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Supreme Court: Denial Of Trademarks Because They Are ‘Disparaging’ Violates First Amendment

bill-of-rights

Earlier today, the Supreme Court ruled that denying a trademark because it is disparaging to ethnic groups or others is not permitted by the First Amendment in a case that is likely to have a major impact on the efforts to strip the Washington Redskins of trademarks granted to them more than fifty years ago:

The Supreme Court ruled Monday that a law that prohibits the government from registering trademarks that “disparage” others violates the First Amendment, a decision that could impact the Washington Redskins’ efforts to hang on to its controversial name.

Justice Samuel A. Alito Jr. delivered the opinion for a largely united court. He said the law could not be saved just because it evenhandedly prohibits disparagement of all groups.

“That is viewpoint discrimination in the sense relevant here: Giving offense is a viewpoint,” Alito wrote.

He added that the disparagement clause in the law “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

All of the participating justices — Neil M. Gorsuch was not on the court when the case was argued — joined that part of Alito’s opinion. Four justices peeled off from parts of the opinion where they say Alito opined on more than what was needed to decide the case.

The trademark office in 2011 said registering the trademark of the Slants, an Asian American rock group, would violate a part of the 1946 Lanham Trademark Act that prohibits registration of a trademark that “may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

The office said the name was likely to disparage a significant number of Asian Americans. But founder Simon Tam said the point of the band’s name is just the opposite: an attempt to reclaim a slur and use it as “a badge of pride.”

In a Facebook post after the decision, Tam wrote:

“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. 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.”

Tam lost in the first legal rounds. But then a majority of the U.S. Court of Appeals for the Federal Circuit said the law violates the First Amendment’s guarantee of free speech. The government may not “penalize private speech merely because it disapproves of the message it conveys,” a majority of that court found.

(…)

Free speech advocates had supported The Slants, and the court’s decision seemed likely from the oral arguments.

But some worried about what kinds of trademarks the government will now be forced to register. “It seems this decision will indeed open the floodgates to applications for all sorts of potentially offensive and hateful marks,” said Lisa Simpson, an intellectual property lawyer in New York. She added: “While this may be the right result under the First Amendment and the principles of free speech that are foundational to our country, it seems the responsibility will now pass to the public.

For several reasons, the Court’s ruling is hardly surprising. First, when the case was argued in January, the Justices appeared to be highly skeptical of the arguments made by the Federal Government in favor of the law and especially skeptical of the idea that the law could be reconciled with the Court’s existing First Amendment case law, which has held repeatedly that banning or punishing in some way speech based on its content is quite simply impermissible. This has been true even in cases where the speech in question can be highly offensive. In Snyder v. Phelps, for example, the Court struck down a ruling against the Westboro Baptist Church that was based entirely on the allegedly offensive content of their speech in a public area outside the funeral of a soldier who had died in Iraq. That case, though was only the latest in a long line of cases that stretches back decades and holds that the government cannot ban speech just because it might be ‘offensive’

The Volokh Conspiracy’s Eugene Volokh notes that the case is consistent with previous Supreme Court case law and that it reaffirms previous court rulings that have essentially stated that there is no ‘hate speech’ exception to the First Amendment:

[T]he justices made clear that speech that some view as racially offensive is protected not just against outright prohibition but also against lesser restrictions. In Matal, the government refused to register “The Slants” as a band’s trademark, on the ground that the name might be seen as demeaning to Asian Americans. The government wasn’t trying to forbid the band from using the mark; it was just denying it certain protections that trademarks get against unauthorized use by third parties. But even in this sort of program, the court held, viewpoint discrimination — including against allegedly racially offensive viewpoints — is unconstitutional. And this no-viewpoint-discrimination principle has long been seen as applying to exclusion of speakers from universities, denial of tax exemptions to nonprofits, and much more.

