For more than 100 years, courts sent most of the legal decisions in the United States to West Publishing for free,<p> to be printed verbatim in its National Reporter System of books. With the advent of the internet, West claimed that nobody could access that law online without paying West to copy these cases from its books -- either directly through its WESTLAW system, or indirectly because of licensing fees it charged for such use. This problem was compounded when West entered into two secret agreements with the other online legal database provider, LEXIS. Between them they controlled computer access to the law and like any good monopoly does, charged outrageous prices for their own services or for "use" of the cases by other publishers, authors, and low-cost online services. The resulting 'WESTLAW-LEXIS tax' was ultimately "paid by every lawyer, court and individual who came in contact with the legal system, and it shut poorer parties out of critical resources....it was billions of dollars."
HyperLaw tried to copy just the judicial cases (without headnotes or any West editorial products) out of the West books -- by then the only source for most decisions. When West threatened suit, HyperLaw became the sole plaintiff in the critical "text" portion of the litigation, which the New York Times reported as a case "experts [said would] drive down the price of legal research....[stripping] away much of the copyright protection claimed by West Publishing, the nation's dominant publisher of court cases, for its law books." The trial judge, the Hon. John S. Martin Jr., condemned "West's tactics in this litigation, including false statements, belated concessions, delaying tactics, and strained attempts to avoid a judicial resolution of the copyright claims....West decided to do everything in its power to avoid such an adjudication, or, at a minimum, delay the adjudication as long as possible and thereby extend its monopoly." Also,
Hyperlaw's lawsuit resulted in...a demarcation of the boundaries of West's copyright claim and thereby broke West's monopoly grip....When David vanquished Goliath, the Israelites rewarded him by making him their King...all [Hyperlaw] asks for its efforts is that it be reimbursed for the substantial legal fees West forced it to incur in order to vindicate the public's right of access to judicial opinions. It prevailed against an adversary that did all that it could to make this litigation as expensive as possible, no doubt hoping that a small company such as Hyperlaw would not stay the course.
Following the trial, he and Ruskin successfully argued the two appeals against Prof. Arthur R. Miller (Wright & Miller, Federal Practice and Procedure) in winning affirmance in the Second Circuit Court of Appeals. On June 1, 1999, the U.S. Supreme Court then denied West's two Petitions for Certiorari. "That development effectively put the law back in the public domain."
Co-plaintiff Matthew Bender did not participate in the portion of the case related to the text of judicial decisions at either the trial or appeal levels. Nor did it participate in the antitrust action in D.C. federal court where HyperLaw pursued West for antitrust violations and modification of the DOJ Antitrust Settlement in West's efforts to purchase other publishers and "license" judicial decisions to its "competitors" such as Lexis. West Antitrust Decision I.
HyperLaw therefore remains the only potential appellant prepared to test the validity of the Final Judgment. The Court finds that HyperLaw has sufficiently demonstrated that it will suffer actual, concrete, particularized injury traceable to the entry of the Final Judgment, both substantive and procedural; it therefore has standing. See Lujan v. Defenders of Wildlife, 504 U.S. 555....The issues raised by this case are important, and their presentation to the Court of Appeals should not be foreclosed by this Court. HyperLaw argues, for example, that this Court has misinterpreted or misapplied the Court of Appeals' recent decision in United States v. Microsoft Corp., 56 F.3d 1448 (D.C. Cir. 1995). HyperLaw also raises questions concerning the breadth of document disclosure required by the Tunney Act and the appropriate public comment procedures to be followed when a proposed consent decree is revised, perhaps multiple times, after the initial 60 day public comment period required by statute has expired. Without the intervention of HyperLaw no party will be in a position to present these issues to the Court of Appeals.
Coincidentally, before the two final appeals were concluded in 1998, HyperLaw's co-plaintiff in the 'citations' portion of the case (Matthew Bender) was purchased by Lexis -- the same year of the HyperLaw antitrust decision. Thus, Hyperlaw alone established that West and other legal publishers cannot stop (or charge for) the copying and use of the judges’ decisions from books in the West National Reporter System. This is millions of decisions from a century of litigation. Nor can West and others ever again stop the copying and use of those court decisions by lower cost and on-line publishers who provide public access for free or at a greatly reduced cost. The entire Google Scholar collection of American law exists because of this case, as do the products of more than 20 smaller vendors. Moreover, it stops West and Lexis from charging whatever they want, as competitors can simply duplicate those services if the prices become too high (as they were previously.)
Citations to Decisions:
A small electronic publisher fought a long and complex battle against the giant West Publishing -- in a landmark case which established the right of small publishers, lawyers, students and researchers to use the text of (and citations to) published judicial decisions without restrictions, and without paying fees to West. In two separate decisions, the Second Circuit affirmed federal district court decisions in favor of HyperLaw, holding that West did not have any copyright in either the judicial decisions or the citations in West’s Reporters. HyperLaw alone litigated the critical "text" issue -- and was the sole plaintiff in the Southern District of New York trial before Judge John Martin. The New York Times reported this as a case "experts [say] will drive down the price of legal research....[stripping] away much of the copyright protection claimed by West Publishing, the nation's dominant publisher of court cases, for its law books."
