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Crown Jewels Campaign - JURIS
November 1, 1993
NOTE ON WEST COPYRIGHT OF PAGE NUMBERS OF PUBLISHED JUDICIAL
DECISIONS
by James Love (215.658.0880;love@essential.org)
One of the more bizarre aspects of the barriers to access to
federal legal information concerns West Publishing's assertion of
copyright over the page numbers of its published judicial
opinions. The reason this is important is that most federal
courts require lawyers to use the West page number for citations
in briefs.
West publishes judicial opinions in its "National Reporter
System," which includes, in addition to judicial opinions, West's
own valued added enhancements, such as summaries and "headnotes"
to cases. Virtually everyone agrees that West is entitled to
copyright protections for its summaries and headnotes, and also
that the opinions themselves are not protected by copyright.
West, however, claims very broad copyright protection for its
"arrangement" of the opinions, including its pagination. In 1985
a U.S. District Court in Minnesota gave West a preliminary
injunction against Mead Data Central, which intended to use the
West page numbers in its LEXIS service. In 1986 the West
copyright claim was upheld by the 8th Circuit Court. (West
Publishing Co. v. Mead Data Central, Inc. [616 F. Supp. 1571 (D.
Minn. 1985) (grant of preliminary injunction on copyright
issues), aff'd, 799 F.2d 1219 (8th Cir. 1986), cert. denied, 479
U.S. 1070 (1987)].
In upholding the preliminary injunction, the 8th Circuit
Court held, in a 2 to 1 split decision, that:
West has shown that it will probably succeed on the merits
of its claim at trial; West's case arrangements are
entitled to copyright protection and MDC's intended use of
West page numbers would infringe West's copyright in its
arrangements.
While the decision of the 8th Circuit Court was only for a
preliminary injunction, and subject to change based upon a more
complete record, Mead decided to settle with West, and the two
firms entered into a "secret" agreement, which gave Mead a
limited license to use the West page numbers in its LEXIS
service. Some have suggested that under the terms of the
settlement, Mead can only use the West page numbers in its online
service LEXIS, and cannot use the page numbers in CD-ROM products
(which Mead does not currently sell). Moreover, there is also
speculation that West and Mead may have agreed to other non-
competitive arrangements as part of the court approved settlement
of their litigation.
The West v. Mead decision is controversial, because of the
enormous control it gives West over the publishing of federal and
state legal information. Whatever justification for West's
monopoly over published legal information in an era of printing
presses and paper is greatly out of date in a modern world of
electronic publishing. Courts routinely use modern word
processing software to check judicial opinions for misspelling
and other errors, and today some courts can and do disseminate
opinions electronically (the greatest problems of access are in
the District and Bankruptcy courts, which often only give
opinions to West or Lexis). New information technologies such as
CD-ROM provide great opportunities for new information products,
such as electronic treatises, which provide ready access to vast
amounts of judicial caselaw on selected topics of interest.
Computer scientists are developing new "concept" based searching
tools, which may greatly reduce the importance of "headnotes" and
other editorial enhancements offered by West in its paper based
"National Reporter" system. The economics of electronic
publishing are far different than the older typeset and printing
technologies, making it feasible to have much greater price
competition among publishers of legal information, so long as the
barriers to market entry are not too great.
Today the West v. Mead decision and anticompetitive
practices by the judiciary itself have combined to make federal
judicial opinions very difficult to obtain. For many publishing
purposes it is necessary to have access to vast amounts of
historical opinions, since federal caselaw is built heavily upon
past precedent. While new opinions are often available
electronically, there are only three sources of the historical
records of judicial opinions in electronic form. These include
LEXIS, which was started in 1973, WESTLAW, which was started in
1975, and JURIS, which was started in 1971, and which inherited
the caselaw collected by a U.S. Airforce computer assisted legal
research program called FLITE (finding legal information through
electronics), which began operation in 1964, and had been
developed for the Airforce under a 1961 grant to the University
of Pittsburgh (14 years before WESTLAW was available, and more
than two decades before West Publishing was a contractor to DOJ
for JURIS). The JURIS database, however, contains a sizeable
"gap" in its caselaw, due to the 1983 to 1993 contracts between
DOJ and West which gave West "ownership" over all federal
judicial opinions collected during that ten year period.
While anyone could spend several millions of dollars to re-
create the past caselaw, including the missing JURIS data, the
usefulness of that data will ultimately depend upon the citation
and page numbering issue. Unless a publisher can provide lawyers
with a citable reference (acceptable by the judiciary) to
caselaw, the value of the product is greatly diminished.
