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  ---------- Forwarded message ----------
  Date: Mon, 29 Jan 1996 21:01:27 -0500 (EST)
  From: Alan Sugarman <sugarman@hyperlaw.com>
  To: cni-copyright@cni.org
  THE HYPERLAW REPORT  January 29, 1996
  On January 16, 1996, Judge Gladys Kessler, United States District Court for the 
  District of Columbia, dismissed part of a FOIA suit brought by Tax Analysts to 
  force the Department of Justice to turn over legal databases licensed by West 
  to DOJ pursuant to a 1988 contract (a successor contract to a 1983 contract.)
  The court construed the contract to require DOJ to return to West both 
  "proprietary" and "non-proprietary" databases (terms defined in the contract) 
  upon the conclusion of the contract and concluded that the "non-proprietary" 
  databases were not under the "control" of DOJ, and therefore were not subject 
  to the FOIA.
  As a subsidiary argument to the FOIA and contract interpretation arguments, Tax 
  Analysts had argued that even if the contract could be construed to require the 
  return of the "non-proprietary" databases, the contract was not valid because, 
  among other reasons, the licensing provisions were "nothing more than an 
  attempt by West to create a private copyright in public domain data in 
  derogation of the Copyright Act."
  The matter was before the court on a motion to dismiss on the pleadings only.  
  The parties had not taken any discovery.  Presumably as a motion to dismiss, 
  there were no record facts before the court.  Nevertheless, the court relied 
  upon facts not in the pleadings including affidavits submitted by West and DOJ 
  and "facts" recited by and assumed  in the West v. Mead case, which facts were 
  disputed by Mead, and were never found by a court (because the case was settled 
  after the 1988 trial on the merits.)
  The court cited West v. Mead decision without discussing Feist or the Joyce and 
  Patterson law review article cited with approval in Feist.  Although the court 
  stated that the West v. Mead case held that the Westlaw database was 
  copyrightable (which it did not), West v. Mead actually concerned the internal 
  pin-point pagination of the West opinions which Lexis was using.  Moreover, the 
  court's citation to the Callahan case is inapposite.
  Even if the motion had been a motion for summary judgment, the court did not 
  have before it complete facts as concerns JURIS.  West did not license the 
  Westlaw database to DOJ, but licensed public domain material from the Westlaw 
  database.  The legal case databases licensed by West to DOJ DID NOT INCLUDE THE 
  WEST PIN-POINT CITATIONS.  It appears the court assumed that West licensed the 
  Westlaw database to DOJ.  However, the "non-proprietary" databases licensed to 
  DOJ were a non-proprietary subset of the Westlaw database, and excluded the 
  headnotes and the internal pagination.  Thus, West v. Mead would appear to be 
  JURIS was essentially a DOJ clone of the FLITE legal text retrieval system 
  created by the Air Force in the early 1970's (presumably, DOJ did not 
  acknowledge in its filings that JURIS was a derivative of FLITE.)  In 1976, the 
  Air Force reached an agreement with West under which the Air Force with 
  taxpayer funds keyed in West reporters of public domain federal court opinions 
  and provided back to West an electronic database from this data (this database 
  formed the backbone of Westlaw.)  Since DOJ wanted access to these same FLITE 
  created databases, it licensed this data back from West in 1983 (prior thereto, 
  I believe, DOJ obtained the same data directly from the Air Force.)  This was 
  of course the context in which the 1983 and 1988 West-DOJ agreements were 
  negotiated and perhaps would have led to a better understanding of what 
  "proprietary" and "non-proprietary" meant.  One could well argue that the 
  non-digest versions of the historical West decisions keyed in by the Air Force 
  is the non-proprietary data to which the contract referred.
  As another example of how data from the government was recycled by West, in the 
  1980's and even today, West pursuant to contracts with the Administrative 
  Office of the United States Courts acted and acts as a printer of slip opinions 
  for several circuits, and creates a database under the government contracts in 
  the process.  These government funded circuit court databases were then 
  licensed by West back to DOJ under the rubric of "Federal Reporter."  Had the 
  court considered all of the affidavits in its record, it would have considered 
  this fact, because HyperLaw filed an affidavit to this effect.
