ASKED & ANSWERED: Claudia Rast

By Steve Thorpe

Legal News

Two attorneys, one from New York and one from Oklahoma, filed suit on Feb. 22 claiming that the inclusion of their briefs in Westlaw and LexisNexis databases are a violation of copyright. Attorneys Edward White and Kenneth Elan are seeking class-action status in federal court. They allege that Westlaw, owned by Thomson Reuters Corp, and Lexis Nexis, owned by Reed Elsevier Plc, infringe the copyrights of works owned by the attorneys and law firms that wrote them. Claudia Rast is a shareholder at Butzel Long. She has extensive experience counseling both clients on legal issues related to business and technology, particularly online and web-based companies.

Thorpe: Is this the first time you're aware of that a legal data provider has faced such a suit? If not, why do you think the issue hasn't arisen in the past?

Rast: This is the first time that I am aware of such a lawsuit. The most likely reason that this issue hasn't been raised in the past is the same reason the "novel interpretation" tag is being associated with the lawsuit: there is a statutory requirement that no claim for copyright infringement may be brought "until preregistration or registration of the copyright claim has been made" under the copyright act. It's a simple and inexpensive process that can be accomplished online at the U.S. Copyright Office website. Once registration is accomplished, certain statutory rights flow to the copyright owner. That's why you see a different "prayer for relief" on page 12 of the complaint. The registered works request statutory damages and the disgorgement of Defendants' profits in addition to actual damages.

You might ask then, "Why don't attorneys register the copyright in their briefs if it's such an easy thing to do?" The simple answer is that it would be hard to find truly "new" copyrightable works among the briefs that attorneys file because our job is not to "reinvent the wheel" with our filings. Not only do we borrow from prior briefs that we may have written, but we will borrow language from the successful briefs of colleagues. Of course, there is a tremendous amount of work in honing an argument and finding the right law, but there are also standard pieces that can be added to a brief. Some briefs may be wholly new works in a novel area of law, but I would argue that they are the exception and not the rule.

Thorpe: The suit is based on what is being called a "novel interpretation" of copyright law. How does the argument differ from more conventional copyright claims?

Rast: The more conventional copyright infringement claims are based on infringement claims for works that have been registered with the US Copyright Office.

Thorpe: The suit contends that the data companies have made "huge profits" from selling access to legal documents without permission. Does the amount of the gain affect treatment of a copyright case?

Rast: The issue of "huge profits" is interesting. Among the commonly-invoked defenses to a copyright infringement claim, two would arise in this lawsuit: 1) registration (whether the work was or was not registered with the Copyright Office) and 2) fair use (the work was used in a reasonable manner without the owner's consent). In assessing fair use, courts will examine several factors, including the purpose and character of the use, e.g., whether its use provides economic gain or not. Keep that in mind and let's go back to the "Prayer for Relief" for a moment. Plaintiffs are able to request a disgorgement of profits only for those works that are registered-a benefit of copyright registration. While I'm not saying that Plaintiffs' registered briefs are not valuable, I doubt that Defendants' profits from these works is "huge."

As for your question on the amount of gain affecting the analysis, in addition to the one factor mentioned above (purpose and character of the use), courts also will consider 2) the nature of the work 3) the amount and substantiality of the portion used in relation to the work as a whole and 3) the effect of the use on the potential market for or value of the work. No single factor is dispositive, and there are no bright lines rules for interpretation.

Thorpe: If the plaintiffs prevail, what effect would it have on everyday practice of the legal profession? Would attorneys once again have to turn the pages of paper books?

Rast: I would be shocked if Plaintiffs prevailed, but if they did, there are plenty of places on the Internet to find legal briefs-and many are free. Paper books are a lovely artifact, and I cherish my library of written materials, but there's no going back to those days.

Thorpe: The case is expected to be heard by Judge Jed Rakoff, who has a reputation for bluntness and candor. Do you expect any fireworks there?

Rast: Judge Rakoff is a fine judge, who may have that reputation stemming from several recent SEC fraud cases, but it is impossible to predict his reaction in this particular lawsuit.

Published: Thu, Mar 15, 2012