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Supreme Court to hear multiple important IP law cases in 2023


As a business owner with intellectual property to protect, you need to be aware that the laws can change. 

New changes that might affect you could be on the way this year, with the Supreme Court due take up  several IP-related matters in the coming months. Here are some of them: 

Can art transform another’s work enough to count as fair use?

Fair use allows the use of the work of others in certain circumstances. The court will review an ongoing battle over Andy Warhol’s use of the photographic work of Lynn Goldsmith. The works in question are a Goldsmith photograph of the Minnesota-born rock star, Prince, and Warhol’s use of the work in his own portrait composition. 

Titled “Orange Prince,” the similarities between Warhol’s 1984 work and Goldsmith’s photograph can be seen here. Was Warhol’s work transformative enough to qualify as fair use, or was it derivative (therefore requiring a license), and how do you define that? Those are questions that the Court will consider. 

Will there be anything left to a generic drug’s “skinny label?”

Branded pharmaceutical companies would like to prevent generic drug manufacturers from labeling their generic drugs for only non-patented uses. A so-called “skinny label” is a label (it’s actually the package insert) that discloses uses of a generic drug that are not patented by the manufacturer of the branded product (or for which the branded company’s patents have expired). For example, if the product works for headaches and fevers, but the patent is still in force only for headaches, a skinny label would disclose use only for fevers. 

The 1984 Drug Price Competition and Patent Term Restoration Act, known commonly as the Hatch-Waxman Act, was intended to allow generic drug companies to bring generics to market faster. Skinny labeling, a consequence of the Hatch-Waxman Act, makes it so that companies can bring generic products to the market without having to wait for patent protection to lapse on no longer patented uses. For consumers, generic drugs can be a cheaper alternative to name brands.

Branded companies argue that regardless of what the label says, the generic drug will inevitably be used for patented uses. If the Supreme Court agrees with the branded companies, then a generic drug manufacturer will be prevented from selling its generic drug for non-patented uses until all the use patents from the branded company have expired.

Can you base damages for trademark infringements on foreign sales?

The Court will review an earlier decision by the 9th Circuit Court of Appeals that deemed one could base damages for U.S. trademark infringements on foreign sales. However, the losing party argues that awarding damages based on sales that occurred almost entirely outside the U.S. may threaten international trademark laws. 

You probably do not have time to keep abreast of all the latest developments yourself. Consider partnering with a legal team who can do this for you to ensure your intellectual property protection plan remains current. 

Jeff Ali is the Chair of the IP litigation practice at Patterson Thuente IP. Contact Jeff (612.349.3017 | with questions about how you can defend and enforce your intellectual property rights.


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