What the Slants Case Means for the Adult Industry

This article originally ran in the February 2016 issue of AVN magazine. Click here to see the digital edition. The adult entertainment industry is no stranger to legal efforts to suppress speech with no greater justification than someone else’s definition of “morality.” In turn, the industry has always pulled much more than its weight in the fight to protect the First Amendment. Time and again, adult entertainment companies take up the fight to protect our most cherished freedoms. Recently, five proud Asian-American kids took up a very important First Amendment fight, allied with the adult entertainment industry, and in the end, may have given the industry a huge gift. Enter the Slants The Slants are five Asian-American musicians from Portland, Oregon, who pay homage to the ’80s on stage—and homage to their heritage in an ironic way. “We want to take on stereotypes that people have about us, like the slanted eyes, and own them,” said Simon Shiao Tam, the band’s front man. In other words, the group adopted the Lenny Bruce philosophy of repeating an insulting term until it doesn’t mean anything anymore. To the Slants, “slant” isn’t an insult, it is empowering. Unfortunately, a petty bureaucrat at the U.S. Patent and Trademark Office decided that “Slant” was disparaging to Asians, and denied them a trademark registration under the despised (by me, anyhow) Section 2(a) of the trademark act. This is the section that lets the government deny trademark protection to a mark that is “immoral,” “scandalous” or “disparaging.” In this case, the latter. Why should the adult entertainment industry care? Because Section 2(a) is most often enforced against adult entertainment companies. Why? Because petty bureaucrats don’t usually like this industry, and when people like that can hide behind an arbitrary concept like “immorality” to act out their own mental issues, they do. I’m not suggesting that every 2(a) rejection comes about because a trademark examiner has issues with sexual expression. Certainly, some would rather approve the marks, but they have to answer to someone else. However, I have seen others who seem rather pleased with themselves that they get to strike a blow for their particular brand of conservatism or feminism. Conditioning an expressive governmental benefit on one petty bureaucrat’s definition of “morality” is never legitimate. Nevertheless, this prohibition has stood for decades—until now. Enter our heroes: The Slants. They challenged the “disparaging” prohibition and lost, and lost again, but they finally brought their fight to the United States Court of Appeals for the Federal Circuit, where they prevailed.Enter the First Amendment Lawyers’ Association The Federal Circuit determined that the statute’s prohibition on “disparaging” trademarks could not survive a First Amendment challenge. In doing so, the court received assistance from a “friend of the court” brief filed by the First Amendment Lawyers Association (“FALA”), a group of First Amendment lawyers who have, for many years, upheld and defended the rights of adult entertainment companies. FALA’s brief took on the “immoral” and “scandalous” clause. FALA’s brief as amicus curiae had three main arguments. First, it argued that Section 2(a) is an unconstitutional viewpoint-based restriction on speech. Generally, the government cannot restrict speech based on its content without passing an extremely high bar known as “strict scrutiny,” and a regulation that discriminates on the speaker’s viewpoint is even less likely to be constitutional. Because Section 2(a) allows the Trademark Office to refuse a trademark registration based entirely on the content of the mark, FALA argued, it is a content-based restriction. And under the “unconstitutional conditions” doctrine, the government cannot premise a government-granted benefit on the conditions that the beneficiary give up a constitutional right. Section 2(a) is thus a First Amendment violation even though it allows the trademark owner to continue using the mark because the federal government withholds the significant benefits of trademark registration based on the content of speech. Moving on to the government’s possible justifications for Section 2(a), FALA explained that the statute does not serve any substantial government interest. Cases such as Lawrence v. Texas (which struck down an anti-sodomy law) establish that the government does not have a legitimate interest in legislating morality, so the government cannot claim that Section 2(a) is important because it upholds propriety.  