IP Justice

supreme-courtThe Wall Street Journal has a story up this morning on Supreme Court nominee Sonia Sotomayor’s record in intellectual property cases and its possible implications for her tenure on the high court should she be confirmed.

As a young lawyer in the mid-1980s, before becoming a federal district judge, Sotomayor handled IP litigation at Pavia & Harcourt, including a semi-famous case in which she represented luxury handbag maker Fendi in a trademark infringement action against makers of knock-offs, which ended with thousands of counterfeit Fendi bags being crushed by a steamroller in the parking lot of Tavern on the Green in Manhattan–a stunt that became known as the Fendi Crush.

As a district court judge, and later on the Second Circuit Court of Appeals, Sotomayor authored opinions in a number of copyright and other IP cases, including having the first crack at Tasini v. New York Times, a seminal case involving the right of newspapers and other publishers to include the work of freelance writers in electronic databases such as LexisNexis without express permission. Sotomayor sided with the Times, but here decision was ultimately overturned by the Supreme Court.

Whether any of that experience would influence or help predict how she might vote on IP cases before the Supreme Court I can’t say. But one possible early indication could come on 20th Century-Fox v. Cablevision (a.k.a. network DVR case).

There, the district court ruled in 2007 that Cablevision’s remote DVR service, in which subscribers could designate shows to be recorded and stored at the cable operator’s head-end facility and then accessed on demand, violated plaintiffs’ copyrights because Cablevision–instead of individual subscribers–was doing the copying.

In August 2008, the Second Circuit overturned the district court, finding that Cablevision’s remote DVR system was functionally do different from a set-top DVR in a subscriber’s home and therefore fell within the home-recording exemption set down in Sony v. Universal (the Betamax case).

The studio plaintiffs appealed that ruling to the Supreme Court in November. In January, the court punted, asking the incoming Obama administration to weigh in on the case before deciding whether to grant cert. At the same time, two of the nine justices, Chief Justice John Roberts and Justice Samuel Alito, recused themselves from the case for reasons unstated but presumably because of stock ownership in one or more of the parties.

That left seven justices to decide the case should the court decide to hear it. It takes four votes to grant cert. in a case, and with only seven justices participating it may have been hard to come up with the four votes needed. Thus, the delaying tactic of seeking input from the solicitor general (who, ironically was herself one of the four final candidates for the open seat on the court and probably would have had to recuse herself as well).

As it happens, the justice Sotomayor has been nominated to replace, David Souter, is a noted and self-professed Luddite, who still writes his opinions long hand and has a strong aversion to gadgetry of all kinds and who may not have been keen to take the Cablevision case, especially as both the district and appellate courts got pretty deep into the technical weeds in their opinions as to how the remote DVR system functions.

Just speculating here, but I wonder if Sotomayor, who is clearly comfortable in cyberspace, might provide another critical vote for cert. in Cablevision.

Given the potential importance of the case–touching on everything from the scope of Betamax to line between public and private performances–Sotomayor could have a significant impact on the court’s IP jurisprudence simply by showing up.

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