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« Court Report | Main | The Medicines Company to Get Patent Term Extension »

January 23, 2012

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Don,

It boggles my mind that a copyright owner can possibly argue that making a copy of one of their documents for the purpose of complying with a federal regulation (and case law obligation) is anything other than fair use. If complying with Rule 56 et al obligations isn't fair use under U.S. copyright law, then nothing is fair use.

It should also be noted that 17 USC 107 which states the 4 common factors for considering "fair use" also makes clear that these 4 factors aren't the "end all and be all." Certainly, complying with federal regulations/statutes/case law should also be a significant factor in determining what use is "fair."

Don:

Readers should see also Patently-O, which mentions threats of "license or be sued" by copyright holders (or the CCC, acting on their behalf); and In the Pipeline, discussing the Research Works Act, which would inter alia end the NIH practice of requiring open-source publication of NIH-sponsored research one year after first publication. Scientific publishers are suddenly becoming very aggressive, not that they weren't aggressive before.
As I recall, WIPO and EPO both post full file histories, including NPL, on their websites, and send copies to applicants (but do note the possible existence of copyright in materials they provide) - either they are licensed or they consider their actions non-infringing under relevant law; while Courtney Brinckerhoff on PharmaPatents mentions that the CIPO will not even supply applicants with copyrighted material used by the examiner in a rejection. It would be interesting to see what other patent offices do.

Caught in the filter (please print only one)

EG,

We are free to contract, are we not? Would that freedom extend to copyright license terms?

Over at Patently-O one of the commenters provided a CCC license and another commenter pointed out that express language controls the type of copying allowed.

There, a hard copy is permitted, but not an electronic copy. I believe the second poster would be correct as to the limit on the Office for making an electronic copy of the provided item, since that action is expressly prohibited, and would only be for convenience of the Office (they would have the hard copy).

It is a different question, though, whether the fact that the Office itself offers to make copies for others is a violation. I recognize the PURPOSE of the Office asking for the copy (to ascertain rights), but does the public have any such right to a copy (does the public's use match the original PURPOSE of the Office)? Rather, should this be treated as a sealed matter to protect the rights (copyrights, that is) involved?

"We are free to contract, are we not? Would that freedom extend to copyright license terms?"

I'm not disputing that "we are free to contract," including in the context of copyright licenses, Skeptical. But such terms can still be considered "ultra vires" if they would, essence, discourage compliance with lawfully enacted federal regulations (which Rules 56, 97, and 98 are), or would encourage failure to comply with case law imposed obligations (such as the "duty of disclosure" obligation). Just as you can't "sign away" your right to sue for personal injury (because it's against public policy), you also can't condition a copyright license on conduct that would encourage failure to comply with lawful federal regulations/case law obligations (that's also against public policy). Again, providing copies of non-patent literature, even if it's copyrighted, to comply with Rule 56 et al./the "duty of disclosure" obligation is, in my opinion, is still "fair use" in my book. So for a copyright owner to condition a license on doing the contrary activity is thus ultra vires and unenforceable as being against public policy.

EG -

We may be free to contract, but we can only contract for what we own. Ownership is often described as "a bundle of rights". Copyright is based on rights derived from the Constitution. The government can limit the rights it provides. The government did not give copyright owners the right to prevent fair use. Thus, the copyright owner may not contract to restrict rights it does not own.

Tifoso

EG,

I disagree with your summary of what the license imposes.

The license (the CCC for discussion sake) does not say you cannot meet the requirement. It does control the manner and number of copies. In the CCC case, if you want more than one copy (for whatever reason), why should you not pay for that?

Further, the Office action of providing copies does not align with its purpose of request and thus is likely a copyright violation (I do not begrudge the Office for requesting a copy, even a free one).

As to a license that signs your rights away, your hyperbole is too much a reach. You can always buy another copy for the purposes you need it for. Being cheap does not count as discouraging compliance with lawfully enacted federal regulations - there are many such regulations and procedures in life that cost money. Are you saying that any such thing that costs money can rise to the level of being ultra vires (patent filing costs immediately come to mind)?

OK, may be saying that such a condition in a copyright license is "ultra vires" is a bit of a stretch, but the threats being made by these publishers because copies of their literature is being made to comply with federal regulations/case law obligations is definitely overreaching . Do you seriously think a court (and especially a jury) is going to agree that providing a copy of copyrighted literature required by federal regulation, as well as case law obligation is anything other than "fair use"? Frankly, the owners of such literature would be well advised not to push these threats unless they want an adverse judicial ruling that says those threats are empty.

