Defendant West Publishing Corporation’s Memoran-

dum of Law in Opposition to Plaintiff’s Motion for

Summary Judgment
October 23, 2012

ARGUMENT

In Point I, we demonstrate that West—not Plaintiff—is entitled to

summary judgment on West’s fair-use defense. In Point II.A, we
show that West—not Plaintiff—is entitled to summary judgment on
West’s affirmative defenses directed at relief. In Point II.B, we address
the other defenses that preclude summary judgment for Plaintiff. 1
See West Sum. J. Mem. 10-20.

2
See 17 U.S.C. §107.
I. West’s Fair-Use Defense

West explained in its summary judgment motion why its use of

Plaintiff’s Motions is fair.1 Nothing in Plaintiff’s brief calls into ques- 3
Pl. Mem. 9 (quoting Sony Corp. of Am.
tion any of West’s arguments. We discuss the errors in Plaintiff’s v. Universal City Studios, Inc., 464 U.S.
analysis of the four statutory fair-use factors below.2 417, 451 (1984)).

4
Pl. Mem. 10.
A. The Purpose and Character of West’s Use of the Motions Weigh in Fa-
vor of Fair Use 5
Campbell v. Acuff-Rose Music, Inc., 510
U.S. 569, 584 (1994); see also, e.g., A.V.
ex rel. Vanderhye v. iParadigms, 562 F.3d
1. The commercial nature of the use is of little signifi- 630, 639 (4th Cir. 2009). The commercial
or nonprofit educational purpose of a
cance. Plaintiff begins its discussion of the first fair-use factor by work “is only one element of the first
reciting the since-abandoned principle that “every commercial use of factor enquiry into its purpose and
character,” Campbell, 510 U.S. at 584,
copyrighted material is presumptively an unfair exploitation.”3 From and it is not necessarily an important
this erroneous premise, Plaintiff then points to the commercial benefit one. As the Supreme Court has noted,
West derives from the “the sale of legal research materials” when it “nearly all of the illustrative uses
listed in the preamble paragraph of §
“charge[s] subscribers for access to databases containing legal briefs 107 . . . ‘are generally conducted for
and pleadings, including the databases that included the Works,” and profit.”’ Id. (citation omitted); see also
Am. Geophysical Union, 60 F.3d at 921
contends that this fact weighs meaningfully against a finding of fair (“Since many, if not most, secondary
use.4 It does not. users seek at least some measure
The U.S. Supreme Court has expressly rejected the notion that of commercial gain from their use,
unduly emphasizing the commercial
commercial uses of copyrighted material are presumptively unfair.5 motivation of a copier will lead to an
Rather, in assessing the impact of commercial use on a determination overly restrictive view of fair use.”).
of whether copying is fair, courts apply “a more subtle, sophisticated
approach.”6 Instead of presuming unfairness, courts consider factors 6
Am. Geophysical Union, 60 F.3d at 921.
such as whether the use is transformative, whether the defendant is
seeking to capitalize on the expressive value of the plaintiff’s works
without paying a “customary price,” and whether there is a public
interest in the defendant’s dissemination of information.7 Each of 7
See Bill Graham Archives v. Dorling
Kindersley Ltd., 448 F.3d 605, 609-12 (2d
Cir. 2006); Kelly v. Arriba Soft Corp., 336
F.3d 811, 818-20 (9th Cir. 2003); Swatch
Group Mgmt. Servs. Ltd. v. Bloomberg
L.P., 861 F. Supp. 2d 336, 340 (S.D.N.Y.
2012).
 west’s opposition to plaintiff’s motion for summary judgment 2

these considerations weighs in favor of fair use here. 8

NXIVM Corp. v. Ross Inst., 364 F.3d
471, 478 (2d Cir. 2004); see also Campbell,
First, as explained in West’s motion for summary judgment and 510 U.S. at 584.
as discussed in Point I.B below, West’s use of the Motions is trans- 9
Bill Graham Archives, 448 F.3d at 612
formative. The commercial nature of its use therefore is “properly (quoting Harper & Row, Publ’rs, Inc. v.
discounted.’8 Nation Enters., 471 U.S. 539, 562 (1985)).

