Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. This is a fun one – remember the Alan Parsons Project, and its songs like, “I Wouldn’t Want to be Like You”? Well, Alan Parsons is still around, and he entered into an agreement with an entertainment company to seek and promote live performance opportunities for Parsons. That relationship soured, and the entertainment company began separately advertising its association with some of the studio musicians who played with Parsons, but who were never formally part of the “Alan Parsons Project.” The advertising included at least one live show being scheduled in Spain, other promotional videos for the imposter band (referred to as “The Project Band”), and the like. After sending cease and desist letters, and initially securing a preliminary injunction in Spain to stop the concert, but having the injunction stayed such that the concert went forward (with confused fans no less), Parsons ultimately sued on his U.S. federal and common law trademarks, and other causes of action in the U.S. Parsons sought and was granted a preliminary injunction in the Middle District of Florida federal court preventing the defendant entertainment company, and its head, from making further use of confusingly similar names to Alan Parsons for unsanctioned, unrelated projects. The Eleventh Circuit Court of Appeals affirmed the grant of the preliminary injunction finding that “the district court did not abuse its discretion in concluding that the Project Band’s originality claim was ‘deceptive and misleading.’” Oh, the “Games People Play” (another Alan Parsons Project song!).

2. In another case that will hopefully fire you up, the Ninth Circuit Court of Appeals affirmed a grant of summary judgment in favor of the defendant finding that THE HERBAL CHEF is a descriptive trademark when used in connection with catering, educational, and advocacy services involving cooking with infused cannabis. The district court dismissed federal and state trademark and unfair competition claims based on THE HERBAL CHEF mark because the mark is not inherently distinctive and cannot support the claims on the facts presented. The takeaway here is that marks that are found to be descriptive cannot be enforced absent acquired distinctiveness such as long term use and advertising

3. In a recent opinion from the Federal Circuit Court of Appeals regarding the scope of license and release provisions pursuant to a settlement of patent litigation in the Eastern District of Texas, the Court affirmed a decision in a separate case that the defined term “Affiliate” in the license from the first case was retroactive and applied to an entity that subsequently purchased a party to the license agreement. More specifically, several months after the license and release to the defendant in the first case was inked, a defendant subject to the same telecommunications patents asserted in the first case purchased the licensed/released party from the first case, and then moved for summary judgment in its own case arguing that it was licensed and/or released as an “Affiliate” of the licensed/released party from the first case and the infringement claims against it were barred. Notably, in the license and release, “Affiliate” was defined as any party with over a 50% ownership stake in the licensed/released party from the first case. The Court concluded that the defendant in the later case obtained a retroactive license to the asserted patents when it purchased the licensed/released party from the first case and became an “Affiliate” of that party. Judge Newman wrote a fairly stinging dissent concerning her view that there was a lack of commercial integrity in play with the purchase and avoidance of liability, and also a misapplication of contract law by the Court. The takeaway here is to be very careful with license and release provisions in agreements to make sure we are not licensing more folks than we think.