Supreme Court expands FOIA trade secret protections

In Food Marketing Institute v. Argus Leader Media, the Court resolved a circuit court split interpreting when the Government may withhold confidential or trade secret information from Freedom of Information Act (FOIA) requests.  Previously, a company had to demonstrate “substantial competitive harm” for their information to be protected under FOIA Exemption 4.  Now a company need only show the information “customarily and actually treated as private by its owner and provided to the Government under an assurance of privacy.”  While the decision offers greater protections to companies providing information to the Government, it will limit information available through FOIA requests.  Overturning decades of precedent, Justice Gorsuch wrote that the earlier National Parks decision is a “relic from a ‘bygone era of statutory construction.’”

Prohibition on immoral or scandalous trademarks violates First Amendment

The Supreme Court held in Iancu v. Brunetti that the Lanham Act’s prohibition on registration of immoral or scandalous trademarks violates  the First Amendment.  The USPTO had denied registration of “FUCT” in connection with artist and entrepreneur Erik Brunetti’s clothing line.  Following the Court’s recent Matal v. Tam decision invalidating the prohibition on registration of disparaging trademarks, the Court held that the “immoral or scandalous” prohibition is also unconstitutional because it also discriminates on the basis of viewpoint.  In a concurring opinion, Justice Alito notes that the decision “does not prevent Congress from adopting a more carefully focused statute that precludes the registration of marks containing vulgar terms….”

USPS – not a person

In Return Mail, Inc. v. U.S. Postal Service, the Supreme Court held that the U.S. Government is not a “person” that can institute AIA review proceedings.  Return Mail had sued the U.S. Postal Service (USPS) for infringement of U.S. Patent No. 6,826,548.  In response, the USPS petitioned the United States Patent and Trademark Office (USPTO) to review the ‘548 patent, the claims of which were subsequently cancelled by the USPTO, and the cancellation affirmed by the Federal Circuit.  The Supreme Court granted certiorari, reversed the lower courts, and determined that a federal agency is not a “person” eligible of petitioning for AIA review.  In response to the Government’s arguments in favor of eligibility, Justice Sotomayor wrote for the Court: “None Delivers.”

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