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Matthew Bender & Company, Inc. v. West Publishing Company

94 Civ. 0589 (S.D.N.Y., May 19, 1997) aff'd. 158 F.3d 674 (2d Cir. 1998)

In this case, the court held that plaintiffs, publishers of CD-Rom products containing United States Supreme Court and Federal Court of Appeals decisions, were free to copy such decisions from materials published by defendant West Publishing Company ("West").

West is the publisher of well-known compilations of court decisions, which appear in volumes featuring the West key number head note system. These key numbers and headnotes provide summary descriptions of various portions of the court's decision and permit, among other things, searches for court decisions covering the same topic by matching their key numbers. Because plaintiffs did not copy the headnotes or key numbers, the court held that plaintiffs were not copying the portions of West's compilation protected by copyright.

As such, the question the court was called upon to decide was whether the changes West made to the each individual decision (apart from the key numbers) created a derivative work entitled to copyright protection. To be entitled to such protection, "[these changes] must be at least some substantial variation from the underlying work, not merely a trivial variation." (citations omitted).

West altered the court decisions by, among other things, identifying the attorneys who represented the parties in the action, adding parallel citations to court decisions cited in the opinion in question, abbreviating the caption of the case, and checking citations cited by the court for accuracy. Notwithstanding its recognition that the changes made by West to the text of federal court decision required substantial expenditures of time and effort to produce, the court concluded that, collectively, they were trivial and not entitled to protection as a derivative work. Said the Court:

The changes that West makes to an opinion that it publishes do not make the reported decision "independently copyrightable." If one looks at each opinion as whole then it seems clear that the changes made by West are trivial indeed. Minor changes to the caption, the identification of judges and information as to the attorneys [who handled the case], together with the insertion of subsequent history, [and various parallel citations to opinions cited by the court in its decision] are not sufficient to qualify West' reprints as "original works of authorship." 17 U.S.C. §102(a).

Because West had no interest in the individual decision protected by copyright (apart from its key number system) plaintiffs were free to copy those decisions from West materials. 

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