Here’s West’s Motion for Rehearing in the
text portion of the case. (None filed on pagination.)
Carl Hartmann
---------------------------------------
97-7910
Matthew Bender & Co., Inc. and HyperLaw, Inc.
v.
West Publishing Co.
PETITION FOR REHEARING WITH A
SUGGESTION FOR REHEARING EN BANC
PRELIMINARY STATEMENT
Defendants-appellants ("West" or "appellants")
petition this Court to grant rehearing, with a suggestion for
rehearing en band, from the decision of a majority of the panel
issued November 4, 1998. The majority opinion departs from the
settled law of this Circuit with respect to the showing
required to demonstrate 'originality under the Copyright Act.
The questions raised on this petition are of central importance
to copyright law and of paramount concern to authors,
publishers, and users of copyrighted material. It is
respectfully submitted that the majority opinion, if allowed to
stand, would create confusion within this Circuit, and provide,
contrary to statutory intent, under protection for compilations
and derivative works, thereby creating a strong disincentive
for the creation of these works.
Appellants request rehearing of the majority's
decision that West's selective revision, expansion, and
updating of public domain decisions issued by the United States
Supreme Court and the United States Court of Appeals never
involve sufficient "originality" to entitle West to protection
from verbatim wholesale copying of its editorial enhancements.
As strongly set forth in the dissent, this decision relies on
unsound tests for "originality". Indeed, the majority opinion
erects barriers to copyright protection not authorized by - and
explicitly warned against - in Exist Publications. Inc. v.
Rural Telephone Service, Inc., 499 U.S. 340,
111 S.Ct. 1282 (1991), and in this Court's
post-Feist decisions. Moreover, the majority's decision
conflicts with the established law of this Circuit, before
and after Feist, that extends protection, in derivative
works, to distinguishable, non-trivial additions and
revisions.
Important questions, worthy of en band review, are
also raised by (i) the majority's erroneous affirmance of a
sweeping declaratory judgment based on speculation and an
improper allocation of the burden of proof; and (ii) the
majority's erroneous application of the "clearly erroneous"
standard of review to a question of statutory interpretation
involving undisputed facts.
POINT I
THE MAJORITY DECISION IS IN CLEAR CONFLICT
WITH FOIST AND THE WELL-SETTLED LAW OF THIS
CIRCUIT
A. UNTIL NOW THE INTERPRETATION OF FEIST
IN THIS CIRCUIT HAS BEEN
WELL-SETTLED
In assessing the "originality', of Welts work for
Copyright Act purposes, the majority acknowledges Feist as the
primary authority. It adopts the language -- a "modicum of
creativity" or "minimal creativity" - used by the Feist Court
in denying protection to compilations produced merely by "sweat
of the brow," with no exercise of independent choice or
judgment.
Yet, unlike other post-Feist decisions of this
Court, notably the unanimous opinion in CCC Information Services. Inc.
v. Maclean Hunter Market ReDorts, Inc., 44 F.3d 61 (2d Cir.
1994), cert. denied, 116 S.Ct. 72 (1995), the majority opinion
ignores the clear guidance in Feist as to the
proper interpretation and application of the "modicums test.
In CCC, Judge Leval analyzed Feist, emphasizing
the
dangers of reading the decision as anything more than a
rejection of protection based solely on "sweat of the brown In words
equally applicable to this case, he wrote:
The Court repeatedly stressed that the
required level of originality is minimal,
and that most compilations, merely by
exercising some independent choice in the
coordination, selection, or arrangement of
data, will pass the test. The telephone
directory failed because it was found to be
completely devoid of originality...
The thrust of the Supreme Court's ruling in
Feist was not to erect a high barrier of
originality requirement. It was rather to
specify, rejecting the strain of lower court
rulings that sought to base protection on
the "sweat of the brow," that some
originality is essential to protection of
authorship, and that the protection afforded
extends only to those original elements.[Footnote 1]
Because the protection is so limited, there
is no reason under the policies of the
copyright law to demand a high degree of
originality. To the contrary, such a
requirement would be counterproductive. The policy embodied into
law is to encourage authors to publish
innovations for the common good - not to
threaten them with loss of their livelihood if their works of
authorship are found insufficiently imaginative.
