An Exclusive Right to Publish the California Style Manual?

I. The California Style Manual (5th ed.)

A number of states that edit and publish (or contract for) their own case reports have style manuals.  Most are aimed principally at the state’s judges together with the law clerks and reporters of decisions who assist them in preparing and editing opinions.  Unless court rules say otherwise such manuals are likely, as well, to influence the citation format of memoranda and briefs submitted to courts in the state.  Usually, however, they are not prescriptive.  The California Style Manual is unusual, if not unique, in going beyond being a mere source of influence.  It provides one of two citation schemes that  are acceptable in attorney submissions.  Rule 1.200 of the California Rules of Court requires that any lawyer filing a document in state court conform its citations to the California Style Manual or to The Bluebook.  It also requires that whichever is employed must be used consistently throughout.

The first edition of the California manual appeared in 1942, prepared by the then Reporter of Decisions, Bernard Witkin, a towering figure in the chronicling of California law.  Subsequent revisions have all been overseen by Witkin’s successors, aided by court staff and employees of the official report publisher.  The fourth edition, prepared by Edward Jessen, who retired as Reporter of Decisions in 2014 after 25 years, was published in 2000.  Copies, produced under license from the copyright holder, the California Supreme Court, are available in print from Thomson Reuters for $16.95.

They can also be downloaded in PDF from the Sixth District Appellate Program (SDAP) for free.

This June the contract for a fifth edition was signed with LexisNexis.  The transaction was not completed as an independent agreement but buried as one paragraph among many in a contract for publication of the state’s official reports for the next two to seven years.  (By statute that contract may not exceed seven years.  Cal. Gov’t Code 68904.  As the underlying contract is structured, its term is for two years, followed by two options to extend that for a total of five more.)

Embedded within that two-year contract is the following provision:

The Contractor must assist the Reporter of Decisions in creation and production of the California Style Manual, Fifth Edition. Such assistance shall consist of all editorial, typographic, layout, and graphic design necessary to the production of an independent, separate print product. The California Style Manual, Fifth Edition, must be produced in both hard copy printed and electronic format. The format chosen must be able to support supplements and updates. Copyright to the California Style Manual, Fifth Edition, will be held by the State of California but the Contractor will be granted an exclusive perpetual license to publish and sell the California Style Manual, Fifth Edition, at the price agreed upon and in accordance with the price adjustment provisions set forth in this Agreement. The Contractor has discretion to propose editorial enhancements to or format for the California Style Manual, Fifth Edition, not specified above. The Contractor must print and make available for sale a sufficient number of copies of the California Style Manual, Fifth Edition, to supply all demands for 20 years from the date of publication. Volumes supplied pursuant to this requirement must be sold at prices no greater than the current applicable price authorized under the contract for publication of bound volumes of the Official Reports in effect at that time. [Emphasis added. PWM]

Note the word “perpetual.”  It did not appear in the RFP.  That strongly suggests that this term resulted from subsequent negotiation by the successful bidder, LexisNexis.  The result is an uncomfortably long-term relationship between the California judiciary and the incumbent publisher of the state’s appellate decisions.  On its face the license exceeds the maximum duration set out in the statute authorizing the contract in which it is embedded.  Thomson Reuters, printer and seller of the current version of the California Style Manual in print (the fourth edition), appears to hold no such right.  No other state has granted its publisher comparable control over the future format of judicial opinions and attorney submissions or effectively barred itself from distributing its own style manual, internally and to the public for free.

II. Other States’ Style and Citation Guides

Michigan’s Office of the Reporter of Decisions  prepares and follows the Michigan Appellate Opinion Manual.  It also offers the manual “as an aid to practitioners in the preparation of documents for submission to the courts.”   Use by lawyers is not mandatory, but it is available to them free, online.  Its copyright notice names the Supreme Court of Michigan.  The New York Law Reporting Bureau also distributes its Official Reports Style Manual online.  Updated periodically, it is available in both HTML and PDF formats, copyright New York Unified Court System.  The Oregon Judicial Department publishes the Oregon Appellate Courts Style Manual online and doesn’t bother to assert copyright.  The Washington Style Sheet, put out and placed online by that state’s office of the reporter of decisions, is treated similarly.

