Newegg Sues Over Copied Legal Filing; Judge Rules That It's Not Fair Use

from the potentially-problematic dept

We've talked about online electronics retailer Newegg quite a few times here on Techdirt, usually in the context of its noble fight against patent trolls. I, personally, have a lot of respect for Newegg's Chief Legal Officer, Lee Cheng. So it surprised me a bit to see that Newegg is suing another lawyer for copyright infringement on one of its briefs. And, so far Newegg is winning, as the judge has ruled that using the brief is not fair use.

The details here do matter. The defendant, lawyer Ezra Sutton, had worked alongside Newegg in one of the many patent troll lawsuits. Sutton was representing another company sued in the same lawsuit as Newegg by a patent troll, Adjustacam. They had won the case against the troll, and both Newegg and the company Sutton represented, Sakar International, filed motions seeking attorneys' fees. Here's where things get iffy on Sutton's part, as described by Alison Frankel via the Reuters link above:
As Newegg general counsel Lee Cheng recounts the story, he told Sutton early on that Newegg would be willing to file a joint brief with Sakar if Sakar paid a share of the legal fees. Sutton said no thanks, but, as the filing deadline approached, he came back to Newegg. Cheng agreed to show Sutton a draft of the brief Newegg intended to submit to the Federal Circuit to help him write a complementary brief for Sakar.

Instead, the day before Newegg’s brief was due, Sutton filed a brief that was largely copied from Newegg’s draft. When Newegg realized what he’d done and protested the filing, Sutton withdrew the brief and subsequently filed a shorter version focused on Sakar’s argument.
So, first off, what a shitty thing to do by Sutton. I think that's pretty clear. At the very least it potentially would have made a mess for Newegg who would have looked bad filing a nearly identical brief to Sutton's after he did. But, then there's the question of what to do about it. Newegg decided to sue Sutton for copyright infringement -- and this is where I'm a lot less comfortable with Newegg's decision. I think it's the wrong move.

We've actually discussed the question of whether or not legal briefs should be subject to copyright before. A few years ago, some lawyers sued the big legal publishing companies, Westlaw and LexisNexis, for republishing briefs when they published compendiums of cases. That was ridiculous, and thankfully the court tossed out the lawsuit, finding that the republishing in this case was easily fair use.

Admittedly the facts in Newegg's case against Sutton are very different. This isn't republishing dockets for lawyers and scholars to access and review. The situation here seemed more like plagiarism, with Sutton more or less trying to take credit for Newegg's work (which had the knock on effect of potentially making Newegg look bad). And I get all of that, but it still troubles me that copyright was the tool here. It feels inappropriate. Copyright is supposed to be about the incentives to create. And no one needs a copyright incentive to create a legal brief -- something that Newegg's Cheng agreed about when I reached out to him about this case. He more or less admits that they're just using copyright here for a clearly non-copyright purpose. As he told me:
"We didn't file this case for profit or money. It's for principle and justice (corny but those values truly motivate me). However, we do believe that Sutton's action did cause us monetary harm and that we are entitled to remedies, but it clearly wasn't the focus of this suit. This suit was to send 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. Lawyers should be held to, and should hold themselves to, higher rather than lower standards."
I don't disagree with any of that -- but it's still troubling to me that copyright is the tool here, because that's a decidedly non-copyright thing that it's being used for. In fact, this seems to be one of those situations where the complaint is really about plagiarism rather than copyright, but where there's enough overlap that the legal mechanism of copyright is enabled to come into play. I fear that this will then be used by others in even more abusive ways -- though Cheng seems confident that the specific facts of this case would likely limit such a potential result.

