Category Archives: Copyrights

What Is a Copyright?

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

PSMN What Is...? SeriesIn the next installment of our continuing “What Is?” series, we are going to discuss copyrights. One of the core intellectual property rights that exists under U.S. law is a copyright. In a nutshell, it is a legal right that provides authors of certain types of original and expressive works that have been fixed in a tangible medium the right to prevent others from using the work without the author’s permission. Obviously, there is a lot more detail behind this, so we will only cover some of the basics in this post.

First, only certain types of works are eligible for copyright protection. They include (1) literary works, (2) musical works, (3) dramatic works, (4) choreographic works, (5) pictorial, graphic, and sculptural works, (6) motion pictures and other audiovisual works, (7) sound recordings, and (8) architectural works. In addition, the work must have been fixed in a tangible medium to be eligible for a copyright—e.g., written down, put on film, or written in a computer. Certain things cannot be copyrighted, such as (1) things that have not been fixed in a tangible form (e.g., thoughts in your head or speeches that are not recorded or written down), (2) titles, names, and short phrases, (3) ideas, methods, inventions, or systems, and (4) standardized and commonly known information, such as standard calendars, tape measures, and lists or tables of publicly known information.

Second, in order to be eligible for a copyright, the work must be original. But, it does not have to be novel. In other words, the author must show that he or she created the work (and did not copy it from someone else), but the author does not have to show that he or she was the first to ever think of the work.

If an author can satisfy these requirements, he or she has a copyright. Under the change in federal law in 1976, a copyright exists under federal law the moment an author fixes an original expressive work in a tangible medium. There is no longer the need to affix a copyright symbol to the work or register the work with the U.S. Copyright Office. But, and this is a big but, there are a number of important advantages to registering a work with the Copyright Office that can be lost if not done timely. So, it is best for an author to consult an intellectual property attorney if there is the possibility that the work may be valuable or need to be protected.

A copyright gives an author a number of substantive legal rights, such as the ability to control who (1) reproduces or distributes copies of the work, (2) creates derivative works based on the original, and (3) performs or displays the work publicly. An author can sue an individual or company that violates these rights and collect damages, statutory penalties, or obtain a court order preventing the infringer from violating these rights in the future. In some cases, copyright infringement can even be a crime.

Because a copyright is a property right, it can be sold, transferred, or licensed like other types of real and intellectual property.

As of January 1, 1978, a copyright lasts for the lifetime of the author plus 70 years. If the work was made for hire or was published anonymously/psuedonymously, the copyright lasts for the shorter of 95 years from publication or 120 years from creation.

For more information about copyright, you can read this nice summary by the United States Copyright Office.

In upcoming posts, we’ll talk about some other issues involving copyrights, such as the fair use defense, what kind of remedies are available to authors whose works have been improperly copied, and the work-for-hire doctrine, among other things.

Copyright and the Selfie

by Cara Disheroon, attorney at Picadio Sneath Miller & Norton, P.C. ()

l1aYeIn the ever transitioning world of copyright law, issues surrounding the selfie have recently taken center stage. The latest dispute involves a selfie taken by a monkey who, in 2011 in Indonesia, grabbed wildlife photographer David Slater’s camera to snap a wide-smiling image of itself. Wikipedia subsequently placed the image in Wikimedia Commons, the area of Wikipedia that holds open-source material. Slater then requested that the photo be removed as he was the copyright owner and Wiki refused. You can visit Mr. Slater’s webpage for additional examples of his work here.

Wikimedia stated to the Huffington Post in response to the controversy “We didn’t think the monkey owned the copyright – instead, our assessment was that there’s no one who owns the copyright. That means that the image falls into the public domain.”

It appears that the US Copyright Office agrees with Wiki’s analysis. Two weeks after the controversy broke, the agency issued a 1,222 page draft compendium analyzing federal copyright law in which it stated “The Office will not register works produced by nature, animals, or plants.” Within Chapter 300, which outlines the “Human Authorship Requirement,” the Office noted that copyright law protects “the fruits of intellectual labor” that are “founded in the creative powers of the mind.” A photograph taken by a monkey was specified in the list of examples NOT protected.

