For our weekly SoCal IP Institute meeting on Monday, June 26, 2017, we will discuss the following cases:
Matal v. Tam (Supreme Court, June 19, 2017) (available here). A rock group known as “The Slants” chose their band name in order to reclaim the term from its racist origins. The Trademark Office denied the band’s registration of “THE SLANTS” citing the disparagement clause of the Lanham Act which prevents registration of marks that “disparage . . . or bring. . . into contemp[t] or disrepute” any “persons, living or dead.” 15 U. S. C §1052(a). After contesting denial of the mark in the Trademark Office, The Slants took their case to the Federal Circuit. The Federal Circuit found the disparagement clause facially unconstitutional and the Supreme Court affirmed.
Life Technologies Corp. v. Promega (Supreme Court, February 22, 2017) (available here). Promega licensed a patent for a DNA kit to Life Technologies. The kit contained five components; one component (the enzyme taq polymerase) was manufactured in the United States, while the four others were made in the UK. Life Technologies began selling the patented kits outside the scope of the license agreement and Promega sued. §271(f)(1) of the Patent Act makes it illegal to supply from the United States “all or a substantial portion of the components of a patented invention” that are later combined abroad. The District Court found Promega not liable, and then the Federal Circuit reversed. The Supreme Court reversed the Federal Circuit holding that “[t]he supply of a single component of a multicomponent invention for manufacture abroad does not give rise to §271(f)(1) liability.”