrrEE ON THE JUDICIAFtY
2 139 PAYSUM ham OFMCS gunawo
DC 2051542 IS

October 27, 1992

Professor Robert Gorman

La! School
Unlversity of Pennsylvania
Philadelphia, Pennsylvania 19104
Dear Professor Gorman:
I have your request that remarks prepared by you be included in the
official hearing record for H.R. 4426, a bill introduced by Kr.
Frank to amend the Copyright Act with respect to. pagination and
section nunLbering of legal compilations and statute&.
I believe you are aware the Went Publishing Company had requested
that an academic testify on its behalf at the hearinq on H.R.
The Subcommittee informed West that any professor testifying 4426.
as an
academic witness could not be paid for the preparation of his or
her remarks. A professor's paid written remarks implicate the same
concerns as paid oral remarks.
Before including your remarks in the record, I would appreciate
your informing me whether you received remuneration for the
preparation of your remarks, and if so, by whom. I would also
appreciate being informod whether you received remuneration from
H

any of the parties for consulting in the we ' 0&Itsdecision

Data Central litigation, since you referradmi 1!. in
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your remarks and since the decision plays a prominent role in the
bill.
er

The American Association of Law schoolg, "Statemont of Good

Practices by Law Professors in the Discharge of their Ethical and
Professional Responsibilities- states on page 61 that--
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A law professor has a responsibility to preserve

the integrity and independence of legal scholarship.
w

Sponsored or remunerated research should always be

acknowledged with full disclosure of the interests
of the parties. If views expressed in an article were
espoused in the course of representation Qf a client
or in consulting, this should be acknowledged.

HLC 00012334
 335

Professor Robert Gorman

October 27, 1992
Page 2

I'm sure you agree that the stabdards before the Congress should be
at least as high, given the important public policy implications of
legislation.
I look forward to hearing from you.
Sincerely,

w
W
k.i
//haiM-n
rma
he
t on nttoalleecctuu&&.1 Property
Subcomi too
and Tudicial Administration
w3K:wpv
H
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er
La
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HLC 00012335
 336

APPENDix 8.-LETTER FROM PROF. ROBERT GomiAN, To CHAmmAN

WmLm J. HuGHEs, NovmER 30, 1992
UNI YE R S I Tr of PENNs rL YA
The Law School
3400 Chestnut Street
Philadelphia, PA 19104-6204
215-898-7413
Robert A. Corman
Kenneth W. GemmiU Professor

November 30, 1992

William J. Hughes, Chairman
Subcommittee on Intellectual Property
and Judicial Administration
House Committee on the Judiciary
2138 Rayburn House Office Building
Washington, DC 20515-6226
Dear chairman Hughes:
I regret my delay in responding to Your letter of October
27, 1992 concerning my request that my comments forwarded
in my letter, dated May 12, 1992, concerning H.R. 4426 be to you
included in the official hearing record.
My comments were prepared at the request counsel
representing the West Publishing Company, and Iofwas compensated
for the time I spent preparing my comments. The same
regarding my service as a consultant to West's counsel is
in
true
connection with the appellate proceedings in West ublishing Co.
v. Mead Data Central. Inc.
with respect, for your information, I would point out that
the Statement of Good Practices that you quote -- published by
the Association of American Law Schools, of which
H

I was honored
to serve as President in 1991 -- deals with legal scholarship
inferentially with classroom teaching. The same strictures doand
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not apply in connection with the submission of written comments

in a legislative proceeding.
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I assume, rather, that my views will be

weight the reader finds appropriate as he or given whatever
La

the need for allegedly corrective legislation.shemy

reflects upon
the issues presented by the N&&t litigation and H.R.immersion
4426 has
in
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given me far more profound an appreciation of then than I would

otherwise have had. It is far easier for me now to identify the
serious misstatements and misunderstandings regardinq the ReAt
case, and the erroneous premises on which H.R. 4426 is based.
Thank you very much again for the opportunity to communicate
my views to you and the Subcomittee. I trust that my comments
will be Included as part of the official hearing record for H.R.
4426.
Sincerely,

Mg--t a.

HLC 00012336
 337

APPENDa 9.-LETTEP, FRom CHAmmx IViiiwi J. HUGHES, TO PROF.