Court rules in a number of states specify how their own primary legal sources are to be cited.  No exclusive publication rights in these rules are granted commercial parties.  Examples include Fla. R. App. P. 9.800,  Ind. R. App. P. 22, and S.C. R. App. Pract. R. 268.

III. What Rights in the New Edition Are Left with the State?

Under the Copyright Act, an exclusive licensee can sue for infringement.  Indeed, the licensee can sue the copyright owner/licensor for infringing upon the granted rights.  See. e.g.Kepner-Tregoe, Inc. v. Vroom, 186 F.3d 283 (2d Cir. 1999).  There seems little doubt that under the current act a “perpetual license” extends for the full duration of the underlying copyright.  See, e.g., P.C. Films Corp. v. MGM/UA Home Video Inc., 138 F.3d 45 (2d Cir. 1998).  That is not “forever” but with a “work for hire” of this sort the copyright term is 95 years from the date of publication.  17 U.S. Code § 302(c).  In this instance, the right is coupled with a limitation on sale price and the obligation to produce the work in sufficient quantity to meet demand over the course of twenty years.  All of that puts enormous stress on the exact boundaries of the license granted LexisNexis, namely, the right “to publish and sell the California Style Manual, Fifth Edition.”  Confounding the puzzle is the requirement that the work’s “format … be able to support supplements and updates” and the explicit reference to both print and electronic versions.  Combine those with the enough-copies-for-20-years provision and it seems unlikely that a sixth edition will provide release from this unusual commitment any time soon.

Just as The Bluebook‘s copyright does not give its holders the exclusive right to communicate the system of citation it describes, others will be free to produce guides, software, and teaching materials that embody the system of citation and elements of style to be contained in this forthcoming edition of the California Style Manual.  Since the license does not convey the right to make derivative works, it should not prevent the state from producing a sixth edition when it decides to.  See Kennedy v. National Juvenile Detention Ass’n, 187 F.3d 690 (7th Cir. 1999).  But from publication of the fifth edition until the appearance of a sixth, the California judiciary’s ability to do as other states do – namely, disseminate its style manual online within state government and to the public, without charge – has been surrendered.

IV. Why?

Several provisions in the underlying official reports contract gesture toward the possibility of California’s appellate courts following those of other states that have shifted from print to official digital publication.  Most important among them is the limitation of the state’s commitment to two years.

On the other hand, the state’s breaking free of a model of producing official print reports using a commercial publisher would deny the incumbent the competitive advantage of privileged access to official, final, citable, versions of California case law in digital format.  There are many reasons why it is time for California to make that move.  However, it appears that LexisNexis values its privileged access sufficiently to commit significant editorial services and to provide the state’s appellate judges with complimentary copies of the reports, all at no charge.  Provisions in the RFP that would have reduced the contract’s value to LexisNexis (such as inclusion of page numbers and delivery of final versions of opinions in machine-readable form at the required public access site) drew no meaningful commitment in its proposal.

Having an exclusive publication and sale right to a resource critical to the editorial work on California’s opinions, one that runs for the maximum period to which the new official report contract can be extended and beyond would appear to reduce the risk to the publisher of California’s breaking out of the print-era paradigm during the next seven years.

V. Under What Authority?

On December 16, 2016, the California Judicial Council released the eighth edition of its Trial Court Financial Policies and Procedures Manual.  It is distributed online, without charge, and carries no copyright notice.  Less than a year later, the council released the most recent revision of the Judicial Branch Contracting Manual.  It does contains  copyright notice, although no copyright has been registered.

The statute authorizing the “official reports” contract is very clear about its maximum duration.  This is a contract to “publish and sell the official reports, for a period of not less than two nor more than seven years.”  Cal. Gov’t Code § 68904.  It is to be let to the publisher who will do so “on the terms most advantageous to the state and to the public.”  Id.  Surely, though, that “most advantageous” language does not provide boundless authority to grant the publisher perpetual exclusive rights to publish and sell other judicial branch manuals and guides, like those noted above.  Some might even question whether it authorizes the sort of value exchange embedded in the current official reports agreement since the statute is grounded upon a constitutional provision mandating that the judiciary’s opinions “shall be available for publication by any person.”  Cal. Constitution Article VI, Section 14.  Does it authorize the granting of a perpetual exclusive license to publish the California Style Manual?  The matter would seem debatable.

 

 

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