#151: How Westlaw Lost its Copyright, with Alan Sugarman

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Speaker 1: Welcome to the Lawyerist Podcast with Sam Glover and Aaron Street. Each week, Lawyerist brings you advice and interviews to help you build a more successful law practice in today’s challenging and constantly changing legal market. And now, here are Sam and Aaron.

Sam Glover: Hi, I’m Sam Glover.

Aaron Street: And I’m Aaron Street. And this is episode 151 of The Lawyerist Podcast, part of the Legal Talk Network. Today we’re talking with Alan Sugarman, whose HyperLaw service in the early 1990s paved the way for modern research services like Google Scholar and Fastcase.

Sam Glover: Today’s podcast is sponsored by Ruby Receptionist, and its smart, charming receptionists who are perfect for small firms. Visit callruby.com/lawyerist to get a free trial with Ruby.

Aaron Street: Today’s podcast is also sponsored by Clio Legal Practice Management Software. Clio makes running your law firm easier. Try it for free today at clio.com.

So, I guess today’s episode with Alan Sugarman is kind of one in our ongoing series on how we got to this place where open access to law is a conversation. We’ve had a number of these interviews with Tim Stanley, and Ed Walters, and Sarah Glassmeyer. I think this’ll be an interesting story as piece of that.

Sam Glover: Yeah, I kind of geek out on the nuts and bolts of how we get to where we are today, and one of the reasons why I’m interested in open access to law is that law is kind of the oil, Ed Walters would say, on which innovation in a lot of legal tech works, right? Like, if you wanna build AI, you have to have a dataset to train it on and a lot of that comes from open access to law. You can’t have it unless it’s open. So that’s why I’ve been doing some of these interviews, because I think it’s fascinating.

But I think what you will also hear as an undercurrent in some of these interviews … It was there with Tim Stanley, and with Carl Malamud, and it’s here in my interview with Alan Sugarman, is that some of today’s competitive landscape is due to a series of incidents that have resulted in grudges, that weren’t always pretty. And I think you’ll hear that today, I think you’ve probably heard that in some of the previous ones.

But the lawsuit over HyperLaw and the history of it and background and what happened is pretty interesting, so here’s my interview with Alan. Just another note, my audio, again, isn’t great for the first two minutes this week, but then it clears up and please be reassured that I’ve upgraded my recording gear at home so snow days won’t muck up my interviews so much anymore.

Aaron Street: Oh, good.

Sam Glover: Here we go.

Alan Sugarman: Hello, I’m Alan Sugarman. I am an attorney in New York City, I’ve been practicing since 1971, and I’m the founder of HyperLaw, which in modern day terms was the disrupter of the legal publishing industry. And we took on the monopolist West Publishing and we beat them and that was in 1997 and 1998.

Sam Glover: Awesome. Thanks for being with us today, Alan. Maybe before we dive into the litigation, which I really wanna talk about, what was the lay of the land before HyperLaw came along in 1991? What did legal research look like back then?

Alan Sugarman: Well, legal research back then was still largely paper-based, and people used books and people used the key numbering system to do their research. Lexis had been founded in the 70s, and West Publishing Company, which people call today West Law, created its online service a few years later. It was the federal government that it really initiated legal research online or … digital legal research was done by the Air Force, Flight.

Flight was an effort by the US Air Force to digitize US Supreme Court decisions. And it was made available to lawyers in the US government. And then that evolved into something called Jurist, which the department of justice worked on, and they were digitizing legal opinions, federal opinions, starting in the 80s. And then they got West Publishing Company to help them do the digitizing, and gave West an exclusive contract and made it clear that those cases weren’t subject to FOIA requests.

So there was litigation where people were trying to get their hands on Jurist, and then the big thing that happened was in the mid-80s, Lexis decided it was going to start using the so-called star-pagination that West had developed. The site to the page, the volume and page number of the cases. So, West jumped on them, and following something they did for almost 10 years after that, they of course sued them in Minnesota, in the federal courts where they’d been cultivating judges for years, and where the cases would be reviewed in the eighth circuit where they’d been cultivating judges. So West jumped on Lexis, which was owned by Mead … And by the way, Lexis was originally a product of the Ohio State Bar … And West was able to get an injunction against Mead, claiming they had copyrights and the text, the enhanced text, and the citations, and won in the eighth circuit which wasn’t a surprise, given some of the things that had gone on, including the debit award which was basically paying off federal judges with awards and trips to resorts.