44 F.3d at 65, 66 (emphasis in original). [Footnote 2]
Until now, the interpretation of
Feist set forth in CCC has reflected this Court's consistent
view. In Key Publications. Inc. v. Chinatown Today Publishing
Enterprises. Inc., 945 F.2d 509 (2d Cir. 1991), the Court
described the minimal level of editorial judgment required by
Feist as "de minimis thought." Id. at 514. In Kregos v.
Associated Press, 937 F.2d 700 (2d Cir. 1991), the Court
emphasized that the Supreme Court defined the "narrow category
of insufficiently original works as those in which the
Reselection and arrangement of facts [is] so mechanical or
routine as to require no creativity whatsoever.'" Id. at 704
(emphasis added), quoting Feist, 111 S.Ct. at 1296.
Indeed, this Court has only once before interpreted Feist to deny
copyright protection to a textual work of any kind, and
that case, Victor Lalli Enterprises, Inc. v. Big Red Apple. Inc., 936
F.2d 671 (2d Cir. 1991), exemplifies the rare situation in which "the
creative spark is so utterly lacking as to be 'virtually nonexistent
CCC, 44 F.3d at 67, citing Feist, 111 S.Ct. at 1295. In Victor Lalli,
the plaintiff chart publisher was found to have made no independent
selection or arrangement at all, since he adopted "the exact same
formats as every other publisher and arranged data according to
"purely functional grids that offer no opportunity for variation." Id.
at 672-73. [Footnote 3]
B. THE MAJORITY IMPOSED AN "ORIGINALITY STANDARD THAT DEMANDS
FAR MORE THAN FEIST OR ANY PRIOR DECISION OF THIS COURT
The majority does not hold that West, like the publishers
in Feist or Victor Lalli, exercises no independent choice at all, or
makes exactly the same choices made by virtually all other publishers,
or makes only ``mechanical" choices. No such finding is conceivable in
this case, given the undisputed evidence that (i) West's case reports
differ in numerous substantive ways from public domain opinions and
reports of other publishers; and (ii) the expression in West's case
reports is the result of dozens of different,
independent editorial choices. [Footnote 4]
Instead, the majority subjects West's independent
editorial judgments to a series of tests, all of which are
inconsistent with Feist and prior decisions of this Court and
undermine Congress' longstanding decision to extend copyright
protection to compilations and derivative works. Moreover,
the majority’s analysis errs in focusing on editorial choices
as ideas rather than on the protectible expression that is
the product of editorial choice.
1. The Majority’s Two-Part Threshold Test Must Be Rejected
The majority opinion's analysis is premised on its
general ruling that independent choices are insufficiently
"original" unless they both (i) involve more than three
options, and (ii) are '`non-obvious.''[Footnote 5] Each of these tests,
particularly as applied by the majority, imposes a more
demanding standard than that found in Feist and CCC. To
require that editorial choices meet both tests is to erect a
high hurdle -- one that is a complete barrier to
even extremely thin copyright Protection -
that is dramatically at odds with Feist's "extremely low"
threshold.
The provenance of this test is difficult to discern
from the opinion. Feist and Victor Lalli, the cited
authorities, provide no basis for the requirement that each
choice made in a compilation or derivative work must involve
more than three options. On the contrary, those cases involved
no independent selection -- i.e.. no options at all. [Footnote 6]
Nor do Feist or Victor Lalli support the use of the
term "obvious,, - which the majority gives a broad, elastic
interpretation - to negate originality. Indeed, Feist cautions
that even "crude, humble or obvious expressions of independent
thought will ``make the grade quite easily. 111 S.Ct. at 1287
(emphasis added). Feist and Victor Lalli stand for the narrow
proposition that choices do not show the ``slightest trace of
creativity', (which is all that is required) when they are
so ``garden variety" and '`entirely typical" -- i.e.,
virtually identical to those dictated by some essentially
universal practice - as to be "practically inevitable Id.
at 1296-97 (emphasis added).
