"The Weakest Infringement Claims of All Time"??? Patent Prosecution and the Physics of Fair Use

When patent prosecutors file applications with the United States Patent and Trademark Office (PTO), they are required by law to include “all information material to patentability,” which typically includes copies of scientific articles that may disclose relevant prior art. But are they required to get the copyright holder’s permission before submitting these articles? If they don’t, is it copyright infringement?

The American Institute of Physics (AIP) thinks so. Alongside publisher and co-plaintiff John Wiley & Sons, Ltd., the AIP has just completed filing a series of four lawsuits against patent prosecution law firms in Illinois, Kansas, Minnesota and Texas. Each complaint alleges that the law firm in question infringed AIP’s copyrights by (1) submitting copies of copyrighted articles to the PTO on behalf of clients; and (2) making copies of the articles for internal use by the law firm during the patent prosecution process.

So what should the defendants do? A quick-strike motion to dismiss, perhaps? Surely, there must be some little-used but devastating doctrine, lurking among the pages of Nimmer on Copyright, which precludes infringement claims against copying that is required by law? Actually, there is no such doctrine. Rather, as the law stands now, it appears that either a license or a fair use analysis (something that can be very difficult to vindicate before summary judgment) is required before submitting copyrighted materials to the government, even if that submission is legally required.

Although there are no cases on point, the closest analogy is in the litigation context, where a party may seek to introduce (and thereby make available to the public) material evidence that happens to be copyrighted. For example, in Jartech, Inc. v. Clancy, 666 F.2d 403 (9th Cir. 1982), likely the first case addressing this issue, the Santa Ana City Council sent an agent to surreptitiously record a pornographic film for use in a public nuisance proceeding against an adult theater. Rather than quickly disposing of the issue, for example by establishing a litigation “privilege,” the Ninth Circuit conducted a full blown fair use analysis, and determined that the City Council’s use was fair, since its “purpose and character” was so different than the film’s “intrinsic use,” and since it was so unlikely to upset the film’s intrinsic market.

Nevertheless, the need to conduct an individualized fair use analysis in each case, while burdensome for potential defendants, has not as a practical matter brightened the prospects for plaintiffs. In fact, this context has given rise to what Professor Nimmer describes as “[t]wo of the weakest infringement claims of all time.” (See Nimmer on Copyright at § 13.05(D)(2)). The first is Healthcare Advocates, Inc. v. Harding, Earley, Follmer & Frailey, 497 F. Supp. 2d 627 (E.D. Pa. 2007), in which a law firm defending a trademark infringement suit viewed and printed archived pages from the plaintiff’s website for use in defending its client. This caused the trademark plaintiff to sue the law firm directly for copyright infringement. The Court conducted a fair use analysis and, notably, did determine that the defendant law firm’s use was “commercial.” However, it also concluded that it “would be an absurd result if an attorney defending a client against charges of trademark and copyright infringement was not allowed to view and copy publicly available material, especially material that his client was alleged to have infringed.”

As “absurd” as that claim may have been, the hands-down winner is the child-custody matter of Bond v. Blum, 317 F. 3d 385 (4th Cir. 2003). In that case, after a Maryland couple with three children got divorced, the ex-wife announced her plans to move in with William C. Bond, who had written a non-fiction manuscript about how he had once murdered a family member and gotten away with it. When the ex-husband introduced a copy of the manuscript as evidence that Bond might not be the ideal custodial step-father for his children, Bond sued for copyright infringement. After conducting a full fair use analysis, the Court predictably affirmed the District Court’s fair use holding, as well as an award of attorneys’ fees to the defendant.

The PTO, in part citing the cases discussed above, has already staked out a position firmly in the defendants’ camp. In a position statement issued on January 19, 2012, the PTO asserted that the submission of copyrighted scientific articles along with patent applications (as well as most copying the PTO may perform in its own review of such applications) is fair use.

So, does all this mean that the AIP should pack it in prior to its inevitable ignominious defeat and an award of attorneys’ fees? Maybe and maybe not. Perhaps the plaintiffs will find a convincing way to distinguish their claims from those in the litigation context. And, in fairness, part of AIP’s claims involve not submissions to the patent office, but alleged copying by the law firms for internal purposes that may or may not have been related to patent submissions and that may have run afoul of the copying limitations expressed in American Geophysical Union v. Texaco, 60 F.3d 913 (2d Cir. 1994) (systematic copying of scientific articles by corporation for archival purposes not fair use). As to this last type of alleged internal copying by law firms, the case law is less clear, and even the PTO has taken no position.