Case: 21-1542 Document: 17 Page: 1 Filed: 05/21/2021
`
`
`
`No. 21-1542
`
`United States Court of Appeals for the Federal Circuit
`
`
`SAS INSTITUTE INC.,
`Plaintiff - Appellant
`
`v.
`
`WORLD PROGRAMMING LIMITED,
`Defendant - Appellee
`
`
`
`On Appeal from the United States District Court for the Eastern District of Texas
`Case No. 18-cv-00295
`J. Rodney Gilstrap, Chief Judge
`
`
`
`BRIEF OF AMICI CURIAE SCHOLARS OF COPYRIGHT LAW IN
`SUPPORT OF PLAINTIFF-APPELLANTS
`AND REVERSAL
`
`
`
`
`
`
`
`
`
`
`Robert W. Clarida
`Reitler Kailas & Rosenblatt LLC
`885 Third Ave., 20th Floor
`New York, NY 10022
`(212) 209-3044
`rclarida@reitlerlaw.com
`
`Counsel for Amici Curiae
`
`
`
`
`
`
`
`

`

`Case: 21-1542 Document: 17 Page: 2 Filed: 05/21/2021
`
`FORM 9. Certificate of Interest
`
`Form 9 (p. 1)
`July 2020
`
`UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`CERTIFICATE OF INTEREST
`
`Case Number
`Short Case Caption
`Filing Party/Entity
`
`
`
`
`
`Instructions: Complete each section of the form. In answering items 2 and 3, be
`specific as to which represented entities the answers apply; lack of specificity may
`result in non-compliance. Please enter only one item per box; attach
`additional pages as needed and check the relevant box. Counsel must
`immediately file an amended Certificate of Interest if information changes. Fed.
`Cir. R. 47.4(b).
`
`I certify the following information and any attached sheets are accurate and
`complete to the best of my knowledge.
`
`Date: _________________
`
`Signature:
`
`Name:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` 21-1542
`
` SAS Institute Inc. v. World Programming Limited
`
`Scholars of Copyright Law
`
`Robert W. Clarida
`
` /s/ Robert W. Clarida
`
`05/21/2021
`
`

`

`Case: 21-1542 Document: 17 Page: 3 Filed: 05/21/2021
`
`FORM 9. Certificate of Interest
`
`1. Represented
`Entities.
`Fed. Cir. R. 47.4(a)(1).
`Provide the full names of
`all entities represented
`by undersigned counsel in
`this case.
`
`Form 9 (p. 2)
`July 2020
`
`2. Real Party in
`Interest.
`Fed. Cir. R. 47.4(a)(2).
`Provide the full names of
`all real parties in interest
`for the entities. Do not
`list the real parties if
`they are the same as the
`entities.
`
`3. Parent Corporations
`and Stockholders.
`Fed. Cir. R. 47.4(a)(3).
`Provide the full names of
`all parent corporations
`for the entities and all
`publicly held companies
`that own 10% or more
`stock in the entities.
`
`☐ None/Not Applicable ☐ None/Not Applicable
`
`Additional pages attached
`
`4
`
`4
`
`Sandra Aistars
`
`Jon Garon
`
`Hugh Hansen
`
`J. Devlin Hartline
`
`S. Todd Herreman
`
`Loren Mulraine
`
`Christopher Newman
`
`Eric Priest
`
`Mark F. Schultz
`
`Steven Tepp
`
`

`

`Case: 21-1542 Document: 17 Page: 4 Filed: 05/21/2021
`
`FORM 9. Certificate of Interest
`
`Form 9 (p. 3)
`July 2020
`
`4. Legal Representatives. List all law firms, partners, and associates that (a)
`appeared for the entities in the originating court or agency or (b) are expected to
`appear in this court for the entities. Do not include those who have already
`entered an appearance in this court. Fed. Cir. R. 47.4(a)(4).
`None/Not Applicable
`Additional pages attached
`
`5. Related Cases. Provide the case titles and numbers of any case known to be
`pending in this court or any other court or agency that will directly affect or be
`directly affected by this court’s decision in the pending appeal. Do not include the
`originating case number(s) for this case. Fed. Cir. R. 47.4(a)(5). See also Fed. Cir.
`R. 47.5(b).
`None/Not Applicable
`
`Additional pages attached
`
`6. Organizational Victims and Bankruptcy Cases. Provide any information
`required under Fed. R. App. P. 26.1(b) (organizational victims in criminal cases)
`and 26.1(c) (bankruptcy case debtors and trustees). Fed. Cir. R. 47.4(a)(6).
`None/Not Applicable
`Additional pages attached
`
`Robert W. Clarida
`
`885 Third Ave., 20th Floor
`New York, NY 10022
`
`(212) 209-3044
`rclarida@reitlerlaw.com
`
`Reitler Kailas & Rosenblatt LLC
`
`4
`
`4
`
`

