School for Scandal: the Supreme Court of the United States,
Trade Mark Law, and Freedom of Speech in the Age of Trump
Matthew Rimmer
The Supreme Court of the United States ruling in Matal v. Tam in 2017 over the Oregon rock group The Slants sets down a landmark precedent in respect of trade mark law, racism, bigotry, disparagement, and freedom of speech.1 The ruling also larger implications and ramifications for the protection of Indigenous intellectual property – both in respect of the contentious
Washington Redskins trademark, and more generally. This case note considers the twin trade mark conflicts over the Slants and the Washington Redskins in the United States. It questions the reasoning of the Supreme Court of the United States ruling in Matal v. Tam, raising questions about its coherence and its consistency. It contends that the Supreme Court of the
United States ruling is an exceptional one, which would not be easily translated to other jurisdictions such as Australia, New Zealand, and Canada.
1. The Slants
The factual scenario of the dispute in Matal v. Tam is an unusual one.2 Alito J observed of the nature of the dispute:
This case concerns a dance-rock band’s application for federal trademark registration of the band’s
name, “The Slants.” “Slants” is a derogatory term for persons of Asian descent, and members of the
1 Matal v. Tam 137 S. Ct 1744 (2017)
2 Matal v. Tam 137 S. Ct 1744 (2017)
1
band are Asian–Americans. But the band members believe that by taking that slur as the name of their
group, they will help to “reclaim” the term and drain its denigrating force. 3
It was a hard set of circumstances to extrapolate general principles from in respect of trade mark law, disparagement, and freedom of speech.
The lead singer of the Slants, Simon Tam, maintained that the band was engaged in counter- appropriation of a derogatory term:
We grew up and the notion of having slanted eyes was always considered a negative thing. Kids
would pull their eyes back in a slant-eyed gesture to make fun of us ... I wanted to change it to
something that was powerful, something that was considered beautiful or a point of pride instead.4
Tam maintained: ‘If the government really truly cared about fighting racist messages they would have cancelled the registrations for numerous white supremacist groups before they even approached our case.’5
The United States Patent and Trademark Office’s examining attorney refused registration of
‘The Slants’ on the grounds that it was a highly disparaging reference to people of Asian
3 Matal v. Tam 137 S. Ct 1744 at 1751 (2017).
4 Kat Chow, ‘The Slants: Fighting for the Right to Rock a Racial Slur’, NPR, 19 January 2017, http://www.npr.org/sections/codeswitch/2017/01/19/510467679/the-slants-fighting-for-the-right-to-rock-a- racial-slur
5 Ibid.
2 descent.6 Simon Tam sought review of the decision of the Patent and Trademark Office’s
Trademark Trial and Appeal Board, which affirmed an examining attorney’s refusal to register the trademark ‘The Slants’ for a musical band, on grounds that the mark was disparaging to people of Asian descent.7 A panel of the United States Court of Appeals for the Federal Circuit,
Moore J8 affirmed, but on rehearing en banc, the Court of Appeals, Moore J vacated and remanded.9 Certiorari was granted by the Supreme Court of the United States.
There was a wide range of submissions from the parties, and the friends of the court – including civil society, industry groups, and academics. The docket contains 55 appellate court documents. Of particular note was one submission by two leading American trade mark academics. Professor Christine Haight Farley of American University Washington College of
Law and Professor Rebecca Tushnet – now of Harvard Law School – filed a brief, warning:
‘The decision below – that all content-based trademark rules must survive strict scrutiny – would wreak havoc on trademark law’.10 The academics observed: ‘The Federal Circuit’s treatment of the Lanham Act’s regulatory scheme as presumptively unconstitutional is misguided because it wrongly treats trademark registration refusal as a ban on speech.’11 Farley and Tushnet concluded: ‘Trademark law is pervasively content-based, but that is not a fatal
6 ‘The Slants’, Federal Trademark 85472044, 14 November 2011.
