United States: U.S. Supreme Court Grants Certiorari For Two Cases Having Important Consequences For Patent And Copyright Litigation

Diapers and cheerleader uniforms—those are the intellectual-property rights that the United States Supreme Court agreed to adjudicate on May 2, 2016. The Court's decisions in these two cases—SCA Hygiene Products v. First Quality Baby Products and Star Athletica LLC v. Varsity Brands, Inc.—will unquestionably have significant ramifications for future patent and copyright litigation.

In SCA, a case involving a patent on diapers, the Supreme Court agreed to review the Federal Circuit's 6–5 en banc decision in order to consider "[w]hether and to what extent the defense of laches may bar a claim for patent infringement brought within the Patent Act's six-year statutory limitations period." The en banc Federal Circuit upheld the viability of the laches defense in patent litigation after considering whether the Supreme Court's recent decision in the "Raging Bull" copyright case of Petrella v. Metro-Goldwyn-Mayer, 134 S. Ct. 1962 (2014)—holding that laches is inapplicable when a copyright-infringement action is brought within the Copyright Act's statutory limitations period—warranted a similar conclusion for patent cases. Petrella explained that laches is a "gap-filling, not legislation-overriding" defense, id. at 1974, and therefore does not apply when "an infringement suit seeks relief solely for conduct occurring within the limitations period." Id. at 1967. The Court in Petrella reserved the question of whether the same rule applied in the patent context, noting that it did not have "occasion to review the Federal Circuit's position" regarding applicability of the laches defense to patent-infringement actions. Id. at 1974 n.15.

In SCA, Chief Judge Sharon Prost—writing for herself and five other judges—concluded that, besides the bar in 35 U.S.C. § 286 against damages more than six years prior to suit, "Congress codified a laches defense in 35 U.S.C. § 282(b)(1) that may bar legal remedies." SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 807 F.3d 1311, 1315 (Fed. Cir. 2015). The majority distinguished Petrella as resting on differently worded statutory provisions in the Copyright Act and the Patent Act. The majority further explained that, unlike copyright law, "[i]ndependent invention is no defense in patent law, so without laches, innovators have no safeguard against tardy claims demanding a portion of their success." Id. at 1330.

Judge Todd Hughes, dissenting in part and writing on behalf of himself and four other judges, explained that patent law "is governed by the same common-law principles, methods of statutory interpretation, and procedural rules as other areas of civil litigation." Id. at 1333. He noted that the majority opinion "adopts a patent-specific approach to the equitable doctrine of laches" and "overlooks Congress' intent and Supreme Court precedent, which demonstrate that laches is no defense to a claim for damages filed within the statutory limitations period established by [Section 286]." Id. According to Judge Hughes, Petrella "emphasized that [the Supreme Court] had never approved the use of laches to bar a claim for legal damages brought within a statutory limitations period" and "the majority has no sound basis for finding that Congress intended to displace the uniform limitations period in § 286 with the case-specific doctrine of laches." Id. at 1334.

A complete summary of the Federal Circuit's en banc SCA decision is available here. (Jones Day submitted an amicus brief on behalf of the Intellectual Property Owners Association before the en banc Federal Circuit.)

In Star Athletica, the Supreme Court will consider the "appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act." Although the case specifically involves whether the "pictorial, graphic, and sculptural features" of cheerleading uniforms are copyrightable, the Supreme Court's decision will have broad implications for the fashion and apparel industries, given the limited protection typically afforded to clothing under U.S. intellectual property law. Clothing items have long been considered to be "useful articles" not subject to copyright protection, but in certain circumstances pictorial, graphic, or sculptural features of clothing designs and other useful articles that exist separately and independent of the utilitarian aspects of the article, such as printed patterns, may be independently copyrightable. 17 U.S.C. § 101. As Judge Karen Nelson Moore noted in the Sixth Circuit panel's 2–1 majority opinion, delineating the boundaries of these features has long "confounded courts and scholars" alike and resulted in an inconsistent patchwork of legal tests across the Circuit courts. Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 471 (6th Cir. 2015).

The Copyright Act expressly protects "original works of authorship fixed in any tangible medium of expression," which encompasses "pictorial, graphic, and sculptural works." 17 U.S.C. § 102(a)(5). Section 101 of the Copyright Act defines "pictorial, graphic, and sculptural works" as including "two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans." 17 U.S.C. § 101. However, the Copyright Act provides that such "works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." Id. The Copyright Act defines a "useful article" as "an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information." Id. In a syllogistic definition that contributes to and highlights the confusion and disparate approaches applied by various courts for separating artistic craftsmanship from utilitarian aspects, the Copyright Act states that an "article that is normally a part of a useful article is considered a 'useful article."' Id.

Addressing the proper framework for analyzing the separability issue, the Sixth Circuit noted that "[c]ourts, scholars, and students have endeavored to create a test to determine whether pictorial, graphic or sculptural features 'can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.'" Varsity Brands, 799 F.3d at 481. The majority opinion canvassed nine different approaches that have been adopted or urged. Id. at 484-85. Recognizing that the Sixth Circuit had not yet addressed the issue, the majority then added a tenth, articulating its own five-prong test:

  1. "Is the design a pictorial, graphic, or sculptural work?"
  2. "If the design is a pictorial, graphic, or sculptural work, then is it a design of a useful article—'an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information'?"
  3. "What are the utilitarian aspects of the useful article?"
  4. "Can the viewer of the design identify 'pictorial, graphic, or sculptural features' 'separately from ... the utilitarian aspects of the [useful] article[?]'"
  5. "Can 'the pictorial, graphic, or sculptural features' of the design of the useful article 'exist[ ] independently of [ ] the utilitarian aspects of the [useful] article[?]'"

at 487-88. Applying these factors to the case at hand, the majority concluded "that the graphic features of [asserted] designs 'can be identified separately from, and are capable of existing independently of, the utilitarian aspects'" of the cheerleading uniforms, and, as a result, the uniforms are copyrightable. Id. at 492.

In dissent, Judge McKeague noted that the "majority presents a thoughtful approach to this difficult 'metaphysical quandary' that courts have wrestled with for years" and "agree[d] with the majority's general approach." Id. at 494. Judge McKeague, however, "depart[ed] with the majority's analysis [ ] in how the function of these designs is defined," and therefore concluded that the cheerleading uniforms "are not copyrightable." Id. at 495.

The cases will be briefed on the merits over the summer recess and arguments likely held in the fall. Decisions in each of these cases will likely be rendered by June 2017.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions