Supreme Court News

'Disparaging' Trademarks Decision

The U.S. Supreme Court decided that the Lanham Act's prohibition against “disparaging” marks violated the First Amendment free speech rights of the Asian-American rock band The Slants. Matal v. Tam, 15-1293 (June 19, 2017). The 8-0 decision ended a long battle by band founder Simon Tam, who asserted, in words and song, that he picked the name “Slants” not to disparage Asian-Americans, but to “reappropriate” the term as a badge of Asian-American pride — in the same way that the term “queer” has become a positive expression among LGBTQ individuals.

Initial reaction to Matal suggested that the trademark bar and the public should brace for a wave of distasteful trademark applications. It's not unusual, for example, for band names to be more than provocative. “It seems this decision will indeed open the floodgates to applications for all sorts of potentially offensive and hateful marks,” said Orrick, Herrington & Sutcliffe law partner Lisa Simpson. “While this may be the right result under the First Amendment … it seems the responsibility will now pass to the public. Trademark is a consumer-based law. And so it will be up to consumers to reject the most hateful of these marks and slogans.”
The decision was also good news for the Washington Redskins. A Virginia federal district court had ordered cancellation of the football team's federal trademark registrations. Pro-Football Inc. v. Blackhorse, 112 F. Supp. 3d 439 (E.D.Va. 2015). That case is pending before the U.S. Court of Appeals for the Fourth Circuit.

“Surely, the Redskins will expeditiously push for the review of their pending appeal by the Fourth Circuit citing this decision, and it is likely that case will never get to the Supreme Court,” said Boies Schiller Flexner partner Josh Schiller.

Catherine Farrelly, of the law firm Frankfurt Kurnit Klein & Selz, said the ruling was historic because the court struck down “a provision of the Trademark Law that has been in force — and enforced — for more than 70 years.”

The U.S. Patent and Trademark Office in 2011 had refused to register “The Slants” because of the Lanham Act provision. The U.S. Court of Appeals for the Federal Circuit in 2015 agreed with The Slants that the restriction violated free speech protections. In re Simon Shiao Tam, 808 F.3d 1321 (Fed. Cir. 2015).

At the U.S. Supreme Court, Justice Samuel Alito Jr., writing for the full court, rejected the government's argument that registered trademarks amounted to government speech, which would take trademarks out of First Amendment scrutiny. “If the federal registration of a trademark makes the mark government speech, the federal government is babbling prodigiously and incoherently,” Justice Alito wrote.

For differing reasons, the court proceeded to rule that the disparagement clause of the Lanham Act is unconstitutional. “Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express 'the thought that we hate,'” Justice Alito wrote.

Justice Anthony Kennedy added in a concurrence: “To permit viewpoint discrimination in this context is to permit government censorship.”

John Connell, of the Haddonfield, NJ, office of Archer & Greiner, served as The Slants' pro bono counsel. His representation of the Oregon-based band came about because a colleague of Connell's, Ronald Coleman, blogged about the case.

— Tony Mauro, ALM Media
High Court Declines Takedown Notice/Fair Use Case

Denying a petition for writ of certiorari, the U.S. Supreme Court let stand a U.S. Court of Appeals for the Ninth Circuit decision that said issuers of takedown notices aren't liable under the Digital Millennium Copyright Act (DMCA) unless they actually knew that the material did not infringe their copyright, or were willfully blind to that knowledge. Lenz v. Universal Music Corp., 16-217.

The denial was a loss for the Electronic Frontier Foundation's (EFF) bid to lower the standard for proving that the removal of content from YouTube and other platforms was unreasonable. EFF and outside counsel at San Francisco-based Keker & Van Nest had argued that the Ninth Circuit decision in Lenz v. Universal Music Corp., 801 F.3d 1126 (2015), “gives a free pass to the censorship of online speech, particularly fair uses.” They asked that the Supreme Court take the Lenz case to determine, once and for all, whether or not the DMCA includes meaningful protections for online fair uses.”

The case dates back to 2007, when Universal Music instructed YouTube to take down Stephanie Lenz's 29-second video of her kids dancing to Prince's “Let's Go Crazy.” Universal said the video infringed Prince's song copyright.

Lenz sued on the ground that the video was a fair use. The Ninth Circuit ruled that Universal and other copyright holders must consider fair use when sending a takedown notice. But the appeals court also ruled that the copyright holder's own subjective belief that a use isn't fair meets the standard.

Both sides petitioned for certiorari. Universal argued that Lenz never had any concrete damages that gave rise to standing. The Supreme Court denied certiorari in Universal's case last fall.

At the time this article was written, EFF Legal Director Corynne McSherry said she had not had time yet to consult with Lenz as to whether they would now seek a trial in San Jose federal court.

