They call themselves “The Slants.” It’s an intentional play on a racist term, the Asian-American band says – an effort to counteract the stereotype. But does that make it suitable for a trademark?
On Wednesday, the US Supreme Court heard arguments from lawyers representing both Simon Tam's band and the federal government. The band has been fighting for trademark recognition since the US Patent and Trademark Office (USPTO) first denied it to them in 2011. The government, meanwhile, considers the name offensive, saying it violates a law against issuing trademarks that are "disparaging" to individuals or groups.
This area of the law, falling at the intersection of free-speech protections, government oversight, and minority activism, is relatively unexplored by the Supreme Court, legal experts say. The resolution of this case could set a new direction for trademark law, and a long-standing – if inconsistently applied – government barrier to immoral or disparaging speech could crumble.
In accordance with the Lanham Act of 1946, which regulates trademarks, the office cannot issue trademarks for names that disparage groups of people or “bring them into contempt and disrepute.” But that's not a free speech issue, argues Georgetown University law professor Rebecca Tushnet: within reasonable limits, making that determination is the government’s right.
“Trademark law is all about the government deciding who should get exclusive rights to use words and symbols,” Professor Tushnet tells The Christian Science Monitor in an email. “Because we are necessarily limiting someone’s speech rights by having trademark law at all … the government can put reasonable restrictions on the types of marks that can be registered.”
The problem, note some observers, is that the Patent Office decisions appear inconsistent. For example, in 2000 a trademark registration by N.W.A ( the rap group also known as Niggaz Wit Attitudes) was accepted. But in 2014, the USPTO canceled six Washington Redskins trademarks, saying that the logo was "disparaging to Native Americans."
What should be prohibited under the Lanham Act? “It’s specifically about what’s offensive to others,” explains University of Connecticut law professor Steven Wilf in a phone interview. That means trademark bans respond to “shifting public norms,” he says, and the trademark office has previously shown itself to respond flexibly to changes in these norms.
But determining where these norms stand at any given point in time can be tricky. The Slants, for instance, say they chose their name precisely to defuse the term.
“We want to take on these stereotypes that people have about us, like the slanted eyes, and own them,” the band’s leader, Simon Tam, said when The Slants first went to court, according to the Los Angeles Times.
And they’re hardly the first to reappropriate a discriminatory term, according to Stanford University professor Samy Alim.
“This kind of linguistic subversion has a long history, probably at least as long as humans have been using discriminatory language to describe social differences,” writes Professor Alim, who directs the Center for Race, Ethnicity and Language at Stanford, in an email to the Monitor. A case in point: the LGBT community’s appropriation of the term “queer" (which the USPTO did approve for the Bravo TV show "Queer Eye for the Straight Guy.")
It can be a means of empowering a group, Alim explains, terming it “a sign of … irreverence towards the dominating culture.” But almost always, these efforts are caught in the murky ground of being considered racist by some and empowering by others.
“No community is a monolith,” writes Alim. “There will usually be members of that marginalized community, who have been so harmed by the term, that they refuse to appropriate it.”
According to Tushnet, as long as a substantial number of members of the target group (in this case Asians) are uncomfortable with the term, a trademark can reasonably be withheld, “even if another substantial contingent would perceive it as reappropriation.” Under the law as written, the applicant’s intent doesn’t matter, she explains.
But there are still issues with how this is determined, says Ilya Shapiro, senior fellow in constitutional studies at the Cato Institute, a libertarian think tank in Washington, DC. Initially, he tells the Monitor, a trademark is accepted or denied by a single person.
“It really depends on what trademark examiner you get on a particular day…. it’s not like there’s a set of guidelines,” says Mr. Shapiro, who coauthored a brief on the case for the Supreme Court.
Megan Carpenter, a law professor at Texas A&M University, offers an example of this subjectivity.
“A mark like HEEB, for example, has been both rejected on disparagement grounds, and approved without objection, in different applications,” she tells the Monitor in an email.
Examiners often don’t have data on the terms in question. That means, according to Shapiro, that the government is essentially deciding what constitutes a slur. “It would be cleaner not to put the trademark examiner in that sort of position,” he argues.
On Wednesday, several justices seem to be challenging the idea of the UPTO as the arbiter of free speech. "I always thought that government programs were subject to one extremely important constraint, which is that they can't make distinctions based on viewpoint," said Justice Elena Kagan.
But Justice Sonia Sotomayor said: "No one is stopping your client from calling itself The Slants," she said. By seeking a trademark on the band name, "you are asking the government to endorse your name to the extent of protecting it in a way that it chooses not to."
Asked why this is a burden, Tam's attorney John Connell responded, according to the Hollywood Reporter: "It is a burden because our client is denied the benefits of legal protections that are necessary for him to compete in the marketplace with another band. And the only reason for the denial of those benefits is the burden on his noncommercial speech contained in the mark."
Shapiro's solution: Let the market decide. “If something is viewed in the marketplace as being offensive … people won’t buy tickets for that band,” he concludes.
In a sense, the “moral” component of trademark law may be behind the times.
“Trademark is the last of the three intellectual property regimes that still has a moral assessment about the content itself,” says Professor Wilf of the University of Connecticut. He suggests that the justices may be leaning toward not upholding section 2A of the Lanham Act, the provision about disparaging content.
Shapiro from Cato, who was at the Supreme Court to hear the arguments Wednesday, echoes that perspective.
“At the end of the day, I think Simon Tam and the Slants probably will win,” he said, but notes that the Supreme Court challenged both sides at length, likely seeking to strike a fine balance between the existing law and consistency in upholding the First Amendment.
And the case could have wider-reaching implications. Not only could it provide new legal precedent for determining the Washington Redskins case, which is still active, but it could also influence other parts of trademark law.
“After watching the oral arguments, I would tend to agree with Tam's attorneys that if the disparagement bar is found to be unconstitutional on First Amendment grounds, the bar on scandalous and immoral trademarks will be the next to go,” writes Professor Carpenter at Texas A&M.