Sam Glover: I mean that sounds pretty cutthroat! We don’t normally think of legal research as a cutthroat industry, but …

Alan Sugarman: Oh no, West was incredibly litigious. They were suing people right and left and at this point in time, the cost of converting paper opinions to text was pretty expensive. Now this was way before Optical Character Recognition, and even in the 90s, “OCR” as we call it, was not so robust and so the way they had to do it was have it keyed in and even the facilities to do keying in, basically in India, were not as developed as they are today. So it was a big expense just to get a court case converted digitally, and of course at that time, even if there were some word processors around, judges were … I would say 95% of all opinions were being typed on electric typewriters or handwritten. So there was no way of getting digital versions from the court. And if they were digital versions, they were in specialized publishing printing software.

Sam Glover: I mean that kinda puts it in perspective, ’cause when I talked to Ed Walters, I’m appalled by how much effort they put in to maintain legal decisions coming into Fastcase’s database, but by contrast, the amount of effort that you had to put in to do that back in the 80s and 90s sounds like it was just crazy higher effort.

Alan Sugarman: Well, [inaudible 00: 07: 21] worse than that, I think West didn’t even bother even once decisions were available in Word Processing. It wasn’t worth the time to try to convert the digital Word Processing files. There were so many different programs, ways that people did it. And formatting and everything else. It was just, at the end of the day, easier for them to send it to India or somewhere else and get it double-keyed and bring it back to the US.

Or, so they just ignored that. In a minute I’ll get to what we did.

Sam Glover: Well yeah I wanna hear about that too.

Alan Sugarman: Okay so West [inaudible 00: 08: 04] basically gave a monopoly to West over the content and the citation to the content of judicial opinions. And so our involvement was that I’ve been very involved with computers in the law for years, in fact in the early 80s I’d even taught a course in computer literacy for lawyers in 1982. My original computer had 4k of memory. If people know what that means.

Sam Glover: Yeah.

Alan Sugarman: So I was pretty involved with this. When I came off my big case in 1990 I finished up a real estate book and decided that I wanted to do an electronic version. I reserved the rights with my publisher John Wiley who didn’t know what I meant when I said I wanted to do an electronic version. And I wanted to link into the cases. So my question is, where do I find the cases? This was all going to be on floppy disk, if you can believe it.

Sam Glover: Yeah.

Alan Sugarman: And then CD-ROM. So I wrote a letter to West saying, “Look I know the only place I can find the decisions is from you. From my litigation experience I spent far too much time wandering around court clerks offices and dusting boxes trying to find old files.”

So I wrote them and they said, “No.” And they basically said, quote said, “Proceed at your own risk.” And I knew they’d been after other people and they were starting to take the position that if you did a brief with links to cases that you had to get their permission. If you went to a law library and wanted to photocopy a case they wouldn’t do it unless basically they paid a fee to West.

Sam Glover: Wow really?

Alan Sugarman: Oh yeah.

Sam Glover: That’s crazy.

Alan Sugarman: Absolutely true. Absolutely. So West wanted to control everything. Now this was 1991 before the internet, but I had realized that digital linking to briefs for example or treatises would be the way of the future of development of law. It wasn’t so much legal research but it was the ability to present the case to the reader without having to go do legal research. And I realized this with [inaudible 00: 10: 26] the whole development of law, I was offended by it. And I’d read an article about hyper-linking by Vannevar Bush, which he predicted this back in the 40s.

So I created HyperLaw to do my book. And then I decided that maybe the first thing to do to test West and also to perhaps create a future product would be to start publishing the texts of the US Supreme Court. Now at that time they had a very elaborate funky system for making cases available to newspapers and publishers. And you had to sign up and go through all of this security stuff and there were maybe 10 to 20 publishers in the country who did this. But we managed to sign up by thousands of dollars of secure hardware. I mean we were just accepting a down lope I think in their mind. If we get a download from them we can mess up their system.

So we got the decisions, we got them all formatted, cleaned up, found a search engine that would fit on a floppy disk in a CD-ROM, released it. And the idea I had was perhaps to do reviews of Supreme Court cases or something like that, and so you could buy every year, I never did this, but buy every year a review of the Supreme Court cases for the year and you can link in to all the cases. So that was the idea.

Sam Glover: It sounds like HyperLaw was basically like Microsoft Encarta. Where both the software and all the data is on the CD that you would buy.

Alan Sugarman: That was the idea.

