TLJ News from August 16-20, 2013

2nd Circuit Rejects Claim to Copyright in Legal Pleadings

8/20. The U.S. Court of Appeals (2ndCir) issued its opinion [11 pages in PDF] in UPRS v. Kaplan, a case regarding copyright in pleadings drafted for filing with a court.

This is a copyright infringement case. The Court of Appeals affirmed the judgment of the U.S. District Court (EDNY) for the defendant Norman Kaplan, an attorney who, in another proceeding, copied and filed pleadings in which the plaintiffs, Unclaimed Property Recovery Service, Inc. (UPRS) and Bernard Gelb, claim copyright.

Although, this is a very narrow ruling. It applies the concept of implied license, and only to copying within one legal action. This opinion does not reach the broader issue of copying pleadings from one action for use in another action, or in collections of legal forms.

It has long been a standard practice of attorneys to copy from the pleadings, discovery requests, contracts, and other legal documents drafted by other attorneys. Legal publishers publish collections of such form documents. Lawyers also turn to court records, property records offices, and other public sources. Lawyers also ask other lawyers for sample language.

The Chief Justice of the state in which the author of this article practiced addressed this topic in a speech many years ago at a swearing in ceremony for new members of the state bar. He told newly admitted lawyers never to hesitate to ask a more senior lawyer, at their firm or any other firm, for copies or form language for pleadings and other legal documents. He admonished senior lawyers never to refuse such a request. He explained that this is critical for fulfilling two fundamental ethical objectives of the bar -- maximizing the quality legal services, and minimizing the cost to clients.

The Court of Appeals in the present case rejected a copyright claim to legal pleadings, but in a much narrower manner, and upon less lofty principles. It relied upon the concept of implied license to copy within one legal action.

It summarized the issue, and its holding, as follows: "This case presents an issue of first impression: whether the holder of a copyright in a litigation document who has authorized a party to a litigation to use the document in the litigation may withdraw the authorization after the document has already been introduced into the litigation and then claim infringement when subsequent use is made of the document in the litigation. We hold that such an authorization necessarily conveys, not only to the authorized party but to all present and future attorneys and to the court, an irrevocable authorization to use the document in the litigation thereafter." (Footnote omitted.)

The alleged copyright infringement occurred in another legal action, the nature of which is not material to the present action. Gelb, who in the present action is a plaintiff below and an appellant before the Court of Appeals, drafted a complaint and exhibits in the other action. Gelb and UPRS (also a plaintiff/appellant) claim copyright in these pleadings. Initially, in that other legal action, Kaplan was attorney for Gelb, UPRS, and the other plaintiffs. He filed the complaint and exhibits with the District Court. The District Court dismissed the complaint as time barred. Kaplan filed an appeal.

While the appeal was pending, Kaplan ceased to represent Gelb and UPRS, but continued as attorney for the other plaintiffs. The Court of Appeals vacated the District Court's dismissal. On remand, Kaplan, representing all but Gelb and UPRS, filed an amended complaint and amended exhibits which copied language from the original complaint and exhibits drafted by Gelb. Meanwhile, Gelb and UPRS registered the pleadings with the Copyright Office, and then filed the present action in the District Court against Kaplan alleging copyright infringement.

There is another twist. Gelb is not an attorney. Hence, he is not bound by the ethical considerations that govern attorneys. This also makes the facts of this case very rare. Typically lawyers draft complaints for clients; in this case the client drafted a complaint for his attorney.

The District Court dismissed the copyright infringement complaint for failure to state a claim upon which relief can be granted, based upon the very narrow holding that Gelb and UPRS had granted Kaplan an irrevocable implied license to file an amended version of the original complaint and exhibits. Gelb and UPRS then brought the present appeal.

The Court of Appeals affirmed on the same narrow grounds of implied license to continue to make use pleadings drafted for one action later in that same action.

