31 March 2021TrademarksMuireann Bolger

Justice Ruth Bader Ginsburg: exploring her IP legacy

The passing of Ruth Bader Ginsburg in September following her tenure as an associate justice of the  US Supreme Court for more than 27 years marked the end of a seminal era in US legal history.

From pioneering women’s rights in the 1970s to spending her later years fighting for social justice, the  life and career of a woman dubbed  “the notorious RBG” has left an indelible mark.

But one lesser-known aspect of Justice Ginsburg’s legacy lies in her considerable influence on IP. The first of a two-part podcast episode broadcast by the  International Trademark Association as part of its  Brand & New series, explored how she shaped IP law—as well as offering a behind-the-scenes look at her professional and personal life.

The distinguished panel comprised three women who knew Justice Ginsburg extremely well, including her daughter, Jane Ginbsurg, a renowned IP expert and professor of literary and artistic property law at  Columbia Law School.

The series, titled “ Justice Ruth Bader Ginsburg and her legacy in the IP World,” also featured Mary Hartnett, an adjunct professor of law at  Georgetown University Law Center, Washington, DC, who is working on a forthcoming biography of the influential Justice. Judge Margaret McKeown of the  US Court of Appeals for the Ninth Circuit, San Francisco, California, also joined the panel, reflecting on her time as Justice Ginsburg’s friend and mentee. a swansong opinion

In 1993, Ginsburg was appointed by President Bill Clinton, becoming the second woman to sit on the Supreme Court’s bench, after Justice Sandra Day O'Connor.

As the panel hosted by Audrey Dauvet, group general counsel at  Tarkett, discovered, Ginsburg went on to preside over many significant IP decisions over the course of three decades.

During her career, her innate sense of fairness was paramount. “For Justice Ginsburg, both as a lawyer advocate and later as a judge and justice, the law was never just about arcane legal concepts. For her, it was always about real people and treating them fairly,” said Hartnett.

In one of her final cases in June 2020, Justice Ginbsurg authored the  highly-anticipated decision. “This raised the question whether a supposed trademark consisting of a generic term followed by .com could be registered,” noted her daughter during the podcast.

The Justice ruled that adding ‘.com’ to otherwise generic terms can create a protectable federal trademark, in a win for

The decision marked a defeat for the  US Patent and Trademark Office (USPTO), which had long maintained that such marks are not eligible for trademark protection. In an 8-1 majority decision delivered, the court found that the USPTO’s rule had “no basis” in US trademark law.

According to Justice Ginsburg, the USPTO did not do enough to convince the majority to adopt a categorical ban on so-called “” marks.

The Justice wrote that the USPTO was relying on the “faulty” premise that the combination of a generic term like Booking with ‘.com’ was itself necessarily generic. “A ‘’ term might also convey to consumers a source-identifying characteristic: an association with a particular website,” she added.

During the podcast, Jane Ginsburg explained that this ruling illustrated her mother’s pragmatic approach to IP law. “As a matter of theory, one might say that just as one cannot register a generic term because that would be rather anti-competitive, adding a ‘.com’ to a generic word shouldn't make the word anymore registerable and risks putting competitors at the same kind of disadvantage,” she said.

“That's all very coherent as a matter of theory, but as a practical matter, the USPTO had been registering lots of generic .com marks,” she added.

Consequently, Justice Ginsburg prioritised practical considerations over theoretical arguments.

“By the time the Supreme Court got this case it was a little late to pull the rug out from all those prior registrations. So, the case may have been a triumph of practice over theory,” explained Jane Ginsburg.

A unique copyright perspective

As the panel discovered Justice Ginsburg’s rulings throughout her time on the Supreme Court bench caused significant shifts in IP—particularly in the field of copyright.

All concurred that she developed a strong pro-author stance when it comes to copyright law with an entrenched commitment to preserving and strengthening IP rights.

This passion, according to her daughter, partially stemmed from her own great love of arts.

“I think a lot of people who are drawn to copyright come from a perspective of appreciating music, art, and literature. She certainly emphasised the constitutional role of copyright in stimulating and rewarding creativity. In a number of instances, she looked at the consequences of a decision for the fostering of works of authorship.”

For McKeown, Ginsburg’s influence was particularly notable in copyright cases such Eldred v Ashcroft (2003) which related to upholding the constitutionality of the 1998  Sonny Bono Copyright Term Extension Act (CTEA). Justice Ginsburg’s ruling prevented a number of works from entering the  public domain in 1998 and following years, which would have otherwise occurred under the  Copyright Act of 1976.

In another memorable copyright case, Golan v Holder (2012) Justice Ginsburg affirmed a lower court’s ruling that the  Uruguay Round Agreements Act does not exceed Congress's authority under the  US Copyright Clause. This meant that works that were previously free to use would no longer be in the public domain and would become subject to use only with the permission of the copyright holder— through paid licensing or until the expiration of the copyright term.

The panel agreed that Golan, which also harmonised US copyright law with EU law, reflected Justice Ginsburg’s internationalist perspective.

“All too often IP judging and scholarship tends to be extraordinarily insular. But my mother was a comparative law scholar. She got her start writing about Swedish civil procedure, so she was very sensitive to comparative and international perspectives. She brought that to bear in IP as well,” reflected Jane Ginsburg.

