West Publishing Co. v. Mead Data Central, Inc./Concurrance-Dissent Oliver

OLIVER, Senior District Judge, concurring in part and dissenting in part.

This case pends on an interlocutory appeal noticed pursuant to Section 1292(a)(1) of Title 28, U.S.C., from a modified order of the district court which "preliminarily enjoined [MDC] from displaying, referencing or including the page number of any and all publications within plaintiff's National Reporter System … published during the period from January 2, 1910 to the present within or in relation to the text of court opinions contained in the Decision database." Addendum at 25a-26a.

I concur in what the majority stated in regard to the procedural posture of the case and its discussion of Fed. R. Civ. P. 65(a)(2). Slip op. at 18. It is my view, however, that the majority's analysis of this case exceeds the limited scope of appellate review provided by a Section 1292(a)(1) appeal.

I therefore dissent because I do not believe, in light of the meager record before the district court, that the majority's analysis is consistent with the applicable law. It is my view that our panel should follow the lead of the First Circuit as stated in Building Officials & Code Adm. v. Code Tech, Inc., 628 F.2d 730 (1st Cir. 1980), in which a not dissimilar question was presented on a Section 1292(a)(1) appeal.

That case, as does this case, involved the application of principles first enunciated in Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 8 L.Ed. 1055 (1834), and later applied in Banks v. Manchester, 128 U.S. 244, 32 L.Ed. 425, 9 S.Ct. 36 (1888), and Callaghan v. Myers, 128 U.S. 617, 32 L.Ed. 547, 9 S.Ct. 177 (1888). The First Circuit reversed the district court's grant of a preliminary injunction and remanded the case for a trial on the merits without making any definitive ruling on the merits of legal issues presented on the Section 1292(a)(1) appeal that pended in that court.

A.
MDC, for reasons I find difficult to understand, invoked the appellate jurisdiction of this Court pursuant to 28 U.S.C. § 1292(a)(1). MDC argued in the district court that the granting of a preliminary injunction restraining MDC from adding the "star pagination" feature "would give West the time it would need to do the considerable work necessary to add its own pagination feature to Westlaw." (App. 103).

MDC obviously invited further delay that would permit West to play catch-up when it elected to notice a Section 1292(a)(1) appeal in this case. Certainly MDC was not required to notice such an appeal. See Scarrella v. Midwest Federal Savings & Loan, 536 F.2d 1207, 1209 (8th Cir. 1976), ("[a] party is not required to take an interlocutory appeal authorized by statute"). MDC's citation and reliance on O'Connor v. Peru State College, 728 F.2d 1001, 1002 (8th Cir. 1984), see page 24 of MDC brief, establishes that it knew that the scope of appellate review on a Section 1292(a)(1) appeal from an "interlocutory order" is necessarily more narrow than the scope of appellate review of a "final decision" on an appeal taken pursuant to 28 U.S.C. § 1291.

O'Connor and Edudata Corp v. Scientific Computers, Inc., 746 F.2d 429, 430 (8th Cir. 1984) (per curiam), both cited in the majority opinion (Slip op. at 4), are but two recent Eighth Circuit cases that recognize the established Eighth Circuit rule in regard to the limited scope of appellate review on a Section 1292(a)(1) appeal.

The majority opinion recognized that the scope of appellate review on a Section 1292(a)(1) appeal is limited and circumscribed. For on page 18 of the slip opinion it quoted that portion of Independent Fed'n of Flight Attendants v. Trans World Airlines, 655 F.2d 155, 159 (8th Cir. 1981), which concluded that "the District Court's findings, and our observations as to the governing law made in this opinion, are tentative and provisional, in the sense that different findings or conclusions might be warranted after a trial on the merits."

The reason the scope of appellate review on a Section 1292(a)(1) appeal is circumscribed is because the grant of a preliminary injunction by a district court is reviewed solely under an abuse of discretion standard. Olin Water Services v. Midland Research Lab., 774 F.2d 303, 307 (8th Cir. 1985), the most recent Eighth Circuit case on that point, concluded that:
 * Our sole task in reviewing an order of the district court granting a preliminary injunction is to determine whether the court abused its discretion. Ferry-Morse Seed Co. v. Food Corn, Inc., 729 F.2d 589, 592 (8th Cir. 1984); Dataphase Systems, Inc. v. C L Systems, Inc., 640 F.2d 109, 114 & n. 8 (8th Cir. 1981) (en banc); accord University of Texas v. Camenisch, 451 U.S. 390, 393, 101 S. Ct. 1830, 1832-33, 68 L. Ed. 2d 175 (1981). (Emphasis added).

Any possible doubt about the limited scope of review on a Section 1292(a)(1) appeal, in my view, was resolved by University of Texas v. Camenisch, supra, 451 U.S. 390 (1981). That case held that "the issue before the Court of Appeals [on an appeal from an order granting a preliminary injunction] was … whether the District Court had abused its discretion in issuing a preliminary injunction." Id. at 393.

While I concur in the majority's recognition of the established Eighth Circuit rule, I am not able to join the majority opinion because that opinion exceeds the limited scope of appellate review accorded by a Section 1292(a)(1) appeal. The majority opinion, as I read it, states much more than a tentative view of the merits of this case.

