In the second quarter of 2020, the Supreme Court decided five intellectual property focused cases in which it resolved a longstanding circuit split in Romag Fasteners and opened the door to the trademark registration of "generic.com" domain names in Booking.com. The Federal Circuit also upheld the doctrine of assignor estoppel, discussed inherently distinctive color trademarks, decided a multi-million dollar attorney's fee award against the federal government, and more.
Supreme Court of the United States: OpinionsConsumer perception determines whether a generic domain name is generic for trademark registration purposes. United States Patent and Trademark Office v. Booking.com B.V., No. 19-46 (Jun. 30, 2020) (Opinion)
In a highly anticipated trademark law case, the Supreme Court held in an 8-1 decision that a generic term added to an internet domain suffix is generic for trademark registration purposes only if the resulting combination is generic to consumers. The USPTO had refused registration of the "Booking.com" mark on the grounds that the generic term "booking" was merely added to the ".com" suffix, even though the parties ultimately agreed that "Booking.com" is non-generic to consumers. The Supreme Court reasoned that the Lanham Act's bedrock principle is that the character of the mark depends on its meaning to consumers. Generic terms signify to consumers a class or category of goods rather than identifying a specific member of that class or category of goods. Because evidence shows that consumers perceive the mark "Booking.com" as a source identifier for a particular travel reservation website rather than a general class of travel reservation websites, the mark is not generic. The Supreme Court's ruling in Booking.com therefore opens the door for the registration of other generic domain name marks that are perceived by consumers as a source identifier.
While declining to recognize the concept of "defense preclusion," the Supreme Court nonetheless leaves open the possibility that claim preclusion can be applied to defenses. Lucky Brand Dungarees Inc. v. Marcel Fashions Group, Inc., No. 18-1086 (May 14, 2020) (Opinion)
A long history of litigation between Lucky Brand Dungarees and Marcel Fashions Group began nearly 20 years ago. In 2001, Marcel first brought suit against Lucky Brand, alleging that Lucky Brand's use of the "Get Lucky" phrase in advertisements infringed Marcel's "Get Lucky" mark. The parties subsequently signed a settlement agreement in which Lucky Brand agreed to stop using the "Get Lucky" phrase, and Marcel agreed to release any claims regarding Lucky Brand's use of its own marks. In 2005, the parties commenced a second round of litigation. Lucky Brand filed suit, alleging Marcel infringed its trademarks with a new clothing line. Marcel filed counterclaims against Lucky Brand's continued use of "Get Lucky" in connection with Lucky Brand, but did not claim that any of Lucky Brand's marks alone infringed the "Get Lucky" mark. Lucky Brand initially responded that the settlement agreement barred the claims, but it did not raise the defense thereafter.
The third round of litigation commenced in 2011 with Marcell's suit against Lucky Brand for continued infringement of its "Get Lucky" mark with Lucky Brand's own marks—not for the use of the "Get Lucky" phrase. Lucky Brand moved to dismiss, citing for the first time since 2005 that Marcel released its claims on Lucky Brand's use of its own marks in the original settlement agreement. Marcel countered that Lucky Brand was precluded from invoking the defense under a "defense preclusion" theory because the defense was not pursued after the counterclaims and answers in 2005.
In a unanimous decision, the Supreme Court articulated that it has never explicitly recognized "defense preclusion" as a specific category of res judicata. However, it has previously indicated that the preclusion of defenses must satisfy the requirements of either issue preclusion or claim preclusion. The parties agreed that issue preclusion did not apply, and the Court also found claim preclusion inapplicable because the 2005 and 2011 suits involved different marks and conduct—they did not "involve a common nucleus of operative facts." Therefore, Lucky Brand was not precluded from raising new defenses. Importantly for intellectual property practitioners, the Supreme Court also noted that "[t]his principle takes on particular force in the trademark context, where the enforceability of a mark and likelihood of confusion between marks often turns on extrinsic facts that change over time."
