FAN 133 (First Amendment News) Slants trademark case might be decided on statutory grounds

The Slants band

The Slants band

The briefs are still being filed in Lee v. Tamthe disparagement trademark case. While the briefs for the Petitioner are in

those for the Respondent have yet to be submitted.

John C. Connell

John C. Connell

No doubt, First Amendment arguments will demand a lion’s share of attention in those briefs. But will the Court ultimately go that far in deciding the case, or might it take refuge in the doctrine of constitutional avoidance and decide the controversial case on statutory grounds?

→ Enter John C. Connell, counsel of record for the Respondent (with him on the brief: Stuart Banner, Eugene Volokh, Ronald Coleman & Joel MacMull). In his brief, Mr. Connell devotes considerable attention to the following argument: “The Lanham Act’s disparagement clause does not bar the registration of respondent’s trademark.” Here are some excerpts from the Respondent’s brief related to this issue:

  1. Statutory Claim Preserved: “Under section 2(a) of the Lanham Act, does THE SLANTS ‘disparage  . . . persons, living or dead’? At every stage of this litigation, Simon Tam has argued that section 2(a) does not bar the registration of his trademark. He is thus entitled to defend the judgment below on this ground.”
  2. Pressing Need to Decided Statutory Issue: “Section 2(a)’s disparagement clause has existed for 70 years, but the Court has never interpreted it. The PTO has been left to develop its own disparagement jurisprudence, which has wandered ever farther from the statute’s text and from any reasonable understanding of what Congress intended. This case provides an opportunity for the Court to guide the PTO back to the text of the statute.
  3. No Statutory Disparagement: “Simon Tam and his band members are not disparaging Asian- Americans. They are doing precisely the opposite; they are appropriating a slur and using it as a badge of pride. Simon Tam is not a bigot; he is fighting big- otry with the time-honored technique of seizing the bigots’ own language. “Slant” can certainly be used in a disparaging way, but Tam is not using it that way. Even the most cursory awareness of the Slants’ music and the way it is packaged makes that clear.”
  4. PTO Misapplied Statutory Test: “Rather than considering the full context surrounding Simon Tam’s use of THE SLANTS, the PTO simply looked up the word ‘slant in several dictionaries. Rather than asking whether THE SLANTS disparages Asian-Americans generally, the PTO quoted the views of a blogger and a few self-styled spokespeople for Asian-Americans, to conclude that ‘a substantial composite of the referenced group find the term objectionable.’ Had the PTO followed the statute . . . the result would have been different.”
  5. Statute does not apply to “Collective Entities”: “The PTO also erred in construing section 2(a)’s bar on the registration of marks that may disparage ‘persons, living or dead’ to include marks that disparage non-juristic collective entities like racial and ethnic groups. In fact, the quoted phrase includes only natural and juristic persons. . . . Section 2(a)’s disparagement clause bars the registration of marks—such as JOHN SMITH IS EVIL—that disparage natural persons. It also bars the registration of marks—such as MICROSOFT IS EVIL—that disparage juristic persons. But the disparagement clause explicitly does not bar the registration of marks that disparage collective entities that are not juristic persons.”
  6. Original Purpose of Disparagement Clause: “The purpose of the disparagement clause was not to protect the civil rights of racial and ethnic minorities. Rather, the purpose appears to have been to bring American trademark law into conformity with the language of a recent treaty. In 1931, the United States ratified the Inter-American Convention for Trade Mark and Commercial Protection. 46 Stat. 2907 (1931). Article 3.4 of the Convention provided for the denial of registration to trademarks ‘[w]hich tend to expose persons, institutions, beliefs, national symbols or those of associations of public interest, to ridicule or contempt.’ One of the primary purposes of the Lanham Act was, as the House and Senate re- ports both explained, ‘[t]o carry out by statute our international commitments.’ Indeed, the full title of the Lanham Act was ‘An Act to provide for the registration and protection of trade-marks used in commerce, to carry out the provisions of certain international conventions, and for other purposes.’ . . .  Congress would not turn its attention to protect- ing the rights of racial and ethnic minorities for many years to come. When it did, beginning with the Civil Rights Act of 1957, Congress would refer to race and ethnicity explicitly, unlike in the Lanham Act. Section 2(a) thus protects natural and juristic persons against disparagement; it does not protect racial and ethnic groups.”