I first wrote about The Slants case back in December 2015 when the Court of Appeals for the Federal Circuit ruled that the Patent and Trademark Office rules barring trademark protection to trademarks that are deemed to be offensive were unconstitutional. In this case, the trademark that the band was requesting was deemed to be offensive to Asians and therefore the office declined to issue the trademark.  As I noted at the time, the courts ruling was likely to have an impact well beyond the issuance of one trademark and the authority of a government office to ban that trademark based on the arbitrary decision that it was “offensive” or otherwise not acceptable. Most specifically, that would be in the litigation that was raged for years over the trademarks that were granted to the Washington Redskins in the early 1960s only to be revoked more than fifty years later after a group claiming to speak for Native Americans was successful in arguing to the appeals board at the Patent and Trademark Office that the issuance of the trademark violated the bar against issuing trademark protection to marks that are disparaging on the basis or race, ethnicity or other criteria. As I noted at the time, that action by the Patent and Trademark Office was legally dubious given what the Supreme Court had previously stated regarding the ability of laws and governmental authorities to restrict speech based on content specifically because it was “offensive.” The PTO appeals board ruling, however, was upheld by a Federal District Court Judge in Virginia who relied to a significant degree on a 2015 opinion from the Supreme Court that found that states could decline to allow certain messages to appear on license plates based on content because the license plate was a form of what that decision called ‘governmental speech,” in which the government had discretion in what messages it would promote and which ones it would not. As Eugene Volokh noted at the time, though, the argument that granting trademark protection was “governmental speech” in the same way that a license plate on an automobile was held to be is rather weak to begin with, and falls apart largely because the government doesn’t really have any authority over a trademark after the grant of protection whereas the license plate remains, at least in some theoretical sense, government property that must be turned over to the state when a car is sold or otherwise disposed of by the owner. For that reason, the District Court ruling against the Redskins seemed at the time to be unlikely to withstanding appeal. That case was appealed to the Fourth Circuit Court of Appeals, where it is still pending.

Given the Supreme Court ruling in this case, the future of the Redskins case seems to be rather clear. If the Court cannot deny trademark protection because it is “offensive,” then it similarly cannot revoke trademarks that have already been granted based on a post hoc finding that the trademark is ‘disparaging.’ Because of this, the original action by the Patent and Trademark Office will most likely be overturned by the Fourth Circuit and the Redskins will have their trademarks restored, although the formal impact of the original revocation had yet to be held since the ruling was put on hold pending final resolution by the Courts. With today’s ruling, that final resolution appears to be certain.

Here’s today’s opinion:

Matal v. Tam Opinion by Doug Mataconis on Scribd

Related Posts:

About Doug Mataconis
Doug holds a B.A. in Political Science from Rutgers University and J.D. from George Mason University School of Law. He joined the staff of OTB in May, 2010 and also writes at Below The Beltway. Follow Doug on Twitter | Facebook

Comments

  1. gVOR08@fuse.net says:

    I don’t share your free speech absolutism, which will eventually destroy democracy in the U.S.. But this decision seems reasonable. A few years ago there was a big move to have DMVs check citizenship. Not their job. Their job is to ensure some level of driving skill and insurance. If they do that competently, be happy. Immigration is someone else’s responsibility. Pete Rose should be in the Hall and banned for life from baseball.

    On the other hand there is no one enforcing some standard of decency. It is a shame so many of us seem so driven to offend.

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  2. Mr Bluster says:

    test

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  3. Mr Bluster says:

    @gVOR08@fuse.net:..It is a shame so many of us seem so driven to offend.

    Seven Dirty Words Revisited
    excrement, urine, sexualintercourse, vagina, fellator, mydaddy and breasts

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  4. HarvardLaw92 says:

    @gVOR08@fuse.net:

    I have no problem with the ruling, but I suspect that we’re about to see the public’s limit with respect to offensive trademarked verbiage tested quite vigorously. I’m wondering how quickly Damon Wayans will get his application for “n**ga” refiled.

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  5. TM01 says:

    Hate speech is Free Speech.

    Don’t tell the students or administration at Berkeley.

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  6. CSK says:

    @HarvardLaw92:

    I agree. My tendency is to be a First Amendment absolutist, since I’m a writer who’s spent enough time in the hothouse atmosphere of college campuses to understand that anyone, anywhere, anytime can deem anything offensive. But I fear we’re in for a flood of vulgarity. I have no solution to offer other than the hope that the pendulum might swing back to a point where people realize that ethnic and religious slurs do not belong in public discourse. We will never control what people say in private.

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  7. teve tory says:

    But I fear we’re in for a flood of vulgarity.

    I’ll just be happy when people quit saying “Grab them by the…”

    It’s uncouth.

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  8. grumpy realist says:

    I wonder how many milliseconds will it be before Pam Gellar and that crowd decide to trademark as many insults for followers of Islam as they can think up?

