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MATTHEW BENDER & COMPANY, INC., Plaintiff, HYPERLAW, INC.,
Intervenor-Plaintiff-Appellee, Docket No. 97-7910 Defendants publish compilations of reports of judicial opinions. Each
report contains the text of the opinion combined with certain enhancements,
including a syllabus, headnotes, key numbers to an outline of legal topics,
parallel citations to cases cited in the text, identification of counsel, and
in some cases, information on subsequent procedural history.
Intervenor-plaintiff seeks a judgment declaring that copying individual case
reports—after redacting the syllabi, headnotes, and key numbers—would not
infringe defendants’ copyright because the other enhancements are not
copyrightable. Defendants appeal from a judgment of the United States District
Court for the Southern District of New York (Martin, J.), following a bench
trial, ruling that such copying by intervenor-plaintiff did not reproduce
copyrightable elements of defendants’ work and granting declaratory judgment to
intervenor-plaintiff. CARL J.
HARTMANN, III, New York, NY (Paul J. Ruskin, Douglaston, NY, Lorence L.
Kessler, Washington, DC, on the brief), for Intervenor-Plaintiff-Appellee.
JAMES F. RITTINGER, New York, NY (Arthur R. Miller, Cambridge, MA, Joshua M.
Rubins, Satterlee Stephens Burke & Burke LLP, New York, NY, on the brief),
for Defendants-Appellants. (Proskauer Rose LLP, Jon A. Baumgarten, Charles S. Sims, Anna Kraske, New
York, NY), for Amicus Curiae Reed Elsevier, Inc. (Arnall Golden & Gregory LLP, Atlanta, GA, L. Ray Patterson, Athens,
GA), for Amicus Curiae American Association of Legal Publishers. (Fish & Richardson, P.C., Arnold P. Lutzker, Carl H. Settlemyer, III,
Washington, DC), for Amicus Curiae American Association of Law Libraries,
American Library Association, Association of Research Libraries, Medical
Library Association, Society of American Archivists, Special Library
Association. CARDAMONE and JACOBS, Circuit Judges, and SWEET,* District Judge. Judge Sweet dissents in
a separate opinion. JACOBS, Circuit Judge :
West Publishing Co. and West Publishing Corp.
(collectively “West”) publish compilations of reports of judicial opinions
(“case reports”). Each case report consists of the text of the judicial opinion
with enhancements that for the purposes of this case can be put in two
categories: (i) independently composed features, such as a syllabus (which
digests and heralds the opinion’s general holdings), headnotes (which summarize
the specific points of law recited in each opinion), and key numbers (which
categorize points of law into different legal topics and subtopics), and (ii)
additions of certain factual information to the text of the opinions, including
parallel or alternative citations to cases, attorney information, and data on
subsequent procedural history. HyperLaw, Inc. publishes compact disc-read only
memory (“CD-ROM”) compilations of Supreme Court and United States Court of
Appeals decisions, and intervened as a plaintiff to seek a judgment declaring
that the individual West case reports that are left after redaction of the
first category of alterations (i.e.,
the independently composed features), do not contain copyrightable material. West now appeals from a judgment of the United States District Court for
the Southern District of New York (Martin, J.),
following a bench trial, granting declaratory judgment in favor of HyperLaw. Matthew Bender & Co. v. West Publ’g Co., 1997 U.S. Dist. Decision, No. 94 Civ. 0589, 1997 WL 266972 (S.D.N.Y.
May 19, 1997). It is true that neither novelty nor invention is a requisite
for copyright protection, but minimal creativity is required. Aside from its
syllabi, headnotes and key numbers—none of which HyperLaw proposes to
copy—West makes four different types of changes to judicial opinions that it
claimed at trial are copyrightable: (i) rearrangement of information specifying
the parties, court, and date of decision; (ii) addition of certain information
concerning counsel; (iii) annotation to reflect subsequent procedural
developments such as amendments and denials of rehearing; and (iv) editing of
parallel and alternate citations to cases cited in the opinions in order to
redact ephemeral and obscure citations and to add standard permanent citations
(including West reporters). All of West’s alterations to judicial opinions
involve the addition and arrangement of facts, or the rearrangement of data
already included in the opinions, and therefore any creativity in these
elements of West’s case reports lies in West’s selection and arrangement of
this information. In light of accepted legal conventions and other external
constraining factors, West’s choices on selection and arrangement can
reasonably be viewed as obvious, typical, and lacking even minimal creativity.
Therefore, we cannot conclude that the district court
clearly erred in finding that those elements that HyperLaw seeks to copy from
West’s case reports are not copyrightable, and affirm. BACKGROUND West obtains the text of judicial opinions directly from
courts. It alters these texts as described above to create a case report, and
then publishes these case reports (first in advance sheets, then in bound
volumes) in different series of “case reporters.”1 These case reporter series cover all
state and federal courts and are collectively known as West’s “National Reporter
System.” Two series of case reporters are at issue in this case: the Supreme
Court Reporter, which contains, inter alia, all Supreme Court opinions and memorandum decisions; and the Federal
Reporter, which contains, inter alia, all United States Court of Appeals opinions designated for publication,
as well as tables showing the disposition of unpublished cases. HyperLaw markets two compilations that cover
approximately the same ground: Supreme Court on Disc, an annual CD-ROM disc containing opinions of the United States Supreme
Court starting from 1990; and Federal Appeals on Disc, a quarterly CD-ROM disc containing nearly all opinions (published and
unpublished) of the United States Courts of Appeals from January 1993 on.2 Currently, HyperLaw obtains the text of
the opinions directly from the courts. However, HyperLaw intends to expand its
CD-ROM product to include any recent cases it could not obtain directly from
the courts (and attorney information that is omitted from slip opinions by
certain circuits), as well as pre-1990 Supreme Court cases and pre-1993 court
of appeals cases that are cited in recent Supreme Court and court of appeals
cases (so that users can jump to those cases). HyperLaw intends to achieve this
expansion by copying West’s case reports (after redacting the syllabi,
headnotes and key numbers) from the Supreme Court Reporter and the Federal Reporter. The total number
of opinions HyperLaw intends to copy is unclear; but HyperLaw’s President Alan
Sugarman testified that in time it could reach 50 percent of Supreme Court and
court of appeals decisions published by West. Following the commencement of suit by Matthew Bender
& Co. in the United States District Court for the Southern District of New
York seeking a judgment declaring that Bender’s insertion of star pagination to
West’s case reporters in its CD-ROM version of judicial opinions did not
infringe West’s copyright, HyperLaw intervened and requested the same relief.
