White et al v. West Publishing Corporation et al

Filing 1

COMPLAINT against Reed Elsevier Inc., West Publishing Corporation. (Filing Fee $ 350.00, Receipt Number 1030502)Document filed by Edward L. White, Edward L. White, P.C., Kenneth Elan.(mro) (Additional attachment(s) added on 2/23/2012: # 1 Ex. A Part 1, # 2 Ex. A Part 2, # 3 Ex. A Part 3, # 4 Ex. A Part 4) (ama).

Gregory A. Blue
GREGORY A. BLUE, P.C.
405 Lexington Avenue, Suite 2600
New York, New York 10174
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Raymond A. Bragar
BRAGAR WEXLER EAGEL & SQUIRE, P.C.
885 Third Ave., Suite 3040
New York, New York 10022
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Attorneys for Plaintiffs
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
EDWARD L. WHITE; EDWARD L. WHITE, P.C.;
and KENNETH ELAN, on behalf of themselves and
all others similarly situated,
Plaintiffs,

ECF CASE
12-CV-1340 (JSR)
CLASS ACTION
COMPLAINT

- against JURY TRIAL DEMANDED
WEST PUBLISHING CORPORATION d/b/a “West”;
and REED ELSEVIER INC.,
d/b/a LexisNexis,
Defendants.

EDWARD L. WHITE and EDWARD L. WHITE, P.C. (collectively, “White”),
and KENNETH ELAN (“Elan,” collectively with White “Plaintiffs”) by their
undersigned attorneys, as and for their Original Class Action Complaint against WEST
PUBLISHING COORPORATION d/b/a/ “West” (“West”); and REED ELSEVIER INC.,

d/b/a/ LexisNexis (“Lexis” or “LexisNexis”), (collectively, “Defendants”), respectfully
allege as follows:
Nature of the Case
1.

This is a copyright infringement action against West and LexisNexis based

upon their unabashed wholesale copying of thousands of copyright-protected works
created by, and owned by, the attorneys and law firms who authored them.
2.

The Defendants are the largest electronic legal research providers in the

United States. West and LexisNexis have engaged in wholesale unlawful copying of
attorneys’ copyrighted work, bundled those works into searchable databases, and sold
access to those works in the form of digitized text and images for huge profits. In doing
so, West and LexisNexis are infringing the rights of the very clients they purport to serve.
West and LexisNexis well know that the copyright laws of the United States require them
to obtain authorization from the attorneys who created the works they infringe. Despite
this knowledge, West and LexisNexis have for years and continue to systematically sell
the attorneys’ work.
3.

Plaintiffs, on behalf of themselves and the classes they seek to represent

are entitled to damages, disgorgement of profits, a declaratory judgment, and an
injunction to prevent further infringement.
Parties
4.

Edward L. White is an attorney licensed to practice law in the State of

Oklahoma, and is admitted to practice before the United States Patent & Trademark
Office.

Mr. White practices law in the law firm Edward L. White, P.C., an Oklahoma

professional corporation, with an office located in Oklahoma City, Oklahoma. Mr. White

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and his firm authored, and have obtained copyright registration for, each of the works
identified in Exhibit A hereto. At least these following works also appears in one or
more of the Defendants’ electronic databases:
Title...........................Plaintiffs’ Combined Motion For Summary Judgment For
Plaintiffs, Beer And Ramsey, And Brief In Support.
Registration
Number/Date ............. TX0007259439 / 2010-05-20
Copyright Claimant ... Edward L. White, P.C.
Date of Creation ........2009
Date of Publication.... 2009-05-20
Authorship on
Application................ Edward L. White, P.C.,
Lexis Citation ............2009 U.S. Dist. Ct. Motions LEXIS 79681
Westlaw Citation .......2009 WL 1947652
===============================================================
Title........................... Plaintiffs’ Motion In Limine.
Registration
Number/Date ............. TX0007417300 / 2010-05-21
Copyright Claimant ... Edward L. White, P.C.
Date of Creation ........2010
Date of Publication.... 2010-03-15
Authorship on
Application................ Edward L. White, P.C.,
Lexis Citation ............2010 U.S. Dist. Ct. Motions LEXIS 5166
Westlaw Citation .......2010 WL 1723677

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5.

