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Professor Jay Dratler, Jr.
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Matthew Bender & Co. v. West Publishing Co.

158 F.3d 693, 48 U.S.P.Q.2d (BNA) 1545 (2d Cir. 1998)

Before Cardamone and Jacobs, Circuit Judges, and Sweet, * District Judge.  Judge Sweet dissents in a separate opinion.

* The Honorable Robert W. Sweet, of the United States District Court for the Southern District of New York, sitting by designation.

[*695] Jacobs, Circuit Judge:

Defendants-appellants West Publishing Co. and West Publishing Corp. (collectively "West") create and publish printed compilations of federal and state judicial opinions.  Plaintiff-appellee Matthew Bender & Company, Inc. and intervenor-plaintiff-appellee HyperLaw, Inc. (collectively "plaintiffs") manufacture and market compilations of judicial opinions stored on compact disc-read only memory ("CD-ROM") discs, in which opinions they embed (or intend to embed) citations that show the page location of the particular text in West's printed version of the opinions (so-called "star pagination").  Bender and HyperLaw seek judgment declaring that star pagination will not infringe West's copyrights in its compilations of judicial opinions.  West now appeals from a judgment of the United States District Court for the Southern District of New York (Martin, J.), granting summary judgment of noninfringement to Bender and partial summary judgment of noninfringement to HyperLaw.

* * * [*696] * * *


* * * [*698] * * *


West's case reporters are compilations of judicial opinions.  The Copyright Act defines a "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. § 101 (1994).  Compilations are copyrightable, but the copyright "extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work."  17 U.S.C. § 103 (1994).  Works of the federal government are not subject to copyright protection, 17 U.S.C. § 105 (1994), although they may be included in a compilation.

Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991), is the seminal Supreme Court decision on copyrights in compilations.  In Feist, the publisher of a telephone book claimed that a competitor had infringed its compilation copyright by copying some of its white pages listings.  The Court clarified the scope of a copyright in compilations: "A factual compilation is eligible for copyright if it features an original selection or arrangement of facts, but the [*699] copyright is limited to the particular selection or arrangement.  In no event may copyright extend to the facts themselves."  Because of this limitation on protectability,
    "the copyright in a factual compilation is thin.  Notwithstanding a valid copyright, a subsequent compiler remains free to use the facts contained in another's publication to aid in preparing a competing work, so long as the competing work does not feature the same selection and arrangement."
The Court expressly rejected the "sweat of the brow" doctrine, which had justified the extension of copyright protection to the facts and other non-original elements of compilations on the basis of the labor invested in obtaining and organizing the information.

Under Feist, two elements must be proven to establish infringement: "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original."  Bender and HyperLaw concede that West has proven the first element of infringement, i.e., that West owns a valid copyright in each of its case reporters.  However, as is clear from the second Feist element, copyright protection in compilations "may extend only to those components of a work that are original to the author."  The "originality" requirement encompasses requirements both "that the work was independently created . . ., and that it possesses at least some minimal degree of creativity." (emphasis added); 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.").

At issue here are references to West's volume and page numbers distributed through the text of plaintiffs' versions of judicial opinions.  West concedes that the pagination of its volumes—i.e., the insertion of page breaks and the assignment of page numbers—is determined by an automatic computer program, and West does not seriously claim that there is anything original or creative in that process.  As Judge Martin noted, "where and on what particular pages the text of a court opinion appears does not embody any original creation of the compiler."   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.  See Feist, 499 U.S. at 363, 111 S. Ct. at 1297 ("As a constitutional matter, copyright protects only those constituent elements of a work that possess more than a de minimis quantum of creativity.").

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) [*700] 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 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.


West asserts an indirect infringement theory: (i) the embedding of unprotectable volume and page numbers in a CD-ROM disc (so-called "compilation markers" or "tags"), (ii) permits a user to perceive West's arrangement of cases through the aid of a machine, and (iii) this amounts to a copy of the compilation's arrangement under § 101's definition of "copies."  Assuming for the moment that West has properly read the Act, i.e., that a copy of the arrangement is created when the arrangement can be perceived with the aid of a user and a machine, we think it is clear that the copy is not created by insertion of star pagination.