In addition, HyperLaw sought a declaration that HyperLaw’s redacted versions of
West’s case reports contain no copyrightable material and thus may be copied
without infringement. On the star pagination issue, the district court granted
summary judgment to Bender and HyperLaw, and final judgment was entered pursuant
to Fed. R. Civ. P. 54(b). (We affirm that ruling in a separate opinion issued
today. See Matthew Bender & Co. v. West Publ’g Co., 158 F.3d 693.) But the district court denied summary judgment allowing
HyperLaw to copy redacted versions of West’s case reports, and conducted a
bench trial on this issue. The principal trial witness was Donna Bergsgaard, the
manager of West’s manuscript department. She specified four kinds of
alterations made by West to the opinions that it publishes in the Supreme
Court Reporter and Federal Reporter and that HyperLaw intends to copy: (i) the arrangement of prefatory
information, such as parties, court, and date of decision; (ii) the selection
and arrangement of the attorney information; (iii) the arrangement of
information relating to subsequent procedural developments; and (iv) the
selection of parallel and alternative citations. Following the bench trial, the district court ruled that
West’s revisions to judicial opinions were merely trivial variations from the
public domain works, and that West’s case reports were therefore not
copyrightable as derivative works. Matthew Bender & Co., 1997 U.S. Dist. Decision, 1997 WL 266972. In reaching this conclusion,
the district court reviewed each type of alteration and found that “West does
not have a protectible interest in any of the portions of the opinions that
HyperLaw copies or intends to copy” because West’s alterations lack even
minimal creativity. Id. DISCUSSION I As a threshold matter, West argues that the judgment
should be vacated and the action dismissed as moot because HyperLaw failed to
demonstrate through admissible evidence a sufficiently real intent to copy
West’s case reports in quantities beyond what West conceded (immediately prior
to trial) would be permissible under the fair use doctrine, i.e., one to two
percent of its published reports of Supreme Court and court of appeals cases. Early in the litigation, the district court held a
justiciability hearing and concluded that HyperLaw had the ability and intent
to copy certain elements of West’s case reports and that if HyperLaw did so, it
faced a reasonable apprehension of suit. But a dispute remained as to the scope
of HyperLaw’s intended copying. Prior to trial, West argued that HyperLaw intended
no copying of West’s case reports other than the few recent court decisions
that HyperLaw had not obtained from the courts, and West preemptively conceded
that such copying was permitted under the fair use doctrine. HyperLaw contested
West’s characterization of the scope of its intended copying, and pointed to an
affidavit (submitted earlier in the litigation) in which Alan Sugarman,
HyperLaw’s president, expressed HyperLaw’s intent to copy opinions from earlier
years cited in opinions included on their CD-ROM discs. Faced with West’s last-minute concession, the district
court reserved decision on West’s motion to dismiss for mootness and proceeded
with the bench trial, at which HyperLaw would have the opportunity to offer
testimony on the percentage of West case reports it intended to copy. After the
close of evidence, West moved to dismiss for mootness on the ground that
HyperLaw neglected to adduce such evidence. The district court, however,
permitted HyperLaw to remedy its omission by offering Sugarman’s affidavit on
that subject for the truth of the matters stated therein, subject to West’s
opportunity to cross-examine Sugarman. During this cross-examination, Sugarman
testified that HyperLaw intended to copy most older cases cited in recent Supreme
Court and court of appeals decisions included on the CD-ROM discs; he estimated
that this copying might approximate half of West’s case reports. On the basis
of Sugarman’s testimony, the district court concluded that a live controversy
existed. We cannot find that this determination was in error. West’s mootness argument amounts to a claim that the
district court erred in admitting Sugarman’s testimony following the close of
evidence. A district court’s decision to reopen the proof to allow a party to
submit additional evidence is subject to its sound discretion. See Zenith
Radio Corp. v. Hazeltine Research, Inc.,
401 U.S. 321, 331, 91 S. Ct. 795, 802-03, 28 L. Ed. 2d 77 (1971); see also Fed. R. Civ. P. 59(a) (“On a motion for a new trial in an action tried
without a jury, the court may open the judgment if one has been entered, take
additional testimony, amend findings of fact and conclusions of law or make new
findings and conclusions, and direct the entry of a new judgment.”). The
district court’s decision to receive Sugarman’s testimony in evidence is
therefore reviewed for abuse of discretion. See Air et Chaleur, S.A. v.
Janeway, 757 F.2d 489, 495 (2d Cir. 1985); see
also Garcia v. Woman’s Hosp., 97 F.3d 810, 814 (5th
Cir. 1996) (“Among the factors the trial court should examine in deciding
whether to allow a reopening are the importance and probative value of the
evidence, the reason for the moving party’s failure to introduce the evidence
earlier, and the possibility of prejudice to the non-moving party.”). Sugarman’s testimony should have been offered earlier;
but (i) the testimony was important for determining the existence of a live
controversy, (ii) West was afforded a full opportunity for cross-examination,
and (iii) West points to no specific prejudice from the delay. Furthermore, the
district court’s decision served judicial efficiency; otherwise, the case would
have been dismissed as moot without preclusive effect, HyperLaw would have
simply amended its complaint to allege its intent to engage in more extensive
copying, and the case would have been re-tried. The district court’s admission
of Sugarman’s testimony did not amount to an abuse of discretion. II Works of the federal government are not subject to
copyright protection; the text of judicial decisions may therefore be copied at
will. 17 U.S.C. Û 105. Federal judicial opinions may, however, form part of a
compilation. The Copyright Act defines “compilation” 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. Û 101. West has
filed a certificate of copyright registration for every paperbacked advance sheet
and bound permanent volume of the Supreme Court Reporter and Federal Reporter, and each
certificate characterizes the copyrighted work as a “compilation.” Under Feist
Publications, Inc. v. Rural Telephone Serv. Co.,
499 U.S. 340, 111 S. Ct. 1282, 113 L. Ed. 2d 358 (1991), an infringement claim
for a compilation has two elements: “(1) ownership of a valid copyright, and
(2) copying of constituent elements of the work that are original.” Id. at 361; 111 S. Ct. at 1296.
But HyperLaw has not signaled its intent to copy the
text of every case included in particular volumes of West case reporters or the
case reporters’ selection and arrangement of cases;3 HyperLaw’s intent is to copy
particular, though numerous, individual case reports. HyperLaw seeks a
declaratory judgment that these case reports—after removal of the syllabus,
headnotes, and key numbers—contain no copyrightable material. A HyperLaw contends that each case report should be
analyzed as a derivative work, which is defined
under the Copyright Act as, inter alia,
“[a] work consisting of editorial revisions, annotations, elaborations, or
other modifications which, as a whole, represent an original work of
authorship.” 17 U.S.C. Û 101. The district court adopted this view and analyzed
the individual case report as a derivative work, but found it wanting in the
requisite originality. West contends that each case report is a compilation, i.e., a collection of facts that have been
distinctively selected and arranged. No one claims that a case report is
anything other than a derivative work or a compilation. The House Report on the 1976 Copyright Act distinguishes
between a derivative work and a compilation:
Between them the terms . . . comprehend every copyrightable work that
employs preexisting material or data of any kind. There is necessarily some
overlapping between the two, but they basically represent different concepts. A
“compilation” results from a process of selecting, bringing together, organizing,
and arranging previously existing material of all kinds, regardless of whether
the individual items in the material have been or ever could have been subject
to copyright. A “derivative work,” on the other hand, requires a process of
recasting, transforming, or adapting “one or more preexisting works”; the
“preexisting work” must come within the general subject matter of copyright set
forth in section 102, regardless of whether it is or was ever copyrighted. H.R. Rep. No. 94-1476, at 57 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5670; see also 1
Melville B. Nimmer & David Nimmer, Nimmer on Copyright Û 3.02, at 3-5 (1998) (“While a compilation consists merely of the
selection and arrangement of pre-existing material without any internal changes
in such material, a derivative work involves recasting or transformation, i.e., changes in the pre-existing material, whether or not it is juxtaposed
in an arrangement with other pre-existing materials.”). We think that West’s case reports have elements of both
types of works. West compiles (and selects) the factual information it includes
in each case report—the type of task usually involved in creating a
compilation. On the other hand, West rearranges prefatory and citation
information included in judicial opinions, steps that tend toward the making of
a derivative work rather than a compilation. In addition, all of West’s
decisions are constrained by West’s main project, which is to enhance the
judicial opinions without altering their texts in any substantive or
appreciable way. We need not categorize West’s case reports as either
derivative works or compilations in order to decide this case. Copyright
protection is unavailable for both derivative works and compilations alike
unless, when analyzed as a whole, they display sufficient originality so as to
amount to an “original work of authorship.” See
17 U.S.C. Û 101 (defining a “derivative work”, inter alia, as a work containing alterations “which, as a whole, represent an
original work of authorship”); id.
(defining a compilation as requiring that “the resulting work as a whole
constitutes an original work of authorship”). The originality required for
copyright protection is essentially the same. See Feist, 499 U.S. at 358, 111 S. Ct. at 1294 (“Originality requires only that
the author make the selection or arrangement independently . . . and that it
display some minimal level of creativity.”); L. Batlin & Son, Inc. v.
