Direct™

On June 29, 2023, the Supreme Court vacated and remanded the 10th Circuit's decision in Abitron v. Hetronic. The Court held that the Lanham Act’s causes of action for trademark infringement do not rebut a canon of statutory construction—the presumption against extraterritoriality. Accordingly, any triggering conduct for Lanham Act liability must be domestic, and the Court held that the relevant triggering conduct is “infringing ‘use in commerce.’” The decision is in part inconsistent with the amicus brief filed by AIPLA on December 26, 2022. To read the opinion of the Court, please click here.

On May 18, 2023, the Supreme Court ruled that the Andy Warhol Foundation (AWF) violated Lynn Goldsmith’s copyright. As advocated in AIPLA’s Amicus Brief filed on June 17, 2022, the Court confirmed that a fair use analysis involves weighing all the statutory factors, and that a fair use analysis is an objective inquiry. To read the opinion of the Court, please click here.

On May 18, 2023, the Supreme Court unanimously upheld the U.S. Court of Appeals for the Federal Circuit’s decision finding Amgen’s patent invalid. This ruling is consistent with the amicus brief filed by AIPLA on February 10, 2023. To read the opinion of the Court, please click here.

On June 8, 2023 the Supreme Court vacated and remanded the lower court's ruling in Jack Daniel’s Properties Inc. v. VIP Products LLC. This ruling is consistent with the outcome encouraged by the amicus brief filed by AIPLA on January 18, 2023. To read the opinion of the Court, please click here.

On February 24, 2022 the U.S. Supreme Court Vacated and Remanded the Ninth Circuit’s decision in Unicolors, Inc. v. H&M Hennes and Mauritz, LP. This ruling is consistent with the amicus brief filed by AIPLA on August 10, 2021.

On June 29, 2021, the U.S. Supreme Court ruled to keep the doctrine of assignor estoppel, but with limits on its application. This ruling is consistent with the amicus brief filed by AIPLA on March 1, 2021.

On June 21, 2021, the U.S. Supreme Court reversed and vacated the Federal Circuit decision, dividing 5-4 on the judgment in United States v. Arthrex, Inc. In this majority opinion, the Supreme Court held that the unreviewable authority wielded by Administrative Patent Judges (APJs) during inter partes review is constitutionally incompatible with their appointment by the Secretary of Commerce to an inferior office.

On April 5, 2021, the US Supreme Court overturned Oracle’s copyright win over Google, holding that Google’s use of Oracle’s programming code from the Java SE Application Programming Interface (API) in their Android platform was a fair use and did not violate copyright laws. The Court determined that Google’s use of only the code that was needed to allow programmers to work in a new and transformative program was a fair use of that material. Writing for a 6-2 majority, Justice Breyer declined to address the first question on copyrightability and instead resolved the case focusing on the question of fair use by referencing the four guiding factors in the Copyright Act’s fair use provision. Justice Thomas filed a dissenting opinion that the ruling bypasses the question of whether the software code is protected by the Copyright Act. AIPLA filed an amicus brief in this case on January 13, 2020.

On October 13, 2020, the Supreme Court agreed to decide whether the Patent Trial and Appeal Board, as created by the AIA, violates the Appointments Clause in Article II of the Constitution. The Court granted certiorari in three consolidated cases (United States v. Arthrex, Inc., et al. 19-1434; Smith & Nephew, Inc., et al. v. Arthrex, Inc., et al., 19-1452; and Arthrex, Inc., v. Smith & Nephew, Inc., et al., 19-1458), but limited its review to two specific questions

In this edition of AIPLA Direct Live, AIPLA President Barbara A. Fiacco asks the Honorable Chris Coons, United States Senator from Delaware, about the state of the intellectual property landscape.

Senator Tillis speaks on his tenure as Chairman of the Senate Judiciary IP Subcommittee, the need for strong intellectual property protection, Section 101 reform, DMCA review, oversight over the USPTO and the Copyright Office, and more.

On June 30, 2020, the U.S. Supreme Court held that the addition of “.com” to a generic term can create a protectable trademark, affirming a decision by the U.S. Court of Appeals for the Fourth Circuit. United States Patent and Trademark Office v. Booking.com B.V., U.S., No. 19-46. In doing so, the Court rejected the United States Patent and Trademark Office's (USPTO) "nearly per se rule" that when a generic term is combined with a generic top-level domain the resulting combination is generic.

On May 14, 2020, the US Supreme Court reversed and remanded the US Court of Appeals for the Second Circuit's decision in Marcel Fashions Grp., Inc. v. Lucky Brand Dungarees, Inc., et al. No. 2017-0361, (2nd. Cir.), ruling that federal preclusion principles do not bar Lucky Brand Dungarees, Inc. (Lucky Brand) from raising a defense it failed to litigate in an earlier suit between it and Marcel Fashions Group, Inc. (Marcel).

Copyright protection does not extend to works produced by judges or legislators in the course of their official duties, the United States Supreme Court held on April 27, 2020. Georgia v. Public.Resource.Org, Inc., U.S., 18-1150.

On April 23, 2020, the United States Supreme Court vacated and remanded the US Court of Appeals for the Federal Circuit's decision in Romag Fasteners, Inc. v. Fossil, Inc., No. 2018-2417 (Fed. Cir. 2019), ruling that a plaintiff is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award.

The United States Supreme Court on April 20, 2020, held that 35 U.S.C. § 314(d), which states that the Patent Trial and Appeal Board's (PTAB) decision to institute an inter partes review (IPR) is nonappealable, also precludes judicial review of a time bar determination under 35 U.S.C. § 315(b).

The United States Patent and Trademark Office (USPTO) cannot recover the pro rata salaries of its legal personnel under § 145 of the Patent Act, the Supreme Court held December 11, 2019. Peter vs. NantKwest, Inc., U.S., No. 18-801, 12/11/19.

On June 24, 2019, the Supreme Court upheld the Federal Circuit's decision in In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017), ruling that the Lanham Act provision which bars the registration of “immoral[ ] or scandalous” trademarks violates the First Amendment. Iancu v. Brunetti, No. 18-302, 6/24/2019.

The USPTO has appointed Scott R. Boalick as Chief Judge for the Patent Trial and Appeal Board (PTAB).