Popcorn-Worthy: First Amendment Plays Key Role in Recent Trademark Cases

Two recent cases demonstrate rare intersections of trademark and constitutional law that may require onlookers to get some popcorn ready as the arguments play out in federal courts this year.

In Twentieth Century Fox Television v. Empire Distribution, Inc., Fox, a declaratory relief plaintiff, is battling Empire’s trademark infringement counterclaim by invoking the First Amendment via the two-part Rogers test, which relates to the Lanham Act’s applicability to titles of artistic works.

To satisfy the first prong of Rogers, Fox argues that the title of its show “Empire” has the requisite amount of artistic relevance to the underlying work because it is “…an on-the-nose reminder of the show’s central themes and inspirations,” namely New York, the ‘Empire State.’ According to Fox's summary judgment motion, the second prong of Rogers also tilts in its favor because the show and its soundtracks do not say anything about the defendant’s music distribution and record label company, and Empire failed to plead that the show explicitly misleads consumers.

In a Federal Circuit case involving an appeal from a trademark registration denial by the USPTO for the name of the Asian-American dance band “THE SLANTS,” the court deciding In re Simon Shiao Tam wielded the First Amendment to find unconstitutional Section 2(a) of the Lanham Act, which prohibits the registration of disparaging marks. The majority of the deeply divided court said that trademarks merit full speech protection because they convey expressive messages and are not merely commercial assets. The court concluded that despite the continued ability to use the mark as a “common law” trademark, the benefits of registration are so important that refusals on the basis of Section 2(a) end up restricting speech.

While this ruling would seem to benefit the Washington Redskins in their ongoing trademark dispute for a cancellation based on Section 2(a), it is not binding precedent on the Fourth Circuit where the football team’s case is being heard. However, if the Fourth Circuit’s opinion in the Redskins matter comes to a different conclusion than the Tam court, the Supreme Court may have to step in to clear up the circuit split. The Fox case is due for oral argument on February 1st; the Redskins will likely argue sometime in the first half of 2016. In other words, get your popcorn ready…

Photo by Jeff Gunn from Atlanta, USA (The Plaza Theatre) CC BY 2.0, via Wikimedia Commons

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