Matthew Bender v. West Publishing

Citation: Matthew Bender & Co. v. West Publishing Co., 158 F.3d 693, 48 U.S.P.Q.2d (BNA) 1545 (2d Cir. 1998), ''cert. denied,'' 526 U.S. 1154 (1999).

Appellate Court Declsion
The Second Circuit affirmed a lower court ruling that neither West's “star pagination” system (essentially the page breaks in its printed books) nor the text of the decisions are copyrightable.

The court refused to follow an earlier 8th Circuit decision on the same issue, since it found that that decision relied upon the “sweat of the brow” theory of copyright protection for compilations, which was specifically overruled by the U.S. Supreme Court in Feist Publications, Inc. v. Rural Telephone Service Co. After Feist, only an original selection and arrangement of "facts” can be copyrighted.

The court held that the CD-ROMs were not unlawful copies of the arrangement of the cases in West's printed books, even though a user could theoretically “perceive” West's copyrighted arrangement with a few keystrokes. “At least absent some invitation, incentive, or facilitation not in the record here, a copyrighted arrangement is not infringed by a CD-ROM disc if a machine can perceive the arrangement only after another person uses the machine to re-arrange the material into a copyrightholder's arrangement.”

In a separate opinion, the court held that the minimal enhancements that West makes in its compilations, such as adding attorney summaries and rearranging factual matter in case captions, are not copyrightable either.