A similar ownership issue surrounding the selfie has also arisen in the context of the Ellen DeGeneres group selfie taken at this year’s Oscars and posted on Twitter. The photo, taken in the audience during the ceremony, quickly became the most tweeted photo of all time and DeGeneres later granted the Associated Press permission to share the photo for editorial purposes to subscribers of AP’s photo service. But legal scholars noted that DeGeneres may not be the actual owner of the copyright.   As Bradley Cooper technically pressed the button, he could arguably be the copyright owner given the courts view historically that pressing the shutter created ownership.

Should Cooper attempt to stake a claim, DeGeneres could have an argument based on Brod v. General Publishing Group, 2002 U.S. App. LEXIS 2544 (9th Cir. Feb. 15, 2002). In Brod, a photographer sued a book author for using his photographs without permission. The court found however, that the book author was a co-owner since his contributions to the process were “sufficiently original and expressive.” The copyrightable expressions in Brod included selection and arranging of subject matter, composition, camera angle and lighting.

As Bradley Cooper is unlikely to assert a copyright claim, the incident currently serves only as an interesting hypothetical. However, as technology advances, issues over authorship in the photography/video context will likely arise again as physical snapping of the shutter is no longer required to produce artistic works.

Is CafePress a Service Provider and Could Its Stripping of Metadata Cost It Safe Harbor Status Under the DMCA?

by Cara Disheroon, attorney at Picadio Sneath Miller & Norton, P.C. ()

The Southern District of California recently grappled with these issues in Steven M. Gardner v. CafePress Inc., Case No. 3:13-cv-1108-GPC-JMA (S.D. Cal. Feb. 26, 2014). The case centered on a copyright infringement claim against the self-publishing site CafePress and provides an interesting analysis of the safe harbor provision of the Digital Millennium Copyright Act (DMCA) at 17 U.S.C. § 512.

The facts regarding the images were undisputed.  Plaintiff, Gardner alleged copyright infringement of various wildlife images which were distributed for sale on the site by CafePress users. Gardner filed suit and CafePress, on the same day they received the complaint, disabled access to the alleged infringing material.  Subsequently, they discovered a second member’s use of the artist’s work and immediately disabled and terminated the second user’s account. Before the material was disabled however, $6,320 worth of products was sold. CafePress then moved for summary judgment based on the safe harbor provision of § 512.

In analyzing whether CafePress could take advantage of the safe harbor provision, the court began with an analysis of the term “service provider” under § 512(c). Noting that the language “a provider of online services or network access, or the operator of facilities therefor” was a broad definition, they then compared CafePress to other vendors such as Amazon and eBay. Unlike these companies however, CafePress’s service differed as they actually determine the prices for retail products, pay users only a royalty or commission, possess the ability to modify designs and determine which products are sold. The court found CafePress’s activities to be beyond a service that “merely facilitates the exchange of information between internet users” and thus the court was unable to find as a matter of law, that CafePress was a “service provider.”

Moreover, § 512(i) requires that the provider must have “adopted and reasonably implemented” a policy to terminate repeat infringers and not interfere with “standard technical measures” used to protect copyrighted works. Plaintiff contended that CafePress interfered with “standard technical measures” by deleting metadata when images are uploaded to the website. The court agreed stating that the deletion created a dispute of material fact thereby precluding judgment as a matter of law and adding “From a logical perspective, metadata appears to be an easy and economical way to attach copyright information to an image.” At this stage, the discussion is only dicta but it is nevertheless important as the court appears to be placing the burden on CafePress and given the fact that many social media sites routinely strip metadata, a ruling on the merits could potentially affect a whole host of sites which conduct the practice.

CafePress did prevail on its Motion for Partial Judgment as to statutory damages and attorney fees given that Gardner had failed to register his images before the alleged infringement. Concluding that the alleged acts constituted the same “series of acts” that commenced prior to registration of the images, the court granted CafePress’s motion. This means that Gardner is limited to his actual damages of $6,320 and may affect whether the case proceeds to trial.

