White et al v. West Publishing Corporation et al

Filing 55

MEMORANDUM OF LAW in Support re: 53 MOTION for Summary Judgment (Notice of Motion Previously Filed).. 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 MEMORANDUM OF LAW
IN SUPPORT OF MOTION
FOR SUMMARY JUDGMENT

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 EAGEL & SQUIRE, P.C.
885 Third Ave., Suite 3040
New York, New York 10022
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Attorneys for Plaintiff

Table of Contents
Table of Authorities ....................................................................................... iv
Preliminary Statement..................................................................................... 1
Undisputed Facts............................................................................................. 2
Legal Argument .............................................................................................. 3
I.

STANDARD ON A MOTION FOR SUMMARY JUDGMENT............................. 3

II.

THERE IS NO GENUINE DISPUTE AS TO ANY MATERIAL FACT
CONCERNING PLAINTIFF’S PRIMA FACIE CASE FOR COPYRIGHT
INFRINGEMENT....................................................................................... 4

A.

Plaintiff owns the copyright in the Works ........................................... 5

B.

Defendants violated Plaintiff’s exclusive rights under the Copyright
Act. 5
1.

Defendants made unauthorized copies of the Works................. 6

2.

Defendants distributed the Works without authorization. ......... 6

3.

Defendants displayed the Works without authorization. ........... 7

III.

THE DEFENDANTS’ AFFIRMATIVE DEFENSES ARE WITHOUT MERIT. ....... 7

A.

The “fair use” defense does not apply.................................................. 7
1.

The purpose and character of the Defendants’ use of the
works weighs heavily against a finding of “fair use.” ............... 9
a.
b.

2.

The Defendants’ use is commercial in nature................... 9
The Defendants’ copying was not transformative. ......... 10

The nature of the registered works weighs heavily against
a finding of fair use. ................................................................. 13
a.

The Works are unpublished ............................................ 14

b.

The fact that the works are unpublished weighs
against a finding of fair use. .......................................... 15

c.

The filing of the Works with the Clerk of the Court
does not does not strip the copyright owner of its
rights. ............................................................................. 16

ii

3.

The amount and substantiality of the portion used in
relation to the copyrighted use as a whole weighs heavily
against a finding of fair use...................................................... 18

4.

The effect of the use upon the potential market for or
value of the copyrighted work does not favor a finding of
fair use.
............................................................................. 18

B.

Defendants did not have an express or implied license to copy,
distribute, and display the Works. ...................................................... 20

C.

Plaintiff’s claims are not barred by the statute of limitations. ........... 21

D.

Defendants’ remaining affirmative defenses are without merit......... 22

Conclusion .................................................................................................... 22

iii

Table of Authorities
CASES

American Geophysical Union v. Texaco Inc.,
60 F.3d 913 (2d Cir. 1994).................................................................. 11, 12
Authors Guild v. Google Inc., 770 F. Supp. 2d 666 (S.D.N.Y. 2011).......... 16
Basic Books, Inc. v. Kinko's Graphics Corp.,
758 F. Supp. 1522 (S.D.N.Y. 1991).................................................... 10, 18
Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994)............................... 8, 10
Castle Rock Entm’t, Inc. v. Carol Publ’g Group, Inc.,
150 F.3d 132 (2d Cir. 1998)................................................................ 4, 8, 9
Design Options, Inc. v. BellePointe, Inc.,
940 F. Supp. 86 (S.D.N.Y. 1996).............................................................. 21
Eyal R.D. Corp. v. Jewelex New York, Ltd.,
576 F.Supp.2d 626 (S.D.N.Y. 2008)......................................................... 22
Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) ................... 4
Fonar Corp. v. Domenick, 105 F.3d 99 (2d Cir. 1997) .................................. 4
Fox Film Corp. v. Doyal, 286 U.S. 123 (1932)........................................... 16
Hamil Am., Inc. v. GFI, Inc., 193 F.3d 92 (2d Cir. 1999) .............................. 5
Harper & Row, Publrs. v. Nation Enters., 471 U.S. 539 (1985).......... 8, 9, 15
Infinity Broad. Corp. v. Kirkwood, 150 F.3d 104 (2d Cir. 1998)........... 10, 13
Int’l Swaps & Derivatives Ass’n v. Socratek,
712 F. Supp. 2d 96 (S.D.N.Y. 2010)........................................................... 4
Intown Enterprises, Inc. v. Barnes,
721 F. Supp. 1263 (N.D. Ga. 1989) .......................................................... 15
Kunycia v. Melville Realty Co., 755 F. Supp. 566 (S.D.N.Y. 1990) ............ 14
Matthew Bender & Co. v. W. Publ. Co., 158 F.3d 693 (2d Cir. 1998) .......... 6
McIntosh v. N. Cal. Universal Enters. Co.,
670 F. Supp. 2d 1069 (E.D. Cal. 2009)..................................................... 17
Miner v. Clinton Cnty., New York, 541 F.3d 464 (2d Cir. 2008) ................... 3

