West Publishing Company v. Mead Data Central, Inc.

FAGG, Before ARNOLD and Circuit OLIVER,* Judges, and Senior District Judge.

ARNOLD, Judge. Circuit Central, (MDC) Data Mead Inc. appeals preliminary from a injunction issued District Court for the District of Min- copyright-infringement nesota in a action brought by Publishing West Company (West). West’s claim is based MDC’s proposed pagination,” introduction of “star keyed reports, case into the LEX- system computer-assisted IS legal re- search.

For than century, more West has been compiling reporting and opinions of state publishes and federal courts. West these opinions in a series of books known as the Reporter System.” “National Before publishes opinion, an West checks the accu- racy of and statutory case citations in the opinion citations, parallel and adds pre- * Oliver, Rosenbaum, The Hon. John W. Senior United States The Hon. James M. United States Judge District for the Western District Mis- Judge for District the District Minnesota. souri, sitting by designation. opinion portion of an viewed on synopsis

pares headnotes opinion arranges physically referring in West’s opinion, LEXIS ever without assigns its style format. West then publication opinion in which the West to one of the individ- report of each appears. Reporter System, in the National ual series announcement, response In to MDC’s Reporter, Series such as Federal Second action, brought claiming, this inter West assignment Reporter; Bankruptcy alia, Pagination LEXIS Star Fea- the court and/or the based compre- appropriation ture is Next, assigns opinion. West matter of the of case hensive vio- series, further to a volume Copyright Act lation of the arranges categorizes the cases within sought, U.S.C. 101-810. West and was §§ volume, prepares materi- additional injunction. granted, preliminary als, cases, for as indices and tables of Central, v. Mead Data Publishing Co. pages are num- each volume. Volumes Inc., (D.Minn.1985). F.Supp. 616 1571 precise ref- sequentially to facilitate bered District held that there is a substan- proper reports; citing the erence to West arrangements tial likelihood that West’s of name, number, page series volume protected by copyright reports case of exact location communicates number law, copying pag- of that MDC’s thereof, portion or a within report, a West copyright infringement, ination constitutes System. rep- Reporter National star is not a that MDC’s completion each vol- upon resents copyrighted use 616 fair of West’s works. ume, with the registers a claim it F.Supp. at 1575-1581. Court further a

Register Copyrights receives Cer- held of the harms to West Registration the volume. balance tificate in granting deny- and to involved MDC owns, operates developed, MDC weighed ing preliminary injunction a in fa- LEXIS, legal- computer-assisted, a on-line granting injunction, and that the vor first in 1973. research service marketed in- public preliminary also favored interest Sys- LEXIS, Reporter National like West’s F.Supp. junctive relief. 1581-1583. fed- tem, the decisions state and reports We affirm. inception, eral LEXIS’s MDC courts. Since computer on the first screen has included report LEXIS case the citation each ANALYSIS report opin- page the first of West’s preliminary injunction Whether that citation to the ion. West concedes (1) should turns four factors: issue noninfringing page of its

first probability the movant will suc 107, so these under 17 U.S.C. “fair use” § merits; (2) irrepa the threat of ceed are not at issue here. citations prelimi should rable harm to the movant 24,1985, MDC announced that On June (3) denied; nary injunction be the balance pagination” planned add “star harm and the between this harm LEXIS data- text of stored injunction will cause to the granting the service, named the LEXIS base. This new (4) public parties litigant; and other Feature, avail- Pagination was to be Star L Dataphase Systems, Inc. v. C interest. by September or Octo- LEXIS users able to (8th 640 F.2d Cir. Systems, Inc. This feature would insert ber of 1985. 1981) (en banc). of these None factors Re- from West’s National rather, determinative; itself is each body porter publications into the System must be balanced to deter the four factors “pin- reports, providing “jump” or LEXIS away they tilt toward or mine whether point” in West’s citations to the location granting preliminary injunction. reporter LEXIS. of the material viewed on may not appeal, On we disturb Thus, Pagination LEXIS Star Fea- with the equities balancing of the District Court’s ture, would be to deter- LEXIS users able determi clearly erroneous factual corresponding absent a page number mine the West nation, law, an error of or an abuse of thorship fixed in tangible medium of discretion. O’Connor v. Peru State Col expression.” 17 102(a). U.S.C. The stan § (8th lege, Cir.1984); 728 F.2d dard for “originality” is minimal. It is not Corp. Edudata v. Computers, necessary that the work be novel or Scientific Inc., (8th Cir.1984) 746 F.2d (per unique, but that the work have its curiam). origin with the author —that indepen it be dently created. Telephone Hutchinson I. Co. v. Co., Fronteer Directory 770 F.2d principal MDC’s contention here is that (8th Cir.1985). Little more is in there is no likelihood that West will suc- volved in requirement prohibi than “a ceed on the merits of its claim. tion of actual copying.” Bell & Co. Alfred readily portions MDC concedes that Arts, Catalda Fine 191 F.2d 102-103 Reporter System National publica- (2d Cir.1951); Nimmer, see also M. 1 Nim here, tions that are not at issue such as mer on Copyright (1985). 2.01 § West, prepared by headnotes merit copy- To original be the work of an au right protection.2 Yet, MDC maintains thor, a work must product be the any aspects some reporters of West’s affect- “creative intellectual or aesthetic ed labor.” Pagination LEXIS Star Feature Goldstein v. California, 546, 561, copyrightable. are not The dominant chord 2303, 2312, argument (1973). L.Ed.2d 163 MDC’s is that West claims However, very “a slight degree mere numbers. MDC labor[,] any ... almost event, ingenuity adds that in any in selec whether West tion, expression, claims combination or copyright in its arrangement case no matter or crude, simply obvious, how pagination, in its humble or West’s will be suffi claim must cient” fail because to make the arrangement copyrightable. neither case work nor M. Nimmer, pagination 1 qualify can ever Nimmer original Copyright, as the supra, id., work 1.08[C][1]; of an author. Even were 1.06. possi- this See § § Rockford ble, on, goes Map MDC West’s Publishers v. arrange- Directory case Service Com pagination pany 145, (7th ment and 768 do F.2d Cir.1985) fact meet 148-149 (map this standard. Finally, Agriculture based on Department MDC contends that photographs even were arrangement legal descriptions West’s of cases is copy protected rightable, by copyright, proposed no matter quickly use how or of with page West’s what produced), numbers in little effort it reports is LEXIS cert. de — nied, -, 806, would not constitute U.S. infringement. 106 S.Ct. 88 (1986); L.Ed.2d 781 Universal Athletic agree We do not with MDC that West’s Salkeld, 904, Sales (3d Co. v. 511 F.2d claim simply here is copyright one for in its Cir.) (“even a creativity modicum of may Instead, numbers. we concur in the suffice protected”), for a work to be cert. District Court’s conclusion that West’s ar- denied, 863, 122, 423 U.S. 96 S.Ct. rangement copyrightable is a aspect of its (1975). L.Ed.2d 92 cases, compilation of West’s volumes expresses reflects and argues MDC arrange that case arrangement, and that MDC’s in- per uncopyrightable ment is se because it tended use of West’s in- However, cannot meet these standards. fringes copyright arrange- in the apparent on the Copyright face of the ment. Act possible that it is arrangement for an Copyright A. Protection pre-existing indepen materials to be an Copyright provides

The copy Act dently produced work of intellectual cre right protection “original for Act, works of au ation. Section 103 of the 17 U.S.C. any copy- (1834) ("no West does not and could not claim reporter L.Ed. 1055 ... can have right judicial opinions copyright opinions themselves. See in the written delivered Peters, 591, 668, 591, court”). Wheaton v. 8 Pet. 33 U.S. and statements of facts. subject matter such as headnotes 103, “the establishes § Nonetheless, Callaghan’s find discus- compilations and we includes copyright ... copyrightability of case ar- sion of the “compilation” A is de- derivative works.” Supreme rangements instructive. in the Act as:

fined reporter that while the could Court noted as- by the collection and formed a work them- claim no or of sembling preexisting materials 185, selves, 9 S.Ct. at 128 U.S. selected, coordinated, or data that Peters, citing v. Pet. Wheaton way that the result- arranged in such a (1834), 591, 668, 8 L.Ed. 1055 he origi- constitutes an ing work as a whole portions of his re- could other authorship. nal work that, ports. Mr. Justice Blatchford wrote arrangement opin- 101. An 17 U.S.C. § headnotes, in addition to statements than a reporter, no less ions in case tables, facts, counsel, arguments of arrangement of Shake- compilation and and, indices, sonnets, qualify can for speare's [sjuch reporter, work of the which protection. copyright, com- lawful this view in Calla- We find prehends ... the order 177, 32 ghan Myers, U.S. reports of the of the the division (1888), indicates that L.Ed. 547 volumes, numbering paging into copy- opinions is original volumes, the of the cases table product of rightable it is the whenever (where opinions, cited in the such table labor, talent, plaintiff judgment. made,) and the subdivision of the index copyrights held for sever- Myers, titles, condensed involv- appropriate, into Supreme al volumes ing subjects of the the distribution of the rights these purchased of Illinois. He had head-notes, cross-references, various Court, reporter of that from the official exist. where such prepared the volumes. In addition who had Callaghan, 128 U.S. at 9 S.Ct. at con- opinions, to the Court’s the volumes ours). (emphasis of material tained a substantial amount however, including opinion, Later in its when original reporter, head- cases, facts, considering Myers notes, several volumes statements of tables infringed by indices, brought in- the defendants had Myers an claimed and so on. arrangement pag copying their case and fringement against publishers the action ination, approval quoted the with the reporter Supreme Illinois Court competing Court, which stated: copied from of the Circuit opinions Court who had Myers’s reports by the cases, material created Undoubtedly, in some where are arrange- reporter, official the as well as labor, talent, judgment, the clas involved pagination ment and of some volumes. subjects in disposition and sification Myers’s copyrights The trial court found copyright. entitle it to a But book infringed. Supreme valid and The Court paging arrangement of law cases and the affirmed, holding Myers that the fact that may depend simply on the of the book sought protect prepared by material reporter, or printer, of the will of claim, reporter official court did not bar his the cases publisher, or the order which legislation since Illinois re- no forbade the decided, upon other acciden have been porter to obtain a for matter that tal circumstances. product

