The shakeout begins as vendors test the competitive waters of the Internet.
By Erik J. Heels
First published 2/1/1996; Student Lawyer magazine, “Online” column; publisher: American Bar Association
Someday we’ll look back at these the early days of the Internet and say, “When was that?” The technologies that are bringing the Internet to consumers are changing so rapidly that someday soon, we may not remember just how difficult it originally was to get on and to navigate the Internet. Or just what legal questions we wrested with.
Even though the Internet has been in existence in ore form or another since 1969, it didn’t begin to really catch on until about 1992 when technological advances and a Vice Presidential candidate’s awareness of the Internet combined to fuel public interest in — and legal questions about — the Internet. And even though I’ve only been on the Internet since 1984, I am considered a net.veteran by most measures. And so, for no particular reason, I’m feeling a bit nostalgic about the Internet. Maybe it’s because my son (who was born while I was in law school and who now regularly plays with my computer) will never know a world without the Internet. I am hopeful that we can look back and see how far we’ve come, both with regard to technology and to legal issues. But I am also concerned that we may repeat past mistakes.
Citation Debate Revisited.
For example, one year ago debate was raging about so-called public domain legal citation systems. See 01/95 Online (http://freenet.vcu.edu/science/lawtech/online/column5.html). One year later, all parties involved in the debate seem to be doing the right things to resolve their differences. The basic problem, according to advocacy groups (such as the Taxpayer Assets Project, http://www.tap.org), small, and not-so-small legal publishers, was that West Publishing (http://www.westpub.com) had a “monopoly” on legal citation systems by claiming copyright in its page-specific citations. And, the argument went, since every state uses books from West’s National Reporter series (such as S.Ct., F.Supp., A.2d, and P.2d), nobody could compete with West.
West replied by saying that its claim to copyright was supported by legal precedent (such as West Publishing Co. v. Mead Data Central, 799 F.2d 1219 (8th Cir. 1986)), that the existence of hundreds of legal publishers flew in the face of any claim that West was being monopolistic, that states were free to adopt multiple standards for legal citation (as long as West’s standard was not systematically excluded), and that other legal publishers were free to license West’s citation system (as Mead Data Central did as a result of West v. Mead).
I enjoyed watching this debate. Make no mistake about it. I believe that West was completely correct on the applicable law. But they managed to turn a completely winnable debate into a public relations nightmare. West allowed the issued to be framed by its competitors, and when given multiple opportunities to redeem itself in the court of public opinion (see, for example, interview of Vance Opperman in 11/94 issue of The American Lawyer), West instead took a damn-the-public-opinion-full-speed-ahead approach.
The issue should have been framed as a compilation copyright issue, not as ownership of a citation system (whatever that means). “A ‘compilation’ is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.” 17 USC 101. The owner of a copyright has the exclusive right (among other things) to reproduce, prepare derivative works based upon, and distributed copies of the copyrighted work. 17 USC 106.
If a small legal publisher, say Juris, wants to include on its CD a ten-page case from one of West’s books (including the page numbers from the particular book), then it is the functional equivalent of taking West’s book off of the shelf and photocopying the ten pages of the book. The book is West’s compilation. Part of the book is part of the compilation. The compilation is rightly copyrightable and copyrighted. The copier should pay for the copy. Saying that West’s page numbers are the “only” original material in ten-page case is like saying that the “only” original material in Billboard Magazine’s top ten list are the numbers one through ten. One year ago, I argued that West should be aggressively selling low-cost licenses to its compilations rather than waiting for its competitors to buy them. The acceptance of Dolby noise-reduction circuitry as an industry standard, for example, was due to Mr. Dolby making inexpensive licenses available.
One year later, West appears to have learned from its mistakes. West recently licensed some of its compilations to Juris for Juris’s Black Lung Reporter. Chuck Kitzen, Juris’s President, reportedly stated that he was surprised at how affordable the West license was. And various states are considering alternative citation systems based on paragraph numbers. Whether such systems will confuse or simplify issues has yet to be determined.
