Supreme Court: Offensive Speech May be Trademarked

Congress’s 70-year-old ban on registering disparaging terms struck down on free-speech grounds

tim armstrongGuest Contributor: Cincinnati Law Professor Tim Armstrong

An important new Supreme Court decision gives private parties the right to receive federal trademark registration of a term that disparages racial or ethnic minority groups. In Matal v. Tam, the Supreme Court ruled that part of the federal trademark statute is unconstitutional to the extent that it forbids federal trademark registration for terms “which may disparage … persons, living or dead … or bring them into contempt, or disrepute.” To forbid registration of disparaging terms as trademarks, the Court unanimously agreed, violates registrants’ First Amendment rights to free expression even of “ideas that offend.”

At the heart of this case is bass player Simon Tam, a member of a quartet of Asian-American musicians who describe their style as “Chinatown dance rock.” The band chose to name itself “The Slants,” in what the Court described as an attempt to “reclaim … a derogatory term for persons of Asian descent …. and drain its denigrating force.”

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The Slants performing in Cincinnati, May 1, 2017 (photo: Jason Jonovski)

The federal trademark statute, popularly known as the Lanham Act, extends trademark protection to “any word, name, symbol, or device” that a mark holder uses in commerce “to identify and distinguish his or her goods … from those manufactured or sold by others[.]” Brand names, corporate logos, packaging shapes, and even distinctive colors or color schemes may all be recognized and protected as trademarks. Under the statute, trademarks that have been registered with the federal government receive somewhat greater protections than those that have not. For that reason, it is very common for businesses to seek to register their trademarks with the U.S. Patent and Trademark Office (USPTO).

When Simon Tam and his bandmates sought to register “The Slants” as a federal trademark, however, the USPTO refused, citing the Lanham Act’s ban on the registration of disparaging terms. Despite Tam’s argument that he intended to “reclaim” the term, the USPTO determined that “The Slants” would likely be perceived as disparaging towards persons of Asian descent. Tam sued, alleging that the USPTO’s refusal to register the trademark violated his First Amendment rights to free expression.

The provision against trademark registration of disparaging terms was added to the statute in 1946 and had been applied frequently by the USPTO as a basis for refusing to register certain terms. It has proven to be very difficult, however, for courts and the USPTO to identify which terms are barred from registration on grounds of disparagement. As a lower court noted in Tam’s case:

The PTO denied the mark HAVE YOU HEARD SATAN IS A REPUBLICAN because it disparaged the Republican Party, but did not find the mark THE DEVIL IS A DEMOCRAT disparaging. The PTO registered the mark FAGDOG three times and refused it twice, at least once as disparaging. The PTO refused to register the marks FAG FOREVER A GENIUS!, and MARRIAGE IS FOR FAGS, but allowed the mark F*A*G FABULOUS AND GAY. And PTO examiners have registered DANGEROUS NEGRO, CELEBRETARDS, STINKY GRINGO, MIDGETMAN, and OFF-WHITE TRASH—all marks that could be offensive to a substantial composite of the referenced group.

 

On the government’s appeal, the sole question before the Supreme Court was whether Tam was entitled to register “The Slants” as a trademark, not (as some sources have erroneously suggested) whether he was entitled to use that name at all. By a vote of 8–0 (Justice Gorsuch not participating), the Court struck down the Lanham Act’s provision forbidding the registration of disparaging terms as trademarks. Although the decision was unanimous, the Court was evenly divided, 4-to-4, on the exact reason why the statute was unconstitutional.

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Simon Tam at the U.S. Supreme Court (photo: Simon Tam)

In an opinion for himself, Chief Justice Roberts, and Justices Thomas and Breyer, Justice Alito rejected several arguments the government articulated to try to uphold the statute. Although prior cases had allowed the government to withhold financial subsidies from conduct it deemed objectionable, Justice Alito found that trademark registration was not a form of subsidy because it did not involve any governmental decision about spending particular funds. Indeed, Justice Alito noted, trademark registrants pay fees to the government to obtain and maintain their registrations, not the other way around. Justice Alito also rejected a related argument that trademark registration was a government program that had only incidental effects on speech. Finally, the government argued that trademark registration was a form of “commercial speech,” which customarily receives less expansive First Amendment protection under the standard of Central Hudson Gas & Elec. Corp. v. N.Y. Public Serv. Comm’n (1980). But even the Central Hudson test, Justice Alito noted, required speech regulations to be “narrowly drawn,” which the Lanham Act’s ban on registration of disparaging marks was not.

