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By: Intellectual Property Group

Cindy Lee Garcia thought she was playing a bit part in “Desert Warrior,” an adventure film being made by an amateur film maker. The film was never completed. Instead, Ms. Garcia’s performance was re-purposed, and her physical on screen appearance was used in a film titled “Innocence of Muslims,” with her voice redubbed, changing her speaking part so that she appeared to being asking, “Is your Mohammed a child molester?” The film was uploaded to YouTube. An outraged Muslim cleric saw the video and thereafter issued a fatwa directing his followers to kill everyone involved with the film. Ms. Garcia was nonplussed.

Garcia filed suit seeking, among other things, a restraining order directing Google to remove the film from YouTube. Primarily, Garcia claimed that the video infringed a copyright which gave her the exclusive right to control the use of her performance. Granting the injunction, the district court ruled that Garcia was likely to succeed on her copyright claim because it believed she held a valid copyright interest in her performance, and that the film maker had exceeded the terms of a license granted by plaintiff when she was misled into acting in “Innocent Muslim,” under the false pretense that she was playing in “Desert Warrior.” The court also determined that Garcia faced irreparable harm because Garcia had been receiving death threats. Google appealed to the Ninth Circuit. Initially the Ninth Circuit agreed with Garcia, however on May 18^th, sitting en banc, the Ninth Circuit reversed.

Writing for the majority, Circuit Judge M. Margaret McKeown stated that, “The appeal teaches a simple lesson — a weak copyright claim cannot justify censorship in the guise of authorship…Nonetheless, the claim against Google is grounded in copyright law, not privacy, emotional distress, or tort law, and Garcia seeks to impose speech restrictions under copyright laws meant to foster rather than repress free expression.” Judge Kozinski drafted a dissenting opinion stating, “Actors usually sign away their rights when contracting to do a movie, but Garcia didn’t and she wasn’t Youssef’s employee. I’d therefore find that Garcia acquired a copyright in her performance the moment it was fixed.” Kozinski then concluded “that Garcia’s copyright claim is likely to succeed. I’d also find that Garcia has made an ample showing of irreparable harm. It’s her life that’s at stake.”

Google, and other similarly situated companies, believed that Garcia’s claims would have established “unprecedented copyright protections for actors with even a bit role in every movie or video produced, at the same time allowing the courts to force companies such as YouTube to take down material protected by the First Amendment while vastly expanding their responsibility for policing web content.” Based on its ruling on Monday, the Ninth Circuit Court of Appeal agrees.

The word that comes after the period in a domain name is referred to as a top level domain (“TLD”) and there seems to be a TLD for everything. There are TLDs that reflect geographic regions such as “.ASIA” for the Asia-Pacific region and .IRISH for the global Irish community. There are numerous other TLDs that reflect a wide variety of interests, including professions (“.ACTOR” for actors and “.ACCOUNTANTS” for accountants). Just when you think you have seen everything, along comes a proposed new TLD that causes a huge uproar among trademark owners.

Vox Populi Registry Inc. was granted the right to operate the registry for a “.SUCKS” TLD. The stated purpose of the .SUCKS TLD is to facilitate First Amendment criticism of companies, organizations or products.   Trademark owners say that Vox is a shakedown artist and the sole purpose of the .SUCKS registry is to cause trademark owners to purchase expensive domains in order to defend their brands. In support of this allegation, trademark owners point to the fact that Vox will charge trademark owners approximately $2500 and up to register a .SUCKS domain name during the Sunrise Period. (A Sunrise Period is a period of time during the rollout of a new TLD in which trademark owners have the right to register domain names which reflect their brands in the new TLD.) Trademark owners argue that when compared to the registration fee of $249 charged by Vox during the general availability period and when compared to the few hundred dollars charged by other TLD registrars during their Sunrise Period, it is obvious that this scheme is nothing more than “predatory, exploitative and coercive.”

In most circumstances, a third party may not use the trademark of another as part of a domain name.  This could give rise to a claim of cyber squatting. Under the policies that govern the registration of most domain names, whether an individual is engaged in cyber squatting is determined by analyzing the following factors:

(1) whether the disputed domain name is identical or confusingly similar to the complainant’s trademark;

(2) whether the domain-name holder lacks rights or a legitimate interest in the disputed domain name; and

(3) whether the disputed domain name was registered and is being used in bad faith.

