# Matthew Bender & Co., Inc. v. West Publishing Co./Dissent Sweet

* Court Documents
* Case Syllabus
* Opinion of the Court
* Dissenting Opinion Sweet
SWEET, District Judge.
I respectfully dissent.
This appeal from the grant of summary judgment in favor of the appellee Bender presents challenging issues, the extent of copyright protection for compilations under the § 501(a) and § 106(1) and (3) of Title 17, U.S.C. what constitutes copying in the electronic age, and the propriety of summary judgment in determining issues of fair use. Because the majority reaches conclusions on the first two issues, with which I disagree, and consequently failed to address the third issue, I feel required to dissent, emboldened by the holdings of the three other courts which have considered the issue, West Pub. Co. v. Mead Data Central, Inc., 616 F. Supp. 1571 (D.Minn. 1985), aff'd, 799 F.2d 1219 (8th Cir. 1986), cert. denied, 479 U.S. 1070 (1987); Oasis Pub. Co. v. West Pub. Co., 924 F. Supp. 918 (D. Minn. 1996), and reached conclusions contrary to those stated by the majority. By concluding that page numbers in the context of the West citation system are facts rather than an expression of originality the majority permits the appellee Bender and the intervenor Hyperlaw to appropriate the practical and commercial value of the West compilation.
The West page numbers which are inserted by appellee Bender in the text of each of ​ its CD-ROM disks by star pagination result from the totality of the West compilation process which includes its concededly original and copyrightable work, i.e. attorney description, headnotes, method of citation and emending of parallel or alternate citations. These result in a compilation work with page numbers assigned mechanically. The West page numbers and the corresponding Bender and Hyperlaw star pagination are the keys which open the door to the entire West citation system which as the majority noted is an accepted, and in some instances, a required element for the citation of authorities.
The majority initially assumes the copyrightability of the West work but cites the statement in Feist Publications, Inc., v. Rural Telephone Service Company, Inc., 499 U.S. 340 (1991), that "a factual compilation is eligible for copyright if it features an original selection or arrangement of the facts, but the copyright is limited to the particular selection or arrangement. In no event may copyright extend to the facts themselves." 499 U.S. 340 at 350-51, and its conclusion that the compiler's copyright is "thin" permitting a subsequent compiler to use facts "so long as the competing work does not feature the same selection and arrangement." Id. By characterizing star pagination as a fact, rather than as an essential part of the selection or arrangement the majority deprives the West pagination of its originality and consequent copyright protection.
The majority concludes that because the volume and page numbers are "unprotected features" of West's compilation process, they may be copied without infringing West's copyright. The majority reasons that, pursuant to the Copyright Act, the "embedding of the copyrightable work in a tangible medium does not mean that the features of the tangible medium are also copyrightable." Therefore, West's arrangement of cases is protectible, but the page numbers are not. The classification of page numbers as physical embodiment rather than the result of originality is the foundation stone of the majority's interpretation of the authorities dealing with the copyright statute.
In my view West's case arrangements, an essential part of which is page citations, are original works of authorship entitled to copyright protection. Comprehensive documentation of West's selection and arrangement of judicial opinions infringes the copyright in that work.
This reasoning is consistent with Feist. As discussed above, the majority notes that the compiler's copyright is "thin." Feist, 499 U.S. 340 at 350-51. Therefore, "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." Id., at 349 (emphasis added). In this case, allowing plaintiffs to use the page numbers contained in West's publication enables them to feature West's same selection and arrangement. Indeed, were it not for the ability to reproduce West's arrangement, its pagination would be of limited (if any) use.
According to Feist, "[t]he originality requirement articulated in the The Trade-Mark Cases and Burrow-Giles remains the touchstone of copyright protection today …. It is this bedrock principle of copyright that mandates the law's seemingly disparate treatment of facts and factual compilations." 499 U.S. 340 at 347 (citations omitted).
​ Here the pagination results from West's arrangements, selections, syllabi, headnotes, key numbering, citations and descriptions. The page number, arbitrarily determined, is the sole result of the West system, appears nowhere else, and is essential to its coordinated method of citation. It is, so to speak, an original fact resulting from West's creativity.
Having determined that the West page numbers are not original, but factual, the majority then deals with West's contention that by use of the CD-ROM technology plaintiffs have violated § 101's prohibition against copying its selection and arrangement and defeats this contention by noting that West has conceded fair use of parallel citation as to the first page of a report. It rejects Chief Judge Magnuson's view: "Having gotten the inch under the conceded fair use of parallel citation to the first page of each case," plaintiffs are not "thereby entitled to take the entire mile in star citation to every page…" Oasis Publishing Company, Inc. v. West Publishing Company, Inc., 924 F. supp. 918, 926 (D. Minn. 1996).
The comprehensive copying of first-page parallel citations alone, even in a competing work, is arguably fair use because citations do not substantially supplant the need for the West volumes. Conversely, complete electronic cross-pagination fulfills the same market demand as West's volumes. As the Oasis Court explained, "Although with either the parallel cites or an internal cite from each case a user could sort West's cases and determine West's arrangement, the former does not utterly supplant the need for West's product while the latter does." Id. The view of the Oasis court correctly assesses the reality in my view.
