White et al v. West Publishing Corporation et al

Filing 74

REPLY MEMORANDUM OF LAW in Support re: 53 MOTION for Summary Judgment (Notice of Motion Previously Filed).. Document filed by Edward L. White, P.C.. (Blue, Gregory)

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

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

PLAINTIFF’S REPLY MEMORANDUM OF LAW
IN FURTHER SUPPORT OF PLAINTIFF’S
MOTION FOR SUMMARY JUDGMENT

Gregory A. Blue
GREGORY A. BLUE, P.C.
405 Lexington Avenue, Suite 2600
New York, New York 10174
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Raymond A. Bragar
BRAGAR EAGEL & SQUIRE, P.C.
885 Third Ave., Suite 3040
New York, New York 10022
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Attorneys for Plaintiff

Table of Contents
Table of Authorities ........................................................................................................... iii

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

I.
  Defendants’ copying is not “fair use.”.......................................................................... 1

A.
  The purpose of the use weighs against a finding of “fair use.” ...................... 1

1.
  Defendants’ use is not transformative.................................................. 1

2.
  Defendants’ use is commercial. .......................................................... 4

B.
  The nature of the works................................................................................... 5

C.
  The Defendants used the entirety of the works. .............................................. 6

D.
  The potential market for the works. ................................................................ 6

II.
  The Defendants did not have an “implied license” ..................................................... 8

III.
  Defendants violated Plaintiff’s exclusive rights under the Copyright Act. ............. 10

Conclusion ........................................................................................................................ 10

ii

Table of Authorities
C ASES

American Geophysical Union v. Texaco Inc.,
60 F.3d 913 (2d Cir. 1994) ............................................................................................. 8
Authors Guild, Inc. v. HathiTrust, 2012 U.S. Dist. LEXIS 146169,
Case No. 11 CV 6351 (HB) (S.D.N.Y. Oct. 10, 2012)....................................... 1, 2, 3, 4
Bill Graham Archives v. Dorling Kindersley Ltd.,
448 F.3d 605 (2d Cir. 1992) ................................................................................... 6, 7, 8
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) ................................................. 7
Castle Rock Entm’t, Inc. v. Carol Publ’g Grp.,
150 F.3d 132 (2d Cir. 1998) ........................................................................................... 7
EMI Latin v. Bautista,
2003 U.S. Dist. LEXIS 2612 (S.D.N.Y. Feb. 24, 2003)................................................ 9
Field v. Google Inc.,
412 F. Supp. 2d 1106 (D. Nev. 2006)............................................................................. 9
Keane Dealer Servs. v. Harts,
968 F. Supp. 944 (S.D.N.Y. 1997), ................................................................................ 9
N.Y. Times Co. v. Tasini,
533 U.S. 483 (2001)...................................................................................................... 10
Parker v. Yahoo!, Inc.,
2008 U.S. Dist. LEXIS 74512 (E.D. Pa. Sept. 25, 2008) ............................................... 9
Perfect 10 v. Amazon.com, Inc.
508 F.3d 1146 (9th Cir. 2007) .................................................................................... 4, 6
Psihoyos v. National Examiner,
1998 U.S. Dist. LEXIS 9192, Case No. 97-Civ.-7624 (JSM) (S.D.N.Y.
June 22, 1998)................................................................................................................. 5
Righhaven LLC v. Klerks,
2010 U.S. Dist. Lexis 105307 (D. Nev. Sept. 17, 2010) ................................................ 9

T REATISES

4-13 Melville B. Nimmer and David Nimmer, Nimmer on Copyright §
13.05[A][4] (Mathew Bender, Rev. Ed) ......................................................................... 7

iii

Preliminary Statement
Plaintiff respectfully submits this Reply Memorandum of Law in Further Support
of Plaintiff’s Motion for Summary Judgment. In order to avoid duplicative briefing,
Plaintiff incorporates by reference its legal arguments in opposition to Defendants’
Motions for Summary Judgment, which addressed the same issues.1
I.

Defendants’ copying is not “fair use.”

A.

The purpose of the use weighs against a finding of “fair use.”
1.

Defendants’ use is not transformative.