In order to prevail on a cyber-squatting claim, the complainant must establish all three factors.

Often, the respondent will contend that it is making a legitimate noncommercial fair use of the disputed domain name through the operation of a gripe/complaint web site. Domain name dispute proceedings have held that First Amendment expressions of protected speech must be balanced against trademark rights.  The holder of a disputed domain name has extensive rights of free speech to provide a platform to criticize and the content of a web site is a legitimate use of those rights. However, the domain name registrant cannot chose a domain name that is confusingly similar to the trademark of the subject matter of its complaints.  In cases where a domain holder has registered a domain name that incorporates a trademark and appends the word “sucks” prior to the .COM (i.e., “xyzsucks.com”) and the domain name points to a complaint or protest site, domain name dispute decisions have found legitimate interests based on the right of free speech and the fair use doctrine.

Vox claims that the purpose of the .SUCKS TLD is to give users an opportunity to express protected complaint speech online and register a domain name that indicates the nature of such speech. Trademark owners complain that they are compelled to register their trademarks in the .SUCKS TLD to defend against competitors and unfair criticism. Vox counters that if the competitive use or criticism is unfair, trademark owners have a full complement of remedies that they can seek, including domain name dispute proceedings.

Each side presents compelling arguments. Are trademark owners concerned about preventing illegitimate and legitimate complaint sites and are just upset because of the steep registration cost? Or, is Vox exploiting the trademark owners’ sensitivity and desire to protect their brands? ICANN, the organization responsible for the coordination of domain names – which entered into a contract with Vox to manage the .SUCKS registry – has asked the FTC to look into the allegations made by trademark owners.

Periscope (owned by Twitter) and Meerkat are two new “live streaming” apps which allow users to live stream videos from their phones.  These applications could potentially change the way live sporting or music events are broadcast or change the way news footage is gathered.  They can also be used by a viewer to re-broadcast copyrighted content.  HBO was recently on the receiving end of that lesson when it found out that dozens of viewers were live streaming the season premiere of Game of Thrones.

HBO said that Periscope was responsive to its take down notices, but also added “We feel developers should have tools which proactively prevent mass copyright infringement from occurring on their apps and not be solely reliant upon notification.”   This sounds very similar to the argument Viacom initially made in its protracted copyright infringement litigation against YouTube.  However, in 2010 U.S. District Court Judge Louis Stanton rejected this argument when he found that the Digital Millennium Copyright Act (the “DMCA”) insulated YouTube/Google from Viacom’s infringement claims and granted YouTube’s motion for summary judgment.

Under the DMCA, a “Service Provider” may be entitled to immunity from claims of copyright infringement in four areas: 1) transitory communications; 2) system caching; 3) storage of information on systems or networks at direction of users; and 4) information location tools. While each area would appear to have some application to Periscope and Meerkat’s business, the information storage category is of primary focus.

Under the information storage safe harbor, the Service Provider: (i) must not have actual knowledge that the material is infringing; (ii) must not be aware of facts or circumstances from which infringing activity is apparent; and (iii) upon becoming aware of the existence of such infringement material, acts promptly to remove or disable access to the infringing material. In addition, in order to be entitled to copyright infringement immunity under this provision, the Service Provider must not receive a financial benefit directly attributable to the infringing material where it has the right and ability to control it. Additionally, the Service Provider must, upon notification of a claim of infringement, quickly remove or disable access to the infringing material.

Under the DMCA, Periscope and Meerkat cannot refuse or fail to take action when infringement is brought to their attention, but they have no legal obligation to take affirmative steps to screen content or build new technology that prevents the use of their application to infringe the copyright of third parties.

