White et al v. West Publishing Corporation et al

Filing 33

TRANSCRIPT of Proceedings re: MOTION held on 5/16/2012 before Judge Jed S. Rakoff. Court Reporter/Transcriber: William Richards, [phone]. Transcript may be viewed at the court public terminal or purchased through the Court Reporter/Transcriber before the deadline for Release of Transcript Restriction. After that date it may be obtained through PACER. Redaction Request due 6/15/2012. Redacted Transcript Deadline set for 6/25/2012. Release of Transcript Restriction set for 8/23/2012.(McGuirk, Kelly)

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C5GZWHIM
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Motion

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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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EDWARD WHITE,

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Plaintiff,

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v.
WEST PUBLISHING,

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12 CV 1340 (JSR)

Defendants.
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May 16, 2012
4:10 p.m.

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Before:
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HON. JED S. RAKOFF,
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District Judge
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APPEARANCES
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GREGORY A. BLUE
Attorney for Plaintiff
BRAGAR, WEXLER, EAGEL LLC
Attorneys for Plaintiff
BY: RAYMOND A. BRAGAR
WEIL, GOTSHAL & MANGES LLP
Attorneys for Defendant West Publishing
BY: BRUCE RICH
BENJAMIN MARKS

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MORRISON & FOERSTER LLP
Attorneys for Defendant Lexis Nexis
BY: JAMES E. HOUGH
JAMES McCABE
CRAIG B. WHITNEY

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SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

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Motion

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(Case called)

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MR. BLUE:

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Good afternoon, Greg Blue for the

plaintiffs.
MR. BRAGAR:

Good afternoon, your Honor, Raymond

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Bragar also for plaintiffs.

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THE COURT:

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MR. RICH:

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Good afternoon.
Good afternoon, your Honor, Bruce Rich from

Weil Gotshal for West Publishing.

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THE COURT:

Good afternoon.

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MR. MARKS:

Good afternoon, your Honor, Benjamin Marks

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also of Weil Gotshal also for West Publishing.

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THE COURT:

Good afternoon.

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MR. HOUGH:

Good afternoon, your Honor, James Hough

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from Morrison & Foerster for Lexis Nexis.

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THE COURT:

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MR. McCABE:

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Good afternoon.
Good afternoon, your Honor, James McCabe

also from Morrison & Foerster, also for Lexis Nexis

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THE COURT:

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MR. WHITNEY:

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Good afternoon.
Good afternoon, your Honor, Craig

Whitney, Morrison & Foerster for Lexis Nexis.

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THE COURT:

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Clearly counsel in this case are not strong believers

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Good afternoon.

in gender diversity, but that's neither here nor there.
So we're here on the motion to dismiss the sub class
of attorneys of plaintiffs and prospective plaintiffs who have
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

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Motion

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not registered their copyrights, as opposed to other class of

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those who have.

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After reviewing the papers, I am, frankly, leaning
strongly towards granting the motion.
So let's start with plaintiff's counsel, because maybe
you can convince me otherwise.
MR. BLUE:

Thank you, your Honor.

Since you've

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indicated your leaning in this, I'd be happy to take questions

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from you to start off, but --

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THE COURT:

Well, I mean the place obviously to start

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is with 17 U.S.C. Section 411(a); "No civil action for

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infringement of the copyright in any United States work shall

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be instituted until preregistration or registration of the

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copyright claim has been made in accordance with this title."

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By definition, the sub class that's at issue here today have

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not complied with that.

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MR. BLUE:

So how can they bring a civil action?

Your Honor, obviously in our papers the

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position we've taken is that Mr. Elan, who is not registered,

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as well as the class that he represents, are entitled to two

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forms of relief even without registration.

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an injunction and the declaratory judgment.

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THE COURT:

Yes.

And that would be

Now these, of course, are remedies.

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They are not, themselves, a form of action.

But even assuming

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they were, the statute is unequivocal; that compliance with

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registration or preregistration is a precondition of filing a
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

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Motion

claim.

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MR. BLUE:

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THE COURT:

Your Honor -For example, in a case that you make

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reference to, Reed Elsevier versus Muchnick, 130 S.Ct., Supreme

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Court, 1237, a 2010 decision of the Supreme Court, the Supreme

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Court held that, "A failure to meet that registration

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requirement did not deprive a district court of subject matter

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jurisdiction."

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But, of course, the motion here is not to dismiss for

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lack of jurisdiction.

It's a motion to dismiss for failure to

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state a claim.

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compliance with Section 411 and 412 was a precondition of

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filing a claim.

And as to that, Muchnick expressly stated that

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MR. BLUE:

Yes, your Honor.

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Turning to section 502, the section that deals with

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the remedies that you talked about, the injunction, I think

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it's important that the section says that a court with

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jurisdiction -- and this Court clearly has jurisdiction -- may

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issue an injunction as it may deem reasonable to prevent or

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restrain infringement of a copyright.