B.
I concur with what the majority stated in its final paragraph in regard to the utilization of Fed. R. Civ. P. 65(a)(2). I quite agree that if the hearing on West's application for a preliminary injunction had been consolidated with an advanced trial on the merits, that the entire case could have been tried with little additional effort, with the result of having one rather than two appeals. This case, in my view, is precisely the type of case in which Rule 65(a)(2) should have been used. For it is reasonably certain that once this case is tried on the merits, the losing party will notice a second appeal of right under Section 1291.9

A.
Neither the district court nor the majority discussed any part of the record before the district court to support their respective conclusions that West, on the merits, will probably succeed in proving as matters of fact, that (1) West's arrangement of the cases in all of its publications since January 8, 1910 to the present may be subject to copyright; (2) that West's pagination of all those publications is an important part of such an arrangement and that, as such, is also subject to copyright; and (3) that MDC's intended use of star pagination may be said to constitute an infringement of West's copyright of all its post-January 2, 1910 publications.

Although West relied on Hutchinson Telephone Co. v. Fronteer Directory Co., 770 F.2d 128 (8th Cir. 1985) (Tr. 11), in the district court, that court did not make any findings of fact or indicate in any way that it believed that the publication of a law report could be said to be comparable to the publication of a telephone directory.

The majority cited and relied on Hutchinson, both in regard to its discussion of "copyright protection," slip op. at 5, and in discussion of "infringement," slip op. at 13 and 15. The majority, however, like the district court, did not make any reference to the record to support its ultimate concurrence with "the District Court's conclusion that West's arrangement is a copyrightable aspect of its compilation of cases, that the pagination of West's volumes reflects and expresses West's arrangement, and that MDC's intended use of West's page numbers infringes West's copyright in the arrangement." Slip op. at 1223.

I find nothing in the record to support the requisite findings of fact upon which both the district court's and the majority's conclusions of law are based. This is not a case, in my judgment, that permits an application of the clearly erroneous standard of Fed. R. Civ. P. 52(a) because the district court did not make any findings of fact in regard to the relevant factual circumstances of this case. Further, as a member of the panel that decided Hutchinson, I am satisfied that case should be distinguished from this case on much the same grounds it was recently distinguished in Toro Co. v. R & R Products Co., 787 F.2d 1208, 1213 (8th Cir. 1986).

West's arrangement of cases, however that arrangement may be made, is contained in each volume of its various publications. West has no general copyright on its "National Reporter System"; each separate volume published by West carries its own individual copyright. Most, but not all, of the exceedingly few Certificates of Copyright Registration in the record establish that West has recognized that it may not obtain a copyright on the major part of what it published in a particular volume of any one of those law reports.

The record shows, for example, that although West claimed authorship of the "entire work" encompassed in Volume 753 F.2d, West's Certificate of Registration Form TX 1-607-203 (Exh. 3, A63) did not make any claim of copyright for the page numbers that the majority opinion concluded was "an important part" of the whole of such a Volume. One of the questions on the copyright registration form required West to "give a brief, general statement of the material that has been added to this work and in which copyright is claimed" (A64). West's answer stated "compilation of previously published case reports including but not limited to opinions, synopses, syllabi or case law paragraphs, key number classifications, tables and index digest, with revisions and additions." (A64).

West stated on Form TX 1-607-203 that the "Title of the Work" was "Federal Reporter. Second Series. Volume 753 F.2d." The title to a law report is obviously a very important part of the whole of such a volume, however the published court opinions may be arranged. Yet, it is beyond dispute, I believe, that the title to a volume of law reports, certainly a most important part of the whole volume, simply is not subject to copyright. See 1 Nimmer on Copyright "Titles," § 2.16, p. 2-186 and the cases cited therein, including Duff v. The Kansas City Star, 299 F.2d 320 (8th Cir. 1962).

The fact that the sequential numbering of the pages of any volume, including a volume of law reports, is an important part of the volume, does not support a finding of fact that such a part of the whole of a particular volume of West's publications is subject to copyright. Nor, in my judgment, does such a fact support a finding of fact that West's arrangement of cases is subject to copyright. All parts of a copyrighted volume may not be automatically considered a subject to copyright simply because a publisher claims a copyright on the whole volume.

B.
Nor does the record, as I read it, support any finding of fact upon which the majority could base its conclusion that "the Decision Star Pagination feature infringes West's copyright in the arrangement." Slip op. at 1228. I hold that view even if it is assumed that the majority's assumption that West's pagination, as an "important part" of a West publication, is entitled to copyright may be valid. For I do not believe that anything in the sketchy record in this case can support a factual finding that MDC's intended star pagination of West's published court opinions would in any way infringe West's "arrangement of cases."

The record, as I read it, merely establishes that MDC only intends to add star pagination to the court opinions contained in its Decision data base. MDC, as I understand the record, does not intend to make, nor has it in fact made any use of West's "synopses, syllabi or case law paragraphs, key number classifications, tables and index digest, with revisions and additions" for which West claimed in its Certificates of Copyright Registration. The record, as I read it, cannot be said to support a finding of fact that MDC intends in any way to duplicate or reproduce West's "arrangement of cases," whatever those arrangements may be.

