White et al v. West Publishing Corporation et al

Filing 72

REPLY MEMORANDUM OF LAW in Support re: 46 MOTION for Summary Judgment.. 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
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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
REPLY MEMORANDUM OF LAW IN FURTHER SUPPORT OF ITS
MOTION FOR SUMMARY JUDGMENT

TABLE OF CONTENTS
Page
PRELIMINARY STATEMENT .................................................................................................... 1
ARGUMENT .................................................................................................................................. 3
I.

PLAINTIFF FAILS TO REBUT WEST’S SHOWING THAT IT IS ENTITLED
TO SUMMARY JUDGMENT ON ITS FAIR-USE DEFENSE........................................ 3
A.

Plaintiff’s Factor One Arguments Miss the Mark................................................... 3
1.

West Made Transformative Use of the Motions ......................................... 3

2.

There Is No Presumption that Commercial Uses Are Unfair ..................... 4

B.
C.

The Factual Nature of the Motions Favors Fair Use............................................... 7

D.

Copying an Entire Work Does Not Preclude a Fair-Use Finding ........................... 8

E.
II.

West’s Use Has No Effect on Any Actual or Potential Market for the
Motions ................................................................................................................... 5

Plaintiff Fails to Rebut West’s Showing That Including the Motions in
Litigator™ Advances the Purposes of Copyright ................................................... 8

SUMMARY JUDGMENT IS WARRANTED ON PLAINTIFF’S CLAIMS FOR
ACTUAL DAMAGES, STATUTORY DAMAGES, ATTORNEY’S FEES, AND
INJUNCTIVE RELIEF ....................................................................................................... 9

CONCLUSION ............................................................................................................................. 10

i

TABLE OF AUTHORITIES
Page(s)
CASES
Am. Geophysical Union v. Texaco Inc.,
60 F.3d 913 (2d Cir. 1994).........................................................................................................6
Authors Guild, Inc. v. Hathitrust,
No. 11 CV 6351 (HB), 2012 WL 4808939 (S.D.N.Y. Oct. 10, 2012). .................................4, 9
Authors Guild v. Google, Inc.,
770 F. Supp. 2d 666 (S.D.N.Y. 2011)........................................................................................8
A.V. ex rel. Vanderhye v. iParadigms,
562 F.3d 630 (4th Cir. 2009) .....................................................................................................4
Bill Graham Archives v. Dorling Kindersley Ltd.,
448 F.3d 605 (2d Cir. 2006)...............................................................................................3, 6, 8
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994) ...............................................................................................................5, 8
Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,
499 U.S. 340 (1991) ...................................................................................................................7
Kelly v. Arriba Soft Corp.,
336 F.3d 811 (9th Cir. 2003) .....................................................................................................3
Maxtone-Graham v. Burtchaell,
803 F.2d 1253 (2d Cir. 1986).....................................................................................................7
Monge v. Maya Magazines, Inc.,
688 F. 3d 1164 (9th Cir. 2012) ..................................................................................................7
Perfect 10 v. Amazon, Inc.,
508 F.3d 1146 (9th Cir. 2007) ...................................................................................................3
Sony Corp. of Am. v. Universal City Studios, Inc.,
464 U.S. 417 (1984) ...................................................................................................................5
OTHER AUTHORITIES
Fed.R.Civ.P. 36(a)(3) .....................................................................................................................10

ii

Defendant West Publishing Corporation (“West”) submits this reply memorandum of law
in further support of its motion for summary judgment.
PRELIMINARY STATEMENT
In its moving papers, West demonstrated its entitlement to summary judgment on its fairuse defense, as well as on Plaintiff’s claims for actual damages, statutory damages, attorney’s
fees, and injunctive relief. Plaintiff agrees that the material facts germane to West’s motion are
undisputed, and it concedes that West is correct as to damages and attorney’s fees (issues the
Court should not, in any event, need to reach).
Plaintiff’s efforts to overcome West’s fair-use defense are unavailing. On the key issue
of whether West’s inclusion of a pair of Plaintiff’s publicly filed motions (the “Motions”) in its
Litigator™ database is transformative, Plaintiff concedes, as it must, that a use can be
transformative if it is intended to serve a different purpose than the original, but argues
erroneously that West used the Motions for the same purpose as Plaintiff did. This is clearly
wrong: Plaintiff used the Motions to advocate for its clients in a specific litigation. West had
nothing to do with that litigation or with representing those clients. West does not advocate on
behalf of clients; it provides a legal research tool. Nor does West’s use supplant Plaintiff’s sale
of legal services, including brief-writing, more generally. Plaintiff’s concern with other
attorneys accessing Plaintiff’s work via West’s service and engaging in infringing “cutting and
pasting” – a hypothesized activity for which there is no evidence that it has ever occurred – does
not implicate West. Moreover, that West’s use is commercial does not make it presumptively
unfair, as Plaintiff asserts incorrectly. As West showed in its opposition brief, that fact is
immaterial.
As for the effect on the potential market for the work, Plaintiff cannot offer a shred of
evidence of a current or likely future secondary market for its court filings that would be