It offered this rationale. "Litigation cannot be conducted successfully unless the parties to the litigation and their attorneys are free to use documents that are a part of the litigation. The parties rely on such documents as a means of establishing the nature of the dispute and the facts and legal arguments that have been put forward by each party. This is true at both the trial and appellate levels. A court’s ability to perform its function depends on the ability of the parties (and their attorneys) to put before it copies of all the documents in contention and to serve one another with copies of such documents." (Parentheses in original.)

The Court of Appeals continued that "The courts could not thoroughly and fairly adjudicate a matter if suddenly in the midst of litigation the parties lost the right to give the court copies of documents already used in the litigation that support their arguments. The holder of the copyright in a document who authorizes a party to use that document in a litigation knows, or should know, those inevitable consequences of the authorization. Accordingly, the copyright holder’s authorization will be construed to encompass the authorization, irrevocable throughout the duration of the litigation, not only to the expressly authorized party but to all parties to the litigation and to the court, to use the document for appropriate purposes in the conduct of the litigation."

The Court also wrote that "Under the theory advanced by UPRS and Gelb, the attorney could deny the client the right to reproduce the pleading or prepare derivative works if the client fires the attorney and seeks to hire different counsel. The attorney could use copyright law to hamper the client's ability to select his own counsel -- a right that is one of the foundations of our system of justice".

There is, however, a flip side unaddressed by the Court -- the unscrupulous client who switches attorneys to evade paying legal fees. This arises, for example, in cases in which there is a considerable amount of necessarily immediate legal work, as in cases in which there are risks of witness flight, dissipation of assets, destruction of property, and/or physical violence. That is, the client at risk goes to law firm A, which assembles a team that promptly conducts legal research, develops case strategy, obtains affidavits, and drafts a complaint, motion for temporary restraining order, and supporting memorandum. Before the client has paid a retainer, he takes drafts to law firm B -- a firm of lesser expertise and ethics -- which edits only the signature lines, files, and charges the client much less than is owed to law firm A. Law firm A receives no payment. It could sue the client under the fee contract, but there are many reasons for not suing one's own clients. It has no contractual relationship with law firm B. Under the holding of the present case, it may have no copyright claim against law firm B either. This creates a perverse incentive for unscrupulous clients and law firms to free ride on the services of other law firms, and a disincentive for law firms to do any work, even in emergencies, if they have not yet received a retainer.

Issues Not Addressed. The Court of Appeals did not reach the question of whether the pleadings at issue are copyrightable subject matter, nor if so, whether or when copying the pleadings would constitute fair use.

Nor did the Court of Appeals address copying for use outside of the litigation for which the pleadings were drafted.

This was the issue in White v. West. Edward White filed a putative class action complaint in the U.S. District Court (SDNY) in 2012 against the owners of Westlaw and LexisNexis alleging copyright infringement for publishing copies of legal pleadings. The District Court granted summary judgment to the defendant publishers. See, February 11, 2013 order [2 pages in PDF]. The defendants had asserted fair use.

That case is Edward White v. West Publishing Corporation and Reed Elsevier, Inc., U.S. District Court for the Southern District of New York, D.C. No. 1:12-cv-01340-JSR, Judge Ned Rakoff presiding.

Publication of Pleadings by TLJ. For over 15 years TLJ has quoted extensively from, and published entire copies of, complaints, motions, memoranda, briefs, and amicus curiae briefs filed with trial and appellate courts, as well as filings with administrative agencies. While most have been sent to TLJ by the author on his or her own initiative, or in response to a request from TLJ, many were acquired from public records, and published by TLJ without permission from the author.

Yet, in 15 years no author has complained to TLJ. Indeed, no one has ever complained to TLJ that TLJ has infringed a copyright. Of course, TLJ has received complaints and criticisms about stories or documents published by TLJ, but not one complaint or criticism has asserted copyright as a basis.

This history is not inconsistent with the hypothesis that most lawyers do not consider their legal pleadings to be copyrightable subject matter. On the other hand, neither is this inconsistent with the hypothesis that these lawyers consider publication by TLJ to be "for purposes such as criticism, comment, news reporting" within the meaning of 17 U.S.C. § 107, and hence, a fair use limitation upon the exclusive rights of copyright.

