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Jan 19 2017

SCOTUS to Decide If “Scandalous” “Immoral” Terms Can Be Trademarked

In a case that presents a crossfire of First Amendment and intellectual property issues, the Supreme Court heard arguments yesterday in a case involving an Asian-American band that calls itself “the Slants.” The Slants had been denied a trademark for their name by the US Patent and Trademark Office (USPTO) under a Federal law that prohibits the USPTO from registering trademarks deemed “immoral, deceptive, or scandalous,” or that “disparage… persons, living or dead, institutions, beliefs, or national symbols.” This law came to most people’s attention perhaps in 2014 when the USPTO cancelled the trademark registration of the Washington Redskins.

While the USPTO declined to register the bands’ trademarks because “slants” is a pejorative term for Asians, the band — whose members are all Asian-American — has made it clear that the Slants name was chosen as a deliberate commentary on the state of race, culture, and music. A Federal appellate court ruled that the law was unconstitutional as it violated the First Amendment’s protection of free speech. The relevant part of the First Amendment reads “Congress shall make no law . . . abridging the freedom of speech.” Pretty straightforward on its face. And the appellate court found that by denying the Slants’ trademark request, the USPTO was abridging their free speech rights especially since the ban was based on the content or viewpoint of the speech stating: “When the government discriminates against speech because it disapproves of the message conveyed by the speech, it discriminates on the basis of viewpoint”
In First Amendment law, viewpoint restrictions are the ones that courts get most concerned about.

You can get this as long as the “R” isn’t for “Racist”

The USPTO took the appeal to the Supreme Court arguing that merely denying the trademark doesn’t stop the band from using the name; it just means there are fewer protections against others using the unregistered marks. Because the mark could still be used in commerce, the government also argued, the Slants still had their State trademark rights and could sue a competitor if that competitor tried to falsely claim they were these “The Slants.” The justices gave Marshal Stewart, the US Solicitor General who argued the case on behalf of the USPTO a hard time. The justices focused on two main issues (1) What government interest in trademark does this law promote and (2) How is it not “viewpoint” discrimination since I can say nice things about a race but not a bad thing? Stewart tried hard to make the case that a trademark should not distract from its primary purpose which is to identify the source of goods- it is not to make a statement. He had this exchange with Justice Kagan:

MR. STEWART: The — the type — the type of distraction that may be caused by a disparaging trademark will depend significantly on the precise type of disparagement at issue. That is, in the case of racial epithets, these words are known to cause harm, to cause controversy. They — in some sense they may no — they may be no more distracting than a positive message,
but Congress can determine this is the wrong kind of distraction.

JUSTICE KAGAN: Mr. Stewart, please.

For those non-lawyers who read this blog, you need to know that “Mr. Stewart, please” is the SCOTUS equivalent of “Are you f–king kidding me?”

The Court also gave John Connell, The Slants’ lawyer, an equally hard time. Their focus for him was (1) How is this restricting their speech, when all it is doing is stopping them from using a racial slur as a Federally-registered product identifier? Can you force the government to condone racial slurs by sanctioning them as protected trademarks? (2) How is this any different from other permissible restrictions on speech? For example, libel laws or commercial disparagement law that would prohibit anyone from putting out a product that said “Miller Beer is Poison.”

O’Connell chose to argue that all of those restrictions should not stop the registration of a trademark. I think taking such a hard line stance seriously hurt his argument as the Justices nearly jumped down his throat when he made it. Here is one brief exchange between him and Justice Sotomayor who was using a timely example of libelous speech:

JUSTICE SOTOMAYOR: But your argument earlier was that if someone slanders or libels an individual by saying — Trump before he was a public figure — 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?

MR. CONNELL: I believe that’s correct.

JUSTICE SOTOMAYOR: That makes no sense.

Oh boy, that’s worse than hearing “[Your Name Here], please.”

The Court continued to press Connell on what may be the defining issue – that this is just one small arena that the government has said do not use racial slurs – The Slants are free to sue them in their name, their song lyrics, their advertisements, everywhere else. Justice Ginsburg compared it to the prohibition of George Carlin’s “Seven Dirty Words” on public air waves.

With the Court attacking both counselors equally and with the broad sweeping issues at stake here, it is hard to predict the outcome. I suspect the law will be upheld because of the narrow restriction posed by the statute and that it does not really prevent the Slants from using he name in commerce. As for the Redskins? Well, they did not get their appeal through to the Federal Appellate Court in time and when they asked SCOTUS to allow them to jump over that step because of this case, the Court denied he petition. So they just have to sit on the sidelines and hope that Mr. Connell’s arguments won the day.

You can read the full text of the argument HERE

Follow me on twitter @oscarmichelen

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