TAM STRAIGHT! SCOTUS Ruling Allows Disparaging Trademarks

by: Lizzie Lecaroz (photo from the Slants webpage)

Monday signaled a victory for music bands and sports teams with offensive names. The United States Supreme Court’s (SCOTUS) unanimous decision in Matal v. Tam, with all eight justices then on the bench ruling in favor of Simon Shiao Tam, effectively rendered the disparagement clause of the Lanham Act unconstitutional, a no-look assist for a Washington Redskins touchdown. (Yes, we mixed up our sports references, we know.)

 On Trademarks

But before we dive in, we have to talk about trademarks.

 Trademarks refer to words, phrases, marks, or symbols that identifies the goods or services of one party in order to distinguish it from others. The registration of trademarks is an extremely beneficial practice. Trademarks are considered as a property asset in respect to their owners. Basically, once you register your mark, you are given the right to the exclusive use of the mark. Armed with such registration, you can sue for infringement, damages, or other similar remedies to prevent the misuse of your mark—in short, you have legal rights! However, even if the mark unregistered, you can use the mark but you are not entitled to any legal rights or benefits over the mark.

The Slants 6-yard TD Pass to the Redskins

 The Slants, a “Chinatown Dance” rock band, attempted to register the SLANTS trademark via their frontman Simon Tam in 2011. The name was refused trademark registration by the United States government due to its disparaging nature, as the “slants” is a derogatory slang term referring to people of Asian descent, commonly used to mock their common physical feature.  On December 22, 2015, the Federal Appeals Court (FAC) of the United States rendered a decision which held that Section 2(a) of the Lanham Act, which prohibits the registration of trademarks which “may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute,” is unconstitutional, as it is in violation of the First Amendment which protects the right to free speech. In the FAC’s decision, it was held that the government could not simply refuse to register a particular mark just because it is offensive or disrespectful.

Months previous to the SLANTS case, the Federal Appeals Court had the opportunity to tackle a similar case involving the NFL team Washington Redskins, which sought to register the mark REDSKINS. Sports commentators, journalists, civil rights groups, and tribal organizations all vehemently opposed the registration. Two Native American groups led by Suzan Harjo and Amanda Blackhorse brought the case to court. The District Court refused the registration of the Redskins mark, stating it disparaged Native Americans as the term referred to the group in an offensive manner. According to Amanda Blackhorse, the lead petitioner of the case, the term:

“actually dates back [to] the time when the Native American population was being                              exterminated, and bounty hunters were hired to kill Native American people … So,                            in order to show that they made their kill, they had to bring back a scalp or their skin.”[1]

The decision in Pro-Football, Inc. v. Blackhorse seemed to support the legal conclusion that the Redskin Marks consisted of matter that “’may disparage’ a substantial composite of Native Americans.”[2] It was likewise found that the Redskins failed to show that Section 2(a) of the Lanham Act is unconstitutional, arbitrary, vague, and overbroad in all its applications. The Blackhorse case went as far up to the United States Court of Appeals Fourth Circuit, but to this day, no oral arguments have been set or conducted at that level, as the Redskins moved to postpone the case until the Slants case, which involved the same and identical issues, was decided by the SCOTUS.[3]

The much-awaited U.S. Supreme Court ruling finally came on Monday. In Matal v. Tam, the Court ruled that the bedrock principle on which the Constitution’s First Amendment stands forbids the U.S. Patent and Trademark Office from refusing to register the Slants mark, or any trademark for that matter, which is deemed offensive or disparaging.[4] The First Amendment, based on Justice Samuel A. Alito Jr.’s opinion, cannot ban speech on the ground that it expresses ideas that offend.[5] The Court was unconvinced by the United States Patent and Trademark Office’s argument that trademarks were government speech and thus unregulated by the Free Speech Clasue, stating, “if private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints.”[6]

(You can read the Slants’ statement on the SCOTUS decision here.)

So, what? We’re in the Philippines!

 Well, it is important to note Section 2(a) of the Lanham Act and Section 123.1(a) of the Intellectual Property Code of the Philippines (IP Code) are similar:

LANHAM ACT

Section 2(a)

INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES

Section 123.1(a)

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.

A mark cannot be registered if it……
a. Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.

The IP Code of the Philippines is, at most, largely derived from the U.S. Lanham Act and contains provisions that are extremely similar and identical to those of the Lanham Act. We have our colonial history under the US to thank for that—our IP Code adopted concepts and postulates under the old and now-repealed Act 666 (Trademark and Trade Name Law of the Philippine Islands) which were equivalent to provisions under the U.S. trademark law.[7] To this day, although the Philippine courts have established its own unique progression of decisions in trademark law, it has not ceased to consider and rely on U.S. jurisprudence given the similarities of the two rules of law.[8]

Considering the similarities of the U.S. and Philippine law and their respective applications, would the Tam decision have the same effect on the Philippine Supreme Court’s application of Section 123.1(a) of the IP Code? Most likely. But given the conservative trait that most Filipinos are known to possess, it’s safe to say that not all disparaging marks sought to be registered will be given the privilege of registration, depending on the extent of how informal the colloquial term or word to be registered will be. So, if you’re a team owner who’s thinking of naming your team INTSIKS, BUMBAYS or CHEKWA, you might just want to think about it first—until our own Supreme Court invalidates Section 123.1(a), it still has the force of law, no matter what the SCOTUS said in Tam.

The Tam decision has served as the initial step to broadening the scope of registrable marks. The latest decision is expected to highly affect the Redskins moving forward. Run the play, Redskins. You’re next!

 

Kirk Cousins
Let us know if you do!

Lizzie Lecaroz is a senior in Ateneo Law School who is interested in pursuing a law career focused on Corporate Law and Intellectual Property. She is probably the only non-sport playing contributor to Batas Sportiva who Google-ed whether or not Yoga and Pilates were sports to verify this description.

(Lizzie’s my student in Sports Law! Proud! She won our UAAP/NBA Fantasy League! – Mickey)


[1] “Meet the Navajo Activist Who Got the Washington Redskins’ Trademark Revoked: Amanda Blackhorse”. Democracy Now!. June 19, 2014. See at https://www.democracynow.org/2014/6/19/meet_ the_navajo_ activist_who_got

[2] Memorandum Opinion and Order, Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96 – Dist. Court, Dist. of Columbia 2003.

[3] Chelsie N. Spencer, Fourth Circuit Postpones Redskins Trademark Case, Kennedy Law (October 20, 2016). See at https://www.saklaw.net/fourth-circuit-postpones-redskins-trademark-case/.

[4] Matal v. Tam, 582 U. S. ____ (2017)

[5] Robert Barnes, Supreme Court: Rejecting trademarks that ‘disparage’ others violates the First Amendment, The Washington Post, (June 19, 2017). See at https://www.washingtonpost.com/politics/courts_law/supreme-court-rejecting-trademarks-that-disparage-others-violates-the-first-amendment/2017/06/19/26a33ffa-23b3-11e7-a1b3-faff0034e2de_story.html?utm_term=.1e0ed0b626c0

[6] Decision

[7] Ferdinand M. Negre, Trademark Law in a Knotshell: From Caves to Cyberspace, Bengzon Negre Untalan Law Offices (2007), See at http://www.iplaw.ph/ip-views/trademark-law-from-caves-to-cyberspace.html

[8] Id.

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