`

`Case: 21-1542 Document: 17 Page: 5 Filed: 05/21/2021
`
`TABLE OF CONTENTS
`
`CERTIFICATE OF INTEREST ................................................................................. i
`
`TABLE OF AUTHORITIES ..................................................................................... v
`
`INTEREST OF THE AMICI CURIAE ...................................................................... 1
`
`SUMMARY OF ARGUMENT ................................................................................. 4
`
`ARGUMENT ............................................................................................................. 6
`
`I.
`
`THE COURT FAILED TO APPLY THE STATUTORY
`PRESUMPTION OF COPYRIGHT VALIDITY UNDER SECTION
`410(C) .............................................................................................................. 6
`
`
`II.
`
`THE COURT MISAPPLIED THE ABSTRACTION-FILTRATION-
`COMPARISON ANALYSIS ........................................................................ 16
`
`
`
`
`III. THE COURT FAILED TO SET FORTH ITS REASONING IN
`SUFFICIENT DETAIL TO PERMIT MEANINGFUL APPELLATE
`REVIEW ........................................................................................................ 21
`
`
`CONCLUSION ........................................................................................................ 25
`
`CERTIFICATE OF COMPLIANCE ....................................................................... 27
`
`
`
`
`
`iv
`
`

`

`Case: 21-1542 Document: 17 Page: 6 Filed: 05/21/2021
`
`TABLE OF AUTHORITIES
`
`
`CASES
`
`Affiliated Music Publishers, Inc. v. Ashley Publications, Inc.,
`197 F.Supp. 17 (S.D.N.Y.1961) .......................................................................... 13
`
`
`Am. Ctr. for Civil Justice v. Katchen,
`No. 19-18115 (FLW), 2020 U.S. Dist. LEXIS 126755
`(D.N.J. July 20, 2020) .................................................................................... 24, 25
`
`
`Apple Barrel Prodns, Inc. v. Beard,
`730 F.2d 384 (5th Cir. 1984) ...................................................... 11, 12, 13, 14, 15
`
`
`Baldwin Cooke Company v. Keith Clark, Inc.,
`383 F.Supp. 650 (N.D.Ill.1974), aff’d, 505 F.2d 1250 (7th Cir.1974) ................ 13
`
`
`Batiste v. Najm,
`28 F. Supp. 3d (E.D. La. 2014) ............................................................................ 18
`
`
`Bus. Mgmt. Int’l v. Labyrinth Bus. Sols., LLC,
`2009 U.S. Dist. LEXIS 24900 (S.D.N.Y. Mar. 24, 2009) ................................... 10
`
`
`Compulife Software, Inc. v. Newman,
`959 F.3d 1280 (11th Cir. 2020) .....................................................9, 18, 19, 20, 21
`
`
`Engineering Dynamics and Computer Assocs. Int’l, Inc. v. Altai, Inc.,
`982 F.2d 693 (2d Cir. 1992) .......................................................................... 16, 17
`
`
`Eng’g Dynamics, Inc. v. Structural Software, Inc.,
`26 F.3d 1335 (5th Cir. 1994) ............................................................................... 16
`
`
`eScholar, LLC v. Otis Educ. Sys.,
`2005 U.S. Dist. LEXIS 40727 (S.D.N.Y. Nov. 3, 2005) ......................... 10, 23, 24
`
`
`Feist v. Rural Tel. Serv. Co.,
`111 S. Ct. 1282 (1991) ......................................................................................... 14
`
`
`Gates Rubber v. Bando Chem. Indus.,
`9 F.3d 823 (10th Cir. 1993) ................................................................................. 16
`v
`
`
`
`

