15 In 15: The Top High Court Copyright, TM Rulings

By:Bill Donahue

Law360, New York (June 26, 2015, 4:27 PM ET) -- From illegal file-sharing to trade dress and everything in between, the U.S. Supreme Court has handled a wide range of copyright and trademark cases since the turn of the century. Here are the top 15, ranked.

15. Hana Financial Inc. v. Hana Bank

After more than a decade without a substantive trademark ruling, the court issued a ruling in January on who should decide the doctrine of tacking — an issue so narrow some experts were confused why the justices even took it on.

Siding with Korean firm Hana Financial in its dispute with rival Hana Bank, the court said tacking — which allows a company to slightly modify a trademark while maintaining the original first-use date — should be handled by juries, not by federal judges.

14. Golan v. Holder

The law that implemented the 1994 Uruguay Round Agreements included intellectual property provisions that restored copyright protection over a slew of foreign-owned works. Several challengers sued, saying that reviving dead copyrights both flouted the Constitution's limits on intellectual property and ran afoul of the First Amendment.

Basing the ruling heavily on an earlier decision that rejected both arguments for the Sonny Bono Copyright Term Extension Act, Justice Ginsburg and a six-judge majority sided with the government in January 2012, saying that the public domain was not “untouchable” and that Congress was within its rights to strike the foreign deal.

13. KP Permanent Make-Up Inc. v. Lasting Impression Inc.

When a company that's accused of trademark infringement argues a fair-use defense, the high court ruled in 2004 that it doesn't also have to show that the situation is entirely devoid of consumer confusion.

The Ninth Circuit said K.P. Permanent couldn't win a ruling that it had made fair use of the descriptive phrase “micro color,” which rival Lasting Impression claimed as a trademark. The court said confusion could still occur, foreclosing a finding of fair use.

But Justice David H. Souter and a unanimous court said in December 2004 that the fair use provision in the Lanham Act imposed no such requirement.

12. TrafFix Devices Inc. v. Marketing Displays Inc.

In 2001, the Supreme Court said the existence of an expired patent on design features makes it nearly impossible to later protect those elements with trademark law.

Marketing Displays once owned a patent on a "dual-spring design" to keep road signs upright in windy conditions, but it expired well before the company sued rival TrafFix Devices Inc. in 1995. The company instead lodged claims of trade dress infringement, saying the look of the component was associated with the company.

Justice Anthony Kennedy and a unanimous court shot down that claim in March 2001, declaring that “an expired utility patent has vital significance in resolving a trade dress claim, for a utility patent is strong evidence that the features therein claimed are functional,” the justice wrote.

11. Dastar Corp. v. Twentieth Century Fox Film Corp.

Shifting to the interplay of trademark and copyright law, the high court said in 2003 that the Lanham Act also couldn't be used to maintain perpetual control over once-copyrighted works that had slipped into the public domain.

Fox had sued Dastar for federal false designation of origin for chopping up an old World War II documentary — for which the copyrights had expired — and repackaging it as its own work.

In an entertaining opinion from Justice Antonin Scalia, the court shot down Fox's Lanham Act claim by saying that adopting it “would create a species of mutant copyright law that limits the public's federal right to 'copy and to use' expired copyrights.”

10. Moseley v. V Secret Catalogue Inc.

In a ruling that prompted Congress to pass new trademark legislation, the high court said in 2003 that an accusation of dilution requires proof of actual dilution, rather than a mere "likelihood” of dilution.

Victoria's Secret sued Victor Mosely for dilution over his “Victor's Little Secret” adult novelty retail operation, but Justice John Paul Stevens said in 2003 that Victoria's Secret had only shown the threat of dilution. The FTDA didn't contain any of the “likelihood” language found in various state dilution statutes, the justice said, meaning the federal law “unambiguously requires an actual dilution showing.”

The ruling led to the passage of the Trademark Dilution Revision Act of 2006, which expressly overturned it. The new law said parties could file lawsuits even when there was only a “likelihood” of dilution, similar the “likelihood of confusion” required for trademark infringement.

9. New York Times Co. v. Tasini

Grappling with mass digitization of copyright works, the high court said in 2001 that when newspapers allow their back issues to be included in electronic databases like Lexis Nexis, they need to seek new licenses from the authors of freelance stories included in those issues.

