Matal v. Tam, 582 U.S. ___, 137 S. Ct. 1744 (2017)
In 2017, the Supreme Court invalidated the Lanham Act’s prohibition on the registration of “disparag[ing]” trademarks because the ban enabled the USPTO to engage in viewpoint discrimination in violation of the First Amendment. Matal v. Tam, 137 S. Ct. 1744 (2017). Two years later, in Iancu v. Brunetti, 139 S. Ct. 2294 (2019), the Court struck down, on the same First Amendment grounds, the Act’s bans on the registration of “immoral” and “scandalous” marks. Id. Each of the invalidated provisions had been part of the Act’s framework for more than seventy years. See Act of July 5, 1946, ch. 540, 60 Stat. 427. In this post, we review Tam, the earlier of these cases.
Simon Tam, lead singer of a rock band known as “The Slants,” filed an application to register the band’s name on the PTO’s Principal Register. Tam acknowledged that the word “Slants” is a derogatory reference to persons of Asian descent, but he believed that by taking the slur as the name of his group he could “reclaim and take ownership of stereotypes about people of Asian ethnicity.” Tam, 137 S. Ct. at 1754 (internal quotation marks omitted). Moreover, as the Court noted, “The group ‘draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes’ and has given its albums names such as ‘The Yellow Album’ and ‘Slanted Eyes, Slanted Hearts.’” Id.
The PTO’s examiner rejected Tam’s application finding that (i) a substantial number of people regard the band’s name as offensive; (ii) numerous dictionary entries define the term “slants” and related phrases as “derogatory or offensive”; (iii) “the band’s name [had] been found offensive numerous times” resulting in concert cancellations; and (iv) bloggers and other reviewers of the band’s work found its name offensive. See Reg. No. 5,332,283, Office Action, Jan. 6, 2012.
The Trademark Trial and Appeal Board affirmed the examiner’s decision, In re Tam, No. 85472044 (T.T.A.B. Sept. 26, 2013), and, on appeal, a panel of the Federal Circuit did the same. In re Tam, 785 F.3d 567 (Fed. Cir. 2015). But the en banc Federal Circuit disagreed, vacated the panel’s decision, and remanded to the TTAB for further proceedings. In re Tam, 808 F.3d 1321, 1358 (Fed. Cir. 2015) (en banc). In that court’s view, the government could not “refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks . . . [or] because it concludes that such marks will be disparaging to others.” Id. at 1328.
The Supreme Court had no difficulty agreeing with the Federal Circuit that the disparagement clause permits the government to engage in unconstitutional viewpoint discrimination:
Our cases use the term “viewpoint” discrimination in a broad sense . . . in that sense, the disparagement clause discriminates on the bases of viewpoint. To be sure, the clause evenhandedly prohibits disparagement of all groups. It applies equally to marks that damn Democrats and Republicans, capitalists and socialists, and those arrayed on both sides of every possible issue. It denies registration to any mark that is offensive to a substantial percentage of the members of any group. But in the sense relevant here, that is viewpoint discrimination: Giving offense is a viewpoint.
Matal v. Tam, 137 S. Ct. at 1763. All eight participating justices (Justice Gorsuch did not participate) joined in the judgment affirming the Federal Circuit’s determination that the disparagement clause is a form of viewpoint discrimination offensive to the First Amendment. Six justices joined in or concurred with Parts I, II, and III-A of the Court’s opinion written by Justice Alito, while three joined in Parts III-B, III-C and IV of that opinion. Thus, no opinion garnered the complete support of a majority.
A – Tam’s Statutory Argument
In Part II of his opinion, Justice Alito took up a preliminary question, one not raised by Tam before the PTO or Federal Circuit, indeed one as to which the Court had declined to grant certiorari. Tam argued that the disparagement clause does not reach “marks that disparage racial and ethnic groups.” Id. at 1755. This was so, he contended, because the Act prohibits the disparagement of “persons,” a term that includes natural and juristic persons, but not non-juristic entities such as racial and ethnic groups. As the Court indicated, its decision to address the statutory meaning of “persons,” arose from the argument’s potential to permit avoidance of the core constitutional question in the case. Id. Nevertheless, the Court found Tam’s statutory argument “refuted by the plain meaning of the disparagement clause.” Id. at 1756. The Court observed:
The clause applies to marks that disparage “persons.” A mark that disparages a “substantial” percentage of the members of a racial or ethnic group, Trademark Manual § 1203.03(b)(i), at 1200-150, necessarily disparages many “persons,” namely, members of that group. Tam’s argument would fail even if the clause used the singular term “person,” but Congress’s use of the plural “persons” makes the point doubly clear.
Id. (footnote omitted).
B – The PTO’s Claim That Trademarks Constitute Exempt Government Speech
As the Court noted, the Free Speech Clause does not regulate government speech. Id. at 1757. Instead, it “forbids the government to regulate speech in ways that favor some viewpoints or ideas at the expense of others.” Id. In an effort to preserve its ability to regulate disparaging marks, the PTO argued that trademarks are government speech beyond the reach of the First Amendment’s constraints. Id. at 1757-60.