7 In re Tam 2013 WL 5498164 (2013).
8 In re Tam 785 F.3d 567 (2015).
9 In re Tam 808 F.3d 1321 (2015).
10 ‘Brief of Law Professors as Amici Curiae in Support of the Petitioner in Lee v. Tam’, 36, https://tushnet.files.wordpress.com/2016/11/15-1293-tsac-law-professors.pdf
11 Ibid., 36.
3 flaw for a government program’.12 Tushnet has elaborated upon her concerns in a piece for the
Notre Dame Law Review.13
During oral argument, it was apparent that members of the Supreme Court of Justice were sceptical of the ability of the Federal Government to ban disparaging names from trademark protection.14 Kagan J wondered whether the rule meant that ‘[Y]ou can say good things about some person or group, but you can't say bad things.’15 Ginsburg J wondered whether the legislative clause was unconstitutionally vague. Sotomayor J expressed concern about the clarity of the provision. Breyer J asked how the anti-disparagement provision advanced the aims and goals of trade mark law.
In the leading judgment, Alito J held that the disparagement clause of Lanham Act was facially invalid under the First Amendment’s Free Speech clause. 16
In his analysis, Alito J considered ‘three arguments that would either eliminate any First
Amendment protection or result in highly permissive rational-basis review.’ 17 The judge analysed the contentions of the Government ‘(1) that trademarks are government speech, not
12 Ibid., 36-37.
13 Rebecca Tushnet, ‘The First Amendment Walks into a Bar: Trademark Registration and Free Speech’,
(2017) 92 Notre Dame Law Review 381-424.
14 Chris Geidner, ‘Justices Skeptical of Law Allowing Government to Deny Trademarks for “Disparaging”
Names’, Buzzfeed, 19 January 2017, https://www.buzzfeed.com/chrisgeidner/justices-take-on-the-slants-and- whether-the-government-can-d?utm_term=.sw782PYeO#.ghr9VjdWx
15 Ibid.
16 Matal v. Tam 137 S. Ct 1744 at 1751 (2017).
17 Matal v. Tam 137 S. Ct 1744 at 1757 (2017).
4 private speech, (2) that trademarks are a form of government subsidy, and (3) that the constitutionality of the disparagement clause should be tested under a new “government- program” doctrine.’ 18
First, Alito J held that ‘it is far-fetched to suggest that the content of a registered mark is government speech’. 19 The judge observed:
If the federal registration of a trademark makes the mark government speech, the Federal Government
is babbling prodigiously and incoherently. It is saying many unseemly things. See App. to Brief for
Pro–Football, Inc., as Amicus Curiae. It is expressing contradictory views. It is unashamedly endorsing
a vast array of commercial products and services. And it is providing Delphic advice to the consuming
public. 20
Alito J concluded: ‘Holding that the registration of a trademark converts the mark into government speech would constitute a huge and dangerous extension of the government-speech doctrine.’ 21 The judge insisted: ‘Trademarks are private, not government, speech’. 22
Second, the judge rejected the argument of the Government that trademarks are a form of government subsidy:
Trademark registration is not the only government registration scheme. For example, the Federal
18 Matal v. Tam 137 S. Ct 1744 at 1757 (2017).
19 Matal v. Tam 137 S. Ct 1744 at 1758 (2017).
20 Matal v. Tam 137 S. Ct 1744 at 1758 (2017).
21 Matal v. Tam 137 S. Ct 1744 at 1760 (2017).
22 Matal v. Tam 137 S. Ct 1744 at 1760 (2017).
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Government registers copyrights and patents. State governments and their subdivisions register the title
to real property and security interests; they issue driver’s licenses, motor vehicle registrations, and
hunting, fishing, and boating licenses or permits. 23
Alito J distinguished the dispute from cases in which the Supreme Court of the United States had upheld the constitutionality of subsidized speech expressing a particular viewpoint: ‘Cases like Rust and Finley are not instructive in analyzing the constitutionality of restrictions on speech imposed in connection with such services.’24
Third, Alito J rejected the argument of the Government that the disparagement clause was protected under a new doctrine of ‘government-program cases’. 25 The judge found that ‘the disparagement clause cannot be saved by analyzing it as a type of government program in which some content- and speaker-based restrictions are permitted’. 26
Finally, Alito J expressed concerns about the impact of the disparagement clause upon the freedom of commercial speech:
There is also a deeper problem with the argument that commercial speech may be cleansed of any
expression likely to cause offense. The commercial market is well stocked with merchandise that
disparages prominent figures and groups, and the line between commercial and non-commercial speech
