Case 1:20-cv-00613-LPS Document 87 Filed 01/05/22 Page 1 of 5 PageID #: 2096
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 20-613-LPS
`
`JURY TRIAL DEMANDED
`
`PUBLIC VERSION
`
`)))))))))))
`
`THOMSON REUTERS ENTERPRISE
`CENTRE GMBH and WEST PUBLISHING
`CORPORATION,
`
`Plaintiffs/Counterdefendants,
`
`v.
`
`ROSS INTELLIGENCE INC.,
`
`Defendants/Counterclaimant.
`
`LETTER TO THE HONORABLE LEONARD P. STARK FROM DAVID E. MOORE
`
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`
`Attorneys for Defendant/Counterclaimant
`ROSS Intelligence, Inc.
`
`OF COUNSEL:
`
`Gabriel M. Ramsey
`Warrington Parker
`Kayvan M. Ghaffari
`Jacob Canter
`CROWELL & MORING LLP
`3 Embarcadero Center, 26th Floor
`San Francisco, CA 94111
`Tel: (415) 986-2800
`
`Crinesha B. Berry
`CROWELL & MORING LLP
`1001 Pennsylvania Avenue, NW
`Washington, DC 20004
`Tel: (202) 624-2500
`
`Dated: January 5, 2022
`Public Version Dated: January 5, 2022
`7543058 / 50241
`
`

`

`Case 1:20-cv-00613-LPS Document 87 Filed 01/05/22 Page 2 of 5 PageID #: 2097
`
`Dear Judge Stark:
`
`Pursuant to this Court’s January 4, 2022 (D.I. 85) Order, Defendant/Counterclaimants
`ROSS Intelligence Inc. (“ROSS”) submits this letter and requests the Court to compel
`Plaintiffs/Counterdefendants Thomson Reuters Enterprise Centre GmbH and West Publishing
`Company to provide documents responsive to the Requests outlined below.1
`
`I.
`
`Background
`
`The discovery requests at issue in this brief seek information regarding the basis for
`Plaintiffs’ copyright infringement and tortious interference claims. The information ROSS seeks
`includes Plaintiffs’ (1) agreements with third-parties regarding Plaintiffs’ alleged copyrighted
`materials (RFP Nos. 1, 3-4, 53-54); (2) interpretations (parol evidence) relating to their licensing
`agreements (RFP Nos. 48-54); and (3) agreements by which Plaintiffs obtain judicial opinions and
`the agreements relating to use and the provision of headnotes (RFP Nos. 57-65). See, e.g., Ex. E.
`
`II.
`
`Argument2
`
`A.
`
`Settlement Agreements with Third-Parties (RFP Nos. 1, 3-4)
`
`Plaintiffs refuse to provide any settlement agreements with third-parties, including those
`with LexisNexis, regarding Plaintiffs’ “Westlaw Content”—the term used by Plaintiffs to describe
`the materials and works at issue (Complaint ¶ 1). Plaintiffs claim these agreements “are irrelevant
`to the claims in this case against ROSS and would create mini trials about the circumstances and
`issues of other cases and situations.” See Ex. D at 12. Plaintiffs do not claim there is any burden
`or prejudice in producing these agreements.
`
`Courts recognize that settlement agreements in patent and copyright cases are discoverable
`and relevant to assessing ownership rights, determining damages, and proving affirmative
`defenses, including unclean hands, waiver, non-enforcement, and copyright misuse. See Bandai
`Am. Inc. v. Bally Midway Mfg. Co., 775 F.2d 70 (3d Cir. 1985) (holding that a pre-existing
`settlement agreement establishes a copyright ownership interest); Abbvie Inc. v. Boehringer
`Ingelheim Int'l GMBH, 2019 U.S. Dist. LEXIS 62493, at *6-7 (D. Del. Apr. 11, 2019) (settlement
`agreements were discoverable and relevant to defendants’ unenforceability defense); Santrayll v.
`Burrell, 1998 U.S. Dist. LEXIS 586, at *5 (S.D.N.Y. Jan. 22, 1998) (settlement agreement was
`
`1 The parties made reasonable efforts to resolve these disputes. The parties exchanged conferral
`letters on August 3, 2021, Ex. A, August 25, 2021, Ex. B, and October 4, 2021, Ex. C; see also
`Ex. D (further conferral). The parties conferred telephonically on October 22 and December 16.
`2 Plaintiffs object to ROSS’s Requests as unlimited in temporal scope. For those requests that had
`no natural time limitation and that are issue in this letter brief, ROSS agreed to limit the scope of
`the Requests to the last 20 years. ROSS did not further limit the temporal scope for two reasons.
`First, Plaintiffs have yet to identify the specific Westlaw Content that ROSS is alleged to have
`infringed. Thus, ROSS still does not know the headnotes or the Key Numbers, or any other specific
`copyrighted materials, that are at issue. Second, many, if not all, of Plaintiffs’ copyrights are far
`older than 20 years. See, e.g., Compl., Ex. A (identifying several copyright registrations dating to
`1981). ROSS has and does reserve its rights to seek discovery beyond this period once Plaintiffs
`detail the specific copyrights. There are some Requests that by their nature are specific and no
`temporal limitation needed to be applied as the Request itself provides the timeframe, implicitly
`or explicitly. See Ex. E (RFP No. 1).
`
`