Snyder, 536 F.2d 486, 490-91 (2d Cir. 1976) (in
banc) (“While a copy of something in the public
domain will not, if it be merely a copy, support a copyright, a distinguishable
variation will. * * * To support a copyright there must be at least some
substantial variation, not merely a trivial variation such as might occur in
the translation to a different medium.”). As West and HyperLaw seemingly agree,
the question presented is whether West’s alterations to the case reports, when
considered collectively, demonstrate sufficient originality and creativity to
be copyrightable. B 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. Because we treat the question of whether particular elements of a
work demonstrate sufficient originality and creativity to warrant copyright
protection as a question for the factfinder—here the judge—we will not
reverse the district court’s findings unless clearly erroneous. See, e.g., Victor Lalli Enters., Inc. v. Big
Red Apple, Inc., 936 F.2d 671, 673 (2d Cir. 1991) (per
curiam) (“Generally, we review a district court’s
determination of whether a work is sufficiently original to merit copyright
protection under the clearly erroneous standard.”); Financial Info., Inc. v.
Moody’s Investors Serv., Inc., 808 F.2d 204, 207-08 (2d
Cir. 1986) (same); see also Woods v. Bourne Co.,
60 F.3d 978, 991 (2d Cir. 1995) (noting that our review of originality
determination is for clear error); Weissmann v. Freeman, 868 F.2d 1313, 1322 (2d Cir. 1989) (holding that the district court’s
finding of lack of originality or variation in derivative work was reviewable
for clear error). The dissent (at [page 1], footnote 1) argues that de novo review would be more appropriate, and that our precedents to the
contrary are doubtful in light of Feist. Feist, however, did not address standard of review, and the clear error
standard retains vitality in our precedents, both before and after Feist. In 1995, we acknowledged that the question of copyrightability entails
the kind of conclusion that would often justify de novo review, but that most courts, including this Court, review for clear
error. See Woods, 60 F.3d at 991
(Feinberg, J.) (citing 1 William F. Patry, Copyright
Law and Practice 145 n.106 (1994) (cataloguing
cases)). The only elements of a work that are entitled to
copyright protection are those that are original. See Feist, 499 U.S. at 361, 111 S. Ct. at 1296; Mid America Title Co. v. Kirk, 59 F.3d 719, 721 (7th Cir. 1995). The “originality” standard requires
that the work result from “independent creation” and that the author demonstrate that such creation entails a “modicum of
creativity.” See Feist, 499 U.S. at 346, 111 S.
Ct. at 1288; see also Key Publications, Inc. v. Chinatown Today Publ’g
Enters., Inc., 945 F.2d 509, 512-13 (2d Cir. 1991)
(“Simply stated, original means not copied, and exhibiting a minimal amount of
creativity.”). According to West, the required originality and
creativity inhere in four elements of the case reports that HyperLaw intends to
copy: (i)
the arrangement of information specifying the parties, court, and date of
decision; (ii) the selection and arrangement of the attorney
information; (iii) the arrangement of information relating to subsequent
procedural developments such as amendments and denials of rehearing; and (iv) the selection of parallel and alternative
citations.4 Each element either adds or rearranges preexisting
facts, in themselves unprotectable, and so West is not entitled to protection
for these elements of its case reports unless it demonstrates creativity in the
selection or arrangement of those facts. See Feist, 499 U.S. at 348, 111 S. Ct. at 1289. Because many of the cases relating
to compilations assess the creativity involved in selecting and arranging
information, we look to those cases for guidance. The Copyright Act protects original and minimally
creative selection of preexisting, unprotected materials (such as facts) for
inclusion in a work, as well as original and creative arrangement of those
materials. See Eckes v. Card Prices Update,
736 F.2d 859, 863 (2d Cir. 1984) (“Selectivity in including otherwise
non-protected information can be protected expression.”); 1 Nimmer, supra, Û 3.04[B][2], at 3-31 (“If originally combined, a selection or
arrangement of underlying materials that are themselves unoriginal may support
copyright protection.”). Feist tells us: The
compilation author typically chooses which facts to include, in what order to
place them, and how to arrange the collected data so that they may be used
effectively by readers. These choices as to selection and arrangement, so long
as they are made independently by the compiler and entail a minimal degree of
creativity, are sufficiently original that Congress may protect such
compilations through the copyright laws. Feist, 499 U.S. at 348,
111 S. Ct. at 1289 (citations omitted).5 However, not every such compilation or decision on selection
or arrangement is sufficiently creative to be protected. The creative spark is missing where: (i) industry
conventions or other external factors so dictate selection that any person
composing a compilation of the type at issue would necessarily select the same
categories of information, see, e.g., Victor Lalli Enters., 936 F.2d at 672
(charts of winning numbers in illegal gambling operations); see also Mid
America Title Co., 59 F.3d at 722 (title
examiner’s report; “selecting which facts to include in this compilation of
data was not a matter of discretion based on Mid America’s personal judgment or
taste, but instead it was a matter of convention and strict industry
standards”), or (ii) the author made obvious, garden-variety, or routine
selections, see Feist, 499 U.S. at 362, 111 S.
Ct. at 1296 (concluding that the selection and arrangement of a white pages in
which the publisher had chosen to include name, town and telephone number, and
to arrange these listings in alphabetical order were entirely “typical” and “garden-variety”);
BellSouth Adver. & Publ’g Corp. v. Donnelley Info. Publ’g, Inc., 999 F.2d 1436, 1444 (11th Cir. 1993) (in banc) (holding that the categories for the organization of material in a
yellow pages directory lacked creativity where many of the selected headings,
such as “Attorneys” or “Banks” are so obvious and many others “result from
certain standard industry practices”).
Thus, when it comes to the selection or arrangement of
information, creativity inheres in making non-obvious choices from among more
than a few options. See, e.g., Hearn v. Meyer, 664 F. Supp. 832, 847
(S.D.N.Y. 1987) (“Copyright protection is afforded rarely where a fact permits
only a narrow continuum or spectrum of expression.”). For example, in Kregos
v. Associated Press, 937 F.2d 700, 704 (2d
Cir. 1991), the decision to express a pitcher’s performance in terms of nine
statistics from “at least scores of available statistics about pitching
performance available to be calculated from the underlying data and therefore
thousands of combinations of data that a selector can choose to include in a
pitching form” was not necessarily obvious or self-evident. We therefore
concluded that the district court erred in granting summary judgment on the
uncopyrightability of the pitching forms. Id.
at 704-05, 711; see also American Dental Ass’n v. Delta Dental Plans Ass’n, 126 F.3d 977, 979 (7th Cir. 1997) (holding taxonomy of dental
procedures creative after noting that they “could be classified . . . in any of
a dozen different ways”). However, selection from among two or three options,
or of options that have been selected countless times before and have become
typical, is insufficient. Protection of such choices would enable a copyright
holder to monopolize widely-used expression and upset the balance of copyright
law. In sum, creativity in selection and arrangement
therefore is a function of (i) the total number of options available, (ii)
external factors that limit the viability of certain options and render others
non-creative, and (iii) prior uses that render certain selections “garden
variety.” See, e.g.,
1 Patry, supra, at 196 (“As a general
principle, the greater the amount of material from which to select, coordinate,
or arrange, the more likely it is that a compilation will be protectible. On
the other hand, where less material is available, it is less likely that a
compilation, even if original, will be protectible, since de minimis efforts, including selections, are not subject to copyright.”). C We proceed to assess the originality and creativity
underlying the elements of West’s case reports that HyperLaw seeks to
copy. 1. Captions, Courts, and Date Information West claims that originality inheres in the following
enhancements: .