23 Matal v. Tam 137 S. Ct 1744 at 1761 (2017).
24 Matal v. Tam 137 S. Ct 1744 at 1761 (2017).
25 Matal v. Tam 137 S. Ct 1744 at 1763 (2017).
26 Matal v. Tam 137 S. Ct 1744 at 1763 (2017).
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is not always clear, as this case illustrates. If affixing the commercial label permits the suppression of
any speech that may lead to political or social “volatility,” free speech would be endangered. 27
Accordingly, the judge held that the disparagement clause violated the Free Speech clause of the First Amendment. Roberts CJ, Thomas and Breyer JJ joined key elements of this opinion.
Kennedy J filed an opinion concurring in part and concurring in the judgment. Kennedy J observed:
A law that can be directed against speech found offensive to some portion of the public can be turned
against minority and dissenting views to the detriment of all. The First Amendment does not entrust
that power to the government’s benevolence. Instead, our reliance must be on the substantial safeguards
of free and open discussion in a democratic society. 28
Ginsburg, Sotomayor, and Kagan JJ joined this opinion. 29
Thomas J filed an opinion concurring in part and concurring in the judgment. He wrote a separate judgment because ‘I continue to believe that when the government seeks to restrict truthful speech in order to suppress the ideas it conveys, strict scrutiny is appropriate, whether or not the speech in question may be characterized as ‘commercial.’’ 30
Gorsuch J took no part in the consideration or decision of the case.
27 Matal v. Tam 137 S. Ct 1744 at 1765 (2017).
28 Matal v. Tam 137 S. Ct 1744 at 1768 (2017).
29 Matal v. Tam 137 S. Ct 1744 at 1765 (2017).
30 Matal v. Tam 137 S. Ct 1744 at 1765 (2017).
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In some respects, this is a surprising decision, given past precedents on intellectual property and freedom of speech. The Supreme Court of the United States rejected freedom of speech arguments in a trade mark battle involving the ‘Gay Olympics’.31 Strikingly, in the case of
Eldred v. Ashcroft, the Supreme Court of the United States rejected by a majority of 7-2 a constitutional challenge to the copyright term extension in the United States.32 Notably, in
Golan v Ashcroft, the Supreme Court of the United States rejected another constitutional challenge to the restoration of copyright in foreign works.33 The Supreme Court of the United
States also paid short shrift to arguments about freedom of speech in the dispute over gene patents (finding it sufficient to deal with that matter in respect of patentable subject matter).34
Thus, the Supreme Court of the United States has been quite unpredictable and volatile when it comes to a consideration of the interaction between intellectual property and freedom of speech. It is difficult to discern a pattern in which the Roberts Court will intervene in intellectual property law
In response to the Supreme Court of the United States ruling, the band The Slants were jubilant.35 Simon Tam noted: ‘After an excruciating legal battle that has spanned nearly eight years, we’re beyond humbled and thrilled to have won this case at the Supreme Court.’36 He
31 San Francisco Arts & Athletics, Inc. v. United States Olympic Committee, 483 U.S. 522 (1987).
32 Eldred v. Ashcroft 537 U.S. 186 (2003).
33 Golan v. Holder 132 S. Ct 873 (2012).
34 Association for Molecular Pathology v. Myriad Genetics 133 S.Ct. 2107 (2013).
35 The Slants, ‘Statement on Recent SCOTUS Ruling’, Press Release, 19 June 2017, http://www.theslants.com/statement-on-recent-scotus-ruling/
36 Ibid.
8 maintained: ‘This journey has always been much bigger than our band: it’s been about the rights of all marginalized communities to determine what’s best for ourselves.’37 Tam commented: ‘The Supreme Court has vindicated First Amendment rights not only for our The
Slants, but all Americans who are fighting against paternal government policies that ultimately lead to viewpoint discrimination.’38
The advocacy organization Asian Americans Advancing Justice (AAJC) was opposed to The
Slants.39 John Yang, president and executive director of Asian Americans Advancing Justice, said: ‘From our perspective, the court oversimplified what really is a little bit more nuanced analysis.’40 He commented: ‘The bottom line is... that this case allows organizations or individuals to profit from using a racial slur or disparaging term.’41 Simon Tam responded at length to such criticism.42
