Lawyer who copied and filed substantial portion of draft brief of co-party on appeal held to have violated copyright laws

The court in Newegg Inc. v. Ezra Sutton, PA (CV 15-01395 TJH C.D. Cal. Sept. 2016) (here), faced some interesting facts.  Boiled down, a lawyer representing a co-appellee of Newegg at the Federal Circuit copied a substantial portion of a draft brief written by a lawyer for Newegg, and filed it.

According to news reports, after that, the lawyer withdrew that brief and filed a shorter one which, allegedly, still was based substantially on Newegg’s draft brief.  Newegg then registered copyright for its brief after they were filed, covering both the draft and final brief.  (My mind wonders… if you register copyright on a draft brief, what’s the scope of waiver?) Then Newegg sued the lawyer for copyright infringement.

Rather than raising fair use right away, the defendant lawyer late in litigation moved to amend the final pre-trial order to add fair use as an affirmative defense; and the plaintiff moved for partial summary judgment on infringement.  In an order granting the defendant lawyer’s motion to amend the final pre-trial order to add fair use, the district court held that there was no fair use on summary judgment.  Thus, the lawyer was liable.

This creates some very interesting problems for lawyers, and calls to my mind the case a few years ago where a patent prosecutor was sued for using language from a patent in a specification for another client.  I’m not a copyright lawyer, and so just raise this case for you to think.

37 thoughts on “Lawyer who copied and filed substantial portion of draft brief of co-party on appeal held to have violated copyright laws

  1. Flann,

    I would be interested in your view of the four factor Fair Use analysis available in the link.

    There seems to have been a rather heavy thumb on the scale….

  2. Makes me wonder about one’s state bar professional responsibility and ethical requirements. Seems to me that such a DRAFT brief is the client’s confidential information, which the attorney should not have breached by obtaining a copyright, AND the attorney had no right to claim the draft brief as his property as the client likely rightfully owns it as clients pay us to produce such work on their behalf as we are custodians of their information, files, etc.

    1. The attorney has an automatic copyright in any original material that he authored, but his copyright does not extend to any material that he did not author. The attorney would file a copyright application for a “derivative work,” and disclaim any non-original-to-him material. Any material that the attorney used “unlawfully,” however, is not protectable, (17 USC §103), which seems to be the case here.

      Clients do not own any copyright in any work authored by their attorney unless the work was created under a WRITTEN transfer of copyright agreement, or the work is later assigned to the client, or the work was authored by in-house counsel as an employee. If you want the client to own the work (which means you can’t use “forms” that you create in your practice), you can put the magic language in your signed retainer agreement.

      1. Flann thanks for that. I also agree with your analysis. My point that was not to clear is that it seems the client’s rights in it’s property or other is superior to any right to copyright the atty might have such that the atty may not have had the legal right (without the client’s permission) to obtain the copyright in the first place.

          1. Well, the copyright IS the property right. See 17 USC §202. I can’t think of any superior right, but there can be concurrent state-law claims such as breach of contract. Preemption by the Copyright Act is provided here:

            17 USC §301(a) On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State..

            But I agree with MM on this one . . . due to the relationship of the parties, it smells like retaliation.

  3. what if: a lawyer cuts and pastes a section of an issued U.S. patent in his own specification to save time. Copyright violation? Is this any different than an incorporation by reference?

        1. The personal property conferred by a patent is the right to exclude others from making or using claimed invention. It is most certainly not the text of the document itself.

      1. Mr. Price, a patent really is a bargain – a contract – between the inventor who discloses the invention to the public in exchange for exclusive rights for a period of time. The government cannot dedicate those rights to the public without violating the bargain. Furthermore, before those rights are dedicated to the public, one has a right to have his day in court.

  4. I could see one side being upset if the co-appellee takes a large chunk of the argument and then adds additional things that would, in the copyright holder’s opinion, under-cut the original argument.

    Or maybe the co-appellee exorbitantly billed the copyright holder under some joint defense agreement for the copy/paste.

    In any case, this is just ugly. I wonder if a district judge or federal circuit could be sued for copyright infringement when it quotes large blocks of appellant’s brilliant prose and then rules against it. It might be worth losing such a copyright suit just to get some good precedent on point (does Sovereign immunity kick in here?).

