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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1 Mar 2017, Webinar, Washington, DC, United States
Finnegan partner Eric P. Raciti will participate in a webinar discussion addressing the follow-on decisions citing Schulhauser,providing insight into the varied types of method-claim limitations that have not been given patentable weight, including how to avoid emerging trigger words, such as "carrying out a step upon a threshold being exceeded," "upon," "whet
Panelists will also discuss how these decisions extend Schulhauser's holding to system, machine and apparatus claims without means-plus-function limitations, and will give other relevant practice tips. For additional information, or to register, please visit IPO's website.
Finnegan is a Gold sponsor of the Bay Area Corporate Counsel Awards, hosted by the Silicon Valley Business Journal and the San Francisco Business Times. Finnegan partner Rob McCauley will present the IP Law category.
Though politics ruled the headlines in 2016, the year still brought big changes in intellectual property law and its application, most notably in patent subject matter eligibility, inter partes review institution and appeal and design patent damages.
Chanel, a billion-dollar fashion company that produces and sells luxury consumer products, identifies its products by the "Chanel" trademark and the "CC Monogram" trademark, which consists of two interlocking...
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