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`Case 1:20-cv-00613-LPS Document 87 Filed 01/05/22 Page 3 of 5 PageID #: 2098
`
`The Honorable Leonard P. Stark
`January 5, 2022
`Page 2
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`discoverable in a copyright case); Key Pharms., Inc. v. ESI-Lederle, Inc., 1997 U.S. Dist. LEXIS
`13328, at *9-10 (E.D. Pa. Aug. 29, 1997)3.
`
`Settlement agreements between Plaintiffs and third-parties relating to the “Westlaw
`Content” are relevant to the financial value Plaintiffs place on the content at issue in this dispute.
`See Oppenheimer v. Episcopal Communicators, Inc., 2020 U.S. Dist. LEXIS 146398, at *6-7
`(W.D.N.C. Aug. 14, 2020) (finding that “past licensing and settlement agreements” are relevant
`because they can shed light on “instances where the Plaintiff has asserted his rights in his
`copyrights [and] the amounts recovered from those assertions”); see also Smith v. NBC Universal,
`2008 U.S. Dist. LEXIS 13280, at *17 (S.D.N.Y. Feb. 22, 2008).
`
`Settlement agreements are additionally relevant to ROSS’ copyright misuse affirmative
`defense. “The doctrine [of copyright misuse] is principally aimed at avoiding anticompetitive
`conduct that contravenes the goal of copyright law – ‘to stimulate artistic creativity or the general
`public good.’” Malibu Media, LLC v. Doe, 381 F. Supp. 3d 343, 359 (M.D. Pa. 2018) (quoting
`Video Pipeline, Inc. v. Buena Vista Home Entm’t, Inc., 342 F.3d 191, 204 (3d Cir. 2003)).
`Settlement agreements covering the “Westlaw Content” can shed light on Plaintiffs’ understanding
`as to what content is properly subject to copyright protection. For example, the settlement
`agreements are relevant to determining whether Plaintiffs use copyrights to control the public
`distribution of judicial opinions, or whether Plaintiffs have taken inconsistent positions regarding
`what is copyrightable or requiring a license. See, e.g., Counterclaim, ¶¶ 138-146. As a species of
`unclean hands, such discovery can also shed light on whether standard licensing practices and
`settlement agreements across multiple industry participants unfairly extend the copyright grant to
`force anticompetitive terms or licensing of things not protected by copyright. See, e.g., Practice
`Management Information Corp. v. Am. Med. Ass’n, 121 F.3d 516 (9th Cir. 1997); Lasercomb
`America, Inc. v Reynolds, 911 F.2d 970 (4th Cir. 1990) (finding the misuse defense applies even
`if the copyright defendant at issue is not subjected to the conduct constituting misuse).
`
`Finally, settlement agreements regarding “Westlaw Content” can establish Plaintiffs’
`knowledge of which entity owns the copyrights at issue in this dispute, which bears on Plaintiffs’
`standing to bring claims for copyright misuse, and ROSS’ defenses. Plaintiffs allege Thomson
`Reuters Enterprise Centre GmbH is the “sole owner” of the Westlaw Content. Compl. ¶ 32.
`Discovery has also shown that Plaintiff West Publishing Corp. (“West”) has not held legal
`ownership in the Westlaw Content since, at least, June 2005. See Ex. F; Ex. G. If West is not the
`legal owner, then West has no authority to enter settlement agreements regarding a third-party’s
`right to use or access the copyrights. See Bandai Am. Inc., 775 F.2d at 73-74. It also has no right
`to license or enforce licenses of any Westlaw Content, even if West were considered a “beneficial
`owner.” See SBK Catalogue P’ship v. Orion Pictures Corp., 723 F. Supp. 1053, 1062 (D.N.J.
`1989); see also John Wiley & Sons, Inc. v. DRK Photo, 882 F.3d 394, 414 (2d Cir. 2018).
`
`Therefore, this also bears on Plaintiffs’ tortious interference claim. West purported to
`license the “Westlaw Content” and relevant databases to LegalEase, the third-party whose contract
`ROSS purportedly interfered with. It appears that it did not have the power to do so. Therefore,
`
`3 Rule 408 does not limit the discoverability. See Abbvie Inc., 2019 U.S. Dist. LEXIS at *7;
`S.E.C. v. Downe, 1994 U.S. Dist. LEXIS 708 (S.D.N.Y. Jan. 27, 1994).
`
`

