HyperLaw Report #22: Key Motions in West Copyright Litigation to be Argued.

The HyperLaw Report
Internet Release No. 96-22
April 18, 1996

KEY MOTIONS TO BE ARGUED APRIL 26 IN WEST MINNESOTA COPYRIGHT CASE. OASIS V. WEST: IS PAGINATION TO WEST'S FLORIDA CASES COPYRIGHTABLE? IS WEST SEEKING AN ADVISORY OPINION FROM THE FEDERAL COURT? PARTIES STIPULATE THAT COURT HAS JURISDICTION. WEST: FIRST PAGE CITE NOT IN THE PUBLIC DOMAIN ... REDUX. BERRING: EXPERT WITNESS FOR WEST. Oral arguments on cross-motions for summary judgment are set for April 26, 1996 in a Minnesota federal court in one of the two presently pending declaratory judgment actions questioning West Publishing Company's claims to a copyright in pagination to its case law reporters. HyperLaw has just obtained portions of the Oasis case file from the court.

The first case was filed in the United States District Court for the Southern District of New York in February of 1994 by Matthew Bender & Company. HyperLaw then intervened. When the New York court indicated that it would not look favorably on a West motion to transfer the action to Minnesota where West is located, West then commenced a two year effort, still under way, to persuade the New York federal court that the court had no jurisdiction because Matthew Bender & Company and HyperLaw were seeking a mere "advisory opinion" from the court. West argued that there was no "case or controversy" because according to West the plaintiffs did not have a reasonable apprehension of being sued were they to use West internal pagination and that neither plaintiff had the ability to produce an infringing product. At the time the litigation was commenced, HyperLaw had been releasing its Federal Appeals CD-ROM for over six months. Matthew Bender has since released a product. Both plaintiffs alleged direct threatening actions by West.

West took a completely different approach in the Oasis Publishing Company case, initially filed a year later in March 1995 in Florida. Oasis is a Nebraska CD-ROM publisher that seeks to publish a CD-ROM of Florida court cases and use the pagination from West's Florida Cases (a subset of West's Southern Reporter.) Oasis had and has not commenced to key-in the Florida court opinions and did not allege individualized threatening actions by West. West successfully moved to have the case transferred to the Minnesota United States District Court. The case was assigned to Chief Judge Paul A. Magnuson, who has been on that court since 1981. (Civil 3-95-563).

Although Oasis did and does not have an existing product and did not allege any specific threats from West, West has not moved on jurisdictional grounds for the Minnesota federal Court to dismiss the Oasis case as it had in the New York case. In other words, West in Minnesota has not claimed that the plaintiff Oasis was seeking an advisory opinion and that the court therefore lacked jurisdiction.

According to a Memorandum of Law filed by Oasis, apparently the parties stipulated to jurisdiction: "THE PARTIES STIPULATE THAT THIS MATTER PRESENTS A JUSTICIABLE CONTROVERSY. January 10, 1996 Stipulation and Order at Paragraph 1." Page 2, Plaintiff, Oasis Publishing Company's Corrected Memorandum of Law in Support of Its Motion For Final Summary Judgment.

What does this mean? Is West willing to have the Minnesota United States District Court issue an advisory opinion because that court would be bound by the 1986 Eighth Circuit decision in West v. Mead? Or, is the West motion in the New York federal court seeking to dismiss Matthew Bender and HyperLaw a purely dilatory, frivolous motion? Take your pick.

The Minnesota United States District Court is where the 1985 West v. Mead case was heard. Judge Edward J. Devitt was the Chief Judge of the Minnesota District Court from 1957 to 1981 and continued to hear cases as a senior judge through the 1980s, according to the Minneapolis Star Tribune series in March, 1995. The Star-Tribune article also quoted Judge Rosenbaum, who heard the 1985 West v. Mead case and still retains jurisdiction in that case: "West filed its lawsuit against Mead in Minnesota and it was assigned to the newest member of the bench, Judge James Rosenbaum. Because of their ties to West and its executives, Rosenbaum said, 'each judge who had been on the court for some time recalls that they would have [disqualified] themselves' from hearing the case."

WEST FLIP-FLOPS AGAIN ON FIRST PAGE CITATION Many readers will recall the varying positions of West Publishing Company as to the status of the first page citation (also known as the parallel citation). In the West v. Mead cases, West stipulated that it was "fair use" for competing publishers of complete court opinions to insert the first page citation at the start of the opinion. In 1995, when West was trying to persuade the Wisconsin Supreme Court not to adopt a proposed vendor-neutral citation, West claimed that the first page citation was "virtually in the public domain." When these inconsistencies were brought to the attention of the Wisconsin Court by HyperLaw, West then stated that the first page citation was in the public domain without qualification. Then, at the AALL Pittsburgh meeting in 1995, James Schatz, de facto general counsel for West, stated again that the first page citation was in the public domain. This is on the tape recording of the session.

