Justia Intellectual Property Opinion SummariesArticles Posted in US Supreme Court
Jack Daniel’s™ Properties, Inc. v. VIP Products LLC
VIP makes a chewable dog toy that looks like a Jack Daniel’s whiskey bottle; the words “Jack Daniel’s” become “Bad Spaniels.” “Old No. 7 Brand Tennessee Sour Mash Whiskey” turns into “The Old No. 2 On Your Tennessee Carpet.” Jack Daniel’s demanded that VIP stop selling the toy.VIP sought a declaratory judgment that Bad Spaniels neither infringed nor diluted Jack Daniel’s trademarks. Jack Daniel’s counterclaimed. The Lanham Act defines a trademark by its primary function: identifying a product’s source and distinguishing that source from others. A typical infringement case examines whether the defendant’s use of a mark is “likely to cause confusion, or to cause mistake, or to deceive,” 15 U.S.C. 1114(1)(A), 1125(a)(1)(A). A typical dilution case considers whether the defendant “harm[ed] the reputation” of a trademark. VIP cited the “Rogers test,” which requires dismissal of an infringement claim when “expressive works” are involved unless the complainant can show either that the challenged use of a mark “has no artistic relevance to the underlying work” or that it “explicitly misleads as to the source or the content of the work.” The Ninth Circuit ruled in favor of VIP.The Supreme Court vacated. When an alleged infringer uses a trademark as a designation of source for the infringer’s own goods, the Rogers test does not apply. Consumer confusion about source is most likely to arise when someone uses another’s trademark as a trademark. Bad Spaniels was not automatically entitled to Rogers’ protection because it “communicate[d] a humorous message.” VIP used the Bad Spaniels trademark and trade dress as source identifiers. Although VIP’s effort to parody Jack Daniel’s does not justify the application of the Rogers test, it may make a difference in the standard trademark analysis on remand. View "Jack Daniel's™ Properties, Inc. v. VIP Products LLC" on Justia Law
Andy Warhol Foundation for Visual Arts, Inc. v. Goldsmith
In 1984, Goldsmith, a portrait artist, granted Vanity Fair a one-time license to use a Prince photograph to illustrate a story about the musician. Vanity Fair hired Andy Warhol, who made a silkscreen using Goldsmith’s photo. Vanity Fair published the resulting image, crediting Goldsmith for the “source photograph,” and paying her $400. Warhol used Goldsmith’s photograph to derive 15 additional works. In 2016, the Andy Warhol Foundation (AWF) licensed one of those works, “Orange Prince,” to Condé Nast to illustrate a magazine story about Prince. AWF received $10,000. Goldsmith received nothing. When Goldsmith asserted copyright infringement, AWF sued her. The district court granted AWF summary judgment on its assertion of “fair use,” 17 U.S.C. 107. The Second Circuit reversed.The Supreme Court affirmed, agreeing that the first fair use factor, “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes,” weighs against AWF’s commercial licensing to Condé Nast. Both the 1984 and the 2016 publications are portraits of Prince used in magazines to illustrate stories about Prince; the “environment[s]” are not “distinct and different.” The 2016 use also is of a commercial nature. Orange Prince reasonably can be perceived to portray Prince as iconic, whereas Goldsmith’s portrayal is photorealistic but the purpose of that use is still to illustrate a magazine about Prince. The degree of difference is not enough for the first factor to favor AWF. To hold otherwise would potentially authorize a range of commercial copying of photographs, to be used for purposes that are substantially the same as those of the originals. AWF offers no independent justification for copying the photograph. View "Andy Warhol Foundation for Visual Arts, Inc. v. Goldsmith" on Justia Law
Amgen Inc. v. Sanofi
LDL cholesterol can lead to cardiovascular disease, heart attacks, and strokes. PCSK9 is a naturally occurring protein that degrades LDL receptors responsible for extracting LDL cholesterol from the bloodstream. In 2011, Amgen and Sanofi each obtained a patent for the antibody employed in a PCSK9-inhibiting drug, describing the relevant antibody by its unique amino acid sequence. Amgen obtained two additional patents in 2014 that relate back to its 2011 patent and purport to claim “the entire genus” of antibodies that “bind to specific amino acid residues on PCSK9,” and “block PCSK9 from binding.” Amgen identified the amino acid sequences of 26 antibodies that perform those functions and described “roadmap” and “conservative substitution” methods for making other antibodies that perform the described functions.Amgen sued Sanofi for infringement. Sanofi argued that Amgen’s relevant claims were invalid under the “enablement” requirement, which requires a patent applicant to describe the invention “in such full, clear, concise, and exact terms as to enable any person skilled in the art” to make and use the invention,” 35 U.S.C. 112(a), characterizing the methods Amgen outlined for generating additional antibodies as a trial-and-error process.The district court, the Federal Circuit, and the Supreme Court sided with Sanofi. If a patent claims an entire class of processes, machines, manufactures, or compositions of matter, its specification must enable a person skilled in the art to make and use the entire class. The claimed class of antibodies does not include just the 26 that Amgen described by their amino acid sequences, but many additional antibodies. The “roadmap” and “conservative substitution” approaches are little more than research assignments. View "Amgen Inc. v. Sanofi" on Justia Law
Unicolors, Inc. v. H&M Hennes & Mauritz, L. P.
