In 2006 when I was working on the first version of my book Copyright Litigation Handbook, I went to Washington, D.C. for a tour of the Copyright Office and to visit the former Register of Copyrights and her legal team. It felt like the last scene of Indiana Jones and the Raiders of the Lost Ark: vast quantities of deposit materials: from telephone books to CDs to pornography, much of it being thrown away. If deposit material is not selected for the Library of Congress's collection, the deposit material may be discarded. A fact that sends evidentiary shivers down the spine of every litigator.
It was the pornography that surprised me most. At the time it was videocassette and DVDs of pornography films stuffed into bookshelves that seemed to go on forever. Why on earth were significant government resources being devoted to housing, storing and processing legal protections to these offensive materials? A patient guide explained the whole system to me.
On December 22, 2014 the U.S. Court of Appeals for the Federal Circuit decided In re Simon Shiao Tam, 2015 WL 9287035 (Fed. Cir. December 22, 2015) which struck down as facially unconstitutional Section 2(a) of the Lanham Act which bars the United States Patent and Trademark Office from registering scandalous, immoral or disparaging marks. 15 U.S.C. 1052(a). A number of en banc dissenters thought the statute should have been held unconstitutional as applied. A cert petition is expected in March and the U.S.P.T.O. has put a moratorium on refusals of registrations of disparaging marks until the Supreme Court rules. Until then, examiners have been instructed to simply suspend the applications according to IPWatchdog's report here.
|The Slants - Misery Music Video|
The plaintiff Simon Shiao Tam was denied registration of the trademark THE SLANTS. Tam is an Asian-American musician who chose THE SLANTS to express an anti-racist message.
The decision is tremendously long and tremendously interesting. The reason Copyright Litigation Blog is interested is that both the majority and leading dissenting opinions do a compare/contrast between the copyright registration and the trademark registration process that is highly instructive on the question of whether registration of a trademark implicates or subsidizes government speech.
As I noted above, copyright registrations are issued routinely for pornography. I am aware of at least one federal case where a while back a judge in the SDNY refused to grant copyright protection to a pornographic work that he found immoral, although the name of the case escapes me now and I have long been skeptical of whether using the federal courts to threaten exposure of alleged downloaders of pornography was anything more than an extortion racket that violated public policy. But I am not aware of any big moral controversies involving registrations of potentially offensive copyrighted works. And, as the case explains, this is for good reason. Copyrights subsist in offensive speech and have long been considered coextensive with the First Amendment.
But historically, trademarks have been treated differently. Trademarks have been considered commercial speech. And the majority and dissenters differ on whether trademarks subsidize speech, regulate it, or promote certain types of speech over others.
When I read the media coverage of the case, I didn't think that the issue was so important. But as I read the enormous decision, I listened to The Slants on Spotify. Not bad! I visited the Slants' website and found an impassioned discussion of the case by Mr. Tam here.
Tam says that the Federal Circuit hijacked his case in favor of the Washington Redskins, an interview here.
After having read the case, I am persuaded that the issues are of tremendous importance and that this case will have extraordinarily wide consequences for the future of the intersection of trademark and copyright law with the First Amendment. Judge Dyk's dissent bears close watching.
Copyright law, fine art and navigating the courts. All practice, no theory.Copyright Litigation Handbook (Thomson Reuters Westlaw 2015-2016) by Raymond J. Dowd