West v. Mead Data

WEST PUBLISHING COMPANY, Appellee,

MEAD DATA CENTRAL, INC., Appellant.

799 F.2d 1219 (8th Cir. 1986)

ARNOLD, Circuit Judge.

1/ Mead Data Central, Inc. (MDC) appeals from a preliminary injunction issued by the District Court for the District of Minnesota [fo] in a copyright- infringement action brought by West Publishing Company (West). West's claim is based upon MDC's proposed introduction of "star pagination," keyed to West's case reports, into the LEXIS system of computer-assisted legal research.

2/ For more than a century, West has been compiling and reporting opinions of state and federal courts. West publishes these opinions in a series of books known as the "National Reporter System." Before it publishes an opinion, West checks the accuracy of case and statutory citations in the opinion and adds parallel citations, prepares headnotes and a synopsis for the opinion, and arranges the opinion in West's style and format. West then assigns its report of each opinion to one of the individual series in the National Reporter System, such as Federal Reporter, Second Series or Bankruptcy Reporter; this assignment is based on the court and/or the subject matter of the opinion. Next, West assigns the case to a volume in the series, further categorizes and arranges the cases within the volume, and prepares additional materials, such as indices and tables of cases, for each volume. Volumes and pages are numbered sequentially to facilitate precise reference to West reports; citing the proper volume number, series name, and page number communicates the exact location of a West report, or a portion thereof, within the National Reporter System. West represents that upon completion of each volume, it registers a copyright claim with the Register of Copyrights and receives a Certificate of Registration for the volume.

3/ MDC developed, owns, and operates LEXIS, a computer-assisted, on-line legal- research service first marketed in 1973. LEXIS, like West's National Reporter System, reports the decisions of state and federal courts. Since LEXIS's inception, MDC has included on the first computer screen of each LEXIS case report the citation to the first page of West's report of the opinion. West concedes that citation to the first page of its reports is a noninfringing "fair use" under 17 U.S.C. s 107, so these citations are not at issue here.

4/ On June 24, 1985, MDC announced that it planned to add "star pagination" to the text of opinions stored in the LEXIS data-base. This new service, named the LEXIS Star Pagination Feature, was to be available to LEXIS users by September or October of 1985. This feature would insert page numbers from West's National Reporter System publications into the body of LEXIS reports, providing "jump" or "pinpoint" citations to the location in West's reporter of the material viewed on LEXIS. Thus, with the LEXIS Star Pagination Feature, LEXIS users would be able to determine the West page number corresponding to the portion of an opinion viewed on LEXIS without ever physically referring to the West publication in which the opinion appears.

5/ In response to MDC's announcement, West brought this action, claiming, inter alia, that the LEXIS Star Pagination Feature is an appropriation of West's comprehensive arrangement of case reports in violation of the Copyright Act of 1976, 17 U.S.C. ss 101-810. West sought, and was granted, a preliminary injunction. . .

ANALYSIS

6/ MDC's principal contention here is that there is no likelihood that West will succeed on the merits of its copyright claim. MDC readily concedes that portions of West's National Reporter System publications that are not at issue here, such as headnotes prepared by West, merit copyright protection. Yet, MDC maintains that any aspects of West's reporters affected by the LEXIS Star Pagination Feature are not copyrightable. The dominant chord of MDC's argument is that West claims copyright in mere page numbers. MDC adds that in any event, whether West claims copyright in its case arrangement or simply in its pagination, West's claim must fail because neither case arrangement nor pagination can ever qualify as the original work of an author. Even were this possible, MDC goes on, West's case arrangement and pagination do not in fact meet this standard. Finally, MDC contends that even were West's arrangement of cases protected by copyright, the proposed use of West's page numbers in LEXIS reports would not constitute infringement.

7/ We do not agree with MDC that West's claim here is simply one for copyright in its page numbers. Instead, we concur in the District Court's conclusion that West's arrangement is a copyrightable aspect of its compilation of cases, that the pagination of West's volumes reflects and expresses West's arrangement, and that MDC's intended use of West's page numbers infringes West's copyright in the arrangement.

