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Will SCOTUS Tilt Towards The Slants in Offensive Names Case?

By Casey C. Sullivan, Esq. on January 18, 2017 | Last updated on March 21, 2019

The Supreme Court heard oral arguments this morning in Lee v. Tam, the much-anticipated case over trademark registration, free speech, and disparaging names. The Slants, an Asian-American "Chinatown dance rock" band, had its trademark rejected by the U.S. Patent and Trademark Office. The Slants' name, the PTO explained, was the sort of "scandalous, immoral, or disparaging mark" for which the Lanham Act denies trademark protection.

That decision eventually led the Federal Circuit to strike down the act's "disparaging marks" provisions as unconstitutional viewpoint discrimination. That's a ruling that could reach well beyond The Slants -- and straight to the Redskins, the Washington, D.C. football team that has been fighting its own offensive name dispute for years.

Trademarks and Speech

There's "no question that through their music, The Slants are expressing views on social and political issues," Deputy Solicitor General Malcolm L. Steward, acknowledged at the start of his arguments on behalf of the government. And those songs themselves can be protected by copyrights. "If Congress attempted to prohibit them, either from having copyright protection or copyright registration on their music, that would pose a much more substantial First Amendment issue."

Copyright, Stewart explained, is meant to "foster free expression on matters of cultural and political, among other, significance." Here, we have trademarks, whose function is simply "to tell the public from whom the goods or services emanate. It is not expressive in its own right."

In establishing a government benefits under a government program, Stewart argued, Congress "is entitled to focus exclusively on the source identification aspect." Allowing disparaging names to be trademarked, Congress can decide, would distract from that.

But, Justice Breyer noted, many trademarks distract from their identification purposes without being offensive. "One of the great things of 99 percent of all trademarks is they don't just identify; boy, do they distract." And yet the government allows them to be registered.

Congress can determine that disparagement is "the wrong kind of distraction," Stewart responded.

What About Reclaimed Phrases?

The Slants are part of a long tradition of musicians recasting offensive or disparaging names as empowering ones. But that attempt to reclaim the "slant" name doesn't make much of a difference in the government's eyes, Stewart argued.

"Suppose," Justice Ginsburg posited, that "the application here had been for Slants Are Superior. So that's a complimentary term." Would that avoid the disparagement bar?

Probably not, according to Stewart. Racial epithets and terms "that have long been used as slurs for a particular minority group" would not survive under the PTO's historical practices.

Are Trademarks a Park?

Throughout oral arguments, the Court grappled with how the public forum doctrine might apply to the trademark program -- or whether it would apply at all. "If you're talking about a particular discussion venue," the Chief Justice noted, "that's one thing."

"If you're talking about the entire trademark program, it seems to me to be something else."

Chief Justice Roberts came back to that point when questioning John C. Connell, attorney for The Slants. "Does your argument depend on the breadth of the government program?" he asked, or would it apply as well to "a festival or lecture series," say one that demands only "pro-Shakespeare presentations."

In the limited forum of pro-Shakespeare lectures, that might not matter, Connell said, but here you have a widely available program whose rules target the "noncommercial aspect of speech."

"You want us to say that trademark is just like a public park," Justice Kennedy said, invoking the "classic example of where you can say anything you want." "We treat trademarks just like we treat speech in a public park. Thank you very much. Goodbye. That's it."

That is, in essence, the argument, Connell acknowledged.

Slander, Disparagement, and Trademarks: OMG

Justice Breyer seemed to take issue with the extent of speech protection The Slants were advocating. Could you stop trademarks from saying "Joe Jones is a jerk" or "Smith's beer is poison?" he asked. No, Connell responded.

"Oh my goodness," the justice said. "I mean, there are laws all over the place that stop you from saying that a competitor has bad products" or from wrongfully maligning others -- product disparagement laws, libel laws, slander laws. "But you're saying the government couldn't do that?"

Even libelous or slanderous speech still deserves trademark protection, Connell asserted. "That makes no sense," Justice Sotomayor responded. As Justice Alito noted, such speech has "never been regarded as having First Amendment protection."

Further, The Slants, Justice Sotomayor argued, aren't denied all protection; they could, for example, protect their name under the public confusion provisions on the Lanham Act, despite it being an unregistered mark. "You are asking the government to endorse your name to the extent of protecting it in a way that it chooses not to," Sotomayor said.

Other Names Unmentioned

For many observers, there was a bit of a pink elephant in the room. Or rather, a red one.

The Court's eventual decision will have far-reaching implications for many businesses (as well as potentially significant impacts on the Court's free speech jurisprudence), but it's most high-profile impact will be on the Redskins. That team lost its trademark protections after a federal judge upheld a finding that its marks were disparaging to Native Americans.

But there are also plenty of other businesses with offensive names, besides the Redskins. One Redskins brief filed with the Fourth Circuit during their litigation, included a list of 31 offensive trademark registrations, from "Boot Call sex aids" to "Redneck Army apparel."

It was the "Take Yo Panties Off defense," according to the Washington Post.

But, in today's arguments, the Take Yo Panties Off clothing brand thankfully never came up directly. Neither did the Redskins.

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