PART 1: IP ISSUES CURRENTLY PENDING BEFORE THE SUPREME COURT
the first part of our series, we briefly summarize the intellectual
property issues that the Supreme Court has already agreed to address in
2020. In particular, we provide a brief overview and key takeaways for
the Supreme Court’s consideration of:
Whether adding “.com” to a generic mark creates a protectable trademark;
The scope of appeals from IPR proceedings;
The ability to copyright software interfaces;
Requirements for recovering an infringer’s profits in trademark cases;
State sovereign immunity from copyright infringement claims; and
Copyright protection for state law annotations.
1. Whether Adding “.com” to a Generic Mark Creates a Protectable Trademark
USPTO v. Booking.com BV, No. 19-46, the Supreme Court will address
whether adding “.com” to a generic term can result in a protectable
To register a trademark under the Lanham Act, the mark
must be “distinctive” – i.e., capable of distinguishing the applicant’s
goods from those of others. See Two Pesos, Inc. v. Taco Cabana, Inc.,
505 U.S. 763, 768 (1992). Courts typically measure distinctiveness on an
ascending scale: (1) generic; (2) descriptive; (3) suggestive; (4)
arbitrary; and (5) fanciful. Id. Generic marks – those that refer to
“the genus of which the particular product is a species” – cannot
distinguish the goods of an applicant and therefore cannot be
In Booking.com, the United States Patent and
Trademark Office (the “USPTO”) refused to register the mark
“BOOKING.COM,” finding it generic. The Fourth Circuit disagreed, holding
that “BOOKING.COM” must be assessed as a whole, rather than considering
“booking” and “.com” separately. The court held that the USPTO failed
to offer any evidence showing that “booking.com” is used to refer
generically to online hotel reservation services. The court further held
that the mark is not generic because the “primary significance” of
“booking.com” to consumers – as evidenced by a consumer survey – is as a
brand name, not as a category of services.
On November 8, 2019,
the Supreme Court granted certiorari to consider whether “the addition
by an online business of a generic top-level domain (‘.com’) to an
otherwise generic term can create a protectable trademark.” The USPTO
argues that “booking” is a generic term that cannot be transformed into a
protectable trademark with the addition of “.com.” The USPTO reasons
that “.com” is akin to entity designations, such as “Co.” or “Inc.,”
which also cannot transform generic terms into protectable trademarks.
See Goodyear’s India Rubber Clove Mfg. Co. v. Goodyear Rubber Co., 128
U.S. 598 (1888). Booking.com responds that the USPTO is attempting to
create a per se category of generic marks, which the USPTO calls
“generic.com” marks. According to Booking.com, such a per se approach is
contrary to prior Supreme Court rulings that genericness is a factual
determination that depends on the “primary significance” of a mark to
consumers. See Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118
decision in Booking.com could have a significant impact on online
commercial activities. The USPTO has argued that protecting
“generic.com” marks will give companies holding those marks an unfair
ability to prevent competitors from describing their services. For
example, the USPTO argues that Booking.com could sue other online
reservation companies to prevent them from using “booking” in their
domain name (e.g., “ebooking.com,” “hotelbooking.com”). Conversely, if
the Supreme Court holds that “generic.com” names cannot be registered,
well-known domain names could lose protection and companies may
reconsider the use of such names in the future. Booking.com provided
several possible examples in its opposition to certiorari, including
“weather.com,” “answers.com,” and “ancestry.com,” all of which the USPTO
has previously registered.
The parties are scheduled to submit
merits briefs in Booking.com in January and February 2020 and we expect
oral argument later in the year.
2. The Scope of Appeals from IPR Proceedings
Click-To-Call Technologies, LP, No. 18-916, the Supreme Court will
address whether a patent owner can appeal a decision from the Patent
Trial and Appeal Board (“PTAB”) concerning the timeliness of a petition
for inter partes review (“IPR”). The Court’s decision in Click-to-Call
is likely to clarify more broadly the type of issues that may be
appealed from IPR proceedings.
Under 35 U.S.C. § 314(d), the
“determination . . . whether to institute an inter partes review under
this section shall be final and nonappealable.” While this language
seems straight-forward, the scope of the appeal bar has been the subject
of vigorous debate over the past few years.
the patent owner opposed institution of an IPR proceeding under 35
U.S.C. § 315(b), which provides that IPR “may not be instituted if the
petition requesting the proceeding is filed more than 1 year after the
date on which the petitioner, real party in interest, or privy of the
petitioner is served with a complaint alleging infringement of the
patent.” The patent owner in Click-to-Call argued that the petitioner
had been served with a complaint more than one year before filing the
IPR petition. The PTAB disagreed, instituted IPR, and ultimately
invalidated the challenged claims of the patent. On appeal, however, the
Federal Circuit found that the petition was time-barred under § 315(b).