Thus, on the district court's record, the ultimate question presented on this Section 1292(a)(1) appeal is reduced to whether, under the applicable law, MDC's intended use of West's page numbers, standing alone, may be said to infringe some copyright to which West may be entitled under factual circumstances yet to be established on a trial of the merits of this case. It cannot be said that it is probable that West will succeed on the merits unless it can also be said that West will be able to establish that its page numbers are entitled to copyright; one simply cannot infringe a non-existent copyright.

The probability of whether West will succeed on the merits must, in my judgment, be viewed in light of the fact that law book publishers in the United States have long and traditionally used star pagination in their publication of court opinions which have been taken verbatim from earlier published and copyrighted works of both official and unofficial court reporters. I do not believe that the record in this case can be said to support a Dataphase conclusion that West will probably succeed on the merits when that record can be said only to support a finding of fact that MDC intends to do no more than what other law book publishers have been doing for a long, long period of time.

C.
Both the district court and the majority referred to the works of Shakespeare to support the granting of the preliminary injunction in this case. Whether a new "compilation" of Shakespeare's work may, in fact, be subject to copyright as an original work of authorship does not answer the question of whether West's "page numbers and its arrangement are necessarily within the scope of copyright protection," as the district court concluded. 616 F. Supp. at 1577. Neither the district court nor the majority cite any cases which suggest that the page numbers of a new compilation of any work of Shakespeare must be considered a subject of copyright. Nor is any authority cited to support the notion that the citation of the page numbers in a copyrighted compilation of Shakespeare's work would somehow infringe an earlier publication of Shakespeare's plays and sonnets. Current literary practice suggests that such page citations may not be said to constitute an infringement.

A judicial opinion cannot, under Wheaton v. Peters be considered a subject of copyright. Nor, in my view, may a compilation of judicial opinions be considered a subject of copyright unless such a work is "formed by the collection and assembling of preexisting materials or of data that are … arranged in such a way that the resulting work as a whole constitutes an original work of authorship." 17 U.S.C. § 101. (Emphasis added).

While there may be some interesting copyright questions presented in regard to a compilation of Shakespeare's work, I do not believe that the references made to his work can be said to support the view of either the majority or that of the district court.

A.
The district court recognized that "this case turns on whether or not the succeeding numbers themselves are protected by copyright," 616 F. Supp. at 1579. It stated, however, that the "Court finds two cases of particular interest and importance in providing an analytic framework in which to consider the claims of the parties," citing Callaghan v. Myers, 128 U.S. 617, 32 L.Ed. 547, 9 S.Ct. 177 (1888), and ''Banks Law Pub. Co. v. Lawyers Co-operative Pub. Co.'', 169 F. 386 (2nd Cir. 1909). Id. at 1575-76. (Emphasis added). The district court also stated that "this Court finds that Callaghan supports and Banks does not bar copyright protection for West's laboriously prepared, voluntary arrangement of cases." Id. at 1578. (Emphasis added). The district court further recognized, however, that even under its reading of Callaghan, that the Court held in that case that "if the arrangement of cases and the paging of the book depend simply on the will of the printer, or the order in which the cases have been decided, or upon other accidental circumstances, they of course are not subject to copyright protection because they then involve no labor, talent, or judgment." Id. at 1576.

To support the issuance of its broad preliminary injunction the district court stated that West's pagination "is not just a series of numbers each arising by one over its predecessor." Without any reference to the record, the district court further stated that such pagination "is the basis of the West arrangement – the key to the self-index by which West's arrangement is accessed." Id. at 1579.

The district court then stated that "this is, the Court finds, what is meant by the words 'taken as a whole' in the copyright definition of 'compilations,'" citing 17 U.S.C. § 101. Id. (Emphasis added). The district court concluded as a matter of law, without any reference to the record, that "West's page numbers and its arrangement of cases are necessarily within the scope of copyright protection." Id. at 1577 (emphasis added).

I do not agree that Callaghan and Banks provide "an analytic framework in which to consider the claims of the parties." Id. at 1576. Nor do I agree that "West's page numbers and its arrangement of cases are necessarily within the scope of copyright protection." Id. at 1577. (Emphasis added).

B.
The record in this case does not indicate in any way how or by whom West's page numbers are, in fact, created. West's affidavits do not identify any person as the "author" of any of the page numbers. The only thing the record in this case shows, as I read it, is that West's bound volumes carry the same volume numbers and the same page numbers as West's advance sheets. How those page numbers are assigned West's advance sheets is a total mystery so far as the record is concerned.

Judicial notice may be taken of the fact that the original page numbers that appear on a slip opinion submitted by a judge for publication never appear in any West advance sheet. There is indeed substantial doubt whether those page numbers could be considered part of the judge's work of authorship. For the pagination of a judge's slip opinion is, at best, the work of a judge's secretary or, in this day of advanced technology, the work of the secretary's word processor in electronic response to the secretary's punch of a button on a machine.