Kenneth Elan is an attorney licensed to practice law in the State of New

York, and maintains an office in the City, County, and State of New York. Mr. Elan has
authored numerous works that appear in the Defendants’ electronic databases. Among
these works are:
a. Plaintiff’s Memorandum In Opposition To Defendants’ Motion To
Dismiss For Failure To State A Claim, Totilo v. Gross, February
26, 2008, 2008 U.S. Dist. Ct. Motions LEXIS 470, 2008 WL
2598600; and
b. Complaint, Totilo v. Gross, 2008 U.S. Dist. Ct. Pleadings LEXIS
14958; 2008 WL 1802547.
Mr. Elan has not obtained copyright registration for these works.
6.

Upon information and belief, Reed Elsevier has a principal executive

office in the United States located in Newton, Massachusetts.

Reed Elsevier is

authorized to do business in the State of New York, and has an authorized agent for
service of process within the state c/o CT Corporation System 111 Eighth Avenue, New
York, New York, 10011.
7.

Upon information and belief, West is a wholly-owned subsidiary of

Thompson Reuters Corporation, and is a Minnesota corporation with a principal place of
business located at 610 Opperman Drive, Eagan, Minnesota.
Jurisdiction
8.

This copyright infringement action arises under 17 U.S.C. § 101 et seq.

9.

This Court has jurisdiction over this action under 28 U.S.C. § 1331

(federal question), and 28 U.S.C. § 1338 (acts of Congress related to copyright).

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10.

Venue is proper in this district pursuant to 28 U.S.C. §§ 1391(b) and

1400(a) because one of the named plaintiffs resides in this district and because the
Defendants conduct business in this district.
Class Allegations
11.

The class is initially defined as all attorneys and law firms (including, but

not limited to, partnerships, limited liability companies, limited liability partnerships,
professional corporations, and other similar entities) through which attorneys are
authorized to practice law in the United States, and its states and territories) that authored
works (including, but not limited to, legal briefs, motions, memoranda and other legal
documents) that are contained in the Defendants’ searchable databases (the “Works”).
12.

There are two sublcasses:
a. Subclass R (ie. REGISTERED) is defined to include all class
members that obtained copyright registration in their Works.
White is the proposed class representative for Subclass Class R.
b. Subclass NR (ie. NOT REGISTERED) is defined to include all
class members that have not obtained copyright registration for
works contained in the Defendants’ electronic databases. Elan is
the proposed class representative for Subclass Class NR.

13.

Excluded from the class are: (a) the Defendants and any entity in which

the Defendants have a controlling interest; (b) employees, officers, directors, and
attorneys for the Defendants or any entity in which the Defendants have a controlling
interest; and (c) any person who, or entity that, created Works solely in his, her, or its
capacity as an officer or employee of any government, Federal, State or Local, or agency
thereof as part of that person’s official duties.
14.

This action has been brought and may properly be maintained as a Class

Action pursuant to Rule 23 of the Federal Rules of Civil Procedure.

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15.

Numerosity. The persons and/or entities in the Class, and each subclass,

are so numerous that their joinder is impractical, and the disposition of their claims in a
class action rather than in individual actions will benefit the parties and the Court. The
exact number of members of the Class and the Subclasses is not known to plaintiffs, but
Plaintiffs reasonably estimate that there are at least thousands – and, more likely, tens of
thousands – of class members.
16.

Existence and predominance of common questions of law and fact. There

are numerous questions of law and fact that are common to all members of the class and
each subclass, including but not limited to:
a. whether the Defendants created digital copies – including digitized
text versions and images – of the class members’ copyrightprotected works;
b. whether the Defendants’ creation of such digital copies constitutes
copyright infringement;
c. whether the Defendants reproduced for their own commercial use
copies of the class members’ copyright-protected Works by
including those Works in their databases;
d. whether the Defendants’ inclusion of those Works in their
databases, and making those databases available for profit,
constitutes copyright infringement;
e. whether the Defendants’ electronic display of the Works to its
subscribers, and transmission of the works to its subscribers via
electronic download, electronic mail, and otherwise, constitutes
copyright infringement;
f. whether Defendants acted willfully in committing the alleged acts
of copyright infringement;
g. whether Plaintiffs and the class have sustained damages and, if so,
the proper measure of damages; and
h. whether injunctive relief is appropriate.

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These questions of law and fact, among others, predominate over questions that affect
only individual class members.
17.

