White et al v. West Publishing Corporation et al
Filing
84
MEMORANDUM AND ORDER: For the foregoing reasons shown herein, the Court finds that the defendants' use of plaintiff's brief was a fair use. The Court therefore reaffirms its Order of February 11, 2013, granting defendants' motion for summary judgment. The Clerk of the Court is directed to enter judgment dismissing the complaint with prejudice, and to close the case. SO ORDERED. (Signed by Judge Jed S. Rakoff on 7/3/2014) (kgo)
..
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-------------------------------------x
EDWARD L. WHITE, EDWARD L. WHITE,
P.C., and KENNETH ELAN, on behalf of
themselves and all others similarly
situated,
l!c.
Inc
::y
----;
!.-
Plaintiffs,
12 Civ. 1340 (JSR)
-v-
MEMORANDUM AND ORDER
WEST PUBLISHING CORPORATION d/b/a
"West," and REED ELSEVIER INC.,
d/b/a "LexisNexis,"
Defendants.
-------------------------------------x
JED S. RAKOFF, U.S.D.J.
On February 22, 2012, plaintiffs Edward L. White, Edward L.
White, P.C., and Kenneth Elan filed a putative class action alleging
copyright infringement against defendants West Publishing Corp.
("West") and Reed Elsevier, Inc.
("Lexis"). On June 26, 2012, after
the Court had dismissed Elan's claims and those of the proposed
subclass of plaintiffs who had not registered any copyrights, White
filed an amended, non-class action complaint, asserting claims of
copyright infringement based on the inclusion of White's copyrighted
briefs in West's "Litigator" and Lexis's "Briefs, Pleading and
Motions" databases. On September 28,
2012 and October 5, 2012,
defendants and White, respectively, filed cross-motions for summary
judgment on White's copyright infringement claims. The Court heard
oral argument on these motions on November 20, 2012 and in a
"bottom-line" Order dated February 11, 2013, granted defendants'
1
motion for summary judgment and denied plaintiff's motion. This
Memorandum and Order explains the reasons for that decision and
directs the entry of final judgment.
Plaintiffs sue West and Lexis for copyright infringement based
on the inclusion of two of White's copyrighted briefs in the Westlaw
"Litigator" and Lexis "Briefs, Pleading and Motions"
(BPM)
databases. The briefs at issue are "Plaintiffs' Combined Motion for
Summary Judgment, Beer and Ramsey, and Brief in Support"
("Summary
Judgment Motion"), filed May 20, 2009, and "Plaintiffs' Motion in
Limine"
("Motion in Limine"), filed March 15, 2010, both of which
White filed while serving as class counsel in Beer v. XTO Energy,
Inc., No. Civ-07-798-L, in the Western District of Oklahoma.
Defendant West Publ'g Copr.'s Statement of Uncontested Material
Facts Pursuant to Local Rule 56.1 ("West 56.1") , , 16-19.
On April 13, 2010, mid-way through the litigation, the Beer
Court removed White as class counsel in Beer and decertified the
class. Id. , 22. Two individuals filed a motion to intervene as new
named plaintiffs in Beer with new class counsel. Id. , , 23-24.
Because White was concerned that the newly proposed class counsel or
other lawyers would use his work product, White registered
copyrights on the Beer Summary Judgment Motion and Motion in Limine
briefs on May 20, 2010, and May 21, 2010, respectively. Id. , 25.
Prior to registering copyrights on the Summary Judgment Motion
and Motion in Limine briefs, White filed the motions with the court
using the electronic CM/ECF (PACER) service, from which West and
2
Lexis retrieved the documents. West 56.1 ~~ 26, 27; Def. Reed
Elsevier Inc.'s Rule 56.1 Statement of Undisputed Facts in Support
of Its Motion for Summary Judgment ("Lexis 56.1")
~~
10, 23-24.
Filing a document on PACER makes that document publicly available
online as well as in the court's clerk's office and allows members
of the public to retrieve and download a copy of the document from
~~
PACER for $0.10 per page, up to $3.00 per document. Lexis 56.1
17, 20, 24-25.
West's Litigator and Lexis's BPM products offer users access to
select legal documents that were filed, without seal, in state and
federal courts. West 56.1
~~
3-5, 7; Lexis 56.1
~~
2-4. Once West or
Lexis selects a particular legal document for inclusion into
Litigator or BPM, the document is converted into a text-serchable
electronic file and saved in each database's proprietary format.
West 56.1
~
9; Lexis 56.1
~
33. The document is further modified as
follows: an editor reviews the document to redact sensitive and
private information, West 56.1
~
11; Lexis 56.1
~
30; the editor
codes and/or extracts from the document key characteristics like
jurisdiction and practice area in order to allow users to find and
retrieve documents more easily, West 56.1
~
10; Lexis 56.1
~~
32,
36; the editor links the document to decisions and other filings in
the same or related cases and creates links to authorities cited in
the document, West 56.1
~
10; Lexis 56.1
~~
32, 26; a unique
identifier is created for each document for ease of locating and
citing the document, West 56.1
~;
Lexis 56.1
3
~
41; and a link to a
PDF of the as-filed version of the document is included in the
database version of the document to maintain an archival copy, West
56.1 ~ 14; Lexis 56.1 ~ 39. BPM contains over one million legal
documents, and Litigator approximately eleven million legal
documents, obtained either from PACER or from courts directly. Lexis
56.1
~~
5, 7, l; West 56.1
~~
5-6.
The Beer Summary Judgment Motion was loaded into Litigator on
July 11, 2009, and accessed a total of five times between then and
March 6, 2012; the Motion in Limine was loaded into Litigator on May
2, 2010, and accessed a total of seven times between then and March
5, 2012. West 56.1
~~
27-28. Both motions were available as part of
BPM as of August 4, 2010; the Summary Judgment motion was never
accessed, and the Motion in Limine was accessed by three users.
