US Supreme Court Ends Term with Several Significant IP Decisions Affecting Patent, Trademark and Copyright Law

The recently completed Supreme Court term has been a busy one in the Intellectual Property field. The Supreme Court decided two patent cases, three trademark cases and two copyright cases. Moreover, the Supreme Court deferred a third copyright case to be decided in the 2020-2021 term. The relative importance of these decisions varies, ranging from modest to significant impact in the development of Intellectual Property law.  A summary of those cases follows.

Patent cases

Peter v. NantKwest Inc.

The issue in NantKwest is whether the U.S. Patent Office is entitled to its attorney fees when a patent applicant files a district court action to appeal a decision denying patent protection. When a patent application is filed, it is initially reviewed by a Patent Examiner. If the patent applicant is not satisfied with the final conclusion of the Patent Examiner, the applicant can file an appeal with the Patent Trial and Appeal Board. If the applicant remains dissatisfied after this appeal, it has two options: it can either file an appeal to the Court of Appeals for the Federal Circuit or it can file a lawsuit in federal court seeking to overturn the rejection of the application. The patent statute authorizing the filing of the federal court action provides that the Patent Office is entitled to recoup from the applicant the expenses incurred in that action. The Patent Office recently began asserting that the expenses it is to be awarded include its attorney fees. The Supreme Court disagreed with the Patent Office and ruled that it cannot recover the salaries of its legal personnel as “expenses” for district court reviews of patent application rejections.

Thryv Inc. v. Click-To-Call Technologies LP

The issue in Thryv relates to whether certain preliminary decisions made by the Patent Trial and Appeal Board in inter-party patent challenges can be appealed. Thryv filed a petition challenging the validity of a Click-To-Call patent, asking the PTAB to institute an Inter Partes Review. Click‑To‑Call opposed the petition contending that a predecessor to Thryv was previously sued for infringing the patent and that the one-year time limit to file an IPR petition expired before Thryv’s filing. Because that prior action was dismissed, the PTAB considered the prior lawsuit a nullity and instituted the IPR proceeding. Click-To-Call appealed and the Court of Appeals for the Federal Circuit reversed. Relying on a provision in the patent statute prohibiting appeals of a PTAB decision to institute an IPR proceeding, the Supreme Court reversed the decision of the Federal Circuit, establishing the clear rule that such PTAB determinations cannot be appealed.

Trademark cases

Lucky Brand Dungarees Inc. v. Marcel Fashion Group Inc.

The issue in Lucky Brand is more a procedural issue than a trademark issue: whether a defendant is precluded from raising a defense it could have raised, but never litigated or resolved, in an earlier point in litigation against the same party. Marcel is a small apparel maker that operates under the name "Get Lucky.” Marcel has filed several lawsuits against Lucky Brand for infringing its trademarks. In the most recent case, he trial court ruled that Lucky Brand could not argue that the latest claims were barred by an earlier settlement, ruling that Lucky Brand could have raised that defense during earlier litigation and as a result has waived the defense. The Supreme Court ruled that Marcel's current action challenged different conduct and raised different claims from the earlier action. Under such circumstances, Marcel cannot preclude Lucky Brand from raising new defenses.

U.S. Patent and Trademark Office v. Booking.com B.V.

The issue in Booking.com is whether adding “.com” to the end of an otherwise generic term transforms the term into a protectable trademark. Generic terms are not entitled to trademark protection because they are not capable of serving as a distinctive designator of a source of a product or service. Booking.com argued that even though “booking” is a generic term, the term “booking.com” is capable of serving as a distinctive source designator. The Trademark Office sought a rule that the addition of “.com” at the end of a generic term does not change the generic nature of the term. The Supreme Court disagreed and ruled that there is no such rule. However, the Supreme Court cautioned that the trademark applicant must still demonstrate that the modified term is distinctive and that there is no rule that adding “.com” to a generic term automatically makes that term distinctive.

Romag Fasteners Inc. v. Fossil Inc.

The issue in Romag Fasteners relates to when a successful trademark owner is entitled to recover as part of its damages the profits earned by the infringer. Romag makes trademarked magnetic metal fasteners and sued Fossil over the use of similar fasteners. Romag sought to recover Fossil’s profits, but that award was refused because Romag could not show that Fossil infringed the trademarks willfully. The Supreme Court ruled that there is no requirement that willfulness must be shown to award profits to a successful trademark owner. The Supreme Court determined that the mindset of the infringer is an important consideration in a decision to award the infringer’s profits but is not a precondition to such an award.

Copyright cases

Allen v. Cooper

The issue in Allen v. Cooper is whether state governments have sovereign immunity from copyright lawsuits notwithstanding a federal statute authorizing copyright lawsuits against states.  In 1990, Congress passed the Copyright Remedy Clarification Act with the specific purpose of abrogating state sovereignty as it relates to copyright infringement. After the state of North Carolina was sued for using copyrighted footage of a shipwreck, the CTRCA was declared unconstitutional by the trial court.  The Supreme Court agreed, ruling that Congress lacked the constitutional power to take away such sovereign immunity.

Georgia v. Public.Resource.Org Inc.

The issue in Public.Resource.Org is whether governmental bodies can claim a copyright in certain legal texts. Georgia sued Public.Resource for republishing an annotated version of the Official Code of Georgia.  The annotated code was prepared by a private entity on behalf of Georgia’s Code Revision Commission, which is funded by the state legislature and includes many state legislators. Under a doctrine called the government edicts doctrine, copyright protection is not available for works created by state and local government officials acting in their governmental capacity. The Supreme Court ruled that the government edicts doctrine applies to the annotated code and therefore Georgia could not claim a copyright in the annotated code.

The 2020-2021 Term

As a result of the Coronavirus pandemic, the Supreme Court was unable to hear many of the arguments scheduled for April and May. The arguments in these cases were postponed and will be rescheduled for the beginning of the next term. Included among the rescheduled cases is Google LLC v, Oracle America Inc., a heavily watched copyright case that raises the issues of the copyrightability of computer code and the copyright fair use doctrine. The decision in this case will have a significant impact across many industries and including the tech industry and suggests that the 2020-2021 Supreme Court term may continue to have a major impact in further developing intellectual property law.