Pattishall IP Blog

June 19, 2017

50 Years After Lanham Act’s Enactment, The Supreme Court’s Slants Decision Unanimously Holds Its Clause Barring Disparaging Marks Unconstitutional Under First Amendment; Far-Reaching Impact Will Cover The Washington Redskins and Likely Far Beyond

Filed under: Constitution, Litigation, TM Registration, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:23 pm

By Belinda J. Scrimenti

As its 2016-17 term concluded, the U.S. Supreme Court held unanimously in Matal v. Tam[1] that the disparagement clause of the Lanham Act, Section 2(a), is unconstitutional in violation of the First Amendment’s Free Speech Clause.  The clause at issue—a provision unchanged from the original 1946 enactment of the Lanham Act—prohibits registration of marks which “may disparage . . .  persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt or disrepute.” [2]  The Opinion of the Court, written by Justice Alito – joined in various parts by all of the Justices – reflected the sacred nature of the First Amendment protections at stake when applicants seek to register trademarks deemed offensive.  A concurring opinion by Justice Kennedy, joined by Justices Ginsburg, Sotomayor and Kagan, further highlighted the fundamental simplicity of the First Amendment protection that must be accorded trademark registration to prevent the slippery slope of governmental censorship.

The decision was issued in the case involving an Asian rock band seeking to trademark its name the “Slants,” which band founder Simon Tam asserts he selected in order “‘reclaim’  the term and drain its denigrating force as a derogatory term for Asian persons.”  But the decision’s repercussions will be much broader – most directly to the efforts by the Washington Redskins ownership to defend against longstanding efforts by Native American activists to cancel its trademark registrations under the same provision of the Lanham Act.

The Court’s opinion began with a primer on trademark law, outlining its history and origins, and purposes. Among the authorities cited were two articles by this Firm’s name partner, Beverly Pattishall, a highly recognized trademark expert of his generation.[3]  The Court also noted the now more than 2 million active marks on the federal register.  The Court next quickly dispensed with the argument put forth by Tam (which may have distinguished the case from that of the Redskins’ case, as cancellation actions brought by individual Native American persons) that the clause did not apply to Tam’s band name because the definition of “persons” included only “natural and juristic” persons, not “non-juristic” entities such as racial and ethnic groups.  Although Tam had not raised the argument in the Federal Circuit or on the writ of certiorari, the Court nevertheless expressed the necessity of rejecting this claim.[4]  The Court concluded that the disparagement clause did prohibit registration of terms that “disparage persons who share a common race or ethnicity.”[5]

The Court then turned to the fundamental issue of whether the clause violates the Free Speech Clause of the First Amendment.  The Court first rejected the Government’s arguments that the registration of trademarks constitutes government speech, not private speech.  The Court pointed out that if “private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints.”[6]  The Court concluded that “it is far-fetched to suggest that the content of a registered mark is government speech,” noting that if the federal registration makes a mark government speech, “the Federal Government is babbling prodigiously and incoherently.”[7]  Significantly, the Court noted the “most worrisome implication” of the Government’s argument concerned the copyright registration system, in that such a ruling could eliminate similar protections for books and writings based on the expressive content.[8]

In the next section of the Opinion, Justice Alito (joined by an unusual mix of Justices – Roberts, Thomas and Breyer) rejected the Government’s assertion that the clause should be upheld because it is “subsidized speech.” The Court handily rejected the argument, noting that the situation was readily distinguished from cases involving government cash or equivalent subsidies, because, in contrast, the trademark applicant must pay fees.[9]  The Court concluded that the clause also could not be protected as analogous to cases in which a unit of government creates a limited public forum for private speech where some content and speaker-based provisions may be allowed, noting that even in such situations “viewpoint discrimination” is forbidden.[10]

Having concluded that trademark registration is not government speech, Justice Alito’s Opinion next turned to the question of whether trademarks are commercial speech and therefore subject to relaxed scrutiny. Quickly dismissing the competing claims of the Government and Tam as to whether trademarks are all commercial speech or have an expressive component, he found that the disparagement clause failed even the relaxed test of a commercial speech restriction that must serve “a substantial interest” and be “narrowly drawn.”[11]  Justice Alito rejected as “substantial interests, the Government’s interest in preventing offensive speech as “that idea strikes at the heart of the First Amendment.”  Finally, he rejected the asserted interest in protecting the “orderly flow of commerce” as “far too broad.”

