White et al v. West Publishing Corporation et al

Filing 36

ANSWER to 1 Complaint,. Document filed by Reed Elsevier Inc..(Hough, James)

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,
v.

ECF CASE

Civil Action No. 12-CV-1340 (JSR)
ANSWER

WEST PUBLISHING CORPORATION
d/b/a “West,” and REED ELSEVIER INC.
d/b/a LexisNexis,
Defendants.

Defendant LexisNexis, a div. of Reed Elsevier Inc. (“LexisNexis”), by its
attorneys Morrison & Foerster LLP, answers the complaint of Plaintiffs Edward L. White
and Edward L. White, P.C. (collectively, “White” or “Plaintiffs”),1 dated February 22,
2012, in the above-captioned action (the “Complaint”) as follows:
1.

Denies the allegations in Paragraph 1 of the Complaint that pertain to

LexisNexis and denies knowledge or information sufficient to form a belief as to the truth
of the allegations in Paragraph 1 of the Complaint that pertain to Defendant West
Publishing Corporation d/b/a “West” (“West”), except admits that Plaintiffs have filed an
action against LexisNexis and West asserting a cause of action for copyright
infringement.
2.

Denies the allegations in Paragraph 2 of the Complaint that pertain to

LexisNexis and denies knowledge or information sufficient to form a belief as to the truth

1

On May 16, 2012, the Court granted LexisNexis’s motion to dismiss “the claims of Kenneth Elan and the
purported subclass of plaintiffs who have not registered any copyrights.” (Dkt. No. 31.) Accordingly,
LexisNexis will answer the allegations of the Complaint only as they relate to the remaining Plaintiffs.

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of the allegations in Paragraph 2 of the Complaint that pertain to West, except admits that
LexisNexis offers electronic, searchable content that can be used for legal research.
3.

Avers that the allegations in Paragraph 3 of the Complaint are legal

conclusions to which no response is required, but otherwise denies the allegations in
Paragraph 3 of the Complaint.
4.

Denies knowledge or information sufficient to form a belief as to the truth

of the allegations in Paragraph 4 of the Complaint, except admits that the two documents
identified in Paragraph 4 of the Complaint have appeared on LexisNexis’s service under
the citations 2009 U.S. Dist. Ct. Motions LEXIS 79681 and 2010 U.S. Dist. Ct. Motions
LEXIS 5166, respectively.
5.

No response to allegations made by Plaintiff Elan is required because, on

May 16, 2012, the Court granted LexisNexis’s motion to dismiss the claims of Kenneth
Elan and the purported subclass of plaintiffs who have not registered any copyrights.
6.

Admits the allegations of Paragraph 6 of the Complaint.

7.

Denies knowledge or information sufficient to form a belief as to the truth

of the allegations in Paragraph 7 of the Complaint.
8.

Avers that the allegations in Paragraph 8 of the Complaint are legal

conclusions to which no response is required.
9.

Avers that the allegations in Paragraph 9 of the Complaint are legal

conclusions to which no response is required.
10.

Avers that the allegations in Paragraph 10 of the Complaint are legal

conclusions to which no response is required.

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11.

Avers that the allegations in Paragraph 11 of the Complaint are legal

conclusions to which no response is required, but otherwise denies that the claims
asserted by Plaintiff White and the putative class White seeks to represent meet the
requirements for proceeding as a class action under Rule 23 of the Federal Rules of Civil
Procedure. No response to allegations made by Plaintiff Elan and the proposed Subclass
NR is required because, on May 16, 2012, the Court granted LexisNexis’s motion to
dismiss the claims of Kenneth Elan and the purported subclass of plaintiffs who have not
registered any copyrights.
12.

Avers that the allegations in Paragraph 12 of the Complaint are legal

conclusions to which no response is required, but otherwise denies that the claims
asserted by Plaintiff White and the putative class White seeks to represent meet the
requirements for proceeding as a class action under Rule 23 of the Federal Rules of Civil
Procedure. No response to allegations made by Plaintiff Elan and the proposed Subclass
NR is required because, on May 16, 2012, the Court granted LexisNexis’s motion to
dismiss the claims of Kenneth Elan and the purported subclass of plaintiffs who have not
registered any copyrights.
13.

