Free speech: where to draw the line

When Simon Tam was posting adverts online looking for band members in 2004, nobody could possibly tell the colossal impact he would soon have on the trademark world.

After gathering members and gigging around Ohio, he opted to name his group The Slants.

He stated in several interviews that, among other things, this was a way of reclaiming a derogatory term for Asian people.

This factor led to his subsequent trademark application being rejected by the US Patent and Trademark Office (USPTO), as it was “likely to disparage people of Asian descent” under section 2(a) of the Lanham Act.

Tam later appealed, but a three-judge panel at the US Court of Appeals for the Federal Circuit ruled in favour of the USPTO.

He was able to use the name, as this use constituted free speech, but he could not be awarded trademark protection.

The case went all the way to the US Supreme Court, which ruled in favour of Tam and his band in June.

The judges agreed unanimously in Matal v Tam that the disparagement element of section 2(a) of the Lanham Act violated the First Amendment’s free speech provision, overturning more than 70 years of legal practice.

“Holding that the registration of a trademark converts the mark into government speech would constitute a huge and dangerous extension of the government-speech doctrine,” said Justice Samuel Alito in his decision.

“If the registration of trademarks constituted government speech, other systems of government registration could easily be characterised in the same way.”

What now for ‘Redskins’?

Instantly, speculation on the ruling’s immediate and long-lasting effects on the industry was rampant.

One of the biggest impacts could be felt just over ten miles away from the Supreme Court at FedExField, Washington, DC, home of the National Football League (NFL) team the Washington Redskins.

The side had its ‘Redskins’ trademarks cancelled in 2014 under the same section of the Lanham Act, after complaints from Native Americans.

Despite the Supreme Court refusing to hear the Redskins’ dispute, the football team will undoubtedly be pleased with the Matal result, with the group of Native Americans who were originally behind the cancellation bid of the ‘Redskins’ trademarks withdrawing their case in July.

Ralph Cathcart, lead partner at Ladas & Parry, says of the Matal ruling: “The Supreme Court has effectively held that trademark applications and registrations are personal speech and not government speech and that the Lanham Act cannot restrict such speech based on content, so long as the trademark can act as a source indicator.”

He adds: “The decision portends a favourable result now for the owners of the NFL football team known as the Redskins, whose trademarks likewise have been challenged as derogatory, racist and offensive under the same disparagement clause.”

Tam’s immediate reaction was to encourage the Redskins to drop their name voluntarily.

In a statement on Facebook he claimed that if something is permissible, “it doesn’t mean it’s the right thing” and added that it’s the football team’s “social responsibility” to drop their name.

There are worries that the latest decision will open the door for those who want to register hateful messages and may not have social responsibility at the front of their minds.

“I can’t help but view the Tam decision in the context of the broader cultural wars that are occurring,” says Jon Moskin, partner at Foley & Lardner.

“On college campuses there are very strong movements by students to require trigger warnings on books that contain offensive content, and there have been vociferous protests across the US trying to shut down speakers, while at the same time there is a great increase in hate speech against minorities, use of Swastikas and so forth. So, in some ways there has been a real coarsening of political speech.

“Even though it is now possible to register offensive trademarks, I don’t expect many will receive great commercial success, since they were just as free before the decision to use offensive terms in commerce. It doesn’t change that but does embolden hate groups to seek to protect their names.”

He adds that a paradoxical effect could be to suppress free speech. “If I’m a hate group and own a trademark registration for a hateful message, I can now feel justified in filing a lawsuit against a civil rights group condemning use of that word,” he says.

Section 2(a) states that a trademark shall be rejected if it 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.

The Matal ruling struck down the disparagement element of the act. For now, the rest of the act remains intact.

What is offensive?

Opposition to the ruling will say that not all speech is protected by the First Amendment. There are laws on libel and inciting violence, to name but a few, so where the proverbial line on what language is deemed offensive is drawn is at the centre of the case.

Moskin believes that the USPTO will struggle to distinguish the difference.

“For now the patent office doesn’t have the ability to draw the line on disparagement, they can’t refuse registration on that basis.

“One reason for rejection could come through taking a hard look on whether an applied-for mark is functioning as an indicator of source. After all, that’s what a trademark is.

“For example, putting ‘I hate a particular ethnic group’ on a T-shirt, it is a way of expressing yourself and they can’t say no. However, it isn’t using it as a trademark or a source of anything. It may be merely ornamental. The USPTO may take a hard look at whether some of these ‘offensive’ marks are actually being used as indicators of source and we could see refusal on that basis,” Moskin says.

The USPTO released guidelines a week after the ruling, explaining how it will examine applications following the Supreme Court’s decision.

It stated that applications that received an advisory refusal under the disparagement provision will be removed from suspension and examined for any other requirements or refusal criteria.