Amicus Curiae Brief — Lee v. Tam, 137 S. Ct. 30 (2016) (No. 15-1293)
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DEC 16 2016
No. 15-1293 + a DHL *
In the Supreme Court of the Anited States
Michelle K. Lee, Under Secretary of Commerce for
Intellectual Property and Director,
United States Patent and Trademark Office,
Petitioner,
Uv,
Simon Shiao ‘lam,
Respondent.
On Writ of Certiorari to the
United States Court of Appeals
for the Federal Circuit
BRIEF OF THE CATO INSTITUTE
AND A BASKET OF DEPLORABLE PEOPLE
AND ORGANIZATIONS
AS AMICI CURTAE SUPPORTING RESPONDENT
Ilya Shapiro
Counsel of Record
Thomas A. Berry
CATO [INSTITUTE
1000 Mass. Ave., N.W.
Washington, DC 20001
(202) 842-0200
ishapiro@cato.org
therry@cato.org
December 16, 2016
QUESTION PRESENTED
Does the government pet to decide what's a slur?
TABLE OF CONTENTS
Page
ey: | i
FORT IEE BEEED scccccxcasevccsescszccsescsscsccsscess iV
INTEREST OF AMICUS CURITAE......................:0004 l
SUMMARY OF ARGUMENT ....................................1
ns saab eseueveunetenccscons 7
I. “DISPARAGING” LANGUAGE SERVES AN
IMPORTANT ROLE IN OUR SOCIETY........... 7
A. Reclaiming Slurs Has Played a Big Part in
Personal Expression and Cultural Debate... 7
8B. Rock Music Has a Proud Tradition of
Pushing the Boundaries of Expression ...... 10
Il. THE GOVERNMENT SHOULD NOT BE
DECIDING WHAT'S A SLUR........................... 12
A. It ls Impossible to Draw an Objective Line
as to What Is Disparaging ....................... 12
B. Brands That Do Not Wish to Offend Can
Change Their Names Voluntarily .............. 19
lil. THE DISPARAGEMEN'T CLAUSE
VIOLATES THE FIRST AMENDMENT......... 22
A. The Disparagement Clause Is a
Viewpoint-Based Unconstitutional!
Nee a civiecaase i 22
B. A Trademark Is Neither a Subsidy Nor
sks cceskdencecess MO
|. Choosing which artists and speakers to
fund with limited resources is different
than trademark registration. ................ 24
2. Spending other people's money on
political activity is unlike trademark
PIII docttsccvesccscecktunirscodnanschire: beeas 24
3. Trademarks are not endorsements. ...... 25
4. The government is incoherent because
it admits that it uses resources to
protect both registered and
unregistered trademarks. ...................... 27
C. Expanding the “Government Assistance”
Kxception Risks Swallowing the Rule........ 28
1). The Government May Not Discourage
Speech to Protect People from Being
“Bombarded” with Opposing Views............ 30
CEPR sniinhiiscniintinncbsindhligumectemluestededcdpedusecesin 34
APPENDIX: DESCRIPTION OF AMICT................. 1A
lV
TABLE OF AUTHORITIES
Page(s)
Cases
B&B Hardware, Inc. v. Hargis Industries, Inc.,
ee ee ao aa mabldeusadiacbaciiocs 2
Bradwell v. Illinois,
83 U.S. 130 (1872).......... MOE SESE Fe re Roig eee fren 27
Buck v. Bell,
SS STRIP ITE? 27
Buckley v. Valeo,
Be ER 0 CED oveeccncseseseces Jaee daslnaouiamcecas sik hasisaes ian a
Cohen v. California,
Oe se OD dictsceccccncnintinieteseccis eibcvercabedubuemanmaiatch 12
Davenport v. Wash. Educ. Ass'n,
a Se ae nee ea 24, 25
Dred Scott v. Sandford,
a she sasensesiassierdiamnielinel
Erznoznik v. Jacksonville,
I ine Acai: beldahins 34
Flying Dog Brewery, LLLP v. Mich. Liquor Control
Comm'n, 597 Fed. Appx. 342 (6th Cir. 2015) ...... 4A
In re In Over Our Heads,
No. 755,278, 1990 WL 354546 (T.T.A.B. 1990)..... 13
Leathers v. Medlock,
A. ERIRE SIS E Sree pr ae 28
National Endowment for the Arts v. Finley,
a ee a pee 24
National Socialist Party of America v. Village of
es SOUy AP GF UII OD dices cercinceecinssadaaddedacstoginnes 30
Perry v. Sindermann,
I I vn neccsesicren ceo cacoteceeennene 22, 28
Plessy v. Ferguson,
sit & fl ee Tn Seer 27
Pro-Football, Inc. v. Blackhorse,
112 F. Supp. 3d 439 (E.D. Va. 2015) ..................... 32
Regan v. Taxation With Representation of Wash.,
AG1 U.S. 540 (1983) .....0.cececcccecessescsscsesesecsceesesereeeese 24
Rust v. Sullivan,
eS Fe ED cisarsiesacericetininimanintmannapetcoeadanded 24
Simon & Schuster, Inc. v. Members of the N.Y. State
Crime Victims Board, 502 U.S. 105 (1991)..... 28, 29
Snyder v. Phelps,
ee On BA tee 34
United States v. American Library Ass'n,
539 U.S. 194 (2003)............ iiaiehenaaatamien tetladi Sred laes 24
Walker v. Texas Div., Sons of Confed. Veterans, Inc.,
ns apni 26
Williams v. Rhodes,
3638 US. 33 (1968) ...........-.... eon devecvadacemeon ceveresiies 3
Ysursa v. Pocatello Educ. Ass'n,
nn i alenideteoshiennacens a
Constitutional Provisions
RG ee a SERS UR ion rmacen emer Senne ice 8 28
Statutes
ee SEE BE Ni colcnaiusutnendcninepanticvoyeeeeses eae 29
vi
Other Authorities
11 Brand Names that Simply Couldn't Survive
the Times, Adweek, March 18, 2015
ct ann ciciacicc laste deesbiechigtanbastiGebennnee 21
Alexandra Petri, Literally, Joe Biden, Wash. Post,
Sept. 7, 2012, http://wapo.st/2hpA521.................. 30
Amy Chozick, Hillary Clinton Calls Many Trump
Backers “‘Deplorables,’ and G.O.P Pounces, N.Y.
Times, Sept. 10, 2016, http://nyti.ms/2cCNnXd..... 2
Barack Obama’s Speech on Father’s Day, June
15, 2008, available at http://bit.ly/2ggKSOH.......... S)
Cavalier, Encyclopedia Britannica (11th ed.
SEE), BRR P eS OE cnc cvccecisscccinebeciscesecs cscs, 4
Christopher M. Fairman, Fuck: Word Taboo and
Protecting Our First Amendment Liberties
Don Reisinger, [sis Wallet Becomes Softcard to
Avoid Confusion with Militant Group, CNET,
Sept. 3, 2014, http://cnet.co/2gzkfSf ..................... 21
Dyke Life: From Growing Up to Growing Old, a
Celebration of the Lesbian manatee (Karla
Ae a pnceddsecticencunGaieniiatescedbdesdemunacareseeasecais: 7
Elizabeth Wurtzel, Bitch: In Praise of Difficult
RRR Pa ANE Cee aan oatay ed Aas pe 7
Eric Bogosian, Chris Rock Has No Time for Your
Ignorance, N.Y. Times seis Oct. 5, 1997,
http://nyti.ms/2g5SO6c ... lidatesa ecanstve a
Erik S. Jaffe, When Easy Cases Make Bad Law,
2006-2007 Cato Sup. Ct. Rev. 115 (2007)........... 25
Eve Ensler, The Vagina Monologues (1998).............. 7
vil
“Hillbilly,” Wikipedia, http://bit.ly/2h1QjBa...........
Inga Muscio, Cunt: A Declaration of Independence
CTI wh chine aceite lade sacebahenipiigltbabhasgedennensuniaaeamieis cuits
J.D. Vance, Hillbilly Elegy (2016)...................0.00005
Jeremy Gordon, The Band Formerly Known as
Viet Cong Announce New Name, Pitchfork.com,
21-22
(April 21, 2016), http://bit.ly/1rpO3b8..............
Jerome McCristal Culp, Jr., Water Buffalo and
Diversity: Naming Names and Reclaiming the
Racial Discourse, 26 Conn. L. Rev. 209 (1993) .... 14
Jerry L. Martin, Should Alumni Remain Silent?,
8 Academic Questions 70 (1995)..................00.0000
Jim Goad, The Redneck Manifesto (1997)...............
Jimmy Stamp, Political Animals: Republican
Elephants and Democratic Donkeys,
Smithsonian.com (Oct. 23, 2012),
ES ee ee ee
Joan Biskupic, Justice Ruth Bader Ginsburg
Calls Trump a “Faker,” He Says She Should
Resign, Cnn.com, July 11, 2016,
SR I lel
John McWhorter, “Tar Baby” Isn't Actually a
Racist Slur, The New ~— saad 3, 2011,
http://bit.ly/2gYZpMu ... ee A Mash ip
John McWhorter, /s “Colored People” a Slur?,
mr
eset ea
CNN.com, Aug. 23, 2016, http://cnn.it/2bTCp2f .. 16
Jonathan Eig, This Woman Wants You to Call
Her Bastard, Offspring, June/July 2000.............
