Trade Marks & Free Speech: Perspectives on The Slants Case
The US Supreme Court’s decision in Matal v. Tam. 582 U.S. ___ (2017) has been described as rocking the IP world (or alternatively deeply controversial) in holding the Lanham Act’s “disparagement clause” unconstitutional. The unanimous verdict was issued on an application by Simon Tam of the Asian-American rock band The Slants seeking to “reclaim” the derogatory term “The Slants” by registering it as the band’s trade mark. As Alito J put it, speech that disparages may be hateful but under the First Amendment judges protect the freedom to express “the thought that we hate.”
In this seminar we hear perspectives from four trade mark academics and a former Australian federal court judge on the meaning, significance and implications of the decision for trade mark, branding and language practices.
The Honourable Julie Dodds-Streeton , Judge in Residence, Melbourne Law School
The Honourable Julie Dodds-Streeton
Judge in Residence, Melbourne Law School
The Honourable Justice Julie Anne DoddsStreeton QC is a Reserve Judge of the Supreme Court of Victoria. She was formerly a judge of the Federal Court of Australia, having served for four years from February 2010. Prior to that, she was a Justice of Appeal in the Supreme Court of Victoria (appointed August 2007), having previously been a Judge of the Trial Division of that Court from 2002. When appointed to the bench, Justice DoddsStreeton was practising as Senior Counsel at the Victorian Bar, principally in commercial law. She was admitted to practice in 1981, signed the Roll of Counsel in 1988 and was appointed Queens Counsel in 2001. She was a Senior Lecturer at the Melbourne Law School before coming to the Bar fulltime. Justice DoddsStreeton holds the degrees of BA(Hons)(Melb); LLB(Hons)(Melb); and MA(Mon). Justice DoddsStreeton was a member of the Expert Advisory Panel established in June 2015 by the Federal Government to oversee the competitive evaluation process of the Future Submarine Program. In August 2014 she was appointed as an Independent Review Panel Member on the Commonwealth Bank of Australia Open Advice Review Program chaired by former High Court judge, the Honourable Justice Ian Callinan AC QC. Since 2011 she has held the position of President of the Anglican Church of Australia, Melbourne Diocese, Professional Standards Review Panel. She is a current Senior Fellow, Law School, University of Melbourne (since 2013); Member of the Council of Australian Law Deans Australian Law Schools Standards Committee (since 2015); and Member and Fellow of the Australian Academy of Law (from 2016).
Dan Rosen, Professor of Law, Chuo University Law School, Tokyo
Professor of Law, Chuo University Law School, Tokyo
Professor Dan Rosen is an American professor of law who has taught both in the United States and Japan. He currently is a visiting research scholar in Australia at Melbourne Law School, while on sabbatical from his permanent position at Chuo Law School in Tokyo. He joined Chuo in 2004, at the start of Japan’s law school system. From 1997 to 2004, he was on the law faculty of Doshisha University in Kyoto. He also has taught as an adjunct professor at Hitotsubashi, Keio, Ritsumeikan, Ryukoku, and Waseda universities as well as Temple University Japan. He first came to Japan as a Fulbright lecturer at Kobe University and Osaka University and later was a Japan Foundation research fellow at Doshisha before joining its faculty. Prof Rosen earned his JD from SMU Law School in Dallas, where he was EditorinChief of the law journal. He went on to receive LLM and JSD degrees from Yale Law School and served as a law clerk to James R Browning, thenChief Judge of the US Court of Appeals for the Ninth Circuit. He taught for 13 years at Loyola Law School in New Orleans.
Vicki Huang, Lecturer in IP law at the Faculty of Business and Law, Deakin University
Lecturer in IP law at the Faculty of Business and Law, Deakin University
Vicki Huang is a law lecturer at Deakin University. She is also a PhD candidate at the University of Melbourne. Ms Huang graduated from the Melbourne Law School with first class honours. She also completed an L.L.M. at Columbia University Law School on a Burton Memorial Fellowship where she graduated with honours as a Harlan Fiske Stone Scholar. Prior to her appointment at Deakin, Ms Huang was a sessional lecturer at the Melbourne Law School. Ms Huang previously worked for the Federal Court of Australia as a Research Associate to the Hon. Justice Finkelstein. She also worked for a number of years at law firms in Melbourne (Ashursts) and the USA (Morrison Foerster) with a focus on litigation and intellectual property law. She has been admitted to practice in Victoria as an Australian lawyer and admitted to the State Bar of California as an American attorney. Ms Huang also has a first class honours degree in psychology and economics and has worked in management consulting and investment banking. She also worked as an intern at the United Nations, New York in the Secretary General's Office. Her multidisciplinary background is reflected in her research work. Ms Huang’s research focuses on interdisciplinary aspects of intellectual property law and empirical research methods into law. She currently teaches property law, corporations law and marketing law.
Susy Frankel, Chair in Intellectual Property and International Trade, School of Law, Victoria University of Wellington
Chair in Intellectual Property and International Trade, School of Law, Victoria University of Wellington
Susy’s research focuses on international intellectual property law. She teaches courses in intellectual property (including copyright, patents and trade marks), patent law and innovation, global intellectual property issues, international trade law, the protection of traditional knowledge and the law of contract. She has published books, articles and book chapters and is frequently invited to give conference presentations on various aspects of intellectual property law and policy. She is Director of the New Zealand Centre of International Economic Law. From 20112013 Susy was the Project Leader of the New Zealand Law Foundation Regulatory Reform Project, funded to NZ$1.8 million. The project produced a cuttingedge regulatory toolkit. Before joining Victoria University, in 1997, Susy practiced law in New Zealand and London. Susy qualified as Barrister and Solicitor of the High Court of New Zealand in 1988 and as a Solicitor of England & Wales in 1991. Susy has been a visiting Professor at the University of Haifa (Reinhold Cohen Visiting Chair) 2014; University of Western Ontario 2012; Fellow of Clare Hall, University of Cambridge and visitor to the Centre for Intellectual Property and Information Law, University of Cambridge, Michalmas term 2008; visiting Professor, University of Iowa 2000; and in 20132014 she is a Senior Fulbright Scholar and Hauser Global Fellow at New York University.
Rochelle Dreyfuss, Pauline Newman Professor of Law, Co-Director, Engelberg Center on Innovation Law and Policy, New York University School of Law
Pauline Newman Professor of Law, Co-Director, Engelberg Center on Innovation Law and Policy, New York University School of Law
Rochelle Cooper Dreyfuss holds BA and MS degrees in chemistry and was a research chemist before entering Columbia Law School, where she served as articles and book review editor of the Law Review. She is a member of the American Law Institute and served as a reporter for its Intellectual Property: Principles Governing Jurisdiction, Choice of Law, and Judgments in Transnational Disputes project. Dreyfuss clerked for Judge Wilfred Feinberg of the US Court of Appeals for the Second Circuit and for Chief Justice Warren Burger of the US Supreme Court. She was a member of the National Academies’ Committee on Science, Technology, and Law, the Secretary of the Department of Health and Human Services’ Advisory Committee on Genetics, Health, and Society, and a consultant to the Federal Courts Study Committee, the Presidential Commission on Catastrophic Nuclear Accidents, and the Federal Trade Commission. She has edited several books on intellectual property, including Balancing Wealth and Health: The Battle Over Intellectual Property and Access to Medicines in Latin America (2014, with César RodríguezGaravito), which was published in 2016 in Spanish as Entre la salud y las patentes. She coauthored A Neofederalist Vision of TRIPS: Building a Resilient International Intellectual Property System (2012, with Graeme Dinwoodie)