Freelancers sued the New York Times, Time Inc. and various others, saying they had only licensed their stories to be published in collective work, not republished as individual articles in an electronic format like an online database. In 2001, Justice Ginsburg agreed.

“It would scarcely preserve the author's copyright in a contribution as contemplated by Congress if a print publisher, without the author's permission, could reproduce or distribute discrete copies of the contribution in isolation or within new collective works,” she wrote.

8. Petrella v. Metro-Goldwyn-Mayer Inc. et al.

The Copyright Act has an explicit three-year window after an infringement in which a copyright owner can sue, and the high court said last year that it can't be abridged by common-law time limits on taking legal action.

The daughter of the author of "Raging Bull" sued MGM over her father's ownership rights in the iconic boxing flick, but both a district court and the Ninth Circuit said she had run afoul of laches — an equitable doctrine barring suits after unreasonable delays — by waiting 18 years to file the case. The court even tossed claims based on infringement that took place during copyright's three-year window.

Overturning that ruling in May 2014, Justice Ginsburg said court-made doctrine like laches simply couldn't override a clear statutory provision written by Congress, meaning lawsuits can still be filed even after extremely long delays.

"Inviting individual judges to set a time limit other than the one Congress prescribed would tug against the uniformity Congress sought to achieve in enacting [the statute],” Justice Ginsburg wrote.

7. Kirtsaeng v. John Wiley & Sons Inc.

Faced with the sale of gray-market textbooks — books legally produced overseas but then shipped back and sold in the U.S. without the authorization of the publisher — the high court said in 2013 that the first-sale doctrine still bars the publisher from suing.

Wiley sued Kirtsaeng, a Thai native, after it discovered that he had been shipping cheaper foreign editions of the company's textbooks to the U.S. and selling them at a profit. The books were legally produced, but Wiley intended them — and priced them — for sale exclusively outside the U.S.

Wiley said the first-sale doctrine, which allows the buyer of a copy of a copyrighted work to resell it without permission, didn't apply to books created outside the U.S. The Second Circuit agreed, allowing the company to sue Kirtsaeng.

In March 2013, Justice Stephen G. Breyer and a six-justice majority overturned the Second Circuit, ruling that the doctrine's protections apply equally to copies of works “lawfully made abroad.”

“Both historical and contemporary statutory context indicate that Congress did not have geography in mind,” Justice Breyer wrote.

6. Wal-Mart Stores Inc. v. Samara Brothers Inc.

The shape or design of a product can serve the same source-designating function as a name or logo — Coca-Cola's iconic bottle is a great example — but the justices made clear in 2000 that anybody claiming that kind of monopoly bears the burden of proving it.

Wal-Mart was sued for copying the design of kids' apparel in which Samara Brothers claimed unregistered trade dress rights. The question became: To protect the design, did Samara need to prove that it had developed a secondary-meaning in the minds of consumers, or could it merely claim that the design could automatically function as a trademark because it was “inherently distinctive.”

In March 2000, Justice Scalia and a unanimous court said that anyone claiming trademark rights in a product configuration bears the burden of proving secondary meaning — a decision seemingly driven by policy concerns over the kind of lawsuits that might result otherwise.

“Consumers should not be deprived of the benefits of competition with regard to the utilitarian and esthetic purposes that product design ordinarily serves by a rule of law that facilitates plausible threats of suit against new entrants based upon alleged inherent distinctiveness,” the court wrote.

5. B&B Hardware Inc. v. Hargis Industries Inc. et al.

In the court's most recent trademark ruling, the justices earlier this year greatly increased the importance of disputes before the Trademark Trial and Appeal Board by declaring that decisions made by the administrative body could later be binding on a federal court.

B&B Hardware, the maker of “Sealtight” self-sealing fasteners, fought rival Hargis Industries Inc. for 18 years over its “Sealtite” brand. B&B initially won a ruling from TTAB that Hargis' similar-sounding brand would likely confuse consumers, but when a federal judge refused to consider the earlier ruling binding — or even give it any deference at all — B&B lost a later infringement case.

