Portland Band The Slants Singing a Happy Tune After the Supreme Court Unanimously Holds That the Disparagement Clause Violates the First Amendment

Background
Yesterday, six months after hearing oral argument (and nearly six years after Simon Tam filed his trademark application for “THE SLANTS”), the U.S. Supreme Court unanimously affirmed the U.S. Court of Appeals for the Federal Circuit’s en banc decision in In re Tam, holding that the disparagement clause in Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), violates the Free Speech Clause of the First Amendment.

The Supreme Court’s decision in the Matal v. Tam case (formerly called In re Tam and Lee v. Tam) concerns Simon Tam’s application for a federal trademark registration of his band’s name, “The Slants.” Tam is the founder of The Slants, a dance-rock band whose members are all Asian-American. The band members believe that by using the term “slants,” a derogatory term for persons of Asian descent, as the name of their group, they will help “reclaim” the term and “drain its denigrating force.” Continue Reading

What’s in Your Privacy Policy? New Oregon Law Requires Accuracy

2017-06-01 13_43_46-privacy policy - Google SearchOn May 25, 2017, Oregon Governor Kate Brown signed into law H.B. 2090. This new law will make materially inaccurate claims related to the collection, use, disclosure, maintenance, and disposal of consumer data an unlawful trade practice subject to enforcement by the Attorney General. The law applies not only to claims made on websites (privacy policies come to mind), but also in consumer agreements (ISP and cloud hosting agreements come to mind).

Businesses typically review their standard contract forms on a regular basis during negotiations with customers and vendors. Those reviews provide an opportunity to identify claims related to data security that may no longer be accurate. But website privacy policies—rarely the subject of negotiation—are much more likely to be neglected for long periods of time. A best practice is to routinely review your contract forms and privacy policy to ensure they still accurately reflect how you collect, store, and use data. This new Oregon law provides extra incentive to keep those contracts and policies up to date!  Continue Reading

Supreme Court Squeezes Patents: TC Heartland v. Kraft Foods & Impression Products v. Lexmark

In a pair of important decisions over the last week, the Supreme Court again changed the patent protection landscape (and again overruled the Federal Circuit). In TC Heartland LLC v. Kraft Foods Group Brands, LLC, the Supreme Court took on the issue of venue for patent infringement litigation. Under previous interpretations of the Patent Act’s venue provisions, defendants were often hailed into far-away jurisdictions that had little connection to them or the infringement. After last week’s decision, defendants can only be sued where (1) the defendant is incorporated or (2) where it committed acts of infringement and has a regular and established place of business. As a result, the district court judges in the Eastern District of Texas will find themselves with many fewer patent cases, and the judges in the District of Delaware will find themselves becoming more knowledgeable about patent law than the Federal Circuit itself.

In Impression Products, Inc. v. Lexmark International, Inc., the Supreme Court took on the issue of patent rights exhaustion. This litigation arises out of Lexmark’s continued battle to control use of its ink jet printer cartridges, which we’ve covered before. Lexmark sued Impression Products for patent infringement, claiming that Impression Products’ reselling of (re-filled) Lexmark printer cartridges constituted patent infringement. In today’s decision, the Court held that once a patent owner (or its authorized licensee) sells a product embodying the patented technology, all patent rights are immediately exhausted, and the patent owner can no longer sue for infringement. Moreover, that exhaustion applies to foreign sales as well, so an importer that imports products that were legitimately produced by the patent holder or its licensee cannot be sued for infringement. However, the Supreme Court decided only whether a patent infringement case could be brought; it did not say that no claim (such as breach of contract) remained, but only that after a first sale, no patent infringement claim could lie against subsequent purchasers.

Expect to see patent holders insist on even more imaginative licensing provisions going forward.

It’s Not Always Sunny in Philadelphia: CertainTeed v. BIPV

2017-05-09 11_18_48-certainteed solar shingles - Google SearchIn CertainTeed v. BIPV, the United States District Court for the Eastern District of Pennsylvania has given us a good reminder that patents (or patent applications) and trade secrets don’t mix well, and also weighed in on the confounding question of whether allegedly confidential information that is not a trade secret can still be protected simply by contract.

CertainTeed manufactures solar roofing panels, and entered into a number of contracts with BIPV, which designs, develops, and sells roofing panels that use solar power generating cells.  As is often the case, CertainTeed and BIPV entered first into a nondisclosure agreement (NDA) to allow them to discuss freely the possibility of doing business together. The parties then entered into a private label agreement to allow BIPV to supply CertainTeed pursuant to CertainTeed’s purchase orders. Later, the parties entered into another NDA, and ultimately CertainTeed decided to purchase some of BIPV’s products, and did so pursuant to purchase orders. But soon after CertainTeed started selling the solar cells it purchased from BIPV, customers started reporting that the panels were igniting on customers’ roofs. Suffice to say, litigation ensued.

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Sis Boom Bah? Cheerleading Uniforms and Copyright Protection—Star Athletica Case Decided!

Can a cheerleader uniform containing combinations of elements like chevrons, lines, stripes, and angles be protected by copyright? Well, the Supreme Court addressed this exact issue on March 22, 2017, in the case of Star Athletica, L.L.C. v. Varsity Brands, Inc. And, ta da, the answer is yes where a design feature of a useful article (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression— if it were imagined separately from the useful article in which it is incorporated. And the five member majority (authored by Justice Thomas) agreed that this test was satisfied in the present case.

To appreciate the fuss, and decision, some context is needed. Useful articles are not subject to copyright protection, with the lone exceptions of boat hulls and semi-conductor chips. Section 101 of the Copyright Act in pertinent part states: “the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” Continue Reading

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