Lee v Tam: SCOTUS provides ‘scant’ insight into view on case

The US Supreme Court yesterday heard oral arguments in the Lee v Tam trademark dispute, which centres on rock band The Slants, but lawyers have told WIPR that while the court pressed both sides, it provided “scant” insight into its position on the case.

The case will provide guidance on whether disparaging terms can be registered as trademarks or whether refusing registration is a violation of First Amendment rights.

In December last year, an en banc US Court of Appeals for the Federal Circuit ruled that a decision by the US Patent and Trademark Office (USPTO) to deny The Slants a trademark for its name violated the band’s First Amendment rights.

Malcolm Stewart, deputy solicitor general, presented the case for the USPTO.

He said: “The statutory provision at issue in this case, 15 USC 1052(a), prohibits the registration of any mark that may disparage persons, institutions, beliefs or national symbols.”

Based on that provision, the USPTO denied the band’s founder Simon Tam’s application to register The Slants as a service mark for his band.

He added that because section 52(a)'s disparagement provision places a reasonable limit on access to a government programme, rather than a restriction on speech, it does not violate the First Amendment.

The justices and Stewart discussed the differences between a copyright and trademark regime.

Chief Justice John Roberts said: “Counsel, I'm concerned that your government programme argument is, is circular. The claim is ‘you're not registering on my mark because it's disparaging’, and your answer is, well, ‘we run a programme that doesn't include disparaging trademarks, so that's why you're excluded’.”

John Connell, partner at law firm Archer, argued for The Slants.

He said: “If Mr Simon Tam had sought to register the mark of his band as The Proud Asians, we would not be here today. But he did not do that. Instead he sought to register The Slants.”

Justice Sonia Sotomayor told Connell that no-one is stopping the band from calling itself The Slants, or from advertising itself that way, or signing contracts. “You are asking the government to endorse your name to the extent of protecting it in a way that it chooses not to.”

She added: “And why shouldn't we consider it in those ways when your speech is not being burdened in any traditional way?”

Connell responded by saying that the government has used the disparagement clause to selectively deny those legal benefits to trademark owners who have expressed negative views that the government favours.

Greg Chinlund, chair of the trademarks and copyrights practice at law firm Marshall Gerstein, told WIPR: “The justices’ challenges to both sides provided scant insight into the direction the court may be leaning. On the one hand, the court questioned the government regarding its claim that there is no viewpoint discrimination when the USPTO registers marks that express positive sentiments, but not ‘disparaging’ views.

“Not lost on the court was the potential far-reaching impact of the decision in the case, with Justice Ginsburg noting that ‘scandalous’ and ‘immoral’ marks are ‘just like disparaged [marks]’, implying that the decision would likely impact those categories as well,” he added.

Katy Basile, partner at law firm Reed Smith, added:“The court lost sight from time to time that the purpose of a trademark is to identify source. While a business may seek to imbue their trademark with other associations or connotations, the business cannot own those associations or connotations, just the source identifying aspect.

“Trademarks, by definition, are commercial; that is their purpose.”

She added: “The court carefully questioned the respondent’s counsel about government burdening ‘non-commercial aspects’ of the trademark, and this is an arguably correct area for inquiry, because a trademark really doesn’t have a ‘non-commercial aspect’.”

Dale Cendali, partner at Kirkland & Ellis, said: “The Supreme Court was very engaged, and pressed both sides during oral argument. Justice Breyer kept asking, ‘what purposes or objectives of trademark protection does this particular disparagement provision help further?’—suggesting it might be removed from its classic purpose of preventing consumer confusion.

“On the other hand, several justices asked questions suggesting The Slants' argument was overbroad.”

Anthoula Pomrening, partner at intellectual property law firm McDonnell Boehnen Hulbert & Berghoff, added: “If the Supreme Court reverses the en banc Federal Circuit decision, then it will be status quo as to the prohibition of the registration of disparaging marks.

“If the court affirms the Federal Circuit decision, however, that would open the rest of section 2(a) of the Lanham Act to challenge.”

Ronald Coleman, partner at Archer, and one of the lawyers acting on behalf of The Slants, told WIPR: 'We were pleased with the tenor and substance of yesterday's argument. While the justices characteristically explored the outer limits of the reasoning behind our arguments, most seemed dubious of the government's rationalisations for acting as gatekeeper for 'appropriate' expression in trademarks.

Coleman explained that the court also seem unmoved by the "tendentious suggestion" of pro-censorship commentators that "abandoning the disparagement bar" would require the USPTO to forego trademark examination altogether.

"Based on the questioning we're hopeful that the Supreme Court will affirm the Federal Circuit and strike down Section 2(a)," he added.

Dale Cendali is a WIPR Leader for 2016. Her profile is available  here.

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