`

`Case: 21-1542 Document: 17 Page: 7 Filed: 05/21/2021
`
`
`Gen. Universal Sys., Inc. v. Lee,
`379 F.3d 131 (5th Cir. 2004) ................................................................................. 6
`
`
`Gnu Business Inf. Systs, Inc. v. The Social Secretary, Inc.,
`1993 WL 469919 (N.D. Ill. 1993) ....................................................................... 14
`
`
`In re Gioioso,
`979 F.2d 956 (3d Cir. 1992) ................................................................................ 25
`
`
`In re Ross,
`858 F.3d 779 (3d Cir. 2017) ................................................................................ 24
`
`
`Interplan Architects, Inc. v. C.L. Thomas, Inc.,
`2010 WL 4366990 (S.D. Tex. Oct. 27, 2010) ..................................................... 13
`
`
`Jacobsen v. Katzer,
`535 F.3d 1373 (Fed. Cir. 2008) ........................................................................... 17
`
`
`Jane Envy, LLC v. Infinite Classic Inc.,
`No. SA:14-CV-065-DAE, 2016 U.S. Dist. LEXIS 23621
`(W.D. Tex. Feb. 26, 2016) ............................................................................. 22, 23
`
`
`Murata Mach. USA v. Daifuku Co.,
`830 F.3d 1357 (Fed. Cir. 2016) ........................................................................... 24
`
`
`National Association of Broadcasters v. Copyright Royalty Tribunal,
`675 F.2d 367 (D.C.Cir.1982) ............................................................................... 13
`
`
`Norma Ribbon & Trimming, Inc. v. Little,
`51 F.3d 45 (5th Cir. 1995) ..................................................................................... 6
`
`
`R. Ready Prods., Inc. v. Cantrell,
`85 F. Supp. 2d 672 (S.D. Tex. 2000) ................................................................... 23
`
`
`Roy Export Company Establishment of Vaduz, Liechtenstein v. Columbia
`Broadcasting System, 672 F.2d 1095 (2d Cir.), cert. denied, 459 U.S. 826,
`103 S.Ct. 60, 74 L.Ed.2d 63 (1982) ..................................................................... 13
`
`
`
`
`
`
`vi
`
`

`

`Case: 21-1542 Document: 17 Page: 8 Filed: 05/21/2021
`
`United States v. Menza,
`137 F.3d 533 (7th Cir. 1998) ............................................................................... 24
`
`
`STATUTES
`
`17 U.S.C. § 410(c) ........................................................................................... passim
`
`Copyrights, §55, 60 Pub. L. 349, 35 Stat. 1075 (Mar. 4, 1909; repealed 1978) ....... 6
`
`OTHER AUTHORITIES
`
`Sandra Aistars et al., Copyright Principles and Priorities to Foster a Creative
`Digital Marketplace, 23 GEO. MASON L. REV. 769 (2016) ................................... 2
`
`
`AM. INTELL. PROPERTY L. ASS’N, L. PRAC. MGMT. COMM., 2019 REPORT OF THE
`ECONOMIC SURVEY (2019) ..................................................................................... 7
`
`
`Fed. R. Civ. Pro 52(a)(1), Advisory Committee Notes (1946 amendment) ............ 22
`
`H. Rep. 94-1476 (94th Cong. 2d Sess. 1976) ...................................................... 7, 15
`
`Sunil Iyengar & Bonnie Nichols, Taking Note: Monitoring the Role of
`Freelancers and Small Businesses in the Arts Economy—and Early Signs
`of COVID-19 Impact, NEA (May 7, 2020),
`https://www.arts.gov/stories/blog/2020/taking-note-monitoring-role-
`freelancers-and-small-businesses-arts-economy-and-early-signs-covid-19 ......... 3
`
`
`Russ Krajec, Current Patent Litigation Costs Are Between $2.3 to $4M,
`ASSOCIATED PRESS, Jul. 10, 2020 .......................................................................... 8
`
`
`
`Sean Pager, Making Copyright Work for Creative Upstarts,
`22 GEO. MASON L. REV. 1021 (2015) ................................................................ 2, 3
`
`
`U.S. Copyright Office, Circular 1: Copyright Basics (Mar. 2021). .......................... 7
`
`U.S. COPYRIGHT OFFICE, Copyright Small Claims (2013) ....................................... 2
`
`World IP Day 2021, WIPO MAGAZINE (Mar. 2021),
`https://www.wipo.int/wipo_magazine/en/2021/01/article_0000.html .............. 2, 3
`
`
`
`
`
`vii
`
`

