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[?]'"
Id.

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.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.