White et al v. West Publishing Corporation et al

Filing 68

MEMORANDUM OF LAW in Opposition re: 46 MOTION for Summary Judgment., 45 MOTION for Summary Judgment.. 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 OPPOSITON TO DEFENDANTS’
MOTIONS 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 ........................................................................................................... iii

Preliminary Statement......................................................................................................... 1

I.

Defendants’ copying is not protected by the doctrine of “fair use.”....................... 2

A.

The purpose and character of the Defendants’ use of the works
weighs heavily against a finding of “fair use.” ........................................... 2

1.

The Defendants’ copying was not transformative. ......................... 2

2.

The Defendants’ use is commercial in nature................................. 7

B.

The nature of the registered works weighs against a finding of fair
use. .............................................................................................................. 7

C.

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. ............................................................................................................ 10

D.

The effect of the use upon the potential market for or value of the
copyrighted work does not favor a finding of fair use.............................. 12

E.

The Defendants’ argument that they are providing a public benefit
does not support a finding of “fair use” .................................................... 14

II.

Defendants did not have an express or implied license to copy, distribute, and
display the Works. ................................................................................................ 18

III.

Plaintiff is Entitled to Remedies for Defendants’ Infringement. .......................... 20

Conclusion

................................................................................................................... 22

ii

Table of Authorities

C ASES

Arica Inst., Inc. v. Palmer, 970 F.2d 1067 (2d Cir. 1992) .................................................. 9
Authors Guild v. Google Inc., 770 F. Supp. 2d 666 (S.D.N.Y. 2011) ........................ 17, 21
Basic Books, Inc. v. Kinko's Graphics Corp., 758 F. Supp. 1522 (S.D.N.Y. 1991)........... 7
Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 1992) ......... 5, 10
Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994) ................................................... 2, 14
Design Options, Inc. v. BellePointe, Inc., 940 F. Supp. 86 (S.D.N.Y. 1996)................... 18
EMI Latin v. Bautista, 2003 U.S. Dist. LEXIS 2612 (S.D.N.Y. Feb. 24, 2003) .......... 19, 20
Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) ....................................... 9
Field v. Google Inc., 412 F. Supp. 2d 1106 (D. Nev. 2006)............................................. 19
Iowa State University Research Foundation, Inc. v. American Broadcasting Cos.,
621 F.2d 57 (2d Cir. 1980) ..................................................................................... 16, 17
Kelly v. Ariba Soft Corp., 336 F.3d 811 (9th Cir. 2003).................................................... 4
Marvin Worth Prods. v. Superior Films Corp., 319 F. Supp. 1269 (S.D.N.Y.
1970) ............................................................................................................................... 8
McIntosh v. N. Cal. Universal Enters. Co., 670 F. Supp. 2d 1069 (E.D. Cal. 2009) ......... 8
Monge v. Maya Magazines, Inc., 688 F.3d 1164 (9th Cir. 2012) ..................................... 13
Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007) ................................ 4
Pretty Girl, Inc. v. Pretty Girl Fashions, Inc., 778 F. Supp. 2d 261
(E.D.N.Y. 2011)............................................................................................................ 21
Religious Tech. Ctr. v. Lerma, 908 F. Supp. 1362 (E.D. Va. 1995) ................................... 8
Salinger v. Colting, 607 F.3d 68 (2d Cir. 2010) ............................................................... 21
SHL Imaging, Inc. v. Artisan House, Inc., 117 F. Supp. 2d 301 (S.D.N.Y. 2000) ..... 18, 20
Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984) ........................... 7
Swatch Group Mgmt. Servs. v. Bloomberg L.P.,
2012 U.S. Dist. LEXIS 70045 (S.D.N.Y. May 17, 2012) .............................................. 11
Vanderhye v. iParadignms, LLC 562 F.3d 630 (4th Cir. 2009).......................................... 6

S TATUTES

17 U.S.C. § 107....................................................................................................... 2, 10, 12

iii

Preliminary Statement
Plaintiff respectfully submits this Memorandum of Law in Opposition to
Defendant West Publishing Corporation’s (“West”), and Reed Elsevier Inc.’s (“Lexis”)
Motions for Summary Judgment (the “Defendants’ SJ Motions”).
As the Court is aware, Plaintiff filed its own Motion for Summary Judgment,
which is being briefed and argued on the same schedule as Defendants’ SJ Motions. In
Plaintiff’s Memorandum of Law in Support of Motion for Summary Judgment,1 Plaintiff
presented legal argument on the issue of infringement and fair use. To avoid burdening
the Court with duplicative briefing, Plaintiff incorporates by reference the arguments
made therein.
Because almost all the underlying facts are not in dispute, there are only three
open issues on these motions: whether Defendants can prove their entitlement to the “fair
use” affirmative defense, whether Plaintiff has impliedly licensed its works to
Defendants, and the remedies to which Plaintiff is entitled.
Defendants cannot carry their burden of proving “fair use.” All of the factors in
the “fair use” analysis either weigh strongly against a finding of “fair use,” or are, at
worst, neutral. An analysis of each of the “fair use,” factors shows that the Defendants
simply copied the entirety of the Works for distribution, display, and sale, without
transformation, for their own commercial purposes. There is no sense in which that is
“fair use.”
It is also clear that Plaintiff has not impliedly licensed the Works. The
Defendants cannot point to any overt act by the Plaintiff that would indicate assent to the

1

“Plaintiff’s SJ Mem.”, Dkt. No. 55.