`

`Case: 21-1542 Document: 17 Page: 9 Filed: 05/21/2021
`
`World Intellectual Property Day 2021-”IP and SMEs: Taking Your Ideas to
`Market”, WIPO (Apr. 22, 2021)
`https://www.wipo.int/pressroom/en/articles/2021/article_0004.html#_ftn1 ......... 2
`
`
`Douglas Y’Barbo, On Section 411 of the Copyright Code and Determining
`the Proper Scope of a Copyright Registration, 34 SAN DIEGO L. REV. 343
`(1997) ..................................................................................................................... 6
`
`
`
`
`
`
`
`
`
`
`viii
`
`

`

`Case: 21-1542 Document: 17 Page: 10 Filed: 05/21/2021
`
`INTEREST OF THE AMICI CURIAE1
`
`The amici are professors and scholars of copyright law (“Copyright Scholars”).
`
`The Copyright Scholars teach and research copyright law and other related areas of
`
`the law and/or have served in positions of authority with respect to the
`
`development and administration of copyright law in the United States. The
`
`Scholars have no stake in the outcome of this case other than their interest in
`
`ensuring that copyright law develops in a manner that respects its Constitutional
`
`and statutory basis and ensures that creativity and innovation continue to flourish.
`
`This brief was researched and written with the assistance of the Arts and
`
`Entertainment Advocacy Clinic at George Mason University’s Antonin Scalia Law
`
`School. The clinic provides pro bono counseling on copyright matters to
`
`individuals and small businesses in the creative sector who would otherwise lack
`
`access to legal advice. The clinic and its Director are particularly interested in the
`
`impact this litigation will have on small and medium enterprises in the arts.
`
`Small and Medium Enterprises (“SMEs”) account for 90% of companies
`
`world-wide and 70% of global employment.2 Honored on “World IP Day” by the
`
`
`1 Pursuant to Fed. R. App. P. 29(a)(4)(D), counsel for amici curiae states that no
`counsel for a party authored this brief in whole or in part. No counsel or party
`made a monetary contribution intended to fund the preparation of this brief, and no
`person other than amicus or its counsel made such a contribution. Pursuant to
`Federal Rule of Appellate Procedure 29(a), the parties have consented to the filing
`of this brief.
`
`
`
`1
`
`

`

`Case: 21-1542 Document: 17 Page: 11 Filed: 05/21/2021
`
`World Intellectual Property Organization in 2021 as “the unsung heroes of the
`
`global economy and an engine for growth in a post-pandemic world,”3 SMEs
`
`nevertheless are challenged by the high costs of exploiting and enforcing their
`
`intellectual property rights.4 Unlike large corporations with robust legal
`
`departments and multi-billion dollar industries with previously established
`
`reciprocal licensing channels,5 SMEs are systemically disadvantaged, for instance,
`
`by their minimal revenue to pay costly litigation fees and by the lack of available
`
`resources to oversee their exclusive rights.6 SMEs are the Jack and Jills of all
`
`trades—taking responsibility for both creative endeavors and business ventures,
`
`while simultaneously staying up-to-date with modern technologies and constantly
`
`adapting to market trends and techniques.7 If the practical ability to protect
`
`ownership in creative works is reserved for large corporate entities who must
`
`appeal to a mass audience, then much creativity is at risk of being silenced.
`
`
`
`2 See World IP Day 2021, WIPO MAGAZINE (Mar. 2021),
`https://www.wipo.int/wipo_magazine/en/2021/01/article_0000.html (last visited
`May 12, 2021).
`3 World Intellectual Property Day 2021-“IP and SMEs: Taking Your Ideas to
`Market”, WIPO (Apr. 22, 2021)
`https://www.wipo.int/pressroom/en/articles/2021/article_0004.html#_ftn1 (quoting
`WIPO Director General Daren Tang World IP Day speech).
`4 See U.S. COPYRIGHT OFFICE, Copyright Small Claims, 24-26 (2013).
`5 See generally Sean Pager, Making Copyright Work for Creative Upstarts, 22
`GEO. MASON L. REV. 1021, 1030 (2015).
`6 See id at 1033, e.g., Sandra Aistars et al., Copyright Principles and Priorities to
`Foster a Creative Digital Marketplace, 23 GEO. MASON L. REV. 769, 787-88
`(2016).
`7 See Pager, supra note 4 at 1036.
`
`
`
`2
`
`