In an opinion joined by Justices Ginsburg, Sotomayor, and Kagan, Justice Kennedy identified the statute’s key flaw somewhat differently. In his view, the dispositive issue was viewpoint discrimination: the statute forbid registration only of disparaging marks, not registration of marks supporting or praising persons or groups. To place differing burdens on speech based upon “the Government’s disapproval of a subset of messages it finds offensive,” Justice Kennedy wrote, “is the essence of viewpoint discrimination.” Allowing the government to impose burdens only “against speech found offensive to some portion of the public” would risk being “turned against minority and dissenting views to the detriment of all.”

In a statement celebrating the Court’s ruling, the band characterized the decision as an important step in allowing minority communities to reclaim language that had been used to marginalize and subjugate them, writing:

For too long, people of color and the LGBTQ community have been prime targets under Section 2(a) of the Lanham Act, simply because we believe in the deliberate disarmament of toxic language and symbols. We’ve had to endure the Trademark Office working in isolation of our groups to navigate the troubled waters of identity politics and shifting language and culture, without any sense of cultural competency, consistency in enforcement of rules, and only giving the benefit of doubt to the most privileged members of society. Now, Americans can decide who should prevail in the marketplace of ideas rather than a lone examining attorney. Oppressed groups will no longer have their identities shaped the sensibilities of dominant ones.

But the Tam decision will likely also face significant criticism from other minority groups. Importantly, nothing in any of the Court’s opinions limits Tam’s holding to those registrants who, like Tam himself, wish to reclaim a disparaging term and render it inoffensive. The Court’s conclusion that Section 2(a) of the Lanham Act is facially unconstitutional means that the statute may not be invoked even to bar registration of disparaging marks by registrants who are indifferent to, or even wish to promote, their disparaging character. For example, Native American organizations have been engaged in litigation for many years seeking to cancel the trademark registration held by the Washington Redskins football team. The Supreme Court’s decision in Tam surely strengthens the “Washington Redskins” mark against cancellation despite its disparaging character.

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A 2014 march protesting the Washington Redskins NFL team in Minneapolis, MN (photo: flikr.com user Fibonacci Blue [CC-BY-2.0])
Other parts of the Lanham Act, such as the statute’s ban on registering “immoral” or “scandalous” terms, or dilution of marks, may also be newly vulnerable to legal challenge under the reasoning of Tam. The most difficult question to answer is whether we are entering a new era of constitutional restraints on trademark law—heretofore a largely practical, commercial subject that has generally stood somewhat apart from the ebb and flow of changes in constitutional doctrine. The extent to which the policy choices Congress made in the Lanham Act decades ago may now be scrutinized for their effects on individual expression or other constitutional interests will remain hotly debated for years to come.

Professor Armstrong’s teaching and research focus on copyright and other intellectual property law, digital rights management and other legal issues arising from networked communications technologies, licensing and other issues surrounding free and open-source software, and statutory interpretation.  He co-authors Info/Law, a blog focusing on legal issues arising from the domain of high technology and the Internet, with Professor William McGeveran of the University of Minnesota Law School and Professors Derek and Jane Bambauer of the University of Arizona James E. Rogers College of Law.

Author: Verna L. Williams

Interim Dean, Nippert Professor of Law, co-founder and co-director of Cincinnati Law's Center for Race, Gender, and Social Justice. Professor Williams joined Cincinnati Law's faculty in 2001. She teaches Constitutional Law; Gender and the Law; and Family Law. Her research examines the intersection of race and gender in law and society.

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