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    IPL Related Amicus Briefs

    Amicus Briefs are submitted in accordance with ABA Policy.

    2023

    • February 3, 2023: ABA files amicus brief in Abitron Austria GMBH v. Hetronic International, Inc.

      • The American Bar Association filed an amicus brief with the U.S. Supreme Court, asking the court to clarify the standards lower courts use in applying the federal Lanham Act to trademark disputes that cross international borders.

        Federal circuits have employed several different legal standards in deciding extraterritorial cases under the Lanham Act, which provides civil remedies for the infringement of U.S. trademarks. The ABA brief cited the need for Supreme Court guidance, noting the rapid development of technology and the growth of the internet, which “has dramatically improved the ability to conduct business internationally and in many cases has led to brand awareness in territories outside a trademark’s geographic scope.”

        The case at issue involves a U.S. company based in Oklahoma, which manufactures radio remote control systems for heavy industrial uses. It sued two of its former European distributors for selling copycat products, claiming that they had breached agreements, infringed on trademarks and misappropriated trade secrets, both during the partnership and after forming a competing company.

        The U.S.-based company prevailed in both U.S. District Court and before the U.S. Court of Appeals for the 10th Circuit. But the latter’s reasoning differed from the test for extraterritoriality articulated by at least three other federal circuits, including the 2nd Circuit in Vanity Fair Mills, Inc. v. T. Eaton Co. In that decision, the 2nd Circuit held that courts should consider three factors in determining whether to apply the Lanham Act extraterritorially: the effect of the defendants’ conduct on U.S. commerce, the citizenship of the defendants and any conflict with the laws of foreign jurisdictions.

        The ABA brief urges the Supreme Court to adopt that test while upholding the 10th Circuit’s judgment in support of the U.S. company.

        The ABA amicus brief in Abitron Austria GMBH v. Hetronic International, Inc., which was requested by the ABA Section of Intellectual Property Law, is here. Oral argument in the case is scheduled for March 21. The law firms of Kirkland & Ellis LLP, Pirkey Barber PLLC, and Debevoise & Plimpton LLP filed the brief pro bono on the ABA’s behalf.

    2019

    • September 19, 2019: ABA files Amicus Brief in Romag v. Fossil.

      • The ABA filed an amicus brief with the Supreme Court in support of the petitioner in Romag Fasteners, Inc. v. Fossil, Inc., No. 18-1233, concerning whether, under Section 35(a) of the Lanham Act, willful infringement of a trademark is a prerequisite to be awarded an infringer’s profits. There is a fundamental split among the regional circuit courts on this issue, with six circuit courts allowing an award of profits without requiring proof of willfulness, while the other six circuits (including the Second Circuit, whose law was applied by the Federal Circuit in this case) requiring proof of willful infringement as a prerequisite to any profits award.

        The ABA’s brief was based on ABA policy adopted in 2017, based on the Section of Intellectual Property Law's report and recommendation, which favors taking willfulness into account as among the equitable considerations. The brief argued, among other things, that the ABA policy comports with the controlling statutory text and with the Lanham Act’s purposes, while still providing trial judges broad discretion to weigh the equities of each case.

        The ABA’s brief was drafted by Travis Wimberly and Giuilio Yaquinto of Pirkey Barber PLLC in Austin, Texas.

        On April 23, the Supreme Court issued its opinion in Romag v. Fossil. The opinion sides with the position in the ABA’s amicus brief—willfulness is not an “inflexible precondition” to a profits award.

    • July 22, 2019: ABA Amicus Brief in Laura Peter, Deputy Director, United States Patent and Trademark Office, v. Nantkwest - No. 18-801, United States Supreme Court.

      • The American Bar Association filed an amicus brief with the U.S. Supreme Court, on the recommendation of the Section of Intellectual Property Law, supporting an appeals court ruling interpreting a provision of U.S. patent law to not allow the government to be reimbursed for its lawyers’ fees regardless of which side prevails in a court appeal of an administrative patent decision.

        Under patent law, an applicant dissatisfied with the decision of the U.S. Patent Trial and Appeal Board can seek review by filing an action against the U.S. Patent and Trademark Office (USPTO) in U.S. District Court. But under Section 145 of the law, “all expenses of the proceedings shall be paid by the applicant.” The USPTO has re-interpreted “all expenses” to include payment for its lawyers, but that re-interpretation was found to be an invalid reading of the Section 145 last year by the U.S. Court of Appeals for the Federal Circuit in Washington, D.C.

        The government is appealing. In the case at issue, the U.S. District Court for the Eastern District of Virginia granted the USPTO $33,103.89 in expert fees but denied requested attorney fees of nearly $80,000. The ABA’s amicus brief supports the position of Nantkwest Inc., which owns the cancer treatment patent application in question, and asks the Supreme Court to allow the Federal Circuit’s en banc decision to stand. Earlier, a three-judge panel split 2-1 in support of the government’s position.

        The ABA brief said without clear congressional authorization, the Supreme Court should not permit the USPTO “to set the price of admission so high that many appellants will be forced to choose not to exercise their rights.”

        “The ABA submits that imposing governmental attorneys’ fees on patent applicants who choose civil actions under (the law) will hamper equal access to justice and chill the assertion of meritorious claims,” the ABA brief said, citing ABA policy that supports that position. The USPTO, the brief continued, “now urges a radical, novel departure” from a longstanding interpretation requiring the government to cover its legal fees regardless of which side prevails in a case.

        The ABA brief added, “There is no evidence Congress intended Section 145 to be a roadblock to justice, and the (Supreme) Court should not interpret it that way.”

    2018

    • September 4, 2018: ABA Amicus Brief in Fourth Estate Public Benefit Corp. v. Wall Street.com and Jerrold D. Burden, No. 17-571, United States Supreme Court.
      • The ABA’s amicus brief in the Fourth Estate case, filed on the recommendation of the Section of Intellectual Property Law, supports permitting copyright holders to enforce their copyrights after submitting a complete set of registration materials (i.e., the application, deposit, and registration fee) to the Copyright Office, known as the “application approach.” The brief explained the application approach better comports with the Copyright Act as a whole and better serves U.S. authors and the judicial system at large as compared to the “certificate approach” of having copyright holders wait to seek relief for copyright infringement until a certificate of registration is issued or refused by the Copyright Office. The ABA-IPL Section adopted a policy position favoring the application approach in October 2017, which was supported by the ABA House of Delegates in February 2018.
    • January 23, 2018: ABA Amicus Brief in Nantkwest, Inc. v. Matal, 2016-1794, Federal Circuit.

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