A. Copyright Protection

8/ The Copyright Act provides copyright protection for "original works of authorship fixed in any tangible medium of expression." 17 U.S.C. s 102(a). The standard for "originality" is minimal. It is not necessary that the work be novel or unique, but only that the work have its origin with the author--that it be independently created. . .

9/ MDC argues that case arrangement is per se uncopyrightable because it cannot meet these standards. However, it is apparent on the face of the Copyright Act that it is possible for an arrangement of pre-existing materials to be an independently produced work of intellectual creation. Section 103 of the Act, 17 U.S.C. s 103, establishes that "the subject matter of copyright ... includes compilations and derivative works." A "compilation" is defined in the Act as: a work formed by the collection and assembling of preexisting materials or of data 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. s 101. An arrangement of opinions in a case reporter, no less than a compilation and arrangement of Shakespeare's sonnets, can qualify for copyright protection. . .

10/ We find support for this view in Callaghan v. Myers, 128 U.S. 617, 9 S.Ct. 177, 32 L.Ed. 547 (1888), which indicates that an original arrangement of opinions is copyrightable whenever it is the product of labor, talent, or judgment. The plaintiff in that case, Myers, held copyrights for several volumes of reports of the Supreme Court of Illinois. He had purchased these rights from the official reporter of that Court, who had prepared the volumes. In addition to the Court's opinions, the volumes contained a substantial amount of material original to the reporter, including headnotes, statements of facts, tables of cases, indices, and so on. . .

11/ The Supreme Court noted that while the reporter could claim no copyright in the opinions themselves, 128 U.S. at 649, 9 S.Ct. at 185, citing Wheaton v. Peters, 8 Pet. 591, 668, 33 U.S. 591, 668, 8 L.Ed. 1055 (1834), he could copyright other portions of his reports. Mr. Justice Blatchford wrote that, in addition to headnotes, statements of facts, arguments of counsel, case tables, and indices, [s]uch work of the reporter, which may be the lawful subject of copyright, comprehends ... the order of arrangement of the cases, the division of the reports into volumes, the numbering and paging of the volumes, the table of the cases cited in the opinions, (where such table is made,) and the subdivision of the index into appropriate, condensed titles, involving the distribution of the subjects of the various head-notes, and cross-references, where such exist. Callaghan, 128 U.S. at 649, 9 S.Ct. at 185 (emphasis ours).

12/ Later in its opinion, however, when considering several volumes that Myers claimed the defendants had infringed by copying their case arrangement and pagination, the Court quoted with approval the opinion of the Circuit Court, which stated: Undoubtedly, in some cases, where are involved labor, talent, judgment, the classification and disposition of subjects in a book entitle it to a copyright. But the arrangement of law cases and the paging of the book may depend simply on the will of the printer, of the reporter, or publisher, or the order in which the cases have been decided, or upon other accidental circumstances. 128 U.S. at 662, 9 S.Ct. at 190, quoting Myers v. Callaghan, 20 Fed. 441, 442 (C.C.N.D.Ill.1883). Evaluating the volumes at issue, the Circuit Court concluded that their case arrangement and pagination involved little labor; it therefore found the defendants' copying of the case arrangement and pagination of Myers's volumes not an independent infringement, but a matter to be considered in connection with other similarities in the parties' reporters. Id. The teaching of Callaghan with respect to the issues before us does not come through with unmistakable clarity. But as we read it, Callaghan establishes at least that there is no per se rule excluding case arrangement from copyright protection, and that instead, in each case the arrangement must be evaluated in light of the originality and intellectual-creation standards.

