Scandalous Trademarks and My Little Piece of Supreme Court History

Trademark law and the constitutional free speech guarantee clashed at the Supreme Court last month in Matal v. Tam, where an Asian-American rock band successfully appealed the denial of their trademark registration for the controversial name “The Slants”. I’m inordinately proud that the ACLU’s amicus brief for the winning side cited a scholarly essay I published in 1996, when I was a wee third-year student at Columbia Law. (Note that the publication year is incorrect in this link: I was pretty smart as a 4-year-old but I wasn’t writing for the Federal Circuit Bar Journal.) But first some background…

Federal registration of a trademark provides important economic and legal benefits to the trademark owner, including nationwide protection against infringement and a presumption in court that your trademark is valid. “Infringement” is when someone else uses your mark, or one very similar to it, on a competing or unrelated product, without permission. The Lanham Act is the federal law governing trademark registrations and lawsuits. A little-known provision of that law, Section 2(a), forbids registration of marks that are “immoral…or scandalous” or bring persons, institutions, beliefs, or national symbols “into contempt or disrepute”. Individuals or institutions can also sue after the fact to cancel a registration that allegedly violates Section 2(a).

Since 1992, Native American activists have been trying to use Section 2(a) to force cancellation of the “Washington Redskins” football team name, on the grounds that it is a racial slur and therefore immoral and disparaging. Their effort seemed to have paid off in 2015 when a federal District Court judge affirmed the Trademark Trial and Appeal Board’s decision to cancel the “Redskins” registration. Rather than take up that appeal, in 2016 the Supreme Court agreed to consider the constitutionality of Section 2(a) in the Tam case. Perhaps the High Court calculated that members of a minority group reclaiming an offensive word were better representatives of free speech than white franchise owners using a slur against somebody else.

As a poet, I’ve always been sensitive to the slippery, multivalent nature of words, and protective of their freedom to exceed and evade their official definitions. Fundamentalism, whether religious or political, is characterized by the claim that certain words and symbols have a single universal meaning. But words are not fixed objects to be fought over, so much as they are the territory where our battles for power and truth play out.

In my 1996 article, “Redskins and Scarlet Letters: Why “Immoral” and “Scandalous” Trademarks Should Be Federally Registrable” (6 Fed. Cir. Bar J. 191 [1996]), I made two main points. First, Section 2(a) is unconstitutional “viewpoint discrimination”. This is the most serious kind of free speech infringement because it affects political debate. The government should not take sides in the controversy over ideas and symbols in public life. The case law on Section 2(a) shows that it’s been applied in a vague and capricious manner. (This was the most fun part of the article to research. Condoms with American flags on them? Big Pecker Brand T-shirts? Madonna Wine? Are you scandalized yet?)

Second, as a policy matter, political change often happens by parodying or reinterpreting offensive terms, not only by banning them outright. The N-word is undeniably offensive when used by a non-black person, but can be a term of affection or self-assertion in black social life and popular music. “Queer” is firmly established now as a descriptive term for LGBT…not otherwise specified, even though some older gay men hate the term because it was used to insult them.

With commercial symbols and corporate-owned media comprising an ever greater part of our popular culture, the expressive aspect of well-known trademarks is not easily separable from their original commercial function to identify the source of goods. The more famous a mark is, the more its political and cultural significance overshadows its literal one. So it makes sense to bring First Amendment scrutiny to trademark law, especially in politically motivated lawsuits.

I’m happy to say that the courts agreed. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015), was the federal appeals court decision that went to the Supreme Court. (“In re” means “In the matter of” and the Federal Circuit is the court that hears trademark appeals.) Yours truly appears in footnote 2, pg.6. The court said:

Section 2(a) does not treat identical marks the same. A mark that is viewed by a substantial composite of the referenced group as disparaging is rejected. It is thus the viewpoint of the message conveyed which causes the government to burden the speech. This form of regulation cannot reasonably be argued to be content neutral or viewpoint neutral. The government’s argument also fails because denial of registration under ß 2(a) turns on the referenced group’s perception of a mark. Speech that is offensive or hostile to a particular group conveys a distinct viewpoint from speech that carries a positive message about the group…Section 2(a) is a viewpoint-discriminatory regulation of speech, created and applied in order to stifle the use of certain disfavored messages.

…This case exemplifies how marks often have an expressive aspect over and above their commercial-speech aspect. Mr. Tam explicitly selected his mark to create a dialogue on controversial political and social issues. With his band name, Mr. Tam makes a statement about racial and ethnic identity. He seeks to shift the meaning of, and thereby reclaim, an emotionally charged word. He advocates for social change and challenges perceptions of people of Asian descent. His band name pushes people. It offends. Despite this–indeed, because of it–Mr. Tam’s band name is expressive speech… Strict scrutiny must apply to a government regulation that is directed at the expressive component of speech. That the speech is used in commerce or has a commercial component should not change the inquiry when the government regulation is entirely directed to the expressive component of the speech.

The ACLU’s amicus brief to the Supreme Court cites my essay on pg. 34 of the PDF, and also includes some more shining examples of Section 2(a) weirdness: Wanker Beer (OK), Cum Perfume (not OK), BigCock energy drinks (not OK), OneFootCock alcoholic beverages (OK). I imagine that being a Patent and Trademark Office employee is a lot of fun some days.

The plain language of Section 2(a) requires viewpoint discrimination. The PTO’s determination that a proposed mark is “immoral,” “scandalous,” or “disparag[ing]” explicitly turns on whether some members of the public consider it offensive—even if others do not. The Supreme Court has repeatedly held that avoiding offensiveness is an impermissible government motivation that elevates certain viewpoints over others…

…That a single word can express multiple viewpoints is exemplified by this case. While some view the word “slants” as degrading, others—namely Mr. Tam and his band—see the term as a means of empowerment. The First Amendment does not permit the PTO to express preference for one view over the other. Indeed, by its very terms, Section 2(a) significantly hinders the practice of reappropriation, whereby marginalized groups reclaim use of a word that has been used to disparage them, often as part of a larger movement for social justice…

Reappropriation by its very nature involves strategic use of a word that is disparaging in the hopes that, over time, it will no longer be disparaging (at least in certain contexts). But Section 2(a) arrests that process, because it prevents use of a mark that is disparaging at the time the applicant wishes to register it—i.e., before the process of reappropriation has likely run its course. It is simply not the government’s role to disadvantage individuals who seek—whether successfully or not—to change the meaning of slurs or disparaging terms. This is viewpoint discrimination prohibited by the First Amendment.

Now that their trademark is about to be reinstated, I definitely hope the Redskins team owners bow to public opinion and respect Native peoples’ demand for a name change.

Just remember what they say at the fried chicken stand: “Only a Breast in the Mouth is Better Than a Leg in the Hand” (Bromberg v. Carmel Self Service, Inc., 198 U.S.P.Q. 176 [T.T.A.B. 1978]) (trademark cancelled under Section 2[a]).

 

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