The format of the party names—the “caption”—is standardized by capitalizing
the first named plaintiff and defendant to derive a “West digest title,” and
sometimes the party names are shortened (e.g.,
when one of the parties is a union, with its local and national affiliations,
West might give only the local chapter number, and then insert etc.).6 . The name of the deciding court is restyled. E.g., West changes the slip opinion title of “United States Court of Appeals
for the Second Circuit” to “United States Court of Appeals, Second Circuit.” . The dates the case was argued and decided are
restyled. E.g., when the slip opinion
gives the date on which the opinion was “filed,” West changes the word “filed”
to “decided.” . The caption, court, docket number, and date are
presented in a particular order, and other information provided at the
beginning of some slip opinions is deleted (such as the lower court
information, which appears in the West case syllabus). We do not think that the district court committed clear
error in finding that these changes are insubstantial, unoriginal, and
uncreative. Reference to a case by the names of the first plaintiff and first
defendant is a garden variety decision. See, e.g., The Bluebook: A Uniform System of
Citation rule 10.2.1(a) (16th ed. 1996) (hereinafter
“The Bluebook “). The same is true of West’s manner
of shortening long case names. See, e.g., id. rule 10.2.1(i) (“Cite a union name
exactly as given in the official reporter, except that: (i) only the smallest
unit should be cited . . . (ii) all craft or industry designations . . . should
be omitted . . . .”). Even if these choices regarding which words to capitalize
and shorten to form the West digest title were an original inspiration, we
doubt the decisions to shorten the titles or capitalize certain letters would
be copyrightable. See Secure Servs. Tech., Inc. v. Time & Space
Processing, Inc., 722 F. Supp. 1354, 1363 n.25 (E.D.
Va. 1989) (“Size of print . . . is not copyrightable.”); 37 C.F.R. Û 202.1(a) (1998)
(“Words and short phrases such as names [and] titles . . . mere variations of
typographic ornamentation [or] lettering” are not copyrightable.). Nor does
West’s overall choice concerning which procedural facts to include at the start
of the case report demonstrate the requisite originality or creativity: The
names of the parties, the deciding court, and the dates of argument and
decision are elementary items, and their inclusion is a function of their
importance, not West’s judgment. Cf. Kregos,
937 F.2d at 702 (noting that “there can be no claim of a protectable interest
in the categories of information concerning each day’s [baseball] game,”
including the teams, starting pitchers, the game time, and the betting odds). 2.
Attorney Information The second claimed creative element is West’s selection
and arrangement of attorney information. The Supreme Court slip opinions and
some slip opinions of the courts of appeals omit some or all of the information
about counsel that West compiles from the docket sheets and from other sources.
For Supreme Court opinions, West lists the arguing counsel and the lawyer’s
city and state of practice; for court of appeals decisions, West lists the
names of briefing attorneys as well as arguing attorneys, and specifies each
lawyer’s city and state of practice and law-firm or agency affiliation. Here again we agree with the district court that West’s
decisions lack a modicum of creativity. Like the name, town and telephone
number included in Feist’s telephone directory, the information West
includes—attorney names, firms and cities of practice—is entirely “typical”
and “garden-variety.” See, e.g., Skinder-Strauss Assocs. v. Massachusetts Continuing Legal Educ.,
Inc., 914 F. Supp. 665, 676 (D. Mass. 1995)
(noting that “in compiling a Massachusetts directory of lawyers and judges, . .
. the ïselection’ of other directory data, including the attorney name,
address, telephone and fax numbers, year of bar admission, and so forth are . .
. unoriginal and determined by forces external to the compiler”); cf. Key
Publications, Inc. v. Chinatown Today Publ’g Enters., Inc., 945 F.2d 509, 514 (2d Cir. 1991) (emphasizing the creativity inherent
in designating phone-book classifications of particular interest to
Chinese-Americans). In fact, most courts (this one included) provide the very
same information in their slip opinions.
West’s decision to provide more information about
counsel in the court of appeals case reports, and less in the Supreme Court
case reports does not strike a creative spark because the options available to
a publisher are simply too limited. West’s claim illustrates the danger of
setting too low a threshold for creativity or protecting selection when there
are two or three realistic options: West lists only the arguing attorneys and
city of practice, while United States Law Week
lists the arguing and briefing attorneys, their firm affiliations and city and
state of practice. If both of these arrangements were protected, publishers of
judicial opinions would effectively be prevented from providing any useful
arrangement of attorney information for Supreme Court decisions that is not
substantially similar to a copyrighted arrangement. 3. Subsequent History West’s case reports reflect certain subsequent
procedural developments, such as orders amending an opinion or denying
rehearing. The district court found that West’s alteration of opinions to
reflect these subsequent case developments does not reflect an exercise of
originality or creativity, in part because West’s realistic options are
limited. We cannot say that this was clear error. In most appeals, the only subsequent development is a
denial of rehearing. West’s manuscript manager Bergsgaard described two
possible ways to reflect this action: (i) a file line, inserted at the
beginning of the case just after the date of the original decision, which
simply states “rehearing denied” and the date of the denial, or (ii) a table
containing the same information. West has chosen to reflect denial of rehearing
via a file line. Neither this choice, nor the actual language used to reflect
the denials (“rehearing denied” followed by the date), is creative or requires
judgment. As the trial testimony reflects, subsequent orders
sometimes reflect more extensive changes or additions to opinions, such as
amendments to the original opinion (ranging from minimal to extensive), or
subsequent opinions upon denial of rehearing or in dissent from denial of
rehearing or rehearing in banc. The actual text
of any amendments to opinions or new opinions issued with the denial of
rehearing will always be the court’s. But West points to the following
available options for reflecting these changes, and claims that its choice from
among these options is creative: (i) printing the order in full at the end of
the opinion; (ii) altering the text of the opinion to reflect the amendments;
(iii) publishing the order separately from the original opinion in a different
volume and cross-referencing to the original opinion; or (iv) reprinting the
original opinion in full with the changes reflected in the text. Almost never will these decisions present more than one
or two realistic or useful options, and almost always the choice among them
will be dictated by the timing of the court action. For example, an order
amending an opinion will either (i) reflect the exact locations in the opinion
where changes are to be made, in which case the obvious preference is to alter
the text of the opinion, or (ii) include some general language modifying the
opinion, in which case the obvious preference is to print the order at the end
of the text of the opinion. If the opinion has not yet gone to print in an
advance sheet or a bound volume, West will actually make these changes in the
original opinion. If the opinion has already been printed in the bound volume,
then West (once again) has only binary options: (i) print only the order and
cross-reference to the original opinion, or (ii) reprint the opinion in full,
incorporating the changes andor publishing the order at the end of the opinion.