1

Defendants’ use, and therefore cannot prove that there was a “meeting of the minds” on a
license arrangement.
On this record, the Plaintiff is entitled to summary judgment on liability, and it is
uncontroverted that Plaintiff, if successful, is entitled to some form of relief for
Defendant’s copying. As a result, the Defendants’ Motions for Summary Judgment
should be denied.
I.

Defendants’ copying is not protected by the doctrine of “fair use.”
The Defendants have asserted that their copying, distribution, and display of the

Works are “fair use” under § 107 of the Copyright Act. The Defendants, of course, have
the burden of demonstrating “fair use.” Campbell v. Acuff-Rose Music, 510 U.S. 569, 590
(1994). They have not, and cannot, carry that burden.
A.

The purpose and character of the Defendants’ use of the works weighs
heavily against a finding of “fair use.”
1.

The Defendants’ copying was not transformative.

In determining whether the Defendants’ copying is excused by the doctrine of
“fair use,” the Court should determine the extent to which the Defendants’ copying is
“transformative.”
In claiming that its works are “transformative,” Lexis (but not West) argues that it
makes substantive “enhancements,” including:
•

determining whether to include a document in its database;

•

determining whether “the document should be split into multiple
documents;

•

reviewing the document for, and redacting, sensitive information;

•

capturing data such as the case name, court name, and type of document
(all of which are readily apparent from the caption);

•

converting the document into a different file format; and

2

•

creating hyperlinks from citations and to other court documents.

[Lexis SJ Br.2 at pp. 4-5.] The remarkable thing about this list of claimed
“enhancements,” is that they either have nothing to do with substantively improving or
commenting on the content of the Works (e..g. selection of the documents, splitting the
documents), or simply make the content of the Defendants’ databases searchable
(capturing the court name, creating hyperlinks). While Lexis touts this sort of work as
remarkably beneficial and transformative, all of these purported “enhancements” are
designed to facilitate the Defendants’ unlawful sale of the briefs and pleadings. That is
not transformation.3
Both Defendants argue that the databases are transformative because they are put
to different uses than the original Works. While the the purpose of the Works is “legal
advocacy” [West SJ Br.4 at p. 13], Defendants disclaim any interest in that purpose,
arguing that they “do not seek to compete with Plaintiff in rendering advice to clients and
writing briefs and motions on their behalf.” [Id.] It is self-evident, though, that the
purpose of Defendants’ databases is to allow their subscribers to engage in legal
advocacy by downloading (and cutting-and-pasting from) briefs and pleadings to put
them to exactly the same use for which they were written. The whole point of
2

“Lexis SJ Br.” refers to the Memorandum of Law in Support of Defendant Reed
Elsevier Inc.’s Motion for Summary Judgment, Dkt. No. 56, filed on October 5, 2012.
3

West’s Rule 56.1 Statement similarly claims that “West makes a number of
enhancements to the document before uploading it onto the system,” but admits that
“[t]hese enhancements are designed to facilitate subscribers accessing the information the
document contains, as well as related documents an cited authorities.” West Rule 56.1
Statement, ¶ 8. In any event, West’s Memorandum of Law does not argue that such
“enhancements” are transformative under the “fair use” analysis.
4

“West SJ Br.” refers to the Memorandum Of Law In Support Of Defendant
West Publishing Corporation’s Motion For Summary Judgment, Dkt. No. 47, filed on
October 5, 2012.

3

Defendants’ briefs and pleadings offerings is to deliver a verbatim copy of legal content
created by one legal advocate (the author) to another legal advocate.

