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Lead trial and appellate counsel.  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.

Co-plaintiff, Matthew Bender, did not participate in the portion of the case related to the text of judicial decisions.  Thus, HyperLaw alone established that West and other legal publishers cannot stop (or charge for) the copying and use of the judges’ decisions, citations, names of counsel and other information in Reporters they did not specifically author.  Nor can West and others stop the use of those decisions by lower cost and on-line publishers who provide access to the public for free or at greatly reduced cost.  While West and Lexis produce excellent products with many additions which add extra value – such as headnotes and the ‘key number’ indexing system -- it is no longer mandatory that one must buy those additions simply to freely copy, use or make collections of judicial decisions. 

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 deviod 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 several thousand 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.
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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 referred to as “litigation which threatened to leave whole forests bare because of the size and number of pleadings.” It is also instructive to read West's post-loss Petition for Hearing En Banc.

a. The original district judge recused herself from hearing the case after HyperLaw’s arguments and a petition for mandamus to the Second Circuit.  HyperLaw v. West Publishing I (Recusal of Judge Preska) 1995 U.S.Dist.Lexis 3820 (S.D.N.Y. 1995). 

b. West unsuccessfully challenged the right of HyperLaw and the other plaintiff Matthew Bender to bring the suit. HyperLaw v. West Publishing II (Justiciability), 1996 U.S. Dist. LEXIS 5871; 39 U.S.P.Q.2D (BNA) 1079; Copy. L. Rep. (CCH) P27,505; 24 Media L. Rep. 1972  (S.D.N.Y. 1996).

c. HyperLaw pursued West through its antitrust efforts to purchase other publishers and ‘license’ judicial decisions to its competitor, Lexis. West Antitrust Decision III, 1998 U.S. App. LEXIS 12921 (D.D.C. May 29, 1998); West Publishing - Antitrust Decision I, 1997 U.S. Dist. LEXIS 1893; 42 U.S.P.Q.2D (BNA) 1867; 1997-1 Trade Cas. (CCH) P71,735 (D.D.C. February 27, 1997); and West Antitrust Decision II - The Subsequent Consent Judgment for Licensing Citations, 1997 U.S. Dist. LEXIS 2790; 1997-1 Trade Cas. (CCH) P71,754 (March 7, 1997).

d. The trial court decided for HyperLaw on the text issues following a trial.  HyperLaw v. West Publishing IV (Trial-Text of Opinions), 1997 U.S. Dist. LEXIS 6915;  42 U.S.P.Q.2D (BNA) 1930; Copy. L. Rep. (CCH) P27,638; 25 Media L. Rep. 1856  (S.D.N.Y. 1997).

e. The trial court granted summary judgment to both plaintiffs on the citation issues. HyperLaw v. West Publishing III (Summary Judgment-Citation), 1997 U.S. Dist. LEXIS 2710  (S.D.N.Y. 1996).

f. West appealed the $800,000+ fee award to HyperLaw’s counsel.  HyperLaw Fee Decision II, 2001 U.S. App. LEXIS 896 (January 23, 2001); HyperLaw Fee Decision III (July 2, 2001); HyperLaw Fee Decision, 1999 U.S. Dist. LEXIS 19387 (January 16, 2000).