37 Ibid.
38 Ibid.
39 Kat Chow, ‘What’s Next for the Founder of The Slants, and the Fight over Racial Slurs’, NPR, 6 July
2017, http://www.npr.org/sections/codeswitch/2017/07/06/535055061/whats-next-for-the-founder-of-the-slants- and-the-fight-over-racial-slurs
40 Ibid.
41 Ibid.
42 Simon Tam, ‘An Open Letter to Asian Americans Advancing Justice, NPR CodeSwitch, and NAPABA’,
The Slants, 7 July 2017, http://www.theslants.com/an-open-letter-to-asian-americans-advancing-justice-npr- codeswitch-and-napaba/
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Professor Rebecca Tushnet of the Harvard Law School has expressed concerns about the long- term impact of the ruling on the trademark system: ‘It’s a complex system, and if you pull out a chunk of it without extreme care, you’re going to upset the rest of the system.’43
The decision may well have unintended consequences. After the Supreme Court of the United
States decision, there has been a race to trademark racially offensive terms.44 Trademark lawyer
Ed Timberlake was concerned that the floodgates have opened. Alison Chang observed: ‘To him, what the Supreme Court has done is given the bigots of the world a green light to register the most disgusting trademarks ever.’45
2. The Washington Redskins
There has been a significant amount of jurisprudence in respect of Indigenous Intellectual
Property – particularly in respect of racist, derogatory, and offensive trade marks.46
43 Nina Totenberg, ‘In Battle Over Band Name, Supreme Court Considers Free Speech and Trademarks’,
NPR, 18 January 2017, http://www.npr.org/2017/01/18/510310945/in-battle-over-band-name-supreme-court- considers-free-speech-and-trademarks
44 Ailsa Chang, ‘After Supreme Court Decision, People Race to Trademark Racially Offensive Words’,
NPR, 21 July 2017, http://www.npr.org/2017/07/21/538608404/after-supreme-court-decision-people-race-to- trademark-racially-offensive-words and Ed Timberlake, ‘Post-Scandalousness’, https://www.pinterest.co.uk/timberlakelaw/post-scandalousness/
45 Ibid.
46 Matthew Rimmer (ed.), Indigenous Intellectual Property: A Handbook of Contemporary Research,
Cheltenham (UK) and Northampton (Mass.): Edward Elgar, December 2015, http://www.e- elgar.com/shop/indigenous-intellectual-property
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There was a long-running dispute over the trademark for the Washington DC football, the
Washington Redskins.47 There is a history of controversy in respect of the Washington Football
Team’s trademarks in respect of the ‘Redskins’, with conflicts over the past twenty-five years.48
During the Obama era, there was substantive action against the Washington Football Team’s trademarks. On 18 June 2014, the Trademark Trial and Appeal Board at the United States
Patent and Trademark Office cancelled the trademarks.49 The decision of the Trademark Trial and Appeal Board was upheld in 2015 by the United States District Court of the Eastern District of Virginia.50 The football team appealed to the United States Court of Appeals for the Fourth
Circuit.
47 Matthew Rimmer, ‘Change the Mascot: the Washington Redskins, Offensive Trademarks, Freedom of
Speech, and Racism in Sport’, (2016) 29 (7) Australian Intellectual Property Law Bulletin 178-183.
