Court rejects West's copyright claim for cases.

West Publishing Co. cannot claim copyright protection for its enhanced versions of federal appeals court and Supreme Court opinions, a federal judge ruled in May.

Judge John Martin Jr. of the Southern District of New York rejected West's argument that the changes and additions its editors make to court rulings entitle the company to claim copyright protection for the decisions it publishes in its widely used case reporters. He found that the work West does before publishing the cases does not constitute a "sufficient creative effort" to trigger the copyright law. (Hyperlaw, Inc. v. West Publishing Co., No. 94 CIV. 0589, 1997 WL 266972 (S.D.N.Y. May 19, 1997).)

"If one looks at each opinion as a whole, then it seems clear that the changes made by West are trivial indeed," Martin wrote. "Minor changes to the caption, the identification of judges and information as to the attorneys, together with the insertion of subsequent history, are not sufficient to qualify West's reprints as `original works of authorship,'" which is required by the Copyright Act.

Martin added that it would be unfair to allow West Publishing to "preclude anyone from copying what is basically a government document."

The plaintiff in the case was Hyperlaw, Inc., a small New York legal publisher that puts recent appellate and Supreme Court rulings on CD-ROM. The company electronically scans a small percentage of the opinions from West's case reporters, but it plans to begin scanning older cases so that users may link to any case cited in an opinion. Hyperlaw's lawyer told the court the company might eventually scan up to 75 percent of West's cases into Hyperlaw products.

West argued that its products should be protected as compilations of case law, but Martin said the correct analysis was to judge whether copyright law should apply to individual decisions.

"West's compilation copyright protects its arrangement of cases, its indices, its headnotes, and its selection of cases for publication, but these are not what Hyperlaw is copying," Martin wrote. "What Hyperlaw is copying is the individual reported decision...."

Martin acknowledged that West "performs a valuable service to the bench and bar" by correcting minor errors in the decisions and checking citations. But he said the corrections and additions West makes are not enough to render the cases original, creative works eligible for copyright protection.

Attorneys for West said the company doesn't view its changes to cases as trivial and vowed to appeal.

Bruce Schwab, a San Francisco intellectual property lawyer who did not participate in the case, said the decision would likely lead to closer scrutiny of legal publications whose content includes large amounts of government-issued material. "There are going to be some difficult questions confronted by those in the legal press," Schwab said.

He predicted that to protect their products, West and other publishers will turn to other legal theories, such as misappropriation, a form of unfair competition. Their opponents will likely argue that other theories do not apply once courts have stripped the content of copyright protection, Schwab said.

"There's a lot at stake on both sides" of the copyright battle, he added. "There will be a lot of energy and creativity going into reaching a resolution on this issue."