If the case does proceed however, a ruling by the court on the merits could have a huge impact on numerous self-publishing sites with the potential loss of safe harbor status and the risk of significant statutory damages.

 

Court Holds That IP Address Evidence Is Not Sufficient to Allege Claim for Copyright Infringement

Guest post by Cara Disheroon, attorney at Picadio Sneath Miller & Norton, P.C. ()

Cara L DisheroonIn Elf-Man LLC v. Cariveau, No. C13-0507RSL, 2014 U.S. Dist. LEXIS (W.D. Wash., Jan.17, 2014), the U.S. District Court for the Western District of Washington found that a production company’s complaint alleging copyright infringement for the internet downloading of its film, “Elf-Man,” did not state a “plausible” ground for relief when the company’s only evidence of infringement was the use of defendants’ IP addresses.

The production company initially filed an action against 152 Doe defendants for allegedly downloading the film using the BitTorrent application, which identified defendants through their IP address.  Following a dismissal of the Doe defendants in the original complaint, plaintiff filed a First Amended Complaint naming eighteen individual defendants.  Four of these defendants filed a motion to dismiss arguing that the complaint failed to state a claim that was “plausible” under the Federal Rules.

The court agreed stating that plaintiff provided no factual allegations that supported claims that defendants directly or indirectly stole copyrighted material.  Noting that plaintiff alleged only that the defendants purchased internet access and failed to ensure that others did not use that access to download copyrighted material, the Court addressed the claims of direct, contributory, and indirect infringement in turn.   Regarding the direct and indirect infringement allegations, the court reasoned that the mere identification of defendants’ IP address “tells us very little about who actually downloaded Elf-Man using that IP address.”  Citing various other possibilities, including another family member, guest, or freeloader who could have engaged in the infringing activity, the Court found that plaintiff alleged facts that were merely possible.  In the eyes of the court, it was also possible that defendants simply failed to secure their connection against third-party interlopers.  The conclusory allegations of the complaint therefore failed to give rise to a plausible inference.

Regarding the indirect infringement claim, the Court again found that plaintiff’s complaint was conclusory and failed to provide facts that would support a finding that defendants intentionally encouraged or promoted the infringement.  Plaintiff argued that defendants should be held liable for contributory infringement “because they failed to take affirmative steps to prevent unauthorized use of their internet access….” The Court, while agreeing with plaintiff that courts continue to analyze contributory liability claims and that not all issues had been litigated, held that courts have fixed the requirement that defendant’s contribution to the infringement be intentional.  Absent this essential element of the claim, defendants’ motion to dismiss was granted.

The decision arguably adds to the already difficult burden of copyright holders to protect their works from online infringement but also demonstrates the balancing act of courts which require proof that a particular individual behind the IP address actually pirated the copyrighted work.

Busy IP Docket for US Supreme Court Upcoming

Sneath, Henry 2012 headshotBy: Henry Sneath, Chair of the Intellectual Property practice at Picadio Sneath Miller & Norton, P.C.  hsneath@psmn.com or 412-288-4013

The US Supreme Court has a very busy IP docket in the next few months. Close watchers of the court predict a continuing focus on IP cases. Our friends at AIPLA provide a nice summary of the oral argument schedule of IP cases through April. We will follow these cases and post any important decisions. See AIPLA link below: http://www.aipla.org/resources2/reports/2014/Pages/140214AIPLA-Direct.aspx

Supreme Court Announces It Will Hear Four New Intellectual Property Cases

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

SupremeCourtImage_1The Supreme Court announced on Friday that it will hear four additional intellectual property cases this term, which makes nine total intellectual property cases this term so far. Brief summaries of the issues presented are provided below, along with links to more information about each of these cases from our friends at SCOTUSblog.

New Cases

Limelight Networks, Inc. v. Akamai Technologies, Inc. (No. 12-786)

The issue in this case is whether a party may be liable for infringement under either 35 U.S.C. § 271(a) or § 271(b) where two or more entities join together to perform all of the steps of a process claim.