iv

N.Y. Times Co. v. Tasini, 533 U.S. 483 (2001)............................................... 7
Religious Tech. Ctr. v. Lerma, 908 F. Supp. 1362 (E.D. Va. 1995) ............ 17
Ruiz v. County of Rockland, 609 F.3d 486 (2d Cir. 2010) ............................. 3
SCR Joint Venture L.P. v. Warshawsky, 559 F.3d 133 (2d Cir. 2009)........... 3
SHL Imaging, Inc. v. Artisan House, Inc.,
117 F. Supp. 2d 301 (S.D.N.Y. 2000)....................................................... 21
Sledge v. Kooi, 564 F.3d 105 (2d Cir. 2009) .................................................. 4
Sony Corp. of Am. v. Universal City Studios, Inc.,
464 U.S. 417 (1984) .................................................................................... 9
Tufenkian Import/Export Ventures, 338 F.3d 127 (2d Cir. 2003) .................. 4
Umg Recordings v. Mp3.com, Inc.,
92 F. Supp. 2d 349 (S.D.N.Y. 2000)......................................................... 13
Warner Bros. Entm’t Inc. v. RDR Books,
575 F. Supp. 2d 513 (S.D.N.Y. 2008)....................................................... 10
Wright v. Warner Books, Inc., 953 F.2d 731 (2d Cir. 1991) .......................... 8
STATUTES

17 U.S.C. § 101......................................................................................... 7, 14
17 U.S.C. § 106........................................................................................... 6, 7
17 U.S.C. § 107................................................................................. 7, 8, 9, 18
17 U.S.C. § 410(c) .......................................................................................... 5
17 U.S.C. § 507............................................................................................. 22
OTHER AUTHORITIES

4-13 Melville B. Nimmer and David Nimmer, NIMMER ON COPYRIGHT
§ 13.05 (Matthew Bender, Rev. Ed) ............................................. 17, 19, 20

v

Preliminary Statement
Plaintiff respectfully moves this Court for summary judgment on its
claims for copyright infringement against West Publishing Corporation
(“West”), and Reed Elsevier Inc. (“Lexis”).
The Defendants rummage through court dockets and steal intellectual
property. It is as simple as that. Under the plain language of the Copyright
Act, authors – including attorneys and law firms – own the copyright to their
works, and enjoy copyright protection from the moment those works are
created. Nothing in the Copyright Act, or case law, supports the
Defendants’ position that the filing of those works with the clerk of court
strips the author of his rights under the Copyright Act, and permits any
diligent pirate to copy and sell those works for profit, without the permission
of the author, and without compensating him. In short, a court’s docket is
not a lawless copyright-free zone. All the usual rules apply, and the
Defendants have broken those rules.
It is true – as the Defendants will no doubt argue – that anyone can go
to court, or access the court’s files online, and read the legal briefs and
pleadings that are filed there. But it is also true that members of the public
can go to a public library and read a copy of the latest John Grisham novel.
The fact that the novel is placed in a public building, in the hands of public
employees, and the author expects that it will be read there, does not mean
that the reader is authorized to create innumerable copies and make a
business of selling them. What the Defendants did here is scarcely different.
This is a straightforward case. While the parties may disagree over
the facts at the margins, there are no essential facts in dispute. So, summary
1

judgment on the issue of the Defendant’s infringement of Plaintiff’s
registered Works (as defined in the Amended Complaint) is appropriate
because there is no genuine dispute as to any material fact concerning:
(i) Plaintiff’s authorship of the Works; (ii) Plaintiff’s ownership of the
copyright in the Works; and (iii) Defendants’ unauthorized copying,
distribution, and display of the Works for their own commercial gain.
The Defendants’ affirmative defenses, including the “fair use”
defense, are without merit and should be dismissed as a matter of law.
There is no sense in which the taking of an entire copyrighted work, without
the author’s permission, and selling an essentially unaltered copy for profit
is “fair use.”
As explained below, the Court therefore should grant summary
judgment against the Defendants.
Undisputed Facts
Plaintiff is a professional corporation engaged in the practice of law.
(Plaintiff’s Statement of Undisputed Facts Pursuant to Local Rule 56.1
(“Undisp. Facts”) at ¶ 1) Plaintiff authored the two Works at issue in this
litigation, as evidenced by the copyright registration certificates identifying
Plaintiff as the Author and Copyright Claimant. (Id. at ¶ 2.) The copyright
registration certificates identify Plaintiff as the Author of the Works (id. at ¶
3), and as the Copyright Claimant. (Id. at ¶ 4)
Defendants obtained PDF files of the Works from the PACER system,
created electronic text-searchable versions of the Works, and made those
electronic text-searchable Works available to their subscribers and other fee-

2

paying users, along with links to PDF versions of the Works. (Id. at ¶¶ 1524)
Defendants never sought from the Plaintiff, and the Plaintiff never
granted to the Defendants, any express permission to copy, distribute, or
display the Works, or to make any use of them whatsoever. (Id. at ¶¶ 5-14.)
Prior to the filing of the Complaint, certain of the Defendants’
subscribers and other fee-paying users accessed copies of the Works as they
existed in the Defendants’ databases. (Id. at ¶ 25.)
Legal Argument
I.

