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.

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.

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.


Fair Use Balancing Test Applied

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

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the court it is harder to claim that they are “unpublished.”  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
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. 

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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