Now, roll forward to 1996 to the Oasis case. West has flipped-flopped back to its earlier position. The Joint Stipulation, Paragraph 24 states: "West considers the use by other publishers of 'parallel citations' to West's NRS versions of a case report to be a fair use of West's citations under Section 107 of the Copyright Act."

This is how Oasis in its argument uses the stipulation:

"West concedes that use of volume and page numbers is a fair use but contends that the internal pagination of such cases is protected because it would reveal West's 'arrangement' of such cases, yet the internal pagination is unnecessary to discern the order of the cases -- that can be done solely from the items West concedes are 'fair use.'" Page 3, Plaintiff, Oasis Publishing Company's Corrected Memorandum of Law in Support of Its Motion For Final Summary Judgment.

The argument of Oasis would of course be even stronger if it could have substituted "in the public domain" for "fair use."

It is difficult to find a direct West response to the Oasis argument.  However, at page 15 of its Reply Memorandum, West does state that "The dispute at issue in this case is whether star pagination reflects the arrangement of Florida appellate decisions within West's Southern Reporter. Oasis chases yet another 'red herring' by focusing on the selection of the decisions reported in Florida Cases. ... Although the selection of material in Southern Reporter is original, that fact is irrelevant to Oasis' request for declaratory relief."

We do not try to summarize the record, but one thing stands out. Oasis keeps saying it wants to use the pagination from Florida Case -- West keeps saying that Oasis is wrong, and that Oasis is really trying to copy the Southern Reporter, and, indeed, trying to take West's entire National Reporter System, lock, stock and barrel. West brings in examples from other reporters and states and federal courts and confuses the issues with a barrage of issues that go to the issue of sweat more than the issue of originality.

BERRING AS AN EXPERT WITNESS FOR WEST One of the documents filed in the Proceedings is the "Expert Report of Robert C. Berring Statement and Bases for Opinions." The Report is dated November 1, 1995. A docket entry refers to a deposition of Berring scheduled for December 15, 1995.

The Expert Report document is 15 pages long; 10 of the pages are the resume of Professor Berring. One page is titled "Information Considered in Reaching the Opinions Set Forth Above." Of eight listed items, the fifth item is Berring's own articles; the sixth item is Berring's book Finding the Law, and the third item is the decisions in West v. Mead, which relied in part on Berring's 1985 affidavit filed for West.

The Berring Expert Report itself is four pages long. In the report Berring discloses that he spent 11 hours in reviewing the materials and preparing the report and stated that he was being compensated at $300 per hour. This would not include the subsequent deposition. Berring's report does not disclose that he provided an affidavit for West in the original West v. Mead case, that West paid for Berring to attend and provide statements at the 1992 Congressional copyright amendment hearing, and that West also paid Berring to attend to provide a statement at the 1995 Wisconsin proceeding concerning the citation proposal.

Among the statements made by Berring in his expert report:

"The reason that West's pagination system is so valuable is that it reflects and represents the quality inherent in West's National Reporter System. Since the National Reporter System with its creative arrangement, quality assurance and reliability provides a reliable citation, others wish to appropriate it.. The pagination system of the West National Reporter System represents the sum and substance of the entire West Publishing Company universe of arranging, editing and producing cases. All of the work in creating a useful, reliable and creative product could be systematically appropriated."

[Interestingly, on March 14, 1996, Professor Berring wrote to Edward Jessen, California Reporter of Decisions, opposing the attempt of California to establish a so-called vendor neutral citation. After noting that "Paragraph numbering would be difficult to implement", Professor Berring wrote "An outstanding system is in place. Why run the risk of information chaos through the adoption of paragraph numbering system when it is not needed." Professor Berring does not disclose in his letter to Jessen that he is currently an expert witness for West.]

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:: Alan D. Sugarman       Federal Appeals on Disc tm CD-ROM  ::

:: President              Opinions of US Courts of Appeals   ::

::                        1993 to Date - All Circuits        :: 

:: HyperLaw, Inc.         Registered Trademark               :: 

:: P.O. Box 1176	  DO NOT SHORT CIRCUIT YOUR CLIENTS  ::

:: New York, NY 10023                                        ::

:: sugarman[_at_]hyperlaw.com   212-787-2812   212-496-4138(fax)  ::

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::              http://www.hyperlaw.com                      ::

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