Such arguments may carry the day and thus could prevent the Court from reaching the First Amendment issues. Let’s see how oral arguments play out.

* * * *

Here are the Briefs in support of neither party:

See also Erica Goldberg, Lee v. Tam: Offensive Trademarks at the Supreme Court: Speech Rights and Government Prerogative (A Series): Part One: The Weighty Legal QuestionsIn a Crowded Theater, Oct. 24, 2016

True Threats to Press Freedom?

 Emily Bazelon, Billionaires vs. the Press in the Era of Trump, New York Times, Nov. 22, 2016 (“Once installed in the White House, Trump will have a wider array of tools at his disposal, and his record suggests that, more than his predecessors, he will try to use the press — and also control and subdue it.”)

Brent Griffiths, Trump to reporters: ‘You’ll be happy’ with my views on the First Amendment, Politico, Nov. 22, 2016 (“President-elect Donald Trump vowed that reporters would be ‘happy’ with his stewardship of the First Amendment under his presidency, despite past promises to make it easier to sue them. ‘I think you’ll be happy, I think you’ll be happy,’ Trump told New York Times reporters, editors and columnists gathered at the newspaper’s Times Square headquarters on Tuesday.”)

unknown Joe Concha, Breitbart News planning lawsuit against ‘major media company,’ The Hill, Nov. 15, 2016 (“Breitbart News Network, a pro-America, conservative website, is preparing a multi-million dollar lawsuit against a major media company for its baseless and defamatory claim that Breitbart News is a ‘white nationalist website,’” the statement reads.”Breitbart News cannot allow such vicious racial lies to go unchallenged, especially by cynical, politically-motivated competitors seeking to diminish its 42 million monthly readers and its number one in the world political Facebook page. Breitbart News rejects racism in all its varied and ugly forms. Always has, always will,” the statement continues.)

Peter Scheer, Can the First Amendment survive President Donald Trump?, Cal Coastal News, November 21, 2016 (“To get back at the New York Times, the Trump administration can go after its biggest shareholder, Mexican telecom magnate Carlos Slim. To get back at CNN, the Trump administration can have antitrust regulators in the Justice Department and FTC put the brakes on the proposed merger of Time-Warner (CNN’s owner) and AT&T.  And the same pain can be visited upon scores of other US firms, not limited to media, which, having criticized Trump’s policies, find themselves in the government’s crosshairs.”)

Susan Seager, Melania Trump’s ‘Revenge Lawyer’ Apparently Doesn’t Understand First Amendment, Law Newz, Nov. 19, 2016 (“Charles Harder, the Beverly Hills lawyer who destroyed Gawker as an act of revenge bankrolled by Silicon Valley mogul Peter Thiel and is now the attack-dog-lawyer for Melania Trump, wants to take down mainstream reporters and a 52-year-old Supreme Court decision. Problem is, like many tough-talking celeb lawyers, Harder misunderstands the law.”)

Ashly Cullins, Trump’s First-Amendment Nemesis Explains How He’ll Defend Any Defamation Lawsuits (Q&A), The Hollywood Reporter, Nov. 17, 2016  (“After then-candidate, now President-elect Donald Trump threatened to sue The New York Times and his sexual assault accusers for defamation in October, attorney Ted Boutrous turned to Twitter to tell the paper, and anyone else finding themselves in a similar situation, that he’d take on any free speech case brought by Trump, pro-bono. . .”

Question: What are some of the weapons that might be used against the press?

