Lawyers and Copyrights: Copyright in the House

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[authors: Mark A. Fischer and Paul Sennott]

Mark FischerCopyright laws apply to lawyers too. Yet sometimes they seem to forget this seemingly obvious fact.

Making Photocopies of Articles as Reference Materials

Let's start with a basic reminder for those attorneys who prefer to make photocopies or print multiple copies of an article or newsletter to store for future reference, or to pass on to others to store for future retrieval, of copyright infringement lawsuits. Such acts could be considered copyright infringement if the copies that the attorneys are making are of journal articles that require a subscription, even if the law firm pays for a single subscription.

In American Geophysical Union v. Texaco (2d Cir. 1994), various publishers of scientific and medical journals that required a fee for each subscription brought a copyright infringement suit against Texaco for allowing its researchers to make unauthorized copies of articles on a systematic basis for their research files, and both the district and appeals courts ruled in favor of the publishers. Although finding that the publishers experienced no significant loss of revenue from sales of journal subscriptions and that the publishers recovered any revenue loss from photocopying by charging institutions like Texaco double the regular subscription price, the Second Circuit concluded that copyright owners of both the individual articles and of entire journals, such as publishers, under the Copyright Act, are entitled to derive revenue from photocopies of their works.

In Wash. Bus. Info. v. Collier, Shannon & Scott (case settled in E.D. Va. 1991), a Washington, D.C., law firm reproduced and distributed copies of a product safety newsletter that it subscribed to, rather than purchasing sufficient subscriptions for all the lawyers and staffers of the firm who needed the newsletter on a regular basis. The publisher of the journal brought an infringement suit against the law firm and eventually the parties reached a settlement.

Copying Literature for Litigation

Making an unauthorized copy of a document for use in a lawsuit should be generally permissible as long as the copies of the document are necessary to the lawsuit and an exact copy of the document is needed. In Hollander v. Steinberg (E.D.N.Y. 2010; aff'd, 2d Cir. 2011), an attorney brought a copyright infringement suit against another attorney for submitting six of his essays, describing his alleged anti-feminist viewpoint, as exhibits in a court proceeding. The court noted that, "Steinberg's purpose in introducing the Essays undoubtedly had less to do with their relevancy, which was questionable, at best, and more to do with poisoning the minds of the judges . . . ." The court, however, did not find that the activity was copyright infringement because the submission did not exploit the copyrighted ideas or expressions, the essays were not put to the same use as that for which the plaintiff had created them, and the submission did not affect the market for the essays. The court indicated that, if the copyrighted materials were used for the same purpose as the materials themselves were intended to serve, then copyright infringement could be found. Therefore, attorneys who submit copyrighted materials as evidence/exhibits at a trial must consider whether the copyrighted materials are necessary to the litigation in order to be more clearly covered under the fair use doctrine.

Using a Software Program Under an Expires License to Print Materials

Printing materials from a software program when the license agreement to use the program has expired may constitute copyright infringement. This situation was addressed in FM Indus. v. CitiCorp Credit Serv. (7th Cir. 2010), where a credit card debt collecting company, along with its parent corporation and collection attorneys, were sued for copyright infringement, among other claims, for continuing to use a debt collection data program after the firm's license had expired. The collection attorneys continued to access and use the data from the program after the termination date. Although the court ruled in favor of the defendants, it was noted that this would be a plausible case for copyright infringement if the plaintiffs had introduced proper copyright documentation and followed the proper court procedures.1 In order to avoid this type of litigation, law firms should ensure that the programs their attorneys have access to are supported by a proper license. We would obviously tell our clients the same thing.

Infringement of Privately Created Codes and Guidelines

Governmental agencies frequently compel the use of, or adherence to, privately created codes and guidelines in their regulations. This requires lawyers and clients to consult these materials when engaging with the relevant agencies. Courts have held that copyright protection persists in these codes and guidelines despite their governmental connection.

In Practice Mgmt. Info. v. American Med. Ass'n (9th Cir. 1997), the Ninth Circuit upheld the district court's ruling that the American Medical Association's Physician's Current Procedural Terminology ("CPT") coding system remained protected by copyright despite the fact that the U.S. Health Care Financing Administration required applicants to use it when seeking Medicaid reimbursement. In CCC Info. Serv. v. Maclean Hunter Mkt. Reports (2d Cir. 1994), the Second Circuit reversed a district court ruling that Maclean's Automobile Red Book -- Official Used Car Valuations had entered the public domain due to the fact that the insurance statutes or regulations of several states establish Red Book values as an alternative standard for assessing the value of an insured vehicle.

