On September 13, 2016, the U.S. District Court for the Central District of California ruled that an intellectual property attorney had failed to show his copying of another’s legal brief was fair use.

Plaintiff Newegg, Inc. had been sued for patent infringement in the Eastern District of Texas, and Defendant Ezra Sutton represented Newegg’s codefendant Sakar International, Inc. in that litigation. Newegg and Sakar prevailed and subsequently moved for attorneys’ fees and costs. The district court denied the motion, and both parties separately appealed to the Federal Circuit. Prior to filing their opening appellate briefs, Newegg and Sutton agreed that Newegg would provide Sutton a draft of its brief only if Sutton agreed in writing that he would not copy any excerpts of Newegg’s draft and would use it only for reference and resource purposes. Then, one day before Newegg filed its brief, Sutton filed a brief on behalf of Sakar that was virtually identical to Newegg’s draft brief. Newegg sued Sutton for copyright infringement.

On Newegg’s motion for partial summary judgment, the issue before the court was whether Sutton’s copying constituted fair use of Newegg’s draft brief. The court analyzed the four statutory fair use factors: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the copyrighted work used; and (4) the degree of harm to the potential market.

The court found that the second and fourth factors slightly favored Sutton. Regarding the nature of the copyrighted use, the court noted that Sutton’s brief was a functional presentation of law and fact, and the Supreme Court has identified a “greater need” to disseminate factual works than fictional works. Further, Newegg could not identify any market for the licensing or sale of its legal briefs.

However, the court gave the most weight to the first and third factors, which strongly favored Newegg. Regarding the purpose and character of the use, Sutton’s and Newegg’s briefs had the same intrinsic purpose—to persuade the Federal Circuit. Further, Sutton copied most, if not all, of the substantive potions of the draft brief with no transformation—Sutton added no new expression, meaning, or message to the draft brief.

Accordingly, the court found Sutton had failed to meet his burden of establishing a prima facie case that his copying was fair use. The court also noted that Fed. R. App. P. 28(i), which permits a party to either join in or adopt by reference a party or a co-party’s brief, could not be used to justify the copying because Sutton went far beyond joining the brief or incorporating parts of it by reference.