Toward a Copyright Unified Field Theory–Part 2: Why Sue Those Patent Lawyers?

Back in April, I wrote Part 1 after a trio of reports hit me like person-bites-dog stories. One told of copyright infringement lawsuits against patent lawyers for submitting scholarly publications to the PTO as prior art. One of the lawsuits is American Institute of Physics and John Wiley & Sons, Inc. v. Schwegman Lundberg & Woessner, P.A. and John Does Nos. 1-10, Civ. No. 12-528 (D.C. Minn.) filed on Leap Year Day. When word spread about these cases, the PTO submissions as copyright infringements claims got the headlines.

By July, the PTO moved to intervene and politely say what most commentators seemed to be saying. The motion was unopposed and promptly granted it. Though respectful, reasoned, and professional, the arguments against claiming that PTO submissions were copyright infringments struck me as the moral equivalent of the ESPN Monday Night Football segment “C’mon Man!”

After the intervention, plaintiffs said they were dropping the PTO submission claims. An amended complaint was filed October 3 that does just that and also makes no claims for “making one archival copy of that work transmitted to the PTO for Defendants’ internal file to document what has been transmitted.”

The heart of the amended complaint now alleged the plaintiffs “directly, or through their licensing agents” were ready to grant defendants with licenses but the defendants “have not acquired any of the licenses necessary…” I was relieved that an apparent anomaly disappeared.

Then I wondered how the patent lawyers were supposed to get a license. It is estimated there are more than 25,000 peer-reviewed journals with a million and a half articles per year from some 2,000 publishers.

A little more thinking reminded me of a blanket license source with lots of customers, including my law firm. The Copyright Clearance Center, is a not-for-profit that acts as an agent for rightsholders and represents a good chunk of the vast scholarly writing output. They issue annual licenses, pay per use licenses, and have online capabilities for granting instant permissions and collecting fees. The American Institute of Physics website says they partnered with CCC’s Rightslink® so perhaps the allegedly needed licenses were a couple of clicks away.

Thinking I could learn more about scholarly copyright enforcement actions at the CCC, I realized I was conflating this rights agent with entertainment associations that don’t grant licenses but have much to say about unauthorized uses of copyrighted works. When you check the website of the Recording Industry Association of America (RIAA), one of the tabs at the top reads PIRACY. At the CCC, I couldn’t find a mention of the subject.

I asked about their enforcement role and a CCC spokesperson said they are “supportive of our rightholders’ efforts to enforce their rights.  However, CCC is not a rightsholder and cannot enforce rights, so that’s up to the rightsholders themselves.”

Not burdened with knowing the facts in these lawsuits, I make no assumptions about what prompted them or whether licenses were needed. Before the amended complaint was filed, the defendants in Schwegman answered with various defenses including fair use and express or implied license, and perhaps those defenses will be asserted again.

These stories leave, however, a lingering question: has a new and very particular copyright enforcement campaign started in the world of technical and scientific publishing? If it has, don’t expect high-profile news conferences and moralistic calls for good behavior as we’ve seen in the music and movie download wars. And don’t expect it to stop with lawyers who file patent applications.

About Craig Pinkus

Craig Pinkus is a partner in the Intellectual Property Group. He also is a member of the Litigation and the Sports, Entertainment and Media Groups. He assists clients with a broad range of disputes and transactions involving all areas of intellectual property, entertainment, and other complex business arrangements. He has conducted trials and arbitrations throughout the United States and has argued appeals before the Seventh, Sixth and Federal Circuit Courts of Appeal, the Indiana appellate courts, and United States Supreme Court.
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