There have been two separate but related efforts to resolve
this problem in favor of greater competition in the publishing of
federal caselaw. Last year Congress considered, but did not
pass, legislation that would have specifically excluded
copyright protection for citations, including page numbers, of
state or federal laws, regulations or judicial opinions (HR 4426,
102nd Congress). The federal courts also considered, but failed
to adopt, a uniform non-proprietary system of federal citations
and page numbers. Proponents of reforms say that both efforts
failed because of the well organized efforts of West, and the
failure to mobilize support for reforms. [In this regard, it is
worth noting that many potentially powerful supporters of low
cost access to online legal services have been co-oped by West or
LEXIS. University Law professors and law students, judges and
government lawyers all benefit from special low cost access to
WESTLAW or LEXIS.]
The remainder of this note will provide some of the
arguments that have been presented against the West copyright of
the page numbers of published judicial opinions, or in favor of
the adoption of a non-proprietary system of citations.
RALPH OMAN'S TESTIMONY ON HR 4426
The first Congressional effort to deal with the page number
issue was HR 4426 (102nd Congress), sponsored by Barney Frank.
Hearings on the bill were held on May 14, 1993. The first
witness at that hearing was Ralph Oman, then the Register of
Copyrights, who testified in favor of the bill. He stated:
While original headnotes, statements of fact and summaries
of holdings, given sufficient authorship, are certainly
copyrightable, no case before West Publishing Co. v. Mead
Data Central Inc. held that copyright existed in pagination
and volume numbers standing alone. Indeed, the Eighth
Circuit ignored precedent to reach this result... [F]actual
elements like volume and page numbers, for example, simply
contain insufficient originality to warrant protection . . .
Under existing precedent before West, and certainly after
Feist, compilations of names, numbers, citations and volume
and page numbers of state and federal laws, regulations and
judicial opinions, are not copyrightable . . . If Congress
decides that clarification of the law by legislation is
appropriate, the Office urges that the legislative history
make very clear that this bill merely clarifies existing
law, with respect to both legal and nonlegal material.
Quoted from Alan D. Sugarman, "Another View of Copyright
Case Reporters," New York Law Journal, July 28, 1992.
Professor Joyce's prepared statement is found in U.S. House
of Representatives, Committee on the Judiciary, Subcommittee
on Intellectual Property and Judicial Administration,
Exclusion of Copyright Protection for Certain Legal
Compilations," May 14, 1992 hearings on HR 4426, 102nd
Congress, Serial No. 105, pages 7-24.
CRAIG JOYCE, PROFESSOR OF LAW AND CO-DIRECTOR, INTELLECTUAL
PROPERTY LAW INSTITUTE, UNIVERSITY OF HOUSTON LAW CENTER
Professor Joyce is the author (with Patterson) of
"Monopolizing the Law: The Scope of Copyright Protection for Law
Reports and Statutory Compilations," 36 UCLA L. REV. 719 (1989),
and many other works dealing with copyright issues. Joyce said:
It is difficult to imagine any activity more clearly
nonprotectable . . . than the activity described by the Mead
Majority: separating federal cases from state cases,
dividing federal cases among the various types and levels of
federal courts, allocating state cases to different series
of reports based upon geographic regions (the specific
composition of which is surely subject to a "mere handful"
of possible variations . . .
For all the reasons that Professor Patterson and I argued in
"Monopolizing the Law," I believe that the people of the
United States have an overriding interest in readier,
cheaper, easier availability of access to the law through
old and new technologies alike. Whether the medium is
books, services like LEXIS or WESTLAW, CD-ROMs or technology
not yet developed, the American public benefits by
encouraging legal publishers to compete through innovation
and service, rather than by relying on spurious claims to
copyright protection of page numbers and the like which
identify where the law is to be found.
I do not wish to belabor the point, because I think it is
self-evident. The doctrine of West Publishing v. Mead Data
Central is bad copyright law at a technical level, grossly
anti-competitive, and terrible public policy.
Professor Joyce's prepared statement is found in "Exclusion of
Copyright Protection for Certain Legal Compilations," pages 35-
57.
