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This September the U.S. Court of Appeals for the 9th Circuit ruled that there is no cause of action for trademark disparagement. People are free to opine that a trademark does not deserve federal registration or that it is generic and therefore not really a trademark at all. Though purporting to reach that conclusion without looking to the First Amendment, the court’s opinion in Freecycle Network Inc. v. Oey was plainly based on freedom of speech. If free speech entitles people to express disparaging opinions about trademarks, does the converse hold? May trademarks qualify for registration even if they disparage people? The federal Lanham Act says no. But the Lanham Act, like any other statute, is subservient to the Constitution. Surprisingly, the Trademark Trial and Appeal Board and the federal courts have been reluctant to consider the constitutionality of the act’s anti-disparagement provision. The 9th Circuit’s decision serves as a reminder that the question remains open�and that it ought to be answered in favor of free speech. FREECYCLING TO NOWHERE The Freecycle Network is a nonprofit dedicated to urging folks to recycle not just newspapers and soda cans but furniture and other goods. Tim Oey, an active member, encouraged the network to use the word “freecycle” to refer only to the organization and its services, rather than to the act of recycling generally. He drafted a usage policy and pushed the network to apply for a federal trademark registration. Then somewhere on the road between application and registration, Oey experienced an epiphany and converted from trademark advocate to trademark opponent. With the customary conviction of the converted, he urged the Freecycle Network to abandon its application, and when it refused, he wrote letters to the Trademark Office urging rejection of the application. He posted messages on the Internet calling for the public to use “free-cycle” as a generic word. Unamused by his apostasy, the Free-cycle Network sued Oey for contributory trademark infringement, trademark disparagement, and other claims. The Arizona federal court granted a preliminary injunction. Oey appealed, and his case became something of a cause c�l�bre in the world of intellectual property law. Stanford University law professor Mark Lemley filed an amicus brief on behalf of 38 professors. Stanford University law professor Lawrence Lessig and “Instapundit” Glenn Harlan Reynolds, among others, signed on to another amicus brief. Together, the amici argued that without the freedom to disparage trademarks, they could not write or teach or comment on trademark law. After disposing of the infringement claim by noting that Oey’s expressions of opinion were not a “use in commerce,” the 9th Circuit turned to the disparagement claim. It held that there is no such thing. While insisting there was no need to address the amici’s First Amendment arguments, the court implicitly endorsed their position by holding that Oey’s pronouncements were, at worse, “erroneous legal opinions,” which he was entitled to hold. The court also noted that the Lanham Act does not “prevent an individual from expressing an opinion that a mark should be considered generic.” Since the right to express opinions, even wrong opinions, is the essence of freedom of speech, it is clear that the basis of the court’s ruling was the First Amendment. NOTHING OFFENSIVE The 9th Circuit held that the Lanham Act does not bar an individual from disparaging a trademark. But can trademarks be federally registered if they disparage individuals? According to the Lanham Act, the answer is no. Section 2(a) of the statute bars the registration of any mark “which may disparage?.?.?.?persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” But Section 2(a) has left a trail of troublesome, contradictory precedents. A constitutional challenge might be welcome if for no other reason than to foster more consistency in the case law. For example, in Ritchie v. Simpson (1999), the Federal Circuit ruled that William Ritchie had standing to challenge the registration of “O.J. Simpson,” “O.J.,” and “The Juice” because the marks supposedly disparaged his values as a “Christian, family man.” Noting that the “sanctity of marriage requires a husband and wife who love and nurture one another,” Ritchie claimed membership in a group that could potentially be damaged by marks supposedly synonymous with a wife-beater and wife-murderer. Ritchie ultimately succeeded in blocking those applications. But in McDermott v. San Francisco Women’s Motorcycle Contingent (2006), the Trademark Trial and Appeal Board denied standing to a fellow who might have been Ritchie’s long-lost brother. Michael McDermott, a self-described “Male Citizen of the United States and a fourth generation native son of the City of San Francisco,” challenged the registration of “Dykes on Bikes,” claiming that the word “dyke” is “disparaging to men.” McDermott lost. While the two cases are distinguishable, it is difficult to escape the suspicion that the real reason Ritchie succeeded and McDermott failed is simply that O.J. Simpson is far more reviled than motorcycle-riding lesbians. Similarly hard