The lawsuits caught many intellectual property experts by surprise. And for good reason.
The plaintiffs alleged that a well-known, decades-old business practice was, in fact, copyright infringement. Moreover, the alleged infringers were two respected law firms that specialize in IP law.
The key issue in these lawsuits is whether the law firms’ copying is “fair use” and thus not infringing. To decide that issue, a court must consider the four factors specified by Section 107 of the Copyright Act: the purpose of the copying, the nature of the copyrighted work, the percentage of the work that was copied and the effect of the copying on the market for the copyrighted work.
There’s another issue: When a law firm copies an article for the PTO, it routinely makes at least one additional copy for its files. Even if the former is protected by fair use, the latter may not be.