Kathleen Bishop, Cracker Day Fun for All,
Flagler-Palm Coast Community Times,
eT Paarl es tte 7 Ros 0 27 Bees
vill
Katy Steinmetz, Everything You Need to Know
About the Word ‘Suffragette’, Time, Oct. 22,
DAD, ORF UE MGT TOED «vcccccescccstssiscnecsnsessecvess:
List of Schools that Changed Native American
Nicknames, USA Today, Sept. 24, 2013,
TAREE Si oN Sn eS
Louis Leroy, Visual Arts Encyclopedia (last
visited Dec. 2, 2016), http://bit.ly/2h32pKO........
Margery Post Abbott et al., Historical Dictionary
of the Friends (Quakers) (2008) ..............ccceeceeeeees
Mario Sevilla, Lohan Calls Obama “Colored,”
NAACP Says No Big Deal, Mercury News, Nov.
12, 2008, http://bayareane.ws/2h2btxc................
Mark Mooney, ‘Yankee Doodle Dandy’ Explained
and Other Revolutionary Facts, ABC News,
July 4, 2014, http://aben.ws/1zcxHQk .................
Mary Fairchild, Methodist Church History,
About.com (last updated Dec. 2, 2016),
http://abt.cm/2g5TWGZ.............. ee bess behcganbiloates
Matt Richards & Mark Langthorne, Somebody to
Love: The Life, Death, and Legacy of Freddie
Pe REA SE AP Eid te aera A ce ao PROP
Merriam-Webster’s Dictionary,
IIE ANUUIIIED, geiideuciicsssicconscdsccshcocosencvnnsssncs
Michael du Plessis & Kathleen Chapman,
Queercore: The Distinct Identities of a
Subculture, 24 College Lit. 45 (1997).........0..0......
Michael Thomas Ford, T’hat’s Mr. Faggot to You:
Further Trials from My Queer Life (1999) ..........
Michael Warner, The Trouble with Normal: Sex,
Politics and the Ethics of Queer Life (1999)...........
on
4
ey
1x
Moriah Balingit, School District Weighs Ban of
‘Mockingbird,’ ‘Huckleberry Finn’ after
Complaint, Wash. Post, Dec. 3, 2016,
http://wapo.st/2gGFMS ..............cccseeeererccerrreeeeeeee 1B
N.W.A., “Straight Outta Compton” on Straight
Outta Compton (Ruthless Records 1988) ............. 11]
Niggas vs. Black People, in Chris Rock, Rock This!
seston LN ph at eee PA et eee Ar ees, 8-9
Pansy Division: Life in a Gay Rock Band (Last
ee EN TI cin sittbesacetesedpascssisvensseneeties 11
Randall Kennedy, Nigger: The Strange Career of a
Troublesome Word (2002) .................2.ceceeeeeees passim
Randall Kennedy, Who Can Say ‘Nigger’? And
Other Considerations, 26 J. of Blacks in Higher
TS Raine Bee StS aPC a Ne ae ee 17
Rare Edition of ‘Mein Kampf’ Stolen, UPI, Sept.
22, 1991, http://bit.ly/2g5PCHS ..............cccceeeeeeeees 30
Reid Neilson, Exhibiting Mormonism: The Latter-
day Saints and the 1893 Chicago World’s Fair
(2011)........ SORA CS Ena ee 3
Seinfeld, The Yada Yada (first aired April 24,
DIED cvccvcsecscceccccsceccsesscscccessensesevesestssesesévesssesesscesese 5-6
Society of Jesus, Catholic Encyclopedia (1913),
ET, MIO as vecvecepranedsenctssecsnsnnsnnscioneszcevesens 3
South Park, Jt Hits the Fan (first aired June 20,
0 YT is RS Seine ale pale oe ah 17
South Park, With Apologies to Jesse Jackson (first
SR EE 0 TD einidi sin cach acnsnianedvssietscsorns 9-10, 18
Stephen Baird, Moral Initercecition in the
Trademark Arena: Bunning the Registration of
Scandalous and Immoral Trademarks, 83
Trademark Reporter 661 (19938).................... 13, 31
Straight Outta Compton (Universal Pictures
cit is) os. <a Cobek aivdetemnnn stp uesiiinesarbanesanandanakeren 1]
Ta-Nehisi Paul Coates, Why “Tar Baby” Is Such a
Sticky Phrase, Time, Aug. 1, 2006,
III «oc accndnccrehatnsannchebeienesesnczesbiets 15
The Vagina Monologues (HBO Films 2002) .............. 8
Trump: Mexico Not Sending Us Their Best;
Criminals, Drug Dealers And Rapists Are
Crossing Border, RealClearPolitics, June 16,
SORE, REE FT FEE vccesscscesecsvessvesossesscscesess 2
Yolanda Woodlee, D.C. Mayor Acted “Hastily,”
Will Rehire Aide, Wash. Post, Feb. 4, 1999,
http://wapo.st/1lj4yg7V ..................066. santent nieetintes 15
l
INTEREST OF AMICI CURIAE'
Amici are the following organizations and individ-
uals, whose biographies appear in the appendix: the
Cato Institute, P.J. O'Rourke, Nadine Strossen, Erik
Nielson, Clay Calvert, Ralph Steadman, Flying Dog
Brewery, the Comic Book Legal Defense Fund, DKT
Liberty Project, and Reason Foundation.
Amici are committed to preserving free expression
and pushing people out of their comfort zones. This
case concerns amici because we all say things that
some people find offensive or even disparaging—but
it’s not the government’s role to make that judgment.
SUMMARY OF ARGUMENT
This case is about whether an Asian-American
rock band called The Slants can trademark and own
their own name. The Slants are a group of artists
who have formed an identity “to take on these stereo-
types that people have about us, like the slanted eyes,
and own them.” Resp. Cert. Brief 3. Some agree with
The Slants’ approach and some disagree, as is normal
in a robust artistic marketplace. What’s not normal is
that the government has chosen sides in this debate,
punishing The Slants for their choice of name by
denying them federal trademark registration.
This punishment is the result of the “disparage-
ment clause” in the federal trademark statute, the
Lanham Act, which bars the registration of “matter
which may disparage . . . persons, living or dead, in-
stitutions, beliefs, or national symbols, or bring them
ee
| Rule 37 statement: Both parties lodged blanket consents to
the filing of amicus briefs. Further, no counsel for any party au-
thored this brief in whole or in part and no person or entity oth-
er than amici funded its preparation or submission.
into contempt or disrepute.” Pet. App. 6a. As artists
know, the denial of trademark registration comes
with severe negative consequences, since the “bene-
fits of registration are substantial.” B&B Hardware,
Inc. v. Hargis Industries, Inc., 135 S. Ct. 1298, 1310
(2015). Faced with this potential punishment, many
artists, advocacy groups, and businesses will simply
choose a different name. The government’s rule thus
discourages some names and encourages others.
This Court should make the jobs of the employees
at the U.S. Patent and Trade Office (PTO) much easi-
er and put an end to the disparagement clause. Try-
ing to stamp out “disparaging speech is both mus-
guided and unconstitutional. No public official ean be
trusted to neutrally identify specch that “disparages.”
Moreover, disparaging speech has been central to po-
litical debate, cultural discourse, and personal identi-
ty for as long as this country has existed.?
Disparaging epithets long ago entered our political
vocabulary, encapsulating criticisms more succinctly
than any polite term ever could. Schoolchildren today
learn that Millard Fillmore ran for president in 1856
as the candidate of the “Know-Nothing” Party; few
adults could tell you the party’s “real” name. Yet a
hypothetical 1856 PTO would likely have denied reg-
istration to a group called “Defeat the Know-
Nothings” (disparaging to American Party members),
2 For example, we recently concluded a presidential cam-
paivnon large part defined by pronvuneements that lirge groups
of people found to be personally dusparaginy. See. e.g. Trnanp:
Mexteu Not Sending Us Then Best: Crintinals, Drug Dealers And
Regusts Ane Crossing Border, RealClearPolities. June 16, 2015,
hitpvibit WwihGNRCpdl. Amy Chovick, Hillary Clinton Culls
Many Tromp Packers “Deplorables, and 6.O.P lPounces, ‘N.Y
Times, Sept. 10, 2016, http://nyti.ms/2cCNnXd.
just as the reul PTO has denied registration to “Abort
the Republicans” (disparaging to Republicans),
“Democrats Shouldn't Breed” (disparaging to Demo-
crats), and a logo consisting of the communist ham.
mer-and-sickle with a slash through tt (disparaging
to Soviets). Pet. App. 8a. Political speech, including
the right to criticize parties and politicians without
government punishment, is recognized by this Court
as “at the core of our electoral process and of the First
Amendment freedoms.” Buckley v. Valeo, 424 U.S. 1,
39 (1976) (quoting Williams v. Rhodes, 393 U.S. 23,
32 (1968)).° Thus, denial of a statutory trademark
right represents particularly egregious government
action that violates the First Amendment.
But the suppression of political speech is not the
only problem arising from the disparagement clause.
As this case shows, supposedly “disparaging” speech
is often part of an effort to reclaim a word from its pe-
jorative meaning. Efforts like this have already had a
profound influence on the development of many
groups’ identities. Jesuits, Methodists, Mormons, and
Quakers owe their popular names to terms that were
originally given to them in a disparaging context, and
that have since been reclaimed.1 Without disparaging
3 Indeed, questioning the character of our politicians 1s such
a cherished American tradition that a member of this Court re-
cently engaged in it herself. See Joan Biskupic, Justice Ruth
Kader Ginsburg Calls Trump a “Faker,” He Says She Should
Resign, CNN.com, July 11, 2016, http://enn.it/29zSCUS.