Standard on a motion for summary judgment.
“Summary judgment is appropriate if the pleadings, the discovery

and disclosure materials on file, and any affidavits show that there is no
genuine issue as to any material fact and that the movant is entitled to
judgment as a matter of law.” Ruiz v. County of Rockland, 609 F.3d 486,
491 (2d Cir. 2010) (quotation omitted). An issue of fact is “genuine” only if
the evidence is such that a reasonable jury could return a verdict for the nonmoving party. SCR Joint Venture L.P. v. Warshawsky, 559 F.3d 133, 137
(2d Cir. 2009). A “material” fact is one that might “affect the outcome of the
suit under the governing law.” Id.
While the moving party bears “the burden of demonstrating that no
material fact exists.” Miner v. Clinton Cnty., New York, 541 F.3d 464, 471
(2d Cir. 2008) (citing McCarthy v. Dun & Bradstreet Corp., 482 F.3d 184,
202 (2d Cir. 2007)), and the Court must construe “the evidence in the light
most favorable to the non-moving party and draw[ ] all reasonable
inferences in that party’s favor,” Sledge v. Kooi, 564 F.3d 105, 108 (2d Cir.
3

2009), the non-moving party may not rely on “conclusory allegations or
unsubstantiated speculation.” Scotto v. Almenas, 143 F.3d 105, 114 (2d Cir.
1998).
II.

There is no genuine dispute as to any material fact concerning
Plaintiff’s prima facie case for copyright infringement.
“There are only two elements of an infringement claim: ownership of

a valid copyright and the copying of constituent elements of the work that
are original.” Fonar Corp. v. Domenick, 105 F.3d 99, 103 (2d Cir. 1997).
See also, e.g., Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361
(1991) (“To establish infringement, two elements must be proven: (1)
ownership of a valid copyright, and (2) copying of constituent elements of
the work that are original.”); Tufenkian Import/Export Ventures, 338 F.3d
127, 131 (2d Cir. 2003) (“Copyright infringement is established when the
owner of a valid copyright demonstrates unauthorized copying.”) (quoting
Castle Rock Entm’t, Inc. v. Carol Publ’g Group, Inc., 150 F.3d 132, 137-38
(2d Cir. 1998)); Int’l Swaps & Derivatives Ass’n v. Socratek, 712 F. Supp.
2d 96, 102 (S.D.N.Y. 2010) (“To make out a prima facie case of copyright
infringement, a party must show (1) ownership of a valid copyright in the
item and (2) unauthorized copying.”).
There is no genuine dispute that Plaintiff owns the copyrights in the
Works, and that Defendants copied them for commercial purposes.
Summary judgment therefore is appropriate.

4

A.

Plaintiff owns the copyright in the Works
Plaintiff holds registration certificates for each of the Works. (Undisp.

Facts ¶ 2) The registration certificates state that Plaintiff is the Author and
the Copyright Claimant. Id.
“A certificate of registration from the United States Register of
Copyrights constitutes prima facie evidence of the valid ownership of a
copyright, although that presumption of ownership may be rebutted.” Hamil
Am., Inc. v. GFI, Inc., 193 F.3d 92, 98 (2d Cir. 1999). See also 17 U.S.C. §
410(c). “The party challenging the validity of the copyright has the burden
to prove the contrary.” Hamil Am., Inc., at 98.
Defendants cannot carry their burden of showing that Plaintiff does
not own the copyrights in the Works because there is no genuine dispute that
the Works were authored by the Plaintiff. The Court, therefore, should find
as a matter of law that Plaintiff is the copyright owner of the Works, and
should dismiss, as a matter of law, Lexis’s Fifth Affirmative Defense
(alleging that Plaintiff is not the legal or beneficial owner of the copyrights
in the Works) and West’s Second Affirmative Defense (alleging that
Plaintiff has failed to demonstrate that it is the owner of the copyrights
alleged to have been infringed).
B.

Defendants violated Plaintiff’s exclusive rights under the
Copyright Act.
There also is no dispute that Defendants made copies of the Works,

distributed the Works, and displayed the Works without Plaintiff’s
authorization. (Undisp. Facts ¶¶ at ¶¶ 5-14, 17-25)

5

1.

Defendants made unauthorized copies of the Works.

