Copyrighted Briefs in Online Legal Databases are Fair Use: SDNY | Practical Law

Copyrighted Briefs in Online Legal Databases are Fair Use: SDNY | Practical Law

In White v. West Publishing Corp., the US District Court for the Southern District of New York granted summary judgment in favor of the publisher defendants on the basis that including the plaintiff's copyrighted briefs in online legal databases was a non-infringing fair use.

Copyrighted Briefs in Online Legal Databases are Fair Use: SDNY

Practical Law Legal Update 4-574-0929 (Approx. 3 pages)

Copyrighted Briefs in Online Legal Databases are Fair Use: SDNY

by Practical Law Intellectual Property & Technology
Published on 10 Jul 2014 • USA (National/Federal)
In White v. West Publishing Corp., the US District Court for the Southern District of New York granted summary judgment in favor of the publisher defendants on the basis that including the plaintiff's copyrighted briefs in online legal databases was a non-infringing fair use.
On July 3, 2014, in White v. West Publishing Corp., the US District Court for the Southern District of New York explained that summary judgment granted in favor of defendants West Publishing Corp. and Reed Elsevier, Inc. d/b/a LexisNexis, in a copyright infringement case in February 2013, was based on a finding of non-infringing fair use (No. 12 Civ. 1340 JSR, (S.D.N.Y. July 3, 2014)).
White electronically filed through PACER and obtained copyright registrations for two legal briefs. The defendants included the briefs in their online databases, West's Litigator database and LexisNexis's Briefs, Pleadings, and Motions (BPM) database. West's Litigator and Lexis's BPM products allow users to search legal documents that were filed without seal in state and federal courts.
After selecting documents for the database, the defendants converted the documents into text-searchable electronic files and saved the files in their respective proprietary formats. The defendants made additional changes to the documents, including:
  • Having editors code and/or extract key characteristics like jurisdiction and practice area to make the documents more readily accessible.
  • Linking them to decisions and other filings in the same or related cases and creating links to authorities cited in the documents.
  • Creating unique identifiers for each document to make them easier to find and cite to.
  • Including in the database version of each document a PDF link to the as-filed version of the document to maintain an archival copy.
On June 26, 2012, White sued West and Lexis for copyright infringement for including his legal briefs in their databases. The defendants and White filed cross-motions for summary judgment. On February 11, 2013, the SDNY issued a "bottom-line order" granting the defendants', and denying White's, summary judgment motions.
In its July 3, 2014 memorandum, the court explained that it based its decision on fair use because the following three fair-use factors weighed in the defendants' favor:
  • The purpose and character of the use. For this factor, the court noted that the work was transformative for two reasons:
    • White created the briefs for the sole purpose of providing legal services while the defendants used the briefs to create an interactive legal research tool; and
    • the defendants' processes of reviewing, selecting, converting, coding, linking and identifying the documents added something new with a further purpose or different character than the original briefs.
  • The nature of the copyrighted work. The briefs are functional presentations of fact and law, leaning toward fair use. Although the briefs were in a sense unpublished, by filing them with the court White intentionally made them publicly available, which also favors fair use.
  • The effect of the use upon the potential market for or value of the copyrighted work. The defendants' use of the briefs is not a substitute for their use in the original market of providing legal service. Also, no secondary market exists for White to license or sell the briefs, no one has offered to license any of White's motions, and White has not sought to license or sell the briefs.
The final factor, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, was neutral because although the defendants copied the briefs in full, copying in its entirety was necessary to make the briefs comprehensively text searchable.