According to the majority, a more fundamental reason to reject West's argument that plaintiffs have copied its arrangement is that the arrangement can be perceived only after a person uses the machine to rearrange the material.
Some of the most seminal developments in copyright law have been driven by technological change. There was a time when people questioned whether photographs, see Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1994), or advertisements, see Bleistein v. Donaldson Lithographing Co., 188 U.S. 293 (1903), were copyrightable. Here again it is necessary to reconcile technology with pre-electronic principles of law. Clearly, plaintiffs' CD-ROM disks are not "copies" in the traditional sense. Yet, plaintiffs provide the ability for a user to push a button or two and obtain West's exact selection and arrangement. This technological capacity presents a new question. The majority's answer threatens to eviscerate copyright protection for compilations.
West's position is that plaintiffs directly infringe. "[T]he owner of a copyright…has the exclusive rights to…reproduce the copyrighted work in copies." 17 U.S.C. § 106. The reproduction must be in a "material object…in which a work is fixed…from which the work can be perceived…either directly or with the aid of a machine or device." 17 U.S.C. § 101 (definition of "Copies"). Closely read, the word "work" in the statutory text refers in the first instance to the infringing work, and in the second instance to the infringed work. Accordingly, plaintiffs' CD-ROMs infringe West's reproduction right if the information is "fixed" in the CD-ROM (which it is) and if West's protected selection and arrangement "can be perceived…with the aid of a machine."
Broadly read, plaintiffs' inclusion in their work of West's precise page break information permits the Reporters to be "perceived" by the aid of a computer. Plaintiffs' inclusion of the selection and arrangement software feature make the perception easy. Even if the focus is placed upon the intervening deliberate act by the Bender or Hyperlaw CD-ROM user, liability might attach for contributory infringement, which requires (1) actual knowledge of direct infringement, (2) the ability to police the infringing conduct and (3) derivation of substantial benefit from the actions of the primary infringers. See Gershwin Publishing Corp. v. Columbia Artists Management, Inc., 443 F.2d 1159, 1163 (2d Cir. 1971).
Finally, the majority dismisses West Publishing Co. on which I rely for lack of authority. ​ By its ipse dixit, that location by star pagination does not result from the concededly original West arrangement of cases, the majority rejects the result obtained by the Eighth Circuit and attributes it to the preFeist, "now defunct ‘sweat of the brow’ doctrine," an attribution not warranted by the reliance of the Eighth Circuit upon West's originality. The question of whether or not Feist overruled West was argued and carefully considered by the Oasis court. Creativity was the issue, and I subscribe to Chief Judge Magnuson's view of the interrelationship between West and Feist.
While the Eighth Circuit did take note of the considerable "labor" exercised by West, it did so in conjunction with a consideration of West's "talent and judgment" in organizing its compilations. See West Publishing Co., 799 F.2d at 1226 (concluding that West's arrangement is the result of "considerable labor, talent and judgment").
The Eighth Circuit applied essentially the same creativity standard articulated and applied in Feist. Instead of a mere "sweat of the brow" analysis of West's selection and arrangement of cases in the National Reporter System, the Court considered the "originality and intellectual creation" requirements of the arrangement. West Publishing Co., 799 F.2d at 1225-26.
In West Publishing Co., the Eighth Circuit's persuasively reasoned that (i) comprehensive pagination, when linked to the text of a compilation, is copyrightable in terms of originality because it expresses the compiler's expression and arrangement, and (ii) a compilation's selection and arrangement is copied when comprehensive cross-pagination is inserted into an electronic database containing the compilation's text. 799 F.2d at 1227-28.
Because of the views set forth above, I believe the District Court erred in not granting copyright protection to West. In addition, the District Court granted summary judgment for plaintiffs on their contention that their acts were permitted as "fair use." The resolution of this issue, factually contested, required a trial and the reversal of the grant of summary judgment. See, e.g., Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70 (2d Cir. 1997); see also Wright v. Warner Books, Inc., 953 F.2d 731, 735 (2d Cir. 1991) (stating that while the copyright holder is not protected from summary disposition of claims where there are no material factual disputes, the "the fact driven nature of the fair use determination suggests that a district court should be cautious in granting Rule 56 motions in this area").
For these reasons I believe the grant of summary judgment granting the declaratory judgment requested by Bender was error, and I therefore dissent from the majority's affirmance of that judgment.

### Footnotes

1 ↑  Bender's CD-ROMs obtain the text of the opinions they report from Lexis, opinions which are, of course, in the public domain.
2 ↑  It is immaterial that plaintiffs' products may display other arrangements as well as West's. The capability of a CD-ROM to display more than one arrangement does not make the encoding of an original selection and arrangement such as West's any less of an infringement.
It is also irrelevant that plaintiffs' products may contain material beyond West's selection and arrangement. Infringement is determined by how much of the copyright owner's work was taken, not by what else the copier's work contains. See e.g., Warner Bros., Inc. v. American Broadcasting Cos., Inc., 720 F.2d 231, 241 (2d Cir. 1983).