The federal district court in northern California is being called upon to explore the limits of Lanham Act protections in the context of First Amendment expressive freedoms. Chaquico v. Freiberg, et al., No. 17-cv-0423-MEJ (N.D. Cal.) August 11, 2017.
The United States District Court for the Northern District of California has refused to dismiss contract claims arising after the death of Jefferson Starship member Paul Kantner. The court has dismissed, with leave to amend, plaintiff’s Lanham Act claims, finding the current presentation of the claims to be too conclusory to survive a motion to dismiss.
Back in the Day: The Several Incarnations and Litigations of a Legendary Band
Chaquico and Paul Kantner founded rock band Jefferson Starship in 1970, enjoying great commercial success. When Kantner left the band fourteen years later he sought to enjoin the remaining band members from using the Jefferson Starship name.
Kantner, plaintiff Chaquico, present defendants Freiberg and Baldwin agreed in 1985 that the name Jefferson Starship would no longer be used, but “Starship,” without Kantner, would be used by the other band members.
Starship enjoyed some success, but Freiberg was fired, Baldwin was dismissed, and Chaquico left.
Thereafter Kantner joined with other musicians and, notwithstanding the 1985 agreement, resumed use of the name Jefferson Starship.
Chaquico sued Katner for Kanter’s unauthorized us of the Jefferson Starship name. In 1993, Chaquico granted Kantner use of the Jefferson Starship name for live performances and sale of merchandise. Some parties to the 1985 agreement agreed to give Kantner those permissions: no parties to the agreement objected.
Defendants Freiberg and Baldwin joined Jefferson Starship in 2005 and 2008.
Kantner’s death in 2016 terminated the naming permissions granted in the 1993 agreement. Freiberg and Baldwin continued to use the Jefferson Starship name. Chaquico demanded they cease and desist these violations of the 1985 agreement.
What Is Plaintiff’s Current Concern?
Chaquico objects to the the defendants’ continued use of the Jefferson Starship name as an affront to the band’s legacy. Moreover, Chaquico argues that the use of images from the original band has caused him to become an “involuntary spokesperson” for the band. Chaquico asserts that use of the original images will cause public confusion.
Defendants refuse to stop using the Jefferson Starship name, and continue to use that name in advertising and promotions, citing permissions from other parties to the 1985 agreement.
What Would Make Things Better?
Chaquico seeks damages for breach of contract, for violations of the Lanham Act, and requests injunctive relief.
The Contract Claims
The 1993 agreement released Chaquico’s rights against Kanter and band members. Although the defendants in the current litigation were not parties to the 1993 agreement, they obtained benefits from it, enjoying its protection when they joined Kantner’s band which lasted until the time of his death. Claims arising before Kantner’s death are, the court concluded, time barred, but those arising after Kantner’s death may proceed.
The Lanham Act Claims: Commerce and Art Collide
The Lanham Act prohibits the use of names, symbols, images or other representations likely to cause confusion, mislead, or deceive concerning any product, service or commercial activity.
Where the Lanham Act constrains representations likely to cause commercial confusion, the First Amendment guarantees extensive expressive latitude, yet the First Amendment will not serve as a shield against legitimate commercial confusion claims.
The use of a promotional image must have some minimal relevance to protected artistic expression to claim the First Amendment protections of an underlying work, but those protections may be forfeited if an image is explicitly misleading about the content of the underlying work.
The Current Ruling in the Northern District of California
The trial court noted that First Amendment protections extend only to truthful claims. If the use of Chaquico’s image in Freiberg and Baldwin’s advertising falsely conveys Chaquico’s sponsorship, no First Amendment protections attach.
As the present complaint lacks sufficient factual foundation, Chaquico may proceed if an amendment cures this deficiency.
Significant Case Law
Brown v. Electronic Arts, 724 F.2d 1235 (9th Cir. 2013) (expressive use of image in video game may violate Lanham Act).
ESS Entertainment v. Rock Star Videos, 547 F.3d 1095 (9th Cir. 2008) (Rogers applies to use of trademark in body of work).
Mattel v. MCA Records, 296 F.3d 894 (9th Cir. 2002) (adopts Rogers).
Rogers v. Grimaldi, 875 F.2d 994 (2nd Cir. 1989) (Lanham Act applies to artistic works only where public interest in avoiding confusion outweighs public interest in freedom of expression).