As set forth in the margin, West’s exemplar confirms how little judgment is
exercised even in a case with a complicated subsequent procedural history.7 West also adds a file line explaining
the action, but the line merely sets forth the court’s action. Given the few
practical options available to West, and the fact that the choice among these
narrow options will be dictated by the timing and nature of the court’s action,
we do not think the district court clearly erred in determining that this
element of West’s case reports does not demonstrate sufficient creativity to be
protectable. 4. Parallel or Alternate Citations As the district court recognized, the element of West’s
case reports that raises the closest question as to creativity is West’s
emending of the citations, as follows: (a) West inserts parallel citations when the judicial
opinion does not, e.g., (i) for citations to
Supreme Court opinions, it inserts parallel citations to United States
Reports, Supreme Court Reporter, and Lawyer’s Edition, (ii) for
citations to a state court, West inserts parallel citations to the official
reporter and West’s regional reporter, and (iii) for citations to looseleaf,
specialized, or electronic reporters, West inserts parallel citations to a West
National Reporter System (“NRS”) reporter or Westlaw (West’s on-line database);
(b) West substitutes some court citations, e.g., if the court cites to a slip opinion that has been published in an NRS
reporter, West will substitute a citation to the NRS reporter; and (c) West adds citations when the opinion refers to a
case by name but does not insert a citation. The district court concluded that “in most instances the
determination of which parallel citations to include . . . reflects no level of
originality,” and that the “selections made tend to conform to the standard of
the legal profession and appear consistent with those recommended in A
Uniform System of Citation.” Matthew Bender &
Co., 1997 U.S. Dist. Decision, 1997 WL
266972. We cannot find that the district court’s conclusion was
unreasonable. West claims that it exercises careful judgment as to which sources
are most useful to legal practitioners. However, almost every one of West’s
decisions relating to citation alterations is inevitable, typical, dictated by
legal convention, or at best binary. See 1
Patry, supra, at 196-97 (“Even where theoretically
there is a large number of items to choose from, functional, commercial, or
legal constraints may limit, or even bar, protectibility.”). And each case
report exhibits only one or two decisions on how to alter citations. West has issued a series of memoranda to its editors
that contain guidelines for citation alterations (a complete list of the
citational instructions is set out in the margin8 ). Most of West’s
citation guidelines need no discussion because they involve obvious,
garden-variety decisions to cite to West NRS case reporters and to Westlaw
whenever the court has cited to sources that are not easily accessible, such as
looseleaf or daily or weekly reporter services or slip opinions; there are few
options to begin with, and West’s case reporters and Westlaw have the widest
availability and have essentially become the standard citation to case law. See, e.g., The Bluebook, supra, at 165-225 (recommending citation to
West federal and regional reporters for all federal and state courts, with the
exception of the Supreme Court, for which Supreme Court Reporter is listed as a secondary cite); id.
rule 10.3.1 (recommending citation to West regional reporters, and if not
published therein, to a “widely used computer database” or to a “service,” in
that order of preference). No evaluative judgment is involved in a decision to
cite to those two sources (especially given West’s self-interest in including
citations to its own products). As for the other guidelines, the following represent the
citation decisions that receive the most emphasis by West, and that represent
most, if not all, of the examples of citation alterations included in cases
that West offered into evidence at trial: .
West’s decision to insert a citation to the denial of certiorari only when the
denial pre-dated the opinion is necessary to avoid anachronism, and is in any
event a choice among two or three options at most.9 See, e.g., BellSouth Adver. & Publ’g Corp. v. Donnelley Info. Publ’g, Inc., 999 F.2d 1436, 1441 (11th Cir. 1993) (in banc) (holding that determination of closing date after which no changes were
included in the yellow pages at issue did not demonstrate creativity in
selection because “any collection of facts ïfixed in any tangible medium of
expression’ will by necessity have a closing date” (footnote omitted)). . As
proof of its creativity in electing to parallel-cite to United States
Reports, Supreme Court Reporter, and Lawyer’s Edition, West lists eight
other reporters of Supreme Court opinions that do not parallel-cite to these
sources, and to which West does not parallel-cite. But all of these reporters
are daily or weekly updates intended to provide quick copies of the slip opinions, not to
serve as research tools or permanent records, and they are not recognized as
standard sources for citation in the legal profession. West’s decision to omit
parallel citation to those reporters requires no evaluative judgment, and the
decision by the publishers of those reporters and services to omit parallel
citation to the same reporters cited by West reflects the more limited purpose
of those reporters rather than the creativity of West’s own choice.10 In the end, West decided to include every permanent record of Supreme Court opinions—i.e., it makes no “selection” at all. .
Nor do we see any creativity in West’s decision to cite to official state
reporters as well as regional NRS reporters for state court decisions. These
are almost always the only two realistic choices (again, this hardly amounts to
“selection”), and a decision to cite to an official reporter can hardly be said
to be anything other than typical.11 One useful way to appreciate how little creativity
inheres in West’s citation decisions is to consider what West’s competitors
would have to do to avoid an infringement claim were we to find West’s citation
decisions copyrightable. Competitors such as HyperLaw seeking to create a
useful case report would need to engage in their own original selection of
parallel and alternate citations. But while some generally useful information
which does not appear in West’s case reports could be included (such as
citations to Decisioninstead of Westlaw), most of the information a researcher
would find useful (such as citations to West NRS reporters) already have been
added to West’s case reports; West gives few examples of other useful
supplementary information. A competitor that included these alterations,
notwithstanding their inclusion in West’s case reports, could have no confidence
that an infringement claim could be avoided, especially given our warning in Key
Publications that infringement cannot be avoided
by pointing to isolated differences from a copyrighted work. See Key
Publications, Inc. v. Chinatown Today Publ’g Enters., Inc., 945 F.2d 509, 514 (2d Cir. 1991) (holding that a compilation copyright
is not so “thin” as to be “anorexic,” and does not allow “subsequent compilers
to avoid infringement suits simply by adding a single fact to a verbatim copy
of the copyrighted compilation, or omitting in the copy a single fact contained
in the copyrighted compilation”). One way of saying that West’s “choices” are
obvious and typical is that a competitor would have difficulty creating a
useful case report without using many of the same citations. Affording these
decisions copyright protection could give West an effective monopoly over the
commercial publication of case reports (at least those containing supplemental
citations). Nor do we think the district court erred in concluding
that the combination of these citation decisions is unprotectable. West’s
particular decisions about which parallel citations to insert are driven in
each instance by the court’s decision to cite to a certain case, and thus each
editorial choice is independent of the others. The cumulative effect of these
citation decisions is a piling up of things that are essentially obvious or
trivial (albeit helpful), each in its discrete way in its discrete spot. The
whole does not disclose or express an overall creative insight or purpose, such
as a set of statistics that together allow the ranking of a group of ball
players, or a designation or highlighting of phone numbers that together allow
the user of a phone book to enjoy an unusual or particular convenience. The
combined effect of West’s non-creative citation decisions cannot be said to be
creative, on such a theory or any other theory that West advances. We conclude
that the district court did not clearly err in deciding that West’s citation
alterations display insufficient creativity to be protectable. * * * Finally, West’s overall decision to add attorney
information, subsequent history, and additional citation information exhibits
little, if any, creative insight; most courts already provide attorney
information, and opinion accuracy mandates inclusion of subsequent history. West’s editorial work entails considerable scholarly
labor and care, and is of distinct usefulness to legal practitioners.
