[Eugene Volokh] Supreme Court will hear ‘Slants’ trademark case, which is directly relevant to the Redskins controversy

The Asian American band The Slants, featuring from left, drummer Tyler Chen, singer Ken Shima, bassist Simon Tam and guitarist Joe Jiang. (Anthony Pidgeon/Redferns)

Federal trademark law lets people register their trademarks, which gives them various legal remedies for stopping others’ infringement of those trademarks. But § 2(a) of the law excludes the registration of “scandalous, immoral, or disparaging marks.” Among other things, that provision covers marks that a “substantial composite of the referenced group” perceives as disparaging a religion, nation, ethnic group, belief system and the like.

Based on that provision, the Patent and Trademark Office barred the registration of THE SLANTS (I use all-caps for this in this post, to follow trademark opinion style), a trademark used by Simon Tam’s Asian American musical group of that name. The PTO has famously canceled the registration of REDSKINS. And it has done the same for many other marks: STOP THE ISLAMISATION OF AMERICA, THE CHRISTIAN PROSTITUTE, AMISHHOMO, MORMON WHISKEY, KHORAN for wine, HAVE YOU HEARD THAT SATAN IS A REPUBLICAN?, RIDE HARD RETARD, ABORT THE REPUBLICANS, HEEB, SEX ROD (apparently some sort of reference to the Red Sox), MARRIAGE IS FOR FAGS, DEMOCRATS SHOULDN’T BREED, REPUBLICANS SHOULDN’T BREED, 2 DYKE MINIMUM, WET BAC/WET B.A.C., URBAN INJUN, SQUAW VALLEY (in part), N.I.G.G.A. NATURALLY INTELLIGENT GOD GIFTED AFRICANS, “a mark depicting a defecating dog … (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,” and more.

This morning, the Supreme Court agreed to hear the Slants case and decide whether this sort of limitation on what may be trademarked is constitutional. Late last year, the U.S. Court of Appeals for the Federal Circuit had held (In re Tam), by a 9-to-3 vote, that the exclusion of “disparaging” marks violated the First Amendment. The government asked for review, and Simon Tam agreed that review was proper. (My colleague Stuart Banner wrote the petition, and I helped with it; our view was that review should be granted because, “This issue is undeniably important. The Court is very likely to address it in the near future, in another case if not in this one. Meanwhile, respondent Simon Tam waits in limbo. His trademark rights will not be secure until the Court resolves this issue once and for all.”)

Being a lawyer in the case, I can’t offer an impartial opinion. But I thought I’d pass along a quick summary of the Federal Circuit opinions, which I posted last year. (The summary necessarily oversimplifies: The opinions put together take up more than 100 pages.)

A. The majority in the Federal Circuit (nine judges, written by Judge Moore):

1. The law denies rights to certain speakers: The exclusion of disparaging marks denies important legal rights to trademark owners. It doesn’t ban speech (since people remain free to use even unregistered marks). But it does deprive marks of protections that are important to trademark owners, and therefore tends to discourage people from using disparaging marks.

“[I]f the government could deny a benefit to a person because of his constitutionally protected speech or associations, his exercise of those freedoms would in effect be penalized and inhibited. This would allow the government to produce a result which it could not command directly.” “Denial of [registered trademark] benefits creates a serious disincentive to adopt a mark which the government may deem offensive or disparaging….”

2. This denial is viewpoint-based: The government instituted the exclusion because of “disapproval of the message conveyed” by the marks. “Underscoring its hostility to these messages, the government repeatedly asserts in its briefing before this court that it ought to be able to prevent the registration of ‘the most vile racial epithets and images,’ and ‘to dissociate itself from speech it finds odious.’”

And “the disparagement provision at issue is viewpoint discriminatory on its face. The PTO rejects marks under § 2(a) when it finds the marks refer to a group in a negative way, but it permits the registration of marks that refer to a group in a positive, non-disparaging manner” (e.g., “CELEBRASIANS, ASIAN EFFICIENCY, … NAACP, THINK ISLAM, NEW MUSLIM COOL, MORMON SAVINGS, JEWISHSTAR, and PROUD 2 B CATHOLIC”). “Speech that is offensive or hostile to a particular group conveys a distinct viewpoint from speech that carries a positive message about the group. STOP THE ISLAMISATION OF AMERICA and THINK ISLAM express two different viewpoints. Under § 2(a), one of these viewpoints garners the benefits of registration, and one does not.”

3. The law isn’t saved by the “commercial s