West concedes that insertion of parallel citations (identifying the volume and first page numbers on which a particular case appears) to West's case reporters in plaintiffs' products (as well as any other compilations of judicial opinions) is permissible under the fair use doctrine.  See West Reply Brief at 5 n.5 (noting "West's long-held position [*701] that parallel citation to West case reports by competitors (without additional star pagination) is a fair use under 17 U.S.C. § 107—i.e., an otherwise infringing use that, when analyzed under the § 107 factors, is deemed ‘fair'") . . .  West admitted at oral argument (as it did in the district court) that these parallel citations already allow a user of plaintiffs' CD-ROM discs to perceive West's arrangement with the aid of a machine and that plaintiffs' CD-ROM discs therefore already have created a lawful "copy" of West's arrangement on their CD-ROM discs—as West defines "copy."

Once the copy has thus been created through parallel citation—assuming that anyone would wish to avail themselves of the capability of perceiving this copy—the only incremental data made perceivable (through the aid of a machine) by star pagination is the location of page breaks within each judicial opinion.  But since page breaks do not result from any original creation by West, their location may be lawfully copied.  We therefore conclude that star pagination's volume and page numbers merely convey unprotected information, and that their duplication does not infringe West's copyright.

The opposite conclusion was reached by the district court in Oasis Publishing Co. v. West Publishing Co., 924 F. Supp. 918 (D. Minn. 1996), which reasoned that the fair-use copying of parallel citation, which could be used to perceive the arrangement of cases, did not excuse copying interior pagination, which could also be used to perceive arrangement.  It is true that copying under the fair use doctrine will not necessarily permit additional uses, and will not excuse additional copying that in the aggregate amounts to infringement.  But a compilation has limited protectability; only the original elements of a compilation (i.e., its selection, arrangement, and coordination) are protected from copying.  The insertion of parallel citations already creates a "copy" of West's arrangement (at least as West defines a copy), a copy that is permissible under the fair use doctrine.  Star pagination cannot be said to create another copy of the same arrangement. Prohibiting star pagination would simply allow West to protect unoriginal elements of its compilation that have assumed importance and value.  Accordingly, [*702] even were we to agree with West's interpretation of the Copyright Act, we would not find infringement.


But our rejection of West's position is even more fundamental.  If one browses through plaintiffs' CD-ROM discs from beginning to end, using the computer software that reads and sorts it, the sequence of cases owes nothing to West's arrangement.  West's argument is that the CD-ROM discs are infringing copies because a user who manipulates the data on the CD-ROM discs could at will re-sequence the cases (discarding many of them) into the West arrangement.  To state West's theory in the statutory words on which West (mistakenly) relies, each of the plaintiffs' CD-ROM discs is a "copy" because West's copyrighted arrangement is "fixed" on the disc in a way that can be "perceived . . . with the aid of a machine or device."  17 U.S.C. § 101 (1994).

For reasons set forth below, we conclude that a CD-ROM disc infringes a copyrighted arrangement when a machine or device that reads it perceives the embedded material in the copyrighted arrangement or in a substantially similar arrangement.  At least absent some invitation, incentive, or facilitation not in the record here, a copyrighted arrangement is not infringed by a CD-ROM disc if a machine can perceive the arrangement only after another person uses the machine to re-arrange the material into the copyrightholder's arrangement.

1.  Section 101's Definition of "Copies"

* * * Section 101 of the Copyright Act defines "copies" as follows, the emphasis supplied on terms implicated by the analysis in this case:
    "‘Copies' are material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.  The term ‘copies' includes the material object, other than the phonorecord, in which the work is first fixed."
17 U.S.C. § 101. "A work is ‘fixed' in a tangible medium of expression when its embodiment in a copy . . . is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration." Id. (emphasis added).

* * *

This definition was intended to avoid the distinctions "derived from cases such as [*703] White-Smith Publishing Co. v. Apollo Co., 209 U.S. 1 (1908), under which statutory copyrightability in certain cases [had] been made to depend upon the form or medium in which the work is fixed."  H.R. Rep. No. 94-1476, at 52 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5665; see also S. Rep. No. 94-473, at 51 (1975).  In White-Smith, the Supreme Court held that a piano roll did not infringe the copyrighted music it played because its perforations were unintelligible to the eye and therefore did not amount to a "copy" of the music (which the Court defined as "‘a written or printed record of [the musical composition] in intelligible notation'").  There was no question in that case that the work embodied in the piano roll reproduced the original work of authorship, i.e., the piece of music; the only question was whether this reproduction met the "fixation" requirement.  Thus, the definition of "copies" is intended to expand the "fixation" requirement to include material objects that embody works capable of being perceived with the aid of a machine, thereby ensuring that reproductions of copyrighted works contained on media such as floppy disks, hard drives, and magnetic tapes would meet the Copyright Act's "fixation" requirement.