In opposition to Plaintiff’s Motion for Summary Judgment, Defendants reiterate
their arguments (made in their own Motions for Summary Judgment) that their uses were
transformative because, Defendants insist, they were directed at a different audience for a
different purpose. That argument ignores the fact that Defendants’ subscribers – the end
users– are lawyers using the briefs and pleadings for the same purpose as the originals.
In support of that argument, Defendants’ opposition papers both cite to Judge
Baer’s recent decision in Authors Guild, Inc. v. HathiTrust, 2012 U.S. Dist. LEXIS
146169, Case No. 11 CV 6351 (HB) (S.D.N.Y. Oct. 10, 2012). Lexis, in particular,
argues that HathiTrust stands for the proposition that making a copy of an entire work “to
enable full text searching” is transformative when the new purpose is “superior search
capabilities.” [Lexis Op. Br.2 at p. 5] The HathiTrust decision, however, actually says
no such thing.

1

Plaintiff’s Memorandum of Law in Opposition to Defendants’ Motions for
Summary Judgment (“Plaintiff’s Op. Br.”), Oct. 23, 2012, Dkt. No. 68.
2

“Lexis Op. Br.” is Defendant Reed Elsevier Inc.’s Memorandum of Law in
Opposition to Plaintiff’s Motion for Summary Judgment, Oct. 23, 2012, Dkt. No. 69.

1

HathiTrust involved copying for only very limited purposes. University libraries
entered into agreements with Google for Google to scan the libraries’ books. Google then
provided the libraries with digital copies, which the libraries then “contributed” to the
HathiTrust Digital Library (the “HDL”). Id. at *8-9. “For works with known authors,”
the defendants “use[d] the works within the HDL in three ways: (1) full-text searches;
(2) preservation; and (3) access for people with certified print disabilities.” Id. at *9.
The first use at issue in the HathiTrust case was “full-text searches.” At first
blush, that sounds like what West and Lexis do with legal briefs and pleadings. In
HathiTrust, however, documents protected by copyright were not available in full text to
the general user. Rather, “[f]or works that are not in the public domain or for which the
copyright owner has not authorized use, the full-text search indicates only the page
numbers on which a particular term is found and the number of times the term appears on
each page.” Id. at *9. See also id. at *45. So, unlike the situation here, “[n]o actual text
from the [works] is revealed except to print-disabled library patrons.” Id. at *44 (citation
omitted).
It therefore is not true, as Lexis argues, that HathiTrust stands for the proposition
that copying of an entire copyright-protected work is “fair use” simply because the
infringer offers “superior search capabilities.” [Lexis Br. at p. 5] Quite the contrary,
Judge Baer’s decision that copying of the works for indexing was for a different purpose,
and therefore “transformative,” was expressly based on his finding that the defendants in
that case did not do what Lexis and Westlaw do. As Judge Baer explained, “[t]he use to
which the works in the HDL are put is transformative because the copies serve an entirely
different purpose than the original works: the purpose is superior search capabilities
rather than actual access to copyrighted material.” Id. at *45 (emphasis added). Here,
unlike in HathiTrust, the purpose of the West’s and Lexis’s copying is “actual access to
2

copyrighted material.” This is not HathiTrust, and this is not fair use.3
The second use at issue in HathiTrust was “preservation.” Judge Baer found that
“[t]he argument that preservation on its own is a transformative use is not strong,” but
that the non-commercial nature of the preservation efforts, coupled with the other
purposes, was “fair use.” Id. at *42-43, fn. 19. In other words, full-text copying for
preservation was not transformative and could only be justified based on the other “fair
use” factors. Thus, that part HathiTrust also does not support the Defendants’
“transformation” argument.
The third use at issue in HathiTrust was copying to make the works available for
access by “print-disabled” users.4 Judge Baer found that, by making the works available
to print-disabled users, the defendants “revolutionized” access to such works because,
“[s]ince the digital texts in the HDL became available, print-disabled students have had
full access to the materials through a secure system intended solely for students with
certified disabilities.” Id. at *10-11 (citations to the record omitted). It therefore is
hardly surprising that Judge Baer found such use transformative. It clearly is. After all,
making copies for the visually impaired was specifically identified in the House
Committee Report as a quintessential type of “fair use.” Id. at *50 (citing Sony Corp. of
Am. v. Universal City Studios, Inc, 464 U.S. 417, 455 n.40 (1984)).

3

At most, Defendants’ copying is for the purpose of search and access to the full
text of the materials. In either case, as Judge Baer recognized, search alone is a
materially different type of use than search coupled with full-text access.
4

“Print-disabled individuals read digital books independently through screen
access software that allows text to be conveyed audibly or tactilely to print-disabled
readers, which permits them to access text more quickly, reread passages, annotate, and
navigate, just as a sighted reader does with text.” Id. at *10.

