Trademark law ARTICLE TITLE: Should We Be Able to Reclaim a Racist Insult as a Registered
Question:
Trademark law
ARTICLE TITLE: Should We Be Able to Reclaim a Racist Insult as a Registered Trademark?Links to an external site., N.Y. Times (Jan. 17, 2017). ABOUT DISPARAGING
FACTS OF THE CASE:
By Sarah Jeong Jan. 17, 2017 Late in 2009, Simon Tam's dance-rock band from Portland, Oregon, was doing well. They were going on tours and getting press. The Slants decided it was time to start taking things more seriously and file an application to trademark their name.
Spencer Trowbridge, Tam's lawyer, agreed to take care of the paperwork for them. They expected to pay a few hundred dollars in fees and have their trademark registered within six months. The paperwork was sent in March 2010, and the answer came just three months later. It said that the application had been turned down. This is when Tam first heard about Section 2(a) of the Lanham Act, the law that would keep him busy for the next six years and lead him all the way to the Supreme Court, where arguments in Lee v. Tam will be heard on Jan. 18.
I called Tam the night before he went to Washington to talk about how the case started. He laughed when he thought of the first time he was turned down. "When I first heard that, I thought, 'Man, I probably did something wrong,'" he said. His lawyer had told him that wasn't the problem. The trademark application was turned down because the name of the band was "derogatory to people of Asian descent."
"I took a moment," Tam said. "I was like, O.K. Let me think about what the word disparaging means again to make sure I remember. Then I asked, "Do they know that we are Asian?"
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The Slants case is part of a body of law that has brought together lesbian motorcyclists, a Lebanese wine distributor, and an NFL team that has been around for 85 years. Section 2(a) of the Lanham Act of 1946 lists the kinds of trademarks that cannot be registered with the federal government. These include trademarks that contain "immoral, deceptive, or scandalous matter" or "matter that disparages or falsely suggests a connection with persons, living or dead, institutions, beliefs, or national symbols, or brings them into contempt or disrepute." The important word here is "disparage." The United States Patent and Trademark Office has sometimes said that the trademark "Dykes on Bikes" is offensive to lesbians, that the wine "Khoran" is offensive to Muslims, and that the name "Redskins" is offensive to Native Americans. And the office says that Tam's band's name, "the Slants," is offensive to a group of people that includes Tam and all of his bandmates.
There are two parts to the test to see if a mark is unfair. The first step is to figure out what the element in question is "likely to mean." If that meaning refers to "identifiable people, institutions, beliefs, or national symbols," the second step is to see if it is "derogatory to a large number of people in the group it refers to." Tam couldn't figure out his first rejection letter because it said "substantial composite." He told his lawyer on the phone, "We just got back from this 18-month national tour where we worked with Asian-American communities and groups all over the country." "So who did they find who thought it was bad?"
The sale for All Access is on. Now, save. Five dollars a month for the first year. Only for a limited time. Nobody, Trowbridge told him, but they had included a quote from Urbandictionary.com and a picture of Miley Cyrus pulling her eyes back in a slanted shape. Tam told him, "This has to be a joke." Trowbridge said, "No, he was looking at Miley Cyrus when he answered." Toby Keith, too. And an Urban Dictionary screen shot.
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To understand Lee v. Tam, you need to remember that the Slants' case started with a federal administrative agency, not a court. As of 2015, the patent office had 456 trademark examining attorneys whose job it was to make sure each trademark was good. They did this by comparing it to other trademarks in the database, reviewing the application materials, and looking up the dictionary definitions of any words used. People have sometimes said that this part of the office is just a rubber stamp, and situations like Tam's, where a trademark application is rejected right away, are not very common.
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Also, it's important to remember that trademark rights existed before and after the federal registration system. You don't have to register a name to use it or own it: Outside of the federal registration system, there are a number of common-law and state-law trademark rights. You don't have to register a trademark to put it on labels, let other businesses use it, or even go to court to protect it. The federal registration system tries to stop this last part from happening by using a central database that shows which marks have been claimed for which goods and services and by whom. The less likely disputes are to happen, the more people use the database. The Lanham Act rewards those who register by giving them the upper hand in court if they ever have to go there. A court could always rule that a trademark isn't valid, but if it's registered, that's less likely to happen.
All of this makes it hard to know exactly what federal registration is, in a bigger sense. A trademark is a type of intellectual property that can be owned or licensed, but a trademark registration is not the same thing as a trademark. If it were, things would be easier: Lee v. Tam would be a case about whether the government can take away all intellectual property rights over the content of speech, and the answer would probably be no. But registering trademarks in a federal system seems more like "government speech," which is usually an exception to the right to free speech: Even though the government might not be able to censor the public, it can censor itself. By making it illegal to register slurs as trademarks, the government can avoid being forced to put its name on slurs. Of course, since registration comes with legal benefits, it ends up taking away a lot more than just an imprimatur.
The TSA PreCheck of intellectual property law is federal registration: Not everyone needs to get it, but if you do a lot of business, you probably should. The problem is that, in the Slants' case, the trademark office has started to look a bit like how most people think of the TSA: as a bunch of bored enforcers just trying to get through the line and get through the day. Except that every once in a while, something complicated comes down the screening belt or someone works too hard, making everyone look bad.
The first time the patent office said no to registering the Slants, the whole thing was 49 pages long. Attachment 1 is a screenshot of user-submitted content from Urban Dictionary. The top definition for "slant" says, "A derogatory term for people of Asian descent. More specifically, it usually means "anyone with slanted eyes." Attachments 14 through 31 have the full "List of ethnic slurs" article from Wikipedia. The examining attorney has helpfully highlighted "Slant-eye/Slant." Attachment 34 is a post from a gossip blog. It shows a picture of Miley Cyrus sitting next to a young Asian man and pulling her eyes back with her hands to make them look funny.
Sign up for a newsletter from The New York Times Magazine The best of The New York Times Magazine, like exclusive feature stories, photos, columns, and more, are sent to your email every week. Send it to your email box. Tam didn't act like she didn't know what "slant" meant. When he was putting the band together, he knew he wanted the music to honor Asian-Americans as a whole and bring people of different backgrounds together by capturing a shared experience. So he asked his friends, "Hey, what do you think all Asians have in common?" "Slanted eyes," said the first person to answer.
Tam told me, "I thought that was interesting because No. 1, it's not true. But No. 2, we can talk about what it's like to be people of color from our point of view." He said that the Slants aren't the first rock band to reclaim "stigmatizing labels" and "throw them back" in other people's faces. "I grew up with bands like the Queers and Pansy Division," he said. "These are groups that take these assumptions and turn them on their heads." "Most Asian-Americans get it," he said, based on his own experiences. "They find it amusing. Sly." It sometimes made white people choke, but Tam thought that was what made it such a great conversation starter.
Shortly after getting their first rejection from the patent office, the Slants sent a letter explaining that "Applicant's Mark, as used... is a positive term of self-reference that promotes cultural pride and recognition." The answer had a number of pieces of evidence, such as statements from longtime Asian-American community organizers. The office sent back another refusal letter that was just as long and full of screenshots as the last one. This odd back and forth went on for more than a year. In June 2011, the Slants sent in a 250-page request for a second look. The request included the results of a survey made by two university professors, who found that few Asian and Pacific Islander people thought "the Slants" was offensive. The office replied with a 157-page denial that included more dictionary definitions, arguments from online forums, and, most strangely, the comments thread for a blog post about the trademark dispute itself. In the comments, the blogger says that the Slants' name is "like a black performer calling himself the N-word." "It would be silly, and people would think that performer was silly," the writer said. Then Tam himself jumps into the thread the office mentions with a long, detailed response that starts by saying that the "N" in the name of the rap group N.W.A. stands for the N-word.
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This isn't the first time that the office has gotten stuck in a mess of dictionaries and talk about social justice. Dykes on Bikes is a group of lesbian motorcyclists who have led the San Francisco Pride Parade and Pride parades in many other cities for many years. With such a long history, Dykes on Bikes have become a well-known symbol of L.G.B.T.Q. culture. In 2003, they tried to register the name as a trademark, but they were turned down because it made lesbians look bad. After that, the back-and-forth was just as one-sided as it had been with the Slants. Dykes on Bikes sent in interviews, statements from L.G.B.T.Q. community organizers, photos of Pride parades, and pages and pages of emails from lesbians who supported them. The examining attorney responded with screencapped dictionary definitions and issued another refusal. Dykes on Bikes got the registration they wanted in the end. But when they tried to register their logo in 2016, they were once again rejected on grounds of disparagement.
The stories of the Slants and Dykes on Bikes' fights with the trademark office are cringe-worthy because they show how a boring government agency has to deal with one of the most complicated questions of our time: whether a marginalized group can take a slur back. And this agency has to do it by using a part of the law that has been out of place for a long time. The Lanham Act was passed in 1946, and its very language "immoral," "scandalous," "disparage" flags Section 2(a) as a product of another time. Since it was passed, American law and society have changed a lot, from the 1971 case that said a jacket that said "[Expletive] the Draft" was protected speech to the 1992 case R.A.V. v. City of St. Paul, in which Justice Antonin Scalia said that laws against racist hate speech were unconstitutional "viewpoint discrimination." You might be tempted to think that if the Lanham Act had been passed in 1996 rather than 1946, Section 2(a) would have long been toast.
At least, that's what the US Federal Circuit Court of Appeals seems to think. In 2015, an en banc panel ruled that the disparagement clause of Section 2(a) is unconstitutional under the First Amendment and tossed out the trademark office's determination that "the Slants" was unregistrable. It didn't matter that the Slants could still go by the name "Slants" with or without federal registration. The court decided that Section 2(a), by denying the benefits of registration, was putting a damper on marks that "the government may find offensive or disparaging."
