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
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
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.
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