UIC Law Open Access Repository

Simmons, Natè

English

Racial Capitalism: Complexities With Enforcing Corporate Commitments to End Racial Injustice, 55 UIC L. Rev. 519 (2022)

Habein, Sam

The United States Stands Alone: A Divergence in the Treatment of Genus Claims in Pharmaceutical Patents, 22 UIC Rev. Intell. Prop. L. 97 (2022)

Schwinn, Steven D.

Do Federal District Courts Have Jurisdiction over Lawsuits That Seek to Halt Administrative Enforcement Actions by the Federal Trade Commission or the Securities and Exchange Commission Based on Claims That Those Agencies\u27 Administrative Law Judges Are Impermissibly Insulated from Removal in Violation of the Constitution?

Moldawer, Mira

Myths and Clichés: The Doctrinal Myopia of Publicity Right, 22 UIC Rev. Intell. Prop. L. 50 (2022)

Muth, Karl

Apartheid-Era Chicago, 55 UIC L. Rev. 219 (2022)

Duterte, Yelena

Duty to Impair: Failure to Adopt the Federal Rules of Evidence Allows the VA to Rely on Incompetent Examiners and Inadequate Medical Examinations, 90 UMKC L. Rev. 511 (2022)

Can the State of Washington Impose Particular and Unique Workers\u27 Compensation Standards for Certain Workers Engaged in Cleanup of Radioactive Waste at a Federal Site?

Ford, William

UIC  
REVIEW OF INTELLECTUAL PROPERTY LAW 
 
SYMPOSIUM ON THE RETIREMENT OF JUSTICE STEPHEN BREYER 
 
FOREWORD 
 
WILLIAM K. FORD  
  
With the forthcoming retirement of Justice Stephen Breyer in June or July 
2022,1 the editors of the UIC Review of Intellectual Property Law have asked four 
contributors to look back on Breyer’s contributions to intellectual property law while 
on the Supreme Court. This sort of symposium could probably be done for many 
retiring justices, but it’s particularly appropriate for Breyer. At the time of his 
appointment in 1994, Breyer was seen as having some expertise in copyright2—and 
being skeptical about its scope, as revealed in his 1970 Harvard Law Review article 
on the “Uneasy Case for Copyright.”3 To be sure, Breyer’s interest in copyright was 
overshadowed by his interest and experience with antitrust and administrative law,4 
but he described the 1970 article as “awfully important” to him and the subject of 
great effort.5 
 
1 Breyer said his retirement would take effect when the Court’s current term ends, “typically 
late June or early July,” provided the appointment of his successor has occurred by then. See Letter 
from Stephen Breyer to President Joseph Biden (Jan. 27, 2022), 
https://www.supremecourt.gov/publicinfo/press/Letter_to_President_January-27-2022.pdf. The 
Senate met Breyer’s proviso by confirming President Biden’s nomination of by a vote of 53 to 47 on 
April 7, 2022. See Mary Clare Jalonick & Mark Sherman, Historic Step, CHI. TRIB., at 1 (April 8, 
2022). 
2 See Christopher Wilson, Breyer Survivor Free of Partisan Enemies, L.A. TIMES (May 15, 1994) 
(“Friends and associates say Breyer is no ideologue. He has concentrated on cases involving 
copyright, anti-trust and government regulation.”). 
3 Stephen Breyer, The Uneasy Case for Copyright: A Study of Copyright in Books, Photocopies, 
and Computer Programs, 84 HARV. L. REV. 281 (1970). 
4 See, e.g., Nomination of Stephen G. Breyer to be Associate Justice of the Supreme Court of the 
United States: Hearing before the S. Comm. on the Judiciary, 103rd Cong. 8 (1994) (opening 
statement of Sen. Orrin Hatch referring to Breyer’s “expertise in administrative law and antitrust”); 
11 (opening statement of Sen. Edward Kennedy referring to Breyer achieving an “outstanding 
reputation for his scholarship in the areas of antitrust law and administrative law”). 
5 Id. at 124 (“[T]hat article was awfully important to me, because what turned on that article for 
me was a job. The question was whether I would get tenure, so I put quite a lot of effort into that 
article.”). 
[21:35:2022] Symposium of the Retirement of Justice Stephen Breyer 36 
Breyer’s article on copyright—and even a published opinion on trademark 
law—could have been the subject of some meaningful discussion in 1994, but during 
his confirmation hearings, the senators on the Judiciary Committee did not show 
much interest in Breyer’s views on copyright specifically or intellectual property law 
generally. Topics like constitutional law and antitrust understandably took center 
stage. Senator Orrin Hatch did ask Breyer one question about the article, however. 
He asked Breyer if his views had changed since its publication, but despite noting the 
article had been controversial, Hatch didn’t seem all that interested in the answer. 
He eventually cut Breyer off without any follow-up questions and then moved on to a 
different topic.6 During his tenure on the First Circuit, then Judge Breyer also said 
some interesting things about trademark liability in a case about unofficial television 
coverage of the Boston Marathon.7 Breyer pushed back against an earlier First 
Circuit decision that arguably expanded Lanham Act liability.8 According to a fair 
reading of the earlier case, which also involved the Boston Marathon, the court 
treated a showing of the defendants’ free riding on the plaintiff’s reputation as 
sufficient to satisfy the likelihood of confusion requirement for infringement.9 
Breyer’s opinion “interpreted” the earlier case narrowly, emphasizing the need for a 
plaintiff to show a likelihood of confusion.10 Breyer’s thoughts on trademark law did 
not generate even one question from the senators. Nor was the press much interested 
in either intellectual property topic.11 
Even if Justice Breyer’s potential contributions to intellectual property law 
did not grab the senators’ or the press’ interest in 1994, we can devote some attention 
to Breyer’s actual contributions now. So how did things turn out? I’ll leave it to the 
four essays that follow to offer answers to this question, but I will note that many 
criticisms lie ahead. Shubha Ghosh refers to Breyer’s “confounding treatment of 
patentable and copyright subject matter.”12 David Taylor credits Breyer with 
“arguably one of the worst Supreme Court decisions in the field of patent law in 
recent memory[.]”13 (He’s talking about Mayo.14) Kevin Noonan’s title gives away his 
take, as it refers to Justice Breyer as “No Friend to IP Law.”15 Noonan focuses mainly 
on patent law, but he also comments on Breyer’s copyright opinions.  
 