Under § 106(1) of the Copyright Act, Plaintiff has the exclusive right
“to reproduce the copyrighted work in copies.” Section 101 of the
Copyright Act defines “copies” as “material objects, other than
phonorecords, in which a work is fixed by any method now known or later
developed, and from which the work can be perceived, reproduced, or
otherwise communicated, either directly or with the aid of a machine or
device.” The statutory definition of “copies” is expansive, and includes the
types of copies made by the Defendants in the process of placing the Works
in their databases. As the Second Circuit explained, the statutory definition
of copies “was intended to expand the ‘fixation’ requirement to include
material objects that embody works capable of being perceived with the aid
of a machine, thereby ensuring that reproductions of copyrighted works
contained on media such as floppy disks, hard drives, and magnetic tapes
would meet the Copyright Act's ‘fixation” requirement.’” Matthew Bender
& Co. v. W. Publ. Co., 158 F.3d 693, 703 (2d Cir. 1998).
Both Defendants copied the Works by: (i) accessing the US Court’s
PACER to obtain the Works; (ii) converting the Works into a text-searchable
version; and (iii) including electronic versions of the Works in their
databases, which were available to their subscribers.
2.

Defendants distributed the Works without authorization.

Under § 106(7) of the Copyright Act, Plaintiff has the exclusive right
“to distribute copies…of the copyrighted work to the public by sale or other
transfer of ownership, or by rental, lease, or lending.” Making electronic
versions of the Works available to paying subscribers constitutes distribution
6

under § 106(7). See, e.g., N.Y. Times Co. v. Tasini, 533 U.S. 483, 498
(2001) (finding that “LEXIS/NEXIS, by selling copies of the Articles
through the NEXIS Database, ‘distribute[s] copies’ of the Articles ‘to the
public by sale,’ [under] § 106(3)”).
Both Defendants admitted that subscribers actually accessed the
Works in their databases. (Undisp. Facts ¶ 25) The Defendants, therefore,
violated Plaintiff’s exclusive right to distribute copies of the Works.
3.

Defendants displayed the Works without authorization.

Under § 106(5) of the Copyright Act, Plaintiff has the exclusive right
“to display the copyrighted work publicly.” “Display” “means to show a
copy of it, either directly or by means of a film, slide, television image, or
any other device or process.” 17 U.S.C. § 101.
Defendants displayed copies of the Works to users (Undisp. Facts ¶
25), and in so doing violated Plaintiff’s exclusive rights under section
106(5).
The undisputed facts therefore show that Defendants violated
Plaintiff’s exclusive rights under 17 U.S.C. § 106(7). For this reason, too,
Plaintiff has established a prima facie case for copyright infringement.
III.

The Defendants’ affirmative defenses are without merit.
A.

The “fair use” defense does not apply.

The Defendants have asserted that their copying, distribution, and
display of the Works are “fair use” under § 107 of the Copyright Act.
[Lexis’s Third Affirmative Defense; West’s Fourth Affirmative Defense]

7

The Defendants have the burden of demonstrating fair use. Campbell v.
Acuff-Rose Music, 510 U.S. 569, 590 (1994).
While “[f]air use is a mixed question of law and fact,” Harper & Row,
Publrs. v. Nation Enters., 471 U.S. 539, 560 (1985), the Court may grant
summary judgment where, as here, there are no material facts in dispute
concerning the applicability of the defense. See Castle Rock Entm’t, 150
F.3d at 137 (“this court has on a number of occasions ‘resolved fair use
determinations at the summary judgment stage’ where, as here, there are no
genuine issues of material fact”) (quoting Wright v. Warner Books, Inc., 953
F.2d 731, 735 (2d Cir. 1991)).
Under § 107 of the Copyright Act, there are at four factors to consider
in determining whether a particular instance of copying is “fair use”:
(1)

(2)
(3)
(4)

the purpose and character of the use, including whether
such use is of a commercial nature or is for nonprofit
educational purposes;
the nature of the copyrighted work;
the amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and
the effect of the use upon the potential market for or value
of the copyrighted work.

Summary judgment is appropriate in this case because there are no
material facts in dispute concerning the “fair use” defense. Based on those
undisputed facts, the four factors weigh heavily in favor of a finding that
Defendants’ copying was not fair use. The Court, therefore, should find as a
matter of law that the fair use defense does not apply.

8

1.

The purpose and character of the Defendants’ use of the
works weighs heavily against a finding of “fair use.”

Courts considering how to weigh the first factor in the “fair use”
analysis – the purpose and character of the defendant’s use – consider:
(a) “whether such use is of a commercial nature or is for nonprofit
educational purposes,” 17 U.S.C. § 107(1); and (b) “‘whether the allegedly
infringing work merely supersedes’ the original work ‘or instead adds
something new, with a further purpose or different character, altering the
first with new . . . meaning [] or message,’ in other words ‘whether and to
what extent the new work is ‘transformative.’” Castle Rock Entm’t, 150
F.3d at 141 (alterations in original).
a.

