Slants Supreme Court Case Slays Ban on Registration of Disparaging Trademarks

I am officially a big fan of The Slants.  I’ve never seen them in concert.  I don’t own any of their albums (I’ve never even downloaded any of their individual songs).  I’m actually still not entirely sure what “Chinatown Dance Rock” really is.

But I will forever be indebted to Simon Shiao Tam and crew.  In the context of trying to “reclaim” the term “slant” by incorporating it into their band name, The Slants have restored – or at least solidified – significant aspects of the First Amendment. They took their fight against the “disparagement clause” of the Lanham Act (15 U.S.C. § 1052(a)), which prohibits the registration of trademarks that may “disparage…or…bring into contemp[t] or disrepute” any “persons, living or dead,” to the Supreme Court; the resulting decision strikes that law as facially unconstitutional.

I’ve written about this particular case (and other related lawsuits involving the disparagement clause brought by parties that I’m not as enamored of) a few times in the past, so only a brief summary of the facts is necessary here.

Let’s start with the origin of the band’s name.  I can’t do the story justice, so I’ll leave it to a real Justice, Samuel Alito:

Simon Tam is the lead singer of “The Slants.” He chose this moniker in order to “reclaim” and “take ownership” of stereotypes about people of Asian ethnicity. The group “draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes” and has given its albums names such as “The Yellow Album” and “Slanted Eyes, Slanted Hearts.” (citations omitted).

Tam filed an application with the United States Patent and Trademark Office (USPTO) to register “The Slants” as a federal trademark. A USPTO examining attorney rejected the application because “there is . . . a substantial composite of persons who find the term in the applied for mark offensive.”  Attempts to overturn that ruling at the USPTO and the Trademark Trial and Appeal Board (TTAB) were unsuccessful.

Tam had better luck in federal court, where the United States Court of Appeals for the Federal Circuit found the disparagement clause to be facially unconstitutional under the First Amendment, mainly because rejecting disparaging marks while allowing registration of similar, but non-disparaging, marks constitutes “viewpoint discrimination” against certain speech. The government asked the Supreme Court to review the lower court decision. The Supreme Court granted certiorari and heard oral argument on January 18, 2017.

Unfortunately, I was out of town and couldn’t attend the oral argument, which prevented me from offering my usual prediction as “The Supreme Court Swami.”  I can assure you, however, that I would have foreseen the June 19, 2017 decision in favor of The Slants in Matal v. Tam which would be written by Justice Alito, speaking for a unanimous court on the key issues, and for only a portion on others. Because, really, who wouldn’t have seen that coming…

It’s probably easiest to explain the Court’s opinion and the separately written opinions in their component parts, after which I’ll offer a few thoughts on the importance of this case in the greater scheme of things.

Since you can’t tell the players without a scorecard, here’s a little chart which may make it easier to follow along. The trademark symbol (®) means the Justice in question joined in Justice Alito’s written opinion with regard to that section:

(The “N/A” for Justice Gorsuch is because he didn’t participate in the case, which was argued before he joined the Court).

Justice Kennedy wrote a concurrence in which he was joined by Justices Ginsburg, Kagan and Sotomayor. I’ll explain that concurring opinion, and Justice Thomas’ separate opinion, after I go through Justice Alito’s work on a section-by-section basis:

Section 1 (unanimous):  This is just the basic factual background of the case; it’s not really worth discussing in detail here.

Section II (all except Justice Thomas): The Court rejects the argument that it could decide this case on narrower, non-constitutional grounds.  Tam had argued that the disparagement clause does not apply to trademarks that disparage racial or ethnic groups and instead only prohibits the registration of marks that disparage individual “persons.”  He presumably advanced this argument as a hedge against the idea that the Court does not like issuing wide-sweeping constitutional proclamations unless absolutely necessary, offering the Justices an “out” to rule in his favor without striking down a decades-old federal statute.

Justice Alito rejected Tam’s argument, in part because Tam had never raised this before the USPTO or in lower courts (in fact, the Court declined to grant certiorari on the issue when it took the case).  Alito nonetheless spoke briefly to this question to note that a mark which disparages a substantial percentage of the members of a racial or ethnic group necessarily disparages the individual persons within that group.  So Tam loses this battle but, as we already know, wins the war.

Section III-A (unanimous):  We get to the meat of the decision.  The Court holds that the USPTO is not engaged in “government speech” (which the government can regulate as it sees fit) when it issues trademark registrations.  Among the key reasons supporting this conclusion:

The federal government itself does not invent – or even edit – the marks being registered;

If the federal registration of a trademark were government speech, the government would be “babbling prodigiously and incoherently.” Justice Alito provides several examples of trademark registrations issued by the USPTO which provide directly contradictory messages (comparing “Abolish Abortion” with “I Stand with Planned Parenthood” as well as issuing both “Global Warming is Good” and “A Solution to Global Warming”).

The USPTO has made it clear that its registration of a mark does not mean it approves of the mark.

A comparative example for this section also proves helpful: “[i]f federal registration makes a trademark government speech and thus eliminates all First Amendment protection, would the registration of the copyright for a book produce a similar transformation?”  The danger of such a result should be apparent to just about anyone.

Section III-B (Alito, Roberts, Thomas and Breyer):  Having unanimously held that “[t]rademarks are private, not government, speech,” Justice Alito moves to the government’s next argument:  that the government can regulate this speech because it is “government subsidized speech.”

