Today the Supreme Court agreed to decide an ongoing conflict, pitting a trademark registrant’s First Amendment rights against longstanding law precluding trademark registration of “disparaging” marks.

In This Corner: Trademark Law & the USPTO

Section 2(a) of the Lanham Act, precludes trademark registration of marks that are: immoral, deceptive or scandalous matter; or matter which may disparage …or bring them into contempt or disrepute….” Since World War II, the United States Patent and Trademark Office (USPTO) has relied on Section 2(a) to deny registration to such marks, but in December 2015, for the first time, the legality of Section 2(a) was called into question.

In This Corner: The First Amendment & The Slants

An Asian-American rock band, The Slants, sought to register its name, but the USPTO rejected the name as disparaging. The Slants appealed to a federal district court, which affirmed the USPTO’s decision, but when The Slants appealed to the Federal Circuit, the majority found that Section 2(a) was unconstitutional restraint of free speech under the First Amendment.

The Slants asked the Federal Circuit to order the USPTO to register its trademark, but the court declined. The USPTO issued guidelines, advising trademark applicants that any applications with potentially disparaging marks would be held in limbo until the issue was resolved.  Then the USPTO asked the Supreme Court to decide the issue.

In This Other Corner: The Washington Redskins

Meanwhile in June 2014 the USPTO deregistered the Washington Redskins’ trademark under Section 2(a). The Washington football team appealed, lost in federal district court and appealed to the Fourth Circuit. While that appeal is currently pending, the Washington team has asked the Supreme Court to intercede.

The Judges’ Score Card: Key Issues

The Slants, the Washington team and the Federal Circuit majority basically argue that trademarks equal free speech. They contend that Section 2(a) amounts to viewpoint discrimination and is subject to strict scrutiny  review, Section 2(a) fails to withstand “strict scrutiny” and is therefore unconstitutional. “Strict scrutiny” requires the USPTO to prove that Section 2(a) serves a compelling government interest, that it is narrowly tailored to achieve that interest, and that it is the least restrictive means for achieving that interest.

The USPTO, the two federal district courts, and the Federal Circuit’s dissenting opinion argue that trademarks do not equal free speech, and Section 2(a) is not subject to “strict scrutiny.” They contend that Section 2(a) does not prohibit any speech but instead denies the benefits of registration to private disparaging speech. In short, The Slants and the Washington team are entirely free to call themselves whatever they want, to publicize their names and use their names in commerce, but they are not entitled to the extra benefits conferred by federal trademark registration.

TKO or 12 Rounds?

While today’s grant of certiorari is only the beginning of the first round, recent Court decisions upholding hateful speech in other situations would tend to indicate that USPTO may be punching above its weight class and Section 2(a) might hit the canvas.

Nobody knows, and that’s why the United States Patent and Trademark Office (USPTO) just filed a petition asking Supreme Court to settle its turf battle with the Federal Circuit Court.

Ancient History: No Disparaging Trademarks

From WWII until March of this year, the USPTO routinely refused to issue trademarks that it considered to be disparaging under Section 2(a) of the Lanham Act.  So it wasn’t big news in 2011 when the USPTO summarily rejected Simon Shiao-Tam’s trademark registration for his rock band, “The Slants.” Mr. Tam appealed the USPTO’s decision to the Federal Circuit, which initially upheld the USPTO’s decision, but later agreed to rehear the appeal en banc.

Quantum Leap: First Amendment Trumps Lanham Act’s Prohibition of Disparaging Trademarks 

But, as we previously reported, it was huge news last December when the Federal Circuit reversed its earlier opinion and the USPTO’s decision and held that Section 2(a) violated the First Amendment, effectively stripping the USPTO of its power to deny trademarks that it deemed disparaging.   Presumably the court’s decision also strikes down Section 2(a)’s prohibition of marks that are immoral or scandalous.

Early last month, the USPTO reacted to the court’s decision, issuing guidelines that trademark applications with Section 2(a) issues would be held in limbo “while the constitutionality of these provisions remains in question…”  Shortly thereafter, Mr. Tam filed a writ of mandamus asking the Federal Circuit to force the USPTO to register The Slants trademark.

Breaking News: The Suspense was Killing the USPTO

The Federal Circuit denied the writ, but today the USPTO petitioned the Supreme Court to resolve:

Whether the disparagement provision in 15 U.S.C. 1052(a) is facially invalid under the Free Speech Clause of the First Amendment.