to reconcile are the trademark board’s decisions in Bromberg v. Carmel Self Service Inc. (1978), holding that two women had standing to oppose the registration of “Only a Breast in the Mouth Is Better Than a Leg in the Hand” as disparaging to women, and Boswell v. Mavety Media Group Ltd. (1999), holding that “Black Tail” was not disparaging to women in general or African-American women in particular. While the courts and the trademark board struggle to reconcile these outcomes, they seem reluctant to address the underlying issue of the constitutionality of Section 2(a). Outside the courts, three arguments are frequently cited to justify the anti-disparagement clause in the face of a First Amendment challenge. On close inspection, none are persuasive. First, supporters point out that Section 2(a) bars only federal registration. It does not prevent the trademark holder from using the mark or from pursuing infringers under common law. But that is tantamount to saying that barring certain speakers from broadcasting over the airwaves is constitutional because they can still post their views on the Internet. Just as speakers should be free to choose the medium in which they express their thoughts, trademark holders should be free to opt for common law or statutory protection. Moreover, the federal government itself encourages registration. The Trade-mark Office’s Web site poses the question, “Should I register my mark?” and then answers by listing the following “advantages” of registration: • Constructive notice to the public of the registrant’s claim of ownership • Legal presumption of ownership and exclusive right to use the mark nationwide in connection with the goods and/or services listed • Ability to bring an action concerning the mark in federal court • Use of the U.S. registration as a basis to obtain registration in other countries • Ability to file the mark with the Cus-toms Service to prevent importation of infringing foreign goods Now, nothing compelled the government to pass legislation conferring these advantages. But once the government did so, it seems constitutionally questionable whether the government can discriminate among potential registrants on the basis of their trademarks’ disparaging or nondisparaging content. UNCLE SAM DIDN’T SAY Second, supporters of Section 2(a) argue that while people may be free to express racist, sexist, or other disparaging messages through their trademarks, the government should not endorse those efforts. Just as the courts will not enforce racial covenants in land titles, neither should the Trademark Office help racists convey their sentiments. But as the Trademark Trial and Appeal Board held in In re Old Glory Condom Corp. (1993)�permitting registration of a mark featuring a condom decorated with stars and stripes�the issuance of a registration does not amount to “a government imprimatur.” The government does not endorse the mark, nor the quality of the goods to which the mark is applied, by permitting registration. In fact, one might argue that the government performs a valuable service to those offended by a mark when it permits registration because, ultimately, trademark protection does nothing more or less than help the public identify the source of a product. Registration of O.J. Simpson’s name as a mark might benefit all those who wish to boycott his products because they are better able to identify which goods to shun. A SLAP IN THE FACE Finally, supporters of Section 2(a) remind us of the harmful impact of many of the messages involved. In the 15-year litigation attempting to cancel the Washington football team’s registration of “Redskins,” for example, sports commentator Tony Kornheiser explained his personal opposition to the mark by recounting a conversation with Carl Shaw, spokesman for the Bureau of Indian Affairs and a Cherokee Indian: “Shaw talked about mascots portrayed as savages, in paint and feathers on the warpath, and said, �What does an Indian father say to his kids when they ask, �Daddy, is that how you used to do it?’?” Other writers have compared the impact of racial slurs contained in trademarks to a physical slap on the face. While this argument has force, it proves too much. Disparaging speech�critical, belittling, demeaning�is part of the fabric of a free society. Tune in to right-wing talk radio or left-wing talk radio; watch the Democrats or the Republicans debate; and you will hear opinions designed to disparage persons, institutions, and beliefs, trying, with varying degrees of success, to bring them into contempt or disrepute. It may be hurtful and disgusting, but that harm and disgust are the price of a free society. It is time for the courts to take a careful look at the Lanham Act’s anti-disparagement provision to determine whether it can co-exist with the First Amendment. When they do so, they may well endorse the mirror image of Freecycle Network v. Oey: Just as individuals are free to disparage trademarks, trademarks must be free to disparage individuals.
Lawrence J. Siskind of San Francisco’s Harvey Siskind specializes in intellectual property law. This article first appeared in The Recorder , an ALM newspaper.

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