Oasis Pub. Co., Inc. v. West Pub. Co.
| Decision Date | 17 May 1996 |
| Docket Number | Civil No. 3-95-563. |
| Citation | 924 F. Supp. 918 |
| Parties | OASIS PUBLISHING COMPANY, INC., Plaintiff, v. WEST PUBLISHING COMPANY, Defendant. |
| Court | U.S. District Court — District of Minnesota |
COPYRIGHT MATERIAL OMITTED
Bruce Howard Little, Janell M. Gabor, Popham Haik Schnobrich & Kaufman, Minneapolis, MN, Jose I. Rojas, Broad & Cassel, Miami, FL, for Oasis Publishing Company, Inc.
Joseph Myles Musilek, Monica M. McCarty, Schatz Paquin Lockridge Grindal & Holstein, Minneapolis, MN, for West Publishing Company.
This matter is before the Court upon West Publishing Company's (West's) Motion for Partial Summary Judgment and on Oasis Publishing Company, Inc.'s (Oasis') Cross-Motion for Partial Summary Judgment. For the following reasons the Court grants West's motion and denies Oasis' motion.
Oasis Publishing Company, Inc., (Oasis) publishes the statutes and cases of several states in Compact Disc Read Only Memory (CD-ROM) format. Among other works, West Publishing Company (West) publishes case reports of both state and federal courts in print in the National Reporter System, in its on-line computer database service (WESTLAW) and also in CD-ROM format. Both parties are private, for-profit corporations.
West publishes the Southern Reporter, a regional reporter that includes state court appellate decisions from Alabama, Florida, Louisiana and Mississippi. The Southern Reporter is a part of West's National Reporter System. West also publishes Florida Cases, in which it reprints Florida decisions as they appear in the Southern Reporter with related preliminary tables and digest material. This material includes case synopsis, syllabi, digest key numbers, index digests, and tables of statutes. The parties agree that West has a copyright in this material and it is not the subject of this dispute. Instead of having its own pagination, the Florida Cases reporter is printed using the volume numbers and pagination of the Southern Reporter. As a result, pagination in Florida Cases is not consecutive, but has numeric gaps where Alabama, Louisiana and Mississippi cases would appear in the Southern Reporter. In other words, the Florida Cases reporter is essentially the Southern Reporter with non-Florida cases omitted. Thus, when citing to Florida Cases one actually cites to the Southern Reporter.1
The history of the Florida Cases and the Southern Reporter bears on this case. West began publishing the Southern Reporter in 1887 as part of its National Reporter System, including decisions of Florida courts. Prior to 1948, the State of Florida privately published and sold the decisions of Florida courts in its Florida Reports. In 1948, the same year Florida ceased publishing the Florida Reports as the official reporter of its appellate decisions, the Florida Supreme Court issued a notice declaring the Southern Reporter the "official publication of the opinions and decisions of the Supreme Court of Florida." The following year West began publishing Florida Cases. In 1972 West extended coverage of Florida Cases back to 1941, the year the Southern Reporter began its second series. Therefore, coverage of the Florida Cases now corresponds to Volume 1 of Southern Reporter, Second Series.
Florida Statute 25.381, enacted in 1963, provides, "The reports of the opinions of the Supreme Court and the district courts of appeal shall be known as Florida Cases." The Bluebook of citation provides that in documents submitted in Florida state courts, one should cite to Florida Reports for the years 1846-1948 and to Southern Reporter from 1886 to the present. The Bluebook, a Uniform System of Citation 178 (15th ed. 1991). The Bluebook does not direct citation to, or even mention, the Florida Cases.
The State of Florida recognizes Florida Cases as Florida's official reporter. From at least 1957 to 1987, the contracts between Florida and West have stated in part, "The Synopsis, Syllabi, and Key Number Digest classifications, Index Digest, Table of Statutes Construed ... included in the volumes of Florida Cases, are subject to copyright and will be copyrighted." Beginning in 1987, the parties added "and arrangement of cases" to this sentence.
