White et al v. West Publishing Corporation et al

Filing 63

MEMORANDUM OF LAW in Opposition re: 53 MOTION for Summary Judgment (Notice of Motion Previously Filed).. Document filed by West Publishing Corporation. (Rich, Robert)

R. Bruce Rich
Benjamin E. Marks
Jonathan Bloom
John R. Gerba
WEIL, GOTSHAL & MANGES LLP
767 Fifth Avenue
New York, New York 10153
[phone]
Attorneys for Defendant West Publishing Corporation
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
--------------------------------------------------------------------x
EDWARD L. WHITE, P.C.,
Plaintiff,

12 Civ. 1340 (JSR)
Filed Electronically

v.
WEST PUBLISHING CORPORATION d/b/a West;
and REED ELSEVIER, INC. d/b/a LexisNexis,
Defendants.
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DEFENDANT WEST PUBLISHING CORPORATION’S MEMORANDUM OF LAW IN
OPPOSITION TO PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT

TABLE OF CONTENTS
Page(s)
PRELIMINARY STATEMENT .....................................................................................................1
COUNTER-STATEMENT OF FACTS ..........................................................................................3
ARGUMENT ...................................................................................................................................5
I.

WEST’S FAIR-USE DEFENSE .............................................................................5
A.

The Purpose and Character of West’s Use of the Motions Weigh
in Favor of Fair Use .....................................................................................5
1.

The commercial nature of the use is of little significance ...............5

2.

West used the works for a non-superseding,
transformative purpose.....................................................................7

B.
C.

Use of the Entire Work Does Not Weigh Against
Fair Use in This Context ............................................................................12

D.

The Absence of Actual or Potential Market Harm Confirms
That the Use Is Fair ....................................................................................12

E.
II.

The Factual Nature of the Copyrighted Works Weighs in
Favor of Fair Use .......................................................................................10

Balance of Factors......................................................................................14

WEST’S OTHER DEFENSES ..............................................................................15
A.

West – Not Plaintiff – Is Entitled to Summary Judgment on West’s
Affirmative Defenses Concerning the Unavailability of Actual
Damages, Statutory Damages, Attorney’s Fees, and Injunctive Relief .....15

B.

Plaintiff Is Not Entitled to Summary Judgment on West’s
Defenses Concerning Implied License, the Ownership of the
Copyrights at Issue, and the Lack of Valid Copyright Registrations ........15

C.

Plaintiff’s Abandonment of Infringement Claims Based on All
But Two Works Obviated West’s Remaining Affirmative Defenses ........17

CONCLUSION ..............................................................................................................................17

i

TABLE OF AUTHORITIES
Page(s)
CASES
A.V. ex rel. Vanderhye v. iParadigms,
562 F.3d 630 (4th Cir. 2009) ...........................................................................................5, 8, 12
Am. Geophysical Union v. Texaco,
60 F.3d 913 (2d Cir. 1994)............................................................................................... passim
Authors Guild, Inc. v. Hathitrust,
No. 11 CV 63551 (HB), 2012 WL4808939 (S.D.N.Y. Oct. 10, 2012) ................... 8, 10, 12-13
Basic Books, Inc. v. Kinko’s Graphics Corp.,
758 F. Supp. 1522 (S.D.N.Y. 1991)...........................................................................................2
Bill Graham Archives v. Dorling Kindersley Ltd.,
448 F.3d 605 (2d Cir. 2006)............................................................................................. passim
Blanch v. Koons,
467 F.3d 244 (2d Cir. 2006)............................................................................................. 8-9, 14
Calkins v. Playboy Enters., Int’l,
561 F. Supp. 2d 1136 (E.D. Cal. 2008)............................................................................ passim
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994) ............................................................................................................... 5-6
Eldred v. Ashcroft,
537 U.S. 186 (2003) .................................................................................................................14
Haberman v. Hustler Magazine, Inc.,
626 F. Supp. 201 (D. Mass. 1986) .....................................................................................12, 14
Harper & Row, Publ’rs, Inc. v. Nation Enters.,
471 U.S. 539 (1985) ....................................................................................................... 6, 11-12
Infinity Broad. Corp. v. Kirkwood
150 F.3d 104, 108 (2d Cir. 1998)...............................................................................................8
Kelly v. Arriba Soft Corp.,
336 F.3d 811 (9th Cir. 2003) ...........................................................................................6, 8, 12
Nunez v. Caribbean Int’l News Corp.,
235 F.3d 18 (1st Cir. 2000) ................................................................................................ 11-12
NXIVM Corp. v. Ross Inst.,
364 F.3d 471 (2d Cir. 2004).......................................................................................................6

