The Case Formerly Known As Lee v. Tam

Trademark Law

Today, the Supreme Court of the United States issued its long-anticipated opinion in the case of Matal v. Tam (no longer Lee v. Tam since the recent resignation of Michelle Lee from her position as Director of the USPTO), after holding oral argument in the case in January of this year. For more background on my thoughts on the case and some of its prior procedural history, see my previous posts here and here.

The ultimate question that Tam raised was whether the clause of section 2(a) of the Lanham Act which prohibits federal registration to trademarks “which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute,” violates the Free Speech Clause of the Constitution.

Today, SCOTUS answered that question with a resounding yes.

The majority opinion, authored by Justice Alito, held that the disparagement clause of section 2(a) is unconstitutional as it “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” (Note that some commentators are likely to take issue with use of the word offend. This is fair, as ‘disparagement’ and ‘offense’ are distinct concepts here.)

The majority first dismissed the rather weak argument asserted by Tam that the disparagement clause does not extend to marks that disparage racial or ethnic groups, and The Slants are therefore exempt from the provision.

The Court then went on to explain that trademarks are private speech, not government speech, with the quite memorable line “if the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently.” No, the Federal Government is not telling you to “Just Do It”.*

Additionally, in the majority view, trademarks are not a form of government subsidy, nor should they be subjected to their own “government program doctrine”.

In what I expect to be a point of contention with many, the Court’s opinion fails to answer the question of whether trademarks are commercial speech. The Court reasons that even if trademarks are commercial speech, the disparagement clause would still not survive the “relaxed scrutiny outlined in Central Hudson. . .”. This is because the clause is easily classified as viewpoint discrimination and seeks to regulate trademarks far more broadly than necessary.

In a concurring opinion, Justice Kennedy (joined by Justices Ginsburg, Sotomayor, and Kagan), further explains that the disparagement provision constitutes viewpoint discrimination. Justice Kennedy explains that “The central purpose of trademark registration is to facilitate source identification.” And that “whether a mark is disparaging bears no plausible relation to that goal.”

Justice Thomas also wrote a concurrence in which he asserts that strict scrutiny ought to apply in any instance where “the government seeks to restrict truthful speech in order to suppress the ideas it conveys.”

As for my thoughts, having spent well over two years now researching and debating the issue with anyone willing to listen, I am quite pleased with the ultimate decision of the Court. However, I find at least one key question went unanswered: the “no-use barred” argument. Past challenges to the Constitutionality of 2(a) have failed because courts have reasoned that a denial of registration is not a denial of use. Trademark owners are still very much entitled to use their unregistered trademarks. While I firmly believe that a denial of registration creates a financial disincentive that makes speech more difficult though not barring it outright, I would have liked to see some guidance from the highest court on this issue.

In the aftermath of Tam, perhaps we will see more disparaging trademarks making their way into the streams of commerce. Perhaps we will see future litigation over the related “scandalous” and “immoral” provisions. But I believe that the most important thing to remember is that just because the First Amendment prevents government restrictions on speech does not relieve citizens of their responsibility to consider the effects of their words. Just because something can be said does not necessarily mean that it should be said. I’m looking at you, Washington Redskins.

* You can read the full opinion here.

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