The Freedom of (Disparaging) Speech

Copyright Law

On December 22, 2015, the U.S. Court of Appeals for the Federal Circuit (CAFC) announced its decision in the trademark dispute of In re Tam. I must admit that I was extremely pleased to see the In re Tam result, because it confirmed something that I had long suspected: That the disparagement provision of Section 2(a) of the Lanham Act is an unconstitutional restriction on the freedom of speech.

Section 2(a) of the Lanham Act, codified at 15 U.S.C. §1052(a), provides that a trademark shall be refused registration on the Principal Register if it “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage . . .persons, living or dead . . .or bring them into contempt or disrepute . . .” This provision is in direct conflict with the U.S. Constitution. The First Amendment commands that “Congress shall make no law . . .abridging the freedom of speech, or of the press.” The freedom of speech is by no means an unlimited freedom – for example, the government may regulate commercial speech. However, the CAFC decision reasons that the government cannot proscribe disparaging trademarks by arguing that to do so is a permissible restriction placed upon commercial speech. When trademarks are not being used to confuse or deceive consumers, they are perhaps better categorized as forms of expressive – not commercial – speech. Prohibitions on scandalous and immoral marks are forms of content-based restrictions on speech. The prohibition on disparaging marks takes it one step further as a viewpoint-based restriction on speech. In permitting one viewpoint on a topic, but disallowing another, the restriction skews public debate by granting one side an advantage at the expense of the opposing view. Disparaging marks are denied registration on the Principal Register while marks that serve to extol or glorify the same composite of the population may obtain registration.

Speaking of registration, registering a trademark on the Principal Register is not a prerequisite to use that mark. The cancellation or denial of registration does not prevent a mark owner from using the mark. This is perhaps the greatest hurdle to finding Section 2(a) unconstitutional. Past court decisions have held that the denial of registration does not suppress the expression in question. However, the CAFC correctly recognizes that registration of a trademark provides the mark owner with economic incentives and advantages. The owner of a registered trademark has the ability to bring additional causes of action against alleged infringers and has the possibility of recovering higher damages following litigation. Therefore, the economic burden of having an unregistered mark, or having a mark’s registration cancelled, effectively chills speech, if not preventing it outright.

The CAFC opinion makes it quite clear that its declaration of unconstitutionality applies only to the disparagement provision of Section 2(a), but the court predicts that the “immoral” and “scandalous” provisions are likely unconstitutional as well. The mandate that registered marks not be disparaging, immoral, or scandalous is completely unrelated to the consumer protection purpose of trademark law. For a discussion of the effect that these provisions have on trademarks representing the LGBT community, I recommend the article “Semiotics of the Scandalous and the Immoral and the Disparaging: Section 2(A) Trademark Law After Lawrence v. Texas” by Professor Llewellyn Gibbons.

Any discussion of disparaging trademarks would be incomplete without mention of the infamous Washington Redskins mark. The Redskins mark was found to be disparaging to Native Americans and was subsequently cancelled. Under Section 2(a)’s disparagement provision and relevant case law, this was undoubtedly the proper result – the Redskins mark is quite blatantly disparaging. The only problem is the glaring unconstitutionality of the disparagement provision.

The World Trademark Review recently reported that Simon Tam (founder of the rock band “The Slants” whose “disparaging” trademark was at issue in In re Tam) resents that the landmark decision immediately prompted comparisons to the Washington Redskins case. I don’t believe legal commentators are in the wrong in making these comparisons as the two cases are in similar legal situations and present similar legal issues. However, the two cases do present very different social and cultural issues. Tam is seeking to use “The Slants” mark to “reclaim” the disparaging phrase. Meanwhile, I don’t pretend to understand why the Washington Redskins continue to use their trademark, particularly in the face of fierce opposition.

Now do not misunderstand me – I don’t necessarily condone the use of disparaging trademarks. I imagine it’s not the best business decision to choose a trademark that offends and alienates a significant portion of the population. However, if the First Amendment is to have any meaning at all, it must protect a wide range of expressive speech – it must protect both the prejudice and the profound, and let public opinion have the final say.


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