Second, although West is a for-profit entity, “‘[t]he crux of the 10

See Gerba Decl. Ex. E, Nos. 2-3, 5-6
profit/non-profit distinction is not whether the sole motive of the (admitted pursuant to Fed. R. Civ.
use is monetary gain but whether the user stands to profit from ex- P. 36(a)(3)); White Dep. 78:22-79:7,
128:11-129:4, 130:9- 18, 164:19-165:19,
ploitation of the copyrighted material without paying the customary 202:21-203:18.
price.”’9 Here, there is no “customary price,” Plaintiff concedes that 11
See West Sum. J. Mem. 13-14; Am.
anyone may copy the Motions without his consent at the courthouse Geophysical Union, 60 F.3d at 922
or through PACER, and he has never attempted, or been asked by (“[C]ourts are more willing to find a
secondary use fair when it produces a
anyone, to license his work.10 value that benefits the broader public
Third, commerciality is given little weight when the use serves a interest.”); Swatch, 861 F. Supp. 2d at
341 (finding first factor weighed in
public interest.11 Plaintiff does not dispute that West’s enhancement favor of defendant (Bloomberg) on
of access to court filings serves a valuable public interest. ground that its commercial use of plain-
In short, the mere fact that West charges subscribers for access to tiff’s earnings call “advanced the public
interest of furthering full, prompt and
its database is of little consequence to the overall fair-use assessment. accurate dissemination of business and
financial news”).
2. West used the works for a non-superseding, transfor- 12
See Pl. Mem. 10-13.
mative purpose. Conceding that whether the use is transformative 13
Id.
is most critical to the first-factor analysis, Plaintiff disputes the trans-
formative nature of West’s use.12 But Plaintiff’s assertion that West Am. Compl. ¶ 23, ECF No. 37 (em-
14

phasis added).
“simply made verbatim copies of the Works” that were “in no way
transformative”13 is not only counterfactual but contrary to its alle-
15
Pl. Mem. 12.
16
Vanderhye, 562 F.3d at 639; see id.
gation that West “copied, digitized, transformed, and packaged [the
at 640 (finding archiving of verbatim
Works] into databases that are sold for profit.”14 copies of student papers in a database
More important, Plaintiff errs in contending that West’s use of the used to detect plagiarism to be transfor-
mative and fair use).
Motions cannot be transformative because West assertedly “adds
nothing of value to the copyrighted expression owned by Plaintiff.”15
17
See Bill Graham Archives, 448 F.3d at
609 (finding transformative use of entire
As the Fourth Circuit recently observed: “This argument is clearly works where defendant’s “purpose
misguided. The use of a copyrighted work need not alter or augment in using the copyrighted images at
issue. . . is plainly different from the
the work to be transformative in nature. Rather, it can be transfor-
original purpose for which they were
mative in function or purpose without altering or actually adding created”); Kelly, 336 F.3d at 819 (“Be-
to the original work.”16 The Second Circuit and other courts are in cause Arriba’s use is not superseding
Kelly’s use but, rather, has created a
accord.17 different purpose for the images, Ar-
Although West does add important transformative elements to riba’s use is transformative.”); see also
Calkins v. Playboy Enters. Int’l, 561 F.
the documents it includes in Litigator™, such as making them text-
Supp. 2d 1136, 1141 (E.D. Cal. 2008)
searchable and linking them to other documents in the database,18 (“[B]ecause [the defendant] used the
West’s argument does not rely solely, or even primarily, on these Photograph in a new context to serve
a different function (inform and enter-
physical transformations. Nor does West claim it has made a trans- tain Playboy readers) than the original
formative use simply because it has made documents accessible in function (gifts for family and friends),
[the defendant’s] use did not supersede
a different physical format, as Plaintiff wrongly suggests.19 Rather,
the function of the original Photograph,
West contends that its use is transformative because it equipped and therefore [its] use is transforma-
tive.”); 4 Melville B. & David Nimmer,
Nimmer on Copyright § 13.05[B][1]
at 13-212 (2011) (“[I]f, regardless of
medium, defendant’s work performs
a different function from plaintiff’s,
then notwithstanding its use of substan-
tially similar material, the defense of
fair use may prevail.”). The dictum in
Infinity Broadcasting Corp. v. Kirkwood
that “difference in purpose is not quite
 west’s opposition to plaintiff’s motion for summary judgment 3

