I had only become aware of this case because of the debacle involving the Washington Redskins, and just after the ruling discussed here, the Los Angeles Times reported that the Department of Justice decided to end its legal battle with the Washington Redskins given this ruling. It’s only smart to withdraw when you know you have no path to victory.
In the ruling, the SCOTUS articulates that federal registration is not required for the use of a trademark in commerce, but it helps establish its legitimacy, solidifies the exclusivity of the brand to use that mark however they choose, and it makes it impossible for anyone else to develop or market something similar or identical to it without infringing on copyright.
While not all brands have opted for federal registration of their mark, those with the means to do so, will. Whether it be the Washington Redskins or The Slants, they should be able to defend their intellectual property against someone else using it in an unauthorized way.
As stated in their blog, the band’s name was both political and activist in nature:
When I started this band, it was about creating a bold portrayal of Asian American culture. The establishment of an Asian American band was a political act in of itself, even though we never considered ourselves as a political group. However, as we continued writing music about our experiences, we realized that activism would be integrated into our art as well. I’m proud our band members have helped raise over $1 million for issues affecting Asian Americans, that we’ve worked with dozens of social justice organizations, and that we could humanize important issues around identity and speech in new and nuanced ways. So we became part art and part activism.
I may not be a lawyer, but I recognize a free speech issue when I see it. I also recognize the irony of the government’s inability to sanction a brand because its name could be considered offensive, disrespectful, or immoral, when it can refuse to award a trademark to a brand under those same conditions.
Both brands’ legal battles center around Section 1052(a) of the Lanham Act, which sets the criteria under which a trademark is evaluated. There are plenty of legitimate reasons for a trademark’s application to be denied, but this one is highly suspect:
(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
Layman’s terms: If the government feels that the trademark could offend, disparage, or make someone or something look bad, it can deny the application.
As we’ve learned, the ‘disparagement clause’ violates the Free Speech Clause because (A) trademarks are considered private speech, and (B) the government cannot discriminate on the basis of viewpoint or preference. To me, this should have been a no-brainer consider the breadth of precedent behind the government chilling of speech on the grounds of viewpoint discrimination, but the government did their best to complicate it by making three core arguments:
- That awarding the trademark is a form of government-subsidized speech. In other words, because a brand registers trademarks for federal protections, thereby meeting the requirements set forth in the Lanham Act, the government is supporting it. I can’t think of any brand whose trademark is receiving any kind of government support or endorsement, which is different than ideas or concepts, which cannot be trademarked.
- The trademark database functions as a public forum in the same way that a library might provide a conference room for the purposes of private speech. The trademark database only exists to provide federal protections that extend beyond state and common law, versus a forum where people may exercise their First Amendment rights. Furthermore, the trademark itself is simply a record in a database; there is no speech invoked.
- The fact that a trademark is a form of commercial speech and commercial speech is subject to a different test than consumer speech. Even with commercial speech, the speech has to be shown to be protected by the First Amendment, has to speak about something lawful and not deceptive, and it has to pass strict scrutiny. We’ve already established that trademarks are private speech that fall under First Amendment protection, there’s nothing illegal or deceptive about applying for federal registration protection as part of commerce, and the disparagement clause’s (as shown by this case) criteria isn’t narrowly tailored to achieve that interest.
Reading the transcript of oral arguments was interesting. Neither party advanced monumental arguments and the justices made some interesting points about how the band may use their name in commerce, how their songs can be whatever they want them to be, and that federal registration mostly strengthens protections, versus creating them outright. In the end, free speech won again; The Slants’ name is protected from infringement, along with the Washington Redskins, and any other brand whose name might land them in the same territory.