08/18/13

American Inst. of Physics v. Schwegman: OK to Keep NPL Database


Category: Copyright
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleAmerican Inst. of Physics v. Schwegman Lundberg & Woessner, P.A., Civ. No. 12-528 (RHK/JJK) (Minn. July 30, 2013).
Issue"[...] Publishers allege that by getting [scientific Article] copies without paying for a license, and by making internal copies within the law firm [for submission to USPTO], Schwegman infringed the Publishers’ copyrights. Both Schwegman and the USPTO assert that Schwegman’s copying of the Articles constitutes a non-infringing 'fair use.'” American Inst. of Physics, at *3-4.
Holding"Having weighed all these factors, this Court concludes that Schwegman is entitled to the fair use defense as a matter of law. The record demonstrates no genuine dispute that Schwegman’s use of the Articles was new and different than and did not merely supersede the original purpose of the Articles. Also, the undisputed facts demonstrate that the nature of the Articles is predominantly informational. Further, although Schwegman did make complete copies of the Articles in its patent prosecution practice, the only reasonable inference to draw from the record is that Schwegman’s copying of the Articles was consistent with the new and different purpose and character of Schwegman’s use. And there is no evidence to suggest that Schwegman’s copying impacted a traditional, reasonable, or likely to be developed market for the Articles. Thus, all four fair use factors weigh in favor of finding that Schwegman’s use in this matter is fair as a matter of law." American Inst. of Physics, at *40.



Procedural History"1. Plaintiffs American Institute of Physics, John Wiley & Sons, Inc., and Wiley Periodicals, Inc.’s (collectively “the Publishers”), Motion to Dismiss and for Summary Judgment on the Counterclaim of Intervening Defendant the United States Patent and Trademark Office (Doc. No. 93); 2. The Publishers’ Amended Motion for Partial Summary Judgment Establishing the Liability of Defendant Schwegman, Lundberg & Woessner, P.A. (“Schwegman”), for Copyright Infringement (Doc. No. 116); 3. Intervenor Defendant United States Patent and Trademark Office’s (“USPTO”) Motion for Summary Judgment on its Fair Use Defense and Counterclaim (Doc. No. 153) […] The District Court has referred these motions for a Report and Recommendation under 28 U.S.C. § 636 and D. Minn. LR 72.1." American Inst. of Physics, at *1-2.
 
 
 
Legal Reasoning
Fair Use Inquiry
i. The purpose and character of the use
Artistic/Scientific Creation v. Legal Obligation"Schwegman’s lawyers needed to make internal copies of the Articles and review those copies to provide the USPTO, the EPO, and the JPO with information relevant to the patentability of the firm’s clients’ inventions. By contrast, the Publishers distribute the scientific articles in their journals to inform the scientific community of advancements in scientific research and new scientific discoveries that have been made, and to allow the scientific community to test the quality of the authors’ methods and conclusions. […] There is no evidence in the record that the authors wrote the Articles or the Publishers distributed the Articles for the purpose of ensuring that a government agency is provided with the information it needs to determine whether an invention is novel or non-obvious." American Inst. of Physics, at *23-24.
Use in Judicial Proceedings"Cases in which alleged infringers used copyrighted works in connection with judicial proceedings further support this conclusion. In both Healthcare Advocates Inc. v. Harding, Earley, Follmer & Frailey, 497 F. Supp. 2d 627 (E.D. Pa. 2007), and Bond v. Blum, 317 F.3d 385 (4th Cir. 2003), the alleged infringers made complete copies of the plaintiffs’ copyrighted material to ultimately submit as evidence in earlier judicial proceedings. These courts concluded that such use does not supersede the intrinsic purpose of the original because the alleged infringers’ evidentiary use was “indifferent to” the copyrightable means of expression." American Inst. of Physics, at *25.
ii. The effect on the market for the Articles"Schwegman used the Articles for a purpose that was different than, and not superseding of, the original purpose for which the Articles were created. And as a result, Schwegman’s copying falls outside any traditional, reasonable, or likely to be developed market. The fact that the Publishers made licenses to copy works from their journals available to law firms, and that some patent law firms paid for licenses, does not transform patent law firms into a traditional, reasonable, or likely to be developed market. […]" American Inst. of Physics, at *34.
iii. The nature of the copyrighted work“[…] this Court concludes that the nature of the Articles weighs slightly in favor of a finding of fair use. The Articles are factual or informational. They primarily communicate very technical information about the results of scientific research. Where a case involves highly technical scientific journal articles, such as this, the Second Circuit has noted that, '[t]hough scientists surely employ creativity and originality to develop ideas and obtain facts and thereafter to convey the ideas and facts in scholarly articles, it is primarily the ideas and facts themselves that are of value to other scientists in their research.' See Texaco, 60 F.3d at 925 n.11. Like the journal articles in Texaco, the Articles here are not primarily 'creative' works in which the mode of expression predominates over the conveyance of information. Thus, the Articles fall a bit farther from the core of intended copyright protection than do other, more 'creative' works.” American Inst. of Physics, at *37.
iv. The amount and substantiality of the portion used in relation to the work as a wholeStandard"The [fourth] fair use factor considers 'whether the amount and substantiality of the portion used in relation to the copyrighted work as a whole are reasonable in relation to the purpose of the copying.' Campbell, 510 U.S. at 586 (quotation omitted). Copying a work in its entirety does not preclude a finding of fair use, but can militate against such a finding. See Texaco, 60 F.3d at 913. The inquiry focuses on 'whether the extent of . . . copying is consistent with or more than necessary to further the purpose and character of the use.' [...]." American Inst. of Physics, at *37-38.
Analysis"There is also no genuine dispute that Schwegman’s copying was necessary to the new and different purpose for which Schwegman made the copies. The evidence permits no reasonable inference other than that Schwegman’s copying was essential to allow the law firm to evaluate whether the information in the Articles was prior art that needed to be disclosed in connection with patent applications. Thus, because Schwegman’s copying is consistent with the purpose and character of Schwegman’s new and different use of the Articles, this Court concludes that this factor favors a finding of fair use." American Inst. of Physics, at *38.
Other Factors: Bad Faith"There is no indication in the record that Schwegman simply stole the Articles the way a person might when he 'pirates' a song on the internet. Under these circumstances, it would be unreasonable for a jury to conclude that Schwegman acted in bad faith in obtaining a copy of the Articles. […] The record indicates that, in fact, Schwegman paid a fee to one of the Publishers, American Institute of Physics, to get a copy of the Ye Article. Schwegman obtained eleven of the other Articles from the USPTO’s patent- application database in Private PAIR when they inherited their clients’ files from other law firms. And Schwegman obtained other Articles from various sources, some undetermined, one from a university’s website, and one from a client." American Inst. of Physics, at *39.
Conclusion
"Having weighed all these factors, this Court concludes that Schwegman is entitled to the fair use defense as a matter of law. " American Inst. of Physics, at *40.
 
 
 
 
Editor CommentThis case also discussed the admissability of an expert witness on the issue of copyright law. Since said analysis is beyond the scope of this site, it has been purposely omitted. For further reading, click here.
 
 
 
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