Also, this issue goes beyond cost: it's the hassle of trying to get a "may I" everytime from the copyright owner (assuming you can reach the right folks) that you want to make a copy of their literature for submission in an IDS. When you multiple that "hassle" 100 fold or more fold, it now becomes a significant impediment to complying with an obligation imposed by federal regulation/case law. Again, we're not talking about making copies for profit (unless you consider providing such copies as part of a virtually mandatory IDS to be "for profit"). We're talking about complying with obligations imposed by federal regulation/case law. And Tifso is correct, the federal government can (and has) set the limit of what copyright owners can restrict in terms of making copies by recognizing fair use in 17 USC 107.

Tifoso makes a valid point in that the copyright itself does not inherently provide that "The government did not give copyright owners the right to prevent fair use."

But the analysis does not stop there.

By signing the license agreement, you have committed to giving up, to the copyright holder, your fair use right. If you don't like the license terms, you are free to not enter into the license.

This is a contract issue, albeit implicating a copyright issue.

Interestingly, the USPTO is not a party to that contract, and the USPTO is not bound by the contract terms. The USPTO retains its fair use rights.

That being said, I remain skeptical and I am not convinced that the fair use rights apply to the non-purpose use of making copies of copyrighted material for anyone askiing for filejacket material. The Office obtained its copy for a specific and limited purpose. That purpose was for ITS examination, which is separate from any review (and copying) of the file by the public.

(I did not receive a CAPTCHA box on my first post)

EG,

Our emails crossed in the filter (mine was posting, so I did not see your response at 9:25).

I think that some of my 9:27 post answers some of the points in your post (don't enter the license if you don't like the terms). In that sense, I disagree that someone enforcing a valid license agreement (one that may involve the voluntary surrender of fair use rights) is NECESSARILY overreaching. Also, as I mentioned, I remain skeptical of the government's position on its (potential) copyright violation - I would think that a full factor analysis would indicate that this is not a frivolous matter.

As to cost, again, don't "cry me a river," as there are many, many things that are required (by law), but are not free. I do not find your position here compelling.

As to "significant impediment," life is tough and hurdles exist. You will have to provide more substance to validate that this actually rises to the level you ascribe. For what it is worth, I have negotiated such waivers from copyright holders of technical works - it is not that difficult, nor that time-consuming, and can be done only once for all future occurences and in bulk (IEEE, for example, has many items that can be waived in one instance).

OK Skeptical, we'll likely have to "agree to disagree" on this issue. And I also wouldn't agree to accept such a copyright license because what's being asked is beyond what the copyright owner can rightfully (and lawfully) require as a condition for such a license. (You may also disagree with this position too). But I again ask: Do you seriously think a court (and especially a jury) is going to agree that providing a copy of copyrighted literature required by federal regulation, as well as case law obligation is anything other than "fair use"?

Also, in terms of "negotiat[ing] such waivers," does that include for the purposes of submitting copies of the articles for the IDS? Also, IEEE may grant such waivers, but what about other publishers who don't and won't? Again, in my opinion (may be not yours), these publishers are overreaching what copyright protection provides and what fair use under 17 USC 107 permits.

EG,

I recognize the "likely have to" as an indication that you feel we are approaching a "talk-past one another" point, and I respect that (thankfully, this is not Patently-O). Please indulge me a little further.

I also recognize your acceptance that one party is free to accept (or not) license terms. To me, this is critical, because the contract issue does swing on the fact that the parties have entered into any such contract freely (no contracts of adhesion).

HOWEVER, your question of "Do you seriously think a court...?" will rest on additional facts of each case. I think it completely possible that a federal agency may overstep its bounds of copyright material treatment when those bounds EXCEED an acceptable purpose. That is the point I tried to impress by distinguishing the purpose of examination versus the purpose of making copies for whomever asks for file information. Those are two distinct purposes and a court would rightfully analyze the two actions differently. So I do not answer your question directly, because I do not think it to be the right question to be asking (required by federal regualtion MUST be tied to the PURPOSE under review). A second question to the Examination Question would be Does the Office have a right to (copy and) distribute material in a file jacket regardless of any copyright protection existing for that material? Since the Office did not pay for that material (and are not subject to the license terms), I believe that a plausible argument exists that there is no exhaustion possible for the Office and the material they hold, and the Office is NOT free to copy/distribute what it may FOR OTHER REASONS obtain and possess.

To the question of negotiation, my answer is yes, the waiver was expressly for my making an electronic copy for submission to the USPTO in relation to an IDS (I have found publishers very reasonable when I explain the legal duty I have). As for other publishers, it is FULLY within their perogative (if you have contracted your right away - again, this is a voluntary action). Your ascribing an over reach is again misplaced, because you have within your power the voluntary right to turn down the license terms (and do without their copyrighted material). IF you have turned down their license, you will not be aware of their content and you will have NO requirement to submit and thus fair use is not even reached.

I welcome your further comments, as you deem fit to reply.

The comments to this entry are closed.

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