Copyright Concerns Dog PTO at High Court in ‘Slants’ Case

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By Peter Leung

Arguments that the Patent and Trademark Office can ban disparaging trademark registrations could be used to justify withholding copyright registration from books with objectionable content, U.S. Supreme Court justices suggested Jan. 18 ( Lee v. Tam , U.S., No. 15-1293, oral argument 1/18/17 ).The remarks came during oral argument in Lee v. Tam, a case over whether a provision of trademark law barring the registration of disparaging trademarks unconstitutionally infringes free speech, as the Federal Circuit has ruled.

The Patent and Trademark Office refused to register musician Simon Shiao Tam’s application for a trademark for his band name “the Slants,” saying the mark was disparaging to Asians. Tam appealed—and won—at the Federal Circuit, and the U.S. government took the case to the high court.

Even as the justices questioned whether a ban on disparaging trademarks could be used to support copyright restrictions, some were skeptical about the expansive free speech claims that would force to PTO to register defamatory trademarks.

“We treat this, we treat trademarks just like we treat speech in a public park—Thank you very much. Good-bye. That’s it. That’s your argument,” Justice Anthony Kennedy said.

If the prohibition is ruled unconstitutional, it would kill the 70-year-old provision of trademark law and call into question other parts of the law. The outcome may affect the dispute over the Washington Redskins football team’s trademark registrations, which has been stayed in the U.S. Court of Appeals for the Fourth Circuit pending the outcome of the Slants case at the high court.

Copyright and Viewpoints

The justices prodded the PTO about the limits of its argument that it can bar disparaging marks because a trademark registration is a government program for which the agency can create rules of participation even if those rules may limit particular viewpoints.

Chief Justice John Roberts called that argument is “circular.”

“The claim is, ‘You’re not registering on my mark because it’s disparaging,’ and your answer is, ‘Well, we run a program that doesn’t include disparaging trademarks, so that’s why you’re excluded,’” he said. “It doesn’t seem to me to advance the argument very much.”

Justice Elena Kagan suggested the government program argument may not be enough to protect the disparagement provision. Even government programs cannot engage in viewpoint discrimination, and the PTO’s policy of refusing disparaging marks while allowing marks that praise the same subjects appears to be a “fairly classic case of viewpoint discrimination,” Kagan said.

Justice Samuel Alito asked if that argument supports the Copyright Office denying registration to books deemed objectionable because copyright registration is also a government program.

Malcolm L. Stewart of the Justice Department said that’s not the case because copyright holds a unique place in free speech jurisprudence as something that’s designed foster creativity and expression. And even though trademarks can also be used for expressive purposes, they don’t have the same historical relationship to free speech that copyright law does.

Joanne Ludovici, IP partner with McDermott Will & Emery in Washington, told Bloomberg BNA that there’s support for that argument because copyright is specifically enumerated in the Constitution for the purpose of fostering creativity and expression, while trademarks are not.

But Kennedy questioned the usefulness of the distinction, saying it seems to downplay the fact that some trademarks, such as on logos and T-shirts, regularly express views.

Dori Ann Hanswirth, IP partner with Hogan Lovells LLP in New York, told Bloomberg BNA that there are other potentially important differences between copyright and trademark registrations. While copyright registrations are largely routine and procedural, trademark applications involve a much more substantive process, including examination and communication with examining attorneys, she said. That difference may support an argument that a trademark registration is more akin to a government-provided benefit, she said.

Free Speech Too Aggressive?

Tam has characterized his case as a fight for free speech, and his lawyer, John C. Connell of Archer & Greiner PC, pushed that issue aggressively. The trademark registration program is an open forum, akin to a public park, where free speech protections are the strongest, he said. Also, the First Amendment bars the PTO from even denying registration for defamatory marks, even when the marks says something that is proven in court to be slander or libel.

Justice Sonia Sotomayor said this position “makes no sense.” Justice Stephen Breyer pointed out there are many laws against issues such as defamatory speech, and asked why the PTO should be blocked from similar policies.

Sotomayor questioned whether a failure to get a trademark registration is a really a burden on speech. She pointed out that Tam can still use the name in nearly every way he wants—except to stop others from using the same mark. Even then, other laws such as those prohibiting deceptive advertising could protect Tam and his band, even without trademark registrations.

Tam’s lawyer argued that the lack of a trademark registration inhibits his client’s ability to compete against other bands, and the only reason for withholding the registration is because of the noncommercial speech in the mark.

Tam has said in interviews that bands without trademarks registrations can’t get licensing deals, impeding their ability to exercise their free speech rights, though Connell did not make that point during oral argument.

Sotomayer sounded unconvinced. “He’s just not getting as much as he would like, but he’s not stopped from doing what he’s doing,” she said.

Sotomayer’s comments suggested that she may be more open to the argument that a trademark registration is a government benefit, because Tam is “asking the government to endorse your name to the extent of protecting it in a way that it chooses not to.”

What’s Trademark Law For?

The PTO argued that the disparagement ban is just one of several restrictions for trademark registration. But Breyer said restrictions such as bans on registering descriptive or generic marks go to the ultimate purpose of trademarks for distinguishing the source of goods. The disparagement provision doesn’t serve that purpose.

Stewart said that Congress intended to ban disparaging marks to prevent distraction from the source-identifying qualities of trademarks. But Breyer questioned that as well.

“I can think probably, and with my law clerks, perhaps 50,000 examples of instances where the space the trademark provides is used for very distracting messages,” he said. “What business does Congress have picking out this one, but letting all the other distractions exist?”

Kagan sounded more open to that line of reasoning. The restrictions Breyer referred to would discriminate against certain types of content but don’t violate the First Amendment, she said.

“This case involves a very interesting use of a trademark—to ‘take back’ a slur—and what happens when you try to graft that purpose onto the trademark statute,” Mark Sommers, IP partner at Finnegan in Washington, told Bloomberg BNA. Tam has argued that his desire to register “The Slants” as the name of an all-Asian band takes a stand against bigotry.

Even so, “the statute wasn’t originally designed to protect speech,” Sommers said. “It’s a consumer protection statute to protect against confusion when buying products.”

To contact the reporter on this story: Peter Leung in Washington at pleung@bna.com

To contact the editor responsible for this story: Mike Wilczek at mwilczek@bna.com

For More Information

Bloomberg Law subscribers can find more information at: In Focus: Disparaging Trademarks.

For more information on Bloomberg Law: https://www.bna.com/bloomberglaw.

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