Government Regulation of Hate Speech After Matal v. Tam

(126 Ratings)

Produced on: October 25, 2017

Course Format On Demand Audio

Taught by

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Course Description

Time 64 minutes
Difficulty Beginner

It is not often that an appeal from the refusal of the PTO to allow registration of trademark captures national attention, but the recent Supreme Court case decided under the name Matal v. Tam, involving registration of the trademark ‘THE SLANTS’ for an Asian-American rock band, did just that. The case, which raised the question of whether the First Amendment permits the government to refuse registration of “disparaging” trademarks, garnered extra attention because of the roughly parallel course of an appeal by the Washington Redskins, who were appealing the cancellation of their REDSKINS trademark registration by the PTO on the ground that it was disparaging to Native Americans.

In June 2017, the Supreme Court held that the disparagement bar of Section 2(a) of the Lanham Act constituted unconstitutional viewpoint discrimination under the free speech clause of the First Amendment, affirming a December 2015 ruling by U.S. Court of Appeals for the Federal Circuit. The Court, like the court of appeals before it, rejected the PTO’s argument that trademark registration is either “government speech,” an “endorsement” of a trademark’s message or otherwise subject to regulation as a government-sponsored “program.” As a result, the PTO published THE SLANTS for opposition at the end of July and the REDSKINS mark was saved from cancellation. Meanwhile a backlog of other previously unregistrable marks are being processed by the PTO.

The unanimous decision in Matal v. Tam is widely seen as a statement by the court, across the ideological spectrum, of the role of government in regulating offensive or “hate speech.” This program, taught by Archer & Greiner Partners John C. Connell and Ronald D. Coleman, will discuss the constitutional issues addressed by the court, the questions it pointedly left on the table and the possible implications for other parts of the Lanham Act, as well other statutes.


Learning Objectives:

  1. Review the background of Matal v. Tam and the Redskins case, including the PTO’s previous decisions on disparaging trademarks
  2. Discuss the First Amendment analysis behind the Supreme Court decision
  3. Consider how this will impact future challenges to government regulation of offensive speech, both in and out of the Intellectual Property context



Faculty

Ronald Coleman

Mandelbaum Salsburg P.C.

Ron Coleman has shaped the law relating to the use and abuse of intellectual property as a tool of competition. A leader in social media for lawyers, his blog about copyright, trademark and free speech, LIKELIHOOD OF CONFUSION®, has since its inception in 2005 become one of the most influential publications in IP law.

Recent representations include:

  • Vindicating the rights of review websites threatened with IP infringement claims to intimidate them into removing legally protected information or commentary
  • Coordinating the investigation of and legal response to fraudulent websites impersonating the website of a commercial client
  • Defending a national figure against IP claims arising out of her brief use of a famous photograph on Facebook
  • Leading the appellate effort to overturn the PTO’s refusal to register trademarks that the PTO finds “may disparage” ethnic or racial constituencies. Ron has represented clients of every size in state and federal courts, bench and jury trials, the TTAB and in arbitrations and mediations throughout the country

Author of the first article on Internet law in the ABA Journal (1995), Ron was co-author of the chapter on “Responses to Complaints” in Business and Commercial Litigation in the Federal Courts (ABA / West Group 1998). More recently, his chapter on the interplay of rights of publicity and trademark was included in In the Arena: A Sports Law Handbook.  Other publications include the Computer and Internet Law Journal, the NYSBA Journal and the NJ Law Journal. Ron has been a featured speaker and panelist at a host of legal and industry conferences around the United States.

Ron has represented clients of every size in state and federal courts, bench and jury trials, the TTAB and in arbitrations and mediations throughout the country. He has also been retained as an expert on trademark law and practice in professional liability litigation. A graduate of Princeton University, he received his JD from Northwestern University School of Law.

John C. Connell

Archer & Greiner, PC

Mr. Connell practices civil litigation as first-chair trial attorney in jury and bench trials and appeals in State and federal courts. Mr. Connell’s clients range from Fortune 100 companies to individuals in an array of complex commercial, employment, civil rights, communications law, health care and intellectual property matters. Mr. Connell’s work has resulted in precedential reported opinions on issues of constitutional jurisprudence, as well as statutory and common law.

In January 2017, Mr. Connell appeared as counsel of record to argue before the Supreme Court of the United States, representing Simon Shiao Tam in Matal v. Tam, No. 15-1293. Mr. Connell was the primary author of the winning Tam brief argued before the Federal Circuit Court. As respondent, he defended the ruling of the Federal Circuit Court of Appeals, In re Simon Shiao Tam, 808 F.3d 1321 (Fed. Cir. 2015), arguing that the United States Patent and Trademark Office’s denial of Mr. Tam’s trademark, “The Slants,” under the disparagement clause of §2(a) of the Lanham Act was unconstitutional for violating the First Amendment. This appeal was considered by many as one of the most important matters before the Court this term, as well as one of the most significant First Amendment cases in many years.

