Score one for “Dykes on Bikes.”
The long-standing organization of lesbian motorcycle enthusiasts filed a brief recently with the U.S. Supreme Court supporting an effort by an Asian-American group that sought to trademark the name “The Slants.” In a decision issued June 19, the Supreme Court said the U.S. Patent and Trademark Office (PTO) violated the Asian-American group’s First Amendment right to freedom of speech when it denied it the right to register a trademark on the name.
The PTO had argued that federal trademark law prohibits registration of a trademark that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons… institutions, beliefs, or national symbols.…” But a unanimous court it amounts to government censorship. And attorneys for the San Francisco-based Dykes on Bikes group applauded that decision.
“Our argument on freedom of expression is very much like that of the Slants. The USPTO should not be deciding what is derogatory and what is not, and them doing so is the essence of viewpoint expression,” said Brooke Oliver, an attorney for Dykes on Bikes. She noted that the Dykes’ brief also argued that the PTO’s application of the so-called “disparagement clause” was arbitrary. The brief noted, for instance, that while the PTO denied Dykes on Bikes a trademark for its logo because of the wording, it granted a trademark for the name and granted trademarks for “Queer as Folk.”
Oliver and law professor Tobias Wolff prepared the brief to the Supreme Court for the San Francisco Dykes on Bikes Women's Motorcycle Contingent, a California 501(c)(3) nonprofit which licenses chapters in other cities. Oliver said the group immediately submitted a request to the PTO seeking approval of its previously suspended application for a trademark of its logo.
The Matal v. Tam decision also enables the Asian-American rock group called “The Slants” to trademark its name. The PTO had rejected the group’s application, noting that “slants” is a disparaging term for people of Asian descent. But The Slants said they adopted the name to “reclaim” the term and diminish its power as a derogatory term.
In its brief to the Supreme Court, Dykes on Bikes noted that its efforts to trademark the name “Dykes on Bikes” had been rejected several times “on the ground that the term ‘dyke’ is a disparaging term for lesbians….”
Like the Asian-American rock group, Dykes on Bikes explained that its use of the term “dykes” was to “highlight and confront the controversial history of that term and dispel the notion that it is disparaging.”
“The inconsistency of the PTO in registering other marks that use words with a history of disparaging meaning, like QUEER AS FOLK and BITCH, while refusing to register the Dykes on Bikes design mark, further demonstrates the arbitrariness of the standard,” said the brief. “Dykes on Bikes’ experience is a cautionary tale about delegating hundreds or thousands of discretionary free speech decisions to individual civil servants [at the PTO] working with no clear or objective standard. It is also a healthy reminder why the First Amendment strongly disfavors this kind of content-based prior licensing restraint on speech.”
The brief also explained why it was important for Dykes on Bikes to trademark its name. The group is a “non-profit organization focused on political speech and social action.” Without a federal trademark, other entities (such as businesses) can promote messages and sell products using the Dykes on Bikes name in ways that can affect the group’s political message. And without the trademark protection, Dykes on Bikes cannot insist that copycat groups take down postings on such social media as Facebook.
All eight participating justices agreed the patent law violated Free Speech rights, but they split 4 to 4 on why. (The court’s newest justice, Neil Gorsuch, did not participate in the case.)
The conservative justices (Chief Justice John Roberts and Justices Clarence Thomas and Samuel Alito) joined by liberal Justice Stephen Breyer said the government had not made a convincing argument that the awarding of a trademark constituted a government subsidy of speech. It also said that “public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.”
The court’s liberal justices (Ruth Bader Ginsburg, Sonia Sotomayor, and Elena Kagan) and moderate Anthony Kennedy, said the patent law is unconstitutional because it “reflects the Government’s disapproval of a subset of messages it finds offensive, the essence of viewpoint discrimination.”
The specific law under challenge in Matal v. Tam was a law known as the Lanham Act. The act says an otherwise legitimate trademark can be refused registration by the PTO if it “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute….”
Debate over the law spread beyond the particulars of the name of one rock band and Dykes on Bikes and included whether some professional sports teams could be challenged for having names like “Washington Redskins.” The Washington, D.C., professional football team issued a statement, celebrating the Supreme Court’s decision.
But Shannon Minter, legal director for the National Center for Lesbian Rights, said there’s a difference between having a legal right to use a name and a moral responsibility not to.
“Even if teams have a constitutional right to use racist names, they have no moral right to do so,” said Minter. “The use of a derogatory term for Native Americans is repugnant, and the Washington team should change it immediately. Their failure to do so is appalling.”