Under section 102 of the Copyright Act, copyright protection extends to "original works of authorship." Based on that definition, lawyers may believe that legal documents created while representing clients constitute protectable original works of authorship that cannot be copied or otherwise commercially exploited without their authorization. However, a recent federal court decision may call that belief into question. In a Memorandum and Order issued July 3, 2014 in case 1:12-cv-01340-JSR (Document 84), Judge Rakoff of the Southern District of New York sided for Westlaw and LexisNexis (the "publishers") against lawyers Edward White and Kenneth Elan (the "lawyers") based on a finding that the publishers' resale of legal briefs falls under the fair use defense to copyright infringement. The lawyers filed a copyright infringement suit against the publishers for including two legal briefs, a Motion for Summary Judgment and a Motion in Limine, in the publishers' databases for resale. The legal briefs in this case were filed through the PACER system and thereby became publicly available for the publishers to access and add to their databases.

In determining that the publishers' use of the legal briefs constitutes fair use, the court went through the standard four-factor fair use analysis: (1) the purpose and character of the use, including whether such use is commercial in nature; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use on the value of the copyrighted work. The court determined that three of these factors favor a finding of fair use while one factor is neutral.

The first factor was determined to weigh in favor of fair use. Although the use was commercial in nature, the court determined that the use was also transformative due to the publishers' processes of reviewing, selecting, converting, coding, linking and identifying the documents, which "adds something new, with a further purpose or different character" than the original briefs. The court added: "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."

For the second factor, the court reasoned that fair use is more likely to be found in factual works than fictional works, and "[h]ere, the briefs at issue are functional presentations of fact and law, and this cuts toward finding in favor of fair use."

For the third factor, although the entirety of each legal brief was used, the court determined that "such copying was necessary to make the briefs comprehensively text searchable," and the publishers "only copied what was reasonably necessary for their transformative use." Based on this analysis, the court determined that the third factor was neutral.

The fourth factor was determined to weigh in favor of fair use because the publishers' use 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."

Source: Memorandum and Order, 1:12-cv-01340– JSR, Document 84, http://www.nysd.uscourts.gov/cases/show.php?db=special&id=412

For more information on this topic, please visit our Copyright Litigation service page.

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