Hsuanyeh Law Group v. Winston & Strawn, 23-cv-11193 (S.D.N.Y. 2024)
A recent copyright infringement lawsuit filed by small Boston intellectual property boutique Hsuanyeh Law Group PC (HLG) against international giant Winston & Strawn LLP focuses a dividing line that can highlight when copying the work of another firm is permissible. I believe that Winston & Strawn will eventually prevail based upon a fair use defense, but it is still an embarrassing situation for the firm and attorneys involved. I hope that they did not overbill the client. The role of attribution is also receiving increasing focus as attorneys begin to rely more heavily on AI outputs for their legal documents.
I recall being asked to draft my first patent infringement complaint back in early 2003 – a few months after graduating from law school. I relied heavily on prior filed complaints for form and content — adapting those writing to fit the facts of our particular lawsuit. This form of copying and imitation is a longstanding legal tradition, but the question is whether copying ever goes too far.
In this case, HLG alleges that Winston & Strawn plagiarized a motion to dismiss that HLG had filed on behalf of a client in an earlier consolidated patent case. Although plagiarism is not a cause of action, copyright infringement is – and that serves as the basis of the lawsuit here.
The Facts of the Case
According to the complaint filed in the Southern District of New York, HLG represented Phison Electronics in a now-settled patent infringement case brought by Unification Technologies (UTL). Winston & Strawn represented another defendant, Silicon Motion, in a related case also filed by UTL. The two cases were consolidated before the district court, though no joint defense agreement existed between the co-defendants.
HLG filed a motion to dismiss addressing UTL’s pre-suit willfulness allegations on August 23, 2023. The next day, Winston & Strawn allegedly filed a nearly identical motion on behalf of its client. HLG claims that entire sections were copied verbatim, including the introduction, and that Winston & Strawn “did not even rewrite their own introduction.” UTL highlighted the similarities between the two motions in its response opposing Winston & Strawn’s motion. HLG registered its motion with the Copyright Office shortly after it was filed (about 1-week later) and then reached out to Winston & Strawn to discuss the situation, but claims it was repeatedly ignored. HLG ultimately filed suit for copyright infringement.
The Constitutional promises of due process and the right to petition require that the law be available to all people – including corporate defendants and attorneys seeking access the courts. The case thus raises questions about the extent to which legal pleadings and motions, as petitions to the government for redress, are protected speech. And, the implications of this lawsuit may extend to how law firms draft motions and whether they can freely use existing legal documents as templates without infringing on copyright.
Although I mentioned the constitutional principles above, the real defense will be Fair Use, that is generally thought to implicitly incorporate Constitutional principles into its nuanced and fact-intensive analysis. The American Bar Association’s Model Rules of Professional Conduct require attorneys to act with candor towards the tribunal. This includes a duty to avoid misleading the court, which could be relevant if a motion is presented as original work when it is substantially borrowed from another source. Over the past year courts have been asking attorneys to expressly indicate whether their source was an AI. It seems not too much to ask that attorneys to provide attribution when there is substantial verbatim copying.
The New York City Bar Association’s Formal Opinion 2018-3 provides important guidance on the ethical implications of copying language from other sources into legal briefs and filings. The Opinion concludes that while extensive verbatim copying without attribution is not best practice and risks judicial disapproval, such copying does not inherently violate Rule 8.4(c)’s prohibition on dishonesty, fraud, deceit, or misrepresentation.
The NYC Bar reasons that legal briefs serve to persuade the court on a client’s behalf, not to convey original ideas or analysis. As a result, some copying from secondary sources or prior briefs furthers clients’ interests in efficiency. Additionally, the Opinion emphasizes lawyers’ duties under other ethics rules regarding competence, diligence, candor to the tribunal, and avoidance of frivolous filings. By conscientiously adhering to all their professional responsibilities, lawyers can avoid any deception or other pitfalls from incorporating language from external sources. Ultimately, the Opinion urges attorneys to cite source materials where feasible, while concluding that the Rules of Professional Conduct do not necessarily require attribution.
