The HyperLaw Cases

As lead counsel and the trial lawyers in the 7-year long Southern District of New York "HyperLaw Trilogy" cases, Carl Hartmann and the late Paul Ruskin won the largest federal action regarding database protection and electronic publishing in a generation. See WIRED article and the Paul Weiss law firm's post-litigation analysis in the New York Law Journal.

For more than 100 years, courts sent most of the legal decisions in the United States to West Publishing for free, 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 Bender 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

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.

a. The original district judge recused herself from hearing the case after HyperLaw’s arguments and a petition for mandamus to the Second Circuit in which Hyperlaw raised the issue of West's unual relationship with many judges and justices in terms of awards, travel and gifts.  HyperLaw v. West Publishing I (Recusal of Judge Preska) 1995 U.S.Dist.Lexis 3820 (S.D.N.Y. 1995). On March 5, 1995 the Star-Tribune published a series of articles regarding this same topic, to which HyperLaw contributed content and information. See Articles. 

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 Publishing - Antitrust Decision I, 1997 U.S. Dist. LEXIS 1893; 42 U.S.P.Q.2D (BNA) 1867 (D.D.C. February 27, 1997) ("HyperLaw therefore remains the only potential appellant proposed 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."); 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); and West Antitrust Decision III, 1998 U.S. App. LEXIS 12921 (D.D.C. May 29, 1998).

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). That followed a November 27, 1996 courtroom exchange where the Court ruled from the bench. 1996 WL 774803 Nov. 27, 1996. Judge John Martin. Carl J. Hartmann, for plaintiff Hyperlaw; Morgan Chu, Irell & Manella, Los Angeles, CA, for plaintiff Matthew Bender; Joseph Musilek, Schatz Paquin Lockridge Grindal & Holstein, Minneapolis, MN and Jeffrey Kessler, Weil Gotshal & Manges, New York, NY, for West.

*7 . . . .MR. HARTMANN: Your Honor, Carl Hartmann for Hyperlaw. As is frequently the case with West, we are mixing lots of apples and lots of oranges. Let’s go back for a second to the question you asked specifically about the Hyperlaw argument, which is text. West adds nothing to the Supreme Court text. Period. End of discussion. Now, it may correct a spelling mistake, although it didn’t in the examples it gave. And it may take out parallel citation that the court puts in, or add some, but that’s it. *8 It’s a government work. West doesn’t dispute that.

West, as far as I know, doesn’t dispute Section 403 or the language that the Congress stated which underlies 403: [reading] "403 is aimed at a publishing practice that while technically justified under the present law has been the object of considerable criticism in cases where government work is published or republished commercially where it has frequently been the practice to add some new matter in the form of an introduction, editing, illustrations, et cetera, and to include a general copyright notice in the name of the commercial publisher suggests publicly that the bulk of the work is not copyrightable and therefore free for use.”

What could be more public governmental work than a Supreme Court case? What could be less intellectual, less creative than a parallel cite or citation or a correction to text? Everything else I think is pretty much in our briefs.

I refer your Honor to West’s statements in its opposition to our statement of uncontested fact. It is dribble. There is not one single statement by West about text that it adds to the first hundred pages of 1 F.3d. Nor has it pointed to anywhere else anywhere else in F.3d or F.2d where, into the text of a court’s opinion, it has added anything of value. Anything. It says today—I guess what we have devolved to after five years of fighting this issue—what we have basically devolved to, is that West is claiming that there’s some value in its cross-reference to other books. I have no answer for that at all. I don’t. They are taking government works, written by judges. Furthermore, I know that this has been briefed over and over—

THE COURT: Do you have section 403?

MR. HARTMANN: Page 35 of our reply brief is the Conference Committee report to 403 which is what I was reading from. And 403 is at 34 of the reply brief. . . .*9 West gets corrections from judges. West puts them into West’s version of these opinions. West doesn’t have the records, and I know it because I have been through their records, your Honor, everything they say that they have got. West does not keep the records to tell you what changes were made by judges and which ones were made by West. They are now using this word “suggest.” Judges don’t really make the changes, you see, they "suggest" the changes to West. But after a judge has suggested the changes to West, West puts them into those decisions and West now can’t tell you what in that decision West did.

So even if there was the slightest bit of creativity, the slightest bit of value in those hundred pages of 1 F.3d that we have cited to or anywhere else in F.3d in correcting a word, which is all they’ve ever done, we don’t even know that they did it. There’s nothing more that can be said. . . .

THE COURT: What about the head notes?

MR. HARTMANN: The head notes, this is one of those 'don’t-get-me-started' things. The headnotes are sometimes, as shown in the affidavit from our expert that’s attached here—who is a noted law librarian, are sometimes copied verbatim out of Federal court opinions. When they are, they are text of government works. They can’t be copyrighted. Period. End of discussion. The text can’t be. The fact that they order them in the headnotes, fine, that’s great. But not the text. Never the text of a Federal work.

THE COURT: The fact is when they do a headnote they put a key number in the opinion.*10

MR. HARTMANN: Fine. Then you can’t copy it with the key number and I can’t copy all the stuff—

THE COURT: But you are copying the key number, are you not—

MR. HARTMANN: Not [Hyperlaw].

THE COURT: When you scan—

MR. HARTMANN: We don’t [scan], your Honor. . . .[HyperLaw has text typed in to avoid intermediate copying allegations.]

MR. MUSILEK: Your Honor, this is not closing argument at a trial. This is a summary judgment motion, and yet what I heard from Mr. Hartmann was not nothing more than personal testimony as to what he thinks the facts are. Of course, those facts are highly contested in sworn affidavits.

THE COURT: But you [West] are saying they are highly contested. [West] put in some generalized statements in an affidavit. That doesn’t establish the detail that [West] needs to sustain its claim.

f. In 1999, HyperLaw fought the Congressional attempt to override the two Second Circuit decisions by proposed passage of the Collections of Information Antipiracy Act. That Act was eventually defeated.

g. 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).

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 West's two Petitions for Re-Hearing En Banc in the Second Circuit (text and citations) filed after its loss, as well as HyperLaw's Opposition Briefs (text and citations); and HyperLaw's U.S. Supreme Court Opposition.

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