Unicolors, the owner of fabric design copyrights, successfully sued H&M for copyright infringement, 17 U.S.C. 411(a). H&M argued that Unicolors knowingly included inaccurate information on its registration application, rendering its registration invalid; Unicolors had filed a single application seeking registration for 31 separate works despite a regulation that provides that a single application may cover multiple works only if they were “included in the same unit of publication.” H&M argued that Unicolors had made some of the designs available for sale exclusively to certain customers while offering the rest to the general public.The Ninth Circuit determined that it did not matter whether Unicolors was aware that it had failed to satisfy the single unit of publication requirement because the safe harbor excused only good-faith mistakes of fact, not law; Unicolors knew the relevant facts.The Supreme Court vacated. Section 411(b) does not distinguish between mistakes of law and mistakes of fact. Under the safe harbor, a certificate of registration is valid, even though it contains inaccurate information if the copyright holder lacked “knowledge that it was inaccurate.” If Unicolors was not aware of the legal requirement that rendered its application inaccurate, it could not have included the inaccurate information “with knowledge that it was inaccurate.” Legislative history indicates that Congress enacted section 411(b) to make it easier for nonlawyers to obtain valid copyright registrations by “eliminating loopholes” that allowed infringers to exploit mistakes in the application process. The Court noted that willful blindness may support a finding of actual knowledge and circumstantial evidence may demonstrate that an applicant was aware of, or willfully blind to, legally inaccurate information. View "Unicolors, Inc. v. H&M Hennes & Mauritz, L. P." on Justia Law
Minerva Surgical, Inc. v. Hologic, Inc.
Truckai invented NovaSure to treat abnormal uterine bleeding using a moisture-permeable applicator head to destroy targeted cells. Truckai filed a patent application and assigned the application and future continuation applications, to his company, Novacept. Novacept and its patents and patent applications were acquired by Hologic. Truckai founded Minerva and developed a supposedly improved device to treat abnormal uterine bleeding, using a moisture-impermeable applicator head to remove cells. The Patent and Trademark Office (PTO) issued a patent; the FDA approved the device for sale. Hologic filed a continuation application, seeking to add claims to its NovaSure patent--one claim encompassed applicator heads generally, without regard to whether they are moisture permeable. The PTO issued the altered patent.Hologic sued Minerva for infringement. Minerva argued that Hologic’s patent was invalid because the new claim did not match the written description. Hologic invoked the assignor estoppel doctrine: Because Truckai had assigned the original application, he and Minerva could not impeach the patent’s validity. The Federal Circuit agreed.The Supreme Court vacated. Assignor estoppel is a valid defense, based on the need for consistency in business dealings, but applies only when the assignor’s claim of invalidity contradicts explicit or implicit representations made in assigning the patent. Concerns with the assignor taking contradictory positions do not arise when an assignment occurs before an inventor can make a warranty as to specific claims, such as when an employee assigns to his employer patent rights in future inventions; when a later legal development renders irrelevant the warranty given at the time of assignment; and when a post-assignment change in patent claims can remove the rationale for applying assignor estoppel. The Federal Circuit failed to recognize these boundaries, deeming “irrelevant” the question of whether Hologic had expanded the assigned claims. If Hologic’s new claim is materially broader than what Truckai assigned, Truckai could not have warranted its validity. View "Minerva Surgical, Inc. v. Hologic, Inc." on Justia Law
United States v. Arthrex, Inc.