48 Christine Haight Farley, ‘Stabilizing Morality in Trademark Law’ (2014) 63 American University Law
Review 1019–1050; Fred Hiatt, ‘Moving Beyond the “Imaginary Indians” Perception’, The Washington Post, 21
September 2014, http://www.washingtonpost.com/opinions/fred-hiatt-moving-beyond-the-imaginary-indians- perception/2014/09/21/ea1ee614-3f3b-11e4-9587-5dafd96295f0_story.html; Steve Vladek, ‘The Washington
Redskins, the Lanham Act, and Article III’, The Prawfs Blog, 23 September 2014, http://prawfsblawg.blogs.com/prawfsblawg/2014/09/the-washington-redskins-the-lanham-act-and-article- iii.html; and Alison Keyes, ‘What a Lawsuit Against the Redskins Could Mean for the Brand’, National Public
Radio, 31 May 2013, http://www.npr.org/blogs/codeswitch/2013/05/31/187636561/What-A-Lawsuit-Against-
The-Redskins-Could-Mean-For-The-Brand
49 Amanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan, and Courtney Tostigh v. Pro-
Football Inc. (18 June 2014), Trademark Trial and Appeal Board, United States Patent and Trademark Office,
Cancellation No. 92046185, http://ttabvue.uspto.gov/ttabvue/v?pno=92046185&pty=CAN&eno=199
50 Pro-Football, Inc. v Amanda Blackhorse, et al., 2015 WL 4096277 (E.D.Va.,2015).
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With the announcement of the ruling in The Slants’ case, it was immediately recognised that the decision would affect the ongoing conflict over the Washington Football club.51 There has been disquiet about the ramifications of this case particularly for Indigenous intellectual property.
After the Supreme Court of the United States decision, a lawyer for the football club, Lisa
Blatt, argued that the ruling ‘resolved the Redskins' longstanding dispute with the government.’52 She maintained: ‘The Supreme Court vindicated the team's position that the
First Amendment blocks the government from denying or canceling a trademark registration based on the government's opinion.’53 The owner of the Washington football club Dan Snyder said that he was ‘thrilled’ by the decision of the Supreme Court of the United States in respect of The Slants.54
In the wake of the Supreme Court of the United States ruling, the Trump Administration has withdrawn from the challenge to the trade marks of the Washington Redskins football club.
Mark Freeman of the United States Department of Justice wrote to the United States Court of
Appeals for the Fourth Circuit:
51 CBS, ‘The Slants’ Supreme Court Case May Help Washington Redskins’, CBS, 19 June 2017, https://www.cbsnews.com/news/the-slants-supreme-court-case-win-help-washington-redskins/
52 Josh Siegel, ‘Trump Administration Won’t Fight Redskins in Trademark Case’, The Washington
Examiner, 28 June 2017, http://www.washingtonexaminer.com/trump-administration-wont-fight-redskins-in- trademark-case/article/2627387
53 Ibid.
54 Fox News, ‘Washington Redskins Owner “Thrilled” by Supreme Court’s Trademark Ruling’, Fox News,
19 June 2017, http://www.foxnews.com/politics/2017/06/19/washington-redskins-owner-thrilled-by-supreme- courts-trademark-ruling.html
12
The United States concurs with appellant Pro-Football, Inc., that oral argument is unnecessary. The
Supreme Court’s decision in Matal v. Tam, No. 15-1293 (U.S. June 19, 2017), controls the disposition
of this case. Consistent with Tam, the Court should reverse the judgment of the district court and
remand the case with instructions to enter judgment in favor of Pro-Football.55
As journalist Josh Gerstein noted, ‘The Trump administration is throwing in the towel in the fight to strip the Washington Redskins football team of its trademarks.’56
As a result of the Supreme Court of the United States ruling, Amanda Blackhorse and other opponents discontinued their action against the Washington Redskins trademark.57 ‘There’s no more challenge to make’ said Jesse A. Witten, an attorney representing Native Americans. He observed that the case nonetheless generated publicity about their campaign: There’s the legal case and then there’s the cause. It was a galvanizing force that caused people to pay attention to the cause.’58
Simon Tam, the lead singer of The Slants, was questioned about how the ruling benefitted the
Washington football team. The New York Times asked Tam: ‘How do you reconcile the idea
55 Mark Freeman, ‘Re: Pro-Football Inc. v. Blackhorse, 15-1874’, 28 June 2017, http://www.politico.com/f/?id=0000015c-f0a0-d1e3-a97d-f9f436400001
56 Josh Gerstein, ‘Feds Give up Fight against Redskins Trademarks’, Politico, 28 June 2017, http://www.politico.com/blogs/under-the-radar/2017/06/28/washington-redskins-trademarks-240066
57 Ian Shapira and Ann Marimow, ‘Washington Redskins Win Trademark Fight Over the Team’s Name’,
The Washington Post, 29 June 2017, https://www.washingtonpost.com/local/public-safety/2017/06/29/a26f52f0-