The Defendants’ use is commercial in nature.

“[E]very commercial use of copyrighted material is presumptively an
unfair exploitation of the monopoly privilege that belongs to the owner of
the copyright.” Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S.
417, 451 (1984). While commerciality, by itself, does not inextricably lead
to the conclusion that the Defendants’ copying is unfair, Campbell, 510 U.S.
at 585, “[t]he fact that a publication was commercial as opposed to nonprofit
is a separate factor that tends to weigh against a finding of fair use.”
Harper & Row, Publrs.., 471 U.S. at 562.
To determine whether the publication is commercial in nature, the
focus is on whether the infringer derives a commercial benefit from the
copying, not on whether those receiving the copies do. So, for example, a
copy shop that makes photocopies of copyrighted course materials for use in
a classroom has a “commercial purpose,” even though the ultimate users of

9

those materials have an educational, not-for-profit motive. See Basic Books,
Inc. v. Kinko's Graphics Corp., 758 F. Supp. 1522, 1531 (S.D.N.Y. 1991)
(“The use of the Kinko’s packets, in the hands of the students, was no doubt
educational. However, the use in the hands of Kinko’s employees is
commercial.”)
The same is true here. It is undisputed that Defendants are engaged in
the sale of legal research materials, and that they charge subscribers for
access to databases containing legal briefs and pleadings, including the
databases that included the Works. [West Answer to Amended Complaint
(“West Ans.”) at ¶¶ 10, 16; Lexis Answer to Amended Complaint (“Lexis
Ans.”) at ¶¶ 10, 13] Whatever legitimate purposes West’s and Lexis’s
subscribers have for the briefs and pleadings, the Defendants’ copying and
sale of the Works is undoubtedly commercial in nature, and this fact weighs
against a finding of fair use.
b.

The Defendants’ copying was not
transformative.

Even more importantly, though, the Defendants simply made verbatim
copies of the Works. “Most critical to the inquiry under the first fair-use
factor is ‘whether and to what extent the new work is ‘‘transformative.’’”
Warner Bros. Entm’t Inc. v. RDR Books, 575 F. Supp. 2d 513, 540
(S.D.N.Y. 2008) (quoting Campbell, 510 U.S. at 579). Here, the
Defendants’ copying of the Works was in no way transformative. “There is
neither new expression, new meaning nor new message. In short, there is no
transformation.” Infinity Broad. Corp. v. Kirkwood, 150 F.3d 104, 108 (2d
Cir. 1998) (quotation and citation omitted).
10

American Geophysical Union v. Texaco Inc., 60 F.3d 913, 923 (2d
Cir. 1994), is particularly instructive on the issue of “transformative” use
because that case, like this one, involved the simple copying of an entire
copyrighted work without any transformation. In that case, Texaco
admittedly made photocopies of articles in scientific journals for use by its
in-house scientists. Texaco contended (among other things), that its copying
was fair use, arguing that the “transformative” issue was only relevant to the
extent that the copy actually competed with the original, and that its copies
were, in all events, “transformative.” As the Second Circuit explained
Texaco’s position:
Texaco asserts that the “transformative use”
concept is valuable only to the extent that it
focuses attention upon whether a second work
unfairly competes with the original. Texaco states
that in this case, where the photocopies it made
were not sold or distributed in competition with the
original, the nontransformative nature of its
copying should not prevent a finding of fair use.
Texaco also suggests that its use should be
considered transformative: photocopying the
article separated it from a bulky journal, made it
more amenable to markings, and provided a
document that could be readily replaced if
damaged in a laboratory, all of which
“transformed” the original article into a form that
better served [the scientist’s] research needs.
60 F.3d at 920.
The Second Circuit, however, rejected Texaco’s analysis. Instead, the
Court found that “[t]he District Court properly emphasized that Texaco’s

11

photocopying was not ‘transformative,’” id. at 922, because Texaco’s
copying added nothing of value:
To the extent that the secondary use involves
merely an untransformed duplication, the value
generated by the secondary use is little or nothing
more than the value that inheres in the original.
Rather than making some contribution of new
intellectual value and thereby fostering the
advancement of the arts and sciences, an
untransformed copy is likely to be used simply for
the same intrinsic purpose as the original, thereby
providing limited justification for a finding of fair
use.
Id. at 923.
Converting copyrighted works into a more convenient, easily
accessible format is not, the Second Circuit explained, “transformative.”
Instead, a copy of the original into a more convenient form “merely
transforms the material object embodying the intangible article that is the
copyrighted original work.” Id. (emphasis in original). That is not
transformation.
Just as was the case in American Geophysical Union, West and Lexis
have added nothing of value to the copyrighted expression owned by the
Plaintiff. At most, the Defendants’ copying, like the copying at issue in
American Geophysical Union, simply made the Works more convenient to
access and use, and “merely transform[ed] the material object embodying
the intangible article that is the copyrighted original work.” Id. While the
Defendants will no doubt argue that they performed a valuable service in
making the Works more readily available and searchable, “this is simply

