When Lawyers Attack: Biting the hand that E-Feeds You

Posted by By at 28 February, at 07 : 04 AM Print

People sue one another for copyright infringement all the time. Infringement suits are so common that most fail to make the news. But when they do, the facts tend to be particularly interesting.

So is the case of a recent class action lawsuit against two behemoths of the legal publishing industry, West Publishing and Reed Elsevier, the multi-billion dollar publishers behind Westlaw and Lexis-Nexis, respectively.

For the uninitiated, Westlaw and Lexis each act as a sort of legal mega search-engine. Individual lawyers, firms and libraries pay substantial fees (ranging anywhere from a few hundred to a few thousand dollars a month) to subscribe to customized content “packages,” which in turn give subscribers immediate access to everything from cases and court documents to legislation and news reports. In short, it’s not that much of an overstatement to say that without Lexis or Westlaw (or one of their smaller competitors), lawyers everywhere would be forced to slave away the hours pouring over dusty volumes in law libraries, or assaulting beleaguered clerks for case information, in person. Horror.

Thus, it came as a bit of a shock (to this lawyer, at least) to see that two enterprising attorneys have decided to bite the hand that electronically feeds them. Edward White, a lawyer based out of Oklahoma City, and Kenneth Elan, a New York City practitioner, represent two separate classes of plaintiffs accusing the database providers of infringing their content.

Now, its settled law that while copyright covers “original works of authorship fixed in any tangible medium of expression,” not all works are considered copyrightable. For example, works created by the federal government, such as official reports, court opinions and legislation are considered to be part of the public domain. The same holds true for many types of state-created works (though it varies wildly from state-to-state).

And while this free access represents a huge boon to database providers, the publishers have recognized they can’t survive on public-domain works alone. The publishers also include volumes of supplemental and value-added material, in the form of treatises, commentaries, briefs, legal memoranda and annotations on cases and statutes. Both Lexis and West have also faced long and oftentimes protracted legal battles over the scope of protection for these value-added additions, even down to preserving the copyrightability of the page numbers they assign to cases and statutes.

The twist Messrs White and Elan bring to this saga is whether database providers should be allowed to copy works that don’t readily fit into the public domain, specifically, the briefs, memoranda and motions prepared by lawyers as part of the litigation process. According to their complaint, the plaintiffs (and the classes they represent) consider their works to be protectable and argue that West and Lexis engaged in “unabashed wholesale copying of thousands of copyright-protected works” without compensation. West and Lexis, who have been doing this sort of thing for years, obviously disagree. The plaintiffs are seeking both damages and injunctive relief against further appropriation.

White and Elan are also acting as the voice of two separate classes of potential plaintiffs–White represents all attorneys and law firms who have registered their works with the U.S. Copyright Office, while Elan represents those attorneys and firms that have works that have not been registered. However, copyright law potentially complicates the Elan class of cases, as it specifically prohibits unregistered copyright owners from bringing an infringement suit.{{1}}

While the case seems a bit far-fetched, its not entirely implausible, thanks to two Supreme Court decisions. In 2001, the U.S. Supreme Court decided, in the case of New York Times Co., v. Tasini, 533 U.S. 483 (2001), that online database providers (in this case, Lexis-Nexis) infringed on the copyrights of six freelancers by reproducing the authors’ works electronically without their permission. While that case dealt with authors who had registered their works, a subsequent case, Reed Elsevier Inc. v. Muchnick, 130 S.Ct. 1237 (2010), held that a court could entertain a settlement entered into by a plaintiff class that consisted of both registered and unregistered copyright holders.

If the plaintiffs succeed, it could represent a new revenue model for attorneys. In addition to billing clients in the course of preparing sometimes exceedingly tedious documents (complaints, I’m looking at you), now lawyers everywhere may be able to get residual payments every time someone accesses that complaint on Westlaw. At a minimum, I’m hoping that it will lead to a discount in the monthly subscription fees. For the six or so briefs and documents I’ve written that are in the West and Lexis databases, that could mean a slightly-less-than-exorbitant fee. Hey, a girl can dream.

* In the interests of full disclosure, I’ve worked for Thomson Reuters and Reed Elsevier in the past as an author.

Photo by openDemocracy

[[1]]In addition to Section 411 of the Copyright Act, which creates a statutory bar to suit absent registration, a separate section, 17 U.S.C. § 412, limits the type of damages that can be obtained for works that are not first registered with the Copyright Office prior to the act of infringement. How much of this must be re-evaluated in light of the Supreme Court’s decision in Muchnick, remains a question for the lower courts to address.[[1]]

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- who has written 6 posts for Rock The Capital
Carey N. Lening, Esq. is a solo practitioner, writer, and lecturer who is devoted to legal issues relating to technology, security & privacy, social media, and intellectual property. She writes on areas ranging from business data privacy and security to the legislative changes affecting privacy, copyright, and trademark law. Ms. Lening received her Juris Doctorate from Pierce Law Center of Concord, NH. Prior to opening her practice, Ms. Lening was a journalist for BNA’s Patent, Trademark & Copyright Journal. - Email Carey Lening

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