B2022 REPORTS ANNOTATED VOL [1997]

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

Recit-ready summary opinions, and therefore any creativity in these elements of West's case
West publishes case reports of court decisions, which appear in volumes reports lies in West's selection and arrangement of this information.
featuring the West key number head note system.
However, West's choices on selection and arrangement can reasonably
HyperLaw, Inc. publishes CD-ROM compilations of Supreme Court and be viewed as obvious, typical, and lacking even minimal creativity.
United States Court of Appeals decisions. HyperLaw intends to expand this Therefore, we cannot conclude that the district court clearly erred in finding
product by copying West's case reports after removing the syllabi, that those elements that HyperLaw seeks to copy from West's case reports
headnotes and key numbers. It seeks a judgment declaring that the are not copyrightable, and affirm.
individual West case reports that are left after removal of the syllabus,
headnotes and key numbers, do not contain copyrightable material. Disposition: 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
ISSUE: W/N the case reports of Wests are copyrightable material? NO. Company ("West").

Whether West's alterations to the case reports, when considered FACTS:

collectively, demonstrate sufficient originality and creativity to be West Publishing Co. and West Publishing Corp. (West) publish
copyrightable? NO. compilations of reports of judicial opinions ("case reports"). It alters these
texts as described above to create a case report, (includes the syllabus, key
notes etc.) and then publishes these case reports in different series of "case
To be entitled to such protection, these changes must be at least some reporters.
substantial variation from the underlying work, not merely a trivial
variation. HyperLaw, Inc. publishes compact disc-read only memory ("CD-ROM")
compilations of Supreme Court and United States Court of Appeals
It is true that neither novelty nor invention is a requisite for copyright decisions. HyperLaw intends to expand this product by copying West's case
protection, but minimal creativity is required. reports (after redacting the syllabi, headnotes and key numbers) from the
Supreme Court Reporter and the Federal Reporter.
Aside from its syllabi, headnotes and key numbers - none of which
HyperLaw proposes to copy - West makes four different types of changes to It seeks a judgment declaring that the individual West case reports that are
judicial opinions that it claimed at trial are copyrightable: left after removal of the syllabus, headnotes and key numbers, do not
contain copyrightable material.
(i) rearrangement of information specifying the parties, court, and date of
decision; (ii) addition of certain information concerning counsel; (iii) Donna Bergsgaard, the manager at Wests specified four kinds of alterations
annotation to reflect subsequent procedural developments such as made by West that HyperLaw intends to copy: (i) the arrangement of
amendments and denials of rehearing; and (iv) editing of parallel and prefatory information, such as parties, court, and date of decision; (ii) the
alternate citations to cases cited in the opinions in order to redact ephemeral selection and arrangement of the attorney information; (iii) the arrangement
and obscure citations and to add standard permanent citations (including of information relating to subsequent procedural developments; and (iv) the
West reporters). *see ruling selection of parallel and alternative citations.

All of West's alterations to judicial opinions involve the addition and

arrangement of facts, or the rearrangement of data already included in the

G.R. NO: 130003 PONENTE: Tinga

ARTICLE; TOPIC OF CASE: What is Fact? DIGEST MAKER: Eon
 B2022 REPORTS ANNOTATED VOL [1997]
Matthew Bender & Company, Inc. v. West Publishing Matthew Bender & Company, Inc. v. West Publishing
Company Company

District court: ruled in favor of Hyperlaw. the district court ruled that
West's revisions to judicial opinions were merely trivial variations from the The Copyright Act protects original and minimally creative selection of pre-
public domain works, and that West's case reports were therefore not existing, unprotected materials (such as facts) for inclusion in a work, as
copyrightable as derivative works. West does not have a protectible interest well as original and creative arrangement of those materials.  Selectivity in
in any of the portions of the opinions that HyperLaw copies or intends to including otherwise non-protected information can be protected expression.
copy" because West's alterations lack even minimal creativity. If originally combined, a selection or arrangement of underlying
materials that are themselves unoriginal may support copyright
West appeals. protection.