cognizable in assessing market harm. Plaintiff’s principal, Mr. White, practiced law for over ten
years before Defendants began including legal briefs in their databases, and it is undisputed that
no one has ever tried, nor did he ever offer, to license any of his work product. West’s integrated
research system, of which Litigator’s™ millions of documents comprise only one part,
represents a non-superseding, transformative market that Plaintiff cannot claim the right to
exploit.
Plaintiff’s other arguments fare no better. On the second factor, Plaintiff admits that the
Motions are factual in nature and that factual works receive less copyright protection. Its effort
to undermine the force of this concession conflates “copyrightable” (which is not at issue on this
motion) with “fact-based” and ignores Second Circuit rulings holding that copying from a factual
work weighs in favor of fair use. On factor three, Plaintiff does not dispute West’s showing that
copying the entirety of a work is neutral when necessary to achieve a transformative purpose.
As three factors clearly favor West and one is, at worst, neutral, and there are no disputed
fact issues as to any of them, West is entitled to summary judgment on its fair-use defense.
With respect to relief, Plaintiff concedes that West would be entitled to summary
judgment on Plaintiff’s claims for actual damages, statutory damages, and attorney’s fees should
the Court reach those issues. As for injunctive relief, Plaintiff confuses damage that is difficult
to quantify with damage that does not exist. The latter is the case here, as Plaintiff cannot
demonstrate any injury, let alone irreparable injury. The record shows, moreover, that West
removes documents from its database upon request. There is no basis for an injunction.

2

ARGUMENT
I.

PLAINTIFF FAILS TO REBUT WEST’S SHOWING THAT IT IS ENTITLED TO
SUMMARY JUDGMENT ON ITS FAIR-USE DEFENSE
A.

Plaintiff’s Factor One Arguments Miss the Mark
1.

West Made Transformative Use of the Motions

Plaintiff does not dispute that fair use favors transformative uses of copyrighted works,
but it contends that West’s use was not transformative. See Pl.’s Mem. of Law in Opp’n to
Defs’. Mots. Summ. J. 3-6, ECF No. 68 (“Pl. Opp.”). This is plainly wrong. Plaintiff created the
works to advocate on behalf of its clients in Beer v. XTO Energy, Inc., No. Civ. 07-798-L (W.D.
Okla.), and for no other purpose. See White Dep. 69:14-24, 76:13-77:21. 1 West’s use of the
Motions had nothing to do with Beer and in no way superseded Plaintiff’s purpose, which
already had been accomplished by the time West downloaded copies of the Motions from
PACER. Instead, West used the Motions as an element of its searchable, interlinked legal
research tool. See Leighton Decl. ¶¶ 4, 14. These two uses are totally “separate and distinct”
from one another. See Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 610 (2d
Cir. 2006). 2

1

“White Dep.” refers to the transcript of the August 30, 2012 Deposition of Edward L. White,
excerpts of which are attached as Exhibit C to the October 5, 2012 Declaration of John R. Gerba,
ECF No. 62 (“Gerba Decl.”). In addition, West refers herein to the October 4, 2012 Declaration
of Tom Leighton, ECF No. 50 (“Leighton Decl.”); the October 5, 2012 Declaration of Leigh
Beauchamp, ECF No. 59 (“Beauchamp Decl.”); the October 5, 2012 Declaration of David
Blackburn, ECF No. 48 (“Blackburn Decl.”); its October 5, 2012 Memorandum of Law in
Support of its Motion for Summary Judgment, ECF No. 47 (“West Br.”); and its October 23,
2012 Memorandum of Law in Opposition to Plaintiff’s Motion for Summary Judgment, ECF No.
63 (“West Opp.”).
2

Plaintiff’s attempt to distinguish Perfect 10 v. Amazon, Inc., 508 F.3d 1146 (9th Cir. 2007), and
Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003), see Pl. Opp. 4-5, mistakenly takes on a
factual analogy that West never made. West cited those cases for the point that a distinct, nonsuperseding use can be transformative – which Plaintiff does not contest. Compare West Br. 12
n.5 with Pl. Opp. 4. The relevant question is not whether the copies are “reduced quality” or
3

