Friends of the court, friends of the First Amendment

The approved and publishable amicus briefs in the appeal regarding the trademark registration of THE SLANTS are trickling in. Certainly interesting to see who is saying what.  So far, they all seem to be on the side of The Slants, though interestingly the INTA amicus brief does not take a position on the First Amendment issue (maybe because that’s usually a subject raised by defendants in infringement cases?) but instead addresses, as is appropriate given INTA’s level of trademark expertise, the issue of 43(a) of the Lanham Act.  INTA urges, understandably, that the constitutionality question “does not turn” on the availability or interpretation of 43(a) protection for unregistered marks.
The Slants - Chinatown Dance Rock
What do we have?  Here’s the amicus brief of Public Knowledge, styled as “in support of neither party”; here is Pro Football, Inc.’s (i.e., the Washington Redskins’) amicus brief very much in support of appellant; and now comes the First Amendment Lawyers Association (that’s Randazza and friends).

Here’s one we hadn’t counted on:  a submission by the Rutherford Institute together with the Cato Institute.  Cato’s blog post, authored by Ilya Shapiro, is here; the Cato / Rutherford amicus brief is here.

Hey, what happened to the ACLU, which, formerly (you should pardon the expression) confused, has now seen the light on this business?  Evidently the dog ate their ECF registration, and the ACLU amicus brief was filed a day late — today — along with a motion seeking permission to do that, for reasons set out therein.  Enough said — they are our friends (now) and, unlike those stinkers at Public Knowledge, say so right on the cover of their submission.

Okay, and what about those guys over at Public Knowledge?  What does “in support of neither party” mean, exactly?  Here’s how Public Knowledge explains it (here’s the link to their brief again):

Public Knowledge agrees with the applicant and other amici that the panel’s decision that the First Amendment does not apply at all to trademark applications is incorrect. However, amicus writes here to emphasize that the applicant’s First Amendment rights must always be balanced against the First Amendment rights of the public. Amicus take no position on how that balance plays out in this particular case. . . .

The decision of the Patent and Trademark Office (“PTO”) to deny Mr. Tam’s trademark application because the agency determined that the mark would disparage people of Asian descent merits demanding First Amendment scrutiny. Although denying a trademark does not prevent Mr. Tam from continuing to make music or to use the name “The Slants” in his music, it does deny him the benefits of trademark registration for that name, and does so pursuant to a justification that must receive demanding scrutiny under the First Amendment.

However, in this and all other application decisions, this Court must also consider the First Amendment interests of the public. Granting a trademark in the first place limits speech, which is why Congress and the courts have cabined the grant and enforcement of trademark rights within boundaries imposed by the First Amendment. Considering the public interest at stake when trademarks are granted, alongside the interests of the trademark applicant, is necessary to preserve the delicate balance between private and public interests at the heart of the Lanham Act. . . .

Emphasizing only the rights of trademark owners without considering the public interest in free expression may disrupt safeguards in place to accommodate the First Amendment. For example, unilaterally wielding the First Amendment to protect trademark applicants could undermine the PTO’s ability to deny descriptive or generic marks, which is critical to maintaining free speech. Future cases may present a circumstance where denial is justified by a different, and likely substantial, government interest, such as denying descriptive or misleading marks. In these cases, the PTO must make content-based distinctions in deciding whether to grant a trademark.8 Such denials can be distinguished from the PTO’s decision in this case when the public’s First Amendment interests are accounted for. The public’s interest in their ability to use arguably disparaging terms to describe themselves in commerce is far weaker than their interest in being able to use generic terms, or terms similar to that of the mark in commerce.

Because this case may serve as precedent in future challenges to denials of marks, we urge the court to craft a rule that gives proper consideration to all of the First Amendment rights at stake. . . .

Interesting … angle.

UPDATE:  The amicus brief of Professor Hugh C. Hansen of Fordham.  Thank you, Professor Hansen!

Ron Coleman

I write this blog.