Clearly HBO has the right to pursue the Periscope users that live stream Game of Thrones (or any other HBO program).  But what about streaming live events – such as the “Fight of the Century” between Floyd Mayweather and Manny Pacquiao.   HBO (and Showtime) paid handsomely for the live broadcast rights to the fight and prior to the fight, were taking aggressive steps to prevent free live streaming.  HBO, Showtime and fight promoter Top Rank, Inc. filed suit against two livestream websites, boxinghd.net and sportship.org, claiming that they would livestream the TV broadcast of the fight for free.  A Federal District court granted HBO’s injunction.

But what about Periscope users that stream directly from the fight?  Apparently numerous Periscope and Meerkat users streamed live from the fight.  HBO, Showtime and Top Rank were none too pleased; Top Rank promised legal action.  However, if Top Rank follows through with its threat and sues either Periscope or Meerkat, it may face an early TKO.  As long as Periscope and Meerkat respond promptly to take down requests, the DMCA will protect them from copyright infringement claims. If Top Rank sued the Periscope or Meerkat users that filmed and streamed the fight from their seats at the arena, it would have to be on grounds other than copyright infringement.

For the full article, click here.

With so many new microbreweries popping up in Sacramento, the Bay Area, and the Greater San Diego area, I felt compelled to write the present piece for the benefit of the aspiring, as well as the established, microbrew entrepreneur. These individuals undoubtedly pour (excuse the pun) their hearts, souls, and hard-earned money into the development of their breweries and their attempts to formulate the perfect brew. However, from my own research and analysis it seems clear that these entrepreneurs are regularly overlooking one thing in particular—their intellectual property rights.

The thought first occurred to me when I was sitting in San Diego having an IPA with a couple of my friends. As I stared at the bottle on the table it occurred to me that despite my everyday involvement with intellectual property, I had never looked into whether some of these companies were properly safeguarding their intellectual property rights. I immediately went to the United States Patent and Trademark Office (“USPTO”) website on my cellphone and began searching for some of my favorite breweries and their assorted brews on the database. I quickly learned that some of the companies were prudently protecting their intellectual property in their company’s name, certain brews, and certain designs/graphics. However, I also learned that some of my favorite breweries were not doing anything to protect their intellectual property. I discussed the matter with my friends and express how I could not understand why these companies would not try to protect their intellectual property. Then, it occurred to me that some of them probably never thought about it, or were simply unaware what types of protection exist under the intellectual property laws. After all, prior to my involvement in the intellectual property world, I never thought about trademarks, trade dress, copyrights, or patents. Accordingly, I decide to draft this brief, non-exhaustive discussion of trademark law’s application to the microbrewery industry and suggest that breweries consider protecting their rights as they grow as businesses.

Federal Law, or the Lanham Act, defines “trademark” as any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods. Thus, any words, symbols, or designs that consumers may use to identify the source of the product are trademarks. We see these everyday when we step outside of our homes. Common examples include McDonalds, Starbucks, or a more suitable example in the context of this article, West Coast IPA. The latter is a federally registered trademark by the Green Flash Brewing Co. It is a clear example of a trademark in that it is a series of words and/or a name that is used in commerce to identify and distinguish the goods of the manufacturer/seller. Unfortunately, I cannot take the credit for Green Flash Brewing Co.’s prudent protection of its intellectual property rights, but the up and coming microbreweries can certainly take a lesson from Green Flash Brewing Co.’s conduct and follow its lead.

In order to gain this type of protection under the federal trademark law, there cannot be any other mark that is “confusingly similar” to your mark such that it will create consumer confusion as to the product’s origin unless your use in commerce preceded that mark. On the other hand, if there are no marks that are confusingly similar to your own, priority of use does not come into play and the applicant seeking trademark registration can file what is known as an intent to use application. The latter essentially says that the registrant intends to begin using this product in commerce in the near future and seeks to register the mark in advance. This is an oversimplified explanation of the rules, but this article is intended to provide a general overview—not a detailed legal analysis.

Assuming the mark meets the requirements of the USPTO, and there are no successful challenges by other trademark owners, it will eventually be registered and the world will be deemed on constructive notice of its existence. The effect of this is that the registrant can then pursue anyone in the United States who uses a mark that is “confusingly similar” to the registrant’s duly registered mark. In the absence of such a registration, the party would be left with much less extensive trademark rights and remedies. Accordingly, it is prudent that up and coming microbreweries and established breweries that have yet to take action in protecting their intellectual property get in contact with an intellectual property attorney as soon as possible to develop a plan for protecting their intellectual property rights.