The Defendants

merely facilitate the transfer of a verbatim copy between people who put it to exactly the
same use. That, too, is not transformation.
The cases cited by the Defendants are not to the contrary. In Kelly v. Ariba Soft
Corp., 336 F.3d 811 (9th Cir. 2003), the plaintiff was a photographer whose “images are
artistic works intended to inform and to engage the viewer in an aesthetic experience.
His images [were] used to portray scenes from the American West in an aesthetic
manner.” 336 F.3d at 818. The defendant operated an Internet search engine that
automatically generated very low quality “thumbnail” images to facilitate an Internet
search, and the plaintiff’s works were among those converted into thumbnail images. But
the thumbnail images were lousy substitutes for the originals. As the Ninth Circuit
explained, “[a]nyone who downloaded the thumbnails would not be successful selling
full-sized images enlarged from the thumbnails because of the low resolution of the
thumbnails. There would be no way to view, create, or sell a clear, full-sized image
without going to [the plaintiff’s] web sites.” Id. at 821-22. Similarly, in Perfect 10, Inc.
v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), cert denied, 132 S.Ct. 1713 (2012),
the Ninth Circuit explained that, in employing “thumbnail” images, “a search engine
transforms the image into a pointer directing a user to a source of information.” Id. at
1165.
Here, the Defendants’ use of the Works is nothing like that at issue in the
“thumbnail” cases. Those cases were about reduced quality copies that were poor
substitutes for the originals, and the use of those images to point the way to the original
documents at the original source. By contrast, the Defendants here are not creating low
quality copies as mere “placeholders” or pointers; they are creating –in their words –
4

enhanced quality copies of the entire works and selling perfectly usable facsimiles of the
original works themselves. This is the exact opposite of creating an internet “thumbnail,”
and, therefore, those cases are entirely off-point.
Another of the cases cited the Defendants, Bill Graham Archives v. Dorling
Kindersley Ltd., 448 F.3d 605 (2d Cir. 1992), similarly involved reduced-size images that
were no substitute for the originals. That case involved “artistic concert posters
reproduced in reduced size in a biography of the musical group the Grateful Dead.” Id. at
606. The Second Circuit’s “fair use” analysis emphasized that these were tiny
reproductions, “displayed in significantly reduced form,” id. at 607, of concert posters,
used in a collage of images concerning the band, in the context of historical biography:
DK minimized the expressive value of the reproduced
images by combining them with a prominent timeline,
textual material, and original graphical artwork, to create a
collage of text and images on each page of the book. To
further this collage effect, the images are displayed at
angles and the original graphical artwork is designed to
blend with the images and text. Overall, DK’s layout
ensures that the images at issue are employed only to enrich
the presentation of the cultural history of the Grateful Dead,
not to exploit copyrighted artwork for commercial gain.
Id. at 611 (emphasis added). Once again, that case has nothing to do with Defendants’
use of the Works. Whereas the defendant in Bill Graham Archives was illustrating a
work of historical biography by creating a collage of historical artifacts, Defendants
operate a service to deliver discrete documents, one at a time, in order to “exploit
copyrighted []work for commercial gain.” Id. The Defendants don’t create a collage;
they operate giant electronic filing cabinets.
Perhaps tacitly conceding this fact, Lexis argues that “[w]ere Lexis’s BPM
product merely an online repository of publicly filed court documents, it would be
sufficiently transformative of Plaintiff’s Briefs to constitute fair use.” [Lexis SJ Br. at p.
5

11] In other words, Lexis claims that it need not do anything to the briefs it collects, and
it should still be permitted to copy them in bulk and sell them without the copyright
owners’ consent.
To support that argument, the Defendants cite Vanderhye v. iParadigms, LLC 562
F.3d 630 (4th Cir. 2009) for the proposition that use of a copyrighted work can be
“transformative” without actually altering or adding to the original work. [Lexis SJ Br. at
p. 11] That case, however, was strikingly different from this one. The defendant there
operated a service that amassed student papers in its database in order to detect and deter
plagiarism. The database searches at issue in iParadigms were not designed to enable
the users to locate, purchase, and download a copy of the original content for their own
use; they were designed to prevent improper copying.
Moreover, the iParadigms decision made clear that the system itself had a very
limited use, and did not result in the sale or distribution of the works to third parties.
“iParadigms did not publicly disseminate or display plaintiffs’ works and did not send
them to any third party other than the instructor to whom plaintiffs submitted their own
papers.” 562 F.3d at 641 (quotation omitted). Thus, the facts of iParadigm would
parallel the facts here only if the Defendants disseminated the briefs at issue solely to the
judge who originally read them. Defendants, by contrast, would like to distribute the
briefs in their databases as widely as possible, and sell them to as many customers as
possible. Lexis’s argument, therefore, inverts the central rationale of iParadigms,
arguing that copying an entire work to prevent further copying is the equivalent of
copying an entire work for the purpose of encouraging further copying.
For these reasons, and the reasons set forth in Plaintiff’s Motion for Summary
Judgment, Defendants’ use is not transformative.

6

2.

