CASE 0:12-cv-00528-RHK-JJK Document 31 Filed 07/20/12 Page 1 of 6 UNITED STATES DISTRICT COURT DISTRICT OF MINNESOTA AMERICAN INSTITUTE OF PHYSICS and JOHN WILEY & SONS, INC., vs. Plaintiffs, SCHWEGMAN LUNDBERG & WOESSNER, P.A. and JOHN DOES NOS. 1-10, Defendants. No.: 12-CV-00528 (RHK-JJK ANSWER ANSWER Defendants Schwegman, Lundberg & Woessner, P.A. ( Schwegman and John Doe Nos. 1-10 ( Defendants for their Answer to the Complaint of Plaintiffs American Institute of Physics and John Wiley & Sons, Inc., hereby allege as follows. Unless expressly admitted or qualified herein, each and every allegation of the Complaint is denied. FIRST DEFENSE 1. Defendants admit that this purports to be an action for copyright infringement. Defendants deny the remaining allegations in Paragraph 1 of the Complaint. 2. Defendants admit that this Court has subject matter jurisdiction over the claims alleged in the Complaint.
CASE 0:12-cv-00528-RHK-JJK Document 31 Filed 07/20/12 Page 2 of 6 3. Defendants admit that venue is proper in this Court. 4. Defendants lack information sufficient to form a belief as to the truth of the allegations contained in Paragraph 4 of the Complaint and therefore deny them. 5. Defendants lack information sufficient to form a belief as to the truth of the allegations contained in Paragraph 5 of the Complaint and therefore deny them. 6. Schwegman admits that it is a law firm with its principal place of business in Minneapolis, Minnesota. 7. Defendants admit that the Complaint alleges that John Doe Nos. 1-10 are partners, associates or other employees of Schwegman, and avers that the truth of this allegation cannot be determined until such individuals are identified. 8. Defendants lack information sufficient to form a belief as to the truth of the allegations contained in Paragraph 8 of the Complaint and therefore deny them. 9. Defendants lack information sufficient to form a belief as to the truth of the allegations contained in Paragraph 9 of the Complaint and therefore deny them. 10. Defendants lack information sufficient to form a belief as to the truth of the allegations contained in Paragraph 10 of the Complaint and therefore deny them. 11. Defendants lack information sufficient to form a belief as to the truth of the allegations contained in Paragraph 11 of the Complaint and therefore deny them. 12. Defendants lack information sufficient to form a belief as to the truth of the allegations contained in Paragraph 12 of the Complaint and therefore deny them. 13. In response to the allegations contained in Paragraph 13 of the Complaint, Schwegman admits that it is engaged in the practice of law, and that the quotation in the 2
CASE 0:12-cv-00528-RHK-JJK Document 31 Filed 07/20/12 Page 3 of 6 second sentence of Paragraph 13 of the Complaint is an accurate quotation from the Schwegman website and an accurate description of services provided by Schwegman. Schwegman admits that it files and prosecutes United States patent application on behalf of its clients, and admits that Schwegman provides advice on copyright law, primarily in the area of computer software. 14. Denied. 15. Denied. 16. Defendants repeat and incorporate by reference Paragraphs 1 through 15 of this Answer as though fully set forth herein. 17. Defendants lack information sufficient to form a belief as to the truth of the allegations contained in Paragraph 17 of the Complaint and therefore deny them. 18. Denied. 19. Denied. 20. Denied. 21. In response to the allegations contained in Paragraph 21 of the Complaint, Schwegman admits that it has an obligation imposed by law to disclose to the Patent Office certain art that is material to patent applications that Schwegman is prosecuting, and that Schwegman has complied with this legal obligation. Schwegman denies that providing art to the Patent Office is distribution to the public within the meaning of Section 106 of the Copyright Act, 17 U.S.C. 106. Schwegman further avers that it conducts patent prosecution activities through a paperless system, and admits that it 3
CASE 0:12-cv-00528-RHK-JJK Document 31 Filed 07/20/12 Page 4 of 6 enters electronic or paper documents into its paperless system, and denies the remaining allegations contained in Paragraph 21 of the Complaint. 22. Defendants lack information sufficient to form a belief as to the truth of the allegations contained in the first two sentences of Paragraph 22 of the Complaint and therefore deny them. Defendants deny the allegations contained in the third sentence of Paragraph 22 of the Complaint. 23. Denied. 24. Denied. 25. Denied. SECOND DEFENSE 26. The acts complained of constitute fair use. THIRD DEFENSE 27. The acts complained of were expressly or impliedly licensed. FOURTH DEFENSE 28. Plaintiffs do not have a federal copyright registration that covers the articles allegedly copied, or contains the information required by 17 U.S.C. 409 with respect to those articles. FIFTH DEFENSE 29. A federal copyright registration is a prerequisite to a claim of infringement for U.S. works under 17 U.S.C. 411, and Plaintiffs may not assert a claim of infringement regarding unregistered U.S. works. 4
CASE 0:12-cv-00528-RHK-JJK Document 31 Filed 07/20/12 Page 5 of 6 SIXTH DEFENSE 30. A timely federal copyright registration is a prerequisite to a claim for statutory damages and attorney's fees under 17 U.S.C. 412, and Plaintiffs may not seek to recover statutory damages or attorney s fees for works that were not timely registered. SEVENTH DEFENSE 31. Plaintiffs claims are barred, in whole or part, by the doctrines of waiver, laches, estoppel and acquiescence. EIGHTH DEFENSE 32. Plaintiffs claims are barred, in whole or part, by the applicable statutes of limitations. NINTH DEFENSE 33. Plaintiffs lack standing to bring some or all of the claims asserted. PRAYER FOR RELIEF WHEREFORE, Defendants pray for judgment as follows: 1. Dismissing the Complaint with prejudice. 2. Awarding Defendants their costs and reasonable attorney s fees pursuant to 17 U.S.C. 505; and 3. Awarding such other and further relief as the Court deems just and proper. 5
CASE 0:12-cv-00528-RHK-JJK Document 31 Filed 07/20/12 Page 6 of 6 Respectfully submitted, Dated: July 20, 2012 WINTHROP & WEINSTINE, P.A. s/ Devan V. Padmanabhan Devan V. Padmanabhan (No. 240126 Sri K. Sankaran (No. 204304 225 South Sixth Street Suite 3500 Minneapolis, Minnesota 55402 (612 604-6400 Robert Clarida (pro hac vice Reitler Kailas& Rosenblatt LLC 885 Third Avenue, 20th Floor New York, NY 10022 7083434v2 Attorneys for Defendants Schwegman Lundberg & Woessner, P.A. and John Does Nos. 1-10 6