was of his intellectual labor. quoting at 128 U.S. at S.Ct. 646-647, at 184. 128 U.S. at (C.C. Fed. Myers Callaghan, N.D.Ill.1883). Evaluating out, the volumes points treatment of As MDC issue, concluded that the Circuit Court arrangement pagination case and Calla- in arrangement pagination case the Court’s deci- their ghan was not crucial to labor; found the little it therefore sion, made volved since defendants had also arrange- volumes, case copying of the portions Myers’s defendants’ use of other Myers’s pagination volumes each volume what ment with he considered to be infringement, independent but a important the most cases on hand and to to be considered connection with matter group cases on the same matter parties’ reporters. similarities other together. responded The Banks teaching Callaghan The with re- noting reporter the official was re- spect to the before us not come issues does quired by prepare reports statute to through clarity. with unmistakable But as Supreme decisions, gather them into it, Callaghan read we establishes least volumes, and have printed them and pub- excluding there per is no se rule case lished. To duty, fulfill this the court con- arrangement protection, tinued, reporter necessity pro- must of instead, arrange- each case the an orderly arrangement vide of cases and light ment must be evaluated in of the pagination for the volumes. The court con- originality and intellectual-creation stan- cluded that “no valid copyright for these dards. elements or details alone can be secured to proposition arrange- For the that case reporter.” official 169 Fed. at 390. cannot, pagination ment as a matter of Although acknowledged trend “[t]he law, originality meet and intellectual-cre- of some of the decisions and of the text- requirements, heavily ation MDC relies writers arrangement indicates that an Publishing Banks Law v. Law- Co. the material matter a book be the Co., Co-Operative yer’s Publishing 169 subject copyright,” of a valid the court (2d Cir.1909) curiam), (per appeal Fed. that, rejoined by stipulation, dismissed [A]ny principle upon which such cases (1911). plain- S.Ct. 56 L.Ed. 636 The are based thought applicable is not tiff Banks was the successor to the arrangement where the of the copyrights reporter of an official of the though involving merit, some so obvious- Supreme published United States Court in ly necessary produce the volumes of opinions compiled by report- volumes required labor, by the statute. Such un- competing er. defendant der the presented, circumstances like the Supreme edition of the Court’s decisions. decisions and be- plaintiff infringe- claimed property came the public. reproduc- ment based on the defendant’s Id. We conclude that the ultimate ratio- plaintiff’s tion of cases nale for the Banks decision was that while and on the pagination defendant’s star reporter Callaghan under the official could plaintiff’s reports. The trial court re- copyright any prod- material that was the jected plaintiff’s claim case labor, uct of his intellectual because the copy- merited reporter’s statutory required duties protection; Circuit, right the Second in a arrangement pagination, and these should per opinion, curiam reproduced the trial product not be report- considered opinion full, opinion court’s in adopting the er’s intellectual labor. its own. MDC contends that did not Banks turn view, In our Banks does not reporter’s points on the official status. It MDC’s claim arrangement that case un- prescribing report- out that the statute se; copyrightable per agree we with the specify er’s duties Banks did not how instead, District Court that the denial of arranged were to cases be or how volumes copyright protection in Banks was based paginated, were to be so that the upon the reporter. official status of the reporter judgment exercised and discretion 616 F.Supp. See plaintiff argued these matters. MDC concludes that arrangements its Banks product must were the of sufficient Banks therefore be read hold intellectual copyrightable broadly labor to be because the re- and porter’s general, though unalterable, publishing involving not are details too little approach arranging begin copyrightable. cases intellectual labor be We State, reporter salary by with a and duties fixed MDC that the Banks

agree with statute, judgment. How- independent and with the details of its work exercised ever, court dismissed the mat- by the Banks But if it controlled statute rule. even reporter discre- exercised ters which is, as found on the facts of this “voluntarily in evi- things done and tion as Court, con- present record the District proper faith- compliance with the and dent us that West has used sufficient tal- vince discharge ful of his official duties.” industry compiling arrang- and ent and in- Fed. at 389-390. While we would be ing copyright protec- to entitle it to cases in- reporter’s the official clined to examine under the 1976Act as construed tion pag- dependent efforts in and recent cases. more meet they to see if ination on their merits Having per determined that there is no require- originality and intellectual-creation arrangements se rule that case are ments, not do so be- the Banks court did copyrightable, turn we to examine the Dis- past fact unwilling to look cause was findings arrange- trict Court’s that West’s reporter’s they were done to meet the originality ments fact meet and intellec- obligations. statutory requirements. tual-creation persuade other reasons us not to Several publishes opinions just West not from give Banks the full force for which MDC every one but from state and all the contends. If it involved the federal courts in the United States. As it reporter, claims of an official so too did opinions, separates collects these yet Callaghan does not Callaghan, and decisions of state courts from federal-court very seem so hostile to the idea that case decisions. West further divides federal arrangement, paging compilation, can opinions and the state and then protected by copyright. To the extent assigns appropriate them the West re- diverges Callaghan, we that Banks porter series. State court decisions are Supreme of course follow the Court. by geographic region assigned divided Banks, moreover, requires greater de- corresponding regional reporter. to West’s gree creativity of intellectual than the see, e.g., trend of modern Federal decisions are first divided Rockford Map, supra. they And it was written at a time level of the court come from into decisions, in express when the statute did not words appeals district court court of “compilations decisions, decisions; declare that and derivative Supreme Court works,” defined to include “the collection military deci- Court of Claims and court materials,” assembling preexisting separated being sions out. Before are also copyrighted. can be See Act of March assigned reporter, to a district deci- 58-165, ch. Pub. L. No. 33 Stat. according sions are subdivided (1905) 1909). (repealed decisions, bankruptcy matter federal into decisions, top- rules and decisions on other argues, citing, MDC e.g., Order June assigned ics. After an to a re- 7, 1978, (unre- Supreme Minnesota porter, assigned it is to a volume ported), reporter” that West is the “official reporter arranged and then within the vol- states, therefore, that, for some even a decisions, appeals ume. Federal court of reading posi- supports narrow Banks example, arranged according for to cir- tion. We are inclined to think that reporter” in cuit within each volume of West’s Federal term “official orders discontin- Series, uing, example, Reports, Reporter, though there Minnesota Second providing the may group Northwestern Re- be more than one of each cir- porter should henceforth be the “official opinions in cuit’s each volume. Supreme

reporter” for the conclude, did the District We Minnesota, something quite Court of means Court, arrangement pro West reporter” different from the title “official through process this is the result duces held and Peters. We Messrs. Wheaton labor, talent, judgment. employed by considerable do not believe that West is above, supra pp. 1223-1224, As discussed view the of cases in every requirements to meet intellectual-creation a volume of West’s Reporter National Sys- only product work need be the of a modi- tem. LEXSEE enables the LEXIS user to labor; cum of intellectual West’s case ar- have his or her display terminal a case rangements easily meet this standard. “inputting” the citation to page the first Further, allegation since there is no report West’s of the case. With the LEXIS copies arrangements West its case Pagination Feature, Star a LEXIS user source, requirement some other orig- up could summon the first case in a West inality poses copyrighting no obstacle to Volume, page through it until he or she end, arrangements. In posi- MDC’s reaches the end of the and discern tion must stand fall on its insistence that “jump from the cite” for the page final protect all West seeks to is numbers on the case the citation for the page first pages. characterization, If this is a correct T/EXTS next case in the volume. The always one, MDC wins: two comes after user could then use LEXSEE to call up the copyright no one can the mere se- By next case. repeating procedure, quence of Arabic numbers. As MDC the LEXIS user would be page able to points out, specific goal of this suit is to through succeeding each case in the West protect page numbers, some of West’s reporter. MDC conceded at argument oral occurring those within body of individu- operation that this possible, would be but opinions. al protection But for the argued that LEXIS users would be unlikely sought numbers is not for their own sake. perform it because of the cost involved sought, rather, isIt because access to these doing repeated LEXSEE searches. particular “jump numbers—the cites”— However, MDC has cited no authority, nor give large part would users of LEXIS any persuasive do we see argument, for spent what West has so much labor and proposition that because consumers pro industry compiling, tanto and would may infringing find an uneconomical, work anyone’s reduce buy need to West’s books. the work is infringement. not an An au- case, then, The key to this is not whether rights thor’s in copyrighted protect work copyrightable, numbers are but whether author not against infringing on the books as a whole is expensive less original, works than the but infringed by appropria- the unauthorized against expensive more infringements as particular tion of these numbers. On the Further, though well. this use of LEXIS (and record before us subject to reconsider- uneconomical, presently be changes in materially ation if new evidence comes in at technology and other market conditions merits), the plenary trial on the the District could well alter the situation. findings Court’s of fact relevant to this issue supportable. are We therefore hold Pagination Even if the LEXIS Star Fea- (again subject to reexamination after the possible ture did not make it to use LEXIS closed) record has that West’s case ar- page through they cases as arranged are rangements, important part of which is volumes, in West we would still hold that citations, page internal original works use of page MDC’s West’s numbers in- authorship copyright protec- entitled to fringes arrange- tion. Jump ment. cites to West volumes within infringing a case on LEXIS are because Infringement

B. they enable LEXIS users to discern the (with precise We further location West’s hold similar qualification) portion proposed opinion being that MDC’s use of viewed. infringe numbers will MDC contends these arrangement. nothing communicate about West’s LEXIS ar- Feature, Pagination Star rangement. when used in This might con be true if MDC junction with another proposed LEXIS feature to use way called the numbers in some “LEXSEE,” permit will LEXIS users position unconnected to their in West’s re- printing copyrighted arrangement, not be- example by simply a West’s for

porters, However, MDC un- copy- numbers. cause the numbers themselves are list of the making interest derstandably has no righted. numbers; instead, a use of argues MDC also that the LEX page every replicate on LEXIS

plans to in Pagination IS Star Feature does not and to note the in West’s volumes break fringe copyright West’s because its cita page number. Com- corresponding West page reporters tions to numbers in West of the location to LEXIS users munication merely pure are statements of fact. specific portions arrangement of in West’s argument flaw this is that it does not precisely what the LEXIS Star of text is distinguish isolated use of the fac designed do. between Pagination Feature is aspects compilation arrange tual of a pagination, consumers MDC’s star With appropriation ment and wholesale West’s longer purchase need to would no arrangement. “Isolated instances of minor get every aspect of West’s reporters to infringements, multiplied many when knowledge the loca- arrangement. Since times, aggregate major a become opinions parts of with- tion of copyright prevent inroad on that must be large part is a in West’s S.Rep. Cong., ed.” No. 94th 1st Sess. purchase West’s vol- reason one would (1975), Row, Harper quoted & umes, pagination star feature the LEXIS names, addresses, S.Ct. at 2235. The posi- market adversely affect West’s would phone telephone directory any part supplants tion. use that “[A] “facts”; though isolated use of these facts copyrighted work market for a the normal copyright infringement, copying infringe- is not each ordinarily be considered an would Cong., every listing infringement. 1st is an S.Rep. ment.” No. 94th See (1975), Harper quoted Telephone Sess. 65 & Row Fronteer Direc Hutchinson — Enterprises, Cir.1985). U.S. (8th Publishers v. Nation tory, 770 F.2d 128 Similar -, 2218, 2235, L.Ed.2d 588 105 S.Ct. ly, appropriation MDC’s wholesale (1985). West’s for a competitive, purpose commercial is an inf enjoining use of MDC asserts that ringement.3 giv- page West numbers is tantamount ing in the Arabic number- West arrangement of We hold that West’s cannot, ing system. argues, MDC Reporter System pub- cases its National numbering system claim that its use of the protection lications is entitled to original authorship. It is is an work of Pagination fea- and that LEXIS Star numbering system true that some uses of infringes copyright in ture West’s the ar- originality requirements for cannot meet present rangement. On the basis of the copyright. See Toro v. R R Prod- Co. & record, probable it is that West will succeed Cir.1986)(arbi- Co., (8th F.2d ucts on the merits at trial. trary assignment of random numbers replacement parts qualify copy- did not II. However, right protection). already not- MDC also contends that the District ed, recognize here is in we accurately weigh Court did not assess and numbering arrangement, not in its remaining Dataphase factors: three system; use of West’s num- MDC’s West, the infringes irreparable the threat of harm to problematic bers is because it F.Supp. argued use of West’s volumes. 616 at 1580- In the District Court MDC also that its University Sony Corp. pagination, See America v. star like its citation to the first 417, 451, Studios, Inc., City 774, 793, report copy- is "fair use” of Row, (1984); Harper righted L.Ed.2d 574 & U.S.C. 107. The § material under 17 contention, noting did not raise this rejected 105 S.Ct. at 2235. MDC District commercial, argument appeal, and issue in its briefs or its that MDC is MDC's use is per- reasoning arrangement, of the District Court appropriating we find the whole of West’s supersede and that MDC’suse will a substantial suasive. MDC, public relative harm to and the equities inter- of in this case issuing favors a disagree. est. We preliminary injunction. In infringement CONCLUSION cases, general showing rule is that a West has shown that it will probably prima presumption a case raises a facie succeed on the trial; merits of its claim at Apple Computer, irreparable harm. Inc. arrangements West’s case are entitled to Computer Corp., v. Franklin 714 F.2d copyright protection and MDC’s intended 1240, (3d Cir.1983), dismissed, cert. page use West infringe would 1033, 104 690, 464 U.S. S.Ct. 79 L.Ed.2d 158 West’s in its arrangements. The (1984). strong West has made a claim for District Court correctly balanced this copyright infringement and is therefore en factor irreparable with the threat of harm presumption. Furthermore, titled to this West, MDC, relative harm to and the page MDC’s intended use of West’s num public interest to determine that West may significantly bers affect demand for granted should be a preliminary injunction. volumes; supports this further Accordingly, the decision of the District irreparable injury. West’s claim of See Court will be affirmed. Securities, Wainwright Inc. v. Wall Street We add a word Cir.1977), procedur about the Transcript Corp., 558 F.2d 91, (2d posture al of this case. It comes to us on denied, rt. ce appeal from an granting order prelimi a (1978). 54 L.Ed.2d 759 On the other nary injunction. yet The case has to be hand, the harm which MDC claims it will tried. We trust it (In will be tried soon. principally suffer loss of the market deed, requirements so far as any of law are garner share and revenues it would concerned, it could have already: been tried Yet, use of West’s numbers. the pendency of an interlocutory appeal has probably demonstrated that it will suc granting from an order denying pre ceed on its claim that MDC’s use of West’s liminary injunction wholly does not divest copyright infringement. numbers is a jurisdiction District Court of over the Finally, public interest favors case.) tried, entire When it is and when issuing preliminary injunction. While entered, judgment is appeal another can be argues public MDC that there is a interest filed. At that time it duty will our in free access to the law embodied in anew, examine on the basis of the full reporters, we note that West’s record, opinion. the issues discussed in this works are judicial not the e.g., before, As we Indepen have observed itself reports available—MDC Flight dent Fed’n Attendants v. Trans decisions on LEXIS. More importantly, Airlines, World (8th 655 F.2d argument ignores purpose MDC’s 1981), findings, Cir. District Court’s “[t]he affording monopoly copy authors their and our observations as governing “ material;

