Supreme Court allows Lanham Act claim in copyright infringement case

[JURIST] The US Supreme Court [official website] on Tuesday issued a unanimous ruling in Lexmark v. Static Control Components holding [opinion, PDF] that Static did not lack standing to assert a Lanham Act claim in defense of a copyright infringement action brought by Lexmark. The case revolved around the use of certain microchips allowing refurbished printing cartridges to be used in Lexmark printers. Lexmark [official website] developed a chip only allowing cartridges refurbished and sold by the company to be used while its competitor Static [official website] developed a chip performing the same function, except allowing third-party refurbished cartridges to be used. The Lanham Act counterclaim challenged letters sent by Lexmark to companies using the Static ship informing them that the use was illegal. Static still must prove it suffered harm as a result of the letters, but the decision allows [Forbes report] the use of a Lanham Act claim to prevent companies from discouraging competition by issuing cease and desist letters claiming illegal use or copyright infringement. Reports indicated that companies will now have to be certain about making such allegations, as potential for liability for false advertisement will exist if the claims about illegal use cause harm to another business and are proven to be false. This decision did not adjudicate the merits of either the copyright infringement or the Lanham Act claim.

A wide array of intellectual property disputes have occurred recently. The Youtube controversy between Google and Viacom was recently settled [JURIST report] after more than six years, though the financial details of the agreement were not disclosed. Google has also been engaged [JURIST op-ed] in a high-profile patent dispute with rival Apple, who has also recently been the subject [JURIST report] of many other high-profile intellectual property disputes. The Supreme Court also began [JURIST report] hearing oral arguments in February about the awarding of attorney's fees in patent litigation. The present case was granted [JURIST report] certiorari in June 2013.

 

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