Lee v. Tam Page 2

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Media for Lee v. Tam

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

John G. Roberts, Jr.:

It -- it doesn't seem to me to advance the argument very much.

Malcolm L. Stewart:

Well, I think the disparagement provision is only one of a number of restrictions on copy -- I'm sorry, on trademark registrability that really couldn't be placed on speech itself.

For example, words -- marks that are merely descriptive, that are generic, marks as to which the -- the applicant is not the true owner because somebody else was previously using the mark in commerce, those can't be registered either.

Stephen G. Breyer:

Well, each of those -- and I know there are several -- are related to the ultimate purpose of a trademark, which is to identify the source of the product.

So every trademark makes that statement. Now, what is -- what purpose or objective of trademark protection does this particular disparagement provision help along or further? And I'm thinking of the provision that says you can say something nice about a minority group, but you can't say something bad about them.

With all the other -- I know the others -- I don't know all, but I know many of them, and I can relate that.

You relate this.

Malcolm L. Stewart:

I think Congress evidently concluded that disparaging trademarks would hinder commercial development in the following way: A trademark in and of itself is simply a source identifier.

Stephen G. Breyer:

Right.

Malcolm L. Stewart:

Its function is to tell the public from whom did the goods or services emanate.

It is not expressive in its own right. Now, it is certainly true that many commercial actors will attempt to devise trademarks that not only can identify them as the source, but that also are intended to convey positive messages about their products.

For example, if you see the -- the name Jiffy Lube or a B&B that's called Piney Vista.

The -- the mark is -- is sort of a dual-purpose communication.

It both identifies the source and it serves as a kind of miniature advertisement. There's always the danger, as some of the amicus briefs on our side point out, that when a person uses as his mark words that have other meanings in common discourse, that it will distract the consumer from the intended purpose of the trademark qua trademark, which is to identify source, and basically Congress says, as long as you are promoting your own product, saying nice things about people, we'll put up with that level of distraction.

Ruth Bader Ginsburg:

But suppose the -- the application here had been for Slants Are Superior.

So that's a complimentary term.

Would that then be -- take it outside the disparagement bar?

Malcolm L. Stewart:

I -- I think that under the PTO's historical practice, probably not.

I believe -- and I think the same thing would be true of other racial epithets, terms that have long been used as slurs for a particular minority group --

John G. Roberts, Jr.:

Why isn't that disparaging of everyone else? Slants Are Superior, well, superior to whom?

Malcolm L. Stewart:

I -- I think the basis for the PTO's practice, and they obviously don't have that -- this -- that case, is that the term "Slants," in and of itself, when used in relation to Asian-Americans --

Stephen G. Breyer:

I have it.

Right.

I want to get the answer to my question because that is the one question I have for you. The only question I have for you is what purpose related to trademarks objective does this serve? And I want to be sure I have your answer.

Your answer so far was, it prevents the -- or it helps to prevent the user of the product from being distracted from the basic message, which is, I made this product. I take it that's your answer.

And if that's your answer, I will -- my follow-up question to that would be, I can think probably, and with my law clerks, perhaps 50,000 examples of instances where the space the trademark provides is used for very distracting messages, probably as much or more so than the one at issue, or disparagement.

And what business does Congress have picking out this one, but letting all the other distractions exist?

Malcolm L. Stewart:

Well, I think what -- I think what you've described as my first-line answer, and I think the precise justification for different kinds of -- for prohibiting registration of different kinds of disparaging trademarks would depend to some extent on who is being disparaged.

That is, in the --

Stephen G. Breyer:

It's not disparaging; your answer was distracting.