27 May 2020 in Newsletter
U.S. Supreme Court 2020 Update – What’s Still Undecided?
So far in 2020, the U.S Supreme Court has decided that states cannot be sued for copyright infringement, that PTAB IPR institution decisions regarding time bar issues are not appealable, that the published version of Georgia state law code along with its annotations cannot be protected by copyright, and that proof of “willful” infringement is not a statutory prerequisite to a trademark owner’s obtaining disgorgement of the infringer’s profits as a remedy. The Supreme Court has also decided that there is no doctrine of “defense preclusion” in a trademark case with far broader implications for civil litigation, generally. The Court is not finished deciding the intellectual property cases before it, however. What cases remain for decision at this time?
Google v. Oracle
Oracle sued Google for copyright infringement based on Google’s use of more than 10,000 segments of software code that enable interoperability between Java source code and applications written by Java developers. Google has defended its use by arguing that the interface code is too functional to be eligible for copyright protection, and even if it is protectable, Google’s incorporation of the software code into its Android operating system is excusable as “fair use.” The Supreme Court has never issued a decision regarding eligibility of software for copyright protection, and has not issued a decision on the scope of the fair use doctrine in decades. Oral Argument has been postponed to the October Term 2020.
United States Patent and Trademark Office v. Booking.com B.V.
The applications for registration of the mark BOOKING.COM was refused, first by a trademark examiner, and then by the USPTO’s Trademark Trial and Appeal Board (“TTAB”). Booking.com appealed the TTAB’s decisions to the U.S. District Court for the Eastern District of Virginia in 2016. The district court overturned the TTAB’s refusals to register. The district court decision was affirmed on appeal to the U.S. Court of Appeals for the 4th Circuit. The USPTO then appealed to the U.S. Supreme Court. The question presented is whether, when the Lanham Act states generic terms may not be registered as trademarks, the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark. Oral argument was heard on May 4, 2020.
What Supreme Court decisions will we not see in 2020? Without placing too much emphasis on the proper operation of our “crystal ball,” at least one trend has emerged. The Supreme Court has denied numerous petitions for certiorari filed by litigants hoping to convince the Court to revisit the issue of patent subject matter eligibility under Section 101 of The Patent Act, Title 35, United States Code. Thus far, the Supreme Court seems content to allow the current state of the law, which many lawyers, jurists, scholars, and litigants decry as confused and unworkable, to persist without further comment. It is possible that the Justices feel that enough has been said already, and that it is now up to Congress to make any further changes or improvements by amending 35 U.S.C. Section 101 as and if Congress sees fit to do so. While bipartisan proposals supported by interested industry and law associations have been put forward, it is not known whether, or when, such activities might yield useful results.
We continue to monitor Supreme Court and lower court decisions that impact the rights and business practices of our clients.
 See our article on Romag Fasteners v. Fossil decision in this edition of Monthly Insights.
 In Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc., ___ S.Ct. ___, 2020 WL 2477020 (2020), the Court held that because the trademark action at issue challenged different conduct—and raised different claims—from an earlier action between the parties, Marcel Fashions cannot preclude Lucky Brand from raising new defenses, including a defense that Lucky Brand failed to press fully in the earlier suit.