The majority, on the other hand, loosely uses the
"garden variety," "typical, H and "obvious" to negate the
originality of the expression that results from numerous
decisions that are simply (i) consistent with general
principles of legal reference [Footnote 7] (but undeniably subjective in
their particulars), or (ii) logically responsive to the
preferences, as evaluated by West, of its readers. [Footnote 8] In CCC,
this Court warned that originality is not negated by logical
choices that respond to the needs of the market." [Footnote 9]
Some of the majority's improper extrapolations
from Feist go even further, finding an absence
of originality merely because the Court shares West's
subjective opinion of what constitutes the best choice. [Footnote 10]
In sum, the majority negates the clear originality of
West's work by misreading Feist and ignoring, in relevant part,
CCC. Indeed, as the dissent notes, "all of West's basic choices
involve subjective judgment," and many of them - particularly
those involving the evaluation of the relative usefulness of
dozens of citation sources - plainly display as much
originality as the decisions in Key Publications. See Dissent
at 4-5, 7-8.. [Footnote 11]
Furthermore, it is plain -- and the majority does not find
otherwise -- that West could make dozens of different choices,
in a single case report, without departing from some "industry
standard," breaking the law, or even looking foolish, leading
to entirely different expressive content. As Judge Sweet
concludes, "there is no evidence that any of West's choices are
commonplace, 'practically inevitable,' dictated by law, or that
they follow any external guidelines.’ Dissent at 4.
2. The Majority's De Facto Application of the Merger Doctrine
Misconstrues the Law of this Circuit and Conflicts
with CCC
The majority also holds that West's independent
selection, revision, and arrangement of citations should be
denied protection because "a competitor would have
difficulty creating a useful case report without using many
of the same citations." Maj. Op. at 33 [Footnote 12] The majority's
concern has no factual basis in the record. [Footnote 13] More
important, the majority's reasoning is in
clear conflict with CCC, which explained that,
under Feist, the way to prevent the monopolization of factual
data is not to create barriers to copyrightability but to
limit the extent of protection strictly. 44 F.3d at 66. [Footnote 14]
See also Continental Casualty Company v. Beardsley, 253 F.2d 702
(2d Cir. 1958), in which this Court found insurance forms
(whose content was largely dictated by statute) copyrightable
but, to ensure free use of ideas, declined to find
infringement in the absence of verbatim or near-verbatim
copying.
This case concerns only the verbatim, wholesale
copying of West's case reports, through computer scanning. [Footnote 15]
West seeks protection in this case against nothing except the
aggregate, verbatim copying of West's cumulative original
expression in case reports. West does not contend, and no court
will ever be asked to find, that West's copyright is infringed
by the publication of independently created, substantially
similar case reports [Footnote 16] "The copyright granted West is thin, but
it
is sufficient to protect against the verbatim digital copying proposed
by HyperLaw." Dissent at 8. [Footnote 17]
3. The Majority Mistakenly Adopts an "Atomizing" Approach
That Is Inconsistent with the Law of this Circuit
Although HyperLaw seeks to copy, verbatim, all of
the different kinds of expression (selected and revised
citations, subsequent case history, selected and arranged
attorney information, revised captions) in each case report,
the majority declines to assess the overall or cumulative
originality contained in a single case report. Instead, the
majority scrutinizes many of West’s individual choices on an
isolated basis; finds most of them to be insufficiently
original (when reviewed under the faulty standards discussed
above); and apparently concludes, without further analysis, that no
combination of choices in a case report conceivably could
involve sufficient originality. [Footnote 18]
As justification for this "atomizing" approach, the
majority states that since "each editorial choice is
independent of the others," the "whole does not disclose or
express an overall creative insight or purpose...." Maj. Op. at
34. Thus, the majority erects yet another barrier to
copyrightability that is inconsistent with the law of this
Circuit. [Footnote 19] In Key Publications (as to compilations) and in
Weissmann v. Freeman, 868 F.2d 1313 (2d Cir.), cert. denied,
493 U.5. 883 (1989) (as to derivative works), this Court
confirmed that the analysis of originality requires
consideration of selection, arrangement, and annotation in the
aggregate.[Footnote 20] No prior decision of this Court has suggested that
the aggregate should be ignored because the
court discerns no coverall creative insight or purpose. [Footnote 21]
C. THE MAJORITY SERIOUSLY MISCONSTRUES THE STANDARD
FOR ORIGINALITY APPLICABLE TO TEXTUAL DERIVATIVE WORKS
Although the majority bases its decision primarily on its
interpretation of Feist, it also rules that West's case reports do
not meet the originality standard in this Circuit for derivative
works. This erroneous ruling seriously misconstrues this Circuit's
standard and is certain to create significant confusion in an already
unsettled area of the law. [Footnote 22]
The majority states that this Court found alterations to
an existing work original in Weissmann, supra, because the revisions
"resulted in substantial changes to the substance and flow of the
piece." The majority then denies protection to West, since "[into such
substantial variations characterize West's case reports." Maj. Op. at
38 (emphasis added).