Unfortunately for West, however, creativity in the task of creating a useful
case report can only proceed in a narrow groove. Doubtless, that is because for
West or any other editor of judicial opinions for legal research, faithfulness
to the public-domain original is the dominant editorial value, so that the
creative is the enemy of the true.12 Our decision in this case does not mean that an editor
seeking to create the most accurate edition of another work never exercises
creativity.13 As West
argues, our 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 instance, in Kregos thousands of different permutations of pitching statistics were
available for inclusion in the publisher’s pitching chart. See Kregos, 937 F.2d at 704; see also Eckes v. Card Prices Update, 736 F.2d 859, 863 (2d Cir. 1984) (baseball card guide which selected
5,000 “premium” baseball cards from among 18,000 eligible baseball cards was
copyrightable). In Key Publications,
we found sufficient creativity because the author of the yellow pages “excluded
from the directory those businesses she did not think would remain open for
very long.” 945 F.2d at 513. In CCC Information Services, we found sufficient creativity in the selection of optional car
features and number of years’ models to be included in a used-car price
compilation. 44 F.3d at 67. And in Lipton v. Nature Co., 71 F.3d 464 (2d Cir. 1995), the author “selected [the terms included in
the work] from numerous variations of hundreds of available terms.” Id. at 470. In each of these cases, the compiler selected from among
numerous choices, exercising subjective judgments relating to taste and value
that were not obvious and that were not dictated by industry convention. See
Mid America Title Co. v. Kirk, 59 F.3d 719, 723 (7th
Cir. 1995) (distinguishing cases involving exercise of subjective judgment).14
Similarly, in Weissmann v. Freeman, 868 F.2d 1313 (2d Cir. 1989), a textual derivative-work case, we found
sufficient creativity where the author of the derivative work had drawn on
earlier joint works with another professor to create a document that contained
the following new elements from the previous version of the document: (1)
a selection and arrangement of photo illustrations and associated captions; (2)
references to recent reports in the pertinent literature; (3) selection,
condensation, and description of additional source material; (4) several new
textual additions; (5) substantial rearrangement of the manner and order of
presentation of material contained in the parties’ prior joint works; and (6)
the addition of a section on “congenital disorders,” a revised treatment of
“chronic cholecystitis,” and the incorporation of Dr. Freeman’s “false
positive” studies. Id. at 1322. As this passage
demonstrates, the alterations inserted in the derivative work were by no means
obvious or driven by professional convention, and resulted in substantial
changes to the substance and flow of the piece. No such substantial variations
characterize West’s case reports. CONCLUSION The district court did not clearly err in concluding
that the elements of West’s case reports that HyperLaw seeks to copy are not
copyrightable. The judgment of the district court is affirmed. SWEET, D.J. The key issue in this appeal is whether West’s Supreme
Court Reporter and Federal Reporter case reports in the context of its overall reporter citation system meet
the constitutional and statutory requirement of creative originality. Because
the majority imposes a standard that demands significantly more than the
“modicum” of originality required by Feist Publications, Inc., v. Rural
Telephone Service Company, Inc., 499 U.S. 340, 113
L. Ed. 2d 358, 111 S. Ct. 1282 (1991), and far more than the “non-trivial”
variation required by this Court for derivative-work and compilation copyright
protection, I respectfully dissent.1 The Copyright Act protects both derivative works and
compilations, and I agree with the majority that West’s case reports have
elements of both. The standard for copyrightability set forth in Feist, as the majority notes, is applicable whether West’s editorial work is
analyzed in terms of derivative work or compilation. See e.g., Atari Games Corp. v. Oman,
298 U.S. App. D.C. 303, 979 F.2d 242, 244-45 (D.C. Cir. 1992) (Feist applicable to [audio-visual] compilation); 2 W. Patry, Copyright Law
and Practice 1225 (1994) (Feist applicable to derivative works). Contrary to the majority’s holding,
however, I find that West’s selection and arrangement of factual annotations to
public domain judicial opinions, considered as a whole, is copyrightable. Originality alone — whether the “author makes the
selection or arrangement independently (i.e. without copying that selection or
arrangement from another work)” — is not sufficient. Feist, 499 U.S. at 358. The work must also “display some minimal level of
creativity.” Id. Creativity for copyright
purposes is not a philosophical question: the “creative spark” need only pass
“the narrowest and most obvious limits.” See Bleistein v. Donaldson
Lithographing Company, 188 U.S. 239, 251, 47 L.
Ed. 460, 23 S. Ct. 298. The “modicum of creativity” requires simply that the
author prove “the existence of . . . intellectual production, of thought, and
conception.” Feist, 499 U.S. at 362 (quoting
Burrow-Giles Lithographic Co. v. Sarony,
111 U.S. 53, 59-60, 28 L. Ed. 349, 4 S. Ct. 279 (1884)); see also Key
Publications Inc. v. Chinatown Today Publishing Enterprises, Inc., 945 F.2d 509, 514 (2d Cir. 1991). (“De minimis thought withstands originality requirement”). Thus, while the majority is correct that it is “not a
goal of copyright law” to encourage the creation of compilations which lack
“sufficient creativity,” it is well-established that the required level of
creativity is “extremely low.” Feist,
499 U.S. at 345.2 In Feist, Rural’s
alphabetical arrangement by surname, and selection of name, town and telephone
number to include in a telephone book, was “practically inevitable.” Id. at 363. Although the facts need not be presented in an “innovative or
surprising way,” Rural’s choice was “so mechanical or routine as to require no
creativity whatsoever.” Feist, 499 U.S. at 362.
Indeed, the copyright claimant in Feist
had no real choice how to arrange a white pages directory, particularly given
that state law prescribed the selection of data, and that only a few basic
decisions were involved. Id. Also significant
was that only Rural possessed the underlying data. Id. at 363. Here, West has made choices to make its reporters and
its citation system valuable. West makes dozens of multi-part, variable judgments,
and there is no evidence that any of West’s choices are commonplace,
“practically inevitable,” dictated by law, or that they follow any external
guidelines. On the contrary, the record demonstrates that West makes a number
of substantive, editorial choices — without court direction or approval — in
determining the content and expression of its case reports. West’s judgments
involve assessments of “readability,” clarity, completeness, availability
(present and future) of sources, and other subjective considerations related to
making the reports more useful. Specifically, West asserts that originality inheres in
the following aspects of its editorial process: (1) its decisions about when to
add parallel citations and which parallel citations to add; (2) its
substitution of “alternative citations” when its editors deem that the original
citation should be improved upon in terms of usefulness, currency, or accuracy;
(3) its addition of its own citations when none are provided; (4) its internal
revision and correction of citations; (5) its expansion and completion of
citation page references; (6) its creation, selection, and arrangement of
additional text to reflect subsequent case developments; (7) its selection and
arrangement of data for attorney summaries, and (8) its revision and
reorganization of captions, court lines, date lines, and other prefatory
material. Because these choices express thought and are not inevitable, West’s
annotations do not fall in the “narrow category” of works which are not
copyrightable. The fact that federal judges publish written opinions
differently than West is sufficient reason to conclude that West’s version
requires some “thought” and is sufficiently “creative” to satisfy the modicum
necessary for copyrightability. If a federal judge chooses to cite only to the
United States Reporter, include minimal attorney information in his or her
written opinion, or not provide a cite for a referenced case, then an
alternative choice to provide parallel citations, expand attorney information,
and cite the case cannot be deemed so “typical,” “garden-variety,” “obvious” or
“inevitable” to prohibit copyrightability. Cf. Feist, 499 U.S. at 362-63. The majority dissects each element of West’s editorial
process and then extrapolates that “the cumulative effect of these citation
decisions is a piling up of things that are essentially obvious or trivial
(albeit helpful), each in its discrete way in its discrete spot.” West’s originality, however, cannot be determined by the
sum total of whatever (creativity) remains after each individual component is
atomized. Indeed, this Court recently warned against the dangers of basing
copyrightability analysis on an approach which isolates each element or ignores
the “protectible expression within an unprotectible element.” Softel, Inc.
v. Dragon Medical and Scientific Communications, Inc., 118 F.3d 955, 964 (2d Cir. 1997). See also 3 M. Nimmer, Copyright Û 13.03 [F][5], at
13-145 n.345.1 (explaining that the fact that Hamlet’s soliloquy can be reduced
into unprotectible words does not mean that the soliloquy as a whole lacks
originality for copyright purposes).
West’s selection of particular annotations for each case
must be considered a whole, not individually. See Key Publications, 945 F.2d at 514 (issue is “whether the arrangement . . . viewed in the
aggregate, is original”). In defining a derivative work, the issue is whether
“modifications” “represent an original work of authorship” must be considered “as
a whole.” 17 U.S.C. Û 101 (emphasis added)
(definition of derivative work). The same legislative command is repeated in
the definition of compilations, which provides that a compilation is “a work
formed by the collection and assembling of preexisting materials . . . 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. Û 101 (emphasis added). The cumulative and collective
originality manifest in West’s case reports satisfies the “de minimis “ level needed for the work as a whole to be copyrightable. Indeed, it
must be assumed that the originality and the consequent utility of the West
citation system is precisely the reason that Hyperlaw seeks to use West as its
verbatim source. In my view the decision of the majority is not
consistent with the post-Feist case Key
Publications, 945 F.2d 509. In Key Publications, this Court held that classified directories of Chinese-American
businesses was copyrightable because, among other things, plaintiff excluded
enterprises she believed would not remain in business. This selection
“indicates thought and creativity in the selection of businesses included.” Id. at 513. If there is a modicum of originality in deciding which
businesses are likely to stay open for awhile, the test is surely also met by
deciding in a system designed to assist legal research for example, which
sources are sufficiently useful, available, or permanent to stand alone, and
which require the addition of an electronic parallel citation. Contrary to the majority’s view, the alternative factual
annotations selected by West are not comparable to the cases where courts have
denied copyright protection based on lack of originality. In Victor Lalli Enterprises,
Inc. v. Big Red Apple, Inc., 936 F.2d 671 (2d Cir.
