Justice Antonin Scalia had a meaningful, if rather undramatic, impact on intellectual property law
Although the U.S. Supreme Court decided many cases relating either directly or meaningfully (if tangentially) to intellectual property during the 20 years of Justice Scalia’s time on that Court, Justice Scalia authored very little on the topic. Publicly self-effacing on the topic, Justice Scalia called intellectual property one of his “blind sides” and admitted that, because he did not “know much about patent law," the toughest decision he could face "would probably be a patent case." He professed to being “often guided considerably” by Justice Ginsburg in intellectual property cases.
Justice Scalia’s two most significant intellectual property opinions both curtailed non-traditional forms of intellectual property. In 2000’s Wal-Mart Stores, Inc. v. Samara Brothers, Inc., the justice delivered the Court’s unanimous opinion that unregistered trade dress in clothing designs was protectable under the Lanham Act only if that trade dress has acquired secondary meaning:
In the case of product design, as in the case of color, we think consumer predisposition to equate the feature with the source does not exist. Consumers are aware of the reality that, almost invariably, even the most unusual of product designs—such as a cocktail shaker shaped like a penguin—is intended not to identify the source, but to render the product itself more useful or more appealing. The fact that product design almost invariably serves purposes other than source identification not only renders inherent distinctiveness problematic; it also renders application of an inherent-distinctiveness principle more harmful to other consumer interests. 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.
Without overruling a prior Supreme Court decision (Two Pesos, Inc. v. Taco Cabana, Inc.) on the issue of “inherently” distinctive trade dress, Justice Scalia effectively raised the threshold on such inherent distinctiveness, making such claims difficult to prove.
Justice Scalia also limited the Lanham Act in delivering the opinion of the Court in 2003’s Dastar Corp. v. Twentieth Century Fox Film Corp., which precluded extension of an expired copyright to prevent “plagiarism” of the now-public domain work:
[I]n the Lanham Act, the phrase "origin of goods" is in our view incapable of connoting the person or entity that originated the ideas or communications that "goods" embody or contain. Such an extension would not only stretch the text, but it would be out of accord with the history and purpose of the Lanham Act and inconsistent with precedent.
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It could be argued, perhaps, that the reality of purchaser concern is different for what might be called a communicative product—one that is valued not primarily for its physical qualities, such as a hammer, but for the intellectual content that it conveys, such as a book or, as here, a video. The purchaser of a novel is interested not merely, if at all, in the identity of the producer of the physical tome (the publisher), but also, and indeed primarily, in the identity of the creator of the story it conveys (the author). And the author, of course, has at least as much interest in avoiding passing off (or reverse passing off) of his creation as does the publisher. . . .
The problem with this argument according special treatment to communicative products is that it causes the Lanham Act to conflict with the law of copyright, which addresses that subject specifically. The right to copy, and to copy without attribution, once a copyright has expired, like “the right to make [an article whose patent has expired]—including the right to make it in precisely the shape it carried when patented—passes to the public.
Justice Scalia authored one other opinion for the Court on the Lanham Act, enumerating the requirements for a Lanham Act false advertising claim in 2014’s Lexmark International, Inc. v. Static Control Components, Inc.
Justice Scalia’s opinions for the Court on patent matters also frequently involved limiting the rights of the intellectual property owner. In 1990’s Eli Lilly & Co. v. Medtronic, Inc. and again in 2005’s Merck KGAA v. Integra LifeSciences I, Ltd., Justice Scalia outlined the scope of a patent infringement exemption for use of patented inventions in a manner “reasonably related” to the development and submission of information needed to obtain federal marketing approval. The exemption, he wrote in Merck, encompassed preclinical studies of patented compounds that are appropriate for submission to the FDA, even if no information is ultimately submitted. On the other hand, in 1994’s Asgrow Seed Co. v. Winterboer, the justice delivered the opinion of the Court narrowly interpreting the scope of an exemption for sales of seed protected under the Plant Variety Protection Act.