The government edicts doctrine prevents copyright protection of official annotated codes. Georgia v. Public.Resource.Org, No. 18-1150 (Apr. 27, 2020) (Opinion)
In the realm of copyright law, the Supreme Court held in a 5-4 split that annotations contained in Georgia's official annotated code are not copyrightable. Public.Resource.Org, a non-profit organization dedicated to improving the accessibility of government information, reproduced and made freely available the Official Code of Georgia Annotated (OCGA), previously hidden behind a paywall. The LexisNexis Group produced the annotations to the OCGA in close coordination with a Georgia state entity called the Code Revision Commission. The Commission ultimately sued Public.Resource.Org for copyright infringement following the reproduction of the OCGA.
In its decision, the Supreme Court relied on a trio of 19th-century cases† on the government edicts doctrine. The overarching principle of the government edicts doctrine is that no one can "own the law." Essentially, government edicts, previously discussed by the Court only in the context of judicial opinions, cannot be copyrighted. The Supreme Court reasoned that, like judicial opinions, the annotations in the OGCA are authored by an arm of the state—here the Commission, a division of the Georgia state legislature. Furthermore, like judges, the legislature has the authority to make law. Therefore, any work that legislators perform in their official capacity, including the Georgia official annotated code, falls under the government edicts doctrine and cannot be protected under copyright law.
† See Banks v. Manchester, 128 U.S. 244 (1888); Callaghan v. Myers, 128 U.S. 617 (1888); Wheaton v. Peters, 33 U.S. 591 (1834).
Willfulness is not a prerequisite to recover infringer's profits for violations of Section 43(a) of the Lanham Act. Romag Fasteners, Inc. v. Fossil Group, Inc. et al., No. 18-1233 (Apr. 23, 2020) (Opinion)
The Supreme Court resolved a longstanding circuit split as to whether a trademark owner is required to show willfulness before a court will consider awarding an infringer's profits to remedy violations of Section 43(a) of the Lanham Act. The Third, Fourth, Fifth, Sixth, Seventh, and Eleventh Circuits did not require plaintiffs to show willfulness before awarding an infringer's profits, while the First, Second, Eighth, Ninth, Tenth, and Federal Circuit viewed willfulness as a precondition to recovery of an infringer's profits.
Romag Fasteners, Inc. sued Fossil Group, Inc. under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), alleging Fossil had infringed its trademark and falsely represented that fasteners included in Fossil's products came from Romag. The jury found that although Romag established a violation of Section 43(a), Fossil did not act willfully. As a result, and based on controlling Second Circuit precedent, the district court denied Romag's request for an award of Fossil's profits. Relying on the plain text of the statute, the Court found that "[t]he statute does make a showing of willfulness a precondition to a profits award when the plaintiff proceeds under § 1125(c)." However, as the Court noted, Romag had established a violation of § 1125(a), not § 1125(c). The Court declined to imply a willfulness requirement based on the absence of any precondition or mental state requirement in the plain text of the statute with respect to § 1125(a).
Accordingly, willfulness is not a precondition to awarding infringer's profits. Nonetheless, both the majority opinion and the concurring opinion made clear that a defendant's mental state, i.e., willfulness, remains a "highly important consideration" in determining whether an award of profits is appropriate.
Time-bar appeals in PTAB cases are not reviewable on appeal. Thryv Inc. v. Click-To-Call Technologies LP, No. 18-916 (Apr. 20, 2020) (Opinion)
The Supreme Court again was tasked with interpreting the procedure of the Patent Trial and Appeal Board (PTAB) under the America Invents Act. The Court held that when the PTAB grants a petition for inter partes review and rejects a contention that the petition is time-barred, that rejection is not reviewable on appeal.
The relevant statute, 35 U.S.C. § 314, allows the PTO to institute inter partes review to reconsider the validity of previously granted patents. It provides that "[t]he determination by the [PTO] whether to institute an inter partes review under this section shall be final and nonappealable." Section 315 provides that "[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after . . . the petitioner . . . is served with a complaint alleging infringement of the...