12

another way of saying that the unauthorized copies are being retransmitted in
another medium -- an insufficient basis for any legitimate claim of
transformation.” Umg Recordings v. Mp3.com, Inc., 92 F. Supp. 2d 349,
351 (S.D.N.Y. 2000).
Moreover, even if the Defendants are arguably performing a useful
service for their customers (who may themselves transform the works), it is
the Defendants’ own conduct that is at issue, and that conduct involves little
or no transformation. The “different, and possibly beneficial, purposes of
[Defendants’] customers… are outweighed by the total absence of
transformativeness.” Infinity Broad. Corp. v. Kirkwood, 150 F.3d at 109
(finding no fair use with respect to service that enabled subscribers, for a fee,
to listen over the telephone to contemporaneous radio broadcasts in remote
cities).
When, as here, the transformative purpose is “slight to non-existent,”
and merely seeks to “repackage” the original, Castle Rock Entm’t, 150 F.3d
at 142, “the first fair use factor weighs against the defendants.” Id. at 143.
2.

The nature of the registered works weighs heavily against a
finding of fair use.

The second “fair use” factor – the nature of the copyrighted works,
also weighs against a finding of fair use. Significantly, the Works are
unpublished. The law affords the author of an unpublished work the right to
control first publication or – if the author chooses – to decide not to publish.
This is true even though the documents were filed with the clerk of court,
and available for public inspection. For this reason, too, the Court should

13

grant summary judgment dismissing the Defendants’ “fair use” affirmative
defenses.
a.

The Works are unpublished

The Copyright Act defines “publication” as “the distribution of
copies…of a work to the public by sale or other transfer of ownership, or by
rental, lease, or lending.” 17 U.S.C. § 101. Plaintiff never distributed the
Works to the public “by sale or other transfer of ownership, or by rental,
lease, or lending.”
Filing a copyrighted work with a department or instrumentality of the
government, by itself, does not amount to publication within the meaning of
the Copyright Act. Here, there is a direct analogy to architects who are
required to submit their architectural plans to government agencies for
approval and, in many instances, review by members of the public. Courts
have widely held that the submission of such copyrighted works to a
government agency (even if the works are, as a consequence, made available
to members of the public) does not constitute publication, and does deprive
the author of the protections of the Copyright Act. See Kunycia v. Melville
Realty Co., 755 F. Supp. 566, 574 (S.D.N.Y. 1990) (“Distribution of
plaintiff’s architectural drawings to contractors, landlords and building
authorities does not constitute a publication…The distribution was restricted
to those persons without whose participation the plans could not be given
practical effect. Implicit in these business relationships is the understanding
that such a distribution does not convey the right further to diffuse,
reproduce, distribute or sell the drawings without the architect’s
permission.”) (emphasis added); Intown Enterprises, Inc. v. Barnes, 721 F.
14

Supp. 1263, 1266 (N.D. Ga. 1989) (“The weight of authority holds that
neither the filing of architectural plans with permitting authorities nor
distributing such plans to subcontractors for bidding purposes constitutes
publication under the Copyright Act.”)
Just as architectural plans are not “published” when they are filed with
the building department, Plaintiff’s Works were not “published” when they
were filed with the court.
b.

The fact that the works are unpublished weighs
against a finding of fair use.

“The right of first publication implicates a threshold decision by the
author whether and in what form to release his work.” Harper & Row,
Publrs. v. Nation Enters., 471 U.S. at 553. The Supreme Court, quoting the
legislative history on the Copyright Act, explained that the author’s decision
not to publish is to be afforded substantial weight in the fair use analysis:
The Senate Report confirms that Congress
intended the unpublished nature of the work to
figure prominently in fair use analysis. In
discussing fair use of photocopied materials in the
classroom the Committee Report states:
“A key, though not necessarily
determinative, factor in fair use is whether
or not the work is available to the potential
user. If the work is ‘out of print’ and
unavailable for purchase through normal
channels, the user may have more
justification for reproducing it. . . . The
applicability of the fair use doctrine to
unpublished works is narrowly limited since,
although the work is unavailable, this is the
result of a deliberate choice on the part of
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the copyright owner. Under ordinary
circumstances, the copyright owner's ‘right
of first publication’ would outweigh any
needs of reproduction for classroom
purposes.” [S. Rep. No. 94-473, p. 65
(1975)] at 64.
471 U.S. at 553.
Plaintiff, as the copyright owner, has the right to control not only how,
but also if the Works are distributed. “A copyright owner’s right to exclude
others from using his property is fundamental and beyond dispute.” Authors
Guild v. Google Inc., 770 F. Supp. 2d 666, 681 (S.D.N.Y. 2011). See Fox
Film Corp. v. Doyal, 286 U.S. 123, 127 (1932) (“The owner of the
copyright, if he pleases, may refrain from vending or licensing and content
himself with simply exercising the right to exclude others from using his
property.”).
Here, Defendants arrogated to themselves the opportunity to publish
Plaintiff’s works, and in so doing violated Plaintiff’s exclusive rights. Thus,
the “nature of the works,” – i.e. the fact that they are unpublished, by the
Plaintiff’s choice – weighs very strongly against a finding of fair use.
c.