`

`Case: 21-1542 Document: 17 Page: 12 Filed: 05/21/2021
`
`Yet, in spite of these obstacles, SMEs make contributions to diversity and
`
`inclusion, innovation, and societal edification that are at the very heart of
`
`promoting the progress of the arts and uplifting humanity as a whole.8 In the arts
`
`sector, independent artists and small businesses are the backbone for the free
`
`exchange of ideas upon which American culture relies.9 Over a third of all
`
`independent artists are self-employed and many artistic industries are dominated
`
`by small businesses, most often employing fewer than 20 employees. In recent
`
`years, just 12 artistic industries contributed a combined total of $575 billion to the
`
`nation’s GDP. According to the NEA, “nearly 20 percent ($109 billion) of this
`
`amount came from self-employed workers and small businesses alone.”10
`
`In addition to these contributions, individuals and small businesses are also
`
`uniquely suited to have a positive and direct impact on their communities because
`
`of their local connections. SMEs in the arts play vital individual roles in their
`
`communities: they teach art in schools, at youth programs, and to the elderly. They
`
`help make communities beautiful in tangible ways: contributing to sculpture
`
`
`8 See generally id. at 1034-35.
`9 See World IP Day 2021, WIPO MAGAZINE (Mar. 2021),
`https://www.wipo.int/wipo_magazine/en/2021/01/article_0000.html (last visited
`May 12, 2021).
`10 Sunil Iyengar & Bonnie Nichols, Taking Note: Monitoring the Role of
`Freelancers and Small Businesses in the Arts Economy—and Early Signs of
`COVID-19 Impact, NEA (May 7, 2020),
`https://www.arts.gov/stories/blog/2020/taking-note-monitoring-role-freelancers-
`and-small-businesses-arts-economy-and-early-signs-covid-19.
`3
`
`
`
`

`

`Case: 21-1542 Document: 17 Page: 13 Filed: 05/21/2021
`
`gardens, street art, local galleries, and shops. Among other benefits, the
`
`relationship between local artists and small businesses allows for the preservation
`
`of regional culture that might not have widespread appeal in the general public, but
`
`still preserves the valuable cultural heritage of a particular locale.
`
`Ensuring the independent artist and small business community has a realistic
`
`method for protecting creative work nurtures creativity and well-being in
`
`individual local communities around the country, and encourages cultural
`
`innovation and individual and economic flourishing on a national scale. Placing
`
`additional burdens on individuals and small businesses to defend their exclusive
`
`rights on top of the obligations already confounding them under current copyright
`
`law could threaten the economic and cultural livelihoods of our global, national
`
`and local communities in a way that harms the progress copyright law is designed
`
`to protect.
`
`
`
`SUMMARY OF ARGUMENT
`
`
`The judgment of the Court below should be reversed. The Court’s holding
`
`that Plaintiff’s works are effectively uncopyrightable in their entirety was reached
`
`through a flawed examination, in the context of a novel proceeding, that is
`
`inconsistent with both the Copyright Act and applicable case law. If sustained, this
`
`approach would significantly undermine Congressional intent of promoting and
`
`
`
`4
`
`

