My apologies for the long absence, dear readers.  Just as the U.S. Supreme Court is set to take its collective seat again for a new term this coming Monday, October 2, 2017, however, I am back with more intellectual property legal highlights.

In the past three or four years, the Supreme Court has been taking an increased interest in intellectual property cases, granting certiorari for more IP cases than ever before and coming down with landmark decisions across the IP legal spectrum.  The 2017 term is already shaping up to be yet another high watermark.  First, the Court has already granted a petition for certiorari for an important patent cases.  The Justices will be faced with a constitutional challenge to the review procedures under the America Invents Act (AIA) under the “separation of powers” doctrine and the Seventh Amendment’s given right to a jury trial in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712.

Second, the Court has a full plate of other petitions for certiorari to consider in the new term on significant and divisive IP issues, including:

  1. the role of the patent specification in deciding patent eligibility, in Synopsys, Inc., v. Mentor Graphics Corporation, No. 16-1288;
  2. known interchangeability evidence for patent equivalence, in Tomita Technologies USA, LLC v. Nintendo Co., Ltd., No. 17-292;
  3. patent infringement through the performance of one or more steps of a patented process by multiple independent actors, in Voter Verified, Inc. v. Election Systems & Software LLC, No. 16-1505;
  4. issued copyright registration vs. filed application for filing an infringement suit, in Fourth Estate Public Benefit Corporation v., LLC, No. 17A150;
  5. vicarious liability for copyright infringement, in Perfect 10, Inc. v. Giganews, Inc., No. 17-320;
  6. when copyright causes of action arise, in Olenicoff v. Wakefield, No. 17-56;
  7. Internet service providers’ liability for copyright infringement and the requirement of volitional conduct, in BWP Media USA, INc. v. T&S Software Associates, Inc., No. 17-122;
  8. whether a likelihood of confusion assessment in a trademark infringement suit is a question of law or fact, in Kibler v. Hall, No. 16-1365;
  9. the test for a parody fair use of a trademark with respect to trademark dilution, in Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., No. 17-72;
  10. necessary pleadings with respect to trademark use in a motion to dismiss under Federal Rule 12(b)(6), in Kassa v. Detroit Metro Convention & Visitors Bureau, No. 16-1512; and
  11. online sellers’ liability for counterfeit sales by third parties, in Hart v., Inc., No. 16-1549.

At least some of these issues have been mired in split-Circuit decisions, or even simply caught in the land of the undecided.  Hopefully, the Court will offer some guidance.

On October 31, 2016, the Supreme Court of the United States (SCOTUS) deliberated chevron, zigzag, and stripe designs on cheerleader uniforms.  What is very likely to be a landmark decision, Star Athletica v. Varsity Brands addresses the issue of copyright protection for designs on clothing, long held in some controversy by courts attempting to decipher myriad tests and prior decisions.  The issue stems from the fact that clothing is inherently a useful article, one with a utilitarian function that is not merely to portray its appearance or convey information about it, and useful articles are not protectable by copyright.  Designs of useful articles can only be covered by copyright if they are pictorial, graphic, or sculptural features that can be physically or conceptually separated from the useful article.

Varsity Brands, which registered copyrights for its cheerleading uniform colored chevron, zigzag, and stripe designs, argued before the SCOTUS such designs were eligible for copyright protection because they could be conceptually separated from the utilitarian aspects of the uniforms themselves.  In contrast to physical separability, the copyrightable design elements do not have to be actually separable from the useful article to be protected under the test of conceptual separability, but do have to be able to be perceived as separate works worthy of copyright protection when considered disparately from the useful article to which they are attached.  Unfortunately, the test for conceptual separability has greatly varied among courts to date, causing the copyright eligibility of apparel to be in constant doubt.  During the oral arguments by the parties, the SCOTUS leaned heavily on the negative implications and possible extremes of granting such protection, including concerns over monopolies, line-drawing related to whether a design defines the article it is on or stands alone, and the always-popular slippery slope of increased litigation.

What the legal community is hoping for from the SCOTUS decision is a definite test for conceptual separability of copyright-eligible designs on useful articles, which would be momentous not only for the fashion industry, but for multitudes of commercial endeavors that blend function and design (furniture, vehicles, jewelry, 3D printing, etc.).  Given their worries and evident biases thus far in oral arguments, however, the Justices may also decide the case, but fail to articulate a legal framework for the future, in which case the conceptual separability doctrine will continue to subsist in controversy.  One way or another, the development is one to watch.