Before 1982, Florida Cases was published only in bound volume format. From 1982 through the present, Florida Cases has been published in weekly advance sheets. Several advance sheets combine to form a bound volume. The Southern Reporter also is published first in weekly advance sheets, then in bound volumes. Each advance sheet and bound volume of Florida Cases and Southern Reporter contains a copyright notice. West holds Certificates of Registration of Copyright for each volume of the Southern Reporter, but does not obtain separate copyright registrations for bound volumes of Florida Cases. So before 1982, West did not obtain a copyright registration for either advance sheets or bound volumes of Florida Cases. West's Certificates of Registration do not identify "page numbers" as the subject of the claim of copyright.
"Parallel citation" in a published case is the citation to the first page of another publisher's version of the same case. "Star pagination" is a feature whereby a published case includes not only the parallel citation, but also throughout the case includes the internal page breaks from another publisher's version of the case.
Oasis has announced its intent to publish reports of Florida court decisions on CD-ROM, having both parallel citation and star pagination to Florida Cases. Pagination to Florida Cases, of course, is pagination to the Southern Reporter, since pagination in the Florida Cases intentionally mirrors the pagination of the Southern Reporter. Oasis intends to obtain a set of Florida Cases in bound form and send the volumes to a service in order to translate the Florida decisions into computer data, ultimately to convert the decisions into CD-ROM format and market the CD-ROM product. Oasis does not intend to include the digest material (case synopsis, syllabi, etc.) authored by West. While West concedes that use of parallel citation is a fair use under the Copyright Act, it objects to Oasis' planned use of star pagination to Florida Cases/Southern Reporter.
Oasis sued West in the Southern District of Florida. In its Complaint, Oasis alleged: in Count I that West created and maintains an illegal monopoly in violation of 15 U.S.C. § 2; in Count II that West has created a dangerous probability of monopolization in violation of 15 U.S.C. § 2; in Count III that West's alleged monopoly also violates Florida Statute § 542.19; in Count IV that West attempts to create a monopoly under Florida Statute § 542.22; in Count V that West's refusal to permit Oasis to star paginate violates various Florida public records statutes; and in Count VI that the Court should issue a declaratory judgment that West has no federal copyright protection to page numbers in the Southern Reporter, that Oasis does not infringe any copyright in West by referring to the page numbers, and that Florida public records law makes unenforceable any copyright in the page numbers in the Southern Reporter.
West moved to dismiss all counts and later to transfer to this Court. Without providing its analysis, the Southern District of Florida transferred the case here, and did not rule on West's motion to dismiss. Once here, after further discovery, West now moves for partial summary judgment as to Counts V and VI. Oasis cross-moves for partial summary judgment, seeking a declaratory judgment that West has no copyright in the arrangement of the decisions in the Florida Cases, or that the proposed star pagination by Oasis is a "fair use", and that West has violated Florida Statutes chapter 119. The parties have agreed to defer consideration of the merits of the federal and Florida antitrust claims pending disposition of the copyright claims at issue here.
Summary judgment is appropriate if there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Unigroup, Inc. v. O'Rourke Storage & Transfer Co., 980 F.2d 1217, 1219-20 (8th Cir.1992). The court determines materiality from the substantive law governing the claim. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). Disputes over facts that might affect the outcome of the lawsuit according to applicable substantive law are material. Id. A material fact dispute is "genuine" if the evidence is sufficient to allow a reasonable jury to return a verdict for the non-moving party. Id. at 248-49, 106 S.Ct. at 2510-11.
This dispute poses several issues: Does West have a copyrightable interest in the arrangement of the decisions in the Southern Reporter and Florida Cases? If so, does Oasis' proposed star pagination infringe the copyrightable elements of West's arrangement? Or, is the star pagination a "fair use" of West's copyrights? Finally, does the "official" designation of Florida Cases or the Southern Reporter, or Florida Public Records Act render West's purported copyright unenforceable?
Oasis argues that West has no copyright protection in the arrangement of the Southern Reporter, that even if it did, West's copyright does not protect the internal pagination of the cases reported in the Southern Reporter, and finally, that no such copyright protection reaches the internal pagination of the Florida Cases. West does not argue it has a copyrightable interest in the internal page numbers per se, but asserts it has a copyright interest in the arrangement of cases in the reporters.
As a preliminary matter, Oasis recognizes that a compilation may be entitled to copyright protection, but argues, despite West's contention, that the real issue is whether West can have a copyright...
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