IP Throwdown: Patent Lawyers Sued For... Copyright Infringement

from the fight-fight-fight dept

Thu, Mar 1st 2012 12:28pm — Mike Masnick

Last month, we wrote about how the USPTO had stepped in to a brewing fight between copyright lawyers and patent lawyers, saying that it believed that submitting journal articles as part of the patenting process was fair use. Apparently, the copyright lawyers working for the scientific journals disagreed... and the fight is on: the journals have sued a bunch of patent lawyers for making use of articles from the journals in preparing their patent applications. The journals, in their desperate desire to squeeze more cash out of everything, were demanding that patent lawyers get an additional license if they wanted to submit copies of journal articles along with patent applications.

While it's rare that you'll find me agreeing with the patent bar on very much, on this one, I'm on their side. The lawsuit, lead by publisher John Wiley, is kind of crazy. We're not talking about people who are getting copies of the journal for free. These are generally people who have a legitimate subscription to the journals, and are submitting copies of the information as part of the patent process -- as they're required to do by law. This is just yet another attempt by the publishers to get paid for every single possible use, even for those who already have legitimate access. And, of course, these journals don't have the best reputation these days, with their attempts to block open access requirements. While there may be some appeal in making it more difficult to get a patent (something where I believe the bar needs to be much, much, much higher), I don't think this is as reasonable way to do so.

In nearly every way, it seems like submitting such a journal article as part of a patent application process should be seen as fair use. It really does fit the kind of key "spirit" of the fair use rule.

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Filed Under: copyright, fair use, lawsuit, patent applications, patents
Companies: john wiley

34 Comments

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Nathan F (profile), 1 Mar 2012 @ 12:40pm

I would find it really amusing if the articles in question were publicly funded works and should have been in the public domain anyway.
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Hulser (profile), 1 Mar 2012 @ 12:41pm

IP Maximalists v. IP Maximalists
"Wait, someone is suing us for infringment?! That's our job!" I've thought for a while now that we'll only get true IP reform when it starts affecting the big companies. The collective pushback by the people on PIPA/SOPA/ACTA is a great start, but the scales won't really tip in the right direction until a truce is called between the big players.
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:Lobo Santo (profile), 1 Mar 2012 @ 12:48pm

Re: IP Maximalists v. IP Maximalists
Unless the big players just settle out of court and decide to team-up on screwing over everybody else.
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Anonymous Coward, 1 Mar 2012 @ 12:49pm

"This is just yet another attempt by the publishers to get paid for every single possible use, even for those who already have legitimate access."

Sounds like a good idea to me, as long as we apply the same standard to everyday objects to!

Imagine the money you could make if you invested in say a company manufactures toilets. Under this standard not only could you charge like $300 bucks when people buy the toilet, you could also charge them $5 every time someone other then the buyer uses your toilet! After all, they never paid you for your toilet, and the toilet is your intellectual property, so why should they get to use it for free!

Imagine how much money you could make in a day if you get your toilets installed at a public rest stop!
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Nathan F (profile), 1 Mar 2012 @ 12:52pm

Re:
Charge em extra if they are drunk and throwing up in said toilet..
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:Lobo Santo (profile), 1 Mar 2012 @ 12:57pm

Re: In the crapper!
Wouldn't all of that "down-the-toilet" money (apt analogy, btw) go to the descendants of John Crapper, inventor of the toilet?

Seeing as you're only the manufacturer, you'd only be entitled to a fraction of the IP Maximalist fundage...
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Watchit (profile), 1 Mar 2012 @ 12:59pm

Scientific Journal's purpose?
What purpose do scientific journals even have? To me it always just sounded like a bunch of articles on new inventions and sciencey stuff for rich researcher people to peruse on their toilets. What I'm asking is why do Scientific Journals exist in the first place? what are they?
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Watchit (profile), 1 Mar 2012 @ 1:05pm

