U.S. Court of Appeals for the Second Circuit

Matthew Bender & Company, Inc., Plaintiff-Appellee, Hyperlaw, Inc., Intervenor-Plaintiff-Appellee v. West…

November 3, 1998158 F.3d 693

Summary

The court affirmed summary judgment declaring that inserting star-pagination references to West's case reporters into CD-ROM compilations does not infringe West's compilation copyrights. It held that West's pagination is not an original protectable element, that the plaintiffs' embedded case sequence is not substantially similar to West's arrangement, and that the products have substantial noninfringing uses defeating contributory-infringement liability. Judge Sweet, dissenting, would have treated comprehensive star pagination as copying West's protected selection and arrangement and would have required a trial on fair use.

Holding

  • Direct infringement through star pagination. Star pagination does not infringe West's compilation copyright because West's volume and page numbers are unprotectable, and the plaintiffs' CD-ROMs do not fix an arrangement substantially similar to West's arrangement. A user-created West arrangement resulting from manipulating and reordering the data is not the arrangement fixed in the plaintiffs' products.
  • Contributory and vicarious infringement. The plaintiffs are not liable for contributory infringement because West identified no primary infringer other than its own counsel, and the products have substantial, predominant noninfringing uses. Vicarious liability also fails because the plaintiffs cannot control the conduct of a direct infringer.

Docket Docket 97-7430

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