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.
Lexis argues that many of its users have a non-commercial purpose in using the
databases. [Lexis SJ Br. at p. 14] That, however, is not the issue. The issue, instead, is
whether the infringer derives a commercial benefit from the copying, not on whether
those receiving the copies do. 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.”)
Here, the Defendants’ use is unquestionably commercial, no matter what its users
actually do with the material.5 Together with the fact that the Defendants’ use is not
transformative, the first “fair use” factor weighs against a finding of “fair use.”
B.

The nature of the registered works weighs 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.
5

Neither Defendant argues that the commercial nature of the copying at issue
weighs in favor of finding “fair use.” At most, they argue that this factor “carries little
weight.” [West SJ Br. at p. 14] This factor, therefore, does not help Defendants carry
their burden of proving “fair use.”

7

As explained in Plaintiff’s Memorandum of Law in Support of Motion for
Summary Judgment, the filing of a document with the Clerk of the Court does not
deprive an author of rights under the Copyright Act. Courts have widely held that public
filings, such as architectural drawings and exhibits to affidavits, retain protections under
copyright law. See, e.g., 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); Religious Tech. Ctr. v. Lerma, 908 F.
Supp. 1362, 1367 (E.D. Va. 1995) (“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.”)
In Marvin Worth Prods. v. Superior Films Corp., 319 F. Supp. 1269 (S.D.N.Y.
1970), the defendant filmmaker claimed that he had not infringed the plaintiff’s exclusive
license to use comedian Lenny Bruce’s copyrighted works because the portions of
Bruce’s works that he copied were publicly available in court files from prior criminal
prosecutions against Bruce. The defendant argued that since “a substantial portion of the
material [was] derived from public sources,” it was not copyrightable. Id. at 1270. The
court, however, rejected this theory and highlighted the absurd results that it would yield:
I find unpersuasive the contention that the use of such
material, if originally copyrighted (as is undisputed here), is
rendered innocent by inclusion in legal transcripts or
opinions. To hold that such originally copyrighted material
becomes somehow dedicated by use in the courts would
permit the unraveling of the fabric of copyright protection.
If defendants’ theory were accepted, James Joyce’s
Ulysses, for example, would lie within the public domain
merely because the United States prosecuted the book,
unsuccessfully at that, a generation ago.

8

Id. at 1271. Neither the PACER system, nor the Clerk’s “FILED” stamp, have the
magical power strip a work of protection under the Copyright Act.
In arguing that that the fact that a document is publicly filed with a government
agency is relevant to the second factor, Lexis6 cites only one case, Arica Inst., Inc. v.
Palmer, 970 F.2d 1067 (2d Cir. 1992). In Arica, though, the Second Circuit simply
found that the fact that the work was published tilted the second “fair use” factor (nature
of the work) in favor of finding “fair use.” Id. at 1078. That case had nothing to do with
filing a work with a government agency or court. Lexis’s argument, therefore, contains
not a single authority for assertion that Plaintiff’s filing of the Works with the Clerk of
the Court diminished or eliminated Plaintiff’s rights under the Copyright Act.
West’s sole argument on the second “fair use” factor is that the Works are more
“factual” in nature, containing only “the straightforward, functional presentation of fact
and law.” [West SJ Br. at p. 17] While it is true that legal briefs and pleadings are rarely
great literature (a fact that is painfully obvious to judges, as well as those of us who
litigate for a living), it is also true that they feature copyrightable expression. Even
“[f]actual compilations… may possess the requisite originality.” Feist Publ’ns, Inc. v.
Rural Tel. Serv. Co., 499 U.S. 340, 348 (1991). Even though “copyright in a factual
compilation is thin,” the Supreme Court has explained that “a subsequent compiler
remains free to use the facts contained in another's publication to aid in preparing a
competing work, so long as the competing work does not feature the same selection and
arrangement.” Feist, 499 U.S. at 349. Thus, even though copyright in more factual

6

West’s argument on the second “fair use” factor does not discuss the fact that
the Works were publicly filed, and therefore does not claim that this fact weighs in its
favor with respect to the nature of the copyrighted works. [West SJ Br. at p. 17]

9

works may be considered “thin,” as the Defendants argue [Lexis SJ Br. at p. 15], that
only means that there is more leeway to copy the facts, not the unique expression.
Defendants undoubtedly could report on and relate the facts and compilation of
law contained in the Works. What they did, however, was much more. They copied the
whole thing, including the precise arrangement of the facts and law created by the
Plaintiff, as well as all of Plaintiff’s original expression. No matter how “thin” the
protection afforded to copyrighted works that include a selection of facts, with respect to
legal briefs and pleadings it is not so thin as to be utterly non-existent.
The second “fair use” factor, therefore, also weighs against a finding of “fair use.”
C.