If clients must operate within governmental regulations that require the use of privately created and copyrighted materials, such materials should still be treated as copyrighted works and they should ensure that all reference copies are legally purchased from the copyright holder, unless the client is confident of an applicable fair use defense.

Infringement of Court Documents

Briefs, motions and pleadings are all part of the day-to-day labors of an attorney. But why shouldn't pleadings be protected by copyright? Some may argue that it would be a fair use to post these works because they are public documents. But it may well be fair use to republish such pleadings as part of a court record and a very different thing to appropriate such materials for republication and sale.

In White v. West Publ'g (complaint filed in S.D.N.Y. 2012), two attorneys, Edward White of Oklahoma and Kenneth Elan of New York, filed a class action lawsuit seeking to protect the court documents that they have authored. Leading legal service providers Westlaw and LexisNexis, who aggressively defend their own copyright interests, are caught on the other side of copyright law. White and Elan alleged that Westlaw and Lexis are illegally copying attorneys' copyrighted works and reselling them for profit. The two companies provide copies of the briefs, motions and other documents filed by attorneys in court, and then charge fees for access to the content in their databases. While part of the case was quickly dismissed on a copyright-pleading technicality, the case as a whole was not dismissed and it will be up to the U.S. District Court for the Southern District of New York to determine whether this type of use is indeed copyright infringement. Many attorneys might just feel lucky that anyone would want to copy and read their handiwork.

In Allen v. Nelson (pending in S.D. Cal.), attorney Matthew Peck filed a motion to intervene in California federal court, claiming that the Marron Law Firm in San Diego copied material from the Newport Trial Group's ("NTG") lawsuits. Peck alleges that the Marron Firm engaged in conduct that could put results of underlying suits at risk by contacting defendants independently and taking advantage of NTG's resources in identifying, investigating and prosecuting meritorious class actions.

The initial lawsuit was brought against Nelson & Co. Ltd. by plaintiff Kimberly Allen, who claims that Nelson's Bach Flower Remedies line of stress relief products did not have the anti-anxiety benefits the company had advertised. In Peck's intervenor complaint, he lists six counts alleging the Marron Firm's filing of "copycat lawsuits," in which the Marron Firm allegedly monitored lawsuits filed by NTG, advertised and solicited plaintiffs for substantively identical suits, plagiarized allegations in the original NTG lawsuits and contacted the defendant to suggest that the defendant can stop pending class actions with NTG and enter into a collusive settlement with the Marron Firm instead. Peck argues that, by copying the material allegations from NTG's pending lawsuits and pasting them into lawsuits bearing the name of the Marron Firm, the Marron Firm created the impression that NTG's suits were actually filed by the Marron Firm. Both the underlying Nelson case and Peck's motion to intervene are currently before the U.S. District Court for the Southern District of California and the court will have to decide if Peck's motion to intervene will be granted.

Providing Copyrighted Non-Patent Literature to the USPTO

Law firms representing patent applicants must provide the United States Patent and Trademark Office with "all information known to that individual to be material to patentability of the claims in the patent application" under 37 C.F.R. §1.56. The USPTO uses the term "non-patent literature" (NPL) to describe any other printed or non-printed matter that may be technically relevant for the patent-granting procedure. Perhaps only a patent lawyer could divide all literature in this way; this is not exactly a fiction/nonfiction comparison.

Frequently, a piece of copyrighted NPL has to be submitted to fulfill the patent requirement, for example, in Information Disclosure Statements. Publishers of scientific and technical journals, whose articles are routinely included in the filings, have begun to protest that the copies of NPL used in these submissions, made by for-profit organizations in pursuit of profits (obtaining a patent) and without authorization, constitute copyright infringement. Four law firms were sued by John Wiley & Sons Inc. ("Wiley") and the American Institute of Physics ("AIP") for copyright infringement including articles submitted to the USPTO as prior art.2 The allegations in the complaints include claims that patent firms sought licenses neither from the publishers nor from the Copyright Clearance Center, and that applicable licenses were available from both sources. The publishers state that all four of the fair use factors point in their favor and against a finding of fair use. Obtaining a license for permission to make copies from the Copyright Clearance Center would immunize patent lawyers from copyright infringement for much of the content used in such instances.

The USPTO, however, views copying for this type of submission as permissible under the fair use doctrine. The USPTO issued a position paper on January 19, 2012, entitled "USPTO Position on Fair Use of Copies of NPL Made in Patent Examination."

