Client Sues His Lawyer--for Copyright Infringement

August 27, 2013

This case presents an interesting discussion of copyright law, but not only based on a court decision, but on a disgruntled ex-client's claim against his lawyer.

Bernard Gelb and his company hired an attorney, Norman Kaplan, to file a class action lawsuit. After that lawsuit was dismissed, Gelb and Kaplan filed an appeal on behalf of the class members. Before that appeal was decided Gelb and Kaplan parted ways. However, the other members of the class kept Kaplan as counsel. Gelb withdrew from the appeal (he initially tried to withdraw the entire appeal, which he was not allowed to do, so he withdrew his participation in that appeal). Thereafter, Gelb, claiming that he had a role in drafting the initial court papers, filed for copyright protection of those court papers. After the appellate court reversed the dismissal and reinstated the case, Kaplan proceeded with the case on behalf of the remaining class, using and amending the initial court papers that had been filed before dismissal was ordered.

Gelb sued Kaplan claiming that Kaplan's continued use of the initial court papers, including the complaint, infringed on Gelb's copyright. Kaplan's motion to dismiss Gelb's claims was granted and Gelb appealed.

On appeal, the Second Circuit, after noting Gelb's "sharp litigation practices," upheld the dismissal of Gelb's claims. The court agreed with the lower court's reasoning and explained further that when Gelb directed Kaplan to file the complaint, Gelb issued to Kaplan an irrevocable implied license to use those papers in the lawsuit, without limitation. Key to that finding was the court's discussion that when a copyright holder allows another to use a document in a litigation, he knows or should know that the document may be necessary throughout the legal proceeding--even by a different attorney. The court also highlighted its concern that allowing Gelb to proceed on his claim would preclude a court from doing its business. A court could not adjudicate a case if it had to compete with the copyright considerations of the papers before it. Allowing this claim could also encourage attorneys to hold a case or client hostage by claiming ownership of a document. In sum, the court held:

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. 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.

A copyright holder's authorization to a litigant to use the work in litigation is different from the loan of a baseball by its owner to her friends for use in a game. The game cannot be completed if the owner changes her mind and walks away with her baseball. Nonetheless, she is at liberty to do so. The analogy, however, is flawed. For what is at stake when authorization to use a document in a litigation is granted is not merely the continued ability of the parties to argue their sides of a dispute, but the ability of the courts to perform their function. The 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 purposes of the litigation.


Neither court addressed whether Gelb's copyright registration was valid, finding that even if it was, it could not be enforced in this setting.

One intuitively understands this outcome, and a different outcome may produce an unfair result, but looking at the big picture and putting aside the ethical concerns, is the analogy really flawed or is the court overreaching to protect the process?