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On Slanted Arguments and Red Herrings

Posted in Articles, Branding, Copyrights, Trademarks, TTAB, USPTO

Last Friday, both slanted arguments and red herrings were present during the 90 minute en banc oral argument before the Court of Appeals for the Federal Circuit (CAFC) in In re Tam.

The question invited by the CAFC to be addressed in Tam is whether Section 2(a) of the Lanham Act’s prohibition on the federal registration of trademarks that consist of or comprise matter that may disparage persons violates the First Amendment.

The CAFC previously had affirmed the Trademark Trial and Appeal Board’s decision in Tam upholding the USPTO’s refusal to federally-register THE SLANTS mark for “entertainment in the nature of live performances by a musical band,” concluding that when used in connection with applicant’s services, THE SLANTS would be perceived as disparaging to a substantial composite of the referenced group — persons of Asian descent, violating Section 2(a) of the Lanham Act.

After vacating that decision, now, the CAFC is asking whether Congress even has the power to refuse registration of a trademark consisting of or comprising matter that may disparage persons. And, although the court didn’t specifically ask for briefing on whether the scandalous and immoral portions of Section 2(a) must fall too under the same First Amendment theory, the lawyer for the American Civil Liberties Union, who was permitted 10 minutes of oral argument, as amicus curiae, encouraged the court to “embrace” that idea.

Although I have already shared some thoughts on the subject, here, after springing out of my chair a few times while listening to the audiotape of the Tam oral argument, I couldn’t resist sharing a few more thoughts on the subject. Some now, more later.

One of those jarring moments was when Circuit Judge Kimberly Ann Moore, the initial Tam panelist who appeared to spearhead the sua sponte Constitutional review en banc, consistent with her “additional views” appended to the original panel affirmance, asked our friend Ron Coleman (counsel for Mr. Tam) about how the court’s decision would impact the federal government’s copyright registration system.

This led to an unfortunate diversion and a substantial amount of time devoted to the purely academic question of whether Congress could amend the Copyright Act to add a disparagement provision that refuses registration of copyrights on that basis. It seems to me, this kind of question, assuming it is even relevant to the analysis, deserves far more than shoot from-the-hip responses, but since that is what was sought in oral argument, I’ll offer a few thoughts off the top of my head, instead of from the hip.

To my knowledge, correct me if I’m wrong Ron, but Congress has never forbidden and has no plans to forbid copyright registration to disparaging works of authorship, so a parade of horribles based on this fear seems misplaced. And the underlying premise and multiple suggestions during the oral argument that trademark should be treated like copyright is certainly not the law, not obvious, and the premise has multiple flaws, it seems to me.

First, copyright and trademark flow from very different origins and have very different purposes. Copyright protection flows from an express provision in the U.S. Constitution, whereas federal trademark protection flows from the very general Commerce Clause language permitting Congress to make laws affecting interstate commerce. In fact, Congress’ first attempt to create a federal trademark regime in 1870 failed, and was struck down by the Supreme Court, because it improperly relied upon the Copyright Clause of the U.S. Constitution for its authority.

Federal copyright law is preemptive and as a result States cannot seek to protect copyright under State law. Not so with trademark protection, there is no preemption, so States are free to and do protect trademark rights at the State level.

Moreover, a prerequisite to any enforcement of a copyright is federal registration, but again not so with trademarks, unregistered marks may be protected by the States at common law.

Moreover, in terms of Congress’ legitimate interest in discouraging all sorts of confusion in the marketplace, it is reasonable and accurate for the public and potential consumers to infer governmental approval of a trademark when the federal registration symbol (®) is used, because it is unlawful to use it without first having obtained a Certificate of Registration for the mark in question. But again, not so with copyright — there is no prohibition on the use of the copyright registration symbol (©) and there is no registration requirement in order to use it.

In terms of the governmental speech argument there are material differences there too. A trademark registration certificate, when issued by the federal government has its name and fingerprints all over it, positioned immediately adjacent to the approved mark in question. On the other hand, when a copyright registration issues, the material subject to copyright protection does not appear anywhere on the certificate, nor is it even attached to the certificate.

So, to suggest that all forms of IP (copyright, patent and trademark) should be treated the same ignores the careful balance that Congress struck over the last century and longer in legislating unique protections and limitations for each form of intellectual property.

There is so much more to say, but I’ll have to circle back for the rest later, sorry duty calls.