U.S. Supreme Court

Supreme Court strikes down ban on disparaging trademarks

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The Slants

The Slants. Photo Courtesy of The Slants.

The U.S. Supreme Court on Monday struck down a provision of the Lanham Act that denies registration for “disparaging” trademarks.

The court ruled in an appeal by Simon Shiao Tam, who wants to trademark the name of his Asian-American rock band, the Slants.

The provision “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend,” Justice Samuel Anthony Alito Jr. wrote in a portion of his opinion (PDF) joined by seven other justices. Justice Neil M. Gorsuch did not take part in the case.

The decision is good news for Washington’s NFL team, which lost its trademark because its name is disparaging to Native Americans. Its appeal is pending before the Richmond, Virginia-based 4th U.S. Circuit Court of Appeals.

Tam’s group called itself the Slants because it wanted to “reclaim” and “take ownership” of stereotypes about Asians.

The Lanham Act provision at issue is known as the “disparagement clause.” It banned registration of a trademark that may disparage “persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

The provision amounts to viewpoint discrimination, even though it evenhandedly prohibits disparagement of all groups, Alito wrote. “It applies equally to marks that damn Democrats and Republicans, capitalists and socialists, and those arrayed on both sides of every possible issue. It denies registration to any mark that is offensive to a substantial percentage of the members of any group. But in the sense relevant here, that is viewpoint discrimination: Giving offense is a viewpoint.”

The seven other members of the court agreed that the provision amounted to viewpoint discrimination, though four of the justices wrote separately to state that the holding made it unnecessary to give extended treatment to other questions raised by the parties.

In the separate opinion, Justice Anthony M. Kennedy said the registration had been denied not because the Slants intended to demean or offend, but because the government thought the trademark would have that effect on some Asian-Americans.

“The government may not insulate a law from charges of viewpoint discrimination by tying censorship to the reaction of the speaker’s audience,” Kennedy wrote.

All eight justices agreed that trademarks are not government, speech, which would have required a different analysis.

The case is Matal v. Tam.

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