Thomson Reuters filed its brief arguing against ROSS Intelligence’s request that Judge Bibas conduct a pretrial filtration hearing to determine the (lack of) copyrightability of Westlaw’s headnotes and topics that it creates for legal decisions of the courts.
In its brief, Thomson Reuters argues that no filtration hearing has ever occurred in the Third Circuit (where the case was brought in Delaware), which treats copyrightability and originality as factual issues to be decided by the jury. Thomson argues that Judge Bibas’s prior decision rejecting summary judgment already determined that the issue of copyrightability of elements should be left for the jury. Thomson also argues that a filtration hearing has only occurred in 2 past complex computer software cases involving the abstract-filtration-comparison test (from Altai of the Second Circuit), which are inapt to this simpler case. See SAS Inst., Inc. v. World Programming Ltd., 64 F.4th 1319, 1328 (Fed. Cir. 2023); Real View, LLC v. 20-20 Technologies, 683 F. Supp. 2d 147 (D. Mass. 2010)).
My take: I would treat the issue of (1) whether to conduct a pretrial hearing on copyrightability separate from (2) any pretrial decision on copyrightability.
The first issue is well within the discretion of the trial court, as the Federal Circuit explained in SAS: “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 County., 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.”
For example, Judge Bibas could hold a pretrial hearing, but determine he cannot make a judgment as a matter of law on a putative uncopyrightable element–or defer ruling until later at trial. Conversely, he also could determine that some element is uncopyrightable as a matter of law. But simply holding the hearing would be within the trial court’s discretion. And it could be helpful in informing the judge about an issue that may recur in an JMOL motion.
Of course, any pretrial decision that an element of plaintiff’s works is not copyrightable as a matter of law would not receive a deferential standard of review on appeal. So, the soundness of any such decision depends on what element is found uncopyrightable.
I disagree with Thomson’s suggestion that trial courts can never conduct a pretrial hearing and never make a ruling on copyrightability as a matter of law, outside of complex computer software cases or the abstraction-filtration-comparison test of the Second Circuit.
For example, in music lawsuits, courts routinely decide copyrightability of musical elements as a matter of law, even at the motion to dismiss stage. See Peters v. West, 692 F.3d 629 (7th Cir. 2012) (song title, common maxim, rhyme scheme of “stronger” and “wronger,” lyrical reference to name Kate Moss, were not copyrightable, in themselves or as a selection and arrangement of elements).
Or at the summary judgment stage. See Morrill v. Stefani, 338 F. Supp. 3d 1051, 1059 (C.D. Cal. 2018) (distinctive pronunciation of words and omission of verbs were common to rap were uncopyrightable, as was rhyme pattern); see also Johannsongs-Publ’g Ltd. v. Lovland, No. CV 18-10009-AB (SSx), 2020 WL 2315805, at *7 (granting summary judgment because plaintiff’s musicologist failed to conduct a prior art analysis and filter out the unprotected elements required in extrinsic analysis).
And, of course, at the post-trial motion for judgment as a matter of law stage. See Gray v. Perry, 2020 WL 1275221, at *5-*7 (C.D. Cal. Mar. 16, 2020) (9 elements related to ostinato were uncopyrightable as a matter of law, in isolation or combination).
Music infringement cases aren’t complex computer software cases. Nor are they subject to any abstraction-filtration-comparison infringement test. Yet, a trial court would be well within its discretion in holding a pretrial hearing on copyrightability to identify any music elements of the plaintiff’s works that are uncopyrightable as a matter of law. That would apply here, too, because Judge Bibas has already said that it’s possible headnotes for judicial decisions are uncopyrightable if they “merely cop[y] a judicial opinion,” such as, presumably, copying or closely paraphrasing a line from the court’s decision.
Thomson Reuters is right that parts of Judge Bibas’s decision denying summary judgment conclude that there is genuine issue of fact as to “how closely [West’s] headnotes resemble uncopyrightable opinions.” That does suggest Judge Bibas thinks the issue, at least on the headnotes, should be left for the jury.
However, in its opening brief, ROSS appears to suggest it wants to be able to show “whether the headnotes and topics are protected at all by the Copyright Act because they are essentially, and actually are, copies of the text of uncopyrightable judicial opinions.” It would be helpful if ROSS gave an offering of proof of such examples of headnotes that it believes are uncopyrightable. Moreover, the topics chosen by Thomson is not an issue that Judge Bibas specifically addressed in his order denying summary judgment.