Lexis 56.1 ~~ 43, 73-74.
Section 107 of the Copyright Act provides a defense to
copyright infringement that allows for "fair use" of a copyrighted
work without permission based on consideration of four non-exclusive
statutory factors:
"(l) the purpose and character of the use,
including whether such use is of a commercial nature or is for
nonprofit educational purposes;
work;
(2) the nature of the copyrighted
(3) the amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and (4)
the effect of
the use upon the potential market for or value of the copyrighted
work .
" 17 U.S.C. ยง 107. The Court finds that three of the
4
above factors weigh in favor of a finding of fair use, while one of
the factors is neutral.
Regarding the first factor, a key issue is:
"whether and to
what extent the new work is 'transformative, '" Campbell v. AcuffRose Music,
Inc.,
510 U.S. 569, 578
(1994), that is, whether how the
defendants have altered and used plaintiff's work has effectively
transformed it into a different kind of work. The Court finds that
West and Lexis's use of the briefs was transformative for two
reasons. First, while White created the briefs solely for the
purpose of providing legal services to his clients and securing
specific legal outcomes in the Beer litigation, the defendants used
the brief toward the end of creating an interactive legal research
tool. See Blanch v. Koons, 467 F.3d 224, 251 (2d Cir. 2006)
("The
sharply different objectives that Koons had in using, and Bland had
in creating [the work]
confirms the transformative nature of the
use."). Second, West and Lexis's processes of reviewing, selecting,
converting, coding, linking, and identifying the documents "add[]
something new, with a further purpose or different character" than
the original briefs. Campbell, 510 U.S. at 579. While, to be sure,
the transformation was done for a commercial purpose,
"the more
transformative the new work, the less will be the significance of
other factors,
like commercialism, that may weigh against a finding
of fair use." Campbell, 510 U.S. at 579. Thus, on net, the first
factor weighs in favor of a finding of fair use.
5
Regarding the second factor (the nature of the copyrighted
work),
"[i]n general, fair use is more likely to be found in factual
works than in fictional works." Stewart v. Abend, 495 U.S. 207, 237
(1990). Here, the briefs at issue are functional presentations of
fact and law, and this cuts towards finding in favor of fair use. It
is true that "the scope of fair use is narrower with respect to
unpublished works [because]
the author's right to control
the first public appearance of his expression weighs against use of
the work before its release." Harper & Row Publishers,
Nation Enterprises, 471 U.S. 539, 564
(1985).
Inc.
v.
However, while
White's briefs were in some sense unpublished, this factor is made
less significant by the fact that White intentionally made the
briefs publicly available by filing them with the court; thus the
circumstances of this case do not implicate the rationales for
protecting unpublished works. On net, the second factor also weighs
in favor of a finding of fair use.
Regarding the third factor, which looks at "'the quantity and
value of the materials used
. in relation to the purpose of the
copying,'" Blanch, 467 F.3d at 257
(quoting Campbell,
586), although "copying of an entire work [does not]
use[,]
510 U.S. at
favor[] fair
. courts have concluded that such copying does not
necessarily weigh against fair use because copying the entirety of a
work is sometimes necessary to make a fair use of the image." Bill
Graham Archives v. Darling Kindersley Ltd., 448 F.3d 605, 613
(2d
Cir. 2006). Although defendants here copied the entirety of White's
6
briefs, such copying was necessary to make the briefs
comprehensively text searchable. Thus the Court finds that
defendants only copied what was reasonably necessary for their
transformative use, and that the third factor is therefore neutral.
Regarding the fourth factor, a finding of fair use is
disfavored "only when the market is impaired because the .
material serves the consumer as a substitute, or .
. supersedes
the use of the original." Bill Graham Archives, 448 F.3d at 614
(quoting Pierre N. Leval,
Toward a Fair Use Standard, 103 HARV. L.
REV. 1105, 1125 (1990)). In determining whether such a market exists,
the Second Circuit "looks at the impact on potential licensing
revenues for 'traditional, reasonable, or likely to be developed
markets.'" Bill Graham Archives, 448 F.3d at 614
Geophysical Union v. Texaco Inc.,
(quoting American
60 F.3d 913, 930 (2d Cir. 1994))
In this instance, West's and Lexis's usage of the briefs is in no
way economically a substitute for the use of the briefs in their
original market: the provision of legal advice for an attorney's
clients. White himself admits that he lost no clients as a result of
West's and Lexis's usage. Lexis 56.1
~
94. Furthermore, no secondary
market exists in which White could license or sell the briefs to
other attorneys, as no one has offered to license any of White's
motions, nor has White sought to license or sell them. See Blanch,
467 F.3d at 258
(finding that this factor "greatly favor[ed]" the
alleged infringer where the copyright holder had "never licensed any
of her photographs for use in works of graphic or other visual
7
art"). Although White argues that Lexis and West impede a market for
licensing briefs, the Court finds that no potential market exists
because the transactions costs in licensing attorney works would be
prohibitively high. Thus on net, the fourth factor weighs in favor
of defendants and a finding of fair use.
Accordingly, for the foregoing reasons, the Court finds that the
defendants'
therefore
defendants'
use
of
plaintiff's
reaffirms
its
Order
brief
of
was
a
February
motion for summary judgment.
fair
11,
use.
2013,
The
Court
granting
The Clerk of the Court is
directed to enter judgment dismissing the complaint with prejudice,
and to close the case.
SO ORDERED.
Dated: New York, NY
July 3, 2014
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