rightable every volume ‘[i]f opinion, law made this are tentative and public that was in the interest could be provisional, in the sense that different find pirated away by competing publisher, ... ings might or conclusions be warranted public nothing would have worth [soon] after a trial on the merits.” ” Row, reading.’ Harper & 105 S.Ct. at reason, For this the attention of the dis- quoting Sobel, Copyright and the trict courts in this Circuit is called Fed. Storm?, First Amendment: A Gathering 65(a)(2), which, appropri- R.Civ.P. under Copyright Symposium ASCAP Law courts ate those have discretion to (1971). hearing pre- combine the on a motion for liminary injunction

We conclude that the District with the trial on the assessed the various Data- merits. This correctly one, procedure good is a phase encourage present factors and that it In did abuse its we wish to it. determining discretion in example, got that the balance we the definite im- most of the lead of the First Circuit as stated Build- argument that pression at oral Tech, already ing had been & Code Adm. v. Code on both sides evidence Officials Cir.1980), true, Inc., (1st could have If the case 628 F.2d 730 in which a put in. effort, and question presented little additional been tried with not dissimilar on a appeal in- 1292(a)(1) have been one appeal. the result could Section two, final resolution of the with a stead case, does this That involved the one. provisional of a case instead principles first enunciated in application Affirmed. Peters, (8 Pet.) 33 v. U.S. 591 Wheaton (1834), applied in and later Banks v. Man- Judge, OLIVER, District concur- Senior chester, 244, 36, 9 S.Ct. 32 L.Ed. dissenting part. ring part (1888), Callaghan Myers, 128 (1888). interlocutory ap- U.S. L.Ed. 547 pends on an This case 1292(a)(1) The First Circuit reversed the district peal pursuant to Section noticed 28, U.S.C., grant preliminary injunction order of from a modified court’s of Title “preliminarily en- remanded the case for a trial on the the district court which referencing displaying, making any joined from merits without definitive rul- [MDC] any and including page number of ing legal presented on the merits of issues plaintiff’s 1292(a)(1) National publications appeal pended all within on the Section * * * published during System Reporter in that court.2 January 1910 to the period present in relation to the text of within or I. opinions contained the LEXIS data- court base.” Addendum at 25a-26a.1 A. MDC, for reasons I find difficult to un- majority

I stated in concur what derstand, appellate jurisdiction procedural posture of the invoked the. pursuant this Court to 28 U.S.C. case and its discussion Fed.R.Civ.P. view, 1292(a)(1). argued 65(a)(2). however, MDC in the district my At 1229. It is § granting analysis preliminary court that the of a majority’s this case adding scope appellate injunction restraining re- MDC from exceeds the limited 1292(a)(1) pagination” give ap- the “star feature “would provided view Section the time it would need to do the peal. necessary considerable work to add its own dissent I do not be- therefore because (App. pagination feature to Westlaw.” lieve, light meager record before 103).3 majority’s analy- the district that the applicable obviously delay It invited further sis is consistent with the law. MDC permit my panel play catch-up our should follow the would West to when it view that "publications plaintiffs 1. The within National 2. The First Circuit concluded that: “We do not Reporter System” agree listed as follows: Su were with the district court’s conclusion that preme Reporter, Reporter Federal and Fed probability BOCA’s of success on the merits Series, Supplement, Reporter eral Federal short, Second justifies stop preliminary relief. We how- Reporter, Federal United States Claims Court ever, ruling definitely underlying legal on the Decisions, Reporter, Bankruptcy Rules Reporter Atlantic issues, judgment since we feel that our final Series, Reporter Second and Atlantic complete hearing on the should await the more Reporter, Reporter North Eastern California anticipated in due course.” merits which Series, Reporter Second North North Eastern F.2d at Reporter Reporter Western and North Western Series, Supplement New York and New Second complains appeal pre- 3. MDC also Series, Supplement Reporter York Second Pacific liminary injunction granted by the district Series, Reporter Second Southern and Pacific play catch-up gave West "a second chance to Series, Reporter Reporter and Southern Second develop LEXIS a feature similar to the Star Reporter South and South Eastern Re Eastern Pagination ser- Feature for West’s WESTLAW Series, porter Report Western Second and South 20-1, 22; 45). (MDC pp. Brief at see also vice.” Reporter er and South Western Second Series. Addendum at 26a. (Supra, majority opinion 1292(a)(1) appeal 1222-23), elected to notice a Section Certainly in this case. MDC was not re- but two Eighth recent Circuit cases that See Scar- quired appeal. to notice such an recognize Eighth established Circuit Loan, Savings rella v. Midwest Federal & in regard rule to the limited scope of appel (8th Cir.1976), (“[a] 536 F.2d late 1292(a)(1) review on a Section appeal.5 party required is not to take an interlocu- majority opinion recognized that statute”).4 tory appeal authorized scope appellate review on a Section MDC’s citation and reliance on O’Connor 1292(a)(1) appeal is limited and circum- College, v. Peru 728 F.2d State For on 1229 of the scribed. it see (8th Cir.1984), brief, of MDC of Independent Fed’n quoted portion establishes the scope knew Flight Attendants v. Trans World Air- appellate 1292(a)(1) ap- review on a Section of lines, peal 155, “interlocutory (8th from an order” is neces- 655 F.2d Cir.1981), 159 sarily scope appel- more narrow than the of which concluded that District Court’s “[t]he late of a “final review decision” on an findings, and our observations as to the appeal pursuant taken to 28 U.S.C. § governing law made in opinion, are Corp. provisional, v. tentative and O’Connor Edudata Scien in the sense that Inc., Computers, 429, findings different or might 746 F.2d 430 conclusions tific (8th Cir.1984) curiam), (per both cited in the warranted after a trial on the merits.”6 Realty reviewing granting 4. See also A & R Co. v. Northwestern denying an order pre or a 703, Co., (8th liminary injunction, Mutual Insurance 95 F.2d 707 will not consider the merits Life Cir.1938); ("if right appeal controversy the from the inter parties between the further of, locutory necessary order was not availed the failure to than is to determine whether the trial appeal right would not diminish the to a review making court abused its discretion in the order upon appeal of such cree”); particularly order from the final de rights this is true where the Panama, S.A., parties Caradelis v. 384 the upon can better be determined full Refineria 589, 591, (5th Cir.1967); proof F.2d n. 1 and 9 Moore’s the facts.” 205 F.2d at 733. And see (1985), Federal Practice Company Mining 110.18 entitled "A Par Mesabi Iron Compa ¶ v. Reserve ty 567, Required Interlocutory (8th ny, 1959), Is Not to Take an 270 F.2d 570 Cir. which stat Statute," Appeal by Authorized and the cases ed that in “the instant case the merits of the cited therein. having crucial issues not been determined court, pass the upon trial we should not them” 527, (5th Giorgio Causey, Di v. 488 F.2d 528 for the reason that "under the well-established Cir.) (1973), appropriately appeal stated that "an rule, futile, express to do so would be and we no preliminary from the issuance or denial of a opinion on the merits of the issues involved in injunction ordinarily way appel- no to obtain this case.” disposition late of a case on its merits.” That emphasized that the "one fact which liti- Eighth The rule established in the earlier Cir- gants Indeed, and their counsel should not overlook is cuit cases has not been altered. Eduda- appeal preliminary injunction Corp. recently that on an from a quoted ta and followed in St. Medical, Carbomedics, Inc., this Court does not concern itself with the mer- Jude Inc. v. 764 F.2d (8th controversy.” Cir.1985) curiam). (per its of the 500 See also Sierra Corps Engineers, Club v. U.S. 771 F.2d 409 Eighth goes 5. The Circuit rule back at least as (8th Cir.1985), Medical, which relied on St. Jude Judge opinion City far as Walter Sanborn's Eighth Inc. and other recent Circuit cases to Co., Ry. Council v. Omaha & C.B. & St. 9 its conclusion Bluffs review of a ”[o]ur (8th 1925). F.2d 249 Cir. Benson Hotel Cor grant preliminary or denial of relief is limited Woods, (8th poration v. 168 F.2d 697 Cir. determining whether the district court 1948), City in reliance on Council abused its discretion.” 771 F.2d at 412. Bluffs That Eighth other Circuit made clear that case also stated that ”[w]e mindful granting decision of the ”[t]he trial court on findings of fact and conclusions of law made preliminary injunction estop motion for will not granting denying preliminary a court in injunction a parties either of on the trial of the case on binding are not at the trial on the merits, nor would determination of Camenisch, University merits. Texas v. 451 questions by appeal those this court on be bind 390, 395, 1830, 1334, U.S. 68 L.Ed.2d ing on the trial court nor either of the (1981).” Id. at 175 parties considering determining mer controversy." City immediately its of Des Moines v. 6. Trans World Airlines stated be- Co., portion opinion quoted by Continental Illinois B. & T. Nat. 205 F.2d fore the of that (8th Cir.1953), "(wje by Judge majority emphasize procedural written John B. Sanborn, "[ajn appellate posture appeal ruling stated of this case—an from a * * * scope appellate review was whether The reason District Court had 1292(a)(1) appeal issuing prelimi- is circum- abused its discretion in on a Section Id. grant prelimi- nary injunction.”7 393,101 scribed is because U.S. at by a district court is re- S.Ct. at 1832. nary injunction solely under an abuse of discretion viewed majority’s I concur in the recogni- While Water Services v. Mid- standard. Olin rule, Eighth tion of the established Circuit Lab., (8th land Research F.2d join I majority opinion am not able Cir.1985), Eighth the most recent Circuit because exceeds the limited point, that: case on that concluded appellate scope of review accorded sole task reviewing order Our 1292(a)(1) appeal.8 majority Section granting preliminary district court it, opinion, as I read states much more than injunction is to determine whether view of a tentative the merits of this case. Ferry-Morse its discretion. court abused Inc., Corn, v. Food Seed Co. 729 F.2d B. (8th Cir.1984); Dataphase Sys I concur with the majority what stated in tems, Inc., Systems, Inc. C L 640 F.2d paragraph its final to the utiliza- (8th Cir.1981) (en banc); n. 8& 65(a)(2). quite agree tion of Fed.R.Civ.P. University Texas v. accord Camen hearing if application on West’s isch, 390, 393, 1830, 101 451 U.S. S.Ct. preliminary injunction for a had been con- 1832-33, (1981). (Empha 68 L.Ed.2d 175 solidated with an advanced trial on the added). sis merits, that the entire case could have been possible effort, Any doubt about the limited tried with little additional with the 1292(a)(1) scope ap- having of review on Section result of one rather ap- than two Universi- view, peal, my peals. view, in my precisely was resolved This is Camenisch, ty supra, v. Texas 65(a)(2) 451 type U.S. of case in which Rule of 390, 1830, (1981). 101 68 L.Ed.2d S.Ct. 175 should have been used. For it is reason- ably That case held that “the issue before the certain that once this case is tried on Appeals appeal merits, losing Court of an from an party will notice a [on granting preliminary injunction] order appeal right second of under Section 1291.9 not, preliminary injunction. my judgment, expand a motion for In this does the circum- reviewing scope appellate applicable situation our is circum- scribed review to a function added). 1292(a)(1) (Emphasis appeal. scribed." Section States, 229, Giorgio appropriately 7. Alabama United 49 9. The Fifth Circuit in Di (1929), approv- encountering S.Ct. 73 L.Ed. 675 cited with noted that it was Section Texas, 1292(a)(1) University appeals al in duty concluded that with "more and more fre- appellate appeal quency." pointed of the an from court It then out that note “[w]e granting denying appeals pending general an order either or an interloc- that while such are utory injunction generally, tendency is “at least not to to allow the case on the merits to lie Then, simply lapse decide the merits dormant. time, but determine after the of considerable appeals required whether the discretion of the court below has it is found that two tire 230-31, disposition been abused.” 279 U.S. at S.Ct. at for the of the case. This causes judicial delays, frustration attributed to when judiciary, beleagured the fault lies not with the though unprecedented course, it is MDC, an torrent of recognize, 8. I that like the Sec- cases.” 488 F.2d at 529. 1292(a)(1) appellant Giorgio, tion in Di tended argue appeal to brief and it were "as if The "torrent of cases" the Fifth Circuit noted judgment a final on the merits.” 488 F.2d at 1973 continues unabated 1986. The Di- Although Dataphase Systems, MDC cited recently rector has Administrative Office * * * Inc., (8th Systems, Inc. v. C L 640 F.2d 109 ap- noted that "between 1969 and 1985 Cir.1981) (en banc), major it is clear that the peals filings up per are cent.” 18 The Third portion argument Branch, 1986). of MDC’s p. (August was made under a No. do heading argued parties encouraged bold face that “The Dis- believe that should be Concluding 1292(a)(1) appeals. trict Court Erred That the LEX- notice Section For the de- Pagination Infringes Copy- exception- appeal, IS Star rights Feature termination of such an absent circumstances, purpose Claimed West." That MDC did so al can serve no useful I find nothing II. support record to requisite findings of fact upon which A. both the district court’s and majority’s majori- Neither the district court nor conclusions of law based. This is not a ty any part of record discussed before case, in my judgment, permits that ap- an respec- the district their plication clearly of the erroneous standard West, merits, tive conclusions that on the 52(a) of Fed.R.Civ.P. because the district probably proving will succeed as matters any court did not make findings fact in fact, (1) arrangement that West’s regard to the relevant factual circumstanc- publications January cases in all of its since Further, es of this case. as a member of present may subject 1910 to the be panel Hutchinson, that decided I am copyright; (2) pagination West’s all distinguished satisfied that case should be publications important part those is an grounds from this case on much the same that, such, recently distinguished it in Toro Co. v. (3) copyright; also Co., R & R Products F.2d use of pagination may MDC’s intended star (8th Cir.1986). infringement

