With several important cases at the U.S. Supreme Court and others working their way to the country’s highest court, 2020 is poised to be a big year for intellectual property law. Below is a brief summary of several cases our IP attorneys will be closely monitoring in the coming months.

Top Trademark Law Cases of 2020

Romag Fasteners Inc. v. Fossil Inc.: The U.S. Supreme Court’s decision will clarify whether willfulness is a prerequisite to an award of profits for trademark infringement under the Lanham Act. The Third, Fourth, Fifth, Sixth, Seventh, and Eleventh Circuits make an infringer’s profits available without requiring a threshold showing of willfulness. Instead, the infringer’s intent is merely one of several factors considered when determining an equitable remedy. However, the other six circuit courts of appeal have reached the opposite conclusion.

USPTO v. Booking.com BV: The issue before the Supreme Court is whether the addition of a generic top-level domain (e.g., “.com”) to an otherwise generic term can create a protectable trademark. In ruling against the USPTO, the Fourth Circuit Court of Appeals held that the public’s understanding of Booking.com, taken as a whole, establishes it as a descriptive mark rather than a generic term. However, its decision conflicts with decisions of the Federal and Ninth Circuits, which have held on materially similar facts that Hotels.com, Advertising.com, Lawyers.com, and Mattress.com are all generic.

Tiffany and Company v. Costco Wholesale Corporation: The Second Circuit Court of Appeals is poised to rule on Tiffany and Co.’s lawsuit against Costco Wholesale Corp. for selling “counterfeit” engagement rings. Tiffany alleges that Costco engaged in trademark infringement, counterfeiting, and other unlawful actions in using the word “Tiffany” on signage for diamond engagement rings sold in its big-box stores. Meanwhile, Costco maintains that it is using the word “Tiffany” in the generic context to describe the style and setting of the ring, further arguing that “Tiffany is the only word in the English language that describes this particular type of setting.” The District Court sided with Tiffany, ordering Costco to pay nearly $19 million in damages.

Top Copyright Law Cases of 2020

Google LLC v. Oracle America Inc.: An epic battle between two of the world’s biggest tech companies may have a significant impact on how software is protected under U.S. copyright law. The case centers on whether Google committed copyright infringement when it copied Oracle’s software code to build the Android mobile operating system. The Supreme Court’s decision is predicted to have a significant impact on the software industry, as it involves two important issues: whether copyright protection extends to a software interface and how to apply the fair-use doctrine in the context of computer code.

Allen v. Cooper: The Supreme Court case, which involves footage of the infamous pirate Blackbeard’s shipwreck, will determine the extent to which states can be sued for copyright infringement by private citizens. While states typically enjoy broad immunity under the Eleventh Amendment, the Copyright Remedy Clarification Act of 1990 (CRCA) sought to protect federal copyrights against infringement by States. It specifically defines potential infringers of copyright to include “any State, any instrumentality of a State, and any officer of a State or instrumentality of a State acting in his or her official capacity,” and provides that such entities and persons shall be subject to copyright liability “in the same manner and to the same extent as any nongovernmental entity.” The federal courts of appeal have struck down the CRCA as unconstitutional, ruling that Congress lacked the authority to pass it. The Supreme Court will now have the final say.

Georgia v. Public.Resource.Org Inc.: The Supreme Court will determine whether state statutory codes, including annotations, are protectable by copyright. In Banks v. Manchester, 128 U.S. 244, 253-254 (1888), the Supreme Court held that, as a matter of "public policy," that government edicts, such as judicial opinions, are not entitled to copyright protection. Lower courts have extended the so-called “government edicts doctrine” to state statutes. The issue before the Court now is whether the government edicts doctrine extends to—and thus renders uncopyrightable—works that lack the force of law, such as the annotations in the Official Code of Georgia Annotated.

Top Patent Law Cases of 2020

Thryv, Inc. v. Click-To-Call Technologies, LP: The case before the Supreme Court involves when the Patent Trial and Appeal Board’s decisions to institute review of a patent can be appealed. 35 U.S.C. § 315(b) precludes the institution of inter partes review more than one year after the petitioner “is served with a complaint” alleging infringement of the patent. The specific question is whether this one-year time bar applies when the underlying patent infringement suit has been voluntarily dismissed without prejudice.

Athena Diagnostics Inc. v. Mayo Collaborative Services, LLC: The Supreme Court may again weigh in on patent eligibility under 35 U.S.C. § 101, an issue that has become increasingly muddled since the Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012). After the Federal Circuit Court of Appeals ruled that its diagnostic test was not eligible for patent protection, Athena Diagnostics petitioned the Supreme Court for certiorari. The question it wants the Court to decide is “[w]hether a new and specific method of diagnosing a medical condition is patent-eligible subject matter, when the method detects a molecule never previously linked to the condition using novel man-made molecules and a series of specific chemical steps never previously performed.”

Arthrex, Inc. v. Smith & Nephew, Inc.: The Federal Circuit held that the appointment of the Patent Trial and Appeal Board’s (PTAB) Administrative Patent Judges (APJs) by the Secretary of Commerce violates the Appointments Clause of the U.S. Constitution. The court further concluded that neither the USPTO Director nor the Secretary of Commerce “exercise[s] sufficient direction and supervision over APJs to render them inferior officers,” citing “[t]he lack of any presidentially-appointed officer who can review, vacate, or correct decisions by the APJs combined with the limited removal power.” To avoid disrupting the entire inter partes review regime, the Federal Circuit found that “severing the portion of the Patent Act restricting removal of the APJs is sufficient to render the APJs inferior officers and remedy the constitutional appointment problem.” All of the parties have asked the federal appeals court to rehear that decision en banc.

We will continue to track the Supreme Court’s consideration of key intellectual property cases, as well as other IP cases with the potential to have a significant impact. We encourage you to check back for updates.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, Bill Samuels, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.