Simon Tam describes himself as an “Asian-American
musician, lecturer, and political activist.” In 2006, he formed a rock band
that he named The Slants, to bring attention to discrimination against
Asian-Americans. Tam contends that, by using the name The Slants, he was
“following in the long tradition of reappropriation, in which members of
minority groups have reclaimed terms that were once directed at them as insults
and redirected the terms outward as badges of pride.”
In 2011, Tam applied to
the federal government to register The Slants as a trademark – a word, name, or
symbol used to identify a good and to indicate its source. Having a trademark
allows the person or entity who owns the mark to prevent others from using it
and to sue when that right is violated. But an attorney in the U.S. Patent and
Trademark Office rejected Tam’s application. The attorney relied on Section
2(a) of the Lanham Act, which bars the government from approving trademarks
that contain “matter which may disparage … persons, living or dead,
institutions, beliefs, or national symbols, or bring them into contempt, or
disrepute.” The attorney explained that the word “slant” is “a negative term
regarding the shape of the eyes of certain persons of Asian descent” that has a
“long history of being used to deride and mock a physical feature of those
individuals.”
Tam appealed to the
PTO’s Trademark Trial and Appeal Board, which affirmed the attorney’s ruling.
The TTAB acknowledged that Tam “has good intentions underlying his use of the”
phrase The Slants, but it concluded that his good intentions could not “obviate
the fact that” many Asian-Americans object to the term. A panel of the U.S.
Court of Appeals for the Federal Circuit upheld that decision, but the full
Federal Circuit reversed. Although it agreed with the panel that the mark was
“disparaging,” it concluded that the Lanham Act’s ban on the registration of
disparaging marks violates the Constitution. The federal government then asked
the Supreme Court to weigh in, which it agreed to do this fall.
In its brief in the
Supreme Court, the government insists that the Lanham Act’s ban on registering
disparaging marks is fully consistent with the Constitution. The government
emphasizes that the First Amendment bars the government from putting
restrictions on speech. That does not, it argues, create “an affirmative right
to use government resources to facilitate private speech.” Under Section 2(a),
it reasons, the federal government is not restricting speech; it is simply not
providing government funds for some speech. The government notes that the court
has rejected First Amendment challenges to, for example, federal laws that
barred organizations that engage in lobbying from claiming tax-exempt status,
as well as federal regulations that bar the use of federal family-planning
funds to provide services related to abortion.
Moreover, the government
continues, the ban on disparaging marks does not limit Tam’s freedom of speech.
It is true, the government concedes, that Tam would receive some benefits from
being able to register the mark The Slants – such as being able to prevent
other people from using the mark – but the denial of registration does not
restrict what Tam “may name his band, what songs he may sing, how he may
advertise, or what messages he may convey.” Indeed, the government notes, if
Tam “wishes to start a public debate about reappropriating racial slurs and
using them as ‘badges of pride’ rather than insults, he is free to do so.”
The government also
points out that, just last year, the justices upheld a decision by the state of
Texas not to allow an image of a Confederate flag on specialty license plates
because “the design might be offensive to the public.” That decision was
justified, the government explains, by the state’s “interest in not being
associated with certain messages … that the state deemed offensive to the
public.” That same reasoning, the government contends, applies fully here.
Tam counters that the
disparagement provision is indeed contrary to the First Amendment because it
discriminates based on the content of the mark: “It permits the regulation of
marks that express a positive or neutral view of a person, but bars the
registration of marks that express a negative view.” And, contrary to the
government’s argument, the denial of registration to marks deemed disparaging
does matter, because having a registered mark gives the owners of the mark
“important legal rights.” Tam observes that the cases that the government cites
for the proposition that the government can decline to provide funds for some
speech without violating the Constitution all involve some sort of subsidy –
which trademark registration does not, because someone who registers a
trademark does not receive any money from the government. (Even if the
trademark registration program did involve a subsidy, he adds, it would still
be unconstitutional because it discriminates based on viewpoint.)
The government’s
reliance on the court’s recent decision holding that Texas can bar the use of
Confederate flag images on license plates is similarly unavailing, Tam
continues, because registering a trademark does not constitute government
speech but is instead speech by the owner of the trademark. “Unlike government
speech such as license plates and public monuments,” he explains, “trademarks do
not communicate messages from the government. They are not understood by the
public as statements by the government.”
Tam also outlines two
other grounds on which, he argues, he can prevail even if the Lanham Act’s ban
on registering disparaging marks does not violate the First Amendment. First,
he contends, even if the disparagement provision is valid, it still does not bar
the PTO from registering The Slants. Section 2(a) of the Lanham Act, he
emphasizes, only bars the disparagement of “persons,” a term that does not
extend to racial and ethnic groups.
Second, he asserts, the
disparagement provision is so vague, and gives so much discretion to PTO
examiners, that it violates the Constitution. Tam condemns what he
characterizes as the PTO’s “sorry record of utterly arbitrary disparagement
decisions.” And given how vague the disparagement provision is, he suggests, it
creates “a strong incentive to stay away from any name the PTO might
conceivably find disparaging, because it can be extraordinarily costly and
disruptive to change the name of a product that is already in the market.”
Although The Slants may
be best known outside music circles for their legal battles, the band’s dispute
with the PTO could have a significant effect on another, better-known group:
the Washington Redskins. In 2014, the PTO relied on the disparagement provision
to cancel the NFL team’s trademarks, and a federal district court upheld that
ruling. The team’s case is now on hold in the U.S. Court of Appeals for the 4th
Circuit, after the Supreme Court spurned the Redskins’ request to consider the
case at the same time as Tam’s.
The justices will hear oral
argument in Tam’s case on Wednesday, January 18. In anticipation of that
argument, on Monday the blog will kick off an online symposium on the case. We
are delighted to publish posts from expert authors on both sides of the issue,
and we look forward to the debate.
Amy Howe, Introduction: Trademark law and the Constitution,SCOTUSblog (Dec. 16, 2016, 12:53 PM), http://www.scotusblog.com/2016/12/introduction-trademark-law-and-the-constitution/
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