Supreme Court Appears Ready To Strike Down Ban On Offensive Trademarks

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Kevin Daley Supreme Court correspondent
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The Supreme Court appeared ready to rule that a federal law which bans offensive trademarks violates the First Amendment during oral arguments in Lee v. Tam Wednesday morning.

The justices heard a challenge to the 1946 Lanham Trademark Act, which prohibits the registration of a trademark which “may disparage” a person, community, or institution. The challenge was brought by Simon Shiao Tam, bass-player for the Chinatown dance rock band The Slants. The PTO denied the band’s request for a trademark, finding their name could give offense to Asians. The band is composed exclusively of Asian-Americans, who selected the name to strip the slur of its potency.

The U.S. Court of Appeals for the Federal Circuit, an appeals court which hears patent and trademark cases, found in Tam’s favor last year.

The outcome of the Slants case will shape the resolution of the Washington Redskin’s battle with the PTO. Six of the team’s registrations were cancelled after the Trademark Trial and Appeals Board found the team’s name offensive to American Indians. The franchise’s attorney, Robert Raskopf, was present Wednesday at the Supreme Court. (RELATED: Judges, Lawyers Honor Smut Peddler After Historic SCOTUS Case)

During oral arguments, most of the justices appeared skeptical of the PTO’s position.

Justice Elena Kagan indicated she believed the office was making viewpoint-based distinctions, which are presumptively unconstitutional.

“I always thought that government programs were subject to one extremely important constraint, which is that they can’t make distinctions based on viewpoint,” she said. “So why isn’t this doing exactly that?”

Chief Justice John Roberts and Justice Stephen Breyer seemed skeptical that denying The Slants their trademark advanced an important government interest.

Malcolm Stewart, the government’s attorney, attempted to persuade the justices that government has significant discretion in how it allocates public benefits. He presented a hypothetical in which he suggested PTO policy was analogous to a public university designating a specific room on campus for debate on issues of general interest, on the condition that no racial epithets are deployed.

“So the government is the omnipresent schoolteacher?” an incredulous Justice Anthony Kennedy retorted.

However, Justice Sonia Sotomayor seemed sympathetic to the government’s argument. She suggested that core First Amendment activities were not implicated in the PTO’s denial, because the absence of a trademark does not inhibit the band from calling itself what it pleases.

“No one is stopping your client from calling itself The Slants,” she told the band’s lawyer, John Connell. “No one is stopping them from advertising themselves that way, or signing contracts that way, or engaging in any activity, except stopping someone else from using the same trademark. But even that they could do. Because you don’t need a registered trademark to sue under the Lanham Act’s entitlement for the confusion of the public in the use of any kind of registered or unregistered mark.”

Though the Court appeared ready to side with The Slants, the justices were cool to many of Connell’s arguments. Connell adopted a fairly dogmatic positions, asserting government had almost no prerogative to deny trademarks, even if the trademarks in question are outrageous or scandalous.

“The First Amendment protects absolutely outrageous speech insofar as trademarks are concerned?” Kennedy asked.

“That is correct,” Connell responded.

“Would you say the same thing about a scandalous mark?” Justice Ruth Bader Ginsburg asked. “Would that be equally impermissible?”

“I think that conclusion is inevitable,” he said.

In response to a hypothetical from Sotomayor, he even agreed the phrase “Trump is a thief” could be trademarked. The exchange may be the first time the president-elect has been mentioned during Supreme Court proceedings.

Speaking to reporters after the argument, members of the band expressed optimism that they would prevail, and praised the social justice groups supporting their case. They will play a set Wednesday evening in Washington at the Electric Maid Community Exchange.

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