Avers that the allegations in Paragraph 13 of the Complaint are legal

conclusions to which no response is required, but otherwise denies that the claims
asserted by Plaintiff White and the putative class White seeks to represent meet the
requirements for proceeding as a class action under Rule 23 of the Federal Rules of Civil
Procedure. No response to allegations made by Plaintiff Elan and the proposed Subclass
NR is required because, on May 16, 2012, the Court granted LexisNexis’s motion to

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dismiss the claims of Kenneth Elan and the purported subclass of plaintiffs who have not
registered any copyrights.
14.

Avers that the allegations in Paragraph 14 of the Complaint are legal

conclusions to which no response is required, but otherwise denies that the claims
asserted by Plaintiff White and the putative class White seeks to represent meet the
requirements for proceeding as a class action under Rule 23 of the Federal Rules of Civil
Procedure. No response to allegations made by Plaintiff Elan and the proposed Subclass
NR is required because, on May 16, 2012, the Court granted LexisNexis’s motion to
dismiss the claims of Kenneth Elan and the purported subclass of plaintiffs who have not
registered any copyrights.
15.

Avers that the allegations in Paragraph 15 of the Complaint are legal

conclusions to which no response is required, but otherwise denies that the claims
asserted by Plaintiff White and the putative class White seeks to represent meet the
requirements for proceeding as a class action under Rule 23 of the Federal Rules of Civil
Procedure. No response to allegations made by Plaintiff Elan and the proposed Subclass
NR is required because, on May 16, 2012, the Court granted LexisNexis’s motion to
dismiss the claims of Kenneth Elan and the purported subclass of plaintiffs who have not
registered any copyrights.
16.

Avers that the allegations in Paragraph 16 of the Complaint are legal

conclusions to which no response is required, but otherwise denies that the claims
asserted by Plaintiff White and the putative class White seeks to represent meet the
requirements for proceeding as a class action under Rule 23 of the Federal Rules of Civil
Procedure. No response to allegations made by Plaintiff Elan and the proposed Subclass

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NR is required because, on May 16, 2012, the Court granted LexisNexis’s motion to
dismiss the claims of Kenneth Elan and the purported subclass of plaintiffs who have not
registered any copyrights.
17.

Avers that the allegations in Paragraph 17 of the Complaint are legal

conclusions to which no response is required, but otherwise denies that the claims
asserted by Plaintiff White and the putative class White seeks to represent meet the
requirements for proceeding as a class action under Rule 23 of the Federal Rules of Civil
Procedure. No response to allegations made by Plaintiff Elan and the proposed Subclass
NR is required because, on May 16, 2012, the Court granted LexisNexis’s motion to
dismiss the claims of Kenneth Elan and the purported subclass of plaintiffs who have not
registered any copyrights.
18.

Avers that the allegations in Paragraph 18 of the Complaint are legal

conclusions to which no response is required, but otherwise denies that the claims
asserted by Plaintiff White and the putative class White seeks to represent meet the
requirements for proceeding as a class action under Rule 23 of the Federal Rules of Civil
Procedure. No response to allegations made by Plaintiff Elan and the proposed Subclass
NR is required because, on May 16, 2012, the Court granted LexisNexis’s motion to
dismiss the claims of Kenneth Elan and the purported subclass of plaintiffs who have not
registered any copyrights.
19.

Avers that the allegations in Paragraph 19 of the Complaint are legal

conclusions to which no response is required, but otherwise denies that the claims
asserted by Plaintiff White and the putative class White seeks to represent meet the
requirements for proceeding as a class action under Rule 23 of the Federal Rules of Civil

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Procedure. No response to allegations made by Plaintiff Elan and the proposed Subclass
NR is required because, on May 16, 2012, the Court granted LexisNexis’s motion to
dismiss the claims of Kenneth Elan and the purported subclass of plaintiffs who have not
registered any copyrights.
20.

