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Matthew Bender & Co. and Hyperlaw, Inc. v. West Publishing Co.
97-7910
Sweet, D.J.
The key issue in this appeal is whether West's Supreme Court Reporter and Federal Reporter case reports in the context of its overall reporter citation system meet the constitutional and statutory requirement of creative originality. Because the majority imposes a standard that demands significantly more than the "modicum" of originality required by Feist Publications, Inc., v. Rural Telephone Service Company, Inc. , 499 U.S. 340 (1991), and far more than the "non-trivial" variation required by this Court for derivative-work and compilation copyright protection, I respectfully dissent. 1
The Copyright Act protects both derivative works and compilations, and I agree with the majority that West's case reports have elements of both. The standard for copyrightability set forth in Feist , as the majority notes, is applicable whether West's editorial work is analyzed in terms of derivative work or compilation. See e.g. , Atari Games Corp. v. Oman , 979 F.2d 242, 244-45 (D.C. Cir. 1992) ( Feist applicable to [audio-visual] compilation); 2 W. Patry, Copyright Law and Practice 1225 (1994) ( Feist applicable to derivative works). Contrary to the majority's holding, however, I find that West's selection and arrangement of factual annotations to public domain judicial opinions, considered as a whole, is copyrightable.
Originality alone -- whether the "author make[s] the selection or arrangement independently (i.e. without copying that selection or arrangement from another work)" -- is not sufficient. Feist , 499 U.S. at 358 . The work must also "display some minimal level of creativity." Id. Creativity for copyright purposes is not a philosophical question: the "creative spark" need only pass "the narrowest and most obvious limits." See Bleistein v. Donaldson Lithographing Company , 188 U.S. 239 , 260. The "modicum of creativity" requires simply that the author prove "the existence of . . . intellectual production, of thought, and conception." Feist , 499 U.S. at 362 (quoting Burrow-Giles Lithographic Co. v. Sarony , 111 U.S. 53, 59-60 (1884)); see also Key Publications Inc. v. Chinatown Today Publishing Enterprises, Inc. , 945 F.2d 509, 514 (2d Cir. 1991). (" [D]e minimis thought withstands originality requirement").
Thus, while the majority is correct that it is "not a goal of copyright law" to encourage the creation of compilations which lack "sufficient creativity," it is well-established that the required level of creativity is "extremely low." Feist , 499 U.S. at 345 . 2
In Feist , Rural's alphabetical arrangement by surname, and selection of name, town and telephone number to include in a telephone book, was "practically inevitable." Id. at 363. Although the facts need not be presented in an "innovative or surprising way," Rural's choice was "so mechanical or routine as to require no creativity whatsoever." Feist , 499 U.S. at 362 . Indeed, the copyright claimant in Feist had no real choice how to arrange a white pages directory, particularly given that state law prescribed the selection of data, and that only a few basic decisions were involved. Id. Also significant was that only Rural possessed the underlying data. Id. at 363.
Here, West has made choices to make its reporters and its citation system valuable. West makes dozens of multi-part, variable judgments, and there is no evidence that any of West's choices are commonplace, "practically inevitable," dictated by law, or that they follow any external guidelines. On the contrary, the record demonstrates that West makes a number of substantive, editorial choices -- without court direction or approval -- in determining the content and expression of its case reports. West's judgments involve assessments of "readability," clarity, completeness, availability (present and future) of sources, and other subjective considerations related to making the reports more useful.
Specifically, West asserts that originality inheres in the following aspects of its editorial process: (1) its decisions about when to add parallel citations and which parallel citations to add; (2) its substitution of "alternative citations" when its editors deem that the original citation should be improved upon in terms of usefulness, currency, or accuracy; (3) its addition of its own citations when none are provided; (4) its internal revision and correction of citations; (5) its expansion and completion of citation page references; (6) its creation, selection, and arrangement of additional text to reflect subsequent case developments; (7) its selection and arrangement of data for attorney summaries, and (8) its revision and reorganization of captions, court lines, date lines, and other prefatory material. Because these choices express thought and are not inevitable, West's annotations do not fall in the "narrow category" of works which are not copyrightable.
