Death to Section 2(a)! Hail Coleman, Connell, MacMull, and The Slants!

If they are not your favorite band, they should be. (Unless you hate freedom and America)

If they are not your favorite band, they should be. (Unless you hate freedom and America)

Last month, the U.S. Court of Appeals for the Federal Circuit decided In re Tam, 2015 U.S. App. LEXIS 22593 (Fed. Cir. Dec. 22, 2015). In it, the Federal Circuit made a sweeping pronouncement that the First Amendment applies to trademark registrations, and that a long-criticized prohibition on “disparaging” trademarks could no longer stand. The portion of the trademark act that fell was Section 2(a) of the Lanham Act, 15 U.S.C.S. § 1052(a).

Of course, I was delighted. I have long railed against Section 2(a). My first (losing) fight against this provision was in 2007. See Billman, Jeffrey, The F Bomb, Orlando Weekly, Jun. 7, 2007. And, once CNN gave me some column space, I used a lot of it to write about this issue. (Marc J. Randazza, Decision on Asian-American band's name is wrong and Why Redskins decision is wrong.

So when this decision came in, I jumped for joy. That said, it was a huge pain in my ass. I had just sent off my law review article on the subject to the printer, with all the final edits completed. I had a whole section criticizing Section 2(a) jurisprudence, and unflatteringly comparing U.S. law to recent European decisions. Then, In re Tam came out, and I had to rush to update it. Thank goodness that the Federal Circuit didn’t wait one more day to release the decision.

Ron Coleman

Ron Coleman

But, of course, this was a small price to pay for the delight of seeing our First Amendment rights protected, and seeing the personal victory for the lawyers in the case – Ron Coleman, John Connell, and Joel MacMull – First Amendment Bad Asses of 2015, as far as I am concerned.

However, the decision seemed to leave an important fight for another day. But, a recent missive by the Department of Justice might have brought us that day.

John Connell

John Connell

Section 2(a) does not only prohibit “disparaging” marks. Section 2(a) has some restrictions in it that remain – some of them reasonable, even. Section 2(a) bars registration of marks that deceptively suggest a connection with persons, institutions, beliefs, or national symbols. Since the function of a trademark is to distinguish a mark owner’s goods and services from those of other producers or suppliers, these prohibitions make perfect sense. There is no commercial rationale to permit false advertising in a trademark.

The First Amendment Lawyers Association provided an amicus brief to the In re Tam Court, in which it argued that § 2(a)’s prohibition on “immoral and scandalous” trademarks should also die along with the prohibition on “disparaging” trademarks. However, since that specific issue was not presented squarely before the Court, the Court declined to explicitly expand its ruling to include all of § 2(a).

Joel Mac Mull

Joel Mac Mull

Despite this urging, In re Tam left this most problematic portion of Section 2(a) standing, if just barely. It is not that the court approved of this clearly unconstitutional provision. Far from it. The Court simply recognized that this particular portion of the Act was not being challenged in this particular case. Nevertheless, in Footnote 1 of the decision, the Court augured the downfall of this provision as well.

We limit our holding in this case to the constitutionality of the § 2(a) disparagement provision. Recognizing, however, that other portions of § 2 may likewise constitute government regulation of expression based on message, such as the exclusions of immoral or scandalous marks, we leave to future panels the consideration of the § 2 provisions other than the disparagement provision at issue here. To be clear, we overrule In re McGinley, 660 F.2d 481 (C.C.P.A. 1981), and other precedent insofar as they could be argued to prevent a future panel from considering the constitutionality of other portions of § 2 in light of the present decision.

And with that, the most offensive portion of 2(a) remained intact.

But it was like a billiard ball hanging on the edge of the pocket. One tap, and it would fall in. However, just like when you play pool, sometimes the ball hangs there for a second, and then falls in on its own. That just happened. In a letter brief issued Thursday, the Department of Justice conceded that § 2(a) was no longer enforceable in light of In re Tam.

