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The Supreme Court Issues Several IP Opinions
by
Posted On December 12, 2023
Notwithstanding the popular trope of a person shouting, “I’ll take my case to the Supreme Court!” the U.S. Supreme Court only hears a small fraction of the cases that are filed for appeal. In a typical year, the court will issue maybe 60–100 decisions in a term (out of several thousand). In recent years, that number has been closer to 60, increasing the significance of each of the court’s decisions.

The same applies to cases in the intellectual property (IP), technology, and information policy spaces. The court generally only accepts cases in which the legal issues are challenging, important, and far-reaching, and/or when there are splits of opinion, particularly between the lower Circuit Courts of Appeal. In the term ending in late June 2023, there were at least four major Supreme Court opinions in the information industry space, all of which merit significant attention.

Warhol, Goldsmith, and Prince

Probably the most widely reported was the decision in The Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, issued in May 2023. This IP case involved the late artist Andy Warhol, the late musical legend Prince, photographer Lynn Goldsmith, and the publication Vanity Fair. In summary, in 1984, Vanity Fair licensed a Goldsmith photo of Prince (with Goldsmith’s consent) that she had taken for the magazine for use as an “artist reference” for an article. The artist was Warhol, who created one of his classic silkscreen images of the photo, which Vanity Fair published. Unknown to Goldsmith, Warhol had created an entire series of different-colored silkscreens from the photograph. After Prince’s death, Vanity Fair sought to reuse the image for a cover and contacted the Warhol Foundation (legal owner of Warhol’s works). The publication found out about the other silkscreens, ultimately using a different image from the series. Only when the magazine was published did Goldsmith learn of the series and filed a lawsuit against the foundation for copyright infringement.

The issue came before the Supreme Court on the question of whether Vanity Fair’s use of the Goldsmith work was a fair use under copyright law. Fair use allows for the limited use of copyrighted works to create something that is “new, with a further purpose or different character.” The court’s carefully nuanced, but controversial, opinion, written by Justice Sonia Sotomayor, held that Vanity Fair’s use was not a fair use. The original license was for a magazine article, and the new use was a magazine cover, but not a “different purpose.” The court found that when the original and later uses share the “same or highly similar purposes” and when that purpose is commercial rather than nonprofit, the fair use argument is weakened.

The nuance and controversy come from the court’s focus on Vanity Fair’s use of the image as a magazine cover, not specifically on Warhol’s creation of the multiple silkscreens beyond the original one that was licensed by Vanity Fair and agreed to by Goldsmith. The opinion acknowledges that while Warhol’s silkscreens were artistic, it was specifically Vanity Fair’s use of that art as a magazine cover that was not fair. Where the controversy comes is a heated dissent by Sotomayor’s fellow liberal colleague, Justice Elena Kagan. Kagan blasts the opinion’s focus on the magazine’s use of image and discounting of the creative transformation that Warhol accomplished. She argues that the opinion will significantly weaken or even threaten artistic creativity.

Whiskey and Dog Toys

IP also came to the fore in a trademark opinion from the court, the case of Jack Daniel’s Properties, Inc. v. VIP Products, LLC, which involves pet toys that parodied the famous Jack Daniel’s “Old No. 7” logo and square bottle shape. The case provided clarification for when the use of an existing trademark for parody or commentary purposes is permitted and when it is not. The parody was a squeaky, chewable dog toy shaped like a Jack Daniel’s bottle with the name “Bad Spaniels” and a black logo that said “Old No. 2.” Jack Daniel’s sued for trademark infringement and trademark dilution.

The Supreme Court’s unanimous opinion clarified that when an existing trademark is being used, even in parody, as a trademark for a different product, it is not entitled to free speech or other special protection and is infringing. The court contrasted uses of trademarks that are not infringing, such as a song called “Barbie Girl,” which parodied and commented on Mattel’s Barbie doll trademark, and the use of a University of Alabama football uniform by a private company to “memorialize” a past event. In those cases, the old trademark was not being used as a trademark for a new product.

Patents

In the technology space, there was the patent case of Amgen, Inc. v. Sanofi, which involved multiple patents on antibodies in medications for lowering cholesterol. Amgen and Sanofi each received a patent on a unique antibody incorporated into their respective medication. Additional patents were awarded to Amgen focusing on “the entire genus” of antibodies that can extract cholesterol from the bloodstream. Amgen then sued Sanofi, claiming that its medication violated Amgen’s newer patents.

The court rejected Amgen’s patent, looking back to patents involving Samuel Morse and Thomas Edison. It focused on the requirement that a patent must describe an invention in a way that would “enable any person skilled in the art to make or use” the invention. This is part of patent’s trade-off that gives an inventor a 20-year monopoly over their invention in return for disclosing it to those who would also be able to make the invention. The court noted that Morse’s claim of patenting the entire class of telegraph technology had been too broad to allow a skilled person to make everything in that class. Similarly, Edison was successful in defending his use of bamboo as a lamp filament from an earlier patent covering all “fibrous and textiles” usable as a filament. The court held that Amgen’s patent was equally too broad, was little more than a “research roadmap” to the antibody process, and did not have the necessary precision that patent law demands.

Trademarks

Finally, another trademark case, Abitron Austria GmbH v. Hetronic International, Inc., clarified that the Lanham Act, which protects federally registered trademarks, can only be used to block trademark infringement occurring domestically and not infringing conduct that occurs outside of the U.S. For that, trademark holders should obtain trademark protection in the countries in which they do business.

Pop Culture, Social Media, and Copyright in 2024

The 2023–2024 term, which started in October, will feature at least a couple of pop-culture-heavy cases that could impact the information industry. On Nov. 1, 2023, the court heard oral argument in the case of Vidal v. Elster, which involves an effort by Steve Elster to obtain a federal trademark on the phrase “Trump Too Small.” Under current law, one can only obtain a trademark registration on another living person’s personal name with that person’s written consent. Donald Trump has trademarked his own name repeatedly, but the U.S. Patent and Trademark Office denied Elster’s registration. The appeals court reversed the Trademark Office, saying that Elster had a First Amendment right to the registration, particularly in that Trump is a public figure, former president, and current presidential candidate. A decision is expected in the spring—before the 2024 election.

The First Amendment will come into play in cases involving social media, including the rights of government officials to block users, and cases involving state efforts to restrict social media companies from banning political and other controversial speech. An additional case will explore whether the statute of limitations for copyright infringement claims has an absolute time limit of 3 years or if it does not begin until the infringement is discovered.

It will be another lively year in the Supreme Court. Pay attention.


George H. Pike is the director of the Pritzker Legal Research Center and a senior lecturer at the Northwestern University School of Law. Previously, Pike was director of the Law Library at the University of Pittsburgh School of Law, and held professional positions at the Lewis and Clark Law School and at the University of Idaho School of Law, and was a practicing attorney in Idaho Falls, Idaho. Pike received his B.A. from the College of Idaho, his law degree from the University of Idaho, and his M.L.S. from the University of Washington. He is a member of the American and Idaho State Bar Associations, the American Association of Law Libraries, and the American Intellectual Property Lawyers Association.

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