Sept. 29, 2016
By Karen Rubin and Tom Zych
Under deadline pressure to produce a brief? You’ve found one online in a public database that fits your case to a T? If you’ve always thought that you can make free use of another lawyer’s brief, think again. You just might get sued for copyright infringement—successfully.
In Newegg Inc. v. Ezra Sutton, P.A.
, a California U.S. district court made that point earlier this month, when it granted partial summary judgment to plaintiff Newegg on its infringement claim—but Newegg has come in for some criticism for pushing the case.
Here’s the background: In an IP case before the Federal Circuit Court of Appeals, on-line retailer Newegg was one of several co-appellants in a cross-appeal on the issue of attorneys’ fees. Newegg’s lawyers had taken the precaution of copyrighting the draft brief they planned to file. Newegg offered to prepare a joint brief if its co-cross-appellant, Sakar International, would share part of the cost. Instead, lawyers for Sakar filed a brief that copied substantial portions of Newegg’s draft brief without permission. Newegg sued Sakar’s lawyers and their law firm for copyright infringement. The district court rejected the lawyers’ fair-use defense, and held that they were infringers.
First, can you copyright a brief? If you don’t practice in the IP area, you might not know that you can copyright an original work by filing a simple form
with the United States Copyright Office. That’s apparently what Newegg's lawyers for had done, before providing the draft to Sakar.
Further, the protection of federal copyright law has been held to extend over legal briefs. In White v. West Publishing Corp.
, the district court for the Southern District of New York considered whether West and LEXIS were infringing when they put briefs in their database without permission. In 2014, the court assumed without separate analysis that legal briefs were copyrightable, but held that the mega-publishers had a right of fair use—partly because the lawyers had filed the briefs, making them publically available, before
registering them with the copyright office.
In the most recent case, the lawyers had apparently protected the work and then shared it. That was an implicit factor for the California district court in finding infringement.
No fair use
Even if a work is copyrighted, a party’s “fair use” of the material is a complete affirmative defense to a claim of infringement. There is a four-factor test, which is to be applied flexibly on a case-by-case basis, with the factors being weighed against each other:
- Is the infringing work “transformative,” in altering the copyrighted work to create “new expression, meaning or message”? Or has the work simply been taken and used for the same “intrinsic purpose” as originally?
- Is the infringing work a presentation of facts? Priority is given to expanding the dissemination of factual works, so they receive more fair-use protection.
- How much of the copyrighted work was copied? If all of it, the copier has probably not made anything new or “transformative.”
- Is there a market for the copyrighted work that might be harmed by an infringing work? If not, then fair use is more likely to apply.
The balance of the factors weighed in favor of Newegg, and thus Sakar’s lawyers failed to meet their burden of establishing fair use, said the court.
Behind the scenes
Over at Techdirt
, they do a nice job of deconstructing this opinion—and the bottom line is that you probably shouldn’t go out and register all your briefs with the copyright office.
Blogger Mike Masnic explains
that although they originally discussed sharing the cost of producing a joint brief, Sakar’s lawyers and Newegg decided not to go that route. Newegg sent over a draft of its brief so that Sakar’s lawyers could make their brief “complementary.” Instead, the day before Newegg’s brief was due, Sakar’s lawyers filed on behalf of their client, using large portions of the Newegg draft. When Newegg complained, Sakar’s lawyers withdrew the brief and substituted a shorter one.
Newegg’s infringement suit, said the company’s GC, in an interview with Masnic, was not primarily about damages, but about “send[ing] a message, strictly directed at unethical and lazy lawyers, to do what they learned in the first year of law school in terms of properly crediting others’ work, and to do what anyone with common decency would do.”
Maybe not what the copyright statute is meant for? Masnic thinks not. We agree.
Content courtesy of The Law for Lawyers Today: Ethics, Professional Responsibility and More blog. Ohio State Bar Association member Karen Rubin is an attorney for Thompson Hine.
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