Thus, the factual question in regard to how or by what process, electronic or otherwise, West assigns a completely new set of page numbers to a judge's slip opinion is an open factual question that can only be determined on a trial of the merits. It is my view that West's probability of success on the merits simply cannot be measured on a record that does not provide any information in regard to whether West's new advance sheet pagination, like a judge's secretary's original pagination of his slip opinion, is nothing more than an electronic response to a direction given a machine or whether, as a matter of fact, West's new pagination may be considered an original work of authorship.

If, on the trial of the merits, it is established that West's new page numbers are assigned a judge's slip opinion by some automatic electronic process, it is inconceivable to me that the public policy that denies all right of copyright to a court opinion would nevertheless grant copyright to the page numbers of the volume in which such a court opinion is published. Therefore, I do not believe that the district court's discussion of Callaghan and Banks within the structure of its "analytic framework" can be said to support its Dataphase conclusion that West will probably succeed on the trial of the merits of this case.

C.
It is my view that the majority's analysis is based on what I believe is an incomplete and untenable view of Callaghan and Banks. Although the majority, in its discussion of Banks stated that "we would be inclined to examine the official reporter's independent efforts in arrangement and pagination on their merits to see if they meet originality and intellectual-creation requirements," maj. op. at 1226, and although it stated that "Callaghan establishes at least that … in each case the arrangement must be evaluated in light of the originality and intellectual-creation standards," maj. op. at 1225, the majority nevertheless definitely concluded that "West's case arrangements, an important part of which is internal page citations, are original works of authorship entitled to copyright protection." maj. op. at 1227.

The majority, I believe correctly, concluded that "the treatment of case arrangement and pagination in Callaghan was not crucial to the Court's decision." Maj. op. at 1224. The majority nevertheless concluded, I believe erroneously, that we must "follow the Supreme Court" for the reason that "Callaghan does not seem so hostile to the very idea that case compilation, arrangement, and paging can be protected by copyright." Id. at 1226. (Emphasis added).

The majority recognized that Toro Co. v. R & R Products Co., supra, 787 F.2d 1208, had most recently held that "some uses of a numbering system cannot meet originality requirements for copyright." Maj. op. at 1228. It, however, purported to distinguish Toro Co. by stating that "the copyright we recognize here is in West's arrangement, not in its numbering system; MDC's use of West's page numbers is problematic because it infringes West's copyrighted arrangement, not because the numbers themselves are copyrighted." Id. at 1228. The majority therefore concluded that the principles of copyright law stated in Hutchinson rather than those stated in Toro Co. were applicable to this case. I disagree.

In Hutchinson, this court recognized that the principle that "telephone directories and similar publications" were subject to copyright was established by a "long line of cases." Hutchinson, of course, was based on and merely extended that "long line of cases." Leon v. Pacific Telephone Co., 91 F.2d 484, 486, (9th Cir. 1937), the first case cited and relied upon in Hutchinson, quoted Justice Holmes' statement made in 1903 in Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 250, 47 L.Ed. 460, 23 S.Ct. 298 (1903), that "directories and the like … may be copyrighted." Sampson & Murdock Co. v. Seaver-Radford Co., 140 F. 539, 542 (1st Cir. 1905), also cited in Leon, traces the origin of the directories' rule back to at least 1839.

Professor Nimmer puts the directory cases in an entirely different category from the cases involving the publication of law reports. The fact that the slight amount of intellectual labor necessary to produce a plat map may be considered sufficient to establish copyright, as illustrated by ''Rockford Map Pub. v. Dir. Service Co. of Colorado'', 768 F.2d 145 (7th Cir. 1985) (cited by the majority, slip op. at 5 and 11), does not, in my judgment, support the majority's conclusion that Banks "requires a greater degree of intellectual creativity than the trend of the modern cases." Id. at 1226.

I find nothing in the record in this case to support a finding of fact that it takes more intellectual creativity to put page numbers on a volume of law reports today than it did in the yesterdays in which Callaghan and Banks were decided in 1888 and 1909, respectively. Indeed, the trial on the merits of this case may establish that West's pagination is no more than the work of a machine responding to a punch of a button, rather than the exercise of the will of a printer, who yesterday, was at least required to set type for the pagination of a volume of law reports.

IV.
I do not agree with the majority's statement that "the denial of copyright protection [in Banks] was based upon the official status of the reporter," at 1225; its statement that Banks "diverges from Callaghan"; or its conclusion that Callaghan, as a Supreme Court decision, must therefore be followed rather than Banks. Id. slip op. at 10.