Although it is implicit in the discussion above regarding how a mark designates the product’s origin, it is important to completely understand why trademark protection is so important. Any entrepreneur I have ever met would tell you that they want to benefit in some form or another from the blood, sweat, and tears that they put into their work. One way that can be achieved is through building up goodwill in one’s mark and having consumers come to associate that mark with high quality. Ideally, a brewery would develop a brew that consumers associate with high quality microbrew. Specifically, they would come to associate the name of that brew with quality—for the sake of the example, let’s call it Weintraub California American Pale Ale. After developing such goodwill in the mark, it would be unfair if someone were allowed to benefit from the goodwill of the mark Weintraub California American Pale Ale by releasing Weintraub California India Pale Ale, thereby falsely indicating that the same brewery produced both products. Obviously, it would be fine if the same brewery created both products, but you can see how this creates a problem if the products are being produced by separate entities. That is exactly the type of problem that trademark protection seeks to prevent and that is exactly why it is imperative that new and established microbreweries immediately seek out intellectual property counseling if they have not already done so.

I’ve yet to encounter an area of the law where an inch of preventative measures would not have gone a mile later down the road. With that said, please drink and protect your intellectual property rights responsibly.

Enablement is the requirement that a patent teach a person skilled in the art (the field of the invention) how to make and use the invention without undue experimentation. In other words, a patent must describe the invention clearly enough so that a skilled person in the field can replicate the invention without having to perform experiments to determine how to make and use the invention. The enablement requirement is set forth in 35 U.S.C. §112, first paragraph. If a patent is not enabled, it can be invalidated.

In the fields of biology and chemistry, referred to in the patent world as the “unpredictable” arts, enablement is particularly important. Thus, biotechnology patents must clearly satisfy the enablement requirement or they are at risk of being challenged and held invalid. That is what happened in Promega Corp. v. Life Technologies Corp. (Fed. Cir. 2014) 773 F.3d 1338.
Promega sued Life Technologies for infringement of five patents. The patents covered methods and test kits for analyzing DNA samples and were used in forensic science. Promega alleged that Life Technologies manufactured and sold genetic test kits that infringed Promega’s patents.

Life Technologies moved for summary judgement of invalidity on four of the five Promega patents, arguing that the four patents were not enabled. The district court denied the motion. The court granted Promega’s motion for summary judgment, holding that the patents were infringed. The jury then awarded $52 million in damages to Promega, but the district court granted Life Technologies’ motion for judgment as a matter of law. The court then vacated its previous ruling of infringement.

Both parties appealed. In ruling on Life Technologies’ motion for summary judgment for lack of enablement, the Federal Circuit Court of Appeals considered the prosecution file histories for Promega’s patents. During prosecution, in order to overcome the patent examiner’s prior art rejections, Promega had stated that the prior art was not sufficient to disclose or predict the invention. The court also noted that Promega had taken inconsistent positions in the litigation. In opposing Life Technologies’ motion for invalidity, Promega had admitted that the field was unpredictable. In arguing for infringement, however, the court said “Promega sings a different tune” — Promega had asserted that its claims were broad enough to cover methods it had referred to as unpredictable.

The Federal Circuit explained that Promega cannot have it both ways. If Promega interpreted the language broadly enough to cover Life Technologies’ products, then the claims, as interpreted broadly, had to be enabled for the full scope of that coverage.

The court found that Promega’s patents covered “a virtually unlimited number” of DNA combinations. 773 F.3d at 1348. According to the court, the patents would not have enabled a person skilled in the field to develop Life Technologies’ products without undue experimentation. The court stated: “the claims at issue here similarly cover potentially thousands of undisclosed embodiments in an unpredictable field.” Id. at 1349. A person skilled in the field would have had to perform “laborious testing” (i.e., undue experimentation) to create Life Technologies’ products. Thus, the court held that the patents were invalid for failure to satisfy the enablement requirement, concluding that “Promega’s ‘difficultly in enabling the asserted claims is a problem of its own making.’” Id.