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).
Defendants’ copying of the entirety of the Works tips the third “fair use” factor
decidedly in Plaintiff’s favor. Defendants admit to copying the entirety of the Works.
They argue however, that copying the entirety of the Works is necessary in light of the
purpose of the use. In support, Lexis cites to Bill Graham Archives, 448 F.3d at 613.
[Lexis SJ Br. at p. 16] As discussed above, that case involved the reproduction of very
small versions of concert posters in a collage of materials represented in a book of
history, and were not substitutes for the originals. Here, Defendants are selling
essentially perfect (or, as Lexis calls them, “enhanced”) versions of the originals, which
can be used in exactly the same way as the originals. Bill Graham Archives is not
remotely analogous.

10

Lexis also cites to Sony, 446 U.S. at 449-50, [Lexis SJ Br. at p. 16], which
involved the propriety of recording television programs for viewing at another time (i.e.
time shifting). Sony does not, as Lexis suggests, hold that copying an entire work can tip
the third “fair use” factor in favor of the defendant if copying the entire work is
“necessary” for the defendant’s use. Instead, the Supreme Court in Sony simply held
that, because “time-shifting merely enables a viewer to see such a work which he had
been invited to witness in its entirety free of charge, the fact that the entire work is
reproduced, see § 107(3), does not have its ordinary effect of militating against a finding
of fair use.” Id. Judge Hellerstein, citing Sony, made the same point in Swatch Group
Mgmt. Servs. v. Bloomberg L.P., 2012 U.S. Dist. LEXIS 70045 (S.D.N.Y. May 17, 2012).
[cited in Lexis SJ Br. at p. 16] In that case, involving a news agency’s recording of
company’s call with securities analysts, the court held that while the defendant’s use of
the entire of a “generally weighs against fair use, it does not preclude a finding of fair
use.” Id. at *13. Nothing in Sony or Swatch suggests that a defendant can turn this factor
on its head and argue that copying an entire work actually favors a finding of fair use.
As Sony and Swatch recognized, the “ordinary effect” of copying an entire work
is to militate against fair use. On these facts, the Defendants’ use of the entirety of the
Works was not “fair use,” and the Defendants cannot carry their burden of showing that
this factor tips in their favor.7

7

West actually concedes that the third factor does not favor a finding of fair use.
[West SJ Br. at p. 18 (“the third factor does not weigh against a finding of fair use”); id.
at 19 and 20 (the third factor “is, at worst, neutral”)] While Lexis cites authority for the
proposition that copying the entire work is sometimes “necessary,” it cannot show that
such copying actually tilts the third factor in its favor.

11

D.

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). While the
Defendants claim that their use of the Works has no effect on the market – indeed, they
claim that there is no market – that argument is contrary to the law and the facts.
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. While the Defendants argue that “Plaintiff does not point to any market in which
it can sell or license the Briefs because no such market exists” [Lexis SJ Br. at p. 18],
they admit nevertheless admit that there is a market, acknowledging that “Lexis has
created a market for the Briefs.” [Lexis Rule 56.1 Statement at ¶ 89] The fact that
attorneys do not currently receive any fees or royalties from the market is simply
evidence the Defendants’ thievery, not the absence of a market. In that sense, the
Defendants are like shoplifters stuffing their pockets while protesting that the store has
nothing worth buying.
Significantly, the Defendants’ argument that there is no current market for the
Works simply misses the point. The Copyright Act, and case law, requires that the Court
consider whether there is a potential market for the Works. 17 U.S.C. § 107(4).
Specifically, it requires the Court to consider “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. See Campbell, 510 U.S. at 590 (quoting Nimmer). It is enough that Defendants’
conduct has an adverse effect on the potential market for briefs and pleadings, as they
surely do.
12

The facts regarding a potential market are analogous to a recent situation
addressed by the Ninth Circuit Court of Appeals. In Monge v. Maya Magazines, Inc.,
688 F.3d 1164 (9th Cir. 2012), a celebrity couple sued Maya Magazines for copyright
infringement for publishing the couple’s previously unpublished wedding photos. Maya
Magazines claimed fair use. In analyzing that claim, the Ninth Circuit considered the fact
that the plaintiffs – like the Plaintiff here – did not seek to market the photos and, in fact,
attempted to keep them from ever being published.
The Ninth Circuit explained that the magazine’s acquisition of the photographs,
and their publication, itself proved that there was not only a potential market for the
photos, but also an actual market:
Maya’s purchase of the pictures unequivocally
demonstrates a market for the couple’s copyrighted
pictures. And Maya is itself a participant in the market for
celebrity wedding photos, as Issue 633 also featured
pictures of another celebrity wedding with photos that the
magazine purchased.
Monge, 688 F.3d at 1181-82. Here, as in Monge, the Defendants’ acquisition of the
Works, as well as other briefs and pleadings, and the subsequent sale and distribution of
that material by the Defendants, “demonstrates a market” for the Works.
Moreover, it is disingenuous for the Defendants to argue, as they do, that no one
would pay a licensing fee for attorneys’ briefs and pleadings. Defendants’ usurpation of
the right to publish these materials has pre-empted the creation of any competing service,
or licensing regime, that would pay attorneys a fee for their works. By simply taking the
briefs and pleadings, the Defendants – who indisputably occupy the vast majority of the
market for legal research – have preempted the potential market for the licensing of such
briefs by their authors.

