Ruth Bader Ginsburg’s Intellectual Property Jurisprudence

Copyright Law

Of the three core areas of intellectual property, Justice Ginsburg is most well-known for her influential copyright opinions. She was widely viewed as the Court’s “most fervently pro-copyright voice,”¹ believed to prefer strong copyright protection and to favor copyright owners.

Several of her opinions support this view. Her majority opinion in Eldred rejected constitutional challenges to the Copyright Term Extension Act,² which extended the duration of copyright protection for an additional 20 years, both prospectively and retroactively. This was of tremendous benefit to copyright owners.³ But it seemed to reflect a reluctance to engage deeply with social welfare-based policy arguments in the context of copyright law.

Justice Ginsburg’s majority opinion in Petrella rejected the equitable defense of laches as a defense to damages for copyright infringement.⁴ This was quite helpful to copyright owners because it allowed them to delay bringing infringement suits for strategic reasons without penalty. Other “strong copyright” opinions include her majority opinions in Tasini⁵ and Golan,⁶ concurring opinions in Grokster⁷ and Star Athletica,⁸ and dissenting opinions in Kirtsaeng I⁹ and Public.Resource.Org.¹⁰

Despite spending much of her career advocating for the disenfranchised and serving as a steward for liberal and progressive approaches toward social justice issues, Justice Ginsburg’s copyright decisions did not consistently favor the underdog.¹¹ We were curious as to why this was so. We have long recognized that the competing views which spark doctrinal flashpoints in copyright law do not settle easily into liberal versus conservative terrain. Copyright cases have a different political valence.¹² Congressional representatives will advocate for their constituents across party lines. In areas where creative content industries are powerful (like Nashville, for example), strong copyright protections are likely to be favored by elected officials from both political parties. In places known for technological innovation, congressional representatives are more likely to be skeptical about strong copyright protections. We wondered what influenced Justice Ginsburg’s perspectives on copyright law, so we decided to read all the cases and look for patterns. In a forthcoming article in the Nevada Law Journal,¹³ we take a deep dive into Justice Ginsburg’s copyright jurisprudence and identify four frequently appearing themes in her opinions: incrementalism, intergovernmental deference, seeking alternatives, and stoicism.

Justice Ginsburg was an incrementalist. Her preference was to change big laws with small steps and due care.¹⁴ She was concerned that if judges interpreted laws too quickly or reached unnecessary issues, this would create instability and place undue stress on the judiciary.¹⁵ Justice Ginsburg’s incrementalism in copyright law is observable in Quality King Distributors v. L’anza Research International, which tested the limits of copyright’s first sale doctrine when copyrighted goods crossed international borders.¹⁶ The plaintiff manufactured “luxury” shampoo in the United States and sold it domestically at premium prices.¹⁷ It also sold the shampoo abroad at much lower prices.¹⁸ The defendant distributor noticed and began purchasing the shampoo abroad at the lower prices and bringing cases of it back to the United States to sell.¹⁹ To prevent this, the plaintiff sued the defendant, alleging that importing the copyrighted labels back into the United States constituted copyright infringement.²⁰ The Court resolved the conflicts between the importation restrictions of § 602(a) and the first sale doctrine in § 109(a) by concluding that at least for goods made in the United States and then returned to the United States after having been shipped to another country, the first sale doctrine precluded a finding of copyright infringement.²¹

In her concurrence, Justice Ginsburg wrote: “This case involves a ‘round trip’ journey, travel of the copies in question from the United States to places abroad, then back again. I join the Court’s opinion recognizing that we do not today resolve cases in which the allegedly infringing imports were manufactured abroad.”²² Because L’anza had manufactured the shampoo bottles in the United States and then sent them abroad, they were “lawfully made under this title” as required by § 109(a). Justice Ginsburg explicitly withheld judgment about whether a copy produced abroad was equally protected by the first sale doctrine. The Court would eventually address this issue 15 years later in Kirtsaeng I.

A second theme running through Justice Ginsburg’s copyright jurisprudence is a penchant for intergovernmental deference. She believed that the evolution and interpretation of the law optimally occurs as a dialogue with other government institutions.²³ Her commitment to intergovernmental deference was evident in Kirtsaeng I, another case about importation and the first sale doctrine.