Typicality. The claims of the named Plaintiffs are typical of those of the

Class and the Subclasses. Named plaintiffs own copyrights in Works that have been
copied by the Defendants without authorization. The claims of the named plaintiffs and
all members of the Class depend on a showing of the acts of the Defendants as alleged in
this Complaint.
18.

Adequacy of representation. Plaintiffs are adequate representatives of the

Class and will fairly and adequately protect the interests of the Class. Plaintiffs are
attorneys and a law firm who are exceptionally knowledgeable in the law, litigation, and
intellectual property, and therefore highly capable of representing the interests of the
Class and Subclasses. Plaintiffs’ interests do not in any way conflict with the interests of
the members of the Class that they seek to represent. Plaintiffs are committed to the
vigorous prosecution of this action and have retained competent counsel experienced in
complex class action litigation and experienced in copyright actions to represent them.
19.

Injunctive relief.

The Defendants have infringed the class members’

copyrights in a consistent manner that generally applies to the entire class.

Final

injunctive relief or corresponding declaratory relief is appropriate respecting the class as
a whole. Fed. R. Civ. Pro. 23(b)(2).
20.

Superiority. A class action is a superior method for bringing the claims of

the class members. The damages suffered by many individual class members may be
significant, but too small to justify prosecution of an individual action. Moreover, the

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extent of the alleged copying would make individual suits by members of the class
extremely burdensome and costly.
General Allegations
21.

The Defendants provide online digital databases of legal-related content to

attorneys, law firms, and other professionals. The databases include, among other things,
case law, statutes, treatises, news articles, and public records.
22.

In addition, the Defendants each include, as stand-alone databases or as

part of other databases, legal memoranda, briefs, motions, and other materials authored
by attorneys and law firms and which have been filed with courts of record.
23.

In order to include the Works (as defined above) in their databases, the

Defendants copy such works and digitize them in order to make them text searchable. In
at least some instances, the Defendants also include images of the Works available for
viewing and/or download.
24.

The Defendants make the content of the Works available to their

subscribers for a fee. Depending upon the nature of the Defendants’ contracts with
individual subscribers or users, the Defendants may include access to the works either as
part of package subscription, or at an additional per-document charge.
25.

For example, the LexisNexis website has stated that the “All Federal and

State Briefs and Motions, Combined [database] has selected briefs and motions from
2000 to the present.”1
26.

Westlaw’s databases have “selected briefs from the U.S. Supreme Court,

Courts of Appeals, Court of Appeals for the Armed Forces, U.S. Tax Court, 51 state
1

http://support.lexisnexis.com/lawschool/record.asp?ArticleID=lexiscom_finding_briefs (accessed on
February 15, 2012).

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courts and the District of Columbia. Selected Petitions for Writ of Certiorari are also
included.” Westlaw’s website makes clear that these are not summaries or transformative
uses. Instead, “The Pleadings, Motions and Memoranda collection includes actual filings
from state trial courts, U.S. district courts, and federal bankruptcy courts from across the
United States.”2
27.

The Defendants charge substantial fees for access to these databases of

content that they created from the wholesale copying of the Works. For example, access
to West’s “All State Briefs” database has been priced at $389.00 per month for a solo
attorney, as is its “All Federal Briefs” database. Access to the All State and Federal
Briefs product has been priced for solo practitioners at $622.00 per month. Lexis’s
Briefs, Pleadings, and Motions product costs a single attorney $960.00 for a twelve
month subscription.
28.

The Defendants have neither sought, nor obtained, ownership of the

copyright to the Works, or a license to copy, sell, or otherwise profit from the Works.
29.

The Defendants continue to copy, digitize, and sell the class members’

Works without their authorization.
30.

The Defendants’ infringement of the class members’ works have caused,

and will continue to cause, damages and irreparable injury to plaintiffs and the class.
31.

The Defendants, as the publishers and authors of numerous and substantial

original works of legal analysis – in which they claim and vigorously defend their own
copyright interests – knew or should have known that their actions constitute
copyright infringement.
2

http://store.westlaw.com/westlaw/litigator/pleadings-motions-mem/default.aspx (accessed on December
16, 2011).

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32.

The named Plaintiffs and members of the class have suffered damages,

and will continue to suffer damages, as well as irreparable harm, from the Defendants’
wholesale copying and sale of their Works.
Count One:
Copyright Infringement
33.