By: Intellectual Property Group

In 2008, former Mayor of Washington, D.C., and then council member Marion Barry became ill with a kidney disease. To survive the illness, Mr. Barry required a kidney transplant, and one of his friends, Ms. Kim Dickens, came to his aid and donated one of her kidneys. Although the transplant helped Mr. Barry survive for several more years, he passed away in November 2014. Ironically, Mr. Barry’s widow is now suing Ms. Dickens.

In a lawsuit filed by Cora Masters Barry against Kim Dickens, Mrs. Barry alleges that Ms. Dickens has unlawfully used her late husband’s celebrity identity in order to promote the “Barry Dickens Kidney Foundation,” a charity formed by Ms. Dickens. According to the website of the Barry Dickens Kidney Foundation, Marion Barry played a role in the formation of that group, and the website even features photographs of Mr. Barry along with a detailed story of how Ms. Dickens came to donate one of her kidneys to Mr. Barry.

Mrs. Barry’s claims against the Foundation are not without legal precedent. In 1993, Wheel of Fortune hostess Vanna White sued Samsung Electronics of America in connection with a television ad which depicted a robotic version of Ms. White to promote sales of Samsung’s video cassette recorder. Ruling in favor of Ms. White, the Court of Appeal determined that television and other media create “marketable celebrity identity value,” and a celebrity has an exclusive right to exploit this value by prohibiting unauthorized commercial exploitation of their identity.

The case brought on behalf of Mr. Barry’s estate may represent a new application of the holding in White v. Samsung Electronics. Although the Foundation obviously is using Mr. Barry’s “celebrity” image, there are several distinct differences between Vanna White and Mr. Barry as well as the circumstances in which each person’s image is used.  First, Vanna White is a somewhat typical celebrity who gained fame in connection with a popular television show, whereas Mr. Barry was a public figure, a politician who gained fame for his illustrious acts while in office and his opinions on matters of public concern. Additionally, as detailed in the appellate court’s holding, Samsung’s use of Ms. White’s celebrity identity was purely for commercial gain, while the Foundation’s use of Mr. Barry’s celebrity image is to advance a nonprofit organization’s goal to promote one of the more generous and merciful gifts one person could give another. As a result, the court first must determine if Mr. Barry’s name and image enjoy any “marketable celebrity identity value.” Even if an identifiable “marketable celebrity identity” exists in connection with Mr. Barry, the court also must consider whether or not such celebrity identity can be protected where it arises almost entirely from acts performed while serving in office. Although Ms. Dickens’ act of donating one of her kidneys to Mr. Barry is a gracious and laudable action, absent an express agreement allowing her to do so, it seems unlikely that Ms. Dickens’ kidney purchased the right to use Mr. Barry’s name and likeness.

Are you telling new hires and those currently employed all that you are required to tell them?  Below is a link to the Department of Labor Standards Enforcement Notice to Employee form which employers may use to fulfill their obligations under Wage Theft Protection Act that passed several years ago.  Click here to view the form.

That section requires that the employer notify the employees in writing of any changes to the information set forth in the written notice within seven calendar days after the time of the change unless one of the following applies:  (a) all changes are reflected in a timely wage statement furnished in accordance with Labor Code section 226; or (b) notice of all changes is provided in another writing required by law within seven days of the changes.

North Jersey Media Group Inc. is the copyright owner of the iconic photograph of three firefighters raising an American flag at the ruins of the World Trade Center on September 11, 2001. On September 11, 2013, a Fox News producer posted a photograph that juxtaposed the 9/11 photograph with a World War II photograph of four U.S. Marines raising an American flag on Iwo Jima on the Facebook page for the Fox News’ television program Justice with Judge Jeanine. North Jersey Media Group sued Fox, claiming that the posting of the combined image infringed its copyright. Fox news argued that the use was protected “fair use” and moved for summary judgment. The court denied Fox’s motion and Fox is now appealing to the 2nd Circuit.