The NYC Bar’s position is in contrast with that of several other courts that have condemned copying in briefs as plagiarism. A key case on point is Iowa S. Ct. Atty. Disc. Bd. v. Cannon, 789 N.W.2d 756, 757 (Iowa 2010). In Cannon, the Iowa Supreme Court affirmed disciplinary action against a lawyer who filed a brief using work that was largely plagiarized from a published article. The case explains that the district court was suspicious of the brief filed because it was “of unusually high quality.” The court ordered Cannon to certify he was the author. He responded that he was responsible for the briefs but had relied heavily upon a published article. In affirming the violation, the Court wrote that:
Such massive, nearly verbatim copying of a published writing without attribution in the main brief, in our view, does amount to a misrepresentation that violates our ethical rules.
Id. I suspect the Winston attorneys are likely happy to be in NY rather than Iowa.
In the case of White v. W. Pub. Corp., 29 F. Supp. 3d 396 (S.D.N.Y. 2014), a district court judge addressed the issue of copyright infringement in the context of legal briefs. The plaintiffs, attorneys who had filed briefs in a class action lawsuit, alleged that the defendants, West and LexisNexis, infringed their copyrights by including these briefs in their legal research databases. The court ruled in favor of the defendants, holding that their use of the briefs constituted “fair use” under the Section 107 of the Copyright Act. The court found that the defendants’ inclusion of the briefs in their databases was transformative, as it contributed to creating an interactive legal research tool. Additionally, the court determined that this usage did not economically substitute the original use of the briefs in providing legal advice, nor did it impair any potential market for licensing these briefs, thereby reaffirming the defendants’ motion for summary judgment and dismissing the complaint with prejudice.
Similar issues also came up in the patent information disclosure statement cases a decade ago. In American Institute of Physics v. Winstead PC, a Texas federal court held that a law firm’s use of copyrighted scientific journal articles in patent applications constituted fair use as a matter of law. 2013 WL 6242843, at *1 (N.D. Tex. Dec. 3, 2013). The court found that the law firm’s evidentiary purpose in submitting the articles to the patent office was transformative and the articles served “an evidentiary function” in “alerting the USPTO to relevant prior art.” Likewise, in American Institute of Physics v. Schwegman, Lundberg & Woessner, P.A., a Minnesota federal court also concluded the law firm’s use of scientific journal articles in the patent prosecution process was fair based on the transformative nature of the use and lack of market harm. 2013 WL 4666330, at *1 (D. Minn. Aug. 30, 2013). The Schwegman court reiterated the reasoning from Winstead, holding the law firm used the articles “for a new and different purpose” as evidence to fulfill duties of disclosure to the patent office.
HLG v. Winston & Strawn sets up an interesting interplay between copyright and plagiarism. While I expect an outcome in favor of Winston & Strawn in its fair use defense, the case highlights the ongoing debate over the extent to which legal professionals can rely on the work of others – especially as we move into the AI world.
Waaaah! They copied my brief! Waaaaah!
Cry about it to a European court, where they have droit morale. In the USA, no one cares. You’re a lawyer, you got paid to make arguments in a brief and it’s likely that someone in a different case needs to make those same legal arguments. Anything you submit to the court become public record. And Americans don’t write briefs by including footnotes saying “Wording taken from a brief filed by X in proceeding Y”. They copy stuff from each other.
This isn’t academia. They copied your brief without crediting you, let alone paying you? Not nice, but not illegal either, so get over it. Put something in your advertising materials about how a big firm copied the brief that you wrote, and about how client should work with you instead.
+1
So you never heard of the concept of copyright, have you?
+2
There are several hurdles the firm will face.
One, it is basic copyright law that copyright only protects expression, not ideas. Most legal briefs have little expression, it’s mostly ideas. Which still could lead to infringement, but it’s a harder case if the copier made some variations.
Second, to own a copyright, you have to be original. How much of the plaintiff’s work was original, and how much was copied from prior briefs, perhaps by others? Lawyers notoriously like to recycle arguments.