13/ MDC argues, citing, e.g., Order of June 7, 1978, Minnesota Supreme Court (unreported), that West is the "official reporter" for some states, and that, therefore, even a narrow reading of Banks supports its position. We are inclined to think that the term "official reporter" in orders discontinuing, for example, the Minnesota Reports, and providing that the Northwestern Reporter should henceforth be the "official reporter" for the opinions of the Supreme Court of Minnesota, means something quite different from the title "official reporter" held by Messrs. Wheaton and Peters. We do not believe that West is employed by any State, with a salary and duties fixed by statute, and with the details of its work controlled by statute or rule. But even if it is, the facts of this case, as found on the present record by the District Court, convince us that West has used sufficient talent and industry in compiling and arranging cases to entitle it to copyright protection under the 1976 Act as construed by the more recent cases.

14/ Having determined that there is no per se rule that case arrangements are not copyrightable, we turn to examine the District Court's findings that West's arrangements in fact meet originality and intellectual-creation requirements.

15/ West publishes opinions not from just one court, but from every state and all the federal courts in the United States. As it collects these opinions, West separates the decisions of state courts from federal-court decisions. West further divides the federal opinions and the state opinions and then assigns them to the appropriate West reporter series. State court decisions are divided by geographic region and assigned to West's corresponding regional reporter. Federal decisions are first divided by the level of the court they come from into district court decisions, court of appeals decisions, and Supreme Court decisions; Court of Claims and military court decisions are also separated out. Before being assigned to a reporter, district court decisions are subdivided according to subject matter into bankruptcy decisions, federal rules decisions, and decisions on other topics. After an opinion is assigned to a reporter, it is assigned to a volume of the reporter and then arranged within the volume. Federal court of appeals decisions, for example, are arranged according to circuit within each volume of West's Federal Reporter, Second Series, though there may be more than one group of each circuit's opinions in each volume.

16/ We conclude, as did the District Court, that the arrangement West produces through this process is the result of considerable labor, talent, and judgment. As discussed above, supra pp. 1223-1224, to meet intellectual-creation requirements a work need only be the product of a modicum of intellectual labor; West's case arrangements easily meet this standard. Further, since there is no allegation that West copies its case arrangements from some other source, the requirement of originality poses no obstacle to copyrighting the arrangements. In the end, MDC's position must stand or fall on its insistence that all West seeks to protect is numbers on pages. If this is a correct characterization, MDC wins: two always comes after one, and no one can copyright the mere sequence of Arabic numbers. As MDC points out, the specific goal of this suit is to protect some of West's page numbers, those occurring within the body of individual court opinions. But protection for the numbers is not sought for their own sake. It is sought, rather, because access to these particular numbers--the "jump cites"--would give users of LEXIS a large part of what West has spent so much labor and industry in compiling, and would pro tanto reduce anyone's need to buy West's books. The key to this case, then, is not whether numbers are copyrightable, but whether the copyright on the books as a whole is infringed by the unauthorized appropriation of these particular numbers. On the record before us (and subject to reconsideration if materially new evidence comes in at the plenary trial on the merits), the District Court's findings of fact relevant to this issue are supportable. We therefore hold (again subject to reexamination after the record has closed) that West's case arrangements, an important part of which is internal page citations, are original works of authorship entitled to copyright protection. . .

B. Infringement

. . .

17/ MDC asserts that enjoining its use of West page numbers is tantamount to giving West a copyright in the Arabic numbering system. West cannot, MDC argues, claim that its use of the numbering system is an original work of authorship. It is true that some uses of a numbering system cannot meet originality requirements for copyright. See Toro Co. v. R & R Products Co., 787 F.2d 1208 (8th Cir.1986) (arbitrary assignment of random numbers to replacement parts did not qualify for copyright protection). However, as already noted, the 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.