Boutrous’ Reply: “Subpoenas to reporters, going after whistleblowers, having an administration that’s even worse at responding to Freedom of Information Act requests, denying press credentials to news organizations, seeking prior restraints to stop publication of newsworthy information, and continuing to attack journalism and undermine its legitimacy from the bully pulpit of the presidency. We need vigorous, aggressive journalism as a democracy. The framers of the Constitution knew that people need to have accurate, factual information. If you have the president telling people that the best journalism in the world is wrong and evil, that is very harmful.”

Steve Benen, First Amendment faces unusual threats following Trump’s win, MSNBC, Nov. 14, 2016 (” One of the president-elect’s top aides raised the prospect of legal action against a critical senator; the president-elect himself is dishonestly attacking one of the nation’s top news outlets; Trump’s team is already taking new steps to limit press access; and the incoming Republican administration has taken aim at protesters voicing dissent in the wake of last week’s elections. If this is what we’re seeing in the first week – two months before Trump officially takes power – the First Amendment and its proponents are in for a very rough ride.”)

Mirren Gidda & Zach Schonfeld, Donald Trump’s Threat to Press Freedom: Why It Matters, Newsweek, Nov 12, 2016 (“Less than a month before the U.S. presidential election, the Committee to Protect Journalists issued an unprecedented statement denouncing the then-Republican nominee. ‘[Donald] Trump has insulted and vilified the press and has made his opposition to the media a centerpiece of his campaign,’ said the committee, a New York-based organization that promotes press freedom. ‘A Trump presidency would represent a threat to press freedom in the United States.’ With little more than two months before Trump takes the oath of office, the threat to the media—and the public’s right to know—is reality.”)

John Daniel Davidson, Mainstream Journalists Don’t Care About Free Speech Until Donald Trump Attacks It, The Federalist, Nov. 15, 2016 (“Trump’s cavalier attitude toward free speech isn’t unique. In fact, it’s a fundamental feature of the political Left. For all its wailing about free speech in the wake of Trump’s election . . . , the media spent eight years enabling and at times encouraging the Obama administration’s denigration of the First Amendment.”)

Hanging noose in yard unprotected by First Amendment

This from an Associated Press news story: “The Virginia Court of Appeals has upheld the conviction of a man who was sentenced to six months in jail for hanging a black-faced dummy in his front yard.”

Jack E. Turner (left) (credit: Roanoke Times)

Jack E. Turner (left) (credit: Roanoke Times)

“Jack Eugene Turner of Rocky Mount was convicted last year of violating a state law that prohibits hanging a noose to intimidate. His next-door neighbors are black.”

“Turner displayed the dummy the same day nine black churchgoers were massacred in South Carolina.”

Turned claimed his actions were protected by the First Amendment.

In his opinion for the court, Judge Robert J. Humphreys “wrote that the First Amendment ‘protects Turner’s right to be a racist’ but doesn’t ‘permit him to threaten or intimidate others who do not share his views.'”

Opinion:Turner v. Commonwealth (Nov. 22, 2016).

“Holland Perdue, Turner’s attorney, said the man has already served his jail sentence. Purdue said he looks forward to appealing to the Virginia Supreme Court.”

See also Justin  Wm. Moyer, Virginia man who displayed noose after Charleston shooting loses court appeal, Washington Post, Nov. 22, 2016

Headline: “Wall Street lawyers say retiree investment rule violates free speech”

Writing for Reuters, Elizabeth Dilts notes that a “group of lawyers representing insurance and securities brokerages have made a curious argument for why a federal court should kill a rule aimed at protecting retirement savers: It restricts Wall Street’s First Amendment rights.In front of a packed federal courtroom in Dallas last week, plaintiffs attorneys fighting the Labor Department’s fiduciary rule said it hinders free speech because it restricts what individuals selling retirement products will be able to say.”

“The rule requires that brokers who give retirement advice act in their clients’ best interest. The Labor Department, which regulates pension funds and other retirement income, devised the rule in order to protect retirement savers from receiving biased advice or being sold products they don’t need.”

unknown“David Ogden, lawyer for the American Council of Life Insurers, argued in court that the rule would prevent simple sales pitches like, ‘Buy my product; it’s a good product; here’s what it will do for you.'”

