AIPPI 2017: Simon Tam on ‘The Slants’ case and his love of Ruth Ginsburg
“How do you win a US Supreme Court case? Stop thinking like an attorney, and start thinking like an activist.”
Those were the sage words of Simon Tam, founding member of rock band The Slants and winner of a trademark dispute at the Supreme Court this year.
Yesterday, October 16, Tam told his story at the “Funny, bad taste or out of order? Morality and public order in trademarks” panel at the 2017 AIPPI World Congress in Sydney.
In June, the Supreme Court deemed the government’s ban on disparaging trademarks unconstitutional, overturning more than 70 years of legal practice and handing a win to The Slants.
The case centred on 15 USC section 1052 (section 2(a) of the Lanham Act), under which trademarks that are likely to disparage people, institutions or beliefs are barred from registration.
According to Tam, the initial rejection of his trademark was a “more convoluted way of saying anyone can register ‘The Slants’ as long as they’re not Asian”.
He added that when he attended the oral hearing of his case at the Supreme Court, he “felt so disconnected”.
Then, according to Tam, Justice Ruth Ginsburg said: “Doesn’t it matter that everybody knows The Slants are Asian? They’re not using the term to disparage but to describe and, in doing so, they’re removing the sting from the word.”
At this point, Tam said, he thought he was in love with Ginsburg.
Discussing his concerns, he added that: “If the US government truly cared about fighting racism … why didn’t they begin by cancelling the registrations of white supremacist groups?”
Mark Metzeling, head of trademarks at IP Gateway Patent & Trademark Attorneys, said ‘The Slants’ trademark could be registered in Australia.
“As the name of a band, the public is more accepting of what would traditionally have been viewed as a racial slur but it’s unlikely that it would be seen as a slur in today’s environment.”
Metzeling added: “I like to think that Australia is progressive enough that the word The Slants would not be seen as a racial slur as it may have in the 30s or 40s, and that today I consider this would be accepted as a registration without a section 42(a) ground of objection. I would be ashamed to see an objection raised on this ground.”
It may be a different story in China, according to Qiang Ma, counsel at Jun He Law Offices.
He said that an examiner could easily make a refusal, and cited a number of cases where trademarks had been rejected, including for the words ‘sporting’ and ‘gaming’.
“As long as the trademark contains a meaning that is not so good, they [the examiners] will cite this meaning against the trademark,” he concluded.
Luis Berenguer, head of the communication service at the European Union Intellectual Property Office (EUIPO), acknowledged that he was the “badguy” on the panel who blocks the registration of trademarks.
He went on to say that the EUIPO faces the complicating factor of taking into account the richness of the culture across 28 states and communities.
The 2017 AIPPI World Congress finishes today, October 17.
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