Lee v. Tam

PETITIONER: MIchelle K. Lee, Director, USPTO
RESPONDENT: Simon Shiao Tam
LOCATION: United States Court of Appeals for the Federal Circuit

DOCKET NO.: 15-1293
LOWER COURT: United States Court of Appeals for the Federal Circuit

GRANTED: Sep 29, 2016
ARGUED: Jan 18, 2017

Malcolm L. Stewart - for the petitioner
John C. Connell - for the respondent

Facts of the case

Simon Tam and his band, The Slants, sought to register the band’s name with the U.S. Trademark Office. The Office denied the application because it found that the name  would likely be disparaging towards “persons of Asian descent.” The office cited the Disparagement Clause of the Lanham Act of 1946, which prohibits trademarks that “[consist] of or [comprise] 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.” Tam appealed the trademark officer’s decision, and the name was refused a second time by a board comprised of members of the office. Tam appealed to a panel of judges on the U.S. Court of Appeals for the Federal Circuit, which found that the trademark officials were within their rights to refuse the trademark application under the Disparagement Clause. The appellate court then reviewed the case en banc and found that the trademark office was incorrect in refusing the trademark application and that the Disparagement Clause violated the First Amendment.


Is the Disparagement Clause invalid under the First Amendment?

Media for Lee v. Tam

Audio Transcription for Oral Argument - January 18, 2017 in Lee v. Tam

John G. Roberts, Jr.:

We'll hear argument first this morning in Case No. 15-1293, Lee v. Tam. Mr. Stewart.

Malcolm L. Stewart:

Thank you, Mr. Chief Justice, and may it please the Court: The statutory provision at issue in this case, 15 U.S.C. 1052(a), prohibits the registration of any mark that may disparage persons, institutions, beliefs, or national symbols.

Based on that provision, the PTO denied Respondent's application to register The Slants as a service mark for his band.

The PTO's ruling did not limit Respondent's ability to use the mark in commerce, or otherwise to engage in expression or debate on any subject he wishes. Because Section 52(a)'s disparagement provision places a reasonable limit on access to a government program rather than a restriction on speech, it does not violate the First Amendment.

Anthony M. Kennedy:

Is copyright -- copyright a government program?

Malcolm L. Stewart:

I think we would say copyright and copyright registration is a government program, but it's historically been much more tied to First Amendment values to the incentivization of free expression.

Anthony M. Kennedy:

But part of that, seems to me, to ignore the fact that we have a culture in which we have tee shirts and logos and rock bands and so forth that are expressing a -- a point of view.

They are using the -- the market to express views.

Malcolm L. Stewart:

I mean, certainly --

Anthony M. Kennedy:

But I was -- disparagement clearly wouldn't work with copyright, and -- but that's a powerful, important government program.

Malcolm L. Stewart:

Let me say two or three things about that. First, there's no question that through their music, The Slants are expressing views on social and political issues.

They have a First Amendment right to do that.

They're able to copyright their songs and get intellectual property protection that way. If Congress attempted to prohibit them, either from having copyright protection or copyright registration on their music, that would pose a much more substantial First Amendment issue.

But --

Samuel A. Alito, Jr.:

Substantial First Amendment issue.

I was somewhat surprised that in your briefs you couldn't bring yourself to say that the government could not deny copyright protection to objectionable material. Are you going to say that?

Malcolm L. Stewart:

I -- I hate to give away any hypothetical statute without hearing the justification, but I'll come as close as I possibly can to say, yes, we would give that away.

It would be unconstitutional to deny copyright protection on that ground. But I -- I would also say, even in the copyright context, we would distinguish between limits on copyright protection and restrictions on speech.

For instance, it's historically been the case, and it remains the position of the copyright office, that a person can't copyright new words or short phrases.

Even if a person comes up with something that is original, that is pithy, that makes a point, if it's too short, you can't get copyright protection. We would certainly defend the constitutionality of that traditional limit on the scope of copyrightable material, and if there were a First Amendment challenge brought, we would argue that there's a fundamental distinction between saying you can't copyright a four-word phrase and saying you can't say the four-word phrase, or you can't write it in print. But there's --

Ruth Bader Ginsburg:

There's a significant difference between the copyright regime, you can't sue for copyright infringement unless you register.

Isn't that so?

Malcolm L. Stewart:

You have to have filed an application to register in order to -- to pursue an infringement suit.

And so the -- the statute -- I believe it's 17 U.S.C. 411(a) indicates that if you filed an application to register your copyright, even if that application has been denied, you can still bring your copyright suit, and the register is entitled to be heard on questions of copyrightability.

Ruth Bader Ginsburg:

There's no restriction on -- on the trademark.

Malcolm L. Stewart:

That's correct.

You can file a suit under Section 1125(a) of Title 15 under -- under the trademark laws either for infringement or of an unregistered trademark or for unfair competition more generally.

But -- but --

John G. Roberts, Jr.:

Counsel, I'm -- I'm concerned that your government program argument is -- is circular.

The claim is you're not registering on my mark because it's disparaging, and your answer is, well, we run a program that doesn't include disparaging trademarks, so that's why you're excluded.