I'm even bothered a bit by the fair use analysis here where the judge denied Sutton's fair use claims. I would think that the question of whether or not a legal brief should be covered by copyright would be a pretty big factor here. And the judge does agree that this point weighs somewhat in Sutton's favor (and points to that earlier case). The judge also finds, correctly, that the 4th factor -- the impact on the market -- weighs in favor of Sutton since Newegg doesn't have a market for selling its legal briefs. But while many courts often point to that 4th factor as a key one, this court basically just decides that it doesn't matter as much:
Upon consideration of all four factors, with more weight given to the first and third factors based on the facts, circumstances and particular nature of this case, Sutton did not meet his burden of establishing a prima facie case that his copying of Newegg’s draft brief was fair use.
So, yes, he's saying because of the specific facts in this case, but it does feel like -- as is all too often the case in fair use cases -- the judge has basically determined what result he wants, and then weighs the four factors accordingly. Admittedly, this might not be a huge deal. The facts are pretty specific, and plagiarizing is sleazy. But, I'm still troubled with the use of copyright to punish even sleazy behavior if it's not related to the reasons for copyright existing.

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  • icon
    wshuff (profile), 19 Sep 2016 @ 11:51am

    I'm working on a brief right now. Think I'll add a little copyright symbol at the end.

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

  • icon
    Ninja (profile), 19 Sep 2016 @ 11:54am

    Correct me if I'm wrong but isn't it standard practice to get the text from similar cases (sometimes verbatim)?

    But, silly me, even round corners can be locked up by Intellectual Property venues so why not?

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

    • identicon
      Anonymous Coward, 19 Sep 2016 @ 8:19pm

      Re:

      Would not have been a problem ... once Newegg had filed their paper, as the filing would be in the public domain. But...

      He didn't wait. And if he'd waited, he'd have looked foolish at best, filing verbatim after Newegg, just as it would have been vice versa.

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

  • identicon
    Anonymous Coward, 19 Sep 2016 @ 11:57am

    As a non lawyer...wouldn't this just be taken to the Bar for a reprimand or whatever they do.

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

  • icon
    TKnarr (profile), 19 Sep 2016 @ 12:04pm

    Market

    I think the judge gave the 4th factor little weight because in this case the "market" for the work was strictly the judge involved in the case. Nobody sells legal briefs. They may sell templates for formatting legal briefs and maybe handling the boilerplate text, but there isn't a market for complete specific briefs. That renders the 4th factor largely useless in this particular case. Then there's the purpose for which it was copied. It's one thing to copy Newegg's brief for the purpose of presenting Newegg's brief (eg. "The facts and arguments in our case are identical, and Newegg has argued them in their brief as eloquently as we could so we don't want to waste the court's time repeating what's already been said. We attach Newegg's brief in it's entirety for reference if necessary."), it's another to copy the text of their brief for the purpose of presenting it as your own brief. Especially when you copied it before it was filed and became part of the public record.

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

    • identicon
      cpt kangarooski, 19 Sep 2016 @ 1:30pm

      Re: Market

      Lack of a market doesn't invalidate factor four; it means it's in favor of the use. The canonical example is that there is no market for licensing works for parodic uses. As was recognized in Campbell:

      The market for potential derivative uses includes only those that creators of original works would in general develop or license others to develop. Yet the unlikelihood that creators of imaginative works will license critical reviews or lampoons of their own productions removes such uses from the very notion of a potential licensing market.


      Personally, as a practicing attorney, I don't have a problem with it either with regard to infringement or plagiarism. Yes, the latter is a minor violation of ethics, but unlike academia or the art world, authorial reputation doesn't really matter to lawyers. Our reputations ride on what results we achieve. If someone copied something I filed and did not violate a rule of civil procedure in doing so, it would not harm me nor help them beyond the convenience of not spending much time on it.

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

  • icon
    DB (profile), 19 Sep 2016 @ 12:04pm

    This is a curious case.

    My understanding is that legal documents, contracts and courts filings, are generally excluded from copyright protection. They are functional documents intended to be disseminated.

    This case is different than the usual 'you copied my stuff (that I released to the public)'. The draft was copied before it was filed. That makes it pretty much the same as copying fiction. Well, that might be the wrong way to put it. But an unsubmitted draft it was clearly wasn't a legal instrument at that point.