‘ See Society of Jesus, Catholic Encyclopedia (1913),
http://bit.ly/2gN6i63; Mary Fairchild, Methodist Church History,
About.com (last updated Dec. 2, 2016), http://abt.cm/2g5TWGZ;
Reid Neilson, Exhibiting Mormonism: The Latter-day Saints and
the 1893 Chicago World’s Fair 24 (2011); Margery Post Abbott et
al., Historical Dictionary of the Friends (Quakers) xxxi (2003).
epithets, our vocabulary would be deprived of such
terms as “cavalier, fin
” «4
yankee,” “impressionist” (Renoir,
not Rich Little), and “suffragette.”® How did a donkey
become the Democratic Party symbol? A political op-
ponent labeled Andrew Jackson a “jackass,” so dack-
son put the animal on campaign posters. See Jimmy
Stamp, Political Animals: Republican Elephants and
Democratic Donkeys, Smithsonian.com (Oct. 23,
2012), http://bit.ly/2gzmfKa. An 1820s PTO might
have stopped him.
More recently, the author of the bestselling Hill-
billy Elegy (2016) narrated his escape from the hol-
lows of Kentucky to help explain our populist political
moment. J.D. Vance does for “hillbillies” a term
even Wikipedia considers to be derogatory,
http://bit.ly/2h1QjBa—what David Brooks did for
“bobos” (bourgeois bohemians): explain conversation-
ally an important yet disturbing slice of Americana.
Rock bands in particular often pick names because
they are “disparaging.” The Slits, the Queers, Queen,
Pansy Division, N.W.A. (Niggaz Wit Attitudes), and
the Hillbilly Hellcats—-there’s that word again-- -are
just a few examples. Other bands, looking to push the
envelope both musically and culturally, have chosen
names like the Sex Pistols, Dead Kennedys, Butthole
Surfers, Rapeman, Snatch and the Poontangs, Pussy
Galore, Dying Fetus, and many, many more.
5 Cavalier, Encyclopedia Britannica (llth ed. 1911),
http://bit.ly/2gZ14BT; Mark Mooney, ‘Yankee Doodle Dandy’ Ex-
plained and Other Revolutionary Facts, ABC News, July 4,
2014, http://aben.ws/1zcxHQk; Louis Leroy, Visual Arts Ency-
clopedia (last visited Dec. 2, 2016), http://bit.ly/2h32pKO; Katy
Steinmetz, Everything You Need to Know About the Word ‘Suf.-
fragette’, Time, Oct. 22, 2015, http://ti.me/2he2Cvn.
Further, the disparagement clause is unconstitu-
tionally vague. Its application will always be unpre-
dictable, because nearly any brand could be taken as
disparaging by some portion of some group. Take, for
low-hanging fruit, Aunt Jemima, Uncle Ben, the
Cleveland Indians’ Chief Wahoo, the women in La
Tortilla Factory, or the Keebler Elves. Amicus Flying
Dog Brewery has its own history of legal disputes
over beer names like “Raging Bitch.” See next page
and appendix. Determining whether a term is dispar-
aging is an incredibly complex endeavor that the gov-
ernment can’t possibly be equipped to handle.
For example, one of this briefs authors is a crack-
er (as distinct from a hillbilly) who grew up near At-
lanta, but he wrote this sentence, so we can get away
with saying that." Another contributor—unnamed be-
cause not a member of the bar—is an _ Italian-
American honky who has always wanted to play in a
band called the Dagos, which of course would close
every set with “That’s Amore” from “Lady and the
Tramp.” But, with only his great grandparents hav-
ing come from Italy, is he dago cnough to “take back”
the term? And amici’s lead counsel is a Russian-
Jewish émigré who's now a dual U.S.-Canadian citi-
zen. Can he make borscht-belt jokes about Canuck
frostbacks even though the first time he went to shul
was while clerking in Jackson, Mississippi??
‘ But he only moved to Atlanta when he was 10 and doesn't
have a southern accent—and modern Atlanta isn’t really part of
the South—-so maybe we can’t.
’ In one Seinfeld episode, Jerry is concerned that a friend
who recently converted to Judaism did it “just for the jokes”:
Jerry: And then he asked the assistant for a schtickle of fluoride.
6
It gets compli-
cated. And that’s
the point. The
disparagement
clause places an
unconstitutional
condition on
those who con-
sider the use of
an edgy or taboo
BE: CHAN Ty phrase to be part
re) P LE IPA of their brand.
-*
vay % None of the
AS government's
justifications for
an exception to
the doctrine car-
ry weight: regis-
tering a_ trade-
mark is not a public subsidy or endorsement. The
Court should recognize that trademarks are in no
way official speech and reaffirm that the government
may not put its thumb on the scale to push controver-
sial viewpoints out of the public square.
—_——_—— —— — —
Klaine: Why are you so concerned about this?
Jerry: Tll tell you why. Because I believe Whatley converted to
Judaism just for the jokes.
Jerry: So Whatley said to me, “Hey, | can make Catholic jokes, |
used to be Catholic.”
Jerry: Don't you see what Whatley is after? Total joke telling
immunity. He’s already got the two big religions covered, if he
ever gets Polish citizenship there'll be no stopping him.
Seinfeld, The Yada Yada (first aired April 24, 1997).
ARGUMENT
1. “DISPARAGING” LANGUAGE SERVES AN
IMPORTANT ROLE IN OUR SOCIETY
A. Reclaiming Slurs Has Played a Big Part in
Personal Expression and Cultural Debate
The PTO has inserted itself into a cultural debate.
It’s no secret that for centuries, people have used lan-
guage to ridicule and debase. Slurs have been used to
stereotype groups, to label its members as inferior,
and to express contempt in a universal shorthand.
But for just as long, some of the people in these very
groups have decided that the explosive power of these
charged words does not have to be monopolized by
those who seek to demean.
As Randall Kennedy has described, these people
“have thrown the slur right back in their oppressors’
faces. [Blacks] have added a positive meaning to nig-
ger, just as women, gays, lesbians, poor whites, and
children born out of wedlock have defiantly appropri-
ated and revalued such words as biich, cunt, queer,
dyke, redneck, cracker, and bastard.” Randall Kenne-
dy, Nigger: The Strange Career of a Troublesome
Word 38 (2002).8
* Kennedy cites, as examples, Michael Thomas Ford, That's
Mr. Faggot to You: Further Trials from My Queer Life (1999);
Michael Warner, The Trouble with Normal: Sex, Politics and the
Ethics of Queer Life (1999); Eve Ensler, The Vagina Monologues
(1998); Inga Muscio, Cunt; A Declaration of Independence
(1998); Elizabeth Wurtzel, Bitch: In Praise of Difficult Women
(1998); Jim Goad, The Redneck Manifesto (1997); Dyke Life:
From Growing Up to Growing Old, a Celebration of the Lesbian
Experience (Karla Jay, ed. 1996); Jonathan Fig, This Woman
Wants You to Call Her Bastard, Offspring, June/July 2000;
8
Artists who choose to use such charged words do
not always reach this decision easily. Frequently,
their works reflect the artists’ own attempts to grap-
ple with a word, revealing precisely the debates and
disagreements that make the choice to use it—if such
a choice is made—so charged and powerful. See, e.g..
The Vagina Monologues (HBO Films 2002):
[An audience member] also told me in the
course of our conversation that I had said
something negative about a particular word, a
pejorative word, a word that’s been used to de-
claim the vagina, and she needed to help me
reconceive this word. So, for the next hour, she
talked to me about this word. And when she
was done, I was a convert. | wrote this for her.
T call it: “Cunt.” I’ve reclaimed it. “Cunt.” I re-
ally like it. “Cunt.” Just listen to it, listen to it:
“Cunt.”
Such debates, among artists and within one artist’s
body of work, would be impossible without a clear-
throated acknowledgment of the words themselves.
This is not to say that the only meaningful cultur-
al debates over the use of slurs and taboos words cen-
ters around purely positive reclamations. In some
cases, artists and comedians have harnessed their
power to send a critical message. For example, one of
the most groundbreaking stand-up routines ever rec-
orded, Chris Rock’s “Niggas vs. Black People,” en-
gaged in cultural commentary that put some African
Americans in a negative light—indeed, “disparaged”
them. See Niggas us. Black People, in Chris Rock,
Kathleen Bishop, Cracker Day Fun for All, Flagler-Palm Coast
Community Times, March 29, 2000.
9
Rock This! 17-19 (1997). Many questioned and criti-
cized both Rock’s approach and, specifically, his use
of “the N-word.” See, e.g., Eric Bogosian, Chris Rock
Has No Time for Your Ignorance, N.Y. Times Maga-
zine, Oct. 5, 1997, http://nyti.ms/2g5SO6c. (“Your au-
dience is made up of whites, many of whom are happy
to hear how lazy or stupid blacks are. You’re using
the word ‘nigger.’ And some of the white audience is
saying, “That’s right.’ . . . ‘Nigger’ is a heavy-duty
word. You better have a good reason for using it.”).
Yet the routine had such cultural resonance that 12
years later it was cited positively by an African-
American’ presidential candidate. See Barack
Obama's Speech on Father’s Day, June 15, 2008,
available at http://bit.ly/2ggKSOH. (“Chris Rock had a
routine. He said some—too many of our men, they’re
proud, they brag about doing things they’re supposed
to do. They say ‘Well, I'm not in jail.’ Well you’re not
supposed to be in jail!”). The 12-minute riff was un-
doubtedly an important contribution to an ongoing
public debate and its title and message undoubtedly
would have been rejected by the PTO.