3

So, in the HathiTrust case, Judge Baer held that when the defendant has a noncommercial purpose: (i) indexing, without displaying the full text, can be transformative;
and (ii) making works available to the visually impaired can be transformative. The
Defendants distort HathiTrust by arguing that their commercial copying of the full text in
order to sell copies to general users is transformative. It is not, and the HathiTrust
decision does not even begin to suggest that it is.
Ultimately, the Defendants’ copying, sale, and display of the briefs and pleadings
in their databases is intended to pass copyright-protected works, essentially unaltered and
in pristine form, to users who can put them to exactly the same use for which they were
created. That is not “transformation,” and that is not fair use.5
2.

Defendants’ use is commercial.

Defendants offer only half-hearted arguments on the commerciality of their use.
West is more candid than Lexis, suggesting that the commercial nature of its use “is of
little consequence” in light of the other factors [West Op. Br. at p. 7],6 while Lexis more
boldly asserts that it has a partially non-commercial purpose because some users are
students, who Lexis doesn’t charge. That hardly matters. The primary purpose of

5

West’s reliance on Perfect 10 v. Amazon.com, Inc. 508 F.3d 1146, 1165 (9th Cir.
2007), cert. denied, 132 S.Ct. 1713 (2012) is misplaced. The whole work copied in
Perfect 10 was a photograph transformed to a thumbnail size for an entirely different
purpose for the users of the site that did the transformation. Here the entire Work is
exactly copied for the users of Lexis to advocate in Court.
6

West’s characterization of the considerations used in evaluating commercial use
at p. 6 of its brief argue tilt the analysis against a finding of “fair use” here. First, there
was no transformation of the Works themselves, other than those that made the Works
searchable, and therefore salable. Second, West is seeking to capitalize on the expressive
value of the works without paying a fee. Third there is limited public interest in the
Defendants’ sale of briefs and motions because, as they point out, those documents are
readily available from other, non-commercial sources, including PACER.

4

Lexis’s use is commercial, a fact that cannot be changed by their self-interested attempt
to hook budding lawyers on their services in their professional infancy. Giving away
Lexis and Westlaw services to students is not an eleemosynary endeavor, it is good for
business. The Defendants’ uses are commercial, which weighs against finding “fair use.”
B.

The nature of the works.
Lexis argues that the second “fair use” factor tips in its favor because the Works

are published, de facto published, or at least were not held confidential by Plaintiff. West
(while arguing that the Works were published) similarly avers that the public availability
of the works tips the “fair use” analysis in favor of the Defendants.
Both Defendants dramatically overstate the significance of public availability.
First, as explained in Plaintiff’s opening brief, the fact that a work is publicly filed does
not strip it of protection under the Copyright Act, or even weigh in favor of a finding of
fair use. [Plaintiff’s SJ Br. at pp. 16-17]
Second, with respect to de facto publication, none of the cases cited by Lexis
found publication, or even “de facto publication,” based upon a public filing, as is the
situation in his case. More importantly, none of those cases suggest that de facto
publication actually favors a finding of fair use. Rather, “if the author does not seek
confidentiality, fair use is not necessarily precluded as to an unpublished work.”
Psihoyos v. National Examiner, 1998 U.S. Dist. LEXIS 9192, *10, Case No. 97-Civ.-7624
(JSM) (S.D.N.Y. June 22, 1998) (emphasis added). That is not the same as saying that de
facto publication actually favors a finding of fair use, as Lexis argues. It does not.
The Defendants also argue that the briefs are “factual” works and that, for this
reason, too, the “nature of the works” favors a finding of “fair use.” [Lexis Op. Br. at p.
10; West Op. Br. at p. 10] As discussed in Plaintiff’s Opposition to Defendants’ Motion
for Summary Judgment, that the briefs contain factual matter only gives the Defendants
5

leeway to copy the factual matter, not the precise expression. [Plaintiff’s Op. Br. at pp.
9-10] Defendants copied not only the facts, but also the exact expression, and none of the
authority cited by the Defendants suggests that such copying is “fair use.”7
As with all “fair use” factors, the Defendants have the burden of proof. The
Defendants cannot carry their burden of showing that this factor tips in their favor.
C.