Re: Re: In the crapper!
I suspect first you will have to pay to lease the toilet, pay royalties every time you or someone else uses it, also you will need a license before others can use your toilet, and those people who use your toilet will also have to pay a fee every time they use it as well. And don't forget that you don't actually own the toilet and you must renew your lease every month, with tiered flush plans, and finally the rights owner for the toilet may at any time cancel your lease and repossess your toilet.
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Anonymous Coward, 1 Mar 2012 @ 1:11pm

Re: Re: IP Maximalists v. IP Maximalists
Need a SAD button for this comment.
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Anonymous Coward, 1 Mar 2012 @ 1:20pm

Re: Scientific Journal's purpose?
They were once the best way to keep up on the most recent work done by researchers in various school labs across the country. They show what work is being done by new PhD and MS students, different takes on various approaches to problems, etc... At least in the engineering world. Now, with the internet, they could be easily done away with if the overall environment wasn't geared toward propping up the publishers.
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dwg, 1 Mar 2012 @ 1:23pm

Best. Thing. Ever.
Kinda like Crips and Bloods. Only here I have no sympathy at all.
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Anonymous Coward, 1 Mar 2012 @ 1:24pm

Re: Re: Scientific Journal's purpose?
They also were a way to get some prestige and pull in more funding. In the lab I worked in the company funding a project froze all research funds when the economy tanked, and it was in the contract that if anything like that happened and funding was not reinstated within 3 months that the NDAs signed were null and void, and all the research done (this was some cutting edge communication network research) could be published. It helped the lab gain some prestige and recoup some of the losses associated with not receiving the funding they were promised, etc...

So yeah, sciencey stuff for rich researchers to masturbate to while they show it to others to get more funding for other sciencey stuff. Which is actually important.
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art guerrilla (profile), 1 Mar 2012 @ 3:27pm

my 80+ year old m-in-law is turning pirate in retaliation ! ! !
she is MIGHTY pissed off that she has bought a handful of ebooks for her nook that she SPECIFICALLY bought wanting to share with my wife (who got a color nook for mid-winter solstice) and myself...
she's not a gamer, not much into downloading movies, etc, but is a big reader, and this chickenshit DRM crap has just reared it's ugly head in her world, and it is making her angrier than a wet hen !
direct quote: "I PAID FOR these ebooks, *WHY* can't I share MY OWN ebooks?!?!"
IT DOES NOT MAKE SENSE TO ANYONE -except a miniscule percentage of Big Content extortion artists (they only thing they know how to 'create'), that this sad state of affairs is forced upon us...
Thanks MAFIAA, you've turned a mainstream, non-radical octogenarian -TOTALLY wanting CREATORS to get their due- into a raging pirate sympathizer !!!
The MAFIAA: pissing off the whole world, one customer at a time.
stupid shits: THEY and their extortion business DESERVE to fail...
...and they are! ! !
art guerrilla
aka ann archy
art guerrilla at windstream dot net
eof
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Anonymous Coward, 1 Mar 2012 @ 3:32pm

John Wiley and Sons are a disgrace! Just like Elsevier, all their products should be boycotted throughout the world..

Double dipping on Journals is just the tip of the iceberg for them.. The prices they charge for access are outrageous on top of the fact most of those journals going back decades were all publicly funded..

Higher education textbooks (and lower/school textbooks in Australia) are pimped out and made required reading in our seats of learning and yes, they cost a fortune too.. Funny thing, their biggest problem in competition is the second hand market. As they can't get around the first sale doctrine, their best idea is repackaging those same textbooks as ring-binder packs thinking that they won't be resold after that..

And as for the For Dummies books. Well they're just an aggregation of crap scraped from a myriad of sources and republished.. Expensive crap at that..

One of the most litigious publishers out there.. I honestly don't know why people still support them...
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Anonymous Coward, 1 Mar 2012 @ 4:27pm

Two lawyers enter...
...one lawyer leaves.