Writing for the Court in other cases, Justice Scalia addressed issues meaningfully related to intellectual property, if not directly involving the rights in question. In his 1989 inaugural foray as part of the Supreme Court into intellectual property, Pavelic & LeFlore v. Marvel Entertainment Group, he explained that Rule 11 sanctions for bad faith maintenance (refusal to settle) of a copyright infringement suit could only be imposed on the individual who signed the pleading and not on individual’s firm, even where individual signed on behalf of firm. A decade later, his opinion in College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board defined the sovereign immunity enjoyed by states against Lanham Act complaints. 2002’s Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc. limited the jurisdiction of Federal Circuit where a counterclaim, but not the underlying complaint, alleged a claim arising under federal patent law, while 2007’s Medimmune, Inc. v. Genentech, Inc., held a patent licensee is not required to breach the license in order to challenge the validity of the licensed patent.
While generally acknowledged as a prolific author of dissents, the justice authored only two on issues of intellectual property. One of those dissents is also his most recent opinion on intellectual property, in 2015’s Commil v. Cisco. Disputing the majority’s conclusion that a good-faith belief in a patent’s invalidity could not negate the requisite mental state required for certain types of patent infringement, Justice Scalia argued:
Infringing a patent means invading a patentee's exclusive right to practice his claimed invention. Only valid patents confer exclusivity—invalid patents do not. It follows, as night the day, that only valid patents can be infringed. To talk of infringing an invalid patent is to talk nonsense. . . . . Saying that infringement cannot exist without a valid patent does not “conflate the issues of infringement and validity” any more than saying that water cannot exist without oxygen 'conflates' water and oxygen.
The other dissent, in 2014’s American Broadcasting Companies v. Aereo, Inc., sharply criticized the majority’s apparent conclusion that only time-shifting could justify a streaming service for broadcast video under existing copyright law:
Making matters worse, the Court provides no criteria for determining when its cable-TV-lookalike rule applies. Must a defendant offer access to live television to qualify? If similarity to cable-television service is the measure, then the answer must be yes. But consider the implications of that answer: Aereo would be free to do exactly what it is doing right now so long as it built mandatory time shifting into its “watch” function. Aereo would not be providing live television if it made subscribers wait to tune in until after a show’s live broadcast ended. A subscriber could watch the 7 p.m. airing of a 1-hour program any time after 8 p.m. Assuming the Court does not intend to adopt such a do-nothing rule (though it very well may), there must be some other means of identifying who is and is not subject to its guilt-by-resemblance regime.
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I share the Court’s evident feeling that what Aereo is doing (or enabling to be done) to the Networks’ copyrighted programming ought not to be allowed. But perhaps we need not distort the Copyright Act to forbid it. As discussed at the outset, Aereo’s secondary liability for performance infringement is yet to be determined, as is its primary and secondary liability for reproduction infringement. If that does not suffice, then (assuming one shares the majority’s estimation of right and wrong) what we have before us must be considered a “loophole” in the law. It is not the role of this Court to identify and plug loopholes. It is the role of good lawyers to identify and exploit them, and the role of Congress to eliminate them if it wishes. Congress can do that, I may add, in a much more targeted, better informed, and less disruptive fashion than the crude “looks-like-cable-TV” solution the Court invents today.
We came within one vote of declaring the VCR contraband 30 years ago in Sony. . . . The dissent in that case was driven in part by the plaintiffs’ prediction that VCR technology would wreak all manner of havoc in the television and movie industries. . . . . The Networks make similarly dire predictions about Aereo. We are told that nothing less than “the very existence of broadcast television as we know it” is at stake. . . . Aereo and its amici dispute those forecasts and make a few of their own, suggesting that a decision in the Networks’ favor will stifle technological innovation and imperil billions of dollars of investments in cloud-storage services. . . . We are in no position to judge the validity of those self-interested claims or to foresee the path of future technological development. . . . Hence, the proper course is not to bend and twist the Act’s terms in an effort to produce a just outcome, but to apply the law as it stands and leave to Congress the task of deciding whether the Copyright Act needs an upgrade. I conclude, as the Court concluded in Sony: “It may well be that Congress will take a fresh look at this new technology, just as it so often has examined other innovations in the past. But it is not our job to apply laws that have not yet been written.”
Although not recognized as a thought leader on intellectual property, Justice Scalia had a marked impact on the law of intellectual property, whatever his level of comfort with those issues.