The Supreme Court will decide whether a federal law that bars the registration of disparaging trademarks violates free speech, a case with direct implications for the Washington Redskins in their fight to defend their famous team name.
The justices on Thursday announced that they will consider whether part of the 1946 Lanham Trademark Act that prohibits registration of a trademark that “may disparage” persons violates the First Amendment, as an appeals court has ruled.
The court did not take the Redskins case, but instead chose another that is further along in the legal process. The lawsuit was filed by Portland, Ore.-based performer Simon Shiao Tam, whose Asian American rock band is known as the Slants and who was turned down by the U.S. Office of Patent and Trademark Office when he tried to register the band’s trademark in 2011.
The patent office said the name was likely to disparage a significant number of Asian Americans. But Tam said the point of the band’s name is just the opposite: an attempt to reclaim a slur and use it “as a badge of pride.”
Tam lost in the first rounds. But then a majority of the U.S. Court of Appeals for the Federal Circuit said the law, which calls for the rejection of trademarks that “may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” violates the First Amendment’s free speech guarantee.
The Justice Department asked the Supreme Court to reverse the lower court’s decision, and Tam agreed the justices should review the issue.
“Simon Tam is not a bigot; he is fighting bigotry with the time-honored technique of seizing the bigots’ own language,” Tam’s lawyer, John C. Connell, wrote. “Only an uninformed philistine could find the band’s name disparaging.”
Tam, incidentally, has criticized the Redskins nickname.
The Redskins battle is in a different legal posture. The team’s trademark was canceled in 2014 after decades of use. The team asked a district judge in Virginia to overturn the cancellation and was refused. The case is now awaiting hearing in the U.S. Court of Appeals for the 4th Circuit in Richmond.
The government says that the trademark office does not have to recognize the trademark of either the band or the team. They are free to call themselves whatever they want, the government said in its brief, but the trademark office does not have to provide protection for it.
Under the “sweeping” ruling of the appeals court, the PTO cannot refuse registration of “even the most vile racial epithet,” according to the team’s brief.
Registration of a trademark makes it easier for a party to legally defend the mark against others who would try to use it. But the Justice Department said it is up to the government to decide whether to provide that protection.
The law “does not prevent [Tam] from promoting his band using any racial slur or image he wishes. It does not limit how respondent may advertise, what songs he may sing, or what messages he may convey,” the government said in its brief.
Because it is not restricting speech, the government said, it has considerable leeway in how it provides the benefit of trademark registration.
But the band and the team in its briefs have called the law impossibly vague and said the trademark office’s decisions about which trademarks to register and which to deny are opaque and capricious.
The team has listed a long list of crude and offensive names that have received trademark protection. The Slants’ lawyers noted conflicting decisions that they said made no sense.
The PTO denied registration to Have You Heard Satan is a Republican “because it disparaged the Republican Party,” the band’s lawyers wrote, but it did not find the Devil Is a Democrat “disparaging.”
“We are pleased that this matter will be reviewed by the Supreme Court of the United States, and look forward to the vindication of the First Amendment rights of Mr. Tam and the other members of The Slants,” Tam’s lawyers said in a statement.
The court will consider Lee v. Tam later in the term, which begins next week.
The case was among eight the court announced it was taking for the coming term.
Another of those also concerns speech — commercial speech. The court will consider a New York law that bars retailers from saying they are imposing surcharges on credit-card purchases. Merchants pay a “swipe fee” when a customer uses a credit card and usually pass along the charge by imposing a higher cost.
But New York and nine other states don’t allow retailers to say that; they require the sellers to say they offer discounts to those who pay cash.
Deepak Gupta, representing retailers challenging the law, put it this way in the petition to the court: A merchant may say the cost of a widget is $102 and that there is a $2 discount for paying in cash. “But if the merchant instead says that the widget costs $100 and there is a $2 surcharge for using credit to account for the swipe fee, the merchant has committed a crime.”
New York’s law was upheld by an appeals court; Florida’s similar law was struck down, and the Supreme Court will decide which was right.
The case is Expressions Hair Design v. Schneiderman.