    Also, I wonder if attorneys could get qualified immunity as officers of the Court. Also, it seems to me that I would have a legal duty under controlling federal law (e.g., the local rules for the court) to infringe copyright to advance the best interests of my client.

  5. Hi David,

    As it relates the patents, the PTO’s position has always been that they can be freely except to the limited extent you can get some protection by jumping through the § 1.71 d-e hoops. Of course, the MPEP and CFR aren’t law.

    Going back to the case here, I wonder if the result isn’t a little strange given that once Newegg filed its brief in the court, it became freely accessible (and copy-able) by the public, assuming it wasn’t sealed.

    So, at the time Newegg registered its brief in the Copyright office, and at the time Newegg sued this lawyer, that brief was freely available for copying.

    Does it really matter so much that the copyist did his copying shortly before the future copyright holder submitted its brief to the CAFC?

    Or were there large differences between the “draft” brief never submitted and the eventual Newegg brief that was submitted?

    1. Ouch. What I get for rearranging things then failing to proof. Please read first paragraph as:

      “As it relates to patents, the PTO’s position has always been that they can be freely copied except to the limited extent you can get some protection by jumping through the § 1.71 d-e hoops. Of course, the MPEP and CFR aren’t law.”

    2. 17 USC §102: Copyright protection subsists in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include . . . (1) literary works . . . (5) pictorial, graphic, and sculptural works.

      A patent application falls under (1) and perhaps (5), so any unauthorized violation of the copyright owner’s rights provided in 17 USC §106 is per se infringement. The owner is either the author/drafter, employer of author/drafter, or the assignee. The fact that patents are stored on the server of a government agency is irrelevant for purposes of copyright.

      As per 17 USC §204, a copyright assignment MUST be in writing, with certain magic language, so one does not give up one’s copyright in one’s patent just by submitting it to the PTO.

      I have our design patent drawing company assign to my clients its copyright in the drawings it does for my clients, because mischievous manufacturers will likely make unauthorized copies of the patent drawings.

      For the rule on the US Government ownership:

      17 USC §105: Copyright protection is not available for any work of the US Government, but the US Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise.

      See chapter 717 of the Compendium III at USCO for the Copyright Office rules on applications for legal materials (717.1-2)and patents (717.3). The work only has to be “original” to be granted copyright protection, and annotated government publications are copyrightable.

        1. Remember the case of the copyrights on the technical journals that were submitted (illicit copies submitted) as IDS materials….

          Sadly, I think the Patent Office was dropped from that suit…

        2. No, we’re not “free” to make unauthorized copies. Again, see 17 USC §106 “exclusive rights”. But since the risk of the patent owner suing someone (e.g. patent attorneys) for printing out the patent is low, we print them out with abandon.

          But if those unauthorized copies are used for commercial purpose, such as by a competing manufacturer, then the risk goes up. The public nature of published patents also can make it easier for the plaintiff to prove that defendant had “access” to the copyrighted work, which is required to prove infringement when the infringing work is not identical to the copyrighted work.

  6. I’m not a copyright lawyer, and so just raise this case for you to think.

    I think the back story behind this Newegg attorney’s obnoxious behavior must be pretty interesting. Anyone with insights is encouraged to share!

    I suppose the best guess is that, for some reason unrelated to the “copying”, there was some tension between these two co-appellees and the copyright suit is just some form of “payback”.

    Nobody ever expects attorneys — particularly patent attorneys! — to behave like spoiled schoolchildren with endless time to sue (or threaten to sue) their “enemies” for silly reasons! It’s really, really shocking when that happens.

    1. Are these “gentlemen” registered patent attorneys, or simply intellectual property litigators?

      I’ve found some exact copying of drawing figures, and extended rephrasing of descriptive paragraphs, but always considered it part of the game.

      I take umbrage, but unless it is misleading, regard it as proper. I am more offended by a drafter citing the same problem, coming up with a nearly identical solution, but calling the critical element by a different name. The intent is clearly to befuddle the word searching examiner.

      1. I am more offended by a drafter citing the same problem, coming up with a nearly identical solution, but calling the critical element by a different name. The intent is clearly to befuddle the word searching examiner.

        Wow. Do you have examples handy? That’s bold.

