Justice Scalia On Trademark And Copyright: Dastar, Penguin-Shaped Cocktail Shakers And 'Guilt By Resemblance'

When we decided to mark the passing of Justice Antonin Scalia by recounting a few of his copyright and trademark opinions, we were somewhat surprised to discover that there really hadn't been that many. In fact, we located only seven matters in which Justice Scalia contributed a written opinion on a substantive issue of trademark or copyright law, and only four were majority opinions. Here they are, in chronological order:

K Mart Corp. v. Cartier, 486 U.S. 281 (1988)

In 1922, the United States began regulating the importation of gray-market goods, that is, foreign-manufactured goods bearing a valid U.S. trademark that are imported into the U.S. without consent of the U.S. trademark holder. Section 526 of the Tariff Act prohibited gray-market imports, but the implementing regulations provided for various "common control" exceptions, which allowed the importation of goods manufactured abroad by affiliates of the trademark holder. In 1984, an association of U.S. trademark holders challenged these regulatory exceptions as invalid and inconsistent with the broad prohibition set forth in the statute. In a deeply wonky opinion complex enough to merit its own Lonely Planet guide, Justice Kennedy cobbled together a majority and held that most of the exceptions were a permissible interpretation of the statute. Justice Scalia, then in his second term on the Court, disagreed and dissented, arguing that the regulations contradicted the statute. "The authority to clarify an ambiguity in a statute," Justice Scalia wrote, "is not the authority to alter [] its unambiguous applications, and [Section 526] unambiguously encompasses most of the situations that the regulation purports to exclude."

Feltner v. Columbia Pictures, 523 U.S. 340 (1998)

Several broadcast television stations continued airing masterpieces such as Who's the Boss, Silver Spoons and T.J. Hooker even after they had stopped paying royalties, leading to a fairly slam dunk copyright claim by Columbia Pictures. Columbia prevailed on summary judgment and exercised its option under Section 504 of the Copyright Act to collect statutory damages (in lieu of actual damages), which were supposed to be measured by what "the court considers just." The stations demanded a jury trial on what the amount of statutory damages should be, but the District Court and Ninth Circuit refused. Justice Thomas, writing for the Court, reversed. Although the text of Section 504 afforded no jury right, the Court held that...