Suppose a rule governing lawyers requires them to provide clients copies of work product. (For example, see this proposed COPRAC opinion.) What if the rule holds even if the client wants to give the work product to new counsel so they can cut-and-paste it into their own work? How does such a rule relate to copyright law?
Outside the in-house context, pleadings, deal documents, etc., are unlikely subjects for work-for-hire status, which means lawyers retain the rights in original works they author. 17 U.S.C. 106(1) gives them the exclusive right to reproduce such works, and section 106(2) gives them the exclusive right to create modified works based on an original. Presumably state laws that alter this allocation of rights, as by giving clients a right to cause reproduction, are pre-empted by virtue of their conflict with federal law. Does it follow that such rules are void?
My initial reaction is that it depends on context. Consider three cases. In the first, a client just wants work product for his or her own purposes. In the second, the client wants to give the work product to new counsel to use. In the third, a competing firm wants to copy (free-ride) on the work. (Recall a dispute on this issue involving copying of one of the then-Milberg firm's complaints in the Enron litigation.)
In the first case, let's assume that counsel has federal rights in a work. My instinct is that, based on tradition, probable expectations, and a desire to minimize transaction costs, the client has an implied license to reproduce for the client's own use all work product done for the client. That would include partially completed work, as to which a first publication issue might arise.
The questions here are the scope of this implied license (does it include modifying as well as reprroducing?) and whether a firm could disavow the implied license with an express reservation of rights in the retainer agreement. Would state law govern, in which case the rule in question might void the term, or would that cut too much into the federal allocation of rights?
The second case is harder. The client is not actually free-riding on the lawyer's work (at least not if the client has not paid for it), but it is conceivable that firms could develop brief banks (or deal document banks) and sell their works to other firms, in a variation on the recent outsourcing craze. Thus, such use could cut into the potential market for the work, meaning that the very-important fourth factor of fair use analysis under 17 USC 107 might cut against the client. (Going the other way, of course, if the argument that there is no public goods problem with regard to legal documents, so there is no neeed to allow rights to be asserted in order to cover the firm's cost of creating the documents.)
The third case seems relatively easier, though perhaps not a slam dunk. The lawyers in that case are purely free riding, and they may be copying (as in the Milberg example) to compete with firms that sunk costs into creating the works. That is the paradigm case of infringement (though, of course, some documents may recieve such thin protection that even the paradigm case is weak: complaints presumably have lots of facts, which are not copyrightable).
A final consideration is whether a lawyer who cuts and pastes another lawyer's work does anything wrong. Is this sort of plagiarism a form of misrepresentation or otherwise unethical conduct?
Reputational concerns will of course keep many firms from asserting such rights against clients; no client wants to have to license their documents. But such issues can arise when client relationships end for good, and against third parties, so they are worth thinking about.
The Patry blog has a good overview of the general issue, including comments suggesting that local rules might vitiate the issue by requiring counsel to waive rights in filed documents (though this does not work for non-litigation work product). Other thoughts?
DM