Sweat All You Want To, but It Won't Get You a Copyright
A panel of the Second Circuit, with one judge dissenting, has dealt the legal publishing firm West Publishing Co. double blows, holding that rival publishers Matthew Bender & Co. and Hyperlaw Inc. can embed the pagination of West's reporters in their products and can scan and republish cases from West reports in CD-ROM form without violating any West copyright claims.
The pagination issue arose in Matthew Bender & Co. v. West Publishing Co., 158 F.3d 693 (2d Cir. 1998), cert. denied, 119 S.Ct. 2039 (1999). While West conceded that the use by others of the number of the first page on which a case report appears in its volumes is fair use, it contended that its arrangement of cases in its reporters, including the page breaks, was protected by copyright, rendering its competitors' CDROM products with West pagination unlawful copies. Pagination in the West reporters is important because some courts, as well as the Bluebook, require pinpoint citations to pages in West reporters. For competitors to be able to insert so-called star pagination in their products, West charged, would give them the ability to reproduce West reporters by using a computer program that would jump to numbers consecutively.
West has succeeded in having three courts accord its arrangement of cases and pagination protection-West Publishing Co. v. Mead Data Central Inc., 616 F.Supp. 1571 (D. Minn. 1985, aff'd, 799 F.2d 1219 (8th Cir. 1986), cert. denied, 479 U.S. 1070 (1987), and Oasis Publishing Co. v. West Publishing Co., 924 F.Supp. 918 (D. Minn. 1996). But this time it failed.
The Second Circuit majority, in an opinion by Judge Jacobs, conceded that compilations of judicial opinions are copyrightable, but the copyright extends only to material contributed to the compilation, not the pre-existing material. Taking off from the U.S. Supreme Court's compilation decision in Feist Publications Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991), the Second Circuit said Feist rejected the "sweat of the brow" doctrine with respect to compilations, and it went on to hold that the internal pagination did not "entail even a modicum of creativity," was not original components of the compilation, and was not protected by West's compilation copyright.
The court also turned down West's contention that given the insertion of page breaks in its products, its competitors could reproduce West's product by placing the cases in the same order. But what would be produced, the court said, would not be a "copy" within the compass of copyright law. Neither, the majority said, were the West competitors guilty of contributory infringement by enabling such copies to be made.
Judge Sweet dissented, finding erroneous the majority's position that star pagination was an uncopyrightable fact rather than an essential part of the selection and arrangement of the compilation. The result of the decision, he wrote, is to permit Bender and Hyperlaw "to appropriate the practical and commercial value of the West compilation. …