Nautilus, Inc. v. Biosig Instruments, Inc. (No. 13-369)

Two issues are raised in this case. Does the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations—so long as the ambiguity is not “insoluble” by a court—defeat the statutory requirement of particular and distinct patent claiming? And, does the presumption of validity dilute the requirement of particular and distinct patent claiming?

POM Wonderful v. Coca-Cola (No. 12-761)

The issue in this case is whether the court of appeals erred in holding that a private party cannot bring a Lanham Act claim challenging a product label regulated under the Food, Drug, and Cosmetic Act.

ABC, Inc. v. Aereo, Inc. (No. 13-461)

The issue in this case is whether a company “publicly performs” a copyrighted television program when it retransmits a broadcast of that program to thousands of paid subscribers over the Internet.

Previous Cases

Medtronic v. Boston Scientific Corp. (No. 12-1128)

The issue in this case is is whether, in a declaratory judgment action brought by a licensee under MedImmune, the licensee has the burden to prove that its products do not infringe the patent, or whether (as is the case in all other patent litigation, including other declaratory judgment actions), the patentee must prove infringement.

This case was argued on November 5, 2013.

Lexmark International v. Static Control Components (No. 12-873)

The issue in this case is whether the appropriate analytic framework for determining a party’s standing to maintain an action for false advertising under the Lanham Act is (1) the factors set forth in Associated Gen. Contractors of Cal., Inc. v. Cal. State Council of Carpenters (“AGC”), 459 U.S. 519, 537-45 (1983), as adopted by the Third, Fifth, Eighth, and Eleventh Circuits; (2) the categorical test, permitting suits only by an actual competitor, employed by the Seventh, Ninth, and Tenth Circuits; or (3) a version of the more expansive “reasonable interest” test, either as applied by the Sixth Circuit in this case or as applied by the Second Circuit in prior cases.

This case was argued on December 3, 2013.

Highmark Inc. v. Allcare Management Systems (No. 12-1163)

The issue in this case is whether a district court’s exceptional-case finding under 35 U.S.C. § 285 (in a patent infringement lawsuit), based on its judgment that a suit is objectively baseless, is entitled to deference.

This case will be argued on February 26, 2014.

Octane Fitness v. Icon Health and Fitness (No. 12-1184)

The issue in this case is whether the Federal Circuit’s promulgation of a rigid and exclusive two-part test for determining whether a case is “exceptional” under 35 U.S.C. § 285 improperly appropriate a district court’s discretionary authority to award attorney fees to prevailing accused infringers in contravention of statutory intent and this Court’s precedent, thereby raising the standard for accused infringers (but not patentees) to recoup fees and encouraging patent plaintiffs to bring spurious patent cases to cause competitive harm or coerce unwarranted settlements from defendants?

This case will be argued on February 26, 2014.

Alice Corporation Pty. Ltd. v. CLS Bank International (No. 13-298)

The issue in this case is whether claims to computer-implemented inventions—including claims to systems and machine, processes, and items of manufacture—are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court.

This case will be argued on March 31, 2014.

Non-Separable Design Features in Useful Articles Not Entitled to Copyright Protection

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

Starbuzz HookahIn an opinion issued yesterday, the Ninth Circuit confirmed, in Inhale, Inc. v. Starbuzz Tobacco, Inc. (Case No. 12-56331), that when a useful article has distinctive, artist features, those features are not copyrightable if they are not separable from the utilitarian aspects of the article.

Background

Inhale registered with the Copyright Office its design for a uniquely shaped hookah (a device used for smoking tobacco). Starbuzz sold identically shaped hookahs (shown in the picture to the right and as alleged in the complaint). Inhale then sued Starbuzz for copyright infringement. The District Court granted summary judgment in favor of Starbuzz, holding that the shape of a hookah is not copyrightable.

The Ninth Circuit Affirms

Designs of a useful article are copyrightable “only if, and only to the extent that, [it] incorporates . . . sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the” article. 17 U.S.C. § 101. The parties agreed that the hookahs were useful articles, so the question was whether the design was physically or conceptually separable from its utilitarian aspect. Inhale argued conceptual separability.

