Star Athletica v. Varsity Brands

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. That test is satisfied here. Pp. 3–17.

(a) Separability analysis is necessary in this case. Respondents claim that two-dimensional surface decorations are always separable, even without resorting to a §101 analysis, because they are “on a useful article” rather than “designs of a useful article.” But this argument is inconsistent with §101’s text. ”[P]ictorial” and “graphic” denote two-dimensional features such as pictures, paintings, or drawings. Thus, by providing protection for “pictorial, graphical, and sculptural works” incorporated into the “design of a useful article,” §101 necessarily contemplates that such a design can include two dimensional features. This Court will not adjudicate in the first instance the Government’s distinct argument against applying separability analysis, which was neither raised below nor advanced here by any party. Pp. 4–6.

(b) Whether a feature incorporated into a useful article “can be identified separately from,” and is “capable of existing independently of,” the article’s “utilitarian aspects” is a matter of “statutory interpretation.” Mazer v. Stein, 347 U. S. 201, 214. Pp. 6–10.

(1) Section 101’s separate-identification requirement is met if the decision maker is able to look at the useful article and spot some two or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities. To satisfy the independent-existence requirement, the feature must be able to exist as its own pictorial, graphic, or sculptural work once it is imagined apart from the useful article. If the feature could not exist as a pictorial, graphic, or sculptural work on its own, it is simply one of the article’s utilitarian aspects. And to qualify as a pictorial, graphic, or sculptural work on its own, the feature cannot be a useful article or “[a]n article that is normally a part of a useful article,” §101. Neither could one claim a copyright in a useful article by creating a replica of it in another medium. Pp. 7–8.

(2) The statute as a whole confirms this interpretation. Section 101, which protects art first fixed in the medium of a useful article, is essentially the mirror image of §113(a), which protects art first fixed in a medium other than a useful article and subsequently applied to a useful article. Together, these provisions make clear that copyright protection extends to pictorial, graphic, and sculptural works regardless of whether they were created as freestanding art or as features of useful articles. P. 8.

(3) This interpretation is also consistent with the Copyright Act’s history. In Mazer, a case decided under the 1909 Copyright Act, the Court held that respondents owned a copyright in a statuette created for use as a lamp base. In so holding, the Court approved a Copyright Office regulation extending protection to works of art that might also serve a useful purpose and held that it was irrelevant to the copyright inquiry whether the statuette was initially created as a freestanding sculpture or as a lamp base. Soon after, the Copyright Office enacted a regulation implementing Mazer’s holding that anticipated the language of §101, thereby introducing the modern separability test to copyright law. Congress essentially lifted the language from those post-Mazer regulations and placed it in §101 of the 1976 Act. Pp. 8–10.

(c) Applying the proper test here, the surface decorations on the cheerleading uniforms are separable and therefore eligible for copyright protection. First, the decorations can be identified as features having pictorial, graphic, or sculptural qualities. Second, if those decorations were separated from the uniforms and applied in another medium, they would qualify as two-dimensional works of art under §101. Imaginatively removing the decorations from the uniforms and applying them in another medium also would not replicate the uniform itself.

The dissent argues that the decorations are ineligible for copyright protection because, when imaginatively extracted, they form a picture of a cheerleading uniform. Petitioner similarly claims that the decorations cannot be copyrighted because, even when extracted from the useful article, they retain the outline of a cheerleading uniform. But this is not a bar to copyright. Just as two-dimensional fine art correlates to the shape of the canvas on which it is painted, two dimensional applied art correlates to the contours of the article on which it is applied. The only feature of respondents’ cheerleading uniform eligible for a copyright is the two-dimensional applied art on the surface of the uniforms. Respondents may prohibit the reproduction only of the surface designs on a uniform or in any other medium of expression. Respondents have no right to prevent anyone from manufacturing a cheerleading uniform that is identical in shape, cut, or dimensions to the uniforms at issue here. Pp. 10–12.

(d) None of the objections raised by petitioner or the Government is meritorious. Pp. 12–17.

(1) Petitioner and the Government focus on the relative utility of the plain white uniform that would remain if the designs were physically removed from the uniform. But the separability inquiry focuses on the extracted feature and not on any aspects of the useful article remaining after the imaginary extraction. The statute does not require the imagined remainder to be a fully functioning useful article at all. Nor can an artistic feature that would be eligible for copyright protection on its own lose that protection simply because it was first created as a feature of the design of a useful article, even if it makes that article more useful. This has been the rule since Mazer, and it is consistent with the statute’s explicit protection of “applied art.” In rejecting petitioner’s view, the Court necessarily abandons the distinction between “physical” and “conceptual” separability adopted by some courts and commentators. Pp. 12–15.