On the contrary, however, the Weissmann decision
conspicuously avoided use of the term, "substantial
variation, explicitly confirming that this Circuit's test
remains the more clearly minimal one, consistent with Feist,
in Alfred Bell & Co. v. Catalda Fine Arts, 191 F.2d 99, 102-03
(2d Cir. 1951); i.e., sufficient originality is shown by a
"distinguishable variation" that is anything more than "merely
trivial. [Footnote 23]
Indeed, the majority opinion vividly demonstrates
the hazards of applying "substantial variation" to textual
derivative works. According to the majority, a derivative work
author's alterations must result in "substantial changes to
the substance and flow" of an existing work. Yet if that were
so, there would be no protection for myriad derivative works
-- including, for example, the annotations of Shakespeare
scholars, which leave intact the "substance and flow" of the
existing work. West's work, too, involves patently non-trivial
contributions that change or add substance - e.g., adding and
updating citations, adding a summary of attorney data, as well
as other changes -without altering the "substance and flow" of
the judicial opinion itself. [Footnote 24]
In this respect as well, en banc review is
urgently needed to avoid inconsistent interpretations of
precedent and clarify the law of the Circuit.
POINT II
THE MAJORITY OPINION DEPARTS FROM THE LAW
OF THIS CIRCUIT AS TO THE PROPER SCOPE,
AND BURDEN OF PROOF. IN DECLARATORY JUDGMENT
ACTIONS
The majority opinion affirms an order that
permits verbatim copying of hundreds of thousands of
unspecified, individual Supreme Court Reporter and Federal
Reporter case reports. The finding that none of these
reports could contain protectible expression is based not
only on a misinterpretation of the "originality" standard,
but also on impermissible speculation and an improper
allocation of the burden of proof.
HyperLaw, after the close of evidence at trial,
offered testimony that it "intended to copy most older cases
[pre-1990 or 1993] cited in recent Supreme Court and court of
appeals decisions...s, Maj. Op. at 6, 9. Yet, despite
comprehensive discovery of West's archives, HyperLaw never even
attempted to offer and purported analysis of West's work based
on a review of a representative, statistically significant sampling of the
case reports for all Circuits. On the contrary, HyperLaw
limited its Federal Reporter evidence to a partial one-volume
sampling reflecting Weston adaptation of opinions from only three of
the thirteen Circuits -- despite the undisputed fact that the
extent of West's work varies significantly from Circuit to
Circuit.
This evidence could not even theoretically support a
finding that strips West of protection for all Federal Reporter
reports. Thus, the district court erred when it refused to
dismiss the action after HyperLaw had put on its case. In
affirming this error, the majority throws into question the
well settled principle that the party seeking relief bears the
burden of proof in declaratory actions. 22A American
Jurisprudence 2d Section 232 (1988); 10B Wright, Miller & Kane,
Federal Practice and Procedure: Civil Ed Section 2770(1998).
