A Win for Immoral and Scandalous (TMs), or Death to Section 2(a)
January 27, 2016 6:22 AM   Subscribe

Last month, the U.S. Court of Appeals for the Federal Circuit decided In re Tam, overturning a longstanding ban on the registration of "disparaging" trademarks. (On Simon Shiao Tam's and The Slants' fight with the law, previously.) The court left in place the prohibition on registering "immoral and scandalous" trademarks. However, "[i]n a letter brief issued Thursday, the Department of Justice conceded that § 2(a) [the immoral and scandalous clause] was no longer enforceable in light of In re Tam."
posted by MonkeyToes (31 comments total) 6 users marked this as a favorite
 
Dan Snyder thanks you guys.
posted by NoxAeternum at 6:42 AM on January 27, 2016 [13 favorites]


Here is the In re Tam decision [pdf]. It's very long.

Personally, I disagree with the majority's view that the prohibition on disparaging trademarks amounted to a regulation of speech (and, ultimately, an unconstitutional one). A trademark registration is not required in order to use a mark. Tam may call his band whatever he likes, and indeed he had been doing so for some time. Presumably he would have continued to do so had his appeal been unsuccessful.

If anything, the decision to reject the application amounts to speech by the government, and it is well established that the government is free to engage in speech of its own. Rejection of the mark as disparaging amounts to the government saying "in the view of the government, this mark is disparaging." It does not in any way restrict Tam from using the mark. Indeed, presumably no one could register such a mark, and thus no one could sue Tam for trademark infringement.

Anyway, I look forward to the trademark trolls (in the internet troll sense) getting all sorts of lulzy obscenity forever recorded in the Trademark Office database. How long before someone pays ~$100 to get the government to record a copy of the goatse guy for posterity?
posted by jedicus at 7:05 AM on January 27, 2016 [4 favorites]


As soon as I can get to an ATM.
posted by Etrigan at 7:08 AM on January 27, 2016 [3 favorites]


Welcome to Faint of Butt, Inc., where our motto is "The United States Patent and Trademark Office Blows Goats!"
posted by Faint of Butt at 7:10 AM on January 27, 2016 [7 favorites]


yeah, this really should be the "Washington DC Football team" case..
posted by k5.user at 7:15 AM on January 27, 2016 [1 favorite]


I anticipate alot of edgy new products using various racial/ethnic/sexist slurs in the not so distant future. Probably it will be douchebros marketing some new whisky or IPA but eventually it will expand beyond the edge cases.

Of course the Dan Snyders of the world will rejoice.
posted by vuron at 7:47 AM on January 27, 2016 [5 favorites]


A trademark registration is not required in order to use a mark. Tam may call his band whatever he likes, and indeed he had been doing so for some time...It does not in any way restrict Tam from using the mark. Indeed, presumably no one could register such a mark, and thus no one could sue Tam for trademark infringement.

Yes, but trademark registration confers legal benefits and protections that were being denied to certain viewpoints. The government was providing rights to certain speakers and denying them to others based solely on the content of their speech. Of course Tam could still use his mark, he just wouldn't be granted the protections registered trademark holders have.

If anything, the decision to reject the application amounts to speech by the government, and it is well established that the government is free to engage in speech of its own. Rejection of the mark as disparaging amounts to the government saying "in the view of the government, this mark is disparaging."

No, this is completely off:
Wisely, the government does not argue that a markholder’s use or enforcement of its federally registered trademark is government speech. Use of a mark by its owner is clearly private speech. Trademarks identify the source of a product, and are often closely associated with the actual product. A mark’s purpose—to identify the source of goods—is antithetical to the notion that a trademark is tied to the government. The fact that COCA COLA and PEPSI may be registered trademarks does not mean the government has endorsed these brands of cola, or prefers them over other brands. We see no reason that a markholder’s use of its mark constitutes government speech...

[T]he government appears to argue that trademark registration and the accoutrements of registration — such as the registrant’s right to attach the symbol to the registered mark, the mark’s placement on the Principal Register, and the issuance of a certificate of registration — amount to government speech. This argument is meritless. Trademark registration is a regulatory activity. These manifestations of government registration do not convert the underlying speech to government speech.
This isn't government speech, this is the government declining to perform a regulatory activity on the basis of viewpoint. You also wouldn't want this theory to be held up:
Finally, [accepting the government’s argument would create] an end-run around the unconstitutional conditions doctrine, as virtually all government benefits involve the resources of the federal government in a similar sense. Nearly every government act could be justified under this ground, no matter how minimal. For example, the government could also claim an interest in declining to spend resources to issue permits to racist, sexist, or homophobic protests. The government cannot target speech on this basis, even if it must expend resources to grant parade permits or close down streets to facilitate such speech.
In reacting to this people need to think very carefully about the larger implications of this kind of control, no matter how repugnant you might find the immediate case to be. Dan Snyder might rejoice, but so should anyone who wants to express something that society considers "immoral and scandalous". Remember that that once would have included things like advocating for gay rights.
posted by Sangermaine at 8:06 AM on January 27, 2016 [11 favorites]