PROFESSOR LAURA GASAWAY, AMERICAN ASSOCIATION OF LAW
LIBRARIES
Laura Gasaway is Professor of Law and Director of the Law
Library, University of North Carolina at Chapel Hill. Excerpts
from her testimony in favor of HR 4426, presented on behalf of
the American Association of Law Libraries (AALL), follows:
Quite apart from the need to foster competitive publishing,
HR 4426 is needed to secure with the public domain a
strategic body of information that unlocks the text of the
law. Although taken for granted, legal citations are the
sinews of legal research. Citations serve as direct
physical finding aids which enable researchers to locate law
or reports without consulting any intermediate index or
digest. Citations are also cross reference devices which
enable authors to direct researchers to related information.
So used, citations provide interconnectiveness in legal
publications.
Legal citations fulfill an infrastructural role in legal
circles which is similar to that of currency in a modern
society. Just as the currency system allows financial
transactions to occur, so the system for citing law
materials facilitates information exchanges from authors to
researchers. . . All sectors of the public . . . have an
immense if not obvious interest in placing legal citations
information in the public domain.
. . . Beyond the legal argument concerning originality, the
need to provide parallel references in different reporter
series led very early to the practice of star paging, a
practice which has been followed in legal publishing for at
least a hundred years. Star paging is an honored tradition
in which the reports of one publisher show the citation and
page breaks of another. In most cases, this tradition
allows an unofficial reporter to cite to the official, so
that an attorney need only use one set of reporters.
Unfortunately, an increasing number of jurisdictions have no
official publishers; in most of these cases, one private
publisher has substantially dominated the field. This is
true for both the Federal Circuit and District Court
opinions as well as for the opinions of several states. In
these jurisdictions, one must cite to the established
private reporter, because that is the means dictated by the
Courts of that jurisdictions as well as by the standard
legal citations manuals. To permit a private publisher to
claim a copyright in the page numbers is to preclude others
from entering the field. Since public policy clearly puts
these materials in the public domain, it appears contrary to
that policy to permit a publisher to use something as
artificial as page numbers to restrict other publishers from
entering the market.
[Professor Gasaway's prepared statement is found in "Exclusion of
Copyright Protection for Certain Legal Compilations," pages 196-
210.]
REASONS FOR FAILURE OF HR 4426
West publishing mounted an aggressive attack on HR 4426,
which it characterized as special interest legislation to benefit
Thompson Publishing (owner of Lawyers Coop), a firm that was
"owned by a British Lord." West was also able to mobilize a wide
range of other electronic publishers to oppose the legislation,
primarily because it would have narrowed the grounds for
copyright claims based upon compilations. Firms such as McGraw
Hill (owner of Shepherd's), BNA, CCH, CIS, DIALOG, and Dun and
Bradstreet opposed the legislation, as did firms like Disclosure,
Inc. and SEC Online, whose primarily business is to provide
access to government documents. Many of these firms were
concerned about the 1991 Supreme Court ruling in Feist
Publications Inc. v. Rural Telephone Service Co. [111 S.Ct. 1282
(1991)], which disallowed private copyrights on "facts" such as
telephone numbers. These firms want the broadest possible
interpretation of copyright protections for "compilations" so
that they can enforce copyright restrictions on the
redissemination of government information. Finally, HR 4426
contained a controversial section that seemed to sanction the
rights of state governments to charge fees for the right to
publish state laws and judicial opinions, generating opinions
from all publishers and library groups. There were also reports
that West lobbyists were able to put considerable pressure on
Representative Frank, through West supporters on appropriations
committees.
JUDICIAL CONFERENCE OF THE UNITED STATES
Another line of attack on the West v. Mead decision
concerned the federal courts themselves. If the courts could
develop their own non-proprietary method of citations, the issue
of the West copyright of its page numbers would be less of a
barrier. Alan Sugarman wrote about the efforts to do this in the
June 1992 issue of Legal Tech.
At its March 1990 session, the Judicial Conference agreed to
encourage courts to allow the use of parallel electronic
citations to federal court opinions. An early proposal for
an electronic citations system (ECS) was circulated in
February 1991. This proposal contemplated a central
repository for electronically disseminated opinions, which
was opposed by some.
Last June, the Automation and Technology Committee referred
the matter to the Library Program Subcommittee, which
distributed the "first draft report" (published in the
Federal Register, 56 Fe. Reg.39,457). IN RESPONSE TO
INDUSTRY PRESSURE, THE FIRST DRAFT REPORT ELIMINATED THE
CONCEPT OF A CENTRAL REPOSITORY. [Emphasis added]
Comments were received from federal courts, publishers,
associations and others. . . . Among the supporters of the
first draft report were Mead Data Central, Commerce Clearing
House and the American Association of Law Libraries.