Plaintiff attempts to obscure the lack of overlap between these purposes by referring to
the relevant purpose as “legal advocacy” in general, rather than to the specific case and clients
for which the Motions were created, and it invokes hypothetical conduct by West’s subscribers,
not by West. See Pl. Opp. 3 (“It is self-evident . . . 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.”).
Plaintiff’s argument has no merit. There is no evidentiary support for Plaintiff’s assertion that
West offers its product so that attorneys can “cut-and-paste” the prose of other attorneys. There
is, moreover, no evidence that any other attorney has cut-and-pasted from the Motions for use in
any other case, let alone evidence that they downloaded the Motions from West in order to do
so. 3 In any event, what West’s subscribers may do with the documents beyond West’s control
has no bearing on the fact that West does not use the works for legal advocacy, let alone to
advocate for Plaintiff’s clients in Beer. 4
2.

There Is No Presumption that Commercial Uses Are Unfair

Plaintiff asserts that “every commercial use of copyrighted material is presumptively an
“reduced-size” but whether they are used for the same purpose as the originals. Nothing in those
or any other cases limits transformative purposes to using low-quality or reduced-size
“placeholders,” as Plaintiff incorrectly implies. See, e.g., Authors Guild, Inc. v. Hathitrust, No.
11 CV 6351 (HB), 2012 WL 4808939, at *11 (S.D.N.Y. Oct. 10, 2012); see also A.V. ex rel.
Vanderhye v. iParadigms, 562 F.3d 630, 640 (4th Cir. 2009).
3

West acknowledges the purely hypothetical possibility of another attorney copying Plaintiff’s
expression in a potentially infringing manner, but even if the attorney were a West subscriber
and used Litigator™ to access Plaintiff’s work, such a scenario would not give rise to an
infringement claim against West. West would not control, nor does it encourage, such conduct.
4

Plaintiff’s reliance on the conduct of West’s subscribers contradicts its insistence elsewhere
that the use made by Defendants’ subscribers is not a relevant consideration. Compare Pl. Opp.
3 (relying on the purpose of Defendants’ subscribers in using the databases) with id. at 7
(arguing that Lexis’s subscribers’ “non-commercial purpose in using the databases . . . is not the
issue”). It is West’s use that matters.

4

unfair exploitation of the monopoly privilege that belongs to the owner of the copyright.” Pl.
Opp. 7 (quoting Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 451 (1984)).
But the Supreme Court subsequently rejected the notion of such a presumption in Campbell v.
Acuff-Rose Music, Inc., 510 U.S. 569 (1994), noting that if “commerciality carried presumptive
force against a finding of fairness, the presumption would swallow nearly all of the illustrative
uses listed in the preamble paragraph of § 107” and that “Congress could not have intended such
a rule.” Id. at 584. For the reasons discussed in West’s opposition brief, the fact that West
charges subscribers for access to its service is of little consequence to the fair-use analysis. See
West Opp. 6-7 (citing numerous cases).
B.

West’s Use Has No Effect on Any Actual or Potential Market for the Motions

In its moving papers, West demonstrated that the absence of any impact on a potential
market for or the value of Plaintiff’s works decisively favors a finding of fair use. See West Br.
14-16. Plaintiff has admitted that: (i) it never attempted to license or sell the Motions; (ii) West’s
copying has no effect on Plaintiff’s incentive to create the Motions or on their quality; and (iii) it
cannot identify any concrete harm caused by West’s copying. See id. at 16. The (non-existent)
prospect of licensing simply did not factor into Plaintiff’s decision to create the Motions. See
White Dep. 74:12-18, 78:3-79:7, 202:12-20. Indeed, any such additional financial incentive
could undermine an attorney’s ethical obligation to serve only the interests of his or her clients.
Plaintiff claims that the market for West’s databases is evidence of a market for the
Motions. See Pl. Opp. 12. But the existing market for West’s searchable, integrated repository
of millions of legal documents is not the same as a market for Plaintiff’s Motions. 5 There is, in
5