Plaintiffs repeat, reiterate, and reallege each of the allegations in the

foregoing paragraphs as if set forth in full herein.
34.

Plaintiffs and members of the class are the owners of certain Works that

the Defendants have copied, digitized, transformed, and packaged into databases that are
sold for profit.
35.

Plaintiffs and members of the class have the exclusive right to reproduce,

prepare derivative works, and distribute copies of the Works.
36.

In derogation of the Plaintiffs’ and the class members’ rights in the Works,

the Defendants have made copies of the Works, prepared derivative works, and
distributed copies of the Works.
37.

The Defendants’ conduct is in violation of the copyrights held by the

named Plaintiffs and other members of the class.
38.

The Defendants’ infringements of the copyrights was willful.

39.

As a result of the Defendants’ infringements, the Plaintiffs and members

of the class have suffered damages, and will be irreparably harmed in the absence of
an injunction.

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Count Two:
Request for Injunctive Relief
40.

Plaintiffs repeat, reiterate, and reallege each of the allegations in the

foregoing paragraphs as if set forth in full herein.
41.

Upon information and belief, the Defendants are adding Works to their

databases on an ongoing basis, and intend to do so for the indefinite future.
42.

Each addition of Works to the Defendants’ databases constitutes

additional infringement.
43.

Unless enjoined from doing so, the Defendants’ continued commercial use

of the Works will cause named Plaintiffs and members of the class irreparable harm by
depriving them of both the right to control the reproduction and distribution of their
copyrighted Works and to receive revenue from those works.
44.

The Defendants’ wholesale copying and resale of the Works do not fall

within any of the statutory exceptions to copyright infringement and are in violation of
the class’ copyrights.
45.

The balance of hardships tips in favor of the named Plaintiffs and the class

they seek to represent because the Defendants have substantial earnings from their noninfringing products and, upon information and belief, the Works constitute a relatively
small portion of the Defendants’ total electronic offerings. The Defendants’ earnings and
ability to continue in business will not be severely damaged by an injunction prohibiting
them from continuing to unlawfully copy, distribute, and resell the Works.
46.

Plaintiffs and the class they seek to represent therefore are entitled to an

injunction barring the Defendants from continued infringement of the copyrights of

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named plaintiffs and the class, and other equitable relief as more fully set forth in the
Prayer for Relief.
Count Three:
Request for Declaratory Relief
47.

Plaintiffs repeat, reiterate, and reallege each of the allegations in the

foregoing paragraphs as if set forth in full herein.
48.

By reason of the facts set forth above, an actual controversy exists

between the named plaintiffs and members of the class they seek to represent, on the one
hand, and the Defendants on the other.
49.

Plaintiffs are entitled to a judgment declaring that the Defendants’ actions

are unlawful and, specifically, that the Defendants infringed and continue to infringe the
named Plaintiffs’ and the Class’s copyrights in violation of the Copyright Act.
Prayer for Relief
WHEREFORE, plaintiffs respectfully request that this Court:
(i)

certify the Class and the Subclasses;

(ii)

enter judgment against the Defendants:
a. with respect to Subclass R, awarding actual damages, statutory damages,
and disgorgement of the Defendants’ profits;
b. with respect to Subclass NR, awarding actual damages;
c. permanently enjoining the Defendants from infringement of the copyrights
of named plaintiffs and the Class, and/or grant other equitable relief to
redress any continuing violations of the Act;
d. declaring that the Defendants’ copying and distribution of the Class
members’ Works violates the Copyright Act;
e. awarding costs and attorneys’ fees; and

(iii)

grant such other and further relief as the Court finds just and proper.

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Jury Demand
Plaintiffs demand a jury trial on all issues.
Dated: New York, New York
February 22, 2012
GREGORY A. BLUE, P.C.
By:

/s/ Gregory A. Blue
Gregory A. Blue
The Chrysler Building
405 Lexington Avenue, Suite 2600
New York, NY 10174
Telephone: [phone]
Raymond A. Bragar
BRAGAR WEXLER EAGEL
& SQUIRE, P.C.
885 Third Ave., Suite 3040
New York, New York 10022
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiffs

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EXHIBIT A
COPYRIGHT REGISTRATIONS FOR
LEGAL PLEADINGS AND BRIEFS
CREATED BY WHITE