Avers that the allegations in Paragraph 20 of the Complaint are legal

conclusions to which no response is required, but otherwise denies that the claims
asserted by Plaintiff White and the putative class White seeks to represent meet the
requirements for proceeding as a class action under Rule 23 of the Federal Rules of Civil
Procedure. No response to allegations made by Plaintiff Elan and the proposed Subclass
NR is required because, on May 16, 2012, the Court granted LexisNexis’s motion to
dismiss the claims of Kenneth Elan and the purported subclass of plaintiffs who have not
registered any copyrights.
21.

Admits the allegations in Paragraph 21 of the Complaint that pertain to

LexisNexis, except denies knowledge or information sufficient to form a belief as to the
truth of the allegations in Paragraph 21 of the Complaint that pertain to West.
22.

Denies the allegations in Paragraph 22 of the Complaint, and denies

knowledge or information sufficient to form a belief as to the truth of the allegations in
Paragraph 22 of the Complaint that pertain to West, except admits that LexisNexis
includes legal memoranda, briefs, motions, and other materials authored by attorneys that
have been filed with courts of record as part of the service offered to its customers.
23.

Denies the allegations in Paragraph 23 of the Complaint that pertain to

LexisNexis, and denies knowledge or information sufficient to form a belief as to the
truth of the allegations in Paragraph 23 of the Complaint that pertain to West, except

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admits that the Works, as that term is defined in the Complaint, that appear on
LexisNexis’s service are text searchable and LexisNexis includes images of certain
Works, as that term is defined in the Complaint, as part of its service.
24.

Denies the allegations in Paragraph 24 of the Complaint that pertain to

LexisNexis and denies knowledge or information sufficient to form a belief as to the truth
of the allegations in Paragraph 24 of the Complaint that pertain to West, except admits
that LexisNexis generally makes content available to its subscribers for a fee, either as
part of a subscription or a per-document charge.
25.

Admits that the statement alleged in Paragraph 25 of the Complaint,

except for the term “database,” is contained on the LexisNexis website, and avers that it
is accessible at http://certsupport.lexisnexis.com/lexiscom/record.asp?ArticleID=lexiscom_finding_briefs&Print=1
26.

Denies knowledge or information sufficient to form a belief as to the truth

of the allegations in Paragraph 26 of the Complaint.
27.

Denies the allegations in Paragraph 27 of the Complaint that pertain to

LexisNexis, denies knowledge or information sufficient to form a belief as to the truth of
the allegations in Paragraph 27 of the Complaint that pertain to West, and avers that
LexisNexis’s Briefs, Pleadings and Motions product is available to a single attorney at
varying rates.
28.

Denies the allegations in Paragraph 28 of the Complaint that pertain to

LexisNexis, denies knowledge or information sufficient to form a belief as to the truth of
the allegations in Paragraph 28 of the Complaint that pertain to West, and avers that, in

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addition to LexisNexis’s use of the Works, as that term is defined in the Complaint, being
permitted as fair use, LexisNexis has an implied license to use the Works.
29.

Denies the allegations in Paragraph 29 of the Complaint that pertain to

LexisNexis, denies knowledge or information sufficient to form a belief as to the truth of
the allegations in Paragraph 29 of the Complaint that pertain to West, and avers that, in
addition to LexisNexis’s use of the Works, as that term is defined in the Complaint, being
permitted as fair use, LexisNexis has an implied license to use the Works. No response
to allegations made by Plaintiff Elan and the proposed Subclass NR is required because,
on May 16, 2012, the Court granted LexisNexis’s motion to dismiss the claims of
Kenneth Elan and the purported subclass of plaintiffs who have not registered any
copyrights.
30.

Denies the allegations in Paragraph 30 of the Complaint that pertain to

LexisNexis and denies knowledge or information sufficient to form a belief as to the truth
of the allegations in Paragraph 30 of the Complaint that pertain to West. No response to
allegations made by Plaintiff Elan and the proposed Subclass NR is required because, on
May 16, 2012, the Court granted LexisNexis’s motion to dismiss the claims of Kenneth
Elan and the purported subclass of plaintiffs who have not registered any copyrights.
31.

