The Supreme Court and IP

by Gerard Magliocca · January 22, 2016

I would like to dissent from a recent trend that I see in IP. Two recent certiorari petitions (still pending) are asking the Court to get involved in doctrines that they have left alone for decades–the right of publicity and design patents. These petitions are supported by many scholars that I respect, but I submit that they are making a mistake in asking for this sort of intervention.

While there are significant First Amendment issues raised by the right of publicity, I see no indication that publicity law is working poorly and needs help for the Justices. Moreover, I see no reason to think that the Justices will actually be helpful in an area of law that they know nothing about. Design patent, I think, is the same story, though there the argument for Supreme Court action is even weaker given the absence of any constitutional concerns.

I’m not against asking the Supreme Court to decide IP cases. Far from it. With respect to utility patents, there was (and still is) a need to rein in the Federal Circuit’s errors and excesses. In the two areas that I’m highlighted, I think the Court will just mess things up and should stick with “Do No Harm.”

James Grimmelmann says:

January 23, 2016 at 3:45 pm

The case for Supreme Court intervention in design patent law is almost identical to the case for utility patent law because the underlying problem is the same: the Federal Circuit has adopted idiosyncratic doctrines — usually but not exclusively ones that favor patent owners — that are out of sync with the rest of U.S. law and are bad substantive policy. Indeed, they’re often precisely the same doctrines, because most of design patent law has the same statutory basis as utility patent law and the Federal Circuit often approaches thems similarly. This is not to say the Supreme Court would do a good job if it were to get involved, but the same could be said of some of its recent forays into utility patent law.
Brett Bellmore says:

January 24, 2016 at 10:25 am

If they’re going to get involved in IP, they might more productively address copyright. The routine extensions of that privilege have gotten far beyond anything their explicitly temporary nature could justify, and much to the public’s detriment.
James Grimmelmann says:

January 24, 2016 at 1:28 pm

Brett, the Supreme Court has explicitly blessed those routine extensions of copyright. Eldred v. Ashcroft, 537 U.S. 186 (2003) (upholding constitutionality of retroactive term extension by a 7-2 vote); Golan v. Holder, 132 S. Ct. 873 (2012) (upholding constitutionality of restoration of copyright to foreign works that were not previously protected under U.S. copyright laws for various reasons, again by a 7-2 vote). And there are cases like Grokster and Aereo in which the Court has construed the exclusive rights broadly. There are some recent copyright cases, like Kirtsaeng on first sale, in which the Court has limited copyright, but the expansive scope of copyright is not generally due to Supreme Court neglect.
- Brett Bellmore says:
  
  January 24, 2016 at 6:23 pm
  
  The law is probably the only serious intellectual field where, if you make a mistake, it’s thought that you have some obligation to repeat it. Yup, the Supreme court has screwed up on copyright. Seems to me they have an obligation to make it right.
  - Joe says:
    
    January 24, 2016 at 9:37 pm
    
    The Supreme Court doesn’t think the extensions were a mistake as a matter of constitutional law though I agreed with Breyer’s dissent in two of the key cases. To the degree is a “detriment” as a matter of public policy, that’s up to Congress. There are sensible reliance interests in law, interests assumed to be what the Constitution expects in our system when you apply it. But, it is not as if other serious intellectual fields follow a conservative policy. Long established facts are no longer relied upon only with a certain clear tipping point that shows they are wrong.
    - Joe says:
      
      January 24, 2016 at 9:42 pm
      
      edit: “But, other serious intellectual fields follow a conservative policy.”
      
      Anyway, as to the other comments, seem at least some disagree with GM that there is “no indication that publicity law is working poorly” and/or that even if there was, unclear the Supreme Court would make things better.
    - Brett Bellmore says:
      
      January 25, 2016 at 6:42 am
      
      The Supreme court doesn’t think the Slaughter House cases were a mistake as a matter of constitutional law. Or else they’d have just over-ruled them, instead of inventing “substantive due process” as a work around to avoid admitting the previous Court had gotten P&I wrong.
      - Shag from Brookline says:
        
        January 25, 2016 at 9:34 am
        
        I suppose Brett would make this same point about Plessy v. Ferguson.
      - Joe says:
        
        January 25, 2016 at 11:00 am
        
        Depends on what part of the cases we are talking about here — the general idea that the federal courts do not have a broad reach over non-racial cases was deemed a “mistake” fairly quickly. As to “inventing,” the concept already was in place and used by antebellum Republicans against slavery. Anyway, the reply seems a tad random.
Brian L. Frye says:

January 24, 2016 at 1:42 pm

+1 to James. I’m a little confused by this post. Are you saying it’s a strategic mistake to ask SCOTUS to get involved because it is likely to make right of publicity & design patent even worse? Or are you saying there’s nothing to fix? I am sympathetic to the former point, but the latter strikes me as something of a minority opinion.