Wizards & Prophets Blog

by Professor Shubha Ghosh (Crandall Melvin Professor of Law, Syracuse University College of Law)

Here are the first few paragraphs from a forthcoming article in Science and Policy, a peer reviewed journal published at Oxford:

Charting the course of science and human destiny, Nobel Laureate James Watson announced: “We used to think our future was in the stars. Now we know our future is in the genes.” If “our future” meant the future of business and industry, the prediction would have ended with “our future is in data.” The battle over gene patenting, as I argue here, is largely about data. While many welcome limitations on gene patenting and putting genes into the public domain, the benefits of data-mining and the emerging markets for precision medicine through genomics should not be ignored.

As one scholar puts it, “data mining [sic] involves the search of large data sets to discover new insights.” In the case of gene patenting, data mining entails the analysis of large amounts of genetic data to identify proclivities to disease and potential diagnostics and therapeutics. One example is a patent, discussed below, covering algorithms for searching genetic data to identify gene clusters associated with proclivities for certain diseases. By disallowing patents on isolated DNA sequences, the Supreme Court has opened the door for data-mining patents.

The US Supreme Court’s 2013 decision, holding patent claims to isolated, endogenous DNA sequences to be invalid, seemed to have limited negative impact on Myriad Genetics whose patent on the isolated BRCA1 and BRCA2 genes were at the heart of the case. This paper explains this minimal impact in two ways. First, the Court’s decision still left synthetic DNA patentable, leaving that as a fruitful source for commercialization by companies like Myriad. The Federal Circuit’s subsequent decision, however, invalidated Myriad’s product claims over the synthetic PCR primers based on the isolated DNA sequences. Nonetheless, it is open how far future courts may go in invalidating products based on isolated or synthetic DNA sequences. Second, the Court’s decision did not address the patentability of mined genetic data for diagnostic and therapeutic purposes. This field of genetic data-mining is precisely where Myriad has moved in its patenting activity. Although the Supreme Court’s 2014 decision in Alice placed seemingly insurmountable limits on process patents, Myriad has been successful in obtaining at least one datamining patent in 2017 and several more applications are pending. This paper explores the shift from genes to data in the aftermath of the AMP v Myriad decision.

by Quinn N. Cartelli (Syracuse University College of Law Class of 2019)

Many of the cases that cited Star Athletica cited it for the purpose of discussing statutory interpretation. For example, Artis v. District of Columbia; United States v. Arif; and Penobscot Nation v. Mills all stand for the proposition that “courts must give effect to the clear meaning of statutes as written [,]… giving each word its ordinary, contemporary, common meaning.” There are many other cases that cite Star Athletica for this purpose. For example: Stearns v. Pratola; D.C. v. Abbott Labs, Inc.; Daley v. Smith & Nephew Inc.; Graff v. Leslie Hindman Auctioneers; FTC v. Lanier; Mont. Health Co-op v. United States and others.

In Conan Props. Int’l LLC v. Sanchez, which is a case from the U.S. District Court for the Eastern District of New York, at issue is copyright infringement. The court goes through the analysis of determining whether the characters in the works are “distinctive”. They look at whether the characters have a modicum of creativity and state that the character must be “delineated” and include characteristics that aren’t stock, trivial elements of expression. The Court states that it may be more difficult for an author to satisfy the “fixation and originality requirements” for characters than for other works of authorship. The Court states that it may be easier for an author to satisfy the fixation and originality requirements in forms of authorship in which an author’s originality is difficult to define, and whose expression is inherently abstract, such as the design of useful articles in Star Athletica.