the Motions to serve a completely different, non-superseding pur-

pose than that for which they were created: the provision of legal
services.20 20
See Bill Graham Archives, 448 F.3d at
There is no dispute that the purpose of West’s use of the Motions 610 (finding secondary use transforma-
tive because it served a “separate and
as part of its database of public court filings is entirely “separate and distinct” purpose from the original).
distinct” from Plaintiff’s original purpose in creating them, which
was to provide legal representation to its clients.21 West’s database 21
See White Dep. 69:14-24, 76:13-77:21,
does not use the Motions to substitute for Plaintiff’s legal advocacy 202:12-20.

or for any potential market into which Plaintiff might sell copies of
its briefs; rather, it offers an entirely new, transformative product.22 22
See Leighton Decl. ¶¶ 3, 6-7, 11;
In Blanch v. Koons, the Second Circuit found that the “sharply differ- Blackburn Decl. ¶¶ 4-6, 8.

ent objectives that Koons had in using, and Blanch had in creating,
[the copyrighted work] confirms the transformative nature of the
use.”23 No differently, the distinct objectives that West has in using, 23
467 F.3d 244, 252 (2d Cir. 2006)
and White had in creating, the Motions confirm the transformative (citation omitted).

nature of West’s use.

Plaintiff’s reliance on cases such as American Geophysical Union
and Mp3.com is unavailing. Plaintiff argues that American Geophysi-
cal Union is “particularly instructive on the issue of ‘transformative’
use,”24 but, unlike this case, the copies at issue in American Geophys- 24
See Pl. Mem. 11.
ical Union were made by the defendant “for the same basic purpose
that one would normally seek to obtain the original.”25 The court 25
60 F.3d at 918.
observed that the defendant’s copying was “part of a systematic pro-
cess of encouraging employee researchers to copy articles so as to
multiply available copies while avoiding payment.”26 Because an 26
Id. at 920.
untransformed copy of plaintiff’s work by the defendant in that case
was “likely to be used simply for the same intrinsic purpose as the
original,” there was “limited justification for a finding of fair use.”27 27
Id. at 923.
By contrast, West’s copies were offered to an entirely different audi-
ence, and for an entirely different purpose, than were the originals.
There is, moreover, no avoidance of payment to Plaintiff. As noted
above, anyone can copy the Motions from PACER without Plaintiff’s
consent and without compensation to him.
This case is likewise easily distinguished from Mp3.com: West’s
enhancement of the Motions and their inclusion in West’s text-
searchable, hyperlinked research database is not mere retransmission
in another medium; it is transformative use for an entirely different
audience and entirely different purposes.28 28
See Authors Guild, 2012 WL 4808939,
Moreover, unlike the plaintiffs in MP3.com, White concedes he has at *11-*12 & n.24.

made no effort to license its Motions or to develop a potential market

for them.29 29
See Gerba Decl. Ex. E, Nos. 2-3
In sum, the purpose and character of West’s use of Plaintiff’s Mo- (admitted pursuant to Fed. R. Civ.
P. 36(a)(3)); White Dep. 78:22-79:7,
tions strongly favors fair use. 202:21-203:18.
 west’s opposition to plaintiff’s motion for summary judgment 4