That definition—intended to clarify that a work stored on a disk or tape can be a copy of the copyrighted work even if it cannot be perceived by human senses without technological aid—means that CD-ROM discs can infringe a copyright even if the information embedded upon them is not perceptible without the aid of a CD-ROM player.  In this case, however, the only fixed arrangement is the (non-West) sequence that is embedded on plaintiffs' CD-ROM discs and that appears with the aid of a machine without manipulation of the data.

To recapitulate a bit, West relies on the definition of "copies" to argue that plaintiffs' CD-ROM discs duplicate its copyrighted arrangement of cases because star pagination permits a user to "perceive" the copyrighted element "with the aid of" a computer and the FOLIO retrieval system, i.e., by manipulating the data embedded on a CD-ROM disc to retrieve the cases in the order in which they appear in the West case reporters.  West's definition of a copy, as applied to a CD-ROM disc, would expand the embedded work to include all arrangements and rearrangements that could be made by a third-party user who manipulates the data on his or her own initiative.  But the relevant statutory wording refers to material objects in which "a work" readable by technology "is fixed," not to another work or works that can be created, unbidden, by using technology to alter the fixed embedding of the work, by rearrangement or otherwise.  The natural reading of the statute is that the arrangement of the work is the one that can be perceived by a machine without an uninvited manipulation of the data.

West cites no case which supports its interpretation of § 101's definition of "copies," and every case we have found has [*704] relied upon the definition solely to ascertain whether a work has met the fixation requirement, not to determine the arrangements and rearrangements of the work fixed on the material object. . . .

2.  Substantial Similarity

* * * Under the facts of this case, the arrangement of the work on plaintiffs' CD-ROM discs is the arrangement of cases that is displayed by a CD player reading the information in the order in which it is physically embedded or "fixed" in the discs and not all possible arrangements that can be perceived through the manipulation and rearrangement of the embedded data by a third party user with a machine.

The Supreme Court in Feist emphasized that copyright protection for a factual compilation is "thin," and that a compilation containing the same facts or non-copyrightable elements will not infringe unless it "features the same selection and arrangement" as the original compilation.  Feist, 499 U.S. at 349, 111 S. Ct. at 1289 (emphasis added); see also Key Publications, Inc. v. Chinatown Today Publ'g Enters., Inc., 945 F.2d 509, 514 (2d Cir. 1991) (holding that to establish infringement, a compilation copyright holder must demonstrate "substantial similarity between those elements, and only those elements, that provide copyrightability to the allegedly infringed compilation").  To determine whether two works contain a substantially similar arrangement, courts compare the ordering of material in the two works, finding infringement only when both compilations have featured a very similar literal ordering or format.  See, e.g., Lipton v. Nature Co., 71 F.3d 464, 472 (2d Cir. 1995) (finding infringement of arrangement when of 25 terms contained in copyrighted work, 21 are listed in same order on allegedly infringing work); Worth v. Selchow & Righter Co., 827 F.2d 569, 573 (9th Cir. 1987) (holding that alphabetical arrangement of factual entries in a trivia encyclopedia was not copied by a copyrighted game that organized the factual entries by subject matter and random arrangement on game cards); . . . [*705] . . .  "If the similarity concerns only noncopyrightable elements of [a copyright holder's] work, or no reasonable trier of fact could find the works substantially similar, summary judgment is appropriate."  Williams v. Crichton, 84 F.3d 581, 587 (2d Cir. 1996) (internal quotation marks and citations omitted).

We agree with plaintiffs and amicus United States that West fails to demonstrate the requisite substantial similarity.  West's case reporters contain many fewer cases than plaintiffs' CD-ROM discs, and are arranged according to classification such as court, date, and genre (opinions, per curiam opinions, orders, etc.), subject to certain exceptions characterized by West as features of originality, whereas plaintiffs organize their cases simply by court and date.  Comparison of the works reveals that cases that appear adjacent in the West case reporters are separated on plaintiffs' products by many other cases; and even if these other cases are disregarded, the West cases included on plaintiffs' products are not in an order at all resembling West's arrangement.

