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Over the long, hot summer of speculation about Supreme Court nominee John Roberts Jr., many pointed out that his relatively brief tenure on the U.S. Court of Appeals for the D.C. Circuit has not given him an opportunity to build up a long track record of written opinions in any particular area of the law. When combined with his experience in private practice, however, the record shows that Roberts has had more than just a passing introduction to patent, trademark, and copyright law issues. And Roberts’ views on intellectual property law are of more than just a passing interest to those who care about IP. So let’s look at the record. THE PATENT BARGAIN Obviously, Roberts had no opportunity to decide patent infringement appeals while a member of the D.C. Circuit, since such issues are generally reserved for the Federal Circuit ( Holmes v. Vornado exceptions aside). In private practice, however, he played a substantive role in several important patent cases, both at the Federal Circuit and Supreme Court levels. TrafFix Devices Inc. v. Marketing Displays Inc. (2001) focused on the question of whether the subject matter of a utility patent could, after the end of the patent’s term, serve as a product’s protected trade dress. The case thus involved the sometimes-competing goals of patent and trademark law. Then-attorney Roberts argued before the Supreme Court on behalf of TrafFix Devices that such a position was contrary to the “patent bargain” that offers an inventor a period of exclusivity in return for the invention becoming public property when the patent expires. The Court agreed, and in a unanimous opinion ruled that Marketing Displays could not claim trade dress protection in the functional aspects of its formerly patented sign stand. In Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. (2002), then-attorney Roberts filed an amicus brief with the Supreme Court supporting the petitioner on behalf of Litton Industries. The Federal Circuit had held that patent holders cannot rely on the doctrine of equivalents if the holders previously submitted an amendment to the U.S. Patent and Trademark Office that narrowed claims. According to Roberts’ Senate Judiciary Committee questionnaire, the brief argued that the Federal Circuit’s decision was a taking of private property without just compensation and should not be applied retroactively. The Supreme Court vacated the Federal Circuit’s decision and held that claims-narrowing amendments do not always prevent patentees from relying on the doctrine of equivalents when bringing infringement lawsuits. Also on behalf of Litton Industries, Roberts argued before the Federal Circuit in Litton Systems Inc. v. Honeywell Inc. (2001). Litton had won a $1.2 billion jury verdict against Honeywell on patent and state tort grounds, but the District Court entered judgment for Honeywell notwithstanding the verdict in Litton’s favor. The patent issue on appeal — whether Litton was estopped from relying on the doctrine of equivalents because it had amended its patent claims — was precluded by the Federal Circuit’s en banc ruling in Festo. Litton prevailed nonetheless on the state law issues, and the case was remanded for a new trial. TEXT DEBATES Roberts has been a bit more active in the copyright arena, having been involved in at least one copyright-related case in private practice and several as a member of the D.C. Circuit. Feltner v. Columbia Pictures Television Inc. (1998) involved the question of whether the petitioner had a right to have his copyright claim decided by a jury. Then-attorney Roberts argued that the Copyright Act, as well as the Seventh Amendment, guaranteed the petitioner a right to a jury trial in his copyright infringement case. The Supreme Court rejected the Copyright Act argument but agreed that the Seventh Amendment created such a right, and it remanded the case to the District Court for a jury trial. Roberts was a member of the D.C. Circuit panel that decided Recording Industry Association of America Inc. v. Verizon Internet Services Inc. (2003), a case construing the subpoena provisions of the Digital Millennium Copyright Act (DMCA). In that case, the Recording Industry Association of America (RIAA) served Verizon with subpoenas seeking the names of two Verizon subscribers who appeared to be making large numbers of MP3 files available to others via peer-to-peer file-sharing programs. Verizon objected. On appeal, it argued that the subpoena provisions of the DMCA did not authorize issuing a subpoena to an Internet service provider that was acting solely as a conduit for communications where others (in this case, the two subscribers) determined the content of the communications. The panel agreed with Verizon’s argument (and thus negated the need to consider others that Verizon had also presented). Applying a fairly strict constructionist methodology to the analysis of what it agreed was a complicated statute, the D.C. Circuit determined that the focus of the DMCA’s subpoena provisions was Internet service providers that host infringing content on their own servers. Because