Moreover, HyperLaw has never specifically identified
which, or how many, case-reports it intends to copy. Yet the
majority, having found that West meets the originally standard
in its expression of which 300-odd cases are "popular" enough
for informal citation, negates this originality because "West
offered no evidence as to how often these cases are cited
without a full citation in the judicial opinions that HyperLaw
seeks to copy...." Maj. Op. at 32, n. 10 (emphasis added). This
astonishing reversal of the proper burden of proof rewards
HyperLaw for failing to describe its hypothetical product with
specificity and punishes West for failing to do the impossible --i.e ,
conduct a statistical analysis of an undefined body of material.
[Footnote 25] Indeed, the majority simply speculates when it find that
the proposed verbatim copying of West's ''undeniably creative"
expression "seems to be de minimis copying." Id. (emphasis added).
The sweeping declaratory judgment affirmed by the
majority is, in fact, unprecedented in its speculative
and imprecise nature. Both Judge Martin and the
majority found that some of West Is work involves originality. It must
be remembered that only a minuscule fraction of the case reports were
before the Court. Yet this action has somehow resulted in a judicial
determination -- ineluctably based on guesswork and approximation –
that not one of the hundreds of thousands of case reports at issue
contains enough original expression to be protectible
POINT III
THE MAJORITY APPLIED THE WRONG
STANDARD OF REVIEW
Appellants also request rehearing of the majority's application of the
"clearly erroneous" standard. [Footnote 26]
Although this Court has stated before
that findings as to copyright originality are reviewed for clear error, this
rule -- if applied to all cases -- conflicts with principles enunciated by
the Supreme Court (and reflected in Feist); with other, related standards
of review; and with the rule in other Circuits.
The Supreme Court has provided clear guidance for
resolving the question of the proper standard of review for an
application of law to fact. If the inquiry is founded on the
lower court's "experience with the mainsprings of human
conduct" (e.g., questions of intent or reasonableness), the
clearly erroneous standard is appropriate. C.I.R. v.
Duberstein, 363 U.S. 278, 289, 80 S.Ct. 1190, 1198 (1960); see
also Pullman Standard v. Swint, 456 U.S. 273, 289-90, 102 S. Ct.
1781, 1790-91 (1982). In most cases of law applied to fact,
however, the inquiry focuses on "judgment about the values that
animate legal principles," and de nova review is indicated.
United States v. McConney, 728 F.2d 1195 (9th Cir. 1984),
citing Pullman-Standard, supra; United States v. General Motors
Corn., 384 U.S. 127, 141, n. 16, 86 S. Ct. 1321, 1328, n. 16
(1966) ("the question here is not one of 'fact,' but rather of
the legal standard required to be applied to the undisputed
facts").
Applying the Copyright Act's originality standard to
undisputed facts is unquestionably an inquiry of the latter
kind. As the First Circuit recently noted, Feist itself --
deciding originality as a matter of law -- makes it clear that
originality is essentially a legal inquiry when the facts are
undisputed. CAM Cable Rem. Inc. v. Ocean Coast Properties,
Inc., 97 F.3d 1504, 1417 (lst Cir. 1996). See also Los Angles
News Service v. Tullo, 973 F.2d 791, 793 (9th Cir. 1992)
("Whether the raw tapes are sufficiently original
to merit copyright protection is a mixed
question of law and fact that we examine de nova."). Furthermore, as
the dissent notes (at 1, In. 1), the "clear error" standard in this
case is inconsistent with the Court's approach to analogous questions
arising under the Act. [Footnote 27]
CONCLUSION
For the foregoing reasons, the majority opinion is
erroneous and departs in significant ways from this Circuit's law,
and the questions involved are of exceptional importance, thus
warranting en bane review pursuant to Fed. R. App. 35(a).