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

    • identicon
      Whoever, 19 Sep 2016 @ 1:52pm

      @DB

      My understanding is that legal documents, contracts and courts filings, are generally excluded from copyright protection. They are functional documents intended to be disseminated.

      I think that your understanding is wrong.

      I think (but may be wrong) that once filed with the court, documents become free of copyright. That wasn't the case here.

      I have read that many legal firms keep a library of their own contracts that they consider a valuable resource and not to be used by any other firm

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

  • identicon
    Anonymous Coward, 19 Sep 2016 @ 12:22pm

    Lawyers should be held to, and should hold themselves to, higher rather than lower standards.

    DAMN GOOD laugh right there.

    Any system of law that requires a lawyer is corrupt. The law stopped serving the people, quite some time ago!

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

    • identicon
      Anonymous Coward, 19 Sep 2016 @ 1:30pm

      Re:

      This is part of the reason our constitution has an amendment that everyone has a right to an attorney. The only problem of course is that in basically every state public defenders are extremely overworked and underfunded, but the same can't be said for the public prosecutors. Probably most states are in violation of the 6th amendment by not providing adequate defense.

      But if you were in the situation of your 6th amendment rights being violated because you didn't have a decent lawyer and you needed to sue the government for that offence, guess what you'd need?

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

  • icon
    tom (profile), 19 Sep 2016 @ 12:23pm

    2nd the refer to Bar for action. The lawyer in question was prepared to represent to his client and the court that the copied work was his own, 1 count plagiarism, and further, probably billing the client for the time it would have taken to create the brief from scratch, 1 count fraud.

    In addition, there is the likely damage to Newegg and their law firm when their original brief was filed second and appeared to be the copy.

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

  • identicon
    David, 19 Sep 2016 @ 12:30pm

    This is rather clear to me.

    Legal filings are not copyrightable, but at the time the copy occured, this was not yet a legal filing.

    However, copyright is a tool that requires _publication_ to work. This work was unpublished.

    So this was the misappropriation of trade secrets. Copyright really has jack shit to do with it.

    It's just that commercial copyright violation is a worse crime than rape in many Disney-govered legislations, so if you want to send a message, you try wrapping it in a copyright violation suit which (as DMCA processes show) permits the plaintiff to resort to perjury and automated takedown weapons and whatnot without fear of repercussion.

    If you lose a dick size contest, you sue for copyright violation claiming that your dick was first on the table. And it's gonna fly. Not the table. The ..., the suit. Definitely the suit.

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

    • identicon
      Anonymous Coward, 19 Sep 2016 @ 1:01pm

      Re: This is rather clear to me.

      "However, copyright is a tool that requires _publication_ to work. This work was unpublished."

      Huh? You can infringe on an unpublished work. In fact, that's considered worse. The fair use law says:

      "The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors."

      That language implies that the unpublished nature of a work makes it LESS likely that fair use would be found.

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

      • identicon
        David, 19 Sep 2016 @ 1:43pm

        Re: Re: This is rather clear to me.

        Uh, when copyright does not apply, obviously "fair use" (which _is_ a right of a legal copy holder) does not apply.

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

        • icon
          nasch (profile), 19 Sep 2016 @ 4:59pm

          Re: Re: Re: This is rather clear to me.

          Uh, when copyright does not apply, obviously "fair use" (which _is_ a right of a legal copy holder) does not apply.

          Right, so the fact that fair use could apply to unpublished works indicates that they are covered by copyright.

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

        • identicon
          Anonymous Coward, 20 Sep 2016 @ 6:59pm

          Re: Re: Re: This is rather clear to me.

          Ever since the passage into law of the Berne Convention Implementation Act 1988, copyright automatically attaches to works from the moment they're fixed in tangible form; i.e., publication is no longer a necessity in the US for copyright to apply.