Plaintiff’s selective quotation from Lexis’ Rule 56.1 Statement omits the end of the quoted
sentence where Lexis states that it created a market for the Motions “where one would not
otherwise exist.” Def. Reed Elsevier Inc.’s Rule 56.1 Statement of Undisputed Facts in Supp. of
Its Mot. Summ. J. ¶ 89, ECF No. 57.
5

fact, only one market for the Motions: the legal services market. The distinct market for West’s
transformative database (which is not a market for the individual documents in the database)
does not properly factor into the market-harm analysis. See West. Br. 15 (quoting Bill Graham
Archives, 448 F.3d at 615). Indeed, if a defendant’s use ipso facto established market harm,
factor four would be rendered a nullity, as it would always favor the plaintiff.
Plaintiff’s claim also fails because it invokes a purely hypothetical potential market, see
Pl. Opp. 12-14, whereas only “traditional, reasonable, or likely to be developed markets” are
properly taken into account. West Br. 15 (quoting Am. Geophysical Union v. Texaco Inc., 60
F.3d 913, 930 (2d Cir. 1994)). Plaintiff offers no evidence of any such market for its works. See
Pl. Opp. 12-14. To the contrary, Mr. White testified that no one has ever offered to license any
of his briefs, pleadings, or motions, and he admitted that he has never attempted to license any
such works. See White Dep. 202:21-203:18. Mr. White received his law degree in 1994 and has
been operating his own legal practice since 1997. See id. at 9:5-11:6. West did not begin
collecting trial court briefs until 2005, see Leighton Dep. 20:2-4, 6 and Lexis did not make its
Briefs, Pleadings and Motions product offering available until that same year, see Beauchamp
Decl. ¶ 4. If Plaintiff’s theory that Defendants squelched any potential market were correct, one
would expect to see some evidence of licensing activity before Defendants created their
databases, but there is none. The Court therefore should find as a matter of law that West’s
conduct causes no impact on a potential market for Plaintiff’s works.
Plaintiff’s hypothetical-market theory also fails to explain why anyone would participate
in such a market when the documents can be obtained from PACER without paying Plaintiff.
Indeed, Plaintiff’s admission that the “actual expression in the briefs and pleadings is hardly
6

“Leighton Dep.” refers to the August 28, 2012 Deposition of Tom Leighton. Excerpts cited
herein are attached to the November 2, 2012 Declaration of John Patrick Sullivan as Exhibit A.

6

necessary for effective advocacy in subsequent cases,” Pl. Opp. 16, undercuts, rather than
supports, the claim that other lawyers would pay to license the Motions. 7 Dr. Blackburn, in
unrebutted testimony, confirmed that there is no evidence that a secondary market is likely to
develop in which an attorney can license or sell briefs. See Blackburn Decl. ¶ 8.
Monge v. Maya Magazines, Inc., 688 F. 3d 1164 (9th Cir. 2012), does not assist
Plaintiff’s argument. In that case, the Ninth Circuit expressly found that the plaintiff celebrity
couple was “undisputedly in the business of selling images of themselves and they have done so
in the past and Maya itself paid $1,500 for prior photos.” Id. at 1181. The opposite is true here:
Plaintiff is not in the business of licensing its briefs, and West does not license briefs from
anyone. Moreover, Plaintiff’s request that the Court “presume market harm,” see Pl. Opp. 14, is
contradicted by Monge: “In light of the Supreme Court’s admonition eschewing presumptions
under this factor, we refrain from presuming harm in the potential market.” 688 F.3d at 1181.
As in Maxtone-Graham v. Burtchaell, 803 F.2d 1253, 1264 (2d Cir. 1986), Plaintiff is
“unable to point to a single piece of evidence portending future harm.” This factor thus weighs
heavily in favor of fair use.
C.

The Factual Nature of the Motions Favors Fair Use

Plaintiff concedes that the Motions are factual in nature and that copyright protection for
factual compilations is “thin.” Pl. Opp. 9-10 (citing Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,
499 U.S. 340 (1991)). But Plaintiff confuses the issue of copyrightability – which West does not
contest for purposes of this motion – with the issue of whether the factual nature of the works
tips factor two in favor of fair use. The cases Plaintiff cites for the proposition that works of
authorship remain copyrightable even if part of a public filing, see Pl. Opp. 8, are inapposite. As
7

This admission also explains why there is no evidence of another lawyer cutting-and-pasting
from the Motions for his or her own advocacy in separate cases.

7

West demonstrated in its moving papers, the highly factual nature of the Motions weighs in favor
of fair use. See West Br. 17. 8 In any event, the second factor “may be of limited usefulness
where [a] creative work . . . is being used for a transformative purpose.” Bill Graham Archives,
448 F.3d at 612; see also Campbell, 510 U.S. at 586 (observing that the second factor is “not
much help” in separating infringement from fair use in relation to a transformative use that
involves copying of expressive works).
D.