Dated: November 17, 1998
Respectfully submitted,
SATTERLEE STEPHENS BURKE
& BURKE LLP
By: /s/
James F. Rittinger (JR-0556)
Joshua M. Rubins (JR-8338)
Attorneys for Appellants
230 Park Avenue
New York, New York 10169
(212) 818-9200
Of Counsel:
Arthur R. Miller
228 Areeda Hall
1545 Massachusetts Avenue
Cambridge, Massachusetts 02138
(617) 495-4111
----------------------------
FOOTNOTES:
1 [Omitted.]
2 To reinforce this point, Judge Leval provided extended excerpts,
including the following, from the Feist opinion:
To be sure, the requisite level of creativity is extremely low;
even a slight amount will suffice. The vast majority of works
make the grade quite easily, as they possess some creative spark,
"no matter how crude, humble or obvious,, it might be.
111: S.Ct. at :287 (citations omitted), quoted at 44 F.3d at 65.
3 See also Financial Information, Inc. v. Moody's Investors Service,
Inc.,
808 F.2d 204 (2d Cir. 1986), cert. denied, 484 U.S. 820 (1987)
(no protection for selection of five categories of bond call
facts when precisely the same arousing was already used
almost universally throughout the industry).
4 As Judge Sweet emphasizes throughout his dissent,
West's editorial additions and revisions in the case
reports at issue involve "substantive, editorial choices,
that "express thought and are not inevitable. Dissent at 4-5.
5 See, e.g., Maj. Op. at 18-l9 (requiring "non-obvious choices
from among more than a few options" and stating,
"Selection from among two or three options" is
"insufficient")(emphasis added).
6 The majority also refers to Kreqos, in which the
choice of nine factors from "scores of available statistics was held
to involve sufficient originality. Nothing in Kreaos,
however, remotely suggests that a decision involving less than four
options is necessarily devoid of originality.
Moreover, unlike Kregos, in which the originality of the entire work
consisted of a single decision, West's original
expression in any one case report may reflect dozens of different
decisions, each involving several options. Overall,
then, there are hundreds of different combinations of choices --
innumerable options, in fact -- that can be made in
publishing a case report. See infra at 12-13.
7 The majority certainly does not suggest that other
publishers make the same citation-revision choices as West. Nor
does the Court find that the Bluebook
prescribes West's revision
choices. At the most the majority merely finds that a
few of West's choices seem somewhat
common or familiar. As the dissent
notes (at 9-10), this impression may well be
the result of West's longtime success and
the familiarity of its works to legal researchers - neither of which is a
basis
for evisceration of copyright.
8 One indicator of the majority's loosely expansive approach is its use
of the term "typical," rather than Feist's term,
"entirely typical." See, e.g., Maj. Op. at 4, 19, 23, 28, 32, 33.
9 To the contrary, the use of logic to solve the problems of how best to
present the information being compiled is
independent creation." 44 F. 3d at 67.
10 For example, the majority finds that West's selective
updating of citations is devoid of originality because "West's
decision to insert a citation to the denial of certiorari only
when the denial pre-dated the opinion is necessary to avoid
anachronism Maj. Op. at 30-31. In fact, of course, the
decision is only "necessary" if one shares the highly subjective
opinion that it is more important to avoid anachronism
than to provide the most up-to-date information. Moreover,
other publishers provide no updating at all. a third
option which is also completely viable. Nothing "dictates" West's
choice among these options; the choice is plainly anything but "inevitable
11 For example, West subjectively evaluates 30 specific
publications as being either (i) not useful enough to be
retained if a West bound-volume citation can be
substituted, or (ii) so useful that they are always retained, even if a
West bound-volume citation is available. The majority
acknowledges that some but not all of the citations replaced by
West are from daily or weekly journals. The maioritv suggests
no reason, other than highly subjective evaluation, whv
West would delete certain Permanent-book citations and
not delete others. Maj. Op. at 28.
12 Similarly, the majority asserts that affording protection to
West's selection and arrangement of attorney data in
Supreme Court Reporter -- which is different from the selection
and arrangement in at least two other Supreme Court
reporters -might prevent competitors from publishing a
"substantially similar" arrangement. Maj. Op. at 23-24.