13

Finally, the Court cannot view the market impact factor in isolation. The
Supreme Court has explained that “when a commercial use amounts to mere duplication
of the entirety of an original it clearly supersede[s] the objects of the original and serves
as a market replacement for it, making it likely that cognizable market harm to the
original will occur. Campbell, 510 U.S. at 591. Here, the Defendants’ “commercial use
amounts to mere duplication of the entirety of the original.” Id. Therefore, it is
reasonable to presume market harm.
For all these reasons, the Defendants cannot carry their burden of showing that the
fourth factor favors a finding of “fair use.”
E.

The Defendants’ argument that they are providing a public benefit
does not support a finding of “fair use”

The Defendants also argue that they provide a valuable “public” service by
making briefs and pleadings widely available.
As an initial matter, their argument that the briefs and pleadings are already
widely available directly contradicts their argument as to the alleged public benefit that
they provide. It is true, as Defendants point out, that anyone has the ability to obtain a
PACER account, or go to a courthouse, and copy briefs and pleadings. But that fact
merely demonstrates that the Defendants’ copying and sale of briefs and pleadings is not
necessary in order to provide the public with access to court documents. Court dockets
were open to the pubic8 long before the Defendants began their bulk download and sale
8

The Defendants repeatedly refer to the “public” right to access court documents,
and suggest that they are providing a “public” benefit by affording greater access to
judicial documents. See, e.g. West SJ Br. at p. 12 (arguing that West “helps to educate
the public as to the workings of our justice system”). In reality, the Defendants have
presented no evidence that their briefs and pleadings offerings are utilized by any
significant portion of the “public” – other than attorneys and law students, who
presumably are proficient at obtaining court documents through PACER or from a court
(footnote continued on next page)
14

of briefs and pleadings and court records will remain open whether or not the Defendants
make a profit by stealing the work of others. As West put it, “with a PACER account and
a few clicks of a computer mouse, anyone can obtain electronic copies of briefs filed
through PACER with any federal court.” [West SJ Br. at p. 1] In light of the ease with
which users can obtain briefs and pleadings from an official (non-commercial) source,
there is no merit to the Defendants’ argument that they are providing an essential public
service, or that the public’s interest in open access to the courts will be hindered if the
Defendants cannot copy and sell briefs and pleadings for their own commercial gain.
West also argues that, “[i]f litigants such as Plaintiff…having committed [their
legal briefs] to public scrutiny via court filings, [were able to] to condition public access
to them upon paying a fee, these important public purposes would be impeded.” [West
SJ Br. at p. 3] This is a remarkable argument in light of the fact that the Defendants do
“condition access to [the documents in their databases] upon paying a fee.” In fact, the
fees charged by the Defendants are substantially higher than the fees charged by public
sources, such as PACER. If attorneys and law firms received fees for the sale of their
briefs through private, commercial databases, it would no more “impede” pubic access to
the courts than the fact that the Defendants themselves already charge subscribers for
such briefs. It is simply a matter of who receives the fee: the authors who created the
works, or only those who copied them.
Also, the fact that the public (however defined) may derive benefit from access to
copyrighted works is not a sufficient argument for “fair use.” An infringer can always

file. Thus, Defendants have not demonstrated that their services make access to the
courts any more widely available, as opposed to just more convenient for the legal
community.

15

claim that free access to the works of others will be a benefit to the public. But, “[t]he
fair use doctrine is not a license for corporate theft, empowering a court to ignore a
copyright whenever it determines the underlying work contains material of possible
public importance.” Iowa State University Research Foundation, Inc. v. American
Broadcasting Cos., 621 F.2d 57, 61 (2d Cir. 1980), cited with approval in Harper & Row,
471 U.S. at 558.
West also eloquently (but erroneously) argues that, though its unauthorized sale of
briefs and pleadings, it is advancing the law as an “accretive body of learning,” which is
essential to advancing “legal doctrine, scholarship, and precedents based on past
advocacy.” [West SJ Br. at p. 3] With all respect to the creative and inventive work of
attorneys in private practice, the briefs they write are not law, and are rarely, if ever, cited
in judicial opinions beyond the cases in which they are filed. The actual expression in the
briefs and pleadings is hardly necessary for effective advocacy in subsequent cases.
(Neither West nor Lexis cites a single legal brief or pleading in their own memoranda of
law on these motions.) Instead, the obvious purpose of the Defendants’ offerings is to
allow practitioners to take short cuts in their own legal research by copying the work of
those who came before them, even if that involves a simple cut-and-paste from the
Defendants’ text-searchable databases. When the Defendants offer legal briefs and
pleadings, they are not engaged in a high-minded effort to advance an “accretive body of
learning.” Id. They are selling an easy way to plagiarize.
Interestingly, every one of the Defendants’ pubic policy arguments for “fair use”
– that it will contribute to the “accretive body of learning,” [West SJ Br. at p. 3], or that it
“provides the opportunity to learn about new areas of law, analyze successful and
unsuccessful legal arguments, and research specific jurisdictional formats and related
issues,” [Lexis SJ Br. at p. 21] – could be applied with equal or greater force to justify the
16

