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Rock Band Name “The Slants” Protected

The United States Patent and Trademark Office (PTO) denied a rock band’s application for a federal trademark of the band’s name, “The Slants”  under a provision of the Lanham Act prohibiting the registration of trademarks that may disparage or bring  into contempt or disrepute any persons, living or dead. On June 19, 2017, the Supreme Court held that the Lanham Act’s disparagement clause, set forth in 15 U.S.C.S. § 1052(a), violates the Free Speech Clause of the First Amendment.

“Slants” is a derogatory term for persons of Asian descent.  Simon Tam, the lead singer of the Asian-American band, chose the moniker in order to “reclaim” and “take ownership” of stereotypes about people of Asian ethnicity. The band members believe that by taking the slur as the name of their group, they will help to drain its denigrating force.

The Court unanimously affirmed the judgment of the United States Court of Appeals for the Federal Circuit vacating the PTO’s decision. Justice Alito delivered the opinion of the Court with respect to Parts I, II, and III-A, and an opinion with respect to Parts III-B, III-C, and IV in which Chief Justice Roberts, Justice Thomas, and Justice Breyer joined. Justice Kennedy filed an opinion concurring in part and concurring in the judgment and was joined by Justice Ginsburg, Justice Sotomayor, and Justice Kagan. Justice Thomas also filed an opinion concurring in part and concurring in the opinion. Justice Gorsuch took no part in the consideration or decision of the case.

The Court concluded that trademarks are private, not government,  speech. It reasoned that to hold otherwise would constitute a huge and dangerous extension of the government-speech doctrine.

The Court rejected the Government’s argument that the case is governed by cases in which the Court has upheld the constitutionality of government programs that subsidized speech expressing a particular viewpoint. It also found unpersuasive the Government’s claim that the disparagement clause is constitutional under a “government-program” doctrine. The disparagement clause constitutes viewpoint discrimination. While the disparagement clause denies registration to any mark that is offensive to a substantial percentage of the members of any group, the Court noted that giving offense is a viewpoint.

In the Court’s view, the disparagement clause is not narrowly drawn to drive out trademarks that support invidious discrimination. The provision is not an antidiscrimination clause, but is instead a happy-talk clause. The provision goes much further than is necessary to serve the interest asserted. The clause is also far too broad because it protects every person living or dead, as well as every institution. The Court concluded that if affixing the commercial label permits the suppression of any speech that may lead to political or social “volatility,” free speech would be endangered.

In his concurring opinion, Justice Kennedy noted a law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all, and that the First Amendment  does not entrust that power to the government’s benevolence. Instead, reliance must be on the substantial safeguards of free and open discussion in a democratic society. In his concurring opinion, Justice Thomas reiterated his belief that when the Government seeks to restrict truthful speech in order to suppress the ideas it conveys, strict scrutiny is appropriate, whether or not the speech in question may be characterized as “commercial.” Nonetheless,  he joined Part IV of Justice Alito’s opinion because it correctly concluded, in his view, that the disparagement clause  is unconstitutional even under an intermediate level of scrutiny.

Lexis subscribers can access the opinion at: Matal v. Tam, 2017 U.S. LEXIS 3872 (U.S. June 19, 2017)

Lexis Advance subscribers can find the opinion at: Matal v. Tam, 2017 U.S. LEXIS 3872, 2017 WL 2621315 (U.S. June 19, 2017)

Author:  Hans Thielman, Lexis-Nexis Case Law Editor

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