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`Case 1:20-cv-00613-LPS Document 87 Filed 01/05/22 Page 4 of 5 PageID #: 2099
`
`The Honorable Leonard P. Stark
`January 5, 2022
`Page 3
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`there is reason to seek settlement agreements to determine whether and how Plaintiffs consider
`this lack of legal ownership by West.
`
`B.
`
`Interpretative Documents re License Agreements (RFP Nos. 48-54)
`
`ROSS requests documents regarding Plaintiffs’ interpretation (parol evidence) of and
`relating to their licensing agreements. See Ex. E. Plaintiffs argue parol evidence is improper
`because the “interpretation of its licensing agreements with respect to parties other than LegalEase
`is not relevant to Plaintiffs’ tortious interference claim.” Ex. D at 13.
`
`Courts regularly allow discovery into extrinsic evidence regarding a party’s interpretation
`of its own agreements. See Ferro v. Atl. City Showboat, Inc., 2009 U.S. Dist. LEXIS 140525, at
`*4-5 (D.N.J. July 13, 2009) (“[I]t is inappropriate to deny discovery of parol evidence simply
`because it may be inadmissible at trial.”) (collecting cases); Grossman v. First Pa. Corp., 1992
`U.S. Dist. LEXIS 2266, at *3 (E.D. Pa. Feb. 24, 1992).
`
`Such evidence is all the more important to this case. Plaintiffs’ own documents show there
`has been internal confusion concerning the interpretation of certain provisions in the research
`agreement. See Ex. H (internal email where Plaintiffs’ Head of Client Management states “We do
`not cancel contracts based on usage volume alone. My understanding is that our language around
`usage is vague.”). In addition, Plaintiffs’ licensing agreement prohibits Westlaw users from
`distributing Westlaw content to competitors. D.I. 16-1. ROSS is entitled to understand how
`Plaintiffs interpret and enforce this provision (and others), how it defines “competitor,” and what
`forms of distribution it contends would violate this provision.4
`
`C.
`
`Origin of Content Contained on the Westlaw Platform (RFP Nos. 57-65)
`
`ROSS seeks the contracts by which Plaintiffs obtain judicial opinions. Plaintiffs receive
`judicial opinions from certain states cases with headnotes created by the states. Ex. I. In such
`instances, Plaintiffs cannot rightly claim a copyright in those headnotes. ROSS does not know
`what else is provided. Also, if this activity influences any compilation claimed, it may be that
`Plaintiffs cannot claim copyright there. More generally, ROSS is entitled to know whether there
`are any other terms or restrictions or conditions regarding the use of judicial opinions.
`
`Plaintiffs refuse to provide the requested documents, arguing the copyright claim is based
`on “Plaintiffs’ original headnotes, not headnotes that were written by states.” Ex. D at 14. Since
`Plaintiffs have failed to specifically identify any headnote that ROSS allegedly infringed, ROSS
`is entitled to test that assertion. Moreover, ROSS is entitled to discovery to test the veracity of
`Plaintiffs allegations, considering Plaintiffs’ represented to the Court that they were claiming
`copyrights in the entirety of their legal database. See Ex. J (Mot. Hearing Tr. 37:8-18) (Oct. 30,
`2020). Finally, because Plaintiffs claim a copyright in a compilation, ROSS is entitled to determine
`whether state provided or third party provided headnotes influence the compilation.
`
`4 As noted, West does not appear to have any legal ownership over the “Westlaw Content.”
`Thus, Plaintiffs’ interpretation goes to whether West understood it was unable to enforce a
`license agreement (without any legal rights to “Westlaw Content”) and whether ROSS engaged
`in intentional and unjustified conduct based on Plaintiffs’ interpretations of the agreements.
`
`

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`Case 1:20-cv-00613-LPS Document 87 Filed 01/05/22 Page 5 of 5 PageID #: 2100
`
`The Honorable Leonard P. Stark
`January 5, 2022
`Page 4
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`Respectfully,
`
`/s/ David E. Moore
`
`David E. Moore
`
`DEM:nmt/7543059/50241
`
`Enclosures
`cc: Counsel of record (via electronic mail)
`
`