In HyperLaw v. West Publishing VI (Appeal-Text), 158 F.3d 674, 48 U.S.P.Q. (BNA) 1560 (2d Cir. 1998) the Court of Appeals stated the following with regard to West's claims of copyright in the text of their reporters:
The district court found that the elements of the West case reports for which West seeks copyright protection lack sufficient originality or creativity to be protectable--whether considered separately or together. * * * * Our decision in this case does not mean that an editor seeking to create the most accurate edition of another work never exercises creativity. As West argues, our [prior] decisions establish a low threshold of creativity, even in works involving selection from among facts. But those cases involved the exercise of judgments more evaluative and creative than West exercises in the four elements of the case reports that HyperLaw intends to copy.
For an exhaustive description of what West claimed as its "authorship" and an analysis of the law related to those claims, it is useful to read both HyperLaw's Opposition Brief and West's Petition for Re-Hearing En Banc filed after its loss.
In the companion decision, HyperLaw v. West Publishing V (Appeal-Citation), 158 F.3d 693; 1998 U.S. App. LEXIS 28024 (2d Cir. 1998) that same Court held that West's page numbering (star pagination) and first page citations (pinpoint cites) were equally devoid of any basis for copyright.
Because the internal pagination of West's case reporters does not entail even a modicum of creativity, the volume and page numbers are not original components of West's compilations and are not themselves protected by West's compilation copyright. * * * * Because the volume and page numbers are unprotected features of West's compilation process, they may be copied without infringing West's copyright. However, West proffers an alternative argument based on the fact (which West has plausibly demonstrated) that plaintiffs have inserted or will insert all of West's volume and page numbers for certain case reporters. West's alternative argument is that even though the page numbering is not (by itself) a protectable element of West's compilation, (i) plaintiffs' star pagination to West's case reporters embeds West's arrangement of cases in plaintiffs' CD-ROM discs, thereby allowing a user to perceive West's protected arrangement through the plaintiffs' file-retrieval programs, and (ii) that under the Copyright Act's definition of "copies," 17 U.S.C. § 101, a [**14] work that allows the perception of a protectable element of a compilation through the aid of a machine amounts to a copy of the compilation. We reject this argument for two separate reasons.
In expressly dismissing the 8th Circuit’s pre-Feist decisions in West Publishing Co. and Oasis as controlling, the Court stated
The Eighth Circuit in West Publishing Co. adduces no authority for protecting pagination as a "reflection" of arrangement, and does not explain how the insertion of star pagination creates a "copy" featuring an arrangement of cases substantially similar to West's--rather than a dissimilar arrangement that simply references the location of text in West's case reporters and incidentally simplifies the task of someone who wants to reproduce West's arrangement of cases. It is true that star pagination enables users to locate (as closely as is useful) a piece of text within the West volume. But this location [**36] does not result in any proximate way from West's original arrangement of cases (or any other exercise of original creation) and may be lawfully copied.
As the federal trial judge who heard both issues (Martin) commented,
Judicial opinions are a highly sought-after commodity in the legal, literary, and news markets. Hyperlaw's action in this case served the public good because West was maintaining a monopoly over the market for judicial opinions based on a tenuous copyright claim. West was not the author of an original work seeking only to prevent another from making fair use of a portion of a work it had authored. West was attempting to use the fact that it had made inconsequential modifications to judicial opinions to maintain a monopoly in the publication of those opinions. Thus, rather than invoking the Copyright Act as a shield to protect legitimate creative work, West used it as a sword to perpetuate a monopoly over important government works.
* * * *
When David vanquished Goliath, the Israelites rewarded him by making him their King. While Hyperlaw's vanquishing of West's monopoly over judicial opinions may be far less impressive, all it asks for its efforts is that it be reimbursed for the substantial legal fees West forced it to incur in order to vindicate the public's right of access to judicial opinions. It prevailed against an adversary that did all that it could to make this litigation as expensive as possible, no doubt hoping that a small company such as Hyperlaw would not stay the course. In these circumstances, the court continues to be of the view that Hyperlaw is entitled to an award of the entirety of its attorneys' fees.
HyperLaw persisted -- in what that same judge repeatedly referred to as “litigation which threatened to leave whole forests bare because of the size and number of pleadings.”
MR. HARTMANN: Your Honor, I would like to call Ms. Donna Bergsgaard as our first witness please.
DONNA BERGSGAARD, called as a witness by the Plaintiff, having been duly sworn, testified as follows:
DIRECT EXAMINATION BY MR. HARTMANN:
MR. HARTMANN: Your Honor, we prepared binders of 18 exhibits which your Honor has. May I approach the witness? Ms. Bergsgaard, I am providing you with two binders, one of them labeled Plaintiff Hyperlaw's Trial Exhibits 1 through 7 and the second is --
THE COURT: It looks like another case in which I should have required the filing of an environmental impact statement.