ISSUE: W/N the case reports of Wests are copyrightable material? NO. Feist tells us: "The compilation author typically chooses which facts to
include, in what order to place them, and how to arrange the collected data
Whether West's alterations to the case reports, when considered so that they may be used effectively by readers. These choices as to
collectively, demonstrate sufficient originality and creativity to be selection and arrangement, so long as they are made independently by the
copyrightable? NO. compiler and entail a minimal degree of creativity, are sufficiently original
that Congress may protect such compilations through the copyright laws."

RULING: However, not every such compilation or decision on selection or

arrangement is sufficiently creative to be protected.
Works of the federal government are not subject to copyright protection; the
text of judicial decisions may therefore be copied at will. Federal judicial
opinions may, however, form part of a compilation. The Copyright Act As a general principle, the greater the amount of material from which to
defines "compilation" as "a work formed by the collection and assembling select, coordinate, or arrange, the more likely it is that a compilation will be
of pre-existing materials or of data that are selected, coordinated, or protectible. On the other hand, where less material is available, it is less
arranged in such a way that the resulting work as a whole constitutes an likely that a compilation, even if original, will be protectible, since de
original work of authorship."/ minimis efforts, including selections, are not subject to copyright.

West has filed a certificate of copyright registration for every paperbacked 1. Captions, Courts, and Date Information
advance sheet and bound permanent volume of the Supreme Court Reporter
and Federal Reporter (name of its case reports), and each certificate West claims that originality inheres in the following enhancements:
characterizes the copyrighted work as a "compilation.".
- The format of the party names - the "caption" - is standardized by
Under Feist Publications, Inc. v. Rural Telephone: an infringement claim capitalizing the first named plaintiff and defendant to derive a
for a compilation has two elements: "(1) ownership of a valid copyright, "West digest title," and sometimes the party names are shortened
and (2) copying of constituent elements of the work that are original." (e.g., when one of the parties is a union, with its local and national
affiliations, West might give only the local chapter number, and
To support a copyright there must be at least some substantial variation, not then insert etc.).
merely a trivial variation such as might occur in the translation to a different - The name of the deciding court is restyled. E.g., West changes the
medium. The only elements of a work that are entitled to copyright slip opinion title of "United States Court of Appeals for the Second
protection are those that are original. Circuit" to "United States Court of Appeals, Second Circuit." "

G.R. NO: 130003 PONENTE: Tinga

ARTICLE; TOPIC OF CASE: What is Fact? DIGEST MAKER: Eon
 B2022 REPORTS ANNOTATED VOL [1997]
Matthew Bender & Company, Inc. v. West Publishing Matthew Bender & Company, Inc. v. West Publishing
Company Company

- The dates the case was argued and decided are restyled. E.g., when United States Reports, Supreme Court Reporter, and Lawyer's Edition to
the slip opinion gives the date on which the opinion was "filed," name a few.
West changes the word "filed" to "decided.
- The caption, court, docket number, and date are presented in a West claims that it exercises careful judgment as to which sources are most
particular order, and other information provided at the beginning useful to legal practitioners. However, almost every one of West's decisions
of some slip opinions is deleted (such as the lower court relating to citation alterations is inevitable, typical, dictated by legal
information, which appears in the West case syllabus)." convention, or at best binary. Even where theoretically there is a large
number of items to choose from, functional, commercial, or legal
The changes made by Wests are insubstantial, unoriginal, and uncreative. constraints may limit, or even bar, protectibility."). And each case report
West's manner of shortening long case names Nor does West's overall exhibits only one or two decisions on how to alter citations.
choice concerning which procedural facts to include at the start of the case
report demonstrate the requisite originality or creativity. The names of the Nor do we see any creativity in West's decision to cite to official state
parties, the deciding court, and the dates of argument and decision are reporters as well as regional reporters for state court decisions. These are
elementary items, and their inclusion is a function of their importance, not almost always the only two realistic choices (again, this hardly amounts to
West's judgment.  "selection"), and a decision to cite to an official reporter can hardly be said
to be anything other than typical.
2. Attorney Information
West's overall decision to add attorney information, subsequent history, and
For Supreme Court opinions, West lists the arguing counsel and the additional citation information exhibits little, if any, creative insight; most
lawyer's city and state of practice. West's decisions lack a modicum of courts already provide attorney information, and opinion accuracy mandates
creativity. Like the name, town and telephone number included in Feist's inclusion of subsequent history.
telephone directory, the information West includes - attorney names, firms
and cities of practice - is entirely "typical" and "garden-variety. In fact, West's editorial work entails considerable scholarly labor and care, and is of
most courts (this one included) provide the very same information in their distinct usefulness to legal practitioners. Unfortunately for West, however,
slip opinions. creativity in the task of creating a useful case report can only proceed in a
narrow groove. Doubtless, that is because for West or any other editor of
3. Subsequent History judicial opinions for legal research, faithfulness to the public-domain
original is the dominant editorial value, so that the creative is the enemy of
West's case reports reflect certain subsequent procedural developments, the true.
such as orders amending an opinion or denying rehearing. The district court
found that West's alteration of opinions to reflect these subsequent case As West argues, our decisions establish a low threshold of creativity, even
developments does not reflect an exercise of originality or creativity, in part in works involving selection from among facts. But those cases involved the
because West's realistic options are limited. exercise of judgments more evaluative and creative than West exercises in
the four elements of the case reports that HyperLaw intends to copy.
4. Parallel or Alternate Citations
- For instance, in Kregos thousands of different permutations of
West inserts parallel citations when the judicial opinion does not, e.g., (i) pitching statistics were available for inclusion in the publisher's
for citations to Supreme Court opinions, it inserts parallel citations to pitching chart.  (baseball card guide which selected 5,000