In Lego v. Best-Lock Constr. Toys, Inc., which is a case from the U.S. District Court for the District of CT, Lego alleges that Best-Lock infringed Lego’s copyrights through its actions by producing and selling similar mini-figures in the U.S. Lego seeks to enjoin and restrain Best-Lock from manufacturing or selling its mini-figures and asserts claims for damages. Best-Lock raised the argument that discovery was required to determine whether the copyright registrations were invalid and Lego’s responses to the discovery requests appeared inadequate and improper according to the Court. Throughout the opinion, Best-Lok’s underlying assertion is that the “documents or testimony that Lego could supply would somehow impact the determination of which elements, if any, of the Minifigures are protectable under the copyrights”. Best-Lock doesn’t explain how discovery as to what Lego considered protectable is relevant to Lego’s motion for summary judgement on the copyright infringement claim. Best-Lock’s position appears contrary to the position expressed in Star Athletica, where the Supreme Court noted that in determining whether the design of a useful article is eligible for copyright, the “inquiry is limited to how the article and feature are perceived, not how or why they were designed.” The Court states that thus, Lego’s argument that the “scope” of the copyrights would be determined by the registrations and deposits materials already in the record, is well founded.

The case Jetmax Ltd. V. Big Lots, Inc., is a case from the United States District Court for the Southern District of New York. It centers around a copyright infringement dispute over Jetmax’s Metal Wire Wrapped Tear Drop Light Set (the “Tear Drop Light Set”), which is an ornamental light set comprised of a series of molded, decorative tear shaped covered lights with a wire frame over the covers. The plaintiffs seek to show that the defendants have willfully infringed on the copyright through their sale of a substantially similar light set. The defendants argue that plaintiff doesn’t own a valid copyright registration and that the Tear Drop Light Set isn’t copyrightable because it’s a useful article and lacks originality. The Court determines that under the recent decision in Star Athletica, L.L.C. v. Varsity Brands, the Tear Drop Light Set contains artistic elements that “can be identified separately from and are capable of existing independently of the utilitarian aspects of the article.” The Court rejects the defendants’ argument that the Tear Drop Light Set in its entirety isn’t entitled to copyright protection as a useful article. Here, the Court reiterated the two-part test which originated in Star Athletica and said that 1) the decisionmaker need only be able to look at the useful article and spot some “two-or-three-dimensional element that appears to have pictorial, graphic, or sculptural qualities”. Star Athletica; and 2) the “decisionmaker must determine that the separately identified feature has the capacity to exist apart from the utilitarian aspects of the article”. Both requirements were satisfied in this case. The decorative covers are sculptural works that are capable of existing apart from the utilitarian aspect of the light set, i.e. the light bulbs and other components that cause the Tear Drop Light Set to light a room. The primary purpose of the cover is artistic; once the covers are removed, the remainder is a functioning but unadorned light string.

L.A. T-Shirt & Print, Inc. v. Rue 21, Inc. is a case from the U.S. District Court for the Southern District of New York. Here, L.A. T-Shirt creates and obtains rights to two-dimensional designs used in apparel. At issue in this case are four copyrighted designs. The plaintiffs discovered that defendants were selling garments featuring “identical or substantially similar” designs. The Defendants don’t dispute that the plaintiffs have valid copyrights for their designs. Here, when discussing the eligibility of the plaintiffs works for copyright protection, the Court follows Star Athletica and says that there is no dispute that two-dimensional artworks, such as Plaintiff’s designs, are eligible for copyright protection. Because the Copyright Act defines copyrightable subject matter as “original works of authorship fixed in any tangible medium of expression” and the plaintiffs registered their works as 2D artworks, which qualify as original works of authorship, the plaintiff’s works are protectable. The Court here concluded that the plaintiffs alleged that Defendants’ works are strikingly similar to their own, such that a fact-finder could infer that Defendants copied their protected works. As a result, the Plaintiffs stated a claim for copyright infringement.

