When the government denies a request for a trademark it deems disparaging, is a penalty on private speech – or a refusal to subsidize offensive messaging?
By Steven Porter, Staff SEPTEMBER 29, 2016
An Asian-American rock band called the Slants tried in 2011 to trademark its name, but the US Patent and Trademark Office declined, citing the moniker’s likelihood to disparage many people of Asian descent. The band’s leader, Simon Tam, sued on First Amendment grounds.
Mr. Tam won on appeal last year, when the Federal Circuit struck down part of a 1946 law that prohibits registering trademarks that may denigrate “persons, living or dead, institutions, beliefs, or national symbols.” But the US Supreme Court justices agreed on Thursday to hear a challenge from the government early next year.
The case could carry weighty implications for an unrelated but more widely publicized trademark matter involving the controversially dubbed Washington Redskins football team, and it could provide legal clarity more generally on viewpoint discrimination and government speech, says David Hudson Jr., an author and scholar at the First Amendment Center in Nashville, Tenn.
“There are multiple strands of First Amendment doctrine in this case, and it’s going to be fascinating to see how the court positions this case and weaves that together,” Professor Hudson, who teaches law at Vanderbilt University, tells The Christian Science Monitor. “It’s not immediately apparent which way, how the court is going to analyze the case.”
When the government denies a request for a trademark it deems disparaging, does that constitute a penalty on private speech or a mere refusal to subsidize offensive messaging? That question is central to Tam’s case, Hudson says.
Judge Kimberly Moore, on the one hand, who penned the circuit court’s majority opinion to strike down the trademark disparagement measure, considered the denial a penalty based on viewpoint discrimination: “It is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys,” she wrote.
Judge Alan Lourie, on the other hand, who penned the dissenting opinion, said the ruling would “further the degradation of civil discourse” by undercutting the government’s authority “to filter out certain undesirable marks from the federal trademark registration system.”
President Obama’s administration has urged the Supreme Court to overturn the circuit ruling and reinstate a law that “simply reflects Congress’ judgment that the federal government should not affirmatively promote the use of racial slurs and other disparaging terms by granting the benefits of registration.”
The government argues, furthermore, that the band’s free speech has not been infringed since it is lawfully permitted to use the name without trademark protection.
In 2014, the trademark office moved to cancel six Redskins trademarks registered between 1967 and 1990, after five native Americans petitioned it to do so. Trademark Trial and Appeal Board documents note that “these registrations must be cancelled because they were disparaging to Native Americans at the respective times they were registered.”
This was the second time the board heard such a petition. The first came in 1992 from seven native Americans and resulted in years of unresolved litigation.
These cases come as public opinion among younger Americans has shifted toward favoring restrictions on offensive speech. Although not directly related to these cases, a survey by Pew Research Center last year found that 40 percent of Millennials favor government-imposed restrictions on commentary about minority groups. That’s significantly higher than rates of support among members of Generation X, the baby boomers, and the Silent Generation.
Both the Redskins and the Slants have backing from the American Civil Liberties Union and other groups who argue against what they say is viewpoint discrimination. While both organizations may continue using their names without trademark protection, the legal stamp provides legal benefits that empower each to sue competitors over allegedly infringing uses of the mark – which, for the Redskins, could implicate millions of dollars in counterfeit merchandise sales.
Tam, who has criticized the Redskins nickname, argues that his use of a term some find offensive in another context is a way to repossess the power usurped by racist language.
“I named the band the Slants because it represented our perspective – or slant – on life as people of color,” Tam, whose band is based in Portland, wrote for the Oregon Humanities magazine. “It was a deliberate act of claiming an identity as well as a nod to Asian American activists who had been using the term for decades.”
His attorney, John C. Connell, reiterated the point emphatically in court documents, as The Washington Post reported.
“Simon Tam is not a bigot; he is fighting bigotry with the time-honored technique of seizing the bigots’ own language,” Mr. Connell wrote. “Only an uninformed philistine could find the band’s name disparaging.”
The Redskins had tried to intervene in Tam’s case, but the court did not mention the team when it granted review.
Hudson says the government’s case relies on a particular assessment of what the band’s name means and the purpose it serves. That subjective analysis at least opens the door to a successful viewpoint discrimination argument.
Additionally, the court’s decision could implicate the government speech doctrine, which was used last year to support a ban on confederate flags on license plates issued by Texas.
“Depending on how broadly they decide the case, it could have an impact on wide variety of free speech cases,” Hudson adds.
“I’d be stunned if it was a unanimous decision, that’s for sure.”