Of course many in the African-American commu-
nity continue to disagree with comedians’ decision to
use racial epithets. Such disagreements are to be ex-
pected; it would be patronizing to assume that any
racial or ethnic group would have a single monolithic
view on any controversy. But such disagreements
* Indeed, one harm of the government’s approach, which at-
tempts to discern whether a “substantial composite” of a given
community has felt disparaged by a mark, is that it will natural-
ly allow certain loud voices in a racial or ethnic community to
“speak for” the entire group in determining whether a term has
disparaged them. After all, asking a few self-anointed “commu-
nity leaders” is much easier than ascertaining the sentiments of
10
over the true meaning and best approach to the use of
a word are at the core of First Amendment debate.
We are not arguing—and the Court need not de-
cide—that those who choose to use these words are
always correct, whether they use them as a tool of
pride or criticism. It is the PTO’s rule, by effectively
giving a veto power to those who disagree with such
usage and punishing those who use them, which has
impermissibly taken sides in this debate.
B. Rock Music Has a Proud Tradition of
Pushing the Boundaries of Expression
Post-war popular music—from rock, to soul, to
rap, to R&B, to punk—has consistently pushed the
boundaries of expressive propriety. From its very be-
ginnings, rock music has made parents uncomforta-
ble, school teachers cringe, and officials riled up. It
wouldn't be rock music if it didn’t.
The boundaries of expression are generally con-
gruent with the boundaries of social convention.
Many marginalized groups have sought to challenge
social conventions by choosing disparaging terms as
millions of members of a diverse group. See South Park, With
Apologies to Jesse Jackson (first aired March 7, 2007):
Stan: Hey Token. I just wanted to let you know that every-
thing is cool now. My dad apologized to Jesse Jackson.
Token: Oh | see, so I’m supposed to feel all better now.
Stan: Well, yeah.
Token: You just don’t get it, Stan!
Stan: Dude, Jesse Jackson said it’s okay!
Token: Jesse Jackson is not the emperor of black people!
Stan: (confused) He told my dad he was...
11
band names. The so-called “Queercore” or “Homocore”
movement of the ’80s, ’90s, and 2000s was typified by
bands like the Pansy Division, an all-gay rock band
that explicitly adopted a disparaging epithet in their
name. See Michael du Plessis & Kathleen Chapman,
Queercore: The Distinct Identities of a Subculture, 24
College Lit. 45 (1997); Pansy Division: Life in a Gay
Rock Band (Last Rites Productions 2008). When he
came up with the name “Queen” for his legendary
band, front man Freddie Mercury said he liked the
“regal” sound, but he was also “certainly aware of the
gay connotations.” Matt Richards & Mark
Langthorne, Somebody to Love: The Life, Death, and
Legacy of Freddie Mercury 127 (2016).
“Taking back” disparaging epithets has also been
a philosophy of rap and R&B music, both of which
use variations of “nigger” in their lyrics and names.
N.W.A., one of the most culturally significant groups
of the past 30 years, is the most prominent example.
Straight Outta Compton (Universal Pictures 2015).
They grabbed the slur with pride, announcing to
themselves and the world with the brazen opening
line, “straight outta Compton, crazy motherfucker
named Ice Cube, from the gang called niggaz wit atti-
tudes.” N.W.A., “Straight Outta Compton” on
Straight Outta Compton (Ruthless Records 1988).!°
10 “A cursory survey just of titles yields Dr. Dre’s “he Day the
Niggas Took Over,’ A Tribe Called Quest’s ‘Sucka Nigga,’ Jay-Z’s
‘Real Nigger,’ the Geto Boys’ “‘Trigga Happy Nigga,’ DMX’s ‘My
Niggas,’ and Cypress Hill’s ‘Killa Hill Nigga.’ In ‘Gangsta’s Par-
adise,’ meanwhile, Coolio declares, ‘I’m the kind of nigga little
homies want to be like on their knees in the night saying pray-
ers in the streetlights.” Kennedy, supra, at 35—36.
12
N.W.A. received a trademark for its name. That
The Slants have been denied one for theirs only un-
derscores the arbitrary and biased nature of the Lan-
ham Act’s disparagement clause.
Finally, band names are also chosen to convey
valuable information about the music the band plays.
It should come as no surprise that the Queers are not
a Lawrence Welk cover band, the Revolting Cocks are
not a string quartet, Dying Fetus does not play jazz
standards, and Gay Witch Abortion would never open
for Paul Anka. Similarly, The Slants have chosen a
name that, through its insouciance, expresses some-
thing about their music—and the government's je-
jeune label of “disparaging” fails to capture the many
levels of communication inherent in that name.
ll. THE GOVERNMENT SHOULD NOT BE
DECIDING WHAT’S A SLUR
A. It Is Impossible to Draw an Objective Line
as to What Is Disparaging
As the Court has observed, “it is largely because
governmental officials cannot make principled dis-
tinctions in this area that the Constitution leaves
matters of taste and style so largely to the individu-
al.” Cohen v. California, 403 U.S. 15, 25 (1971). The
history of the disparagement clause is a textbook ex-
ample of this problem.
In applying the clause, the PTO tries to “look|] at
what message the referenced group takes from the
applicant’s mark in the context of the applicant's
use,” and then “den{y] registration only if the mes-
sage received is a negative one.” Pet. App. 22a—23a.
Even the clause’s defenders admit that
“{p|redictability ... is a real problem” and that “those
13
who are called upon to interpret the disparagement
standard of Section 2(a) still are required to ascertain
the subjective feelings of others regarding the use of
the challenged trademarks.” Stephen Baird, Moral
Intervention in the Trademark Arena: Banning the
Registration of Scandalous and Immoral Trade-
marks, 83 Trademark Reporter 661, 668 (1993). And
as the Federal Circuit pointed out, “the PTO [has]
admitted that ‘|t]he guidelines for determining
whether a mark is scandalous or disparaging are
somewhat vague and the determination of whether a
mark is scandalous or disparaging is necessarily a
highly subjective one.” Pet. App. 33a n.6 (quoting /n
re In Over Our Heads, No. 755,278, 1990 WL, 354546,
at *1 (T.T.A.B. 1990)). See also id. at 33a n.7 (listing
examples of arbitrary PTO decisions).
Nonetheless, the government assures us that it
knows how to draw an objective line as to what is
“disparaging.” If it seems to contradict itself in regis-
tering some marks and denying others, that is only
because “analysis of whether a mark is disparaging
requires consideration of the mark’s meaning in rela-
tion to the particular goods and services for which
registration is sought and the context in which the
mark is used.” Pet. Brief 51. For several reasons, we
are less sanguine that such a neutral and objective
arbiter of true disparagement can be found anywhere,
let alone in the federal government.
First, history shows that people have often taken
serious offense-—that is, received a “negative” mes-
sage—-from words and phrases that also have perfect-
ly innocuous meanings. Consider the infamous Penn
“water buffalo” incident:
14
Late on a Friday evening at the University of
Pennsylvania [in 1993], freshman Eden
Jacobowitz was studying in his dormitory
room, After midnight, his study was interrupt-
ed by some boisterous sorority sisters, who
happened to be black, celebrating outside his
window. He and other students yelled out their
windows at the students. Young Eden shouted,
“Shut up you water buffalo!” When a campus
judicial officer interrogated him, Mr.
Jacobowitz told him what he had yelled and of-
fered to apologize for his rudeness. Neverthe-
less, he was charged with having violated
Penn’s speech code prohibiting “racial harass-
ment.”
Jerry L. Martin, Should Alumni Remain Silent?, 8
Academic Questions 70, 70 (1995).
Since that incident, entire journal articles have
been written debating whether this bovine analogy
was a racial slur. Compare Jerome McCristal Culp,
Jr., Water Buffalo and Diversity: Naming Names and
Reclaiming the Racial Discourse, 26 Conn. L. Rev.
209, 225 (1993) (“In context, it is possible that this
statement was in fact meant to be nonracial, but is it
quite possible that one could not mistake the racial
nature of the statement?”) with Martin, supra at 70
(“[N]o one, including scholars in the university's eth-
nic studies department, could cite any previous use of
the term ‘water buffalo’ as a racial slur.”). If the
brightest academic minds can debate whether a term
was a racial slur for two decades, what hope does a
single lawyer in the ‘Trademark Office have?
There have been similarly intense controversies
over the use of the word “niggardly,” which has an
1h
entirely innocuous dictionary definition'' but hap.
pens to also sound similar to another word of less in-
nocuous origins. Use of the word has become so con-
troversial that one employee of the D.C. Mayor's Of-
fice lost his job for using it in a public meeting. See
Yolanda Woodlee, D.C. Mayor Acted “Hastily,” Will
Rehire Aide, Wash. Post, Feb. 4, 1999,
http://wapo.st/1lj4yg7V. See also Kennedy, supra, at
94—96. What to make of such controversies? Perhaps
there are some secret racists who receive a thrill from
being able to say “niggardly” out loud and get away
with it, like the second-grader who seems to enjoy
saying “Hoover Dam” a bit too much. But most, sure-
ly, use the word only out of a desire to show that they
know their way around a thesaurus. Which definition
of “niggardly” would the government use if someone
attempted to include the word in a trademark? The
dictionary or the dog-whistle? It is hard to know, and
that, again, is exactly the problem.
