33rd Annual ABA Intellectual Property Law Conference, April 18-20, 2018

33rd Annual ABA Intellectual Property Law Conference, Arlington, Virginia

[Kip Currier: 1st full day of this year's American Bar Association Intellectual Property Law Conference. Lots of intriguing sessions to choose from...case in point, the 10:15 AM slot has two concurrent ones I want to attend--Trademark/Ethics: Ethical Issues in Emerging Technology and Copyright: Copyright Law and Policy Developments.

I'm also attending the Mark T. Banner luncheon today, featuring Simon Tam of the band The Slants and his legal team, who last year won a major federal trademark law case, Matal v. Tam (previously Lee v. Tam), involving so-called disparaging trademarks. The case presented potentially significant implications for free speech and economic interests. Tam and his band spoke as part of a very thought-provoking panel at Duquesne University last April, before the U.S. Supreme Court had announced its decision in June 2017. The Slants prevailed, in a unanimous decision.

I talked with Tam after the April 2017 panel about the case and he insisted on having his bandmates sign the band's poster I'd purchased.

It will be interesting to hear thoughts from the various parties a year later, regarding post-Matal v. Tam implications...]


Thursday, April 19

7:00 am – 5:00 pm	Registration • Print Café • Sponsors
7:15 am – 8:30 am	Conference Connections New Members • First-Time Attendees • Young Lawyers
8:30 am – 10:00 am	Patent: Impact of Heartland on District Court Litigation
8:30 am – 10:00 am	Trademark: From the Practitioners' Perspectives: Managing Discovery in Trademark Cases: TTAB vs. Federal Court
8:30 am – 10:00 am	Copyright/Social Media: #Ad Disclosures
10:15 am – 11:45 am	Patent: Ask the Office: Hot Topics with the USPTO Commissioner for Patents
10:15 am – 11:45 am	Trademark/Ethics: Ethical Issues in Emerging Technology
10:15 am – 11:45 am	Copyright: Copyright Law and Policy Developments
12:00 pm – 1:30 pm	Mark T. Banner Award Luncheon Honoring Simon Tam and his legal team during a special presentation.
1:45 pm – 3:15 pm	Patent: Coming Together: Worlds Apart
1:45 pm – 3:15 pm	Trademark: Proving a Negative: Best Practices for Prosecuting and Defending Non-Use Abandonment Proceedings in the US & Abroad
1:45 pm – 3:15 pm	Copyright: The Right of Publicity
3:30 pm – 5:00 pm	Specialty: Growing Your Start-Up IP Practice
3:30 pm – 5:00 pm	Trademark/Copyright: Fictional Characters in 3D
3:30 pm – 5:00 pm	Specialty/Ethics: Multijurisdictional Practice and the Modern Ethical IP Attorney

Free Speech at the Supreme Court; New York Times, June 19, 2017

Editorial Board, New York Times; Free Speech at the Supreme Court

"The Supreme Court reaffirmed core free-speech principles in two cases on Monday, both decided without dissent...

"The Patent and Trademark Office rejected the name under a provision in a 70-year-old federal law prohibiting the registration of trademarks that “disparage” any “persons, living or dead, institutions, beliefs, or national symbols.”

Writing for the majority, Justice Samuel Alito said the law violates a “bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” That’s the right call. The First Amendment bars the government from discriminating among speakers based on their viewpoints. In this case, the Trademark Office did that by blocking only registrations for trademarks it determined to have negative connotations. The free-speech clause doesn’t apply to the government’s own speech, but registered trademarks can’t be put in that category — otherwise the government would have to argue that it endorses each of the more than two million trademarks it has already registered.

The decision is likely to help the Washington Redskins, who lost their trademark protections in 2014 after years of complaints from Native American groups. At the time, this page supported the Trademark Office’s decision, and we still regard the Redskins name as offensive. Based on this case, however, we’ve since reconsidered our underlying position."

Julieta Chiquillo, Dallas Morning News; 

Why the Supreme Court protects offensive trademarks but not Texas plates with Confederate flag

"When Alito struck down efforts to equate the Oregon case with the one in Texas, he highlighted three points:

First, license plates have long been used by states to convey messages. Second, license plates are usually identified with the state because they are considered a form of government ID, one that is manufactured by the state and generally designed by the state. Third, Texas "maintained direct control" of the messages in its plates.

"None of these factors are present in this case," Alito wrote in The Slants opinion."

Slants Win Trademark Case, Leader Tells Redskins to Drop Name Voluntarily; U.S. News & World Report, June 19, 2017

Steven Nelson, U.S. News & World Report; 

Slants Win Trademark Case, Leader Tells Redskins to Drop Name Voluntarily

"The 8-0 ruling likely clears the way for the Redskins football team to retain trademarks contested under that ban. But Simon Tam, the band's founder and namesake of Matal v. Tam, says the NFL team should change its name anyhow.

"Just because something is permissible, it doesn't mean it's the right thing," Tam told U.S. News after his band's victory. "I think it's their social responsibility to do that.""

The Supreme Court gives the country some necessary guidance on free speech; Washington Post, June 19, 2017

Editorial Board, Washington Post; The Supreme Court gives the country some necessary guidance on free speech

"THE UNITED STATES is engaged just now in a freewheeling debate about — freewheeling debate. Or, to put it more precisely, about how freewheeling debate should normally be. The struggle is being waged across various battlegrounds — college campuses, social media, New York theater, even the air-conditioned offices in which federal employees decide whether to protect trademarks, such as that of Washington’s National Football League franchise.