    This is a really, really dumb decision, given that the result is going to be the equivalent of walking up to a grumpy bear and kicking it in the snoot.

    Just because you can get a trademark for your insult doesn’t mean that it’s a good idea to do so. And a heck of a lot of Americans need to be saved from their own stupidities.

    DUMB.

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  9. CSK says:

    The ACLU has applauded this decision.

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  10. Slugger says:

    It is interesting to see that the stances of conservatives and liberals have flipped on this issue. The courts decided that it was legal to sell Ulysses in 1933. I’m pretty sure conservatives didn’t like that decision while liberals were supportive. Now, the sides are switched. It was not that long ago.

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  11. Senyordave says:

    @Slugger: I’d guess a lot of First Amendment absolutists are liberal.

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  12. Just 'nutha ig'nint cracker says:

    “… it seems the responsibility will now pass to the public.”

    Isn’t that where the responsibility should be in the first place?

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  13. Hal_10000 says:

    @Senyordave:

    You clearly haven’t been on a college campus lately. I’ve found that first amendment absolutism is one of those rare things that cut across party lines. You find both liberal and conservative absolutists. And both liberal and conservative censorious idiots. And, of course, their support can waver depending on what particular speech we’re talking about.

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  14. James in Bremerton says:

    Excellent decision. The mental state known as “being offended” is always a free choice.

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  15. DrDaveT says:

    @TM01:

    Hate speech is Free Speech.

    So is shouting “Fire!” in a crowded theater. Right?

    Hard to defend one without defending the other. Hate speech isn’t defined by its factual viewpoint; it’s defined by its foreseeable consequences.

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  16. michael reynolds says:

    Count me as a free speech absolutist.

    This is a problem of the Left predominantly. I spend a fair amount of time on Twitter dumping on Trump, but I have yet to have a retaliatory review. But question the social justice warriors – not even as to goal, but as to tactics – and brace yourself. The intolerant Left is dishonest, nasty and McCarthyite.

    None of this really affects the Right. They profit from it. The SJW is only effective in attacking friends and allies. It’s like the Left invented a weapons system that only kills our people while providing free beer to the nominal enemy.

    There are no better mechanisms for controlling free speech than the marketplace of ideas, and the actual markets. If we compromise on free speech we do nothing but hand power to every subsequent regime in this country.

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  17. Fog says:

    I like the idea of allowing assholes to self-identify.

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  18. Guarneri says:

    The only thing that’s important here is that the Indian headed sweatshirt clad Chicago Blackhawks will again rightfully hoist The Cup in appropriate style next year.

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  19. Paul Hooson says:

    This was a very good decision. Some punk rock acts may have offensive names and song titles, but have all rights to trademark their name and works. Even the most outlandish of pornographic magazine or film has the right to trademark or copyright their works as well, however that is not to say that someone may
    not think that work is obscene, which is an entirely different legal situation than the ability to trademark or copyright some title or work.

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  20. TM01 says:

    @DrDaveT:
    If you believe what you typed there then you truly are an imbecile.

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  21. TM01 says:

    “If there is a bedrock principle underlying the First Amendment, it is that the government may not prohibit the expression of an idea simply because society finds the idea itself offensive or
    disagreeable”

    #Amen

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  22. MarkedMan says:

    I’m more cynical. I suspect this decision had more to do with how many Redskins fans there are on the court than any constitutional principles.

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  23. MarkedMan says:

    I think that by focusing on free speech, we are losing the issue here. It isn’t about whether someone can call themselves “The Slants” or “The Redskins”. It’s about whether the government issues them trademark protection for their commercial interests. So it isn’t about free speech, it’s about commercial speech. Personally, I think it is a tough call and, as I stated above, I suspect the court, especially the Republicans, has been more influenced by the love of their hometown sports team than by principle. In any case my guess is that aside from a few existing teams and such, this won’t have much effect. People are free to call their commercial enterprise anything they want today, and I imagine that someone who wants their band name or cheesy puffs to be called “Nigg* K*ke M*ck” don’t have commercial considerations as number one.

    The next question: having granted the trademark for say “The F*cking Baloneyheads” can local laws prohibit plastering it on signs all over town? Running TV commercials during kiddie shows?