Professor Nimmer makes clear that the judicial opinions of both state and federal courts are in the public domain and are therefore not subject to copyright. 1 Nimmer on Copyright, § 5.06[C] at 5-58 – 5-59 (1985). Professor Nimmer cited Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 8 L.Ed. 1055 (1834), to support his conclusion in regard to federal court opinions. Banks v. Manchester, 128 U.S. 244, 32 L.Ed. 425, 9 S.Ct. 36 (1888), and Building Officials & Code Administrators International, Inc. v. Code Technology, Inc., 628 F.2d 730 (1st Cir. 1980), were cited in regard to state court opinions; the latter was cited "for a discussion of the older cases." Id. at 5-58, n. 30. Callaghan, together with a "see" citation to the Second Circuit's opinion in Banks, and a "cf." citation to Wheaton v. Peters, was cited to support Professor Nimmer's statement that: "With respect to the public domain status of judicial opinions, somewhat anomalously the older decisions held that an official reporter paid by the state may personally claim copyright in the headnotes and synopses of court opinions, written as a part of his official duties, in the absence of an agreement to the contrary." Id. at 5-60, n. 32.

Banks v. Manchester, which the Court decided in tandem with Callaghan, was not cited or discussed by the majority. Both cases must, in my view, be given appropriate consideration, for both applied the principles of law established in Wheaton v. Peters. The majority opinion has not, in my view, given appropriate consideration to or recognition of the rationale of the three Supreme Court cases that control the determination of this case.

Part III of Professor Craig Joyce's article The Rise of the Supreme Court Reporter: An Institutional Perspective on Marshall Court Ascendancy, 83 Mich. L. Rev. 1291, 1351 – 1391 (1985) (hereafter cited as Joyce), is devoted to Wheaton v. Peters. While I agree with Professor Joyce's suggestion that "few cases tell stories so fascinating as Wheaton v. Peters," id. at 1391, it is sufficient for present purposes to state that Peters, shortly after he succeeded Wheaton as the Court's official reporter, decided to publish a work entitled the Condensed Reports of Cases in the Supreme Court of the United States, Containing the Whole Series of the Decisions of the Court From Its Organization to the Commencement of Peters's Reports at January Term 1827. Peters' motive was basically a commercial one.

A glance at any one of Wheaton's Reports shows that the scholarly Wheaton, aided and encouraged by Justice Story, included elaborate head notes, a full summary of the arguments of counsel, together with a large number of appendices in the twelve volumes of Supreme Court reports he published between 1816 and 1827. The inclusion of that material in those volumes substantially increased the cost of Wheaton's Reports. Peters compressed the twenty-four volumes of opinions published by all three earlier reporters into only six volumes of his Condensed Reports, which he published between 1830 and 1834. He was able to reduce the price for all the Court's opinions from $130 to $36 for his reports by using smaller type, omitting the arguments of counsel and appendix notes, and by substantial elimination of some concurring and dissenting opinions. Id. at 1365.

Both Justice Story and Justice Washington "enthusiastically supported Peters' undertaking." Id. at 1366. Wheaton's adverse reaction was predictable. Wheaton employed Elijah Paine and Daniel Webster to represent him. In May, 1831 Wheaton filed a bill in equity in the Circuit Court for the Eastern District of Pennsylvania "praying for an injunction to prevent the further printing, publication or sale of volume 3 of the Condensed Reports and an accounting of profits." Id. at 1370. That bill alleged that volume 3 of Peters' Condensed Reports "contained 'without any material abbreviation or alteration, all the reports of cases' in volume 1 of Wheaton's Reports." Id. at 1370. A preliminary injunction was initially issued by Justice Baldwin, sitting as a Circuit Justice with Judge Hopkinson, but was dissolved two years later by Judge Hopkinson who acted alone during one of Justice Baldwin's not infrequent "derangement of the mind." Id. at 1371. The case then went on direct appeal to the Supreme Court.

Joyce accurately stated that "Wheaton's central point [on appeal] – that the decisions of the Court as rendered by the Reporter had always been regarded as subject to copyright by him – was not without substantial foundation." Id. at 1373. Wheaton's counsel recognized, however, that "unless Wheaton had somehow obtained copyrights in the manuscript opinions of the Justices in every significant decision handed down during his tenure as Reporter, the Condensed Reports had infringed no interest of any real value in the marketplace." Id. at 1377. Wheaton's counsel therefore argued that "Wheaton had acquired a copyrightable interest in all such opinions … 'by judges' gift.'" Id. at 1377.

Thomas Sergeant argued on behalf of Peters that, as a matter of public policy, the opinions of the Court must be considered to be in the public domain and not subject to copyright. Id. at 1378. After listening to four days of oral argument, the Court convened on March 19, 1834 to announce their opinions. Joyce accurately stated that "McLean's [majority] opinion left open the possibility that a tiny, unspecified portion of the matter claimed by Wheaton as author – … 'the statements of the cases … and the abstracts thereof' – might indeed have been infringed by Peters." Id. at 1384. He added, however, that for "all practical purposes … the controversy had come to an end when McLean stated that:
 * It may be proper to remark that the court are unanimously of opinion, that no reporter has or can have any copyright in the written opinions delivered by this court; and that the judges thereof cannot confer on any reporter any such right.

Id. at 1385.

Although both Justices Thompson and Baldwin dissented in regard to other issues decided in Wheaton v. Peters, Joyce appropriately noted that "on the decision's central point – the noncopyrightability of the opinions of the Justices – there was unanimity: the Court could allow no impediment to the fullest possible dissemination of its judgments." Id. at 1390.