18/ MDC also argues that the LEXIS Star Pagination Feature does not infringe West's copyright because its citations to page numbers in West reporters are merely statements of pure fact. The flaw in this argument is that it does not distinguish between isolated use of the factual aspects of a compilation or arrangement and wholesale appropriation of the arrangement. "Isolated instances of minor infringements, when multiplied many times, become in the aggregate a major inroad on copyright that must be prevented." S.Rep. No. 473, 94th Cong., 1st Sess. 65 (1975), quoted in Harper & Row, 105 S.Ct. at 2235. The names, addresses, and phone numbers in a telephone directory are "facts"; though isolated use of these facts is not copyright infringement, copying each and every listing is an infringement. See Hutchinson Telephone v. Fronteer Directory, 770 F.2d 128 (8th Cir.1985). Similarly, MDC's wholesale appropriation of West's arrangement and pagination for a competitive, commercial purpose is an infringement.

19/ We hold that West's arrangement of cases in its National Reporter System publications is entitled to copyright protection and that the LEXIS Star Pagination feature infringes West's copyright in the arrangement. On the basis of the present record, it is probable that West will succeed on the merits at trial.

II.

20/ MDC also contends that the District Court did not accurately assess and weigh the three remaining Dataphase factors: the threat of irreparable harm to West, the relative harm to MDC, and the public interest. We disagree. . .

21/ Finally, the public interest favors issuing a preliminary injunction. While MDC argues that there is a public interest in free access to the law embodied in West's reporters, we note that West's works are not the only reports of judicial opinions available--MDC itself reports the decisions on LEXIS. More importantly, MDC's argument ignores the purpose of affording authors a monopoly in their copyrightable material; " '[i]f every volume that was in the public interest could be pirated away by a competing publisher, ... the public [soon] would have nothing worth reading.' " [co] . . .

CONCLUSION

22/ 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. The District Court correctly balanced this factor with the threat of irreparable harm to West, the relative harm to MDC, and the public interest to determine that West should be granted a preliminary injunction. Accordingly, the decision of the District Court will be affirmed. . .

Affirmed.

OLIVER, Senior District Judge, concurring in part and dissenting in part.

1/ . . . It is my view that our panel should follow the lead of the First Circuit as stated in Building Officials & Code Adm. v. Code Tech, Inc., 628 F.2d 730 (1st Cir.1980), in which a not dissimilar question was presented on a Section 1292(a)(1) appeal.

2/ That case, as does this case, involved the application of principles first enunciated in Wheaton v. Peters, 33 U.S. (8 Pet.) 591 (1834), and later applied in Banks v. Manchester, 128 U.S. 244, 9 S.Ct. 36, 32 L.Ed. 425 (1888), and Callaghan v. Myers, 128 U.S. 617, 9 S.Ct. 177, 32 L.Ed. 547 (1888). The First Circuit reversed the district court's grant of a preliminary injunction and remanded the case for a trial on the merits without making any definitive ruling on the merits of legal issues presented on the Section 1292(a)(1) appeal that pended in that court. [fo]. . .

II.

3/ . . . Most, but not all, of the exceedingly few Certificates of Copyright Registration in the record establish that West has recognized that it may not obtain a copyright on the major part of what it published in a particular volume of any one of those law reports. [fo]

4/ The record shows, for example, that although West claimed authorship of the "entire work" encompassed in Volume 753 F.2d, West's Certificate of Registration Form TX 1-607-203 (Exh. 3, A63) did not make any claim of copyright for the page numbers that the majority opinion concluded was "an important part" of the whole of such a Volume. One of the questions on the copyright registration form required West to "[g]ive a brief, general statement of the material that has been added to this work and in which copyright is claimed" (A64). West's answer stated "[c]ompilation of previously published case reports including but not limited to opinions, synopses, syllabi or case law paragraphs, key number classifications, tables and index digest, with revisions and additions." [fo] (A64). . .

5/ The fact that the sequential numbering of the pages of any volume, including a volume of law reports, is an important part of the volume, does not support a finding of fact that such a part of the whole of a particular volume of West's publications is subject to copyright. Nor, in my judgment, does such a fact support a finding of fact that West's arrangement of cases is subject to copyright. All parts of a copyrighted volume may not be automatically considered a subject to copyright simply because a publisher claims a copyright on the whole volume.