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  24. MarkedMan says:

    FWIW, there is a Canadian indy band called “Holy F*ck” (with a “u” instead of an asterisk). Good band. Don’t know if they are trademarked or not but I imagine it’s been a dilemma for them. They are popular enough that changing their name would be a problem. But they don’t get mentioned by name on the radio. At least in the US they don’t. I guess they are balancing the live venue draw vs. the possibility of having more widespread fame.

    Similarly, there is an even more popular (relative term here, we are talking about Canadian Indy Rock) called “The New Pornographers”. I’ve heard at least one interview where a band member talked about the cost/benefit ratio of the name.

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  25. Neil Hudelson says:

    @DrDaveT:

    Holmes used the ‘fire’ quote as an allegory for why free speech is not absolute. In this case, Holmes was arguing that a member of the Socialist party, a man who was a pacifistic and distributed pamphlets opposing the draft in WWI, was a clear and present danger to the United States, and that his pacifist views were not covered by the first amendment.

    The decision in US vs Schneck is considered one of the worst decisions in the history of the Supreme Court, and subsequent decisions–including those written by Holmes–chipped away at the Schneck decision.

    Or, tl/dr, the allegory the ‘fire’ quote represented really was free speech. Allegorically, you can indeed yell ‘fire’ in a crowded theatre.

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  26. Neil Hudelson says:

    @MarkedMan:

    So it isn’t about free speech, it’s about commercial speech.

    You say that as if there is some sort of constitutionally defined difference between the two.

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  27. Stormy Dragon says:

    @DrDaveT:

    So is shouting “Fire!” in a crowded theater. Right?

    You do realize this line was SCOTUS’s justification for why it’s okay for the government to jail anti-war protesters, right?

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  28. HarvardLaw92 says:

    @Neil Hudelson:

    There is. A trademark essentially isn’t speech. It’s a restriction on the speech of everybody except the holder of the trademark with respect to the use of a particular phrase and/or imagery within a specified context. They don’t facilitate speech. They restrict speech.

    That having been said, I can live with the ruling, but I think quite a few people aren’t going to be happy with where it leads.

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  29. MarkedMan says:

    @Neil Hudelson: not sure if you’re being sarcastic or not but what the heck, I’ll respond anyway. The US has traditionally heavily regulated commerce including commercial speech. For example, drug advertisers are allowed to advertise but if they do they are required to list hazards and side effects. Car manufacturers must list mileage and all fees on a sticker on their car. Banks must describe their interest rates in a standard way. Medical Devices must be literally factual in all labeling (meaning manuals, ads, brochures, and the actual labels themselves) and limited to that which has been proven using a quality system approved method (to the point that I once had a marketing colleague go all red because the regulatory people had told him all of his product rollout literature had to be redone because he had added the word “best” to the description. “Best” cannot be measured.)

    Separate from this the US has granted restricted benefits to certain commercial enterprises such as for patents and trademarks, which have intricate and numerous rules and regulations surrounding them. As HL points out, a trademark is an active restriction on others’ speech, which the US will enforce witht he power of the courts provided all criteria are met and fees are paid.

    Free speech, on the other hand, has usually been thought of as free private speech. IANAL and I’m also not a legislator but it seems to me that “hate speech” as referenced in the discussion above falls along a spectrum: at one extreme it is speech that hurts someone’s feelings. At the other extreme is speech that leads to immediate harm (“Boys, I hope you might want to beat that guy to death”). In the US, our restrictions on private speech have traditionally skewed heavily towards the “immediate harm” mode. In Europe and most of the rest of the world they come much closer to the “hurt feelings” mode. FWIW, I very much favor the US approach.

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  30. grumpy realist says:

    @MarkedMan: This is why I would shove begging for money under commercial speech and limit it.

    If the SCOTUS justices had to run the gamut of beggars I have to do every day they probably would have come down on the other side of the “begging is free speech!” decision.

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  31. KM says:

    Truth is, we restrict free speech all the time. You can’t blab state secrets without looking at jail time. You can’t spill the Colonel’s secret recipe without a lawsuit waiting. You can’t blab about patient’s information without a HIPAA violation. Hell, the concept of “confidential” or “privileged” information is contrary to the First Amendment but you’d be pissed off if your SS and bank account numbers were causally shared on the internet.