On June 12, 2012, the Copyright Clearance Center announced that one of the four law firms, Hovey Williams ("Hovey"), signed an annual copyright license with the CCC.3 Because the suit against Hovey has settled on a confidential basis, we do not know if the settlement was driven by the cost of litigation, by the use of copyrighted content outside of NPL, concern over bad publicity or other motivations.

On June 15, 2012, the USPTO intervened in the Wiley and AIP case against McDonnell Boehnen Hulbert & Berghoff seeking a finding of fair use.4 On July 2, 2012, the USPTO reiterated its position that "copying and distribution of copyrighted NPL by defendants ... is necessary and incidental to the filing and prosecution of a U.S. patent application [and] constitutes a fair use of such copyrighted works" as it moved to intervene in the case on behalf of Schwegman, Lundberg & Woessner ("Schwegman").5

That same day, Schwegman's motion to dismiss the complaint was denied by the court; thus, the case will proceed. Judge Richard Kyle also found that it could be "reasonably inferred" that Schwegman internally copied the publishers' scientific journal articles before submitting them to the Patent Office as part of the challenged patent applications.6 The judge said, "Indeed, the court finds it particularly implausible that a law firm would fail to make at least one copy of a patent application before filing it."7

The defendant law firms argue that fair use should be found for internal copying of the articles in the prosecution process and in the Information Disclosure Statement submissions. The arguments are based on the limited publication of USPTO filings, the strong public interest (an important fair use factor, even if not one of the four enumerated ones in Section 107), and, perhaps most importantly, the legal requirement of filing prior art. Conceivably, a failure to file relevant prior art could constitute fraud on the Patent Office. In this context, is robust copyright protection outweighed by a statutory requirement applying to all prospective patentees and their law firms?

When it comes to allegations of copyright infringement, it appears that some lawyers are themselves potentially guilty.

Mark A. Fischer is a partner at Duane Morris in the Boston and New York City offices. His law practice is focused on solving problems and making deals for innovative companies, institutions and individuals. Mr. Fischer's clients are typically in the creative industries such as new media, social networking, music, interactive entertainment, information technology, software, television and publishing. He has particular experience in U.S. and international copyright, licensing, copyright litigation, arbitration, open source, privacy and trademarks. He has a growing client base in the biotechnology and medical industries.

Paul Sennott is an associate at Stern Shapiro Weissberg & Garin in Boston, where he counsels corporate and creative clients in copyright, trademark and licensing matters.

Kristina C. Ng, a student at Northeastern University Law School, also contributed to this article.

Notes

  1. The plaintiff did not produce a pre-trial order on time and when it did it was "egregiously non-compliant." The plaintiff also exceeded multiple time limits in litigation, served overly extensive discovery demands on non-parties to the suit, and never produced a document showing the transfer of the copyright ownership to itself.
  2. See, e.g., John Wiley & Sons, Ltd. and American Inst. of Physics v. McDonnell Boehnen Hulbert & Berghoff LLP and John Does Nos. 1-10, No. 12-CV-01446 (N.D. Ill. filed February 29, 2012); John Wiley & Sons, Ltd. and American Inst. of Physics v. Schwegman, Lundberg & Woessner P.A. and John Does Nos. 1-10, No. 12-CV-00528 (N.D. Ga. filed February 29, 2012); American Inst. of Physics and Blackwell Publ’g, Ltd. v. Winstead PC, No. 12-CV-01230 (N.D. Tex. filed April 20, 2012); and John Wiley & Sons, Ltd. and American Inst. of Physics v. Hovey Williams LLP and John Does Nos. 1-10, No. 12-CV-04041 (Kan. Dist. Ct. filed April 20, 2012).
  3. See Press Release, Copyright Clearance Center, June 28, 2012.
  4. See Mem. in Supp. of Mot. to Intervene of the United States Patent Office, John Wiley & Sons, Ltd. and American Inst. of Physics v. McDonnell Boehnen Hulbert & Berghoff LLP and John Does Nos. 1-10, No. 12-CV-01446 (N.D. Ill. filed June 15, 2012).
  5. See Mem. in Supp. of Mot. to Intervene of the United States Patent Office, American Inst. of Physics and John Wiley & Sons, Inc., v. Schwegman, Lundberg & Woessner, P.A. and John Does Nos. 1-10, No. 12-CV-0528 (Minn. Dist. Ct. filed July 2, 2012).
  6. See Mem. in Supp. of Mot. to Intervene of the United States Patent Office, American Inst. of Physics and John Wiley & Sons, Inc., v. Schwegman, Lundberg & Woessner, P.A. and John Does Nos. 1-10, No. 12-CV-0528 (Minn. Dist. Ct. filed July 2, 2012).
  7. Id.

Reprinted with permission of law.com.