be said to constitute an however post-January all its made, arrangement may be is con- publications. publi- tained each volume of its various Although general relied on Hutchinson cations. West has no Co., Telephone Directory Reporter System”; v. Fronteer “National sepa- Co. each 11), (8th Cir.1985) (Tr. published by 770 F.2d 128 rate volume West carries its district copyright. Most, that court did not make own individual but not all, findings any way exceedingly of fact indicate in few Certificates of publication it Copyright Registration believed that of a law in the record estab- report comparable recognized could said to be to lish West has publication telephone directory. of a copyright major part not obtain a on the of published particular it in a what volume of majority The cited and relied on Hutch- any reports.10 one of those law inson, regard both in to its discussion of “copyright protection,” shows, and in dis- The record example, for that al- “infringement,” though cussion of authorship at 1227 and West the “en- claimed of however, majority, encompassed 1228. The like the dis- tire work” Volume court, F.2d, trict not any Registration did make reference to West’s of Certificate A63) support (Exh. 3, the record to its ultimate concur- Form TX did 1-607-203 not any copyright rence with District “the Court’s conclusion make claim of for the copyrightable majority opinion West’s is a conclud- cases, aspect compilation part” important ed was “an of the whole of reflects a questions of West’s volumes and such Volume.11 One of the expresses arrangement, copyright registration required West’s form brief, “[g]ive general use MDC’s intended of West’s num- a West statement infringes copyright bers West’s has ar- of material that been added to this rangement.” Supra and in claimed” 1223. work which is parties, copies only for either the the district or for a The record includes twelve of will, panel Appeals Copyright Registrations later Court of West’s Certificates many, required if not most be to rule a volumes in lower court deci- for federal (A59- appeal published. See second noticed under Section 1291. sions Exhibits 1-12 A80). 10. The any record in case does not contain Registration copies any Copyright Registration of a Certificate of West’s Certificate pub- expressly ”[c]opyright opinion is claimed volume in which a State court stated that is not any original impossible part prepared lished. Thus it is to know what as to of the work employee may claims of made in United States officer or have a Government (A64). reports opinions. part person’s official duties." to its of State court as (A64). “[(Compila- answer stated West’s B. published previously tion of record, it, Nor support does the as I read including opinions, sy- not limited to but any finding majority of fact which the paragraphs, nopses, syllabi key or case law could base its conclusion that “the LEXIS classifications, and index di- number tables Pagination infringes Star feature gest, with revisions and additions.”12 copyright arrangement.”14 At (A64). I hold that view even if it is assumed that TX West stated on Form 1-607-203 that majority’s assumption pag- that West’s the “Title of the Work” was “Federal Re- ination, “important part” as an of a West porter. Second Series. Volume 753 F.2d.” publication, is may entitled to be report a obviously very The title to law is For I anything valid. do not believe that important part of the whole of such a vol- sketchy record in support this case can ume, published opinions however the court finding a factual that MDC’s intended star Yet, may arranged.13 beyond dis- pagination opin- of West’s believe, pute, I that the title to a volume of any way infringe ions would in West’s “ar- reports, certainly important law a most rangement of cases.” volume, part of the simply whole is not record, it, merely The as I read establish- subject copyright. See Nimmer on es that pag- MDC intends to add star “Titles,” 2.16, Copyright p. 2-186 and § ination to the court contained in its therein, including the cases cited Duff MDC, LEXIS data base. as I understand Star, (8th City The Kansas 299 F.2d 320 record, make, does not intend to nor Cir.1962). any has it fact made use of West’s sequential numbering fact that the “synopses, syllabi paragraphs, or case law pages volume, including classifications, key number tables and in- reports, important part volume of law is an digest, dex with revisions and additions” volume, support does finding for which West claimed in its Certificates part of fact that such a of a whole Copyright Registration. record, particular publications volume of West’s it, I read support cannot be said to a find- Nor, subject copyright. my judg- ing of fact any way that MDC intends in ment, does such a finding fact duplicate reproduce “arrange- fact that West’s of cases is cases,” arrange- ment of whatever those copyright. parts All copy- of a may ments be.

righted automatically volume not be Thus, subject copyright record, considered a simply to on the district court’s publisher copyright because a claims question presented a on ultimate on this Section 1292(a)(1) the whole volume. appeal whether, is reduced to Research, copyright Mersky, (The 12. West’s Legal limited claim of for other of Fundamentals of reports Press, 1981) its federal court is made in similar lan- Foundation at 36. When West 12, guage publication in Exhibits 4 to inclusive. Reporter Exhibits 1 commenced of its Federal copyrights and 2 are "arranged" claims for the renewal of series in the cases were in a registered January first on 1925 and Novem- more traditional manner. The record shows 5, 1924, respectively. ber Report- The record does not West claimed in its Preface to its Federal copyright years" show what claims of were made in er series that “within a few after regard original registration recognized of those vol- West “came to be as the official (Add. 46a). Reporter umes. of the Federal Courts." Publishing Company reprinted 13. In 14. I have the same view to the district conclusion, previously reported unsupported by any all lower federal court deci- court’s as it is record, sions between 1789 and 1879 in one set of 31 reference to the that "the use of the succeeding following volumes called Federal Cases. "Unlike most sets second and numbers arranged arrangement, of court where the cases are initial citation to West’s the so- (i.e. 702), chronologically, ‘jump the decisions in this set are called cite’ 479 F.2d in- arranged alphabetically by fringes copyright.” F.Supp. name case and of on West’s consecutively.” are numbered Jacobstein and 1579. law, applicable support granting under the MDC’s intended of the preliminary numbers, standing injunction in page use of West’s this case.17 Whether a new alone, infringe copy- “compilation” to may Shakespeare’s be said some of work may, fact, right may subject to be under which West entitled be origi- an yet authorship factual circumstances to be nal work established of does not answer the question on a trial of the merits of this case. It of whether “page numbers and its probable is cannot be said that it that West are necessarily with- scope will merits succeed on the unless it can also in the of copyright protection,” as said that West will be able to establish court be district concluded. 616 F.Supp. page copy- that numbers are entitled to Neither 1577. the district court nor the right; simply infringe one majority any cannot a non-ex- cite suggest cases which that copyright.15 page istent numbers of compilation a new of of Shakespeare work must be con- The suc- probability of whether West will subject copyright. sidered a of Nor is any must, on the in my judgment, ceed merits cited authority support the notion that light viewed in the fact book that law be citation in copy- publishers long States United have righted compilation Shakespeare’s work traditionally pagination used star infringe would somehow publica- an earlier publication their of court tion Shakespeare’s plays and sonnets. pub- have been taken verbatim from earlier literary practice Current suggests copyrighted lished and works of offi- both citations not be said to reporters.16 cial and court I do unofficial infringement.18 constitute not believe that record in this can support Dataphase said to conclusion judicial cannot, A under Wheaton probably that West will succeed v. Peters be considered a subject of copy- merits when that record can be said Nor, right. view, in my amay compilation finding of fact that intends MDC judicial opinions be considered a do no more than what other law book of copyright unless such a work “formed doing long publishers long, have for been assembling the collection and preex- * * * period time. isting materials or of data that are arranged way in such a the resulting