  7. Dennis, you should note the very common practice of filing follow-on, or “me too,” IPR petitions. The follow-on petition is often almost entirely verbatim of the first-filed IPR petition. Interesting . . .

    1. Indeed.
      Query: Even if the petition brief was registered for copyright before it was copied, and even if statutory copyright damages were awarded for the copy, would that be more costly than the legal fees for having it completely re-done, using the same prior art and similar arguments* but differently expressed?
      *None of the ideas or facts are copyrightable.

  8. I’m not a copyright lawyer either, which is why I ask: if you haven’t registered a copyright, then how can there have been notice that the copying wasn’t ok?

    That case a few years ago was in the context of an application being DOA b/c the lawyer who wrote it copied substantial portions from a competitor’s application. I don’t think copyright enters the picture: you file a patent application with the understand that it’s being dedicated to the public.

    1. Atari:

      1. Registration isn’t required for copyrights (since 1978, but don’t quote me on the date). Registration only gets you 3x damages and attorneys fees.

      2. The non-copyright on the patent was the old law (~100 years ago). But back then you HAD to register for a copyright, and now you don’t. So, I think it is a grey area. I think you’re right on policy grounds, but it hasn’t be tested.

      1. Are the contents of US patents copyrightable, and if so, who would own it? According to the US Copyright Office, following Wheaton v. Peters, 33 U.S. (Pet. 8) 591 (1834), “edicts of government”, such as judicial opinions, administrative rulings, legislative enactments, public ordinances, and similar official legal documents are not copyrightable for reasons of public policy. I would categorize a patent under such an edict of government exception since it sets forth a grant of exclusive rights and defines the scope of such rights by means of the patent’s written content.

        In any case, it is also a U.S. government publication, even though large portions of its content are written by or on behalf of an applicant. I can’t see that ownership of such a copyright, if it exists at all, would belong to a patentee.

        Any thoughts?

      2. momo – I am a copyright lawyer, so if I may make a few corrections to your post . . . .

        1. Registration (or at minimum an application) is required in all jurisdictions prior to filing a complaint for infringement (17 USC §411), and an application must be filed within 5 years of “publication” to be entitled to a presumption of validity (17 USC §410). Otherwise, you are correct, registration is not required, but a plaintiff then gives up the right to elect statutory damages (see below).

        There is no 3x damages rule that I am aware of. Statutory damages ($750 – $30,000 per registration) and atty fees are only available if the copyright application is filed as per 17 USC §412 (the work is “unpublished” or application is filed w/in 3 months of “publication”); and enhanced statutory damages ($30,001 – $150,000) are only available for willful infringement (17 USC §504).

        I put “publication” in quotes because its definition is particular to copyright law.

        1. The USPTO won’t make “non-patent literature” available for online viewing or downloading by anyone other than the attorney of record in a given patent application/patent. That followed the well-known case of a journal publisher suing a large corporation for making multiple copies of journal articles and keeping them in its physical files; the USPTO doesn’t want to step into potential copyright infringement territory by making copies of copyrighted material available to the public. But the USPTO makes the text and drawings of the patent application/patent itself freely available, suggesting that the USPTO doesn’t see any copyright problems there. I reiterate what I said before: you file a patent application, you’re acquiescing to free copying of your text and drawings. It’s part of the quid quo pro for seeking exclusivity for your invention.

          1. Atari Man,

            But is it not correct that you can obtain that same copy of NPL if you ask for it live and in person at the USPTO (of course, paying the nominal copy charges)…?

            It is only the electronic version that is not available.

            This is why the USPTO was a named party in the suit I mentioned at post 4.2.1.1. As mentioned there, the Plaintiff sadly dropped the USPTO as a named party, which allows the dichotomy to continue (while the principle issue remains).

          2. Also, I believe (if I recall correctly) that it is not just the “attorney of record” that can obtain the electronic copy, but any attorney in the firm that has been associated with the customer number related to the case.

            I do admit that this may fall under a broad view of “attorney of record” but since the customer number practice (from what I have seen) tends to be rather loose (for example, multiple customers under one number, all attorneys in a firm listed under the same number – whether involved in the case or not), actual practice does not really coincide with the meaning of “attorney of record.”

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