The list of such disputed slurs is endless. Yet more
heated debates, for example, have raged over use of
the term “tar baby.” See Ta-Nehisi Paul Coates, Why
“Tar Baby” Is Such a Sticky Phrase, Time, Aug. 1,
2006, http://ti.me/2h2Zfqk; John McWhorter, “Jar
Baby” Isn't Actually a Racist Slur, The New Republic,
Aug. 3, 2011, http://bit.ly/2gYZpMJ. Once again, the
PTO would have us believe that although linguists,
historians, and pundits disagree, everyone who works
at 600 Dulany Street in Alexandria magically ac-
quires the power to settle these debates.
Yet a further wrinkle is that sometimes the pro-
cess of reclamation described above can occur in re-
‘| Niggardly (adj.): 1. Grudgingly mean about spending or
granting. Merriam-Webster’s Dictionary, http://bit.ly/1LrwxH11.
16
verse. That is, a term formerly considered respectful
can evolve to be considered pejorative. Imagine, for
example, that an entirely new organization were
founded today with the term “colored people” in its
name. Would this not at least raise some eyebrows at
the PTO? After all, the term has evolved to the point
where no one would now use it in polite company; a
morning news anchor had to quickly apologize when
she slipped up and used it on the air last summer.
See John McWhorter, /s “Colored People” a Slur?,
CNN.com, Aug. 23, 2016, http://enn.it/2bTCp2f. Yet it
is also true that, in 1910, the founders of this coun-
trys preeminent advocacy organization for African
Americans “chose the word ‘colored’ because it was
the most positive description commonly used at that
time.” See Mario Sevilla, Lohan Calls Obama “Col.
ored,” NAACP Says No Big Deal, Mercury News, Nov.
12, 2008, http://bayareane.ws/2h2btxe (interview with
Carla Sims, Communications Director for NAACP in
Washington, D.C.). Perhaps the NAACP is right that
the term colored is “outdated and antiquated but not
offensive.” Jd. But this raises the question: At what
point between 1910 and the present would the PTO
have ceased granting registration to marks using
“colored”?!’ Once again, there is no clear answer.
But these problems of uncertainty are not limited
to whether a term should be considered a slur. Even
with words that are indisputably pejorative, it is still
a complex question whether a given usage is meant to
disparage, because of the process of reclamation.
People will always, in good faith, disagree as to when,
if ever, such “reclamatory” uses are positive for the
group in question, and whether their use should be
'2 See also the United Negro College Fund
17
encouraged or condemned. Kven among those who
believe that such uses can be valuable, there will be
disagreements as to the speakers, settings, and usag-
es that are permissible. See generally Randall Ken-
nedy, Who Can Say ‘Nigger’? And Other Considera-
tions, 26 J. of Blacks in Higher Educ. 86 (2000),'"
The case of The Slants illustrates precisely this
problem. Even though the band is entirely composed
of Asian Americans, and even though few doubt that
their intentions are good, some in the Asian-
American community have disagreed with their ap-
proach and objected to their name. See Pet. App. 11a.
This opposition should not be surprising. Nearly
every use of a taboo word, no matter how well-
meaning, will offend some part of the population. In
1926, Carl Van Vechten chose to title his newest nov-
el-—a sympathetic and serious portrayal! of black life
in Harlem—*“Nigger Heaven.” As Randall Kennedy
describes, “The title alone alienated many blacks, in-
cluding some who knew the author personally... . At
an antilynching rally in Harlem, a protester burned a
copy of Nigger Heaven. And in Boston, the book was
banned.” Kennedy, supra, at 101. The inescapable
fact is that no matter the intention or artistic merit,
the use of such words will always be met with contro-
'4 See also South Park, /t Hits the Fan (first. aired June 20,
2001):
Mr. Garrison: Well, they can't use “fag.” Because you can’t say
“fag” unless you're a homosexual.
Randy: Really? So we can’t say (bleep)?
Mr. Garrison: No. See, you got beeped.
Man: You mean you have to be a [bleep] to say [bleep]?
Mr. Garrison; That's right.
18
versy. Prominent African-Americans have, in good
faith, carnestly objected to the appearance of racial
slurs in everything from Huckleberry Finn to Merri-
am-Webster’s Dictionary. /d. at 105-12.
The serious risk of such outcry shows that even
those who believe that their intentions are good can-
not be certain that their trademark will be approved.
The government’s standard of looking to the senti-
ments of the community at issue will not necessarily
save well-meaning or “valuable” uses of difficult
words. Instead, it threatens to give veto power to
those voices who complain the loudest—a phenome-
non that is not necessarily correlated with the actual
number of people who truly object to a term.'* Since
the decision to reject a mark will be skewed toward
those cases that have attracted the most public atten-
tion and outcry after the mark has already been cho-
sen, the actual likelihood of being denied registration
is even more unpredictable in advance. The result is
that artists will be even more incentivized to “play it
safe” and choose names that will be unlikely to gen-
erate any controversy—-exactly the chilling of speech
that makes such arbitrary rules so dangerous.
4 See, e.g., South Park, With Apologies to Jesse Jackson (Mi-
chael Richards, Mark Fuhrman, and the fictional Randy Marsh
start a vociferous campaign and successfully lobby Congress to
ban the phrase “nigger guy” as a slur against white people who
have used the racial epithet. Senator: “From now on, if a person
uses the word ‘nigger,’ it must be at least seven words away
from the word ‘guy.”). For a real-life example, see, e.g., Moriah
Balingit, School District Weighs Ban of ‘Mockingbird,’ ‘Huckle-
berry Finn’ after Complaint, Wash. Post, Dec. 3, 2016,
http://wapo.st/2gGFmSJ (describing how school board pulled
literary classics pending consideration of permanent ban; also
noting an earlier complaint about Toni Morrison's Beloved),
19
Kor all of these reasons, a “mixed” approach, as
proposed by one group of amici, would not work. See
Brief of Amici Curiae Asian Americans Advancing
Justice | AAJC, et. al., in Support of Neither Party.
These amici argue that this Court should leave the
disparagement clause largely in place, but strike
down its denials of trademarks that are “actually”
well-intended. They propose “a more comprehensive
and nuanced disparagement analysis that considers
both the expressive interest in reclamation and the
potential harmful effects of the proposed mark.” /d. at
3. But the government will never be able to draw
such an objective line. Even if it could, the effort
would only make the PTO rule more blatantly violate
the First Amendment, since it would take the view-
point of a mark’s message into account even more.
To avoid such vagueness and unpredictability, the
PTO should follow a bright-line rule: make registra-
tion decisions based on the merits, not the message.
B. Brands That Do Not Wish to Offend Can
Change Their Names Voluntarily
When the government decides that it will be the
arbiter of offensiveness, it risks doing exactly what it
did here: denying registration to a trademark that
has an important contribution to make in expressing
identity and breaking down racial stereotypes. So
long as it remains in effect, the disparagement clause
will continue to swallow up many serious, important,
and well-meaning usages of taboo words. Even worse,
these harms are the product of a wholly unnecessary
governmental mission. The government does not have
to step in to defend us against offensive marks, be-
20
cause the market is best equipped to judge when a
brand is truly mean-spirited.!®
Complaining to the government is not the only
way for people truly offended by a title, name, or
mascot to influence its creator. In some cases, of
course, artists will stick to their guns and keep a title
they believe to be important even at the risk of losing
sales, as in the case of Carl Van Vechten and Nigger
Heaven. But in many others, offending their consum.-
ers is the last thing market participants want to do.
That’s why brands have evolved without the need for
the government to police their language.
In the 1970s, both Stanford and Dartmouth volun-
tarily changed their mascots from the “Indians” to the
(difficult-to-make-into-a-costume) incorporeal colors
“Cardinal” and “Big Green,” respectively. Today, doz-
ens of other colleges, motivated by fears of angry do-
nors or triggered students, have replaced similar
mascots with equally bland alternatives. See List of
Schools that Changed Native American Nicknames,
USA Today, Sept. 24, 2013, http://usat.ly/2g¢zt5z!.
Whatever one thinks about such changes, they have
been accomplished without a bureaucrat’s deciding
where to draw the line on what's derogatory.
Likewise, brands have voluntarily changed their
names when new circumstances suddenly gave for-
merly innocuous names some entirely new (and un-
wanted) associations. In 1946, an “appetite suppress-
ing candy” was trademarked with a simple and easy
to remember name: Ayds. In the 1970s and early 80s
Ayds was part of a popular dieting plan. (Actual slo-
'S See generally Christopher M. Fairman, Fuck: Word Taboo
and Protecting Our First Amendment Liberties (2009).
21
gans included “With Ayds, I ate less!” and “Why take
diet pills when you can enjoy Ayds?”) By 1986, the
AIDS crisis had given the name and slogan an entire-
ly different meaning, and the candy went through a
quick and completely voluntary—rebranding.'® See
11 Brand Names that Simply Couldn't Survive the
Times, Adweek, March 18, 2015 http://bit.ly/1x0jkRb.
A similar fate more recently befell both Italo Suisse
Chocolates when it decided to rebrand as “Isis Choco-
lates” in 2013, id., and the likewise poorly timed “Isis
Wallet.” They soon became “Libeert” and “Softcard,”
respectively. See Don Reisinger, /sis Wallet Becomes
Softcard to Avoid Confusion with Militant Group,
CNET, Sept. 3, 2014, http://enet.co/2gzkfSf.
