Bleary eyed and confused, Tam got out of bed and flipped open his laptop, where he found an email from his lawyer. The email contained a 110-page decision from the US Court of Appeals for the Federal Circuit, in Washington, DC, in which the majority of an en banc panel of all 12 justices at the court ruled in favor of Tam, bassist for the Portland, Oregon-based band The Slants, that denying them a trademark for their name was “viewpoint discrimination” and, as a result, a violation of the band’s First Amendment rights.
Tam, who last appeared behind his lawyers at the federal court in October, expected the decision to come out early this year and, in a previous conversation at that time, told me he kind of expected the court to find in favor of the US Patent and Trademark Office (USPTO), which had denied the band its trademark registration because the office deemed it was offensive to members of the Asian-American community. As one of four Asian-Americans in a dance-pop band, Tam has spent the past five-and-a-half years fighting for something that’s been awarded to countless other businesses, some of which have used the word “slant” without a single complaint or concern from the USPTO.
“Basically, what the court did was struck down section 2A of the Lanham Act as unconstitutional,” Tam explains. “In other words, the government can’t deny you a right or restrict your speech in any way because they don’t like your speech. Even if they disagree with it or someone might find it offensive, it’s still your fundamental American right to have that protection.”
The Lanham Act is an arcane, dusty, little known or used law, adopted in 1946 to establish a national system for the registration and issuance of trademarks, but includes language saying a trademark cannot be issued if it contains language that might be offensive or disparaging to a segment of the population. A small fraction of the half a million applications for trademarks filed annually with the USPTO come across the Lanham Act, “most of the people offended by it generally come from minority communities or what they call vulnerable communities,” he says. Striking down the Lanham Act, as the court has appeared to do in Tam’s case, could have much broader applications in other areas of speech.
But, of course, the case isn’t closed and done for good. Firstly, the USPTO has 90 days from the court’s decision to file a writ of certificate, in which the office will appeal the decision to the Supreme Court and ask the highest court in the US to take on the issue. Tam has always been told to expect his case to reach that level, so this isn’t a surprise. The office has yet to do so, but considering the decision came out just before the Christmas and New Year’s holidays, it’s likely to happen within the next few months. Secondly, it’s possible the USPTO will wait until the US Court of Appeals for the Fourth Circuit, in Richmond, Virginia, makes its ruling in a seemingly similar case against the NFL’s Washington Redskins, which lost its federal trademark protections on its name in 2014.
If the Fourth Circuit comes out with a different decision from what the DC court ruled, it will signify a split at the federal level, making it more likely for the Supreme Court to take on the case, Tam believes. And while some publications have hailed his victory as a victory for the football team, it’s really whatever the Supreme Court decides that will make the biggest waves in free speech and trademark protections.
Interestingly, the USPTO did not post any kind of statement or reaction to the court’s decision on its website.
That being said, Tam is enjoying the victory while he has it.
“I went to work that day and the office manager, the first person I see every day, I walked in and she said ‘Hi Simon, how are you doing today,’ and I said ‘Ok. I think I expanded free speech? And completely changed a 70-year-old law?,” he laughs. He spent the next few days talking to a long series of reporters and didn’t talk to his own lawyer for two days after the decision came out.
“It’s this weird mix of deep satisfaction and also extreme frustration,” he says of how he feels about the decision. “It’s incredible to know we helped to expand free speech and I think that’s very, very important in this country, especially when it comes to issues of equality and racism. However, it’s also frustrating that, through this process, the court system kind of buried the fact that the Trademark Office were using race to deny rights to people.
“It was extremely well documented in my case in particular…It’s the highest form of privilege to tell me what I should and should not be offended by. As a community who’s been marginalized time and time again by the government, it’s like we don’t even have the right to decide what’s hurtful to ourselves.”
During the October court date, one judge in particular appeared distracted and uninterested in the proceedings when it wasn’t his turn to speak, and when he was making his arguments, he brought up a wide variety of seemingly unrelated cases, including Roe vs Wade, the landmark decision securing abortion access in the US. When the court’s decision was released, that judge was among the nine who signed the majority opinion in the case, giving Tam his victory. Two other judges dissented, while one judge both affirmed and dissented the opinion. It’s unclear whether the judges that argued against the Slant’s trademark during the court hearing were doing so for political reasons or just trying to play devil’s advocate in some way.
From a legal perspective, what happened in Tam’s case is “pretty amazing,” says J. Michael Keyes, an intellectual property, copyright and trademark attorney with Dorsey & Whitney in Seattle. “As a result of him choosing that name, for all the laudable reasons he chose it, it’s the law of unintended consequences here, right,” Keyes says of the long journey from trying to trademark a name to possibly defending that name and the right to use it at the Supreme Court and changing the law of the US in the process. “He had no inkling that this was going to be literally a major federal case involving his band’s name.”
However, it’s worth noting that this is also a classic example of a victory for the “good” guys opening doors for the “bad” guys too.
“It does open the door, assuming the ruling stands, for registration for all sorts of various offensive names and symbols and other things that are highly offensive and highly racist and very disparaging,” Keyes says.
“Does this open the door for registration of swastikas and things that are tied with groups that are abhorrent to the overwhelming vast majority of people? Unfortunately, I think that comes with the territory when you start talking about constitutional rights and freedom of speech and freedom of expression.”On the other hand, registering a trademark requires that mark to be affiliated with a legitimate business and commercial operation, he notes. If, for example, a neo-Nazi group tries to register a trademark for a name but has no commercial business, that trademark registration won’t be granted, not because the name is offensive (assuming the ruling stands), but because there’s no business taking place.
Keyes also says that those opposed to the Tam ruling have a compelling argument that will likely come into consideration should the case go to the Supreme Court: Not having a trademark doesn’t mean Tam and his bandmates can’t use the name The Slants and continue touring, selling merchandise and records and performing under that name. It just means they can’t trademark it and prevent other organizations from using it. “Now, the countervailing argument is that yes, you’re not stopping Simon from using the name per se, but federal registration gives the registrant significant rights that you don’t have as a result of no registration.”
Ultimately, even if the Fourth Circuit, in the Washington Redskins case, issues a decision that conflicts with what the federal appeal court ruled in Tam’s case, the USPTO is bound by the federal court’s decision, not the Fourth Circuit.
“If the Supreme Court is going to make a change or uphold the decision, it would make sense, regardless, to look at the case irrespective of how the Fourth Circuit comes out.”
We’ll continue to monitor this case as it goes forward. It’s a fascinating case with the potential to impact free speech and expression regulation and trademark law for years to come, but unless and until the Supreme Court takes action, it’s hard to determine just how the law will change and what that will mean for bands and other artists.
As for Tam and The Slants?
“We get back to playing shows again in two weeks,” he says. “For the band, we get back to work. We’ll be touring Asia in the spring, we’ll be going to China, possibly Taiwan and Japan as well, and working on a new record.”
“It’s refreshing, but that all may change depending what happens with the court. I might be dragged into another court of law whether I like it or not. I’m kind of used to that by now. It’s just how our law works, unfortunately.”