13 Indeed, the record amply demonstrates that the citation
choices in other "useful" publications are consistently
different. As the dissent notes, "opinions can be, and are
written, with a variety of citation combinations and other facts
either included or not." Dissent at 9.
14 The majority holds that, in accordance with CCC, the merger
doctrine is inapplicable because of the nature of
West's expression (Maj. Op. at 35-36). Yet the denial of protection
based on unfounded fears of "monopolization"
constitutes a de facto misapplication of the merger doctrine
and a serious misapprehension of the idea/expression
dichotomy. See dissent at 9. One does not give West a
monopoly in any ideas by protecting the highly specific,
subjectively determined expression in West's case reports.
15 HyPerLaw asserts that, prior to scanning, it will redact
West’s synopses, headnotes, and keynotes, none of which
is at issue in this case.
16 The warning in Kev Publications cited by the majority
(Maj. Op. at 33) does not refer to any risk of exposure
faced by independent creators of substantially similar
works. The warning is clearly limited to verbatim copiers who
attempt to conceal their verbatim copying (and
can be proven to have done so).
17 Indeed, the majority itself, in its companion decision,
approvingly cites the observation that "under Feist,
nothing 'short of extensive verbatim copying' will amount to
infringement of a compilation Maj. Op. in 97-7430 at
27, citing J. Ginsburg, No "Sweat"? Copvriqht and Other
Protection of Works of Information After Feist v. Rural
Telephone, 92 Colum. L. Rev. 338, 349
18 See Maj. Op. at 34. In fact, the majority opinion's
ruling as to the absence of cumulative originality refers only
to citation decisions. The majority never explicitly addresses
the cumulative originality of all the editorial decisions
expressed in a West report but would presumably reach, as the
dissent suggests, the same dismissive conclusion.
Dissent at 5.
19 The barrier is surely a high one, since it is apparently not
satisfied by West's overall purpose: providing
revisions and annotations suited to the needs and preferences of
its readers.
20 See also dissent at 5-6, citing 17 U.S.C. § 101 and Softel, Inc. v.
Dragon Medical & Scientific
Communications. Inc., 118 F. 3d 955, 964 (2d Cir. 1997).
21 This refusal to consider the possibility of a showing of "cumulative"
originality seems particularly overbearing,
and inconsistent with this Court's prior teachings, given the fact that the
majority - like the district court - concedes
that not all of West's individual decisions lack a "modicum"
of creativity. See Maj. Op. at 27, n. 10 ("undeniably
creativeN listing of popular cases); Matthew Bender & Co.
v. West, 1997 WL 266972, at *3, * 4 (district court
finding of no originality limited to "most instances").
22 "[T]he Second Circuit has had problems articulating a single
standard of originality for derivative works..." 1
Patry, Copyright Law and Practice 161-62 (1994)(discussing
apparent conflict between "non-trivial" and
"substantial" variation standards in Alfred Bell and Batlin).
23 The use of the word "substantial in L. Batlin & Son. Inc. v.
Snyder, 536 F.2d 486 (2d Cir.), cert. denied, 429
U.S. 857 (1976), a visual artwork case, has been given a limited
interpretation in light of the facts of that case. See 1
Nimmer on Copyright § 3.03, 3-16, n. 6.
24 Indeed, Weissmann emphasizes that the copyists
interest in unauthorized appropriation of a derivative work
amply demonstrates the non-trivial worth of what has been added.
868 F.2d at 1313. See also dissent at 6-7 and 9 n.3.
.
25 In fact, it was not until after the close of evidence that HyperLaw
offered vague testimony (inconsistent with its
testimony at a justifiability hearing) that it intended to copy roughly
50-75` of Weaves pre-1990 case reports.
26 Reversal, as the dissent notes, is compelled under either
standard. Dissent at 1, n. 1.
27 In fact, the analogous Weissmann decision suggests a de
facto application of the de nova standard. The Court
thoroughly reviewed the record; took note of materials
not referenced below; and effectively substituted its own
assessment for that of the trial judge, who, the facts being
undisputed, "cannot insulate his findings on originality
from appellate review." 868 F.2d at 1322-23.
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