The Ninth Circuit first considered whether separability was a question of law or fact. It concluded under its precedent that it was a mixed question, and, therefore, it could decide the issue de novo.

Inhale argued that the distinctiveness of the shape of the hookah made its conceptually separable from its utilitarian aspects. The Ninth Circuit acknowledged that the law is muddled with respect to how courts should determine the separability of the artistic and utilitarian aspects of a useful article, so it deferred to the Copyright Office’s interpretations of the relevant standards.

The Copyright Office has determined that the distinctiveness of an article’s shape does not affect its separability. The Ninth Circuit found its reasoning persuasive and adopted it—“[t]he shape of a container is not independent of the container’s utilitarian function—to hold the contents within its shape—because the shape accomplishes the function.”

Therefore, the Ninth Circuit affirmed the District Court’s grant of summary judgment because it correctly concluded that the shape was not copyrightable.

 

Google Books Program Considered Fair Use

By: Joe Carnicella, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

On November 14, 2013, the United States District Court for the Southern District of New York held that Google’s Books Program constituted fair use under Section 107 of the Copyright Act, 17 U.S.C. 107.

Since 2004, Google has scanned more than twenty million books as part of its two digital book programs, the “Partner Program” and the “Library Project” (collectively referred to as “Google Books”).  Almost 93% of the books scanned are non-fiction while the remaining 7% are fiction.  The Partner Program, which is designed to help publishers sell books and to help books become discovered, consists of Google hosting and displaying material provided by book publishers or other rights holders with the permission of the rights holders.  The Library Project involves the digital scanning of books in the collections of numerous libraries without the permission from the copyright holders.  Pursuant to an agreement with Google, participating libraries can download a digital copy of each book scanned from their collections.  Google also creates more than one copy of each book it scans and maintains digital copies on its servers and back-up tapes.

Plaintiffs, the legal or beneficial owners of various books, commenced this action alleging that Google committed copyright infringement by scanning copyrighted books and making them available for search without permission of the copyright holders.  Google’s primary defense was fair use.  According to Section 107 of the Copyright Act, the fair use of a copyright work , . . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.  In determining whether the use made of a work in any particular case is a fair use, the factors to be considered shall include — (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.  The court analyzed each of these factors as general guidance to determine whether Google infringed on the rights of the copyright holders.

First, with respect to the purpose and character of use, a key consideration is whether the use of the copyrighted work is “transformative,” that is, whether the new work merely supersedes or supplants the original creation or whether it instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.  The court determined that Google’s use of the copyrighted works was highly transformative.  Google Books digitizes books and transforms expressive text into a comprehensive word index that helps readers, scholars, researchers and others find books.  Google Books helps librarians and cite-checkers to identify and find books.  The court found that the use of book text to facilitate search through the display of snippets was transformative.  The court also found Google Books to be transformative in that it has transformed book text into data for purposes of substantive research, including data mining and text mining in new areas, thereby opening up new fields of research.  Moreover, the court concluded that Google Books does not supersede or supplant books because it is not a tool to be used to read books.  Finally, even though Google is a for-profit company and Google Books is a commercial enterprise, and despite the fact that a commercial use tends to weigh against a finding of fair use, the court found fair use because Google does not engage in direct commercialization of copyrighted works, i.e. Google does not sell the scans it has made of the books, does not sell the snippets that it displays, and does not run ads on the pages that contain snippets.

With respect to the second factor, the court considered certain facts (e.g. that the majority of the books are non-fiction and that the books at issue are published and available to the public), and concluded that such considerations favor a finding of fair use.

With respect to the third factor, the court noted that Google scans the full text of books and it copies verbatim expression.  The court noted that, as one of the keys to Google Books is its offering of full-text search of books, full-work reproduction is critical to the functioning of Google Books.  Even though Google limits the amount of text it displays in response to a search, the court concluded that the third factor weighed slightly against a finding of fair use.

