So… when you go up against a professional gunfighter, you make sure your six-shooter isn’t actually soap darkened with boot-black. When you go up against a bar bouncer, you make sure you really are a UFC fighter on leave from the Navy SEALs as opposed to the kind of person who actually picks fights with bouncers. When you sue a law firm, you make sure a judge can read your filings without laughing. Right?
Do you actually go into court having told the public that a claim you’ve made is pretty much bullshit?
Anyway, my main questions are: Is this happening? Is this as dumb as it looks from the outside? Is there any way Wiley and the American Institute of Physics can win?
Academic journals (as a rule) would love for you to have copies of their articles, they just want to charge you an exorbitant amount per copy. So the goal isn’t to stop law firms from providing copies of articles to the USPTO (as you seem to be suggesting in the thread title), but to make some more money. I’m not sure how it’s any more ridiculous than any other copyright infringement case.
As I understand it, giving the USPTO information about prior art is required to get a patent. This would make it illegal to do that without paying rent to whoever happens to own the copyright on the sources of that information. Courts may be capricious, but only rarely are they malicious.
Pardon my ignorance, but what kind of money are we talking about? How much would it cost a law firm to purchase a couple of copies of a scientific journal article related to a patent application?
Submission of prior art documents (or at least their citations) to the USPTO is a legal requirement and is broadly considered to be fair use. I think that ground of action for the plaintiff has been knocked on the head.
Copies of technical journals or other potentially relevant art for in-house use by the law firms (item 15 of the complaint) is the only interesting point, but I have no doubt the courts will find in favor of the defendants in both cases under fair use limitations.
I think the plaintiffs are shooting themselves in the foot, but only in the same way that a patient dying of terminal cancer shoots himself in the foot to at least get a doctor to come over and euthanize them.
As above, the lawyers made photocopies (or equivalent) of copyrighted works. And they did this as part of their profit making operations. That is all. The fact that it was to do with a patent application has nothing to do with the breach of copyright, or the action being taken against them. They were required to pay for the copyrighted works, in the same way that any other user of the works are required to do so. They were clearly too cheap to go out and buy a legitimate copy, or more likely, a legal aide was too dopey to realise that they were breaching copyright. This isn’t exactly uncommon. If these were typical journal papers they are usually available form the web site of the publisher in PDF form for about $20 a paper. It may be that Wiley are going for $20 per printed copy in this case.
What I meant by my last paragraph was more or less that, yes, they could make some money if indeed the copies made (other than those already made under license by the law firm) were held to infringe copyright. They could make a lot of money in extra royalties from every single firm. So maybe they’re just interested in finally, once and for all, testing how far the courts will protect their copyright. If there’s no protection, then so be it, time to move on to another business (model). On the other hand, if there is protection, then maybe things aren’t as bad as they seem in the publishing business. Law firms have deep pockets.
Having said that these law firms will never just roll over for such a plaintiff. It would be an total embarrasment and as bad as flying a flag that says “hey, we’re all pussies here! Come and get us!”. They have dozens of lawyers on payroll and there is no way they’ll back down.
Could be a fun fight - like watching a lion eat a rabbit.
I kind of suspected this, but then I thought “Nah, if they just wanted to set a precedent they’d have found a way to go after a softer target”, because…
Ok, this makes perfect sense to me. I have a pretty good theory of why they brought suit.
It’s for the discovery process. What they want to do is look at the firms’ files of every patent submission – there could be thousands – and simply count up the number of xeroxed reports in them, double that number (since another copy will have gone to the patent office), and submit a bill to the firms for 20 bucks a pop. They can have interns do the work so it would be real cheap.
If they find 5,000 copies they have a potential $200,000 payoff, and it might be much larger than that.
IANALawyer, but I don’t think the “fair use” doctrine will be much of a defense. It normally involves portions or excerpts of a work for a purpose, not the work in its entirety.
IANAL, but this sounds a bit far-fetched. I don’t see how discovery concerning a single document could legally give them access to the files concerning all customers of the law firm. Judges are lawyers at heart, and surely the client confidentiality thing would prevent this.
Filings to the court must fall under some sort of immunity from copyright. (IIRC from a previous case, the US government is under no obligation to respect and pay for patent use…)
I seriously doubt any court is going to require that every copy of material filed with it is subject to copyright. Presumably such material is copied, transcribed, quoted, etc.
The filing in the OP quoted say “USPTO and possibly others…”
Unless they have real evidence of others, their case consists of “you made copies of our material to file with the government.” I’m surprised they would sue - it’s an open invite fopr the courts to say no way Jose, and then even money because of the threat is gone due to precedent.
We’ll see. I’m thinking they will claim to the court that this is a widespread practice, and ask the court to look at all the patent filings by the law firms in question. Another approach would be to look at all the patent office patent submission files from the law firms in question. (What I mean to say is that they might ask to look at the law firms’ files, or they might look to look at the patent office files, or both). Looking at the patent office files might avoid many issues related to attorney client privileged communications.
My legal learning is from Law & Order and a bunch of John Grisham books, so I could certainly be wrong. But my understanding, such as it is, is that plaintiffs are allowed a pretty wide latitude in the civil discovery process.
I would have thought that the law firms would be getting their articles from some sort of electronic aggregation service, like Lexis/Nexis for science stuff, and that the fees paid to that service would cover the firms’ internal use of articles. It seems that that’s not the case, though.
That’s an interesting point. Choosing the right target is always a key concern, as you say. And here I’m getting a bit out of my depth because I don’t know these particular law firms at all, but the fact I don’t know them leads me to believe (hell I could check out their websites but I can’t be bothered) that they are middle of the road firms. If so, then I think the plaintiffs picked the right targets. A win against these law firms will force every US law firm involved in patent practice to make the hard choice between paying up or fighting against a losing proposition.
If on the other hand the plaintiffs had chosen a lower level firm that was less likely to fight the issue all the way, then other, more prominent, firms might be more willing to stand their ground and re-fight the issue.
Still yet, if they had chosen a power-player like MoFo to go against, then they would face a withering demise of abject horror.
But outside of patent law firms, I can’t think of a better candidate for such a lawsuit. Who else habitually makes (unlicensed?) copies of scientific publications and charges their clients for doing so, every day, by the hundreds?
Makes sense. A malicious prior-artist could simply deny all rights to copy, or a party that has an interest against yours could buy the copyright on the article describing the prior art and deny you the ability to get a copy to the USPTO. That seems (IANAL) like a blatant case for “Fair Use” if there ever was one.
In my non-law-firm experience, it’s overwhelmingly upper management and ownership who insist on making copies instead of paying the copyright holder. Peons can certainly be ignorant, but if a peon says, “wait a minute, this says it’s copyrighted,” he or she is sternly overruled, ordered to steal the intellectual property anyway, and noted down as a troublemaker.