Rebecca Tushnet
Three cases filed by John Wiley & Sons as a publisher of
scientific periodicals, alleging infringement of copyright in scientific
articles in the course of patent prosecution; one of these cases was recently
dismissed, from E.D. Texas. There are
discovery disputes ongoing in N.D. Ill. and Minnesota related to the scope of
the copyright infringement claims.
USPTO issued a policy statement and moved to intervene in
the Minnesota case: because by law a person filing a patent application must
disclose all known information that will assist a patent examiner in
determining whether to grant a patent, copying in the course of doing so is
fair use. In addition, the PTO takes the
position that it is fair use to provide unlicensed non-patent literature to
applicants and full file histories to practitioners. However, the PTO takes no position on whether
making additional copies during the course of prosecution—for a client, other
attorneys, inventor, or for future reference—qualifies as fair use. In its opinion on the matter, the PTO also
pointed out that applicants are responsible for ensuring that any license they
sign isn’t inconsistent with fair use/gives them rights to copy.
The PTO sought a declaratory judgment as to the claim that
submissions to the PTO are fair use and sought a fee award. There are interesting procedural and standing
issues about whether the PTO should get a fee award—but the practical effect
was to induce John Wiley to substantially change and limit its claims.
Briefly, the argument is that uses in patent prosecution are
transformative, and thus favored by fair use: they are for a socially
productive purpose that can be distinguished from the ordinary purpose of
scientific publications. They are also
noncommercial, a separate factor favoring fair use—though the ultimate output
of a patent might be a commercial product, the intermediate use is not commercial
and the PTO’s own uses certainly aren’t commercial.
The nature of the works copied are scientific articles, and
copyright protection is thinner for factual works, especially when they are
being copied because of the factual information them rather than because of
their expressive content; likewise, the PTO accepts partial submissions but
wants as much context as is necessary to evaluate the prior art, so copying
entire articles can be justified when it helps fulfill a transformative
purpose.
Finally, the PTO argued, there was no effect on the market,
the final factor in a fair use determination. When a use is noncommercial, the Sony case from 1984 specifies that the
plaintiff has the burden of showing market harm, and John Wiley couldn’t.
One notable feature of the PTO’s fair use argument is its treatment of the well-known circularity problem: interfering with a licensing market weighs against fair use, but whether or not you need to license depends on whether a use is fair. Here, the PTO argued, the only identifiable market for these works that might be affected is the market for use of the works in patent examination itself, which doesn’t count as a market to which the plaintiffs had rights. As always, one needs a normative limit on the concept of a legitimate market for copyright owners.
In response to the PTO’s motion to intervene, the plaintiffs
withdrew any infringement claims based on (i) making copies for transmission to
the Patent Office; (ii) transmitting copies to the Patent Office; or (iii)
making one archival copy of what was transmitted to the Patent Office.
They persist, however, in arguing that other copies are
infringing, including apparently a copy that is made on an individual hard
drive before being put into the firm’s document management system or a copy
emailed from one attorney to another—that is, perfectly standard practices that
are practically necessary in the digital age.
I think the precedent on this gives a very clear signal: if you need to
make a bunch of intermediate digital copies to end up with an ultimate fair
use, say by backing up your hard drive or by emailing a copy to someone working
on the same matter, then those intermediate copies are fair use too; there’s no
point in making two different attorneys use the same laptop to avoid making one
extra digital copy in-house.
However, John Wiley has not given up: it now argues that law
firms infringe by conducting “research on behalf of themselves and their
clients” for example by using articles in the course of
(i) evaluating potential inventions that clients present,
only to determine that they are not patentable, (ii) advising clients how to
lawfully avoid infringement by designing around existing patents, (iii)
assessing the validity of patents, (iv) giving opinions as to whether an
existing product infringes a patent, and (v) determining whether the client's
interests would be best served by maintaining otherwise patentable subject
matter as a trade secret.
As a procedural matter, they have no specific factual
allegations that the defendants are doing these things. Texas judge has called this a fishing
expedition and suggested that plaintiffs are at some risk, whether that’s of
sanctions or at least of a fee award, going forward.
From my perspective, pleading issues aside, these are all
fair uses too: like submitting the articles to the PTO (or deciding not to
submit them after review because they are not sufficiently relevant) they do
not implicate the expressive elements of the articles, but are uses of the
unprotectable facts therein. The purpose is transformative—the articles weren’t
created as factors in a legal analysis but in order to advance scientific
knowledge. The use is internal and intermediate, rather than public and
directly for profit. And there is no
traditional or reasonable market in taking a license every time you send an
email with an attachment or any other activity incidental to an ultimately fair
use.
Lessons: Growth of licensing—PTO emphasizes it does a lot of
licensing, but that doesn’t mean that its unlicensed copies are infringing—the
fair use analysis isn’t that circular when a use is actually transformative
Risk to a plaintiff of making aggressive claims: copyright
makes a fee shift possible, and when you take on an entity whose challenged
practices are central to its business model, that’s a risk that a plaintiff
should consider.
Prof. David Hricik, Mercer Law
Mostly discussed patent ethics, focusing on the ethics of
copying text from one application to an application from a different client. He briefly suggested that this might create
work for hire issues, but I doubt that: the firm is highly unlikely to count as
an employee and even more unlikely to have agreed in a signed writing that the
application would be a work for hire, even assuming it fit within the statutory
categories. Like patent, copyright law’s
lines aren’t always intuitive—and copyright law these days can be argued to
apply to ordinary activities like carrying out work for clients.
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