By Carl C. Butzer, Emilio Nicolas, & Michael Roberts
Today, the U.S. Supreme Court held the “disparagement clause” – a federal trademark provision that prohibits the registration of a trademark “which may disparage” . . . persons, . . . , institutions, . . . beliefs, or national symbols, . . .” – violates the First Amendment. In doing so, the Court issued a strong reminder that “the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’”
Today’s decision holds important implications for the Washington Redskins, which will see the reversal of a judicial decision to cancel several of its federal trademark registrations, as well as the federal government, which must give more careful consideration to the enactment of laws that reflect its disapproval of a subset of messages that it finds offensive.
The case stems from the Asian-American music group “The Slants,” which was so named in an attempt to “‘reclaim’ and ‘take ownership’ of stereotypes about people of Asian ethnicity.” In 2011, the United States Patent & Trademark Office (PTO), citing the disparagement clause, refused to federally register the mark THE SLANTS because there is a “substantial composite” of persons who find the term offensive.
On appeal, both the Trademark Trial and Appeal Board (TTAB) and the Federal Circuit Court of Appeals affirmed the PTO’s refusal to register despite the rationale behind the name. Following an en banc re-hearing, however, the Federal Circuit changed course and reversed the TTAB holding, holding that the disparagement clause was unconstitutional under the First Amendment. The Federal Circuit reasoned that the clause “has a chilling effect on speech” by permitting the Government to deny the valuable substantive and procedural rights attributable to a federal trademark registration if the content of the message expressed by the mark constitutes “a message that the government finds disparages any group.” The Supreme Court granted certiorari to resolve the free speech and intellectual property conundrum, leading to today’s decision.
In Matal v. Tam, No. 15–1293 (S.Ct. June 19, 2017), the Supreme Court affirmed the Federal Circuit decision in Lee v. Tam, 808 F.3d 1321 (Fed. Cir. 2015), and held that the Lanham Act’s long-standing prohibition against the federal registration of trademarks that might “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead,” was unconstitutional because it offended a “bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” The Supreme Court also unequivocally confirmed that “[t]rademarks are private, not government, speech,” and that, “as this case illustrates, trademarks often have an expressive content.”
Writing for the High Court, Justice Alito explained that trademarks do not constitute government speech by virtue of their registration, especially when the PTO has “made it clear that registration does not constitute approval of a mark;” that trademarks are private speech; and that trademarks themselves can contain expressive content, which suggests that copyright law is not exclusively “the engine of free expression.” Justice Alito also confirmed that the disparagement clause required “viewpoint discrimination,” and that “the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.” Justice Alito also rejected the Government’s position that the clause is “an anti-discrimination clause.” Rather, as Justice Alito wrote, the clause is “a happy-talk clause.”
In the end, Justice Alito wrote clearly and unequivocally that the disparagement clause violates the Free Speech Clause of the First Amendment. Chief Justice Roberts and Justices Kennedy, Ginsburg, Breyer, Sotomayor, Kagan, and Thomas all concurred in the Court’s judgment affirming the Federal Circuit. Justice Gorsuch took no part in the consideration or decision of the case.
Likely Effects of the Court’s Opinion
While affording trademark owners a greater opportunity to protect their branded expressions as a matter of intellectual property and constitutional law, today’s decision also limits the ability of others to use the legal system as a means to dispose of brands they might find distasteful or offensive. This dilemma is front and center with the Washington Redskins’ highly publicized case over the federal registration of its controversial team name. In 2014, the United States District Court for the Eastern District of Virginia held that six of the Washington Redskins’ trademark registrations for its team name and certain variations thereof should be cancelled as disparaging to Native Americans under the disparagement clause. The Fourth Circuit Court of Appeals suspended its review of the district court’s decision pending the outcome of Matal v. Tam. Now that the disparagement clause has been held unconstitutional, the Fourth Circuit is certain to reverse the district court’s decision, which leaves those who find the team’s name offensive to seek change by other means.
Today’s decision could also open the door for possible First Amendment challenges to other attempts by the Government to deny the registration of intellectual property rights involving expression likely to cause offense. As Justice Alito explained, the disparagement clause “[wa]s not ‘narrowly drawn’ to drive out trademarks that support invidious discrimination. The clause reaches any trademark that disparages any person, group, or institution. . . . It is not an anti-discrimination clause; it is a happy-talk clause.” The Court appears deeply concerned about the Government’s ability to impose what is acceptable expression and what is not.
The opinions expressed are those of the authors and do not necessarily reflect the views of the firm, its clients, or any of its or their respective affiliates. This article is for informational purposes only and does not constitute legal advice