West Pub. Co. v. Mead Data Cent., Inc.

• Decision Date: 03 October 1985
• Docket Number: Civ. No. 4-85-931.
• Citation: 616 F. Supp. 1571
• Parties: WEST PUBLISHING CO. v. MEAD DATA CENTRAL, INC.
• Court: U.S. District Court — District of Minnesota

616 F. Supp. 1571

WEST PUBLISHING CO. v. MEAD DATA CENTRAL, INC.

Civ. No. 4-85-931.

United States District Court, D. Minnesota, Fourth Division.

October 3, 1985.

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Vance K. Opperman, Diane M. Helland, Joseph R. Kernan, Jr., Opperman & Paquin, Minneapolis, Minn., for plaintiff.

John D. French, Duane W. Krohnke, John F. Beukema, Faegre & Benson, Minneapolis, Minn., for defendant.

MEMORANDUM ORDER

ROSENBAUM, District Judge.

In this action, plaintiff West Publishing Company (West) alleges copyright infringement by defendant Mead Data Central, Inc. (MDC) on the basis of MDC's proposed introduction of "star pagination" keyed to West's reports in its LEXIS legal research system. West is before the Court seeking a preliminary injunction enjoining this introduction pursuant to Rule 65 of the Federal Rules of Civil Procedure (F.R.Civ.P.). MDC has answered, and moves for dismissal of all counts, alleging plaintiff's failure to state a claim upon which relief may be granted, pursuant to Rule 12(b)(6), F.R. Civ.P. The Court heard oral argument on September 17, 1985. Based upon the files, briefs, affidavits, arguments of counsel, and all other matter submitted, the Court grants plaintiff's motion for preliminary injunction and denies defendant's motion for dismissal.

Background

For all purposes relevant to these motions, West is engaged in the business of collecting, selecting, compiling and reporting the judicial opinions of state and federal courts. West arranges these opinions into a series of books collectively known as the "National Reporter System" publications. Each case report West publishes (West report) is assigned to one of the individual series within the overall National Reporter System. This is done on the basis of court and/or subject matter of the opinion. West reports are further categorized, arranged and assigned to a volume within the series. The volumes and pages are then sequentially numbered to allow detailed reference to West's reports. The exact location of each West report in the overall arrangement of case reports, can be found ("cited") by stating the volume number, series designation, and page number of the report. West represents that upon completion of each volume it registers a copyright claim with the Register of Copyrights and receives a separate Certificate of Registration. (See, Affidavit of Arnold O. Ginnow; Affidavit of Darrin Pepper.) Copies of the Certificates of Registration were provided during argument of the present motion. For purposes of this decision, the validity of the documents are not in question.

The Court takes notice of West's success in its field. Judicial decisions are routinely identified by the names of the parties and the West citation, i.e. volume numbers, series designation, and first page of the opinion.

MDC owns and operates LEXIS, a computer-assisted legal research tool containing decisions of state and federal courts (LEXIS reports) in its database. The judicial opinions stored in the LEXIS database note the citations to the first page of the judicial opinions as reported in West's National Reporter System. This is done by displaying at the top of the LEXIS computer screen a West series designation, volume number, and page number on which the opinion begins.

In June of 1985, MDC announced its plan to include "star pagination" within the text of LEXIS reports by October of 1985. MDC's announcement and subsequent advertisements of this new feature indicate that star pagination will consist of "the addition of the official page cites to the full text of online case law material." (See defendant's Exhibit E.) Star pagination was acknowledged at oral argument to be the insertion of numbers from West's National Reporter System publications within the body of LEXIS reports. This will permit the LEXIS user to determine the West page number coinciding with the text of a LEXIS report taken from the LEXIS screen or computer printout, without the physical necessity of referring to the volume of the National Reporter System publication in which the report appears.

West claims that MDC's intended star pagination constitutes an appropriation of West's comprehensive arrangement of case reports in violation of the Copyright Revision Act of 1976, 17 U.S.C. § 101 et seq. On this basis, West seeks this preliminary injunction to enjoin MDC's alleged infringement.