C. work as a whole an original constitutes authorship.” Both the court and work majority district 17 U.S.C. 101. § added).19 Shakespeare (Emphasis referred to the works majority agrees sonnets, compilation Shakespeare’s or less quali- 15. more that this is can position protection.” true. For if fy it stated that MDC’s 1224. for a At pages protect “all * * * is numbers on West seeks to characterization, is a correct wins: MDC My copy Quota- John Bartlett’s Familiar one, always two comes after can no one (Eleventh Little, Company tions ed. Brown sequence num- mere Arabic 1939), example, quotations shows bers.” At 1226. Shakespeare’s plays sonnets in Act, Scenes, "jump work contain cites" to the Indeed, apparent long plays it is used West has and the Lines of the text of the and son- presently Craig’s uses star nets as earlier in W.J. opinions published Supreme Report- Complete copyrighted Shakespeare, by in its Court Works of er, University seriously Supplement, its New York and its Oxford Press. I doubt that California Reporter. by of a the addition number citation Bart- Craig’s other citations lett to the to earlier work infringement would constitute an of Oxford 17. The district stated that "West’s unless University copyright. Press’ arrangement are numbers and its of cases” "necessarily scope considered within the copyright protection,” "copyright that "one col- 103 could not 19. Section makes clear that in a Shakespeare’s plays subject compilation lect or extends not derivative work —themselves copyright copyrighted by author a work." Id. the material contributed work, —into distinguished preexisting majority "arrangement 1577. The that an from the ma- stated work, reporter, imply employed a in does not in a case no less than terial 1236 added). interesting phasis may some district court further be there While regard however, presented

copyright questions recognized, that even under its work,201 Shakespeare’s do compilation of a reading Callaghan, that the Court held references made to his not believe arrangement that case that “[i]f support the view of said to can be work paging depend cases and the of the book or that of the district majority either simply printer, on the will of the or the court. decided, order in which cases have been circumstances, or other accidental

III. they of course are not protection they because then involve no A. labor, talent, judgment.” Id. at 1576. recognized that “this The district court or not the succeed- turns on whether pre- To the issuance of its broad protected by ing themselves injunction liminary the district court stated It copyright,”21 F.Supp. at 1579. stat- pagination just that West’s “is not a series ed, however, that the “Court two finds arising by of numbers each one over its importance particular interest and cases of predecessor.” any Without reference to analytic providing an framework record, the district court further stated par- the claims of the to consider that such “is the basis of the ties,” Myers, 128 U.S. citing Callaghan v. arrangement key to the self-in- —the (1888), 617, 9 32 L.Ed. 547 S.Ct. dex which West’s is ac- Lawyers Co-opera- Banks Law Pub. Co. 23 Id. at 1579. cessed.” (2nd Cir.1909). Co., F. 386 tive Pub. The district court then stated that “[t]his added). (Emphasis Id. at 1575-76. is, the finds, Court what is meant stated that “this district court also ‘taken as a whole' in words supports and Banks Callaghan finds ” ‘compilations,’ citing definition of copyright protection does not bar added).24 (Emphasis U.S.C. laboriously prepared, voluntary ar- § (Em- rangement of Id. at 1578. The district court as a cases.”22 concluded matter of any right preexisting right numbering system." in the material.” the arabic exclusive Id. at added). (Emphasis 2-9, [A], Copyright, pp. 20. 1 § Nimmer on course, stating 22. The district following put question in re- answered making finding conclusion of law rather than original Shakespeare: gard to an work of stating regard of fact in its view in to what “Cal- painstakingly Suppose a scholar were to ex- laghan supports” and what "Banks does not plore of the British Museum for a the stacks thing bar.” The same is true of its statement years, finally after much effort number of Callaghan that it "finds” and Banks are of i.e., seeking, forgot- find that which he was “particular importance providing interest and manuscript. Shakespeare ten may The scholar analytic framework” an for its decision of this skill, training, well have exercised much case. knowledge judgment, but should this en- manuscript? title him to a explain 23. The district court did not what a not, engage Clearly since he did not act might “self-index” be or how an authorship. cases be “accessed.” Judge See also Learned Hand’s comment in to Keats’ work Sheldon v. Metro- (2d noted, Goldwyn Corp., F.2d Cir. "finding,” Pictures 24. That like the others above 390, 392, 1936), aff'd, actually a statement of a conclusion of law. “* * * (1940), where he stated that if law, L.Ed. 825 my judgment, is not That conclusion magic some a man who had never known it reason the "taken as a tenable for the words compose anew Keats’s Ode On a Gre were appear do not in Section 101’sdefinition whole” Urn, ‘author,’ and, would if he cian copyrighted he “compilation.” expressly That definition of a it, might copy poem, others provides "compilation" that a is a work "ar- though copy they might of course Keats's.” resulting ranged way work as in such original work author- a whole constitutes an recognize purported 21. The district court also added). (Emphasis ship." Id. beyond copy- is cavil that one cannot "[i]t record, is, best, law, any judge’s slip opinion to the without reference the work of or, judge’s secretary in page day its ar- this of ad- “West’s numbers and technology, vanced work the secre- rangement necessarily of cases are within tary’s processor word in electronic re- scope copyright protection.” Id. at sponse secretary’s punch to the of a button added). (Emphasis on a machine.27 agree Callaghan I do not Thus, question regard factual in analytic “an framework in provide Banks process, how or what electronic or oth- par- which to consider the claims of the erwise, assigns completely new set agree I ties.” Id. at 1576. Nor do page judge’s slip opinion numbers to a is arrange- page numbers and its “West’s open question factual only that can be necessarily ment of cases are within the determined on a trial of the merits. It is scope copyright protection.” Id. at my view that probability of success added). (Emphasis simply on the merits cannot measured provide any on a record that does not infor- B. in regard mation to whether West’s new in indicate The record this case does not pagination, judge’s sheet like a advance page any way in how or whom West’s secretary’s original pagination slip of his are, fact, affi- numbers created. West’s opinion, nothing is more than an electronic identify any person as the davits do response given to a direction a machine or any page “author” of of the numbers. whether, fact, as a matter of West’s new shows, thing only the record pagination may original be considered an it, I read is that bound volumes authorship. work of carry the same volume numbers If, merits, on the trial of the it is estab- page advance same numbers as West’s page lished that West’s new numbers are page sheets.25 those numbers are How assigned judge’s slip opinion by some assigned sheets is a total West’s advance process, automatic electronic it is inconceiv- mystery so far as the record is concerned. public policy able to me that the that denies fact Judicial notice be taken right opinion all to a court appear original page numbers grant copyright would nevertheless slip opinion by judge on a for submitted page numbers of the volume in which such publication appear never West ad- Therefore, opinion published. a court vance sheet.26 There is indeed substantial do not that the district court’s dis- believe page those numbers could doubt whether Callaghan cussion of within Banks part judge’s “analytic be considered work structure of its framework” authorship. pagination Dataphase For of a can be said to con- (A31-39), Berring example, for used in the advance sheet volumes” and that 25. The affidavit simply "arranges judi every that West American Reporter states "each volume in series retains Reporter Sys cial decisions within its National pagination identical between advance sheet vol (A3 ¶ 13). publications” tem There is no state permanent promote ume and reliable volume regard to how those cases Eire ment made in “arranged” (A48, 25). and consistent citation.” 24 and ¶ or, particularly, page more how the placed any of West’s volumes. numbers are page slip opinion, 26. The numbers on this pagination will, Clementine, is in gone mention of West’s example, be lost and like paragraph which states affidavit pub- forever once the in this case Eire is, fact, numbering pag- there "identical lished in a West advance sheet. ing of the volumes in both the advance sheets permanent, editions.” and the hardbound judge drafts his 27. This is also true where the (A38). page long hand and "authors” the (A40-48) The Ginnow affidavit is likewise si- legal pad. secretary For his numbers on his how, when or whom the lent copy judge’s page numbers when does not are, fact, placed on West’s numbers transcribed; long judge’s hand draft affidavit, like that of Ber- volumes. Ginnow’s secretary processor, than the or the word rather ring, simply reiterated that “decisions judge, is the "author” hard-bound, permanent volumes re- in [West’s] slip opinion typewritten form. in its tain the same volume number recently probably succeed on had most held that “some uses of that West will elusion of this case. numbering system the merits cannot originali- the trial of meet ’ ty requirements copyright.”30 At 1228. C. It, however, purported distinguish Toro majority’s analysis my by stating copyright that the It is view Co. that “the we rec- incomplete I believe is an is based on what ognize arrangement, here is in West’s not Callaghan and untenable view numbering system; in its MDC’s use of majority, in Although the its dis- Banks. page problematic West’s numbers is be- stated that “we would be cussion of Banks infringes copyrighted cause it ar- reporter’s official to examine the inclined rangement, not because the numbers arrangement independent efforts at 1228. copyrighted.” themselves are they to see if pagination on their merits majority The therefore concluded that the re- originality meet and intellectual-creation principles copyright law stated in Hutch- although quirements,” at it stat- inson rather than those stated in Toro Co. establishes at least “Callaghan ed that applicable disagree. were to this case. I * * * in each case the Hutchinson, recognized In this court light originality must be evaluated principle “telephone that the directo- standards,” and intellectual-creation publications” ries and similar were majority definitely nevertheless copyright “long was established arrangements, concluded that “West’s case Hutchinson, course, line of cases.” was important part an of which internal merely “long on and based extended that citations, original authorship works of Telephone line of cases.” Leon v. copyright protection.”28 entitled to At Pacific Co., 484, 486, (9th Cir.1937), 91 F.2d 13. upon first case cited and relied in Hutchin- majority, correctly, The conclud- believe son, quoted Justice Holmes’ statement arrange- ed that “the treatment of case made 1903 in Bleistein Donaldson pagination Callaghan ment and Co., 239, 250, Lithographing At 1224. crucial decision.”29 Court’s 298, 300, (1903), 47 L.Ed. 460 S.Ct. concluded, majority The nevertheless I be- * * * like, “directories and the be erroneously, lieve that we must “follow the copyrighted.” Sampson Murdock & Co. v. Supreme Court” for the reason that “Cal- Co., (1st 140 Fed. laghan very not seem so hostile to does Seaver-Radford Cir.1905), Leon, also cited in traces the compilation, arrangement, idea that case origin of the directories’ rule back to at paging protected by copyright.” can least 1839.31 Id. at added). 1226. (Emphasis puts majority recognized directory The Professor Nimmer Toro Co. v. Co., supra, category R R 787 F.2d entirely & Products cases different 28. The to this case 29. majority “key majority’s suggestion "teaching stated that that the * * * Callaghan copyrighta- respect is not whether numbers are with to the issues before us ble, through does not come ty," with unmistakable clari- but whether the on the books as a infringed by was not made in to its appro- whole is the unauthorized recognition arrange- that "the treatment of case priation particular (Empha- of these numbers.” ment and was not crucial added). majority sis At 1227. The also stated Callaghan. Court's decision” in that "we concur in the District Court’s conclu- copyrightable sion that West's is a 30. majority further stated that "no one can aspect compilation pag- of its sequence the mere of Arabic num- expresses ination of West's reflects and volumes injunction preliminary is- bers." At 1227. The arrangement, MDC’s and that intended course, granted sued the district infringes use of West’s West's precisely protection; interlocutory or- arrangement." At It fur- arrange- der did not so much as mention West's agree ther stated that "we with the District ment of cases. * * * copyright protec- Court that the denial of tion in Banks was based the official status 31. That case held that and works "[d]Zirectories reporter.” At specifically protect like character been have involving publication ghan”; of law or its conclusion the cases that Callaghan, Supreme decision, slight as Court must The fact that the amount there- reports.32 fore be followed rather than Banks. Id. at necessary produce to of intellectual labor sufficient to plat map may be considered by illustrated copyright, establish Rock- Professor Nimmer makes clear that the Co. Map Pub. v. Dir. Service Colo- judicial opinions of both state and federal