Then there is the highly acclaimed post-metal
band ISIS, now disbanded, who may have run afoul! of
the disparagement clause had they started their band
in 2016 rather than 1997. If the band were still to-
gether today, market forces might push them to con-
sider a name change, just as the band formerly
known as Viet Cong, now known as Preoccupations,
did in 2016. Jeremy Gordon, The Band Formerly
Known as Viet Cong Announce New Name, Pitch-
fork.com, (April 21, 2016), http://bit.ly/lrp03b8. Un-
der the name Viet Cong, they elicited controversy and
at least one cancelled show. /d. In the press release
announcing the name change, the band “apologize[{d]
to those who were adversely affected by our former
band name.” “Ihis was never anticipated nor our in-
tent[,!” they wrote, “We are artists and not politi-
cians, we understand that the name reflected pain to
'6 The candy became “Aydslim” in Britain and “Diet Ayds” in
the United States, before eventually being phased out.
22
some individuals and we are happy to change it and
move on and focus on our music.” /d.
History thus shows that if the government steps
aside, we will have the best of both worlds: Those
brands that wish to make money and fear alienating
customers (which is most of them) wil! police them-
selves. And those brands and artists that wish to be
bolder and make an artistic point that is more con-
troversial, like The Slants, will remain free to do so.
Ill. THE DISPARAGEMENT CLAUSE
VIOLATES THE FIRST AMENDMENT
A. The Disparagement Clause Is a View-
point-Based Unconstitutional Condition
“Disparaging” words of the type singled out by the
PTO have played a valuable role in personal expres-
sion and social debate. But the burden is not on those
like Simon Tam to show his expression’s value. It suf-
fices to say that any mark which can be interpreted
as disparaging is clearly expression, and that the gov-
ernment is disadvantaging those who identify them-
selves with such expression. This fact alone is enough
to invalidate the disparagement clause under the un-
constitutional-conditions doctrine.
This Court has made it clear that the government
“may not deny a benefit to a person on a basis that
infringes his constitutionally protected interests—
especially, his interest in freedom of speech.” Perry v.
Sindermann, 108 U.S. 593, 597 (1972). The dispar-
agement clause does precisely that. As the Federal
Circuit correctly noted, “the disparagement provision
at issue is viewpoint discriminatory on its face. The
PTO rejects marks under § 2(a) when it finds the
marks refer to a group in a negative way, but it per-
23
mits the registration of marks that refer to a group in
a positive, non-disparaging manner.” Pet. App. 21a.
The government halfheartedly attempts to hedge
on whether it is punishing expression by generalizing
trademarks as “source identifiers in commerce that
are not inherently expressive.” Pet. Brief 47. But such
a generalization, even if true, is irrelevant to the con-
stitutional issue. Whenever the disparagement clause
comes into play, the particular trademark at issue
must have an expressive content. It is its expressive
content—a perceived disparaging sentiment—that
leads to the mark being denied registration.'’
B. A Trademark Is Neither a Subsidy Nor an
Endorsement
To rescue the disparagement clause, the govern-
ment argues that trademark registration is a discre-
tionary “government program.” The government
claims that the unconstitutional-conditions doctrine
does not apply because when it rejects a trademark, it
“is not restricting speech, but instead declining to
provide government assistance.” Pet. Brief 19. Yet
each of the cases cited by the government to support
‘7 In dissent, Judge Reyna offers another strange argument,
that marks must not have expressive content because, if they
did, trademark law itself would violate the free-speech rights of
nonholders of a mark. “[I|f the expressive content of the mark
precludes regulation, on what authority may the government
grant Mr. Tam the exclusive right to use this mark in com-
merce?” Pet. App. 112a—113a (Reyna, J., dissenting). This is like
arguing that books must not have any expressive content, be-
cause otherwise copyright law would violate the speech rights of
those who wish to print someone else’s book. Imagine Judge
Reyna asking with perplexity “If Harry Potter and the Deathly
Hallows is expressive speech, on what authority may the gov-
ernment grant J.K. Rowling the exclusive right to print it?”
24
this proposition dealt with “government programs”
that fell into categories much different from the basic
protection of trademark registration.
1. Choosing which artists and speakers to
fund with limited resources is different
than trademark registration.
First, the government cites several cases that spe-
cifically concerned monetary subsidies. See Pet. Brief
15-17 (citing Regan v. Taxation With Representation
of Wash., 461 U.S. 540 (1983); Rust v. Sullivan, 500
U.S. 173 (1991); National Endowment for the Arts v.
Finley, 524 U.S. 569 (1998); United States v. Ameri-
can Library Ass’n, 539 U.S. 194 (2003)). These cases
are of no help to the government. Turning down some
requests for money is a necessary “consequence of the
nature of arts funding.” Finley, 524 U.S. at 585. The
government does not have unlimited funds and there-
fore unavoidably must make distinctions among art-
ists and speakers it chooses to subsidize. But such a
justification plainly does not apply to the granting of
a trademark, since “trademark registration is user-
funded, not taxpayer-funded,” and “the government
spends far more significant funds defending its re-
fusal decisions under the statute.” Pet. App. 64a.
2. Spending other people’s money on po-
litical activity is unlike trademark reg-
istration.
Since the subsidy cases are of no help, the gov-
ernment cites two additional cases to claim that the
“government assistance” exception is not limited to
subsides: Davenport v. Wash. Educ. Ass'n, 551 U.S.
177 (2007) and Ysursa v. Pocatello Educ. Ass'n, 555
U.S. 353 (2009). See Pet. Brief 41. Yet both Davenport
25
and Ysursa also differ from this case in a crucial re-
spect: both concerned “a condition placed upon [a] un-
ion’s extraordinary state entitlement to acquire and
spend other people's money.” Davenport, 551 U.S. at
187 (emphasis original). That is, both cases involved
a restriction on a union’s spending “agency shop” fees
taken from union nonmembers (specifically, a ban on
spending such money on certain types of political lob-
bying). Davenport and Ysursa thus both represent
highly unusual situations where First Amendment
concerns were implicated on both sides of the conflict;
the “government benefit” itself “also impinge[d] upon
the First Amendment rights of [the union’s] non-
members by forcing them to support the speech of the
union.” Erik S. Jaffe, When Easy Cases Make Bad
Law, 2006-2007 Cato Sup. Ct. Rev. 115, 116 (2007).
Further, unlike in Davenport and Ysursa, the dis-
paragement clause discriminates on the basis of
viewpoint, not just content. The regulation in Daven-
port was “a reasonable, viewpoint-neutral limitation
on the State’s general authorization allowing public-
sector unions to acquire and spend the money of gov-
ernment employees.” Davenport, 551 U.S. at 189
(emphasis added). The disparagement clause here, by
contrast, is clearly not viewpoint-neutral.
3. Trademarks are not endorsements.
The government has one more argument: that
even if a federally registered trademark is not a gov-
ernment subsidy, it is a government endorsement.
The government argues that registration would be
perceived as an endorsement because it “would cause
the mark to be published on the Principal Register;
would cause a certificate for the mark to be issued ‘in
the name of the United States’ (which may be trans-
26
mitted to foreign countries); and would entitle re-
spondent to use the ® symbol to convey to the public
that the mark has an official status.” Pet. Brief 39. To
support this “endorsement exception,” the govern-
ment primarily relies on Walker v. Texas Div., Sons of
Confederate Veterans, Inc., 135 S. Ct. 2239 (2015).
In Walker, some of the present amici believed it
was hard to characterize every specialty license plate
printed by the state of Texas as an endorsement, giv-
en that many gave contradictory and opposing mes-
sages (for example, the state apparently endorsed
both the Oklahoma Sooners and the Texas Long-
horns). While the Court disagreed, here the govern-
ment’s case for an endorsement is notably weaker
even than in Walker. Perhaps both sides of a fight can
be “endorsed” when the government thinks both sides
are valiant and honorable. But even with this low
bar, the trademarks that the PTO has registered al-
most certainly do not meet it. It is hard to believe
that the position of the federal government is that
every trademark it has ever registered is to be re-
spected—considering that this includes such hal-
lowed brands as “Capitalism Sucks Donkey Balls”
and “Take Yo Panties Off.” See Pet. App. 43a.
Further, even though some of the amici here
didn’t think that printing a symbol on a license plate
looked like much of a government endorsement, this
case presents even fewer of the potential trappings of
endorsement. Authorized trademarks are not proudly
displayed on publicly visible moving vehicles next to
the seal of the United States; they are noted in the
online Trademark Official Gazette and then filed
27
away in a register where only some (unlucky) lawyers
will ever want to go looking for them.'8
4. The government is incoherent because
it edmits that it uses resources to pro-
tect both registered and unregistered
trademarks.
Finally, the government’s position—‘“Holders of
unregistered marks can also invoke the Lanham Act’s
federal cause of action to protect their marks against
misappropriation and consumer confusion.” Pet. Brief
20.418 incoherent. There is no principled reason why
expending the resources and authority of the federal
judiciary to protect an unregistered trademark consti-
tutes neither a subsidy nor endorsement of that
mark, but expending those same resources to protect
a registered trademark constitutes both. Registration
under the Lanham Act indeed provides significantly
more benefits than common-law trademark rights
(which is why The Slants and others in their position
have been significantly harmed), but the government
will be entangled with “disparaging” trademarks no
matter what, unless it goes so far as to abrogate even
the common-law rights of marks it dislikes.