Fox’s appeal centers around the lower court’s analysis of the first fair use factor: the purpose and character of the use. The purpose of this factor is to test whether the allegedly infringing work is “transformative.” A work is transformative when it adds something new to the work allegedly infringed, with a further purpose or different character, altering the original work with new expression, meaning, or message. A work is transformative if it does something more than repackage or republish the original copyrighted work. A transformative work is one that serves a new and different function from the original work and is not a substitute for it. As the Supreme Court noted in Campbell v. Acuff-Rose Music, Inc., “the more transformative the new work, the less will be the significance of other factors, … that may weigh against a finding of fair use.”

Although acknowledging that Fox News did alter the image and message of the original work, the lower court noted that it did so “only minimally”. The lower court stated that it could not conclude as a matter of law that the physical alterations made to the original photograph transformed the new work sufficiently to merit protection as fair use.

Fox believes the lower court’s focus on physical alteration to the original image was incorrect and that the court should have considered the other aspects of Fox’s use. Namely, Fox contends that in analyzing the transformative nature of its use, the lower court should have considered the use of the photo as having been used “in an inherently transformative context: on social media.” Fox argues that “[e]xpression on social media, and on Facebook in particular, is inherently intertwined with “comment” and “criticism,” purposes that the Copyright Act sets forth as presumptively fair” since “[e]very post is an invitation for others to comment and criticize…”

Fox argues that the lower court failed to recognize the applicability Bill Graham Archives v. Dorling Kindersley Ltd. In that case the 2nd Circuit held that a publisher’s use of an old concert poster in a “coffee table” book documenting the history of the Grateful Dead was fair use. In finding the use to be “transformative,” the court focused on the context of the publishers use – use for a biographical purpose – as opposed to the concert promoter’s use, Fox contends that the lower court relied on case law such as Cariou v. Prince and Blanch v. Koons which based transformativeness on physical alterations of the original work. The apparent conflict between the Bill Graham and the Cariou modes of analysis, Fox argues, make appellate review appropriate.

Fox argues that a context-sensitive test for transformativeness must consider that “Facebook and other social media sites are by design used for purposes of “comment” and “criticism,” and such a test will inevitably favor uses on social media.” It seems that Fox is arguing that publication of a work on social media is transformative in and of itself. Does this argument go too far; this author thinks that it does. However, there is merit to Fox’s argument that the lower court focused solely on the physical alterations to the image and failed to consider whether the context of Fox’s use was transformative.

The United State Supreme Court issued its much anticipated decision in the case of Young v. UPS on March 24, 2015.  As of now, Young’s pregnancy discrimination claim remains alive and well.

Below is a summary of the court’s ruling:

Factual and Procedural Background.

Young was a part-time driver for UPS. When she became pregnant, her doctor advised her that she should not lift more than 20 pounds. UPS, however, re­quired drivers like Young to be able to lift up to 70 pounds. UPS told Young that she could not work while under a lifting restriction. Young subsequently filed a lawsuit under the federal Pregnancy Discrimination Act (the “Act”), claiming that UPS act­ed unlawfully in refusing to accommodate her pregnancy-related lift­ing restriction. She brought only a disparate-treatment (intentional) claim of dis­crimination, which a plaintiff can prove either by direct evidence that a workplace policy, practice, or decision relies expressly on a protect­ed characteristic, or by using the burden-shifting framework set forth in the case of McDonnell Douglas Corp. v. Green. Under the McDonnell Douglas framework, the plaintiff has “the initial burden” of “establishing a prima facie case” of discrimination.  If she carries her burden, the employer must have an opportunity “to articulate some legitimate, non-discriminatory reason[s] for” the difference in treatment.  If the employer articulates such reasons, the burden shifts back to the plaintiff who has “an opportunity to prove by a preponderance of the evidence that the reasons . . . were a pretext for discrimination.” (cites omitted)

UPS filed a summary judgment motion in the District Court. In reply, Young presented several favorable facts that she believed she could prove. In particular, she pointed to UPS policies that accommodated work­ers who had lifting restrictions similar to hers because they were either injured on the job or had disabilities covered by the Amer­icans with Disabilities Act   (ADA).  UPS policies also accommodated employees who couldn’t drive at all because they had lost Department of Transportation (DOT) certifications. Young argued that these policies showed that UPS discriminated against its pregnant employees because it had a light-duty-for-injury policy for numerous “other persons,” but not for pregnant workers. UPS responded that, since Young did not fall within the on-the-job injury, ADA, or DOT categories, it had not discriminated against Young on the basis of pregnancy, but had treated her just as it treated all “other relevant persons.”