See also,

The present case is Unclaimed Property Recovery Service, Inc. and Bernard Gelb  v. Norman Alan Kaplan, U.S. Court of Appeals for the 2nd Circuit, App. Ct. No. 12-4030, an appeal from the U.S. District Court for the Eastern District of New York. Judge Katzmann wrote the opinion of the Court of Appeals, in which Judges Leval and Hall joined.

FTC Takes Action to End Fraudulent Billing Scam Affecting Android Devices

8/20. The Federal Trade Commission FTC) filed a complaint [12 pages in PDF] in the U.S. District Court (DC) against Jesta Digital LLC, dba Jamster, alleging violation of Section 5 of the FTC Act (15 U.S.C. § 45) in connection with its fraudulent billing scam involving mobile devices that use the Android operating system by exploiting the Wireless Access Protocol (WAP). See also, FTC release.

The parties simultaneously filed a proposed final judgment [25 pages in PDF], under which Jesta Digital admitted no wrongdoing, but which enjoins it from continuing the fraudulent practices stated in the complaint, and requires it to pay refunds to defrauded consumers.

Jesta Digital ran banner ads that displayed on consumers' Android mobile devices while they played the Angry Birds mobile app. These ads that falsely purported to be Android operating system virus detection alerts, and falsely provided a "remove" option. When consumers clicked to "remove", nothing was removed; rather, clicking caused the display of an ad for anti-virus software. The complaint adds that when consumers clicked to "subscribe" to this software, Jesta Digital then charged them via the WAP $9.99 per month for ringtones and other items unrelated to virus removal.

This case is FTC v. Jesta Digital LLC, dba Jamster, U.S. District Court for the District of Columbia, D.C. No. 1:13-cv-01272.

People and Appointments

8/20. Yahoo announced in a release to appointment of Dawn Airey as SVP for it Europe, Middle East and Africa operations.

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8/20. Marc Zuckerberg, CEO of Facebook, wrote in a short piece that he "realized something important: the vast majority of people in the world don't have access to the internet", but they should have. Facebook simultaneously released an article [10 pages in PDF] titled "Is Connectivity a Human Right?" It advocates "free basic services to those who cannot afford them". It also references "White space spectrum", stating that "there is a policy movement to reallocate spectrum that has been used as a buffer around TV broadcasting. This is a good example of the industry working together with governments to make these networks more efficient."

8/20. The Federal Communications Commission (FCC) announced in a release that the FCC and Industry Canada have "agreed on three interim spectrum sharing arrangements covering a range of wireless communications operations along the U.S.-Canada border".

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8/19. The National Telecommunications and Information Administration (NTIA) published a notice in the Federal Register (FR) that announces a Notice of Inquiry (NOI) regarding its proposed spectrum monitoring pilot program. The NTIA stated in its FR notice that this program, if funded and implemented, would "develop and deploy a prototype system to monitor spectrum usage in up to ten metropolitan areas". See, FR, Vol. 78, No. 160, August 19, 2013, at Pages 50399-50401.

8/19. The National Telecommunications and Information Administration (NTIA) published a notice in the Federal Register (FR), and a copy in its web site, that announces a Notice of Inquiry (NOI) regarding its common format for transition plans to be developed by federal entities to facilitate the relocation of, and spectrum sharing with, U.S. government stations in spectrum bands reallocated from federal use to non-federal use, or to shared use, and auctioned by the Federal Communications Commission (FCC). The deadline to submit comments is September 18, 2013. See, FR, Vol. 78, No. 160, August 19, 2013, at Pages 50396-50399.

8/19. The Office of the U.S. Trade Representative (OUSTR) published a notice in the Federal Register (FR) that requests comments to assist it in preparing its National Trade Estimate Report on Foreign Trade Barriers (NTE). See, FR, Vol. 78, No. 160, August 19, 2013, at Pages 50481-50482.