Sam Glover: Yeah.

Alan Sugarman: So we then released the CD at Legal Tech in New York in 1992, we were the only company with any CD product. We were told the CD was a dead technology. But I would tell you the West people went hovering around my booth. We didn’t sell very many. It was not a commercial success. I then discovered that some of the Court of Appeals were starting to release the Federal Court of Appeals opinions on their bulletin boards. And so I decided I would download as many as I could and put those on a CD. And that turned into an elaborate product.

I had two or three interns from Columbia Law School, one who was a good programmer, and I did my own programming. And it was a huge problem of downloading cases, figuring out if you had duplicates, cleaning them up, each one was a different format. But we put together a pretty nice case which had meta-data in it. We used pretty intelligent searching to create the meta-data. And we had a real product. And then we went to the American Association of Law Libraries Convention in 1993 in Boston, which is really big, it’s a big event in legal publishing. And West again came hovering around my booth and I mentioned that, “Well we don’t have all the cases.” And they said, “Well you better not use our cases.” Well, I took that as a threat.

Then what happened in 1994, Matthew Bender, which was an independent company then was trying to publish treatises of New York case law, and they needed the cases. They wanted to do the same thing I had in mind. I’m not claiming to be original in any way. Because it was obvious that was the way, what people wanted to have.

They were running into problems, but they wanted to use the citations to the cases. The volume and page number.

Sam Glover: Whereas you were just using the cases themselves.

Alan Sugarman: Well we were downloading the cases which had nothing to do with West. But what we wanted to do was fill in the gaps with the cases that weren’t being downloaded. Because the courts weren’t so complete.

Anyway Matthew Bender sued West in New York City, where we’re located in the Southern District of New York where I was admitted to practice law, and had practiced. And sued them for declaratory judgment. And when I saw that, this was early in 94, I said, “Oh no. We’re gonna have another fix where two big companies sue each other and after they beat each other and the lawyers collect their legal fees enter into a private settlement and everyone else will be screwed.”

So four weeks later we intervened. And I have a very long detailed complaint that we filed. And my friends Paul Ruskin and Carl Hartman agreed to basically be pro bono lawyers with the hope of getting legal fees at the end. And they put an awful lot of work into it. And we were allowed to intervene. And we pursued the case and I won’t go into all the details but-

Sam Glover: Was the core of it though, was it a fight over the citation system then, or?

Alan Sugarman: In the beginning Matthew Bender seemed to be interested in both. But I always was interested in the text part.

Sam Glover: Yeah.

Alan Sugarman: In fact, in 19, I left this out of my story, but after West v. Mead the Supreme Court came down with the Fice case which totally undermined the theories in the West v. Mead case. And then Mead and [inaudible 00: 15: 49] got Barney Frank to introduce some legislation in 1992 in Congress. H.R. 5522. And to make the citations not copyrightable.

And we went down to Washington and we filed our brief where we said, “Well that’s fine but we also wanna make the text not copyrightable.” ‘Cause West would claim if it corrected parallel citations, corrected typos, added the attorneys names, that they were entitled to copyright protection for that. And if you picked up a West case you didn’t know what they were asserting copyright for or not. It was very interesting then, that no one else in the legal publishing industry would support our position on text. Okay. So when we got into the Matthew Bender case, Matthew Bender I think initially was going to fight for both text and the citation system, and then they were acquired by Mead Data.

And Mead had so much money invested in his own conversion to text that they did not want us to take that position. In fact they even fought us at the end when we got before the Supreme Court. You know, they wanted the Supreme Court to overturn our win.

Sam Glover: I mean effectively what you have happening is two people with essentially identical reporters are saying that they each have different copyrights in their own version of it.

Alan Sugarman: Well yeah. They didn’t want people going on Lexis and downloading the text of cases and saying, “You can’t copyright it.” And they didn’t wanna depend upon a contract, you know contract with Lexis to keep you from copying it.

Sam Glover: Right.

Alan Sugarman: Okay. So we both won the citation case and then Matthew Bender sort of disappeared. And we alone won the text case. And as far as I’m concerned the text case was much more important than the citation.

Sam Glover: Yeah.

Alan Sugarman: And we won at the 2nd Circuit. Cert was denied by the U.S. Supreme Court. We came back to get legal fees, the judge said we were David and Goliath. And won the case. Awarded us fees. The 2nd Circuit said, “No. You’re not substantial.” They would say, “There was a substantial issue.” Which is really ridiculous. ‘Cause no one ever supported the Mead case. There you are. So we were sitting there in 1997, 98, the last legal fees decision was 2001. So that’s what happened in that case.