ford Cir.1985) (cited rado, (7th by 768 F.2d 145 public courts are in the domain and are 1226), not, the majority, at 1223and does copyright. in therefore not to 1 Nim- support my judgment, majority’s Copyright, con- mer on at 5-58—5-59 § 5.06[C] (1985). Professor “requires greater Nimmer cited clusion that Banks de- Wheaton Peters, (8 Pet.) 591, 33 U.S. 8 L.Ed. 1055 gree creativity of intellectual than the (1834), support to his conclusion in regard trend of the modern cases.” Id. at 1225- opinions. to federal court Banks v. Man- chester, 244, 36, 128 U.S. 9 S.Ct. 32 L.Ed. nothing I find in the record in this case (1888), Building & Code Officials support finding of fact that it takes International, Administrators Inc. v. creativity put page more intellectual Inc., (1st Technology, Code 628 F.2d 730 reports today a volume law Cir.1980), regard were cited in to state yesterdays than it did in the in which Cal- opinions; the latter was cited “for a laghan and Banks were decided 5-58, discussion of the older cases.” Id. at 1909, Indeed, respectively. the trial on Callaghan, together n. 30. with a “see” the merits of this case establish that citation to the Second Circuit’s pagination is no more than the work Banks, and a “cf.” citation to Wheaton v. responding punch of a machine to a of a Peters, was cited to Professor button, rather than the exercise of the will Nimmer’s respect statement that: “With printer, yesterday, of a who was at least public judicial domain opin- status of required type to set for the of a ions, anomalously somewhat the older deci- reports. volume of law reporter paid sions held that an official by may personally

the state claim IV. synopses opin- the headnotes and of court ions, duties, part as a written his official agree I do majority’s with the state- agreement absence copyright protec- ment that “the denial of 5-60, contrary.” Id. at n. 32. tion Banks was based the official [in ] 1225; reporter,” Manchester, status of the its state- Banks v. which the Court “diverges ment that Callaghan, Banks Calla- decided in tandem with was not ed, 6, Fullarton, years Eggers Corpora least since Lewis v. 2 Beav. two later in v. Sun Sales 1839, they protect tion, (2d decided in 1920). and that are to be 263 Fed. 373 Cir. The Jeweler's firmly ed is now established." Jeweler’s Circu quoted Circular court Justice Blatchford’s obser Co., Keystone lar Pub. Co. v. Pub. 281 Fed. that, Callaghan, vation on the facts of "one of denied, (2d Cir.), cert. 259 U.S. 42 S.Ct. significant infringement the most evidences of (1922), 66 L.Ed. 1074 was also cited in Leon. volumes, frequently exists in the defendant’s panel That case was decided the same namely copying of errors made Mr. Free Judge Henry Rogers decided Banks. Wade con man.” Id. at 95. cluded that was at one time "[i]t intimated in judicial opinions certain that directories were 2.04[B], Copyright, pp. 32. 1 Nimmer on 2-40— § copyright. not entitled to But the law is now 2-42, “catalogs discusses and directories” and contrary England. well established to the “[although may question states that some [Citing many English equally It is well- cases]. catalogs, whether directories and the like should country. [Citing many established law in this regarded authorship subject be as works of federal And in Bleistein v. Donaldson cases]. copyright protection, protection long has Co., 239, 250, Lithographing recognized, present Copyright so been Holmes, writing Mr. L.Ed. Justice ground respect.” Act breaks no new in this Pro- court, speaks being for the of directories as thing fessor Nimmer does the same capable copyright.” Id. at 85. 2.08[A], "maps.” p. §Id. 2-75 to 2-82. Judge Rogers Callaghan treated in substantial- ly Callaghan the same manner would be treated majority. published

cited or discussed Both he between 1816 and 1827. The must, view, my given appropri- cases inclusion of that material in those volumes consideration, substantially increased applied prin- ate both the cost of Wheaton’s Repo compressed Peters ciples of law established in Wheaton v. rts.34 twenty-four opinions published volumes of majority opinion not, Peters. The has by all three reporters earlier into six view, my given appropriate consideration to volumes of his Reports, Condensed recognition of the rationale of the three he between 1830 and 1834. He Supreme cases that control the deter- was price able to reduce the for all the mination of this case. opinions Court’s from to for his $130 $36 Craig Part III of Joyce’s Professor arti- reports by using type, smaller omitting the cle Supreme The Rise Court Re- of arguments notes, of appendix counsel and porter: Perspective An Institutional by substantial elimination of some con Ascendancy, Marshall Court 83 Mich.L. curring dissenting opinions. Id. at (1985) (hereafter Rev. 1351 to 1391 1365. Joyce), cited as is devoted to Wheaton v. Story Both Justice and Justice Wash- agree Peters.33 While with Professor ington “enthusiastically supported Peters’ Joyce’s suggestion that cases tell “[f]ew undertaking.” Id. at 1366. Wheaton’s ad- fascinating stories so as Wheaton v. Pe- predictable.35 verse reaction was Wheaton ters,” id. is sufficient for employed Elijah Paine and Daniel Webster present purposes Peters, to state that represent May, him. In 1831 Wheaton shortly after he succeeded Wheaton as the filed in equity a bill in the Circuit Court for reporter, publish Court’s official decided to the Eastern Pennsylvania District of “pray- a work entitled the Reports Condensed of ing injunction prevent the further Supreme Cases in the Court the Unit- of printing, publication or sale of volume 3 of States, Containing ed the Whole Series of Reports Condensed and an accounting the Decisions Orga- Court From Its profits.” alleged Id. at 1370. That bill nization to the Commencement Pe- that volume 3 of Peters’ Condensed Re- Reports ters’s at January Term 1827. Pe- ports any “contained ‘without material ab- ters’ motive basically was a commercial alteration, breviation or reports all the one. cases’ in volume 1 of Reports.” Wheaton’s glance A any one of Wheaton’s Re- preliminary Id. at 1370.36 A injunction was ports scholarly Wheaton, shows that initially Baldwin, issued sitting Justice encouraged aided and Story, Justice in- as a Judge Hopkinson, Circuit Justice with notes, cluded elaborate head a full summa- but years was dissolved two Judge later ry arguments counsel, together Hopkinson during who acted alone one of large with appendices number infrequent Justice Baldwin’s not “derange- twelve Supreme volumes of ment of the mind.” Id. at 1371. The case Joyce’s 33. A shorter put version of Professor stop re- almost an entire to the sales of both the published search was also Reports Digest under the title of and the Decisions." Id. at Story Wheaton v. Peters: The Early Untold publisher urged 1376. Wheaton’s Wheaton to Reporters in Supreme bring Yearbook 1985 of the infringement pointing an action for out Society, pp. Court Historical example 34-92. Part III of literary that "until an is made of these substantially the Yearbook article is security the same as Pirates there can be no for the labours Michigan Part III of the Law Review Article. of authors and Publishers.” Id. at 1376. copies 34. To obtain Although of all the Court’s legally signifi- 36. I do not believe it required cant, since purchase one would be except may to the extent it relate to the Reports, three volumes of Dallas’ nine majority’s volumes preoccupation report- with whether a Reports, of Cranch’s and the twelve volumes of may may reporter, er not be an "official" it is Reports, Wheaton’s at a total cost of $130. to be noted that Wheaton was not an official reporter published of the Court when he Vol- * * * "Wheaton, Joyce reports. states that: first ume 1 of his Volume 1 of Wheaton’s plans learned publisher] Reports of Peters’ [his in 1816 before the Re- proposal who informed porter’s him also that the had Act became effective on March Supreme subject copyright. appeal to the Id. at 1378. After on direct then went listening argument, days to four of oral Court. on March Court convened 1834 to an- accurately stated that “Wheaton’s Joyce opinions.39 Joyce accurately nounce their appeal] the deci- point central [on —that [majority] opinion stated that “McLean’s by the Re- as rendered sions of the Court open possibility tiny, unspec- left that a regarded always been porter had portion ified matter claimed by sub- copyright by him —was not without * * Wheaton as author —* ‘the statements at 1373. Whea- stantial foundation.”37 Id. of the cases ... and the abstracts thereof’ however, recognized, ton’s counsel —might infringed by indeed have been Pe- had somehow obtained “unless Wheaton added, however, ters.” Id. at 1384. He manuscript opinions of copyrights in the * * * practical purposes,” that for “all significant every decision Justices controversy had come to an end when Mc- during Report- tenure as handed down his Lean stated that: er, infringed Reports had Condensed proper It to remark that no interest of real value the market- unanimously opinion, court are that no place.” counsel Id. at 1377. Wheaton’s reporter any copyright has or can have in argued therefore that “Wheaton had ac- opinions by the written delivered in quired copyrightable interest all such * * * ”38 court; judges and that the thereof can- judges’ gift.’ Id. at opinions ‘by any reporter any not confer on 1377. right. Sergeant argued on behalf Thomas Id. at 1385. that, public policy, Peters as a matter of Although Thompson con- both Justices opinions the of the Court must be public to other issues in the domain and not Baldwin dissented sidered to be 18, 1834, arguments Joyce explained expectations "Wheaton’s 39. On March after oral 37. that 14, 1834, regarding copyrightability Reports Story of his were closed on March Justice entirely Id. at 1374. had an reasonable basis.” extraordinary conducting took action of preargument Wheaton wrote In a memorandum conference with both Wheaton and Peters the Webster, recognized it could be Daniel he that day Court down its decision before the handed opinions the Court not he held that the controversy. try get to to them to settle their recognized copyright. Wheaton that to Story gave copy both men a of a memorandum hold, be "re- if the Court should so he would parties that the decision of which advised they arguing Reports, duced because Court, down, unanimously if handed would individually susceptible copy- parts included right, right property did or could exist hold that no pro- compilations constituted entitled to opinions, that the Justices in the Court’s entirety.” Id. at tection in their 1374. upon Report- power its were without to confer it, majority opinion, as I read is based on The marginal any copyright ers thereto. As to the argument, acceptance of Wheaton’s Wheaton, by prepared how- notes and indices Supreme rejected by Court. ever, upon finally but not the Court had touched argued part not the ”[w]ere 38. Paine litigants’ rights. “Under the cir- determined the give away? opinions judges own to concluded, their cumstances,” the memorandum "the record, pretended? opinions as is Are matter of thinks, subject for that it is a fit honoura- Court * * * put opin is no law or custom to [T]here parties.” compromise ble between the at * * * record, they put upon ions Nor were ever Webster, Wheaton re- 1380. On the advice * * * copy[right] The on record this case. suggested compromise. jected the new, original opinions, they as were the unpublished, belonged to some one. must have Joyce his Justice ”[i]n also noted dissent. 40. judges, they gave it to Mr. Wheaton. If to the that, carefully proceedings Baldwin noted evident; belong because That it did to them remand, rights might prove Wheaton still his they write out are bound no law or custom to notes, marginal literary property in ‘the * * * right, opinions. What such elaborate then, decided, points syllabus of the cases and manuscript? public claim to the can the evidence, and the the record and abstract of reporter’s duty down the The is to write or take Pet.) (8 at volumes.’ 33 U.S. index to the several opinions. to aid him If the court choose 1883).” (F. 698g Brightly Id. at 1384-85 n. ed. theirs, complain?” giving anyone them can Pet.) (8 argument reported in 33 U.S. That Peters, Joyce appro Although majority v. quoted Wheaton cited decided portion short of Wheaton v. in a cen Peters noted that “on the decision’s priately footnote, n. it did not discuss point noncopyrightability of the tral —the leading case in detail. It did not was una of the Justices —there opinions Rather, even cite Banks v. Manchester. impedi no nimity: the could allow the majority discussed Callaghan possible to the fullest dissemination ment suggested manner that Callaghan judgments.” Id. at 1390. of its having quali- must be viewed as somehow Peters, impact my v. Wheaton fied v. and its Wheaton Peters’ rationale has and last- judgment, been both broad holding. I agree direct do not that Calla- ing.41 concluding sentence Justice ghan be read in I can that manner. Nor do “a destroyed presump- agree McLean’s majority’s suggestion with the teaching by Wheaton, ownership, long Callaghan shared not come tion “does through Slip with clarity.” unmistakable predecessors and the Justices them- his I op. at 8. For teach- Callaghan’s believe selves, given which if force of law ing is clear when that case is read tan- Reporters have bestowed would Manchester, dem with Banks v. Supreme title Court exclusive (1888), L.Ed. 425 expressions those classic of American law believe it must.44 legacy that constitute the Court’s essential Manchester, facts, in Banks on its nation.” Id. at 1386. case in pub volved a which the defendant In annotation only the lished had been “Literary Law,” Property at Common published by plaintiff. earlier Callar (1883), Henry Fed. 593 authored Wade hand, ghan, on the other on its facts was a Rogers.42 Rogers quoted concluding the in the only pub case which defendant not Peters, of sentence v. and added Wheaton plaintiff’s lished earlier-published the court copyright reporter that that the can “[a]ll opinions, the copied defendant also head-notes, his own is individual work—the part plaintiff’s the of law —the case, analysis the statement of the or sum- head and the the circuit expressly adopted passed by chester Congress, the under statutes regard all findings of fact in to products court’s secured in the of the labor be in discharge Reports of Freeman’s Illinois by judicial in the volumes done officers in litigation.47 Callaghan regard noted to judicial The of their duties. whole work 38, inclusive, Judge by au- 32 to that judges done the constitutes the volumes by quoting approval as did so with stated that "it is to be taken 47. Court 45. * * * true, findings Judge in what the defendant in that the of fact made Circuit exclusively the Callaghan The American Law Journal’ was opinion Myers v. first in Drummond's judges, comprising not the work of the (which plaintiffs to 38 of dealt with volumes 32 opinion or or the commis- decision the court Reports) reported in 10 Illinois as Freeman’s the sion but also the statement of the case and syllabus (1881) opinion 139 and from his second Bissell 251, at or head note.” 128 U.S. (which Callaghan, Myers dealt vol v. with in at 39. reports) reported to as 36 46 of the same umes (C.C.N.D.Ill.1883). Judge Drum 20 Fed. in Callaghan Story’s expressly adopted Justice 46. reported opinion is in 5 Fed. mond’s first also expressed Gray in view of Wheaton v. Peters as (C.C.N.D.Ill.1881). Judge Drum Both Russell, (1839) (and Story, reported v. in 1 solely on he relied show that mond’s 5,728 reported No. in 10 Fed. Cases as Case findings v. and he made his Wheaton Peters that 1035). Story that case that it Justice stated in principles in with stated of fact consistent the v. was Tittle the court Wheaton [in doubted ], that case. his in Peters that Mr. Wheaton had notes, arguments marginal and in the own counsel as arranged prepared in work.” his U.S. 185. Id. 128 at 9 S.Ct. at opinion give had stated in his first plaintiff, Drummond a decree to the although “appearance although there was an that it is that claimed the of the performed” by independent labor defend- paging the cases and of the volumes are editors, he found as a fact that it ant’s protected by a copyright.” (Emphasis “Mr. Freeman’s apparent volumes added). accepted Judge The Court Drum- in some used; were instances words and mond’s “the arrangement conclusion that others, change, in copied without sentences paging of law cases and the of the book form; only in the changed conclusion may depend simply print- on will of the the irresistible, large portion that for a of the er, reporter, publisher, of the or or the work obtained informa- [defendants] decided, order in which the have been cases Mr. tion volumes of Freeman.” from the other accidental circumstances.” 660, 189.48 at S.Ct. at U.S. Id. at 9 S.Ct. at 190.50 regard In to volumes 39 the Court case, Callaghan, as I read that treated quoted Judge finding Drummond’s of fact opinion “Upon plagiarized pages plaintiff’s made in second that: the his vol- volumes, comparing parts of each question of solely umes as a fact and that * * * no I think there can doubt that in applied principles enunciated case, respects, some each Freeman v. Wheaton Peters all factual circum- been volume has used the defendants in presented in stances that case. Those fac- head-notes, facts, statements circumstances, stated, tual as I have were the arguments of counsel.” 128 U.S. at in sharp presented contrast to those 661, 9 S.Ct. 189.49 Manchester, Banks v. decided tandem Judge Drummond observed in his second with Callaghan.51 to volumes 39 to 46 that must, course, panel Our follow Calla- be, appears “fact and indeed it is not ghan. panel our But must also follow controversy, in arranging Wheaton v. Peters and Banks v. Manches- paging order of Callaghan, ter. as I read sim- volumes, different the Freeman edition has ply applied principles enunciated been followed the defendants.” Id. at entirely Wheaton v. Peters different fac- He, however, S.Ct. 189. added in presented tual circumstances than those sentence, so, the same that “while this is either or in inclined, should feel Wheaton v. Peters merely on Banks independent account and of other matters Manchester. found, editions, Judge again 48. say, taking Drummond as a matter two when I the whole fact, plagiarized plaintiffs together, defendant the Freeman have volumes been used head notes and statements of cases in editing publishing the defendants’ vol- paging manner that "the the [defendant’s] umes." Id. at 9 S.Ct. at substantially plaintiffs volumes is the same [as page numbers] so that cases in the corre- unlikely quoted Judge It is not that the Court sponding appear page." volumes same pag- Drummond’s discussion of the identical Id. response legal the ination of volumes in to a argument Callaghan. made the in defendant apparently