6/ . . . The record, as I read it, cannot be said to support a finding of fact that MDC intends in any way to duplicate or reproduce West's "arrangement of cases," whatever those arrangements may be.

7/ Thus, on the district court's record, the ultimate question presented on this Section 1292(a)(1) appeal is reduced to whether, under the applicable law, MDC's intended use of West's page numbers, standing alone, may be said to infringe some copyright to which West may be entitled under factual circumstances yet to be established on a trial of the merits of this case. It cannot be said that it is probable that West will succeed on the merits unless it can also be said that West will be able to establish that its page numbers are entitled to copyright; one simply cannot infringe a non-existent copyright. [fo] . . .

III.

8/ The district court recognized that "this case turns on whether or not the succeeding numbers themselves are protected by copyright," . . . [and] further recognized [] that even under its reading of Callaghan, that the Court held in that case that "[i]f the arrangement of cases and the paging of the book depend simply on the will of the printer, or the order in which the cases have been decided, or upon other accidental circumstances, they of course are not subject to copyright protection because they then involve no labor, talent, or judgment." Id. at 1576.

9/ To support the issuance of its broad preliminary injunction the district court stated that West's pagination "is not just a series of numbers each arising by one over its predecessor." Without any reference to the record, the district court further stated that such pagination "is the basis of the West arrangement--the key to the self-index by which West's arrangement is accessed." [fo] Id. at 1579. . .

10/ The record in this case does not indicate in any way how or by whom West's page numbers are, in fact, created. West's affidavits do not identify any person as the "author" of any of the page numbers. The only thing the record in this case shows, as I read it, is that West's bound volumes carry the same volume numbers and the same page numbers as West's advance sheets. How those page numbers are assigned West's advance sheets is a total mystery so far as the record is concerned.

11/ Judicial notice may be taken of the fact that the original page numbers that appear on a slip opinion submitted by a judge for publication never appear in any West advance sheet. There is indeed substantial doubt whether those page numbers could be considered part of the judge's work of authorship. For the pagination of a judge's slip opinion is, at best, the work of a judge's secretary or, in this day of advanced technology, the work of the secretary's word processor in electronic response to the secretary's punch of a button on a machine.

12/ Thus, the factual question in regard to how or by what process, electronic or otherwise, West assigns a completely new set of page numbers to a judge's slip opinion is an open factual question that can only be determined on a trial of the merits. It is my view that West's probability of success on the merits simply cannot be measured on a record that does not provide any information in regard to whether West's new advance sheet pagination, like a judge's secretary's original pagination of his slip opinion, is nothing more than an electronic response to a direction given a machine or whether, as a matter of fact, West's new pagination may be considered an original work of authorship.

13/ If, on the trial of the merits, it is established that West's new page numbers are assigned a judge's slip opinion by some automatic electronic process, it is inconceivable to me that the public policy that denies all right of copyright to a court opinion would nevertheless grant copyright to the page numbers of the volume in which such a court opinion is published. . .

14/ It is my view that the majority's analysis is based on what I believe is an incomplete and untenable view of Callaghan and Banks. Although the majority, in its discussion of Banks stated that "we would be inclined to examine the official reporter's independent efforts in arrangement and pagination on their merits to see if they meet originality and intellectual- creation requirements," at 1226, and although it stated that "Callaghan establishes at least that * * * in each case the arrangement must be evaluated in light of the originality and intellectual-creation standards," at 1225, the majority nevertheless definitely concluded that "West's case arrangements, an important part of which is internal page citations, are original works of authorship entitled to copyright protection." [fo] At 13. . . .

15/ I find nothing in the record in this case to support a finding of fact that it takes more intellectual creativity to put page numbers on a volume of law reports today than it did in the yesterdays in which Callaghan and Banks were decided in 1888 and 1909, respectively. Indeed, the trial on the merits of this case may establish that West's pagination is no more than the work of a machine responding to a punch of a button, rather than the exercise of the will of a printer, who yesterday, was at least required to set type for the pagination of a volume of law reports.

