As an IP attorney, is there any spookier, hair standing on the back of the neck month than October? Dark robed figures wandering the streets, a slight chill in the air and the acrid smell of damp leaves. That’s right, it's Certiorween!
Like an unhinged mob on a sugar-seeking bender, the nine shadowy specters have descended upon the intellectual property neighborhood. The only question is –will this year be trick or treat?
As a relief, it appears that only three IP cases have drawn the interest of the Court singling out one patent, copyright and trademark case.
While not strictly an intellectual property category, I have also included the Court’s review of social media platform immunity in this report.
The following are the questions as stated on the Court’s website, which I believe gives some insight into how they are leaning in their choice to review these cases.
Patents
Enablement – Amgen v. Sanofi
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)
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).
The Court declined the question of whether enablement is a question of fact.
Copyright
Fair Use - Andy Warhol Foundation v. Goldsmith
This 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).
Trademarks
Enforcing Trademarks Outside the US – Arbitron v. Hetronic
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.
Social Media
Platform Immunity – Gonzalez v. Google
Section 203(c)(l) of the Communications Decency Act immunizes an "interactive computer service" (such as YouTube, Google, Facebook and Twitter) for "publish[ing] ... information provided by another" "information content provider" (such as someone who posts a video on YouTube or a statement on Facebook). This is the most recent of three court of appeals' decisions regarding whether section 230(c)(l) immunizes an interactive computer service when it makes targeted recommendations of information provided by such another party. Five courts of appeals judges have concluded that section 230(c)(l) creates such immunity. Three court of appeals judges have rejected such immunity. One appellate judge has concluded only that circuit precedent precludes liability for such recommendations.
The question presented is: Does section 230(c)(l) immunize interactive computer services when they make targeted recommendations of information provided by another information content provider, or only limit the liability of interactive computer services when they engage in traditional editorial functions (such as deciding whether to display or withdraw) with regard to such information?
The Court also has taken up the question of whether a social media platform (Twitter) can be sued by injured parties under the Anti-Terrorism Act.
Takeaways
For now, I have held off on a deep dive into the issues, but certainly I feel that we should look at all of these decisions with a critical eye. The commentary about the decline of the U.S. patent value appears to be on the rise. And, as much as the decline was contemporaneous with the American Invents Act, I believe that the Court’s increased interest in intellectual property issues over the past decade has contributed to this decline. Certainly, Court’s framing of the issues in the cases below seems to portend further atrophy of U.S. intellectual property rights.
The Amgen case has the potential to increase findings of invalidity based on an inadequate written description, while Warhol offers a contraction in copyright protection by recognizing broader avenues for finding fair use. Finally, Arbitron may shorten the reach of U.S. trademark registrations by preventing their enforcement outside of the U.S.
Spooky times indeed. Please stay tuned as these cases develop!