Wisconsin Legislature: Copyright; Words And Phrases;

81 Op. Att'y Gen. 45, 50 (1993)

The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.

81 Op. Att'y Gen. 45, 50 (1993)

If there is sufficient originality in selection, coordination or arrangement, then typically copyright protection extends to the work as a whole, not because the whole work has become subject to copyright, but because it is only as a whole that the features of selection, coordination or arrangement are implicated. For example, another is precluded from copying the whole work because to do so would necessarily encompass the entire original selection, coordination and arrangement. On the other hand, another would be entirely free to copy an opinion within the compilation, because the opinion itself is not subject to any copyright interest and the copying of one opinion will not implicate any selection, coordination or arrangement embodied in the work as a whole. Perhaps another way to look at it is that if some aspect of a compilation is subject to copyright, one cannot copy the whole because the copying of the whole would necessarily involve copying the part that is protected. If one copies only a part of work, the questions become focused on whether the part copied is the part protected.

81 Op. Att'y Gen. 45, 50 (1993)

As explained by Eaton S. Drone in his classic treatise on nineteenth century copyright law:

81 Op. Att'y Gen. 45, 50-51 (1993)

No protection is given to the component parts of a compilation independently of their arrangement and combination. Of these, the compiler is not the author, and he can have no exclusive property in what is common and open to all. Nor is the arrangement and combination, independently of the materials themselves, a proper subject of copyright.... The copyright vests in the materials as combined and arranged; in the union of form and substance. Any one may use the same materials in a different combination, or adopt a similar arrangement for different selections.

But no person can copy both the substance and the arrangement of a compilation, and use the same materials in the same form, without committing piracy

81 Op. Att'y Gen. 45, 51 (1993)

Paterson & Joyce, 36 UCLA L. Rev. at 739.

81 Op. Att'y Gen. 45, 51 (1993)

Feist

, the Supreme Court decided that even extensive copying of another's telephone directory white pages did not implicate copyright protection. The raw data consisting of names, towns and telephone numbers were uncopyrightable facts. There was no "selection" involving originality because it was basically automatic that subscribers to the plaintiff's telephone service would be listed in its telephone directory. Although the names were arranged alphabetically, there "is nothing remotely creative about arranging names alphabetically in a white pages directory."

Feist

, 499 U.S. at 363.

81 Op. Att'y Gen. 45, 51 (1993)

In the course of its decision in

Feist

, the Court repudiated the notions of "industrious collection" and "sweat of the brow" that had been developed by and extensively accepted by the courts as a basis for protecting the hard (as opposed to original) work of compilers of facts. The Court also corrected the mistaken notion that compilations were copyrightable per se due to the way they were specifically mentioned in the earlier 1909 copyright act.

Feist

, 499 U.S. at 351-56.

81 Op. Att'y Gen. 45, 51-52 (1993)

Turning to the question at hand, a dispositive decision would have to await a full factual development of just what the compiler of judicial opinions does in a particular case in the way of selection, coordination or arrangement. However, there are good reasons to question whether the typical compiler's work, as generally understood, will qualify. Patterson & Joyce, 36 UCLA L. Rev. at 763-72. It is our understanding that all Wisconsin Supreme Court decisions are selected for publication by the court and that court of appeals decisions are selected for publication by the court's publication committee. Thus selection is made by the courts not the compilers. We are not aware of any evidence of originality in the coordination or arrangement of opinions within volumes. As stated in Patterson & Joyce:

81 Op. Att'y Gen. 45, 52 (1993)

[N]othing in the majority opinion suggests anything to contradict the conclusions one can reach simply by examining individual volumes of West's reports. West may or may not "select" cases for inclusion in a volume. But clearly it does not "coordinate" cases within the volume, except in ways dictated by its subminimally original categorization system. Nor does it "arrange" cases in any discernible fashion within the volume, but instead prints them in an order completely lacking expressive character or even utility--an order presumably determined by date of decision or receipt, subject to the printer's convenience (and any necessary intervening communications with the deciding courts).

81 Op. Att'y Gen. 45, 52 (1993)

Patterson & Joyce, 36 UCLA L. Rev. at 771 (footnote omitted).

