Intellectual property docket at Supreme Court (2016)

Many outlets are reporting on the Supreme Court's intellectual property docket this year. There are four intellectual property cases on the docket - with more pending decisions on their writs of certiorari. Yet, it seems that the world has forgotten 2014. In 2014 the Supreme Court had six patent cases on its docket and two copyright cases on its docket. We discuss two of this years' cases below.

Intellectual property law is primarily the law surrounding patents, copyrights, and trademarks. It may also be construed as covering other issues like rights to publicity as the lines between legal theories blur with the increasing utilization of the internet.

Samsung v. Apple

Of course, the most famous case that is up for a decision. Why does the public cares? Its big name tech companies that people see every day. Why intellectual property lawyers care? Where does copyrightable artistic expression end and functionality begin?

There are different types of intellectual property to solve certain problems or incentivize certain actions. Copyrights are meant to spur artistic creativity. They are not meant to provide an incentive for useful inventions. That is the domain of patent law. Or, as we have argued in Phoenix Entertainment Partners cases, it is important to keep trademark law (source identifier for goods and services) separate from copyright law. The Samsung v. Apple case will, hopefully, clear up the separation between design patents and utility patents. One position, that of the amicus curiae brief of 37 intellectual property professors, is that the Court should reject an ordinary observer test for infringement and resurrect the forgotten functionality doctrine. 

Many design patents cover designs that include clearly functional features, and many cover designs whose ornamentality in any ordinary sense of the term is questionable at best. See Mark A. Lemley & Mark P. McKenna, Scope, __ Wm. & Mary L. Rev. __ (forthcoming 2016), available at http://ssrn.com/abstract=2660951. But under current Federal Circuit law, the jury is no longer required to exclude those functional elements from consideration when it decides infringement. Under the Federal Circuit’s unguided ordinary observer test, it is all too possible that a design patent owner will be able to prevent competitors from copying utilitarian features that are unprotectable under utility patent law.

Lee v. Tam

Should the United States Patent and Trademark Office bar disparaging trademarks? Perhaps the most famous, and thus most controversial, could be the Washington Redskins brand. But, what if an Asian American band called itself The Slants? More importantly, should the USPTO be filling in the role of a moral decision-maker, or is that a violation of the First Amendment?

The legal question? Does the disparagement provision of the Lanham Act an unconstitutional restriction of free speech  as protected by the First Amendment. That provision, 15 U.S.C. 1052(a), dictates that no trademark application will be rejected unless, among other items listed it "consists of . . . matter which may disparage . . . persons, living, or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute."

Tam concerns an Oregon band. Its trademark application for registration was denied as disparaging to asians. The proposed mark? The Slants. Dissimilarly, the Redskins already had a trademark registration. But in 2014, the USPTO revoked it after a cancellation proceeding brought by Native American rights activists. It is likely that the Redskins will try to have their voice heard as well.