`

`Case: 21-1542 Document: 17 Page: 14 Filed: 05/21/2021
`
`rewarding copyright registration, and set the bar of establishing copyrightability so
`
`high that it would prejudice copyright owners not merely in the software sector,
`
`but across the full spectrum of creative works.
`
`The “Copyrightability Hearing” the court convened is foreign to copyright
`
`law and threatens to impose additional costs and burdens on parties, moving the
`
`costs of vindicating their rights further out of reach for many creators and
`
`copyright owners. The District Court accepted Defendant’s recitation of a litany of
`
`copyright doctrines, with little or no analysis, as sufficient to rebut copyrightability
`
`not merely in particular elements of Plaintiff’s works, but the works in their
`
`entirety. That court improperly failed to recognize that works may retain
`
`copyrightability even when certain elements of those works are not protectable,
`
`failing to apply the statutory presumption first enacted by Congress over a century
`
`ago. The District Court compounded that error by misapplying the case law on
`
`which it purported to rely, improperly requiring Plaintiff to re-prove the
`
`copyrightability of its works and truncating the analysis called for by case law
`
`when it was dissatisfied with the Plaintiff’s efforts. Finally, the District Court
`
`failed to provide the analysis and specificity necessary for Plaintiff, other copyright
`
`owners, and this Court to understand and evaluate its decision. For all these
`
`reasons, the decision of the District Court should be reversed.
`
`
`
`
`
`
`
`5
`
`

`

`Case: 21-1542 Document: 17 Page: 15 Filed: 05/21/2021
`
`ARGUMENT
`
`A proper application of the Copyright Act, consistent with the rulings of the
`
`Fifth Circuit, this Court, and the courts in prior copyright disputes under the Act,
`
`requires reversal of the decision below.
`
`I.
`
`THE COURT FAILED TO APPLY THE STATUTORY
`PRESUMPTION OF COPYRIGHT VALIDITY UNDER
`SECTION 410(C)
`
`The presumption of validity accompanying copyright registration, which has
`
`
`
`been in effect since the 1909 Copyright Act,11 serves the dual purposes of
`
`incentivizing copyright registration12 and preventing inefficiency during trial.13
`
`Under Section 410(c) of the current Act, a timely certificate of copyright
`
`registration gives rise to a rebuttable presumption of copyright validity in the
`
`registered work by the claimant: “In any judicial proceedings the certificate of a
`
`registration made before or within five years after first publication of the work
`
`shall constitute prima facie evidence of the validity of the copyright and of the
`
`facts stated in the certificate.” 17 U.S.C. § 410(c); Gen. Universal Sys., Inc. v. Lee,
`
`379 F.3d 131, 141 (5th Cir. 2004); Norma Ribbon & Trimming, Inc. v. Little, 51
`
`F.3d 45, 47 (5th Cir. 1995).
`
`11 Copyrights, §55, 60 Pub. L. 349, 35 Stat. 1075 (Mar. 4, 1909; repealed 1978).
`12 17 U.S.C. § 410(c).
`13 Douglas Y’Barbo, On Section 411 of the Copyright Code and Determining the
`Proper Scope of a Copyright Registration, 34 SAN DIEGO L. REV. 343, 376 (1997)
`(“[T]he rational basis for the presumption is that the court need not do what
`the Copyright Office has already done.”).
`6
`
`
`
`

`

`Case: 21-1542 Document: 17 Page: 16 Filed: 05/21/2021
`
`Congress intended the Section 410 (c) presumption as an incentive to
`
`registration. As the enacting Congress recognized, “[t]he plaintiff should not
`
`ordinarily be forced in the first instance to prove all of the multitude of facts that
`
`underline [sic] the validity of the copyright unless the defendant, by effectively
`
`challenging them, shifts the burden of doing so to the plaintiff.” H. Rep. 94-1476,
`
`at 157 (94th Cong. 2d Sess. 1976).
`
`This presumption is of vital importance to copyright owners, and is
`
`frequently cited as an inducement to register works although copyright protection
`
`attaches automatically upon fixation. U.S. Copyright Office, Circular 1:
`
`Copyright Basics at 5 (Mar. 2021). The presumption is particularly important to
`
`individual authors and small entities who struggle to afford the costs of federal
`
`litigation to adjudicate copyright claims. Imposing the costs of a Markman-like
`
`evidentiary showing of originality in every litigation would effectively render even
`
`their timely-registered works judicially unenforceable.14
`
`
`14 AM. INTELL. PROPERTY L. ASS’N, L. PRAC. MGMT. COMM., 2019 REPORT OF THE
`ECONOMIC SURVEY, 50, 54 (2019). According to the AIPLA’s 2019 report, patent
`suits with less than $1 million at risk cost $250,000 including discovery, motions,
`and claim construction, while copyright suits cost only $150,000 on average prior
`to trial. In total, including appeals if applicable, copyright suits with less than
`$1 million at risk cost $550,000 on average, as compared to $700,000 on average
`for patent suits. Id. Claim construction is an expensive aspect of this process. As
`of 2020, “the claim construction portion of a patent litigation ranges from
`$250,000 for less than $1M at risk to $2.375M for cases where $25M or more is at
`risk.” For cases with “less than $1M at risk, the trial will cost $700,000, while the
`7
`
`
`
`

