Federal registration of trademarks is not government speech excepted from First Amendment protections and prohibitions. Lanham Act provision prohibiting registration of “disparaging” marks suppresses speech and is unconstitutional under any standard of review. Matel v. Tam, No. 15-1293 (S. Ct.) June 19, 2017.
Trademarks are words or symbols — or a combination of the two — that permit identification of particular products or services in the marketplace. These creations of common law now enjoy federal protections when registered with the United States Patent and Trademark Office (USPTO). Until last month, the USPTO was permitted to deny registration to trademarks its analysts deemed disparaging to persons, institutions, beliefs or national symbols. Lanham Act, 15 U.S.C. Section 1052(a) (the “disparagement clause”).
The Supreme Court has found the law to suppress speech in violation of the Free Speech Clause of the First Amendment. Registration may not be denied because of a perception that some may take offense.
You Can Get There from Here: Justices Reach the Same Ends By Differing Means
As is true of much current First Amendment jurisprudence, the justices have taken many routes to the same ends, joining (or not) in separate sections of separate opinions in support of their ultimate, agreed-upon conclusion. A summary of the justices’ alliances on the case issues is provided at the end of this article.
Having given thorough consideration to the idea that trademarks might be “government speech,” and therefore not subject to First Amendment constraints, and having rejected that notion, Justice Alito and several colleagues concluded that the disparagement clause of the Lanham Act could not survive even the more liberal tests of constitutional acceptability that attach to commercial speech. Justice Kennedy and several colleagues concluded that the disparagement clause portends potent speech suppression requiring rigorous scrutiny. Finding it impossible that the clause could stand up to such scrutiny, Justices Kennedy and colleagues opined that no further analyses were needed.
What Went Before
Plaintiff Tam, lead singer of the Asian American rock band “The Slants,” sought but was denied federal registration for the band’s name, which, he asserted, was a wry reappropriation of a racial slur. The USPTO denied registration pursuant to the statutory provision noted above, which precludes registration of disparaging trademarks.
The Federal Circuit Court of Appeals found the disparagement clause to be facially unconstitutional as it promotes viewpoint based discrimination. As the disparagement clause regulates expressive content, it is not commercial speech, cannot satisfy strict scrutiny, and would not survive even the intermediate scrutiny that applies in commercial cases. Moreover, the federal registration process is not a government subsidy nor will registration cause a trademark to become government speech and therefore immune from constitutional protections and constraints.
Several justices of the Federal Circuit Court of Appeals wrote separately, with one concurrence finding the disparagement clause unconstitutionally vague, and the other concurrence validating the government subsidy argument, but finding the disparagement clause unconstitutional as applied to the non-disparaging “core expression” of “The Slants.” One dissenting justice found the disparagement clause and its application constitutional while another found trademarks to be commercial speech property subject to and surviving intermediate scrutiny in advancing the government’s interest in the flow of commerce.
Justice Alito Considers the Scope of the Disparagement Clause and the Government Speech Arguments, and Finds Them Lacking
As noted above, the federal Lanham Act confers particular benefits upon registered trademarks but precludes registration when any mark is found to disparage groups or persons living or dead without concern for the good intentions of the party seeking registration.
Tam did not raise in prior proceedings his argument that the disparagement clause does not apply to racial or ethnic groups. While ordinarily the court would simply set previously overlooked matters aside, the government’s position that a decision on the scope of the clause would dispose of the case, rendering an interpretation of the constitution unnecessary, a boon from the Supreme Court’s perspective. Nonetheless, the constitutional avoidance suggested by the government concerning Tam’s argument could not be embraced: the plain language of the disparagement clause refers to persons, who by definition are the members of racial and ethnic groups, and groups are within the specific terms of the disparagement clause.
Federal Trademark Provisions as Government Speech Unrestricted by the First Amendment
The Court rejected the government’s argument that no First AMendment protections attach to federal trademarks because they are government speech, are subsidized by the government, or are part of a “government program.” Such an expansive reading of “government speech” — which would turn the registration system into a endorsement systems — would mean that the government would also be able to suppress disfavored speech. To do so would read the Free Speech Clause out of the constitution. Trademarks and trademark registration are easily distinguishable from the sponsored and controlled speech present in automobile license plate programs, in government advertising programs, and in the use of public property for monuments.
Not only would the speech suppression potential of adopting the trademark registration system as “government speech” portend both sponsorship and censorship, it would decimate copyright protection if each copyright were to be seen as federal speech.
The government subsidy argument is more nuanced but equally unimpressive, the court noted While the government may not deny a benefit where to do so would imping on protected speech, the government need not fund activities if it does not wish to do so. Tricky as these needles may be to thread, there is no subsidy argument to be made where trademark registration involves no payment to the registrants. That the government pays the costs of the registration program is of no moment, as the same non-monetary benefit attaches to nearly all government endeavors.
