Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...
By Anandashankar Mazumdar
The unauthorized copying and distribution of scientific articles in support of patent applications constitutes infringement of the copyright interests in those articles, according to two complaints filed Feb. 29 in the U.S. District Court for the Northern District of Illinois (John Wiley & Sons Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, N.D. Ill., No. 1:12-cv-01446, complaint filed 2/29/12) and the U.S. District Court for the District of Minnesota (American Institute of Physics v. Schwegman, Lundberg & Woessner P.A., D. Minn., No. 0:12-cv-00528-RHK-JJK, complaint filed 2/29/12).
These complaints come on the heels of a controversy regarding a bill that would bar the government from requiring public access to articles flowing from government-funded research as well as a putative class action against Westlaw and Lexis-Nexis for making the test of court filings available online.
Late in 2011, Rep. Darrell E. Issa (R-Calif.) introduced the Research Works Act (H.R. 3699), which would bar federal government agencies from requiring that peer-reviewed articles resulting from government-funded research be made available online at no cost.
In early February, Rep. Michael F. Doyle (R-Pa.) and Sen. John Cornyn III (R-Texas) introduced the Federal Research Public Access Act of 2012 (H.R. 4004, S. 2096), which would do just the opposite, requiring free access to copyrighted articles that were based on government-funded research.
An on Feb. 22, two lawyers filed a putative class action claim against the owners of the Westlaw and Lexis-Nexis online databases, arguing that making lawyer-authored pleadings available online infringed the lawyers' copyright interests.
In the latest actions, John Wiley & Sons Ltd., based in Hoboken, N.J., and the American Institute of Physics, based in College Park, Md., are publishers of what they term “many of the world's leading scientific, technology and medical journals.”
The publishers initiated claims against Schwegman, Lundberg & Woessner, Minneapolis, and McDonnell Boehnen Hulbert & Berghoff, Chicago, both law firms with patent practices.
According to the complaints, the law firms infringed the copyrights in the plaintiffs' works by “ma[king] and/or distribut[ing] to the United States Patent and Trademark Office …, and perhaps others, unauthorized copies of copyrighted articles from plaintiffs' journals.”
“This mere multiplication of copies for the for-profit business purposes of defendants is not privileged under the law,” according to the plaintiffs' claims of copyright infringement.
In January, the PTO's Office of the General Counsel issued a memorandum on the question of the use of “non-patent literature” in the patent examination process.
According to the memorandum, it is the PTO's position that:
(1) A significant portion of the PTO's own use of such articles is governed by the licenses it purchases from publishers of such material,
(2) To the extent that the PTO's use is not governed by such licenses, the use being made is protected as fair use under the Copyright Act of 1976, 17 U.S.C. §107, and
(3) The use of such articles by patent applicants and their counsel also constitutes fair use to the extent that such copies are being submitted to the PTO in compliance with the PTO's disclosure requirements.
However, the PTO memorandum did not take a position on the question of whether the fair use doctrine applied to other copying and distribution, such as copies for clients, for other attorneys, or for a law firm's files.
The plaintiffs seek permanent injunctions and damages for the unauthorized and uncompensated duplication and distribution of complete articles from their works.
Also designated in each action are 10 unnamed “Doe” defendants, representing other patent law firms.
Wiley and the American Institute of Physics were represented by Marianne C. Holzhall of McGarry & McGarry, Chicago, for the Illinois action and Michelle Kreidler Dove of Many & Associates, Minneapolis, for the Minnesota action.
Illinois complaint at http://pub.bna.com/ptcj/121446Feb29.pdf
Minnesota complaint at http://pub.bna.com/ptcj/12528Feb29.pdf
PTO memorandum at http://pub.bna.com/ptcj/PTOMemoJan19.pdf
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to email@example.com.
Put me on standing order
Notify me when new releases are available (no standing order will be created)