White et al v. West Publishing Corporation et al

Filing 52

RULE 56.1 STATEMENT. Document filed by Edward L. White, P.C.. (Blue, Gregory)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
EDWARD L. WHITE, P.C.,
12-CV-1340 (JSR)
ECF CASE

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

PLAINTIFF’S LOCAL CIVIL RULE 56.1 STATEMENT

Pursuant to Local Civil Rule 56.1, Plaintiff hereby submits this
statement of the material facts as to which the Plaintiff contends there is no
genuine issue to be tried.
Definitions
1.

2.

“Copyright Act” means The Copyright Act of 1976, as
amended in its current form, 17 U.S.C. § 101 et seq.

3.

“Copyright Owner” has definition ascribed to that term in 17
U.S.C. § 101.

4.

“Derivative Work” has definition ascribed to that term in 17
U.S.C. § 101.

5.

“Display” has definition ascribed to that term in 17 U.S.C. §
101.

6.

“Copies” has definition ascribed to that term in 17 U.S.C. §
101. “Copy” is the singular form of the same term, with the
same definition.

“Lexis” means Defendant Reed Elsevier Inc.
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7.

“Plaintiff” means Edward L. White, P.C.

8.

“West” means Defendant West Publishing Corporation.
Undisputed Facts

1.

Plaintiff is a professional corporation engaged in the practice of law.
[White Deposition]

2.

Plaintiff holds copyright registration certificates for the following
works (together, the “Works”):
a. Plaintiff’s Combined Motion for Summary Judgment for
Plaintiffs Beer and Ramsey and Brief in Support, dated May
20, 2009 [Copyright Registration Certificate Number TX 7259-439, White Deposition Exhibit 5]; and
b. Plaintiffs’ Motion in Limine, dated March 15, 2012
[Copyright Registration Certificate Number TX 7-417-300,
White Deposition Exhibit 6].

3.

The copyright registration certificates for each of the Works identifies
Plaintiff as the Author of the Works. [Id.]

4.

The copyright registration certificates for each of the Works identifies
the Plaintiff as the Copyright Claimant of the Works. [Id.]

5.

Defendant West did not seek or obtain express permission from the
Plaintiff to reproduce the Works. [West’s Response to Notice to
Admit No. 4]

6.

Defendant Lexis did not seek or obtain express permission from the
Plaintiff to reproduce the Works. [Lexis’s Response to Notice to
Admit No. 4]

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7.

Defendant West did not seek or obtain express permission from the
Plaintiff to create derivative works. [West’s Response to Notice to
Admit No. 5]

8.

Defendant Lexis did not seek or obtain express permission from the
Plaintiff to create derivative works. [Lexis’s Response to Notice to
Admit No. 5]

9.

Defendant West did not seek or obtain express permission from the
Plaintiff to distribute Copies of the Works. [West’s Response to
Notice to Admit No. 6]

10.

Defendant Lexis did not seek or obtain express permission from the
Plaintiff to distribute Copies of the Works. [Lexis’s Response to
Notice to Admit No. 6]

11.

Defendant West did not seek or obtain an express license from the
Plaintiff to use the Works in any fashion whatsoever. [West’s
Response to Notice to Admit No. 7]

12.

Defendant Lexis did not seek or obtain express permission from the
Plaintiff to use the Works in any fashion whatsoever. [Lexis’s
Response to Notice to Admit No. 7]

13.

Prior to the institution of this lawsuit, West had no communications
with the Plaintiff, or anyone acting on the Plaintiff’s behalf,
concerning the grant of a license, whether express or implied, to
authorize West to use the Works. [West’s Response to Notice to
Admit No. 8]

14.

Prior to the institution of this lawsuit, Lexis had no communications
with the Plaintiff, or anyone acting on the Plaintiff’s behalf,
concerning the grant of a license, whether express or implied, to
authorize Lexis to use the Works. [Lexis’s Response to Notice to
Admit No. 8]

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15.

West obtained the Works from the PACER system. [West’s Response
to Notice to Admit No. 10]

16.

Lexis obtained the Works from the PACER system. [Lexis’s
Response to Notice to Admit No. 10]

17.

Lexis made at least one Copy of each of the Works, in PDF or similar
form. [Lexis’s Response to Notice to Admit No. 20]

18.

West made Copies of the Works by converting the Works into the
electronic file format used by West’s electronic legal research
databases. [West’s Response to Notice to Admit No. 11]

19.

Prior to the filing of the Complaint, West included electronic, textsearchable versions of the Works in West’s electronic legal research
databases that were available to subscribers. [West’s Response to
Notice to Admit No. 12]

20.

Prior to the filing of the Complaint, Lexis included electronic, textsearchable versions of the Works in Lexis’s electronic legal research
databases that were available to subscribers. [Lexis’s Response to
Notice to Admit No. 12]

21.

West made at least one copy of each of the Works for the purpose of
including at least one copy of each of the Works in West’s databases
that are available to subscribers of your electronic legal research
services. [West’s Response to Notice to Admit No. 18]

22.

Lexis made at least one copy of each of the Works for the purpose of
including at least one copy of each of the Works in Lexis’s databases
that are available to subscribers of your electronic legal research
services. [Lexis’s Response to Notice to Admit No. 18]

23.

An image of each of the Works (excluding exhibits), in PDF form, as
filed on PACER, was linked to the electronic, text-searchable version
of that Work that was included in West’s databases that are available

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to certain subscribers of its electronic legal research service. [West’s
Response to Notice to Admit No. 21]
24.

Lexis copied an image of each of the Works, in PDF or similar form,
for the purpose of offering those images to subscribers of Lexis’s
electronic legal research services. [Lexis’s Response to Notice to
Admit No. 20]

25.

Prior to the filing of the Complaint, certain of the Defendants’
subscribers and other fee-paying users accessed copies of the Works
from the Defendants’ databases. [Bogan Declaration; Document No.
LN 8276; West’s Response To Plaintiff’s Request for Documents
Regarding Pricing, dated September 5, 2012]

26.

Plaintiff’s registration with the CM/ECF system for the Western
District of Oklahoma did not expressly require Plaintiff to relinquish
his intellectual property rights in any document filed with the court,
nor did the registration expressly inform the Plaintiff that the filing of
such documents would entitle others to copy, sell, or distribute those
documents for a commercial purpose. [White Deposition Exhibit No.
13]

27.

Both Works were created within three years prior to the filing of the
Complaint. [Copyright Registration Certificates, White Deposition
Exhibits 5 and 6]

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Dated:

New York, New York
October 5, 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]
Facsimile: [phone]
[e-mail]
Raymond A. Bragar
BRAGAR EAGEL & SQUIRE, P.C.
885 Third Ave., Suite 3040
New York, New York 10022
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Attorneys for Plaintiff

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