By Andrew Cohen
Justices Stephen Breyer and Sonia Sotomayor both wrote dissents citing Katyal in Inacu v. Brunetti, which ruled that the federal government violated the First Amendment by preventing a clothing apparel business from registering scandalous or subversive trademarks.
Breyer’s dissent cited Katyal’s 2010 paper “Trademark Intersectionality,” which argued that trademark law is “indelibly rooted in content-based considerations.” He wrote, “Just think about how you might react if you saw someone wearing a T-shirt or using a product emblazoned with an odious racial epithet.”
Citing the same paper, Sotomayor shared concern for those who might be negatively affected by such marks. She noted that the government now has to register “the most vulgar, profane or obscene words and images imaginable.”
The winner of multiple awards for her scholarship, Katyal joined Berkeley Law in 2015 after 13 years at Fordham University School of Law, where she served as associate dean for research. In 2016, she was selected to the inaugural U.S. Department of Commerce Digital Economy Board of Advisors. Her forthcoming book, Contrabrand, studies the relationship between art, advertising, and trademark and copyright law.
She wrote “Trademark Intersectionality” out of concern for how Native American communities have been affected by the Redskins trademark for the National Football League’s team in Washington, D.C., “and other demeaning stereotypes in advertising.” Of all her articles, she says “it’s one I’m especially proud of because I relied on the notion of intersectionality, long used to describe multifaceted parts of human identity, like race and gender … to explore how trademarks and brands have both political and commercial elements.”
Katyal remains especially thrilled that the person who revealed her Supreme Court citation was none other than Narechania, “a fellow intellectual property scholar and person of color who Berkeley Law hired the same year as me, and who also had been cited the previous week. I woke up to a text from Tejas and thought he was kidding.”
Though the majority opinion went the other way, Katyal is “gratified by the recognition that words and images can harm others. It’s also, to my knowledge, one of the only times the Supreme Court has used the term intersectionality. I hope this is just the first of many times the Court considers the utility of this groundbreaking concept.”
A pragmatic patent challenge
Breyer also cited Narechania’s work in his dissent for Return Mail, Inc. v. U.S. Postal Service. That case tackled whether the Postal Service is a “person” under the patent statutes, which would enable it to ask the U.S. Patent and Trademark Office to review—and potentially cancel—a previously issued patent.
The majority opinion said the Postal Service cannot be deemed a person. Breyer’s dissent disagreed, asserting that vital pragmatic reasons exist to allow federal agencies to challenge patents, including a strong need for efficient resolution of a validity dispute.
Breyer actually cited two works by Narechania, an amicus brief he filed in the case and his 2015 paper “Patent Conflicts.” The amicus brief argued that federal agencies, like private parties, should be allowed to ask the Patent Office to review and rescind a patent if it was awarded erroneously.
In his dissent, Breyer presented Narechania’s explanation of how when the Department of Homeland Security launched a research initiative to equip cellphones with hazardous-material sensors to mitigate the risk of terrorist attacks, it faced an infringement lawsuit that threatened to interfere with the project.
“Patent Conflicts” revealed how when the Federal Communications Commission (FCC) tried to ensure that cell phones could automatically provide their location to 911 operators, the threat of an infringement suit delayed deploying technologies designed to comply with that requirement.
“I was honored and humbled that Justice Breyer cited my work in his opinion,” Narechania says. “And I was very glad to know that my work informed the Court’s consideration of the case—even if, ultimately, a majority did not agree with me.”
The winner of many academic awards, Narechania joined Berkeley Law’s faculty in 2016 and teaches courses on telecommunications regulation, intellectual property, and property. Like Katyal, he is a co-director of the Berkeley Center for Law & Technology. From 2012 to 2013, he served as special counsel at the FCC, overseeing all matters relating to network neutrality rules.