The impact of Wheaton v. Peters, in my judgment, has been both broad and lasting. The concluding sentence of Justice McLean's opinion destroyed "a presumption of ownership, long shared by Wheaton, his predecessors and the Justices themselves, which if given the force of law would have bestowed upon the Reporters of the Supreme Court exclusive title to those classic expressions of American law that constitute the Court's essential legacy to the nation." Id. at 1386.

In 1883, West published the annotation "Literary Property at Common Law," 17 Fed. 593 (1883), authored by Henry Wade Rogers. Rogers quoted the concluding sentence of Wheaton v. Peters, and added that "all that the reporter can copyright is his own individual work – the head-notes, the statement of the case, analysis or summary of the arguments of counsel, the index, etc." Id. at 596.

Although the majority cited and quoted a short portion of Wheaton v. Peters in a footnote, slip op. at 4, n. 3, it did not discuss that leading case in any detail. It did not even cite Banks v. Manchester. Rather, the majority discussed Callaghan in a manner that suggested that Callaghan must be viewed as having somehow qualified Wheaton v. Peters' rationale and its direct holding. I do not agree that Callaghan can be read in that manner. Nor do I agree with the majority's suggestion that the teaching of Callaghan "does not come through with unmistakable clarity." Slip op. at 8. For I believe Callaghan's teaching is clear when that case is read in tandem with Banks v. Manchester, 128 U.S. 244, 32 L.Ed. 425, 9 S.Ct. 36 (1888), as I believe it must.

Banks v. Manchester, on its facts, involved a case in which the defendant published only the court opinions that had been earlier published by the plaintiff. Callaghan, on the other hand, on its facts was a case in which the defendant not only published the plaintiff's earlier-published court opinions, the defendant also copied that part of the plaintiff's law reports – the head notes and the statements of the cases prepared by the plaintiff – that Wheaton v. Peters recognized was subject to copyright.

The Court concluded in Banks v. Manchester that application of the principles enunciated in Wheaton v. Peters established that the defendant should prevail on the facts of that case. In Callaghan, the Court concluded that the application of the same principles of law supported a judgment that plaintiff was entitled to injunctive relief on the facts of that case.

The record in this case establishes a factual situation comparable to Banks v. Manchester rather than that presented in Callaghan. Hence, it is my view that our panel must follow Banks v. Manchester's application of the principles enunciated in Wheaton v. Peters and distinguish Callaghan on its facts.

In Banks v. Manchester it is clear the defendant published only the opinions of the Supreme Court of Ohio together with the syllabus and the statement of case that had also been prepared by the judges. In affirming the circuit court's dismissal of the plaintiff's infringement action, the Court concluded in Banks v. Manchester that:
 * The question is one of public policy, and there has always been a judicial consensus, from the time of the decision in the case of Wheaton v. Peters, 8. Pet. 591, that no copyright could under the statutes passed by Congress, be secured in the products of the labor done by judicial officers in the discharge of their judicial duties. The whole work done by the judges constitutes the authentic exposition and interpretation of the law, which, binding every citizen, is free for publication to all, whether it is a declaration of unwritten law, or an interpretation of a constitution or a statute.

Id. at 253. The Court then quoted the final sentence of Wheaton v. Peters and added that "what a court, or a judge thereof, cannot confer on a reporter as the basis of a copyright in him, they cannot confer on any other person or on the State." Id. at 254.

In Callaghan, the defendant had copied the plaintiff's head notes and statements of each case – the only part of a law report subject to copyright. The Court cited Banks v. Manchester to support its conclusion that "there can be no copyright in the opinions of the judges, or in the work done by them in their official capacity as judges." Id. at 647. It also concluded, consistent with Wheaton v. Peters, that there is "no ground of public policy" which prohibits a reporter from obtaining a copyright in that part of a law report "which will cover the matter which is the result of his intellectual labor." Id. at 647. Callaghan, in its application of the principles stated in both Wheaton v. Peters and in Banks v. Manchester expressly adopted the circuit court's findings of fact in regard to all volumes of Freeman's Illinois Reports in litigation. Callaghan noted in regard to volumes 32 to 38, inclusive, that Judge Drummond had stated in his first opinion that although there was an "appearance of independent labor performed" by defendant's editors, he found as a fact that it was apparent that "Mr. Freeman's volumes were used; in some instances words and sentences copied without change, in others, changed only in form; and the conclusion is irresistible, that for a large portion of the work [defendants] obtained that information from the volumes of Mr. Freeman." 128 U.S. at 660.

In regard to volumes 39 to 46, the Court quoted Judge Drummond's finding of fact made in his second opinion that: "Upon comparing parts of each of the volumes … I think there can be no doubt that in some respects, in each case, the Freeman volume has been used by the defendants in the head-notes, the statements of facts, and the arguments of counsel." 128 U.S. at 661.

