Dewey B Strategic Blogspot Publishes Judge’s Notes On “White v West Publishing and Reed Elsevier-“

Here’s the Judge’s and Dewey B’s thoughts on this copyright case from last year

White v West Publishing and Reed Elsevier– Judge Rakoff Fair Use Rationale Explained:Briefs are like Facts, Databases Transform, There is no market for Legal Briefs
It is more than a year  since Judge Rakoff dismissed Edward White’s case against Westlaw and Lexis for copyright infringement. A memo explaining the rationale was promised and it has finally been delivered. On July 3, 2014,  Judge Rakoff released a Memorandum and Order which provides a fair use analysis of the decision and reaffirms the 2013 dismissal.

White’s copyright claim can be traced back to his dismissal as class counsel in the case of Beers v XTO Energy, Inc. No. Civ 7-798-L in the Western District of Oklahoma. White was afraid that the “newly proposed class counsel or other lawyers would use his work product” He registered copyrights on the Summary Judgment Motion and the Motion in Limine briefs which had been filed in the Beers case. However prior to registering the copyright he had filed the motions with the court using Pacer’s electronic filing system. Westlaw and Lexis both subsequently  retrieved these documents from the Pacer system and added the documents to their legal research systems. Once a document was filed on Pacer it became available to the public online and in the court clerk’s office.

Rakoff’s Memorandum cited the “Fair Use” defense in Section 107 of the Copyright Act of 1974 providing the rationale for the dismissal. The memo also stated that under the facts of the White case, 3 of the 4 factors favor “fair use” and one factor was neutral.

The Fair Use Balancing Test Applied

1. The purpose and character of the use. Citing Campbell v Acuff-Rose Music, Inc. 501 US 569, 578 (1984) the court found the Lexis and Westlaw’s use of White’s briefs was transformative. White created the briefs to achieve a specific outcome for a client.  Westlaw and Lexis used the briefs in creating an interactive legal research database. The memorandum states that the editorial processes undertaken by Lexis and Westlaw in “reviewing, selecting, converting, coding, linking and identifying the documents add something new and change the character and purpose of the work.

2. The Nature of the copyrighted work. Fair use is more likely to be found in factual works than fictional works. The memorandum states that “Briefs are functional presentations of fact and law.” Since the briefs were filed with the court it is harder to claim that they are “unpublished.”

3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole. Lexis and Westlaw copied the entire documents.  There is precedent where courts have concluded that  copying the whole work “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.” BillGraham Archives v. Darling Kindersley Ltd., 448 F.3d 605, 613 (2d Cir. 2006). Although defendants here copied the entirety of White’s briefs, such copying was necessary to make the briefs full text searchable. The Court found that Lexis and Westlaw only copied what was reasonably necessary for their transformative use, and concluded that that the third factor is therefore neutral.

4. The effect of the use on the potential market for the work.

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.'”

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.

Isn’t It Really Just A Question of Precedent?
I agree with the outcome  of the White case but I find the Court’s analysis somewhat strained. I think the more obvious reason to dismiss the copyright claim would be based on a public policy rationale. In the common law system a completely original brief citing no precedent would be pretty useless and unpersuasive. All legal briefs are inherently “derivative” and It serves the ” interests of justice” for the briefs and legal arguments which are made to courts to be available for public review.
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