But basically our case made Google Scholar. Google Law possible.

Sam Glover: Right ’cause the outcome is now you can, obviously you can publish the text of cases and you can use the citation system right? Or is the citation system still in doubt.

Alan Sugarman: No there’s no doubt on the citation system. And initially, oddly Google did not include the citations. And I would write them, I never really talked to anyone senior there. But I would say, “Why aren’t you putting the citation in?” And now they have the citation in there. The pagination for the published opinions.

Sam Glover: So we need to take a quick break to hear from our sponsors and when we come back I wanna talk about what happened to HyperLaw after that and maybe spend a little time talking about the impact of that decision, that ordeal, that litigation today. And what maybe still needs to happen to keep the law free. So we’ll be back in a moment.

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Sam Glover: So Alan after the decision what happened to HyperLaw? It’s not on the market today as far as I know so were you able to take that and run with it or what happened?

Alan Sugarman: In 94, 5, and 6, we were litigating against the largest law firms in the country. We actually went through three law firms that West had. And in the end they had to have Arthur Miller from Harvard Law School come down and argue for them in the 2nd Circuit. I was, just doing the case was overwhelming me, and by the time 1998 came around I had run through all my money. So I had to go back into the real world and make a living.

Sam Glover: Yeah.

Alan Sugarman: So HyperLaw still exists. I comment on things from time to time. Do some litigation support. But we at least in the 2nd Circuit, we have this absolute right, there’s no way West can touch us in the 2nd Circuit. They can’t play that game.

During this whole period of time there were other fights going on involving the vendor-neutral citation, Pacer, we were very active in testifying before the ABA committees on this, and there’s the judicial conference. We work with the American Association of Law Libraries, and I want to give a real heads up to Jamie Love for the taxpayer assets project, who was extremely supportive. That’s a [inaudible 00: 22: 15] group. He got involved in 95 and he was, we work with him a lot. We were all over the country. And one of the big issues had to do with the vendor-neutral citation. Which, even today I don’t understand what’s going on. But let me explain something about the vendor-neutral citation.

Sam Glover: Yeah.

Alan Sugarman: Our position was that vendor-neutral citation had to be one that could be immediately citable. The day the opinion came out you could cite to that opinion and use that citation forever and ever. And how do you do that? You have the name of the court, the date, and the docket number. And there you are. You have a permanent cite.

The other people involved with this got all involved with this idea where the courts have to control what you can publish and not publish, and you should have a sequence number, etc., etc., etc.

Sam Glover: Well and the citation thing is, even though you can use West’s or Lexis’ citations, they still control the citation. What you’re effectively waiting for is them to put it in a book and give it a page number, which is, I’m not even sure if that’s even a real thing anymore. I’m sure they still publish books but they’re not super relevant to anyone. But you’re still waiting on them to decide what the citation is which is hard especially since nobody actually cares if it’s in a book anymore.

Alan Sugarman: Absolutely Sam, and I think first of all you’re talking just about the published opinions. There are also unpublished-

Sam Glover: Right.

Alan Sugarman: … opinions. And most people actively use unpublished opinions and there’s a lot of courts say you can’t cite a case that’s not been published in a book, but that’s evaporating day by day.

Sam Glover: Well it’s also really torturing the meaning of published when everything is being published. It’s just a technicality.

Alan Sugarman: It is. Although I always say judges did not want their bad decisions or embarrassing decisions to be published. And West controlled what was published.

Sam Glover: Right.

Alan Sugarman: West did not publish our victories in a text case. There’s a full written decision and they didn’t put it in the federal supplement. I wonder why. But let me go back to what you were saying since you’ve really practiced law. Have you ever gotten a Lexis cite to a case that was never published and then, but you only use Westlaw.

Sam Glover: Right.

Alan Sugarman: And then you go try to find it in Westlaw and you can’t find it because there’s a lot of discretion in how you name a case.

Sam Glover: Yep.

Alan Sugarman: And you spend hours trying to find it. That’s just extraordinary that, that can happen today. I believe today that all cites to all court opinions should have the docket number of the case in it. And for unpublished opinions a lot of courts are disseminating them and they’re available on all the various services. If you had the docket number and someone cites a Lexis cite and includes the docket number, you wouldn’t have to go and pay money to West or Lexis to go find the case.

