Regular readers are already familiar with Ron Coleman of Archer & Greiner and the Likelihood of Confusion blog. (If you’re not, you should be — and I will fill you in at the end of the post.) Ron just won a historic victory in a trademark case involving First Amendment issues. The bottom line is this: thanks to Ron Coleman, the government can no longer squash your speech by using trademark law to find your trademark “disparaging.”
I’ll just quote the Federal Circuit decision, sitting en banc, so that you can see for yourself how sweeping and important this is:
The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional. Because the government has offered no legitimate interests justifying § 2(a), we conclude that it would also be unconstitutional under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech.
This is the part where we all rise to our feet and join a rousing standing ovation.
I was unaware of this particular case (and Ron’s role in it) until yesterday, but regular readers will remember that the issue of disparaging trademarks and the First Amendment was discussed on this blog last year, in connection with the Redskins trademark. In June, I noted that the Patent and Trademark Office had invalidated the team’s then 82-year-old mark, suddenly deciding out of nowhere (in the middle of a P.C.-driven controversy on which Obama had weighed in; odd how that happens!) that the mark was “disparaging to Native Americans.” Our reader SPQR pointed out the obvious First Amendment issues in that post, and I stated: “I agree with him [SPQR] that this decision violates the First Amendment. This is unconstitutional viewpoint discrimination in a limited public forum.” (Always trust content from Patterico!)
That evening, I elaborated on the First Amendment issue, with some help from Eugene Volokh. I ended my post by saying: “I’m not surprised to hear that the Redskins are appealing the ruling — and I hope they win . . . and squash this precedent hard.”
Well, the Redskins appeal is still pending before the Fourth Circuit. But they got a real boost from the decision in the case handled by Ron, which I will turn to now. The decision is here, and it makes my heart swell with pride to see the name at the very top of the decision, and to be associated with this man:
Ron’s client — can it really be possible that he represented this client pro bono as well? Apparently so! — is Mr. Simon Shiao Tam, who founded a band called “The Slants.” At Ars Technica, they explain: “Tam, the front man for the dance-rock band, has said he chose the mark to ‘own’ the stereotype and has said that reaction from the Asian community has been ‘very positive.'” As the court states:
Mr. Simon Shiao Tam named his band THE SLANTS to make a statement about racial and cultural issues in this country. With his band name, Mr. Tam conveys more about our society than many volumes of undisputedly protected speech. Another rejected mark, STOP THE ISLAMISATION OF AMERICA, proclaims that Islamisation is undesirable and should be stopped. Many of the marks rejected as disparaging convey hurtful speech that harms members of oft-stigmatized communities. But the First Amendment protects even hurtful speech.
“Stop the Islamisation of America” is Pam Geller’s (attempted) trademark — and in the opinion, it is included in a long list of trademarks rejected as “disparaging” ranging from the ridiculous to the politically passionate. In addition to the Slants and Geller’s trademark, the list includes the Redskins; “Democrats Shouldn’t Breed”; “Republicans Shouldn’t Breed”; a symbol of the Soviet Union with an X over it (can’t disparage the commies, you know!); and many others. Meanwhile, “Think Islam” and “Dykes on Bikes” were approved after it was shown that the relevant groups approved of the message. Whether a mark was “disparaging” or contained praise ended up being critical to its treatment by the government.
So we had a situation where out government approved a “Think Islam” trademark but rejected a “Stop the Islamisation of America” trademark. Are you beginning to see the First Amendment implications yet?
The opinion notes that the Trademark Trial and Appeal Board had determined that Tam was referring to Asians with the term “The Slants” in part because of his public statements that he wished to “own” the stereotype — and in part “because there was record evidence of individuals and groups in the Asian community objecting to Mr. Tam’s use of the word.” You read that correctly: interest groups whined about his use of a term they considered hurtful to their feels — and government stepped in to help squash the offender’s livelihood. Are you beginning to see the First Amendment implications yet?
The panel decision had opined, in line with previous precedent, that the First Amendment was not implicated because The Slants could use the name (just as the Redskins can use theirs) — they just would not receive statutory protection. The previous precedent had been widely criticized — yet it had been widely applied in other circuits because of the cachet that the Federal Circuit has in intellectual property matters. The Federal Circuit therefore decided to take the case en banc. Not only did the en banc court find this particular decision violated the First Amendment but — and this is the epic part — they struck down the disparagement provision as unconstitutional.
In so doing, they noted that the Obama administration (antiseptically called “the government” in the opinion, as you do) had defended the unconstitutional provision because it didn’t like the speech:
Underscoring its hostility to these messages, the government repeatedly asserts in its briefing before this court that it ought to be able to prevent the registration of “the most vile racial epithets and images,” Appellee’s En Banc Br. 1, and “to dissociate itself from speech it finds odious,” id. 41.
Are you beginning to see the First Amendment implications yet?
When “the government” is in court arguing “we should be able to disfavor this speech because we don’t like it” . . . well, you’d think a light bulb might go off inside someone’s head.
To me, this is the trademark version of the Nazis marching at Skokie — only Ron’s client is a good guy, not a bad guy.
So, the government will not be picking and choosing between trademarks based on their content any more — thanks to Ron Coleman.
What’s more, this is going to be a game-changer for the Redskins in the Fourth Circuit. I will remind you that this decision was issued by the Federal Circuit, sitting en banc — and the Federal Circuit which is the big enchilada when it comes to intellectual property issues. There is no way that the Fourth Circuit doesn’t examine this opinion closely.
I’d like to close the post by saying a little something about Ron Coleman. In addition to becoming a partner this year at Archer & Greiner and running the Likelihood of Confusion blog, Ron, along with the redoubtable Bruce Godfrey of Jezic & Moyse LLC, is defending me in the absurd and censorious lawsuit brought by convicted bomber and perjurer Brett Kimberlin. (It’s the Energizer Bunny case: still going since 2013!)
And Ron — along with Kenneth P. White of Brown White & Osborn LLP and the essential Popehat blog, who took a very active role in the case and toiled for countless hours alongside Ron — achieved a dismissal of the Nadia Naffe case in which I paid nothing and retracted nothing I had said. Ron and Ken obtained this result after Ron argued and won an important precedent in the Ninth Circuit allowing public officials to speak on matters of public concern. In some ways, being a part of that case is the most consequential thing I have done as a blogger — and I could not have done it without Ron’s help.
For many lawyers, the Slants case would be the highlight of a career. But Ron has many other highlights — and more still to come. (Including, we hope, another important First Amendment victory in 2016.)