the RIAA had not served Verizon with a notice (a prerequisite to the subpoena) identifying any of the offending MP3 files to be removed by Verizon — indeed, the RIAA could not do so, because the content was not under Verizon’s control — the court determined that the subpoenas should not have been issued. The statute, the court determined, was not written broadly enough to include third-party content traded on peer-to-peer networks within its scope. “It is not the province of the courts, however, to rewrite the DMCA in order to make it fit a new and unforeseen internet architecture, no matter how damaging that development has been to the music industry or threatens being to the motion picture and software industries,” the court wrote. �OUT OF LUCK’ Earlier this year, Roberts wrote the D.C. Circuit opinion in Universal City Studios v. Peters (2005), a much simpler case construing the compulsory licensing provisions of the Copyright Act and related regulations that require copyright owners to file annual claims to royalties held in a “pool” by the U.S. Copyright Office “[d]uring the month of July in each year.” The plaintiffs were two studios whose royalty claims were not received by the Copyright Office until Aug. 2, 2001. The studios were unable to prove, consistent with the requirements of regulations issued by the librarian of Congress, that the claims had been sent during the month of July. As a result, the Copyright Office refused to pay out the royalties to the studios, leaving millions of dollars in royalties uncollected — a decision that, for obvious reasons, was vigorously challenged by the studios. Here, too, the court’s opinion strictly construed both the underlying statute and the related regulations. The final sentences of Roberts’ opinion (citation omitted) give a fair sense of the nature of the preceding analysis: “Under the regulations, the studios are not entitled to royalties on a claim that arrives in August without a July U.S. postmark or a stamped postal receipt, regardless of how compelling the proof may be that the claim was mailed in July. The regulations themselves — all of them — define what constitutes a proper filing, under the express terms of the statute. And under those regulations, the studios are out of luck.” Roberts also was a member of a D.C. Circuit panel that evaluated the constitutionality of Section 514 of the Uruguay Round Agreements Act (URAA), implementing Article 18 of the Berne Convention for the Protection of Literary and Artistic Works. Luck’s Music Library Inc. v. Gonzales (2005) challenged the URAA section that restored the copyrights of foreign copyright holders in various works that were protected under the law of their home country but had fallen into the public domain in the United States for a variety of reasons. The plaintiffs rented or sold some of these formerly public-domain materials, and claimed that implementation of the provision meant they could no longer freely distribute works in their portfolios. The court, relying heavily on the Supreme Court’s decision in Eldred v. Ashcroft (2003), refused to agree that there was any prohibition in U.S. law against restoring copyright protection to works that had entered the public domain. It saw no substantial difference between adding to a copyright term that was about to expire (which was at issue in Eldred) and restoring copyright to that which had been in the public domain. WHAT DOES HE THINK? It is interesting, but somewhat futile, to read anything into the differences between Judge Roberts’ position in Luck’s Music Library (permitting the restoration of protection for a work that had entered the public domain) and attorney Roberts’ successful advocacy in TrafFix Devices (denying trade dress protection to an invention in the public domain). There are too many differences between the statutory regimes, the fact situations, and even Roberts’ roles as judge and advocate to arrive at any conclusion as to what meaning to draw from the two positions. What the record does appear to show is that the Supreme Court’s newest justice will be one who has some real practical experience dealing with complex technology law debates, including, thankfully, patent law issues. As for his several copyright law decisions, they share a rigorous statutory analysis, a deference to precedent, and a general wariness to resort to the legislative history where a statute is clear on its face. Less than five years ago, he was litigating patent issues before the justices. Now John Roberts will bring a welcome hands-on technical perspective to a Supreme Court that had not had a new member since 1994. IP attorneys will wish to note that when the Senate Judiciary Committee asked him to list the 10 most significant litigated matters he had personally handled, Roberts included both the TrafFix Devices and Litton Systems patent cases.
Kelly D. Talcott is a partner in the New York office of Kirkpatrick & Lockhart Nicholson Graham specializing in IP law and technology law. This article first appeared in the New York Law Journal , an ALM publication

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