Discussion

The factors to be considered in the decision to grant or deny a preliminary injunction are set forth by the Eighth Circuit in Dataphase Systems Inc. v. C.L. Systems, Inc., 640 F.2d 109 (8th Cir.1981). Dataphase mandated an analysis of the probability of the movant's success on the merits; the threat of irreparable harm to the movant if the preliminary injunction is denied; the balance between this harm and the harm the preliminary injunction, if granted, would cause to the other party; and the public interest in granting or denying the preliminary injunction. No one of the above factors determines whether a preliminary injunction should issue. Rather, the equities must be balanced to achieve a just determination. Id. at 113, 114.

I. West's probability of success on the merits.

West's probability of success on the merits at trial depends on the validity of its copyright infringement claim. West claims that its National Reporter System publications are protected by copyright. At the hearing of its motion West presented certificates of copyright registration for each of its reporter volumes. A copyright registration generally constitutes prima facie evidence of a valid copyright. 17 U.S.C. § 410(c); Eckes v. Card Prices Update, 736 F.2d 859, 861 (2nd Cir.1984). Defendant has the burden of overcoming this presumption. Southwestern Bell T. Co. v. Nationwide Ind. Dir. Serv., Inc., 371 F.Supp. 900, 905 (W.D.Ark.1974).

Neither party questions that some parts of West's National Reporter System publications are appropriate subjects for copyright protection. The focus is on which portions of those publications are under the protection of the copyright laws. West claims that its arrangement of cases in its volumes and the page numbers it sets forth can be copyrighted. MDC denies West's claim. The Court finds two cases of particular interest and importance in providing an analytic framework in which to consider the claims of the parties. They are Callaghan v. Myers, 128 U.S. 617, 9 S.Ct. 177, 32 L.Ed. 547 (1888) and Banks Law Pub. Co. v. Lawyers Co-operative Pub. Co., 169 F. 386 (2nd Cir.1909). It is to these two cases that the Court must first turn.

In Callaghan, the plaintiff, Meyers, became the owner of several volumes of the reports of the Supreme Court of the State of Illinois. These volumes were prepared by and acquired from the official reporter of the Supreme Court of the State of Illinois. The volumes contained not only the opinions of the Court, but also considerable matter original to the reporter including the title page, table of cases, headnotes, statements of facts, arguments of counsel, indices, etc. The Court held that all the matter in the law reports, excluding the opinions of the Court, were the appropriate subject matter of copyright protection. Callaghan, 128 U.S. at 647, 9 S.Ct. at 184.

The Court in Callaghan specifically delineated the copyrightable portions of the law reports, saying:

Such work of the reporter, which may be the lawful subject of copyright, comprehends ... the order of arrangement of the cases, the division of the reports into volumes, the numbering and paging of the volumes, the table of cases cited in the opinions, (where such table is made,) and the subdivision of the index into appropriate, condensed titles, involving the distribution of the subjects of the various headnotes, and cross-references, where such exist. (Emphasis added).

Callaghan, 128 U.S. at 649, 9 S.Ct. at 185.

It is clear the Supreme Court found that under appropriate circumstances pagination and arrangement ascend to a level appropriate for copyright protection. If the arrangement of cases and the paging of the book depend simply on the will of the printer, or the order in which the cases have been decided, or upon other accidental circumstances, they of course are not subject to copyright protection because they then involve no labor, talent, or judgment. Callaghan, 128 U.S. at 661, 662, 9 S.Ct. at 189, 190.

West's comprehensive arrangement of cases satisfies the Supreme Court's Callaghan test of labor, talent, and judgment. West collects cases from every state and federal court in this country. West does not then simply take any cases it has on hand, put them together in any order, and bind in a hardback volume. They first separate state court decisions from federal court decisions. The state court decisions are further subdivided into regions and placed in a regional reporter appropriate for the case in question. The federal decisions are divided at the district court and appellate court level. District court decisions are further subdivided according to the subject matter of the decision be they bankruptcy, federal rules or other miscellaneous matter. This comprehensive process involves considerable planning, labor, talent, and judgment on West's part.

For its proposition that the arrangement and pagination of West's National Reporter System publications are not appropriate subject matter for copyright protection, MDC relies primarily on Banks Law Pub. Co. v. Lawyers Co-Operative Pub. Co., 169 F. 386 (2nd Cir.1909). In Banks, the plaintiff was the successor-in-interest to the official reporter of the United States Supreme Court. He engaged in the business of printing, publishing, and selling the Court's decisions as compiled, edited and arranged by the official reporter. The defendant was in the business of printing, publishing and selling a competing edition of the Supreme Court's decisions. Plaintiff claimed that defendant's...