SCOTUS Skeptical of Refusing Disparaging Trademarks

The Supreme Court recently held oral argument in Lee v. Tam, where a band called The Slants was denied a trademark under the Lanham’s Act disparaging clause (15 U.S.C. § 1052(a)).

Background

Simon Shiao Tam is a front man for an Asian-American dance rock band called The Slants. The name was intended to reclaim and take ownership of Asian stereotypes. The Slants believe Asians should not be offended by stereotypical descriptions, but rather be proud of their cultural heritage.

The Patent and Trademark Office, however, felt differently about the meaning of Slants. The office denied Mr. Tam’s application to register their mark, finding it likely to disparage persons of Asian descent and citing the Lanham Act’s disparagement clause. The disparagement clause permits refusing to register a mark that “comprises immoral, deceptive, or scandalous matter; or matter which may disparage….”

Following litigation, the Federal Circuit found the disparagement clause unconstitutional. The law was viewpoint discrimination that did not satisfy the strict scrutiny standard. The Supreme Court granted certiorari to hear the appeal of this decision.

Oral Argument

The government acknowledged a number of points during oral argument to sharpen the issue facing the Court.

  1. The First Amendment was triggered: Government admitted (a) trademarks are used for expressive conduct, (b) the government was not arguing the disparagement clause fit within the narrow categories historically excluded from First Amendment protection like libel and slander, and (c) the government would face First Amendment problems if it used viewpoint discrimination in selecting recipients for benefits of a public program
  2. The disparagement clause could not survive strict scrutiny

The Court focused on two issues during oral argument; the nature of the regulation and the forum in which the regulation applied.

The Court appeared inclined to find the government was engaging in viewpoint discrimination through the disparagement clause. Justice Kagan applied the  clause to a number of scenarios that clearly would constitute viewpoint discrimination, such as permitting a group to register “politicians are good and virtuous,” but denying a group registration as “politicians are corrupt.” The government attempted to refute this contention by arguing all disparagement was prohibited and the government was not attempting to suppress disfavored messages. For example, in 1969 the office had refused registering a mark disparaging the Soviet Union; a disparaging message, but surely not a disfavored message.

The Court seemed more receptive to the government’s arguments about the nature of the forum. The government argued that government speech was involved here, because the government published registered marks in its own publications and then communicated these marks to other countries. Justice Kagan noted that although this may not quite be government speech, it does approach the line. Justice Sotomayor as well remarked that The Slants’s freedom of speech was not being burdened in a traditional way. The band was asking the government to endorse their name to the extent of protecting it beyond what the government chooses. Justice Breyer, however, expressed skepticism because it did not appear that the program’s purpose, helping prevent distraction as to a product’s source, was served by simply eliminating disparaging marks.

The Court’s reluctance to find government speech at play, coupled with the government’s inability to refute that it was engaged in viewpoint discrimination, make it likely that the Supreme Court will uphold the Federal Circuit’s decision that the disparagement clause is unconstitutional.

Additional reading on the case: 

SCOTUSblog, Argument Analysis 

World Intellectual Property Review, Lee v. Tam: SCOTUS provides ‘scant’ insight into view on case

NPR, The Slants: Fighting for the Right to Rock a Racial Slur

 

 

 

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