Patent Pending – Sorry I Offended You

A few interesting tidbits for you this week:

The U.S. Supreme Court ruled that offensive names can be trademarked, overturning a law protecting us from being offended. It seems a Asian-American band chose to call themselves the “Slants”, turning what some call a derogatory term into a positive, as the band saw it. A trademark official with the mighty government found some slang dictionaries that said the term was offensive to Asian-Americans and denied the tradename application. Justice Alito, for an unanimous court, said: “It offends a bedrock 1st Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” Good for them. We need to quit being so offended all the time.

You have undoubtedly heard the expression “beyond the pale”, used to describe someone’s egregious conduct. The “pale” was an area around Dublin, Ireland, which varied over time but was usually about 10 miles out from town. The English, in their conquering of Ireland, found that it was hard to control the Irish because the Irish had no central authority but instead was made up of tribes of Irish who were subjects of various kings. Communication was tough as the Irish roads were dismal if they existed at all and the English simply had a hard time controlling the Irish. So the English had a rule that if someone was “beyond the pale” the English didn’t worry about them, as they could only control those within the pale.

Another Supreme Court ruling of late was probably more important for your pocketbook than the offensive tradename case. The Supremes ruled that patent rights end upon the initial sale of the product. The case was about printer cartridges, but the result applies to a myriad of products. A company, Impression Products, bought used Lexmark printer cartridges and refilled them, then sold  them for a hefty discount over Lexmark’s new cartridges. The trick was that Impression would replace a microchip in the cartridge to fool the printer into thinking this was a new cartridge. Lexmark was offended by these entrepreneurs taking away from Lexmark’s revenue stream and sued for patent infringement. The Supremes ruled, correctly again, that once the product is sold, any changes to the product are permissible by the buyer. Chief Justice Roberts used the analogy of automobiles: “Take a shop that restores and sells used cars. The business works because the shop can rest assured that, so long as those bringing in the cars own them, the shop is free to repair and resell those vehicles,” Roberts wrote. “That smooth flow of commerce would sputter if companies that make the thousands of parts that go into a vehicle could keep their patent rights after the first sale.” Both Supreme Court decisions are good for liberty, so it’s been a good week.

Kelly Burke, master attorney, former district attorney and magistrate judge, is engaged in private practice. He writes about the law, rock’n’roll and politics. These articles are not designed to give legal advice, but are designed to inform the public about how the law affects their daily lives. Contact Kelly at to comment on this article or suggest articles that you’d like to see and visit his website to view prior columns.

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