  The court's comments about the ease of obtaining court opinions (say, more than 
  5 years old) from the court clerk or anywhere else and the so-called 
  availability of free law libraries is not based on facts in the record (since 
  there was no record).  Indeed, had the court learned that the Air Force keyed 
  in the decisions from West's books in 1976 because the decisions were not so 
  easily obtained directly from the courts, perhaps it might have reached a 
  different result.  Moreover, the Supreme Court in the original Tax Analysts 
  case in (492 U.S. 136 (1989)) had noted in a footnote the difficulty Tax 
  Analysts had met in obtaining new tax opinions from district court clerks.
  Although the motion was before the court on the pleadings as a motion to 
  dismiss, it would appear that the contract is sufficiently ambiguous that it 
  would be inappropriate to construe the contract without resorting to "parole 
  evidence" and it  would also appear that the court considered and decided 
  numerous facts both outside of the pleadings and not in the record.
  Here is an excerpt from the court's opinion:
  Tax Analysts v. United States Dept. of Justice, pp. 13 -14, No. 94-0043, 
  January 16, 1996
  	As to Plaintiff's first argument -- that the entire 1988 contract is 
  invalid -- it is incorrect that West is claiming a "property interest" in the 
  case law of the U.S. Courts and administrative regulations of government 
  agencies.  What West is claiming is an ownership interest in the "electronic 
  products it has created," DOJ Motion at 9, namely, the <emp>electronically 
  formatted</emp> case law, administrative decisions and other material that is 
  provided to DOJ pursuant to the  1988 agreement.  Making data "readable" for a 
  software program (such as JURIS) takes considerable time and effort.  The text 
  of every opinion, administrative ruling, etc., must be formatted consistent 
  with JURIS conventions, including text and file restrictions, paragraph 
  indentations, centering of headings, and replacement of JURIS-unacceptable 
  characters with an equivalent word or abbreviation.  Plaintiff offers no 
  support for its contention that West's contribution was solely "mechanical 
  drudge- or machine-work." Pl.Opp. at 7.
  	And as Defendants properly point out, the public may still obtain the 
  public-domain material -- i.e., non-West formatted material -- from the 
  government directly for nominal copying costs (e.g. through the clerk's office 
  in a courthouse). The public may also obtain this material for free from 
  libraries.  In any case, Defendants correctly argue that the public does not 
  have a right to the electronic format that West has created (at considerable 
  expense) pursuant to its contract with DOJ.
  	West has not attempted to license "public domain" data, but rather its 
  <emp>electronic compilation</emp> of public domain data, which it is legally 
  entitled to do.  See West Publishing Company v. Mead Data Central, Inc., 616 
  F.Supp. 1571, 1577 (D. Minn. 1985) (holding that West database is copyrightable 
  because "while the data lies in the public sphere, the arrangement and 
  pagination of this public material reflects the skill, discretion and effort of 
  the person crafting the arrangement."), aff'd 799 F.2d 1219 (8th Cir. 1986), 
  cert. denied, 476 U.S. 1070 (1987); see also Callahan v. Myers, 128 U.S. 617, 
  649 (19??) ("such work of the reporter, which may be the lawful subject of 
  copyright, comprehends ... that order of arrangement of cases, the division of 
  the reports into volumes, the numbering and paging of volumes ...")  Thus, 
  Plaintiff has failed to establish that the 1988 contract is invalid, and 
  therefore that basis for arguing that DOJ "controlled" the West-provided data 
  must fail."
  Disclosure:  HyperLaw is a plaintiff-intervenor in Matthew Bender's copyright 
  declaratory judgment action pending presently in the Southern District of New 
  York.  HyperLaw submitted an affidavit in the Tax Analysts case in which it 
  took no position on the merits, but brought to the courts attention the 
  government funded circuit court databases created by West and licensed back to 
  DOJ.  In addition, Tax Analysts on HyperLaw's behalf paid the costs to 
  transcribe and thereby preserve certain transcripts of depositions taken in the 
  HyperLaw case.
  Alan D. Sugarman        Federal Appeals on Disc tm CD-ROM ::
  President               Opinions of US Courts of Appeals  ::
                          1993 to Date - All Circuits       :: 
  HyperLaw, Inc.  &reg;                                     :: 
  New York, NY 10023    	                                  ::
  sugarman@hyperlaw.com   212-787-2812   212-496-4138(fax)  ::
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