The District Court granted UPS summary judgment, concluding, inter alia, that Young could not make out a prima facie case of dis­crimination under McDonnell Douglas. The court found that those with whom Young had compared herself—those falling within the on-the-job, DOT, or ADA categories—were too different to qualify as “similarly situated comparator[s].” The Fourth Circuit affirmed the District Court’s ruling and upheld summary judgment for UPS.

Supreme Court’s Review and Decision.

Young claimed that under the Act, as long as “an employer accommodates only a subset of workers with disabling conditions,” “pregnant work­ers who are similar in the ability to work [must] receive the same treatment even if still other non-pregnant workers do not receive accommodations.” The Fourth Circuit disagreed and said that it doubts that Congress intended to grant pregnant workers an unconditional “most-favored-nation” status, such that employers who provide one or two workers with an accommodation must provide similar accommodations to all pregnant workers, irre­spective of any other criteria. According to the Fourth Circuit, the second clause of the Act, when referring to non-pregnant persons with similar disabilities, uses the open-ended term “other persons.” It does not say that the em­ployer must treat pregnant employees the “same” as “any other per­sons” who are similar in their ability or inability to work, nor does it specify the particular “other persons” Congress had in mind as ap­propriate comparators for pregnant workers. Moreover, the Fourth Circuit said that disparate-treatment law normally allows an employer to implement policies that are not intended to harm members of a protected class, even if their implementation sometimes harms those members, as long as the employer has a legitimate, nondiscriminatory, non pretextual rea­son for doing so and there is no reason to think Congress intended its language in the Act to deviate from that approach.

UPS claimed that the Act’s second clause simply defines sex discrimination to include pregnancy discrimination.  But according to the U.S. Supreme Court that cannot be right, as the first clause of the Act accomplishes that objective. Reading the Act’s second clause as UPS proposed would render the first clause superfluous. According to the high Court, an individual pregnant worker who seeks to show disparate treatment may make out a prima facie case under the McDonnell Douglas framework by showing that she belongs to the protected class, that she sought accommodation, that the employer did not ac­commodate her, and that the employer did accommodate others “sim­ilar in their ability or inability to work.” The employer may then seek to justify its refusal to accommodate the plaintiff by relying on “legitimate, nondiscriminatory” reasons for denying accommodation.  That reason normally cannot consist simply of a claim that it is more expensive or less convenient to add pregnant women to the category of those whom the employer accommodates. If the employer offers a “legitimate, nondiscriminatory” reason, the plaintiff may show that it is in fact pretextual. The plaintiff may reach a jury on this issue by providing sufficient evidence that the employer’s policies impose a significant burden on pregnant workers, and that the employer’s “le­gitimate, nondiscriminatory” reasons are not sufficiently strong to justify the burden, but rather—when considered along with the bur­den imposed—give rise to an inference of intentional discrimination.  The plaintiff can create a genuine issue of material fact as to whether a significant burden exists by providing evidence that the employer accommodates a large percentage of non-pregnant workers while fail­ing to accommodate a large percentage of pregnant workers.  According to the Supreme Court, this approach is consistent with the longstanding rule that a plaintiff can use circumstantial proof to rebut an employer’s apparently legiti­mate, nondiscriminatory reasons.

Ultimately, the Supreme Court held that the record shows that Young created a genuine dispute as to whether UPS provided more favorable treatment to at least some employees whose situation cannot reasonably be distin­guished from hers, and found that it is left to the Fourth Circuit to determine on remand whether Young also created a genuine issue of material fact as to whether UPS’ reasons for having treated Young less favorably than these other non-pregnant employees were pretext for pregnancy discrimination.

Takeaway:  Employers should review their accommodation and light-duty policies to ensure that they do not discriminate against employees based on a protected class, including pregnancy.