Winston & Strawn Copied Brief Leads to Boundary-Testing IP Suit

Imitation may be the sincerest form of flattery but Winston & Strawn LLP took it a step too far, according to the Boston boutique law firm suing it for copyright infringement and other legal professionals who reviewed the case.

Hsuanyeh Law Group PC alleged Winston attorneys filed a nearly identical copy of its motion to dismiss against a common plaintiff a day after it filed its own last August. The plaintiff itself noted the “nearly verbatim” quality of the motions in a response, and Winston’s response letter rejecting Hsuanyeh’s legal claims didn’t deny the copying. The copyright suit was filed Dec. 26 in the US District Court for the Southern District of New York.

The case raises questions about how copyright law applies to legal briefs, which often follow templates within firms and feature a number of unprotectable elements like facts and law. Circuit precedent appears to be non-existent, and district courts don’t seem to have probed the question beyond a pair of decisions that suggest copyright law can apply to legal filings.

While arguments applying the same laws to similar fact patterns will often look similar in court documents, law professors said, wholesale copying steps over the line.

“Mimicry is part of professionalism,” intellectual property law professor Justin Hughes of Loyola Marymount University said. “It’s accepted that you mimic well-written legal materials. You just don’t photocopy them.”

Winston—which declined to comment—pushed back on the allegations in a Dec. 15 letter to Hsuanyeh attached to the complaint, arguing it can’t be found to have infringed willfully because the law is unsettled. Statutory damages aren’t available, and would be paltry in any case, the firm said, while saying of actual damages: “You lost no profits from the alleged copying and Winston gained none.”

“Respectfully, we do not believe that a court will welcome your request to use the copyright law to interfere with a lawyer’s representation of its client, especially where the lawyer could have accomplished the same litigation strategy by joining the Motion,” the letter said. “The difference between allegedly copying a motion and joining it is one of form over substance, which will only further reduce any possibility of statutory damages.”

The four Winston attorneys named as defendants didn’t respond to requests for comment.

‘Good as Gold’

Hsuanyeh and Winston both represent Taiwan-based defendants—Phison Electronics Corp. and Silicon Motion Inc., respectively—who were sued June 2 by Unification Technologies LLC for infringement of the same four computer patents. The cases were consolidated for pre-trial purposes Aug. 18. Phison and Unification Technology ultimately settled their dispute in November.

But before the settlement, Hsuanyeh filed its motion to dismiss Aug. 23. That day, Shanghai-based Winston partner Ya-Chiao Chang sent a WeChat instant message to Hsuanyeh founder Hsuanyeh Chang calling the motion “impressive” in Chinese, the complaint said. The next day, California-based Winston partner Micheal R. Rueckheim—a defendant in the copyright suit along with Ya-Chiao Chang and two associates—filed the allegedly infringing brief.

The complaint said Hsuanyeh Chang reached out to Ya-Chiao Chang on WeChat the next day, twice in September, and again in November before the Winston attorney removed him from his WeChat friends list. Hsuanyeh Chang then sent an email alleging infringement that also went to Rueckheim. Two weeks later, Winston assistant general counsel Brant Weidner responded, suggesting that even if there had been copyright infringement, the claim’s monetary value would be “de minimus at best.”

That letter “doesn’t seem to be challenging the allegation,” said Dennis Kim-Prieto, a legal research law professor and reference librarian at Rutgers University. He also noted that since firms often repurpose quality briefs as templates in other cases, the value of the brief could theoretically reach beyond this case.

“Things are not looking so good for Winston,” Kim-Prieto said. “If it’s a good, useful brief it’s good as gold to the firm. Hold onto it, reuse it—it’s all work for hire, it’s all the firm’s work.”

Statutory damages and attorney fees are available if a work is registered before infringement or within three months of a work’s “publication.” Hsuanyeh’s brief was registered with the Copyright Office less than two weeks after Winston filed its alleged copycat. But in its response letter, Winston argued a filing posted on PACER—a portal for public access to court documents—didn’t meet the bar for considering it to have been published.

Online publication is unclear generally, and PACER represents another curveball, Loyola Marymount’s Hughes said. He added that it’s possible Winston is right that statutory damages may not apply in this scenario.

But legal professionals were more skeptical of Winston’s argument about profits and willfulness. Time saved from writing a legal brief clearly represents gains for the firm, Hughes said, and Winston has no basis to believe a court would find that a brief fell below the low bar of creativity required to merit copyright protection.

“What they did was pretty willful, pretty blatantly willful,” Hughes said. “Their best defense is that they unconsciously defended their clients.”

IP attorney Marsha G. Gentner of Dykema Gossett PLLC also said she didn’t understand Winston’s profits argument.

“You get paid for writing briefs, right?” she said.

Opening the Books

Kim-Prieto said the case will likely settle, and if not, Hsuanyeh may win on summary judgment on liability because Winston doesn’t even seem to contest that it copied the brief. While damages could be mitigated with some of Winston’s arguments, Kim-Prieto said, the extent of damages is “a factual question” and one Winston might not like the process of litigating.

“They’re going to have to go through the books and trace all that out,” he said. “I don’t know if the firm wants its books to be so exposed.”

The complaint cited two cases involving legal briefs and copyright law. The Southern District of New York, in a 2014 opinion in White v. West Pub. Corp., ruled that while briefs are protectable for the publisher, converting them to text-searchable documents, and creating and licensing databases constitutes fair use.

Two years later, the Central District of California rejected a fair use defense in Newegg Inc. v. Ezra Sutton PA and awarded summary judgment for infringement of a brief filed by a fellow defendant in a patent case.

Winston’s letter argued Newegg isn’t relevant because it “never reached the question of whether copyright law protects a publicly filed document or whether that right can be infringed by a co-defendant’s counsel filing a similar motion in the same case.” But Hughes said nothing in either case or copyright law suggests the existence of such an exception.

Gentner also said Winston’s claims it didn’t know it was illegal might not be enough.

“In a willfulness situation, typically the question isn’t, ‘Did you know it was illegal?’ It’s, ‘Did you intend to do the act and benefit by it?’” Gentner said, adding that relying on counsel’s advice could help but not if that advice was unreasonable. “It can’t just be, ‘My lawyer said it was ok.’”

Hughes said he couldn’t find any other relevant cases. He attributed that to “guild-like circumstances,” and analogized it to theaters not stepping on each others’ toes in a time where performance rights hadn’t yet been recognized.

“We all want to make a livelihood and respect what each other is doing,” in intellectual property law, he said.

“It’s not law,” he said, “but custom and practice.”

The case is Hsuanyeh Law Group, PC v. Winston & Strawn LLP, S.D.N.Y., No. 1:23-cv-11193.