1991), it was undisputed that the publisher’s selection and arrangement of fact
categories was exactly the same as that of all racing-chart publishers. Id. at 672. In Financial Information, Inc. v. Moody’s Investors Service,
Inc., 808 F.2d 204 (8th Cir. 1986), cert.
denied, 484 U.S. 820, 98 L. Ed. 2d 42, 108 S. Ct.
79, it was beyond dispute that the five basic facts listed on the Daily Bond
Cards were an “inevitable” choice devoid of originality. In this case, by
contrast, all of West’s basic choices involve subjective judgment. In Skinder-Strauss Associates v. Massachusetts
Continuing Legal Education, Inc., 914 F. Supp. 665
(D. Mass 1995), the court held that the legal directory is copyrightable “as a whole,” and therefore the question was substantial similarity, not
copyrightability. Id. at 677. Although the Skinder-Straus court held that individual elements, such as a calendar of Christian and
Jewish holidays, were not copyrightable, here West does not seek
copyrightability of individual facts, but rather seeks to prevent verbatim
copying of the case report as a whole.
The copyright granted West is thin, but it is sufficient
to protect against the verbatim digital copying proposed by Hyperlaw. This
result protects the advancement of science and the arts, while not permitting
Hyperlaw to undermine any incentive for West to annotate judicial opinions
selectively. If West’s competitors were authorized to scan West’s editorial enhancements
systematically and, in effect, to copy its citation system, the economic
incentive to engage in this kind of original and productive enterprise would
largely evaporate. There is no danger here that granting West’s copyright
protection to its annotations provides them a monopoly over the “idea” of
publishing judicial opinions. When the number of ways data can be organized is
so limited that its expression merges with the idea, copyright may be denied.
However, here “there are a sufficient number of ways of expressing the idea . .
. to preclude a ruling that the idea has merged into its expression.” Kregos
v. Associated Press, 937 F.2d 700 (2d Cir.
1991). In Kregos, this Court held that
“the past performances of baseball pitchers can be measured by a variety of
statistics,” and is copyrightable. Here, too, opinions can be, and are, written
with a variety of citation combinations and other facts either included or not.
This case is not like Matthew Bender & Co. v. Kluwer Law Book
Publishers, Inc., 672 F. Supp. 107 (S.D.N.Y. 1987),
where the court concluded that the categories in the plaintiff’s chart (amount,
case, plaintiff event, injury, and relevant data) are “the only sensible ones
which could have been used to compile the data.” Id. at 112. To the extent that the West selection of factual
annotation may seem obvious to anyone familiar with legal sources, it may be
because of West’s success in the market.3 There is no support for the proposition that West’s success
in achieving an “industry standard” citation arrangement obligates them to
donate the material to the public domain. Cf. BellSouth, 999 F.2d at 1444 (industry standard copied from industry association). For the reasons stated, I conclude the summary judgment granted in favor
of Hyperlaw should be reversed. * The Honorable Robert W. Sweet, of the United States
District Court for the Southern District of New York, sitting by designation. 1 West also functions as the publisher of slip
opinions—i.e., the official versions of
court opinions—for the Fifth and Eleventh Circuits, and West does not claim a
copyright for any alterations it makes to those slip opinions other than its
syllabi, headnotes, and key numbers. 2 The record seems to indicate that since the
commencement of this suit, HyperLaw has combined these two products into one. 3 Whether insertion of star pagination to West’s case
reporters amounts to copying of West’s arrangement of cases is a separate
question we address in the other opinion issued today. See Matthew Bender
& Co. v. West Publ’g Co., 158 F.3d 693. 4 West initially claimed some creativity in its
corrections to the text of opinions, but it has abandoned this claim,
presumably because these corrections either are trivial (i.e., punctuation or spelling), or else (nearly always) approved by the
courts by order or informal means. 5 We have previously explained that the protection of
compilations “is consistent with the objectives of the copyright law . . . to
promote the advancement of knowledge and learning by giving authors economic
incentives . . . to labor on creative, knowledge-enriching works” because
compilations “that devise new and useful selections and arrangements of
information . . . contribute to public knowledge by providing cheaper, easier, and
better organized access to information.” CCC Info. Servs., Inc. v. Maclean
Hunter Mkt. Reports, Inc., 44 F.3d 61, 65-66 (2d
Cir. 1994). Without that financial incentive, such compilations would not be
created. Id. at 66. Nevertheless, it is not a goal
of copyright law to promote the production of compilations which lack
sufficient creativity. 6 West offered as evidence at trial memoranda to its
editors concerning caption alterations. Review of these memoranda demonstrates
that they are simply concerned with accurate presentation of caption
information. For example, they clarify the accurate family name for parties of
Chinese or Spanish origin so that the editor capitalizes the proper name in the
caption. They also set forth a uniform system for abbreviating certain words,
which is not original or copyrightable. See, e.g., Brief English Sys., Inc. v. Owen,
48 F.2d 555, 556 (2d Cir. 1931) (“There is no literary merit in a mere system
of condensing written words into less than the number of letters usually used
to spell them out.”). 7 West focuses on its case report for Roulette v.
City of Seattle, decided in March 1996 and published
at 78 F.3d 1425 (9th Cir. 1996). In September 1996, there issued an order
amending the opinion upon denial of rehearing and suggestion for rehearing in
banc, and two opinions dissenting from the
denial of rehearing in banc. The order
amending the opinion made substantial substantive changes to the opinion, and
so West decided to republish the full opinion with the changes reflected in the
text at 97 F.3d 300 (9th Cir. 1996). Moreover, it printed the full order (with
a note indicating that the amendments to the opinion were included in the text)
with the dissenting opinions at the end of the opinion. Finally, it added a
file line reflecting those developments. None of these decisions demonstrates
the exercise of any creativity; in fact, with the exception of the file line,
all were dictated by the changes made to the opinion by the court. The Ninth
Circuit did the same thing, i.e.,
republished the original opinion incorporating the amendments and printed the
order and dissents in full following the text. 8 West has issued the following guidelines for citation
alterations: (1) follow certain prescribed formats for abbreviation
of Rules of Civil Procedure, state rules, and statutes. (2) add a citation to Westlaw or to an NRS case reporter
for citations to certain looseleaf services when the case cannot be directly
retrieved through Westlaw using the looseleaf service citation. (3) substitute an NRS case reporter cite for 15
publications, almost all of which are daily or weekly reports or journals,
including: Arizona Advance Reports, California
Daily Appellate Report, 9th Circuit Daily
Journal, Florida Law Weekly, Oklahoma Bar Journal, Texas Supreme
Court Journal, and United States Law Week. (4) add an NRS case reporter or Westlaw cite for 15
publications, some of which are topical publications and others of which are
competitor publications, including: American Law Reports (A.L.R.), Board of Tax Appeals, Federal
Sentencing Reporter, Idaho Bankruptcy
Court Reports, Pennsylvania Fiduciary, and Virgin Islands Reports. (5) for citations to cases appearing in tables in West
case reporters, include a Westlaw cite if Westlaw contains the full-text of the
summary order. (6) if the court’s citation indicates that a petition
for certiorari has been filed and the Supreme Court has acted on the petition: (a) if the petition has been denied and the date of the
denial was prior to the date the opinion was decided, add the citation for the
denial of certiorari. (b) if the petition was denied after the opinion was
decided, do not add a citation for the denial of certiorari. (c) if the petition was granted, check with the court to
see if the case citation should be retained. (7) if a court includes a short form citation for a case
which has not yet been cited in full in the opinion, insert the full citation. (8) if a court cites to a slip opinion, add the NRS case
reporter citation. If this citation is unavailable prior to publication, add a
Westlaw citation. (9) add extension pages for citations if the court’s NRS
citation includes an extension page. (10) change internal page references in the slip opinion
to dashes so that a reporter page number can be inserted by West editors. (11) add a Westlaw or NRS case reporter citation for
public utility citations. (12) do not remove citations in opinions to public
domain citation systems in those jurisdictions that have adopted such citation
systems, including the Sixth Circuit and South Dakota. (13) add a Westlaw citation when the court includes a
Decisioncitation, and in certain situations, remove the Decisioncitation. (14) add a citation for a case referenced in the text of
the opinion without citation unless that case appears on a list of 300 popular
case names. (15) add parallel citations for Supreme Court decisions
to United States Reports, Supreme Court
Reporter, and Lawyer’s Edition. (16) add parallel citations for state court decisions to
an NRS regional case reporter and the state’s official reporter. 9 Even West notes in its brief, “Every publisher has at
least three options [on how to update citations in slip opinions]—to leave
citations as they appear in the opinion, to update them as of the date of
case-report publication, or to update them only as of the date of the original
order.” 10 West maintains a list of 300 cases deemed by West to
be so well known that West will leave intact one-party references to these
cases without expanding the case citation. This practice involves an undeniably
creative, but minor, insight into which cases are within an ordinary lawyer’s
frame of reference, and the expression of that selection would be protectable.