Administrative Patent Judges (APJs) conduct adversarial proceedings for challenging the validity of an existing patent before the Patent Trial and Appeal Board (PTAB), 35 U.S.C. 6(a), (c). The Secretary of Commerce appoints PTAB members, including APJs, except the Director, who is nominated by the President and confirmed by the Senate. APJs concluded that Arthrex’s patent was invalid. The Federal Circuit concluded that the APJs were principal officers who must be appointed by the President with the advice and consent of the Senate; their appointment was unconstitutional. To remedy this violation, the court invalidated the APJs’ tenure protections, making them removable at will by the Secretary.The Supreme Court vacated. The unreviewable authority wielded by APJs during patent review is incompatible with their appointment by the Secretary to an inferior office. Inferior officers must be “directed and supervised at some level by others who were appointed by Presidential nomination with the advice and consent of the Senate.” While the Director has administrative oversight, neither he nor any other superior executive officer can directly review APJ decisions. A decision by the APJs under his charge compels the Director to “issue and publish a certificate” canceling or confirming patent claims he previously allowed. Given the insulation of PTAB decisions from executive review, APJs exercise power that conflicts with the Appointments Clause’s purpose “to preserve political accountability.”Four justices concluded that section 6(c) cannot constitutionally be enforced to prevent the Director from reviewing final APJ decisions. The Director may review final PTAB decisions and may issue decisions on behalf of the Board. Section 6(c) otherwise remains operative. Because the source of the constitutional violation is the restraint on the Director’s review authority not the appointment of APJs, Arthrex is not entitled to a hearing before a new panel. View "United States v. Arthrex, Inc." on Justia Law
Google LLC v. Oracle America, Inc.
Oracle owns a copyright in Java SE, a computer platform. Google acquired Android and sought to build a new software platform for mobile devices. To allow millions of programmers familiar with Java to work with its new platform, Google copied roughly 11,500 lines of code from Java SE. The copied lines allow programmers to call upon prewritten computing tasks for use in their own programs. The Federal Circuit held that the copied lines were copyrightable and reversed a jury’s finding of fair use.The Supreme Court reversed. Google’s copying of code lines needed to allow programmers to put their talents to work in a transformative program was fair use as a matter of law. Copyright protection cannot extend to “any idea, procedure, process, system, method of operation, concept, principle, or discovery,” 17 U.S.C. 102(b), and a copyright holder may not prevent another from making a “fair use” of a copyrighted work.Assuming that the copied lines can be copyrighted, the Court focused on “fair use.” The “right of trial by jury” does not include the right to have a jury resolve a fair use defense. Unlike other types of code, much of the copied material's value derives from the investment of users (computer programmers) who have learned the system; application of fair use here is unlikely to undermine the general copyright protection for computer programs. The “purpose and character” of this use is transformative. Google copied only about 0.4 percent of the entire program at issue and that was tethered to a valid, transformative, purpose. Google’s new smartphone platform is not a market substitute for Java SE; the copyright holder would benefit from the reimplementation of its interface into a different market. Enforcing the copyright on these facts risks causing creativity-related harms to the public. View "Google LLC v. Oracle America, Inc." on Justia Law
Patent and Trademark Office v. Booking.com B.V.
