In Case Involving The Name of a Band, The U.S. Supreme Court Rules Disparagement Clause of Lanham Act Unconstitutional

Matal v. Tam, No. 15-1293 (U.S. June 19, 2017)

The United States Supreme Court ruled that the disparagement clause of the Lanham Act was unconstitutional under the Free Speech Clause of the First Amendment.  The disparagement clause of the Lanham Act, Section 2(a), prohibited the registration of trademarks that my, “disparage ... or bring ... into contemp[t] or disrepute” any “persons, living or dead.” 15 U.S.C. §1051(a).

An Asian-American rock band, “The Slants,” were refused registration of their band name based on a 2(a) rejection that “the slants” is a derogatory term for Asians. The Supreme Court held that the disparagement clause was not narrowly drawn enough to prevent trademarks that support discrimination. The court stated that the clause, “reaches any trademark that disparages any person, group, or institution. It applies to trademarks like the following: ‘Down with racists,’ ‘Down with sexists,’ ‘Down with homophobes.’ It is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.”

1st Amend. Protects Kanye's Film Name from Trademark Claims

Medina v. Dash Films et al., No. 15-2551 (S.D.N.Y. July 14, 2016).

In a trademark infringement action against Kanye West and related parties over use of the title "LOISAIDAS" for various films, the Court dismissed (under Rule 12(b)(6)) the complaint of the owner of the trademark LOISAIDAS for rap-names based on the First Amendment right to artistic expression.  Because the term at issue is the title of an artistic work, the Court first asks whether the title has any artistic relevance to the work whatsoever and then, if it does, whether the application of the relevant factors indicates a particularly compelling likelihood of confusion that renders the title explicitly misleading. 

The title “Loisaidas” clearly has artistic relevance to a series of short films about drug dealers seeking to acquire control of the drug trade in Manhattan’s Lower East Side. As noted in the attachments to plaintiff’s complaint, “Loisaidas …. is the Spanish slang term for ‘lower east siders.’” (SAC Exh. B.) The characters repeatedly refer to people and places “downtown in Loisaidas” (Ep. 3, 2:30), and scenes are identifiably set in the Lower East Side (see, e.g., Ep. 2, 0:59 (character bikes past Katz’s Deli)). The copyrighted term was “not arbitrarily chosen just to exploit the publicity value of [plaintiff’s music duo] but instead ha[s] genuine relevance to the film’s story.” Rogers, 875 F.2d at 1001. 

Next, the Court found that the title was not explicitly misleading.  The term was not a source denoter.  In conclusion:

Consideration of plaintiff’s complaint and the expressive work that prompted it permits only one conclusion: that the work is a film, and that its title is artistically relevant to its content and not explicitly misleading as to any association with plaintiff’s music duo. Given the First Amendment values at interest, the Lanham Act and its state law counterparts have been and must be construed not to reach such expression. 

Barring Foreign FM Broadcasts in Europe

Sabrina Tavernise, "Azerbaijan Bars Foreigners From Use of Its FM Band", 1/6/09 New York Times (World).

Azerbaijan has begun to enforce a law that bans foreign companies from broadcasting on national frequencies, effectively closing its airwaves non-domestic radio broadcasters. Foreign companies are still permitted to broadcast on shortwaves, satellite and cable. “They can broadcast any way they like, except for on our national FM frequency,” said an official in Azerbaijan’s presidential administration.

Judge Stein Promises Quick Ruling in 'Imagine' Case

From the tipster wire:

"A judge has promised a fast decision in a lawsuit brought by Yoko Ono to get the song "Imagine'' taken out of a movie challenging the concept of Darwinian evolution after a lawyer for the film's distributors warned the litigation could wreck the movie's political message."

[Article.]

Would an injunction "muzzle" the film producer's free speech? They argue that the film is asking if John Lennon was right, and concludes he was wrong. "Why would you ask somebody for permission to criticize their work?'' their attorney asked. "It's not likely it's going to be granted.''

Lennon's attorney responded: "fair use is not about destroying the other person's market. It's about carving very, very limited exceptions to a copyright proprietor's monopoly.''

So, readers - is it FAIR USE?

Notably, Judge Stein only required plaintiffs post a $20,000 bond to cover any losses suffered by the film's producers as a result of an injunction. What standard to judges apply to determine potential damages resulting from a wrongful preliminary injunction in setting the bond?

Let My People Go

Can you imagine a music group being BANNED by a nation, out of fear that they would corrupt young fans? A tipster sent this link, reporting that Israel has lifted its ban on the most corrupt band in music history: The Beatles?!

...of course, similar debates continue today. Is graphic violence and sexual content in video games contributing to "the corruption of youths"? The music industry is not immune from such manic fear; anyone purchasing an album with a "Tipper Sticker" (i.e., parental advisory label) should know that this nation, the bastion of free speech, has had its own scares of censorship.