B. The Factual Nature of the Copyrighted Works Weighs in Favor of Fair

Use
Plaintiff implicitly concedes that the Motions are factual in nature,
which tips factor two in favor of fair use.30 Plaintiff’s sole argument 30
See West Sum. J. Mem. 17.
as to this factor is that the Motions remain unpublished (which West
does not dispute).31 Although the unpublished nature of the Mo- 31
See Pl. Mem. 13-17.
tions is relevant to Plaintiff’s eligibility for statutory damages and
attorneys’ fees,32 it does not bear on West’s fair-use defense because 32
See West Sum. J. Mem. 21-23.
Plaintiff had already filed the Motions and made them available to
the public without restriction prior to any act of copying by West.33 33
See, e.g., Rotbart v. J.R. O’Dwyer Co,
Courts have disfavored unauthorized use of unpublished works Inc., No. 94 Civ. 2091 (JSM), 1995 WL
46625, at *4 (S.D.N.Y. Feb. 7, 1995).
for one of two reasons, neither of which applies here. First, courts
have recognized that the use of unpublished works is less likely to
be fair use if it interferes with the author’s right to control and profit
from the first public appearance of the work.34 In Harper & Row, 34
See, e.g., Harper & Row, Publ’rs, Inc.
the Court determined that a pre-publication “scoop” of President v. Nation Enters., 471 U.S. 539, 555, 564
(1985); see also, e.g., Calkins, 561 F. Supp.
Ford’s memoirs by The Nation magazine was not a fair use of the 2d at 1142.
copyrighted material in part because it interfered with the right of
President Ford publisher to control the “first public appearance” of
the newsworthy material and resulted in a cancelled contract for a
similar (but licensed) use of excerpts by another magazine.35 Second, 35
471 U.S. at 564.
some courts have recognized, at least implicitly, a privacy interest in
unpublished materials that were never intended for publication at all,
such as diaries and personal letters. 36 36
See, e.g., Salinger v. Random House, Inc.,
The logic of these cases does not apply to Plaintiff’s Motions.37 Al- 811 F.2d 90 (2d Cir. 1987) (unpublished
letters).
though the Motions are unpublished, there has been no interference 37
See Nunez v. Caribbean Int’l News Corp.,
by West with Plaintiff’s right to control the first public appearance of 235 F.3d 18, 24 (1st Cir. 2000).
them, and no privacy interest is implicated. The Motions already had
made their “first public appearance” and were widely available to
any member of the public at the courthouse and through PACER.38 38
See Gerba Decl. Ex. E, Nos. 5-6
In marked contrast to the copying at issue in Harper & Row, West’s (admitted pursuant to Fed. R. Civ. P.
36(a)(3)); White Dep. 71:3-72:3, 76:24-
copying had neither the “intended purpose” nor even the “inciden- 77:11.
tal effect” of supplanting Plaintiff’s right to control the first public
appearance of the Motions.39 Harper & Row, 471 U.S. at 562; see also
39

Vanderhye, 562 F.3d at 641.

Accordingly, the second factor favors fair use.

C. Use of the Entire Work Does Not Weigh Against Fair Use in This Con-
text
Plaintiff contends erroneously that West’s “copying of the entirety
of the Works weighs very heavily against a finding of fair use.”40 40
Pl. Mem. 18.
Plaintiff simply ignores the many cases in which courts have held
that copying the entire work does not weigh against a finding of fair
use if the copying is necessary to achieve the transformative purpose
 west’s opposition to plaintiff’s motion for summary judgment 5