I'd like to add a list from the opinion of PTO cancellations in 2014:
2014 PTO cancellation determination currently on appeal in Fourth Circuit); STOP THE ISLAMISATION OF AMERICA, In re Geller, 751 F.3d 1355 (Fed. Cir. 2014); THE CHRISTIAN PROSTITUTE (2013); AMISHHOMO (2013); MORMON WHISKEY (2012); KHORAN for wine, In re Lebanese Arak Corp., 94 U.S.P.Q.2d 1215 (T.T.A.B. Mar. 4, 2010); HAVE YOU HEARD THAT SATAN IS A REPUBLICAN? (2010); RIDE HARD RETARD (2009); ABORT THE REPUBLICANS (2009); HEEB, In re Heeb Media, LLC, 89 U.S.P.Q.2d 1071 (T.T.A.B. Nov. 26, 2008); SEX ROD, Bos. Red Sox Baseball Club L.P. v. Sherman, 88 U.S.P.Q.2d 1581 (T.T.A.B. Sept. 9, 2008) (sustaining an opposition on multiple grounds, including disparagement); MARRIAGE IS FOR FAGS (2008); DEMOCRATS SHOULDN’T BREED (2007); REPUBLICANS SHOULDN’T BREED (2007); 2 DYKE MINIMUM (2007); WET BAC/WET B.A.C. (2007); URBAN INJUN (2007); SQUAW VALLEY, In re Squaw Valley Dev. Co., 80 U.S.P.Q.2d 1264 (T.T.A.B. June 2, 2006); DON’T BE A WET BACK (2006); FAGDOG (2003); N.I.G.G.A. NATURALLY INTELLIGENT GOD GIFTED AFRICANS (1996); a mark depicting a defecating dog, Greyhound Corp. v. Both Worlds, Inc., 6 U.S.P.Q.2d 1635 (T.T.A.B. Mar. 30, 1988) (found to disparage Greyhound’s trademarked running dog logo); an image consisting of the national symbol of the Soviet Union with an “X” over it, In re Anti-Communist World Freedom Cong., Inc., 161 U.S.P.Q. 304 (T.T.A.B. Feb. 24, 1969); DOUGH-BOY for “a prophylactic preparation for the prevention of venereal diseases,” Doughboy Indus., Inc. v. Reese Chem. Co., 88 U.S.P.Q. 227 (T.T.A.B. Jan. 25, 1951).
Some of these are dumb-ass racist stuff, but some are advocacy groups. And protecting the sanctity of Greyhound buses? You can't just imagine this being used on the "bad stuff" that you don't like.
posted by Sangermaine at 8:19 AM on January 27, 2016 [3 favorites]


This isn't government speech, this is the government declining to perform a regulatory activity on the basis of viewpoint.

Isn't it more like forcing the government not to discriminate in its performance of a regulatory activity? Because refusing to register a trademark sounds more like refraining from regulatory activity than the other way around. And this decision is telling the government that it can't withhold a type of benefit-conferring government activity.

How does Tam intersect (if at all) with the case law on whether states can reject license plate designs (e.g., with the Confederate flag)?
posted by sallybrown at 8:30 AM on January 27, 2016


Sangermaine: " For example, the government could also claim an interest in declining to spend resources to issue permits to racist, sexist, or homophobic protests. The government cannot target speech on this basis, even if it must expend resources to grant parade permits or close down streets to facilitate such speech."

Something about this makes me uneasy, and I thin it stems from a conflation of commerce and speech. Tying into the "Citizens United" as if money=speech. In this case, preventing a trademark is seen as an infringement of speech in the same way as not providing police escorts to a political parade, but I think the case should be made along the lines of the right to regulate trade, not as a speech issue. Again, nobody is preventing these individuals from speaking. A right to speak does not preclude the right to be heard, for example.

