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"Soft" IP Takes Center Stage at the Supreme Court

Bylined Articles
Sterne, Kessler, Goldstein & Fox

The “soft” IP world is looking forward to rulings in six trademark and copyright cases this term, far more than in recent years, and all of which address points of uncertainty that will impact trademark and copyright protection and enforcement strategy for years to come.

Two of the three trademark cases will likely influence the cost/benefit analysis of bringing a trademark infringement case. The first, Romag Fasteners Inc. v. Fossil Inc., will address a split in the circuits as to whether willful infringement is required for an award of the infringer’s profits. The second, Lucky Brand Dungarees Inc. v. Marcel Fashion Group Inc., will consider whether a defendant is precluded from raising defenses that were not litigated or resolved at some earlier point in litigation between the two parties.

The third trademark case, U.S. Patent and Trademark Office v. Booking.com B.V., will look at whether the addition of a generic gTLD (.com) to an otherwise generic term can create a protectable trademark.

On the copyright side, two of the three cases relate to the interplay between government publications and copyright law. In the first, Georgia v. Public.Resource.Org Inc., the Court will consider whether government entities can charge for access to certain legal texts – in this case, an annotated version of the Georgia state code, despite the long standing rule that “government edicts” are not covered by copyright law. The second, Allen v. Cooper, will evaluate whether state governments have sovereign immunity from copyright lawsuits, notwithstanding the Copyright Remedy Clarification Act (CRCA), which aimed to allow infringement suits against states; a lower court ruled the CRCA unconstitutional.

The final copyright case, Google LLC v. Oracle America Inc., involves the question of fair use relating to software code, and will be the first case ruling on the copyrightability of software. Of the six, this case will likely get the most press, and have the farthest reaching ramifications for the tech community - outside groups have already submitted over two dozen amicus briefs, and Oracle asked for $9 billion in damages.