On June 19, 2017, the Supreme Court handed down a unanimous 8-0 favorable decision in the high-profile case. The Court ruled that the Asian-American rock band, The Slants, were subject to viewpoint discrimination by virtue of the USPTO’s denial of registration. Under the ruling, the landmark decision will likely put an end to the statutory bar that precluded an applicant from obtaining registration of a trademark that was deemed offensive by the government, including the case involving the Washington Redskins football team currently on appeal before the United States Court of Appeals for the Fourth Circuit.

A report of Mr. Connell’s argument may be found at SCOTUSblog Case Updates: here.

As Chair of the firm’s Media and Communications Law Group, Mr. Connell has represented local, regional and national companies in a broad variety of communications law issues, including national, regional, and local newspaper companies in New Jersey, Pennsylvania, and Delaware, national and local wire services, national television companies and local affiliates, regional and local cable stations, radio stations, a regional professional association, as well as local commercial companies, government officials, politicians, and private individuals. Among other things, Mr. Connell’s work has resulted in precedential reported opinions on First Amendment jurisprudence, as well as public records and access issues. Mr. Connell has also testified at hearings of the New Jersey State Legislature and provided legal counsel on legislative issues concerning the adoption of New Jersey’s Open Public Records Act, and lectured and written on these issues. He has also been retained as an expert consultant in communications law by Lloyds of London.

Mr. Connell also serves as Chair of the firm’s Appellate Advocacy Group. In this regard, Archer is one of the first New Jersey-based law firms to have a dedicated appellate group, handling both federal and State appeals. Mr. Connell has represented clients before these courts:

  • Supreme Court of the United States
  • United States Court of Appeals for the Third and Federal Circuits
  • New Jersey Supreme and Superior Courts, Appellate Division
  • Pennsylvania Supreme and Superior Courts

In doing so, he has subject matter expertise in numerous areas of legal practice.

Mr. Connell is Co-Chair of the firm’s Civil Rights Defense Group and member of the firm’s Employment Law Group. Since 1987, Mr. Connell more than 25 years of experience representing the Office of the Attorney General of New Jersey as Special Counsel to the New Jersey State Police and other State and county agencies, including the Department of Banking and Insurance and numerous County Prosecutor Offices. In this role, he has provided defense representation in various matters involving claims of employment discrimination and civil rights violations under federal and state laws, and other tort matters. Mr. Connell was commended by the New Jersey State Police for his work defending the agency in a civil suit related to the fatal shooting of a suspect. Mr. Connell’s civil rights and employment practice also includes representation of management of Fortune 100 corporations to privately held companies in litigation matters involving the full range of employment issues, including age, gender and race discrimination, hostile work environment, sexual harassment, employment-at-will, wrongful discharge, privacy/confidentiality, whistle-blower, workplace and employment defamation and speech, §1983, and ERISA.

Further, as a member of the firm’s Business Litigation Group, Mr. Connell’s experience includes litigation and counseling in a variety of complex commercial matters such as real estate actions, corporate dissolution suits, shareholder derivative actions, insurance coverage disputes, construction law, and general contract and tort issues.

Additionally, Mr. Connell works in conjunction with our Intellectual Property Group as trial counsel in litigated matters. He has experience in litigation in the fields of patent infringement, unfair competition, false advertising, copyright, and trademark actions.

Finally, Mr. Connell is a member of the firm’s Healthcare Law Group, in which he has represented hospital interests in a range of commercial, regulatory and patient care matters.

Since 2008, Mr. Connell has been an appointed member of the New Jersey Supreme Court Rules of Evidence Committee. He is also the former chair of the New Jersey Supreme Court IOLTA Board of Trustees, and a member of the editorial boards of the New Jersey Law Journal and the New Jersey Lawyer Magazine.

Mr. Connell holds degrees from Columbia University (A.B., 1978), New York University (M.P.A., 1982), and Rutgers University Law School (J.D., 1986). He was the Law Secretary to Hon. Thomas F. Shebell, Jr., P.J.A.D., Superior Court of New Jersey, Appellate Division, from 1986-1987.

Reviews

JH
Jalissa H.

The presenters did a fantastic job illuminating the case and direct legal issues, as well as the providing worthwhile glimpses into their preparation process for the SCOTUS arguments. Thank you!

SK
Stewart K.

Thank you!

SM
Susan M.

Excellent that you got THE folks who litigated this issue. This is the best CLE course I've taken in a while.

KG
Kathleen G.

Excellent presentation, especially John Connell.

KD
Kamaria Yaminah D.

Mr. Coleman should do more CLEs, great speaker and keeps the listener engaged which is hard when you're attorney listening to a new topic. OUTSTANDING SPEAKER!

LD
Lynn D.

Fascinating! Love the sharing of the first person experiences.

EB
Earl B.

This is how ALL CLE should be conducted... the greatest!

CR
Chris R.

Fascinating and first-hand.

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$ 59 Constitutional Law, Intellectual Property Law, Trademark Law, and Public Interest Law In Stock

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