(soundtrack: timpani roll, followed by thunderclap)
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Alan Bleiweiss (profile), 1 Mar 2012 @ 5:32pm

Some spitballs stick so keep trying
Another great example of lawyers and those who pay them doing anything they think they can get away with (hey - if even just one judge agrees with them, the precedent is set)... < sigh >
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Anonymous Coward, 1 Mar 2012 @ 5:40pm

Mike,

I just don't understand you. Why do you only mention the copies that were submitted with the patent applications, when the lawsuit CLEARLY includes other copies that were made as well. It's this sort of cherry-picking of facts on your part, while completely ignoring other relevant facts, that makes you impossible to take seriously.

Look at the complaint: "18. Defendants have infringed certain of the Plaintiffs' Copyrights, including, but not limited to, the registered copyrights in the articles listed on Schedule A by making unauthorized copies of them for internal use, and for distribution outside of Schwegman."

So right there they are talking about copies that are made for internal use and for distribution elsewhere. Even if the copies used in connection with filing a patent application are fair use, the copies they are making for researching and prosecuting the applications are not.

In typical Masnickian style, you leave out the inconvenient facts in some lame attempt to slam copyright law. It just gets old, Mike. WTF?

In fact, if you read the whole complaint, they are actually focusing on the copies other than the ones submitted as part of the patent application. To wit, plaintiffs are complaining of two types of copies that defendants made: "(a) additional copies of the copyrighted works that defendants included or cited in their patent applications to the PTO . . . and (b) copies of plaintiffs' copyrighted works that defendants considered in connection with those applications, but did not ultimately cite or provide to the PTO."

Of course, you completely twist all of this, leaving out the parts that don't jive with your IP bashing, to make some stupid point that is barely even supported by the complaint.

I don't get it, Mike. Why are you so incredibly dishonest when it comes to copyright? Part of me is realizing that you can't even help it, you're so completely blinded by your own bias.
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shawnhcorey (profile), 1 Mar 2012 @ 6:15pm

Re: Re: Re: In the crapper!
Don't forget the sewage cap. You can only flush a limit amount of crap every month. if you go over, you have to pay more, a lot more.
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Anonymous Coward, 1 Mar 2012 @ 6:35pm

Re:
"a) additional copies of the copyrighted works that defendants included or cited in their patent applications to the PTO"

It clearly includes the copies that were included in the patent applications. Sure, the lawsuit may include other things as well, but so what? This article wants to focus on the more ridiculous parts of the lawsuit. If I sue my landlord because he charged me more money than was called for in my lease, and I include in the lawsuit that he needs to also allow me to paint the entire interior of the building black because my religion forbids colored walls, what part do you think the media would focus on if they decided to cover it?
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That Anonymous Coward (profile), 1 Mar 2012 @ 7:01pm

Re:
Wiley must be going under. They filed and continue to file mass copyright infringement cases just like the porn studios.
They are fishing for IP addresses, and then sending demand letters.

Welcome to the result of "IP is our most important asset".
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Anonymous Coward, 1 Mar 2012 @ 7:12pm

Re: Re:
Oh, please. It's just mindless copyright bashing. They're suing over all sorts of copies, one sort of which are the copies submitted to the USPTO. Mike, of course, doesn't acknowledge all of the other copies because he can't come with any FUD to try and justify them. He needs to call this lawsuit "crazy," so he conveniently leaves out all the parts that look quite meritorious.

Instead, he focuses solely on the copies submitted with the application. And even there, Mike just makes shit up. For example, he says: "We're not talking about people who are getting copies of the journal for free. These are generally people who have a legitimate subscription to the journals, and are submitting copies of the information as part of the patent process -- as they're required to do by law."

Mike has absolutely no basis for claiming that the defendants had a paid subscription to the journals in question. Mike is just making it up. Who needs facts, right? And his argument that they're "required" to submit the copies is a bit silly. First of all, no one has to file a patent application. Second of all, how does the fact that copies are submitted with applications have anything to do with whether the applicant licenses the copy? The plaintiffs in the complaint claim that all of the works were available to be licensed. The defendants could have licensed the copies even though they were "required" to file them.