The Defendants used the entirety of the works.
The cases cited by the Defendants concerning the amount of the works used – in

this case, the entirety of the works – are not relevant here. As discussed in Plaintiff’s
opposition to the Defendants’ Motions for Summary Judgment, the cases cited by the
Defendants in which the entirety of a work was copied all involve situations in which the
work was significantly transformed, either by incorporation into a larger work used for a
different purpose, e.g. Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605
(2d Cir. 1992), or in the internet search engine cases. E.g. Perfect 10, Inc. v. Amazon.
This factor also weighs against a finding of “fair use,” and the Defendants cannot carry
their burden on this factor.
D.

The potential market for the works.
Both Defendants argue that Plaintiff has not shown “market harm.” In this

situation, in which the Defendants are simply making copies of the Works, the Court
7

That the Defendants are free to relate the facts and even the legal arguments
made, without copying the exact expression, also disposes of Defendants’ First
Amendment argument. As the Supreme Court explained, “copyright's idea/expression
dichotomy strikes a definitional balance between the First Amendment and the Copyright
Act by permitting free communication of facts while still protecting an author’s
expression.” Harper & Row, Publrs. v. Nation Enters., 471 U.S. 539, 556 (1985)
(quotation omitted). Defendants are free to digest, summarize, or otherwise covey the
factual elements of the Works, but they do not have a First Amendment right to sell
Plaintiff’s exact expression, as embodied in the Works.

6

must heed the direction of the Supreme Court, which 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 v. Acuff-Rose
Music, Inc., 510 U.S. 569, 591 (1994) (citation and quotation omitted). See 4 Melville B.
Nimmer and David Nimmer, Nimmer on Copyright § 13.05[A][4] (Mathew Bender, Rev.
Ed), fn. 234 (“Common sense dictates that a nontransformative use of an entire
copyrighted work for commercial purposes obviously supplants the original.”) (citations
omitted).
Lexis argues that it is “circular” reasoning to suggest that the Defendants’ own
sale of the Works demonstrates the existence of a market for the works. It is not. The
classic cases in which the infringers’ own sale of the works was held not to demonstrate
the existence of a market all involved situations in which the alleged infringer was selling
something demonstrably different than the work itself, i.e. in which there had been some
dramatic and obvious transformation of the copyright-protected work before its sale.
Thus, Lexis is left to argue that there is no market harm from a transformative
use. So, for example, in Bill Graham Archives, supra, (discussed at length in Plaintiff’s
Opposition to Defendant’s Motions for Summary Judgment), the Second Circuit’s
holding with respect to market injury was expressly based on its finding that the use was
transformative. Id. at 15 (holding that, “[s]ince DK’s use of BGA’s images falls within a
transformative market, BGA does not suffer market harm due to the loss of license
fees.”). See also Castle Rock Entm’t, Inc. v. Carol Publ’g Grp., 150 F.3d 132, 146 n.11
(2d Cir. 1998) (“copyright owners may not preempt exploitation of transformative
markets”) (emphasis added).

7

Notably, the Second Circuit in Bill Graham Archives contrasted the facts of that
case with those in American Geophysical Union v. Texaco Inc., 60 F.3d 913 (2d Cir.
1994), a case in which Texaco’s in-house researches copied entire articles from scientific
journals. The Court of Appeals explained that American Geophysical Union was
distinguishable because the use at issue in Bill Graham Archives was “transformatively
different from their original expressive purpose,” while the use at issue in the earlier case
– mere copying of articles – was not. Bill Graham Archives at 612. Here, the Defendants
have made no changes to the Works to alter their “expressive purpose.” Id. at 614.8
For these reasons, and those set out in Plaintiff’s other memoranda of law, the
“market harm” factor tips in favor of the Plaintiff, and Defendants cannot carry their
burden of showing “fair use.”
II.

The Defendants did not have an “implied license”
As described in Plaintiff’s Opposition to the Defendants’ Motion for Summary

Judgment, Lexis’s “implied license” argument asks this Court to adopt an unprecedented
interpretation of that defense that would result in a massive (indeed, unlimited) expansion
the concept. Never before has a court held that an entire class of works, created by tens
of thousands of authors, are available for poaching on the ground that the authors’ silence
resulted in an “implied license” to copy their works.

