In April 2012, we reported on four copyright lawsuits filed by the American Institute of Physics (AIP) and John Wiley & Sons. Ltd, the publishers of a range of scientific literature. These suits alleged that four law firms in Illinois, Kansas, Minnesota and Texas had infringed the AIP’s copyrights by submitting certain scientific articles to the Patent and Trademark Office (PTO) as “prior art.” In other words, these law firms essentially were being sued for doing what patent law firms across the country do every day: prosecute patent applications. On March 25, 2014, the last of these cases came to a conclusion.
AIP had alleged that, even though the submission of prior art to the PTO was required by law, it was nevertheless infringement to make any unauthorized copies “in connection with researching, filing and prosecuting certain patent applications.” AIP initially argued that this included the mere submission of a copyrighted scientific article to the PTO. The closest analogy we could find to this claim were a pair of cases that Professor Nimmer calls the “Weakest Infringement Claims of All Time,” in which parties had attempted to use copyright law to prevent the submission of adverse evidence by opponents in civil actions.
However, AIP softened its stance as the cases progressed. It eventually acknowledged that submitting a copy to the PTO (and retaining a copy of the PTO submission) was fair use, but argued that any other copying by the law firm was off limits without a license, including “downloading, storing, making internal copies of, and distributing the Articles by email.” This more focused theory of the case was clearly intended to invoke the Second Circuit’s 1994 opinion in American Geophysical Union v. Texaco. In that case, Texaco had purchased only one or two subscriptions to scientific periodicals, to be shared among 400 to 500 research scientists. Some of the scientists made unauthorized copies of the publications for their own libraries. The Court held that this was not fair use.
So maybe AIP was on to something after all. Let’s see. Here’s a recap of how these four cases came out.
American Institute of Physics v. Hovey Williams LLP (D. Kansas)
The Kanas matter was a promising start for AIP. On June 22, 2012, a few months after the case was filed, it settled. Reportedly, the law firm didn’t want the distraction of a long legal battle and agreed to purchase a blanket license from the Copyright Clearance Center.
American Institute of Physics v. Schwegman, Lundberg & Woessner, P.A. (D. Minnesota)
In the Minnesota case, the defendant law firm had copied and used in patent applications approximately eighteen articles published by AIP, most of which it had obtained from the PTO’s Public PAIR website. The defendant also saved these scientific articles in its electronic document management system. After discovery, the defendants (supported by the PTO, which intervened in Minnesota, Texas and Illinois) moved for summary judgment.
On July 30, 2013, Magistrate Judge Jeffrey Keyes issued a Report recommending that summary judgment be granted for the defendant because the copying was fair use. As to the “purpose and character” of the use, Judge Keyes held that a “reasonable jury could only conclude that [defendant’s] purpose in downloading and making internal copies . . . was to ultimately comply with the legal requirement to provide prior art to the USPTO and to represent its clients’ interests.” And as to the effect on the market, AIP had produced no evidence that the use of the articles by patent lawyers had harmed its traditional target market of scientists, academics and the like.
Judge Keyes also rejected the plaintiffs’ analogy to the Texaco case. In Texaco, the intended target market was scientists and the intended purpose of the original work was to aid scientific research. Texaco was creating additional copies of the work for the same market for the same purpose, just without paying. Here, by contrast, lawyers aren’t the traditional audience for scientific articles, and those articles were not primarily intended for use in patent applications, so fair use applies. Leery of being misinterpreted, however, Judge Keyes warned in a footnote that he was not establishing a copying exception for lawyers. Attorneys who make unauthorized copies of legal texts (for which they are the target audience) are likely to fall on wrong side of the Texaco line.
Judge Keyes also went to some length in his fact section to point out that the law firm’s archiving of articles in its document management system did not allow personnel to perform text searches. Presumably, this was significant because it meant that the system could not become an aid to general scientific research or a substitute (in future patent prosecutions by the firm) for legitimate access to online research databases. However, Judge Keyes did not explain how this fact impacted his legal conclusions on fair use, so its relevance remains unclear.
The Court adopted the Magistrate Judge’s recommendations and dismissed the case. AIP filed a notice of appeal to the Eighth Circuit but dropped the appeal in February 2014. The defendant’s motion for fees was denied on the grounds that the AIP’s claims were “colorable” and that outcome was “by no means a foregone conclusion.”
American Institute of Physics v. Winstead PC (N.D. Texas)
The Texas case involved more or less the same issues. AIP alleged that the defendant patent law firm made unauthorized copies of approximately 13 scientific articles in the process of preparing patent applications, most of which were obtained from clients. This firm did not maintain an archive of articles, but did make what AIP charged were “excessive” internal copies. The defendants filed a motion to dismiss, and the Court converted it to a motion for summary judgment.
In an opinion issued December 3, 2013, the Court dismissed the action on the grounds of fair use. The court divided the “purpose and character” analysis into three parts: (1) the defendant’s use was transformative because, despite consisting of exact copies, these copies had a different function from, and did not supersede, the original; (2) the defendant’s copying was not commercial because, even though it charged its clients $.18 per page for copying, this did not result in a profit; and (3) the defendant’s copying provided a public benefit, to wit, an efficient patent system. The Court went on to hold that this “public benefit” was also the determinative issue with regard the effect on the market.
This time, AIP didn’t bother to file a notice of appeal.
American Institute of Physics v. McDonnell Boehnen Hulbert & Berghoff, LLP (N.D. Illinois)
That left only the Illinois case, which lasted a little bit longer because it appears to have been aggressively litigated on both sides and because the defendant introduced a twist. In addition to fair use, the defendant law firm asserted the affirmative defense of Noerr-Pennington immunity. On December 11, 2013, Court announced that the Noerr-Pennington argument was “not fully developed” in the parties’ summary judgment papers and ordered an extra round of briefing on that issue.
Noerr-Pennington immunity, a First Amendment doctrine derived from a pair of antitrust cases in the 1960’s, provides that efforts to petition or influence the government (whether by filing lawsuits or by lobbying the legislative or executive branches) are immune from antitrust liability even if the intent the activity is to eliminate competition. Here, the law firm defendant claimed that, since a patent application is a petition to the federal government, Noerr-Pennington applies and makes such activity immune from copyright infringement actions. AIP responded that application of Noerr-Pennington immunity was limited to antitrust matters. The PTO chimed in that the whole Noerr-Pennington debate was a pointless distraction because the fair use doctrine would resolve the case and render Noerr-Pennington immunity moot.
It turned out that the PTO was right, at least about the Noerr-Pennington debate being pointless, because the Court never got to rule on the issue. By early 2014, the AIP had apparently had enough and threw in the towel. In March 2014, AIP moved to voluntarily dismiss on the grounds that it had already lost in both Minnesota and Texas, and dismissing the Illinois case too was the “pragmatic” thing to do. The law firm defendant opposed but, on March 25, 2014, the Court allowed the motion, thus ending the last of the “weakest infringement claims of all time.”
Not So Weak After All?
There are a few important takeaway points from these cases. First, there is no special copyright exception for lawyers. Darn. Second, the use of copyrighted materials to fulfill legal obligations in governmental proceedings is most likely fair use, but it’s not the “slam dunk” defense that many once thought it was. Courts may not dismiss these cases out-of-hand, but rather may subject the parties to a factual inquiry to determine (a) whether the defendant’s activities represent the traditional function of and market for the plaintiff’s work; and (b) whether the “internal” activity leading up to and related to the governmental proceeding crossed the line from fair use into systematic commercial copying. Finally, Texaco is alive and well, but it does not provide the answer to every copyright question.
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