by Dennis Crouch
USPTO v. Tam (Supreme Court 2017)
The Supreme Court today held oral arguments in the trademark battle over whether the rock band can register its name THE SLANTS. The PTO argues “no” because the name is disparaging to Asians and Congress does not allow registration of marks “which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” 15 U.S.C. § 1052 (known as Section 2(a) of the Lanham Act). Tam argues that the ban on registering disparaging marks violates his free-speech rights protected under the First Amendment of the US Constitution.
Congress shall make no law … abridging the freedom of speech, or of the press.
In its decision, the en banc Federal Circuit ruled against the government – finding that the anti-disparagement law and its application was unconstitutional and therefore invalid. The case will have a direct impact on the native-american sports-logo cases (“Redskins”), and may usher in a new golden era of fringe consumer products with disparaging names. In its brief, the Government wrote that it should not be forced to register marks “containing crude references to women based on parts of their anatomy; the most repellent racial slurs and white-supremacist slogans; and demeaning illustrations of the prophet Mohammed and other religious figures.” Of course, what the PTO is doing here is discrimination based upon viewpoint. If TAM wins here, the larger question will be whether fraudulent marks can also be denied going forward.
In my view, we clearly have viewpoint discrimination. However, we have skipped the more fundamental question of whether ‘registration’ should count as speech in the first place — and here to be clear the allegation is that TAM’s speech has been impinged. Another way of looking at the issue is simply that trademark registration is a government program – and for non-speech-limiting government programs, the government has more leeway to discriminate based upon someone’s viewpoint (at least without violating the First Amendment). My concern for the case is outside of TM law — I wonder the extent that further strengthening the First Amendment to reach beyond usual speech cases will further empower entities to more generally avoid substantial government regulation based upon so-called “speech” concerns. [E.g., EPA is violating speech rights of pro-polluters by not letting them pollute while allowing non-polluters do whatever they want…Entirely viewpoint based discrimination.]
[Read the Oral Arguments Transcript: 15-1293_l6gn1]
A few excerpts (not in chrono-order)
JUSTICE BREYER: Look. We’re creating, through government, a form of a property right, a certain form. That’s a trademark. It’s as if through government we created a certain kind of physical property right that certain people could dedicate a small part of their houses or land to Peaceful Grove. And in Peaceful Grove, you write messages, but peaceful messages. And above all, you don’t write messages that will provoke others to violence or bad feelings. Okay? Anything wrong with that? I can’t think of anything wrong with that. There are thousands of places where they can express hostile feelings. It’s just in this tiny place, one-quarter of an acre, that you yourself have chosen to take advantage of that you can’t because it will destroy the purpose. It will destroy the purpose of Peaceful Grove. That’s why I asked my question.
. . . .
MR. CONNELL: Marks constitute both commercial speech and noncommercial speech, and the disparagement clause specifically targets the noncommercial speech and denies registration to marks that only express negative views.
JUSTICE SOTOMAYOR: This is a bit different than most [First Amendment] cases. No one is stopping your client from calling itself The Slants. No one is stopping them from advertising themselves that way, or signing contracts that way, or engaging in any activity, except that stopping someone else from using the same trademark. But even that they could do. Because you don’t need a registered trademark to sue under the Lanham Act’s entitlement for the confusion of the public in the use of any kind of registered or unregistered mark. If another band called themselves Slants, they would be subject to deceptive advertisements because they wouldn’t be this Slants. [Rather] your speech is not being burdened in any traditional way.
JUSTICE BREYER: [The provision] stops nobody from saying anything.
MR. CONNELL: In this case, the government has used the disparagement clause to selectively deny those legal benefits to a mark holder expressing negative views that the government favors, as opposed to mark holders who received those benefits because they express neutral or positive views that the government does favor. . . . It is a [speech] burden because our client is denied the benefits of legal protections that are necessary for him to compete in the marketplace with another band. And the only reason for the denial of those benefits is the burden on his noncommercial speech contained in the mark. . . . I think what the government is trying to do here is simply encourage commercial actors to conduct business in such a way as to not insult customers.
MR. STEWART: It places no restrictions on his ability to use the mark. It may limit the remedies that are available for infringement, but — but that’s entirely regulating the commercial aspects of the conduct.
. . . .
MR. STEWART (for the Government supporting the provision): The trademark registration program and trademarks generally have not historically served as vehicles for expression. That is, the Lanham Act defines trademark and service mark purely by reference to their source identification function. . . .
JUSTICE ALITO: Do you deny that trademarks are used for expressive purposes?
MR. STEWART: I don’t deny that trademarks are used for expressive purposes. As I was saying earlier, I think many commercial actors will pick a mark that will not only serve as a source identifier, but that will cast their products in an attractive light and/or that will communicate a message on some other topic. My only point is in deciding whether particular trademarks should be registered, Congress is entitled to focus exclusively on the source identification aspect. . . .
JUSTICE SOTOMAYOR: What purpose or objective of trademark protection does this particular disparagement provision help along or further?
MR. STEWART: I think Congress evidently concluded that disparaging trademarks would hinder commercial development in the following way: A trademark in and of itself is simply a source identifier … It is not expressive in its own right … and basically Congress says, as long as you are promoting your own product, saying nice things about people, we’ll put up with that level of distraction.
. . . .
JUSTICE SOTOMAYOR: Your argument earlier was that if someone slanders or libels an individual by saying — Trump before he was a public figure — Trump is a thief and that becomes their trademark, that even if they go to court and prove that that’s a libel or a slander, that trademark would still exist and would be capable of use because otherwise canceling it would be an abridgment of the First Amendment?
MR. CONNELL: I believe that’s correct.
JUSTICE SOTOMAYOR: That makes no sense.