Judge Drummond observed in his second opinion in regard to volumes 39 to 46 that the "fact appears to be, and indeed it is not a subject of controversy, that in arranging the order of cases, and in the paging of the different volumes, the Freeman edition has been followed by the defendants." Id. at 661. He, however, added in the same sentence, that "while this is so, I should not feel inclined, merely on that account and independent of other matters to give a decree to the plaintiff, although it is claimed that the arrangement of the cases and the paging of the volumes are protected by a copyright." Id. (Emphasis added). The Court accepted Judge Drummond's conclusion that "the arrangement of law cases and the paging of the book may depend simply on the will of the printer, of the reporter, or publisher, or the order in which the cases have been decided, or upon other accidental circumstances." Id. at 662.

Callaghan, as I read that case, treated the plagiarized pages of the plaintiff's volumes solely as a question of fact and that it applied the principles enunciated in Wheaton v. Peters to all factual circumstances presented in that case. Those factual circumstances, as I have stated, were in sharp contrast to those presented in Banks v. Manchester, decided in tandem with Callaghan.

Our panel must, of course, follow Callaghan. But our panel must also follow Wheaton v. Peters and Banks v. Manchester. Callaghan, as I read that case, simply applied the principles enunciated in Wheaton v. Peters to entirely different factual circumstances than those presented in either Wheaton v. Peters or in Banks v. Manchester.

The principles of law stated and applied in all three of the Supreme Court cases are the same. I believe that an appropriate application of those principles requires that the district court's interlocutory order be reversed rather than affirmed.

For it is my view that if pagination of a law report had been at issue in any of those three cases, the Court would not have hesitated to hold that star pagination in a volume of published law reports would not be subject to copyright. That was the conclusion of the only court that has considered that precise issue. I turn now to the Second Circuit's decision in Banks. For I agree with the majority's conclusion that "the treatment of case arrangement and pagination in Callaghan was not crucial to the Court's decision" in that case. Maj. op. at 1224.

V.
I dissent from the majority's acceptance of the district court's conclusion that "Banks does not support MDC's claim." Maj. op. at 1225. The Second Circuit concluded in Banks that the plaintiff's infringement action was properly dismissed. The plaintiff claimed in Banks that the eleven volumes (Vols. 38 to 49) of defendant's "L. Ed." reports, which contained forty volumes (Vols. 156 to 171, 173 to 178, and 180–195, inclusive) of plaintiff's "U.S." reports, infringed its copyright on its "U.S." reports.

The defendant, consistent with long-established practice in the publication of law reports, both in England and in the United States, used star pagination in order to permit jump citations to particular pages in plaintiff's "U.S." reports. It is thus clear, that on the facts in Banks, the purchase of defendant's "L. Ed." because of defendant's use of star pagination, completely eliminated the need to purchase any of plaintiff's "U.S." reports. Plaintiff in Banks, as had the plaintiff in Wheaton v. Peters, sought to enjoin all of defendant's law reports.

Plaintiff, however, substantially amended its original complaint. Judge Hazel stated that by "stipulation of the parties the bill was amended to include only the charge of infringement arising out of the arrangement of the cases, the division into volumes, the table of cases, and the numerical or star pagination to indicate where in the official reports the different cases and points decided may be found." Id. at 386. (Emphasis added). Banks thus directly presented questions concerning the plaintiff's "arrangement of the cases" and the defendant's use of "star pagination."

Defendant broadly argued that "the reporter cannot have a copyright for any of the work produced by him in his official capacity" and further "broadly suggested that such labor is that of a paid employee and accordingly vests in the employer." Id. at 387–88. (Emphasis added). Judge Hazel rejected both those broad arguments. He recognized that the right to copyright the work of a paid employee, generally speaking, did vest in his employer. He concluded, however, that under Banks v. Manchester the "official reporter of the Supreme Court, though a sworn public officer, is not, however, confined to this strict rule." Id. at 388.

Citing Banks v. Manchester, Judge Hazel held that "neither the court nor the reporter from motives of public policy, can have any exclusive rights in the written or oral opinions of the court." Id. at 388. (Emphasis added). Judge Hazel concluded, and the Second Circuit concurred, that "the reporter's right to protection must be limited to his intellectual labor" and that "for another to simply adopt the plan of grouping of the cases, making marginal reference to the paging of the volumes issued under his direction, without in any way pirating the substance of his origination, is not enough, in my judgment, to establish infringement." Id. at 390.

Judge Hazel expressly relied on Justice Harlan's opinion written as a Circuit Justice in Howell v. Miller, 91 F. 129, 33 C.C.A. 407 (1898). He quoted with approval Justice Harlan's statement that "if Miller had cut from Howell's books, delivered to him by the state, the General Laws of Michigan as therein printed, and the pages so cut out had been used when his compilation was printed – if this had been done and nothing more – there would have been no ground of complaint." Judge Hazel then concluded that "an action for infringement does not lie if the defendant's asserted wrongdoing simply consisted of reprinting the decisions of the court with the paging, the defendant independently supplying headnotes, statements of cases, etc." Id. at 391. (Emphasis added).

It is important to note that Banks considered the factual circumstances relating to that plaintiff's arrangement of cases. In regard to both the plaintiff's arrangement of the cases and its pagination of the volumes, Judge Hazel concluded that for a reporter "to merely arrange the cases in sequence [and to page] the volumes [were not] features or characteristics of such importance as to entitle him to copyright protection of such details." 169 Fed. at 390. (Emphasis added). That conclusion, when read with Judge Hazel's discussion of all three of the controlling Supreme Court cases, was obviously based on the reason that such an arrangement and the pagination of the volumes were not original works of authorship within the meaning of the Copyright Act.