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We have here an ideal situation where an injunction

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would be necessary to prevent an infringement in the future.

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As the complaint has alleged, both the defendants are engaged

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in an ongoing course of business in which they copy these

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materials and make them available for sale soon after they're
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

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Motion

filed with the courts.
What Mr. Elan brings to the table here is a claim for

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people whose works aren't even in existence yet.

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getting drafted right now or around town and around the country

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and to be filed next week and next month.

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can't possibly have obtained a registration for those works

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because they're not in existence yet.

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THE COURT:

They may be

By definition, we

Well, the only case that I know of that

arguably would support that position is, which you cite, is

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Olan Mills, Inc. versus Linn Photo Company, 23 F.3d, 1345, 8th

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Circuit, 1994.

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Now, putting aside the fact that that decision is

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obviously not binding on this Court, it really stands for a

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very different kind of proposition.

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who has consistently infringed a party's registered

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copyrights --

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MR. BLUE:

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THE COURT:

Where you have a defendant

Yes, your Honor.
-- an injunction can issue because there's

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the risk of future, clearly demonstrated risk of future such

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violations against the same defendant.

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same plaintiff -- I'm sorry -- and, therefore, a narrow

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exception is carved out.

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of absurd situation which they keep infringing the plaintiff's

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registered copyrights, but every time they have a new copyright

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at work, they have to bring a new cause of action rather than

And I -- against the

Because otherwise you'd have the sort

SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

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getting an injunction.

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definition, your class has never registered their copyrights

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and, therefore, it presents a totally different equitable

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situation from that presented in a case like Olan.

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MR. BLUE:

That's not this situation, at all.

By

Well, what we do have here is a situation

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where we have Mr. White, the first named plaintiff, who has

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registered his copyright.

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THE COURT:
today.

Yes.

We're not dealing with that claim

I don't think you can just willy-nilly glom your whole

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huge class into a -- it would be a huge class of attorneys who

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never registered their briefs.

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the vast majority of attorneys from time in memorial to the

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present.

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represented by Mr. White, that have actually registered their

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copyrights.

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under the tent or one some such cliche.

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does it.

I think that is likely to be

Because you've got the much smaller class,

That's not -- that's, what is it, the camel's nose

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What else?

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MR. BLUE:

I don't think that

Well, your Honor, if I could turn for a

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moment to declaratory judgment action here.

And declaratory

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judgment, as we've described in the brief, and professor said,

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getting a declaratory judgment in this situation is not an

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action for infringement at all.

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declare the parties' rights.

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end run around and get damages for past infringements.

What you're looking to do is

Now this isn't trying to make an

SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

What

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Motion

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we're looking for is a declaratory judgment saying that what

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the defendants are doing is unlawful.

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well knows, all of these works are protected by the copyright

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law from the moment of their creation, and getting a

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declaratory judgment isn't an action for infringement.

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THE COURT:

Of course as your Honor

This, of course, the logic of what you're

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saying would mean that any time you had a requirement that

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before you can bring a lawsuit in a case where there was an

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actual potential controversy, you had to comply with some

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statutory requirement.

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get around that by asking for a declaratory judgment.

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makes no sense at all.

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available when you have a valid cause of action and you can

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bring, but there are reasons why it makes more sense to deal

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with the controversy before it becomes fully and totally ripe.

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Your logic would say, you could always
That

Declaratory judgment is a remedy that's

In addition, the declaratory judgment is a highly

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discretionary remedy that the court need not take cognizance

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of.

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for a declaratory judgment without compliance with the

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requirements for filing a cause of action, I also think that

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assuming arguendo you did, I would exercise my discretion to

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deny it.

So while I don't think you have a lawful basis for asking

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Anything else?

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MR. BLUE:

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Your Honor, as we asked for at the end of

your papers, it's our belief, and I understand your Honor's
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

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Motion

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comments about whether or not White could bring in the rest of

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the class here, that White can go forward with his claims and

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White can go forward with his claims as a registered member.

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And then what we would want to do is address the scope of the

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relief Mr. White could get, including an injunction and scope

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of that relief, later on.

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Court's permission to amend the complaint to make White a

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representative of the class.

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THE COURT:

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For that reason we would ask for the

This would just undercut everything I've

just said, so that request is denied.

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Well, you are a brave soul --

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MR. BLUE:

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THE COURT:

Thank you, your Honor.
-- to have made such a valiant stab at

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what I think is a creative, but perhaps too creative attempt to

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glom the unregistered folks onto the much more colorable claims

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of the registered folks.

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So, I will grant the motion and dismiss the claim so

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far as the unregistered attorneys are concerned.

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Anything else we need to take up today?

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MR. BLUE:

I don't believe so, your Honor.

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MR. RICH:

No, your Honor 33.

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THE COURT:

Thanks very much.

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(Adjourned)

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SOUTHERN DISTRICT REPORTERS, P.C.
[phone]