49. The Court its made own examina- tion of 39 to argued volumes 46. For it added its own paging Defendant that of the ”[t]he finding significant "one of that the most evi- wanting equally any Freeman edition is in ele- infringement frequently dences of exists in the literary property, orginality ment of or exclusive volumes, namely, copying defendants' the of the ownership. print- Ever since the invention of errors made Mr. Freeman.” Id. 128 U.S. at order, ing, paged books have been in numerical 662, 9 S.Ct. at 190. might appellee equal propriety and with claim system property an exclusive in the of Arabic Judge quoted 50. The Court also Drummond’s paging numerals as in the his books. of More- finding although object that the of the defend- over, merely printed paging the the mechani- plagiary plaintiffs page ant's of the printer, performed cal labor the is never of and was to avoid "confusion in the references and publisher.” the 128 U.S. at author cases," of examination the he did not S.Ct. at 183. matter, independent that fact "as an but in con- existing nection other with similiarities between defendant, long-es- applied and The consistent with law stated principles The of practice publication in of tablished the law Supreme Court cases in all three England in and in reports, both the United appropriate I that an same. believe the States, in pagination used star order to requires principles of application those particular pages permit jump citations to in interlocutory order be court’s the district clear, reports. It thus plaintiff’s “U.S.” affirmed. rather than reversed Banks, purchase in the facts of of a my pagination that if For it is view defendant’s “L.Ed.” of defendant’s because any in at had issue report law been pagination, completely of star use eliminat- cases, would the Court those three purchase any plaintiff’s ed the need to pagination star to hold that have hesitated Banks, in reports. “U.S.” Plaintiff had reports published would in a volume of law Peters, plaintiff sought in Wheaton That copyright. subject not be to reports.56 enjoin of defendant’s law all only that has con- conclusion Plaintiff, however, substantially amend- I turn now to precise issue.52 sidered Judge original complaint. ed its Hazel decision Banks. the Second Circuit’s by “stipulation parties stated that majority’s conclusion agree with the For only the bill was amended to include of case that “the treatment charge infringement arising out of the Callaghan was not cru- pagination in and cases, the division into decision” in that cial to the Court’s volumes, the table of and nu- op. At 1224. pagination star merical or indicate reports in the official the different V. where points cases and decided be found.” majority’s acceptance I dissent from the added). (Emphasis at Banks thus Id. 386. district court’s conclusion directly presented questions concerning the does not MDC’s claim.”53 “Banks “arrangement of the cases” plaintiff’s and The Second Circuit concluded At 1225. pagination.” use of “star the defendant’s infringement ac plaintiff’s Banks that plain properly tion was dismissed.54 argued that “the re- broadly Defendant eleven volumes tiff claimed Banks that the copyright have a porter cannot (V 49) of defendant’s 38 to him his produced by the work official ols. reports, forty suggested “L.Ed.” contained vol capacity” “broadly which further (Vols. paid employee umes 156 to is that of a labor inclusive) employer.” 180-195, plaintiff’s accordingly re in the “U.S.” vests added). Judge infringed (Emphasis on its “U.S.” ports, 387-88. argu- those reports.55 rejected Hazel both broad has, course, added). (Emphasis 169 Fed. at held that such details.” 52. The Second Circuit pagination publication of other material 391. public is not that is in the domain Eggers copyright. See v. Sun the discussion to include 40 volumes of 55. Defendant was able (2d Cir.1920), Corporation, Fed. Sales reports of its the "U.S.” volumes infra, reports 1247. "L.Ed.” because the defendant’s type substantially printed were smaller ”[t]his district court stated that arguments were omitted. The of counsel MDC, Banks, relying upon has finds syllabuses in the and other editorial matters fragile bark sail chosen rocky precise also more defendant’s volumes were “Banks shoals of law” and that substantially shorter than those Publishing prohibit Company does not plaintiffs volumes. obtaining * * * F.Supp. publications.” at 1577. of its "original Judge plaintiffs Hazel noted that charged reproducing with the defendant bill held that concur "[w]e 54. The Second Circuit cases, cases, syllabuses the table of index of reasoning Judge and conclu- with Hazel in his digest, together pagination and order with the of arrangement reported the cases in sion that of copyright- printing arrangement the decisions of sequence, paging and into vol- their distribution (Em- by predecessors." complainant ed umes, importance not of as to are features such added). phasis Id. at 386. reporter copyright protection of entitle the to 1246 recognized right ground He complaint.”