The Kirtsaeng I majority concluded that the first sale doctrine applied to imported products that were lawfully manufactured abroad and made only a one-way trip to the United States.²⁴ Justice Ginsburg dissented and would have held that the first sale doctrine does not apply to foreign-manufactured products.²⁵ Part of her rationale for rejecting international exhaustion relied on the executive branch’s position in international trade negotiations.²⁶ She noted that the government had concluded that international exhaustion “would be inconsistent with the long-term economic interests of the United States” and also with positions it had taken in international trade negotiations.²⁷ She feared that the majority’s interpretation would harm the United States’ “role as a trusted partner in multilateral endeavors.”²⁸ In Justice Ginsburg’s view, the intergovernmental dialogue on the first sale doctrine was in full swing, but the majority’s approach cut it off mid-sentence. Though aware that Congress could always amend the Copyright Act to overrule Kirtsaeng I and restart the dialogue, Justice Ginsburg seemed concerned that the conversation was terminated prematurely.

The third theme in Justice Ginsburg’s copyright jurisprudence is her willingness to seek alternative avenues of redress or relief to minimize the social disruptions caused by a particular outcome in a case. Petrella v. MGM²⁹ illustrates this predilection. Writing for the majority, she found that laches could not preclude a claim for damages brought within the three-year statute of limitations period.³⁰ The defendants and dissenting justices expressed concern that because of a long period of delay, a defendant might be harmed by its reliance on the plaintiff’s silence, or by the loss of potential evidence.³¹ Justice Ginsburg recognized this potential for injustice and wrote that an alternative mechanism, the doctrine of estoppel, could alleviate some of these concerns.³² She acknowledged that estoppel requires a more exacting test³³ and could not fix everything, but asserted that it was still a useful alternative tool to help address some of the contrary trepidations.

And the final theme in Justice Ginsburg’s copyright jurisprudence is stoicism. Justice Ginsburg’s stoicism is evident within her copyright jurisprudence as a willingness to go against traditional liberal values when she believed that justice required it. When she dissented in Georgia v. Public.Resource.Org, she was not persuaded by claims that allowing annotated editions of the state laws of Georgia to be copyrighted would restrict access to the law, especially to people with low incomes. Instead, she prioritized the commodification of Georgia’s laws over making sure that Georgia citizens had the best opportunity to access and understand the statutes that bind them.³⁴ Her reasoning was rooted in her understanding of the government edicts doctrine rather than public policy concerns.

Patent Law

Despite the Court hearing many more patent than copyright cases while she was on it, Justice Ginsburg wrote far fewer patent opinions. During her 27 years on the Court, she wrote only seven. Of these seven opinions, two can be described as “strong patent” decisions,³⁵ three as supporting alleged infringers or patent challengers,³⁶ and two as neutral.³⁷

Despite patent law and copyright law sharing the same constitutional basis and several animating principles, Justice Ginsburg seemed to view copyrights and patents quite differently. In Impression Products v. Lexmark International, the Court confronted the international exhaustion question in patent law, having recently addressed it in the copyright context. Justice Ginsburg took the identical approach she had in copyright—recognizing domestic exhaustion, but disagreeing that a foreign sale exhausted U.S. patent rights.³⁸ Interestingly, she explained that even if she had agreed with the majority’s approach in Kirtsaeng I, she still disagreed that such an approach was appropriate for patent law because “[a]lthough there may be a ‘historical kinship’ between patent law and copyright law, the two ‘are not identical twins.’”³⁹

The themes we observed running through her copyright jurisprudence are less visible in her patent jurisprudence. For example, her majority opinion in Nautilus, which addressed the correct standard for definiteness, showed only a flash of incrementalism. In a footnote, she noted that the Court was declining to address “whether factual findings subsidiary to the ultimate issue of definiteness trigger the clear-and-convincing-evidence standard [and] whether deference is due to the PTO’s resolution of disputed issues of fact.”⁴⁰

