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One can forgive a slight degree of naughtiness from eight U.S. Supreme Court justices on Wednesday as they were tasked with deciding whether trademark examiners working in government must look the other way when someone attempts to register a trademark that could be disparaging to a class of citizens. Nevertheless, a hearing on the subject was mostly clean, even if a certain president-elect came up.
In Tam v. Lee, the Asian-American frontman for The Slants is challenging the U.S. Patent & Trademark Office’s decision to refuse the name of Simon Tam’s band as a registered mark. The justices are examining an opinion in December 2015 by the United States Court of Appeals for the Federal Circuit that departed from precedent by holding that a law directing the refusal of any “immoral” or “scandalous” or “disparag[ing]” marks abridges free speech guaranteed by the U.S. Constitution.
Each year, there are hundreds of thousands of trademark filings. Registration is not a prerequisite to owning a word or phrase that consumers will associate with goods or services, but there are benefits to registration including putting others on notice and being given a certain presumption of validity should a dispute arise. Donald Trump certainly recognizes this with dozens of registrations, including most recently “Make America Great Again.” So do Hollywood studios who often file at the Trademark Office when picking titles of films and television shows so as to keep close grip on sponsored merchandise.
Throughout the years, the Trademark Office hasn’t exactly been consistent in figuring out what’s offensive. For example, the government accepted in 2000 a registration by N.W.A — the rap group also known as Niggaz Wit Attitudes — but five years later, rejected actor Damon Wayans‘ attempt at “Nigga” for clothing. The USPTO once gave a green light to Bravo’s Queer Eye for the Straight Guy and Channel Four’s Queer as Folk, but refused one from a group of lesbians who wished to sell a video of a “Dykes on Bikes” parade. Depending on how broadly the Supreme Court rules, the decision could also impact the NFL’s Washington Redskins, whose trademark registration was canceled in 2014 after being called derogatory. During the hearing, Justice Ruth Bader Ginsburg nodded in this direction by confirming the fact that “scandalous” or “immoral” registrations can also be blocked.
The main underlying question is whether government is impermissibly penalizing speech it disagrees with.
“I always thought that government programs were subject to one extremely important constraint, which is that they can’t make distinctions based on viewpoint,” said Justice Elena Kagan.
Malcolm Stewart, deputy solicitor general, tried to address this concern a couple of different ways.
One, he pointed out there are laws against libel, which is a form of disparagement, as well as against such activity as posting hostile signs within 500 feet of a foreign embassy.
“Suppose a public university … set aside a particular room where students could post messages on topics that were of interest or concern to them as a way of promoting debate in a nonconfrontational way, and the school said, just two ground rules: No racial epithets and no personal attacks on any other members of the school community,” said Stewart. “It would seem extraordinary to say that’s a viewpoint-based distinction that can’t stand…”
“So the government is the omnipresent schoolteacher?” Justice Anthony Kennedy retorted.
Stewart also tried the line of argument that trademarks generally “have not historically served as vehicles for expression,” but rather are merely source identifiers. (If one is confused about what this means, to use a trademark that came up at Wednesday’s hearing, think about the company that comes to mind by the phrase “Just Do It.” Nike slaps this slogan on advertisements as a way of identifying its goods.)
To this, Justice Ruth Bader Ginsburg noted that the PTO thinks “Slants” is a bad word.
“Does it not count at all that everyone knows that The Slants is using this term not at all to disparage, but simply to describe?” she asked. (Indeed, Tam picked the name of the band as a way to reclaim a stereotype towards Asian-Americans.) “It takes the sting out of the word,” she added.
At another point, Ginsburg wondered whether a band called “Slants Are Superior” would cause any fuss because the term is complimentary. After Stewart admitted the USPTO would probably not reject this mark, Chief Justice John Roberts interjected, “Why isn’t that disparaging of everyone else? Slants Are Superior, well, superior to whom?”
The Supreme Court could go broad by determining the government holds no right to refuse a trademark registration on the basis of offensiveness. Or, as indicated by Roberts’ last question, it could issue a narrow ruling by merely indicating the parameters of a disparaging determination by the PTO. But then again, if the justices defy expectation and uphold the constitutionality of the disparaging provision of trademark law, it could be because PTO’s disapproval doesn’t necessarily affect a registrant’s right to use his or her claimed mark.
“No one is stopping your client from calling itself The Slants,” said Justice Sonia Sotomayor. “You are asking the government to endorse your name to the extent of protecting it in a way that it chooses not to.”
Asked why this is a burden, Tam’s attorney John Connell responded, “It is a burden because our client is denied the benefits of legal protections that are necessary for him to compete in the marketplace with another band. And the only reason for the denial of those benefits is the burden on his noncommercial speech contained in the mark.”
Sotomayor may not have been convinced, noting that Tam could still sue, but many of the other justices seemed to think that the trademark registration system represents a big government program directing the contours of commercial speech. In particular, Roberts kept coming back to this point.
Later in the hearing, the justices would return to the point that there exists other laws that frown on disparagement. Justice Stephen Breyer mentioned product disparagement statutes, while Ginsburg brought up the ban on indecent language on television by musing that one maybe cannot “trademark a slogan that has one of George Carlin’s seven dirty words in it.”
That line of inquiry eventually led to Trump’s cameo appearance in Wednesday’s hearing.
Addressing Connell, Sotomayor said, “If someone slanders or libels and individual by saying … Trump is a thief and that becomes their trademark, that even if they go to court and prove that that’s a libel or a slander, that trademark would still exist and would be capable of use because otherwise canceling it would be an abridgement of the First Amendment.”
“I believe that’s correct,” responded Connell.
Sotomayor responded, “That makes no sense.”
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