The Impact of Two Recent Copyright Decisions on Publishers — and the Public

by Raizel Liebler

During July 2014, there were two important decisions regarding copyright and publishers. On the surface, these cases seem quite different considering the defendant in one case is the two largest legal publishers — West and Lexis — and the defendant in the other case is an academic publisher, Duke University Press. But in both cases, the public wins as the copyright holder loses. How is this possible?

PACER loginIn the first case, White v. West Publishing, 111 U.S.P.Q.2d 1405 ((Federal) Southern District of New York 2014), the plaintiffs sued West and Lexis for copyright infringement based on the inclusion of two copyrighted legal briefs in the Westlaw “Litigator” and Lexis “Briefs, Pleading and Motions” (BPM) databases that had been pulled from PACER, the federal court online document system that makes that document publicly available online. Judge Rakoff summarized the databases that these briefs were placed on:

West’s Litigator and Lexis’s BPM products offer users access to select legal documents that were filed, without seal, in state and federal courts. Once West or Lexis selects a particular legal document for inclusion into Litigator or BPM, the document is converted into a text-searchable electronic file and saved in each database’s proprietary format. The document is further modified as follows: an editor reviews the document to redact sensitive and private information, the editor codes and/or extracts from the document key characteristics like jurisdiction and practice area in order to allow users to find and retrieve documents more easily; the editor links the document to decisions and other filings in the same or related cases and creates links to authorities cited in the document; a unique identifier is created for each document for ease of locating and citing the document,; and a link to a PDF of the as-filed version of the document is included in the database version of the document to maintain an archival copy.

In the discussion of fair use, the case does cite to law review articles, it does not cite to the most important work in this highly specific area: Davida H. Isaacs, The Highest Form of Flattery? Application of the Fair Use Defense against Copyright Claims for Unauthorized Appropriation of Litigation Documents, 71 Missouri L. Rev. 391 (2006).

Judge Rakoff found that the fair use factors weigh in favor of fair use, including focusing on the transformative use of the briefs.

First factor (purpose or character/ transformative use):

“West and Lexis’s use of the briefs was transformative for two reasons. First, while White created the briefs solely for the purpose of providing legal services to his clients and securing specific legal outcomes in [a specific case], the defendants used the brief toward the end of creating an interactive legal research tool. … Second, West and Lexis’s processes of reviewing, selecting, converting, coding, linking, and identifying the documents “add[] something new, with a further purpose or different character” than the original briefs. … [While] the transformation was done for a commercial purpose, “the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.”

Second factor (nature of the work):

“Here, the briefs at issue are functional presentations of fact and law, and this cuts towards finding in favor of fair use. … However, while White’s briefs were in some sense unpublished, this factor is made less significant by the fact that White intentionally made the briefs publicly available by filing them with the court; thus the circumstances of this case do not implicate the rationales for protecting unpublished works.

Third factor (amount of work):

“Although defendants here copied the entirety of White’s briefs, such copying was necessary to make the briefs comprehensively text searchable. Thus the Court finds that defendants only copied what was reasonably necessary for their transformative use, and that the third factor is therefore neutral.”

Fourth factor (economic impact):

“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. … Furthermore, no secondary market exists in which White could license or sell the briefs to other attorneys, as no one has offered to license any of White’s motions, nor has White sought to license or sell them. …Although White argues that Lexis and West impede a market for licensing briefs, the Court finds that no potential market exists because the transactions costs in licensing attorney works would be prohibitively high.”

So great news for any aggregator of briefs – and also for anyone who wants to make briefs more public. “Liberating” PACER documents was one of Aaron Swartz’s projects before his efforts were shut down.

Social Science HistoryI couldn’t find any press/blog posts about an equally important decision — The Social Science History Association v. Duke University, No. 5:13-CV-157-BO (July 11, 2014 United States District Court, Eastern District North Carolina)

As part of a contract dispute, The Social Science History Association (SSHA) told Duke University Press (DUP) that it wanted to end their publishing arrangement and seek a different publisher for its flagship journal, Social Science History.  In response, DUP claimed that contract language prevented SSHA from removing the back catalogue from their control. There are plenty of interesting contract issues, but I’m focusing here on the copyright and access issues only.

Judge Boyle found that DUP placing the journal on electronic platforms like JSTOR and Project Muse was within the terms of the contract. And because “the Court has already found that the 1996 agreement permitted Duke to publish and distribute the journal electronically, no copyright infringement has occurred.”

The judge seemed perturbed by SSHA’s copyright claim, adding in dicta that

“Moreover, given plaintiffs knowledge of Duke’s conduct and apparent acquiescence, plaintiff’s actions at this late date in attempting to assert its copyrights may arguably be estopped by equitable principles.”

SSHA was also ordered to allow Duke to receive all withheld money by Project Muse, JSTOR, and High Wire Press for the back catalogue of the journal.

So this means that for most academics (and those with access to academic databases) will continue to have access to the old issues of this academic journal – listed in the briefs as one of the most important history journals, regardless of whatever SSHA does with the journal going forward. While not placing this journal within the public domain, it does prevent SSHA from choosing a route that would lock the journal behind the type of paywall that many association produced journals are moving to.

Summary:  Even if you own the copyright, transformative use by others – or contract terms – can limit how you limit others from using copyrighted works.

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