discussed on TIPS a few months ago, a number of publishers of
scientific journals have launched copyright lawsuits against a
handful of law firms, alleging that the firms' photocopying in
connection with patent submissions constitutes infringement.
That dispute has now proceeded to the motion to dismiss phase, with
U.S. District Judge Kyle of the District of Minnesota refusing to
dismiss the case, while granting the intervention request of the
U.S. Patent and Trademark Office ("USPTO").
At the motion to dismiss phase, the Defendant law firms tried a
multi-pronged attack, arguing that (i) the Plaintiffs had not
alleged that they owned rights in the allegedly copied articles,
(ii) the Plaintiffs had failed to establish the pre-suit
registration requirement for copyright cases, and (iii) the
Plaintiffs failed to adequately plead copying of the articles and
that the copying occurred within the three year statute of
limitations applicable to copyright claims. The District
Court rejected each of these arguments. The Court held that
the Complaint alleged that the Plaintiffs either owned or were the
exclusive licensees of the subject articles, and that they had
registered the scientific journals with the Copyright Office.
As a result, at least at the pleading stage, the Court found that
the Plaintiffs had alleged ownership and registration, there being
no heightened pleading requirement for copyright actions under the
Federal Rules of Civil Procedure. With respect to the copying
claim, the Court found that the Plaintiffs could not know at this
stage what internal copying had occurred, when and by whom
– but that there was no pleading requirement that the
Plaintiffs anticipate and plead around the Defendants' possible
defenses. The Court indicated that it was likely that
internal copying within the Defendants' organizations had
occurred, and discovery would flesh out the claim.
One argument made by the Defendant law firms that was not
summarily rejected has to do with the submission of scientific
articles to the Patent and Trademark Office in connection with
various filings. The Defendant law firms argued that their
filings do not constitute a "public distribution" under
the Copyright Act, reasoning that the USPTO is not the
"public." The Court stated: "There may
be merit to this argument," noting several other decisions
which have held that a limited distribution to a governmental
entity does not constitute "publication" under the
Copyright Act. However, the Court decided that the
Defendants' failure to argue this point in detail in their
opening brief may have deprived the Plaintiffs of the opportunity
to address it (no sur-reply was requested or attempted). The
Court stated that the argument could be renewed, "with
appropriate support," later in the case.
A copy of the District Court's decision in the Minnesota case
may be found
Since the USPTO's intervention request now has been granted,
one can only hope that the USPTO will state its position in the
clearest possible terms so that courts around the country will have
no misunderstandings. It will be interesting to follow this
case, as well as the others filed around the country, to see if
similar results are reached, and whether these cases are a
bellwether for the publishing industry.
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