“A man has a property in his opinions and the free communication of them.” - James Madison (1792).
Known as the ‘Father of the Constitution’, Madison’s passion for free speech is ratified at the heart of the United States. His words came at a time before speech could become a form of property through, for instance, federal trade mark registration. A recent case at the US Supreme Court, Matal, Interim Director, USPTO v. Tam (19 June 2017), deals with the relationship between free speech and trade marks, ruling that trade marks are a form of private speech over which the government has no place in preventing registration if their message may be perceived by some to be disparaging to an institution or certain group of persons.
Simon Tam, the lead singer of “The Slants”, an Asian-American rock band formed in 2006, is the proprietor of US Trade Mark Application No. 85472044 for THE SLANTS, filed on 14 November 2011. The band chose the name with a view to reclaiming the term from its historic usage as a derogatory term for Asians, forming part of the band’s broader social justice activities.
The USPTO had refused Tam’s application on 6 January 2012, invoking Section 2(a) of the Lanham Act (the US Trade Mark Act of 1946). Section 2(a) contains the “disparagement clause”, wherein marks are prohibited from registration if they are deemed to be disparaging towards an identifiable group of persons, institutions, beliefs, or national symbols. In this case, the USPTO noted that the term “slants” has long been used as a derogatory term, citing a publication issued by the Japanese American Citizens League (a large Asian American civil rights organisation), which states that the term “slant” is derogatory and should not be used, as well as evidence that the band had a performance cancelled in Oregon owing to its use of the term. The USPTO acknowledged Simon Tam’s intentions to reappropriate the term, but argued that intention to disparage was not necessary for a group to be disparaged. Tam attempted (unsuccessfully) to appeal the decision before both the Examining Attorney and the USPTO’s Trademark Trial and Appeal Board (TTAB), before taking his case to the Federal Court. It was here that the mark was ruled admissible, a view affirmed last month by the Supreme Court.
In the Supreme Court’s ruling, it was held that the disparagement clause of the Lanham Act engages in viewpoint discrimination and therefore violates the Free Speech Clause of the First Amendment.
The First Amendment forbids the government to regulate speech that it disapproves of due to the perspective that the speech conveys; in the words of the Court, it is necessary that the government be “viewpoint-neutral”. One important exception to this rule is ‘government speech’. Contrary to the arguments of the USPTO which stated that, through examining and accepting trade marks for registration, the marks come to reflect the views of the Federal Government, the Supreme Court rejected the notion that trade marks are ‘government speech’ as “far-fetched”. The Court emphasised that the Government has no part in the creation or use of a trade mark and, were trade marks to embody the views of the Government, the Government would be “babbling prodigiously and incoherently” through “unashamedly endorsing a vast array of commercial products and services”.
The Court proceeded to argue that the disparagement clause is far too broad. Though designed to prevent derogatory speech that could disrupt commerce, the clause plausibly prohibits disparagement to any persons or institutions, past or present. Accordingly, the Court queried how the disparagement of e.g. deceased presidents could disrupt commerce today. For these reasons, the disparagement clause of the Lanham Act has been deemed unconstitutional. Justice Kennedy concluded that permitting viewpoint discrimination in this way within the context of the free market was akin to permitting Government censorship.
The gravity of the Supreme Court’s decision has a number of far-reaching implications. In the first instance, previous decisions where trade marks have been refused/cancelled in the US based on Section 2(a) are likely to be appealed. For example, a case involving US football team the Washington Redskins which was suspended pending the outcome of Matal v. Tam is likely to result in the team being allowed to maintain its trade mark registrations for the word REDSKINS, despite attempts by third parties to have these cancelled on the grounds that the term is disparaging to Native American Indians. Indeed, since the Supreme Court’s ruling the group of Native Americans that have been pushing for REDSKINS to be cancelled have concluded that the decision in Matal v. Tam is “controlling” and have ended their legal battle against the Washington Redskins.
Secondly, the case has raised a number of questions, for which there are not yet any answers. Where does this leave the rest of Section 2(a), which also prohibits the registration of “immoral, deceptive, or scandalous matter”? Where is the line between a mark that is disparaging, and a mark that is immoral? Who identifies that line? Though the Supreme Court’s ruling affirmed the Federal Court’s decision, it has not cleared up any of these surrounding issues. It is likely that entities will be emboldened by the decision and file for marks that increasingly toe this line between being disparaging and immoral/scandalous, leaving the USPTO having to work out the answers to these questions. Indeed, on the day that the Supreme Court’s ruling was published, there was a flurry of offensive trade mark applications filed at the USPTO.
Beyond the US, UK and EU law contains provisions prohibiting the registration of trade marks “contrary to public policy or to accepted principles of morality”. However, different Intellectual Property Offices across Europe have different perspectives on what is permitted and what is excluded under the clause, with the EUIPO refusing considerably more marks than, for instance, the Benelux Office, which has allowed registrations that include vulgar terms deemed unacceptable by other IP Offices.
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