Star pagination (in addition to revealing the page location of the text of judicial opinions) may incidentally reveal to the reader how the reader could create a copy of West's arrangement by various computer key operations; but by the same token, if the CD-ROM discs were published on paper in the same order as the cases are embedded in the CD-ROM disc, a reader so minded could assemble a "copy" of the West arrangement by use of scissors. . . .  

True, CD-ROM technology is different from paper, for as West points out, the arrangement of judicial opinions in a CD-ROM disc does not correspond necessarily to how the information will be displayed or printed by the user, because the file-retrieval system allows users to retrieve cases in a variety of ways.  See Robert C. Denicola, Copyright in Collections of Facts: A Theory for the Protection of Nonfiction Literary Works, 81 Colum. L. Rev. 516, 531 (1981) ("It is often senseless to seek in [electronic databases] a specific, fixed arrangement of data.").  But having rejected West's argument under § 101, we can conclude that the arrangement of plaintiffs' work is the sequence of cases as embedded on the plaintiffs' CD-ROM discs and as displayed to the user browsing through plaintiffs' products.  That sequence is not substantially similar to West's case reporters. There is no evidence that Bender and HyperLaw's case-retrieval systems allow a user to browse the cases in the West [*706] arrangement without first taking steps to create that arrangement.  Thus, an actionable copy of West's sequence of cases, i.e., a work with a substantially similar arrangement fixed in a tangible medium (probably a print-out of the cases), could be created by a user of the CD-ROM discs, but only by using the file-retrieval program as electronic scissors.  We cannot find that plaintiffs' products directly infringe West's copyright by inserting star pagination to West's case reporters.

3.  Contributory Infringement

Notwithstanding the absence of substantial similarity, a database manufacturer may be liable as a contributory infringer (in certain circumstances) for creating a product that assists a user to infringe a copyright directly.  West has hypothesized that users of Bender and HyperLaw's products, using star pagination and the search functions of the CD-ROM products, will retrieve and print cases in the order in which they appear in West's case reporters.  A CD-ROM disc user who replicated the West compilation in that way would be an infringer. But West has failed to identify any primary infringer, other than Mr. Trittipo, West's counsel[, who demonstrated how such a replication could be made].  See Cable/Home Communication Corp. v. Network Prods., Inc., 902 F.2d 829, 845 (11th Cir. 1990) ("Contributory infringement necessarily must follow a finding of direct or primary infringement."); 2 Paul Goldstein, Copyright § 6.0 (1996) ("For a defendant to be held contributorily or vicariously liable, a direct infringement must have occurred.").

Assuming there is a class of primary infringers, then a party "who, with knowledge of the infringing activity, induces, causes, or materially contributes to the infringing conduct of another, may be held liable as a ‘contributory' infringer."  See Gershwin Publ'g Corp. v. Columbia Artists Management, Inc., 443 F.2d 1159, 1162 (2d Cir. 1971).  Two types of activities that lead to contributory liability are: (i) personal conduct that encourages or assists the infringement; and (ii) provision of machinery or goods that facilitate the infringement.  West argues that Bender and HyperLaw's sale of their CD-ROM products falls within the second category.

However, as amicus United States notes, the provision of equipment does not amount to contributory infringement if the equipment is "capable of substantial noninfringing uses," including uses authorized under the fair use doctrine.  See Sony Corp. of Amer. v. Universal City Studios, Inc., 464 U.S. 417, 442, 104 S. Ct. 774, 788-89, 78 L. Ed. 2d 574 (1984). * * *

The arrangement of cases in the West case reporters, however meticulous and thoughtful, is of small assistance to the primary use of these products—searching for cases, and retrieval.  After all, the useful order of access is almost always determined by the research goal of each user rather than the publisher's sequencing (a compilation of law cases being not much like a musical medley or a sonnet sequence).  And the primary use of West's pagination in plaintiffs' products is to allow the user to refer to the location of a particular text within the West case reporters as has become standard practice in the legal community.  West concedes that use of its volume and page numbers for pinpoint citation purposes is at least a fair use (if it even amounts to actionable copying).  There is no evidence that plaintiffs have encouraged the users of their products to reproduce West's arrangement.  In fact, the CD-ROM products provide no easy means for using the star pagination to create a substantially similar arrangement; a user must retrieve each case, one at a time, in the order in which they appear in the West volume, and then print each one.  What customer would want to perform this thankless toil?  We conclude that plaintiffs' products have substantial, if not overwhelming, noninfringing [*707] uses, and that the plaintiffs are not liable as contributory infringers.