free and widespread copying and distribution of Defendants’ own legal treatises. Surely,
the body of legal knowledge and understanding of our court system would be greatly
advanced by the free distribution of such treatises to all attorneys and law students who
asked for a copy. Or, more directly, it would be of great “public benefit” to place all of
West’s and Lexis’s legal treatises into a giant text-searchable electronic database with
hyperlinks to cases and statutes. Obviously, the public interest in advancing legal
scholarship and learning does not trump the Defendants’ copyright interests in their
treatises.
Whether the public would benefit from free copying is not, and cannot be, the
standard by which copyright infringement is measured. As Judge Chin recently found, in
rejecting a settlement involving Google’s book scanning project, the wholesale copying
of millions of works undoubtedly provides a public benefit:
The benefits of Google's book project are many. Books will
become more accessible. Libraries, schools, researchers,
and disadvantaged populations will gain access to far more
books. Digitization will facilitate the conversion of books
to Braille and audio formats, increasing access for
individuals with disabilities. Authors and publishers will
benefit as well, as new audiences will be generated and
new sources of income created. Older books — particularly
out-of-print books, many of which are falling apart buried
in library stacks — will be preserved and given new life
Authors Guild v. Google Inc., 770 F. Supp. 2d 666, 670 (S.D.N.Y. 2011). And yet, even
after recognizing that public benefit, Judge Chin found that “[a] copyright owner’s right
to exclude others from using his property is fundamental and beyond dispute.” Id. at 681.
Simply put, copyright infringement cannot be justified by the public benefits of verbatim
copying of whole works. Instead, “[t]he public interest in the free flow of information is
assured by the law’s refusal to recognize a valid copyright in facts.” Harper & Row, 471
U.S. at 558 (quoting Iowa State University Research Foundation, 621 F.2d at 61).
17

Just as the wholesale digitization of books, or the free distribution of legal
treaties, would provide a public benefit, but cannot trump copyright law, the Defendants’
unauthorized use of other’s works cannot be excused by arguing that author’s rights
under the Copyright Act must yield to a claimed “public interest” in distributing those
works without the author’s permission.
II.

Defendants did not have an express or implied license to copy, distribute, and
display the Works.
Lexis argues (and West joins in Lexis’s argument) that the Defendants had an

implied “license” to copy, distribute, and display the works.
As explained in Plaintiff’s own Motion for Summary Judgment, it is undisputed
that Plaintiff did not grant the Defendants any express license to exploit the Works, and
Defendants do not now argue that there was any express license.
The Defendants, therefore, are left to argue that there was an “implied license.”
But “an 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),
much less had a “meeting of the minds” that would grant them an implied license. They
nevertheless argue that Plaintiff consented to Defendants’ copying because he knew that
“filing briefs in federal court rendered the Briefs publicly available,” and that “PACER

18

permitted and indeed encouraged copying of the Briefs.” [Lexis SJ Br. at p. 24]
Whatever Plaintiff’s expectation was with respect to what the PACER system would do
with his Works, the Defendants cannot leverage that knowledge into implied consent that
they could use the works.
Nor is it relevant that Plaintiff did not contact the Defendants prior to the
institution of this lawsuit. [See Lexis SJ Br. at p. 24] Whatever Plaintiff did or did not do
after Defendants copied the Works cannot evidence Plaintiff’s “implied consent” for the
copying that came before.
Neither of the cases cited by the Defendants on this issue found an implied license
in circumstances remotely similar to those here. EMI Latin v. Bautista, 2003 U.S. Dist.
LEXIS 2612, *37 (S.D.N.Y. Feb. 24, 2003) was a dispute between a former band member
and his former band and record label. The former band member admitted granting
permission to the band to use certain songs, promoting the album, and accepting
payments for it. Judge Pauley found that the former band member “never expressly
rescinded the license to use the Recording.” Id. EMI Latin, therefore, hardly stands for
the proposition that an implied license can be found when a party has never had any
dealings with the author, as is the case here.
In Field v. Google Inc., 412 F. Supp. 2d 1106 (D. Nev. 2006), the author of web
pages sued over Google’s creation of “cached” versions of his web pages. The court
found that the author of the pages knew he could include a “do not archive” meta-tag in
the code for the website to prevent Google from creating a cache, but that he “chose not
to include the no-archive meta-tag on the pages of his site” and that “[h]e did so, knowing
that Google would interpret the absence of the meta-tag as permission to allow access to
the pages via ‘Cached’ links.” Id. at 1116.

