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.

When the alleged misuse of trademark, name, or likeness is part of a broader artistic work, the Ninth Circuit has adopted the “Rogers test” to balance a consumer’s interest in not being misled about the source of a product with the public interest in free artistic expression. The test generally results in the balance tipping toward the artist unless the use has no relevance to the underlying artistic work or explicitly misleads as to source. Where it gets interesting from an IP perspective is whether commercial advertising for the underlying artistic performances–as opposed to the performances themselves–should receive the same amount of First Amendment deference.

While recognizing that advertising might be different, the District Court nonetheless decided the Rogers test struck the right balance: “[A]n advertisement for a musical performance is meant to catch the consumer’s attention and promote and communicate a message about the band . . . Because an advertisement may contain expressive elements  . . . the Court finds the Rogers test applies.” Ultimately, the Court found that plaintiff Chaquico had failed to plead sufficient facts about how his name and image were used to promote concerts and sell tickets, and dismissed the false advertising claim with leave to replead.