The Federal Circuit thus vacated the PTAB’s final written decision.
issue now before the Supreme Court is whether the Federal Circuit had
authority to hear an appeal of the PTAB’s time-bar determination. The
patent owner, Click-to-Call Technologies, L.P., argues that the Federal
Circuit had authority because § 314(d) only bars appeal of the
determination “under this section” – i.e., the determination under §
314(a) that “there is a reasonable likelihood that the petition would
prevail with respect to at least 1 of the claims challenged.” Meanwhile,
the petitioner from the IPR proceeding argues that § 314(d) more
broadly bars consideration of questions that are closely tied to
institution of an IPR proceeding, including whether a petition is
time-barred. In support of this position, the IPR petitioner relies on
the Supreme Court’s holding in Cuozzo Speed Technologies, LLC v. Lee,
136 S. Ct. 2131, 2141 (2016), that there is no appeal of “questions that
are closely tied to the application and interpretation of statutes
related to the Patent Office’s decision to initiate inter partes
Supreme Court held oral argument in the Click-to-Call case on December
9, 2019. During the argument, the justices expressed competing concerns.
Justice Gorsuch asked, for example, whether broadly prohibiting appeals
under § 314(b) would prevent judicial review of time-bar determinations
that are made in bad faith. On the other hand, Justice Ginsburg
commented that there would be “something unseemly” about nullifying a
merits determination on appeal based on a misapplication of the time
We expect a decision in the Click-to-Call case during the
first quarter of 2020. The decision is likely to provide guidance on the
scope of issues that may be appealed from IPR proceedings.
3. Ability to Copyright Software Interfaces
Google LLC v. Oracle America, Inc., No. 18-956, the Supreme Court will
wade into a long-running battle of goliaths to determine the
copyrightability of software interfaces that allow computer programs to
communicate with each other and with computer hardware.
Google case concerns Java “application programming interfaces” (“APIs”),
which are “pre-written Java source code programs” that perform certain
computer functions. Oracle Am., Inc. v. Google LLC, slip op. (Fed. Cir.
Mar. 27, 2018). These APIs allow programmers to use prewritten code for
common functions rather than writing new code from scratch. Id. at 8.
The Java APIs are comprised of two types of source code – “declaring
code” that provides information about the function to be performed and
“implementing code” that gives step-by-step instructions to the computer
to perform the function. Id.
In developing the Android OS for
mobile phones, Google wanted to encourage Java developers to build
Android-compatible apps. Oracle Am., slip op. at 10. To facilitate
development of these Java-based apps, Google copied declaring code for
37 Java API packages relevant to mobile devices (11,500 lines of code)
as part of the Android platform. Id. While Google copied the Java API
declaring code, it wrote its own implementing code. Id.
Oracle accused Google of copyright infringement. After extensive
proceedings – including two jury trials and two Federal Circuit appeals –
the Federal Circuit held that the Java APIs are entitled to copyright
protection and Google’s copying of those APIs for the Android OS did not
amount to “fair use.” See Oracle Am., slip op.
In November 2019,
the Supreme Court granted certiorari to consider two issues: (1)
whether copyright protection extends to a software interface; and (2)
whether Google’s copying of a software interface in the context of
creating a new computer program constitutes fair use. Google has argued
that software interfaces are “methods of operation” and therefore not
copyrightable expression. Google further argues that there is a long
history of freely copying software interfaces, which is necessary to
ensure the interoperability of computer programs and hardware. According
to Google, such copying transforms the software interfaces into new
computer programs and qualifies as fair use.
briefs in the Google case will be filed in January and February 2020
and the Supreme Court will hear oral argument later in the year. Given
the wide-spread use of software interfaces and increasing demands for
interoperability, the stakes in Google are quite high. If the Court
confirms the copyrightability of software interfaces, companies could
restrict the use of the interfaces or demand licensing fees for such
use. Alternatively, if the Court finds that software interfaces are not
copyrightable, companies such as Oracle will need to find new methods to
monetize their products.
