In a copyright infringement case of significant importance, the first battle has been won by  publishers American Institute of Physics and John Wiley & Sons, Inc.  In February, the American Institute of Physics and John Wiley & Sons, Inc. filed suit against two law firms, including Minnesota patent prosecution firm Schwegman Lundberg & Woessner,  alleging copyright infringement. The publishers claim that the law firms infringed their copyrights by improperly copying journal articles for submission to the United States Patent and Trademark Office (USPTO) and for their own internal use.

The patent application process requires applicants to disclose prior art through information disclosure statements, inevitably leading to submission of journal articles.  Accordingly, the case has significant relevance to the patent bar.  Earlier this year the USPTO’s General Counsel released a memo stating the USPTO’s position that submission of copies of copyrighted materials to the USPTO as part of the patent application process is fair use under 17 U.S.C. 107.  Requiring a license from each journal would substantially hinder the patent process.  Although the office took no position on whether additional copies (i.e. for the law firm’s future reference) qualify as fair use. Plaintiff’s attorney Bill Dunnegan was quoted saying “The crux of what our case deals with is the internal copying by the law firms after they have one copy in their hand.”

The case has potential impact on the legal community as a whole, not just the patent bar.  If copying a journal article for submission to the USPTO constitutes infringement, wouldn’t copying the same article for submission to the court in support of a summary judgment constitute infringement?

Schwegman moved to dismiss the case, arguing that Plaintiffs had not sufficiently pleaded their claims. To avoid dismissal, a complaint must include “enough facts to state a claim to relief that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 547 (2007). Predicating their motion on Twombly and Iqbal, Schwegman argued that the publishers had not pleaded sufficient facts to establish either element of copyright infringement: (1) ownership of a valid copyright and (2) copying of original elements of the copyrighted work.  The motion was denied.  The Court stated, “a plaintiff does not need to expressly plead facts to support the elements of a claim in the complaint, rather a plaintiff may rely upon plausible inferences from the well-pleaded facts to state a claim for relief.”

The publishers satisfied their pleading obligations by simply pleading ownership of the copyright, providing registration certificates for the journals, and by alleging Schwegman copied their protected works pursuant to Federal Rule of Civil Procedure 8(a)(2).

This is merely a warm-up for the real battle which lies ahead concerning the scope of the fair use defense.  The case continues under several watchful eyes.