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Professor Shubha Ghosh to Participate in Panel Discussion on Lee v. Tam, Trademark Law and the First Amendment

Posted on Friday 4/21/2017
Shubha Ghosh

Shubha Ghosh, Crandall Melvin Professor of Law and Director of the Technology Commercialization Law Program, will participate in a panel discussion on Lee v. Tam at the University at Buffalo School of Law on Wednesday, April 26. The panel, “Disparaging Trademarks and One Rock Band’s Road to the Supreme Court” is presented by the University at Buffalo School of Law’s Buffalo Intellectual Property Law Journal.

After hearing oral arguments on January 18, the Supreme Court is on course to decide a pivotal case concerning trademark law and the First Amendment: Lee v. Tam. The Asian-American rock band, The Slants, filed a trademark application for their band name, “The Slants,” with the United States Patent and Trademark Office. The USPTO initially refused to register the proposed mark, deeming it offensive to Asian-Americans in violation of a federal prohibition barring the registration of disparaging marks.   

The Slants’ founder, Simon Tam, appealed the decision, asserting that he did not violate the prohibition because he was reclaiming an offensive term on behalf of the very group historically disparaged by that term. Tam also argued that the prohibition on disparaging marks violates the First Amendment. A 2015 decision in the Federal Circuit found in Tam’s favor, stating that “the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others.” The government petitioned for Supreme Court review, which was granted. 

Among the many issues at stake in Lee v. Tam is whether the disparagement prohibition is unconstitutionally vague, whether the federal trademark registration program is “government speech,” and whether there is any legitimate purpose behind the registration program beyond preventing consumer confusion. The outcome of this case could impact another high-profile dispute over trademark registration: the litigation over the name of the NFL's Washington Redskins. Particularly relevant to the case are recent Supreme Court cases involving specialized license plates bearing the Confederate flag, street signs advertising church and other events, and a recent Supreme Court decision finding that prohibitions on credit card surcharges possibly violate the First Amendment. The last decision is reviewing a New York statute. 

Commentators, like Professor Tara Helfman, make strong arguments that the prohibition against registering offensive trademarks violate the First Amendment. Professor Ghosh will make the case that the Federal Circuit ruling, based on First Amendment prohibitions against content-based and viewpoint-based statutes, went too far in its reasoning, which potentially undermines many other provisions of federal trademark law.  Professor Ghosh will argue that the Supreme Court should either find a narrower basis to affirm the court of appeals or reverse.

Joining Professor Ghosh on the panel will be Simon Tam, lead singer of “The Slants”; Anne Downey, Partner, Hodgson Russ LLP; and Christine Haight Farley, Professor of Law at American University Washington College of Law.

Pre-registration is required for CLE credit. For more information and to register, click here.