In other patent cases, incrementalism is not evident at all. Inter partes review is an administrative process that permits a challenger to ask the U.S. Patent and Trademark Office (USPTO) to reconsider the validity of previously granted patent claims. If a request comes more than a year after the challenger has been sued for patent infringement, “[a]n inter partes review may not be instituted.”⁴¹ In Thryv, petitioner Thryv sought inter partes review of a patent owned by respondent Click-to-Call Technologies. Click-to-Call countered that the petition was untimely under § 315(b). The Patent Trial and Appeal Board (PTAB) disagreed with Click-to-Call and instituted review. Click-to-Call appealed the PTAB’s § 315(b) determination. Treating the PTAB’s application of § 315(b) as judicially reviewable, the Federal Circuit concluded that the petition was untimely. On appeal, the Supreme Court held that § 314(d) precludes judicial review of the agency’s application of § 315(b)’s time prescription.⁴² Justice Ginsburg, writing for the majority, wrote an expansive opinion that captured not just § 315(b) but everything under § 314 and what it explicitly and implicitly refers to.⁴³ Thryv was a far more sweeping than incremental opinion.

In Holmes Group, Justice Ginsburg wrote a short concurrence addressing whether the Federal Circuit had jurisdiction over a case in which the complaint did not allege a claim arising under federal patent law but the answer contained a patent law counterclaim.⁴⁴ She wrote to say that when a compulsory counterclaim arises under federal patent law and is adjudicated by the district court, then the Federal Circuit has exclusive appellate jurisdiction.⁴⁵ But she concurred with the judgment in Holmes Group because the district court didn’t actually resolve the patent claim.⁴⁶ Rather than simply pointing out that this case did not actually resolve the patent claim (similar to what she did in her concurrence in Quality King), she explained what her preferred approach to this issue was.

Signs of intergovernmental dialogue also appear in Justice Ginsburg’s patent jurisprudence. The strongest example is from Microsoft v. AT&T, which asked when software qualified as a component under § 271(f) and whether copies of copies of a component made in a foreign country counted as being supplied from the United States.⁴⁷ Writing for the majority, Justice Ginsburg said, “we resist giving the language in which Congress cast § 271(f) an expansive interpretation. Our decision leaves to Congress’ informed judgment any adjustment of § 271(f) it deems necessary or proper.”⁴⁸ She traced the history of the statute from the Court’s decision in Deepsouth Packing to congressional enactment of § 271(f).⁴⁹ She perceived Microsoft v. AT&T as simply another step in the back-and-forth between Congress and the Court⁵⁰ and suggested language that Congress could amend the statute to include.⁵¹ And finally, when she reflected on whether the statutory language overcame the presumption against extraterritoriality, Justice Ginsburg expressed concern that if the Court construed the statute more broadly, it would have the effect of controlling some foreign activities, which could run afoul of sovereign interests.⁵² This, she suggested, was a reason for the Court to be cautious and wait for further instruction from Congress about whether this is what it really wanted.⁵³

Curiously, Justice Ginsburg’s majority opinion in Thryv turned away from intergovernmental dialogue. Her opinion significantly empowered the PTAB and made it the final authority in certain kinds of disputes. This effectively ended the conversation, which Justices Gorsuch and Sotomayor emphasized in their dissent.⁵⁴

Justice Ginsburg suggested alternatives a couple of times in her patent opinions, but they are less apparent than in her copyright cases. In Thryv, she described alternative avenues of relief for patentees that could soften the impact of the Court’s holding. She noted that patentees who have claims canceled always have the option of appealing the merits of the PTAB’s decision to the Federal Circuit, so they are not without recourse for an improper invalidation of their claims.⁵⁵ Similarly, in Microsoft, she explained that the Court’s decision did not leave patentees without any ability to protect their interests. Companies that want to prevent the copying of their software in foreign countries could seek and enforce foreign patents.⁵⁶ This option, although not ideal for patentees because of the additional costs, was intended to lessen their concerns.

Still another theme running through some of Justice Ginsburg’s patent jurisprudence is a focus on efficiency. This is best illustrated in both Thryv and SAS Institute. In Thryv, she explained that allowing § 315(b) appeals for untimely petitions would waste resources.⁵⁷ And in her dissent in SAS Institute, she described the majority’s decision as incorrect because it created inefficiencies in the inter partes review system.⁵⁸ The Court’s approach encouraged the PTAB to reject a petition, note that some claims warrant further examination, and then require the petitioner to refile or amend a more specific petition.⁵⁹ She questioned why Congress would have wanted the USPTO to waste its time taking several steps when one step could achieve the same result.⁶⁰

Trademark Law

Of the three core areas of intellectual property, Justice Ginsburg had surprisingly little to say about trademark law. During her 27 years on the Court, she only wrote two trademark opinions: the majority opinion in Booking.com⁶¹ and a short concurrence in B&B Hardware.⁶²

Booking.com addressed whether a generic term with .com appended to the end was ineligible for federal trademark registration.⁶³ Justice Ginsburg, in her final majority opinion for the Court, concluded that generic.com-styled marks were not necessarily generic and must be evaluated from the perspective of consumers to determine whether they perceive the term as the name of the class of goods or services.⁶⁴ This decision obviously favored the trademark owner and opened up the possibility of registering generic.com-styled marks to everyone.

