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Assuming there is a class of primary infringers, then a party who, with knowledge of the infringing activity, induces, causes, or materially contributes to the infringing conduct of another, may be held liable as a "contributory" infringer. Two types of activities that lead to contributory liability are: (i) personal conduct that encourages or assists the infringement; and (ii) provision of machinery or goods that facilitate the infringement. However, the provision of equipment does not amount to contributory infringement if the equipment is capable of substantial noninfringing uses, including uses authorized under the fair use doctrine. In determining whether liability is foreclosed by substantial noninfringing uses, the United States Supreme Court emphasizes whether the alleged contributory infringer did not influence or encourage unlawful copying with the equipment it provided.
Defendants-appellants West Publishing Co. and West Publishing Corp. (collectively "West") create and publish printed compilations of federal and state judicial opinions. Plaintiff-appellee Matthew Bender & Company, Inc. and intervenor-plaintiff-appellee HyperLaw, Inc. (collectively "plaintiffs") manufacture and market compilations of judicial opinions stored on compact disc-read only memory ("CD-ROM") discs, in which opinions they embed (or intend to embed) citations that show the page location of the particular text in West's printed version of the opinions (so-called "star pagination"). Bender and HyperLaw sought judgment declaring that star pagination will not infringe West's copyrights in its compilations of judicial opinions. West appealed from a judgment of the United States District Court for the Southern District of New York, granting summary judgment of noninfringement to Bender and partial summary judgment of noninfringement to HyperLaw.
Did the use of star pagination in plaintiffs' printed judicial opinions to show the location of the text in West’s printed version of the opinions infringe West’s copyrights?
The court affirmed the grant of summary judgment in favor of plaintiff publishing companies. The court determined that even if plaintiffs' computer products, when equipped with star pagination, amounted to unlawful copies of defendant publishing corporations' arrangement of cases under the Copyright Act, 17 U.S.C.S. § 101 et seq., defendants had conceded that specification of the initial page of their case reporter in plaintiffs' products was permissible under the fair use doctrine. The court further found, however, that under a proper reading of the Act the insertion of star pagination did not amount of infringement. The court noted that because the internal pagination of defendants' case reporters did not entail even a modicum of creativity, the volume and page numbers were not original components of defendants' compilations and thus were not themselves protected by defendants' compilation copyright. The court accordingly concluded that because the volume and page numbers were unprotected features of defendants' compilation process, they were subject to copying without plaintiffs being liable for a purported infringement of defendants' copyright.