We do not believe that given the breadth of the Court’s Tam decision and in view of the totality of the Court’s reasoning there, that there is any longer a reasonable basis in this Court's law for treating them differently…
The reasoning of Tam requires the invalidation of § 2(a)'s prohibition against registering scandalous and immoral Trademarks as well."(source)

Before we call the game over, the Department of Justice hints that it may appeal the In re Tam decision. Should that happen, the Supreme Court outcome would be anything but preordained. However, the In re Tam decision seems to be on solid constitutional grounds. I am optimistic that if the government does decide to appeal, that it will not be overturned. That said, I think I would be naïve if I said it would be a 9-0 decision.

Certainly, I find both prohibitions to be offensive under the First Amendment, but I can at least emotionally (if not Constitutionally) get on board with the government wanting to put its fingers on the scales of justice when it comes to opposing racism. But, as the In re Tam case shows us, when the government tries to do that, it usually does so with all the grace and logic of a Chris Farley character. Nevertheless, give them credit for good intentions.

On the other hand, the prohibition on "immoral and scandalous" trademarks was nothing more than a neo-Comstock attempt to legislate morality and to suppress sexual speech in order to serve illegitimate goals. One of my favorite law review articles ever was by Steve Russell, writing about the Communications Decency Act. He wrote:

By trying to regulate obscenity and indecency on the Internet, you have reduced the level of expression allowed consenting adults to that of the most anal retentive blueballed fuckhead U.S. attorney in the country. (source)

Every time I got a Section 2(a) rejection under the immoral and scandalous clause, I heard those words in my head, replacing "U.S. Attorney" with "trademark examiner." Today, perhaps, those examiners can go listen to Louie Louie, see if they find naughty words in it, and go whine to the FBI about it.

Some may feel this is a narrow decision regarding trademark rights, and those who don’t own any trademarks may not think this is a big deal, especially if they won’t be applying for any “immoral or scandalous” registrations. If you feel this way, you would be precisely wrong.

Every American should be celebrating this news. When the government decides to suppress First Amendment rights, no matter how narrow that suppression might be, we all have a little less liberty. When the courts recognize the expansive nature of those rights, we are all more free. It’s refreshing to see that the Department of Justice decided to yield to the In re Tam decision — even if it turns out to be temporary, rather than pathologically defending an unconstitutional law in the name of one very narrow definition of morality.

My delight at this development is both personal and professional. Professionally, I have been banging my head against Section 2(a) for most of my career. When I speak on the subject, I proudly announce that I have lost more 2(a) administrative appeals than I can remember. It isn’t that I’m proud of losing – but I’m proud of my clients for being willing to take up the fight, even in light of the fact that until In re Tam, it was a hard uphill battle, with the entire weight of the appellate decisions just brushing off the First Amendment as if it were an annoying little gnat.

I'm looking at YOU, In re Fox, 702 F.3d 633 (Fed. Cir. 2012) In re Mavety Media Grp. Ltd., 33 F.3d 1367 (Fed. Cir. 1994) and Test Masters Educ. Servs., Inc. v. Singh, 428 F.3d 559 (5th Cir. 2005). If you read these cases, it will make you pretty sad that appellate judges can have such little reverence for the First Amendment, and such intellectual laziness in light of their own preconceived notions about morality. But, In re Tam restores all faith!

Those of us who believe in the First Amendment always believed that these decisions were wrong, but unfortunately, the government would exhaust each and every client before getting to the Federal Circuit to challenge it. Besides, how many times can you push that rock up the mountain before you just ask whether it is worth it?

But, finally, there was a client who didn't give up and who thought it was worth it — Simon Shiao Tam and the Slants (your new favorite band).

Therefore, I think that we all need to slap a few people on the back here. First, the Slants and Simon Shiao Tam for having the conviction to keep fighting this case to the appellate court. And just as much, Ron Coleman and Joel MacMull – the lawyers who handled the case. These lawyers did an incredible job – and they did it pro bono.

Because of them, your First Amendment rights are broader, more robust, and more protected today than they were just over a month ago. I have the privilege of calling Ron and Joel my friends. But, even if I did not know them, I would demand that all readers hoist them on their shoulders for what they’ve done for us. Fighting a First Amendment fight, for free, against some very poor odds is what I call “heroic.”

And if the government does appeal the In re Tam case to the Supreme Court, they’re going to have the bigger guns, unlimited funds, and at least a few of the justices already in their pockets.

Well, that doesn't concern me.

I like the good guys’ chances, with First Amendment Bad Asses like Ron, John, and Joel fighting for us.