`

`Case: 21-1542 Document: 17 Page: 17 Filed: 05/21/2021
`
`In the instant case, Plaintiff’s works were timely registered in the Copyright
`
`Office. Although the Court below claimed to give Plaintiff the benefit of the
`
`statutory presumption, on cross-motions for summary judgment, it nevertheless
`
`held a novel proceeding it termed a “Copyrightability Hearing” where it purported
`
`to examine the copyrightability of Plaintiff’s work. In the course of this hearing
`
`Defendant’s expert witness alleged a series of abstract legal doctrines to dispute
`
`the protectability of certain elements of Plaintiff’s copyrighted works. Appx16.15
`
`This recitation of doctrines, which the Court below called “species of
`
`unprotectability,” is referred to in this brief as the “List”.
`
` The Court seemed to be on the right track when it acknowledged
`
`“copyrightable works may contain both protectible and unprotectible elements.”
`
`Appx5. But instead of requiring Defendant to “effectively challenge” protectability
`
`as Congress intended, the Court committed reversible error for two reasons: first,
`
`because it effectively deemed Defendant’s generic allegations (contained in the
`
`
`
`very high value cases will cost $4M or more.” Russ Krajec, Current Patent
`Litigation Costs Are Between $2.3 to $4M, ASSOCIATED PRESS, Jul. 10, 2020.
`
`15 Specifically, the Defendant alleged: some of the Plaintiff’s material was in the
`public domain; because the SAS Language was “open and free for public use”;
`because Plaintiff’s work contained “unprotectable open source elements,” “factual
`and data elements,” “elements not original to [Plaintiff],” “mathematical and
`statistical elements,” “process, system, and method elements,” “well-known and
`conventional display elements, such as tables, graphs, plots, fonts, colors, and
`lines,” “material for which [Plaintiff] is not the author,” “merged elements,”
`“statistical analysis,” “scènes à faire elements,” and “short phrase elements.”
`Appx16.
`
`
`
`8
`
`

`

`Case: 21-1542 Document: 17 Page: 18 Filed: 05/21/2021
`
`List) sufficient to disprove copyrightability with regard to the entirety of the works,
`
`not merely the various elements of the works Defendant had targeted; and second
`
`(discussed in Part II, infra) because it then demanded Plaintiff re-prove the
`
`copyrightability of its registered works. The core paragraph of the Opinion reads as
`
`follows:
`
`WPL therefore produced ample evidence that unprotectable elements exist
`within and as a part of the SAS System, identifying many “species of
`unprotectability” contained in the asserted works. Once a defendant
`establishes that at least some of the material is not entitled to protection, the
`burden shifts back to the plaintiff to “face[ ] the manageable task of
`responding to the appropriately narrowed issue” and combat the allegations.
`This may occur either by showing what defendant alleges as not protectable
`actually is entitled to protection, or by coming back and showing that there
`are remaining and identifiable protectable elements that defendant copied.
`
`Appx16-17, quoting Compulife Software, Inc. v. Newman, 959 F.3d 1280, 1306
`(11th Cir. 2020).
`
`
`
`
`The Court’s error in this respect repeats itself as to all of the doctrines
`
`included in the List: “factual and data elements,” “elements not original to
`
`[Plaintiff],” “mathematical and statistical elements,” and so on. In the Court’s
`
`erroneous view, the statutory presumption of copyright validity of the entire work
`
`is thus properly rebutted if defendant establishes that “at least some” of that work’s
`
`elements are individually uncopyrightable. Id. This renders the statutory
`
`presumption a nullity and is therefore reversible error.
`
`The Court’s stated basis for rebutting the presumption of validity and
`
`holding the SAS copyrights invalid, i.e., that “at least some of the material is not
`9
`
`
`
`