The concluding remarks by Justice Alito are particularly notable in this era of a super-charged political environment:  “The commercial market is well stocked with merchandise that disparages prominent figures and groups, and the line between commercial and non-commercial speech is not always clear, as this case illustrates.  If affixing the commercial label permits the suppression of any speech that may lead to political or social ‘volatility,’ free speech would be endangered.”[12]

The ramifications of the Court’s decision are yet to be seen.  The first, nearly certain result, will be the upholding of the Washington Redskin’s registrations in the face of challenge under Section 2(a).[13]  Less certain is the greater fallout.  Will the ruling open the floodgates for applications seeking registrations of any number of offensive, hateful and otherwise distasteful marks?  While recognizing the source and consumer protection functions of trademarks, Justice Kennedy noted in his concurrence that there remain only “a few categories of speech that the government can regulate or punish—for instance, fraud, defamation, or incitement . . . and a few other narrow exceptions.”[14]  It seems that the next wave of litigation in the trademark arena may now revolve around these narrow First Amendment exceptions, rather than traditional trademark principles.  Will today’s nasty tweet or violent Facebook rant become tomorrow’s trademark?  While the Tam decision decisively answers one question, it may open the door to many more questions of what trademarks are permissible, assuming no traditional trademark grounds for refusal.

_______________________________

[1] Matal, Interim Director, USPTO v. Tam, No. 15-1293 (June 19, 2017) (8-0 decision; Justice  Gorsuch took no part in the decision).  The full opinion can be found at: https://www.supremeCourt.gov/opinions/16pdf/15-1293_1o13.pdf.
[2] 15 U.S.C. § 1052(a).
[3] Slip Op. at 2-5. Citing, treatises and compendiums including 3 J. McCarthy, Trademarks and Unfair Competition §19:8 (4th ed. 2017); Pattishall, The Constitutional Foundations of American Trademark Law, 78 Trademark Rep. 456, 457–458 (1988); Pattishall, Two Hundred Years of American Trademark Law, 68 Trademark Rep. 121, 121–123 (1978), Id. at 2.
[4] All Justices concurred in this portion of the opinion with the exception of Justice Thomas who saw “no reason to address this legal question.”  J. Thomas concurring, Slip. Op. at 1.
[5] Slip. Op., at 11.
[6] Id. at 14.
[7] Id. at 14-15, citing Pro-Football, Inc. (Washington Redskins) Amicus brief and numerous examples of such phrases.
[8] Id. at 18.
[9] Id. at 18-20.
[10] Id. at 22.  But in dicta, the Court noted it left open the question of whether such analysis framework is appropriate for free speech challenges to the provisions of the Lanham Act.
[11] Id. at 23-24, citing Central Hudson Gas & Elec. Corp. v. Public Serv. Comm’n of N.Y., 447 U.S. 557 (1980), but leaving open the question of whether Central Hudson provides the appropriate test for deciding free speech challenges to provisions of the Lanham Act.
[12] Id. at 26.
[13] Pro Football, Inc. v. Blackhorse, Case No. 15-1874 (4th Circ.).
[14] J. Kennedy concurring, Slip. Op. at 2, citing United States v. Stevens, 559 U. S. 460, 468 (2010).

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

December 22, 2015

Federal Circuit Holds: “Disparagement” Clause of Lanham Act Violates the First Amendment

Filed under: Constitution, TM Registration, Trademark (General), TTAB — Tags: , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:13 pm

Widmaier_Uli_1 F LRBy: Uli Widmaier

I.  The Court’s Holding:

Section 2(a) of the Lanham Act, 15 USC § 1052(a), provides that trademarks that “disparage . . . persons, living or dead, institutions, beliefs, or national symbols” shall not be federally registered (emphasis added).

On December 22, 2015, the Court of Appeals for the Federal Circuit, ruling en banc, held that this clause “is unconstitutional because it violates the First Amendment.” See In re Simon Shiao Tam, No. 2014-1203, slip op. at 62 (Dec. 22, 2015). Based on this holding, the Court vacated the Trademark Trial and Appeal Board’s determination that the mark THE SLANTS for “Entertainment in the nature of live performances by a musical band” is unregistrable as disparaging people of Asian descent.