____

If you find the issue of morality and intellectual property rights of interest, I'd be delighted if you downloaded and read my law review article on the subject. See Marc J. Randazza Freedom of Expression and Morality Based Impediments to the Enforcement of Intellectual Property Rights (January 16, 2016). Nevada Law Journal, Vol. 16, No. 1, 2016. This issue is only a part of the article, as it deals with morality and IP rights on a global scale. If you do read it, download it rather than just reading in your browser. (It gets the numbers up)

Last 5 posts by Marc Randazza

Comments

  1. says

    I'll admit to feeling some schadenfreude when the Redskins lost their trademark, but ultimately this is the right decision. The less discretion bureaucrats have at determining what is and isn't offensive, the better off we all are.

    One of my favorite interchanges from Frank Zappa's Senate testimony, opposing "parental advisory" labels on records:

    Senator HAWKINS. Well, I might tell you that if you were to go in a toy store — which is very educational for fathers, by the way; it is not a maternal responsibility to buy toys for children — that you may look on the box and the box says, this is suitable for 5 to 7 years of age, or 8 to 15, or 15 and above, to give you some guidance for a toy for a child.

    Do you object to that?

    Mr. ZAPPA. In a way I do, because that means that somebody in an office someplace is making a decision about how smart my child is.

    Obviously it's not the same thing and Hawkins's analogy is disingenuous (because choking hazards are not speech), but I like Zappa's rejoinder and share his disdain for somebody in an office someplace trying to make my decisions for me.

  2. TK-421 says

    Section 2(a) bars registration of marks that deceptively suggest a connection with persons, institutions, beliefs, or national symbols. Since the function of a trademark is to distinguish a mark owner’s goods and services from those of other producers or suppliers, these prohibitions make perfect sense. There is no commercial rationale to permit false advertising in a trademark.

    What if somebody argued that, for example, the name "Redskins" falsely suggested a connection with (and implicit approval of) persons of Native American ancestry? Or would that be too loose and unspecific a connection to be actionable? (I ask this as a thought experiment, not a proposal.)

  3. Korp says

    What if somebody argued that, for example, the name "Redskins" falsely suggested a connection with (and implicit approval of) persons of Native American ancestry? Or would that be too loose and unspecific a connection to be actionable? (I ask this as a thought experiment, not a proposal.)

    I think the only way you could make that argument is if other teams in the league made similar claims, like that the Cowboys were "approved of" by all cowboys or the Steelers by all steel workers, something like that. The existence of the Jets, the Broncos, the Dolphins, etc., things all incapable of approving of a team, would demonstrate the argument to be pretty silly.

  4. MDT says

    @TK-421

    Let's parse it.

    persons – The problem you'd have with this is that persons is traditionally specific (a singular person or specific group), not general. 'Redskins' as a perjorative is spread over a large class of people, just as 'red neck' is as well. I don't think you could argue that 'red neck' is associated with any given specific group any more than Redskins is (before you argue it is, what percentage of Native American blood is required? 1/1? 1/2? 1/4? 1/8? 1/16? 1/32?). It's a very big stretch I think. Not only that, you can't argue it implies approval, there have been too many political actions against it to ever get anyone confused that they approve of the term.

    institutions – You can't really argue that it's associated with the tribal councils, as they actively deny it's association with them.

    beliefs – If anything, it might be tied to the KKK's beliefs if you stretch them hard and squint sideways, but not to the people who'd be objecting to the trademark. And again, a very big stretch I think.

    national symbols – Not even in the same solar system…

    I think the best way to handle this is with speech, not lawsuits.

  5. onehsancare says

    Missing a word: On the other hand, the prohibition on "immoral and scandalous" trademarks was nothing more than a neo-Comstock attempt to legislate morality and to suppress sexual speech at the _________ to serve illegitimate goals.

  6. Max says

    TK421
    Considering that the Redskins name was adopted due to a connection (and with implied approval) of person who claimed Native American ancestry – Lone Star Dietz – the argument can be made, but the case for Dietz being or not being a Native American is murky and in any case the deception is not on the part of the Redskins in adopting the name but in Dietz in making the claim of Native American ancestry and the trademark is based on a good-faith claim of connection.