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

    • icon
      Mike Masnick (profile), 20 Sep 2016 @ 6:26am

      Re: This is rather clear to me.

      However, copyright is a tool that requires _publication_ to work. This work was unpublished.


      This is not true and hasn't been true in decades. Copyright applies to a work as soon as it's been "fixed" in a tangible medium.

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

  • icon
    orbitalinsertion (profile), 19 Sep 2016 @ 12:31pm

    This is hereby dismissed as not a copyright case. Why are you bringing this as a copyright infringement? (Turns.) But you, gee dood don't be plagiarizing someone else's work product. And the manner in which you did it is reprehensible. Don't ever try that in my court.

    Next.

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

  • icon
    Dave Cortright (profile), 19 Sep 2016 @ 12:34pm

    Use the tools you are given

    Sure it's plagiarism, but from my brief Google search, that isn't against the law. Maybe there is a bar complaint that could have achieved the same effect, but barring that [pun intended[ using copyright as an interim solution seems ok. Let Congress fix it if they don't like it.

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

    • icon
      CharlesGrossman (profile), 19 Sep 2016 @ 1:02pm

      Re: Use the tools you are given

      Victims of plagiarism can sue based on legal theories other than copyright infringement. In a recent Connecticut plagiarism case, the lawsuit was based on conversion and civil theft. Coster v. Duquette, No. UWYCV075005297S, 2008 Conn. Super. LEXIS 3082 (Super. Ct. Dec. 3, 2008)

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

    • icon
      MrTroy (profile), 19 Sep 2016 @ 8:04pm

      Re: Use the tools you are given

      I feel the same. Copyright law is being used here because there is no plagiarism law.

      What are the other avenues? Civil theft, trade secret? They don't really seem like they fit because the draft was given to Sutton without any kind of non-disclosure agreement.

      It seems fine for now to ignore the legal route and just leave it to the court of public opinion; but at what point is it worse to set up a kangaroo court rather than deal with things in a proper legal arena in which all parties are meant to get due process?

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

  • identicon
    I.T. Guy, 19 Sep 2016 @ 12:44pm

    When you need to get a job done... a monkey wrench can be used as a hammer. The wielder cares not of the wrenches intentional purpose.

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

  • icon
    TechDescartes (profile), 19 Sep 2016 @ 1:36pm

    (Be)spoke too soon?

    There is a problem with the case, but it's not copyright. It's ownership. The copyright is not Newegg's; it's the lawyer's.

    Before the brief is filed, does it have a market value? Absolutely: whatever Newegg is willing to pay the lawyer for it. Clients pay thousands, if not tens of thousands, of dollars for briefs that fit their specific situation. Just ask Apple. Or Samsung. Or any client of Paul Clement. That's why another party taking the brief and filing it as their own, without paying for it, is disturbing.

    After the brief is filed, does it have a market value? No, because that brief never will fit another situation exactly. Fair use, so RECAP away. Use what you can in another case, throw away the rest.

    So, no, Newegg doesn't license its legal briefs after they are filed. But it does pay good money to get them filed in the first place. It's no less a market than that for any other bespoke good or service. And that's something TechDirt should get behind.

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

  • identicon
    Make Itso, 19 Sep 2016 @ 1:43pm

    Copyright inures from the moment of creation, right? Until it is filed as a brief, it retains that copyright. Only once it is filed does it become a public record and loses the copyright.

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

  • identicon
    Anonymous Coward, 19 Sep 2016 @ 2:02pm

    "but it does feel like -- as is all too often the case in fair use cases -- the judge has basically determined what result he wants, and then weighs the four factors accordingly."

    Yeah. When he says the second factor (the nature of the work) is only "slightly" in favor of the defendant, you know that he's aiming for a result in favor of the plaintiff. The nature of the work is a legal brief. If that factor wouldn't weigh heavily in favor of the defendant, nothing could.