In Silvertop Assocs. V. Kangaroo Mfg., a case from the District Court for the District of New Jersey, Kangaroo is alleged to have infringed the copyright of a banana costume made and copyrighted by Plaintiff Silvertop, doing business as Rasta Imposta. The Court goes through the steps of establishing copyright infringement and focuses on the requirement for ownership of a valid copyright. The Court begins by considering whether the Banana Costume is a useful article and declares that it is a useful article under the definition provided in Copyright Act §101. This court discusses Star Athletica as having clarified the boundaries of when useful articles can be eligible for copyright protection. This court also re-articulates the two-part test from Star Athletica and says that for a useful article to be eligible for copyright protection, it needs to be separable in that 1) it can be identified separately from, and 2) is capable of existing independently of the utilitarian aspects of the article. The Court addressed the cutout holes in the costume first and determined that a close reading of Star Athletica should lead to a finding that the cutout holes are not a feature eligible for copyright because of they perform a solely utilitarian function. The court hen looks at the colors, lines, shape and other features of the costume but states that they must view the Banana Costume as a whole, as opposed to inspecting the individual components. The Court finds that there is a reasonable probability of success that Rasta Imposta will prove ownership of a valid copyright. The Court finds that Rasta Imposta can prove that the banana design can be identified separately from and can exist independently from the utilitarian aspect of the article and can identify the features of the costume having a PGS quality. If these features were separated from the costume, it would qualify as a 2D work of art. The design, when considered as a whole is separable and eligible for copyright protection. The Court distinguishes from the cheerleader’s uniform in Star Athletica by saying that there is no universal view of what a banana costume is or what it should look like and that there are dozens of unique and fanciful ways one can design a costume that looks like a banana.

In Design Ideas, Ltd. V. Meijer, Inc., the U.S. District Court for the Central District of Illinois, Springfield Division, the plaintiff alleges that the defendants have infringed on their produce, Sparrow Clips. A Sparrow Clip is a clothespin with a silhouetted bird design on top. The Plaintiff claims copyright only in the separate bird silhouette and the color selection of each set of Sparrow Clips. In 2016, plaintiff sought partial summary judgement on its copyright infringement claim asserting that they owned a valid copyright and defendant infringed on it by producing and seling exact copies. The defendants sought partial summary judgement asserting that the plaintiff could’t prove the existence of a valid copyright because Sparrow Clips aren’t sufficiently creative to be copyrightable and are useful articles that aren’t subject to copyright protection. The Court looked at physical and conceptual separability and determined that the Sparrow Clips were useful articles, but that the design was physically and conceptually separable from the utilitarian aspect of the work. In 2017, when the U.S. Supreme Court decided Star Athletica, the court abandoned the distinction between physical and conceptual separability and implemented the two-part test from Star Athletica. Applying this test, the Court found that the bird portion of the Sparrow Clip is subject to copyright protection. The bird portion of the clips are 3D works of art separate from the useful article and have PGS qualities. The bird portion would qualify as protectable sculptural work on its own if it were imagined separately from the useful article into which it is incorporated.

In Glass Egg Digital media v. Gameloft, Inc., which is a case from the U.S. District Court for the Northern District of California, involves copyright infringement. Gameloft USA is moving to dismiss all claims alleged against them. Although the parties disagree as to which country’s law governs the question of ownership, the parties agree US law governs the “scope of protection”. Here, the work at issue includes customized placement and arrangements of polygons, as well as special effects, on 3D digital car models, which Glass Egg alleges are copyrightable. Previously, the Court dismissed Glass Egg’s copyright infringement claim for failure to allege facts sufficient to show the elements were copyrightable or infringed. Glass Egg uses part of the Star Athletica test and contends that the polygon arrangements possess the requisite level of originality to be afforded copyright protection and can be separated from the shape and appearance of the cars. Gameloft contends that Glass Egg has failed to allege the arrangements are original and doesn’t contend that the polygon arrangements can’t be separated from the “shape and appearance of the cars”. The Court here assumes that the arrangements can be separated from the shape and appearance of the cars. Assuming as such, the polygons pass the test of being independently created and possessing at least some minimal degree of creativity. The Court couldn’t find that Gameloft infringed and granted the dismissal of Glass Egg’s copyright infringement claim.