(2) Petitioner also suggests incorporating two “objective” components into the test—one requiring consideration of evidence of the creator’s design methods, purposes, and reasons, and one looking to the feature’s marketability. The Court declines to incorporate these components because neither is grounded in the statute’s text. Pp. 15–16.

(3) Finally, petitioner claims that protecting surface decorations is inconsistent with Congress’ intent to entirely exclude industrial design from copyright. But Congress has given limited copyright protection to certain features of industrial design. Approaching the statute with presumptive hostility toward protection for industrial design would undermine that choice. In any event, the test adopted here does not render the underlying uniform eligible for copyright protection. Pp. 16–17.

799 F. 3d 468, affirmed.

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Geophysical Service v. TGS-Nopec Geophysical

Canada has a law that requires companies who gather seismic data about the Earth’s substructure to submit their findings to the Canadian government. After a period of confidentiality, the Canadian agency that compiles this data is then apparently permitted to release it to members of the public upon specific request. In this case, a Houston company requested seismic data from this Canadian agency pursuant to that law, and the Canadian agency sent copies of a particular Canadian company’s seismic data to the United States. The Canadian company then sued the Houston company, alleging copyright infringement.

We are called upon to determine whether the act of state doctrine forbids a United States court from considering the applicability of copyright’s first sale doctrine to foreign-made copies when the foreign copier was a government agency. We hold that it does not. We must also decide whether the inapplicability of the Copyright Act to extraterritorial conduct bars a contributory infringement claim based on the domestic authorization of entirely extraterritorial conduct. We hold that it does. Accordingly, we affirm in part, reverse in part, vacate in part, and remand.

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Streamline Production Systems, Inc. v. Streamline Manufacturing, Inc.

Streamline Production Systems, Inc. filed this trademark infringement suit against Streamline Manufacturing, Inc. seeking damages under the Lanham Act and Texas common law. After stipulating to an injunction, the parties proceeded to a jury trial on the issues of infringement and damages. The jury returned a verdict finding that Streamline Manufacturing, Inc. infringed on Streamline Production Systems, Inc.’s valid trademark in its name and awarded damages for lost royalties, unjust enrichment, and exemplary damages, each in the sum of $230,000, for a total award of $690,000. The district court denied Streamline Manufacturing Inc.’s motion for judgment as a matter of law, as well as its renewed motion for judgment as a matter of law, or in the alternative, for a new trial. Finding insufficient evidence to support the damages awards, we AFFIRM the jury’s finding of trademark infringement but VACATE the damages awards.

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Mentor Graphics Corp. v. EVE-USA, Inc.

The present appeal arises from litigation in the District of Oregon between Mentor Graphics Corp. (“Mentor”) and Synopsys, Inc., Synopsys Emulation and Verification S.A.S., and EVE-USA, Inc. (“EVE”) (collectively, “Synopsys”).1 Mentor asserted several patents against Synopsys, including U.S. Patent Nos. 6,240,376 (“the ’376 patent”), 6,947,882 (“the ’882 patent”), 6,009,531 (“the ’531 patent”), and 5,649,176 (“the ’176 patent”). Synopsys asserted two patents against Mentor—U.S. Patent Nos. 6,132,109 (“the ’109 patent”) and 7,069,526 (“the ’526 patent”).

The ’376 patent was the only patent tried to the jury. Prior to trial, the district court granted summary judgment barring Synopsys from challenging the ’376 patent’s validity because of assignor estoppel. It also granted Synopsys’ motion in limine precluding Mentor from introducing evidence of willful infringement. The jury found in favor of Mentor and found damages of approximately $36,000,000. Synopsys appeals the infringement verdict, the damages award, and the summary judgment of assignor estoppel. Mentor cross-appeals the motion in limine regarding willfulness.

The district court granted summary judgment on the remaining patents prior to trial. It held that Synopsys’ ’109 patent was indefinite and Synopsys’ ’526 patent lacked patent-eligible subject matter. Synopsys appeals both decisions. The district court also held that the claims of Mentor’s ’882 patent lacked written description support and its infringement allegations relating to the ’531 and ’176 patents were barred by claim preclusion. Mentor cross-appeals both decisions.