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Here, in contrast to EMI Latin and Field, Defendants can point to nothing
evidencing Plaintiff’s assent to their copying. The only overt conduct was Plaintiff’s
filing of the Works with the Clerk of Court, which Plaintiff was required to do for
reasons completely independent of expressing his assent to further copying by the
Defendants. That filing did not manifest a “meeting of the minds,” SHL Imaging, 117 F.
Supp. 2d at 317, between Plaintiff and Defendant, and therefore cannot form the basis for
finding an implied license.
Finally, the Defendants’ argument would lead to a massive expansion of the idea
of an implied license, well beyond its current application. There was nothing special
about Plaintiff’s dealings with Defendants (in fact, there were none). Therefore, the
Defendants’ implied license argument requires that this Court find that every attorney and
law firm that ever filed a document in court had a “meeting of the minds” with the
Defendants, and that the Defendants were granted an implied license by every one of
those attorneys and firms with respect to millions of individual documents. The
Defendants can cite no authority for the proposition that an entire class of works,
comprising millions of individual documents, created by uncounted numbers of
individual authors, can be found to be subject to an implied license.
For all these reasons, Defendants’ implied license argument should be rejected.
III.

Plaintiff is Entitled to Remedies for Defendants’ Infringement.
West (but not Lexis) argues that Plaintiff is not entitled to statutory damages and

attorneys’ fees because West’s copyright infringement commenced before the effective
date of registration of the Works, and the Works are unpublished.9 This does not mean,
9

Even if infringing activity began before registration, Plaintiff is entitled to
statutory damages from Lexis.

20

however, that Plaintiff is without remedies against West. First, West concedes that
Plaintiff may be entitled to disgorgement of profits, declaratory relief, and costs.
Second, Plaintiff is entitled to injunctive relief against West. The harm suffered
by Plaintiff from West’s unlawful copying and distribution of Plaintiff’s justifies an
injunction. “Harm might be irremediable, or irreparable, for many reasons, including that
a loss is difficult to replace or difficult to measure, or that it is a loss that one should not
be expected to suffer.” Salinger v. Colting, 607 F.3d 68, 81 (2d Cir. 2010). See also
WPIX, Inc. v. IVI, Inc., 2012 U.S. App. LEXIS 18155, 25 (2d Cir. Aug. 27, 2012) (“Harm
may be irreparable where the loss is difficult to replace or measure, or where plaintiffs
should not be expected to suffer the loss.”).
Plaintiff readily acknowledges, and Defendants can hardly dispute, that it is
difficult to measure Plaintiff’s damages from Defendants’ unlawful use of the Works.
Plaintiff will never know if, for example, Plaintiff has lost clients as a result of a
completing attorney’s appropriation of Plaintiff’s work product. More fundamentally, as
discussed above, “[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 at 681.
Defendants’ unlawful use of Plaintiff’s Works, therefore, involves “a loss that [Plaintiff]
should not be expected to suffer.” Salinger v. Colting, 607 F.3d at 81.
An injunction is also appropriate because the Defendants continue to copy and
sell briefs and pleadings on a massive scale. “[W]here a defendant provides no
assurances that it will cease its infringing activity, this fact suggests that monetary
damages are insufficient.” Pretty Girl, Inc. v. Pretty Girl Fashions, Inc., 778 F. Supp. 2d
261, 270 (E.D.N.Y. 2011) (trademark case). Here, West has given no indication that it
intends to stop offering copied briefs and pleadings for sale. Quite the contrary.

21

While West argues that an injunction “would jeopardize its ability to continue to
make court filings available to subscribers” because “the transaction costs involved in
securing the necessary rights would present an insuperable obstacle” to its continuing to
offer its product. [West SJ Br. at p. 24] West, however, is arguing that an injunction
against copying all briefs and pleadings would be burdensome. The only issue with
respect to an injunction in this case, though, is whether West should be enjoined from
copying Plaintiff’s briefs and pleadings. Such an injunction would hardly be burdensome
to West, especially in light of its argument that it has copied little of Plaintiff’s work, that
such works have been little accessed, and that they have been removed from West’s
databases.
Conclusion
The Defendants’ Motions for Summary Judgment should be denied.
Dated: New York, New York
October 23, 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
22