Opinion

Alison Frankel

West and Lexis: Copyrights and wrongs

By Alison Frankel
May 15, 2012

Let’s say you’ve just signed a magnificent brief, one that marshals case law and presents your client’s position in the most compelling and articulate fashion. You file it with the court, and then what? Do you register your brief with the U.S. Copyright Office? Most attorneys do not. But if you don’t register your work, can you enforce a copyright on it?

Those are the kinds of questions U.S. Senior District Judge Jed Rakoff will face Wednesday, when he hears oral arguments on a partial motion to dismiss a class action against the legal research giants Lexis and West. (Lexis is a unit of Reed Elsevier, and West is part of Thomson Reuters, my employer.) A class of lawyers, represented by Raymond Bragar of Bragar Wexler Eagel & Squire and co-counsel Gregory Blue of the firm Gregory A. Blue, claims that Lexis and West are infringing copyrights by including legal briefs in the databases they offer their subscribers.

Lexis and West have all kinds of defenses to those claims, but, as an initial matter, they’re arguing that unless lawyers have actually taken the trouble to register their briefs at the Copyright Office, they can’t sue to enforce their rights. Here’s a brief for Lexis on the issue, filed by Morrison & Foerster, and here’s West’s, by Weil, Gotshal & Manges.

Lexis and West argue it’s a well established principle of copyright law that you have to register with the Copyright Office to enforce your rights. They’ve moved to toss the claims of any lawyers who didn’t register their briefs, which, of course, is the vast majority of the purported class since most lawyers are too busy to bother and, until now, there was little need.

But according to class counsel Bragar and Blue, lawyers who haven’t registered their briefs with the Copyright Office can still sue for an injunction and declaratory judgment, even though the Copyright Act requires rights holders to register in order to sue for infringement. Bragar and Blue argued in a brief on Apr. 26 that under the U.S. Supreme Court’s 2010 opinion in Reed Elsevier v. Muchnick, U.S. district judges have jurisdiction over suits involving unregistered copyrights. And since, in their view, the Copyright Act only requires registration for infringement suits, unregistered rights holders can ask district courts for other sorts of relief – such as an injunction against future use of their work or a declaratory judgment that the work is protected. In other words, I’m not risking copyright infringement damages by linking to Bragar and Blue’s unregistered brief, but under their theory I could face a declaratory judgment suit.

I’m kidding, sort of. When I asked Blue if his claims against West and Lexis might just as well apply to me and other journalists who link to briefs we’ve downloaded from federal or state courts, Blue told me he was “not going to walk down that road.” Both Blue and Bragar also said that they don’t consider electronic court databases to infringe copyrights, since court websites like PACER serve an essential public interest and charge nominal, if any, fees. (Interestingly, federal judges don’t have copyrights to their opinions under the Copyright Act, and state court judges are assumed not to have rights.)

Nevertheless, Blue, Bragar, and their clients – lawyers Edward White and Kenneth Elan – are dead serious about their class action against West and Lexis. They claim the two companies are profiting from the unauthorized use of copyrighted legal briefs. The idea for the class action, Bragar told me, came from the Google books litigation, in which authors and publishers raised the question of whether Google’s digital books initiative violated copyrights. From there it was a short leap to the idea that West and Lexis are improperly selling rights to briefs.

One of the plaintiffs, White, has actually obtained copyrights on some of his briefs, and West and Lexis have not moved to dismiss claims by the class he wants to represent, lawyers whose briefs are registered. By all accounts, that’s a very small class: Bragar told me that since he and Blue filed the complaint against West and Lexis in February, he’s heard from lawyers who said clerks in some state courts have refused to accept briefs with the copyright symbol because it’s so unusual. Since White also has unregistered briefs, Bragar and Blue argue that even if Elan is dismissed from the litigation because he hasn’t registered his briefs, White should be permitted to represent a class of both registered and unregistered rights holders.

“[West and Lexis] are trying to knock out the case without denying that they’re engaging in copying briefs on a wholesale basis,” said Blue. “They’re trying to win on a technicality.” (When I asked Blue if he does research via West or Lexis, he said that’s “not relevant.”)

Lexis declined to comment. Counsel James Hough of MoFo said that Blue and Bragar are mistaken about the well settled issue of the rights of unregistered authors. Basic tenets of copyright law aren’t a technicality, he said, and, moreover, the legal research companies haven’t yet touched upon their substantive defenses, such as fair use and their implied license to legal briefs that are publicly available though court electronic filing systems. West spokesman John Shaughnessy declined to comment on the litigation but noted a “long-held tradition, supported by law,” that court records are available to the public. Its counsel at Weil declined to comment.

If Rakoff (who said he checked his royalties from a Reed Elsevier publishing subsidiary to see if they created a conflict before deciding to hear the case) sides with the class and says lawyers have rights over even unregistered legal briefs, the implications are fascinating. Clients are usually footing the bill when lawyers write briefs, so might clients claim to own the copyrights? What if a client wants a lawyer from one case to share a brief with counsel in a related case? Can the second lawyer quote from the first lawyer’s copyrighted brief without seeking permission (or, more implausibly, paying a licensing fee)?

And, of course, legal research would become more complicated, though no one in this case would predict how profoundly because it’s too early in the litigation. It’s also relatively early in the history of databases of legal briefs, which have only been broadly available for the last decade or so. “People who are not happy about the suit say this will make research more difficult,” said Blue. “My answer is every right makes research more difficult … I don’t believe we’d be going back to the Stone Age.”

Rakoff hears oral arguments on the motion to dismiss the claims of unregistered rights holders on Wednesday.

For more of my posts, please go to Thomson Reuters News & Insight

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