LEo &Asm, CHAmw, ly=c7LjAL PRoPERTY CoNwm,
AssociATioN oF AmERicAN LAw ScHooLs, DEcKnER 22, 1992

ow StCOND

Congress of the canittd ostates

lftonst of vmmmatiuts
COMMIrTEE ON THE JUDICtARY
T= 213S Fthnum H"sl Ormca Oulmna
OC 2051"215

December 22, 1992

Profes or Leo Raskind

Cha irm:n, Intellectual Property Committee
A;sociation of American Law Schools
c o Brooklyn Law School
250 Joralemon Street
Brook lyn, New York 11201
Dear Professor Raskind:
The Subcommittee on Intellectual Property and Judicial
Administration, which I chair, occasionally receives requests thikt
law professors testify at our hearings. We also receive written
submissions from law professors regarding matters before us.
In order that the record reflect the capacity in which a
person's views are being presented, it is important that a person
testifying or submitting a written statement clearly indicate
whether he or she is appearing in an individual capacity or at the
request of another party.
If the appearance or wrLtten submission is at the request of
another party, the Subcommittee should be inrormed of that fact and
H

whether the person is being compensated. The Subcommittee should

also be informed whether the person has been compensated in the
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past by any party with an interest in the legislation. Where a law

professor is receiving compensation through a law firm with which
he or she is affiliated, this fact should be revealed, and all
letterhead.
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submissions should be on the law

These requirements are consistent vith the following statement
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of the American Association of Law Schools' "Statement of Good

Practices by Law Professors in the Discharge of their Ethical and
Professional Responsibilities" (page 61):
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A law professor hes a responsibility to preserve

the integrity and independence of legal sr-holarship.
Sponsored or remunerated research should always be
acknowledged with full disclosure of the interests

HLC 00012337
 338

Professor Leo Raskind

Page Two
Decomber 22, 1992

of the parties. If view* expressed in an article were

aspqused in the course of representation of a client
or in consulting, this should be acknowledged.
Whil* of course the Statement ft-,&* not refer to matters before
the Coriqress, I trust. this letter makda clear the Subcommittee
bel,ieves, consistent with the Statement, that law professor* should
fully disclose whether they.have been retained by-.&, third party
whenever they are appearinq before oir subsittinq a written comment
to the Conqrosgi. The gtandards for subaitting "stisony botore the
Congress should be ot looot as high as those met forth in the AALS
statemmt, given the important public policy implications of
legislation.
I request your assistance in making the Subcommittee's
requirenonts known to member* of the AALS Intellectual PrWorty
-committee, by distributing ceOies of this letter at your argiual
seating this Janutry or by any other mean& you think appropriate.
Thank you for your cooporation,
Yl

w 11
aim
Subcomittee on Intellectual rro"rty
and Judicial Adainistration
NJH: WPLI
H
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La
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HLC 00012338
 339

APPENDa IO.-LETTER LND STATEmENT FRoNi PROF. PALL GOLDSTEIN,

STANFoRD LAw SCHOOL, STANFORD UNIVERSITY, TO CHAMM
Wuim J. HuGm, MAY 8, 1992

STANFORD LAw SCHOOL. STANFORD. CALIFORNIA 94305-8610

PAUL GOLDSTEIN
STELLA W. AND IRA S. LILLICH PROFESSOR TELEPHONE: (41Z5) 723-0313
or LA FAcsimILE.' (415) .327 08t,

8 May 1992

Hon. William J. Hughes

Chairman, Subcommittee on
Intellectual Property and Judicial AAministration
207 Cannon House Office Building
Washington, D.C. 20515-3002
Dear Chairman Hughes:
Would you please include the enclosed Conments on H.R. 4426
in the official record of the hearing on H.R. 4426 before thfi
Subcommittee on Intellectual Property and Judicial Administration
that I understand has been scheduled for 14 May 1992.
1 also enclose a short professional biography for your
information.
H

Thank you for your consideration.

yp

cordially yours,
er
La

PaA --ldstein
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PG/la
Enclosure
cc: Members, Subcommittee on Intellectual Property and Judicial
Administration

HLC 00012339
 340

COMMENTS ON H.R. 4426

Paul Goldstein
Stella W. and Ira S. Lillick
Professor of Law
Stanford University

H.R. 4426, which would amend section 105 of the Copyright

Act "to exclude copyright protection for certain legal
compilations," is a bad bill. It is a bad bill because,
ambicjuous at best, it threatens to destabilize a corner of
copyright law that has evolved over years of careful judicial
decision. it is also a bad bill because it aims to wrest from
the judiciary a role that for more than two centuries has been -

reserved solely for that branch of goverTment: detoxmining on a

case-by-case basis whether someone who has copied another's work
has appropriated the work's protectible expression.

