Implications of U.S. Supreme Court Justices' Comments During 'Slants' Trademark Dispute Oral Arguments

The tenor of the oral arguments may be good news for the Washington Redskins, whose trademark was cancelled in 2014 under the same law because the name was viewed as disparaging to Native Americans. Blackhorse v. Pro-Football Inc., Cancellation No. 92046185 (Trademark Trial and Appeal Board 2014). That case is pending before the U.S. Court of Appeals for the Fourth Circuit.

In The Slants case, band founder Simon Tam has insisted, in words and song, that he picked the name not to disparage, but to “reappropriate” the term as a badge of Asian-American pride — just as the term “queer” has been adopted and transformed into a positive expression.

The Federal Circuit in 2015 agreed with The Slants that the §2(a) restriction violated free speech protections, prompting the government's appeal to the Supreme Court. Members of the Oregon-based rock band were present at the oral argument, having crowd-sourced money for their trip with an online campaign.

Also in the courtroom was George Conway III of Wachtell, Lipton, Rosen & Katz, prominently mentioned as a possible solicitor general in the Trump administration. Outgoing Acting Solicitor General Ian Gershengorn was present in the court too, arguing another case and also moving for the admission of his wife to the Supreme Court bar.

Justices Weigh In

To Justice Breyer, the ban on disparaging trademarks seemed unrelated to the objectives of trademark protection, and even worse, was an unconstitutional form of viewpoint discrimination. “You can say something nice, but not something bad,” he said.

Justice Elena Kagan agreed, lamenting that if she wanted to trademark “All politicians are corrupt,” or “Democrats are corrupt,” she could not do so, “even though I could get a mark saying that all politicians are virtuous, or that all Democrats are virtuous.”

Justice Ruth Bader Ginsburg was also critical of the vagueness and inconsistent enforcement of the law, noting that the word “Hebe,” an anti-semitic slur, was “OK in one application and it was not OK in another.”

Deputy Solicitor General Malcolm Stewart responded that with 300,000 trademark applications annually, “It's not surprising that there is some potential inconsistency.”

At which point Justice Sonia Sotomayor chimed in: “Isn't it another way to say it's not clear enough for them to get it right?”

Slants Decision Implications

The Slants case could have broader ramifications for the Lanham Act, says University of Notre Dame School of Law professor Mark McKenna. “If the court follows the Federal Circuit and declares the statutory provision unconstitutional because it is content- and viewpoint-based,” McKenna says, “it will have difficulty distinguishing this particular provision from much of the rest of the Lanham Act, which is pervasively content-based.”

Stewart defended the disparagement clause, asserting that The Slants can still use the name and can even benefit from an unregistered trademark. Rather than a violation of the First Amendment, Stewart said the ban is “a reasonable limit of access to a government program.”

John Connell of Archer & Greiner, a New Jersey firm, represented The Slants and relied on the argument that the “disparagement” provision targets the “non-commercial” aspect of a trademark registration. In one exchange, Justice Anthony Kennedy asked if the case would be different if The Slants band was composed of non-Asians who did in fact want to make fun of Asians.

Connell said the government still could not deny a trademark for such a band.

“The First Amendment protects absolutely outrageous speech insofar as trademarks are concerned?” Kennedy asked.

“That is correct,” Connell said.

“I think you have to take that position,” Kennedy replied.

Takeaways

Here are four takeaways from the oral arguments heard by the U.S. Supreme Court:

1. The Supreme Court's decision could reach beyond “disparaging” trademarks.

Though the question presented concerns only §2(a)'s disparagement provision, the justices also asked about similar provisions that ban registration of “immoral” and “scandalous” registrations.

“Would you say the same thing about a scandalous mark? Would that be equally impermissible?” Justice Ruth Bader Ginsburg asked John Connell.

“I think that conclusion is inevitable,” Deputy Solicitor General Stewart said, without challenge from the justices.

Fenwick & West trademark partner Eric Ball, who's not involved in the case, says the justices pushed hard on both sides' arguments and will probably craft a narrow decision. But if they agree with Tam that disparaging marks can't be banned, “the natural road” will lead toward “immoral and scandalous not being OK as well.”

2. Erik Brunetti must be feeling pretty good about his “FUCT” mark.

Brunetti is the creator of Fuct Manufacturing Co.'s “Same Shit Different Day” line of clothing. His application to register FUCT was rejected on grounds it is scandalous. Brunetti's appeal to the U.S. Court of Appeals for the Federal Circuit was argued more than a year ago and is on hold pending the outcome of Tam. Hundreds of similar applications at the USPTO, including for marks such as SHUT THE FUCK UP, are awaiting the Federal Circuit's decision in Brunetti.

3. The Supreme Court might split the baby.

The justices appeared to have serious doubts about the constitutionality of the disparagement provision, but sounded almost equally hesitant to throw it out altogether.

Suppose The Slants band were made up of non-Asians who use makeup to exaggerate slanted eyes and taunt Asians during their performances, Justice Kennedy asked Connell. Could the government “under a properly-drawn statute” refuse to register a trademark in that circumstance? Chief Justice John Roberts and Justice Stephen Breyer pressed Connell on whether a more limited government program could pass muster.

Fenwick's Ball thinks it's possible the court might find §2(a) unconstitutional as applied to The Slants, but pass on whether it's unconstitutional on its face.

Federal Circuit Judge Timothy Dyk staked out a similar position in his concurrence/dissent on the ground that “The Slants” is more political expression than pure commercial speech. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015). If that's where the court ends up, Tam could get his registration while the Washington Redskins might still face an uphill battle.

4. Both sides could have used a few more moot courts.

Justice Kennedy began the arguments event by asking Deputy Solicitor General Stewart if the U.S. Copyright Office could reject books or movies it finds offensive. That shouldn't have been surprising. The same line of questioning dominated the Tam case arguments at the Federal Circuit.

Stewart's response — that copyrights are more associated with expression than trademarks — was quickly shot down. “We have T-shirts and logos and rock bands and so forth that are expressing a point of view,” Justice Kennedy said.

Stewart also compared the trademark ban to a public university that sets aside a room where no racial epithets or personal attacks are allowed. That played about as well as might be expected with the conservative justices. “So the government is the omnipresent schoolteacher?” Justice Kennedy asked. “Is that what you're saying?”

The First Amendment maximalist position taken by Tam's attorney Connell didn't play well either. The USPTO can't even stop a beverage company from labeling its competitor's drink “poison,” he told the court. “Oh my goodness,” Justice Breyer replied. “There are laws all over the place that stop you from saying that a competitor … has bad products.”

If Connell turns out to be right, the Supreme Court would have a lot of laws to strike down.

***** Tony Mauro is the U.S. Supreme Court Correspondent for ALM. He can be reached at [email protected]. Scott Graham is the Appellate Reporter for The Recorder, the San Francisco-based ALM sibling of this newsletter. He can be reached at [email protected].