STFU NEWS: The SLANTS Case And Adult Trademarks
*** Please Read This Carefully ***
This thread is different than others on GFY because GFY has asked me to Moderate this series of "STFU News" threads. The hope is that these threads will allow lurkers, frequent posters and some of the people who have been posting less to all engage in an intelligent discussion here on GFY about an interesting business relevant topic without being trolled. To accomplish that goal, GFY has asked me to be the moderator of STFU News threads, and that includes deleting or editing posts that are: off topic, trolling, or otherwise aimed at derailing the discussion. Please note, I will *only* be moderating the STFU News threads. I hope you will speak your mind in an intelligent, professional and constructive manner. If this proves to be a useful way of doing things, we will keep it going.
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Topic #3: The SLANTS Case And Adult Trademarks:
Recent court decisions and Trademark regulatory actions in matters like The SLANTS case and the Washington Redskins name rights litigation are making trademarks of 'derogatory terms' much more shaky than they were a few years ago. Are you concerned about having your own trademarks invalidated because they are on the edge of good taste? Do you think the courts will change these rulings on appeal? Are these decisions affecting your domain name buys or brand name choices?
For Anyone Who Is Unaware of the Backstory:
One of the more important legal rulings that will arise this year is coming from an intellectual property case that too many adult insiders have been completely unaware of until now. The case involves an all-Asian dance rock band founded by front man Simon Tam, and their attempt to trademark their band name “THE SLANTS.”
The controversy stems from a September 2013 opinion by the Trademark Trial and Appeal Board (TTAB) affirming the U.S. Patent and Trademark Office’s (PTO) refusal to grant The Slants trademark registration due to §2(a), which prevents registration of marks “[c]onsist[ing] of or compris[ing] … matter which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The TTAB panel, consisting of Chief Administrative Trademark Judge Gerard Rogers, noted that The Slants trademark was denied because it is “a highly disparaging reference to people of Asian descent” and continues to be disparaging to “a substantial composite of the referenced group.” On the other hand, Tam and his band insist they adopted the band name to “reclaim” it and celebrate Asian identity, and according to Tam the issue is that “minorities should have the right to label themselves.”
The case has gotten a large amount of mainstream press coverage from Reuters and other business periodicals because of the wide reaching implications of having ‘obscenity police’ controlling whether a term can become protected intellectual property or not. The implications for the NFL’s Washington Redskins and a slew of significant adult industry brand names are obvious. It’s certainly plausible to be concerned about a small group of faceless bureaucrats with the power to invalidate trademarks worth millions of dollars on the grounds that they find them to be distasteful.
For that reason, the First Amendment Lawyers Association (FALA) filed an Amicus Curiae brief on behalf of The Slants. FALA is a legal consortium that does not require members to be part of the adult industry, but does include many prominent attorneys and corporate backers from within the adult online community. The Amicus Curiae (friend of the court) brief, drafted by noted attorney Marc Randazza of FALA expressed several important points for the court to consider and concluded that: “The court and the PTO cannot suppress trademarks without also suppressing the ideas they provide. Trademarks provide information to potential consumers, ranging from commercial information about their goods and services to information pertaining to company values, beliefs, and ideas. Therefore, the government cannot use Section 2(a)’s restriction on “immoral . . . or scandalous matter; or matter which may disparage,” to suppress the protected speech encompassed by trademarks without adequate justification.”
The three-judge panel of the Federal Circuit disagreed with that assertion and decided there was evidence the term ‘The Slants” is offensive to people of Asian descent. It went on to decree that there was no free speech violation since a refusal to federally register a trademark does not prevent the applicant from using the term, only from owning the term with a governmentally enforced trademark protecting it.
Currently, the burden of proving that a trademark is disparaging rests with the PTO, and §2(a) rejections are “relatively uncommon.” The Federal Circuit applies a two-part test to determine if a mark is disparaging: (1) what is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods and services; and (2) if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.”
* The full story will be covered extensively in an upcoming AVN Feature Article about this topic, but it also seems like a great STFU News item to discuss here with the adult business community.
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