Federal Circuit Strikes Down the Lanham Act’s Ban on Scandalous and Immoral Marks in the Wake of Tam

In the wake of Matal v. Tam, where the Supremes 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, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit unsurprisingly struck down the Lanham Act’s ban on “scandalous and immoral” marks as unconstitutional in violation of the First Amendment.

In re Brunetti involves a challenge to Section 2(a), which bars registration of marks that consist of or comprise matter that may “disparage. . .persons, living or dead,. . .or bring them into contempt, or disrepute.” This language, which was at issue in Tam, is referred to as the “disparagement provision.” Section 2(a) also bars registration of marks that consist of or comprise “immoral, deceptive, or scandalous matter.” This language is referred to as the “scandalousness provision.” Continue Reading

Copyright Office Rule Changes—Maintaining DMCA Safe Harbor Immunity Requires New Registration

The Digital Millennium Copyright Act (DMCA) provides limited safe-harbor immunity from copyright infringement claims to certain types of websites and other online service providers. Earlier this year, we blogged regarding the need for such providers to now use an online portal to electronically designate an agent to receive take down requests and reported that all previous agent designations filed via the antiquated paper system will be ineffective as of December 31, 2017.

As we are quickly approaching the end of the year, now is the time for service providers, and those representing services providers, that host websites with user-generated content to make sure they are in compliance with the new regulations in order to maintain safe harbor immunity. Some important details of the new regulations are:

  • Separate agent designations must be filed for all corporate parents and/or affiliates that are separate legal entities
  • Service providers are required to list any and all alternate names under which they are doing business, including any names that the public would be likely to use in a search of the agent directory
  • A physical street address must be provided for the service provider – post office box numbers are no longer acceptable
  • An agent designation can now name any of an individual, a corporate department, or a third-party entity
  • Agent designations must be renewed every three years

The Copyright Office intends that the new system will be a much faster and more efficient way for copyright owners and the public to access designated agent information. Service providers’ submissions through the online registration system will automatically populate in the directory, and the public will be able to search either by service provider name or alternate name to obtain contact information for a designated agent.

For more information on registering (or re-registering) your designated DMCA agent, click here and here.

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

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