Business Law Journal

On March 21, 2025, the California Supreme Court rendered a decision in Madrigal, et al v. Hyundai Motor America (S280598) regarding the following question: “Does a plaintiff who has rejected a 998 offer or allowed it to be deemed withdrawn for want of timely acceptance, but later agrees to settle before trial, necessarily avoid the postoffer cost-shifting effects of section 998?”  The Supreme Court held that a plaintiff does not necessarily avoid section 998’s cost-shifting effects.

International enforcement of U.S. trademark rights just became much more difficult.  On Thursday, the Supreme Court issued a unanimous decision with concurrences from Justices Jackson and Sotomayor in Abitron Austria GmbH v. Hetronic International, Inc., No. 21-1043, 2023 WL 4239255 (U.S. June 29, 2023) (“Abitron”).  The Court settled a decades-long circuit split on extraterritorial application of the Lanham Act by applying a new framework that focuses on where the mark is being used in commerce rather than where the effect of that use is felt.

Following the Supreme Court’s recent ruling narrowing the patent assignor estoppel doctrine, employers may have more difficulty shielding their patents from challenges by former employee-inventors and their new employer-competitors.

On April 5, 2021, the Supreme Court put an end to the decade-long copyright dispute between tech giants Google and Oracle America.  In a 6-2 decision authored by Justice Breyer, the Supreme Court held in Google LLC v. Oracle America, Inc., 593 U.S. ___ (2021), that Google’s copying of approximately 11,500 lines of code from Oracle’s Java SE Application Programming Interface (“API”) was “fair use” and, therefore, did not constitute copyright infringement.  The Court’s decision will undoubtedly have ramifications for decades to come on the “fair use” doctrine in commercial works, and in particular in the use of computer code in commercial software.

The two questions before the Court were:  (1) whether the Java SE code that Google copied was entitled to copyright protection in light of the Copyright Act’s inclusion of computer programs as copyrightable material and its prohibition on protection for “processes” and “methods of operation,” and (2) assuming the code was copyrightable, whether Google’s use qualified as “fair use.”  Recognizing that “a holding for Google on either question presented would dispense with Oracle’s copyright claims,” the Court only answered the fair use inquiry.  In view of “the rapidly changing technological, economic, and business-related circumstances,” the Court exercised judicial restraint by stating it would “not answer more than is necessary to resolve the parties’ dispute.”  Although Google could have prevailed had the Court found that the API was not copyrightable, the Court saved that question for another day and assumed for the sake of argument that it was.

Justice Breyer, joined by Chief Justice Roberts and Justices Sotomayor, Kagan, Gorsuch, and Kavanaugh, focused on the fair use defense by analyzing each of the four statutory factors enumerated in 17 U.S.C. § 107:  (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.  The Court found that each factor weighed in Google’s favor, thereby reversing the Federal Circuit’s decision to the contrary.

Justice Thomas, joined by Justice Alito, dissented, stating that the majority erred by not answering the question of copyrightability and that the fair use factors actually favored Oracle.  The dissent criticized the majority’s approach of sidestepping the question of whether the API was copyrightable, arguing that the majority’s failure to address the issue distorted its fair use analysis and ultimately rendered the code as “less worthy of protection.”

The Court’s decision sets an important precedent as it has the potential to significantly expand the fair use doctrine, even in non-computer software contexts.  If you are an author, musician, programmer, or other content creator, or have been accused of copyright infringement, it is important to consult with experienced intellectual property counsel to determine how the decision impacts you.

AALRR has a dedicated group of attorneys on its Intellectual Property Team with the experience and expertise to vigorously enforce your copyrights and defend you against claims of copyright infringement.  Attorneys on the Firm’s Intellectual Property Team can also assist you with registration of your copyrights with the United States Copyright Office.  Contact the authors for assistance with your copyright and other intellectual property needs.

This AALRR post is intended for informational purposes only and should not be relied upon in reaching a conclusion in a particular area of law. Applicability of the legal principles discussed may differ substantially in individual situations. Receipt of this or any other AALRR publication does not create an attorney-client relationship. The Firm is not responsible for inadvertent errors that may occur in the publishing process. 

© 2021 Atkinson, Andelson, Loya, Ruud & Romo

On May 14, 2020, the Supreme Court unanimously ruled in favor of denim company Lucky Brand Dungarees, Inc. (“Lucky Brand”) in its decades-long trademark dispute with Marcel Fashions Group, Inc. (“Marcel”), holding that Lucky Brand was not precluded from asserting an unlitigated defense from a prior lawsuit with Marcel.  In Lucky Brand Dungarees, Inc., et al. v. Marcel Fashions Group, Inc., 590 U.S. ___ (2020), the Supreme Court rejected the Second Circuit’s application of the so-called “defense preclusion” doctrine and confirmed that any preclusion of a litigant’s defenses must comply with traditional res judicata principles.

On April 23, 2020, the United States Supreme Court ruled that a trademark holder need not prove that the infringement of its trademark was willful in order to recover an award of the infringer’s profits.  The Court’s decision in Romag Fasteners, Inc. v. Fossil, Inc. resolves a longstanding circuit split and may make it easier for trademark holders in many jurisdictions, including the Ninth Circuit, to recover damages in trademark infringement cases. 

On March 23, 2020, the Supreme Court unanimously held in Allen v. Cooper that, absent consent, states cannot be sued for copyright infringement and are shielded from such actions under the doctrine of sovereign immunity.  The Court found that the Copyright Remedy Clarification Act of 1990 (CRCA), which expressly provided that states “shall not be immune” under any doctrine of sovereign immunity for copyright infringement, was an unconstitutional abrogation of state sovereign immunity.  However, the Court also noted that its decision would “not prevent Congress from passing a valid copyright abrogation law in the future” that is more tailored to pass constitutional muster.

On December 11, 2019, the Supreme Court unanimously ruled in Peter v. NantKwest, Inc. that the United States Patent and Trademark Office (USPTO) cannot recover the salaries of its attorneys or paralegals as “expenses” in district court cases filed under 35 U.S.C. § 145.

October marks the opening of the new Supreme Court 2019-2020 term and there is one case in particular that trademark practitioners are anxiously awaiting for the Court to weigh in on to resolve a longstanding circuit split and definitively answer the question whether willful infringement is a prerequisite for an award of an infringer’s profits in an action for trademark infringement.

On September 12, 2019, the United States Court of Appeals for the Federal Circuit held for the first time that “claim language can limit the scope of a design patent where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.”  The Federal Circuit’s order affirming the dismissal of a complaint for design patent infringement based on a narrowed construction of the patent-in-suit makes clear that words matter in a design patent.