Trademark is, itself, a legal fiction. A contract... an obligation of the state to protect certain kinds of commercial (and I suppose non-commercial, say, non-profit orgs who have a mark, yeah?) But protecting duplication of a mark is not the same as preventing the original speech. Further, again, this is only because we're viewing trademark as a form of speech and not a commercial activity (ugh, ok... non-profits, I think this is where I'm gonna have to think a bit more since it's more than just commercial activity that benefits from trademark).
posted by symbioid at 8:32 AM on January 27, 2016


What the hell? The whole point of intellectual property rights is to prevent speech—if you use your printing press to produce something you haven't acquired license to within the intellectual property regime, or even just to tell people where they can find potentially-unlicensed copies of material, the government busts down your door and seizes your printing press. If you attempt to use a symbol or phrase registered as a trademark within the same trade or context as the entity which registered it, you are prevented from doing so.

It's some serious War is Peace, Freedom is Slavery, Ignorance is Strength newspeak to call the extension of government-enforced monopoly over the usage of more phrases or symbols—granting of private ownership of more words—an expansion of liberty or a freeing of speech, even if doing so rectifies inequities in how those monopolies are granted.
posted by XMLicious at 8:32 AM on January 27, 2016 [7 favorites]


symbioid, the opinion linked above by jedicus does go into the commercial speech aspect of the issue. My comment was already very long and I didn't want to just quote the whole thing. If you don't have time/don't want to read the whole opinion, I think this piece does a good job summarizing the arguments (commercial speech is discussed in item 3).

sallybrown, the Court addresses the Confederate flag license plate case and how these interact starting on p. 40 of the opinion. The summary I linked to also addresses it.

XMLicious, IP protection confers certain rights to the holders. These rights are being granted to some and denied to others solely on the basis of speech content. What's newspeak is bending over backwards to try and justify that.
posted by Sangermaine at 8:41 AM on January 27, 2016 [1 favorite]


Probably it will be douchebros marketing some new whisky or IPA

oh, we're already there
posted by runt at 8:58 AM on January 27, 2016


No, this is completely off:

From the opinion: "The government cannot target speech on this basis, even if it must expend resources to grant parade permits or close down streets to facilitate such speech."

This is different than, for example, requiring that a public space be available to the KKK. In that instance it is the KKK that is speaking. Even if the government must expend resources (e.g. parade permits, closing streets, providing security), it is still the KKK speaking. With trademark registration, however, the government publishes the mark. The government engages in speech. It would be akin to requiring the government to print up and distribute leaflets for the KKK.

Trademark registration is a regulatory activity. These manifestations of government registration do not convert the underlying speech to government speech.

Tam was already speaking by using the mark. And he was free to apply for registration. The only new or regulated speech here was government speech: publication of the mark on the trademark register. Trademark registration is a regulatory activity, but the only speech it affects is speech by the government.

In reacting to this people need to think very carefully about the larger implications of this kind of control, no matter how repugnant you might find the immediate case to be. Dan Snyder might rejoice, but so should anyone who wants to express something that society considers "immoral and scandalous". Remember that that once would have included things like advocating for gay rights

Right. Now it means that people are free to register virulently homophobic marks. Is that an improvement?

The usual American answer to 'bad' speech is more speech, ideally 'good' speech. But in this case, Tam could already use the mark and no one else could prevent him from doing so.
posted by jedicus at 9:05 AM on January 27, 2016 [2 favorites]


Indeed, presumably no one could register such a mark, and thus no one could sue Tam for trademark infringement.

You don't need a federal trademark registration to sue for infringement. You can sue based on common law trademark rights.

I anticipate alot of edgy new products using various racial/ethnic/sexist slurs in the not so distant future.

You've always been welcome to use whatever edgy, disparaging, offensive, etc trademark you like (alcohol brands being one exception, as there are labeling laws to contend with). The issue was the ability to register the mark. Registration isn't required in the U.S., but as explained above and in the decision it confers many benefits.
posted by schoolgirl report at 9:08 AM on January 27, 2016 [1 favorite]


You don't need a federal trademark registration to sue for infringement. You can sue based on common law trademark rights.

Not if Tam were the senior user. Anyway, since this case is about federal trademark rights, presume I meant "sue Tam for federal trademark infringement."
posted by jedicus at 9:11 AM on January 27, 2016


Right. Now it means that people are free to register virulently homophobic marks. Is that an improvement?

Yes.

As an example of "virulently homophobic speech", consider the case of Dykes on Bikes. DOB is a lesbian motorcycle club founded in San Francisco in 1976. In 2003 it applied for a trademark and was denied because of the use of the word "dyke". The link is to a post by Alison Bechdel, author of the famous "Dykes To Watch Out For" comic strip, advocating for them. In fact Bechdel submitted a declaration (warning: pdf) in support of Dykes on Bikes explaining the history of this use of the word dyke by lesbians.

After a final rejection, and an appeal of the final rejection, DOB eventually had their application approved in 2006.