Third, what is the plaintiff’s damages? If they did not register their works with the Copyright Office prior to the infringement, they can’t get statutory damages. And they will be limited to actual damages. Did they lose out on business because of the copying? I am dubious.
I’d be interested to know how much Winston charged their client for the brief and how many hours they charged.
I’ll make an educated guess: LOTS!
“… it is still an embarrassing situation for the firm and attorneys involved.”
They’re laughing all the way to the bank. Just like the attorneys Elmo used in his purchase of Twitter.
I’m sure they’re all so embarrassed.
This kind of copyright [or attorney-work-product] issue has also occasionally arisen when a patent application filed naming [say] inventors A B C was obtained, copied, and filed by different patent attorneys naming inventor D. [Of course this is even less likely now that interferences are no longer available for AIA patent applications.]
Please Pardon Potential re(Peat)…
Use of AI…
Prof. Crouch, you had mentioned that you have had your students in class use AI.
How did you address attribution to them with such use?
Use of AI…
Prof. Crouch, you had mentioned that you have had your students in class use AI.
How did you address attribution to them with such use?
Dennis, Can you provide some analysis of the fair-use factors that results in Winston & Strawn winning this one? It seems to me that only the nature of the work might be in their favor, and I question even that one since attorneys are hired and paid in significant part based on their unique abilities to draft persuasive briefs.
I share your skepticism on the fair use part. See relevant portion of my 3.1.1 below.
See my comment at 3.1.1.1 below. The answer is going to depend entirely on the content and context (of course). There is little need for creativity in many cases and copying could in fact be the most creative (AND cost-effective and efficient) way of making the point to the judge that the relevant facts are identical to a motion previously filed by the opposing party.
Honestly, in general, a party that files a copyright infringement claim against another party in this context should be sanctioned for wasting everybody’s time. It’s a loser move that reeks of pettiness and desperation.
Just to stay abreast of the latest discussion, I’ll reply here instead of below and say I agree it’s going to turn on particular facts. I know there is some caselaw on law firm copying when it comes to form documents and contracts, etc., but I’m too lazy to search for it. That seems like it would be more informative in the motion-copying scenario than what Prof. C. listed above.
Have to wonder if someone has a connection to Harvard and the charge of plagiarism still might yield to a $900,000 per year position being an academic.
Can someone please explain how granting copyright protection to legal briefs in any way accomplishes the purpose of “promoting arts and sciences”? Is the argument that lawyers would spend less time on briefs if they could be freely copied? Seems not credible
“I hope that they did not overbill the client.” hilarious
Surely HLG’s complaint includes a complete verbatim copy of W&S’s motion brief as an exhibit. So… their verbatim copying of entire documents in court pleadings is fair use, but W&S’s partial reuse of portions of a motion brief as a precedent isn’t?
Do they invent their own creative and original style of cause on every cover page they file, or do they copy from their opponents’ materials?
If I were a client of HLG, I’d ask them how much time they have billed me for reinventing the wheel instead of working from precedents. I’d also ask them what they expect a judge to say the next time one of their own court filings is shown to include language seemingly copied from a precedent, and how that judge’s disposition is likely to affect their clients’ rights.
Backwards, reactionary attitudes like this are why the practice of law is stuck in the 18th century, and why it costs a citizen $1000+ to get a straightforward answer to a question about the state of the law on a basic question. Shameful.
Surely HLG’s complaint includes a complete verbatim copy of W&S’s motion brief as an exhibit. So… their verbatim copying of entire documents in court pleadings is fair use, but W&S’s partial reuse of portions of a motion brief as a precedent isn’t?
In a word, yes. In the recent SCOTUS decision in the Andy Warhol case, the court emphasized that “transformative” for fair use means transforming for a different purpose.
Copying a legal brief to submit your own legal brief is the same purpose.
Copying a legal brief so you can sue the copier for infringement is a different purpose.
So this is not at all surprising or strange.
A computer is generating reams of fake arguments and briefs that “raise questions” and these fake arguments are published by the thousands (per day) at various Internet-accessible sites created to “deceive” other computers seeking accurate information to copy. And it’s working!
