Am. Inst. of Physics v. Winstead PC

Because the defendant made transformative, non-commercial use of a copyrighted work in a way that promotes the public interest, the court allowed the fair use defense.

Opinion (Lynn): Plaintiffs, American Institute of Physics and Blackwell Publishing, Ltd. (“the publishers”), produce scientific, technological, and medical journals. Defendant, Winstead PC (“Winstead”), is a law firm whose practice includes preparing patent applications for submission to the United States Patent and Trademark Office ("USPTO"). The publishers filed suit for copyright infringement after two academic articles were allegedly copied by Winstead as part of their patent prosecution practice. Winstead moved to dismiss the publishers' complaint, claiming an affirmative defense of fair use. The nonexclusive list of factors to determine whether a particular use is fair include: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit education purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. Fair use analysis calls for case-by-case balancing analysis. As to the first factor, the court found that Winstead’s copying of the articles had the purpose of providing a background context for patent examiners in their analysis of patent applications. Additionally, although Winstead may charge clients to recoup copying costs, there was no evidence to suggest that any client was in fact charged for the copying. Therefore, the commercialism inquiry did not disfavor Winstead’s fair use defense. Further, Winstead's transformative use of the articles, the largely non-commercial nature of the activity, and the public benefit derived from Winstead’s activities all weighed strongly in favor of a fair use defense. The second factor for a fair use analysis considers the nature of the copyrighted work. Winstead argued that the articles primarily communicated factual and scientific information, and therefore were subject to less protection than expressive works, such as poems, songs or fictional works. The court agreed, finding the second factor to weigh in favor of a finding of fair use. As for the amount and substantiality of the portion used in relation to the copyrighted work as a whole, while Winstead copied the articles in their entirety, weighing against Winstead’s fair use defense, the third factor weighed only slightly against a finding of fair use. The court found the fourth factor, which measures the effect of the use upon the market for, or value of, the copyrighted work, to weigh in favor of Winstead’s fair use defense as well. Winstead noted that most of the articles were published years before Winstead’s use and thus had a diminished commercial value. The court agreed, and, on balance, the fourth factor weighed in favor of a fair use defense. Three of the four fair use factors favored Winstead—the purpose and character of the use, the nature of the work, and the effect of the use on the potential market. The factor that did not favor fair use—the amount and substantiality copied—does not carry the same weight. Here, Winstead made transformative, non-commercial use of copyrighted work in a way that promoted the public interest; this use is entitled to the fair use defense. Thus, the court GRANTED summary judgment to Winstead on its affirmative defense of fair use stemming from alleged copyright infringement.