Great Fair Use Advice from Reed Elsevier (Seriously!)

Sometimes litigation creates strange bedfellows. We have watched with great interest the case of White v. West, a lawsuit challenging legal research databases Lexis and Westlaw for their practice of ingesting legal briefs and motions filed in federal court cases, indexing them for search, and reselling access to the briefs in their own databases. An abbreviated order entered in February says the databases have won the case, most likely based on a fair use rationale, but a full opinion explaining the reasoning of the court is still forthcoming.

This situation is deeply ironic. Reed Elsevier and West Publishing, the parent companies of Lexis and West, are historically aligned with the rest of the content industry in opposition to any legal theory that loosens the grip of copyright holder control. Reed Elsevier in particular is quite aggressive. They funded an anti-fair use amicus brief in the Georgia State case, are a member of the AAP, which funded another anti-fair use amicus brief in the HathiTrust case, pushed hard for database legislation, and were behind the awful “Research Works Act” which would have outlawed federal public access policies.

But now these ardent maximalists find themselves in substantially the same position as the libraries they have lately antagonized, and they must rely on the strongest possible fair use arguments to get themselves out of copyright trouble. Remarkably, the briefs make an eloquent case for fair use, and libraries can learn a lot from them.

Reed Elsevier and West filed six briefs in the case that are chockfull of fair use arguments. Here are a few of the high points, taken from Document #69, Reed Elsevier Memorandum of Law in Opposition to Plaintiff’s Motion for Summary Judgment. The full brief is embedded at the bottom of this post:

First Factor: Purpose and Character of the Use

“After selecting the Briefs for inclusion in the BPM database, Lexis enhanced them by making them text and topic searchable, adding links to and from related opinions, expert testimony, and other related materials, and adding hyperlinks to cited cases and statutes.”

So, careful processing and contextualizing helps strengthen a transformativeness argument. Libraries who add helpful metadata, link documents with one another and with larger collections, and so on, are engaged in transformative activity that creates a new, improved research object, different from the raw item that was initially acquired.

“Following selection and enhancement, the Briefs were added to a sophisticated research tool consisting of interconnected legal documents for students and professionals to research legal arguments, case law, statutes, pleading formats and so on.”

Once individual works are tagged and so on, they can be further transformed by placing them into a larger tool that enables search and analysis across a large corpus.

“Plaintiff’s use of the Briefs was entirely different. They were created to advocate a client’s position in a court.”

While in the broadest sense, legal briefs are written (like every written work) to be read, the Elsevier legal team realizes that you need to look at a more specific purpose to determine whether a new use is transformative. Namely, you need to look at the main purpose that motivated the author to write and publish the work. Similar arguments could be made about many items in library archives and special collections, and even in general research collections. These works were created as business records, or personal documents, or to communicate privately, or to advocate a scholarly position to one’s peers, etc. Making them the object of research or teaching may well be transformative.

“The stark contrast in the purposes of these two uses alone confirms that Lexis’s use is transformative.”

Indeed, the case law is quite clear: a use is transformative (and thus favored under the first fair use factor) if it is made for a new purpose distinct from the purpose of the original work. Reed Elsevier should have put its attorneys in this case in touch with the ones representing the AAP in its anti-fair use amicus brief in the HathiTrust case, as the latter team sternly dismissed the idea that a new purpose is sufficient to render a use transformative. Indeed, the Reed Elsevier team cites with approval exactly the same language from Judge Baer’s decision in HathiTrust that the AAP team is trying to discredit.

Digital access provided to students for free is not the same as printed course packs sold for profit

Reed Elsevier argues persuasively that the Basic Books v. Kinko’s case, which found copy shops liable for providing students with course packs for profit, does not apply when the use is transformative and access is provided free of charge:

That case involved a private copy center charging college students for copies of course packets. Lexis, however, does not charge law students for access, and its use, unlike the defendant in Basic Books, did not have “the intended purpose of supplanting the copyright holder’s commercially valuable right.”

Second Factor: Nature of the work used

“Lexis therefore did not usurp any right of first “publication” because Plaintiff never had any intention to publish the Briefs beyond filing them in court.”

Libraries sometimes worry that for unpublished works they may face the claim that their use cannot be fair because it violates the old common law “right of first publication.” Reed Elsevier argues that for works that obviously were never destined for publication, there is no such right. Music to any archivist’s ears, I’m sure!

“[L]egal professionals who review already filed legal documents are not searching for clever turns of phrase—they are looking to see what arguments have been made, what authorities have been cited, and what facts have been relied upon by lawyers in cases similar to their own.”

Kinda sounds like what scholars are interested in when they look at articles and books, right? Just as Judge Evans did with the scholarly monographs in the Georgia State case, Reed Elsevier argues here that the briefs are not primarily about expression; they are about facts and analysis. This turns the second factor in favor of fair use.

Third Factor: Amount Used

“It is indisputable that it was necessary for Lexis to copy the entirety of the Briefs to create a fully searchable database and provide the user access to complete and accurate legal formats and arguments as part of its transformative use.”

Indeed, you can use the whole thing if that’s the right amount for your transformative purpose. If your purpose is to make a fully searchable database (ahem, HathiTrust), then, by golly, the whole thing is what you need! Reed Elsevier said so. (And so did the US Supreme Court, of course, in the landmark case Campbell v. Acuff Rose.)

Fourth Factor: Market Harm

“Plaintiff makes the circular argument that, because Lexis uses the Briefs for its sophisticated legal research database, ipso facto, Lexis has harmed Plaintiff’s ability to license its Briefs for that use.”

That’s right: just because, say, the AAP or the Copyright Clearance Center or the Authors Guild comes knocking with its hand out doesn’t automatically mean there is a genuine “market” that has been harmed by the use. That would be circular!

“To avoid this ‘danger of circularity,’ courts have held that market harm for purposes of a fair use analysis does not take into account any market created by the transformative use.”

So when someone like, say, the CCC or Reed Elsevier, does have their hand out, you can tell them they don’t get your money if what you’re doing is transformative.

“Plaintiff acknowledges that the Briefs were not created with the intention of selling or licensing them, and it has never attempted to sell or license the Briefs.”

Yep: there can’t be market harm if you’ve never intended to exploit a market. Again, good news for archives and special collections; all those business records and family photos and constituent letters are subject to a very friendly analysis under the fourth factor.

“First Amendment considerations are also part of the fair use doctrine.”

Fair use is not the last refuge of a scoundrel; it is a “built-in First Amendment accommodation[]” recognized by the Supreme Court. Where First Amendment interests are at stake (academic freedom, perhaps), the scale should tip further in favor of fair use.

It is really quite refreshing to read all the arguments that we in the library community have been making for years in the pages of a brief filed by the loyal opposition. I would like to hope that the publishers learned something from spending a little time on the Defendant’s side of the “v.,” but since their terrible GSU and Hathi briefs were filed after these wonderful briefs (and by different attorneys), I’m not optimistic.