81 Op. Att'y Gen. 45, 52-53 (1993)

The final category to consider is pagination within the compiler's volumes. This is treated as a special subject because the pagination of a compilation of judicial opinions was held to be protected by copyright in

West Pub. Co.

However, the validity of that opinion is in serious doubt in the wake of the United States Supreme Court's decision in

Feist

. This is so because of the substance of the

Feist

decision and its renewed emphasis on the constitutional requirement of originality. But there is a further less obvious reason. A reader will find that throughout the

Feist

decision, the Court embraces the work of Patterson & Joyce.

See

Feist

, 499 U.S. at 347-49, 361-62. The mission of that nearly 100-page article is to discredit the decision in

West Pub. Co.

In my opinion they succeed, and I believe the United States Supreme Court agrees. In the words of these commentators:

81 Op. Att'y Gen. 45, 53 (1993)

As to page numbers in law reports, one strains mightily to identify anything therein which expresses the "unique personal reaction" of the compilation author upon the subject matter--that is, anything which contributes "some substantial, not merely trivial, originality" to the preexisting matter which the compilation author has taken from the public domain. Authorship originates not on a piece of paper or a computer disk but in the author's mind, whereas generally pagination is an element added mechanically by the printer long after the author has departed the scene. Not surprisingly, the traditional view has been that providing pagination, particularly for a public domain work, is too minimal a contribution to sustain a copyright, and that taking only the pagination in such a work does not infringe the compilation author's just rights.

81 Op. Att'y Gen. 45, 53 (1993)

....

81 Op. Att'y Gen. 45, 53 (1993)

To state the matter succinctly, West's paging of any given volume of reports is not an extension of copyrightable case arrangement. Pagination is, rather, "a purely mechanical process dictated entirely by the format" of the volume. Thus, West's page numbers, systematically added in the composition (rather than the editorial) process, are, like its arrangements, incapable of protection.

81 Op. Att'y Gen. 45, 53 (1993)

Patterson & Joyce, 36 UCLA L. Rev. at 764-65, 772 (footnotes omitted).

81 Op. Att'y Gen. 45, 53 (1993)

With this background, I return to the specific questions that you have posed:

81 Op. Att'y Gen. 45, 53 (1993)

1. Are Wisconsin Supreme Court and Court of Appeals decisions, both before and after official publication as

Callaghan's Wisconsin Reports

, in the public domain? Or, are they protected by copyright?

81 Op. Att'y Gen. 45, 54 (1993)

It appears quite clear that the appellate court decisions per se are not copyrightable as issued by the court and no subsequent inclusion in a compilation will change that status. The opinion itself is in the public domain wherever it is found.

81 Op. Att'y Gen. 45, 54 (1993)

2. Can an individual offer these decisions for sale commercially in other formats; i.e., text retrieval computer software, without copyright infringement or running afoul of the fair use doctrine?

81 Op. Att'y Gen. 45, 54 (1993)

There is no question that a business may take appellate court opinions per se and sell them, and a business may take appellate court opinions per se and convert them to a computerized format and sell them.

81 Op. Att'y Gen. 45, 54 (1993)

If the business is working not from the appellate court decisions per se but from a compilation developed, for example by

Callaghan's

, it continues to be true that the opinions per se may be copied freely. The question becomes whether the compiler has contributed something sufficiently original so that the compiler has some protectible copyright interest that must be honored by the subsequent business user.

81 Op. Att'y Gen. 45, 54 (1993)

From the discussion above, it is my opinion that a compiler of judicial opinions probably will be able to establish copyright interests in original material added to the compilation such as those recognized in

Callaghan v. Myers

. Theoretically, a compiler could have protection against copying of the entire compiled work if there is sufficient originality in the selection, coordination or arrangement of the opinions. However, in the wake of

Feist

and its embrace of the work of Patterson and Joyce, it is my opinion there is serious doubt whether there is copyright protection for the standard compilation of judicial opinions and this doubt extends to the pagination of those compilations. To be any more definite, I will need to have more details as to exactly what the private vendor is using from preexisting sources.