The Court declined the government’s invitation to create a new “government program” exception to the First Amendment, which would expand exponentially constitutional exceptions inherent in the government speech and subsidy cases. This is particularly true where the government draws its support from cases at a remove from the trademark system involving the collection of union dues.
The Tam case is more properly analogized to the limited public forum cases. When the government creates a limited public forum for private speech, some restrictions may be imposed, but the government may not banish speech based on a speaker’s viewpoint. As the very reason for the disparagement clause’s existence is to preclude expression of disfavored points of view, and as it is fundamental to speech freedoms that the suppression of disfavored or offensive views is constitutionally impermissible, the disparagement clause cannot withstand First Amendment review.
The Proper Focus of Review
Justice Alito concluded that Tam’s arguments concerning expressive speech and the proper standard of review need not be addressed because the disparagement clause could not withstand the more relaxed review attaching to commercial speech, which requires that any commercial speech restriction be narrowly drawn to serve a substantial government interest Restriction may extend no further than the interest being served.
The “substantial interest” in avoiding demeaning underserved groups or promoting tolerance cannot be seen as other than preventing speech that offends, which “strikes at the heart of the First Amendment.” While demeaning speech is hateful, free speech principles protect the expression of the thought that is hated.
If the disparagement clause is said to enhance the orderly flow of commerce — which disparaging speech is believed to impede — the disparagement clause has not been narrowly drawn to support that end, applying as it does to “any” trademark disparaging “any” person, group or institution, sweeping far more widely than necessary.
Concurring (in Part) in the End, But Not Necessarily the Means
Justice Kennedy, with Justices Ginsburg, Sotomayor, and Kagan, concurred in part and in the judgment. Justice Kennedy observed that the court correctly perceives the viewpoint discrimination inherent in the disparagement clause and likewise correctly perceives that the clause cannot withstand strict scrutiny. This inability to withstand strict scrutiny is sufficient to address the case and renders further review unnecessary.
It is anathema to the First Amendment for the government to suppress the content of speech and it is particularly odious to single out particular content — viewpoints — for suppression.
It is no answer that the exclusion of “disparagement” applies to any trademark that offends. Defining suppression first by content and then singling out a particular type of content is viewpoint based suppression. Suppression of all views enhances rather than diminishes the error.
A focus on audience impact rather than speaker intention — good or bad — fares no better in salvaging the disparagement clause, for the result remains the same not matter whether speaker or listener are considered. The government may not inhibit the presentation of ideas for public purview. Moreover, government hostility to a speaker’s point of view is no less hostile where the lens is focused on the listener rather than the speaker.
Government Suppression of Speech is the Overarching Concern, Not Whether Speech is Commercial
Rather than distinguishing “commercial” speech from other forms of speech and permitting a more relaxed review of the former, the concurring justices opined that heightened scrutiny is not context dependent and must be applied whenever the government intervenes because it disagrees with a message.
A Solitary Voice Urges Judicial Restraint
Justice Thomas, writing separately and singly, has expressed his concern that the court did not need to address questions not raised below. Justice Thomas emphasized his view that strict scrutiny is required whenever the government seeks to restrict speech in order to suppress ideas, without reference to commercial context. But because the disparagement clause could not survive even lesser scrutiny, Justice Thomas joined in Justice Alito’s conclusion.
The Lineup: How the Justices Were Allied on Case Issues:
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Matel v. Tam Opinion: How the Justices Line Up |
Justices |
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Part One: General Principles Governing Trademark and Posture of the Case |
Justices Alito, Roberts, Kennedy, Ginsburg, Breyer, Thomas, and Kagan |
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Part Two: Whose Interests are Captured in the Disparagement Clause of the Lanham Act, 15 U.S.C. Section 1052(a) |
Justices Alito, Roberts, Kennedy, Ginsburg, Breyer, Kagan and Sotomayor |
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Part Three A: Trademarks are Not Government Speech Exempt from Constitutional Constraints |
Justices Alito, Roberts, Kennedy, Ginsburg, Breyer, Thomas, Kagain and Sotomayor |
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Part Three B: Trademarks are Not Government Subsidized Speech |
Justices Alito, Roberts, Thomas and Breyer |
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Part Three C: Trademark Registration Does Not Merit Creation of a New Legal Doctrine for Government Programs |
Justices Alito, Roberts, Thomas and Breyer |
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Part IV: The Disparagement Clause Cannot Survive Even More Lenient “Commercial Speech” Review |
Justices Alito, Roberts, Thomas and Breyer |
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The First Concurrence in the Judgment: Strict Scrutiny Applies in All Speech Supression without Reference to Context of Commercial or Non-Commercial Speech |
Justices Kennedy, Ginsburg, Sotomayor and Kagan |
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The Second Concurrence in the Judgment: The Court Ought Not Review Issues Not Before It. Strict Scrutiny Should Apply, But the Outcome Here Is Correct |
Justice Thomas |
Just Lawful 