‘8 The government should be careful if it truly believes that
printing a disparaging message on any official publication will
forevermore be seen as an imprimatur of endorsement for the
respectability of the message conveyed—and that this justifies
cleansing such publications of all disparaging sentiments. If so,
this Court can only hope, for the sake of its own posterity, that
the same principle is not eventually extended to another official
publication of the federal government that has printed more
than a few disparaging sentiments throughout its history: the
United States Reports. See, e.g., Vred Scott v. Sandford, 60 U.S.
393 (1856); Bradwell v. Illinois, 83 U.S. 130 (1872); Plessy v.
Ferguson, 163 U.S. 537 (1896); Buck v. Bell, 274 U.S. 200 (1927).
28
In the end, there is no justification for departing
from the basis for the unconstitutional-conditions
doctrine, one that should be decisive here: “[I|f the
government could deny a benefit to a person because
of his constitutionally protected speech or associa-
tions, his exercise of those freedoms would in effect be
penalized and inhibited.” Perry, 408 U.S. at 597.
C. Expanding the “Government Assistance”
Exception Risks Swallowing the Rule
An artist can survive losing an NEA grant; such
funding does not give the government the means to
suppress speech. But in most cases, a creator cannot
survive being deprived of all potential profits from
his work. This has been recognized since the time of
the Framers, who tasked the new government with
“securing for limited Times to Authors and Inventors
the exclusive Right to their respective Writings and
Discoveries” to ensure that such expression is created
in the first place. U.S. Const. art. I, § 8, cl. 8.
For the same reason, this Court has recognized
that the government cannot deny a normal ownership
right in one’s own written work. See Simon & Schus-
ter, Inc. v. Members of the N.Y. State Crime Victims
Board, 502 U.S. 105 (1991). In Simon & Schuster, the
Court struck down a state law that “require[d] that
an accused or convicted criminal’s income from works
describing his crime be deposited in an escrow ac-
count” and distributed to a crime victims’ fund. /d. at
108. The Court noted the longstanding rule that “[a]
statute is presumptively inconsistent with the First
Amendment if it imposes a financial burden on
speakers because of the content of their speech.” /d.
at 115 (citing Leathers v. Medlock, 499 U.S. 439, 447
(1991)). As the Court held, forbidding authors to prof-
29
it from books describing their own crimes “plainly
imposes a financial disincentive only on speech of a
particular content.” /d. at 116.
The government makes much of the fact that Tam
is not banned from uttering the phrase “The Slants”
or describing his band by that name. But neither, in
Simon & Schuster, were authors banned from writing
books describing their crimes. By requiring that the
profits from such books be forfeited to the state, how-
ever, the government removed any financial incentive
to author such books.
This Court’s precedent in Simon & Schuster is
largely determinative of this case. Removing normal
trademark protections is like removing the ability to
own the rights to one’s book, or to patent an inven-
tion. The purpose of trademark law is “to protect per-
sons engaged in |interstate] commerce against unfair
competition.” 15 U.S.C. § 1127. If a potential competi
tor can copy and use a mark, it is more likely that the
mark will not be used at all—just as if everyone can
copy and sell a book, it is more likely that the book
will not be written at all. The disparagement clause
thus removes much of the economic incentive a busi-
ness or artist would have to choose “disparaging”
marks as a means of identifying themselves. And
such self-identification, especially when it involves a
derogatory term often applied to oneself, is undenia-
bly a form of expression unique and separate from
simply using the term in some other context.
If trademark protection is simply “government as-
sistance” that can be withheld on the basis of speech
content, it is hard to see what basic economic and
property protections would not qualify as discretion-
ary “government assistance.” Indeed, under the gov-
30
ernment’s own proposed rule, any service that Con.
gress or a local legislature is “not obligated to pro-
vide”—which is literally the case for every service!*—
could be selectively withheld on the basis of speech.
Consider the case of the theft of a valuable early
edition of Mein Kampf. See Rare Edition of ‘Mein
Kampf’ Stolen, UPI, Sept. 23, 1991,
http://bit.ly/2g5PCHS. Could the police have declined
to provide their discretionary “theft investigation
governmental assistance” in such a case, on the basis
of a disagreement with the content of the work sto-
len? (“A museum may choose to display Nazi ideas,
but they may not rely on the government to aid them
against overzealous souvenir-hunters.”)
Or consider this Court’s decision in Natl Socialist
Party of America v. Village of Skokie, 482 U.S. 43
(1977). Could the government grant a permit for a
public protest but then selectively withhold the “gov-
ernment assistance” of crowd control or traffic diver-
sion on the basis of the protest’s message?
If trademark registration may be withheld based
on viewpoint, what government protections could not?
D. The Government May Not Discourage
Speech to Protect People from Being
“Bombarded” with Opposing Views
The government admits that “the essential func
tion of trademarks is to identify goods and services as
emanating from a particular commercial source.” Pet.
Brief 48. It is hard to understand how the dispar-
agement clause furthers a legitimate PTO goal, then,
' Actual, non-Biden sense of the word “literally.” See, e.z.,
Alexandra Petri, Literally, Joe Biden, Wash. Post, Sept. 7, 2012,
http://wapo.st/2hpA521.
31
since “it cannot be contended seriously that scandal-
ous, immoral, and disparaging trademarks fail to
promote the well-known purposes underlying trade-
mark law. ... the protection of the public from decep-
tion and the protection of the trademark owner from
misappropriation.” Baird, supra, at 673 & n.40.
Nonetheless, the government argues that it “has a
legitimate interest in encouraging the use of non-
disparaging marks in interstate commerce, rather
than allowing that program to be used to increase the
likelihood that ‘underrepresented groups in our socie-
ty’ will be ‘bombarded with demeaning messages in
commercial advertising.” Pet. Brief 48 (quoting Pet.
App. 81a (Dyk, J., concurring in part, dissenting in
part)).2° Such bombardment, it contends, “tends to
disrupt commercial activity and to undermine the
stability of the marketplace.” Pet. Brief 49 (quoting
Pet. App. 117a—118a (Reyna, J., dissenting)).
“©” This is hard to reconcile with the argument that granting
a trademark actually reduces overall speech by allowing a
trademark holder to prevent others from using a mark. See Brief
of Amici Curiae Law Professors Supporting Petitioners, at 2.
(“Rather than facilitating public debate, a trademark registra-
tion is a government-issued document that makes it easier for
its owner to suppress the speech of others.”) By that logic,
shouldn't the government prefer that only one entity can use
each epithet? Instead, now those who object to “Slants” must not
only fear being “bombarded” by Tam's band, but face the horrifly-
ing prospect of dozens of knock-off Slants tribute bands, able to
simultaneously trample on ‘Tam’'s market share and the dignity
of the Asian-American community with impunity. The answer to
this conundrum is that trademark law, in fact, should not be
used as a cudgel to achieve any specific outcome in the publte
marketplace of ideas; the PTO should simply grant trademarks
on their own merits and let the chips fall where they may.
32
To begin with, this justification is difficult to
square with the backwards-looking focus of the dis-
paragement clause. If the clause’s goal is to prevent
the “disrupting” force of being “bombarded” with dis-
paraging messages in the marketplace, one might as
sume that the meaning of a term today should be the
relevant inquiry. Instead, decision makers focus on
the meaning of a term when a mark was originally
registered, which in some cases can be decades ago.
See, e.g., Pro-Football, Inc. v. Blackhorse, 112 F.
Supp. 3d 439, 472 (K.D. Va. 2015) (attempting to as-
certain whether “redskin” was disparaging in 1967).?!
Such an approach is starkly at odds with the suppos-
edly urgent need to stamp out disparaging messages
being transmitted today, raising serious doubts as to
whether such a goal is really the compelling interest
the government claims.
Rather than promoting an offense-free market-
place, the goal of the trademark system is quite sim-
ple: for people to know what they’re buying. This goal
is aided, not diminished, by allowing artists and
brands to choose (and own) an identity that accurate-
ly characterizes their work.
What if The Slants had chosen a less controversial
name, as the government apparently wishes they
had’? Suppose instead of calling themselves “The
Slants,” the band played it safe and called themselves
“Four Asian-American Men Who Are Very Respectful
of Our Diversity as a Nation.” Someone attending a
show by such a band might well find it more “destabi-
lizing” to only then discover that the band’s songs
contain lyrics referencing the schoolyard taunt “Chi-
*' Couldn't the Redskins controversy be obviated by keeping
the name but replacing the logo with a smiling potato head?
33
nese, Japanese, dirty knees, look at these.” Resp.
Cert. Brief 4.
In other words, brand names are how artists can
encapsulate their tone and their ethos as succinctly
as possible. People who showed up to watch a (now
defunct) band called Anal Cunt knew they were prob-
ably not getting a cover of “Careless Whisper.” People
who show up to watch The Slants know they’re get-
ting a take on Asian-American identity that’s irrever-
ent and sometimes politically incorrect. Rather than
“destabilizing” the market, their brand gives consum-
ers information and prevents confusion, which are
exactly the goals of the federal trademark system.”