Avers that the allegations in Paragraph 31 of the Complaint are legal

conclusions to which no response is required, but otherwise denies the allegations in
Paragraph 31 of the Complaint that pertain to LexisNexis, except admits that LexisNexis
holds certain copyright rights, and denies knowledge or information sufficient to form a
belief as to the truth of the allegations in Paragraph 31 of the Complaint that pertain to
West.

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32.

Avers that the allegations in Paragraph 32 of the Complaint are legal

conclusions to which no response is required, but otherwise denies the allegations in
Paragraph 32 of the Complaint that pertain to LexisNexis and denies knowledge or
information sufficient to form a belief as to the truth of the allegations in Paragraph 32 of
the Complaint that pertain to West. No response to allegations made by Plaintiff Elan
and the proposed Subclass NR is required because, on May 16, 2012, the Court granted
LexisNexis’s motion to dismiss the claims of Kenneth Elan and the purported subclass of
plaintiffs who have not registered any copyrights.
33.

LexisNexis repeats, reiterates, and realleges its responses to each of the

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

Avers that the allegations in Paragraph 34 of the Complaint are legal

conclusions to which no response is required, but otherwise denies the allegations in
Paragraph 34 of the Complaint that pertain to LexisNexis and denies knowledge or
information sufficient to form a belief as to the truth of the allegations in Paragraph 34 of
the Complaint that pertain to West. No response to allegations made by Plaintiff Elan
and the proposed Subclass NR is required because, on May 16, 2012, the Court granted
LexisNexis’s motion to dismiss the claims of Kenneth Elan and the purported subclass of
plaintiffs who have not registered any copyrights.
35.

Avers that the allegations in Paragraph 35 of the Complaint are legal

conclusions to which no response is required, but otherwise denies knowledge or
information sufficient to form a belief as to the truth of the allegations in Paragraph 35 of
the Complaint. No response to allegations made by Plaintiff Elan and the proposed
Subclass NR is required because, on May 16, 2012, the Court granted LexisNexis’s

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motion to dismiss the claims of Kenneth Elan and the purported subclass of plaintiffs
who have not registered any copyrights.
36.

Avers that the allegations in Paragraph 36 of the Complaint are legal

conclusions to which no response is required, but otherwise denies the allegations in
Paragraph 36 of the Complaint that pertain to LexisNexis and denies knowledge or
information sufficient to form a belief as to the truth of the allegations in Paragraph 36 of
the Complaint that pertain to West. No response to allegations made by Plaintiff Elan
and the proposed Subclass NR is required because, on May 16, 2012, the Court granted
LexisNexis’s motion to dismiss the claims of Kenneth Elan and the purported subclass of
plaintiffs who have not registered any copyrights.
37.

Avers that the allegations in Paragraph 37 of the Complaint are legal

conclusions to which no response is required, but otherwise denies the allegations in
Paragraph 37 of the Complaint that pertain to LexisNexis and denies knowledge or
information sufficient to form a belief as to the truth of the allegations in Paragraph 37 of
the Complaint that pertain to West. No response to allegations made by Plaintiff Elan
and the proposed Subclass NR is required because, on May 16, 2012, the Court granted
LexisNexis’s motion to dismiss the claims of Kenneth Elan and the purported subclass of
plaintiffs who have not registered any copyrights.
38.

Avers that the allegations in Paragraph 38 of the Complaint are legal

conclusions to which no response is required, but otherwise denies the allegations in
Paragraph 38 of the Complaint that pertain to LexisNexis and denies knowledge or
information sufficient to form a belief as to the truth of the allegations in Paragraph 38 of
the Complaint that pertain to West.

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39.

Avers that the allegations in Paragraph 39 of the Complaint are legal

conclusions to which no response is required, but otherwise denies the allegations in
Paragraph 39 of the Complaint that pertain to LexisNexis and denies knowledge or
information sufficient to form a belief as to the truth of the allegations in Paragraph 39 of
the Complaint that pertain to West. No response to allegations made by Plaintiff Elan
and the proposed Subclass NR is required because, on May 16, 2012, the Court granted
LexisNexis’s motion to dismiss the claims of Kenneth Elan and the purported subclass of
plaintiffs who have not registered any copyrights.
40.