ii

Perfect 10, Inc. v. Amazon.com, Inc.,
508 F.3d 1146 (9th Cir. 2007) .................................................................................................12
Rotbart v. J.R. O’Dwyer Co, Inc.,
No. 94 Civ. 2091 (JSM), 1995 WL 46625 (S.D.N.Y. Feb. 7, 1995) .......................................11
Salinger v. Random House, Inc.,
811 F.2d 90 (2d Cir. 1987).......................................................................................................11
Sedgwick Claims Mgmt. Servs., Inc. v. Delsman,
No. C 09-1468 SBA, 2009 WL 2157573 (N.D. Cal. 2009) .....................................................12
Sony Corp. of Am. v. Universal City Studios, Inc.,
464 U.S. 417 (1984) ...................................................................................................................5
Swatch Group Mgmt. Servs. Ltd. v. Bloomberg L.P.,
861 F. Supp. 2d 336 (S.D.N.Y. 2012).............................................................................. 6-7, 12
UMG Recordings v. Mp3.com, Inc.,
92 F. Supp. 2d 349 (S.D.N.Y. 2000)............................................................................. 1-2, 9-10
Wilson v. Brennan,
666 F. Supp. 2d 1242 (D.N.M. 2009) ......................................................................................16
STATUTES
17 U.S.C. § 101 ..............................................................................................................................16
17 U.S.C. § 102(b) .........................................................................................................................14
17 U.S.C. § 107 ............................................................................................................................ 5-6
OTHER AUTHORITIES
4 Melville B. & David Nimmer, Nimmer on Copyright § 13.05[B][1] (2011) ...............................8

iii

Defendant West Publishing Corporation (“West”) submits this memorandum of law in
opposition to Plaintiff’s motion for summary judgment.
PRELIMINARY STATEMENT
Plaintiff and West agree that this case can and should be resolved on summary judgment.
As we explained in support of West’s own summary judgment motion, the conduct of which
Plaintiff complains – the inclusion of two of Plaintiff’s publicly filed motions in West
subscription databases – is clearly fair use. A finding of fair use follows inescapably from the
fact that West has made a transformative use of Plaintiff’s publicly available, non-confidential,
fact-driven court filings in a manner that has no adverse impact on any market for Plaintiff’s
works or on Plaintiff’s incentive to create them. Neither that West is a for-profit entity that
charges fees to its subscribers nor that West copied Plaintiff’s works in their entirety points
toward a different conclusion.
Plaintiff apparently believes it self-evident that West, by making copies of two of its
publicly filed motions and providing access to them as part of a text-searchable, hyperlinked
database containing millions of other court filings, is “steal[ing] intellectual property.”
Plaintiff’s Mem. of Law in Support of Mot. Summ. J. 1, ECF No. 55 (“Pl. Mem.”). But fair use,
by definition, is not stealing, and Plaintiff’s attempt to surmount West’s fair-use defense falls far
short.
Plaintiff reaches the wrong conclusion on every one of the four statutory fair-use factors.
As to the first factor – the purpose and character of the use – Plaintiff misses the thrust of West’s
argument. West does not rely solely or even primarily on the physical enhancement of Plaintiff’s
motions by West but on the entirely new, non-superseding purpose for which West uses the
documents as part of its legal research database. In the cases cited by Plaintiff, such as American
Geophysical Union v. Texaco, 60 F.3d 913 (2d Cir. 1994), UMG Recordings v. Mp3.com, Inc.,

92 F. Supp. 2d 349 (S.D.N.Y. 2000), and Basic Books, Inc. v. Kinko’s Graphics Corp., 758 F.
Supp. 1522 (S.D.N.Y. 1991), the fair-use defense failed because the copies were directed to the
same end users, for the same purposes, as the originals. There is no such overlap here. Plaintiff
also overemphasizes the commercial purpose of West’s conduct, which is all but irrelevant in
view of the transformative purpose of West’s copying and the public benefits that flow from
West’s transformative use.
As to the fourth factor – harm to the potential market for or value of the work – Plaintiff’s
failure to identify any evidence of harm to the actual or any potential market for the works also
sets this case apart from the cases Plaintiff cites. In American Geophysical Union, Mp3.com,
and Basic Books the infringing copies were substitutes for the copyrighted works in wellestablished markets or obvious potential markets that the plaintiffs had taken steps to enter.
Here, Plaintiff’s principal, Mr. White, has conceded the absence of any comparable harm.
Plaintiff has never attempted, nor been asked, to license any of its works, let alone the motions at
issue. The fact that West’s conduct admittedly has no effect on Plaintiff’s incentive to write
briefs and motions to advance its clients’ interests should be dispositive.
Plaintiffs’ arguments as to what in this case are the less significant second and third
factors also miss the mark. Plaintiff emphasizes that its works are unpublished, but that does not
weigh against fair use because the rationales for protecting unpublished works in other
circumstances do not apply here. The motions already were publicly available before West
added them to its database; there was no interference with Plaintiff’s right to control the first
public appearance of its work or intrusion on Plaintiff’s privacy. That West copied the motions
in their entirety also does not assist Plaintiff. Courts recognize that copying entire works does
not cut against fair use if the extent of the copying was necessary to accomplish the defendant’s