  7. Alex Godofsky says

    I don't think a challenge to the Redskins trademark on the "deceptively suggest a connection with persons, institutions, beliefs, or national symbols" grounds. Surely a problem with that would be that no one is actually deceived, right?

  8. Matt says

    Assuming this decision stands, what's the effect for the Redskins on the trademark case they lost? Do they have to re-apply for the trademark, or does the dismissal itself get overturned?

  9. Jay Wells says

    The demise of the disparagement provision of Section 2(a) was the handiwork of Circuit Judge Moore. Twenty years ago she penned a law review article proclaiming that the disparagement provision is unconstitutional. Messrs. Coleman et al did not press the Freedom of Speech issue, but Judge Moore brought it up at oral argument, appended "her additional views" to the original CAFC decision affirming the TTAB refusal, and then wrote the final majority opinion. Coleman at all were at the right place at the right time, but this is Judge Moore's doing.

  10. Bees! says

    Marc, you note the court didn't expand the decision to the immoral and scandalous clause. What kind of test case do you think would be needed to get that knocked out, too? Should someone convince the band Shitfucker (with their debut album "Suck Cocks in Hell") to now apply for a trademark?

    (I'm not being facetious. That's a real band, and real album on Hell's Headbangers Records)

  11. TR-8R says

    @TK-421 – why aren't you at your post?

    @Mark – while we're talking trademarks and registering, could you give a once-over about DNC Parks & Recreation and their trademarks in Yosemite park names? Can they be (should they be) forced to relinquish the trademarks, as there association with the locations in question was only by contract with the National Park Service?

    Apparently they are "not threatening to keep the names, but do want fair value". How would fair value exceed the cost of registering the trademark itself in this case?

    Even though the LA times seems to have a comprehensive article on the lawsuit itself, perhaps you could cover the issue of how the trademarks could be assigned other than to the park service itself, given the national symbols restriction? Is this simply a failure of trademark law, where association with (fill in the blank) can be revoked, yet the ownership of the trademark does not follow?

  12. Jim says

    Seeing these guys in town on Saturday. Thanks for introducing me to a kickin band! That they are willing to take an intelligent and principled stand is a pretty great bonus. I fucking love my city.

  13. Encinal says

    This article verges on Orwellian. A trademark restricts speech, in prohibiting anyone but the legal owner from using the trademark. So this decision will increase the amount by which speech is restricted. And Randazza is presenting it as a victory for the First Amendment?

    Also, what if someone else applies for the Redskins trademark?

    @Thad

    Obviously it's not the same thing and Hawkins's analogy is disingenuous (because choking hazards are not speech)

    More importantly, my understanding is that Parental Advisories are government-mandated, while age guidelines are not.

  14. says

    @ Encinal

    I presume that you don't know what a Trademark actually is or does. It isn't as if The Slants can go out and tell other people that they don't get to use the word "Slant" anymore. Trademarks are about preventing consumer confusion. So, it is not a First Amendment problem if Listerine is prohibited from claiming that it cures alzheimers disease. Further, lets say you develop a neighborhood and you decide you want to name the main street in it "Main Street," but your town already has a "Main Street." You haven't lost a First Amendment right there.

    So… the article may be poorly written, sophomoric, dipshitted, any any other number of insults, but "Orwellian" is a pretty fucktarded thing to call it.

  15. Taliesyn says

    My guess is that Encinal is one of those folks who disagree with the entire notion of owning your own brand or identity. Wouldn't be the first time I've run into one.

  16. Encinal says

    Whether there is a subtlety to trademarks that has escaped me is still an open question, but it is clear that you have no understanding of the concept of an argument. I never claimed that there is a First Amendment problem regarding Listerine, which makes your statement in this regard a straw man, and a rather bizarre one at that as any restriction on Listerine might face on claiming to be a cure for Alzheimer's Disease (note the capitalization) has nothing to do with trademark (note the lack of capitalization). Despite the fact that the word "so" is used by people who understand basic rhetoric to mark a conclusion that logically follows from the preceding statements, the second paragraph of your post is a complete non sequitur, as you have not given anything that consists of a supporting point for that claim. Nothing in your post in any way present anything even resembling a response to my post. It's simply a litany of straw men followed by you declaring something somewhat resembling my claim to be false.

