By: Colin Casciato
The Slants are an Asian-American rock band from Portland, Oregon.[i] They chose their name in order to bring attention to Asian stereotypes and because they believe Asian-Americans should “take ownership” of Asian stereotypes and “not be offended by stereotypical descriptions.[ii] Despite the band’s positive message, their trademark application was denied under § 2(a) of the Lanham act which prevents the registration of “disparaging” trademarks.[iii] They certainly did not intend to disparage or belittle anyone. Does this result seem fair?
If it seems unfair consider the football team the Redskins. Their trademark was also denied registration under § 2(a).[iv] The Redskins do not have the same type of positive message behind choosing their name as The Slants. Do you support the registration of The Slants but not the Redskins? How can one be banned but not the other? Is this regulation even constitutional in the first place? These questions and more are what the Supreme Court will be dealing with when they decide The Slants fate in the case Lee v. Tam.
As it stands now § 2(a), banning registration of disparaging marks, is unconstitutional under the First Amendment according to the United States Court of Appeals for the Federal Circuit. This means that any offensive mark including racial slurs could be registered. In holding § 2(a) unconstitutional the court first overruled its own precedent, which had previously held the First Amendment did not even apply in cases like this because The Slants are only being denied federal registration and are still free to use their name.[v] The court stated that the First Amendment is implicated because § 2(a) imposes a burden that can influence or suppress speech.[vi] They noted that if the government could deny a benefit to a person because of his constitutionally protected speech, his exercise of those freedoms would be penalized and inhibited.[vii] Thus the court applied strict scrutiny to the law, stating that it burdens private speech based on disapproval of the message conveyed.[viii]
The court noted that it is the expressive nature of the mark that is being regulated, not its commercial function.[ix] Therefore, they applied strict scrutiny and not the intermediate scrutiny test which is usually applied to regulations that burden commercial speech. The court noted that even if it did apply intermediate scrutiny based on Central Hudson, the regulation would fail because disapproval of the message conveyed is not acceptable as a substantial government interest.[x]
The Supreme Court will have to decide if the First Amendment is in fact implicated. If it is what level of scrutiny will be applied? Is this actually just a regulation of commercial speech? Is this provision applied in such an arbitrary manner that it violates due process? Is this regulation valid as part of a government subsidy program? Can they protect The Slants by saying their speech is protected political speech and the Redskins is not political speech and thus not protected? If the Supreme Court simply wants to punt all these issues they could hold that trademark registration is government speech, much like the words and symbols on license plates were held to be, and thus not subject to First Amendment protection.[xi]
I think the Supreme Court will come out somewhere in the middle. Surely the government should be able to deny registration to so called “fighting words”. But beyond that what can constitutionally be banned? The First Amendment protects our right to be offensive. In oral argument at the Supreme Court Justice Kagan noted that the regulation as written allows you to say good things about something but bans you from saying bad things about something. She stated that sounds like a “classic case of viewpoint discrimination.” I agree with Justice Kagan. I think the provision will have to be rewritten to be held constitutional.
Free speech arguments aside the provision has been enforced in a completely arbitrary way that likely makes it void for vagueness. For example, the exact same mark, HEEB, was accepted and then denied for different products. The USPTO granted registration for a magazine called HEEB, and then later denied registration to the same applicant for HEEB as the name of a clothing line, stating that it was disparaging to Jewish people.[xii] If that is not void for vagueness then I do not know what is.
The question will be if the court sees trademark registration as a form of free expression or as government speech like a license plate. I hope the Court does not punt all these fascinating constitutional issues by stating registration is government speech. We will likely have an opinion in the case by the summer. To read the transcript of the oral argument click here https://www.supremecourt.gov/oral_arguments/argument_transcripts/2016/15-1293_l6gn.pdf
– Colin Casciato. Junior Member, Volume 19, Tulane Journal of Technology and Intellectual Property. J.D. candidate 2018, Tulane University Law School.
[i] In re Tam, 808 F.3d 1321, 1331 (Fed. Cir. 2015), as corrected (Feb. 11,2016), cert. granted sub nom. Lee v. Tam, No. 15-1293, 2016 WL 1587871 (U.S. Sept. 29, 2016).
[iii] 15 U.S.C. § 1052(a) (2012).
[iv] Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439, 448 (E.D. Va. 2015).
[v] See, In re McGinley, 660 F.2d 481, 484 (C.C.P.A. 1981), abrogated by, In re Tam, 808 F.3d 1321 (Fed Cir. 2015).
[vii] Perry v. Sindermann, 408 U.S. 593, 597 (1972).
[viii] In re Tam, 808 F.3d 1321, 1334 (Fed. Cir. 2015).
[ix] Id. at 1337.
[x] Sorrell v. IMS Health Inc., 564 U.S. 552, 572 (2011).
[xi] See, Walker v. Texas Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015).
[xii] In re HEEB Media, LLC, 89 U.S.P.Q.2d 1071, 2008 WL 5065114, at *1 (TTAB 2008).
We’ve been coding copyright law for a long time. We were asked, “What about fair use? Is it codeable?” Challenged accepted. For three years, the copyright class has investigated this in different manners. We’ve looked at case law, we’ve looked at special areas, and we concentrated on artists as users (and transformative works).
This project began as a question posed by Kyle Courtney at Harvard. We took up the challenge and as a Copyright Class in 2013, we spent one month focused on learning about fair use, and attempting to see how we could make sense of fair use using flowcharts. Geena Yu, a 2L at the time, continued with the project, writing an independent study paper looking at scholarship, and attempting to look at the problem from her own angle. Dr. Elizabeth Townsend Gard and Geena Yu presented their initial findings at the Works In Progress Intellectual Property Conference at the USPTO in February 2015. The project is still in its beginning stages.
Since then, we have also looked at the question in our 2016 advanced trademark/copyright course, looking through the lens of the artist.
Now Helen Buckley, Ben Vanesse and Dr. Townsend Gard are tackling/attempting to code fair use. We began with non-transformative works, and now are looking at news reporting, transformative works, and scholarship/research. We think it is codeable. Stay tuned for more updates on our work.
The Durationator Files are our working files. We are in the process of making them accessible to others. This will take time.
- All the copyright laws of the world in a searchable database
- Our Overview treatise (this will take time – likely our summer project to complete)
- The U.S. Copyright Office registration and renewal records
- Other records we find along the way.
If you are an attorney that needs access to these materials, contact our company partner, Limited Times. If you are a scholar interested in using the materials for your own work, please contact Dr. Townsend Gard directly.
We don’t get a lot of recent cases where copryight renewal turns out to be the key element. But this case is amazing. It’s a case where Abbot and Costello’s heirs tried to prevent a broadway production, Hand to God, from using about 30 seconds of “Who’s on First?” The district court found transformative use. The Appeals court, said, “no.” Nothing transformative about using the comedy routine in the manner used in the show. But here’s where it gets interesting: the court found that (in a complicated manner), “Who’s on First?” is likely in the public domain — no renewal record.
- “Who’s on First?” was first performed on the radio.
- Then, it was incorporated into a couple of films, but because it had already been created before the film, the comedy bit was considered separately protected, and not created at the “instance and expense” of the films. The registration and renewal records for those films do not apply.
- Then, we turn to the registration/renewal records. The comedy routine is finally registered in 1944, but not renewed.
The court notes that the part used in the play (the beginning of the routine) was covered by this first registration.
Here is the opinion. So, not transformative (fair use), but in the public domain. Maybe the estate should have let the 30 seconds be used without fuss…
We are excited to begin building our new website. We hope to have more content soon.