Litigation, Intellectual Property, and Free Speech & Election Law Practice Groups Teleforum
Can the government police speech it thinks is offensive, even when members of the group the government seeks to protect disclaim any offense? Section 2(a) of the Lanham Act allows the government to deny trademark registration to "disparaging" speech. On Wednesday, January 18, the Supreme Court will hear oral argument in Lee v. Tam, a case challenging the constitutionality of this statute.
In Lee, an Asian-American rock band called “The Slants” was denied trademark registration after the Patent and Trademark Office found the trademark disparaging to Asians. A panel of the U.S. Court of Appeals for the Federal Circuit affirmed the decision. But the en banc Federal Circuit—without being asked—decided to vacate that decision and consider whether § 2(a) violates the First Amendment. The full Federal Circuit ultimately reversed the panel decision. The federal government then asked the Supreme Court to weigh in.
Is the Court likely to affirm the Federal Circuit decision striking down the disparagement clause as violative of the First Amendment? And what will be the implications if it does? Megan Brown and Dwayne Sam of Wiley Rein LLP attended the oral arguments and offered their impressions and predictions during this Courthouse Steps Teleforum conference call.
Intellectual Property Practice Group Teleforum
- Ms. Megan L. Brown, Partner, Wiley Rein LLP
- Mr. Dwayne D. Sam, Associate, Wiley Rein LLP
The Federalist Society will host a one hour Teleforum to discuss the recent Supreme Court decision in Samsung v. Apple--a rare Supreme Court design patent case regarding the shape of the face and grid of icons in Apple's iPhones. Trevor Copeland of Brinks Gilson & Lione, Austin and Art Gollwitzer of Michael Best, Chicago will engage over the specific statutory and policy issues in the decision. Prof. Ryan Holte of SIU School of Law will moderate.
SCOTUScast 12-1-16 featuring Zvi Rosen
- Mr. Trevor Copeland, Shareholder, Brinks Gilson & Lione
- Mr. Art Gollwitzer, Partner, Michael Best & Friedrich LLP
- Moderator: Prof. Ryan Holte, Assistant Professor of Law, SIU School of Law
Zvi Rosen December 01, 2016
On October 31, 2016, the Supreme Court heard oral argument in Star Athletica, LLC v. Varsity Brands, Inc. Varsity Brands, Inc. designs and manufactures clothing and accessories for use in various athletic activities, including cheerleading. Design concepts for the clothing incorporate many elements but do not consider the functionality of the final clothing. Varsity received copyright registration for the two-dimensional artwork of the designs at issue in this case, which were very similar to ones that Star Athletica, LLC was advertising. Varsity sued Star and alleged, among other claims, that Star violated the Copyright Act. Star countered that Varsity had made fraudulent representations to the Copyright Office. Both parties filed motions for summary judgment. Star argued that Varsity did not have valid copyrights because the designs were for “useful articles” and cannot be separated from the uniforms themselves, all of which tends to make an article ineligible for copyright. Varsity argued that the copyrights were valid and had been infringed. The district court granted summary judgment for Star and held that the designs were integral to the functionality of the uniform. The U.S. Court of Appeals for the Sixth Circuit reversed, however, and held that the uniforms Varsity designed were copyrightable.
The question now before the U.S. Supreme Court asks what the appropriate test is to determine when a feature of a useful article is protectable under section 101 of the Copyright Act.
To discuss the case, we have Zvi Rosen, who is an adjunct professor at New York Law School. Short video featuring Sandra Aistars
Sandra Aistars October 27, 2016
Can the design features of a useful article be copyrighted? Sandra Aistars, Clinical Professor at George Mason University's Antonin Scalia Law School, explains the dispute between Star Athletica and Varsity Brands over the graphic design elements of cheerleading uniforms. The Supreme Court will hear oral argument on October 31, 2016. SCOTUScast 7-28-16 featuring Christopher Newman
On June 16, 2016, the Supreme Court decided Kirtsaeng v. John Wiley & Sons. Academic textbook publisher John Wiley & Sons, Inc. (Wiley) owns the American copyright for textbooks and often assigns its rights to its foreign subsidiaries to publish, print, and sell its textbooks abroad. Supap Kirtsaeng, a Thai citizen who came to the United States in 1997 to study mathematics, asked friends and family in Thailand to buy the English-language versions of his textbooks in Thailand, where they were cheaper and mail them to him. Kirtsaeng would then sell these textbooks in America, reimburse his friends and family, and make a profit.
In 2008, Wiley sued Kirtsaeng for copyright infringement. He ultimately prevailed before the U.S. Supreme Court on the question whether the “first sale” doctrine--under which the owner of a “lawfully made” copy can dispose of it without permission of the copyright owner--applies to copies of a copyrighted work lawfully made abroad. On remand, the U.S. Court of Appeals for the Second Circuit ruled that the “first sale” doctrine provided Kirstaeng with a complete defense to Wiley’s infringement claim. Kirtsaeng thereafter sought an award of attorneys’ fees pursuant to Section 505 of the Copyright Act, which allows the award of fees to a prevailing party at the court’s discretion. The federal Courts of Appeals have applied several different standards in resolving such fee requests. Here, the Second Circuit affirmed the denial of attorneys’ fees to Kirtsaeng based on the district court’s view that Wiley had taken an “objectively reasonable” position in the underlying litigation.
The U.S. Supreme Court again granted certiorari, to address the following question: What is the appropriate standard for awarding attorneys’ fees to a prevailing party under section 505 of the Copyright Act?
By a vote of 8-0, the Supreme Court vacated the judgment of the Second Circuit and remanded the case. Justice Kagan delivered the opinion for a unanimous Court, which held that (1) when deciding whether to award attorney's fees under the Copyright Act’s fee-shifting provision, a district court should give substantial weight to the objective reasonableness of the losing party's position, while still taking into account all other circumstances relevant to granting fees; and (2) while the Second Circuit properly calls for district courts to give "substantial weight" to the reasonableness of a losing party's litigating positions, its language at times suggests that a finding of reasonableness raises a presumption against granting fees, and that goes too far in cabining the district court's analysis.
To discuss the case, we have Christopher M. Newman, who is Associate Professor of Law at George Mason University School of Law.