— Scott Graham, The Recorder

'Disparaging' Trademarks Decision

The U.S. Supreme Court decided that the Lanham Act's prohibition against “disparaging” marks violated the First Amendment free speech rights of the Asian-American rock band The Slants. Matal v. Tam, 15-1293 (June 19, 2017). The 8-0 decision ended a long battle by band founder Simon Tam, who asserted, in words and song, that he picked the name “Slants” not to disparage Asian-Americans, but to “reappropriate” the term as a badge of Asian-American pride — in the same way that the term “queer” has become a positive expression among LGBTQ individuals.

Initial reaction to Matal suggested that the trademark bar and the public should brace for a wave of distasteful trademark applications. It's not unusual, for example, for band names to be more than provocative. “It seems this decision will indeed open the floodgates to applications for all sorts of potentially offensive and hateful marks,” said Orrick, Herrington & Sutcliffe law partner Lisa Simpson. “While this may be the right result under the First Amendment … it seems the responsibility will now pass to the public. Trademark is a consumer-based law. And so it will be up to consumers to reject the most hateful of these marks and slogans.”
The decision was also good news for the Washington Redskins. A Virginia federal district court had ordered cancellation of the football team's federal trademark registrations. Pro-Football Inc. v. Blackhorse , 112 F. Supp. 3d 439 (E.D.Va. 2015). That case is pending before the U.S. Court of Appeals for the Fourth Circuit.

“Surely, the Redskins will expeditiously push for the review of their pending appeal by the Fourth Circuit citing this decision, and it is likely that case will never get to the Supreme Court,” said Boies Schiller Flexner partner Josh Schiller.

Catherine Farrelly, of the law firm Frankfurt Kurnit Klein & Selz, said the ruling was historic because the court struck down “a provision of the Trademark Law that has been in force — and enforced — for more than 70 years.”

The U.S. Patent and Trademark Office in 2011 had refused to register “The Slants” because of the Lanham Act provision. The U.S. Court of Appeals for the Federal Circuit in 2015 agreed with The Slants that the restriction violated free speech protections. In re Simon Shiao Tam, 808 F.3d 1321 (Fed. Cir. 2015).

At the U.S. Supreme Court, Justice Samuel Alito Jr., writing for the full court, rejected the government's argument that registered trademarks amounted to government speech, which would take trademarks out of First Amendment scrutiny. “If the federal registration of a trademark makes the mark government speech, the federal government is babbling prodigiously and incoherently,” Justice Alito wrote.

For differing reasons, the court proceeded to rule that the disparagement clause of the Lanham Act is unconstitutional. “Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express 'the thought that we hate,'” Justice Alito wrote.

Justice Anthony Kennedy added in a concurrence: “To permit viewpoint discrimination in this context is to permit government censorship.”

John Connell, of the Haddonfield, NJ, office of Archer & Greiner, served as The Slants' pro bono counsel. His representation of the Oregon-based band came about because a colleague of Connell's, Ronald Coleman, blogged about the case.

— Tony Mauro, ALM Media
High Court Declines Takedown Notice/Fair Use Case

Denying a petition for writ of certiorari, the U.S. Supreme Court let stand a U.S. Court of Appeals for the Ninth Circuit decision that said issuers of takedown notices aren't liable under the Digital Millennium Copyright Act (DMCA) unless they actually knew that the material did not infringe their copyright, or were willfully blind to that knowledge. Lenz v. Universal Music Corp., 16-217.

The denial was a loss for the Electronic Frontier Foundation's (EFF) bid to lower the standard for proving that the removal of content from YouTube and other platforms was unreasonable. EFF and outside counsel at San Francisco-based Keker & Van Nest had argued that the Ninth Circuit decision in Lenz v. Universal Music Corp. , 801 F.3d 1126 (2015), “gives a free pass to the censorship of online speech, particularly fair uses.” They asked that the Supreme Court take the Lenz case to determine, once and for all, whether or not the DMCA includes meaningful protections for online fair uses.”

The case dates back to 2007, when Universal Music instructed YouTube to take down Stephanie Lenz's 29-second video of her kids dancing to Prince's “Let's Go Crazy.” Universal said the video infringed Prince's song copyright.

Lenz sued on the ground that the video was a fair use. The Ninth Circuit ruled that Universal and other copyright holders must consider fair use when sending a takedown notice. But the appeals court also ruled that the copyright holder's own subjective belief that a use isn't fair meets the standard.

Both sides petitioned for certiorari. Universal argued that Lenz never had any concrete damages that gave rise to standing. The Supreme Court denied certiorari in Universal's case last fall.

At the time this article was written, EFF Legal Director Corynne McSherry said she had not had time yet to consult with Lenz as to whether they would now seek a trial in San Jose federal court.

— Scott Graham, The Recorder