Whether Justice Ginsburg was a proponent of “strong trademark” protection is impossible to discern from this case. The only theme we identified in her copyright jurisprudence that makes an appearance in Booking.com is suggesting alternatives, but in a confusing manner. The USPTO expressed concern that protection of generic.com-styled marks could exclude competitors from using similar terms such as ebooking.com or hotel-booking.com.⁶⁵ Justice Ginsburg attempted to calm those fears by explaining that these restrictions only exist when there is a likelihood of confusion.⁶⁶ She also observed that the classic fair use doctrine is another tool that alleged infringers can rely upon even when a likelihood of confusion is present.⁶⁷ However, she concomitantly rejected the alternatives proffered by the USPTO. The USPTO asserted that even if Booking.com were generic, “unfair-competition law . . . prevent[s] others from passing off their services as Booking.com’s,”⁶⁸ affording some protection to unregistered marks. Justice Ginsburg declined to endorse this because federal trademark registration confers valuable benefits beyond what unfair competition law provides.⁶⁹ Her rejection of this alternative was surprising given that she had endorsed a similar approach while a judge on the D.C. Circuit.⁷⁰

Justice Ginsburg’s other trademark opinion in B&B Hardware is unremarkable. The issue presented to the Court was whether a district court should apply issue preclusion to an infringement claim based on a Trademark Trial and Appeal Board decision in an opposition that two marks are confusingly similar.⁷¹ In a four-sentence concurrence, Justice Ginsburg emphasized that issue preclusion should not apply when the “comparison of the marks [is] in the abstract and apart from their marketplace usage.”⁷² This point was also made by the majority,⁷³ but Justice Ginsburg further accentuated it in an unsuccessful effort to make sure all the lower courts understood.⁷⁴

Conclusion

Studying Justice Ginsburg’s intellectual property law jurisprudence presents wonderful opportunities to reflect upon her keen and occasionally quirky intellect. She was not nearly as predictable in intellectual property disputes as she was in civil rights cases, and that makes her jurisprudence on copyrights, patents, and trademarks an engaging study.

Endnotes

1. See Eriq Gardner, A Supreme Court without RBG May Impact Hollywood’s Grip on Intellectual Property, Hollywood Rep. (Sept. 21, 2020), https://www.hollywoodreporter.com/business/business-news/a-supreme-court-without-rbg-may-impact-hollywoods-grip-on-intellectual-property-4064367; see also Ryan Davis, Ginsburg Remembered as Steadfast Pro-Copyright Voice, Law360 (Sept. 21, 2020), https://www.law360.com/articles/1312244/ginsburg-remembered-as-steadfast-pro-copyright-voice (“Justice Ruth Bader Ginsburg’s steadfast support for copyright owners was one of the hallmarks of her U.S. Supreme Court tenure[.]”).

2. Eldred v. Ashcroft, 537 U.S. 186 (2003).

3. See Gardner, supra note 1 (“Upon [Justice Ginsburg’s] passing, Motion Picture Association Chairman Charles Rivkin put out a statement celebrating her ‘eloquent opinions championing the rights of creators.’”).

4. Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014).

5. N.Y. Times Co. v. Tasini, 533 U.S. 483 (2001).

6. Golan v. Holder, 565 U.S. 302 (2012).

7. Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005).

8. Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017).

9. Kirtsaeng v. John Wiley & Sons, Inc. (Kirtsaeng I), 568 U.S. 519 (2013).

10. Georgia v. Public.Resource.Org, Inc., 140 S. Ct. 1498 (2020).

11. In a forthcoming article, we cast some doubt on the popular image of Justice Ginsburg as a proponent of strong copyright protection by noting that if one examines all her copyright cases (including the ones where she joined, but did not author, the opinion), she actually sides with accused infringers much more frequently. See Ryan Vacca & Ann Bartow, Ruth Bader Ginsburg’s Copyright Jurisprudence, 22 Nev. L.J. (forthcoming 2022), https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3804436.

