Those of fiendish or mischievous mind will have an easier
time registering trademarks after the Supreme Court on
Monday decided to reject as unconstitutional a rule against
disparaging ones. The high court's decision, authored by
justice Samuel Alito, holds that a Lanham Act provision
against such offensive trademarks is facially invalid under
the First Amendment.
"It offends a bedrock First Amendment principle," writes
Alito in
the opinion. "Speech may not be banned on the ground
that it expresses ideas that offend."
The free speech victory goes to Simon Tam,
the Asian-American frontman for The Slants who attempted to
register his rock band's name. He says he picked his band's
moniker in an effort to reclaim a stereotype. After
trademark examiners refused Tam's application, Tam brought a
lawsuit, and in December 2015, he prevailed at the United
States Court of Appeals for the Federal Circuit.
The Supreme Court has now affirmed the lower appeals
court's opinion, which is also potentially welcome news for
the NFL's Washington Redskins, whose own marks were canceled
for being disparaging to Native Americans. Thanks to the
development at the high court, entertainment companies can
feel more comfortable picking scandalous titles with
knowledge they'll be able to register trademarks to protect
associated merchandise.
Today's decision also has the potential of alleviating a
great amount of confusion as the U.S. Patent and Trademark
Office's response to offensive marks hasn't been
particularly consistent over the years. For example, N.W.A
the rap group also known as Niggaz Wit Attitudes was able
to register while actor Damon Wayans couldn't obtain "Nigga"
for clothing. Bravo's Queer Eye for the Straight Guy
and Channel Four's Queer as Folk were fine, but not
the registration from a group of lesbians who wished to sell
videos of a "Dykes on Bikes" parade. Alito notes in his
opinion that the "vagueness of the disparagement test and
the huge volume of applications has produced a haphazard
record of enforcement."
Alito acknowledges that even without registration, a
trademark a word or phrase that serves to identify the
source of one's goods or services may still be used in
commerce and enforced under state common law. But he adds
that registration confers important benefits including
notice to others, prima facie evidence of validity, and
potential incontestability.
The justice writes that a government entity often takes
viewpoints when embarking on a course of action, and that
free speech doesn't necessarily require "viewpoint
neutrality."
"But while the government-speech doctrine is important
indeed essential it is a doctrine that is susceptible to
dangerous misuse," he adds. "If private speech could be
passed off as government speech by simply affixing a
government seal of approval, government could silence or
muffle the expression of disfavored viewpoints. For this
reason, we must exercise great caution before extending our
government-speech precedents."
Alito goes on to reject the government's contention that
trademarks represent in any way the government's viewpoint.
He ridicules the notion that stamping approval means
expressing speech.
"For example, if trademarks represent government speech,
what does the Government have in mind when it advises
Americans to 'make.believe' (Sony), 'Think different'
(Apple), 'Just do it' (Nike), or 'Have it your way' (Burger
King)?" he asks. "Was the Government warning about a coming
disaster when it registered the mark 'EndTime Ministries'?"
He adds that when it comes to the registration of
copyright a different form of intellectual property that
covers original authorship accepting the government's
arguments about being forced into distasteful speech has
worrisome implications.
"The Government attempts to distinguish copyright on the
ground that it is the 'engine of free expression, but as
this case illustrates, trademarks often have an expressive
content," he writes. "Companies spend huge amounts to create
and publicize trademarks that convey a message. It is true
that the necessary brevity of trademarks limits what they
can say. But powerful messages can sometimes be conveyed in
just a few words. Trademarks are private, not government,
speech."
After shooting down the government's argument in this
regard, and another on why the government shouldn't be
forced to subsidize offending commercial speech, Alito comes
to an analysis on whether the Lanham Act's disparagement
clause is narrowly drawn to withstand constitutional
scrutiny. He concludes the clause is "far too broad,"
potentially interfering with those who might wish to
register "Down with racists" and "Down with sexists," as
examples.
"There is also a deeper problem with the argument that
commercial speech may be cleansed of any expression likely
to cause offense," he notes. "The commercial market is well
stocked with merchandise that disparages prominent figures
and groups, and the line between commercial and
non-commercial speech is not always clear, as this case
illustrates. If affixing the commercial label permits the
suppression of any speech that may lead to political or
social 'volatility,' free speech would be endangered."
All of the justices except Neil Gorsuch, who wasn't yet
on the Supreme Court
when the hearing was held and thus didn't participate
agreed with the main finding in the case.
In a concurring opinion, four of the justices led by
Anthony Kennedy write that the ban on disparaging trademarks
is "viewpoint discrimination" on the part of the government,
but with perhaps an eye to ensuring that other grounds for
refusing trademarks confusion or dilution, for instance
don't fall by the wayside, they attempt to distinguish the
Tam case and even the similar dispute concerning
the Washington Redskins. Ultimately, however, the sentiment
is similar that the government must be careful about
interfering with free speech.
"A law that can be directed against speech found
offensive to some portion of the public can be turned
against minority and dissenting views to the detriment of
all," writes Kennedy. "The First Amendment does not entrust
that power to the governments benevolence. Instead, our
reliance must be on the substantial safeguards of free and
open discussion in a democratic society."
http://www.hollywoodreporter.com/thr-esq/supreme-court-strikes-down-rule-disparaging-trademarks-1006208