A generic name—the name of a class of products or services—is ineligible for federal trademark registration. Booking.com, a travel-reservation website, sought federal registration of marks including the term “Booking.com.” Concluding that “Booking.com” was a generic name for online hotel-reservation services, the U.S. Patent and Trademark Office (PTO) refused registration. The Fourth Circuit affirmed the District Court decision that “Booking.com”—unlike the term “booking” standing alone—is not generic.The Supreme Court affirmed. A term styled “generic.com” is a generic name for a class of goods or services only if the term has that meaning to consumers. Whether a compound term is generic turns on whether that term, taken as a whole, signifies to consumers a class of goods or services. Consumers do not perceive the term “Booking.com” that way. Only one entity can occupy a particular Internet domain name at a time, so a “generic.com” term could convey to consumers an association with a particular website. An unyielding legal rule disregarding consumer perception would be incompatible with a bedrock principle of the Lanham Act. The PTO’s policy concerns do not support a categorical rule against the registration of “generic.com” terms. Several doctrines ensure that registration of “Booking.com” would not yield its holder a monopoly on the term “booking.” View "Patent and Trademark Office v. Booking.com B.V." on Justia Law
Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc.
Lucky Brand and Marcel market clothing. Marcel registered the trademark “Get Lucky.” Lucky Brand registered the trademark “Lucky Brand” and other marks with the word “Lucky.” In a 2003 settlement agreement, Lucky Brand agreed to stop using the phrase “Get Lucky.” Marcel released its claims regarding Lucky Brand’s use of its other trademarks.In 2005, Lucky Brand sued Marcel for violating its trademarks. Marcel filed counterclaims turning on Lucky Brand’s continued use of “Get Lucky,” but did not claim that Lucky Brand’s use of its other marks alone infringed that mark. The court enjoined Lucky Brand from copying or imitating Marcel’s “Get Lucky” mark.In 2011, Marcel sued Lucky Brand, arguing only that Lucky Brand’s post-2010 use of Lucky Brand’s other marks infringed Marcel’s “Get Lucky” mark. Marcel did not allege that Lucky Brand continued to use "Get Lucky." Lucky Brand argued, for the first time since early in the 2005 Action, that Marcel had released those claims in the settlement agreement. The Second Circuit vacated the dismissal of the action, concluding that “defense preclusion” prohibited Lucky Brand from raising that unlitigated defense.A unanimous Supreme Court reversed. Any preclusion of defenses must, at a minimum, satisfy the strictures of issue preclusion or claim preclusion. Here, issue preclusion does not apply, so the causes of action must share a “common nucleus of operative fact[s]” for claim preclusion to apply. The 2005 claims depended on Lucky Brand’s alleged use of “Get Lucky.” In the 2011 suit, Marcel alleged that the infringement was Lucky Brand’s use of its other marks containing the word “Lucky,” not any use of “Get Lucky” itself. The conduct in the 2011 suit occurred after the conclusion of the 2005 suit. View "Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc." on Justia Law
Georgia v. Public Resource.Org, Inc.
The Official Code of Georgia Annotated (OCGA) includes the text of every Georgia statute currently in force. Non-binding annotations appear beneath each statutory provision, typically including summaries of judicial opinions construing each provision, summaries of pertinent attorney general opinions, and a list of related law review articles and other reference materials. The OCGA is assembled by the Code Revision Commission, a state entity composed mostly of legislators, funded through legislative branch appropriations, and staffed by the Office of Legislative Counsel. The current OCGA annotations were produced by a private publisher, pursuant to a work-for-hire agreement, which states that any copyright in the OCGA vests in the state, acting through the Commission. A nonprofit, dedicated to facilitating public access to government records and legal materials, posted the OCGA online and distributed copies. The Commission sued for infringement under the Copyright Act, 17 U.S.C. 102(a).The Eleventh Circuit and the Supreme Court held that OCGA annotations are ineligible for copyright protection. Under the government edicts doctrine, officials empowered to speak with the force of law cannot be the authors of the works they create in the course of their official duties. The Court noted long-standing precedent that an official reporter cannot hold a copyright interest in opinions created by judges; no one can own the law. The doctrine applies to whatever work legislators perform in their capacity as legislators, including explanatory and procedural materials they create in the discharge of their legislative duties. The sole “author” of the annotations is the Commission, which functions as an arm of the Georgia Legislature and creates the annotations in the discharge of its legislative duties. The Court focused on authorship, stating that Georgia’s characterization of the OCGA annotations as non-binding and non-authoritative undersells the practical significance of the annotations to litigants and citizens. View "Georgia v. Public Resource.Org, Inc." on Justia Law