American Culture

Asian-American band to SCOTUS: review our trademark victory

by Amber Healy

It’s not often a winning party in a long-fought legal battle asks the Supreme Court in the United States to review a lower court’s ruling that had been made in its favor. But for the Portland, Oregon-based, Asian-American dance-rock band The Slants, that’s just what happened this week.

In December, The Slants won the ability to legally register and protect their band name, something the U.S. Patent and Trademark Office had said was offensive to Asian Americans. It was a victory nearly six years in the making.

The U.S. Court of Appeals for the Federal Circuit, in Alexandria, Virginia, ruled that the USPTO was in violation of the Constitution by rejecting the band’s trademark application by a 9-3 margin. The court found that the section of the archaic and little-known Lanham Act used by the USPTO to deny the application, the “disparagement” portion, could not be used to prevent or deny the application.

As is its right, the USPTO appealed the ruling to the Supreme Court. What’s unexpected is that now The Slants are asking for the highest court in the United States to review the ruling as well.

There’s a reason Simon Tam, the bassist for The Slants and the band’s de facto leader, and his attorneys asked the Supreme Court to review the appellate court ruling from December. The band wants to know, for certain, whether it would be able and legally eligible to trademark its name. Filing the paperwork now before the case is settled once and for all could leave the band’s trademark in legal limbo, Tam and his lawyers say in a 41-page brief.

“Certiorari should nevertheless be granted,” the brief states. “The issue is undeniably important. The Court is very likely to address it in the near future, in another case if not in this one.”

That other case might very well be associated with the Washington Redskins NFL team. Both teams have had trademark issues before the USPTO, which overturned the football team’s trademark protections in 2014, notes Law360.com. However, The Slants have emphatically insisted their case is not the same as that of the football team—if nothing else, Asian American organizations have offered their support to The Slants and their use of the name, compared with the football team’s controversial name and mascot.

The disparagement clause of the 60-year-old Lanham Act “discriminates on the basis of viewpoint and content, by imposing a substantial burden on speech with a particular message,” the band said in its filing. “The government offers no justification for this discriminatory burden on speech other than its interest in preventing offense to listeners, but that is not a valid basis for restricting expression.”

In April, the football team’s legal counsel suggested to the Supreme Court that its case be heard, instead of The Slants’, as it felt it was “better positioned” to plead its case.

“If the Court wishes to hear the two cases together, we urge the Court to do so now rather than waiting until the [federal appeals court in Richmond] had decided the Redskins’ case,” said Tam’s lawyers, Stuart Banner, a law professor and instructor with UCLA’s Supreme Court Clinic, and his colleague Eugene Volokh, a columnist with The Washington Post. Tam is also represented by John Connell, Ronald Coleman and Joel MacMull of the firm Archer & Greiner, based in Haddonfield, New Jersey.

There’s a timing issue at hand, they write. The USPTO has stopped processing applications that include the disparagement clause of the Lanham Act pending a final ruling from the Supreme Court. Before the case would go to the Supreme Court, it’s possible the Redskins’ case would have to be argued before the appellate court in Richmond, Virginia, a process that could take “a year or more, particularly if the Fourth Circuit takes the case en banc. The Court should not hold this case for the Redskins’ case.”

Also this week, the football team’s attorneys filed an amicus brief in The Slants’ case, arguing the Supreme Court didn’t have to review the case because the matter was settled by the December ruling in the US Court of Appeals for the Federal Circuit in Washington, The Washington Post reports.

Amber Healy, who has written for news outlets as well as NASA and the federal government, says she writes about music policy and lawsuits because they’re endlessly fascinating. This post first appeared at A Journal of Musical Things.

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