* * *  [W]e think the "substantial noninfringing use" test is as applicable here as it was in Sony.  The Supreme Court applied that test to prevent copyright holders from leveraging the copyrights in their original work to control distribution of (and obtain royalties from) products that might be used incidentally for infringement, but that had substantial noninfringing uses.  See . . . 2 Goldstein, supra § 6.1.2 ("To hold that the distribution of such materials or equipment constitutes contributory infringement, and thus to bring them within the scope of the copyright owner's control, may enable the copyright owner to influence the price and availability of goods that are not directly connected to its copyrighted work."). The same rationale applies here: West has a thin copyright in its compilations, which it seeks to leverage to protect its pagination (an element of its compilation that is unprotected altogether) and thereby to foreclose (or draw royalties from) CD-ROM products that might be used incidentally to replicate West's arrangement of cases, but that have substantial, predominant and noninfringing uses as tools for research and citation.


We differ with the Eighth Circuit's opinion in West Publishing Co. v. Mead Data Central, Inc., 799 F.2d 1219 (8th Cir. 1986).  In that case, LEXIS (an on-line database provider) announced plans to star paginate its on-line version of cases to West case reporters.  West claimed that the star pagination would allow users to page through cases as if they were reading West volumes, and in that way copied West's arrangement of cases.  The court held that "West's arrangement is a copyrightable aspect of its compilation of cases, that the pagination of West's volumes reflects and expresses West's arrangement, and that MDC's intended use of West's page numbers infringes West's copyright in the arrangement."  Even if it was not "possible to use LEXIS to page through cases as they are arranged in West volumes," the court said that insertion of comprehensive star pagination amounted to infringement:
    "Jump cites to West volumes within a case on LEXIS are infringing because they enable LEXIS users to discern the precise location in West's arrangement of the portion of the opinion being viewed. . . .
    "With [LEXIS's] star pagination, consumers would no longer need to purchase West's reporters to get every aspect of West's arrangement.  Since knowledge of the location of opinions and parts of opinions within West's arrangement is a large part of the reason one would purchase West's volumes, the LEXIS star pagination feature would adversely affect West's market position.  ‘[A] use that supplants any part of the normal market for a copyrighted work would ordinarily be considered an infringement.' S. Rep. No. 473, 94th Cong., 1st Sess. 65 (1975) . . . ." [*708]

Id.at 1227-28; see also Oasis Publ'g Co. v. West Publ'g Co., 924 F. Supp. 918, 922-25 (D. Minn. 1996) (holding that (i) West Publishing Co. had not been overruled by Feist's disavowal of the "sweat of the brow" doctrine, and (ii) that even if it had, "the internal pagination of [West's reporter] is part of West's overall arrangement, and similarly protected").

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 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.

Sweet, D.J. dissenting from majority opinion:

I respectfully dissent.

* * * By concluding that page numbers in the context of the West citation system are facts rather than an expression of originality the majority permits the appellee Bender and the intervenor Hyperlaw to appropriate the practical and commercial value of the West compilation.

* * *
The West page numbers which are inserted by appellee Bender in the text of each of [*709] its CD-ROM disks by star pagination result from the totality of the West compilation process which includes its concededly original and copyrightable work, i.e. attorney description, headnotes, method of citation and emending of parallel or alternate citations.  These result in a compilation work with page numbers assigned mechanically.  The West page numbers and the corresponding Bender and Hyperlaw star pagination are the keys which open the door to the entire West citation system which as the majority noted is an accepted, and in some instances, a required element for the citation of authorities.

* * * By characterizing star pagination as a fact, rather than as an essential part of the selection or arrangement[,] the majority deprives the West pagination of its originality and consequent copyright protection.

* * * [*710]  Here the pagination results from West's arrangements, selections, syllabi, headnotes, key numbering, citations and descriptions.  The page number, arbitrarily determined, is the sole result of the West system, appears nowhere else, and is essential to its coordinated method of citation.  It is, so to speak, an original fact resulting from West's creativity. * * *

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