Lee v. Tam

[quincy]

To be heard by the US Supreme Court is an interesting case involving trademark law and the First Amendment. Lee v. Tam centers on the United States Patent and Trademark Office's refusal to federally register the name of the musical group The Slants, saying the name violates the Lanham Act's 15 USC 1052(a).

The Lanham Act's section 1052 states that a mark will not be registered if it disparages "persons, living or dead, institutions, beliefs or national symbols, or brings them into contempt or disrepute." The USPTO said the name The Slants disparages Asians. Here is a link to 15 USC 1052: https://www.law.cornell.edu/uscode/text/15/1052

Following is a link to the Scotus Blog with information on Lee v. Tam and the case files. The case has not yet been set for argument. http://www.scotusblog.com/case-files/cases/lee-v-tam/

The Washington Redskins will be following this case as their trademark was recently cancelled by the USPTO for the same reason that the USPTO has denied registration of The Slants.

 

[FlyingRon]

Not only are they following it, they filed an amicus curiae brief on the subject:

http://www.scotusblog.com/wp-content/uploads/2016/06/15-1293acPro-FootballInc.pdf

 

[adjusterjack]

I find it ironic that the director of the USPTO is also Asian. I wonder if she had a personal axe to grind when registration of "The Slants" was denied. I don't imagine that she gets involved with too many denials but my guess is that this application was brought to her attention.

 

[quincy]

The Washington Redskins case was not chosen by the Supreme Court nor would the Supreme Court hear the cases together. The Court instead opted to hear the Tam case. I think this choice by the Court might have influenced the way Pro-Football, Inc's amicus curiae was written.

Michelle Lee is the director of the USPTO and, according to The Washington Post, she was the one who wanted the Supreme Court to review The Slant trademark denial. She has expressed a fear of what will happen if changes are made to section 1052. If the prohibitions are tampered with too much, this could lead to the registration of a slew of offensive marks.

The Slants, as a note, are an Asian-American musical group.

 

[FlyingRon]

The ethnicity of Ms. Lee really ought not to be an issue (nor should that of the proponents, other than that they argue not being able to coopt the name inhibits their ability to express themselves under the first amendment). She can express her opinion of what the law should be, but she is tasked with administering it as it is written. The issue is that this is somewhat unusual in that the lower court really hasn't ruled on any of this, Tam makes a compelling argument as to why the court should hear this NOW.

 

[quincy]

The ethnicity of Ms. Lee really ought not to be an issue (nor should that of the proponents, other than that they argue not being able to coopt the name inhibits their ability to express themselves under the first amendment). She can express her opinion of what the law should be, but she is tasked with administering it as it is written. The issue is that this is somewhat unusual in that the lower court really hasn't ruled on any of this, Tam makes a compelling argument as to why the court should hear this NOW.

It would be hard on a trademark holder to establish a brand, register a mark and, years down the road, have their trademark cancelled because the name they have used as an identifier for their goods/services, and that has developed widespread consumer recognition, has with the passage of time been recognized as a slur, being used to disparage others.

Likewise, it would be hard for a trademark holder to establish their brand among consumers and not be able to register their trademark because someone at the USPTO deems it offensive.

I am not sure it should be the USPTO's role to decide what is or is not disparagement, although I share Lee's fear of the trademark registrations to come if there is no prohibition at all. I suppose if a trademark is truly offensive, the trademark holder's product or service will die a natural death (or the trademark holder sued into oblivion) and the trademark will eventually die along with the business.

 

[FlyingRon]

I didn't say otherwise. However, the law doesn't need concern itself about the economic effects that a trademark might be revoked. When that section was added it is presumed Congress and the President knew what they were doing. The only matter is that does it exceed the Constitutional authoirty for such law to be enacted.

Tam's case is richer than Dan Snyder's which makes it a better case for the court to decide out of turn. Not just arguing that restraining the registration of an allegedly disparaging mark itself violates the first, Tam argues that the statute is unconstitutionally vague (including that it may not be disparaging in all circumstances) and that not being able to coopt the disparaging term (he does not argue that the term in some applications IS disparaging which is why he chose it), restricts his ability to further express his first amendment rights to content related to it.

Right now we really only have the petition for cert (and the skin's amicus brief in support of cert), but on its face, it sounds like a pretty compelling argument. What we have from the govenment's side is an argument that the case doesn't meet the requirements for cert (filed by the Solicitor General, this is pretty much a pro forma defense of the government's actions and doesn't necessarily reflect the views of the USPTO or the administration even on ths subject). While this brief argues some of the points, it mostly is targetted at arguing the case doesn't merit cert.

What will be interesting is when the actual briefs that the decision will be made on will be filed coupled with the briefs which really are going to be compelling likely to be filed by minority groups in defense of why the disparagement rule needs to be there and doesn't conflict with the Constitution.

This one is going to be interesting. It appears to be a rather non-partisan issue so your usual liberal v. conservative arguments (especially given the understrength status of the current court) aren't going to play.

 

[quincy]

... Tam argues that the statute is unconstitutionally vague (including that it may not be disparaging in all circumstances) and that not being able to coopt the disparaging term (he does not argue that the term in some applications IS disparaging which is why he chose it), restricts his ability to further express his first amendment rights to content related to it ...

I see the Court in Tam wrestling with "disparagement" in much the same way they did when trying to determine what constituted obscenity. I doubt that the Court will simply accept for the USPTO a Justice Potter Stewart's "I know it when I see it" test* for disparagement.

Using disparagement as a factor in deciding what trademarks are acceptable for registration and what trademarks aren't is clearly problematic. Whether words are disparaging or derogatory or defamatory depends not only on the definitions used but also and in large part on contemporary community standards and current public opinion, neither of which are easy to predict. Think, for example, of the many connotations of "gay" over the years, from joyous to criminal to sexual orientation.

In McBeth v. United Press International, Inc., 505 F.2d 959 (5th Cir 1974), the Court said "words harmless in one age, in one community, may be highly damaging to reputation at another time or ... place."

Therein lies the conundrum. I do not see how a uniform national standard can be applied to trademark law any more than it can be applied to defamation law. What must be considered are community standards (consistent with basic federal principles of free speech) and community standards are not uniform.



*Jacobellis v. Ohio, 378 US 184 (1964)

 

[lucasevans]

Is the case closed?

 

[Ohiogal]

Is the case closed?

Yes. The Supreme Court ruled this week for Tam and said it is a violation of speech to not allow this trademark.

 

[quincy]

Yes. The Supreme Court ruled this week for Tam and said it is a violation of speech to not allow this trademark.

And it was a smart decision. I do not see how it could have been decided otherwise.

 

[Ohiogal]

And it was a smart decision. I do not see how it could have been decided otherwise.

Not disagreeing with it. If anyone wants to read it, it is available on the SCOTUS website.

 

[quincy]

Not disagreeing with it. If anyone wants to read it, it is available on the SCOTUS website.

The case also can be accessed through the scotusblog link provided in my first post.


Update: On June 29, the Justice Department withdrew their challenge to the registration of the Washington Redskin trademark, based on the US Supreme Court decision in Lee v. Tam. The US Patent and Trademark Office has allowed the NFL's registration of the Redskin mark.