6 Id. at 124–25.  
7 See WCVB-TV v. Bos. Ath. Ass’n, 926 F.2d 42 (1st Cir. 1991). 
8 Id. at 45. 
9 See Bos. Ath. Ass’n v. Sullivan, 867 F.2d 22, 33 (1st Cir. 1989). 
10 WCVB-TV, 926 F.2d at 45 (“The trademark statute does not give the appellants any ‘property 
right’ in their mark except ‘the right to prevent confusion.’”) (emphasis in original). 
11 The level of interest in these topics at the time of Breyer’s confirmation was not zero. See 
Richard Carelli, Breyer’s Approach Low-Key on Controversial Topics, THE ADVOCATE (Baton Rouge, 
La., May 14, 1994) (referring to the WCVB-TV case). But the level of interest appears to have been 
negligible. Feel free to do whatever searches you wish in the various electronic news databases to 
measure journalistic (dis)interest in these topics.  
12 Shubha Ghosh, A La Recherche De Breyer Perdu, 21 UIC REV. INTELL. PROP. L. 38, 43 (2022). 
13 David O. Taylor, Justice Breyer and Patent Eligibility, 21 UIC REV. INTELL. PROP. L. 71, 71 
(2022). 
14 Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012). 
15 Kevin E. Noonan, Justice Breyer: No Friend to IP Law, 21 UIC REV. INTELL. PROP. L. 58 
(2022) 
[21:35:2022] Symposium of the Retirement of Justice Stephen Breyer 37 
But things are not all bad in this Breyer IP retrospective. Despite various 
criticisms, Ghosh praises Breyer’s “lemony sponge cake” opinions16 and his 
multidisciplinary approach to judging.17 In Qualitex, the decision involving the use of 
color as a trademark,18 Ghosh finds “consequentialism at its finest,”19 and he also 
sees some commendable nuance in Breyer’s thinking about copyright.20 And 
Willajeanne McLean, who focuses exclusively on Qualitex, is also quite positive, 
finding the decision sound and the contemporary predictions of disaster inaccurate.21  
Lemony sponge cake ahead, but with some sour notes. 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
Cite as William K. Ford, Symposium of the Retirement of Justice Stephen 
Breyer, 21 UIC REV. INTELL. PROP. L. 35 (2022). 
 
16 Ghosh, supra note 12, at 38. 
17 Id. at 48. 
18 Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995). 
19 Ghosh, supra note 12, at 41. 
20 Id. at 42. 
21 Willajeanne F. McLean, Coloring Inside the Lines: A Look at Qualitex v. Jacobson, 21 UIC 
REV. INTELL. PROP. L. 49 (2022). 


Symposium on the Retirement of Justice Stephen Breyer, 21 UIC Rev. Intell. Prop. L. 35 (2022)

Smith, Stephen

“The Rule” and the Constitution: Witness Exclusion and the Right to a Public Trial, 56 UIC L. Rev. 1 (2022)

Golden, Meghan

Piercing the Ministerial Exception: An Endeavor to Hold Religious Employers Accountable for Harassing Behavior, 56 UIC L. Rev. 73 (2022)

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