Joseph C. Gratz

As a copyright and trademark litigator, Gratz, a Durie Tangri LLP partner, represents clients such as Facebook Inc., Amazon Inc., Apple Inc. and Google LLC in federal court litigation, establishing new law at the intersection of IP law and the internet.

One current case gets down to basics.

"The fundamental issue here is whether the law belongs to everybody or can be privately owned," Gratz said in describing his role as lead counsel in defense of San Francisco software startup UpCodes Inc., which makes U.S. state and local construction and building codes searchable online for free.

Suing the startup is International Code Council, a nonprofit trade group that coordinates the development of model building codes. The council claims a copyright to the text of the codes and is seeking an injunction and damages from UpCodes and its founders. International Code Council Inc. v. UpCodes Inc., 1:17-cv-06261 (S.D. N.Y., filed Aug. 17, 2017).

The question resonates nationally, Gratz said, as the U.S. Supreme Court in June 2019 granted cert in a case with some similar issues, Georgia v. Public.Resource.Org Inc., 18-1150. "The fact of the cert grant may affect the ultimate rational for what the court does in our case. How do [copyright] rules set out in the 1800s apply today?"

In his motion for partial summary judgment, Gratz argued International Code Council cannot copyright the law, and that if there is some copyright interest in the text of the law, UpCodes' publication of building codes is protected by the fair use doctrine.

"Everyone has the right to speak the law," his motion reads. "Nobody--not the government, and not a private party--can control who is permitted to speak the law, and nobody may charge fees for the privilege."

Gratz said his clients founded UpCodes in a studio apartment in San Francisco's Mission District. "It's a lean and scrappy operation," he added.

In a case over academic publishing rights, he represents ResearchGate, a website that allows authors of scholarly works to upload and share their articles. A publisher of scientific journals sued for copyright infringement, contending that ResearchGate acted unlawfully by allowing scientists to upload their own articles. Gratz said the litigation involves significant and potentially novel copyright and Digital Millennial Copyright Act issues and implicates the rights and interests of academic authors, journal publishers and internet intermediaries. American Chemical Society and Elsevier Inc. v. Researchgate Gmbh, 8:18-cv-03019 (D. Md., filed Oct. 2, 2018.

The case is in discovery.

"The academic journal publishing market is odd--the people who write the articles don't get paid, and Elsevier's profit margin is around 40 percent," Gratz said. "Then along comes Twitter, Facebook and LinkedIn, where people want to share what they're doing. For scientists, that makes perfect sense. Getting your next job is partly about what papers you publish. This, Elsevier says, is a scandal that cannot be allowed to continue."

So far Gratz and his opposing counsel have litigated a motion over whether scientists retain a copyright interest in their papers. U.S. District Judge George J. Hazel of Greenbelt, Md., said it's too early in the case to decide.

"New technology presents challenges to old and entrenched businesses that use copyright in ways that are at least counterintuitive or unfair," Gratz said.

-- John Roemer