Finally, with respect to the fourth factor, the plaintiffs argued that Google Books would negatively impact the market for books and that Google’s scans would serve as a “market replacement” for books.  The court disagreed with this argument because Google does not sell its scans, and the scans do not replace the books.  The plaintiffs also argued that users could put in multiple searches, varying slightly the search terms, to access an entire book.  Again, the court disagreed and found it highly unlikely that someone would take the time and energy to input countless searches to try and get enough snippets to comprise an entire book.  According to the court, not only is that not possible as certain pages and snippets are blacklisted, the individual would have to have a copy of the book in his possession already to be able to piece the different snippets together in coherent fashion.  To the contrary, the court found that Google Books would only enhance the sales of books to the benefit of copyright holders and determined that Google Books provides a way for authors’ works to become noticed, much like traditional in-store book displays.

The court weighed the competing factors and found Google’s use to be a fair use.  According to the court, Google Books provides significant public benefits by advancing the progress of the arts and sciences, by maintaining respectful consideration for the rights of authors and by not adversely impacting the rights of copyright holders.  Also, Google provides the libraries with the technological means to make digital copies of books that they already own, wherein the libraries then use the digital copies in transformative ways by creating their own full-text searchable indices of books, maintaining copies for purposes of preservation, and making copies available to print-disabled individuals.

Sharing a Publication at Work May Constitute Copyright Infringement

by: Kelly A. Williams, a shareholder at Picadio Sneath Miller & Norton, P.C.

wd-pa-courthouseDo you work in an office that receives a single copy of a trade publication, which is passed around the office for multiple people to read?  Be careful because such use may constitute copyright infringement—at least that is what one publisher argues.

In Energy Intelligence Group, Inc. v. The United Steel, Paper and Forestry, Rubber, Manufacturing, Energy, Allied Industrial and Service Workers International Union, AFL-CIO/CLC (“USW”), Civ. Action. No. 11-00428, 2013 U.S. Dist. LEXIS 123080 (W.D. Pa. Aug. 29, 2013) (Judge Conti), Energy Intelligence Group, Inc. and Energy Intelligence Group (UK) Limited (collectively “EIG”) filed suit to seek damages from Defendant USW for sharing its single subscription to the “Oil Daily” with multiple USW employees.  USW, located in Pittsburgh, Pennsylvania, is a labor organization, which provides collective bargaining services to its union members.  USW subscribed to the Oil Daily, beginning in 1992.  From 1992 to 1999, the Oil Daily was sent in paper copy.  Starting in 1999, EIG began sending the Oil Daily in electronic form.  USW subscribed to the Oil Daily through a subscription agent, EBSCO Information Services (“EBSCO”).

EIG’s suit involves 2,880 issues of the Oil Daily, which were published from December 1999 to March 2011.  EIG owns valid U.S. copyright registrations for each of these publications and provides copyright notices on its website, articles, emails and publications, including on the Oil Daily itself.  In February 2006, EIG sent a letter to all subscribers informing them that single-user subscriptions were not to be shared by multiple readers.  This letter was not sent directly to USW but was sent to EBSCO.  However, the court determined that EBSCO was USW’s agent and this constituted notice to USW, as well as EBSCO.

Mary Dimoff, USW’s librarian, was the sole subscriber to the Oil Daily.  When she received the Oil Daily in hard copy, she maintained a list of USW recipients to receive the Oil Daily, and she routed the paper to these individuals over the course of three to four days.  When Ms. Dimoff started receiving the Oil Daily in electronic form, she forwarded it to the recipients via email.  Through various communications with EIG and EBSCO, Ms. Dimoff revealed to EIG that she was sharing her subscription, and EIG filed suit.

USW conceded that it copied and distributed the 2,880 issues of the Oil Daily.  However, USW asserted that it was permitted to do so based upon several different defenses including, implied license, equitable estoppel, fair use, and laches.  USW also argued that damages should be limited to the three-year period prior to the filing of the complaint.  The parties filed cross motions for summary judgment on the defenses and the damages issues.

