January 8, 2018

Supreme Court Rules First Amendment Protects Disparaging Trademarks (NYLJ.com)

Supreme Court Rules First Amendment Protects Disparaging Trademarks
Tony Mauro, The New York Law Journal

Ruling in a high-profile trademark case, the U.S. Supreme Court on Monday said that the Lanham Act’s prohibition against “disparaging” marks violated the First Amendment free speech rights of the Asian-American rock band The Slants.

The 8-0 decision in Matal v. Tam ends a long battle by band founder Simon Tam who asserted, in words and song, that he picked the name “Slants” not to disparage Asian-Americans, but to “reappropriate” the term as a badge of Asian-American pride – in the same way that the term “queer” has become a positive expression among LGBTQ individuals.

In a Facebook post Monday, the band celebrated the decision: “The Supreme Court has vindicated First Amendment rights not only for our The Slants, but all Americans who are fighting against paternal government policies that ultimately lead to viewpoint discrimination.”

Initial reaction suggested that the trademark bar and the public should brace for a wave of distasteful trademark applications. “It seems this decision will indeed open the floodgates to applications for all sorts of potentially offensive and hateful marks,” said Orrick, Herrington & Sutcliffe partner Lisa Simpson. “While this may be the right result under the First Amendment … it seems the responsibility will now pass to the public.  Trademark is a consumer-based law.  And so it will be up to consumers to reject the most hateful of these marks and slogans.”

The decision is also good news for the Washington Redskins, whose trademark was canceled in 2014 under the same law because its name was viewed as disparaging to Native Americans. That case is pending before the U.S. Court of Appeals for the Fourth Circuit.

“Surely, the Redskins will expeditiously push for the review of their pending appeal by the Fourth Circuit citing this decision, and it is likely that case will never get to the Supreme Court,” said Boies Schiller Flexner partner Josh Schiller.

Catherine Farrelly of Frankfurt Kurnit Klein + Selz said the ruling was historic because the court struck down “a provision of the Trademark Law that has been in force—and enforced—for more than 70 years.”

The Federal Circuit in 2015 agreed with The Slants that the restriction violated free speech protections. The U.S. Patent and Trademark Office in 2011 had refused to register “The Slants” because of the Lanham Act provision. Originally titled Lee v. Tam, the case was renamed earlier this month when Joseph Matal became interim director of the patent and trademark office, replacing Michele Lee.

Justice Samuel Alito Jr., writing for the full court, rejected the government’s argument that registered trademarks amounted to government speech, which would take trademarks out of First Amendment scrutiny. "If the federal registration of a trademark makes the mark government speech, the federal government is babbling prodigiously and incoherently,” Alito wrote.

For differing reasons, the court proceeded to rule that the disparagement clause of the Lanham Act is unconstitutional. “Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate,’” Alito wrote.

Justice Anthony Kennedy added in a concurrence, “To permit viewpoint discrimination in this context is to permit government censorship.”

The Slants’ pro bono lawyer John Connell of Archer & Greiner, a New Jersey firm, said Monday, “This win is relevant to the Washington Redskins football team case, as well as all individuals, businesses and organizations that are advocates for free speech.” Connell’s representation of the Oregon-based band came about because a colleague of Connell, Ronald Coleman, blogged about the case.

Copyright The National Law Journal. All rights reserved. This material may not be published, broadcast, rewritten, or redistributed.

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