Section 2(a) does not free up government time and resources by refusing to protect marks it finds distasteful, either, because litigation over Section 2(a) would wipe out any potential cost savings. The government could also not plausibly argue, as it had sometimes in the past, that granting a trademark registration served as a seal of approval from the government. The general public recognizes that registering a mark is simply a ministerial function, and the trademark office even explicitly disclaims any endorsement of a given trademark. Finally, FALA argued that Section 2(a) is so vague that it cannot be applied with anything resembling consistency or predictability, and is thus unconstitutional. The history of trademark registrations includes several marks that are just as “immoral” or “scandalous” as marks that were denied registration because of Section 2(a). This is the typical “one man’s vulgarity is another man’s lyric” scenario; one trademark examiner might be disgusted by a mark and refuse registration, while another might find the same mark funny and clever and grant registration. It is extremely difficult to tell which marks might be refused registration on Section 2(a) grounds, and so the inevitable effect of the statute is for businesses to choose more “family friendly” marks, thus unconstitutionally depriving the market of more colorful ones. The Decision The Federal Circuit agreed with FALA’s positions. For more than thirty years, every court that previously upheld Section 2(a) relied on In re McGinley—a case that upheld Section 2(a), but did so without any real degree of constitutional analysis. The Tam court finally found that Section 2(a) did not withstand scrutiny. The centerpiece of the decision was the “doctrine of unconstitutional conditions.” Because a company invests a great deal of time and resources in choosing and mark and would not want all that effort to go to waste due to the possibility of an adverse Section 2(a) finding, the court found that the law created a significant “chilling effect” on protected speech, and acted against that speech on a viewpoint-discriminatory basis. The government argued that Section 2(a) was simply a limitation on the federal subsidy of trademark registration, but the court did not find this convincing. Congress and governmental agencies cannot withhold funding or other benefits unrelated to the purpose of a government program based on speech unrelated to the program. The court found that federal registration is a regulatory scheme, not a subsidy, regardless of what the government wants to call it. And the purpose of the federal scheme of trademark registration is to assist consumers in the marketplace by avoiding confusion amongst competitors, not upholding Victorian notions of propriety. While the court only explicitly struck down the “disparaging” portion of Section 2(a) and left the “immoral and scandalous” portion alone, it affirmatively overruled In re McGinley, which was the seminal case for Section 2(a)’s constitutionality. Without the ability to rely on McGinley, and because there is no real distinction between the “immoral and scandalous” and “disparaging” portions of Section 2(a), the former portion of the law will most likely be struck down when it is next challenged in court. The Trademark Office itself recently acknowledged this reality. In a letter brief in the pending case of In re Brunetti, regarding the “immoral and scandalous” portion of Section 2(a), the Office admitted that it does “not believe, given the breadth of the Court’s Tam decision and in view of the totality of the Court’s reasoning there, that there is any longer a reasonable basis in this court’s law for treating them differently.” The Trademark Office is now on record as saying it does “not believe that Section 2(a)’s prohibition on registration of scandalous and immoral marks can withstand challenge under the current law of this Circuit.” Conclusion What does this mean for the adult entertainment industry? All of those “immoral” trademarks that the industry has been unable to register are now registrable. Adult entertainment companies that have names that couldn’t get past the examiners in the past, should now find the wind blowing in their direction. Why does this matter?  Trademark registrations are important, if you want to run your business properly. They protect your mark in the marketplace, they allow for enforcement of important rights at the border, and in court, and they create a raft of important legal presumptions. Even if you don’t intend to litigate, trademarks are valuable assets that are factored in to the value of your company. From a constitutional perspective, any decision that strengthens the First Amendment strengthens the adult industry. The industry is, for the most part, an intellectual property industry. And, it wasn’t just trademark rights that could be threatened by regulations enacted to enforce notions of “morality.” Over the past few years, some law professors have even suggested that the copyright laws should be amended to preclude porn companies from enjoying copyright protection. This notion is largely dead due to the Tam decision.  Therefore, the adult entertainment industry is stronger and freer because of five Asian guys from Portland. The Slants should be this industry’s new favorite band. Marc J. Randazza is a Las Vegas-based First Amendment lawyer who frequently writes on First Amendment and intellectual property issues. His LL.M thesis on “Freedom of Expression and Morality-Based Impediments to the Enforcement of Intellectual Property Rights” expands on this article. Download at Papers.ssrn.com/sol3/papers.cfm?abstract_id=2716892.