As the Supreme Court begins its fall term, intellectual property issues loom large on its docket. The Court granted certiorari earlier this year in several matters that will affect patent, copyright, and trademark litigation, and its decisions will bring clarity to these matters, resolve circuit splits, and guide parties in their strategic decision-making.
As the fall term unfolds, keep an eye on the following:
Appealability of PTAB time-bar rulings
Granting certiorari on June 24 in Dex Media, Inc. v. Click-To-Call Technologies, LP, the Court will decide whether a party in an inter partes review (IPR) proceeding may appeal a Patent Trial and Appeal Board (PTAB) time-bar decision that affects the Board’s determination as to whether or not to institute a proceeding.
Specifically, the Court agreed to review whether 35 U.S.C. § 314(d) permits appeal of the PTAB’s decision to institute an IPR after finding the one-year time-bar in § 315(b) did not apply. This is the same issue the Federal Circuit addressed in its 2018 en banc ruling in Wi-Fi One, LLC v. Broadcom Corp., when it concluded that a decision that the time-bar did apply is appealable.
The Court will also address the question of whether a patent infringement complaint voluntarily dismissed without prejudice triggers § 315(b)’s time-bar.
State immunity for copyright infringement
In a case involving the infamous pirate, Blackbeard, the Court will decide whether Congress exceeded its Article I powers when it abrogated state sovereign immunity in federal copyright infringement suits as part of the Copyright Remedy Clarification Act (CRCA).
In Allen v. Cooper, a media company that shot video of the submerged shipwreck of the Queen Anne’s Revenge, Blackbeard’s commandeered ship, sued the state of North Carolina for using that footage without permission. After the district court denied the state’s motion to dismiss, the Fourth Circuit reversed, holding that the CRCA’s elimination of sovereign immunity in such copyright suits was unconstitutional. The Court granted certiorari on June 3.
Copyright in legal texts
The U.S. Copyright Office’s guidelines and practices, as codified in 17 U.S.C. § 105, provides that official edicts of government, such as statutes, regulations, and court decisions, cannot be the subject of protectable copyrights. Granting certiorari on June 24 in the case of Georgia, et al. v. Public.Resource.Org, Inc., the Court agreed to review the scope and extent of this prohibition.
The state of Georgia sued Public.Resource.org, an open government group, for copyright infringement after it republished an annotated version of the state’s legal code without permission, claiming the annotated code constituted “commentary” and not an “edict of government.”
Reversing the district court’s decision that granted summary judgment in the state’s favor, the Eleventh Circuit held that even the annotated form of the state’s code was “inherently public domain material” and, accordingly, not subject to copyright.
Recovering profits in trademark infringement litigation
Is “willfulness” a requirement for the award of the defendant’s profits in trademark infringement litigation? Six circuits – the First, Second, Eighth, Ninth, Tenth and D.C. – say it is. Six others – the Third, Fourth, Fifth, Sixth, Seventh, and Eleventh Circuits – say it is not.
The Court will resolve this split in Romag Fasteners, Inc. v. Fossil Inc., definitively establishing a plaintiff’s burden for obtaining profit-based damages.
Preclusion of defenses in trademark infringement cases
In Lucky Brands Dungarees, Inc. v. Marcel Fashion Group, Inc., the Court will decide whether federal preclusion principles bar a trademark infringement defendant from raising defenses that it could have asserted in a previous case between the same parties, even when the plaintiff brings new claims.
If the Court agrees with the Second Circuit that such defenses must be raised in the earlier action or be lost in a subsequent case, it would arguably require trademark defendants to assert defenses against unasserted claims to preserve those defenses in future litigation.