Its opponents, which viewed the proposal as "an attempted
solution for a non-existent problem," included West
Publishing Company and Shepherd's/McGraw Hill.
Sugarman goes on to mention that a second draft report was
prepared in October 1992, which made an important change in the
status of the citations. The first draft report would have made
the electronic citations the official permanent citations for
judicial opinions, including interior pagination information
(pinpoint citation). The second report would have eliminated the
pagination information, making it difficult if not impossible to
use for long opinions. Commenting on this problem, Sugarman
noted "one can only speculate whether technical problems or
vested interests was the primary cause."
In any event, at its September 22-23, 1992 meeting, the
Judicial Conference rejected the proposal, leaving the courts
with nothing but the West citations for Circuit and District
Court opinions.
The September 1992 rejection of an official electronic
citation system was a blow to many small publishers who were
seeking relief from the effect of the West v. Mead decision, and
to consumers of computer assisted legal research.
In commenting on the need for a public domain citations
system, the New York Bar Association's Law Office Economics and
Management (LOEM) Committee and General Practice Section
identified the following benefits of a public domain citation
system:
1. It will simplify legal writing, reduce confusion about
the correct citation, and reduce the need for parallel
citations, for opinions not available in printed form
but available through one or more electronic sources,
such as Lexis, Westlaw, the CD ROM Publishers and the
courts sponsored electronic bulletin boards.
2. It will reduce the high cost of computer legal research
by reducing the need for subscriptions to multiple CALR
services...
3. It will increase the utility of the court-sponsored
public domain computer bulletin boards, thereby
encouraging more courts to establish them.
4. It will encourage legal publishers to charge for [the]
enhanced editorial value and not for mere access to the
text of opinions.
Reported in Eric Brown, "Inexpensive Computer Research Plan
Dealt Death Blow by Judicial Conference of the United
States," New York State Bar Journal, February 1993, page 57,
footnote 1. Brown cites letters dated September 1, 1992 to
Chief Justice Rehnquist and Mr. L Ralph Mecham of the
Administrative Office of the U.S. Courts, from Frank R.
Rosiny, Chair, NYSBA General Practice Section, and dated
September 15, 1992 to Rehnquist and Mecham from Mahlon T.
Clements, Chair, NYSBA LOEM Committee.
The Taxpayer Assets Project (TAP) intends to revisit the
citation issue with the federal court system, and also with the
Department of Justice (DOJ) and the Clinton Administration IITF
Working Group on Government Information.
for more information, contact James Love (215/658-0880;
love@essential.org)
--------------------------------------------------
Selected bibliography on question of copyright of page numbers of
published judicial opinions. [Note: several individuals have
kindly sent me suggestions for articles that should be included
in this bibliography. While I have not had the opportunity to
review all of these suggestions in time to include them in this
note, I will provide a revised and expanded list in the future.]
Articles
L. Patterson and C. Joyce, "Monopolizing the Law: the Scope of
Copyright Protection for Law Reports and Statutory
Compilations," UCLA Law Review, 919 (1989).
Alan D. Sugarman, "House Bill and Judicial Proposal May Impact
Electronic Publications," Legal Tech Newsletter, June 1992
Alan D. Sugarman, "Another View of Copyright Case Reporters," New
York Law Journal, July 28, 1992
"West Publishing Disputes Benefits of ECS Proposal," Legal Tech
Newsletter, July 1992.
Eric Brown, "Inexpensive Computer Research Plan Dealt Death Blow
by Judicial Conference of the United States," New York State
Bar Journal, February 1993, page 57.
Related articles
Craig Joyce, "The Rise of the Supreme Court Reporter: An
Institutional Perspective on Marshall Court Ascendancy," 83
Mich Law Review, 1291 (1985)
Cases
West Publishing Co. v. Mead Data Central, Inc., 616 F. Supp. 1571
(D. Minn. 1985) (grant of preliminary injunction on
copyright issues), aff'd, 799 F.2d 1219 (8th Cir. 1986),
cert. denied, 479 U.S. 1070 (1987)
Feist Publications Inc. v. Rural Telephone Service Co., 111 S.Ct.
1282 (1991)
Hearings
U.S. House of Representatives, Committee on the Judiciary,
Subcommittee on Intellectual Property and Judicial
Administration, Exclusion of Copyright Protection for
Certain Legal Compilations, " May 14, 1992 hearings on HR
4426, 102nd Congress, Serial No. 105.
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