LexisNexis repeats, reiterates, and realleges its responses to each of the

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

Denies the allegations in Paragraph 41 of the Complaint that pertain to

LexisNexis and denies knowledge or information sufficient to form a belief as to the truth
of the allegations in Paragraph 41 of the Complaint that pertain to West, except admits
that LexisNexis adds content to its service on an ongoing basis.
42.

Avers that the allegations in Paragraph 42 of the Complaint are legal

conclusions to which no response is required, but otherwise denies the allegations in
Paragraph 42 of the Complaint that pertain to LexisNexis and denies knowledge or
information sufficient to form a belief as to the truth of the allegations in Paragraph 42 of
the Complaint that pertain to West.
43.

Avers that the allegations in Paragraph 43 of the Complaint are legal

conclusions to which no response is required, but otherwise denies the allegations in
Paragraph 43 of the Complaint that pertain to LexisNexis and denies knowledge or
information sufficient to form a belief as to the truth of the allegations in Paragraph 43 of

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the Complaint that pertain to West. No response to allegations made by Plaintiff Elan
and the proposed Subclass NR is required because, on May 16, 2012, the Court granted
LexisNexis’s motion to dismiss the claims of Kenneth Elan and the purported subclass of
plaintiffs who have not registered any copyrights.
44.

Avers that the allegations in Paragraph 44 of the Complaint are legal

conclusions to which no response is required, but otherwise denies the allegations in
Paragraph 44 of the Complaint that pertain to LexisNexis and denies knowledge or
information sufficient to form a belief as to the truth of the allegations in Paragraph 44 of
the Complaint that pertain to West.
45.

Avers that the allegations in Paragraph 45 of the Complaint are legal

conclusions to which no response is required, but otherwise denies the allegations in
Paragraph 45 of the Complaint that pertain to LexisNexis and denies knowledge or
information sufficient to form a belief as to the truth of the allegations in Paragraph 45 of
the Complaint that pertain to West. No response to allegations made by Plaintiff Elan
and the proposed Subclass NR is required because, on May 16, 2012, the Court granted
LexisNexis’s motion to dismiss the claims of Kenneth Elan and the purported subclass of
plaintiffs who have not registered any copyrights.
46.

Avers that the allegations in Paragraph 46 of the Complaint are legal

conclusions to which no response is required, but otherwise denies the allegations in
Paragraph 46 of the Complaint that pertain to LexisNexis and denies knowledge or
information sufficient to form a belief as to the truth of the allegations in Paragraph 46 of
the Complaint that pertain to West. No response to allegations made by Plaintiff Elan
and the proposed Subclass NR is required because, on May 16, 2012, the Court granted

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LexisNexis’s motion to dismiss the claims of Kenneth Elan and the purported subclass of
plaintiffs who have not registered any copyrights.
47.

LexisNexis repeats, reiterates, and realleges its responses to each of the

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

Avers that the allegations in Paragraph 48 of the Complaint are legal

conclusions to which no response is required, but otherwise denies the allegations in
Paragraph 48 of the Complaint that pertain to LexisNexis and denies knowledge or
information sufficient to form a belief as to the truth of the allegations in Paragraph 48 of
the Complaint that pertain to West. No response to allegations made by Plaintiff Elan
and the proposed Subclass NR is required because, on May 16, 2012, the Court granted
LexisNexis’s motion to dismiss the claims of Kenneth Elan and the purported subclass of
plaintiffs who have not registered any copyrights.
49.

Avers that the allegations in Paragraph 49 of the Complaint are legal

conclusions to which no response is required, but otherwise denies the allegations in
Paragraph 49 of the Complaint that pertain to LexisNexis and denies knowledge or
information sufficient to form a belief as to the truth of the allegations in Paragraph 49 of
the Complaint that pertain to West. No response to allegations made by Plaintiff Elan
and the proposed Subclass NR is required because, on May 16, 2012, the Court granted
LexisNexis’s motion to dismiss the claims of Kenneth Elan and the purported subclass of
plaintiffs who have not registered any copyrights.
AFFIRMATIVE DEFENSES
As and for its affirmative defenses, LexisNexis alleges as follows, without
assuming any burden of pleading or proof that would otherwise rest with Plaintiffs, and

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without waiving and hereby expressly reserving the right to assert any and all additional
defenses at such time and to such extent as discovery and factual developments establish
a basis therefore:
FIRST AFFIRMATIVE DEFENSE
50.