The filing of the Works with the Clerk of the Court
does not does not strip the copyright owner of its
rights.

As courts have routinely found with architectural drawings, it is
wholly illogical to argue that the filing of a copyrighted document with a
public agency, or a court, divests the owner of copyright protection. “Taken
to its extreme, [the] notion is that any copyrighted material submitted to a
public agency is a general publication to entitle the public agency to
unlimited dissemination of the material…Such notion is illogical and legally
16

unsupported.” McIntosh v. N. Cal. Universal Enters. Co., 670 F. Supp. 2d
1069, 1098 (E.D. Cal. 2009) (finding that submission of architectural plans
to a public agency did not constitute general publication).
In a case involving copyrighted material filed together with an
affidavit, portions of which were later published by the Washington Post,
one court explained that “the mere existence of a copyrighted work in an
open court file does not destroy the owner’s property interests in that work.
In the same way, the placement of a copyrighted book on a public library
shelf does not permit unbridled reproduction by a potential infringer.”
Religious Tech. Ctr. v. Lerma, 908 F. Supp. 1362, 1367 (E.D. Va. 1995).
“The rule could scarcely be otherwise. For if it were, the plaintiff’s deposit
of her infringed work as an exhibit to the infringement action would ipso
facto forfeit the copyright, as third parties would be free to reproduce it
under the guise of reproducing various aspects of ‘the judicial proceedings.’”
4-13 Melville B. Nimmer and David Nimmer, NIMMER ON COPYRIGHT
§ 13.05[2], n. 444.6 (Matthew Bender, Rev. Ed).
The rule should be the same with respect to legal pleadings as it is for
exhibits attached to an affidavit filed in court, architectural drawings, and
books in a public library. Submitting a document to a public agency or court
does not strip the owner of rights under the Copyright Act. The fact that the
Works were filed with the Clerk of Court does not make them free game for
poaching by the Defendants in the service of their own commercial interests.

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3.

The amount and substantiality of the portion used in
relation to the copyrighted use as a whole weighs heavily
against a finding of fair use.

The third “fair use” factor requires the Court to consider “the amount
and substantiality of the portion used in relation to the copyrighted work as a
whole.” 17 U.S.C. § 107(3). “Most contested instances of copyright
infringement are those in which the infringer has copied small portions,
quotations or excerpts of works and represents them in another form, for
example, a biography, criticism, news article or other commentary.” Basic
Books, 758 F. Supp. at 1530. This is not one of those cases.
Instead, Defendants copied every sentence, every word, and every
punctuation mark of the copyrighted Works. This was, in essence, nothing
more than photocopying someone else’s work and selling it for profit,
without adding anything new. “In this case, there was absolutely no literary
effort made by [the Defendants] to expand upon or contextualize the
materials copied. The excerpts in suit were merely copied, [put] into a new
form, and sold.” Basic Books, 758 F. Supp. at 1530-1531 (citations
omitted).
The copying of the entirety of the Works weighs very heavily against
a finding of fair use.
4.

The effect of the use upon the potential market for or value
of the copyrighted work does not favor a finding of fair use.

