West Loses Copyright Claim over Page Numbers
Posted On June 21, 1999
On June 1, the U.S. Supreme Court denied review of two decisions by the 2nd U.S. Circuit Court of Appeals (based in New York)1 that dramatically affected the position of Thomson Corporation's West Group on the scope of its copyright.
These Court of Appeals decisions2 dealt with the following issues:
The Court of Appeals had answered each question in the negative—and the Supreme Court denied review without an opinion. The Court of Appeals decisions are now the last word on the subject. Therefore Matthew Bender, HyperLaw, and others may copy the text of judicial opinions from West Group publications, including the "star pagination" and the enhanced information, and they may also note the West publication page numbers. The court held that the West contributions lacked sufficient creativity to merit copyright protection. The companies suing West, both of which manufacture CD-ROMs, may not use the West editorial features such as synopsis, digest topics, and key numbers.
- Did the use of West's "star pagination" (an asterisk and page number within judicial opinions noting when page changes occur in published legal reporters) infringe West's copyrights in its printed compilations?
- Did the use of West Group's enhancements to individual opinions, such as parallel citations (to cases cited within opinions), the identification of counsel, and subsequent legal history information amount to copyright infringement?
- Did the use of West Group's page numbers infringe West's copyrights?
The Court of Appeals relied heavily on 1991's Feist Publications v. Rural Telephone Serv. Co.3, which held that white pages telephone directories were collections of facts and lacked originality in content, selection, arrangement, etc. The second of the new cases specifically disagreed with and declined to follow the prior West decision4 in which a Minnesota court of appeals upheld copyright protection for West's page numbers for internal citations and star pagination.
While the text of judicial opinions falls within the public domain, West Group had steadfastly asserted copyright in the page numbers and page breaks in its reporters—and thus had created a roadblock to any upstart company that wanted to copy the opinions to sell on CD-ROM. Without the page numbers, users could not cite to a court opinion or provide the origin of a quote from an opinion. Legal citation forms have traditionally required reference to the volume number and page(s) of the reporter in which a case is published. Many states require citation to West reporters; some do not even have a competing "official" reporter.
"Vendor-Neutral" Citation Systems
In reaction to the unavailability of page numbers in CD-ROM products from West competitors, a few jurisdictions have changed their citation rules to a "vendor-neutral" or "universal" citation form—usually referring to paragraph numbers within the opinion for citations.5 Two states—Louisiana and Wisconsin—have led the way toward citation reform. When asked about the Court of Appeals decisions, Marie Erickson, head of public services of the Law Library of Louisiana, said: "Yes [it] will influence the movement to vendor-neutral citations. However, I wonder whether the movement to vendor-neutral citations may have influenced the decision, because the ability to reproduce cases more cheaply on CD-ROM makes it cost-effective for more than one vendor to supply case reports."
Marcia Koslov, State Librarian of Wisconsin, doesn't believe that the cases have had much impact yet. "So far people are not connecting the two [the West cases and citation reform]. It hasn't taken the air out of the balloon. For instance, Wisconsin and Puerto Rico both passed the Universal Citation System6 in the last two or three weeks."
According to Wisconsin State Law Librarian Koslov, Arizona, Colorado, Maryland, and Utah are already using paragraph numbers. States that have adopted the Universal Citation System include Maine, Montana, Oklahoma, North Dakota, and South Dakota. Louisiana has adopted a vendor-neutral citation system based on docket number and the paging of the original slip opinion, while Mississippi and New Mexico have other variations. Several states—specifically, Arkansas, California, Florida, Georgia, Maryland, Missouri, and Tennessee—currently have the Universal Citation System under consideration.
Effect of the New Decision
Will the recent decisions "liberating" existing page number citations set back vendor-neutral citation reform? Will new CD-ROM products enable all jurisdictions to return to the traditional, or printed-page-based, citation form? It would certainly be easier than trying to cope with a wide variety of vendor-neutral citation systems, including variations on the Universal Citation System.
Even more important than the impact on citation reform would be the backlash on the information industry. Those in the library and information industry should keep their eyes on Congress, and even state legislative initiatives, to protect the "sweat of the brow" theory of copyright protection rejected by the Feist case—and now by the West cases.
Information producers such as West, who have built large libraries of public domain information sources, have gone to great expense to provide thorough, accurate, and enhanced information resources. They will continue to seek protection. They may go to other forums to protect their information products from rampant copying by small new companies. These newer companies, and new divisions within established companies, may seek to amass overwhelming amounts of the fruits of established publishers' labors (in the case of West, one covering more than a century of information gathering and publishing) without spending the time, effort, and money required over the years. Of course any such new company's product(s) will be cheaper, and may now include much of the valuable enhancements the established company has supplied—at least those that do not qualify for copyright protection. Competition may return to the all-too-centralized legal information field. It should be exciting to see what happens next.
One thing is sure: It ain't over yet.
Carol Ebbinghouse is director of the law library at Western State University College of Law in Fullerton, California. Her e-mail address is email@example.com.
1. West Publishing Co. v. Matthew Bender & Co. Inc., (Supreme Court docket number 98-1500), and West Publishing Co. v. HyperLaw Inc., (Supreme Court docket number 98-1519).
2. Matthew Bender & Co., Inc. v. West Publishing Co., 158 F. 3d 674 (2nd Cir. 1998) and Matthew Bender & Co. Inc. v. West Publishing Co., 158 F. 3d 693 (2nd Cir. 1998).
3. Feist Publications v. Rural Telephone Serv. Co., 499 U.S. 340, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).
4. West Publishing Co. v. Mead Data Central, Inc., 799 F.2d 1219 (8th Cir. 1986), affirming West Publishing Co. v. Mead Data Central, Inc, 616 F. Supp. 1571 (D.Minn. 1985).
5. See the American Association of Law Libraries Web site: http://www.aallnet.org/products/pub_universal.asp
6. To order a copy of the Universal Citation System, visit http://www.aallnet.org/products/pub_universal.asp on the Web, or call the State Bar of Wisconsin at 608-257-3838 or e-mail Tim Clark at firstname.lastname@example.org.