## Facts

- West Publishing Co. and West Publishing Corp. (West) published printed compilations of judicial opinions in its National Reporter System, and the volume-and-page citations from those reporters became the standard citation form used by lawyers and courts.
- Matthew Bender & Company, Inc. (Bender) and HyperLaw, Inc. (HyperLaw) sold electronic compilations of judicial opinions on CD-ROM.
- To make their electronic products compatible with standard citations, Bender and HyperLaw inserted “star pagination” into the text of opinions—markers indicating where West’s printed page breaks occur and what the West page numbers would be at those points.
- Bender and HyperLaw did not copy West’s editorial material such as headnotes or key-number classifications; they used the public-domain judicial opinions and added page-reference markers.
- West contended that reproducing West page-break locations and page numbers copied protected elements of West’s copyrighted compilations—particularly West’s selection and arrangement of opinions into volumes and pages.
- Bender (and later HyperLaw) sought declaratory judgments that their use of star pagination did not infringe West’s copyrights. The district court granted summary judgment to Bender and partial summary judgment to HyperLaw on the star-pagination claim, and West appealed.

## Issues

1. Whether placing West’s internal page-number and page-break references (“star pagination”) into independently created electronic compilations of judicial opinions infringes West’s compilation copyright in its reporters’ selection and arrangement.
2. Whether West’s internal pagination and volume/page scheme reflect enough originality to qualify as protectable expression, rather than unprotectable factual or functional information.

## Decision

- The Second Circuit affirmed the district court’s judgment for Bender and HyperLaw on the star-pagination issue.
- The court held that star pagination does not infringe West’s compilation copyright because the page-break and page-number information copied by star pagination is not a protectable original component of West’s compilations.
- The court rejected West’s theory that allowing users to “see” or reconstruct West’s arrangement through page references amounts to copying protected expression when what is taken is only unprotectable locator information.
- Judge Sweet dissented.

## Legal Principles

- Copyright protects only original expression; compilations are protected only to the extent of original selection, coordination, or arrangement, and not for labor or investment alone. (*Feist* standard.)
- Where an alleged “arrangement” is largely dictated by conventions and functional constraints (such as chronological ordering and standard citation practices), it may lack even the minimal creativity needed for copyright protection.
- Page numbers and internal page-break locations in a reporter function as a locator system—factual reference points for finding text—rather than expressive authorship.
- A competitor does not infringe a compilation copyright by copying only unprotectable factual/functional reference information, even if that information helps users correlate the competitor’s product with the copyright holder’s publication.

## Conclusion

In *Matthew Bender & Co. v. West Publishing Co.*, the Second Circuit held that adding West “star pagination” to CD-ROM databases of public-domain judicial opinions does not infringe West’s compilation copyright, because West’s internal pagination operates as unprotectable locator information and reflects insufficient originality to receive copyright protection.


Matthew Bender & Co. v. West Publishing Co., 158 F.3d 693 (1998)