The Slants take on SCOTUS, image of the band the slants

Late last week the Supreme Court of the Unites States, or SCOTUS, granted certiorari in nine cases. For non-legal nerds, this means that the highest court in the nation has decided to review the decisions of the lowers courts in nine specific cases. Over the next few months SCOTUS will review the merits and rule on cases like Endrew  F. v. Douglas County School District, which could determine the responsibilities of public schools to disabled students under the Individuals with Disabilities Education Act. It will look at Lewis V. Clarke, which will examine the scope of sovereign immunity of an employee of an Indian tribe. There is another case, however, that really stood out among the rest of cases. One that speaks to some of the nuance of trademark law.

What’s In A Name?

The Slants take on SCOTUS, image of the band the slants

The Slants, image courtesy NPR

One case in particular stands out as it pits the First Amendment’s freedom of speech clause against a little known provision in trademark law within the Lanham Act. The case, Lee v. Tam, centers around a trademark dispute over a name.  The United States Patent and Trademark Office (USPTO) denied the petitioner, Simon Shaia Tam, a trademark on his band name. Tam was a founding member of the Asian-American, Seattle-based, dance-rock band known as The Slants; the name taken in part from the slant guitar cords in the music and also a reference to a derogatory racial slur against Asian Americans. This reclaiming of such a slur (according to their Wikipedia page) was a way for the band “to undercut slurs about Asian-Americans that band members heard in childhood, not to promote them.”

In September 2013, the US Patent Office invoked a clause in the Lanham Act which states that a trademark can be denied if it “consists of or comprises immoral, deceptive, or scandalous matter”; or matter which may disparage or (among other things) bring any persons, living or dead, into contempt or disrepute. In an ironic twist, the USPTO denied the trademark based on the following quote from the band’s Wikipedia page, “We want to take on these stereotypes that people have about us, like the slanted eyes, and own them. We’re very proud of being Asian – we’re not going to hide that fact. The reaction from the Asian-American community has been positive.”

The Slants and SCOTUS

The band had first attempted to trademark their name in 2011, and sued when they were refused trademark protections. This most recent appeal represents several years of legal wrangling over the band name with the USPTO. In a BBC article, Simon Tam’s lawyer argued that the band leader “was following in the long tradition of ‘reappropriation,’ in which members of minority groups have reclaimed terms that were once directed at them as insults and turned them outward as badges of pride”. Citing their First Amendment rights, the band’s argument centers on the unconstitutionality of the USPTO to stifle their freedom of speech as they try to use such a name as protest against racial slurs. In a decision made last December a Federal Circuit Appeals Court voted in favor of Tam, ruling that the federal government did not offer a legitimate argument to justify this use of the Lanham Act to deny the Slants their trademark.

In a appeal to it’s fellow acronym, USPTO petitioned SCOTUS to hear the case. Their argument, as stated on IP Watchdog,  defends their initial denial on the grounds that it did not inhibit Tam’s freedom of speech. Rather it, “simply prevents respondent from calling upon the resources of the federal government to assist him in enforcing his rights in THE SLANTS.” In June a brief was filed on behalf of Tam, arguing that the underlying issue surrounding this case was an important one and should be heard by the Supreme Court of the United States. As of last Thursday, the highest court in the land agreed to review the case.

Are You Ready For Some Football?

Image courtesy

Image courtesy USA Today

Ironically the aforementioned brief, which seemed to side with Tam from a legal standpoint, was not very well received by the band leader. The brief, although favorable to Simon Tam and his suit, asked the high court to include another high profile case involving racial slurs and trademark law; The NFL’s Washington Redskins. For the past 20 years the Washington Redskins have also been engaged in litigation with the U.S. Trademark Office over their name, which has been called offensive by many Native American groups. In the body of the legal filing, attorneys tried to link the merits of the two cases while encouraging SCOTUS to tie the two cases together in court.

In an interview with the Washington Oregonian, Tam voiced his displeasure with the NFL and their Redskins’ trademark case. “I’m so tired of being associated with them,” Tam previously told the Oregonian. “After years and years, they continually try to hijack our story. They’re intertwined in a way, I don’t deny that, but it’s hard to argue about ethics and morality when the law treats this coldly, surgically, trying to distance itself from the moral and ethical thing to do.” The Washington Redskins’ attempt to link the cases ultimately failed, however. Much to Tam’s relief, the court has opted to hear the case of  Lee v. Tam on its own.

While the high court has agreed to hear the case, the resolution of the dispute may still be a long way off. It could take months before SCOTUS makes its ruling on the case. The term, which started this week, continues into early next summer. Cases like this highlight the twists and turns that trademark law can take, especially when there is a racially charged or potentially offensive nature to the case. Court watchers, like the team at the law offices of Zachary Hiller, will be keeping a close eye on this case. Join the conversation with us on this case, and many others on our Facebook page.

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