Course No.: 9200 710 801
Course ID:  17261
Tu 6:30-9:30 p.m.
Room W-215
Professor Jay Dratler, Jr.
Room 231D (IP Alcove)
(330) 972-7972
Copyright © 2000, 2001, 2002, 2003, 2004, 2005, 2006, 2008   Jay Dratler, Jr.  
For permission, see CMI.

Notes and Questions on Matthew Bender & Co. and Tasini

1.  In Matthew Bender, West Publishing Co. made a crucial concession.  It conceded that citing to cases in its reporters by referring to the volume of the reporter and the first page of the case was fair use.  In other words, it conceded that the normal process of citing judicial decisions to West's reporters is fair.

Certainly this concession undermined West's argument that using "star pagination" to copy the interior pagination of its cases (i.e., the pagination after the first page of each case) was not fair.  Yet did West really have any other choice?  Could it credibly claim that every judge, lawyer, clerk and law student who cites cases to West's reporters thereby ipso facto infringes West's copyright?  Would such a claim be consistent with the doctrine of fair use?  With good copyright policy?

2.  Once West had conceded that citing to the first page of each case in its reporters was fair use, how could West argue that using "star pagination" so that readers of the plaintiffs' materials could also cite to interior pages was not fair?  Try to articulate as precisely as you can West's argument on this point.  Does the argument make sense?

3.  As the court notes, the collections of cases in West's reporters constitute "compilations" for purposes of copyright law.  Like all copyrights, compilation copyrights must satisfy the two basic requirements for copyright protection set out in Section 102(a).  In addition, a compilation must conform to the definition of that term in Section 101, and to the special rules for compilations in Section 103.

Look over each of these statutory sections and apply them to the collections of judicial decisions in West's reporters.  As you do so, consider precisely what elements or aspects of the reporters West's copyright protects.  Does it protect the wording and organization of the judicial opinions written by judges?  Does it protect West's headnotes and summaries?  Does it protect the pagination of the judicial decisions in West's reporters?

4.  In its decision in Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 351, 111 S.Ct. 1282, 1287, 113 L.Ed.2d 358 (1991), discussed in Matthew Bender, the Supreme Court ruled that copyright in a compilation protects only those aspects and elements of the compilation that are original contributions of the author of the compilation, as distinguished from the authors of pre-existing materials used in it.  See 499 U.S.at 348 ("copyright protection may extend only to those components of a work that are original to the author . . . [I]f the selection and arrangement are original, these elements of the work are eligible for copyright protection") (citations omitted.)  From what words in the statute does this principle derive?  What specific language in Sections 101 and 103 supports it?

Could West credibly claim that the sequence of pagination of the interior pages in the cases in its reporters resulted from an original contribution of West?  Does West's concession that its computers did the pagination without human intervention obviate any argument that the pagination is original?  Or could West claim that originality and judgment inhere in the rules for pagination programmed into the computer?  Does it matter whether those rules are based on typography alone (for example, break a page at the end of a sentence, if possible, otherwise at the end of a word), or whether they are based upon content and context?  Was its likely that West's pagination computer program, which the court does not describe, was based on content or context?

5.  At first, West seems stymied by its dual concessions that (1) citing to the first page of each case is fair use and (2) machines, not people, determined the sequence of pages after the first page.  Could West credibly argue that the sequence of interior pages is "original," as copyright protection requires, after making these concessions?

Yet West does not give up so easily.  It next argues that the declaratory plaintiffs "copied" its pagination, focusing on the statutory definitions of "copies" and "fixed."  Did the court need to address these arguments?  After Feist, does it matter that aspects of a compilation were copied if those aspects are not original to the author of the compilation?  Or was West arguing that plaintiff's works were somehow a complete copy of its reporters, including all of the selection, arrangement, and coordination of the cases in them?  Can you articulate West's argument in a manner most favorable to West?

6.  West's argument on this point might be called the "could copy" gambit.  West argues that, because users of the plaintiffs' works could use those works and the pagination information in them to reproduce copies of West's reporters, those works constitute infringing "copies" of West's reporters within the meaning of the statute.

How good is this argument?  First of all, is the premise correct?  Could a user of the plaintiff's works use it to reproduce any whole volume of West's reporters exactly?  Would anything be missing?  If so, what?

