2 Lawyers Sue Over Use of Legal Papers by West and Lexis

2 Lawyers Sue Over Use of Legal Papers by West and Lexis
The New York Law Journal by Mark Hamblett  -  February 24, 2012

Two lawyers have filed suit claiming that the digital collection and sale of their publicly filed legal briefs and memoranda violate U.S. copyright laws.  In a putative class action filed in the Southern District of New York on Feb. 22, the lawyers are seeking damages, disgorgement of profits and a declaratory judgment against West Publishing Corp. and LexisNexis for engaging in the "unabashed wholesale copying of thousands of copyright-protected works created by, and owned by, the attorney and law firms."  The lead plaintiff for one possible subclass is Edward L. White, an Oklahoma City intellectual property lawyer who, according to the complaint and exhibits, obtained copyright registration for 22 documents he wrote as far back as March 2007.  A second possible subclass is for attorneys who have not obtained copyright registration, with the lead plaintiff Kenneth A. Elan, a New York commercial litigator who claims the defendants had no right to include his documents in their electronic databases.  The plaintiffs in White v. West Publishing Corp., 12 cv 1340, are represented by two New York attorneys, solo practitioner Gregory A. Blue and Raymond A. Bragar of Bragar Wexler Eagel & Squire.  Southern District Judge Jed S. Rakoff has drawn the case.  Mr. Blue said today that this appears to be the first case of its kind in the United States, and while the documents at issue are on public file in courthouses for anyone to peruse, the database companies have gone a step too far in repackaging and selling the information to lawyers.  "The analogy that comes to me is, what if West or Lexis had decided to put out a series of books of the best legal briefs in the United States and sell them in Barnes & Noble?" Mr. Blue said. "I don't think anyone would have any question they were violating copyrights. The fact that they are making this available on a more massive scale or form doesn't change the copyright analysis."

The case will turn on the issue of whether publishing the content produced by the attorneys constitutes fair use, a question that will include an analysis of whether the companies provide valuable services for researchers and educators or, by aggregating the material in a unique way, have had a "transformative" effect on the works.  Robert W. Clarida of Reitler Kailas & Rosenblatt is a Law Journal columnist and the author of the forthcoming "Copyright Law Deskbook" (BNA). Mr. Clarida, who is not involved in the litigation, said the lawsuit poses some interesting questions, including whether the lawyer or the law firm owns the copyright.  "I can certainly see an argument that it's an infringement and I can certainly see an argument that it's fair use," Mr. Clarida said. "Fair use is very fact-specific and it's hard to predict the results in one case based on the results in others. The problem is that fair use has become a matter of whether the use is transformative so, you have to ask yourself, in what way is the use transformative here?"  Mr. White is a member of the patent bar who has handled a series of complex litigation matters including patent infringement, disputes over oil and gas royalties, employment discrimination cases and class actions alleging Consumer Protection Act violations and unconstitutional racial preferences.  Two documents cited specifically in the complaint are a motion in limine and a motion for summary judgment authored by Mr. White.  Mr. Elan is a solo practitioner with offices on Broadway in Manhattan who has litigated on the plaintiffs' side in a number of class actions.  Among the "numerous" documents he has written are a complaint and a memorandum in opposition to defendants' motions to dismiss in Totilo v. Gross, a lawsuit brought by a bank depositor against the executive officers of NetBank. 2008 U.S. Dist Ct. Pleadings LEXIS 14958; 2008 WL 1802547.  Neither Mr. White nor Mr. Elan returned calls for comment about their lawsuit.  West Publishing Corp. is an arm of Thomson-Reuters. ALM, the publisher of the New York Law Journal, licenses its content to LexisNexis, an arm of Reed Elsevier Inc.  Both West Publishing and LexisNexis sell access to online digital databases containing judicial opinions, news articles and legal treatises to attorneys and other professionals. The companies also digitally warehouse complaints, motions, legal memoranda and briefs written by attorneys and their firms.  "What West and LexisNexis are doing is, they are relying on the attorneys to provide them with content," Mr. Blue said. "They scoop up this high-quality content, essentially for free, and then they sell it back to the same audience that produced the content."  Mr. Blue and Mr. Bragar draw the distinction between the two companies' offerings and other uses.  Judges, of course, are the intended audience of the briefs and legal memoranda. And the federal court system's PACER database, the two lawyers say, is clearly a different animal than a private database.  "The difference," Mr. Blue said, "is that Congress has mandated these briefs and pleadings be made available and the PACER system covers its overhead—they aren't in the business of turning a profit. PACER is making the court records available as part of the courts' mandate for open records."  Thomson-Reuters declined to comment, saying it refrains from commenting on ongoing litigation.  There was no immediate comment from LexisNexis.  One issue facing the lawyers in the subclass that would be led by Mr. White is numerosity, the requirement that proposed class members be so numerous that joinder is impractical and the disposition of their claims in a class action would benefit the court and the parties.  Mr. Bragar said he did not know for sure how many lawyers have made the effort to register any of their filings but that they would only need 100 to 200 people to satisfy the numerosity requirement.  Mr. Blue said the idea that attorneys might have a copyrightable interests in their filings has been percolating long enough that they should hit the threshold.  "I think very highly of Mr. White and it seems to me that in a country full of lawyers, the idea that there is only one attorney who sought to do this is pretty far fetched," Mr. Blue said. "I suspect I'll be hearing from a lot of lawyers who are pleased with the filing of this lawsuit."  Mark Hamblett can be contacted at mhamblett@alm.com.