The Privatization of Public Domain?

Abstract

COURT CASES The legal publishing field offers a prime example of attempts to privatize public domain materials. On May 19, 1997, District Judge John S. Martin, Jr., handed down his decision in Matthew Bender & Co. v. West Publishing Company, which also included Hyperlaw, Inc. v. West Publishing Company. The question before the Court was the extent of the copyright protection available to West Publishing with regard to Supreme Court and Appeals Courts opinions published in its reporter series. Do "the changes West makes to an opinion, either singly or in combination, represent a sufficient creative effort to warrant copyright protection"? Hyperlaw publishes CD-ROM products including ones of recent Supreme Court cases and recent Circuit Court of Appeals cases. Most cases are obtained from other than West sources, but some are scanned from West. Those scanned from West do not include the headnotes or key numbers. Hyperlaw intended to expand its product so that users could see the full text of any case cited in the opinion being viewed. That would mean scanning up to 75% of West's cases. The court agreed with Hyperlaw that it copies the decisions and not West's compilation (i.e., West's arrangement of the cases, indices, headnotes, and selection of cases). It characterized West's changes to each opinion as "trivial." The court held that West had "no copyright interest in those elements of the reported opinions which Hyperlaw is copying and intends to copy, Hyperlaw is entitled to a judgment that its copying on [sic] the opinions from the West reports does not violate West's copyrights." West appealed this decision to the Second Circuit, which affirmed the District Court's decision on November 3, 1998. The Second Circuit summed up the lower court's case as follows: "Bender's complaint sought a judgment declaring that star pagination [Author's note: i.e., shows West's page breaks] to West's case reporters will not copy West's arrangement or infringe West's copyright. HyperLaw intervened seeking the same relief." The District Court concluded that the insertion of star pagination to West's reporters "wouLd not reproduce any protectable element of West's compilation." The text of a court opinion is not copyrightable. "The court further ruled that star pagination would be permitted under the fair use doctrine even if West's pagination were copyrightable." The Second Circuit then explained that West's reporters are compilations. Copyright in compilations only covers materials contributed by the author, not the preexisting material included in the work. The Court looked to Feist Publications v. Rural Telephone Service (199I), the "seminal Supreme Court decision on copyrights in compilations." The Court reiterated that copyright does not extend to the facts themselves. It quoted the Supreme Court in Feist: "'Notwithstanding a valid copyright, a subsequent compiler remains free to use the facts contained in another's publication to aid in preparing a competing work, so long as the competing work does not feature the same selection and arrangement.'" The Second Circuit therefore held that "Bender and HyperLaw will not infringe West's copyright by inserting star pagination to West's case reporters in their CD-ROM disc version of judicial opinions." Considering Matthew Bender's stance in its lawsuit against West, it is ironic that the year 2000 finds Matthew Bender and Jurisline.com filing Complaints against one another over Jurisline.com's use of court opinions and statutes taken from Matthew Bender's Lexis Law On Disc (a division of Reed Elsevier). Matthew Bender's Complaint, filed in the New York Supreme Court, brings an action for fraud and breach of contract. It claims that Jurisline.com fraudulently obtained Lexis CD-ROMs through "misrepresentation, false pretenses and deceit" and violated restrictions and prohibitions of the access and use access license provisions. Lexis Law On Disc "provides attorneys with comprehensive, reliable, easily used and continuously updated