Teresa Scassa - Blog

Last week, the CBC reported that an amateur football club in Nepean, Ontario, reached the decision to change its name following a spate of negative publicity that enveloped it after it was revealed that a human rights complaint had been filed in relation to its name. The Nepean Redskins had used this name for their club since 1981. The organization's jerseys, helmets and website also feature the same Indian-head logo as the U.S.-based Washington Redskins…

A recent US copyright law decision addresses one aspect of the question of how copyright law applies to documents that are submitted as part of public processes – in this case, court proceedings. These issues have cropped up in Canada in a couple of fairly recent instances. For example, there is an ongoing class action lawsuit launched by lawyers in private practice who object to the defendant’s inclusion of court documents authored by lawyers into their commercial products without consent or compensation. Another Canadian court refused to certify a class action law suit on behalf of land surveyors who objected to the inclusion of their land surveys into an electronic land registry database without licence or compensation. Although the class was not certified, the court did offer some interesting views regarding ownership of copyright in the documents.

The US decision, Unclaimed Property Recovery Service Inc. v. Kaplan comes from the Court of Appeals, Second Circuit. In this case, the plaintiffs had previously been involved with a class action law suit, for which they had prepared the first class action complaint and compiled the accompanying exhibits. Kaplan was the attorney representing the class. He signed and filed the documents on behalf of the class. When the complaint was dismissed as being outside the prescribed delays, he filed an appeal. Before the appeal was decided, Kaplan and the plaintiffs had a falling out. The plaintiffs retained new lawyers; Kaplan continued on as attorney of record for the class action law suit.

The appeal proceeded and was eventually successful, and leave was granted to file an amended complaint, which was done. The amended complaint was based upon the first complaint and its accompanying documents, and indeed “[s]ignificant portions of the Second Complaint and Second Exhibits were identical to portions of the First Complaint and First Exhibits.” Meanwhile, the plaintiffs registered copyrights in these documents and proceeded to sue Kaplan for having infringed their copyrights in the complaint and exhibits. They sought both an injunction and damages. The district court dismissed the plaintiffs’ action and it proceed on to the Court of Appeals, which unanimously dismissed the appeal.

The Court of Appeals found that when a person who holds copyright in litigation documents authorizes a party to the litigation to make use of the documents, “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.” The Court noted that any other outcome would jeopardize the litigation system. It noted that “[t]he 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.” It went on to find that the copyright holder who authorizes a party to use documents in litigation must know that as a consequence these documents may be reproduced and distributed for purposes related to that litigation. The Court added that in this context, “[t]he needs of the courts prevail over the copyright holder’s selfish interests, and the authorization becomes irrevocable as to the participants in the litigation for the purposes of the litigation.” The authorization would extend to incorporating all or part of the documents into an amended complaint, as happened in this case.

The Court also noted that to allow the interests of a copyright holder to trump those of parties to the litigation could lead to serious ethical consequences. For example, an attorney who drafts legal pleadings for a client could not invoke her copyright in these pleadings to limit their use without breaching her ethical obligations to that client. A lawyer should also not be able to use his copyright in documents to thwart a client’s attempt to change attorneys. Finally, the court noted that to accept the plaintiff’s arguments would hamper the authority of courts to manage their own affairs: a court order requiring parties to amend their pleadings should not run up against copyright claims in those pleadings.

The decision seems eminently sensible, but it does not resolve some of the other copyright issues that swirl around documents submitted as part of legal processes. For example, it does not address the issue raised in Waldman v. Thomson Reuters Corporation, which turns on whether copyright in documents that are part of a public court record can be asserted against a publisher that seeks to commercialize these documents – albeit in works aimed at assisting lawyers in their practice. The Second Circuit Appeals Court was careful to emphasize that their decision reached only to the particular facts of the case before them – the issue was whether copyright law could be used to prevent the class action plaintiffs from making use of documents which they had previously been authorized to use. The court noted: “We do not decide whether a party who is authorized to file a legal pleading in one case is also authorized to file it in others cases. We do not decide whether the parties to the litigation may use the pleading for other purposes unrelated to the litigation.” And, of course, they do not decide whether those pleadings, as part of the public record, can be used by others for their own purposes.