While the Court emphasized the importance of the government-speech doctrine, it recognized the danger in its misapplication:
If private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints. For this reason, we must exercise great caution before extending our government-speech precedents.
Id. at 1758. In the context of trademark registration, the Court noted,
The Federal Government does not dream up these marks, and it does not edit marks submitted for registration. Except as required by the statute involved here, 15 U.S.C. §1052(a), an examiner may not reject a mark based on the viewpoint that it appears to express. Thus, unless that section is thought to apply, an examiner does not inquire whether any viewpoint conveyed by a mark is consistent with Government policy or whether any such viewpoint is consistent with that expressed by other marks already on the principal register. . . . And if an examiner finds that a mark is eligible for placement on the principal register, that decision is not reviewed by any higher official unless the registration is challenged. Moreover, once a mark is registered, the PTO is not authorized to remove it from the register unless a party moves for cancellation, the registration expires, or the Federal Trade Commission initiates proceedings based on certain grounds.
Id. (citation omitted).
In the end, the Court rejected the PTO’s government-speech argument as “far-fetched,” id. at 1758, and without “even remot[e] support[]” in the Court’s existing case law. Id. at 1759.
C – The PTO’s Effort to Compare Itself with Government Programs Subsidizing Favored Activities
It is settled law that the government “may not deny a benefit to a person on a basis that infringes his constitutionally protected . . . freedom of speech even if he has no entitlement to that benefit.” Agency for Int’l Development v. Alliance for Open Society Int’l, Inc., 570 U.S. 205, 214 (2013) (internal quotation marks omitted). At the same time, “the government is not required to subsidize activities that it does not wish to promote.” Matal v. Tam, 137 S. Ct. at 1761.
The PTO attempted to characterize its registration program as just such a government subsidy through which it could elect to support some activities, but not others. Thus, when it declined to register a mark under the disparagement clause it was, the argument goes, merely declining to promote the applicant’s activities, but doing so in a manner authorized by cases like National Endowment for the Arts v. Finley, 524 U.S. 569 (1998) (NEA grant determinations could take account of general standards of decency and the diverse beliefs and values of the American public) and Rust v. Sullivan, 500 U.S. 173 (1991) (federal funds appropriated for family-planning services could exclude programs offering abortion services).
In part IV-B of his opinion for the Court (not joined by Justices Kennedy, Ginsburg, Sotomayor or Kagan), Justice Alito was dismissive of the PTO’s argument:
The federal registration of a trademark is nothing like the programs at issue in [cases like Finley and Rust]. The PTO does not pay money to parties seeking registration of a mark. Quite the contrary is true: An applicant for registration must pay the PTO a filing fee of $225-$600 . . . . And to maintain federal registration, the holder of a mark must pay a fee of $300-$500 every 10 years.
Matal v. Tam, 137 S. Ct. at 1761. In short, trademark registration is just that, a government registration program, not a government subsidy.
D – The Government’s Contention That Trademarks Are Commercial Speech Subject to Relaxed First-Amendment Scrutiny.
Finally, the PTO argued that trademarks should be seen as commercial speech, the regulation of which is governed by the less rigorous standard described in Central Hudson Gas & Elec. Corp. v. Public Serv. Comm’n of N.Y., 447 U.S. 557, 564-65 (1980) (regulation will be sustained if supported by a “substantial interest” and is “narrowly drawn”). But the Court found it unnecessary to decide whether the PTO’s commercial-speech characterization was apt because the disparagement clause could not pass muster even under the lower standard of the commercial-speech cases.*
The PTO argued that the disparagement clause serves two substantial interests. First, it supplies a mechanism to protect “‘underrepresented groups’ from being ‘bombarded’ with demeaning messages in commercial advertising.” Matal v. Tam, 137 S. Ct. at 1764 (internal quotation marks omitted). An amicus (Native American Organizations) had a different formulation of the interest served: “encouraging racial tolerance and protecting the privacy and welfare of individuals.” But, in the court’s view, neither formulation could escape the underlying problem:
[By this argument, t]he Government has an interest in preventing speech expressing ideas that offend. And, as we have explained, that idea strikes at the heart of the First Amendment.
Id. at 1764.
As a consequence, the Government tested a different tack, arguing that the disparagement clause serves an interest in preventing the disruptions of commerce that flow from the use of trademarks that disparage racial, ethnic, religious and other groups. Id. at 1765. Here, the Court identified a separate problem relating to the breadth of the disparagement clause:
The clause reaches any trademark that disparages any person, group, or institution. It applies to trademarks like the following: “Down with racists,” “Down with sexists,” “Down with homophobes.” It is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.
Id. at 1765.
In the end, while Tam certainly disrupted longstanding regulatory practice and may prove to have clarified a few things at the margins of First Amendment jurisprudence (What is government speech? When may the government express its preferences in program subsidies? What are the confines of commercial speech?), the case is otherwise well within the mainstream of First Amendment law. It reminds us that however appealing it may seem to give the Government a role in reducing the coarseness of our commercial discourse, the First Amendment prevents the Government from accepting the part. That role requires a non-governmental actor.
– Anthony F. Muri, June 15, 2020
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* Again, Justices Kennedy, Ginsburg, Sotomayor and Kagan did not join in this portion of the Alito opinion.