In memoriam of Justice Antonin Scalia: something personal and something professional

Anyone connected to the world of law is no doubt aware of the passing away over the weekend of Justice Antonin Scalia of the United States Supreme Court. Much has been written about Justice Scalia’s zealous form of judicial conservatism, embodied in his notion of Constitutional originalism, wherein he resisted extending the scope of the Constitution beyond the meaning imparted to it when it was enacted at the end of the 18th century. Also noted was his rapier pen, aggressive judicial questioning in Court hearings and his willingness to dissent to judgments that were contrary to his judicial world view. This Kat has no intention to add to this discussion, which Kat readers can find in abundance on a myriad of internet sites. Rather, he asks Kat readers to permit him a brief moment to reflect on Justice Scalia, the law school professor, when this Kat was a student at the University of Chicago Law School in the late 1970’s, and to consider Justice Scalia's attitude towards IP.

As for those University of Chicago days, the shadow of Richard Posner and his law and economics orientation was broadly cast over the law school. The [then] Professor Scalia was a bit of a lone intellectual force, conservative in a sui generis fashion. But for this Kat, it was not his razor-sharp mind or tongue that was most attractive (goodness, the law school was replete with faculty brilliance), but the special attraction of his personality. In a word, Professor Scalia was approachable and affable, and this Kat took advantage on a number of occasions to meet him in his office to schmooze (maybe he would have used a different term, being the son of a Sicilian-born academic specializing in Romance languages) on various topics of mutual interest. In an environment where intellect seemed to trump personality nearly at every turn, Professor Scalia was a welcome exception. Mind you, it was not all love and kisses. This Kat recalls Professor Scalia upbraiding us for less than stellar proofreading of citations—"You have to do your donkey work." He was right. The force of his personality appears to have carried him throughout his career, and his personal friendship with fellow Justice Ruth Bader Ginsburg, his polar opposite as a member of the Court’s liberal wing, is legendary.

And what about Justice Scalia and IP? In those days, IP was a backwater field, not only at the University of Chicago, but probably at most law schools. There was a single elective course offering in IP, which was not given by Professor Scalia. This Kat has read a number of pieces in memoriam, but none emphasizes his position on IP. It would seem that his IP did not play a major role in his thinking as he applied his staunch conservatism to a variety of subjects.

Against that background, this Kat found particularly interesting Justice Scalia's decision in the case of Wal-Mart Stores, Inc. v. Samara Brothers, Inc., which he wrote for a unanimous Court. There, the Court held, reversing the judgment below of the Second Circuit Court of Appeals, that in an action for infringement of unregistered trade dress/product design under section 43(a) of the Lanham Act, proof of secondary meaning is necessary. The decision was characterized by an absence of the verbal fire and brimstone that characterized Justice Scalia's opinions in so many other areas. Rather, he emphasizes the importance of a balancing of interests in rejecting the claim that inherent distinctiveness is appropriate, writing that—
The fact that product design almost invariably serves purposes other than source identification not only renders inherent distinctiveness problematic; it also renders application of an inherent-distinctiveness principle more harmful to other consumer interests. Consumers should not be deprived of the benefits of competition with regard to the utilitarian and esthetic purposes that product design ordinarily serves by a rule of law that facilitates plausible threats of suit against new entrants based upon alleged inherent distinctiveness.
Scalia the staunch ideologue seems to have gone missing.

That said, this Kat was struck by Justice Scalia ’s joining liberal justices Kagan, Ginsburg, Sotomayor and Breyer (as well as centrist Justice Kennedy), in the 6-3 decision given by the Supreme Court in June 2015 in the case of Kimble v. Marvel Entertainment. The issue in that case was whether the Court should overrule its decision given in a case 50 years ago (Brulotte v. Thys Co.), that a patentee cannot continue to receive royalties post-expiry. The majority ruled, based on stare decisis, that the moving party had failed to meet the high bar for disturbing the Court's previous decision on this issue. This Kat has surmised that the four liberal justices had been driven by the liberal hostility to patent overreach. In this Kat's view, such a concern would not have troubled Justice Scalia. Rather, he saw the Court's previous decision as consistent with the understanding of the patent right when it was made part of the US Constitution. To now rule otherwise would do harm to this original meaning. Here, at least, IP and Justice Scalia's originalism might have found common, albeit tacit ground.
In memoriam of Justice Antonin Scalia: something personal and something professional In memoriam of Justice Antonin Scalia: something personal and something professional Reviewed by Neil Wilkof on Tuesday, February 16, 2016 Rating: 5


  1. Interesting. It always seemed to me that the miserable old git was particularly contemptuous of patent law. He clearly didn't understand it, nor did he appear to want to.

  2. I was in a cave for the last week, thanks for the news.

    A minor hobby of mine is, or rather, was, to type "Scalia" into a search engine window combined with the most offensive words and expressions I could think of.

    I often found that someone had been there before me. This about summarises my feelings about him.

    But "Scalia dead" never occurred to me, I just checked my browser history to be sure. So at last, there is something new under the sun.

    As Kimble v. Marvel Entertainment, I looked this one up a while ago, so from memory:

    It seemed to me that this case was somewhat special in that each party to the contract held an asset the other one needed.

    One had the patent, which was limited in duration, and the other the trademark, which is potentially eternal.

    The mistake was to draft the contract as a licensing rights to the patent, whereas what Kimble really wanted was a piece of the "Spiderman" merchandising profits after the expiry. The quid pro quo should have involved both elements.

    The Kimble device and the Marvel franchise are really useless landfill filler material. It would have been sad to create on this basis a precedent which would have made the fortune of armies of corporate lawyers and, say, their big pharma clients.

    That Scalia took IMHO the right decision but on the wrong grounds is hardly worth the fuss.

  3. Perhaps an unfortunate irony that his death may lead to a constitutional crisis in terms of who gets to choose who replaces him and when? And the knock-on effect may influence the presidential election? His greatest contribution to American society may thus arise not from his achievements in life, as eminent as he was.

  4. There will be NO constitutional crisis in this event.

    The president has his powers - as do the Senate.

    This will be a political power play - without doubt, but there is zero driver for a crisis to rise to the level of being a "constitutional" one.


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