Nevertheless, West offered no evidence as to how often these cases are cited
without a full citation in the judicial opinions that HyperLaw seeks to copy
and we will not find infringement for what seems to be de minimis copying of protected material. Cf. Warner Bros. Inc. v. American
Broad. Cos., 720 F.2d 231, 242 (2d Cir. 1983)
(noting that de minimis rule permits “the literal
copying of a small and usually insignificant portion of the plaintiff’s work”).
11 West emphasizes that The Bluebook ïs rule dispenses with citation to official reporters, but it ignores
another Bluebook rule that practitioners
cite to official state reporters for cases decided by the state in which the
practitioner is filing papers. See The Bluebook, supra, rule P.3. Furthermore, another citation guide recommends citing to both
the official reporter and the NRS reporter on all occasions. See The
University of Chicago Manual of Legal Citation
15 (1989) (“When citing to a state case, indicate the volume and first page of
the case for both the official and commercial reporters.”). 12 HyperLaw argues that we should apply the merger
doctrine to bar the copyrightability of West’s alterations to judicial
opinions. The fundamental copyright principle that only the
expression of an idea and not the idea itself is protectable has produced a
corollary maxim that even expression is not protected in those instances where
there is only one or so few ways of expressing an idea that protection of the
expression would effectively accord protection to the idea itself. Kregos v. Associated Press, 937 F.2d 700, 705 (2d Cir. 1991) (citation omitted). HyperLaw claims
that the idea of a case report has effectively merged with West’s expression of
that concept. We decline to invoke the merger doctrine in this case.
First, “our Circuit has considered this so-called ïmerger’ doctrine in
determining whether actionable infringement has occurred, rather than whether a
copyright is valid.” Id. ; see also CCC Info.
Servs., Inc. v. Maclean Hunter Market Reports, Inc.,
44 F.3d 61, 72 n.26 (2d Cir. 1994) (“In this circuit, consideration of the
merger doctrine takes place in light of the alleged copying to determine if
infringement has occurred, rather than in analyzing the copyrightability of the
original work.”). In addition, under this approach, “if a defendant has
actually copied the plaintiff’s work, it is unlikely to be allowed to rely on
merger to avoid liability,” Kregos,
937 F.2d at 716 (Sweet, J., concurring in part and
dissenting in part). HyperLaw seeks a declaratory judgment holding West’s case
reports non-copyrightable and allowing it actually to copy West’s case reports.
It therefore cannot avail itself of the merger doctrine. Second, West’s work does not constitute a “building
block[] of understanding,” which we have indicated is the type of expression to
which we will consider applying the merger doctrine. See CCC Info. Servs., 44 F.3d at 71. 13 It is true that some types of editing require little
creativity. See, e.g., Grove Press, Inc. v. Collectors Publication, Inc., 264 F. Supp. 603, 605 (C.D. Cal. 1967) (“Plaintiff made approximately
forty thousand changes from the Verlag copy in producing its edition. These
changes consisted almost entirely of elimination and addition of punctuation,
changes of spelling of certain words, elimination and addition of quotation
marks, and correction of typographical errors. These changes required no skill
beyond that of a [1967] high school English student and displayed no
originality. These changes are found to be trivial.”). In addition, convention
and external forces may, as here, limit the practical choices available so as
to eliminate any creativity. On the other hand, preparing an edition from multiple
prior editions, or creating an accurate version of the missing parts of an
ancient document by using conjecture to determine the probable content of the
document may take a high amount of creativity. See, e.g., Abraham Rabinovich, Scholar:
Reconstruction of Dead Sea Scroll Pirated,
Wash. Times: Nat’l Wkly. Edition, Apr. 12, 1998, at 26 (discussing scholar’s
copyright infringement claim in Israeli Supreme Court relating to his
reconstruction of the missing parts of a “Dead Sea Scroll” through the use of
“educated guesswork” based on knowledge of the sect that authored work). 14 HyperLaw argues also that West has failed to comply
with the requirement of 17 U.S.C. Û
403 that it identify those parts of the government work in which it does
not claim a copyright. Because we find that the elements of West’s case reports
that HyperLaw seeks to copy are not protectable, we need not reach this issue. 1 Although not dispositive since I believe that the
district court’s determination is clearly erroneous, review should be de
novo. Whether West’s annotations are
copyrightable requires application of the legal standard imposed by the
constitution and copyright statute to the undisputed facts. To the extent prior
Second Circuit opinions have reviewed issues of copyrightability for clear
error, they appear inconsistent with the Supreme Court’s de novo review of a similar issue in Feist
(impliedly, although not expressly, reversing district court after de novo review), inconsistent with the de novo
standard applied by this Court in other mixed questions in copyright law, see
e.g. American Geophysical Union v. Texaco Inc.,
60 F.3d 913, 918 (2d Cir. 1995) (fair use is mixed question subject to de
novo review); Carter v. Helmsley-Spear, Inc., 71 F.3d 77, 85 (2d Cir. 1995) (work for hire status legal conclusion
reviewed de novo, although factual finding
of each relevant factor reviewed for clear error); Folio Impressions, Inc.
v. Byer California, 937 F.2d 759, 766 (2d
Cir. 1991) (substantial similarity reviewed de novo since credibility not at issue), or distinguishable, see Financial
Information, Inc. v. Moody’s Investors Service, Inc., 808 F.2d 204, (2d Cir. 1986) (noting that district court relied “on its
evaluation of the credibility of witnesses — which we are ill-disposed to
disturb on appeal” whereas here facts are not in dispute). 2 Indeed, “most applications of Feist have recognized the circumscribed sphere to which its holding applies,
ruling that it invalidates the copyright only in the most banal of works, such
as the white pages of a phone book.” 1. M. Nimmer, Copyright Û 3.04[B][2], p.3-33
(footnotes omitted). 3 The contention that all of West’s enhancements are
trivial is somewhat ironic given that what motivates this litigation, it is
assumed, is the desire to make money by copying West’s valuable editorial work.
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