The final factor in the “fair use” analysis is “the effect of the use upon
the potential market for or value of the copyrighted work.” 17 U.S.C.
§ 107(4). Defendants will no doubt argue that there is no potential market
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for the Works, and that their unauthorized copying, distribution, and display
of the Works therefore has no effect on the potential market or value of
those works. That argument fails for a number of reasons.
First, and most obviously, it is apparent from the fact that the
Defendants have an active business in the sale of legal briefs and pleadings
that there is a market for such works. If briefs and pleadings were of no
value whatsoever, Defendants would not be able to attract subscribers to
these databases. While the value of each individual work in the Defendants’
briefs and pleadings databases may be a fraction of the whole, even that
fraction has value.
Second, “it is a mistake to view this factor, as do some courts, as
merely raising the question of the extent of damages to plaintiff caused by
the particular activities of the defendant. This factor, rather, poses the issue
of whether unrestricted and widespread conduct of the sort engaged in by the
defendant (whether in fact engaged in by the defendant or by others) would
result in a substantially adverse impact on the potential market for, or value
of, the plaintiff’s present work.” 4-13 Nimmer on Copyright § 13.05.
Thus, while Plaintiff has not actively marketed the Works, or sought
compensation for them in the same way that Defendants have, there can be
no “market” for attorneys to sell their legal briefs and pleadings if the
Defendants – both behemoths in the legal research field – can simply steal
the attorneys’ works and include them in their own subscription plans
without paying the authors. Any competing service, or licensing regime,
that would pay attorneys a fee for their works cannot compete with the
Defendants so long as the Defendants are allowed to acquire copyrighted
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works for free. In that way, the Defendants’ conduct, in the aggregate,
“result[s] in a substantially adverse impact on the potential market for, or
value of, the plaintiff’s present work.” 4-13 Nimmer on Copyright § 13.05.
Moreover, there is value to the Plaintiff in being able to control
dissemination and copying of legal briefs and pleadings. Plaintiff is in
competition with other law firms for clients, and wants to market the firm’s
expertise and experience. To the extent Defendants make Plaintiff’s work
product readily available to competing attorneys, those competing attorneys
have the ability to obtain Plaintiff’s work and offer Plaintiff’s work product
and expertise to their own clients.
The Defendants, therefore, cannot carry their burden of showing that
the fourth factor favors a finding of “fair use.” And, for all these reasons,
the Court should grant summary judgment dismissing Defendants’ “fair use”
affirmative defenses.
B.

Defendants did not have an express or implied license to copy,
distribute, and display the Works.
Both Defendants assert, as an affirmative defense, that they had a

“license” to copy, distribute, and display the works. [Lexis’s Second
Affirmative Defense (“implied license); West’s Ninth Affirmative Defense
(“The relief sought by Plaintiff is barred to the extent any allegedly
infringing acts were licensed or otherwise authorized”)] Those affirmative
defenses have no basis in the undisputed facts, and must be dismissed.
First, it is undisputed that Plaintiff did not grant the Defendants any
express license to exploit the Works. (Undisp. Facts ¶¶ 5-14)

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Second, it is undisputed that the Plaintiff’s registration with the
CM/ECF system did not expressly require Plaintiff to relinquish 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. (Undisp. Facts
¶ 26)
Third, there was no “implied license.” “[A]n implied license to use a
copyrighted work ‘cannot arise out of the unilateral expectations of one
party.’ There must be objective conduct that would permit a reasonable
person to conclude that ‘an agreement had been reached.’” Design Options,
Inc. v. BellePointe, Inc., 940 F. Supp. 86, 92 (S.D.N.Y. 1996) (quoting
Allen-Myland v. International Bus. Mach. Corp., 746 F. Supp. 520, 549
(E.D. Pa. 1990)). See also SHL Imaging, Inc. v. Artisan House, Inc., 117 F.
Supp. 2d 301, 317 (S.D.N.Y. 2000) (finding no implied license when “there
is no evidence of a meeting of the minds between plaintiff and defendant”).
Here, Defendants never spoke with Plaintiff about his Works (until
this lawsuit) (Undisp. Facts ¶¶ 13-14), much less had a “meeting of the
minds” that would grant them an implied license. It simply didn’t happen.
The Court therefore should dismiss, as a matter of law, Lexis’s Second
Affirmative Defense and West’s Ninth Affirmative Defense.
C.

Plaintiff’s claims are not barred by the statute of limitations.
Each of the Defendants asserts that the statute of limitations bars

Plaintiff’s claims. [Lexis’ Sixth Affirmative Defense; West’s Eighth
Affirmative Defense]

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The Copyright Act provides that “[n]o civil action shall be maintained
under the provisions of this title unless it is commenced within three years
after the claim accrued.” 17 U.S.C. § 507(b). For limitations purposes,
“each act of infringement is a distinct harm giving rise to an independent
claim for relief, although recovery is allowed only for those acts within three
years of suit.” Eyal R.D. Corp. v. Jewelex New York, Ltd., 576 F.Supp.2d
626, 644 (S.D.N.Y. 2008) (citation and internal quotation marks omitted).
Both of the Works were created within three years prior to the
institution of this lawsuit. (Undisp. Facts ¶¶ 2, 27) Therefore, there is no
dispute that Plaintiff’s claim for infringement of the Works concerns only
infringement that occurred within the limitations period. Defendants’
affirmative defenses based on the statute of limitations therefore should be
dismissed.
D.

Defendants’ remaining affirmative defenses are without merit.
There is no evidentiary support for the Defendants’ remaining

affirmative defenses, and the remaining defenses should be dismissed as a
matter of law.
Conclusion
The Court should grant summary judgment in favor of the Plaintiff,
and against the Defendants:
(i)

adjudging that Plaintiff is the copyright owner of the Works;

(ii)

adjudging that Defendants infringed the Plaintiff’s exclusive
rights to the Works;

(iii)

dismissing each of the Defendants’ affirmative defenses; and
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(iv)

Dated:

granting such other relief as the Court deems just and proper.

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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