Case 1.

ASSOCIATION FOR MOLECULAR PATHOLOGY v. MYRIAD

GENETICS, INC.

Supreme Court of the United States, 2013

569 U.S. _____,133 S.Ct. 2107, 186 L.Ed.2d 124

Facts of The Case

In the 1990, the Myriad Genetics, Inc. a research group at the University of California

discovered gene on chromosome 17 that they believed caused breast and ovarian cancer in

humans being. They discovered that there were two genes, BRCA1 and BRCA2 and also the

methods of altering those genes. Myriad Genetics goes ahead and obtained a patent based on the

discovery. The patent covered the genes that caused breast and ovarian cancer and their isolated

gene sequence and the procedure used in determining if a patient has these genes or mutations of

the genes. Myriad Genetics intended to use the patent to obtain the absolute right to isolate

BRCA1 and BRCA2. It would also be given the absolute right to create the BRCA synthetic

gene. Medical patients, advocacy groups, and doctors filed a case seeking to invalidate Myriad

patent. The district court granted summary judgement to the petitioners on the basis that, Myriad

patent was invalid because it covered products of nature. The federal court reversed and on

remand the federal circuit court found both DNA and synthetic DNA patents eligible.

The Issue at Law Being Considered

Question as to whether naturally existing DNA substances and synthetically produced DNA that

resembles the natural DNA with minor alterations are patent eligible.

How The Law Was Applied in This Case?

The court highlighted the four categories of inventions that are eligible for patents; this were,

machines, composition of matter, manufacturing, and processes. Section 101 of the patent Act

Provides that, invention or discovery of any new and useful matter or any new useful

improvement may obtain a patent. However, the court recognized the exceptions of the patent

law which are that, laws of nature, natural phenomenon’s and abstract ideas are not eligible for

patenting. These are they are the basic tools of scientific and technological work’” that lie

beyond the domain of patent protection. The court pointed out that devoid of this exceptions,

“there would be considerable danger that the grant of patents would “tie up” the use of such tools

and thereby “inhibit future innovation premised upon them.” However, the court recognized and

appreciated the fact that, all inventions at one-point use, reflect, rest upon or apply the laws of

nature, natural phenomenon, or abstract ideas. However, patent protection strikes a balance

between creating incentives “leading to creation, invention or discovery” and the laws of nature.

It is on these incentive that the court would base its judgement on whether, Myriad patent

claimed any new unique and useful composition of matter or its patent is founded solely on the

laws of nature.

Conclusion of The Court.

The court holds that Myriad did not create or alter any genetic coding in the BRCA1 and

BRCA2. The location of these genes existed naturally even before Myriad discovered them.

What Myriad did was a mere discovery positively contributing to the medical field. Therefore,

naturally existing DNA is a product of nature and not patent eligible only because it has been

isolated. The court pointed out that Myriad Genetics did not However, synthetically produced

DNA is patent eligible because it is not naturally occurring. The court therefore affirmed in part

and reverse in part the decision of the U.S Court of Appeal for the Federal Circuit.
 Copyright Laws

WAL-MART STORES, INC. v. SAMARA BROTHERS, INC.

Supreme Court of the United States, 2000

529 U.S. 205, 120 S.Ct. 1339, 146 L.Ed.2d 182

Facts of the case

Samara Brothers Inc specializes in manufacture and designing children’s clothes. One of

the company’s key products is summer clothes for children. Samara’s competitors include

Walmart a leading store in the USA, manufactures similar products. Samara’s clothes are

decorated with fruits, flowers and heart appliques, and has contracts with retail stores such as

JCPenny, who are in contract with the company. Walmart entered into contract with Judy

Philippines to supply the company with similar children’s clothes as those of Samara. Photos of

Samara’s garments were used in the manufacture of 16 different cloth lines, and only making

minor changes. Walmart sold the garments incurring profits amounting to over $1.5 million. One

of Samara’s customers, JCPenny store, reported the matter to Samara, complaining of unfair

prices. Walmart was selling at a cheaper prize than Samara. Upon investigations, Samara

confirmed the allegations and realized that other stores had copied their design and were selling

at lower prices. Samara sent numerous cease-and-desist demands to the companies and after

failed attempts, filed a petition. The court ruled in favor of Samara, but Walmart was

dissatisfying, appealing the case. The appeal ruled in favor of Samara, directing Walmart to pay

damages in the amount of $1.6 million. The case was later granted certiorari by the supreme

court.

Issue to being considered by the court

The court sought to interpret section 43(a) of the Lanham Act, which addresses the question of

trademark infringement. The court was required to determine whether a product’s design was

distinct and unique, and thereby subject to infringement protection.

Application of the law

According to section 43(a) of the Lanham Act on infringement of trademark for a dress with no

copyright registration, a commodity’s design lacks uniqueness on its own. Therefore,

infringement laws do not apply for such a commodity. Section 45 of the Act states that registered

trademarks must entail a symbol. Word, device or name or such a combination to distinguish and

identify a particular product from other similar products. Where trademark registration meets the

said criteria, the copyright owner can sue for infringement. The trademark must further be use

consistently for five years without contesting by other companies. Section 43 allows a copyright

owner to take legal cause if a symbol, mark, device name or any similar identical combination is

used by another company without prior permission, if they lead to confusing and misguiding a

consumer. Trade dress was a term used to refer to copyright infringement in packaging, but have

over the years been used to refer to the commodity design. A company must prove beyond

reasonable doubt that the said infringement constitutes to misleading the consumer. While a

producer may not be required to demonstrate the uniqueness of their trade dresses, such have

been universally required in a court of law as the lack of uniqueness does not mislead customers.

A trade mark is unique if it intends to identify a commodity with a specific origin, or if its

significant to consumers not only for its utility but for origin.

Conclusion of the court

In the case for Samara vs Walmart, the court determined that distinctiveness of their product

could not be demonstrated, nor had the colors proved a secondary meaning. Furthermore, there

were symbols, names, devises marks or any such combination which showed Samara’s copyright

of the garments. Therefore, the product was not protected under copyright infringement laws.

The case was therefore reversed and remanded.

Summarize an article regarding a recent (last few months) copy right or trademark dispute

Olive v. University of Houston (2021)

This is a case involving a photographer Jim Olive (plaintiff) who claimed that the University of

Houston used his photograph without his consent. Olive claimed that the university using his

photographs would be considered “taking” and not just a single copyright infringement. He

alleged that the university of Houston obtained an image from his website and removed all the

copyright attributing materials and later used it to promote their new business school. He later

confronted the university with a cease and desist letter. However, the University did not pay him

for using the image. Oliver claimed that the act of government institution amounted to taking

which is defined as “a seizure of private property or a substantial deprivation of the right to its

free use or enjoyment that is caused by government action”.

Upon reviewing the acts of the case, the court found that “single act of copyright infringement

was not a taking because it did not take away Olive’s right to use, license, or dispose of the

underlying creative work.” The court likened the one act of copyright infringement to a

“transitory common law trespass for which the state has not waived its immunity.” Additionally,

the court argued that copyright is not a bundle of exclusive rights and despite the university

infringing the copyright law, it did not take away Olive control over the copyright and therefore
cannot be termed as taking. Therefore, the court of appeal ruled that the university of Houston

retains its immunity.

References

Collins D. (2021, June 22). Texas Supreme Court Ends Photography Copyright Lawsuit Against

University of Houston. Law Street. https://lawstreetmedia.com/news/tech/texas-supreme-court-

settles-photography-copyright-lawsuit-against-university-of-houston/