West Publ’g Co. v. On Point Solutions, Inc.
The U.S. District Court for the Northern District of Georgia
1994-F550-09010001
West Publishing Company, Plaintiff
v.
On Point Solutions, Inc., Defendant.
Dates:
Filed 1994-09-01
Decided 1994-09-01
Docket No.:
1:93–CV–2071
Citations:
1994 WL 778426
1994 U.S. Dist. LEXIS 20040
Copyright L. Rep. (CCH) ¶27,353
Before:
Marvin H. Shoob (Senior District Judge)
Attorneys:
For plaintiff: Charles Conrow Murphy, Jr. Ellen G. Schlossberg (Vaughan & Murphy), Atlanta, Georgia, and Joseph M. Musilek (Opperman Heins & Paquin), Minneapolis, Minnesota.
For defendant: Maria Nicollette Sorolis and S. Grier Wells (Brant Moore Sapp Macdonald & Wells), Jacksonville, Florida.
Shoob, District Judge:

PERMANENT INJUNCTION AND FINAL JUDGMENT

1Plaintiff West Publishing Company (“West”), among its other businesses, compiles and publishes annotated case reports of the decisions of the Florida Court of Appeals and the Florida Supreme Court in a publication entitled Southern Reporter. Southern Reporter also contains annotated case reports of the courts of Mississippi, Louisiana and Alabama, which case reports are not at issue in this lawsuit.

2Defendant On Point Solutions, Inc. has created and is marketing and licensing a product known as “On Point Solutions’ Florida CD-ROM” (the “On Point Disc”). The On Point Disc consists of a computerized database on a CD-ROM, which includes unannotated case reports of the Florida Courts of Appeals and the Florida Supreme Court.

3West is the owner of federally registered copyrights in the West case reports contained in Southern Reporter. The parties are in agreement that West has a valid copyright in the editorial enhancements contained in each Southern Reporter case report, including, but not limited to (a) the case synopsis, a brief summary of the facts and the court’s holding, that is the original creation of West and is not a part of the opinion as issued by the court; (b) headnote paragraphs authored by West that summarize topic designations and West “Key Number Classifications” authored by West and assigned to each headnote.

4Until 1948, the State of Florida published an official collection of case reports of the Florida appellate courts entitled Florida Reports. West does not claim a copyright in the case reports contained in Florida Reports, except for the syllabi and headnotes, which the State of Florida licensed from West for inclusion in the Florida Reports. Each volume of Florida Reports that contains West-authored syllabi and headnotes contains a West copyright notice indicating West’s authorship and ownership of the syllabi and headnotes.

5On Point obtained its pre-1948 Florida case reports from Florida Reports. In doing so, it inadvertently included in the April 1993 version of the On Point Disc certain West-authored and copyrighted headnotes from case reports dating from 1941-1948. On Point acknowledges that the inclusion of those headnotes infringed West’s copyright. The infringing headnotes were removed from the September 1993 version of the On Point Disc and On Point has undertaken to recover and destroy all existing copies of the April 1993 version of the On Point Disc.

6The April 1993 version of the On Point Disc also included Florida case reports scanned, using a computer scanner and optical character recognition software, from West’s copyrighted advance sheets of the Southern Reporter, as reprinted in advance sheets to West’s Florida Cases, covering the period from November 1992 through March 1993. On the September 1993 and subsequent versions of the On Point Disc, the case reports scanned from the Florida Cases advance sheets were deleted and replaced with slip opinions obtained directly from the State of Florida following receipt by On Point of an archival computer tape of those opinions.

7With respect to the West case reports scanned by On Point, that scanning process resulted in copies being made by On Point of the entire West case reports, including West’s headnotes and synopsis. Those copies, in addition to being stored temporarily in the Random Access Memory (“RAM”) of On Point’s computers, were also stored on the fixed disks of On Point’s computers and on computer floppy disks. However, the headnotes and syllabi temporarily stored on On Point’s computers and disks were deleted by On Point prior to creation of the April 1993 On Point Disc. Accordingly, On Point acknowledges that those intermediate copies infringed West’s copyrights in the annotated case reports scanned by On Point. Therefore,

8IT IS HEREBY ORDERED, ADJUDGED AND DECREED that defendant On Point Solutions, Inc., together with its officers, agents, employees, principals, owners, directors, shareholders, affiliated companies and attorneys, and all other persons, firms or companies in active concert or participation with them shall be permanently enjoined as follows:

1. They shall not sell, distribute, copy, modify, reproduce in any form, transfer, offer for license or sale, or use, in whole or in part, directly or indirectly (including, without limitation, by assisting any other person or entity to do so), the April, 1993 version of the On Point Disc.

2. West acknowledges that On Point has made a diligent effort to locate and destroy all remaining copies of the April 1993 version of the On Point Disc. On Point affirmatively represents that it has no knowledge of any remaining copies of its April 1993 disc. In the event any such copies are discovered not to have been destroyed, On Point shall immediately undertake all reasonable efforts to retrieve and destroy any such remaining copies of the April 1993 version of the On Point Disc as well as any data, text, database or computerized database, in any form or format, that was, in whole or in part, directly or indirectly, taken, copied, reproduced, created or derived from or based upon West’s Southern Reporter or Florida Cases for production of the April, 1993 version of the On Point Disc.

3. For a period of two (2) years following the entry of this Permanent Injunction, On Point will provide West with a copy of any updates or new editions of the On Point Florida Disc at or about the time of first offering that update or edition to the public. West shall be entitled to decompile, query or otherwise inspect and test those updates or editions for the purpose of ensuring compliance with this Injunction.

4. Nothing in this injunction shall prohibit defendants from creating, selling, licensing or distributing its Florida CD ROM product or any other databases that do not fall within the provisions of this injunction.

IT IS SO ORDERED.