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

  • icon
    Mason Wheeler (profile), 19 Sep 2016 @ 2:08pm

    Copyright is supposed to be about the incentives to create. And no one needs a copyright incentive to create a legal brief

    Apparently Ezra Sutton needs some incentive to create rather than plagiarize...

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

  • identicon
    TMC, 19 Sep 2016 @ 3:53pm

    This really seems more like a problem for Sutton's bar ethics committee.

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

  • identicon
    Chuck, 19 Sep 2016 @ 5:43pm

    Right problem, wrong avenue to remedy it

    The way this SHOULD'VE been handled was for Mr. Cheng to simply take Sutton to the relevant bar association ethics board. This is NOT a violation of ANY copyright law, but it is completely, totally unprofessional and a totally valid ethics complaint.

    And even a paralegal (me) knows that. This is something that every lawyer knows before they even apply for law school. It's that basic.

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

  • identicon
    Anonymous Coward, 19 Sep 2016 @ 7:49pm

    This is a non-story. Lawyers copy each other all the time. It's an accepted industry practice, since most filings are mostly boilerplate anyway. Nobody cares and they certainly don't sue over it.

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

    • icon
      nasch (profile), 19 Sep 2016 @ 8:12pm

      Re:

      This is a non-story. Lawyers copy each other all the time. It's an accepted industry practice, since most filings are mostly boilerplate anyway. Nobody cares and they certainly don't sue over it.

      So somebody suing over it sounds highly unusual. Perhaps even... newsworthy?

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

    • identicon
      Anonymous Coward, 19 Sep 2016 @ 9:02pm

      Re:

      Remember which lawyer complained that he should be allowed to copy and paste? John Steele!

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

  • icon
    G Thompson (profile), 19 Sep 2016 @ 11:41pm

    This is more akin to the common law tort of 'passing off', or in this instance 'Reverse passing off' as in John Roberts Powers School v Tessensohn [1995] FSR 947.

    Though admittedly this is a specifically not a normally used American tort AFAIK. (Edited after a bit of research during writing: It seems you do have something similar within the Lanham Act in the USA as per the Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003)

    Oh and before anyone says it, "passing off' is NOT specifically about trademarks etc. It's about services and/or goods that are (in this instance) being falsely misrepresented as one's own. The attorney who allegedly copied the brief near verbatim without citation would of been billing there client for this and is therefore committing something both unethical and potentially unlawful under 'passing off'.

    Not sure why NewEgg are going this specific copyright route though. (If Mr Cheng reads this and uses Dastar I promise I wont scream infringement ;) )

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

  • icon
    TRX (profile), 20 Sep 2016 @ 3:51am

    The court is public; anything filed in it should be in the public domain.

    For that matter, the law should be in the public domain; it was paid for from public funds. Instead, the District of Columbia and some states assert copyright over their legal codes.

    Much Federal regulation references private documents; I've had to purchase thousands of dollars of them from the SAE, ASME, and NFPA. While their copyrights are undeniable, making them part of the regulatory process incurs significant expense to the public.

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

  • identicon
    Anarres, 20 Sep 2016 @ 4:22pm

    I find it interesting how many commentators express their understanding that legal briefs would be out of copyright, at least upon filing.

    They're not. Though a fair use argument is likely easier to make, they're not public domain. But maybe they should be: become public domain upon publication in a docket.

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

  • identicon
    IANAL, 29 Sep 2016 @ 10:54am

    This should be protected as work product under attorney-client privilege while the action is active. That would stop the "race to the court house" to use the exact same language in the same case.

    But once the legal document has been submitted to the court and is in the public record, it should become public domain with no copyright.

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

  • identicon
    MartinDudley, 9 Oct 2017 @ 7:15pm

    Are Legal Briefs Copyrightable

    I just found this blog. Are legal briefs filed with court copyright-able ? I understand that once filed on PACER, they are not and Fair Use and Distribution is permitted. Can someone clarify and advise if there any any exceptions.

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


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