Usually issues percolate up slowly over the course of years before they reach the Supreme Court, but with the Federal Circuit insisting that Section 2(a) is unconstitutional and the USPTO refusing to cede its authority to reject disparaging trademarks there’s really no place else to take the issue.  And until the issue is ultimately resolved, trademarks that the USPTO considers disparaging will continue to sit in limbo.  Four of the justices will need to vote to hear the USPTO’s petition and, absent the extremely rare issuance of an extraordinary writ (allowing accelerated briefing and oral argument), even if the Supreme Court grants certiorari the matter won’t be decided for some time.

We recently wrote about In re Tam, the Federal Circuit Court’s decision invalidating Section 2(a) of the Lanham Act.  The Court held that Section 2(a), which precludes trademark registration of immoral, deceptive, scandalous or disparaging trademarks, violates the First Amendment.  The Court ruled for The Slants, a Portland-based band comprised of Asian Americans who had sought to trademark their name, but whose trademark application had been rejected by the U.S. Patent and Trademark Office (USPTO)  as “disparaging.”

The Court’s decision could have wider implications, especially with regards to the Washington Redskins’ appeal to regain their trademark, which is pending before the Fourth Circuit, a “sister” court to the Federal District Court. In December, Simon “Young” Tam (the Tam in In re Tam) wrote this blog post sharing his views about media coverage of the case, including the desire of the media (and attorneys) to compare the case to the Redskins’ case and issues surrounding identity politics. It’s definitely worth a read!

The USPTO Strikes Back, Sort of

In response to the In re Tam decision, last week the USPTO decided that it would put trademark applications with Section 2(a) issues in limbo.  The USPTO issued  Examination Guidance 01-16, which advised that “while the constitutionality of these provisions remains in question and subject to potential Supreme Court review” the USPTO will handle trademark applications with section 2(a) problems by issuing an “advisory refusal and suspend action on the application.”

The Slants’ Full Court Press

But The Slants aren’t willing to wait. Yesterday The Slants filed a writ of mandamus petition asking the Federal Circuit Court to order the USPTO to immediately process The Slants’ trademark registration.

The $64,000 question is whether the Federal Circuit Court will grant The Slants’ petition, rather than wait for the issue to percolate up to the Supreme Court. One Court observer  has noted that in recent years the Federal Circuit Court has become more aggressive about issuing such extraordinary relief.

Blog note: Photo updated 3/16/2016

On December 22, 2015, in a potentially far-reaching decision, the Federal Circuit Court of Appeals held that Section 2(a) of the Lanham Act, which prohibits registration of disparaging trademarks, is unconstitutional under the First Amendment’s guarantee of free speech. While perhaps the most publicized “disparaging trademark” controversy this year centered around the Washington Redskins, whose trademark registrations were cancelled earlier this year in a decision upheld by a federal district court (the case is currently on appeal to the Fourth Circuit), this case before the Federal Circuit involved Simon Shiao-Tam, who applied to register the name of his band, “The Slants,”  for trademark protection.

Though the Portland-based band is comprised of Asian American musicians who had previously stated that the name’s intent was to reclaim the word, the U.S. Patent and Trademark Office (USPTO) refused to register the mark based on Section 2(a)’s prohibition against registration of trademarks that consist of “immoral, deceptive, or scandalous matter; or matter which may disparage…persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” This decision was affirmed by the USPTO’s Trademark Trial and Appeals Board.

Ironically, in the initial appeal of the matter to the Federal Court, neither Tam nor the government focused on the First Amendment argument. At oral argument in the initial appeal in January 2015, Judge Kimberly Ann Moore (who is also a Washington Redskins fan) invited the government’s attorney to discuss the First Amendment issue, which the attorney declined to do.  Writing for the majority, Judge Moore affirmed the USPTO’s refusal to register the mark, finding that there was substantial evidence supporting the USPTO’s finding that the term “The Slants” was disparaging and also rejecting Tam’s backup argument that Section 2(a) was a violation of the First Amendment. The Federal Circuit stated that it was bound by precedent, namely a prior 1981 case (In re McGinley) that had held the government’s refusal to register a disparaging mark does not prevent a party from using it (and therefore, there was no First Amendment violation). See the April 2015 opinion In re Tam.

However, in that same decision, in a lengthy section entitled “additional views,” Judge Moore urged the Court to revisit In re McGinley and to reexamine the First Amendment issue. Thereafter, the Court of Appeals decided on its own, and without the request of the government or Mr. Tam, to review the decision en banc before a full panel of judges and ordered briefing on the First Amendment question, leading to this latest decision.  Although not binding on the Fourth Circuit Court of Appeals, which will be hearing the Washington Redskins’ appeal next year, the Fourth Circuit could be persuaded to reverse the USPTO’s cancellation of the Redskins’ trademark registrations.

A full copy of the Federal Circuit’s en banc opinion can be accessed here.