Copying an Entire Work Does Not Preclude a Fair-Use Finding

Plaintiff does not dispute West’s showing that factor three is neutral when a
transformative use requires the copying of an entire work. Compare Pl. Opp. 10-11 with West
Br. 18-19.
E.

Plaintiff Fails to Rebut West’s Showing That Including the Motions in
Litigator™ Advances the Purposes of Copyright

West’s Litigator™ database serves an important public purpose of increasing access to
judicial records for lawyers, scholars, and the public at large through transformative use of court
filings that has no effect on the incentives of lawyers to write them. See West Br. 20; White
Dep. 69:14-24, 76:13-77:21. Plaintiff’s assertion that the public benefit from unauthorized
copying cannot be the measure of fair use is a red herring. West does not argue that public
benefits alone are sufficient. West argues instead that a public benefit arising from a
transformative use that causes no market harm favors a finding of fair use. See West Br. 20. 9

8

If the second factor tilted against fair use simply because the Motions were copyrightable, the
second fair-use factor would always favor the plaintiff because the fair-use doctrine is relevant
only to copyrightable works.
9

Plaintiff’s discussion of Authors Guild v. Google, Inc., 770 F. Supp. 2d 666 (S.D.N.Y. 2011),
see Pl. Opp. 17, also is unavailing. That case rejected a proposed class settlement because of a
number of concerns, including those related to international law, privacy, antitrust, and
copyright, among others. See Authors Guild, 770 F. Supp. 2d at 678-86. The court did not
address fair use, and thus that case does not support Plaintiff’s opposition. Moreover, as Plaintiff
8

Plaintiff’s assertion that “Defendants’ public policy arguments for ‘fair-use’ . . . could be applied
with equal or greater force to justify free and widespread copying and distribution of Defendants’
own legal treatises,” Pl. Opp. 17, is wrong: widespread unauthorized copying of Defendants’
legal treatises would have a profound adverse impact on the well-established market for those
works and on the incentive for Defendants to create them. There is, by Plaintiff’s admission, no
secondary market for its works and no impact on Plaintiff’s incentives as a result of West’s
copying. Indeed, it is vastly more likely that a ruling in Plaintiff's favor, instead of catalyzing the
emergence of a licensing market, would simply compel West to shut down its service – with the
result that Plaintiff would gain nothing and the public would lose a service of great social value.
See Blackburn Decl. ¶ 9.
*

*

*

Taken together, the statutory factors clearly favor fair use. Three of the four factors – the
nature and purpose of the use; the effect of the use on the potential market for or value of the
copyrighted work; and the nature of the copyrighted work – decisively favor West. The other
factor – the amount and substantiality of the use – is, at worst, neutral. When coupled with the
public benefits Litigator™ provides and the lack of any effect on Plaintiff’s incentive to create
legal briefs, an aggregate fair-use assessment clearly warrants summary judgment for West.
II.

SUMMARY JUDGMENT IS WARRANTED ON PLAINTIFF’S CLAIMS FOR
ACTUAL DAMAGES, STATUTORY DAMAGES, ATTORNEY’S FEES, AND
INJUNCTIVE RELIEF
Because Plaintiff does not address West’s showing that it is entitled to summary

judgment on Plaintiff’s claims for actual damages, statutory damages, and attorney’s fees, see Pl.

fails to note, another court in this district recently held that Google’s conduct was transformative
and fair use. See Hathitrust, 2012 WL 4808939.

9

Opp. 20-21, Plaintiff must be deemed to have conceded that summary judgment on these issues
would be appropriate should the Court reach them.
With respect to injunctive relief, Plaintiff’s invocation of irreparable harm is misplaced.
The issue presented here is not remedying an injury that cannot be quantified; Plaintiff has failed
to show any injury at all. The harm here is not irreparable – it is nonexistent. Moreover, the
record shows that West complies with the exceedingly rare requests to remove documents from
Litigator™ without regard to the reason for the request, see Leighton Decl. ¶¶ 11, 19, and that
Plaintiff never made such a request before commencing this action, see Gerba Decl. Ex. E,
Request No. 1 (admitted pursuant to Fed. R. Civ. P. 36(a)(3)). West’s almost-never-invoked
removal policy obviates the need for an injunction. Thus, West should be granted summary
judgment on Plaintiff’s request for injunctive relief if the Court reaches the issue. 10
CONCLUSION
For the foregoing reasons, West’s motion for summary judgment should be granted.
Dated: November 2, 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.
10

Plaintiff also opposes Defendants’ entitlement to summary judgment on the basis of an implied
license. West joins in Lexis’s reply on this point.

10