G.R. NO: 130003 PONENTE: Tinga

ARTICLE; TOPIC OF CASE: What is Fact? DIGEST MAKER: Eon
 B2022 REPORTS ANNOTATED VOL [1997]
Matthew Bender & Company, Inc. v. West Publishing Matthew Bender & Company, Inc. v. West Publishing
Company Company

"premium" baseball cards from among 18,000 eligible baseball

cards was copyrightable). Notes (na-mention lang sa case in passing).
- In Key Publications, we found sufficient creativity because the Matthew Bender & Co. sought judgment declaring that Bender's insertion
author of the yellow pages "excluded from the directory those of star pagination to West's case reporters in its CD-ROM version of
businesses she did not think would remain open for very long." judicial opinions did not infringe West's copyright, HyperLaw intervened
- In CCC Information Services, we found sufficient creativity in the and requested the same relief.On the star pagination issue, the district court
selection of optional car features and number of years' models to granted summary judgment to Bender and HyperLaw, SC affirms this
be included in a used-car price compilation. ruling in a separate opinion issued. But the district court allowed HyperLaw
- In Lipton v. Nature Co.,the author "selected [the terms included in to copy redacted versions of West's case reports, and conducted a bench
the work] from numerous variations of hundreds of available trial on this issue.
terms."
- Weissmann v. Freeman, 868: a textual derivative-work case, we
found sufficient creativity where the author of the derivative work
had drawn on earlier joint works with another professor to create a
document that contained the following new elements from the
previous version of the document:
o "(1) a selection and arrangement of photo illustrations and
associated captions; (2) references to recent reports in the
pertinent literature; (3) selection, condensation, and
description of additional source material; (4) several new
textual additions; (5) substantial rearrangement of the
manner and order of presentation of material contained in
the parties' prior joint works; and (6) the addition of a
section on "congenital disorders," a revised treatment of
"chronic cholecystitis," and the incorporation of Dr.
Freeman's "false positive" studies."

In each of these cases, the compiler selected from among numerous choices,
exercising subjective judgments relating to taste and value that were not
obvious and that were not dictated by industry convention. 

As this passage demonstrates, the alterations inserted in the derivative work

were by no means obvious or driven by professional convention, and
resulted in substantial changes to the substance and flow of the piece. No
such substantial variations characterize West's case reports.

Disposition: The district court did not clearly err in concluding that the
elements of West's case reports that HyperLaw seeks to copy are not
copyrightable. The judgment of the district court is affirmed.

G.R. NO: 130003 PONENTE: Tinga

ARTICLE; TOPIC OF CASE: What is Fact? DIGEST MAKER: Eon