Mike goes on: "This is just yet another attempt by the publishers to get paid for every single possible use, even for those who already have legitimate access." Um, no, it's another attempt by Mike to make a copyright plaintiff look dumb, which usually backfires and just makes him look dumb. And, really, they "already have legitimate access"? Is Mike referring to his made up fact that the defendants have a subscription to the journals in question. Amazing bullshit, based on nothing. And even if they did have a subscription, which there's no reason to believe they do, so what? Does that subscription allow them to make all sorts of copies, including ones that they charge their clients for, without paying the plaintiffs? Doubtful.

The ending is equally weak: "In nearly every way, it seems like submitting such a journal article as part of a patent application process should be seen as fair use. It really does fit the kind of key "spirit" of the fair use rule." The court may find that the copies submitted with the application are fair use, but that doesn't mean that the plaintiffs don't have a meritorious claim in arguing that it's not--they do. As far as I know, no court has ever ruled on such use. I do know that the court's analysis won't rely on an appeal to the "spirit of the fair use rule." LOL!

More mindless, dishonest copyright FUD. That's all I see.
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Anonymous Coward, 1 Mar 2012 @ 7:29pm

Re: Re:
If I sue my landlord because he charged me more money than was called for in my lease, and I include in the lawsuit that he needs to also allow me to paint the entire interior of the building black because my religion forbids colored walls, what part do you think the media would focus on if they decided to cover it?

I don't think that's an apt analogy. It's more like if you sued your landlord for charging you too much for your lease. Let's say it happened ten times. 9 times are pretty cut and dried--your landlord is totally ripping you off. The 10th time isn't so clear. That month, your landlord did some work at the property that he arguably has a right to be reimbursed for, but no one can say for sure because no court has ever said either way.

Here's how Mike would describe that scenario: "Tenant files CRAZY lawsuit against landlord!" Mike would write all about the one charge the landlord sought that was questionable, but he wouldn't even bother to mention the other 9 charges where the landlord was ripping off the tenant. That's the sort of lopsided nonsense and blinded bias that Mike, unfortunately, brings to most discussions about copyright suits. It's ridiculous.
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Anonymous Coward, 1 Mar 2012 @ 8:57pm

Re: Re:
The lawsuit raises some very interesting questions that are ones of first impression. It is also quite legitimate, so I am not inclined to dismiss it out of hand.

Even so, I know very few well versed in copyright law who believe that fair use will not carry the day, at least insofar as the copies that are sent to the USPTO for consideration by the Patent Examiner during prosecution.

Unfortunately, fair use involving questions of fact, dismissal of the suit at this early stage is extremely unlikely to take place. Summary judgement is likely the time.

What intrigues me much more is why an international corporation located in Hoboken would use a very small Manhattan law firm to file a lawsuit in Minneapolis? Most corporations of this type use the terribly overpriced services of major Manhattan firms, and there are literally dozens of firms that practice patent law located in Manhattan. This is rather odd and far, far away from the norm. The only thing that comes to mind is that there are "people issues" here that underlie its filing. Someone is upset with someone else, but there are no facts presented that provide a clue why this is so.
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BeeAitch (profile), 1 Mar 2012 @ 10:29pm

Re: my 80+ year old m-in-law is turning pirate in retaliation ! ! !
But...but...PIRACY!!!!! ;)
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Prisoner 201, 2 Mar 2012 @ 12:10am

Re: Re: Re:
More mindless, dishonest copyright FUD. That's all I see.

