Yesterday the Copyright Clearance Center, Inc. (CCC), a not-for-profit organization and leading provider of licensing solutions, announced that one of the top patent firms in the United States has signed a five year licensing deal, taking advantage of CCC’s Annual Copyright License. The firm is Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P., which year after year is the top firm in terms of the number of cases filed and handled at the United States Patent and Trademark Office.
“Law firms thrive on the exchange of information,” said Miles McNamee, Vice President, Licensing and Business Development, CCC. “The Annual Copyright License gives Oblon Spivak employees the freedom and flexibility to share content with each other.”
“We think this is a win-win situation for Oblon and CCC,” said Brad Lytle, Managing Partner, Oblon Spivak. “This license allows us to go about our business and focus our efforts on protecting the intellectual property of our clients.”
But why is Oblon taking a copyright license, that is the real question?
The answer to why a patent law firm would be taking a blanket copyright license may well be found in the old saying about a penny of prevention being worth a pound of cure. Law firms have been coming under fire recently for alleged copyright violations relating to the materials they submit to the United States Patent and Trademark Office. Dennis Crouch over at PatentlyO has followed this development as the lawsuits have been unfolding. See, for example, Copyright Lawsuits Against Patent Firms Continue and Law Firms Sued for Submitting Prior Art to the USPTO.
The law requires certain information, including copyrighted information, to be turned over to the United States Patent and Trademark Office. Failure to turn over the information constitutes a breach of the duty of candor as defined/required by 37 C.F.R. 1.56.
If copyright owners can successfully sue when one undertakes an action that is required by law that would create a perverse conundrum. If patent firms need a copyright license to do what Rule 1.56 mandates, that means that the copying and filing of copyrighted articles, for example, would not be considered fair use. That would mean that absent the permission of the copyright owner the patent firm could not provide relevant and copyrighted prior art to the USPTO. But what if the copyright owner refused a license? Are we really going to allow copyright owners to prevent an applicant from satisfying Rule 1.56? If that is the case then Congress needs to step in and either expressly say this is a fair use or they need to step in and say that material prior art that is not filed with the Patent Office because of an intransigent copyright owner cannot be the basis of finding inequitable conduct (i.e., a breach of Rule 1.56 that would render the patent unenforceable).
The U.S. Constitution gives Congress the right to grant exclusive rights to content creators in the form of a copyright. The Constitution does not mandate that Congress exercise this right, although it would seem bizarre not to have copyrights or patents given that the Founding Fathers and Framers of the Constitution wanted to offer these intellectual property rights to flame the creative genius in America. But it is entirely correct to say that Copyrights exist because Congress says they exist. That being the case it strikes me as clearly wrong for copyright owners to sue patent law firms for doing what the law requires.
I have always been of the opinion that exercising a right that you have been duly granted cannot create negative legal consequences. How can doing something you have a right to do be problematic? That is why I am critical of various theories of antitrust liability. Similarly, doing something that one is legally required to do cannot create liability. It is asinine to suggest otherwise, particularly when the federal government grants the copyright in the first place and the federal government requires disclosure of copyrighted information that is known to be relevant to a patent application.
In any event, Oblon has not been sued, and that this announcement may well have nothing to do with the ridiculous copyright infringement lawsuits circulating the industry. Other than knowing that Oblon has not been sued I know nothing more than what was in the press release issued by CCC. Nevertheless, one of the biggest patent law firms in the nation taking a copyright license does seem to be rather coincidental in light of ongoing industry activity. Is this about preventing threatened litigation? Is it about inoculation prior to even receiving a threat? Does it have nothing to do with the copyright litigations against patent firms? Impossible to know really, but when a firm like Oblon is willing to spend money on something one has to wonder. There is obviously a reason, so the industry should take notice. Oblon is not just spreading the wealth and paying CCC for nothing. There is some perceived benefit of some kind involved.
Could blanket copyright licenses be the way of the future for patent law firms? Do patent law firms really need to obtain special copyright permission of copyright owners before they comply with the law on behalf of their clients? Time will tell.
To be or not to be, that is the question, or something like that, right? Do you stand and fight or do you just take a license when you know that standing and fighting will likely cost more than taking a license? This might as well be a Hobson’s choice. As attorneys we are not all that familiar with such decisions impacting us, but unfortunately many clients do face this very question. Indeed, some choose to fight and some choose to settle. Neither is the wrong choice and each comes with consequences.