“The insurance industry would be affected by the rule because insurers sell annuities.”

“Big business has used similar tactics in cases related to product labeling, pharmaceutical sales and securities disclosures, with mixed success.”

“. . . . ‘Recent cases have made clear that the First Amendment provides broad protection for commercial speech that is truthful and non-misleading,’ said Floyd Abrams, a leading First Amendment rights lawyer with Cahill Gordon & Reindel, who successfully defended The New York Times in landmark litigation. ‘It’s a close case.’ . . . .”

“Labor Department lawyers argued the fiduciary rule only governs conduct, not speech. Even if it did regulate speech, they said, it only covers misleading and conflicted statements, which are not protected by the First Amendment.”

“U.S. District Judge Barbara Lynn pressed the government on its position, saying the fiduciary rule appears to regulate more than just misleading speech. . . .”

A Message from the Thomas Jefferson Center — ‘Tis the Season  

Dear Friends,
Now is the time. We need your help. For over 25 years, the Thomas Jefferson Center for the Protection of Free Expression has preserved and protected free expression in all its forms. We have done this by educating the next generation of attorneys and the public on the First Amendment, engaging communities around issues related to free speech, and litigating speech cases in state and federal courts.
UnknownWe look to 2017 with a worried but hopeful eye. We are in a particularly difficult and precarious environment for free speech. Our troubled times remind us that our great country can only mend and move forward when Americans of good faith have open and honest dialogue. Through such discussions good ideas are spread and bad ideas are exposed. This is why speech is a core shared value of all Americans. Our mission in the coming year, as it has always been, will be to educate and advocate to preserve that one freedom that underpins all others.
We cannot do our good work without your support. In your end-of-year giving, please consider donating to help us continue this important mission. We are also available to speak with you about making an estate gift to the Center. We deeply appreciate your generosity.
Happy Holidays!

Josh Wheeler

Show named after the First Amendment will replace WAMU’s ‘The Diane Rehm Show’

This from Kristen Hare writing in Poynter: “WAMU announced the successor for the popular “The Diane Rehm Show” on Wednesday. Starting with the new year, ‘1A,’ hosted by Joshua Johnson, ‘will take a deep and unflinching look at America, bringing context and insight to stories unfolding across the country and the world.'”

“Johnson, host of ‘Truth Be Told,’ previously worked at KQED in San Francisco and helped launch a partnership between Miami’s WLRN and the Miami Herald. Rehm, 80, has hosted the show since 1979. . . .”

New & Forthcoming Books

  1. Ira Carmen, Movies, Censorship, and the Law (University of Michigan Press, October 31, 2016)
  2. Randy Bobbitt, Free Speech on America’s K–12 and College Campuses: Legal Cases from Barnette to Blaine (Lexington Books, December 2, 2016)
  3. Jennifer Downey, Public Library Collections in the Balance: Censorship, Inclusivity, and Truth (Libraries Unlimited, June 30, 2017)

New & Forthcoming Scholarly Articles

  1. Michael L. Wells, What Did the Supreme Court Hold in Heffernan v. City of Paterson?, Georgia Law Review Online (2016)
  2. Hannah Bloch-Wehba, Process without Procedure: National Security Letters and First Amendment Rights, Suffolk University Law Review (2016)

Notable Blog Post

News, Editorials, Op-eds, & Blog Posts 

 David Lat, Justice Scalia, Originalism, Free Speech & The First Amendment, Above the Law, Nov. 22, 2016

