Scholarly Journals, Copyrights, and Photocopies: Infringement? - Fordham Intellectual Property, Media & Entertainment Law Journal
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Scholarly Journals, Copyrights, and Photocopies: Infringement?

Scholarly Journals, Copyrights, and Photocopies: Infringement?

Three cases are currently pending in the U.S. District Courts that will have a significant impact on the patent industry and the practice of patent law: Am. Inst. of Physics v. Schwegman, Lundbert & Wessner, P.A.;  John Wiley & Sons Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP; and Am. Inst. of Physics v. Winstead PC.  The American Institute of Physics and John Wiley & Sons, Inc. have filed suit against three law firms for claims of copyright infringement.  The complaints allege that the firms copied articles as part of patent applications to the United States Patent Office.  Neither law firm had purchased a license that would have authorized them to do so.  Submitting scholarly articles is a required part of the patent application process.  This is a prevalent way to disclose prior arts leading up to the creation of the patent.

The U.S. Patent Office has released statement saying that they believe the submission of scholarly work in connection with a patent applications constitutes fair use under 17 U.S.C. 107.   The full statement can be found here.  However, the Office made so such claim into any other use an office might make of this unlicensed material—leaving open the issue of what happens when additional copies of the works are made.  The Patent Officer believes that the application materials constitute fair use under the four-factor analysis set forth in the statutory scheme. These factors are non-exclusive in accordance with the Supreme Court’s decision in Campell v. Acuff Rose Music, 510 U.S. 669 (1994).  The four factors are: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the work used in relation to the copyrighted work as a whole, and; (4) The effect of the use upon the potential market for the copyrighted work.

The Patent Office’s determination for fair use was very narrow in scope, finding only that the one time use in connection with the patent application itself was fair use.  Under the first factor, the governmental purpose of the use is not seen as infringement because it is looking at the materials as if they were a factual record, as opposed to co-opting expressive content. Most importantly for the Patent Office, it believes the purpose to be fair use because it is a non-commercial purpose.  Under the second factor, they believe that since the works are being looked at in an archival manner, as a record of fact, no infringement is taking place.  For the third factor, the use of the copyrighted material is used only insofar as much of it is relevant, which is sometimes the piece as a whole.  For the fourth factor the Patent Office believes that it will not have a significant impact on licensing revenue because the materials are being used only for a narrow, and highly specific purpose.

Even if we are to assume that the analysis of the U.S. Patent Office is correct, there are still broader implications at stake.  What happens to all of the copies of an article that have been retained by the firm after, during and before a patent application is submitted?  Is it not the case that the unlicensed copying and distribution of entire scientific articles by a for-profit entity performing scientific research, where an established market for licensed copies exists, infringes on copyright? While the U.S. Patent Office’s opinion is limited to a specific context, how meaningful is that limit in the age of copy machines and electronic databases?  This is precisely what is the issue at stake in the lawsuits bought against the three law firms.  According to an article on, the impact of this ruling could be broader than just the patent bar.  The case speaks to any use of journal articles by law firms in all areas of practice.

So far, the Plaintiffs have survived a motion to dismiss in Schwegman and have amended their complaint, dropping some claims against the firms.  Motions are pending in Schwegman and Winstead, and none of the courts have set trial dates.  Whatever the outcome, it is sure to have a significant impact on the way law firms use copyrighted scholarly materials in the future.  Once again, the legal world is faced with how technological innovations and advancements challenge pre-established legal norms.  Cases like these might prove to be the first steps towards establishing new standards in the digital world.

Daniel Altabef