Court Says Copying Journal Articles To Show Prior Art In Patent Proceedings Is Fair Use

from the copyrights-and-patents-oh-my dept

Here's one that touches on both patents and copyrights. Last year, we wrote about how some academic journals were ridiculously claiming that law firms, who made copies of journal articles to submit to the US Patent and Trademark Office to show examples of prior art, were infringing on their copyrights. Yes, they were arguing that you couldn't use their journals as examples of prior art without paying them for the privilege. Thankfully, the USPTO stepped up and issued a memo explaining why they believed such usage was clearly protected as fair use. Still, the American Institute of Physics and Blackwell Publishing decided to sue a law firm, Winstead PC, and patent filers over the matter. The USPTO then stepped in as an "intervening defendant." Over the course of the case, the publishers finally admitted that articles submitted with patent filings themselves probably weren't infringing and dropped that claim. However, they still argued that other copies made "during the process of evaluating and selecting" material to be submitted to the USPTO were infringing (in other words, the clients and the lawyers sharing copies of the articles back and forth -- and later copies of the articles associated with patent files).

The USPTO stepped in and argued that this was obviously fair use, noting the benefits to the public, the fact that none of the copying was done for "commercially exploiting" the work, that the copies are a part of a much larger process and, of course, that it doesn't compete with the primary market for the works. Oh yeah, also: "courts routinely hold that copies made in connection with government proceedings is fair use."

The district court in the northern district of Texas ruled last week that the defendants are entitled to the fair use defense in a ruling from the bench. A full ruling explaining the reasoning will come out sometime soon, highlighting which of the USPTO's arguments were particularly convincing -- but, in the meantime, this is clearly good news for fair use, though it seems likely that the ruling will be appealed.

Reader Comments (rss)

(Flattened / Threaded)

  1. This comment has been flagged by the community. Click here to show it
    out_of_the_blue, Jun 4th, 2013 @ 2:07pm

    How is status quo "clearly good news for fair use"?

    You're just so desperate to claim a victory for your notions that slant this obviously necessary decision as if a big win.

    reply to this | link to this | view in thread ]

  2. identicon
    Anonymous Coward, Jun 4th, 2013 @ 2:10pm

    A good ruling. It would be ridiculous to have to pay royalties for a copy you make for your lawyer. If this use isn't fair then we may as well not have fair use.

    reply to this | link to this | view in thread ]

  3. This comment has been flagged by the community. Click here to show it
    Anonymous Coward, Jun 4th, 2013 @ 2:25pm

    Bawk, bawk, bawk, bawk. Chicken Mike.

    reply to this | link to this | view in thread ]

  4. icon
    That One Guy (profile), Jun 4th, 2013 @ 2:35pm

    Ah, you can always tell when an article really hits a nerve with the usual trolls, as they dive straight into personal attacks(well, more than usual anyway) and not a peep about the article itself.

    As for the article, a good ruling here, looks like it was another attempt at 'the only fair use is paid use', glad to see the attempt got shot down as it should be.

    reply to this | link to this | view in thread ]

  5. identicon
    Anonymous Coward, Jun 4th, 2013 @ 2:35pm

    of course the verdict will be appealed! since when has any section of the entertainment industry not appealed a verdict that went the opposite way to what they wanted? how many times have cases been appealed and appealed and appealed some more until some stupid fucking half wit of a judge, who couldn't find his arse if he was holding it in both hands, gives the verdict the industries want? how many times has this situation occurred, then as soon as the industries get their wanted verdict, fight tooth and nail to stop any further appeals? there is nothing that the entertainment industries wont do, dont do, to get their own way!!!

    reply to this | link to this | view in thread ]

  6. identicon
    Peter, Jun 4th, 2013 @ 3:02pm


    Sayith the Anonymous Coward (note emphasis on the 'coward'

    reply to this | link to this | view in thread ]

  7. icon
    Jessie (profile), Jun 4th, 2013 @ 3:18pm

    Re: How is status quo "clearly good news for fair use"?

    A big win, not really. However had this gone sideways somehow, this could have been a big loss. It is not wrong to celebrate a victory, even an expected victory, when the outcome could have been catastrophic.

    reply to this | link to this | view in thread ]

  8. identicon
    Anonymous Coward, Jun 4th, 2013 @ 5:34pm

    This article confirms that most IPR attorneys are parasitic, rent-seeking idiots.

    reply to this | link to this | view in thread ]

  9. identicon
    Anonymous Coward, Jun 4th, 2013 @ 6:41pm


    And this is the level of discourse you want encouraged.