Sam Glover: Right.

Alan Sugarman: I can tell you just three weeks ago I got a brief in a case and he cites three different Lexis cases from the New York lower court. And even with the name of the case and going to the court system I couldn’t find the cases. Even though they’re somewhere in their electronic system. And there’s another reason to use the docket number. And that is the docket number allows you to link the lower court opinion to the appellate opinion. All appellate opinions should list the docket number of the case below. If you go into Google Scholar now they have a problem of linking an unpublished lower court, district court opinion to an appellate court opinion. The Federal Appellate Court.

Sam Glover: Right but that should be a piece of cake.

Alan Sugarman: If they included the docket number in both. But all these groups including the American Association of Law Libraries, GPO, Recap, Google Scholar, and Legal Information Institute Citation System, none of them require the docket number in the citation even of an unpublished decision. I have been very explicit with them about this and it just doesn’t happen. Tim Stanley at Jurist goes better, he includes the docket number, and he also includes the more specific cite which is the docket entry number on the docket sheet for the federal opinions that he publishes. That is a beautiful cite. I’m just waiting for them to wake up for this. I’ve been fighting this for 10 years, people look at me like I don’t know what I’m talking about. And eventually we’ll get there.

Sam Glover: Yeah. I mean the HyperLaw decision, the litigation really paved the way for what we have today which is, you really do have a choice. In at least some surveys, services like Fast Case are neck and neck with Westlaw and LexisNexis, which is kind of amazing at this point. And you’ve got all kinds of other secondary services. Bloomberg, you know is charging hard to catch up with everyone. And so is, I think it’s Case Maker, and there’s a bunch of them out there now. And I think none of this would have existed if Bender and then you hadn’t dived into this litigation.

Alan Sugarman: Well Google Scholar is the beautiful-

Sam Glover: And Google yes of course.

Alan Sugarman: Okay. I frankly even when I was using Lexis, which I stopped using, but I would always start my research in Google Scholar.

Sam Glover: Yeah.

Alan Sugarman: It’s faster, quicker, more informative, and also reaches outside of the case network to find more information. I give them really great credit for what they’ve done and they’ve pushed the whole field far, everybody else that’s doing this kind of stuff is basically trailing behind in their footprints.

I mean at the same time that certain people were paying allegedly $600,000 to digitize the Federal Reporter, Google was doing it at the same time.

Sam Glover: Yeah.

Alan Sugarman: Of course I’m not from California so there’s almost a mafia out there. Not really sure what goes on out there. But I had always assumed that Google was paying for this. But I don’t know. I don’t know the whole thing. People claim they paid for it. And then when they were finished, they said, “We now have all federal court opinions available for nothing.” And I said to them, “That’s not true.” I said, “90% of the federal appellate court opinions are unpublished opinions. You don’t have any of those.”

Sam Glover: Yeah. So what can the average lawyer do to support the move towards neutral citations?

Alan Sugarman: Well the first thing they oughta do, when they write briefs is to start adding the docket number of cases that only have, certainly that only have Westlaw or Lexis cites, or that are unpublished. They should put that in every single cite so that judges who, by the way, today a lot of judges are pretty sophisticated in this. But, just to get people used to seeing that.

Sam Glover: I mean I feel like a small active rebellion would be for all of us to use vendor-neutral citations first and then put the Westlaw or Lexis citations in a footnote or something.

Alan Sugarman: I would not include the Lexis or Westlaw cite. In fact I don’t. I put in the docket number because if you have the docket number and the name of the court you can find the opinion in Lexis or Westlaw quickly. Because docket numbers is one of their meta-data fields. You can search them.

Sam Glover: Well and in many courts you can link directly to the court in the docket anyway. So.

Alan Sugarman: Right.

Sam Glover: Well Alan thank you for your work and for telling us about it. Thanks for being the one to stand up and do this because it has at least opened the door to a much more robust market for legal research options.

Alan Sugarman: I’m glad that it has come to fruition. And again I thank Google Scholar for what they have done, which has taken full use of what we accomplished in 1997.

Sam Glover: Well maybe in another 20 years we can get back together and see if vendor-neutral citation has finally come around.

Alan Sugarman: I hope so.

Sam Glover: I’ll see ya then.

Alan Sugarman: Anyway Sam, nice talking to you.

Sam Glover: You too.

Alan Sugarman: Bye-bye.

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