5cf6-11e7-9fc6-c7ef4bc58d13_story.html?utm_term=.0658fdcb7429
58 Ibid.
13 that while this decision is a win for the Slants, it could also help the Redskins and others who are not trying to reclaim terms, but are profiting from names that others may find offensive?’.59
In response, Tam asserted:
It’s a win for all marginalized groups. It can’t be a win for free speech if some people benefit and others
don’t. The First Amendment protects speech even that we disagree with. You can’t say you want to
shut down the conversation for other people, because that doesn’t advance progress. No one builds
better communities by shutting people out.60
For his part, he has expressed empathy and sorrow for how the ruling may well have adversely affected Indigenous groups.
However, others were less convinced about this justification or rationalisation of the outcomes of the dispute. Lisa Hofmann-Kuroda commented: ‘Reclaiming racist stereotypes for yourself isn’t political or edgy when it harms the very people to whom you owe your basic political rights.’61
59 Joe Coscarelli, ‘Why the Slants Took a Fight Over Their Band Name to the Supreme Court’, The New
York Times, 19 June 2017, https://www.nytimes.com/2017/06/19/arts/music/slants-name-supreme-court- ruling.html?smid=tw-nytimes&smtyp=cur
60 Ibid.
61 Lisa Hofman-Kuroda, ‘An Open Letter to “The Slants”: Racial Slurs Aren’t Inherently Progressive’,
Wear Your Voice, 26 June 2017, https://wearyourvoicemag.com/identities/race/open-letter-slants-racial-slurs- arent-inherently-progressive
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The National Congress of American Indians and the Change the Mascot campaign were disappointed by the Supreme Court of the United States ruling.62 Change the Mascot leaders
National Congress of American Indians Executive Director Jackie Pata and Oneida Nation
Representative Ray Halbritter commented:
We are gratified that this Supreme Court case amplified the intensifying public debate over the NFL's
support for bigotry against Native Americans. The work of Amanda Blackhorse and other leading
activists fighting against the use of the R-word has been tremendously successful and critically
important. They have invaluably raised awareness about the problems with mascots such as the R-word
epithet used by the Washington NFL team, and brought the important issue of mascotization to the
forefront of social consciousness.63
The groups concluded: ‘If the NFL wants to live up to its statements about placing importance on equality, then it shouldn’t hide behind these rulings, but should act to the end this hateful and degrading slur.’64 Ray Halbritter added in a radio interview: ‘What's right is not always a legal question.’65 He stressed: ‘What is right here, is to not be using an offensive or racial slur.’66
62 Change the Mascot, ‘National Congress of American Indians and the Change the Mascot Respond to
Disappointing Supreme Court Ruling Upholding Derogatory Trademark’, Press Release, 19 June 2017, http://www.changethemascot.org/wp-content/uploads/2017/06/Change-the-Mascot-Response-to-Supreme-
Court-Ruling-June-19-2017.pdf
63 Ibid.
64 Ibid.
65 Kat Chow, ‘What’s Next for the Founder of The Slants, and the Fight over Racial Slurs’, NPR, 6 July
2017, http://www.npr.org/sections/codeswitch/2017/07/06/535055061/whats-next-for-the-founder-of-the-slants- and-the-fight-over-racial-slurs
66 Ibid.
15
What implications will this decision of the Supreme Court of the United States in Matal v. Tam have for other jurisdictions?
Other settler nations certainly have similar histories of racism. It should be noted that Australia has a history of scandalous and offensive trade marks. Dr Fady Aoun of the Sydney Law School has provided a historical perspective on offensive trade marks in Australia.67 His historical research has highlighted how the Australian trademark register has featured stigmatising, offensive trademarks about Indigenous Australians. Moreover, the trademark register has also featured racist trademarks about immigrants to Australia. There have also been marks featuring signs of imperialism and slavery.