    Why don't you tell that to Otis Wright if you're so confident, self-assured and moral?

    reply to this | link to this | view in thread ]

  10. icon
    Ophelia Millais (profile), Jun 4th, 2013 @ 8:18pm

    Re: How is status quo "clearly good news for fair use"?

    I think most of us can't help but regard a failure to erode the public interest as a win.

    The part I find interesting is that it's a case of using a complete work, not just an excerpt or two. It's usually pretty difficult to get a determination of fair use when more than a portion of a work is at issue. In this case, the portion didn't matter, due to the copies being made (a) without intent to compete (b) for their factual rather than expressive content.

    reply to this | link to this | view in thread ]

  11. identicon
    Anonymous Coward, Jun 4th, 2013 @ 9:22pm


    Seriously? You are an embarrassment.

    reply to this | link to this | view in thread ]

  12. icon
    David Lang (profile), Jun 4th, 2013 @ 9:37pm

    there are worse things than having to pay royalties

    Imagine being denied permission to make a copy at any price (the copyright owner is allowed to do this) and instead NOT be allowed to make a copy for your lawyer!

    reply to this | link to this | view in thread ]

  13. identicon
    Bawk Off, Jun 5th, 2013 @ 1:02am


    Says the Anonymous COWARD lol.

    reply to this | link to this | view in thread ]

  14. identicon
    Anonymous Coward, Jun 5th, 2013 @ 1:44am


    I would have thought that even IF it required a license to copy a journal article to show prior art, I would offer a free blanket license anyway. (I would put one sole condition- let me know. If somebody is trying to patent something I discovered, I'd like to know about it) After all, in this case it's arguable that the use actually defends the copyright holder. (if the prior art is by the same person as the patent application, it will not interfere with the granting of the patent; if the patent is sufficiently different from the prior art, the patent will still be upheld. All this does is prevent somebody finding a discovery somebody refuses to patent and patenting it themselves)

    reply to this | link to this | view in thread ]

  15. identicon
    Anonymous Coward, Jun 5th, 2013 @ 7:16am


    Remember these are journal articles - scientific and academic writing, definitely not part of the entertainment industry. There are different market forces at work here.

    These articles are written for free based on research that is often publicly funded (NIH, NSF, state universities).

    The actual writers don't receive any monetary benefit from publishing these articles, but the benefit of contributing to human knowledge and enhancing their reputation. The articles are peer-reviewed and edited by volunteer scientists. None of the creators in this case are being paid.

    Then the scientific publishers - like Blackwell - copyright these articles and put them behind paywalls.

    Copyright in this case is not an incentive to create. Rather, creating scientific journal articles has its own inherent incentives. These incentives (reputation, knowledge) are enhanced by MORE people reading for free, not fewer reading for pay. Scientists would behave very similarly if there was no copyright on these articles (assuming attribution).

    If copyright is not necessary for the writers themselves to create, perhaps publishers require the assurance of copyright to receive a return on their large expenditures on a low-margin product. Although the articles submitted for free (or the AUTHOR pays a fee) and are not a cost. And the editing is done by volunteers and is not a cost. And the printed paper and internet bandwidth is paid for by the paid subscriptions of the scientists who wrote or wish to read the articles.

    The publishers contributions are considerable, too. Infrastructure? Management? Executives? The brand name of the journal title must be worth something too.

    You can see now how it is unreasonable for a law firm or inventor to use these publicly-funded, freely-written, hopefully-widely-disseminating articles to benefit the public. They should have to pay because...of the artists? Without pay (per article) scientists wouldn't write? The scientists are being harmed by more people reading their work?

    While entertainment copyright might not always benefit the creator/artist as much as the label/studio/multinational-conglomerate, I understand how it could encourage the creation and support of art because of the money involved. Money is not an incentive in scientific publishing, so copyright in the academic sector not only does nothing to encourage the creation and practice of science, it harms the furthering of science by making information more difficult and expensive to access.

    If I was a scientist paying dues to the American Institute of Physics, I would be upset at the use of my fees to make science harder and more expensive.

    reply to this | link to this | view in thread ]

  16. identicon
    Anonymous Coward, Jun 5th, 2013 @ 11:32pm

    How long until we see a business method patent for academic journals that want to become both copyright and patent trolls... (1) get some patents approved from old material in the journal archives, (2) create a mysterious shell company, (3) sue someone for patent infringement using the shell company; (4) then, sue for copyright infringement when your victim tries to use the journal articles to defend against the patent claim.

    And... (5) If another academic journal tries the same thing, sue them for infringing the business method patent...

    reply to this | link to this | view in thread ]

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