`

`Case: 21-1542 Document: 17 Page: 19 Filed: 05/21/2021
`
`entitled to protection,” Appx17, is not only wrong, it is exactly the opposite of the
`
`correct standard. In Bus. Mgmt. Int’l v. Labyrinth Bus. Sols., LLC, 2009 U.S. Dist.
`
`LEXIS 24900 (S.D.N.Y. Mar. 24, 2009), for example, the Southern District of
`
`New York explained that the standard for overcoming the presumption of validity
`
`was not met where the Plaintiff “wrote at least some original code in developing
`
`customizations and modifications” for the new version of a computer program.
`
`That creation of “at least some” new code was sufficient to meet the bar
`
`for originality. Id. at *28–31. Defendant’s showing that “at least some” of SAS’
`
`code was not copyrightable is, therefore, not sufficient to show otherwise. See also
`
`eScholar, LLC v. Otis Educ. Sys., 2005 U.S. Dist. LEXIS 40727 (S.D.N.Y. Nov. 3,
`
`2005) (copyright in computer program held entitled to presumption of validity
`
`where at least some elements were original to plaintiff).
`
`As the Court below expressly states, the Defendant here merely showed, to
`
`the Court’s satisfaction, that “unprotectable elements exist within and as a part of
`
`the SAS System, identifying many ‘species of unprotectability’ contained in the
`
`asserted works.” Appx14 (emphasis added). By stopping there, without ever
`
`making a finding that every element of the SAS works was unprotectable, the
`
`Court’s holding of uncopyrightability as to the SAS works in their entireties is thus
`
`much broader than the factual findings and legal rationale offered by the Court
`
`itself can support. As such, that holding undermines the purpose of the 410(c)
`
`
`
`10
`
`

`

`Case: 21-1542 Document: 17 Page: 20 Filed: 05/21/2021
`
`presumption of validity and sets the evidentiary bar for defendants far lower than
`
`Congress intended.
`
`The presumption under 410(c) is not that every element of a work is
`
`independently copyrightable in isolation, but that the work, as registered, is
`
`copyrightable. As the House Report articulated the issue, “[t]he plaintiff should
`
`not ordinarily be forced in the first instance to prove all of the multitude of facts
`
`that underline [sic] the validity of the copyright.” (Emphasis added). The
`
`Defendant’s burden is therefore to disprove the validity of the copyright, not
`
`merely to show that “at least some” of a work’s elements are individually
`
`uncopyrightable, as the Court wrote, or that “unprotectable elements exist within
`
`and as a part of” the plaintiff’s work. Appx16.
`
`It is a truism that the existence of uncopyrightable elements within a work
`
`does not preclude a valid copyright. If that were not so, every biography and other
`
`work of non-fiction would be denied copyright in its entirety as a consequence of
`
`the uncopyrightable facts contained therein.
`
`This shifting of the burden back to Plaintiff SAS on the basis of the List was
`
`clearly erroneous under the law of the Fifth Circuit. In Apple Barrel Prodns, Inc.
`
`v. Beard, 730 F.2d 384 (5th Cir. 1984), for example, a unanimous Fifth Circuit
`
`panel rejected a Texas district court’s finding that the plaintiff’s work – a television
`
`musical program called the “The Country Kids Show” – was not copyrightable. As
`
`
`
`11
`
`

`

`Case: 21-1542 Document: 17 Page: 21 Filed: 05/21/2021
`
`the Court below did here, the District Court in Apple Barrel had impermissibly
`
`failed to analyze the plaintiff’s work as a whole, or to make factual findings with
`
`respect to it:
`
`Despite the fact that plaintiffs only alleged copyright protection over
`its show as a whole, the district court did not view the show as a
`separate entity. Instead, the court divided “The Country Kids Show”
`into three distinct areas—script, design, and format—and questioned
`whether those components were original and/or copyrightable. The
`court made fact findings, for example, that the dialogue was not the
`same as that used in defendants’ show, the songs performed in
`plaintiffs’ show were not original, and the design elements of the
`show (costumes, hay bales, American flags) were not copyrightable
`because they presented “nothing new”. Once the court determined that
`the components of “The Country Kids Show” were not original
`creations of the plaintiffs, or copyrightable by the plaintiffs,