2020 has been, and likely will continue to be, a year of great significance, and the outcome of intellectual property cases before the United States Supreme Court this year is no exception. Here is a rundown of the Court’s 2020 IP decisions, and a preview of what’s to come.
Lucky Brand Dungarees, Inc. v. Marcel Fashions Grp., Inc., 140 S. Ct. 1589 (2020).
On May 14, 2020, the U.S. Supreme Court addressed whether res judicata absolutely bars a party from asserting a defense that it could have raised in a prior suit. In a unanimous ruling, the Court held that a party is not precluded from raising defenses submitted in earlier litigation between the parties when a subsequent lawsuit lacks a common nucleus of operative facts because it challenges different conduct and raises different claims from earlier litigation between the same parties.
Specifically, the trademark infringement disputes between Marcel and Lucky spanned many years and involved different operative facts. In their most recent case, Lucky argued that Marcel had released its claims by an earlier settlement in a prior lawsuit. The district court agreed with Lucky but the Second Circuit disagreed reasoning that the doctrine of “defense preclusion” prohibited Lucky from raising the release defense because it could have, but failed to, raise it in a previous lawsuit between the parties. The Supreme Court reversed the appeals court holding that Lucky was not precluded from raising a new defense because the most recent lawsuit challenged different conduct and raised different claims.
United States PTO v. Booking.com B.V., 140 S. Ct. 2298 (2020).
On June 30, 2020, the U.S. Supreme Court addressed whether there is a per se rule against trademark protection for a “generic.com” term. Ultimately, the Court declined to adopt such a rigid rule.
Initially, the Patent and Trademark Office found “booking.com” generic and therefore unregistrable, which led Booking.com to seek review in the district court for the Eastern District of Virginia. The district court found that “booking.com”—unlike “booking”—is not generic and the appellate court affirmed. The Supreme Court agreed and declined to make a rule “that ‘generic.com’ terms are capable of signifying only an entire class of online goods or services and, hence are categorically incapable of identifying a source.” In so holding, the Court clarified that it also does not “embrace a rule automatically classifying such terms as nongeneric.” Rather, whether any given “generic.com” term is generic, depends on whether consumers in fact perceive that term as the name of a class or, instead, as term capable of distinguishing among members of the class.”
Romag Fasteners, Inc. v. Fossil Grp., Inc., 140 S. Ct. 1492 (2020).
On April 23, 2020, the U.S. Supreme Court resolved a circuit split on whether a plaintiff must prove that a defendant acted willfully in order to recover the profits made by a trademark infringer in a Lanham Act suit. In a unanimous ruling, the Court held that willful infringement is not a prerequisite, stating that “[a] plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award.”
Previously, the jury found in favor of Romag regarding its trademark infringement claim. But despite finding that Fossil had acted with “callous disregard” for Romag’s trademark rights, the jury declined to find Fossil’s infringement willful. Accordingly, the district court found that Romag was not entitled to an award of Fossil’s profits because willfulness is a necessary requirement for an award of profits. The Federal Circuit affirmed the district court’s decision. In reaching its decision, the Court reasoned that courts should avoid reading words into the statute. If Congress intended to add a willfulness prerequisite it could have done so expressly as it had done for trademark dilution.
Thryv, Inc. v. Click-To-Call Techs., LP, 140 S. Ct. 1367 (2020).
On April 20, 2020, the U.S. Supreme Court decided whether a party can appeal a Patent Trial and Appeal Board’s (“PTAB”) decision to institute an inter partes review upon finding that the request to institute an inter partes review was not time barred. The Court held that Section 314(d), prohibiting appeals of a PTAB decision to institute an inter partes review proceeding, precludes judicial review of PTAB’s application of Section 315(b)—time prescription.
Observing precedent, the Court reiterated that “§314(d) bars review at least of matters ‘closely tied to the application and interpretation of statutes related to’ the institution decision.” The Court also found the PTAB’s application of Section 315(b)’s time limit to be “closely related to its decision whether to institute inter partes review[.]” Based on this relationship, the Court found §314(d) rendered PTAB’s application of 315(b) unappealable.
Allen v. Cooper, 140 S. Ct. 994 (2020).
On March 23, 2020, the U.S. Supreme Court decided that Congress did not have the authority to abrogate states’ sovereign immunity from copyright infringement suits in the Copyright Remedy Clarification Act (“CRCA”).
In this case, North Carolina was sued for using copyrighted footage of a shipwreck. The state argued that the CRCA did not effectively abrogate state sovereign immunity and that individuals were still precluded from suing states for copyright infringement. The Court agreed concluding that the CRCA is akin to the “Patent Remedy Act, which, like the CRCA, attempted to put ‘States on the same footing as private parties’ in patent infringement suits[.]” Since, the Court had already found Congress was precluded from using its Article I Prowers “to circumvent” the limits sovereign immunity “place[s] upon federal jurisdiction[,]” the Court held that “Article I cannot support the CRCA.”
Georgia v. Public.Resource.Org, Inc., 140 S. Ct. 1498 (2020).
On April 27, 2020, the U.S. Supreme Court addressed whether the Copyright Act’s decades-long monopoly protection for original works of authorship “extends to the annotations contained in Georgia’s official annotated code.” In a 5-4 decision, the Court held that the “government edicts doctrine”—a doctrine that precludes copyright protection of judicial opinions and statutes—applies to the annotations prepared and adopted by the legislature.
The Court observed that for purposes of the Copyright Act, judges cannot be “authors.” As with judges, the legislators have the authority to make law, and thus “they, too, cannot be authors.” Because judges cannot assert copyright in “whatever work they perform in their capacity as judges[,]” legislators, too, cannot assert copyright in “whatever work legislators perform in their capacity…including explanatory and procedural materials they create in the discharge of their legislative duties.” Legislators are the author of annotation and create them in the discharge of their legislative duties. Therefore, Georgia could not claim a copyright in the annotated code.
What’s Coming Next
One of the most significant decisions that we will see shortly is in the case of Google LLC v. Oracle America Inc., which involves issues related to the copyrightability of computer code and the copyright fair use doctrine. Arguments for the case began on Wednesday, October 7, 2020. We will continue to keep you updated on this case, and other cases of significance, moving forward.