  1. Tom Thoma, Huang: Free speech being squelched in North Dakota, Globe Gazette, Nov. 22, 2016
  2. Peter Van Buren, The War on the First Amendment Didn’t Start Last Week, Anti-War Blog, Nov. 22, 2016
  3. Laura Beltz, More Campus Leaders Address Free Speech Following Election, FIRE, Nov. 21, 2016
  4. Ruthann Robson, Daily Reminder: Equal Media Time Mandate Violates First Amendment, Constitutional Law Prof Blog, Nov. 20, 2016
  5. James G. Robertson, Virginia Universities Battling Free Speech, American Thinker, Nov. 19, 2016
  6. Eugene Volokh, Leading First Amendment lawyer Bruce Johnson on the ‘Speech Integral to Criminal Conduct’ exception, The Volokh Conspiracy, Nov. 17, 2016
  7. Sharon Nelson, Proposed bill attacks First Amendment rights to protest, Seattle Times, Nov. 17, 2016

Professor Deborah Lipstadt

Podcast interview with professor sued in Holocaust denial case 

YouTube: Strossen, Rabban, McConnell, Abrams, Volokh, Rhode, Jaffer, Samaha, Stone, & Others

Professor David Rabban

           Professor David Rabban

Ninth Annual Rosenkranz Debate: Hostile Environment Law and the First Amendment, Federalist Society, 2016 National Lawyers Convention, Washington, D.C.,, Nov. 19, 2016 (Eugene Volokh & Deborah Rhode, modertaed by Circuit Judge Jennifer Walker Elrod)

Floyd Abrams re hate speech on college campuses: “I’m open to do some bargaining here. What it might take [so far as decisional law is concerned] is dealing with the university, and classroom and the like situations, differently from certain other situations. It may be that speech of this sort is so seering that it makes it, if not impossible, all but impossible to proceed as if it didn’t happen in terms of learning, in terms of getting the benefit of a university education. And maybe the law ought to be moving in that direction of saying, you know, there are areas in which we say that . . . the university exists to teach, and to learn, and to do research and the like, and that an activity, even a speech activity of this sort is so inconsistent with it that we might have, ultimately, another exception to the First Amendment, or just say that it doesn’t apply in that situation.”

The Court’s 2016-2017 First Amendment Free Expression Docket

Cert. Granted

  1.  Expressions Hair Design v. Schneiderman
  2. Lee v. Tam
  3. Packingham v. North Carolina

Pending Petitions & Related Cases*

  1. Independence Institute v. FEC
  2. Bennie v. Munn
  3. Augsburg Confession
  4. Bondi v. Dana’s Railroad Supply
  5. Flytenow v. Federal Aviation Administration

Cert. Denied

  1. Armstrong v. Thompson
  2. Wolfson v. Concannon
  3. Dart v. Backpage.com
  4. NCAA v. O’Bannon
  5. Mech v. School Board of Palm Beach County
  6. Williams v. Coalition for Secular Government 
  7. Pro-Football v. Blackhorse 

First Amendment Religious Expression Case: Cert. Denied

Melhorn v. Baltimore Washington Conference of United Methodist Church (Whether the ministerial exception of the First Amendment absolutely bars breach of contract and tortious conduct lawsuits in situations of illegal conduct or harm to third parties.)

Free Speech Related Case: Pending 

  • Doe v. Backpage.com LLC (Whether Section 230 of the Communications Decency Act, which provides that no internet service provider “shall be treated as the publisher or speaker” of internet content that was “provided by another,” precludes a civil lawsuit against a website owner and operator based on its own criminal conduct any time online content created by a third party was part of the chain of causation leading to the plaintiff’s injuries.)

First Amendment Religious Expression Case: Denied 

  • Pfeil v. St. Matthews Evangelical Lutheran Church of the Unaltered (Whether the First Amendment to the United States Constitution provides absolute immunity for defamatory statements made in a religious setting, even if the person defamed is not a member of the religious organization and even if the truth or falsity of the defamatory statement can be adjudicated without considering or interpreting religious doctrine — applicability of the ecclesiastical abstention doctrine)

→ The Court’s last Conference was on November 22, 2016; its next Conference is on December 2, 2016.

Though these lists are not comprehensive, I try to track as many cases as possible. If you know of a cert. petition that is not on these lists, kindly inform me and I will post it.

Next Scheduled FAN, #134: November 30, 2016

Last Scheduled FAN, #132: FIRE Launches First Amendment Online Library 

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