U.S. Supreme Court has busy year ahead for intellectual property law

The Supreme Court is seen ahead of the start of it's new term in Washington, U.S., October 1, 2018. REUTERS/Aaron P. Bernstein

(Reuters) - After a relatively quiet year for intellectual property cases at the U.S. Supreme Court, the justices are set to consider several important issues in copyright, patent and trademark law in 2023.


The copyright world is eagerly awaiting the high court's ruling in a dispute between Andy Warhol's estate and celebrity photographer Lynn Goldsmith over their depictions of the rock star Prince.

A Manhattan federal judge ruled that Warhol's unauthorized paintings based on a Goldsmith photo of Prince were allowed under copyright law, finding they transformed the underlying image to depict Prince as a "larger-than-life" figure. But the 2nd U.S. Circuit Court of Appeals said the judge wrongly analyzed meanings of the works like an art critic, and that Warhol's paintings were closer to "derivative works" such as art reproductions that normally require a license.

The Supreme Court could use the case to issue a landmark decision clarifying the doctrine of fair use, which allows for the unlicensed use of others' copyrighted works in some circumstances.

The decision may address when a work is transformative and whether judges can consider art's meaning in answering that question. The justices mentioned a range of creative works during an October oral argument, from "Jaws" and "Lord of the Rings" to the Mona Lisa and Syracuse University sports merchandise, hinting at the scope of the case's potential consequences.


Drug makers are closely watching a Supreme Court case involving Amgen Inc, Sanofi SA and Regeneron Pharmaceuticals Inc that could affect the cutting-edge field of biologic drugs. The high court will consider Amgen's request to revive patents on its blockbuster biologic Repatha, in what the company calls a key test for the pharmaceutical industry.

Amgen says upholding a decision that invalidated its "genus claims" -- which describe a broad "genus" of related monoclonal antibodies that lower cholesterol -- would be "devastating" for innovation. Other major pharmaceutical companies including Biogen, Bristol Myers Squibb, and Merck have filed briefs supporting the company.

Since 2011, the U.S. Court of Appeals for the Federal Circuit has thrown out three separate pharmaceutical patent-infringement awards worth over $1 billion after canceling genus claims.

The high court is separately considering whether to take up a potentially important dispute over a Teva Pharmaceuticals USA Inc generic version of a GlaxoSmithKline LLC heart drug. That case could affect the future of "skinny labels," which refer to a common way for generic drugmakers to avoid patent lawsuits by omitting infringing uses of a brand-name drug from generic drug labels.

Teva challenged a Federal Circuit decision to reinstate a $235 million ruling that its generic infringed GSK patents. Teva argues it carved out infringing uses from its label and says the decision creates uncertainty for generic drugmakers.


The justices have also agreed to consider two cases that could reshape trademark law.

Liquor maker Jack Daniel's challenged the legality of a dog toy called "Bad Spaniels" that copied its famous whiskey-bottle design. The 9th U.S. Circuit Court of Appeals found the toy was entitled to First Amendment protection from the trademark claims because of its "humorous message."

The case could clarify the line between a trademark-infringing product and a constitutionally protected creative work.

The Supreme Court will also consider the international reach of U.S. trademark law in a case involving remote-control maker Hetronic International, which is trying to defend a $114 million U.S. court win against its former European distributor for selling devices in Europe with unauthorized parts.

The distributor, Abitron Germany GmbH, argues awarding damages based on sales that happened almost entirely outside of the U.S. threatens the balance of international trademark law.

Reporting by Blake Brittain in Washington

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Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com