Case Study: The Adult Industry, the Redskins & the Slants

This article originally ran in the November 2015 issue of AVN magazine. Click here to see the digital edition.

One of the more important legal rulings that will arise this year is coming from an intellectual property case that too many adult insiders have been completely unaware of until now. The case involves an all-Asian dance rock band founded by front man Simon Tam, and the band members’ attempt to trademark their band name “The Slants.”

The controversy stems from a September 2013 precedential opinion by the Trademark Trial and Appeal Board affirming the U.S. Patent and Trademark Office’s (PTO) refusal to grant the Slants’ trademark registration due to §2(a), which prevents registration of marks “[c]onsist[ing] of or compris[ing] … matter which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The Trademark Trial and Appeal Board panel, consisting of Chief Administrative Trademark Judge Gerard Rogers, noted that the Slants’ trademark was denied because it is “a highly disparaging reference to people of Asian descent” and continues to be disparaging to “a substantial composite of the referenced group.” On the other hand, Tam and his band insist they adopted the band name to “reclaim” it and celebrate Asian identity, and according to Tam the issue is that “minorities should have the right to label themselves.”

The case has gotten a large amount of mainstream press coverage from Reuters and other business periodicals because of the wide-reaching implications of having ‘obscenity police’ controlling whether a term can become protected intellectual property or not. The implications for the NFL’s Washington Redskins and a slew of significant adult industry brand names are obvious. It’s certainly plausible to be concerned about a small group of faceless bureaucrats with the power to invalidate trademarks worth millions of dollars on the grounds that they find them to be distasteful.

For that reason, the First Amendment Lawyers Association (FALA) filed an amicus curiae brief on behalf of the Slants. FALA is a legal consortium that does not require members to be part of the adult industry, but does include many prominent attorneys and corporate backers from within the adult online community. The amicus curiae (friend of the court) brief, drafted by attorney Marc Randazza of FALA, expressed several important points for the court to consider and concluded, “The court and the PTO cannot suppress trademarks without also suppressing the ideas they provide. Trademarks provide information to potential consumers, ranging from commercial information about their goods and services to information pertaining to company values, beliefs, and ideas. Therefore, the government cannot use Section 2(a)’s restriction on “immoral ... or scandalous matter; or matter which may disparage,” to suppress the protected speech encompassed by trademarks without adequate justification.”

“In layman’s terms, when a football team names itself the Redskins or an adult site names itself Shemale Sex they are choosing those names carefully with a commercial purpose to provide prospective customers a clear way to identify their unique brand or style of play,” said Randazza. “The fact that some people may not prefer those terms, or that some may not prefer that style of play is a matter that the public should decide for itself when they vote with their wallets to buy admission, or to find another franchise to support instead.

The problem here is that the government is actively supplanting the tastes of the public by having a small group of bureaucrats determine for everyone else what they feel the public should be allowed to think about any particular brand, company, mascot or domain name.”

The Slants argued that the U.S. Patent and Trademark Office is attempting to act as a “referee of political correctness” and in doing so, they violated the First Amendment rights of the band members. However, the three-judge panel of the Federal Circuit disagreed with that assertion and decided there was evidence the term ‘The Slants” is offensive to people of Asian descent. It went on to decree that there was no free speech violation since a refusal to federally register a trademark does not prevent the applicant from using the term, only from owning the term with a governmentally enforced trademark protecting it.

Interestingly, Circuit Judge Kimberly Moore agreed in part but also filed a separate, non-binding opinion that stated it may now be time to revisit the federal trademark law’s disparagement provisions, which she admitted would probably not hold up under current free speech laws since the U.S. Supreme Court has previously said that even though some speech may be considered offensive, that “does not justify its suppression.”

A parallel case now being adjudicated involves the Washington Redskins’ lawsuit against five Native Americans who convinced the PTO in June to void the NFL team’s trademark over the term ‘Redskins’ on the grounds that the name disparages Native Americans people. The team is currently appealing, and argues the disparagement provision violates the First Amendment.

What adult companies and the public need to focus on is who should decide what a company can call itself, Randazza said. “Do we really want a bunch of unelected, unknown, mostly anonymous people from the patent office deciding that your little league team shouldn’t be allowed to call itself the Lumberjacks because a handful of Canadians file a complaint? What happens when a business has a more palatable name but its initials spell out an unpopular acronym? Does it benefit society if porn sites start naming themselves Stewart’s Playhouse instead of a more specific term in order to get the important protections a trademark provides—because at least from my point of view, we are better off letting adult sites use names that identify them as adult rather than having the PTO encourage them to choose names that could more easily be confused with child-safe content.”

In the aftermath of the decision, the Slants’ website stated, “We’re currently convening to discuss next steps, we will most likely raise the issues raised by Judge Moore and continue to discuss administrative issues in a petition for an en banc rehearing. For example, the examining attorney applied a clearly biased approach when determining if our name is actually disparaging: he only conducted searches combined with other racial slurs and the word ‘derogatory.’”

Currently, the burden of proving that a trademark is disparaging rests with the PTO, and §2(a) rejections are “relatively uncommon.” The Federal Circuit applies a two-part test to determine if a mark is disparaging: (1) what is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods and services; and (2) if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether it may be disparaging to a substantial composite of the group.

Given that ambiguous test and the fact that the PTO or a judge are making all of the final determinations, one can see the danger to intellectual property that is increasing as standards of political correctness continue to evolve.

Randazza said, “It may be popular to say the Redskins should change their name, or convenient to argue that Big Asian Tits is too offensive a term to afford trademark protection, but anyone with even a rudimentary understanding of Google search results can quickly see that plenty of people are looking for and finding the team or video content they want to find by using those clearly descriptive and identifiable brand names to find it. According to a recent report by Dick’s Sporting Goods, the most popular NFL jerseys in Virginia and Maryland belong to RGIII and Ryan Kerrigan—those Redskins jerseys aren’t all being bought by accident. In fact, Kerrigan is one of just 10 non-quarterbacks with the highest-selling jersey in at least one state. Are many of those jerseys being bought by Native Americans? Probably not … but I don’t expect many Kerrigan fans are buying peace pipes either and we should all equally support the right of native tribes to trademark that term for their merchandise as well. It’s really an important constitutional question: Should the government be allowed to condition a benefit like intellectual property rights upon the recipient engaging in speech that the government likes or dislikes?”

Stewart Tongue is an industry insider who has worked extensively with many top brands in adult and mainstream markets as well as a significant number of successful startups. His work as the owner of and continues to enhance online content and consumer trust.