From this point of view, the government is unfairly punishing Dykes on Bikes with a never-ending hell of paperwork and legal fees and putting them at a disadvantage in any possible dispute, all because they want to call themselves "dykes." Framed this way, it does sound like a violation of free speech, and Section 2(a) sounds like a bad idea. But Section 2(a) doesn't just target Dykes on Bikes and the Slants. Those two groups are just the most sympathetic ones. Even as Tam's case was trickling through the legal system, another Section 2(a) case was making very loud and ugly headlines.
Long before Tam had even dreamed up the name "the Slants," Native American activists were gunning for the Washington Redskins' trademarks. In 1992, they petitioned the patent office's Trademark Trial and Appeal Board to cancel the Redskins' marks under Section 2(a) of the Lanham Act. Since then, they've been stuck in a never-ending cycle of lawsuits inside and outside the agency. The board has already taken away the Redskins' trademarks twice, in 1999 and 2014. This time, it seems like it might stick. In 2014, when the Redskins went to a federal district court to try to change the decision, they lost.
At the same time, the Slants case was getting more attention, and it looked like it was going to the Supreme Court. Tam found a lawyer, Ronald Coleman, who had experience with trademark issues. He agreed to take the case for free, as long as Tam paid for things like court fees and printing for the appeal. But even those costs added up. Tam says that over the years, he worked a second, third, and fourth job to keep fighting the case. When his determination pushed the case to the highest court in the land, the Redskins took notice. Even though the football team wasn't done with the next level of appeals, it sent a petition to the Supreme Court in hopes of being heard there along with a more sympathetic case.
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Tam, who sees antiracism as a big part of what the Slants do, does not care for the Redskins or the team's owner, Dan Snyder. Tam wrote on his website in 2016 that "Redskin" has a long history of oppression and that the football team treats the people as mascots. He concedes that there is "overlap" between his case and the Redskins', but insists that they are not equivalent. People see a big difference between "the Slants," an Asian-American dance-rock band, and "the Redskins," a football team owned by a white man with no Native American players.
The problem, from this point of view, is that the Federal Circuit decision that handed the Slants its first victory completely threw out the "disparaging" prohibition of Section 2(a) (a). If the Supreme Court ends up affirming that decision, the Redskins will presumably get their trademark registration back. There are ways to save the Slants that don't also save the Redskins. The most obvious would be for the Supreme Court to change the definition of "disparaging" so that reappropriation is possible. But whether or not that could be done in real life is a different question. Anyone who looks at the piles of dictionary screencaps in the Slants case might very well be concerned that the patent office is not currently designed to produce subtle, socially aware judgments.
And in practice, the "substantial composite" test for disparagement leads to a lot of expensive surveys and experts in cases like the Redskins and the Slants. When the stakes are high enough, each side can find people to back it up. Asian-American advocacy groups have filed amicus briefs supporting the trademark office in Lee v. Tam, and the Redskins have provided courts with 1990s letters from various tribal leaders, including one that said, "Many of us are proud that sport teams use us and our symbols to represent them" and "We are not offended by the Washington football team being called the Redskins." Even with public input, committing messy, fine-grained cultural questions about appropriation and reappropriation into the care of an administrative agency might very well be asking too much.
Whatever the Supreme Court might think of this question, it doesn't want to deal with the Redskins right now. The Supreme Court said it would hear the Slants' case, but not the Redskins'. What that means for the Slants is anyone's guess. But for all intents and purposes, it looks as if the Supreme Court, just like Tam, would rather have the two cases detached from each other.
The caption of the case they're considering, "Lee v. Tam," feels strangely apt for a case about reappropriating a slur against Asians. The naming conventions of the legal system mean that Simon Shiao Tam is being pitted against Michelle Lee, the first Asian-American director of the United States Patent and Trademark Office. This is, of course, a bit of a legal fiction: Lee will not be arguing the case at the Supreme Court, and she was, presumably, not in the room when the office's examining attorney first rejected Tam's application on the basis that it disparaged Asians. On Jan. 18, Tam's lawyers will be facing down Lee's lawyers before eight justices, none of whom are Asian, to decide the fate of the Slants and whether trademark law can accommodate "taking a word back."
Meanwhile, the Slants are releasing a new EP just before their date with the Supreme Court. It's titled "The Band Who Must Not Be Named."
Sarah Jeong is a journalist and a lawyer and the author of "The Internet of Garbage."
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BASED ON THE ARTICLE ABOVE ANSWER THE QUESTION BELOW .Please mention the Lee versus Tam and also about the SLANT CASE. The trademark application was turned down because the name of the band was "derogatory to people of Asian descent."
QUESTIONS:
1. What is at stake in barring disparaging marks from being registered? Recall that even if a mark is barred from registration, it can still be used anyway. Given that, what values or interests might be served by having a bar to registration for disparaging marks? Are there some types of disparaging marks that are more problematic than others? Do the rationales for barring disparaging marks extend to barring scandalous and immoral ones?
2. As noted in the lecture material, the Supreme Court held that the bar on disparaging marks is unconstitutional. Respond to the questions above without regard to the First Amendment issues. You may also weigh in on the First Amendment issues, if you like, but that is optional and not the main focus of this discussion.
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