The three women noted that Justice Ginsburg offered a unique perspective when it came to copyright, as she was also a writer herself, co-authoring the best-selling “ My Own Words” with Hartnett and Wendy Williams, professor of law emerita at Georgetown University, Washington DC.

“‘My Own Words’ is a collection of Justice Ginsburg's writings that span more than 70 years. The first piece in the book was written when she was 13 years old, for her 8th-grade student newspaper. So, when we say that she was also an author herself, that's quite an understatement. She was a tremendously prolific author,” said Hartnett.

Impact on patents

According to McKeown, Justice Ginsburg also held strong views on the patenting arena, which was exemplified in one of her final decisions, Thryv v Click-to-Call Technologies (2020), holding that when the USPTO grants a petition for an inter partes review and rejects a contention that the petition is time-barred, that rejection is not reviewable on appeal.

“The question was really one of procedure, as to whether certain issues could be raised on appeal,” explained McKeown, who added that the case illustrated Ginbsurg’s abiding respect for congressional concerns.

“She noticed that Congress was concerned about bad patents and about diminishing competition. So, in some ways, she highlighted the phenomenon that some have criticised as over patenting or overprotecting. That is a very interesting perspective she had in the patent arena,” said McKeown.

Friendships across ideological divides

A commendable strength of Justice Ginsburg—the great champion of liberal causes and women’s rights—was her ability to circumvent ideological differences by forging strong friendships across political and gender divides.

Her friendships with the politically moderate Justice Stephen Breyer and arch-conservative Justice Antonin Scalia were particularly notable, the panel noted.

McKeown explained that over the years Justice Ginsburg and Justice Breyer diverged in a number of pivotal cases including Eldred, in which Breyer thought Congress had gone too far in impinging on the public domain.

The Justices also disagreed in MGM v Grokster (2005), which held that defendant peer-to-peer file-sharing companies Grokster and Streamcast could be sued for inducing copyright infringement for action taken when marketing file-sharing software.

Justice Ginsburg felt that there was insufficient evidence of uses that were non-infringing, while Breyer disagreed, explains McKeown. “So, there was a very clear split there,” she added.

The pair also differed once again during the last months of Justice Ginsburg’s tenure over the landmark ruling.

Justice Ginsburg said that, because is not generic to consumers, it's not generic, and all of her colleagues except Justice Breyer agreed,” noted McKeown.

“He threw out ‘the sky is falling’ proposition that you stifle competition, then pretty soon we will be protecting marks such as, was concerned that his colleagues had basically granted a monopoly over all of these generic names.”

Nonetheless, despite these deviations, the two developed and maintained a deep and long-lasting working relationship. Upon learning of her death last year, Breyer described the Justice “as a woman of valour, a rock of righteousness, and my good, good friend, who made the world a better place for us to live in”.

Even more extraordinary was Justice Ginsburg’s decades-long camaraderie and mutual respect with the late and staunchly conservative Justice Scalia.

“They had a great friendship that, in part, was spawned by their love of opera. I thought it was a tribute to his colleague when Scalia said, particularly in relation to IP cases, ‘My judgement is often guided considerably by Ruth’,” said McKeown.

Noted Hartnett: “Justice Ginsburg's friendship with Justice Scalia is a really terrific example of friendships that span ideological differences. The ideological differences between Justice Ginsburg and Justice Scalia were vast, but they were fast friends.”

This desire to bridge the barriers posed by contrasting belief systems sprang from Justice Ginsburg’s deep commitment to the US legal system, agreed the panel.

“She cared so deeply about the integrity of the Supreme Court as an institution. She talked about this often, and how the [justices] tried very hard, even when there were very difficult ideological differences, to respect each other and respect the institution,” said Hartnett.

The panel concluded the discussion by reflecting on Justice Ginsburg’s close bond with her daughter, Jane, which was strengthened by their shared passion for IP law.

“I cannot tell you the number of times when we interviewed the Justice for three days in August, how much she talked about Jane and would have copies of her latest publications— of which there were many,” reflected Hartnett.

It was a particular source of pride for the Justice when both women were inducted together into the  IP Hall of Fame in 2015, she added.

A treasured bond

Alongside their love of law, the two women shared enthusiasm for travel and exploration. “Jane and the Justice did many professional trips together—the Justice was thrilled about that. During these trips, the Justice would carry out talks on the Supreme Court and gender equality, while Jane would be completely independent professionally while conducting her own IP talks, said Hartnett.

She noted how the two women would then come together late at night in their hotel and compare notes. “It was one of the many beautiful things about their relationship— something that the Justice, and, I'm sure, Jane, treasured greatly,” she reflected.

But the weighty contributions of both Ginsburg women to the legal landscape sometimes led to a comedy of errors, as the trio of IP trailblazers gleefully reminisced.

Jane Ginsburg recalled the confusion that resulted from the announcement of Justice Ginsburg’s appointment to the Supreme Court during the annual meeting of the  US Copyright Society in 1993—when she was mistaken for her mother.

“The society was gathered and the news came out that Clinton had nominated ‘Ginsburg’. Some of the folks at the copyright society looked at each other and said, ‘But isn't she much too young?’” she laughed.

The next episode dedicated to Justice Ginsburg's legacy in the IP world will be broadcast on April 13, followed by another report from WIPR.

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