Law360 (March 9, 2020, 5:36 PM EDT) -- The U.S. Supreme Court on Monday refused to take up a pair of intellectual property cases that raised questions about design patents and providing inaccurate information to the U.S. Copyright Office.

Law360 (March 9, 2020, 5:36 PM EDT) -- The U.S. Supreme Court on Monday refused to take up a pair of intellectual property cases that raised questions about design patents and providing inaccurate information to the U.S. Copyright Office.

Design Patents

The first rejection was Automotive Body Parts Association's appeal of a July Federal Circuit decision, in which the panel refused to invalidate two design patents covering automotive body parts for Ford's F-150 pickup truck.

Under the law, a design patent cannot cover a "primarily functional" design. The ABPA, a trade association for auto parts distributors, argued that Ford's patents are functional, because F-150 owners want replacement parts that match the design of the original parts.

But the Federal Circuit said that if truck buyers prefer the "distinctive appearance" of Ford's designs, that is exactly the type of market advantage "'manifestly contemplate[d]' by Congress in the laws authorizing design patents."

The ABPA's February petition had warned that the Federal Circuit used a "defective" test to reach its decision, and that the holding gave Ford an unwarranted monopoly on repair parts.

Ford waived its right to respond to the petition.

Counsel for the parties didn't immediately respond to requests for comment.

The ABPA is represented by Robert Glenn Oake Jr. of the Oake Law Office.

Ford is represented by Jessica L. Ellsworth of Hogan Lovells.

The case is Automotive Body Parts Association v. Ford Global Technologies LLC, case number 19- 1002, in the Supreme Court of the United States.

Copyright

The Supreme Court also shot down Fiesta Fabric's challenge to a Ninth Circuit finding that the company knowingly gave inaccurate information to the Copyright Office when it applied for copyright registration for fabric designs.

The Ninth Circuit found that Fiesta didn't follow the Copyright Act when it submitted published designs in its application to register a collection of unpublished works.

The appeal turns on a 2008 amendment to the Copyright Act called the Pro-IP Act. Under that law, a copyright registration can only be invalidated if an applicant knowingly includes inaccurate information on its application, and if the Copyright Office would have refused to register the work had it known the information was inaccurate.

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3/14/2020 Supreme Court Rejects Design Patent And Copyright Cases - Law360

Fiesta said it didn't act knowingly, but instead "mistakenly overlooked" completing a portion of its registration application that led the Copyright Office to register the designs as unpublished works. Fiesta called it "a putative technical mistake."

The company's November petition said the Ninth Circuit's ruling against it "contravened decades" of case law that requires bad faith or fraud to invalidate a copyright registration, when its own error was an "inadvertent" mistake.

The appeal came in a dismissed suit where Fiesta had accused Sanctuary Clothing LLC of copying its fabric designs, which were then sold through Amazon, Bloomingdale's, Dillard's, Macy's, Nordstrom and Zappos.

"We are happy that this case will finally be put to rest with all claims and issues resolved in favor of defendants and an award of costs and attorneys' fees on the proceedings before the district court and on appeal," Jessica Rutherford of Ferdinand IP LLC said on behalf of Sanctuary Clothing.

Rutherford said she expects other courts will align with the Ninth Circuit's ruling and adhere to a strict reading of the PRO-IP Act.

"The decision also encourages defendants to pursue meritorious defenses to infringement actions, especially those actions that rely on registrations that were invalid ab initio, where the applicant knew or should have known it, as was the case here," she said.

An attorney for Fiesta didn't immediately respond to a request for comment.

Fiesta, formally Gold Value International Textile Inc., is represented by Scott Alan Burroughs of Doniger Burroughs APC.

Sanctuary Clothing and the retailers are represented by Jessica Rutherford of Ferdinand IP LLC.

The case is Gold Value International Textile Inc. v. Sanctuary Clothing LLC et al., case number 19- 708, in the Supreme Court of the United States.

--Additional reporting by Tiffany Hu and Britain Eakin. Editing by Nicole Bleier.