John W. Oliver

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

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

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

“ The probability of whether West will succeed on the merits must, in my judgment, be viewed in light of the fact that law book publishers in the United States have long and traditionally used star pagination in their publication of court opinions which have been taken verbatim from earlier published and copyrighted works of both official and unofficial court reporters. ”

“ Neither the district court nor the majority cite any cases which suggest that the page numbers of a new compilation of any work of Shakespeare must be considered a subject of copyright. Nor is any authority cited to support the notion that the citation of the page numbers in a copyrighted compilation of Shakespeare's work would somehow infringe an earlier publication of Shakespeare's plays and sonnets. Current literary practice suggests that such page citations may not be said to constitute an infringement. ”

“ The record, as I read it, merely establishes that MDC only intends to add star pagination to the court opinions contained in its Decision data base. MDC, as I understand the record, does not intend to make, nor has it in fact made any use of West's "synopses, syllabi or case law paragraphs, key number classifications, tables and index digest, with revisions and additions" for which West claimed in its Certificates of Copyright Registration. ”

“ That definition expressly provides that a "compilation" is a work "arranged in such a way that the resulting work as a whole constitutes an original work of authorship." Id. (Emphasis added) . ↑ The Berring affidavit (A31–39) , for example, simply states that West "arranges American judicial decisions within its National Reporter System publications" (A34 para. 13) . There is no statement made in regard to how those cases are "arranged" or, more particularly, how the page numbers are placed in any of West's volumes. ”

“ Slip op. at 18. It is my view, however, that the majority's analysis of this case exceeds the limited scope of appellate review provided by a Section 1292 (a) (1) appeal.
I therefore dissent because I do not believe, in light of the meager record before the district court, that the majority's analysis is consistent with the applicable law. It is my view that our panel should follow the lead of the First Circuit as stated in Building Officials & Code Adm. v. Code Tech, Inc., 628 F.2d 730 (1st Cir. 1980) , in which a not dissimilar question was presented on a Section 1292 (a) (1) appeal. ”

“ Although West relied on Hutchinson Telephone Co. v. Fronteer Directory Co., 770 F.2d 128 (8th Cir. 1985) (Tr. 11) , in the district court, that court did not make any findings of fact or indicate in any way that it believed that the publication of a law report could be said to be comparable to the publication of a telephone directory.
The majority cited and relied on Hutchinson, both in regard to its discussion of "copyright protection," slip op. at 5, and in discussion of "infringement," slip op. at 13 and 15. ”

“ Examination of those "U.S." volumes establishes that the cases were, in fact, published in the sequence in which they had been decided.
The record in this case shows that the district court asked West's counsel whether it was West's theory that "the page numbers express the arrangement" of West's cases. (A301) . West's counsel replied that "they certainly do, your Honor." Id. West's counsel directed the district court's attention to 300 F.Supp. 100 to illustrate West's arrangement. ”

“ Causey, 488 F.2d 527, 528 (1973) (5th Cir.) , appropriately stated that "an appeal from the issuance or denial of a preliminary injunction is ordinarily no way to obtain appellate disposition of a case on its merits." That case emphasized that the "one fact which litigants and their counsel should not overlook is that on an appeal from a preliminary injunction this Court does not concern itself with the merits of the controversy." ↑ The Eighth Circuit rule goes back at least as far as Judge Walter Sanborn's opinion in City of Council Bluffs v. ”

“ For it stated that if MDC's position is that "all West seeks to protect is numbers on pages ... is a correct characterization, MDC wins: two always comes after one, and no one can copyright the mere sequence of Arabic numbers." Slip op. at 1227. ↑ Indeed, it is apparent that West has long used and presently uses star pagination in the court opinions published in its Supreme Court Reporter, its New York Supplement, and its California Reporter. ”

“ That case was decided by the same panel that decided Banks. Judge Henry Wade Rogers concluded that "it was at one time intimated in certain judicial opinions that directories were not entitled to copyright. But the law is now well established to the contrary in England. [Citing many English cases] . It is equally well-established law in this country. ”

“ West Publishing Co., 27 F. 50 (C.C.Minn. 1886) , West successfully sustained its right to publish the opinions of the Supreme Court of Iowa in its Northwestern Reporter in the face of an Iowa statute which purported to give a copyright to Banks. West's argument that "there is no such thing as a copyright or other property right in the opinions of the judges" was sustained, as it should have been. Id. at 56. Circuit Judge Brewer relied on the lower court opinion in Banks v. Manchester, 23 F. 143 (1885) , which in turn had relied on Wheaton v. ”

“ Both Judge Drummond's opinions show that he relied solely on Wheaton v. Peters and that he made his findings of fact consistent with the principles stated in that case. ↑ Judge Drummond found, again as a matter of fact, that the defendant plagiarized plaintiff's head notes and statements of the cases in such a manner that "the paging of the [defendant's] volumes is substantially the same [as plaintiff's page numbers] so that the cases in the corresponding volumes appear on the same page." Id. ↑ The Court apparently made its own examination of volumes 39 to 46. ”

“ We stop short, however, of ruling definitely on the underlying legal issues, since we feel that our final judgment should await the more complete hearing on the merits which may be anticipated in due course." 628 F.2d at 732. ↑ MDC also complains on appeal that the preliminary injunction granted by the district court gave West "a second chance to play catch-up and develop a feature similar to the Decision Star Pagination Feature for West's WESTLAW service." ”

“ On the advice of Webster, Wheaton rejected the suggested compromise. ↑ Joyce also noted that "in his dissent, Justice Baldwin carefully noted that, in the proceedings on remand, Wheaton might still prove his rights to literary property in 'the marginal notes, or syllabus of the cases and points decided, the abstract of the record and evidence, and the index to the several volumes.' 33 U.S. (8 Pet.) at 698g (F. Brightly ed. 1883) ." Id. at 1384–85 n. 515. ↑ Joyce noted the immediate impact of Wheaton v. ”

“ Justice Holmes, writing for the court, speaks of directories as being capable of copyright." Id. at 85. Judge Rogers treated Callaghan in substantially the same manner Callaghan would be treated two years later in Eggers v. Sun Sales Corporation, 263 F. 373 (2d Cir. 1920) . The Jeweler's Circular court quoted Justice Blatchford's observation that, on the facts of Callaghan, "one of the most significant evidences of infringement exists frequently in the defendant's volumes, namely the copying of errors made by Mr. Freeman." Id. at 95. ↑ 1 Nimmer on Copyright, § 2.04 [B] , pp. ”