Second, if a user could do as West suggests, does that mean that the plaintiff's works are ipso facto copies of West's reporters?  Would the selection, arrangement, or coordination of cases in the plaintiff's works then be drawn from West's?   When ordinary users make use of the plaintiff's works, will they use West's selection, arrangement, or coordination of the cases?

7.  With suitable programming, computers are capable of rearranging the elements of a compilation in any desired fashion.  If a rearrangement of elements in a compilation constituted an infringement simply because the rearrangemene could be rearranged in the original order, wouldn't every rearrangement necessarily infringe?  Would that result be consistent with the principle announced by the Supreme Court in Feist, that a compilation copyright protects only originality in the selection, arragnement and coordination contributed by the compilation's author?  Would it be consistent with good policy?

The Feist Court also rejected the "sweat of the brow" doctrine, which held that copyright protects the labor of preparing a compilation.  See 499 U.S. at 352-360.  Orginality, the Court said, and not the labor of collection, is the touchstone of copyright protection.  See 499 U.S. at 359-360.  If copyright protected uncopyrightable factual elements against any re-arrangement by an alleged infringer, wouldn't it, in effect, protect the labor of collecting the facts, and not any originality in their arrangement?  Would that result be consistent with Feist?

8.  Although the Matthew Bender court soundly rejected West's "could copy" argument, it left the door open for such an argument where there is an "invitation, incentive, or facilitation [to copy the arrangement] not in the record here[.]"  Was the court right to do so?  Should the declaratory plaintiffs have potential liability for direct infringement of copyright based upon such an invitation, incentive, or facilitation?  Or should their potential liability be restricted to possible contributory or vicarious liability for others' direct infringement?  Was there any evidence of others' direct infringement on which the plaintiffs' seconary liability might be based?

9.  The Matthew Bender decision deserves careful study, for it illlustrates the principles of copyright law as applied to compilations generally and to modern electronic databases in particular.  In contrast, the Supreme Court's decision in Tasini addressed a much narrower statutory issue: the scope of the collective work publisher's "privilege" under Section 201(c).

Yet Tasini also has important practical implications.  If the case had gone the other way, would the authors of all the millions of print articles in back issues of newspapers and magazines have had any legal basis to claim additional compensation for the unauthorized use of their paper articles in modern electronic databases?  Would that result be good copyright policy?

10.  The Supreme Court interprets the scope of the Section 201(c) privilege by focusing on the words "as part of . . . . a revision" in the statute.  What test does the Court apply to determine whether the articles as republished in the databases were "part of" a "revision" of the original collective works, i.e., the original periodical issues?  Is the test the same as that for infringement of a compilation copyright, or is it different?  Does the test depend upon whether the databases included material not contained in the original periodical issues?  vice versa? both of the above?

11.  The majority and dissent in Tasini differ dramatically in how they conceive of the databases as "new works" to be compared with the original periodical issues, in order to determine whether the databases are "part of" a "revision" of those issues.  Can you articulate the difference between these two conceptions?  Which one conforms better to the way databases are actually used in the real world?  Which one does copyright policy suggest is the better way to conceive of databases for copyright purposes?

The dissent seems to suggest that the databases are "revisions" of the original periodical issues because a user could reproduce those issues using the databases.  Do you think the dissent in Tasini would have accepted West's "could copy" argument in Matthew Bender?  Does the majority's rejection of that reasoning provide support in the Supreme Court's precedent for rejecting the "could have" defense in Bender?

12.  Note that the Tasini majority assiduously refuses to decide whether the Section 201(c) privilege, when it exists, is transferable.  Should it be?  If it is not, does that mean that every periodical publisher must print and distribute all revisions and new editions of its collective works?  If so, is that interpretation of the statute fair and workable?  If not, what limits on the transferability of the privilege are expressed or implied in the statute?

13. Finally, consider copyright policy as applied to the privilege at issue in Tasini.  The dissent implied that the case is a tempest in a teapot because, if publishers are denied the privilege, they will just ask authors to sign their rights away.  Indeed, the dissent says that the New York Times already had begun asking its authors to do so.  Is that result inevitable, or does the majority's opinion suggest a way that authors might maintain the slight advantage that the statute gives them?  How realistic are their prospects?

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