The Supreme Court has agreed to hear four intellectual property cases in the current term. Below are the Questions Presented as provided by the Supreme Court.
Trademark infringement and dilution:
JACK DANIEL’S PROPERTIES, INC. V. VIP PRODUCTS LLC
CERT. GRANTED 11/21/2022
QUESTION PRESENTED:
Respondent VIP Products LLC markets and sells dog toys that trade on the brand recognition of famous companies such as petitioner Jack Daniel’s Properties, Inc. The district court found that VIP’s use of Jack Daniel’s trademarks to sell poop-themed dog toys was likely to confuse consumers, infringed Jack Daniel’s marks, and tarnished Jack Daniel’s reputation. The Ninth Circuit, however, held that VIP’s First Amendment interest in using Jack Daniel’s trademarks as its own marks on funny dog toys conferred special protection from infringement claims and rendered VIP’s commercial dog toys “noncommercial” and thus exempt from dilution-by-tarnishment claims.
The questions presented are:
I. Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims.
2. Whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act.
Fair Use of Copyright:
ANDY WARHOL FOUNDATION FOR THE VISUAL ARTS, INC. V. GOLDSMITH
CERT. GRANTED 3/28/2022This Court has repeatedly made clear that a work of art is “transformative” for purposes of fair use under the Copyright Act if it conveys a different “meaning or message” from its source material. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994); Google LLC v. Oracle Am., Inc., 141 8. Ct. 1183, 1202 (2021). In the decision below, the Second Circuit nonetheless held that a court is in fact forbidden from trying to “ascertain the intent behind or meaning of the works at issue.” App. 22a-23a. Instead, the court concluded that even where a new work indisputably conveys a distinct meaning or message, the work is not transformative if it “recognizably deriv[es] from, and retain[s] the essential elements of, its source material.” Id. at 24a.
The question presented is:
Whether a work of art is “transformative” when it conveys a different meaning or message from its source material (as this Court, the Ninth Circuit, and other courts of appeals have held), or whether a court is forbidden from considering the meaning of the accused work where it “recognizably deriv[es] from” its source material (as the Second Circuit has held).
Patent “Enablement”:
21-757 AMGEN INC. V. SANOFI
CERT. GRANTED 11/4/2022
Section 112 of the Patent Act provides that a patent’s “specification shall contain a written description of the invention, and of the manner and process of making and using it,” sufficient “to enable any person skilled in the art * * * to make and use the” invention. 35 U.S.C. § 112(a). The requirement that the specification teach skilled artisans “to make and use” the invention is referred to as the “‘enablement'” requirement. Markman v. Westview Instruments, Inc., 517 U.S. 370, 379 (1996).
The questions presented are:
1. Whether enablement is “a question of fact to be determined by the jury,” Wood v. Underhill, 46 U.S. (5 How.) 1, 4 (1846), as this Court has held, or “a question of law that [the court] review[s] without deference,” Pet. App. 6a, as the Federal Circuit holds.
2. Whether enablement is governed by the statutory requirement that the specification teach those skilled in the art to “make and use” the claimed invention, 35 U.S.C. § 112, or whether it must instead enable those skilled in the art “to reach the full scope of claimed embodiments” without undue experimentation-i.e., to cumulatively identify and make all or nearly all embodiments of the invention without substantial “‘time and effort,'” Pet.App. 14a (emphasis added).
Effect of Foreign Sales in a Trademark Infringement Analysis:
21-1043 ABITRON AUSTRIA GMBH V. HETRONIC INTERNATIONAL, INC.
CERT. GRANTED 11/4/2022
Petitioners-all foreign nationals-were subjected to a $90 million damages award under the Lanham Act, 15 U.S.C. § 1051 et seq., for allegedly infringing respondent’s U.S. trademarks. While trademark rights are distinctly territorial, the accused sales occurred almost entirely abroad. Of approximately $90 million in sales, 97% were purely foreign: They were sales in foreign countries, by foreign sellers, to foreign customers, for use in foreign countries, that never reached the United States or confused U.S. consumers. The Tenth Circuit nonetheless held that the Lanham Act applies extraterritorially to all of petitioners’ foreign sales. Recognizing that the circuits have splintered in this area, the Tenth Circuit adopted an expansive view that other courts, including the Fourth Circuit, have
concededly rejected. Under the Tenth Circuit’s view, the Lanham Act applies extraterritorially whenever foreign defendants’ foreign conduct allegedly diverts foreign sales from a U.S. plaintiff. Such an effect, the court held, sufficiently affects U.S. commerce because it prevents foreign revenue from flowing into the U.S. economy.
The question presented is:
Whether the court of appeals erred in applying the Lanham Act extraterritorially to petitioners’ foreign sales, including purely foreign sales that never reached the United States or confused U.S. consumers.
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