Supreme Court Clinic Wins Landmark Trademark Case

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Professor Stuart Banner and Simon Tam speak at a UCLA School of Law event in April.

UCLA School of Law’s Supreme Court Clinic was behind a big free speech victory on June 19, when the U.S. Supreme Court held that a federal law prohibiting disparaging trademarks violates the First Amendment.

In Matal v. Tam, the justices voted 8-0 to side with Simon Tam, the leader of a Portland, Oregon-based dance-rock band called the Slants. The briefs supporting Tam’s position were researched and written by UCLA Law professor Stuart Banner and the students in his Supreme Court Clinic.

Tam said he chose the name “Slants” to reclaim the word from its use as a slur against Asian-Americans. His trademark application had been denied because federal law prevented the registration of marks that “may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” But this law, wrote Justice Samuel Alito, “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

After the U.S. Patent and Trademark Office turned down his application, Tam embarked on a legal battle over a section of the Lanham Act, which has governed trademarks for more than 70 years.

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Banner and students in his Supreme Court Clinic visit Washington in March.

Following several lower-court battles, Tam and his attorney, New Jersey-based John Connell, turned to Banner and his clinic. Connell was drawn to Banner’s knowledge of high court litigation and strategy, as well as to the First Amendment expertise of Eugene Volokh, UCLA Law’s Gary T. Schwartz Distinguished Professor of Law, on whose advice Banner and his students relied.

“Stuart and Eugene are just terrific members of our team,” said Connell, a partner at the Archer law firm in Haddonfield, New Jersey, who reached out to the UCLA Law clinic after conducting a national search for attorneys who could bolster his case, which he argued at the Supreme Court in January. “We went through a vetting process to try to find who would be the best match in terms of skill sets, profile, experience, and so on, both with the Supreme Court and with the specific issues involved.”

Banner, UCLA’s Norman Abrams Professor of Law and a former clerk for Supreme Court Justice Sandra Day O’Connor, said, “The decision reinforces the principle that the First Amendment doesn’t allow the government to penalize people for their points of view.”

The Tam victory marked the second win of the term for UCLA Law’s Supreme Court Clinic. In April, the high court ruled in favor of Colorado citizens who sought the return of court fees and penalties that they paid before their criminal convictions were erased. Banner delivered oral argument in that case, Nelson v. Colorado, before the justices in Washington in January.

The clinic has petitioned the Supreme Court to hear four new cases in the term that will start in October.