The Complaint fails, in whole or in part, to state a claim against

LexisNexis upon which relief may be granted.
SECOND AFFIRMATIVE DEFENSE
51.

LexisNexis has an implied license to use the Works, as that term is defined

in the Complaint.
THIRD AFFIRMATIVE DEFENSE
52.

LexisNexis’s use of the Works, as that term is defined in the Complaint, is

permitted as fair use under the Copyright Act.
FOURTH AFFIRMATIVE DEFENSE
53.

LexisNexis’s use of the Works, as that term is defined in the Complaint, is

permitted pursuant to public policy.
FIFTH AFFIRMATIVE DEFENSE
54.

The relief sought in the Complaint is barred to the extent that Plaintiffs are

not the legal or beneficial owners of the copyrights in the Works, as that term is defined
in the Complaint.
SIXTH AFFIRMATIVE DEFENSE
55.

The relief sought in the Complaint is barred, in whole or in part, by the

applicable statute of limitations.

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SEVENTH AFFIRMATIVE DEFENSE
56.

The relief sought in the Complaint is barred to the extent that the Works,

as that term is defined in the Complaint, are not protected by copyright law.
EIGHTH AFFIRMATIVE DEFENSE
57.

The relief sought in the Complaint is barred, in whole or in part, by the

doctrine of laches.
NINTH AFFIRMATIVE DEFENSE
58.

The relief sought in the Complaint is barred, in whole or in part, by the

doctrines of waiver and/or equitable estoppel.
TENTH AFFIRMATIVE DEFENSE
59.

The relief sought in the Complaint is barred, in whole or in part, by the

doctrine of unclean hands.
ELEVENTH AFFIRMATIVE DEFENSE
60.

The relief sought in the Complaint is barred, in whole or in part, to the

extent that LexisNexis’s use of the Works, as that term is defined in the Complaint, was
licensed or otherwise authorized.
TWELFTH AFFIRMATIVE DEFENSE
61.

The relief sought in the Complaint is barred, in whole or in part, because

Plaintiffs have not suffered any damages or harm.
THIRTEENTH AFFIRMATIVE DEFENSE
62.

The relief sought in the Complaint is barred, in whole or in part, because

Plaintiffs have failed to mitigate damages, if any.

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FOURTEENTH AFFIRMATIVE DEFENSE
63.

The prayer for statutory damages and attorneys’ fees is barred to the extent

that the alleged copyrights do not meet the registration requirements of 17 U.S.C.
§ 412(2).
FIFTEENTH AFFIRMATIVE DEFENSE
64.

Plaintiffs’ claims are not properly maintainable as a class action.
SIXTEENTH AFFIRMATIVE DEFENSE

65.

The injunctive relief sought by Plaintiffs is barred, in whole or in part,

because Plaintiffs have available an adequate remedy at law.
PRAYER FOR RELIEF
WHEREFORE, LexisNexis respectfully requests as follows:
A.

That judgment be entered in favor of LexisNexis and against Plaintiffs;

B.

That the Complaint be dismissed with prejudice;

C.

That LexisNexis be awarded its costs of suit herein incurred;

D.

That LexisNexis be awarded its expenses, including reasonable attorneys’

fees; and
E.

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For such other and further relief as the Court may deem just and proper.

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Dated: May 30, 2012

MORRISON & FOERSTER LLP
/s/ James E. Hough
James E. Hough
Craig B. Whitney
1290 Avenue of the Americas
New York, NY 10104
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
James F. McCabe (admitted pro hac vice)
Paul Goldstein (admitted pro hac vice)
425 Market Street
San Francisco, California 94105
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
Attorneys for Defendant
LexisNexis, a div. of REED ELSEVIER INC.

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