Page 42 - AVN November 2015

LEGAL NEWS
CASE STUDY | STOP, THIEF | | By Stewart Tongue
|By Nate Glass
Shirts vs. Skins
The adult industry, the Redskins and the Slants
in the adult
”What companies
industry, and the
public, need to
focus on is the
question of who
should decide
what a company
can call itself?
—Marc Randazza
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
EngineFood.com and WebsiteSecure.org continues to
enhance online content and consumer trust.
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.
(CASE STUDY continued on page 44)
42 | AVN.com | 11.15