Nonetheless, in contemporary times, IP Australia has been somewhat more rigorous in policing the trade mark register. Under section 42 (a) of the Trade Marks Act 1995 (Cth), a trade mark application must be rejected if ‘the trade mark contains or consists of scandalous matter.’ As
Terri Janke has noted, the provision could be deployed in respect of culturally offensive
67 Fady Aoun, ‘Scandalous and Offensive Trade Marks: A Historical Perspective’, Australasian Intellectual
Property Academics Conference, Sydney Law School, 21 July 2017; Fady Aoun, ‘Scandalous and Offensive
Trade Marks: A Historical Perspective’. Sydney Law School - National University of Singapore Symposium
2014, Sydney, NSW: Presentation, 2014; Fady Aoun, ‘Racist Trade Marks in the Australian and British Historical
Trade Mark Registers’ 32nd Annual Australian New Zealand Law and History Society (ANZLHS) Conference
2013: People, Power and Place, Dunedin, New Zealand: Presentation, 2013.
16 marks.68 There have been a number of disputes in respect of the scope of ‘scandalous matter’.
The Peter Hanlon matter considered the term ‘Pommiebasher’.69
A constitutional challenge to the clause seems unlikely in Australia, given the limitations of the implied freedom of political communication. As Rachel Pieres observes, ‘Without the constitutional foundation of free speech, it is difficult to see how a ripple effect could reach
Australia.’70
In contrast to Australia, New Zealand has a specific regime to deal with derogatory marks about the Maori people.71
In Canada, Professor Teresa Scassa has highlighted a challenge to the use of an offensive sports team name and logo in the Major League Baseball in the Ontario Human Rights Tribunal.72
This provides a sharp counterpoint and contrast to the dispute in the Supreme Court of the
United States.
68 Terri Janke, ‘Indigenous Cultural Expression and Intellectual Property’, in Martin Hinton, Daryle Rigney and Elliott Johnson, (ed). Indigenous Australians and the Law, Routledge, 2008, 79.
69 Peter Hanlon [2011] ATMO 45 (31 May 2011)
70 Rachel Pieris, ‘Disparaging trade marks - US Supreme Court gives the nod but what's allowed in
Australia?’ Griffith Hack, 31 July 2017, http://www.griffithhack.com/ideas/insights/disparaging-trade-marks-us- supreme-court-gives-the-nod-but/
71 Matthew Rimmer, 'Australian Icons: Authenticity Marks And Identity Politics' (2004) 3 Indigenous Law
Journal (University of Toronto) 139-179.
72 Teresa Scassa, ‘Human Rights and Trademark Legislation: The Case of Offensive Marks’, the University of Ottawa, 13 June 2017, http://www.teresascassa.ca/index.php?option=com_k2&view=item&id=249:human- rights-and-trademark-legislation-the-case-of-offensive-marks
17
Arguably, from a comparative perspective, this United States landmark ruling is isolated and exceptional – an outlier, rather than a standard or a norm. Perhaps a future Supreme Court of the United States – or a President after Donald Trump - will revisit the complex relationship between intellectual property and freedom of speech.
Dr Matthew Rimmer is a Professor in Intellectual Property and Innovation Law at the Faculty of Law in the Queensland University of Technology (QUT). He is a leader of the QUT
Intellectual Property and Innovation Law research program, and a member of the QUT Digital
Media Research Centre (QUT DMRC), the QUT Australian Centre for Health Law Research
(QUT ACHLR), and the QUT International Law and Global Governance Research Program
(QUT IL GG). Rimmer has published widely on copyright law and information technology, patent law and biotechnology, access to medicines, plain packaging of tobacco products,
18 intellectual property and climate change, and Indigenous Intellectual Property. He is currently working on research on intellectual property, the creative industries, and 3D printing; intellectual property and public health; and intellectual property and trade, looking at the
Trans-Pacific Partnership, the Regional Comprehensive Economic Partnership, the Trans-
Atlantic Trade and Investment Partnership, and the Trade in Services Agreement. His work is archived at QUT ePrints, SSRN Abstracts and Bepress Selected Works.
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