So yes, it is an improvement that "edgy" bigots like Dykes on Bikes don't have to beg and crawl to register a name they chose for themselves when others don't have to similarly fight to enjoy government trademark protection, all because the government got to decide what speech was okay and what wasn't.
posted by Sangermaine at 9:15 AM on January 27, 2016 [4 favorites]


Not if Tam were the senior user.

Sure, but I wanted to make clear that a federal trademark registration doesn't protect you from an infringement claim from a senior user, whether or not that senior user itself has a registration.
posted by schoolgirl report at 9:17 AM on January 27, 2016


Anyway, frankly you're being disingenuous here. Of course Tam could continue to use the mark, the problem is he would be denied protections others would be getting from registration. The only basis of the denial is the content of the speech.

You're dancing around this issue but it's the core of the problem. The government was conferring benefits on some people but not others entirely based on their viewpoint. If the government is going to provide benefits like trademark protection, it can't discriminate based on speech content.
posted by Sangermaine at 9:20 AM on January 27, 2016


IP protection confers certain rights to the holders

Yes, that's the point—the right to prevent the speech of others in particular contexts. Like literally, if someone wants to perform a piece of intellectual property in public, they can be prevented from speaking the owned words by the rights holder.

I mean, go ahead and say that this is the way things should be or whatever, it's not like there can't be all sorts of exceptions to freedom of speech, but this is an infrastructure and power structure dedicated to constraining the content of communication and expression no matter how you dress it up. (See what I did there—fashion designs can't be owned yet, right?)
posted by XMLicious at 9:32 AM on January 27, 2016 [3 favorites]


Nevermind. I should RFTA before I post.
posted by echocollate at 9:39 AM on January 27, 2016


Anyway, frankly you're being disingenuous here.

I am entirely sincere in my argument.

The government was conferring benefits on some people but not others entirely based on their viewpoint.

No, I think the government was conferring benefits on some people but not others entirely based on the viewpoint that the person was asking the government to express. It's the difference between opening a public space to any-and-all viewpoints and requiring the government to print and distribute leaflets advocating any-and-all viewpoints.

Consider, for example, that public comments on proposed federal rules-making are ordinarily printed in the Federal Register. But the government frequently reserves the right not to print, inter alia, indecent comments and comments containing hate speech. Would you agree that, under the logic of this case, the Government Printing Office would be required to print such comments?
posted by jedicus at 9:43 AM on January 27, 2016 [2 favorites]


It's the difference between opening a public space to any-and-all viewpoints and requiring the government to print and distribute leaflets advocating any-and-all viewpoints.

No, a better analogy, given that the government currently confers trademarks, would be a town offering to print and distribute leaflets for anyone who signed up, and then denying that benefit to certain groups they disagreed with or deemed "offensive". If the town is offering this service, it must offer it equally to all without discrimination.

Would you agree that, under the logic of this case, the Government Printing Office would be required to print such comments?

Yes, probably, and that's fine. If someone wants to have themselves marked as a bigot or an idiot in official records forever, let them. Though I can imagine an argument for distinction, in that the printing of comments in the Federal Register does not confer rights and benefits in the way that trademark protections do.

Has there even been a case on point?
posted by Sangermaine at 10:04 AM on January 27, 2016 [1 favorite]


If someone wants to have themselves marked as a bigot or an idiot in official records forever, let them.

More to the point it means enshrining hate speech in an official government record forever.

Though I can imagine an argument for distinction, in that the printing of comments in the Federal Register does not confer rights and benefits in the way that trademark protections do.

The benefit is the publication itself. Maybe that's less valuable than a trademark, but I don't see a meaningful distinction based on how valuable the benefit is.

Has there even been a case on point?

A few minutes on Westlaw suggests that there hasn't. Although up til now I think most people would have taken it as a given that the government can't be forced to print and distribute hate speech.

At root I think our disagreement is that you see this case as the government saying "we don't like what Tam says, so he doesn't get a trademark", whereas I see it as "we don't want to be forced to say what Tam says, so we won't give him a trademark, which would necessarily require us to repeat Tam's words".
posted by jedicus at 10:22 AM on January 27, 2016 [1 favorite]


Is giving a trademark an official endorsement of it by the state?

Washington DC's NFL team name had been trademarked for a very long time. The government was okay with repeating that team's name for a very long time, until it wasn't.

That trademark and other official records for that name are historically aligned or correlated with public policies that generally treat indigenous Americans as second-class citizens.