In Inhale, Inc. v. Starbuzz Tobacco, Inc., Inhale is urging the court to reconsider its previous decision that a particular hookah water container wasn’t copyrightable. This case appeared in the U.S. District Court for the Central District of California. The Court denied this motion. Inhale sued Starbuzz for copyright infringement, alleging that Starbuzz sold hookah water containers that infringed its copyright design. The Court found for Starbuzz finding that the utilitarian and artistic features of the water container weren’t physically or conceptually separable and looked at whether Inhale intended for the water container to be a useful article or a work of art. The 9th circuit affirmed the Court’s decision and found that the shape of the container and its function weren’t conceptually separable and thus, the water container wasn’t copyrightable. Since the decision in Star Athletica, Inhale asked the Court to reconsider its previous decision. The Court found that the application of Star Athletica wouldn’t change the outcome of the underlying proceeding. The Court found issue with Inhale’s proposed application of SA. They said that Inhale fails to point out a sculptural feature of the water container or a subset of features that may serve as the predicate for application of SA. It seeks protection for the way the features as a whole are arranged to form the hookah water container. Quoting SA, this court emphasized that while useful articles taken as a whole aren’t eligible for copyright protection, the individual design elements comprising the items may, viewed separately, meet the Copyright Act’s requirements. Inhale failed to satisfy the first element of the SA test as it can’t be perceived as a two or three-dimensional work of art separate from the useful article. Thus, the Court denied Inhale’s motion for reconsideration.

Ross v. Apple, Inc., is a case from the U.S. Court of Appeals for the Eleventh Circuit. Here, Ross filed a complaint against Apple alleging misappropriation of IP and copyright infringement. Ross asserted that he had invented an electronic reading device which could be used for reading books and news, viewing photographs and videos, making phone calls and keeping notes. Ross claimed that Apple copied elements of his original works. This Court goes on to discuss the elements to establish copyright infringement. When looking at ownership and the design of a useful article, they discuss the two-part test from the holding in Star Athletica. The Court held that Ross didn’t establish that he had a valid copyright on any element of the drawing that Apple allegedly copied. The idea for the device wasn’t subject to copyright protection as each element of the drawing that he identified was purely functional and inseparable from the idea of a handheld electronic reading device. None of the elements could be conceived as a work of art separate from the Device itself but are necessary parts of it. Thus, the Court affirmed the dismissal of Ross’s case.

In terms of Copyright Office Review Board (“CORB”) decisions involving the useful article doctrine, there are a few that cite the test from Star Athletica. For example, BigMouth, Inc. attempted to register a work titled “Pizza Slice Pool Float”. The work here was a triangle-shaped pool float with applied artwork resembling a slice of pepperoni pizza. The CORB refused to register the float on the grounds that the design wasn’t sufficiently original, but noted that the two-dimensional pizza design, although unoriginal, was easily separable from the object’s function under the Star Athletica test.

Where the CORB was reviewing a request for reconsideration of the refusal to register a three-dimensional sculpture in the work titled Pendant Lamp. The work is a glass sculpture in a shape resembling the face of a bisected globe, with a pattern of filaments imbedded in the class. Here, the CORB held that the sculptural elements were separable, and therefore protectable. They could be perceived separately as a standalone work of art, irrespective of whether the object also functioned as a lamp. Art, unlike the pizza slice, was sufficiently original to merit protection.

It has been said that a case involving Floor Linder may have come out differently before Star Athletica. The work in this case was a black floor liner with raised edges and slight indentations, shaped to fit the floor of a vehicle. The top of the surface of the Work is embossed with a pattern of various raised, non-standard geometric shapes. The Copyright office refused registration of the pattern served the purpose of trapping dirt and water. The applicant argued that the specific decorative pattern chosen serves no useful function and is solely for cosmetic purposes. The CORB found that the work contained artistic features that are separable for the overall useful article, specifically the collection and pattern of shapes, which can be imagined separately from a floor liner. The refusal to register was therefore reversed.

Professor Shubha Ghosh, PhD, JD (Crandall Melvin Professor, Syracuse University College of Law)

Presented at the IP Center at the University of Akron in September, my forthcoming article addresses whether the jurisdiction of the Federal Circuit should be stripped. Here is the introduction:

The Federal Circuit is a specialized court with generalist aspirations. Created by Congress from the ashes of the Court of Claims and the Court of Customs and Patent Appeals, the Federal Circuit was given the appellate jurisdiction over subject matter of its predecessor courts. Pursuant to statute, the Federal Circuit hears appeals from Article I courts, such as the International Trade Commission, the Patent Trial and Appeals Board, the Trademark Trial and Appeals Board, the Merit Service Protection Board, and others. Most famously, appeals of final decisions from any district court in any civil action raising a patent claim or a compulsory patent counterclaim go directly to the Federal Circuit, with its precedent binding nationally. Although the Federal Circuit is an intermediate appellate court with final jurisdiction with the Supreme Court, given the volume of patent appeals and the limited grant of certiori by the high court, the Federal Circuit is effectively the “Supreme Court of Patent Law.”
Even with such detailed and limited domain, the Federal Circuit portrays itself as a generalist court. At a March, 2018, meeting of the Federal Judicial Conference, a number of Federal Court judges referred to themselves and their colleagues as generalist judges during a plenary panel of almost all the judges on the circuit court. There was no dissent from this characterization. One avenue through which the Federal Circuit has asserted its generalist inclinations through the statutory provision that grants the court subject matter jurisdiction over claims “arising under” any Act of Congress relating to patent or plant variety protection. This language has justified Federal Circuit jurisdiction over matters of copyright law, trademark law, and matters of state law that are related to patent law. This expansion of jurisdiction is troubling as it allows the Federal Circuit to create precedent that is outside of its scope of specialization, as intended by Congress. This Article makes the case for stripping the jurisdiction of the Federal Circuit either through amendment of the statute or through judicial interpretation of the existing statute that confers jurisdiction.

Jurisdiction stripping is a controversial topic, both politically and jurisprudentially. The controversies have arisen in politically charged areas, such as abortion rights, school integration, and access to the courts. To raise the issue in the context of patent law may seem disproportionate to the broader question of the separation of legislative and judicial powers. But jurisdiction stripping of the Federal Circuit has happened. The Supreme Court has limited the circuit’s jurisdiction over state law claims in its 2013 Gunn v. Minton decision and over patent counterclaims to antitrust claims in its 2005 Holmes v. Vornado decision. The latter decision was overturned by Congress through the America Invents Act of 2011. Federal Circuit jurisdiction is an active topic and not merely a technical one. The concern is by deciding cases outside of its subject matter expertise, the Federal Circuit is shaping areas of law in ways inconsistent with Congress’ intent and with the need for uniformity in federal law.

“Arising under” jurisdiction is justified in terms of the efficiency of adjudication. If a district court dispute involves patent claims and counterclaims as well as copyright, trademark, or state law contract claims relating to the patents, then there is a logic to having the Federal Circuit hear any appellate issues pertaining to the patent claims and the related non-patent claims. The problem is identifying what law the Federal Circuit should apply to the non-patent claims. Supreme Court precedent in the pertinent areas binds the court, but in areas where there is no such precedent, the court has to look at other areas of law. For trademark claims, the Federal Circuit might look to its own precedent reviewing PTAB decisions, one statutory area of the court’s subject matter jurisdiction. But for questions of trademark infringement, an area outside the scope of the PTAB’s purview over registration, the Federal Circuit needs to identify the pertinent body of law on which to base its decision. A similar question arises for copyright and state contract law decisions. With respect to trademark infringement and copyright questions, the Federal Circuit has ruled that it must look to the precedent of the circuit from which the appeal arose. But this sister circuit precedent is now filtered through the interpretative lens of Federal Circuit judges. With respect to contract law, the Federal Circuit seems to revert to general principles of law, creating what I have called a federal common law of contracts binding future cases arising from the intersection of patent and contract.
Unintentionally, a justification based in efficiency of adjudication leads to inefficient, nonuniform and questionable results.

Federal Circuit decisions on copyright and trademark, fields outside the court’s expertise, often add to the confusion in areas of law rather than providing needed clarity. For example, in its decision in Oracle v Google, the Federal Circuit addressed the issue of infringement of copyrighted software. Its decision for the copyright owner complicated the issues of copyright ownership, fair use, and the roles of the judge and jury in determining questions of fact and law in the adjudication of copyright questions. While the Federal Circuit has jurisdiction on appeals from denial of trademark registration, the judges arguably went outside their fields of expertise in addressing questions of trademark protection for colors, the meaning of geographic misdescriptive marks, and First Amendment protection for disparaging and scandalous speech. These ventures into areas that are outside the court’s original subject matter expertise do not further the goals of efficiency, whether gauged in terms of the costs of adjudication or uniformity. Instead, the ventures represent a specialized court trying to fly on generalist wings.

The full article will be published early next year.