4. Requirements for Recovering an Infringer’s Profits in Trademark Cases
Romag Fasteners, Inc. v. Fossil, Inc., No. 18-1233, the Supreme Court
will address whether a trademark holder must establish willful
infringement to qualify for an award of an infringer’s profits.
Romag, a jury found that Fossil, Inc. had infringed trademarks
associated with magnetic clasps on handbags. The jury awarded Romag
Fasteners, Inc. $6.7 million in damages based on the profits Fossil
earned from the infringing sales. The district court, however, vacated
the damages award, finding that Romag failed to establish willful
infringement of the trademarks. The Federal Circuit affirmed, holding
that the Second Circuit requires proof of willful infringement as a
prerequisite for an award of an infringer’s profits.
Court granted certiorari and will now interpret the requirements of 15
U.S.C. § 1117(a), which provides that, “subject to the principles of
equity,” a plaintiff may “recover . . . defendant’s profits” upon
proving “a violation under section 1125(a) or (d) . . . or a willful
violation under section 1125(c).” Romag argues that this provision only
requires a “willful” violation in connection with § 1125(c) (trademark
dilution), and not in connection with § 1125(a) (false designation of
origin). Fossil, Inc. responds that “principles of equity” always
require a showing of willful infringement, including with respect to §
argument in the Romag case is scheduled for January 14, 2020. The
Court’s decision will likely have a significant impact on the
availability of damages for trademark infringement. Indeed, an
infringer’s profits are often the most viable method for quantifying
damages. If a trademark owner must show willfulness to recover profits,
trademark owners may be left with no monetary remedy in many cases.
5.State Sovereign Immunity from Copyright Infringement Claims
Allen v. Cooper, No. 18-877, the Supreme Court will consider the
constitutionality of a federal law that purports to abrogate state
sovereign immunity against claims of copyright infringement.
general matter, states have immunity from claims for violations of
federal law. Congress, however, may abrogate state sovereign immunity
under § 5 of the Fourteenth Amendment if Congress finds that there is a
pattern of states violating the law that would justify suspension of
immunity. See Florida Prepaid Postsecondary Education Expense Board v.
College Savings Bank, 527 U.S. 627 (1999). Congress also has authority
to abrogate state sovereign immunity with respect to federal laws
enacted pursuant to authority granted in Article I of the Constitution,
at least in the case of bankruptcy laws. See Central Virginia Community
College v. Katz, 546 U.S. 356 (2006). The scope of Congress’s authority
to abrogate state sovereign immunity under Article I, however, is not
entirely clear, as reflected by the decisions in Florida Prepaid and
In 1990, Congress passed the Copyright Remedy Clarification
Act (“CRCA”), which sought to abrogate state sovereign immunity from
claims of copyright infringement. In 2015, filmmaker Frederick Allen
relied on the CRCA to sue the State of North Carolina for copyright
infringement after North Carolina copied Allen’s footage of Blackbeard’s
pirate ship, Queen Anne’s Revenge. The district court initially allowed
the copyright claim to proceed, but the Fourth Circuit held that North
Carolina was immune from suit. In so holding, the Fourth Circuit struck
down the CRCA.
The Supreme Court granted certiorari to consider
whether Congress validly abrogated state sovereign immunity from
copyright infringement claims. Allen argues that the CRCA is valid
because the Intellectual Property Clause of Article I of the U.S.
Constitution expressly empowers Congress to pass copyright laws. Allen
thus asserts that, consistent with the Supreme Court’s decision in Katz,
Congress has the power to abrogate state sovereign immunity with
respect to the copyright laws. North Carolina responds that Katz
applies only in the context of the Bankruptcy Clause and that, pursuant
to the decision in Florida Prepaid, the Intellectual Property Clause
does not permit abrogation of state laws.
Allen also argues that
the CRCA is proper under the Fourteenth Amendment because it was enacted
based on studies showing that states are rampantly infringing
copyrights. North Carolina responds that the evidence of states
infringing copyrights is anecdotal and therefore insufficient to justify
abrogation of state sovereign immunity.
November 5, 2019, the Supreme Court heard oral argument in Allen.
During the argument, the justices expressed some concern that states
could infringe intellectual property rights with impunity if the CRCA is
struck down. The justices also acknowledged Congress’s power to
abrogate state sovereign immunity under the Fourteenth Amendment, but
questioned the sufficiency of the studies that Congress relied upon in
passing the CRCA. The decision in Allen is expected by late spring.
In the next installment of our four-part Intellectual Property Outlook series, we will delve into several possible developments in the law of patent eligibility that will be worth following in 2020.