This paper, prepared at the request of opperman, Heins &

Paquin, counsel to West Publishing Company, will identify th*
practical problems that enactment of H.R. 4426 would create,
against the background of the historical allQcation of copyright
H

responsibility between Congress and the judiciary that has

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undergirded every U.S. Copyright Act, from the Act of 1790 to the
present 1976 Copyright Act. the paper will not address
er

section 105(a)(1) of the bill or section 105(b).

La
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HLC 00012340
 341

1. The Practical Problems th w

H.R. 4426's central problem is that it tries -- and

necessarily fails -- to convert a fact-based question that can
only be asked on a case-by-case basis into a generalized category
that can be applied across all cases. A set of examples under
existing law and under the law as it would be amended by H.R.
4426 will illustrate why any statutory effort to cate'gorically
resolve infringement questions outside the context of an actual
infringement suit will necessarily fail.

Under present law, a publisher who gathered the citations to

all copyright decisions ever rendered and then, employing
judgment and discretion, arranged the cases in a volume according
to their particular subject matter, procedural posture and forum
would doubtless enjoy protection against a pirate who made a
wholesale copy of the work; the publisher's protectible
expression, reflected in the selection, coordination and
arrangement of the citations would have been appropriated.
Doubtless, too, the publisher would have no action against a
H
yp

researcher who copied individual citations in writing a law

review article because the researcher had not appropriated the
er

publisher's selection, coordination or arrangement. In the

La

difficult middle ground case, where the defendant had

w

approximated some but not all of the publisher's selection,

HLC 00012341
 342

arrangement and coordination, a court, applying a century's worth

of precedent to the facts before it, would need to determine
whether the defendant had appropriated the publisher's
protectible expression. .

What if these cases arose after passage of H.R. 4426? Does

the proposed statutory proscription against copyright for case
citations mean only that others are free to copy individual
citations apart from their particular arrangement by tho
publisher? if no, the legislation would accomplish nothing that
is not already tho law. or does H.R. 4426 say that even
wholesale copying of the entire arrangement is allowed? If so,
Congress must consider whether and why it should partially repeal
section 103 of the Copyright Act by singling out this particular
compilation for treatment different than it given to tho
compilations reflectod in works such as maps, business
directories, telephone book yellow pages, catalogues and
bibliographies. or does the proscription mean only that
substantial parts of the publisher's arrangenent, falling short
of the whole wqrk, are free for the taking? If so, the bill
H

needs -- but of necessity fails -- to tell courts where to draw

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the line.
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La

2. My Conaress Has Historically Left infrincrement

Decisions to the Courts
w

Congress has consistently confined its copyriqht lawmaking

3

HLC 00012342
 343

to the prescription of categories and standards. For exalnple,

Congress has in section 103 of the Copyright Act created a
protectible category called "compilations" -- Ila work formed by
the collection and assembling of preexisting materials or of
data" -- and has in section 101 of the Act prescribed a standard
for protection of this category -- the compilation must be
"selected, coordinated, or arranged in such a way that the
resulting work as a whole constitutes an original work of
authorship." By contrast, Congress has given to courts the
responsibility for applying the prescribed standards to the facts
of individual infringement cases.

Aside from the usual reasons of institutional responsibility

and competence, there is a special reason why Congress has
delegated the application of standards to courts in copyright and
other intellectual property infringement cases. Apart from the
limited class of cases involving review of refusals of
registration by the Copyright Office, questions of the scope of
copyrightable subject matter arise in the context of infringement
suits whose facts typically empel judgments of degree: the
H

degree to which a copyright claimant contributed original

yp

expression to a work, and the degree to which the defendant

er

copied this original expression. Courts will not judge a word, a

La

phrase -- or, for that matter, a case citation -- in a vacuum.

Rather, they view the copyright owner's contributions in the
w

aggregate, and ask whether the defendant's work is substantially

4

HLC 00012343
 344

similar to the copyright owner's protectible expression.