of the use.41 West explained in its moving brief why copying the 41
See West Sum. Mem. 18 (citing Bill
Motions in their entirety is necessary to fulfill West’s transformative Graham Archives, 448 F.3d at 613; Kelly,
336 F.3d at 821; Nunez, 235 F.3d at 24;
purpose,42 and refers the Court to those arguments. Swatch, 861 F. Supp. 2d at 342); see also,
The third factor is neutral. e.g., Perfect 10, Inc. v. Amazon.com, Inc.,
508 F.3d 1146, 1167-68 (9th Cir. 2007);
Authors Guild, 2012 WL 4808939, at *12;
D. The Absence of Actual or Potential Market Harm Confirms That the Sedgwick Claims Mgmt. Servs., Inc. v.
Delsman, No. C 09-1468 SBA, 2009 WL
Use Is Fair 2157573, at *6 (N.D. Cal. 2009); Calkins,
561 F. Supp. 2d at 1142-43; Haberman v.
In its moving brief, West discussed the absence of any secondary Hustler Magazine, Inc., 626 F. Supp. 201,
market for Plaintiff’s works. West explained that Plaintiff’s inability 212 (D. Mass. 1986).
42
See West Sum. J. Mem. 18-19.
to articulate any way in which a market for, or the value of, its works
has been adversely affected by West’s conduct demonstrates an ab-
sence of market harm.43 Tellingly, Plaintiff does not cite a single case 43
See West Sum. J. Mem. 16-17.
or shred of evidence to support its discussion of market harm.
Plaintiff first contends that because West and Lexis offer databases
that contain legal briefs and pleadings, there must be a market for
such works and asserts that West and Lexis have foreclosed the de-
velopment of a licensing market.44 But Plaintiff’s invocation of an 44
See Pl. Mem. 19.
imagined “competing service” that would pay for its motions can-
not support a finding of potential market harm. The market-harm
inquiry is limited to possible impacts on “traditional, reasonable, or
likely to be developed markets.”45 The purely hypothetical market to 45
Am. Geophysical Union, 60 F.3d at 930.
which Plaintiff alludes is none of those. Plaintiff’s suggestion that, in
the absence of West and Lexis, erstwhile competitors and a licensing
regime would emerge is rank speculation.46 46
See Authors Guild, 2012 WL 4808939,
at *13. The only evidence on this point
Plaintiff has no right to interfere with West’s exploitation of a
indicates that no such licensing regime
transformative market, and the imagined loss of prospective revenues would emerge. Blackburn Decl. ¶¶ 7, 9;
from a hypothetical future competitor in that same transformative Leighton Decl. ¶ 14.

market is not cognizable market harm. As the Court of Appeals has

observed:

Were a court automatically to conclude in every case that potential

licensing revenues were impermissibly impaired simply because the
secondary user did not pay a fee for the right to engage in the use, the
fourth factor would always favor the copyright owner. . . . [C]opyright
owners may not preempt exploitation of transformative markets. . . 47 47
Bill Graham Archives, 448 F.3d at 614-
15 (citation and quotation omitted); see
Plaintiff is left to contend that, by making the Motions “readily also Authors Guild, 2012 WL 4808939, at
*13.
available to competing attorneys, those competing attorneys have the
ability to obtain Plaintiff’s work and offer Plaintiff’s work product
and expertise to their own clients.”48 This is no more than a com- 48
Pl. Mem. 20.
plaint about public access to court filings. Copyright law does not
prevent other attorneys from using legal theories and ideas gleaned
from Plaintiff’s filings; ideas, as opposed to the author’s particular
expression of them, are not protected by copyright.49 Nor does this 49
See 17 U.S.C. § 102(b); Eldred v.
purported prospective harm flow from West’s conduct. Any attorney Ashcroft, 537 U.S. 186, 219 (2003)
(“[Copyright law] distinguishes be-
tween ideas and expression and makes
only the latter eligible for copyright
protection.”).
 west’s opposition to plaintiff’s motion for summary judgment 6

interested in competing with White could simply log onto PACER or

visit a courthouse to obtain copies of Plaintiff’s works. And even this
harm is speculative: White cannot identify a single instance in which
a competing attorney used West to obtain copies of the Motions (or
any other filing) in order to compete with him.
The complete absence of harm to any actual or potential market
for the Motions weighs heavily in favor of fair use.50 50
See, e.g., Blanch, 467 F.3d at 258.

E. Balance of Factors
Three of the four statutory fair use factors weigh heavily in favor of
fair use, and the remaining factor (the third) is neutral. Plaintiff does
not allude to any other equitable consideration that weighs against
fair use, nor could it credibly do so.51 In light of the foregoing, Plain- 51
Other courts have considered factors
such as whether: (i) the works were
tiff’s motion for summary judgment should be denied, and West’s
fairly acquired by the defendant (they
motion for summary judgment on its fair-use defense should be were); (ii) the defendant attempted to
granted. palm off the plaintiff’s work as its own
(West did not); and (iii) the defendant
acted in bad faith (West did not). See,
e.g., Haberman, 626 F. Supp. at 214.