Professor Carolyn Shapiro, Director of the Institute on the Supreme Court of the United States at Chicago-Kent, moderated a panel featuring Thomas Goldstein, James Dabney, Matthew McGill, and Aaron Panner that discussed the granted and to-watch IP cert. petitions in the upcoming Supreme Court Term, which starts October 1st. The panel focused on two cases: Already, LLC v. Nike and Kirtsaeng v. John Wiley & Sons, Inc. The questions presented in each case are as follows (from SCOTUSblog):
Already v. Nike: Whether a federal district court is divested of Article III jurisdiction over a party’s challenge to the validity of a federally registered trademark if the registrant promises not to assert its mark against the party’s then-existing commercial activities.
Kirtsaeng v. John Wiley: How do § 602(a)(1) of the Copyright Act, which prohibits the importation of a work without the authority of the copyright’s owner, and § 109(a) of the Copyright Act, which allows the owner of a copy “lawfully made under this title” to sell or otherwise dispose of the copy without the copyright owner’s permission, apply to a copy that was made and legally acquired abroad and then imported into the United States?
Dabney, counsel to Already LLC, noted that the larger question in the Already v. Nike case is whether or not one party can moot out another party’s claim. McGill, counsel to John Wiley & Sons, explained the conflict in the Kirtsaeng case over the ambiguity of the “first-sale doctrine” (set forth in § 109) and its interpretation—the first-sale doctrine does not explicitly address issues of foreign-made products. The Court will thus debate whether or not Kirtsaeng is liable for copyright infringement based on its interpretation of the first-sale doctrine’s relationship to imported foreign-made products.
Other cert. petitions to watch:
Bowman v. Monsanto Co.
Byrne v. Wood, Herron & Evans, LLP
GlaxoSmithKline v. Classen Immunotherapies, Inc.
Libertarian Party of Washington State v. Washington State Grange
Washington State Democratic Central Committee v. Washington State Grange
Merck & Co., Inc. v. Louisiana Wholesale Drug Co., Inc.
Retractable Technologies, Inc. v. Becton, Dickinson and Co.
R.J. Reynolds Tobacco Co. v. Star Scientific, Inc.
Sigmapharm, Inc. v. Mutual Pharmaceutical Co., Inc.
For more on the Supreme Court’s 2012 Term, which begins Monday, October 1st, visit SCOTUSblog.