Decisions in Brief

AuthorJohn C. Gatz
PositionJohn 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 ...
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.
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.
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

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