This morning, the Supreme Court has denied the cert. petition filed by the copyright holder plaintiffs in the Cable News Network, et al. v. CSC Holdings, Inc., case. (See page 9).  Chief Justice Roberts and Justice Alito did not participate in the decision. The denial leaves in place the Second Circuit's holding that Cablevision's remote-storage DVR does not violate the copyright owners' exclusive rights to copy and publicly perform their works

Yesterday, President Obama nominated Second Circuit Judge Sonia Sotomayor to replace retiring Justice David Souter.  To no one’s surprise, newspapers, blogs and TV news programs across the country immediately began scrutinizing Judge Sotomayor’s personal and professional background, including her judicial record.  This blog is no different of course, except that it focuses on intellectual property issues and therefore will examine Sotomayor’s experience exclusively from an IP standpoint.

In looking at Judge Satomayor’s background and experience in IP cases, there’s really not many cases to look back on.  While sitting on the bench on the U.S. Court of Appeals for the Second Circuit she did issue decisions in numerous trademark disputes.  But none of these cases seems particularly noteworthy.  Nor did there seem to be any overarching viewpoint that can be gleamed from a quick review of these cases.   

However, Sotomayor has issued decision in a few very significant IP cases.  In 2002, she issued a decision in one of the first rulings involving the Anti-Cybersquatting Consumer Protection Act.  Her decision helped establish the parameters of how and where claims under the ACPA could be brought by trademark owners.  The Act, which was enacted in 1999, makes it illegal for someone to register a domain name that is either a trademarked term or an individual’s name with the sole intent of selling the rights to that domain name for a profit.  One important provision in the law allows trademark owners to bring an in rem suit (which is a suit against the domain name itself, instead of against the registrant of the domain name).  The 2002 ruling in Mattel Inc. v.Barbie-Club.com (which was discussed in a prior blog issued by Sotomayor clarified that such in rem jurisdiction only applied in the judicial district where the domain name register, registry or other authority is located.More...

The en banc Court of Appeals for the Federal Circuit issued, on October 30th, its long-awaited decision in In re Bilski, attempting to clarify the rules for business method patent eligibility under § 101 of the Patent Act.  In a 9-3 split, the Court affirmed the Patent Office’s decision that Bilski could not patent his method of hedging options to manage commodities trading risk.  While it is clear that the opinion will scale back the patenting of business method patents to some extent, it is difficult to determine how much, and to what extent it may affect software patenting.  Unfortunately, even after 136 pages (including three dissents and a concurrence), the majority opinion appears to leave more questions than answers.

The Opinion can be found at:  http://www.cafc.uscourts.gov/opinions/07-1130.pdf.