For our weekly SoCal IP Institute meeting on Monday, March 27, 2017, we will discuss the following Supreme Court cases:
Star Athletica, LLC v. Varsity Brands, Inc. et al. (March 22, 2017) (available here). We previously discussed this case here when it was before the 6th Circuit. There, the 6th Circuit held that Varsity’s designs for its cheerleader uniforms were entitled to copyright protection because they could exist separately, at least in the minds of a viewer of the uniform, from the functional article – the uniform.
Here, the Supreme Court modified the requirements for copyrights on useful articles. The modification is as follows:
A feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.
Put to the facts of this case, the Supreme Court reasons that the design of the cheerleader’s uniforms were separable because they can be perceived as a two-dimensional works of art and would qualify as a pictorial or graphic work in that form. Accordingly, Varsity’s success at the 6th Circuit is affirmed.
SCA Hygiene Prods Aktiebolag et al. v. First Quality Baby Products, LLC (March 21, 2017) (available here). Here, SCA sued First Quality for patent infringement and the district court granted summary judgment on grounds of equitable estoppel and laches because from the first contact to the actual suit, 7 years elapsed. The Federal Circuit affirmed the laches holding based upon Federal Circuit precedent. The Supreme Court granted certiorari.
Here, after much reasoning and discussion, the Supreme Court held that where the Congress has spoken to specifically enable a six-year time frame for seeking damages for patent infringement, that the court-created doctrine of laches should not apply. Thus, regardless of any potential laches issue, the Patent Act makes any infringing act that accrues within the last six years actionable and recoverable. Laches does not apply anywhere in that statutorily mandated time frame.
All are invited to join us on Monday, March 27, 2017, at noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Elisha Manzur by 9 am Monday morning.