    The fact of the matter is that if any side in this case is asking for a restriction on speech, it is The Slants. Had they not obtained the trademark, that would not constitute the government prohibiting them from engaging in any speech, except perhaps in declaring that they have a trademark. Thus, your claiming it a victory for Free Speech is bizarre. And you have nothing but straw men, non sequiturs, and profanity in response to that. You seem to be more interested in showing what view as your Mad Smackdown Skllz than actually engaging in a discussion.

  17. Termy says

    This is an odd interpretation, Encinal. Owning a trademark for "The Slants" hardly restricts speech. Hasbro can stop another company from selling children's toys under the name Transformers. This doesn't mean we can't use the word "slants" or "transformers", merely that we can't market music or children's toys in such a way as to cause confusion with those products. I can hardly call it a restriction on my free speech that I can't try to pass off some cut-price toys I've knocked up in my garage as official Transformers, because any motive I'd have to try to pass my shoddy workmanship off as an already established mark would be purely dishonest. Furthermore, by my understanding, registering a trademark or not does not determine whether a trademark actually exists, and what The Slants were trying to do in this case was register their trademark. I do not see how this was at all Orwellian on the part of The Slants or Marc for celebrating this outcome – especially as it does not involve the authorities imposing the trademark.

    The free-speech issue DOES comes into play when you consider that the authorities tried to restrict the band The Slants from trademarking that name on purely moral grounds. Were The Slants instead to have registered the trademark The Trots or The Runs or, who knows, Encinal Is A Twit, presumably the authorities would let it pass. So the speech restriction has been purely on the government's behalf – telling the band members of The Slants what they can register themselves as.

    Claiming that it is The Slants who are restricting speech, not the government, for asking for the trademark is patently ridiculous. That is faintly like saying blasphemy laws aren't restricting free speech unless people choose to blaspheme. The Slants have a right to trademark their name both for their protection as well as consumer protection, and they shouldn't have official pressure to change it based on some grey little bureaucrat's prurient nature.

    * I'm not from the US, and we have trade marks, not trademarks here, so I'm sure somebody will correct my misconceptions.

  18. Encinal says

    "Owning a trademark for "The Slants" hardly restricts speech."

    It is indisputable that "The Slants" being trademarked restricts speech. The only issue is whether the amount that it restricts speech is significant. I have made it quite clear that my position is NOT that the the degree to which a trademark restricts speech is significant, but that If this is an issue of speech being restricted, then it is The Slants who are asking for a restriction on speech.

    "I can hardly call it a restriction on my free speech that I can't try to pass off some cut-price toys I've knocked up in my garage as official Transformers, because any motive I'd have to try to pass my shoddy workmanship off as an already established mark would be purely dishonest."

    It quite obviously is a restriction on speech. You can argue that the restriction is so minimal and the justification so great that it should be permitted, but to argue that it is not a restriction at all is absurd. The fact that you're presenting an argument that equivocates between those two issues shows a lack of care to make sure your arguments are legitimate.

    "The free-speech issue DOES comes into play when you consider that the authorities tried to restrict the band The Slants from trademarking that name on purely moral grounds."

    You have a thesis, but no supporting arguments.

    “So the speech restriction has been purely on the government's behalf – telling the band members of The Slants what they can register themselves as.”

    You are simply begging the question by referring to this as a “speech restriction”.

    “Claiming that it is The Slants who are restricting speech, not the government, for asking for the trademark is patently ridiculous.”

    I never said that The Slants are restricting speech; I said that they are asking for the government to restrict speech. And my position is obviously true, and simply declaring my position “patently ridiculous” doesn't change that. What is patently ridiculous is claiming that an act that would punish particular speech is not a restriction on speech.

    “That is faintly like saying blasphemy laws aren't restricting free speech unless people choose to blaspheme.”

    It's not at all like that. Do you understand the concept of analogy at all?

    “The Slants have a right to trademark their name both for their protection as well as consumer protection, and they shouldn't have official pressure to change it based on some grey little bureaucrat's prurient nature.”

    That is a legitimate position to take, but just because there is an argument to be made that The Slants should be allowed to trademark their name, that doesn't mean that any argument for that position is valid.