Intellectual Property

Courthouse Steps: Lee v. Tam

Litigation Practice Group Teleforum Wednesday, January 18, 02:00 PMFederalist Society Teleforum Conference Call

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 will attend the oral arguments and offer their impressions and predictions during this Courthouse Steps Teleforum conference call.


  • Ms. Megan L. Brown, Partner, Wiley Rein LLP
  • Mr. Dwayne D. Sam, Associate, Wiley Rein LLP

Regulating Rideshare: The Rise of the Sharing Economy

Short video
January 05, 2017

The “Sharing Economy” is a complex phenomenon that has disrupted industries and transformed how we live and work, but experts can’t even agree on what to call it. Lawyers, public policy experts, academics and workers weigh in to define this dynamic phenomenon and to discuss legal and regulatory issues that emerge as these platforms play an increasingly role in our society. 

Star Athletica, LLC v. Varsity Brands, Inc. - Post-Argument SCOTUScast

SCOTUScast 12-1-16 featuring Zvi Rosen
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.

Justice Scalia's Telecommunications Legacy - Event Audio/Video

2016 National Lawyers Convention
Richard A. Epstein, Henry Goldberg, Richard E. Wiley, Don R. Willett November 23, 2016

Justice Scalia first entered public service in 1971, when he was appointed by President Richard Nixon to serve as the General Counsel for the Office of Telecommunications Policy (“OTP") in the White House. From that day in 1971 through his dissent in the Brand X case regarding broadband classification, Justice Scalia brought a deep understanding of technology policy to his career on the Supreme Court. And of course, Justice Scalia was never one to mince words. “It would be gross understatement to say that the Telecommunications Act of 1996 is not a model of clarity. It is in many important respects a model of ambiguity or indeed even self-contradiction," he observed in AT&T Corp. v. Iowa Util. Bd. The Telecommunications & Electronic Media Practice Group has brought together a panel of experts to discuss Justice Scalia's legacy on telecommunications and media issues and discuss current litigation through the lens of his jurisprudence.

This panel was held on November 18, 2016, during the 2016 National Lawyers Convention in Washington, DC.

Telecommunications & Electronic Media: Justice Scalia's Telecommunications Legacy
12:30 p.m. – 2:45 p.m.
Chinese Room

  • Prof. Richard A. Epstein, Laurence A. Tisch Professor of Law, Director, Classical Liberal Institute, New York University School of Law
  • Mr. Henry Goldberg, Goldberg, Godles, Wiener and Wright LLP
  • Mr. Richard E. Wiley, Chairman Emeritus, Wiley Rein LLP
  • Moderator: Hon. Don Willett, Texas Supreme Court

The Mayflower Hotel
Washington, DC

Courts vs. Congress: What is a Patentable Invention? - Event Audio/Video

2016 National Lawyers Convention
David J. Kappos, Adam Mossoff, Mark Perry, Joshua Sarnoff, Susan Braden November 23, 2016

In the past six years, there has been a momentous shift in what can be patented. In four separate cases, the Supreme Court embraced a more muscular approach in enforcing the basic requirement under § 101 of the Patent Act that only certain types of inventions can be patented, impacting inventive activities ranging from biotech to high-tech to business methods. As a result, the Court of Appeals for the Federal Circuit, trial courts, and the Patent Office have responded by sharply restricting the scope of “patentable subject matter," invalidating issued patents and rejecting patent applications at record rates. 

This change has been both consequential and controversial. Inventions that once were patentable in key innovation industries, such as cutting-edge diagnostic tests made possible by the biotech revolution and highly complex computer software in the high-tech sector, are no longer eligible for patent protection. Some welcome this development, seeing it as freeing up basic tools of research and preventing abusive assertions of patents against infringers. Others have criticized this development, identifying lost incentives to invest millions in R&D necessary to produce technological innovation and lost value in existing patents given pervasive uncertainty in the patent system as to what is and is not protectable. 

The lack of certainty is something both sides of this important legal and policy debate have found troublesome. Many agree that the Supreme Court's current patent-eligibility jurisprudence is confusing and murky. The Court's legal test for assessing patentable subject matter has proven unpredictable in its application by courts, by patent examiners, and by the administrative review board at the Patent Office (the Patent Trial and Appeal Board). 

One proposed solution has been to simply abolish § 101, the provision that sets forth the requirement that only an invention comprising a “machine, manufacture, process, or composition of matter" is patentable. The argument is that this provision is an antiquated holdover from the first patent statutes that did not have the granular requirements that now exist in the modern Patent Act, ensuing that only novel, nonobvious, useful and fully disclosed inventions are patentable. This panel will consider whether such a radical move is warranted, whether the Supreme Court's patentable subject matter jurisprudence is on the right track, or perhaps whether any problems in patentable subject matter jurisprudence are fixable by the Court or by Congress. 

This panel was held on November 17, 2016, during the 2016 National Lawyers Convention in Washington, DC.

Intellectual Property: Courts vs. Congress: What is a Patentable Invention?
1:45 p.m. – 3:15 p.m.
State Room

  • Mr. David J. Kappos, Partner, Cravath, Swaine & Moore LLP
  • Prof. Adam Mossoff, Professor of Law and Co-Director of Academic Programs, Senior Scholar, Center for the Protection of Intellectual Property, Antonin Scalia Law School, George Mason University
  • Mr. Mark A. Perry, Partner, Gibson, Dunn & Crutcher LLP
  • Prof. Joshua D. Sarnoff, Professor of Law, DePaul College of Law
  • Moderator: Hon. Susan G. Braden, U.S Court of Federal Claims

The Mayflower Hotel
Washington, DC