On March 24, Justice Samuel Alito and a seven-justice majority reversed the ruling, finding that courts are precluded from disagreeing with an earlier TTAB ruling when the “usages adjudicated by the TTAB are materially the same as those before a district court.”

4. American Broadcasting Companies v. Aereo

In a battle between disruptive technology and incumbent media companies, the high court said in 2014 that a company that operates like a cable provider needs to pay for content — no matter the engineering gimmickry.

Aereo was a legally engineered product, built to push the boundaries of a Second Circuit ruling that had given the green light to remote DVRs. Like cable companies merely providing an off-site hard drive for subscribers to record and watch programs, Aereo said it was merely providing tiny off-site antennae with which consumers could choose to watch live TV.

ABC and the other major networks freaked out — largely because pay-TV companies had been forking over billions in retransmission fees for what Aereo now said it could do for free. They sued, claiming Aereo was violating their right to “publicly perform” their programming.

In June 2014, Justice Stephen Breyer and a six-judge majority sided with the networks, saying Aereo was "not simply an equipment provider," but something closer to a pay-TV provider.

"These behind-the-scenes technological differences do not distinguish Aereo's system from cable systems, which do perform publicly," the justice wrote. "Congress would as much have intended to protect a copyright holder from the unlicensed activities of Aereo as from those of cable companies."

3. Lexmark International v. Static Control Components

In a ruling with implications beyond the Lanham Act, the Supreme Court said in March 2014 that a company doesn't have to be a direct competitor to sue under the statute's false advertising provisions.

As part of a decade of sprawling litigation, Static Control sued Lexmark for telling customers that Static's chips — which are used by third-party companies to enable empty Lexmark printer cartridges to be refilled and resold — were illegal.

The question that eventually reached the high court was whether Static — a component company that wasn't a direct competitor to Lexmark's printer cartridge business — could nonetheless sue over the disparaging claims. Courts had developed three different standards, including one that said only direct competitors could sue.

Rejecting all three standards, Justice Scalia and a unanimous court wrote their own — in the process, creating a two-part standard for statutory standing that many speculate could be applied to laws beyond the Lanham Act in the future.

2. Eldred v. Ashcroft

Four years after it was passed in 1998, the Supreme Court upheld the controversial Sonny Bono Copyright Term Extension Act, saying continued extensions of copyright don't violate the Constitution's requirement that copyrights exist only “for limited times.”

The law, known pejoratively as the Mickey Mouse Protection Act due to Walt Disney Co.'s purported heavy lobbying, greatly extended the terms for both existing and new copyrights. The challengers said Congress, through continual retroactive extensions of copyright, was effectively flouting the framers' restriction.

In January 2003, Justice Ginsburg and a seven-judge majority disagreed, saying they saw nothing to prove that the law was an “attempt to evade or override the 'limited times' constraint.”

“Critically, petitioners fail to show how the CTEA crosses a constitutionally significant threshold with respect to 'limited times' that the 1831, 1909 and 1976 Acts did not,” Justice Ginsburg wrote. “Those earlier acts did not create perpetual copyrights, and neither does the CTEA.”

1. MGM Studios Inc. v. Grokster Ltd.

Twenty years after the Supreme Court said the VCR was legal, the justices once again issued a landmark ruling on the delicate balance between copyright protection and innovative media technology. This time around, though, the court went the other way.

MGM and more than two dozen other media companies had sued Grokster, saying the company should be held liable for the huge amount of illegal downloading taking place on its epoynmous peer-to-peer service, which arose after the demise of Napster.

That argument seemed to conflict with a key finding in the VCR ruling, Sony Corp. v. Universal City Studios: That even if a device could be used for copyright infringement, the manufacturer couldn't be held liable for illegal behavior by users if machine was “capable of substantial noninfringing uses.” The Ninth Circuit said as much, ruling in 2004 that Grokster couldn't be sued.

But in June 2005, Justice Souter and a unanimous court reversed the Ninth Circuit, saying Grokster and other file-sharing sites had gone too far. Unlike the VCR, file-sharing services were “mostly used” to share copyright works without authorization, the court said, and Grokster had both encouraged such behavior and made money from it.

“Nothing ... requires courts to ignore evidence of intent if there is such evidence, and the case was never meant to foreclose rules of fault-based liability derived from the common law,” Justice Souter said.