The redacted version of ROSS Intelligence’s brief is now available. It argues that the court should conduct a pretrial filtration hearing on the copyrightability of Westlaw’s headnotes and legal topics. Headnotes are short summaries of points that Westlaw has drawn from a court decision. The legal topics are like topics in an index to a book that are used to organize cases with the same topics. For more, visit here.
ROSS cites the filtration hearing used by the Eastern District of Texas and affirmed by the Federal Circuit in SAS Institute v. World Programming Ltd (with Judge Newman dissenting).
(1) The Federal Circuit held: “We hold that where the court has received persuasive evidence that the asserted elements are copyright unprotectable, SAS, as the copyright holder, was obligated to
identify with specificity the elements of the SAS program that it asserts as copied and to establish that those elements fall within the scope of protection extended to such elements under copyright law.”
(2) The Federal Circuit then held that the district court was well within its discretion to conduct a pretrial filtration hearing: “The Copyrightability Hearing took the form of a pretrial conference, where the district court provided the parties notice and opportunity to brief, argue, and present
evidence on the legal question of copyrightability. See Celotex Corp. v. Catrett, 477 U.S. 317, 326 (1986). Such procedures are well-supported by the Federal Rules of Civil Procedure and within the district courts’ discretion to manage pre-trial matters under Fifth Circuit case law. See Fed. R. Civ. P. 16(c)(2)(L); see also Acuna v. Brown & Root Inc., 200 F.3d 335, 340 (5th Cir. 2000).8 Fifth Circuit law on this point is consistent with the FRCP, which explicitly authorizes district courts to adopt mechanisms such as the procedure implemented in this case. Fed. R. Civ. P. 16(c)(2)(L).
“Appellate courts have long held that district courts have discretion to conduct reasonable pretrial procedures and case management to narrow the issues and “simplify the mechanics.” Pac. Indem. Co. v. Broward Cnty., 465 F.2d 99, 103 (5th Cir. 1972); Rosario-Diaz v. Gonzalez, 140
F.3d 312, 315 (1st Cir. 1998). This would include where “the issue of protectability can be more efficiently addressed” before determining copying. Gates Rubber Co., 9 F.3d at 833. Since SAS failed to provide evidence on which of the challenged elements of the SAS System were copyrightable, the district court correctly found that a jury would be unable to conduct a proper infringement analysis. EDTX Action, at 1027–28; Appellee’s Br. 18 (citing Conf. J.A. 13659–60). Accordingly, we discern no abuse of discretion in the procedural mechanism it used to understand
and manage the copyrightability issue prior to trial.9″