2

transformative purpose. There is no dispute that copying court filings in their entirety is
necessary to advance the transformative research and archival purposes of West’s Litigator™
database.
Plaintiff’s facile analogy to the unauthorized copying of library books actually helps to
illustrate why West’s conduct is fair use. Unlike with library books, the public is invited to copy
court filings via the PACER system as well as through the court clerk’s office. Indeed, the
permitted copying of such documents reflects a federal policy of ensuring access to information
about the workings of the judicial process. Moreover, whereas the sale of each unauthorized
copy of a library book in Plaintiff’s analogy would substitute directly for the sale of an
authorized copy, there is no comparable substitution here. If copies were not available through
West, no one would pay Plaintiff for the right to obtain a copy. Anyone can instead obtain it
from PACER or the courthouse without permission from or payment to Plaintiff.
In the end, Plaintiff cannot overcome its failure to develop any evidence that West’s
conduct has any impact on the market for Plaintiff’s works or on the incentive to create them.
For these reasons and those discussed in more detail below, West – not Plaintiff – is entitled to
summary judgment on fair-use grounds. Plaintiff’s motion also fails because West – not
Plaintiff – is entitled to summary judgment on the unavailability of actual damages, statutory
damages, attorney’s fees, and injunctive relief and, as we explain below, because there are
disputed fact issues concerning certain of West’s other affirmative defenses. Accordingly,
Plaintiff’s motion for summary judgment should be denied.
COUNTER-STATEMENT OF FACTS
West set forth the material facts concerning its use of Plaintiff’s works and its fair-use
defense in its motion for summary judgment, see Mem. of Law in Supp. of Def. West Publ’g

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Corp.’s Mot. Summ. J. 4-9, ECF No. 47 (“West Sum. J. Mem.”), and incorporates those facts by
reference here. While West assumed (without conceding) that Plaintiff could establish copyright
ownership of the works at issue (the “Motions”) for purposes of West’s own motion for
summary judgment, West Sum. J. Mem. 10 n.3, there are material facts in dispute concerning
ownership that preclude summary judgment for Plaintiff. The additional facts relevant to this
aspect of West’s opposition to Plaintiff’s motion for summary judgment follow.
Plaintiff’s copyright registrations for the Motions do not accurately set forth the
authorship of the Motions. Plaintiff was co-counsel with another attorney – Martin S. High – in
the Beer v. XTO Energy, Inc. litigation. See White Dep. 60:7-21; High Dep. 24:17-25. 1 High
was not, and is not, an employee of Plaintiff. See White Dep. 20:20-22; High Dep. 10:4-14. Nor
has High executed a written agreement with Plaintiff concerning ownership of the intellectual
property rights in materials he drafts, in whole or in part, for cases on which he works with
Plaintiff. See White Dep. 22:9-12; High Dep. 19:19-22. Mr. High was the principal author of
the Beer Motion in Limine. See High Dep. 28:20-31:22. He also drafted significant portions of
the Beer Motion for Summary Judgment, including the legal argument section. See High Dep.
26:8-28:19, 65:22-79:22. His name appears on the cover page and in the signature block of both
motions. See High Dep. 26:8-27:21, 28:20-29:20. Plaintiff’s copyright registrations fail to
disclose Mr. High’s authorial role. Blue Decl. Exs. F, G, ECF No. 54. Moreover, they describe
the Motions as published, id., when, as Plaintiff now concedes, they are unpublished.
1

“White Dep.” refers to the transcript of the August 30, 2012 Deposition of Edward L. White,
and “High Dep.” refers to the transcript of the September 6, 2012 Deposition of Martin S. High.
Excerpts with the pages cited herein are attached the October 23, 2012 Declaration of Jonathan
Bloom (“Bloom Decl.”), which is submitted herewith. In addition, West refers herein to the
October 4, 2012 Declaration of Tom Leighton, ECF No. 50 (“Leighton Decl.”), and the October
5, 2012 Declarations of John R. Gerba, ECF No. 62 (“Gerba Decl.”), and David Blackburn, ECF
No. 48 (“Blackburn Decl.”), that were submitted in support of West’s motion for summary
judgment.

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ARGUMENT
In Point I, we demonstrate that West – not Plaintiff – is entitled to summary judgment on
West’s fair-use defense. In Point II.A, we show that West – not Plaintiff – is entitled to
summary judgment on West’s affirmative defenses directed at relief. In Point II.B, we address
the other defenses that preclude summary judgment for Plaintiff.
I.

WEST’S FAIR-USE DEFENSE
West explained in its summary judgment motion why its use of Plaintiff’s Motions is fair.