Don’t ask me where the computer is or the names of the sites. That’s not important. The question is: what are you going to do about it? Besides invest in ProphetCoins, of course.
The case thus raises questions about the extent to which legal pleadings and motions, as petitions to the government for redress, are protected speech.
To the extent this is suggesting that the copyright infringement claims like these would somehow trample on anyone’s petition or speech rights, that’s just galaxy brained even by law professor standards.
We live in a farcical age where people believe that inanity can become reality if you pound the table and keep repeating the inanity. The beginning of the performance is the floating of the concept that some action or decision somewhere “raises questions” which were, in fact, never raised (much less articulated) by the person floating the concept or anyone else.
If Dennis has a serious question, he should ask it and explain why it’s a serious question rather than just litter the world with another sad example of the phenomenon I described above.
Astute readers will be aware that a former twice impeached president of ours regularly hires (and fires) the world’s worst lawyers and water-carriers to “raise questions” that cause normal people to gag or vomit when asked with a straight face.
If some judge in Florida decides that a rightwing or glibertarian politician “owns” the copyright on a legal/logical argument or case citation, THAT would “raise questions”. Likewise if a judge held that you could freely defame people or make up false facts in court filings because “any attempt to curtail such speech would violate the First Amendment.” That would “raise questions.”
But these cases? Not so much.
I agree on the first part. That would be intolerable. Here, specifically though, I am actually more or less ok with an infringement claim when there is total or nearly word-for-word verbatim copying of a party’s motion. Also, while Prof. C. seems quite bullish on fair use, I am a lot more skeptical. This seems like quintessential commercial poaching of someone else’s work product, where W&S is billing their client to formulate and file a motion, but instead of doing the work themselves, they just lift it wholesale from HLG. Moreover, the cases on fair use Prof. C. mentioned didn’t involve situations anywhere comparable to this one. Even W&S itself didn’t meaningfully argue fair use in their pre-suit response—they distinguished HLG’s no-fair use case, but on a totally different ground.
I also agree about the scandalous material in court filings not being protected. Dershowitz is in the news again lately because of the release of the Epstein list, but in a previous episode of that saga, I believe Dershowitz successfully had some materials stricken from a plaintiff’s filing on a similar grounds.
As Picador notes above, and I think you agree, it really depends on what is being copied. Say, for example, opposing party files a motion to remove a witness and it works. It’s a mostly dry motion but includes one arguably sarcastic comment. Now it so happens that opposing party has a witness of its own with the exact same “defects”. Substituting the names and filing the otherwise near-identical motion “right back atcha” seems like a fair use to me.
I predict a Markey quote is coming — probably from Greg.
What about boilerplate in patent applications?
I seem to remember Westlaw form books in law school for a variety of subjects.
Images and text in a patent application are typically considered part of the public domain and not protectable, although I dont know that this view is statutorily codified or has been actually litigated.
Material within an application MAY have its own (separate) copyright protection.
Here’s a quick link that puts in in simple terms: link to patents.stackexchange.com
Re: Your link to patents.stackexchange.com
Thanks for that hotlink on copyrighting of patent application content.
np – I aim to please (for those interested in actual cognitive discussions – for those who do not, my aim is to enjoy myself with a variety of rhetorical t001s including the appropriate use of ad hominem).
🙂
Without getting into the specifics of this case, I think we can all agree on the following:
1) in a legal brief, copying substantial portions of text from a published article without citation is a sign of gross incompetence
2) copying the text of a basic motion (including citations) but substituting the relevant identities/facts is almost always appropriate, and arguably even more appropriate when one’s opponent has successfully relied on the same cases and arguments. Absolutely fair use in that situation.
Probably less agreement on this but I’ll toss it out there anyway: using so-called “AI” to write documents you are submitting to a court without carefully double checking every assertion made and without confirming that there isn’t copyright infringement is also a sign of gross incompetence. Just do your job.
Can an AI be a member of a bar?
Suppose it takes the test and passes?
This happened almost a year ago now:
link to lawnext.com.
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