No, it’s copyright infringement. See Newegg, Inc. v. Ezra Sutton, P.A., 120 U.S.P.Q.2d 1111 (C.D. Cal. Sep. 13, 2016) (2016 BL 299780).
New Jersey lawyer Ezra Sutton copied “substantial portions” of a brief drafted by Newegg, Inc., a codefendant in a patent case being handled by Sutton. Newegg was “the owner of a valid and registered copyright” for its brief. When Newegg sued Sutton for copyright infringement, Sutton alleged that his copying was “fair use.” After considering the four statutory factors bearing on fair use, however, Senior United States District Judge Terry J. Hatter, Jr., was not persuaded.
- As to the first fair use factor, which considers the “purpose and character of the use,” the court found that “Sutton did not add new expression, meaning or message to Newegg’s draft brief. Sutton merely made minor and cosmetic changes to the draft brief. Further, Sutton’s brief and Newegg’s draft brief had the same intrinsic use—to persuade the Federal Circuit. Therefore, Sutton’s brief cannot be said to be a transformative use of the draft brief. Thus, the first statutory factor weighs heavily in favor of Newegg.”
- As to the second fair use factor, which considers the “nature of the copyrighted work,” the court found that “Sutton’s brief is a functional presentation of fact and law, and in accordance with the Supreme Court’s priority in disseminating factual works, the second statutory factor weighs slightly in favor of Sutton.”
- As to the third factor, which considers the amount and substantiality of the portion of the work copied, the court found “that Sutton copied most, if not all, of the substantive portions of the draft brief, and that Sutton’s use of the draft brief was not transformative.” As a result, the court held that “this factor weighs heavily in favor of Newegg.”
- As to the fourth factor, which considers the degree of harm to the potential market, the court found that Newegg “failed to identify a market for its legal briefs,” and that, as a result “the fourth statutory factor weighs slightly in favor of Sutton.”
In conclusion, the court found that “[u]pon consideration of all four factors, with more weight given to the first and third factors based on the facts, circumstances and particular nature of this case, Sutton did not meet his burden of establishing a prima facie case that his copying of Newegg’s draft brief was fair use.”
Interestingly, the court rejected Sutton’s argument that Fed. R. App. P. 28(i) justified his copying. That rule permits a party to either join in or adopt by reference a part of a co-party’s brief. However, the court found that “[b]y copying Newegg’s draft brief, Sutton went beyond joining the brief or incorporating parts of it by reference.”