Decisions in Brief

• Author: John C. Gatz
• Position: John C. Gatz is a member of the firm Nixon Peabody in Chicago. Column contributors include the following writers: Copyrights: Zachary J. Smolinski; Michael N. Spink, Brinks, Gilson & Lione; Mark R. Anderson, Akerman LLP. Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor Carter, Daniel M. Lechleiter, and Andrew M. McCoy, Faegre Baker ...
• Pages: 62-65

Published in Landslide® magazine, Volume 9, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2016 by the American Bar Association. Reproduced with permission. All rights reserved. This

information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

John C. Gatz is a member of the rm Nixon Peabody in Chicago. Column contributors include the following writers: Copyrights:

Zachary J. Smolinski; Michael N. Spink, Brinks, Gilson & Lione; Mark R. Anderson, Akerman LLP. Patents: Cynthia K. Barnett, Johnson

& Johnson; R. Trevor Carter, Daniel M. Lechleiter, and Andrew M. McCoy, Faegre Baker Daniels LLP; Robert W. (Bill) Mason, CeloNova

BioSciences, Inc.; Peter J. Prommer, Nixon Peabody LLP. Trade Secrets: R. Mark Halligan, FisherBroyles LLP. Trademarks: Janet M. Garetto

and Elizabeth W. Baio, Nixon Peabody LLP; Amy L. Sierocki.

COPYRIGHTS

PATENTS

Court Allows Defendant’s Work-for-Hire Challenge

to Plaintiff’s Copyright Ownership

Urbont v. Sony Music Entm’t., 831 F.3d 80, 119 U.S.P.Q.2d

1619 (2nd Cir. 2016). In 1966, composer Jack Urbont wrote

an Iron Man theme song for a Marvel super heroes TV show.

The song was featured on two tracks of Ghostface Killa’s

2000 album Supreme Clientele. No permission was sought

for using the song. Urbont sued Sony Entertainment as the

producers of the album, along with other defendants, for

copyright infringement in 2011. The district court granted

Sony’s motion for summary judgment based in large part on

Sony’s argument that Urbont did not own the copyright in the

Iron Man theme song because it was a work made for hire

for Marvel. Urbont appealed, arguing that Sony didn’t have

standing to challenge his ownership of the copyright under

a work-for-hire theory and that the district court overlooked

questions of material fact on his substantive claims.

The Second Circuit decided in favor of Sony on the stand-

ing issue in its “work for hire defense,” holding that “third

parties to an alleged employer-employee relationship have

standing” to use such a defense. The Second Circuit acknowl-

edged a Ninth Circuit case in which an argument against

proper ownership under this theory was rejected, but distin-

guished that case from the present one as both the accused

employer and employee were parties to that case. Though

Sony could employ the defense, the Second Circuit ruled in

favor of Urbont on his arguments that the work-for-hire doc-

trine did not result in Marvel’s ownership of the copyright

here. In particular, Urbont presented evidence that Marvel

understood it did not own the copyright in the work.

Lawyer Liable for Copied Legal Brief

Newegg Inc. v. Ezra Sutton, P.A., 120 U.S.P.Q.2d 1111 (C.D.

Cal. 2016). The plaintiff Newegg and the company Sakar were

both defendants in a patent infringement suit. Sakar’s lawyer, the

defendant Sutton, led a brief in that litigation that copied sub-

stantial portions of a draft brief provided to Sutton by Newegg.

There was no dispute that (1) Newegg was the owner of a valid

and registered copyright for its draft brief, and (2) Sutton cop-

ied substantial portions of the draft brief without permission. The

issue was whether Sutton’s copying constituted fair use.

The district court found that Sutton did not add a new expres-

sion, meaning or message to Newegg’s draft brief. Further, it

found that the briefs had the same intrinsic use — to persuade the

appellate court. Therefore, the district court found that Sutton’s

brief was not a transformative use, and the rst and third statu-

tory factors weighed in favor of Newegg. Because the brief was a

functional presentation of fact and law, and in accordance with the

Supreme Court’s priority in disseminating factual works, the sec-

ond statutory factor weighed in favor of Sutton. Additionally, since

Newegg failed to identify a market for its legal briefs, the fourth

statutory factor weighed in favor of Sutton.

Balancing all four factors, the district court gave more

weight to the rst and third factors and held that Sutton did

not meet his burden of establishing a prima facie case that

his copying of Newegg’s draft brief was fair use. The dis-

trict court also noted that Rule 28(i) of the Federal Rules of

Appellate Procedure, which permits a party to either join in

or adopt by reference a part of a co-party’s brief, could not

be used to justify Sutton’s copying, because Sutton’s actions

went beyond such permitted activities.

Appeals Procedure

SkyHawke Techs., LLC v. Deca Int’l Corp., 828 F.3d 1373,

119 U.S.P.Q.2d 1418 (Fed. Cir. 2016). The Federal Circuit

granted the motion to dismiss this appeal for lack of jurisdic-

tion. As SkyHawke prevailed in an underlying inter partes

reexamination that found its claims to not be obvious, it

cannot appeal the PTAB’s alleged overly narrow claim con-

struction even though it might lead to some adverse impact.

Arbitration

Verinata Health, Inc. v. Ariosa Diagnostics, Inc., 830 F.3d

1335, 119 U.S.P.Q.2d 1441 (Fed. Cir. 2016). The Federal Cir-

cuit afrmed the district court’s decision denying the plaintiff’s

motion to compel arbitration. In a supply agreement between

the parties, the arbitration claim stated that arbitration shall

not resolve “disputes relating to issue of scope, infringement,

validity and/or enforceability of any Intellectual Property

Rights.” The plaintiff sued the defendants for patent infringe-

ment and the defendants counterclaimed for declaratory

judgment of non-infringement, breach of contract, and breach

of fair dealing. The Federal Circuit found that the counter-

claims fell within the exclusions of the arbitration clause and

the plaintiff put the scope of licensed patent rights at issue by

suing the defendant for patent infringement. The counterclaims

are all predicated on the infringement ling.

By John C. Gatz