Things get easier if you open your eyes.
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abc gum, 2 Mar 2012 @ 5:07am

Re:
I believe the SCOTUS ruled on that topic some time ago, but it may have been limited to public restrooms.
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abc gum, 2 Mar 2012 @ 5:09am

Re: Re: Re:
Is this bad analogy Friday? Awesome.
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Niall (profile), 2 Mar 2012 @ 7:48am

Re: Re: Re: Re: In the crapper!
Expanding on this, only you (and maybe your immediate family) can use this toilet, and only for certain uses (see Plans 1 and 2). Anyone else using it is a 'public performance' and any uses for which it is not expressly designed and licensed for are also expressly forbidden wqithout additional licensing (i.e. disposal of oral and nasal secretions). You may not customise your toilet without the express written permission of the designer/manufacturer's heirs in perpetuity, and you may only use a company-authorised repair service in case of fixing or unblocking. All uses may be subject to government monitoring to make sure your toilet is not being used to 'transport' illegal substances, or any other monitoring as the licenser sees fit, including cameras to ensure correct usage of your toilet.

"Have a nice day!"
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Killer_Tofu (profile), 2 Mar 2012 @ 8:00am

Prior Art?
How, if part of their support for their patent application is printouts from academic journals, do their patent apps not get denied for prior art?

They are very clearly showing that somebody else has already done the work. By the time it hits the journals its already (supposedly) peer reviewed so plenty of people know about it. And in a lot of those cases as well wouldn't the researchers already have patents (since they seem forced to get them these days)?

Our patent office is a waste of space and money. Ugh.
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Anonymous Coward, 2 Mar 2012 @ 9:23am

Re: Prior Art?
Put simply, the prior art the applicant submits demonstrates the state of the art. The invention he seeks to patent advances the art by introducing something new, useful, and nonobvious as compared to what already exists.

More akin to what you're referring to, someone opposing a patent application (or someone trying to have an issued patent declared invalid) would submit prior art that actually shows the applicant's invention isn't new or nonobvious.
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Anonymous Coward, 2 Mar 2012 @ 9:31am

Re: Re: Re:
The argument for fair use for the copies submitted to the USPTO as part of the application is a good one, but so is the counterargument that they should still license the copies. Just because they're "required" to submit prior art doesn't necessarily mean that they can do so while violating someone else's rights, especially if that other party is willing to license the copies. A more interesting scenario would be if the owner refused to issue a license in the first place.

People have lots of legal duties, but that doesn't excuse them from having to not violate other people's rights while performing those duties. Either way, all of the other copies being sued upon (the extent of which we won't fully grasp until there's been discovery) don't have nearly as good of an argument for fair use. Those are the copies that will give defendants the biggest fight, IMO.

The thing about a Manhattan firm filing suit in Minneapolis is interesting. I'm sure you're right that there's more to that story.
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Daniel Hawkins (profile), 2 Mar 2012 @ 9:00pm

Re: Re: Re:
Everything about your response represents precisely the delusional thinking that the article is criticizing.

You completely ignore the comment you replied to, which contains a good point that renders your first paragraph meaningless.

You say Mike's claim that the defendants had a paid subscription is not based on evidence, yet you could not possibly know that, and you offer no evidence to the contrary. In fact, some pretty strong evidence is the fact that these crazy plaintiffs didn't attempt to sue the defendants for gaining access to the journals illegally. If they didn't have legitimate access, wouldn't that be under examination in this suit as well?

You say people don't have to file for patents, implying that they should just give up rather than risking the potential of pissing off copyright lawyers. You suggest that they license the copies they send in with their patent applications, when the ridiculousness of that idea is the central theme of this article.

Your contempt for the spirit of the law reveals your interest in squeezing the legal system for all it's worth, rather than simply doing what's right or what makes sense.

It also appears you have no idea what FUD means, as the article does not attempt to inspire fear, uncertainty, or doubt. Please bring evidence the next time you make ridiculous claims.
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dwg, 6 Mar 2012 @ 11:55am

Re: Re: Re: Re:
What if they'd submitted the actual copies of the journals that they'd purchased? Remember that the patent applicants had legitimately purchased/subscribed to the journals. How about they ask that the original copies submitted be destroyed and then send in purchased copies, legal-beyond-legal under the first-sale doctrine?

Or does this strike you as silly beyond belief?
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dwg, 6 Mar 2012 @ 11:56am

Re: Prior Art?
No offense, but you don't really understand the patent examination process, do you?
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