Finally, even if the use of such marks does cause
hurt and offense to some, punishing speech to pre-
vent such offense is simply not permissible under the
First Amendment. Suppose that instead of punishing
trademarks, the government had made exactly the
same arguments in favor of punishing certain public
picketers who express disparaging statements (but
not those who express positive statements). Such a
punishment would obviously be unacceptable. “|T|he
Constitution does not permit tne government to de-
cide which types of otherwise protected speech are
sufficiently offensive to require protection for the un-
willing listener or viewer. Rather, the burden normal-
ly falls upon the viewer to avoid further bombard-
“2 Perhaps what the government truly finds “destabilizing”
is not the existence of trademarks like “The Slants,” but the ae-
tual product and message on offer in their performances them-
selves. Of course, the government could not admit this as a goal
of banning disparaging marks and cconomically harming those
artists who would be inclined to use them; even the government
knows that discouraging “disparaging” songs and artwork could
never pass First Amendment scrutiny, right?
34
ment of his sensibilities simply by averting his eyes.”
Snyder v. Phelps, 562 U.S. 443, 159 (2011) (quoting
Erznoznik v. Jacksonville, 422 U.S. 205, 210-211
(1975) (alterations omitted)). This principle is no less
true whether the expression appears on a_ placard,
billboard, or flyer promoting a performance. The First
Amendment does not allow the government to punish
disfavored messages so others will not see them.
CONCLUSION
Amici, and all others who sometimes find them.
selves lumped into a basket of deplorables—-now
that’s a great band name!—urge the Court to let peo-
ple judge for themselves what's derogatory.
Respectfully submitted,
ILYA SHAPIRO
Counsel of Record
THOMAS A. BERRY
Cato Institute
1000 Mass. Ave., N.W.
Washington, D.C. 20001
(202) 842-0200
ishapiro@cato.org
tberry@cato.org
December 16, 2016
1A
APPENDIX: DESCRIPTION OF AMICI
The Cato Institute is a non-partisan public polli-
cy research foundation that was established in 1977
to advance the principles of individual liberty, free
markets, and limited government. Cato’s Center for
Constitutional Studies was founded in 1989 to restore
the principles of constitutional government that are
the foundation of liberty. Toward those ends, Cato
holds conferences and publishes books, studics, and
the annual Cato Supreme Court Review.
P.J. O’Rourke is one of America’s leading politi-
cal satirists, an H.L. Mencken Research Fellow at the
Cato Institute, and an equal-opportunity offender.
Formerly the editor of the National Lampoon, he has
written for such offensive publications as Car and
Driver, Playboy, Esquire, Vanity Fair, House & Gar-
den, The New Republic, The New York Times Book
Review, Parade, Harper's, and Rolling Stone. He is a
contributing editor at The Weekly Standard and a
member of the editorial board of World Affairs.
O’Rourke’s books have been translated into a dozen
languages and three have been New York Times best-
sellers: Parliament of Whores, Give War a Chance,
and All the Trouble in the ‘Vorld. He is also the au-
thor of the forthcoming How the Hell Did This Hap-
pen’: The Election of 2016-in which he disparages
both the ruling class and unwashed masses, yet still
hopes to enforce his intellectual-property rights.
Nadine Strossen hoids the John Marshall Har-
lan Il Chair at New York Law School, was president
of the American Civil Liberties Union from 1991
through 2008, and continues to serve on the ACLU’s
National Advisory Council. She also holds leadership
positions in other organizations that focus on free
2A
speech issues, including the Foundation for Individu-
al Rights in Education. Strossen’s extensive writings
that defend freedom for offensive expression include
her book, Defending Pornography: Free Speech, Sex,
and the Fight for Women’s Rights (Scribner 1995) and
her co-authored book, Speaking of Race, Speaking of
Sex: Hate Speech, Civil Rights, and Civil Liberties
(NYU Press 1994). Her ideas on this and other topics
have many times been deemed sufficiently offensive
to trigger boycotts, dis-invitations, and picketing, as
well as death threats.
Erik Nielson is an associate professor of liberal
arts at the University of Richmond. He has published
widely on African-American music and poetry, with a
particular emphasis on rap. He is co-editor of The Hip
Hop & Obama Reader (2015) and co-author of Rap on
Trial (forthcoming). He writes regularly on race, poli-
tics, and popular culture for national media outlets
such as the New York Times, Washington Post, Atlan-
tic, and Rolling Stone. He has served as an expert
witness or consultant in dozens of criminal cases in-
volving rap music as evidence, and he was the lead
author of two amicus briefs before the Supreme Court
on the history and conventions of rap (Elonis v. Unit-
ed States and Bell v. Itawamba County School
Board). His work often requires him to explain why
rhetoric that sounds “derogatory” actually isn’t—or
why rhetoric that sounds benign is actually quite
nasty. It’s all very complicated, and probably not
something the PTO is going to clear up anytime soon.
Clay Calvert is the Brechner Eminent Scholar in
Mass Communication at the University of Florida. He
also directs the Marion B. Brechner First Amend-
ment Project, in which capacity he has filed many
3A
Supreme Court amicus briefs, in cases such as Elonis
v. United States and Brown v. Entertainment Mer-
chants Association. His scholarship focuses on free-
dom of expression, and he has published multiple
journal articles regarding offensive speech—including
ones featuring interviews with Hustler publisher Lar-
ry Flynt and several porn stars. Because “Clay” is a
four-letter word, he found himself fixated at an early
age by the offensive and profane. Furthermore, be-
cause he was born without a middle name—his par-
ents reportedly were too poor to afford one he has
always been slightly bitter and, in turn, prone to en-
gage in offensive expression himself. Finally, Cal-
vert’s highest academic honor is itself somewhat of-
fensive to the puritanical and prudish: a former stu-
dent at the University of Florida who took his under-
graduate media-law class later adopted his last name
for her stage name in the adult-movie industry,
where she performs today as Casey Calvert.
Ralph Steadman, born in Liverpool in 1936, dis-
covered his love of drawing as a child, when he recalls
visiting the home of a friend whose “mother allowed
him to express himself all over the walls . . . scribble,
scribble, scribble.” Steadman’s award-winning output
over the last 50-plus years has been expressed in
many forms: drawings, paintings, cartoons, collage,
photography, sculptures, sets, and costume designs.
Steadman began collaborating with Hunter S.
Thompson in 1970 when Warren Hinckle III, co-
founder of Scanlan’s Monthly, identified Steadman as
the perfect artist to illustrate Thompson's article on
the Kentucky Derby. Thompson had suggested that
what they needed was “somebody with a really pecu-
liar sense of humor, because this is going to be a very
twisted story. It'll require somebody with a serious
4A
kink in his brain.” The article was hailed by the Bos-
ton Globe as “pure GONZO.” In 2012, Johnny Depp
narrated For No Good Reason, a documentary of
Steadman’s life and work. For Steadman, the freedom
of speech and expression “are as fundamental to our
being as the alphabet itself.” He lives with his wife
Anna in a castle in Kent, England.
Flying Dog Brewery is a craft brewery located
in Frederick, Maryland. Founded in 1990, it is the
largest brewery in Maryland and, as of 2015, the 37th
largest in the country. Flying Dog is known for its
connection to “gonzo journalism” through close ties to
Hunter S. Thompson and Ralph Steadman. Flying
Dog's beer names and artwork have often been inter-
preted as vulgar and insinuating, which has led to
controversies with government agencies. In 1995,
while drawing the first “Road Dog” label, Steadman
splashed “Good Beer, No Shit” across the back. (This
was an indirect reference to an ancient Celtic axiom
that Thompson included in his short essay memorial-
izing the release of Flying Dog’s first beer with
Steadman’s artwork.) The Colorado Liquor Board
removed the bottles from shelves, citing “obscenity,”
but allowed them back five years later. In 2007, Ar-
kansas wouldn’t allow the sale of “In Heat Wheat”
because of both the name and label image. In 2009,
Michigan denied Flying Dog the licensing right to sel!
its 20th Anniversary beer, “Raging Bitch” (a Belgian-
style IPA, now its best seller), finding that the label
was “detrimental to public health, safety and wel-
fare.” After losing before the Sixth Circuit on the is-
sue of qualified and quasi-judicial immunity, Flying
Dog Brewery, LLLP v. Mich. Liquor Control Comm'n,
597 Fed. Appx. 342 (6th Cir. 2015), the state commis-
sion relented. With the damages awarded from that
5A
case, Flying Dog established the lst Amendment So-
ciety, which advocates and educates on the First
Amendment and organizes events that promote the
arts, journalism, and civil liberties.
The Comic Book Legal Defense Fund is a non-
profit organization dedicated to the protection of the
First Amendment rights of the comics art form and
education that creates awareness about those rights.
With a membership that includes comic book retail-
ers, creators, publishers, educators, librarians, and
readers, the CBLDF has defended dozens of First
Amendment cases in courts across the United States,
and led important education initiatives promoting
comics literacy and free expression.
Thomas Jefferson warned that “[t]he natural pro-
gress of things is for liberty to yield, and government
to gain ground.” Letter from Thomas Jefferson to
Edward Carrington (May 27, 1788). Mindful of this
trend, the DKT Liberty Project was founded in
1997 to promote individual liberty against encroach-
ment by all levels of government. This not-for-profit
organization advocates vigilance over regulation of all
kinds, particularly that which constrains First
Amendment rights.
Reason Foundation is a nonpartisan and non-
profit public policy think tank, founded in 1978. Its
mission is to promote free markets, individual liberty,
equality of rights, and the rule of law. Reason ad-
vances its mission by publishing Reason magazine, as
well as commentary on its websites, www.reason.com,
www.reason.org, and www.reason.tv. ‘To further its
commitment to “Free Minds and Free Markets,” Rea-
son participates as amicus curiae in cases raising
significant legal and constitutional issues.
This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.