12. See Ann Bartow, When Bias Is Bipartisan: Teaching about the Democratic Process in an Intellectual Property Law Republic, 52 St. Louis U. L.J. 715 (2008).

13. See Vacca & Bartow, supra note 11.

14. Nomination of Ruth Bader Ginsburg, to Be Associate Justice of the Supreme Court of the United States: Hearings Before the S. Comm. on the Judiciary, 103d Cong. 51 (1993) (describing how a judge should exercise restraint in deciding cases).

15. Ruth Bader Ginsburg, Mary Hartnett & Wendy W. Williams, My Own Words 196 (2016).

16. Quality King Distribs., Inc. v. L’anza Rsch. Int’l, Inc., 523 U.S. 135 (1998).

17. Id. at 138–39.

18. Id. at 139.

19. Id.

20. Id. at 143.

21. Id. at 143–45.

22. Id. at 154 (Ginsburg, J., concurring).

23. Ruth Bader Ginsburg, Speaking in a Judicial Voice, 67 N.Y.U. L. Rev. 1185, 1186 (1992).

24. Kirtsaeng I, 568 U.S. 519, 525 (2013).

25. Id. at 557 (Ginsburg, J., dissenting).

26. Id. at 573.

27. Id. at 575–76.

28. Id. at 578.

29. Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014).

30. Id. at 679.

31. Id. at 689–90.

32. Id. at 684–85.

33. Id. at 684.

34. Georgia v. Public.Resource.Org, Inc., 140 S. Ct. 1498, 1522–24 (2020) (Ginsburg, J., dissenting).

35. Impression Prods., Inc. v. Lexmark Int’l, Inc., 137 S. Ct. 1523 (2017); Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997).

36. Thryv, Inc. v. Click-to-Call Techs., LP, 140 S. Ct. 1367 (2020); Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014); Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007).

37. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018); Holmes Grp., Inc. v. Vornado Air Circulation Sys., Inc., 535 U.S. 826 (2002).

38. Impression Prods., 137 S. Ct. at 1538 (Ginsburg, J., concurring in part and dissenting in part).

39. Id. at 1539 (citation omitted).

40. Nautilus, 134 S. Ct. at 2130 n.10.

41. 35 U.S.C. § 315(b).

42. Thryv, Inc. v. Click-to-Call Techs., LP, 140 S. Ct. 1367, 1370 (2020).

43. Id. at 1375.

44. Holmes Grp., Inc. v. Vornado Air Circulation Sys., Inc., 535 U.S. 826, 839–40 (2002) (Ginsburg, J., concurring).

45. Id. at 840.

46. Id.

47. Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 442 (2007).

48. Id.

49. Id. at 442–45.

50. Id. at 442–45, 457–58.

51. Id. at 457 (“The ‘loophole,’ in our judgment, is properly left for Congress to consider, and to close if it finds such action warranted.”).

52. Id. at 454–56.

53. Id.

54. Thryv, Inc. v. Click-to-Call Techs., LP, 140 S. Ct. 1367, 1378 (2020).

55. Id. at 1375.

56. Microsoft, 550 U.S. at 456.

57. Thryv, 140 S. Ct. at 1374.

58. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1360 (2018) (Ginsburg, J., dissenting).

59. Id.

60. Id.

61. USPTO v. Booking.com B.V., 140 S. Ct. 2298 (2020).

62. B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (2015).

63. Booking.com, 140 S. Ct. at 2301.

64. Id. at 2305, 2308–09.

65. Id. at 2307.

66. Id.

67. Id. at 2307–08.

68. Id. at 2308.

69. Id.

70. See Blinded Veterans Ass’n v. Blinded Am. Veterans Found., 872 F.2d 1035 (D.C. Cir. 1989).

71. B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 141–42 (2015).

72. Id. at 161 (Ginsburg, J., concurring).

73. Id. at 156–57 (majority opinion).

74. See Cesari S.r.L. v. Peju Province Winery L.P., No. 17 Civ. 873, 2017 WL 6509004 (S.D.N.Y. Dec. 11, 2017).