BREAKING NEWS: Lanham Act Held Partially Unconstitutional
Today the United States Supreme Court held that the disparagement clause of the U.S. Trademark Act (also known as the Lanham Act) is unconstitutional. In Matal v. Tam (formerly Lee v. Tam, but Michelle Lee recently resigned as Director of the USPTO and was replaced with Acting Director Joseph Matal), the Court affirmed the Federal Circuit’s previous finding that the disparagement clause was unconstitutional.
The Government’s primary argument was that Federal trademark registrations somehow constitute government speech, and the government therefore should not be required to grant marks that are disparaging. However, the Court quickly dispatched this notion, stating:
…It is  farfetched
to suggest that the content of a registered mark is government
speech, especially given the fact that if trademarks become government
speech when they are registered, the Federal Government is
babbling prodigiously and incoherently.
The immediate effect of the ruling is that Simon Tam will be allowed to register the mark THE SLANTS for his rock band, The Slants. The secondary effect of the ruling is that the Washington Redskins will likely be allowed to keep its REDSKINS trademarks. I doubt there will be a flood of new registrations for disparaging marks because, quite frankly, those products just won’t sell well to the consuming public, and the market will ultimately decide which marks and how often companies pursue a registration for something that may be construed as disparaging.
The case is Joseph Matal, Interim Director, United States Patent and Trademark Office v. Simon Shiao Tam, Case No. 15-1293, June 19, 2017.
More analysis forthcoming. Stay tuned…
Incorporated et al.
Digital Reg of Texas LLC sued Valve Corporation, Adobe Systems Inc., Electronic
Arts, Inc., Symantec Corporation, AVG Technologies USA, Zynga Inc., Zynga Game
Network Inc., Valve Corporation, Ubisoft Entertainment, Inc. and Intuit Inc. for
infringement of one or more of seven patents related to digital rights
management. The suit, which echoes a similar suit Digital Reg settled in 2009,
claimed among other things that software such as EA’s Download Manager and
Adobe’s Digital Publishing Suite had infringed its patents.
included digital rights management product restrictions that infringed Digital
Reg’s patents. For example, EA uses the Download Manager to allow games that
are purchased online to download directly to a computer.
between Digital Reg and EA. Digital Reg was seeking royalties for the infringed
patents, and requested EA’s financial information regarding their Origin
platform for distributing online games. EA maintained that Origin is a
free-to-use platform, and because EA’s computer games were not allegedly
infringing, the financial information regarding Origin would have only marginal
motion in part which was brought jointly by Adobe, Symantec, and Ubisoft
jointly regarding non-infringement of patents.
favor of Adobe on Digital Reg’s claims for infringement, after a jury verdict
on September 8, 2014. The jury verdict found that Digital Reg’s patents were
invalid as obvious. Any remaining claims against Adobe were dismissed with
prejudice. Judgment was also entered in favor of Ubisoft on Digital Reg’s
claims for infringement. Any remaining claims against Ubisoft were dismissed
with prejudice as well.
claims against all other Defendants which were previously dismissed. This
included Docket Nos. 309 (Zynga Game Network Inc. and Zynga, Inc.), 319 (AVG
Technologies USA, Inc.), 346 (Intuit Inc.), 387 (Valve), 460 (EA), and 582
(Symantec). This was a final, appealable judgment. On April 8, 2016, the
judgment in favor of Adobe was affirmed.
There are a number of implications stemming from the outcome of this case.
Adobe celebrated the outcome as a big win, as did members of the tech community
who have been advocating for patent reform. Patent reform advocates argue for a
reduction in the number of software patents as well as limiting the amount of
patent protection currently in place. Adobe argued that Digital Reg was going
after money-making companies seeking to profit after failing to find success
with its patents. Whichever side you take, this case pushes in the direction of
reform for the IP community.