West Publishina Co. v. Mead Data Central. Inc., 616 F.Supp.

1571 (D. Minn. 1985), affld, 799 F.2d 1219 (ath Cir. 1986), cert.
ddnied, 479 U.S. 1070 (1987) (West v. Mead), offers a good
example of Congress' wisdom in leaving the fine-tuning of
infringement decisions to the judiciary. Following traditional
copyright principles, the District Court first examinad West's
works in suit and determined that West was likely to prevail in
its claim that the works contained protectible subject mattor in
the form of original compilation, and that West's pagination
(that is, page breaks in conjunction with page numbers) reflected
this protectible expression. Comparing West's compilation vith
Mead's appropriation for purposes of reviewing the District
Court's grant of preliminary relief, the Court of Appeals
concluded that Mead's copying of the pagination created a
sufficient likelihood that West would prevail on the merits to
sustain the lower court's order. The Court of Appeals presumably
contemplated that on remand and after trial the District Court
would make fact findings on the,extent of West's protectible
H

expression and on the extent of Head's taking in deciding whether

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or not Mead infringed West's copyrights.

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Congress' allocation to the courts of responsibility for

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applying congressionally mandated standards on a case-by-case

HLC 00012344
 345

basis in inter partes litigation reflects a simple truth about

all copyright infringement cases: the protectibility of subject
matter cannot be determined in a vacuum, for to dissect any work
into its individually unprotectible elements -- words, numbers,
letters -- would inevitably deprive all works of copyright
protection. Surely a pirate who copied Gone With the wind in its
entirety would not go free because it had merely copied one
individual letter of the alphabet after the other. Yet this is
precisely the result that H.R. 4426 might be read to imply.

3. Conclusion

Congress is not the place to argue the merits or demerits of

West v. Mead or, for that matter, any of the multitude of
judicial decisions determining whether someone has appropriatod
another's copyrightablt expression. Ever since the Supreme court
observed in Callaghan v. Myers, 128 U.S. 617, 649 (1888), that
copyright in case reporters extends to their order of arrangement
of cases and the numbering and paging of volumes, courts
H

addressing the facts before then have carefully attuned the scope
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of protection given to the extent of the copyright claimant's

original expression, holding in some cases that the nature of the
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work justified a substantial degree of protection, and in others,

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only a ttiin layer of protection. And in some cases courts will

w

find the contribution of original expression so lacking that they

will withhold protection entirely. This is precisely what the
6

HLC 00012345
 346

Supreme Court did last Term, holdinq in Feist Publications. Inc.

v. Rural Teleipb e gery, Co,., 111 S-Ct- 1282 (1991), that
alphabetized telephone white pag" wore insufficiently expressive
to justify any protectiw at all, Nevertheless, the Court held
that, in general, compilations no" moot only a minimal standard
of creativity to,qualify for the protection Conqress has granted
under the 1976 Copyright Act.

R.R. W6 prosonts. a very di-fferent question to conqrodgi:

,Whether Concjress should pan* a hill.whoso objects are so
ambiguous and whose,method is so ontirely unprecedented. At
best, R.R. 4426 will.leavo cappetitors.free to a"ropriato
-individual cita'tiona, apart from their siloction, arrangemmeft arA
coordination,- a result.that already obtains under existing low.
At worst, tho Oil-1 will.radic4.11:y 41ter an -allocatiiii of
decisional author#.y..,that has lamtedformer* than 200 yoars and,
if. read, an broadly. as it may bef vlll daprivb law booOX pablishore
of a level.of protoction that caffright law,give4 to every other
categmT of copyrighted works.-
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APPEN,Dix ll.-LEmR FRom CHAmmAN Wuim J. HuGHEs, TO PROF.