8

Interestingly, the Second Circuit also distinguished American Geophysical
Union on the ground that the scientific journals at issue in that case were available for
download “from online databases such as Lexis, which paid the journals a license fee.”
Id. at 615, fn. 6. The legitimate “market harm” in American Geophysical Union thus
included a loss of licensing fees from “databases such as Lexis,” which were not part of
the original market for the scientific journals. Just as Lexis and West can (and do) pay
licensing fees for content created by the authors of journals and treatises, they can pay
licensing fees for content created by attorneys.

8

Each of the cases relied upon by Lexis involved a personal transaction, or the
unique context of internet search engines. Thus, in Keane Dealer Servs. v. Harts, 968 F.
Supp. 944 (S.D.N.Y. 1997), the alleged infringer called the copyright owner with a
question about the software at issue, and the owner answered questions about it. The
court found that, after that conversation, the owner “chose to take no action” with respect
to the use. Id. at 946. There was no similar direct communication between the Plaintiff
and the Defendants here. See also EMI Latin v. Bautista, 2003 U.S. Dist. LEXIS 2612
(S.D.N.Y. Feb. 24, 2003) (direct dealings between band member and record label).
The internet search engine cases finding an implied license are also
distinguishable because each of those cases made a specific factual finding that the
plaintiff was aware of internet protocols that would have prevented copying by the search
engines, and yet made a conscious decision not to include those protocols in their web
pages. See Field v. Google Inc., 412 F. Supp. 2d 1106, 1116 (D. Nev. 2006) (finding that
the author “chose not to include the no-archive meta-tag on the pages of his site”); Parker
v. Yahoo!, Inc., 2008 U.S. Dist. LEXIS 74512, *14 (E.D. Pa. Sept. 25, 2008) (finding that
the complaint itself established that the plaintiff “knew that as a result of his failure to
abide by the search engines’ procedures, the search engines would display a copy of his
works”). Here, in contrast to the internet search engine implied license cases, the
Defendants have not submitted any evidence that Plaintiff: (i) knew there was a method
to prevent the Defendants from copying the Works; and (ii) consciously chose not to
avail itself of those method. Under these circumstances, the Court cannot find that
Plaintiff manifested any intent to license the works for the Defendants’ use.9
9

Lexis also cites Righhaven LLC v. Klerks, 2010 U.S. Dist. Lexis 105307 (D.
Nev. Sept. 17, 2010), which, as Lexis notes, was merely a decision vacating a default
judgment. In that case, which concerned defendant’s copying of an article from the
(footnote continued on next page)
9

III.

Defendants violated Plaintiff’s exclusive rights under the Copyright Act.
There is no dispute that the Defendants made electronic, text-searchable versions

of the Works. included versions of those Works in their databases, and that those works
were accessed by their subscribers. Under these circumstances, “[i]t is clear that [the
Defendants] have exercised at least some rights that § 106 initially assigns exclusively to
the Authors.” N.Y. Times Co. v. Tasini, 533 U.S. 483, 498 (2001) (finding that,
“LEXIS/NEXIS’ central discs and UMI's CD-ROMs ‘reproduce . . . copies’ of the
Articles, § 106(1); UMI, by selling those CD-ROMs, and LEXIS/NEXIS, by selling
copies of the Articles through the NEXIS Database, ‘distribute copies’ of the Articles ‘to
the public by sale’”).10

Conclusion
The Plaintiff’s Motion for Summary Judgment should be granted.

internet, the defendant alleged that “the original copyright holder offered the article to the
world for free, encouraged people to save and share the article with others without
restrictions, and permitted users to ‘right-click’ and copy the article from its website.”)
Id. at *10. The court, though, did not actually find an implied license. It merely found “a
sufficiently plausible affirmative defense to warrant setting aside the default.” Id. at 11.
10

Defendants insist there is a “dispute” over ownership. [Lexis Op. Br. at p. 23]
That argument is a gross and irresponsible misrepresentation of the record. Both Mr.
White and Mr. High agreed that the Works are owned by Edward L. White, P.C. [Bloom
Declaration, Dkt. No. 64, Exh. B, Transcript p. 19-20 (Mr. High stated “Ed’s firm
[Edward L. White, P.C.] owns all the work product.”)]. There is no sense in which there
is a “dispute” over ownership.

10

Dated: New York, New York
November 2, 2012
GREGORY A. BLUE, P.C.
By:

/s/ Gregory A. Blue
Gregory A. Blue
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

11