You're viewing Docket Item 64 from the case Newegg, Inc. v. Ezra Sutton, P.A., et al. View the full docket and case details.

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United States District CourtCentral District of California
Western Division
NEWEGG INC., Plaintiff,
v.
EZRA SUTTON, P.A., et al.,
Defendants.CV 15-01395 TJH (JCx)
Order
The Court has considered Defendant Sutton’s motion for leave to amend the Final
Pretrial Conference Order to add the affirmative defense of fair use and Plaintiff
Newegg’s motion for partial summary judgment, together with the moving and
opposing papers.
The Court must take account the following when considering whether to amend
a Final Pretrial Conference Order: the degree of prejudice to any party, any impact
which the amendment would have on the conduct of the trial, and any willfulness or bad
faith by the party seeking the amendment. See Galdamez v. Potter, 415 F.3d 1015,
1020 (9th Cir. 2005).
There would be no prejudice to Newegg if the Final Pretrial Conference Order
is amended because Newegg competently dealt with the affirmative defense in its partial
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28summary judgment motion. Next, the amendment would not adversely affect the
conduct of the trial. Finally, there is no evidence that Sutton acted in bad faith.
Accordingly, the Final Pretrial Conference Order will be amended to include the
affirmative defense of fair use.
Because there is no dispute that Newegg is the owner of a valid and registered
copyright for its draft brief, or that Sutton copied substantial portions of Newegg’s draft
brief without permission, the next issue is whether Sutton’s copying constituted fair use
of Newegg’s draft brief.
In a summary judgment motion, when the nonmoving party has the burden of
proof at trial, as Sutton has here on the affirmative defense of fair use, summary
judgment should be granted when the nonmoving party fails to produce evidence to
establish a prima facie case. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
Thus, the burden is on Sutton to establish a prima facie case for fair use. Newegg, as
the moving party, however, has the initial burden to show that Sutton does not have
enough evidence to establish a prima facie case of fair use. See Williams v. Gerber
Prods. Co., 552 F.3d 934, 938 (9th Cir. 2008). Newegg has met this initial burden.
Consequently, the burden shifts to Sutton to establish, with admissible evidence, a
prima facie case that the copying was fair use. See Celotex, 477 U.S. at 322.
The Copyright Act sets out four statutory factors that should be considered before
fair use can be successfully raised as an affirmative defense to copyright infringement.
17 U.S.C. § 107. The first statutory factor concerns the “purpose and character of the
use,” the second factor examines the “nature of the copyright work,” the third factor
assesses the “amount and substantiality” of the copyrighted work used by the alleged
infringer, while the fourth factor assesses whether the allegedly infringing work has an
adverse effect on the potential market for, or the value of, the copyrighted work. 17
U.S.C. § 107.
The purpose of the fair use doctrine is to permit “courts to avoid rigid application
of the copyright statute when, on occasion, it would stifle the very creativity which that
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28law is designed to foster.” Stewart v. Abend, 495 U.S. 207, 236 (1990). While § 107
sets out four factors to consider, there is no bright line rule for fair use; an analysis
must be undertaken on a case-by-case basis with each factor weighed against each other
rather than considered in isolation. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569,
577 (1994).
In considering the first statutory factor, the Ninth Circuit has held that when an
allegedly infringing work was used for the same intrinsic purpose as the copied work,
it is a “strong indicia” that there was no fair use. See Jartech, Inc. v. Clancy, 666 F.2d
403, 407 (9th Cir. 1982). A key, though not “absolutely necessary” element in
considering this first statutory factor is whether and to what extent the allegedly
infringing work is “transformative.” Campbell, 510 U.S. at 579. In Campbell, the
Supreme Court held that the “more transformative the new work, the less will be the
significance of other factors [...igh against a finding of fair use.” Campbell,
510 U.S. at 579. For a new work to have made a transformative use of an old work,
the new work must have altered the copyrighted work to create “new expression,
meaning or message.” Campbell, 510 U.S. at 578.
Here, Sutton did not add new expression, meaning or message to Newegg’s draft
brief. Sutton merely made minor and cosmetic changes to the draft brief. Further,
Sutton’s brief and Newegg’s draft brief had the same intrinsic use – to persuade the
Federal Circuit. Therefore, Sutton’s brief cannot be said to be a transformative use of
the draft brief. Thus, the first statutory factor weighs heavily in favor of Newegg.
The second factor – the nature of the copyrighted work – calls for recognition
that some works are closer to the core of intended copyright protection than others, with
the consequence that fair use is more difficult to establish when the former works are
copied. See Stewart v. Abend, 495 U.S. 207, 237–238 (1990). For example, the
Supreme Court has held that there is a “greater need” to disseminate factual works than
works of fiction. Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 540
(1985). Moreover, the Southern District of New York held that legal briefs are
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28copyrightable “functional presentations of fact and law,” which tends toward a finding
of fair use. White v West Pub’l. Corp., 29 F. Supp. 3d 396, 399 (S.D.N.Y. 2014).
While only of persuasive value, White nonetheless demonstrates the principle that legal
briefs can be the subject of copyright infringement and, by extension, can be captured
within the scope of the fair use defense. Because Sutton’s brief is a functional
presentation of fact and law, and in accordance with the Supreme Court’s priority in
disseminating factual works, the second statutory factor weighs slightly in favor of
Sutton. See Harper & Row Publishers, Inc., 471 U.S. at 540.
For the third factor, the Court must consider the the amount and substantiality of
the portion copied in relation to the copyrighted work as a whole. 17 U.S.C. § 107(3).
“This factor calls for thought not only about the quantity of the materials used, but
about their quality and importance, too.” Campbell, 510 U.S. at 587. Moreover, the
copying of a substantial portion of the original work “may reveal a dearth of
transformative character or purpose under the first factor.” Campbell, 510 U.S. at 587.
Given that Sutton copied most, if not all, of the substantive portions of the draft brief,
and that Sutton’s use of the draft brief was not transformative, this factor weighs
heavily in favor of Newegg.
As to the fourth factor – the degree of harm to the potential market – Newegg
failed to provide any evidence that it has ever licensed or sold its briefs, or that there
is a market for the licensing or sale of its legal briefs. When a copyright holder fails
to identify a market for its copyrighted work that might be harmed by an infringing
work, the infringer need not present evidence demonstrating the lack of harm in the
market for the copyrighted work. Leibovitz v Paramount Pictures Corp., 137 F.3d 109,
116 (2nd Cir. 1998). Therefore, because Newegg has failed to identify a market for
its legal briefs, the fourth statutory factor weighs slightly in favor of Sutton.
Upon consideration of all four factors, with more weight given to the first and
third factors based on the facts, circumstances and particular nature of this case, Sutton
did not meet his burden of establishing a prima facie case that his copying of Newegg’s
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28draft brief was fair use.
Finally, Fed. R. App. P. 28(i) cannot be used to justify Sutton’s copying of the
draft brief. Rule 28(i) specifically permits a party to either join in or adopt by reference
a part of a co-party’s brief. By copying Newegg’s draft brief, Sutton went beyond
joining the brief or incorporating parts of it by reference.

Accordingly,
It is Ordered that Defendants’ motion for leave to amend the Final Pretrial
Conference Order to add the affirmative defense of fair use be, and hereby is,
Granted.
It is further Ordered that Plaintiff’s motion for partial summary judgment as
to copyright infringement be, and hereby is, Granted.
Date: September 13, 2016
__________________________________
Terry J. Hatter, Jr.
Senior United States District Judge
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