We hold there was substantial evidence to support the jury’s infringement verdict regarding the ’376 patent and affirm the district court’s denial of judgment as a matter of law. We affirm the damages award. We affirm the summary judgment that assignor estoppel bars Synopsys from challenging the validity of the ’376 patent. We reverse the summary judgment that Synopsys’ ’109 patent is indefinite. We affirm the summary judgment that Synopsys’ ’526 patent lacks patent-eligible subject matter. We vacate the motion in limine precluding Mentor from presenting evidence of willful infringement. We reverse the summary judgment that Mentor’s ’882 patent lacks written description support. Finally, we reverse the summary judgment that Mentor’s infringement allegations regarding the ’531 and ’176 patents are barred by claim preclusion.

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Nidec Motor Corp. v. Zhongshan Broad Ocean Motor, LLC

The present appeal arises from an inter partes review (“IPR”) involving Zhongshan Broad Ocean Motor Co. Ltd., Broad Ocean Motor LLC, and Broad Ocean Technologies, LLC (collectively “Broad Ocean”) and Nidec Motor Corp. (“Nidec”). Broad Ocean petitioned for IPR of claim 21 of Nidec’s U.S. Patent No. 7,208,895 (the “’895 patent”). The Patent Trial and Appeal Board (the “Board”) instituted the IPR and found that claim 21 was anticipated by U.S. Patent No. 5,569,995 (“Kusaka”). Nidec appeals that decision to our court. Because the Board’s decision is not supported by substantial evidence, we reverse.

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Thales Visionix Inc.. v. United States

Thales Visionix, Inc. (“TVI”) appeals from the U.S. Court of Federal Claims (“Claims Court”) judgment on the pleadings holding that claims 1–5, 11–13, 20, 22–26, 32– 34, and 41 of U.S. Patent No. 6,474,159 (“’159 patent”) are directed to patent-ineligible subject matter. Thales Visionix, Inc. v. United States, 122 Fed. Cl. 245, 257 (2015). We reverse the Claims Court’s determination for all claims and remand for further proceedings.

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Comcast IP Holdings I LLC v. Sprint Communications Co.

Comcast IP Holdings I LLC (Comcast) sued Sprint Communications Company LP, Sprint Spectrum L.P., and Nextel Operations, Inc. (collectively, Sprint) for infringement of, among other patents, U.S. Patent Nos. 8,170,008, 7,012,916, and 8,204,046 (collectively, Low Patents), which are generally directed to the use of computer network technology to facilitate a telephone call (phone call or call). After a jury trial, the jury found that Sprint’s handling of certain phone calls infringed claims 1, 13, and 27 of the ’008 Patent, claim 45 of the ’916 Patent, and claims 90 and 113 of the ’046 Patent, and awarded Comcast a $7.5 million damages award. The district court then denied Sprint’s motion for judgment as a matter of law (JMOL), or in the alternative, for a new trial, and added prejudgment interest to the damages award. Sprint has appealed various rulings from the district court. Because we see no error in these rulings, we affirm the district court’s entry of judgment against Sprint.

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Meiresonne v. Google, Inc.

Michael Meiresonne appeals from the final inter partes review (“IPR”) decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“Board”) holding that claims 16, 17, 19, and 20 of U.S. Patent No. 8,156,096 (the “’096 patent”) are unpatentable under 35 U.S.C. § 103. For the reasons discussed below, we affirm.

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Intellectual Ventures I LLC v. Erie Indemnity Co.

Intellectual Ventures I LLC and Intellectual Ventures II LLC (collectively, “IV”) appeal from a final decision of the United States District Court for the Western District of Pennsylvania finding all claims of U.S. Patent No. 6,510,434 (“’434 patent”), U.S. Patent No. 6,519,581 (“’581 patent”), and U.S. Patent No. 6,546,002 (“’002 patent”) ineligible under 35 U.S.C. § 101, and dismissing IV’s infringement claims of the ’581 patent for lack of standing. For the reasons discussed below, we affirm-in-part, vacate-in-part, and remand-in-part.

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Prism Technologies LLC v. Sprint Spectrum L.P.

The jury in this case found Sprint Spectrum L.P. liable to Prism Technologies LLC for infringement of U.S. Patent Nos. 8,127,345 and 8,387,155. The jury awarded Prism $30 million in reasonable-royalty damages under 35 U.S.C. § 284. The district court denied Sprint’s posttrial motions, and it also denied Prism’s motion for additional monetary relief for times after the period Prism said was covered by the jury verdict. Sprint appeals, and Prism cross-appeals. We affirm.

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