We Built This City on…False Advertising?

Fifty years ago, it was the “Summer of Love” in San Francisco, with Jefferson Airplane’s 1967 album “Surrealistic Pillow” providing the soundtrack. My how times have changed!

Earlier this week, the United States District Court for the Northern District of California came out with its initial decision in Chaquico v. Freiberg, which involves the latest squabble to arise out of the legacy of that classic San Francisco band. Plaintiff Chaquico was an original member of the band Jefferson Starship, which guitarist Paul Kantner formed in 1970 out of the remnants of the Jefferson Airplane. Chaquico sued the musicians who continue to tour and record as Jefferson Starship now, claiming that they breached a contract to cease using the name “Jefferson Starship,” and have given consumers the false impression that he somehow sponsors, endorses, or is otherwise still associated with the band by using his name and likeness to promote their concerts. While the band members seemingly admitted using his name and image, they claimed that they only used those in a historic context to document the history of the band. The band members claimed a First Amendment right to use his name and likeness that way, and argued that the Lanham Act cannot restrict their artistic freedom. Continue Reading

USPTO Switches Gears on Registration of Disparaging Marks, but Not on Scandalous Marks

On June 26, 2017, a week after the U.S. Supreme Court unanimously held 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 in Matal v. Tam, the U.S. Patent and Trademark Office (the “USPTO”) has updated (Examination Guide 1-17) its previous guidance, Examination Guide 01-16, to explain how it will examine applications following the Supreme Court’s decision in Tam. Continue Reading

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

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.