Common Sense ‘Slants’ in Favor of Creative Freedom in Trademark Protection

What’s in a name? Early this year, the Supreme Court considered this question in Lee v. Tam. The US Patent & Trademark Office (PTO) denied Simon Tam and his band, The Slants, a trademark for the name of the band. Citing the anti-disparagement clause of the Lanham Act, the PTO found that the name could be “disparaging” to people of Asian-American descent.

The US Court of Appeals for the Federal Circuit, a specialized court with jurisdiction over intellectual property matters, recently ruled en banc in the case. There, the Court found that the anti-disparagement clause constitutes unconstitutional viewpoint discrimination.

During oral arguments, the Supreme Court appeared to agree with the Federal Circuit Court’s thinking. Justice Kagan echoed this sentiment in her question to the Government’s lawyer:

“The point is that I can say good things about something, but I can’t say bad things about something. And I would have thought that that was a fairly classic case of viewpoint discrimination.”

The Justices seem posed to rule in Tam’s favor, ending a six-year battle with the PTO over the name of the band.

In the case of the arts, this result seems just. It stamps out bureaucratic oversight over what marks might or might not be disparaging. That oversight runs counter to the role the arts play in our culture. While disparaging speech can be harmful to some listeners, it is also central to political and cultural discourse.

Indeed, in his original trademark application Simon Tam stated that the band, comprised of all Asian-American members, were “reclaiming” the disparaging name for Asian-Americans. Here, the band is harnessing the power of a term and redirecting it as a point of pride or self-reference. For example, a San Francisco women’s group successfully petitioned the PTO to reverse its ruling denying a trademark for the name “Dykes on Bikes” in 2005.

Musical acts and artists are well poised to push the cultural conversation. Indeed, many acts—Pussy Riot, N.W.A. (Niggaz Wit Attitudes), the Queers—choose names precisely because the name is provocative or counter-culture. By labeling these groups “disparaging” the government fails to capture the multiple levels of communication these acts engage in. Artists need creative freedom to push boundaries and change the cultural conversation.

In Lee v. Tam, the Government argues it is not prohibiting this speech or The Slants’ ability to engage in commerce. Rather, the Government claims that it is merely declining to endorse it with trademark protection. Here, the Government argues that it does not want to give the appearance that it endorses the view that disparaging remarks are acceptable.

However, trademark protection comes with a slew of benefits, including the crucial ability of holders to protect their name and reputation in the marketplace. Denying these benefits to artists does not protect consumers from anything disparaging or otherwise, which is the intention of the Lanham Act.

One group acutely interested in the result of this case is a professional football team, the Washington Redskins. The NFL team’s name is a matter of public controversy. The Fourth Circuit postponed a pending appeal on the team’s case to await the results of Lee v. Tam. Whether the Supreme Court’s pending ruling extends to the Redskins case is unclear. Sports teams are mass-market entertainment and representatives of the community. They also take public money. Where The Slants seek to reclaim a disparaging term, Native Americans perceive sports team names like the Redskins to be deeply hurtful to their community.

For now, Simon Tam and his band eagerly await an end to this saga so they can focus on making music.

Suggested citation: Francis Cullo, Common Sense ‘Slants’ in Favor of Creative Freedom in Trademark Protection, Cornell J.L. & Pub. Pol’y, The Issue Spotter, (Feb. 8, 2017), https://live-journal-of-law-and-public-policy.pantheonsite.io/common-sense-slants-in-favor-of-creative-freedom-in-trademark-protection/