See West Sum. J. Mem. 10-20. Nothing in Plaintiff’s brief calls into question any of West’s
arguments. We discuss the errors in Plaintiff’s analysis of the four statutory fair-use factors
below. See 17 U.S.C. §107.
A.

The Purpose and Character of West’s Use of the Motions Weigh in Favor of
Fair Use
1.

The commercial nature of the use is of little significance

Plaintiff begins its discussion of the first fair-use factor by reciting the since-abandoned
principle that “every commercial use of copyrighted material is presumptively an unfair
exploitation.” Pl. Mem. 9 (quoting Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S.
417, 451 (1984)). From this erroneous premise, Plaintiff then points to the commercial benefit
West derives from the “the sale of legal research materials” when it “charge[s] subscribers for
access to databases containing legal briefs and pleadings, including the databases that included
the Works,” and contends that this fact weighs meaningfully against a finding of fair use. Pl.
Mem. 10. It does not.
The U.S. Supreme Court has expressly rejected the notion that commercial uses of
copyrighted material are presumptively unfair. Campbell v. Acuff-Rose Music, Inc., 510 U.S.
569, 584 (1994); see also, e.g., A.V. ex rel. Vanderhye v. iParadigms, 562 F.3d 630, 639 (4th

5

Cir. 2009). 2 Rather, in assessing the impact of commercial use on a determination of whether
copying is fair, courts apply “a more subtle, sophisticated approach.” Am. Geophysical Union,
60 F.3d at 921. Instead of presuming unfairness, courts consider factors such as whether the use
is transformative, whether the defendant is seeking to capitalize on the expressive value of the
plaintiff’s works without paying a “customary price,” and whether there is a public interest in the
defendant’s dissemination of information. See Bill Graham Archives v. Dorling Kindersley Ltd.,
448 F.3d 605, 609-12 (2d Cir. 2006); Kelly v. Arriba Soft Corp., 336 F.3d 811, 818-20 (9th Cir.
2003); Swatch Group Mgmt. Servs. Ltd. v. Bloomberg L.P., 861 F. Supp. 2d 336, 340 (S.D.N.Y.
2012). Each of these considerations weighs in favor of fair use here.
First, as explained in West’s motion for summary judgment and as discussed in Point I.B
below, West’s use of the Motions is transformative. The commercial nature of its use therefore
is “properly discounted.” NXIVM Corp. v. Ross Inst., 364 F.3d 471, 478 (2d Cir. 2004); see
also Campbell, 510 U.S. at 584.
Second, although West is a for-profit entity, “‘[t]he crux of the profit/non-profit
distinction is not whether the sole motive of the use is monetary gain but whether the user stands
to profit from exploitation of the copyrighted material without paying the customary price.’”
Bill Graham Archives, 448 F.3d at 612 (quoting Harper & Row, Publ’rs, Inc. v. Nation Enters.,
471 U.S. 539, 562 (1985)). Here, there is no “customary price,” Plaintiff concedes that anyone
may copy the Motions without his consent at the courthouse or through PACER, and he has
2

The commercial or nonprofit educational purpose of a work “is only one element of the first
factor enquiry into its purpose and character,” Campbell, 510 U.S. at 584, and it is not
necessarily an important one. As the Supreme Court has noted, “nearly all of the illustrative uses
listed in the preamble paragraph of § 107 . . . ‘are generally conducted for profit.’” Id. (citation
omitted); see also Am. Geophysical Union, 60 F.3d at 921 (“Since many, if not most, secondary
users seek at least some measure of commercial gain from their use, unduly emphasizing the
commercial motivation of a copier will lead to an overly restrictive view of fair use.”).

6

never attempted, or been asked by anyone, to license his work. See Gerba Decl. Ex. E, Nos. 2-3,
5-6 (admitted pursuant to Fed. R. Civ. P. 36(a)(3)); White Dep. 78:22-79:7, 128:11-129:4, 130:918, 164:19-165:19, 202:21-203:18.
Third, commerciality is given little weight when the use serves a public interest. See
West Sum. J. Mem. 13-14; Am. Geophysical Union, 60 F.3d at 922 (“[C]ourts are more willing
to find a secondary use fair when it produces a value that benefits the broader public interest.”);
Swatch, 861 F. Supp. 2d at 341 (finding first factor weighed in favor of defendant (Bloomberg)
on ground that its commercial use of plaintiff’s earnings call “advanced the public interest of
furthering full, prompt and accurate dissemination of business and financial news”). Plaintiff
does not dispute that West’s enhancement of access to court filings serves a valuable public
interest.
In short, the mere fact that West charges subscribers for access to its database is of little
consequence to the overall fair-use assessment.
2.

