West and its copyright claim (was: Help! West Publishing ...)

On Wed, 1 Mar 1995, Nic Herriges wrote:
>
> Michael A. Trittipo writes:

 [citing West v. MDC]  

> >"[T]he copyright we recognize here is in West's arrangement, not in its
> >numbering system; MDC's use of West's page numbers is problematic
> >because it infringes West's copyrighted arrangement, not because the
> >numbers themselves are copyrighted."
>
> A hypothetical situation:
> A legal publishing house (LPH) decides to begin producing a collection of
> legal opinions. They exercise independent judgement and select a number
> of opinions from the appellate courts. They add commentary and paragraph
> numbers. As it happens, many of these opinions have also been selected by
> West for publication. For those cases included in both publications, LPH
> shows the West volume number, where the West page breaks occur and what the
> page numbers are. Other than this, no other West additions to the cases
> are included.
>
> Query:
> Does this hypothetical violate the law of copyright: a) according to West;

Yes.

> or b) according to anyone else?

Generally, no.

The passage that Michael quoted above is from West Publishing v. Mead Data Central, 799 F.2d 1219 (8th Cir. 1986). In that case, the court, in affirming a preliminary injunction, found that West had a likelihood of prevailing on the merits of an infringement suit. The case is very poor precedent for a number of reasons.

1. It was decided by a circuit that believed that mere hard work ("sweat of the brow") was sufficient to find originality that supported copyright. In support of its position, the _West_ court cited Hutchison Telephone Co. v. Fronteer Directory Co., 770 F.2d 128. Hutchison had facts that were nearly identical to Feist v. Rural Telephone. In Feist, the Supreme Court held that sweat of the brow was insufficient to support the requisite finding of originality necessary for a copyright. Any decision of the Eighth Circuit that relies upon sweat of the brow, including West v. MDC, is most likely wrongly decided in light of Feist.
2. The West v. MDC decision was in a preliminary injunction phase, well before the necessary facts were brought out sufficiently to make a decision on the merits. The court was aware that its decision was tentative. It included a conspicuous warning at the end of its opinion, warning off those who might seek to rely upon it, incorporating another case's note that "the District Court's findings, and our observations as to the governing law made in this opinion, are tentative and provisional, in the sense that different findings or conclusions might be warranted after a trial on the merits." West at 1229. West and MDC settled after the opinion was published. No court has ever rendered an opinion on the merits of West's contention that replication of page breaks constitute a copyright infringement.
3. The decision was a bare majority: 2-1.
4. The decision was thoroughly basted in a law review article (Paterson & Joyce, Monopolizing the Law, 36 U.C.L.A. L. Rev. 719) that was repeatedly cited with approval by the Supreme Court in the Feist case.

Anyone attorney considering relying upon the _West_ case (_especially_ outside of the 8th Circuit) since the Feist decision would be well advised to make sure his or her malpractice insurance is up to date.

For obvious reasons, West enjoys citing it en terrorem.

--
Terry Carroll        |   "Clearly, this invention provides the world's
Santa Clara, CA      |   first weapons simulator for use by motorists."
carrollt[_at_]netcom.com  |     - U.S. Patent No. 5,314,371 (May 24, 1994)