Justices Tread Carefully at Hearing on Disparaging Trademarks

WASHINGTON (CN) - The U.S. Supreme Court struggled Wednesday to balance the rights of free speech with a federal law that prevents companies from receiving trademarks on potentially offensive terms.

Chief Justice John Roberts was critical this morning of the government’s attempt to cast the so-called disparagement clause of the Lanham Act as a simple restriction on access to a government program, which courts have long sanctioned.

"I'm concerned that your government-program argument is circular," Roberts said told Deputy Solicitor General Malcolm Stewart.

Holding a high bar for the challengers as well, the justices noted that unraveling the disparagement clause under the First Amendment could gut long-standing provisions of trademark law, such as those preventing the registration of libelous or misleading marks.

"How is trademark law supposed to function unless it can make these kinds of distinctions?" Justice Elena Kagan asked during arguments.

The case, Lee v. Tam, is the story of an Asian-American rock band out of Portland, Ore., that has run into difficulty trademarking its name, The Slants. One anticipated offshoot of the trademark battle is the whether it will allow the Washington Redskins to reclaim marks that the Patent and Trademark Office canceled in 2014 as offensive to Native Americans.

Those who support the government's reading of the disparagement clause warn a ruling from the high court gutting it could lead to a rush of offensive trademarks coming out of the Patent and Trademark Office.

Slants front man Simon Tam applied to register the trademark with the federal government in 2011, but the Patent and Trademark Office denied the application because it could disparage Asian-Americans. Obviously aware of the term’s capacity to offend, Tam notes that the band’s name is an attempt to reclaim the anti-Asian slur, and in keeping with the band's goal of reappropriating terms meant to be offensive to people of Asian descent.

The Patent and Trademark Office is pushing for a high court reversal after the en banc Federal Circuit struck down the disparagement clause as unconstitutional.

Trademark registration brings with it some significant benefits, most notably granting the mark holder exclusive use of the name nationwide. The government has noted in briefing, however, that registration is not required for a group to enforce its name in court.

The deputy solicitor general got off to a rocky start in his argument when Justice Anthony Kennedy interrupted his claim that the disparagement clause is nothing more than a limit on a government program.

"Is copyright a government program?" Kennedy asked.

Stewart allowed that significant First Amendment concerns would follow if the government stopped offering copyright protection to works considered offensive.

The justices still had other qualms about his positions. Justice Samuel Alito suggested that Stewart was stretching the definition of a government program "past its breaking point.”

Referring to legal briefs filed by Tam's attorneys, which say the disparagement clause unconstitutionally limits speech based on the viewpoint of the speaker, Kagan asked why a law that allows only positive messages about a group does not deserve strict scrutiny.

"It makes a very important distinction, which is that you can say good things about some person or group but you can't say bad things about some person or group," Kagan said.

Stewart compared the disparagement clause to a public school giving its students a space to post their views with the only condition being that the students could not use racial slurs or personal attacks in their messages. Such a space would surely withstand court scrutiny, Stewart said.

But Kennedy found a distinction between Stewart's hypothetical situation and trademark law, asking if "the government is an omnipresent school teacher."

John Connell, who represents Tam, seemed to have the upper hand when he took the stand but lost some ground during his fiercely pro-free speech argument.

By taking this position, and conceding that it would affect limits on commercial speech as well, Connell made the justices skittish.

Justice Stephen Breyer noted, for example, the various laws that restrict companies from registering as trademarks disparaging statements about their competitors or falsely claiming their products health benefits.

"If I buy into your answer that you just gave, have I suddenly opened the door to striking down all of those things?" Breyer asked.

Roberts spun the symbol of this concern with a hypothetical about whether, under Connell's argument, the government could host a Shakespeare celebration that only allows pro-Shakespeare viewpoints. Breyer latched on to this hypothetical, noting there are plenty of places where groups can express their views outside of government-sanctioned spaces.

"You have the entire universe to say what you want, including this," Breyer said.

Roberts explained why he criticized the government’s position as circular. "The claim is you're not registering on my mark because it's disparaging,” Roberts said. “And your answer is, ‘Well, we run a program that doesn't include disparaging trademarks, so that's why you're excluded.’"

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