West loses copyright fight over case pagination, annotations

SECOND CIRCUIT–West Publishing Company’s arrangement of citations, pagination, and annotations in commercial reproductions of judicial opinions is not protected by copyright, because “West’s choices on selection and arrangement can be reasonably viewed as obvious, typical, and lacking even minimal creativity,” a split panel of the U.S. Court of Appeals in New York City (2nd Cir.) ruled in early November.

West creates compilations of judicial opinions, consisting of the text of the opinions with enhancements such as key numbers, headnotes, a syllabus, and additions of certain factual information, including parallel or alternative citations to the opinion, attorney information, and subsequent procedural history.

Matthew Bender & Co. and Hyperlaw, two companies that produce CD- ROM software containing archives of court decisions, sued West in federal district court in New York City in May of 1997, asking the court to allow the companies to include portions of West’s cases in their software. Hyperlaw intended to include older cases that it could not obtain directly from the courts by copying West’s case reports, after redacting the syllabi, headnotes, and key numbers. Matthew Bender & Co. argued that use of references to the pagination in West’s case reports, which most courts rely on as official case cites, on their CD-ROM does not infringe West’s copyright. The district court held that West does not have a protectible interest in the portions of the opinions the publishers wished to use.

The appellate court held that copyright protection is unavailable for compilation works such as West’s cases, unless the work, when analyzed as a whole, displays “sufficient originality as to amount to an ‘original work of authorship.'” West failed to demonstrate originality in their compilations, the majority found.

The court said that West’s enhancements to the court record were alterations to a public record of fact which demonstrated little or no creativity. “Almost every one of West’s decisions relating to citation alterations is inevitable, typical, dictated by legal convention” or an either-or question, the majority ruled.

The court also found that because West’s pagination is determined by an automatic computer program, “West does not seriously claim that there is anything original or creative in that process” and therefore they are not protected.

In a dissenting opinion, Judge Robert Sweet argued that the selection and arrangement of factual annotations to public judicial opinions should be considered copyrightable as a whole.

Sweet agreed that copyright law is not intended to protect works lacking creativity, but argued that the required level of creativity can be “extremely low.” West makes “a number of substantive, editorial choices” when it compiles case reports, and has demonstrated that the enhancements are original and creative, he argued.

A spokesman for West told the Wall Street Journal that the company will seek review by the U.S. Supreme Court. (Matthew Bender & Co v West Publishing Co; Counsel for Matthew Bender: Carl J. Hartmann)