IV.

16/ I do not agree with the majority's statement that "the denial of copyright protection [in Banks ] was based upon the official status of the reporter," at 1225; its statement that Banks "diverges from Callaghan"; or its conclusion that Callaghan, as a Supreme Court decision, must therefore be followed rather than Banks. Id. at 1226.

17/ Professor Nimmer makes clear that the judicial opinions of both state and federal courts are in the public domain and are therefore not subject to copyright. . .

18/ Banks v. Manchester, on its facts, involved a case in which the defendant published only the court opinions that had been earlier published by the plaintiff. Callaghan, on the other hand, on its facts was a case in which the defendant not only published the plaintiff's earlier-published court opinions, the defendant also copied that part of the plaintiff's law reports-- the head notes and the statements of the cases prepared by the plaintiff--that Wheaton v. Peters recognized was subject to copyright.

19/ The Court concluded in Banks v. Manchester that application of the principles enunciated in Wheaton v. Peters established that the defendant should prevail on the facts of that case. In Callaghan, the Court concluded that the application of the same principles of law supported a judgment that plaintiff was entitled to injunctive relief on the facts of that case.

20/ The record in this case establishes a factual situation comparable to Banks v. Manchester rather than that presented in Callaghan. Hence, it is my view that our panel must follow Banks v. Manchester's application of the principles enunciated in Wheaton v. Peters and distinguish Callaghan on its facts. . .

21/ . . .In affirming the circuit court's dismissal of the plaintiff's infringement action, the Court concluded in Banks v. Manchester that:

The question is one of public policy, and there has always been a judicial consensus, from the time of the decision in the case of Wheaton v. Peters, 8. Pet. 591 [, 33 U.S. 591], that no copyright could under the statutes passed by Congress, be secured in the products of the labor done by judicial officers in the discharge of their judicial duties. The whole work done by the judges constitutes the authentic exposition and interpretation of the law, which, binding every citizen, is free for publication to all, whether it is a declaration of unwritten law, or an interpretation of a constitution or a statute. Id. 128 U.S. at 253, 9 S.Ct. at 39.

The Court then quoted the final sentence of Wheaton v. Peters and added that "[w]hat a court, or a judge thereof, cannot confer on a reporter as the basis of a copyright in him, they cannot confer on any other person or on the State." Id. at 254, 9 S.Ct. at 40.

22/ . . . The record in this case shows that the district court asked West's counsel whether it was West's theory that "the page numbers express the arrangement" of West's cases. (A301). West's counsel replied that "they certainly do, your Honor." (Id.). West's counsel directed the district court's attention to 300 F.Supp. 100 to illustrate West's arrangement. (A203).

23/ MDC attached an addendum to its brief (A32a--A38a) that compared how the cases would have been arranged in 300 F.Supp. had the cases been arranged by date of decision with the actual arrangement of the cases as they were, in fact, reported in 300 F.Supp. That addendum shows that West's actual arrangement of cases was inconsistent with the method stated in West's affidavits. West, in its brief filed in this Court, replied to MDC's argument by stating that its affidavits set forth only West's "current practice" and stated that 300 F.Supp. "was published in 1969 before [West's] current practice was adopted." (West's brief, p. 15, n. 11).

24/ West's answer to MDC's argument raises two factual questions, neither of which were considered by the district court or by the majority. First, if the West affidavits cover only the manner in which West has arranged its cases since 1969, there is nothing in the record to support any finding of fact in regard to how West may have arranged its cases in all the volumes of reports published by it from January 2, 1910 to 1969. [fo] Second, and perhaps of greater importance, if West simply publishes cases in the chronological sequence that cases are handed down by a particular court, such an arrangement would fall within the factual circumstances and decision in Banks.

25/ . . . I concur in part and respectfully dissent in part for the reasons stated.

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