II.   Practical Consequences:

The Federal Circuit is the statutorily designated Court of Appeals for all USPTO actions, see 15 USC § 1071(a). By holding that Section 2(a)’s disparagement clause is unconstitutional, In re Tam necessarily invalidates not only that clause, but also all USPTO precedents and rules that are based on in. Therefore, In re Tam has several immediate practical consequences:

  • Any disparagement grounds in currently pending Office Actions are no longer valid.
  • Any disparagement claims in currently pending opposition actions or petitions for cancellation must be withdrawn or dismissed.
  • No future trademark applications can be refused registration on disparagement grounds.
  • No future opposition or cancellation actions can validly be based on disparagement claims.

This describes the situation today. But it may not be the end of the matter. The issue may be bound for Supreme Court review, particularly given that a circuit split may emerge in short order. The famous REDSKINS case, in which the Board used the disparagement clause to cancel six trademark registrations of the NFL’s Washington Redskins, Pro-Football, Inc. v. Blackhorse, No. 1-14-CV-01043-GBL, 2015 WL 4096277 (E.D. Va. July 8, 2015), is currently on appeal before the Fourth Circuit. The case turns in substantial part on whether Section 2(a)’s disparagement clause violates the First Amendment. If the Fourth Circuit disagrees with the Federal Circuit’s holding and decides that there is no constitutional violation, then the Supreme Court is likely to step in and resolve the split between the Fourth and Federal Circuits on this important question of constitutional law.

If the Supreme Court were to agree with the Federal Circuit and hold that the disparagement clause is unconstitutional, then the practical implications listed above remain as they are at the moment. But if the Supreme Court were to hold that the disparagement clause is not unconstitutional, then the clause—and the USPTO regulations that depend on it—would be reinstated. What would that mean to any “disparaging” trademark registrations that were issued in the meantime? The answer is that such registrations would potentially be subject to cancellation on disparagement grounds.

III.   Takeaway:

For the time being, the practical takeaway from the Federal Circuit’s In re Tam decision is this. Trademark owners are now free to register disparaging marks, since the USPTO cannot refuse to register them on the ground of disparagement. And third parties cannot oppose applications or seek to cancel registrations on the ground of disparagement.

But any resulting registrations remain at some risk for cancellation, since the Supreme Court may well decide to review this issue. If so, the Supreme Court may overrule the Federal Circuit’s holding, whereupon the disparagement clause and the USPTO rules and precedents based on it would be reinstated.

Furthermore, a disparagement attack (should it be reinstated) cannot be averted via incontestability, since Section 14(3) of the Lanham Act, 15 U.S.C. § 1064(3), expressly permits incontestable registrations to be challenged on Section 2(a) grounds.

*     *     *

Uli Widmaier is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals. The firm advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Uli’s practice focuses on domestic and international trademark, copyright, trade dress and Internet law and litigation.

 

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July 8, 2015

REDSKINS Trademark Registrations Still Canceled After Appeal to Federal Court

Filed under: Constitution, Litigation, TM Registration — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:45 pm

PB LRby Phillip Barengolts, Partner

Today, the District Court for the Eastern District of Virginia has upheld an administrative ruling that canceled federal trademark registrations for the REDSKINS nickname of the Washington football team despite the team’s constitutional and other challenges. Pro-Football, Inc. v. Blackhorse, Case No. 14-cv-01043 (E.D. Va. July 8, 2015). [1]

Last year, on June 18, 2014, the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (“TTAB”) canceled six of Washington’s federal registrations for the trademark REDSKINS because the name disparages Native Americans.[2] The team appealed the ruling to federal court. It argued, essentially, that Section 2(a) of the Federal Trademark Act (the “Lanham Act”), which prohibits the federal registration of potentially disparaging trademarks, is unconstitutional and that the Native American petitioners did not prove that the REDSKINS trademark is, in fact, disparaging. On cross-motions for summary judgment, the Eastern District of Virginia sided with the Native American petitioners on all counts.

The decision highlights an important aspect of trademark practice. As the Court admonished the parties, this case concerns the right of the Washington football team to register the REDSKINS trademark– not the team’s right to use the mark. The TTAB also highlighted this point in its decision, but mass media, and even many attorneys, confused this point.

The rights conferred by registration are important and valuable , but the TTAB only has the right to decide whether a trademark may be registered, it has no authority to stop the use of a trademark. Section 2(a) of the Lanham Act, at issue in this dispute, only applies to registration of trademarks. As the Court stated, “Thus, regardless of this Court’s ruling, [the team] can still use the Redskins Marks in commerce.”