West used the works for a non-superseding, transformative purpose

Conceding that whether the use is transformative is most critical to the first-factor
analysis, Plaintiff disputes the transformative nature of West’s use. See Pl. Mem. 10-13. But
Plaintiff’s assertion that West “simply made verbatim copies of the Works” that were “in no way
transformative,” id., is not only counterfactual but contrary to its allegation that West “copied,
digitized, transformed, and packaged [the Works] into databases that are sold for profit,” Am.
Compl. ¶ 23, ECF No. 37 (emphasis added).
More important, Plaintiff errs in contending that West’s use of the Motions cannot be
transformative because West assertedly “adds nothing of value to the copyrighted expression
owned by Plaintiff.” Pl. Mem. 12. As the Fourth Circuit recently observed: “This argument is
clearly misguided. The use of a copyrighted work need not alter or augment the work to be

7

transformative in nature. Rather, it can be transformative in function or purpose without altering
or actually adding to the original work.” Vanderhye, 562 F.3d at 639; see id. at 640 (finding
archiving of verbatim copies of student papers in a database used to detect plagiarism to be
transformative and fair use). The Second Circuit and other courts are in accord. See Bill
Graham Archives, 448 F.3d at 609 (finding transformative use of entire works where defendant’s
“purpose in using the copyrighted images at issue . . . is plainly different from the original
purpose for which they were created”); Kelly, 336 F.3d at 819 (“Because Arriba’s use is not
superseding Kelly’s use but, rather, has created a different purpose for the images, Arriba’s use is
transformative.”); see also Calkins v. Playboy Enters. Int’l, 561 F. Supp. 2d 1136, 1141 (E.D.
Cal. 2008) (“[B]ecause [the defendant] used the Photograph in a new context to serve a different
function (inform and entertain Playboy readers) than the original function (gifts for family and
friends), [the defendant’s] use did not supersede the function of the original Photograph, and
therefore [its] use is transformative.”); 4 Melville B. & David Nimmer, Nimmer on Copyright §
13.05[B][1] at 13-212 (2011) (“[I]f, regardless of medium, defendant’s work performs a different
function from plaintiff’s, then notwithstanding its use of substantially similar material, the
defense of fair use may prevail.”). 3
Although West does add important transformative elements to the documents it includes
in Litigator™, such as making them text-searchable and linking them to other documents in the

3

The dictum in Infinity Broadcasting Corp. v. Kirkwood that “difference in purpose is not quite
the same thing as transformation,” 150 F.3d 104, 108 (2d Cir. 1998), does not reflect the more
recent evolution in how transformativeness is conceptualized in the Second Circuit in cases such
as Bill Graham Archives and Blanch v. Koons, 467 F.3d 244, 252-53 (2d Cir. 2006). See also
Authors Guild, Inc. v. Hathitrust, No. 11 CV 63551 (HB), 2012 WL 4808939, at *11 (S.D.N.Y.
Oct. 10, 2012) (“A transformative use may be one that actually changes the original work.
However, a transformative use can also be one that serves an entirely different purpose.”).

8

database, 4 West’s argument does not rely solely, or even primarily, on these physical
transformations. Nor does West claim it has made a transformative use simply because it has
made documents accessible in a different physical format, as Plaintiff wrongly suggests. See Pl.
Mem. 12-13. Rather, West contends that its use is transformative because it equipped the
Motions to serve a completely different, non-superseding purpose than that for which they were
created: the provision of legal services. See Bill Graham Archives, 448 F.3d at 610 (finding
secondary use transformative because it served a “separate and distinct” purpose from the
original).
There is no dispute that the purpose of West’s use of the Motions as part of its database
of public court filings is entirely “separate and distinct” from Plaintiff’s original purpose in
creating them, which was to provide legal representation to its clients. See White Dep. 69:14-24,
76:13-77:21, 202:12-20. West’s database does not use the Motions to substitute for Plaintiff’s
legal advocacy or for any potential market into which Plaintiff might sell copies of its briefs;
rather, it offers an entirely new, transformative product. See Leighton Decl. ¶¶ 3, 6-7, 11;
Blackburn Decl. ¶¶ 4-6, 8. In Blanch v. Koons, the Second Circuit found that the “sharply
different objectives that Koons had in using, and Blanch had in creating, [the copyrighted work]
confirms the transformative nature of the use.” 467 F.3d 244, 252 (2d Cir. 2006) (citation
omitted). No differently, the distinct objectives that West has in using, and White had in
creating, the Motions confirm the transformative nature of West’s use.
Plaintiff’s reliance on cases such as American Geophysical Union and Mp3.com is
unavailing. Plaintiff argues that American Geophysical Union is “particularly instructive on the
issue of ‘transformative’ use,” see Pl. Mem. 11, but, unlike this case, the copies at issue in
4

See Leighton Decl. ¶¶ 6-7.