Attention should therefore be focused on whether the opinions reported in the volumes of the "U.S." reports in litigation had, in fact, been merely arranged "in sequence." For I do not believe that it can be doubted that all the volumes in litigation were in the record considered by the district court and Second Circuit in Banks. Examination of each "U.S." volume in litigation establishes that the Court's official reporter, Bancroft Davis (whose testimony was quoted in Judge Hazel's opinion) meant exactly what he said when he testified that he simply took the cases "as they came." Id. at 389. Examination of those "U.S." volumes establishes that the cases were, in fact, published in the sequence in which they had been decided.

The record in this case shows that the district court asked West's counsel whether it was West's theory that "the page numbers express the arrangement" of West's cases. (A301). West's counsel replied that "they certainly do, your Honor." Id. West's counsel directed the district court's attention to 300 F.Supp. 100 to illustrate West's arrangement. (A203).

MDC attached an addendum to its brief (A32a – A38a) that compared how the cases would have been arranged in 300 F.Supp. had the cases been arranged by date of decision with the actual arrangement of the cases as they were, in fact, reported in 300 F.Supp. That addendum shows that West's actual arrangement of cases was inconsistent with the method stated in West's affidavits. West, in its brief filed in this Court, replied to MDC's argument by stating that its affidavits set forth only West's "current practice" and stated that 300 F.Supp. "was published in 1969 before [West's] current practice was adopted." (West's brief, p. 15, n. 11).

West's answer to MDC's argument raises two factual questions, neither of which were considered by the district court or by the majority. First, if the West affidavits cover only the manner in which West has arranged its cases since 1969, there is nothing in the record to support any finding of fact in regard to how West may have arranged its cases in all the volumes of reports published by it from January 2, 1910 to 1969. Second, and perhaps of greater importance, if West simply publishes cases in the chronological sequence that cases are handed down by a particular court, such an arrangement would fall within the factual circumstances and decision in Banks.

I disagree with the majority's suggestion, slip op. at 10–11, that time has somehow eroded Banks' application of the principles of law that were settled by Wheaton v. Peters. The Second Circuit followed Banks in Eggers v. Sun Sales Corporation, supra, 263 Fed. 373. That case rejected a plaintiff's argument which was substantially the same as West's Callaghan argument in this case. The question presented was whether the defendants' use of the same pagination used by the plaintiff in its copyrighted publication of General Pershing's World War I Official Report to the Secretary of War, a document in the public domain, could be said to infringe plaintiff's copyright. A panel of the Second Circuit that included Henry Wade Rogers (see footnote 42, supra) affirmed the district court's dismissal of plaintiff's infringement action.

On the facts of that case, defendants did not reproduce any of the drawings, photographs or any other feature of plaintiff's pamphlet that were admittedly subject to copyright. Defendants did, however, use plaintiff's page numbers in its publication after learning that "there was a good market for the report"; there was no question that the defendants did, in fact, imitate "plaintiff's attractive get-up." Id. The Sun Sales court recognized that defendants' conduct "may be called mean" and that, on the facts, it was "even possible that defendants' printers set up the official report from a copy of plaintiff's book; identity of pagination leads to that suspicion." 263 Fed. at 375.

The court, however, in express reliance on its earlier decision in Banks, stated in that regard that "legally that is not of sufficient importance to constitute infringement of copyright." Id. at 375. The court concluded that "assuming … that plaintiff's pamphlet contains any copyrightable matter, we are of the opinion … that defendants' is not an infringement." Id. at 375.

It is thus clear that the Second Circuit's decision in Banks does not stand alone. I suspect the reason that there are but few cases that involve questions of whether the pagination of a document in the public domain is subject to copyright is because few plaintiffs have ever tried to make such a claim in regard to the page numbers on their copyrighted publication. But whatever the reason, such a claim has been rejected by every court that has had occasion to decide the question.

West has cited no authority to support its contention that it is entitled to copyright protection of either its arrangement of cases or the pagination of all the volumes it has published since January 2, 1910 under either its past or its current practice. I believe that this court, particularly on a Section 1292(a)(1) appeal, should hesitate to suggest that the scope of the copyright act can be said to protect West's arrangement of cases which may, on the facts, be no more than the sequential publication of court opinions in the chronological order in which the cases are handed down. Nor do I believe on the record in this case that we should suggest in any way that the scope of West's copyright is broad enough to protect the placement of arabic numbers on the pages of the volumes in which those opinions are published.

As I suggested at the outset, I would follow the lead of the First Circuit in Building Officials & Code Adm., supra, and reverse the district court's grant of a preliminary injunction on this Section 1292(a)(1) appeal. For I believe, as did the First Circuit, that final judgment in this case should await a more complete hearing on the merits in the district court and a later review of that court's final decision on a Section 1291 appeal.

I concur in part and respectfully dissent in part for the reasons stated.