Now comes the Supreme Court with a strong statement in favor of free speech, to include speech that many find offensive. With the support of all eight justices who participated in the case (new Justice Neil M. Gorsuch being the exception), the court struck down a 71-year-old law requiring the Patent and Trademark Office to deny registration to brands that may “disparage” people or bring them “into contemp[t] or disrepute.” The ruling means that a dance-rock band may henceforth call itself “the Slants” on the same legal basis that, say, Mick Jagger’s bunch uses “the Rolling Stones” — even though many Asian Americans find the term derogatory and demeaning...

As the court’s decision reminds us, constitutional and decent are not the same thing."

Episode 774: Unspeakable Trademark; NPR, Planet Money, May 26, 2017

[Podcast] Jacob Goldstein, Ailsa Chang, NPR, Planet Money; 

Episode 774: Unspeakable Trademark

"Warning: This episode has explicit language, for unavoidable and soon-to-be obvious reasons...

Today on the show, a fight over a band name that turns into a fight about free speech. It goes all the way to the Supreme Court."

Asian-American Rock Band Denied Trademark For ‘Disparaging’ Name; KDKA.com, April 27, 2017

Julie Grant, KDKA.com; 

Asian-American Rock Band Denied Trademark For ‘Disparaging’ Name

"The government’s position is that the trademark registration program and trademarks generally have not historically served as vehicles for expression; they are meant to identify the source. The law is set forth in the Lanham Act which states that registration can be refused if a trademark is disparaging. Dr. Rooksby believes the provision is too arbitrary and will be invalidated by the court.

According to Rooksby, “I think Simon Tam should win the case. They’ve made a compelling argument that this provision of the trademark law is unconstitutional and this is because it’s too arbitrary. How do you apply it? What is something that’s disparaging?”

While the court weighs the arguments, the band has released an EP titled “The Band Who Must Not Be Named.” A decision is expected by the end of June."

'It's a lot bigger than the band': The Slants challenge ruling rejecting trademark for their name; Pittsburgh Post-Gazette, April 27, 2017

Paula Reed Ward, Pittsburgh Post-Gazette; 

'It's a lot bigger than the band': The Slants challenge ruling rejecting trademark for their name

[Kip Currier: Fascinating panel discussing Lee v. Tam case and broader issues of trademark law and free speech. The Slants performed after the panel. I spoke with the defendant, Simon Tam, who was a member of the panel and did a masterful job using "story" to make his points, and he insisted that the rest of the band sign the band poster I bought.]

"“I should be able to say what I want to say that my community doesn’t find offensive,” Mr. Tam said. “At the end of the day, it’s a lot bigger than the band.”

On Thursday, Mr. Tam and his bandmates — he describes their music as 80s-inspired synth pop — spoke at a panel discussion at Duquesne University before an evening performance. It’s part of a six-week tour that has hit clubs, law schools, intellectual property workshops and anime conferences.

The tour is to raise awareness of the ongoing court case, Lee v. Tam. In it, the U.S. Patent and Trademark Office appealed a decision by the U.S. Court of Appeals for the Federal Circuit, which found in Mr. Tam’s favor in December 2015.

Mr. Tam’s original trademark application, made in 2009, was rejected because it was found to violate the Lanham Act, which prohibits a trademark if it “consists of matter which may disparage persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt, or disrepute.”"

April 27, 2017 Panel: A Name Worth Fighting For? The Slants, Trademark Law, and Free Expression; Duquesne University, Pittsburgh, Pennsylvania

[Kip Currier: Looking forward to attending this panel--addressing very interesting IP and free speech issues--and hearing the band play afterwards]

A Name Worth Fighting For? The Slants, Trademark Law, and Free Expression

Event Date: 

Thursday, April 27, 2017 - 4:30pm to 7:00pm

Event Location:

• Union Africa Room (3rd Fl.)

Event Audience:

• Alumni
• Current Students
• General Public

Cost: 

$60.00 
$60 or $50 for CLE Program, Reception, and Music

Continuing Legal Education

A Name Worth Fighting For? The Slants, Trademark Law, and Free Expression 

Join Duquesne Law, the Pittsburgh Intellectual Property Association, and the Federal Bar Association’s Pittsburgh chapter for a special program about the rock band that is the subject of a current U.S. Supreme Court case. 

The continuing legal education (CLE) course focuses The Slants, an Asian-American musical group whose trademark application was denied for its use of a term deemed derogatory, and the case Lee v. Tam. 

The program features Simon Tam, the band’s founder and bassist, Hon. Cathy Bissoon of U.S. District Court, Western District of Pennsylvania, and Christine Haight Farley, a law professor from American University. Associate Dean Jacob H Rooksby, an intellectual property professor at Duquesne, will moderate a discussion about trademark law, including whether the band’s choice to claim the name should be protected by the First Amendment.

The CLE will review Section 2(a) of the Lanham Act of 1946, which the U.S. Patent and Trademark Office used to deny the band’s trademark application; the U.S. Court of Appeals for the Federal Circuit’s decision reversing the trademark office’s determination; and freedom of expression issues. 

The U.S. Supreme Court heard oral argument on Lee v. Tam in January. The ongoing legal battle has been covered by the New York Times, NPR, and other media outlets. This CLE will offer insight into the fight by the band’s founder as well as an opportunity to hear the group’s music. A 45-minute concert and light reception will follow the CLE program.

4:30 p.m. – 6 p.m. CLE

6:15 p.m. – 7 p.m. Concert