The court held that factual issues precluded the entry of summary judgment on all but one issue which was the equitable estoppel defense.  The court concluded that it would be impossible for USW to prove that the equitable estoppel defense applied because it could not prove all four factors necessary to establish such a defense: (1) the plaintiff had actual or constructive knowledge of the defendant’s infringing conduct; (2) the plaintiff intended or expected that defendants would act on the plaintiff’s misrepresentations or concealments; (3) the defendant was ignorant of the true facts; and (4) the defendant relied on the plaintiff’s conduct to its injury.

The court found that USW had sufficient evidence to prove that EIG had at least constructive knowledge of the infringing conduct for approximately three years before filing suit and thus, met the first factor.  However, USW could not prove the last three factors.  As for the second factor, the court determined that EIG did not misrepresent or conceal its intent to assert its copyrights because it affixed its copyright notice on every edition of the Oil Daily.  With respect to the third factor, the court rejected USW’s argument that it acted innocently because it had the notice of the copyright on the Oil Daily and because USW never followed up with EBSCO or with EIG to confirm if its actions were permissible.  Finally, the court held that USW could not show that it relied on EIG’s conduct to its detriment because EIG provided the copyright notice directly on the Oil Daily and sent its terms and conditions to EBSCO.  Therefore, EIG made no misrepresentations and did not conceal its copyrights.

The Energy Intelligence Group case is an interesting copyright case.  For more details on the other defenses and the factual issues raised, you can read the entire case here.

Preliminary Ruling Okaying Use of Copyrighted Articles During Patent Prosecution as Fair Use

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

Magistrate Judge Jeffrey J. Keyes from the U.S. District Court for the District of Minnesota issued an important report and recommendation affirming the ability of patent attorneys to use copyrighted articles during patent prosecution (e.g., to submit them to the USPTO to fulfill disclosure requirements) as fair use.

BACKGROUND

In American Institute of Physics, et al. v. Schwegman Lundberg & Woessner, P.A.  (No. 12-cv-00528), various publishers sued a law firm that had copied their copyrighted scientific articles in order to assess whether the articles were prior art and, if they were, sent copies to the USPTO to fulfill its obligation to disclose prior art. The publishers originally argued that any use by the law firm of these articles without payment constituted copyright infringement. However, they dropped their claims as to the firm’s (1) making copies to be sent to the USPTO, (2) sending copies to the USPTO, and (3) retaining one copy for its files. They continued their infringement claims as to the downloading of the articles, making other copies that existed in the firm’s files, and distributing the copies to its clients or others in the firm. The law firm argued that none of these actions infringed because of the fair use exception.

THE COURT’S DECISION

In assessing the applicability of the fair use defense, a court must consider (1) the purpose and character of the accused infringer’s use, (2) the nature of the copyrighted work, (3) the amount of used, and (4) the effect of the copying on the relevant market.

The Court determined that the nature and purpose of the firm’s use was different from that of the publishers. The publishers publish the works for the betterment of science and to allow other scientists to test and validate the authors’ findings. In contrast, the firm used the articles to satisfy a legal requirement of disclosure to assist the USPTO in determining whether an invention was new and novel. The Court further found that the intended audience for the two parties was different and did not overlap. The publishers’ audience was scientists, students, libraries, etc., whereas the firm’s audience was the USPTO and lawyers in the firm.

The Court also considered the nature of the articles to slightly favor the law firm. Because the articles were primarily factual and informational in nature, they fell a bit further from the creative types of expression more strongly protected by copyright law.

The Court looked at the amount of use and also concluded that, despite the copying of the entire article, this factor also favored the law firm. In order to satisfy its obligation of disclosure, the firm had to use the entire article. Thus, its entire use was consistent with its allowed purpose.

Finally, the Court looked to whether there were any other factors that might favor either party. It concluded that the law firm’s use was consistent with the overriding Constitutional basis for both the patent and copyright laws, which is to promote the progress of the science and useful arts. Such copying ultimately furthered this objective and the public good by assisting the USPTO in weeding out improper patents.

Ultimately, in weighing all of the factors, the Court concluded that the law firm’s use of the copyrighted articles was fair use and not copyright infringement.