9

American Geophysical Union were made by the defendant “for the same basic purpose that one
would normally seek to obtain the original.” 60 F.3d at 918. The court observed that the
defendant’s copying was “part of a systematic process of encouraging employee researchers to
copy articles so as to multiply available copies while avoiding payment.” Id. at 920. Because an
untransformed copy of plaintiff’s work by the defendant in that case was “likely to be used
simply for the same intrinsic purpose as the original,” there was “limited justification for a
finding of fair use.” Id. at 923. By contrast, West’s copies were offered to an entirely different
audience, and for an entirely different purpose, than were the originals. There is, moreover, no
avoidance of payment to Plaintiff. As noted above, anyone can copy the Motions from PACER
without Plaintiff’s consent and without compensation to him.
This case is likewise easily distinguished from Mp3.com: West’s enhancement of the
Motions and their inclusion in West’s text-searchable, hyperlinked research database is not mere
retransmission in another medium; it is transformative use for an entirely different audience and
entirely different purposes. See Authors Guild, 2012 WL 4808939, at *11-*12 & n.24.
Moreover, unlike the plaintiffs in MP3.com, White concedes he has made no effort to license its
Motions or to develop a potential market for them. See Gerba Decl. Ex. E, Nos. 2-3 (admitted
pursuant to Fed. R. Civ. P. 36(a)(3)); White Dep. 78:22-79:7, 202:21-203:18.
***
In sum, the purpose and character of West’s use of Plaintiff’s Motions strongly favors
fair use.
B.

The Factual Nature of the Copyrighted Works Weighs in Favor of Fair Use

Plaintiff implicitly concedes that the Motions are factual in nature, which tips factor two
in favor of fair use. See West Sum. J. Mem. 17. Plaintiff’s sole argument as to this factor is that
the Motions remain unpublished (which West does not dispute). See Pl. Mem. 13-17. Although

10

the unpublished nature of the Motions is relevant to Plaintiff’s eligibility for statutory damages
and attorneys’ fees, see West Sum. J. Mem. 21-23, it does not bear on West’s fair-use defense
because Plaintiff had already filed the Motions and made them available to the public without
restriction prior to any act of copying by West. See, e.g., Rotbart v. J.R. O’Dwyer Co, Inc., No.
94 Civ. 2091 (JSM), 1995 WL 46625, at *4 (S.D.N.Y. Feb. 7, 1995).
Courts have disfavored unauthorized use of unpublished works for one of two reasons,
neither of which applies here. First, courts have recognized that the use of unpublished works is
less likely to be fair use if it interferes with the author’s right to control and profit from the first
public appearance of the work. See, e.g., Harper & Row, Publ’rs, Inc. v. Nation Enters., 471
U.S. 539, 555, 564 (1985); see also, e.g., Calkins, 561 F. Supp. 2d at 1142. In Harper & Row,
the Court determined that a pre-publication “scoop” of President Ford’s memoirs by The Nation
magazine was not a fair use of the copyrighted material in part because it interfered with the
right of President Ford publisher to control the “first public appearance” of the newsworthy
material and resulted in a cancelled contract for a similar (but licensed) use of excerpts by
another magazine. 471 U.S. at 564. Second, some courts have recognized, at least implicitly, a
privacy interest in unpublished materials that were never intended for publication at all, such as
diaries and personal letters. See, e.g., Salinger v. Random House, Inc., 811 F.2d 90 (2d Cir.
1987) (unpublished letters).
The logic of these cases does not apply to Plaintiff’s Motions. See Nunez v. Caribbean
Int’l News Corp., 235 F.3d 18, 24 (1st Cir. 2000). Although the Motions are unpublished, there
has been no interference by West with Plaintiff’s right to control the first public appearance of
them, and no privacy interest is implicated. The Motions already had made their “first public
appearance” and were widely available to any member of the public at the courthouse and

11

through PACER. See Gerba Decl. Ex. E, Nos. 5-6 (admitted pursuant to Fed. R. Civ. P.
36(a)(3)); White Dep. 71:3-72:3, 76:24-77:11. In marked contrast to the copying at issue in
Harper & Row, West’s copying had neither the “intended purpose” nor even the “incidental
effect” of supplanting Plaintiff’s right to control the first public appearance of the Motions.
Harper & Row, 471 U.S. at 562; see also Vanderhye, 562 F.3d at 641.
Accordingly, the second factor favors fair use.
C.

