Static Control Responds to Supreme Court Decision

On June 3, the Supreme Court agreed to accept and hear the lawsuit between Lexmark and Static Control. Lexmark appealed the August 29, 2012 decision of the U.S. Court of Appeals re-instating three of Static Control’s unfair competition counterclaims against Lexmark.

In response to the Court’s decision, William London, General Counsel of Static Control, said, “Static Control’s counterclaims allege that Lexmark targeted Static Control’s products with false advertising statements, and as a result Static Control incurred harm to its business and goodwill.  This is precisely the type of conduct that is prohibited by the Lanham Act, and past case law affirms Congress’s intention in such circumstances to protect companies like Static Control.”

William London also stated that Static Control regrets the Court’s choice of this case as the vehicle to clarify the differences among the tests applied by the different courts of appeal. But Static Control is confident that it will continue to have standing to pursue its claims and obtain remedies for the harms caused by Lexmark’s practices.

The legal disputes between the companies focused mainly on Lexmark’s claims of patent infringement, copyright infringement, and violations of the Digital Millennium Copyright Act. However, those issues will not be involved in the case before the Supreme Court. The district court judged that Lexmark’s “Prebate” program is not enforceable as a patent license under patent law. The Supreme Court’s action will not affect this determination, which the Sixth Circuit let stand. The Supreme Court will hear questions limited to the legal issue concerning when a company has the legal right to assert a claim for false advertising under the Lanham Act.

According to the Sixth Circuit’s August 29, 2012 opinion, Static Control was entitled to pursue its counterclaims against Lexmark for antitrust violations and false advertising under North Carolina state law. The Sixth Circuit case is Static Control Components, Inc. v. Lexmark International, Inc., 697 F.3d 387 (6th Cir. 2012).