The fact that federal judges publish written opinions differently than West is sufficient reason to conclude that West's version requires some "thought" and is sufficiently "creative" to satisfy the modicum necessary for copyrightability. If a federal judge chooses to cite only to the United States Reporter, include minimal attorney information in his or her written opinion, or not provide a cite for a referenced case, then an alternative choice to provide parallel citations, expand attorney information, and cite the case cannot be deemed so "typical," "garden-variety," "obvious" or "inevitable" to prohibit copyrightability. Cf. Feist , 499 U.S. at 362 -63.
The majority dissects each element of West's editorial process and then extrapolates that "the cumulative effect of these citation decisions is a piling up of things that are essentially obvious or trivial (albeit helpful), each in its discrete way in its discrete spot."
West's originality, however, cannot be determined by the sum total of whatever (creativity) remains after each individual component is atomized. Indeed, this Court recently warned against the dangers of basing copyrightability analysis on an approach which isolates each element or ignores the "protectible expression within an unprotectible element." Softel, Inc. v. Dragon Medical and Scientific Communications, Inc. , 118 F.3d 955, 964 (2d Cir. 1997). See also 3 M. Nimmer, Copyright § 13.03 [F][5], at 13-145 n.345.1 (explaining that the fact that Hamlet's soliloquy can be reduced into unprotectible words does not mean that the soliloquy as a whole lacks originality for copyright purposes).
West's selection of particular annotations for each case must be considered a whole, not individually. See Key Publications , 945 F.2d at 514 (issue is "whether the arrangement . . . viewed in the aggregate, is original"). In defining a derivative work, the issue is whether "modifications" "represent an original work of authorship" must be considered " as a whole ." 17 U.S.C. § 101 (emphasis added) (definition of derivative work). The same legislative command is repeated in the definition of compilations, which provides that a compilation is "a work formed by the collection and assembling of preexisting materials . . . that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship." 17 U.S.C. § 101 (emphasis added). The cumulative and collective originality manifest in West's case reports satisfies the " de minimis " level needed for the work as a whole to be copyrightable. Indeed, it must be assumed that the originality and the consequent utility of the West citation system is precisely the reason that Hyperlaw seeks to use West as its verbatim source.
In my view the decision of the majority is not consistent with the post- Feist case Key Publications , 945 F.2d 509. In Key Publications , this Court held that classified directories of Chinese-American businesses was copyrightable because, among other things, plaintiff excluded enterprises she believed would not remain in business. This selection "indicates thought and creativity in the selection of businesses included." Id. at 513. If there is a modicum of originality in deciding which businesses are likely to stay open for awhile, the test is surely also met by deciding in a system designed to assist legal research for example, which sources are sufficiently useful, available, or permanent to stand alone, and which require the addition of an electronic parallel citation.
Contrary to the majority's view, the alternative factual annotations selected by West are not comparable to the cases where courts have denied copyright protection based on lack of originality. In Victor Lalli Enterprises, Inc. v. Big Red Apple, Inc. , 936 F.2d 671 (2d Cir. 1991), it was undisputed that the publisher's selection and arrangement of fact categories was exactly the same as that of all racing-chart publishers. Id. at 672. In Financial Information, Inc. v. Moody's Investors Service, Inc. , 808 F.2d 204 (8th Cir. 1986), cert. denied , 484 U.S. 820 , it was beyond dispute that the five basic facts listed on the Daily Bond Cards were an "inevitable" choice devoid of originality. In this case, by contrast, all of West's basic choices involve subjective judgment.