As a practical matter, however, a trademark owner who is not permitted to register its preferred mark often chooses not to use that mark, but, ultimately, it is the trademark owner’s choice. This point is crucial for the Court’s decision and crucial for an understanding of when and why to bring an action before the TTAB.[3]

As a result of this limited application of Section 2(a) of the Lanham Act, the statute survived the constitutional challenge brought by the team. In particular, the Court found that Section 2(a) does not even implicate the First Amendment precisely because it does not prohibit the use of a trademark, and therefore, does not prohibit or impinge on any speech.

The Court also found that the federal trademark registration program is government speech under the Supreme Court’s recent decision in Walker v. Tex. Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015).[4] Basically, this means that “the federal government may determine the contents and limits of programs that it creates and manages.” The Court also ruled that the term “may disparage” in Section 2(a) of the Lanham Act is not impermissibly vague – generally or as applied to the team. Finally, the TTAB’s ruling was not an impermissible taking because a trademark registration is not a property interest, as opposed to the underlying trademark itself, which is.

As to the team’s challenges to the ruling that the term REDSKINS may disparage Native Americans, the Court found that evidence found in dictionaries, scholarly and media references, and statements from Native Americans were sufficient to uphold the TTAB’s ruling.

In the previous iteration of this battle, the D.C. Circuit Court of Appeals upheld a ruling that laches barred the Native Americans’ suit. Pro-Football, Inc. v. Harjo, 415 F.3d 44 (D.C. Cir. 2005).[5] Here, for reasons not worth getting into, the District Court found that laches did not apply.

Undoubtedly, the team will appeal this decision to the Fourth Circuit. So, the saga of the REDSKINS trademark registration continues.

*          *          *

Phillip Barengolts is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois. Pattishall McAuliffe represents both plaintiffs and defendants in trademark, false advertising, copyright, trade secret and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and advertising issues. Mr. Barengolts’ practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, advertising, unfair competition, trade secret, Internet, and copyright law. He teaches trademark and copyright litigation at John Marshall Law School, and co-authored Trademark and Copyright Litigation, published by Lexis Publishing.

Footnotes:

[1] The full 70-page opinion can be found here: http://www.pattishall.com/pdf/PFI%20v%20Blackhorse%20Decision.pdf

[2] Further background and earlier coverage on the TTAB decision can be found here: https://blog.pattishall.com/2014/06/18/redskins-trademark-registrations-canceled-after-8-more-years-of-litigation/.

[3] The recent decision in B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 575 U.S. __ (2015), may have changed this calculus. See https://blog.pattishall.com/2015/03/25/supreme-court-holds-that-issues-decided-by-the-ttab-may-be-preclusive-in-federal-court/. The decision can be found here: http://scholar.google.com/scholar_case?case=15316530830472719965.

[4] http://scholar.google.com/scholar_case?case=2629371590163032730.

[5] http://scholar.google.com/scholar_case?case=2204191829610278162.

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September 10, 2012

When Does the First Amendment Trump Trademark Law? 11th Circuit Adopts Rogers v. Grimaldi Test

Filed under: Constitution, First Amendment, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:08 pm

By Janet Marvel, Partner

In 1989, the Second Circuit adopted a balancing test to weigh the value of an artist’s First Amendment rights against the value of trademarks depicted in the artist’s work.  Rogers v. Grimaldi, 875 F.2d 994 (9th Cir. 1989).  In June of this year, the 11th Circuit adopted essentially the same test in University of Alabama Board of Trustees v. New Life Art, Inc., 683 F.3d 1266 (11th Cir. June 11, 2012).

Some Background

In Rogers v. Grimaldi, 875 F.2d 994 (9th Cir. 1989), Ginger Rogers sued over an Italian film titled “Ginger and Fred,” which was about two cabaret performers who imitated Ginger Rogers and Fred Astaire.  Ms. Rogers alleged violations of her rights under the federal trademark statute (the Lanham Act) and of her right of publicity under state law.  The district court dismissed the claim and the Second Circuit affirmed.  The court stated that enjoining the distribution of artistic works does not violate the First Amendment where the public interest in avoiding consumer confusion outweighs the public interest in free expression.  For movie titles, the court stated that unless the title had no artistic relevance to the underlying work or was expressly misleading, no injunction should issue.  Other courts have adopted similar tests, including the Sixth Circuit, in ETW v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003), where the court permitted defendant’s use of Tiger Woods’ name on the inside flap of an envelope containing an art print featuring his image, and in the narrative description for the print.  See also ESS Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) (scene in a video game featuring trademark of plaintiff’s entertainment club did not infringe plaintiff’s trademark rights).