Use of the Entire Work Does Not Weigh Against Fair Use in This Context

Plaintiff contends erroneously that West’s “copying of the entirety of the Works weighs
very heavily against a finding of fair use.” Pl. Mem. 18. Plaintiff simply ignores the many cases
in which courts have held that copying the entire work does not weigh against a finding of fair
use if the copying is necessary to achieve the transformative purpose of the use. See West Sum.
J. Mem. 18 (citing Bill Graham Archives, 448 F.3d at 613; Kelly, 336 F.3d at 821; Nunez, 235
F.3d at 24; Swatch, 861 F. Supp. 2d at 342); see also, e.g., Perfect 10, Inc. v. Amazon.com, Inc.,
508 F.3d 1146, 1167-68 (9th Cir. 2007); Authors Guild, 2012 WL 4808939, at *12; Sedgwick
Claims Mgmt. Servs., Inc. v. Delsman, No. C 09-1468 SBA, 2009 WL 2157573, at *6 (N.D. Cal.
2009); Calkins, 561 F. Supp. 2d at 1142-43; Haberman v. Hustler Magazine, Inc., 626 F. Supp.
201, 212 (D. Mass. 1986). West explained in its moving brief why copying the Motions in their
entirety is necessary to fulfill West’s transformative purpose, see West Sum. J. Mem. 18-19, and
refers the Court to those arguments.
The third factor is neutral.
D.

The Absence of Actual or Potential Market Harm Confirms That the Use Is
Fair

In its moving brief, West discussed the absence of any secondary market for Plaintiff’s
works. West explained that Plaintiff’s inability to articulate any way in which a market for, or

12

the value of, its works has been adversely affected by West’s conduct demonstrates an absence
of market harm. See West Sum. J. Mem. 16-17. Tellingly, Plaintiff does not cite a single case or
shred of evidence to support its discussion of market harm.
Plaintiff first contends that because West and Lexis offer databases that contain legal
briefs and pleadings, there must be a market for such works and asserts that West and Lexis have
foreclosed the development of a licensing market. See Pl. Mem. 19. But Plaintiff’s invocation
of an imagined “competing service” that would pay for its motions cannot support a finding of
potential market harm. The market-harm inquiry is limited to possible impacts on “traditional,
reasonable, or likely to be developed markets.” Am. Geophysical Union, 60 F.3d at 930. The
purely hypothetical market to which Plaintiff alludes is none of those. Plaintiff’s suggestion that,
in the absence of West and Lexis, erstwhile competitors and a licensing regime would emerge is
rank speculation. 5 See Authors Guild, 2012 WL 4808939, at *13.
Plaintiff has no right to interfere with West’s exploitation of a transformative market, and
the imagined loss of prospective revenues from a hypothetical future competitor in that same
transformative market is not cognizable market harm. As the Court of Appeals has observed:
Were a court automatically to conclude in every case that potential
licensing revenues were impermissibly impaired simply because
the secondary user did not pay a fee for the right to engage in the
use, the fourth factor would always favor the copyright owner. . . .
[C]opyright owners may not preempt exploitation of
transformative markets . . . .
Bill Graham Archives, 448 F.3d at 614-15 (citation and quotation omitted); see also Authors
Guild, 2012 WL 4808939, at *13.

5

The only evidence on this point indicates that no such licensing regime would emerge.
Blackburn Decl. ¶¶ 7, 9; Leighton Decl. ¶ 14.

13

Plaintiff is left to contend that, by making the Motions “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.” Pl. Mem. 20. This is no more than a
complaint about public access to court filings. Copyright law does not prevent other attorneys
from using legal theories and ideas gleaned from Plaintiff’s filings; ideas, as opposed to the
author’s particular expression of them, are not protected by copyright. See 17 U.S.C. § 102(b);
Eldred v. Ashcroft, 537 U.S. 186, 219 (2003) (“[Copyright law] distinguishes between ideas and
expression and makes only the latter eligible for copyright protection.”). Nor does this purported
prospective harm flow from West’s conduct. Any attorney interested in competing with White
could simply log onto PACER or visit a courthouse to obtain copies of Plaintiff’s works. And
even this harm is speculative: White cannot identify a single instance in which a competing
attorney used West to obtain copies of the Motions (or any other filing) in order to compete with
him.
The complete absence of harm to any actual or potential market for the Motions weighs
heavily in favor of fair use. See, e.g., Blanch, 467 F.3d at 258.
E.

Balance of Factors

Three of the four statutory fair use factors weigh heavily in favor of fair use, and the
remaining factor (the third) is neutral. Plaintiff does not allude to any other equitable
consideration that weighs against fair use, nor could it credibly do so. 6 In light of the foregoing,
Plaintiff’s motion for summary judgment should be denied, and West’s motion for summary
judgment on its fair-use defense should be granted.
6

Other courts have considered factors such as whether: (i) the works were fairly acquired by the
defendant (they were); (ii) the defendant attempted to palm off the plaintiff’s work as its own
(West did not); and (iii) the defendant acted in bad faith (West did not). See, e.g., Haberman,
626 F. Supp. at 214.

14

II.

WEST’S OTHER DEFENSES
A.