West may have bigger problems to worry about in 1996. With sales flat and competition growing stronger, rumors about the impending sale of West (a $750 million company) have been circulating. But who would want to buy West? Who could buy West? If Lawyers Cooperative Publishing (a Thomson Legal Publishing Company) were to purchase West, then LCP would have a the vast majority of the primary law market. If Lexis/Nexis (a Reed-Elsevier company) were to purchase West, then Lexis/Nexis would have the vast majority of the online legal market (with its Lexis/Nexis product and West’s Westlaw). Both of those purchases raise possible monopoly concerns. What if West gets split up, with LCP getting Westlaw and Lexis/Nexis getting the primary law? Now that would be interesting. Interesting, but not likely. Mead was smart to sell Lexis/Nexis when it did. Lexis/Nexis and Westlaw have peaked in popularity and will continue to feel the pressure from smaller, smarter, faster, better online publishers (including Internet-based publishers). And the paper-based legal publishing market is shrinking. The quickest way to go out of business (like the last manufacturer of the buggy whip) is to have an increasing share of a decreasing market.
Who Owns Domain Names?
Another legal question that was asked in 1995 is destined to be asked again in 1996. Namely, who owns Internet domain names? Internet domain names, like counsel.com, are used to identify a particular organization’s networks and services. For example, my e-mail address is email@example.com. The domain name is simply a nickname for underlying numbers that define where “counsel.com” is on the Internet.
Last year, time and time again, people asked whether somebody other than the apparent “owner” of a domain name could register a particular domain name. I recently heard a former InterNIC employee indicate that this issue was still open because “the courts have not spoken on the issue.” Well, sometimes courts don’t speak on issues because they are easy. Or because they have already been decided by statute.
For example, could the Princeton Review register kaplan.com, could a former disk jockey register mtv.com, and could a Wired columnist register mcdonalds.com? That is a very uninteresting question. The answer is, of course, yes. The Internet’s domain name registration system (run by the InterNIC, http://www.internic.net) is rightly based on a first-come first-served basis. It also seems fairly clear that (assuming that Kaplan, MTV, and McDonald’s are federally registered marks) if anyone other than MTV uses mtv.com in commerce (by now it should be a no-brainer that “in commerce” includes “on the Internet”) than there is a likelihood of confusion as to the use. The owner of the mark has a cause of action under the Lanham Trademark Act, 15 USC 1114.
An interesting legal question, on the other hand, is whether mere registration of a domain name constitutes “use” sufficient to give rise to a cause of action under 15 USC 1114. And, if so, whether the registrant can be compelled by a court of equity to relinquish his/her registration. I expect that uninteresting and interesting legal questions about domain names will continue to be asked in 1996.
What, you’re not on the Internet?
One year ago, there were only a few law firms and government organization on the Internet. Today, it the rule rather than the exception that an organization has some sort of Internet presence. The rules have changed. The bar has been raised. And, in fact, there is even and RFC (a Request For Comments, which is one of the Internet documents that defines its standards) that defines exactly what it means “to be on the Internet” because of this changing definition (http://ds.internic.net/rfc/rfc1775.txt).
Of the top 100 law firms in the country, 60% have their own registered domains. Of the top 250 law firms, 50% have their own registered domains. Only about 10% of those 250 have their own World-Wide Web home pages, but still it’s a very positive direction that we’re moving in as compared to one year ago.
What all of this means for the end user is that you have to think more carefully about how (not whether) to get on the Web and about what to do when you get there. For example, do you want to have your own registered domain, and host your own World-Wide Web server from that domain? Or do you want to rent space on somebody else’s hard drive, in somebody else’s domain (a service that is being offered by many vendors)?
The good news is that there are many choices, from Internet Service Providers (such as PSI or UUNet), to Online Service Providers (such as America Online or Compuserve), to specialty online services (such as Lexis Counsel Connect or Law Students Online). I encourage all of you, as consumers, to demand more of the companies that are publishing information online, and, as taxpayers, to demand more of your government, to make the government publish more information online. You are the driving force behind the Internet.