A young actress agreed to appear in a low-budget, Middle Eastern themed action film. The producer re-cut and over-dubbed the video, which included five seconds of the actress’ performance, fashioning it into “Innocence of Muslims,” an anti-Islamic screed, which portrayed the Prophet Mohammed in an exceedingly offensive way. When the producer uploaded his video to YouTube, there were violent protests throughout the Middle-East. An Egyptian cleric issued a fatwa calling for the deaths of everyone involved in the video, including the actress. The actress sued the producer and Google, seeking an order to take down the video.

The Trial Courts Deny the Actress’ Motion for Takedown Orders

The actress sued the producer and Google, YouTube’s owner, in California Superior Court, alleging, inter alia, copyright infringement and sought an immediate take down order. The actress claimed that she owned the copyright to her performance and that the producer and Google violated that copyright. When the state court denied her motion for an injunction, she dismissed her state court action and filed a similar action in the U.S. District Court for the Central District of California, whose jurisdiction includes Hollywood. The District Court also denied the actress’ motion for a takedown order, finding (a) that she was unlikely to succeed on the merits because her copyright claims were unclear (since she had granted the producer an implied license to distribute her performance as part of the video) and (b) that the risk of irreparable harm had diminished since the video had been on the internet for five months.

9^th Circuit Panel Grants Takedown Order, Bad Film Makes Bad Law

The actress appealed, and Justice Kozinski, writing for a divided panel of three justices from the 9^th Circuit, found the district court abused its discretion and remanded the case back to the district court with clear guidance to grant the motion, even though the Court described the actress’ copyright claims as “debatable.”

The Court conceded that, even if the actress were to “complain that the film has a different title, that its historical depictions are inaccurate, that her scene is poorly edited or that the quality of the film isn’t as she imagined, she wouldn’t have a viable claim that her implied license had been exceeded.” But, in a statement reflecting subjectivity and jurisprudential gymnastics echoing Justice’s Stewart’s famous “I’ll know it when I see it” standard, the Court opined that her implied license was violated because the “the film isn’t intended to entertain at all.” The Court cited as evidence the fact that the producer lied to the actress regarding the nature of the film, which illustrates the Court’s extraordinary naiveté regarding the inner workings of Hollywood; it’s a rare exception when a finished film resembles the initial vision. The Court further disagreed with the lower court on the question of irreparable harm. Even though the actress’ name and photograph had been publicized and the fatwa had already issued, the Court concluded that the risk would reduce if Google took down the video. The Court rejected Google’s assertion that a takedown order was unconstitutional restraint of speech under the First Amendment.

The 9^th Circuit Order En Banc Reviews and Reverses the Panel, Reinstating the District Court’s Denial of the Injunction

The full 9^th Circuit, sitting en banc, reversed the panel’s decision.

Strike One-Actress’ Performance Not Copyrightable

9^th Circuit En Banc found that the actress’ performance was not the proper subject of copyright, noting that the Copyright Office generally refuses to copyright actors’ performances in motion pictures and had refused the actress’ application here, and that, while the producer had “fixed” her performance in a tangible medium (film), she had failed to do so.

Strike Two-Lack of Nexus Between Copyright Infringement and Irreparable Harm

The Court recognized the seriousness of the fatwa, but noted the “mismatch between her substantive copyright claim and the dangers she hopes to remedy….” The Court likened this to a prior case where wrestler Hulk Hogan sought to prevent the posting of a sex tape under a copyright infringement theory. Hulk Hogan lost because any irreparable harm flowed from the private nature of the video’s content and not from any “irreparable harm in the copyright sense.” The Court also agreed with the District Court’s finding that the actress’ delay in seeking relief undercut her claim for emergency relief.

Strike Three-The 9^th Circuit Panel’s Order “Gave Short Shrift to the First Amendment”

Finally, the 9^th Circuit’s En Banc decision admonished the panel for ignoring the “First Amendment values at stake. The mandatory injunction censored and suppressed a politically significant film-based upon a dubious and unprecedented theory of copyright.” Citing Supreme Court precedent that copyright claims are not “categorically immune from challenges under the First Amendment,” the Court held that “Prior restraints pose the ‘most serious and least tolerable infringement on First Amendment rights’ and [the actress] cannot overcome the historical and heavy presumption against such restraints with a thin copyright claim in a five-second performance.”

Dissent-Actress’ Performance is Copyrightable

In a dissent that is bound to launch a thousand law review articles, Justice Kozinski accused that majority of making “a total mess of copyright law, right here in the Hollywood Circuit.” In an argument that echoes the “when does human life begin” debate, Justice Kozinski argued that the majority erred in holding that only the final film is subject to copyright, when, in fact, each “contribution to a movie can be copyrightable (and thus can be a ‘work’).”