West – Not Plaintiff – Is Entitled to Summary Judgment on West’s
Affirmative Defenses Concerning the Unavailability of Actual Damages,
Statutory Damages, Attorney’s Fees, and Injunctive Relief

In a single sentence, Plaintiff moves for summary judgment on West’s affirmative
defenses concerning the unavailability of various forms of relief in this case. Pl. Mem. 22
(seeking dismissal of, inter alia, West’s Tenth, Eleventh, Twelfth, and Thirteenth Affirmative
Defenses). In support of its motion for summary judgment, West demonstrated that, even if the
Court were to deny summary judgment to West on its fair-use defense, the record is ripe for the
Court now to rule, as a matter of law, that Plaintiff is not entitled to actual damages, statutory
damages, attorney’s fees, or injunctive relief even if Plaintiff were to secure a favorable ruling on
liability. See West Sum. J. Mem. 21-25. West refers the Court to those arguments. Plaintiff’s
ipse dixit assertion that it is entitled to judgment as a matter of law on those defenses has no
merit.
B.

Plaintiff Is Not Entitled to Summary Judgment on West’s Defenses
Concerning Implied License, the Ownership of the Copyrights at Issue, and
the Lack of Valid Copyright Registrations

Plaintiff asserts that it is entitled to summary judgment on West’s defenses concerning
implied license (Ninth Affirmative Defense), ownership of the copyrights at issue (Second
Affirmative Defense), and the lack of valid copyright registrations (First Affirmative Defense).
Pl. Mem. 20-22. West asserted its entitlement to summary judgment on the basis of implied
license and joined in the arguments made by Defendant Reed Elsevier Inc. in its summary
judgment motion. See West Sum. J. Mem. 20 n.9. West similarly joins in Reed Elsevier’s
opposition to Plaintiff’s motion for summary judgment on the defense of implied license and
incorporates the arguments in opposition by reference herein. At a minimum, there are factual
questions that preclude summary judgment for Plaintiff on West’s Ninth Affirmative Defense.

15

Plaintiff also fails in its effort to defeat West’s First and Second Affirmative Defenses by
relying on its copyright registrations for the Motions and the presumption of ownership
conferred by a valid copyright registration. As Plaintiff acknowledges, the presumption of
copyright ownership conferred by a copyright registration may be rebutted. Pl. Mem. 5. On this
record, Plaintiff is not even entitled to a presumption of ownership because its registrations
inaccurately describe the authorship of the Motions and incorrectly claim a date of first
publication for works that Plaintiff now concedes, see Pl. Mem. 14-15, are unpublished. See
Wilson v. Brennan, 666 F. Supp. 2d 1242, 1251-52 (D.N.M. 2009) (finding that the “correct
approach” to dealing with material omissions, even if inadvertent, from a registration application
“is to deprive the party of the presumption of validity that ordinarily attaches to a registered
copyright . . . and to require the party to establish that the works are entitled to copyright
protection”).
Plaintiff’s co-counsel in the Beer v. XTO Energy, Inc. litigation – Martin High – testified
at length concerning authorship of the Motions. See High Dep. 26:8-31:22, 65:22-79:22. He
explained that he – not Edward White – was the primary drafter of the Beer Motion in Limine
and that he drafted the legal argument section of the Beer Motion for Summary Judgment. See
id. Plaintiff does not own the copyrights in documents written by Mr. High under the work-forhire doctrine because Mr. High is not an employee of Plaintiff, and he has no written agreement
with Plaintiff concerning copyright ownership. See 17 U.S.C. § 101; High Dep. 10:4-14, 19:1922; White Dep. 20:20-22, 22:9-12. The extent of White’s contributions to the Motions (as
opposed to High’s), and whether White’s contributions are sufficiently original to warrant
copyright protection is a matter that remains in dispute. Nor is there evidence to show whether
either Motion is a “joint work” within the meaning of section 101.

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These fact issues are sufficient to rebut any presumption of ownership and raise genuine
issues of fact that defeat Plaintiff’s motion for summary judgment on West’s First and Second
Affirmative Defenses. 7
C.

Plaintiff’s Abandonment of Infringement Claims Based on All But Two
Works Obviated West’s Remaining Affirmative Defenses

During discovery, after West served its answer to the Amended Complaint, Plaintiff
drastically narrowed the scope of this action, limiting the works at issue from all of the registered
works it purports to own to just the two Motions See Bloom Decl. Exs. C, D. West is not
pursuing its remaining affirmative defenses as to these two works.
CONCLUSION
For the foregoing reasons, Plaintiff’s motion for summary judgment should be denied.

Dated: October 23, 2012
Respectfully submitted,
WEIL, GOTSHAL & MANGES LLP
By:

/s/ R. Bruce Rich
R. Bruce Rich
Benjamin E. Marks
Jonathan Bloom
John R. Gerba
767 Fifth Avenue
New York, New York 10153
[phone]
[e-mail]

Attorneys for Defendant West Publishing Corp.

7

These fact issues as to authorship and ownership illustrate the complications that would be
involved in maintaining a database like Litigator™ if the Court were to recognize a right in the
copyright owners in legal filings to require West to license their works.

17