8/19. The U.S. Patent and Trademark Office (USPTO) announced in a release that it will host an on site and webcast event titled "Software Partnership Meeting" on Thursday, October 17, 2013, at 8:30 AM until 12:30 PM at the UC Berkeley School of Law. The USPTO stated that "Senior USPTO officials will provide an overview of the executive actions related to patent assertion entities and U.S. innovation initiatives called for in President Obama’s executive actions on June 4th. Other topics of discussion will include feedback from the previous Software Partnership roundtables held in Silicon Valley and New York; a summary of the written comments received in response to the January Federal Register notice announcing the Software Partnership; proposed next steps by the USPTO; and an interactive discussion session on strategies to improve claim clarity, such as the use of glossaries in patent applications."

WTO Announces Deputy DGs

8/17. The World Trade Organization (WTO) announced in a release that "Director-General elect, Roberto Azevędo has announced the appointment of Yi Xiaozhun of China, Karl-Ernst Brauner of Germany, Yonov Frederick Agah of Nigeria and David Shark of the United States as his four Deputies Director-General. The new Director-General will begin his term on 1 September while his deputies begin service on 1 October 2013."

Roberto AzevedoAzevedo (at right) stated that these four "will play a vital role in advancing the aims of the Organization at this key point in time. As global trade continues to play an important role in economic growth and social development, and as new players, patterns and practices continue to emerge, the role of the multilateral trading system has never been more important. The skills and experience that my Deputies bring will help ensure that we can develop and enhance the WTO's agenda across its many different areas of work, including at the Bali Ministerial meeting in December which is an immediate priority."

Michael Froman, the U.S. Trade Representative, stated in a release that "We welcome the strong leadership team announced today ... and applaud in particular the selection of David Shark as Deputy Director General. As U.S. Deputy Chief of Mission in Geneva, Dave has been a stalwart and steady voice for the United States at the WTO".

Yao Jian, spokesman for the People's Republic of China's (PRC) MOFCOM stated in a release that "China applauded the appointment of Mr. Yi Xiaozhun by Mr. Roberto Azevedo. It does not only recognize Mr. Yi Xiaozhun’s personal ability but also the positive and constructive role China and the developing countries play in WTO. ... China will continue to deepen the cooperation relation with WTO, support director-general's work, and make her own contributions to multi-lateral trade system and global governance."

The outgoing DG is Pascal Lamy.

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8/16. The National Institute of Standards and Technology's (NIST) Computer Security Division (CSD) released its draft SP 800-161 [285 pages in PDF] titled "Supply Chain Risk Management Practices for Federal Information Systems and Organizations". The deadline to submit comments is October 15, 2013.

8/16. The Federal Communications Commission (FCC) released a Report and Order and Second Order on Reconsideration [29 pages in PDF] regarding tower construction near AM stations. This item states, "First, the Order establishes a single protection scheme for tower construction and modification near AM tower arrays. Second, the Order designates “moment method” computer modeling as the principal means of determining whether a nearby tower affects an AM radiation pattern. These actions take another step in the Commission’s modernization by replacing time-consuming direct measurement procedures with an efficient computer modeling methodology that is reflective of current industry practice." This is FCC 13-115 in MM Docket No. 93-177. The FCC adopted it on August 14, and released it on August 16.

8/16. The Copyright Office's (CO) Copyright Royalty Judges published a notice in the Federal Register (FR) that announces a proceeding to determine the Phase II distribution of royalties deposited with the Register of Copyrights for the statutory license allowing distant retransmission of over the air television and radio broadcast signals by cable system operators. See, 17 U.S.C. § 111. The deadline to submit petitions to participate in, and pay the $150 filing fees for, this proceeding is September 16, 2013. See, FR, Vol. 78, No. 159, August 16, 2012, at Pages 50113-50114.

8/16. The Copyright Office's (CO) Copyright Royalty Judges published a notice in the Federal Register (FR) that announces a proceeding to determine the Phase II distribution of royalties deposited by satellite carriers for a statutory license to retransmit over the air television broadcast stations. See, 17 U.S.C. § 119. The deadline to submit petitions to participate in, and pay the $150 filing fees for, this proceeding is September 16, 2013. See, FR, Vol. 78, No. 159, August 16, 2012, at Pages 50114-50115.