Justices Kennedy, Ginsburg, Sotomayor and Kagan generally agree with the rejection of this theory, but not Justice Alito’s specific rationale — that the USPTO does not spend its own (or any government) money to parties seeking registration of a trademark. Thus, Justice Alito disputed the comparison to instances in which the government could legally take a position on one side of an issue (such as providing money for family planning services, providing grants to artists under the NEA or funding public libraries).

Section III-C (Alito, Roberts, Thomas and Breyer):  Justices Kennedy, Ginsburg, Sotomayor and Kagan again agreed in theory, but not exact rationale, with the other four Justices on the issue of whether federal trademark registrations are a “government program.” Justice Alito states that the government’s argument here is really nothing more than an attempt to merge the arguments put forth in support of trademark registrations being government speech and/or government subsidies.

Section IV (Alito, Roberts, Thomas and Breyer): The government throws up one last hail mary (pun intended for reasons I shouldn’t have to go into related to names I won’t mention) to save the disparagement clause from being crushed under the weight of its viewpoint discrimination: that a trademark registration constitutes “commercial speech” and is therefore eligible for less protection under the First Amendment. Again, this part of the decision is limited to the “four amigos” (though I’m sure this combination of Justices has never before been referenced as such).

Justice Alito doesn’t even touch the question of whether a trademark is commercial speech, in part because the trademark in this case shows that the commercial speech/expressive speech line is a really hard one to draw, but mainly because even if this were commercial speech, the government’s clear (and clearly unconstitutional) viewpoint discrimination goes way too far.

Justice Kennedy’s concurrence (joined by Justices Ginsburg, Kagan and Sotomayor) explains why the disparagement clause is so clearly viewpoint discrimination that it renders the discussion of III-B, III-C and IV moot. As Justice Kennedy explains, the disparagement clause allows an applicant to “register a positive or benign mark, but not a derogatory one.  The law thus reflects the Government’s disapproval of messages it finds offensive. This is the essence of discrimination.” He rejects the government’s argument that the law is viewpoint neutral because it applies equally to any derogatory mark, regardless of who the mark offends, saying “to prohibit all sides from criticizing their opponents makes a law more viewpoint based, not less so.”

Justice Thomas wrote a very brief opinion (which no one joined) explaining that (1) he departed from the otherwise-unanimous Part II because he wouldn’t have even touched the issue given that the Court declined certiorari in the first place and (2) he doesn’t think there should be a distinction between commercial speech and expressive speech: both should be given equal protection under the First Amendment (though he agrees that the disparagement clause violates the First Amendment either way).

So why is this case so important?  3 reasons:

• The court is abundantly clear that viewpoint discrimination violates the First Amendment, regardless of type of speech involved or the standard of review that is applied. Justice Alito waxes eloquent on several different occasions.

Not only does he say:

Our cases use the term “viewpoint” discrimination in a broad sense and in that sense, the disparagement clause discriminates on the bases of “viewpoint.” To be sure, the clause evenhandedly prohibits disparagement of all groups. It applies equally to marks that damn Democrats and Republicans, capitalists and socialists, and those arrayed on both sides of every possible issue. It denies registration to any mark that is offensive to a substantial percentage of the members of any group. But in the sense relevant here, that is viewpoint discrimination: Giving offense is a viewpoint.

But he follows a few pages later with:

Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express “the thought that we hate.”

Strong words – and yet, as I note above – Justice Kennedy doesn’t think Justice Alito goes far enough. Perhaps speaking to the times we are in, Justice Kennedy says:

The First Amendment’s viewpoint neutrality principle protects more than the right to identify with a particular side. It protects the right to create and present arguments for particular positions in particular ways, as the speaker chooses. By mandating positivity, the law here might silence dissent and distort the marketplace of ideas

• The Court limits the breadth of its 2015 decision in Walker v. Texas Div., Sons of Confederate Veterans, Inc., which the United States District Court for the Eastern District of Virginia relied on in ruling for the government in an ancillary case (which I shall not name). If extended further, the Walker decision threatened to blow apart the First Amendment by allowing government to control just about any discussion; Justice Alito made clear that Walker was the outer limit, not the starting point, for government speech:

This brings us to the case on which the Government relies most heavily, Walker, which likely marks the outer bounds of the government-speech doctrine. Holding that the messages on Texas specialty license plates are government speech, the Walker Court cited three factors distilled from Summum. First, license plates have long been used by the States to convey state messages. Second, license plates “are often closely identified in the public mind” with the State, since they are manufactured and owned by the State, generally designed by the State, and serve as a form of “government ID.” Third, Texas “maintain[ed] direct control over the messages conveyed on its specialty plates.”). As explained above, none of these factors are present in this case (citations omitted).

• Finally, the Court decided not to mess with the definition of commercial speech or the governing test set forth in Central Hudson Gas & Elec. Corp. v. Public Serv. Comm’n of N. Y. Not that I’m in love with Central Hudson, but this highly technical case wasn’t the situation for the Court to revisit the entire commercial speech doctrine.

Though there are certain legal steps to be taken, one could certainly assume “The Slants ™” will soon become “The Slants ®.”  One would also assume other marks closely associated with this case will claim victory as well – in fact, the owners of those marks apparently have already set their plans in motion, claiming a victory the only way they’ve known how in recent years. #WinningOffTheField