A Big Week for Intellectual Property: Supreme Court Decides Patent and Copyright Cases

by McNees Wallace & Nurick LLC

Last week, the U.S. Supreme Court issued two opinions on intellectual property issues. On March 21, 2017, the Court decided in a 7-1 opinion that laches is no longer a valid defense to a claim of patent infringement occurring during the six-year statute of limitations period under the Patent Act. The next day, on March 22, 2017, the Court decided 6-2 that designs on a cheerleading uniform could be protected under copyright law.

Star Athletica LLC v. Varsity Brands, Inc. 

In Star Athletica, the Supreme Court set forth a two-part test for determining when an element incorporated into the design of a useful article could be copyrightable: (1) the design must be “perceived as a two- or three-dimensional work of art separate from the useful article” and (2) the design will still be copyrightable “if it were imagined separately from the useful article into which it was incorporated.” The Court held that Varsity Brands’ designs on cheerleading uniforms meet this test.

Varsity Brands has over 200 U.S. copyright registrations for two-dimensional designs that appear on copyright uniforms and other apparel. Varsity Brands sued Star Athletica for copyright infringement of five of these registrations. The District Court granted summary judgment for Star Athletica, finding the designs only serve to identify the garments on which they appear as cheerleading uniforms. As such, the designs could not be “‘physically or conceptually’ separated…‘from the utilitarian function’ of the uniform.” The Sixth Circuit reversed, and Star Athletica appealed to the Supreme Court.

The majority opinion held that the arrangements of lines, chevrons, and colorful shapes appearing on the uniforms are copyrightable as separable features of the designs of the uniforms. With this decision, the Court clarified the applicability of the “separability” test to two-dimensional “pictorial, graphic, or sculptural features” of any “useful article” under 17 U.S.C. § 101. The Court rejected the distinction drawn by some courts between “physical” and “conceptual” separability, finding the statute only requires the design element of the useful article to qualify as a non-useful pictorial, graphic, or sculptural work on its own. (“The focus of the separability inquiry is on the extracted feature and not on any aspects of the useful article that remain after the imaginary extraction.”). The dissent, however, argued that cheerleader uniforms are useful articles and that separating the design elements from the uniforms merely replicates the underlying uniform. As such, separability would be impossible, and the design elements would not be copyrightable. Despite a ruling in favor of Varsity Brands, the Court passed on the issue of whether the design elements are sufficiently original to be copyrightable.

The decision in this case was highly anticipated by those in the fashion industry, who have pushed for greater intellectual property protection for clothing. Although apparel is still a “useful article” under copyright law, and therefore not protectable, Star Athletica clarifies when design elements on clothing—which may be functional—are nevertheless copyrightable.

SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC

In SCA Hygiene Products, the Supreme Court held that laches is no longer available as a defense if a patent suit is brought within the Patent Act’s statute of limitations. Laches is an equitable defense that a claim is barred due to an unreasonable and prejudicial delay by the plaintiff in bringing the claim.

The case dates back to 2003, when SCA notified First Quality that First Quality’s adult incontinence products infringed one of SCA’s patents. Upon SCA’s request in 2004, the US Trademark Office determined in 2007 that SCA’s patent was valid. SCA then sued First Quality for patent infringement in 2010. The District Court granted summary judgment for First Quality on the grounds of equitable estoppel and laches, and the decision was twice affirmed by the Federal Circuit.

The Court followed its precedent in Petrella v. Metro-Goldwyn-Mayer, Inc. in reversing the Federal Circuit. In Petrella, the Court held in 2014 that laches is not a valid defense to copyright claims involving damages incurred within the Copyright Act’s three-year statute of limitations. As in the Petrella decision, the Court reasoned in SCA Hygiene Products that “separation-of-powers principles and the traditional role of laches in equity” prohibits judges from overriding the limitations period set by Congress in favor of interposing laches as a defense in cases involving damages. In his dissent, Justice Breyer argued that in drafting the Patent Act Congress “intended the statute to keep laches as a defense.” He also reaffirmed his opinion that Petrella was wrongly decided.

In light of the Petrella decision, many predicted the outcome of SCA Hygiene Products. However, the case does vacate Federal Circuit precedent, which had until this opinion carved out a patent-specific rule for asserting the laches defense. The decision raises concerns by parties frequently targeted by patent infringement claims that the elimination of laches may encourage a patent owner to delay a potential claim until the patent reaches its ultimate value, in order to maximize damages for the patent owner.

With a few other patent and trademark cases pending before the Supreme Court in 2017, we look forward to further developments in intellectual property law.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McNees Wallace & Nurick LLC | Attorney Advertising

Written by:

McNees Wallace & Nurick LLC

McNees Wallace & Nurick LLC on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.