The Crimson and White

In University of Alabama Board of Trustees v. New Life Art, Inc., 683 F.3d 1266 (11th Cir. June 11, 2012), the University sued an artist who, for over thirty years, had painted and sold images of plays in University of Alabama football games.  The parties had entered into various licensing agreements, apparently licensing some University of Alabama logos, among other things.  In 2002, the University demanded that the artist take a license for all of his works because they depicted University uniforms in the colors crimson and white, which the University stated were its trademarks.  The artist declined, arguing that he did not need a license to depict University trademarks within his images.

The court separately considered the parties’ respective rights in calendars, and large-size paintings and prints, and “mundane products,” comprising such things as “‘mini-prints,” mugs, cups, flags, and towels. (more…)

November 22, 2011

First Amendment Right To Anonymous Speech Trumps Right To Discover Identity Of Blogger Alleged To Have Infringed Copyrighted Works of Art Of Living Foundation

Filed under: Constitution, Copyright, First Amendment — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 1:02 pm

Categories: Copyright, First Amendment, Constitution

Tags: First Amendment, Discovery , Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

“Skywalker’s First Amendment right to anonymous speech outweighs the need for discovery at this time.” Art of Living Foundation v. Does 1-10, No. 10-cv-05022 (N.D. Cal. Nov. 9, 2011).[1]  This statement and the decision in Art of Living Foundation has significant consequences for intellectual property owners pursuing claims against defendants hiding behind privacy services, pseudonyms, or using other identity blocking methods – an increasingly common obstacle to enforcing intellectual property rights.

But first, a few words about the parties.  The Art of Living Foundation (“AOLF”) is an international “educational and humanitarian” organization dedicated to teaching the spiritual lessons of “His Holiness Ravi Shankar.”[2]  Technically, the plaintiff in this case is the U.S. branch of AOLF.  The defendants, who go by the pseudonyms “Skywalker” and “Klim,” write blogs that criticize AOLF.  Allegedly, they are disgruntled former participants in AOLF.

After filing a complaint for defamation, trade secret misappropriation, trade libel, and copyright infringement, AOLF sought expedited discovery to learn the true identities of Skywalker and Klim.  The magistrate in the case granted this request and AOLF issued subpoenas to Google and Automattic – the companies that host the defendants’ blogs.  AOLF’s stated purpose for the subpoenas was to serve the complaint upon the defendants.  The defendants made special appearances through counsel to move to quash these subpoenas, among other motions that ultimately left only the copyright and trade secret misappropriation claims pending.[3]

(more…)

March 31, 2011

Amending a Washington State Statute to Ignore Choice of Law Principles Could Not Gain Jimi Hendrix’s Heirs a Post-Mortem Right of Publicity: Court Rules Amendment Unconstitutional

Filed under: Constitution, Litigation, Right of Publicity — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:14 pm

Categories: Constitution, Right of Publicity, Litigation
Tags: Right of Publicity, Federal Litigation, Conflict of Laws, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

Jimi Hendrix died before his time in a London hotel room in 1970.  His legend lives on.[1] But his right of publicity appears to have died with him.

Right of publicity generally developed out of the right of privacy and is entirely governed by state law, which varies from state to state.  A post-mortem right to publicity is only available in some states.  States with many deceased celebrities or very famous deceased celebrities often want to give their constituents the greatest economic advantage they can in exploiting post-mortem rights, predominantly in the area of merchandising.  Such was the case in Washington state, the birthplace of Hendrix.

Despite the best efforts of his father, the sole heir of Hendrix’s estate, and the company to which Hendrix’s father assigned all of his rights, Experience Hendrix LLC, Hendrix’s right of publicity likely cannot be resurrected because New York – Hendrix’s place of domicile at the time of his death – did not have a post-mortem right of publicity.  See Experience Hendrix, L.L.C. v. The James Marshall Hendrix Foundation, No. C03-3462Z (W.D. Wash., Apr. 15, 2005), aff’d, 240 Fed. Appx. 739 (9th Cir. 2007). (more…)

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