Perhaps it's not just a matter of (hate) speech, to the extent that there is also a history of passive and active actions by the state, that is associated either directly or indirectly with the act of granting official recognition to that speech.
posted by a lungful of dragon at 10:47 AM on January 27, 2016 [1 favorite]


I have just taken to referring to them as the potatoes and picturing a potato on the helmet.
posted by OHenryPacey at 11:17 AM on January 27, 2016


So, can we lose this too?

Title 18 of the United States Code, Section 1464, prohibits the utterance of any obscene, indecent or profane language by means of radio communication. Consistent with a subsequent statute and court case, the Commission's rules prohibit the broadcast of indecent material during the period of 6 a.m. and 10 p.m. FCC decisions also prohibit the broadcast of profane material between 6 a.m. and 10 p.m. Civil enforcement of these requirements rests with the FCC.
posted by Drinky Die at 2:35 PM on January 27, 2016


"I mean, go ahead and say that this is the way things should be or whatever, it's not like there can't be all sorts of exceptions to freedom of speech, but this is an infrastructure and power structure dedicated to constraining the content of communication and expression no matter how you dress it up. (See what I did there—fashion designs can't be owned yet, right?)"

Are you intentionally making a "property is theft" argument?

"More to the point it means enshrining hate speech in an official government record forever."

These seem like fundamentally different forms of publication. And as a second point, the benefits conferred by trademark registration would seem like they outweigh the government's "freedom of speech" in the matter.

" Although up til now I think most people would have taken it as a given that the government can't be forced to print and distribute hate speech."

By virtue of criminal procedures against hate crimes and racial violence often requiring direct testimony on the verbatim slurs or threats, and because court records are (in general) public record, the government can reasonably be compelled to print or make available hate speech. Would you prefer courts to censor it before making the records available?
posted by klangklangston at 8:15 PM on January 28, 2016


Are you intentionally making a "property is theft" argument?

I don't think so, since that phrase seems to primarily be associated with anarchism. (Though I'll admit to not knowing a great deal about anarchism.) I don't have any objection to society or government ensuring and even compelling that creators are compensated for their creative acts, I just don't think that we need to pretend that compulsion involved in any instrumental method of doing so is a form of freedom just because it has a laudable goal. Nor do I think the objective or primary purpose served by the present solution of construing ideas (and all or most instances of fixated communications and expressions of them) as a type of property is to actually ensure the compensation of creators.
posted by XMLicious at 11:34 PM on January 28, 2016


"I just don't think that we need to pretend that compulsion involved in any instrumental method of doing so is a form of freedom just because it has a laudable goal. "

I might be misreading you, but it sounds like you're arguing that compulsion by the state taints any freedom. It's an argument that I agree with in some ways but disagree with in others, and want to make sure I'm being fair to what you're saying. But adjudicating who has the property rights of any given thing has been a core function of government forever — Hobbes would put it down as the single most important justification for having any government at all, since his state of nature is basically "might makes right."

I agree that intellectual property doesn't necessarily fit well into a real property framework, but defending pretty much any right or freedom at all requires some form of government compulsion. I understand that there are disagreements over the nebulous use of "freedom" — I tend to think that universal healthcare makes citizens more free by allowing them to pursue other goals without having to have capital and effort tied up in many of their healthcare decisions, ones that they generally lack enough information to make effectively, but I understand that other people see that as decreasing their freedom to choose the healthcare they prefer.

It seems like, especially with the general doctrine of requiring a defense of a trademark to keep it, that ensuring more people would have access to that protection would increase their freedom, even if they use it to do things that I think are stupid or reprehensible.
posted by klangklangston at 5:23 PM on January 29, 2016


I see what you're saying, and have no problem describing such benevolent action by the government—even benevolent action involving compulsion—as a good, but for example a war could theoretically increase peace too. So I would concede that you can formulate concepts of freedom in such a way that preventing certain kinds of speech is not just a good but rather a form of freedom, but I think it's hazardous to get to the point where we're describing a thing as its antithesis—to specifically describe this as a form of freedom of speech. It's better I think to simply call the war a war, and perhaps come up with a framework in which it is a just war, than refer to it as a form of peace.

(I should note that the comment in one of the OP links that set me off involved referring to this as an expansion of First Amendment rights, rather than specifically as an expansion of free speech rights, so the commenter may not have been referring to the free speech or free expression aspect of the First Amendment.)

Maybe it's particularly a hazard for us here in the U.S., because we like to be so reverent of our own attitude towards free speech, to start twisting concepts around so as to be able to pronounce our version of free speech as pure and untainted. When people start disdaining European anti-hate-speech laws as insufficiently observant of general principles of free speech, international IP enforcement laws and practices that we happily establish for our business interests seem like a rather large timber in the eye.
posted by XMLicious at 11:25 PM on January 29, 2016


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