The California-based Dykes on Bikes, a self-described group of “lesbian motorcycle riders,” has roared to the support of an Asian-American band called The Slants in a high-profile Supreme Court case about the ability to trademark offensive names.
Formally entitled the San Francisco Dykes on Bikes Motorcycle Contingent Inc., the group is riding alongside the likes of the Washington Redskins football team and the conservative U.S. Chamber of Commerce in the fast-approaching case. The outcome could topple part of a 71-year-old law, remove some speech restrictions and open the doors to more incendiary trademarks.
“The case is of enormous importance to free speech law and intellectual property law because it poses the issue of whether the government may use its leverage to grant or deny intellectual property protection as a means of penalizing messages the government finds disagreeable,” Rodney A. Smolla, dean of the Widener University Delaware Law School, said Friday.
In an hourlong oral argument Wednesday, the court will wrestle with whether a provision of the 1946 Lanham Act violates the First Amendment. The broad trademark law, named for the late Texas Congressman Fritz G. Lanham, prohibits trademark protection for material that “may disparage . . . persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt, or disrepute.”
Citing the Lanham Act, a U.S. Patent and Trademark Office examiner rejected a trademark application brought in 2011 by Portland, Oregon-based musician Simon Shiao Tam. Tam says he called his band, formed in 2006, The Slants “to take on these stereotypes that people have about us, like the slanted eyes, and own them.” Officials weren’t convinced.
“The fact that (Tam) has good intentions underlying his use of the term does not obviate the fact that a substantial composite of the referenced group find the term objectionable,” the Trademark Trial and Appeal Board subsequently asserted.
The Obama administration defends the ruling, calling the underlying Lanham Act a matter of establishing “criteria for participation in the government’s trademark-registration program” rather than a means of regulating speech. The trademark denial does not prohibit the four-member band’s use of the name, but does remove protections against infringement by others.
“Nothing in the First Amendment requires Congress to encourage the use of racial slurs in interstate commerce,” acting Solicitor General Ian Heath Gershengorn stated.
Gershengorn further likened the trademark registration standards to a Texas policy not to issue “Sons of Confederate Veterans” commemorative license plates, which the Supreme Court upheld in 2015. Without the Lanham Act’s standard, Gershengorn warned, trademarks could be issued to “crude references to women based on parts of their anatomy, the most repellent racial slurs and white-supremacist slogans, and demeaning illustrations of the Prophet Muhammad and other religious figures.”
The case has drawn an unusual amount of attention, reflected in part by myriad amicus briefs filed on behalf of both sides. Smolla, for instance, joined University of North Carolina School of Law professor Mary-Rose Papandrea and other constitutional scholars in supporting The Slants. Separate briefs from the Redskins, the Chamber of Commerce and Dykes on Bikes added to the chorus.
San Francisco-based attorney Mark A. Lemley, in the brief for Dykes on Bikes, noted that the organization has gone through a “costly, time-consuming and ultimately only partially successful” trademark effort since 2003. The group’s application at the trademark office has been suspended until the court rules on The Slants’ challenge.
“It has at various points found both that the term ‘dyke’ is a disparaging term for lesbians and, conversely, that the term ‘dyke’ is not a disparaging term,” Lemley wrote.
On the flip side, African-American and Asian-American members of Congress, including Reps. Doris Matsui, D-Calif., and Frederica S. Wilson, D-Fla., weighed in to warn against “the odious and lasting discriminatory impact that disparaging and hateful terms have on American society and in particularly on communities of color.”
“Disparaging, racist, sexist and homophobic words do little to forward any goals of the First Amendment,” the lawmakers stated in their brief, prepared by Minnesota-based attorney John Dragseth.
The oral argument Wednesday morning will be the second-to-last heard by the shorthanded court before President-elect Donald Trump is inaugurated next Friday. Trump has said he will name his nominee to fill the court’s vacant seat within a week or so, though his choice will not join the court in time to help decide The Slants’ challenge.
Gershengorn, the top government attorney who will be defending the Lanham Act’s disparagement clause, will likewise eventually be replaced by a Trump nominee.