PAuL GoLDffm, OcToBER 27, 1992

ONE MUNDRW alcom COMMON

Congrtss or the linited *atej

Mu. _-
%nit or ugm I -'I ri
COMMffnE ON THE JUDICARY
2138 RAv@uftX HDM OmN bu"M
WAftNwT*16 DC 2061"214

October 27, 1992

Prof;:;OrUPaul Goldstein
Stan d nivernity Law School
St:nford University
st nford, California 94305-8610
Dear Professor Goldstein:
I have your request that remarks preparod by ycku be included in the
official hearing record for H.R. 4426, a bill introduced by Mr.
Frank to amend the Copyright Act vith respect to pagination and
:ection numbering of legal compilations and statutes.
believe you are avare the West Publishincj Cospany
h t an academic testify on its behalf at the hearibqhad reWomtad
on H.R. 4426.
Th: subcommittee informed West that any professor testifying as an
academic vitness could not be paid for the preparation of his or
her remarks. A profoasor's paid vritten rouarks implicate the same
concerns as paid oral remarks.
Paragraph tvo of your remarks states that they vere preparod "at
the request of" a lav firm amployod by West Publishing company, a
p rty interested in the bill, but you do not clearly state whether
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you were paid for preparing those remarks. Beforo including your
remarks in the record, I would appraciate your informing me vhether
you received remuneration for the preparation of your ramrks, and
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whether you were paid through the law firm you are associatod vith
(your remarks vere sent on Stanford University
would also appreciate being informed whether letterhead). I
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remuneration from any of tho parties for consultingyou received

in the Vs"
publishing - mead Data Centr-l litiqation, since you referred to
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that decision in your r"arks and sinco the decision plays a

prominent role in the bill.
The American Association of Law Schools$ "Statemnt of Good
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Practices by Lav Professors in the Discharge of thoir Ethical and

Professional Responsibilities' states on page 61 that--

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Professor Paul Goldstein

october 27, 1992
Page 2

A law professor has a responsibility to preserve

the integrity and independence of legal scholarship.
Sponsored or remunerated research should always be
acknowledged with full disclosure of the interests
of the parties. If views expressed in an article were
espoused in the course of representation of a client
or in consulting, this should be acknowledged.
the Congress should be
I'm sure you agree that the standards before policy
at least as high, given the important public implications of
legislation.
I look forward to hearing from you.
sincerely,

Hughe
chairma
Subco .4tt..
ttee 0. Itel
on Intellectull
and Judicial Administration
Property
WJ-H: WPV
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APPEN'DIX 12.-LETTER FRom PROF. PAuL GoLDsTm, To Ci-LkaNLk-N

WiuDA J. HuGHEs, NovmER 12, 1992

STANFORD LAw SCHOOL. STANFORD. CAI-IFOR'IIA 9-4303-8610

PAUL GOLDSTEIN
STELLA W. Al-D IRA S. LILLICK PROFESSOR TELEPHON-E: (415) 723-0313
OF LAw FAcsiMILE (415) 327-0811

12 November 1992

Honorable William J. Hughes

Chairman, Subcommittee on Intellectual
Property and Judicial Administration
Committee on the Judiciary
Congress of the United States
House of Representatives
2138 Rayburn House office Building
Washinqton, D.C. 20515-6216
Dear Cliairman Hughes:
Ttiis letters responds to yours of 27 October respectiiig
comments prepared by me, and submitted to your Subcommittee, on
H.R. 4426.
As your letter correctly notes, the second paragraph of my
comments state that they were prepared "at the request of
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opperman, Heins & Paquin, counsel to West Publishing Company."

You will, of course, appreciate that I took pains to state the
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fact of my engagement by West's counsel -- which was

compensated -- in the text of my comments, rather than in a
covering letter, in order to ensure that this fact be preserved
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for the public record.

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Further, my involvement in the lawsuit, West Publishing

Company v. Mead Data Central, Inc., is also a matter of public
record. My testimony, as an expert witness on West Publishing's
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behalf, appears in the trial transcript of that case. Further,

in the interest of full disclosure, the discussion of the Court
of Appeals decision in West v. Mead. appearing in my treatise
contains a footnote stating, "The author was retained as a
consultant by counsel for the plaintiff in this case." P.
Goldstein, CoPYright. P inciples, Law and Practice §2.14.3.3 n.
86.

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Honorable William J. Hughes page two

12 November 1992

As should be evident, I concur with your position on the

matter of disclosure by individuals making presentations, whether
written or oral, to your Subcommittee. I believe that this
letter more than adequately addresses that position and trust,
therefore, that my written comments on H.R. 4426 -- which, as I
have already noted, include the appropriate disclosure -- will be
included as part of the Subcommittee's hearing record.
Co ially yours,

Pla u 1 lstein
PG/la
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65-153 0 - 93 (356)

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H
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ISBN 0-16-040799-0
cknooo

111
8016 040 9

HLC 00012351