    Americans are funny in that we insist on unrestrained free speech then immediately turn around and try to find ways to have it curtailed before sh^t hits the fan. I am not a fan of free speech absolutism in that I believe no right is truly absolute – there is always some mitigating factor that means you can’t do whatever the hell you want when you want. Rather, a more nuanced view would be the understanding that we should consistently strive to have the least restrictions possible and those we have should be righteous and heavily justified. This was the right decision in that the restrictions being placed were arbitrary (“offensive”) and can’t be justified for any reason other then insulting behavior.

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  32. Just 'nutha ig'nint cracker says:

    @HarvardLaw92:

    … I think quite a few people aren’t going to be happy with where it leads.

    But that will depend on, and be indicative of, the nature of our society. That’s the advantage and the curse of valuing freedom of action. We have to be good actors in order the keep the system working. I don’t think that we will, but I’m old now and less inclined to be as concerned as I used to be. And about sports clubs and indie music band names, I was never all that concerned to begin with.

    Citizens have the right to be like and act like “he who shall not be named at OTB” to the extent that those actions and identities are simply offensive and boorish–causing no real personal injury or property damage. As was noted above, such self-identification has it’s advantages.

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  33. Neil Hudelson says:

    @HarvardLaw92: @MarkedMan:

    My mistake. Thanks for the correction.

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  34. michael reynolds says:

    @HarvardLaw92:
    A bit OT, and apologies, because I feel I should be adding to your billable hours with random legal questions. But. Is the insistence by Trump’s lawyer that he’s not under investigation suggest anything related to destruction of evidence, or conversations with other parties under investigation?

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  35. teve tory says:

    grumpy realist says:
    Tuesday, June 20, 2017 at 13:06
    @MarkedMan: This is why I would shove begging for money under commercial speech and limit it.

    If the SCOTUS justices had to run the gamut of beggars I have to do every day they probably would have come down on the other side of the “begging is free speech!” decision.

    I used to live in Chapel Hill about 10 years ago. Chapel Hill somehow made the decision to put their big homeless shelter literally 1 block from UNC where young kids had their parents’ money.

    There were times where if you wanted to walk 500 feet on Franklin Street you knew you’d have to interact with 20-30 homeless people hitting you up for money.

    I don’t believe in towns harassing homeless people or limiting speech, but that got annoying real fast.

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  36. HarvardLaw92 says:

    @michael reynolds:

    Is the insistence by Trump’s lawyer that he’s not under investigation suggest anything related to destruction of evidence, or conversations with other parties under investigation?

    I’m not sure that I’m following the question. Are you asking what Kasowitz’s statement portends for Kasowitz, or what it might suggest with regard to Trump?

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  37. michael reynolds says:

    @HarvardLaw92:
    No, I was wondering whether Trump ‘under’ or ‘not under’ affects possible charges downstream. If Trump is not under investigation and erases a hundred emails, is that a different situation than if Trump is under investigation and erases a hundred emails.

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  38. DrDaveT says:

    @Neil Hudelson:

    Or, tl/dr, the allegory the ‘fire’ quote represented really was free speech. Allegorically, you can indeed yell ‘fire’ in a crowded theatre.

    But legally, you can’t.

    OK, you don’t like the ‘fire’ example due to guilt by past association. I get it. Do you also object to laws against incitement to riot? Conspiracy to commit murder?

    What TM01 is trying hard to avoid understanding is that not all speech is primarily “the expression of an idea”. Sometimes it’s primarily an attempt to cause bad things to happen, as in trying to cause a riot, or egging on a lynching. I haven’t heard any of the 1st Amendment absolutists in this thread complaining about those laws, but maybe the opportunity just hasn’t arisen.

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  39. HarvardLaw92 says:

    @michael reynolds:

    Very broad question. It would depend on when the emails were created (pre or post assumption of office), what they concern, whether litigation hold letters have gone out, whether any preservation orders have been issued, etc. He could find himself in violation of the FRA, of obstruction via the destruction of records, of destroying records (which in and of itself is illegal aside from the obstruction question), of contempt of court, etc. Many of those answers require specific information which I just don’t possess. The people I know who are involved in these matters aren’t at liberty to disclose much of anything, even to old friends. They’re taking it very seriously.

    I will say that you should probably not be concerned with the set of hypotheticals re: him not being under. He’s under. That’s about all that I can say on that subject. He’s under.

    (and Kasowitz has an ethics problem looming in his near future.)

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