ments. that the to of Judge Hazel then paid copyright employee, the of a work concluded “an infringement that action for speaking, employ- in generally did vest his does not if lie the defendant’s asserted concluded, however, er. wrongdoing simply He that under reprinting consisted of reporter Banks v. Manchester the “official the decisions of the court the paging, mth Court, Supreme though of the sworn the defendant independently supplying not, officer, however, headnotes, public cases, is confined to statements of etc.”58 Id. rule.” Id. added). strict at 388.57 at 391. (Emphasis Manchester, Judge Citing important Banks v. is Ha- It to note that Banks con- zel that held the court nor the sidered the factual relating circumstances “[n]either reporter public plaintiff’s motives policy, arrangement to that of cases. of any rights can in have exclusive the written In plaintiff’s arrange- to both the opinions or oral of the court.” of Id. 388. ment the cases and its of the (Emphasis added). concluded, volumes, Judge Hazel Judge Hazel concluded that for a concurred, reporter the Second Circuit merely arrange “the “to the cases in reporter’s protection right to sequence must limit- page] to the volumes [and [were ed to his intellectual labor” and that “for features or of im- characteristics such not] simply adopt plan group- portance another to the of as to entitle him to pro- ing cases, making marginal refer- of tection such details.” 169 Fed. at 390. paging ence the of added). the volumes (Emphasis conclusion, issued That when direction, under way his without in Judge read with Hazel’s discussion of all pirating origination, the of his substance is of controlling three the Supreme Court enough, my judgment, not in cases, to establish was obviously the based on reason infringement.” Id. at 390. arrangement that such an pag- and the of ination the original volumes were not Judge expressly Hazel relied on Justice of works authorship meaning within the of opinion Harlan’s written as a Circuit Jus- Copyright Act.59 Miller, tice in 91 Howell v. Fed. 33 (1898). quoted approv- C.C.A. 407 He with Attention should therefore be focused al Justice Harlan’s statement Mil- reported whether the in “[i]f vol- books, ler had cut from Howell’s delivered umes of the “U.S.” litigation state, had, him the fact, General Laws of merely arranged been “in se- Michigan printed, pages quence.” as therein and the IFor do not believe that can compila- so cut out had been used when his be doubted all in litigation volumes printed tion this had was been done and were record dis- considered —if nothing more—there would have been no trict court and Second Circuit Banks. Judge explained 57. Hazel “[t]here abun 58. It to be noted that Justice Harlan awas holding precedent for that a salaried dant re member of the Court that decided v. Banks statute, porter Callaghan. unless of forbidden Manchester and He summarized headnotes, of what each case held secure in his v. state Howell cases, volume, suggest Miller. Justice Harlan did not ments of title cases, reporter official status played grouping digest, synopsis factor that or index part in either decision. arguments, portions and in such short of his compilation authorship passage requires prece- as time not exer has eroded the skill,” thought cise dent v. citing of intellectual Howell Miller. For Justice Harlan’s Manchester, recently quoted approval statement was Banks 128 with v. U.S. 32 Co., Georgia F.Supp. State v. Harrison L.Ed. at 388. (N.D.Ga.1982), per stipulation, vacated Judge Hazel added that it “had held been (1983). F.Supp. previous the federal courts date [Callaghan ] decision that an official re- expressly The Second Circuit concurred in porter protection is entitled to for his Judge "reasoning Hazel’s and conclusion that marginal synopsis notes or statement of reported sequence, cases counsel, arguments abstract of volumes, paging, their and distribution into Peters, indexes volumes. See Wheaton v. importance features of such entitle the 1055; Russell, Story, Gray Pet. L.Ed. copy-right reporter protection de- 5,728.” 11 Fed.Cas. No. Id. at 388. tails.” Id. at 391. arranged in liti- cases since there is noth- each volume “U.S.” Examination any finding ing in the record to that official the Court’s gation establishes may in fact to how West have ar- (whose testimony Bancroft Davis reporter, ranged its in all the volumes of re- cases Judge opinion) Hazel’s quoted in was ports published by January it from he testi- he when exactly what said meant Second, greater perhaps to 1969.61 they “as simply he took the cases that fied publishes importance, simply if West cases of those 389.60 Examination came.” chronological sequence cases in the the cases volumes establishes “U.S.” by particular down are handed sequence in were, fact, published in in the fall within the would they had been decided. which circumstances and decision factual in this case shows that The record Banks. counsel asked West’s whether district court disagree majority’s sugges- I with theory “the num- West’s it was 1225-1226, tion, has that time somehow arrangement” of West’s express the bers application principles eroded Banks’ (A301). replied counsel West’s cases. by v. of law that were settled Wheaton do, (Id.). your certainly Honor.” “they The Second Circuit followed Peters. district court’s counsel directed the West’s in Eggers Corpora- Sales Banks Sun to F.Supp. 100 illustrate to 300 attention tion, That re- supra, 263 Fed. 373. (A203). arrangement. West’s plaintiff’s argument jected which was to an addendum its brief MDC attached substantially as West’s the same Calla- compared how the cases (A32a A38a) that — argument in this The question case. ghan F.Supp. in 300 arranged have would been defendants’ use presented was whether the arranged by date had the cases been plain- the same used with the actual decision publication in its of Gener- copy-righted tiff were, fact, reported in 300 they as cases Report I Pershing’s World War Official al addendum shows F.Supp. That War, Secretary to the a document arrangement of was cases West’s actual domain, infringe could said to public be the method inconsistent with stated copyright. panel A of the Sec- plaintiff’s West, in its brief filed affidavits. West’s Henry Rog- Wade ond Circuit that included Court, argument by replied to MDC’s (see supra) affirmed the ers footnote only stating set forth its affidavits in- plaintiff’s district court’s dismissal practice” and stated that “current West’s fringement action. F.Supp. 1969 before “was of that defendants did On facts practice adopted.” current [West’s] any drawings, photo- reproduce brief, 11). n. (West’s p. any plaintiff’s or other feature graphs argument rais- to MDC’s admittedly subject West’s answer to that were pamphlet did, however, questions, neither of which use copyright. es two factual Defendants publication or in its the district court plaintiff’s were considered good First, mar- learning if affidavits that “there was majority. the West after question no report”; has for the there was ket the manner which West cover galley opinion designated for proof of an Judge Circuit Hazel and the Second 60. Both portions judge who obviously accept publication Mr. Da- wrote back refused testimony might publication. quoted prior said to vis' for corrections arranged suggest were in some other the cases reflect, it, record, does not read manner. pre-1969 practice reasons either practice. apparent of that abandonment about record I have doubts additional view, may, my Those factual circumstances For one of West’s before the district court. of the factual to the determination be relevant give does not that “West affidavits stated regard to merits in questions presented on the approve correc- judge opportunity "arranged” before its cases both how West has 51). (A prior publication.” While that tions injunctive permanent after For the regard West’s statement be accurate periods of sought by both West covers relief practice, judges appointed before 1969 current time. sending pre-1969 practice of will recall West’s did, fact, pages in imitate defendants that the volumes in which those get-up.” “plaintiff’s opinions published. attractive The Id. recognized court that defend- Sun Sales outset, As I suggested at the I would “may ants’ be called mean” and conduct follow the lead the First Circuit in facts, that, possible was “even on it Adm., Building supra, & Code Officials up printers

that set the official defendants’ grant and reverse the district court's of a book; report plaintiff’s copy from a preliminary injunction on this Section pagination identity suspi- leads to that 1292(a)(1) believe, appeal. For I as did the Fed. at cion.” 263 375. Circuit, judgment First that final in this court, however, express in reliance case should a more complete hearing await Banks, on its earlier decision in in stated on merits in district court and a regard “legally is not of later review of that court’s final decision on importance infringe- appeal. sufficient to constitute Section copyright.” ment of at 375. court part I concur in and respectfully dissent * * * “[assuming, concluded part for the reasons stated. plaintiff’s pamphlet any copyright- contains * * * matter, able we are of the infringement.” that defendants’ is not

Id. at 375.

It is thus clear that the Second Circuit’s

decision in Banks I does stand alone. suspect the reason that there are few but Billy Mary G. CULBREATH and Alice questions cases that involve of whether the Culbreath, Appellants, pagination of public document do- main is to copyright is because few BLOCK, Individually John his ca plaintiffs have ever tried to make such a pacity Secretary Depart as of the U.S. page claim in on numbers Agriculture; Shuman, ment of Charles their copyrighted publication.62 But what- Individually capacity his as Ad reason, ever the claim been has ministrator of the Farmers Home Ad rejected every court that occa- has had ministration; Hankins, Robert L. Indi question. sion to decide the vidually capacity his as State authority cited no has Arkansas; Director of Michael L. Dun contention it is entitled to away, Individually and in his official protection of either its capacity Programs; as Chief of Farmer cases or the of all the volumes George Smith, Individually and in his has January 2, since 1910 under capacity Program Specialist; as Farmer past either its practice. its current Harris, Individually John E. and in his particularly believe that on a County capacity Supervisor, Appel 1292(a)(1)appeal, Section should hesitate lees. suggest scope that the act No. 86-1080. protect can be said Appeals, United States Court may, facts, cases on the no Eighth sequential more Circuit. publication than chronological order Submitted June which the cases are handed down. doNor Sept. 4, Decided I believe on the record in this case that we suggest any way should scope enough is broad

protect placement of arabic

62. See the discussion of the numbers on a 1235n. 18. work, compilation Shakespeare’s supra, new notes statements of the cases counsel, arguments of mary the the in- of by prepared plaintiff the v. Wheaton —that dex, Pet.) (8 etc.” recognized Id. 33 U.S. at 596.43 subject copyright. Peters was Joyce impact Supreme 41. noted the of immediate Whea- Court of Iowa in its Northwest- publication ton v. Peters in to the of Reporter ern in the face of an Iowa statute Chancery Reports Johnson’s in Condensed 1836 give purported copyright which a to Banks. published opinions in which the earlier of Chan- argument thing West's that "there is as no such cellor Kent the were "released state of from copyright property right opin- a or other in the present they kept confinement in at which sustained, judges” ions of the was it should as by large means of the for sums asked the vol- have been. Id. at 56. 1386, umes which at contain them." n. 524. Id. Judge Circuit Brewer relied lower on the produced litiga- Wheaton v. Peters flood the of Manchester, opinion in court Banks v. 23 Fed. publishers by tion between law book reflected (1885), which in turn had relied on Whea- the “older cases” to which Professor Nimmer ton v. Peters on both of the lower court’s Building made reference his citation of Offi- opinions Myers Callaghan reported in v. in 5 cials, 5.06[C], Copyright, cited in 1 § Nimmer on (1881) (1883), Fed. 726 and 20 Fed. 441 which 5-58, p. n. 30. based on were also Wheaton v. Peters. The Henry Rogers Tappen 42. Wade was Professor of Court, course, Supreme of affirmed the lower Michigan University at the Law School of Judge on decisions which Circuit Brewer Law 1883. He later the law served on facul- relied it decided when Banks v. Manchester and ties Northwestern and Yale Law School. He Callaghan in 1888. appointed Appeals was for Court of the 1913, serving Second until his Circuit death 44. v. Manchester Novem- Banks was decided on (Judi- Judges See in 1926. the States United 1888, ber less than a month before Calla- States, 1983). cial Conference of the United ghan decided on The December 1888. opinions in both cases were written Justice later, years Publishing 43. A few in Banks v. Co., Blatchford. (C.C.Minn.1886), 27 Fed. 50 West success- fully right publish opinions sustained its the interpretation of exposition thentic in Banks v. Man- concluded The Court law, which, citizen, binding every is principles the application of the chester all, publication it is a estab- free whether v. Peters in Wheaton enunciated law, or inter- prevail on declaration of unwritten should that the defendant lished or a Callaghan, pretation of a constitution statute. In of that case. the facts application of the Court concluded at at 39. The Id. U.S. S.Ct. supported judg- law a principles of same quoted then the final sentence Court injunc- plaintiff was entitled to ment v. Peters added Wheaton “[w]hat relief on facts of that case. tive thereof, judge or confer cannot reporter as the basis of a on a a fac- The record in this case establishes him, they per confer cannot on other comparable situation to Banks v. Man- tual or on the State.” at at son Id. S.Ct. presented rather than that Cal- chester Hence, my is our it view that laghan. panel must follow Banks v. Manchester’s Callaghan, copied In the defendant had application principles enunciated plaintiff’s head notes and statements distinguish v. Peters and Calla- Wheaton only part report each case—the of a law ghan facts. copyright. cited Court v. Banks Manchester to its conclu- is In Banks clear v. Manchester that “there can be no sion opinions of published only the defendant judges, the work done together Supreme with Court Ohio capacity them in their official syllabus the statement judges.” 128 U.S. at 184. S.Ct. judges.45 In prepared by had also been concluded, It also consistent with affirming Wheaton the circuit court’s dismissal Peters, ground action, public that there “no plaintiff’s infringement v. prohibits reporter ob- policy” concluded Banks v. Manchester taining part of a law that: report “which will cover the matter which question public policy, is one of of his intellectual labor.” Id. result always judicial has there been a consen- 647, 9 184.46 in its Callaghan, S.Ct. at sus, from decision in the the time principles stated in both application of Peters, [, case of Wheaton v. Pet. v. in Banks Man- Peters and Wheaton 591], copyright could that no

Case Details

Case Name: West Publishing Company v. Mead Data Central, Inc.

Court Name: Court of Appeals for the Eighth Circuit

Date Published: Sep 4, 1986

Citation: 799 F.2d 1219

Docket Number: 85-5399

Court Abbreviation: 8th Cir.