by Jay Marshall Wolman
By now, you have probably heard that Simon Tam won his case before the Federal Circuit regarding his attempt to register a trademark for his band “The Slants”. (Disclosure: Randazza Legal Group represented the First Amendment Lawyers’ Association as amicus curiae in that case and was recently co-counsel with Mr. Tam’s lawyers, Ron Coleman and Joel MacMull, on another matter.) In short, the Federal Circuit Court of Appeals found that the denial of registration under the Lanham Act’s prohibition of the registration of “disparaging” marks did not survive strict or intermediate scrutiny under First Amendment analysis. I leave it to others to provide an analysis of the holding.
I’m more interested in something that appears on page 9 (page 107 of the PDF) of the dissent of Circuit Judge Reyna. In it, Judge Reyna (who happens to have been a former president of the Hispanic National Bar Association) offers up the following as a permissive government regulation of disparaging speech: a restaurant named “SPICS NOT WELCOME”. Judge Reyna notes that Title VIII of the Civil Rights Act of 1964 bans advertising with a discriminatory preference and discusses how (the better known) Title VII bans harassing speech in the workplace. He then writes that the government interest in avoiding disparagement, such as that with demographically discriminatory content, outweighs the burdens on speech.
With Judge Reyna in the dissent, something to consider is what would be the implications of a restaurant named “SPICS NOT WELCOME”. Prof. Eugene Volokh has explored the conflict between First Amendment law and harassment law. Judge Reyna’s example sets it up nicely. Let’s assume an entrepreneur named a restaurant “Spics Not Welcome” and registered that trademark. Let’s also assume that the restaurant does not actually discriminate against persons of Hispanic origin (for the hypothetical, let’s presume the restauranteur hates spices, but has a spelling problem and forgot the “e”).
Presumably, the name would dissuade both potential consumers and job applicants of Hispanic origin and would be deemed to violate the Civil Rights Act under present jurisprudence. So, on the one hand, you can register and use a disparaging mark under the First Amendment, but on the other, it is prohibited as being discriminatory. Which one stands? And, even though the trademark matter was decided on constitutional grounds, that does not mean that the government interest analysis is the same. Of course, it may be argued that it is the same analysis and down goes harassment law.
If not, can you have a registered trademark you are not allowed to use? Does trademark law trump civil rights law or vice versa? Since the Lanham Act predates the Civil Rights Act, perhaps the latter trumps. I’ll have to look into instances where an offensive mark was deemed unlawful harassment and update this post.
Now, I don’t recommend naming a restaurant “Spics Not Welcome”. But what if The Slants needs a new drummer–can a non-asian apply? Would they feel harassed or precluded by the name? It’ll be interesting to see how the law develops.