In Skinder-Straus Associates v. Massachusetts Continuing Legal Education, Inc. , 914 F. Supp. 665 (D. Mass 1995), the court held that the legal directory is copyrightable "as a whole," and therefore the question was substantial similarity, not copyrightability. Id. at 677. Although the Skinder-Straus court held that individual elements, such as a calendar of Christian and Jewish holidays, were not copyrightable, here West does not seek copyrightability of individual facts, but rather seeks to prevent verbatim copying of the case report as a whole.
The copyright granted West is thin, but it is sufficient to protect against the verbatim digital copying proposed by Hyperlaw. This result protects the advancement of science and the arts, while not permitting Hyperlaw to undermine any incentive for West to annotate judicial opinions selectively. If West's competitors were authorized to scan West's editorial enhancements systematically and, in effect, to copy its citation system, the economic incentive to engage in this kind of original and productive enterprise would largely evaporate.
There is no danger here that granting West's copyright protection to its annotations provides them a monopoly over the "idea" of publishing judicial opinions. When the number of ways data can be organized is so limited that its expression merges with the idea, copyright may be denied. However, here "there are a sufficient number of ways of expressing the idea . . . to preclude a ruling that the idea has merged into its expression." Kregos v. Associated Press , 937 F.2d 700 (2d Cir. 1991). In Kregos , this Court held that "the past performances of baseball pitchers can be measured by a variety of statistics," and is copyrightable. Here, too, opinions can be, and are, written with a variety of citation combinations and other facts either included or not. This case is not like Matthew Bender & Co. v. Kluwer Law Book Publishers, Inc. , 672 F. Supp. 107 (S.D.N.Y. 1987), where the court concluded that the categories in the plaintiff's chart (amount, case, plaintiff event, injury, and relevant data) are "the only sensible ones which could have been used to compile the data." Id. at 112.
To the extent that the West selection of factual annotation may seem obvious to anyone familiar with legal sources, it may be because of West's success in the market. 3 There is no support for the proposition that West's success in achieving an "industry standard" citation arrangement obligates them to donate the material to the public domain. Cf. BellSouth , 999 F.2d at 1444 (industry standard copied from industry association).
For the reasons stated, I conclude the summary judgment granted in favor of Hyperlaw should be reversed.
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[1]
Although not dispositive since I believe that the district court's determination is clearly erroneous, review should be
de novo
. Whether West's annotations are copyrightable requires application of the legal standard imposed by the constitution and copyright statute to the undisputed facts. To the extent prior Second Circuit opinions have reviewed issues of copyrightability for clear error, they appear inconsistent with the Supreme Court's
de novo
review of a similar issue in
Feist
(impliedly, although not expressly, reversing district court after
de novo
review), inconsistent with the
de novo
standard applied by this Court in other mixed questions in copyright law,
see e.g.
American Geophysical Union v. Texaco Inc.
, 60 F.3d 913, 918 (2d Cir. 1995) (fair use is mixed question subject to
de novo
review);
Carter v. Helmsley-Spear, Inc.
, 71 F.3d 77, 85 (2d Cir. 1995) (work for hire status legal conclusion reviewed
de novo
, although factual finding of each relevant factor reviewed for clear error);
Folio Impressions, Inc. v. Byer California
, 937 F.2d 759, 766 (2d Cir. 1991) (substantial similarity reviewed
de novo
since credibility not at issue), or distinguishable,
see
Financial Information, Inc. v. Moody's Investors Service, Inc.
, 808 F.2d 204, (2d Cir. 1986) (noting that district court relied "on its evaluation of the credibility of witnesses -- which we are ill-disposed to disturb on appeal" whereas here facts are not in dispute).
--------------
[2]
Indeed, "[m]ost applications of
Feist
have recognized the circumscribed sphere to which its holding applies, ruling that it invalidates the copyright only in the most banal of works, such as the white pages of a phone book." 1. M. Nimmer,
Copyright
§ 3.04[B][2], p.3-33 (footnotes omitted).
--------------
[3]
The contention that all of West's enhancements are trivial is somewhat ironic given that what motivates this litigation, it is assumed, is the desire to make money by copying West's valuable editorial work.