Dean Rodney A. Smolla, Delaware Law School, Widener University
July 27, 2015

In an IP Viewpoints piece I posted in April 2015, I expressed the hope that First Amendment principles would be brought to bear against the Patent and Trademark Office in its efforts to cancel the Washington Redskins’ trademark registration.  In that article I argued that the PTO’s cancellation of the registration of the Redskins’ trademark violated the First Amendment.

On July 8, 2015, U.S. District Judge Gerald Bruce Lee of the United States District Court for the Eastern District of Virginia took a contrary position, sustaining the cancellation of the Washington Redskins trademark registration, and rejecting the First Amendment arguments advanced by Pro-Football, Inc., owners of the Redskins’ marks.1

In this article I explain why I think the holding of Judge Lee is wrong, and ought to be reversed on appeal.  In reaching his decision Judge Lee relied heavily on a recent Supreme Court decision.  In Walker v. Texas Division, Sons of Confederate Veterans, Inc.2 the Supreme Court invoked the “government speech” doctrine to hold that the State of Texas could deny the request of the Sons of Confederate Veterans for a specialty license plate featuring the Confederate flag.  Poignantly and sadly, by an almost macabre coincidence the opinion of the Court was issued on June 18, 2015, the very morning the nation awoke to the shocking news of the massacre of nine African Americans at the Emmanuel African Methodist Episcopal Church in Charleston, S.C., in which the perpetrator, Dylann Roof, brandished the Confederate flag and symbols of apartheid from South Africa and Rhodesia in the course of his violent agenda of racism and hate.

Walker was a close 5-to-4 decision.  Justice Breyer wrote the opinion of the Court.  The Court’s liberal wing, Justices Breyer, Ginsburg, Kagan, and Sotomayor, all voted in favor of Texas’s rejection of the Confederate flag plate.  Justice Alito, joined by Chief Justice Roberts, Justice Scalia, and Justice Kennedy, dissenting, argued that the Confederate plate design was private speech and Texas’s rejection of the plate was viewpoint discrimination in violation of the First Amendment.  Justice Clarence Thomas provided the key swing vote, and he sided with his liberal colleagues, defecting from the conservative wing to which he is usually loyal.

Judge Lee in the Washington Redskins decision reasoned that just as a license plate is government speech, so too is trademark registration government speech, and thus the PTO may deny registration to the Redskins on the grounds that the mark is deemed offensive, just as Texas could deny acceptance of a Confederate license plate on the ground that the Confederate flag is deemed offensive.

So what is wrong with this picture?  The flaw in Judge Lee’s analysis is that the government’s refusal to issue a license plate is not the same as the government’s refusal to issue a trademark registration.  Whether or not a license plate is “government speech” is a close legal question (witness the 5-to-4 vote), but it is a decided question.  Walker held that license plates are government speech, and that is now the law of the land.

An examination of the Supreme Court’s reasoning in Walker, however, reveals why the rationale of that case should not be extended to trademark registration.  The majority opinion written by Justice Breyer began with a proud pronouncement regarding the freedom the government enjoys to engage in content decisions when the government itself is speaking: “When government speaks, it is not barred by the Free Speech Clause from determining the content of what it says.”  Throughout its opinion the Court in Walker relied heavily on its priorleading government speech decision, a 2009 case entitled Pleasant Grove City v. Summum,3 in which the Court held that the government did not have to accept a privately donated religious monument on government property.  Decisions over what monuments to allow on government property, the Court in Summum reasoned, are a form of “government speech,” and normally beyond the reach of the First Amendment.  Walker extended Summum’s reasoning to license plates.  The government speech doctrine, the Court in Walker reasoned, “reflects the fact that it is the democratic electoral process that first and foremost provides a check on government speech.”4  Thus the Court observed that “government statements (and government actions and programs that take the form of speech) do not normally trigger the First Amendment rules designed to protect the marketplace of ideas.”  Drawing heavily on this notion of a political process check, the Court reasoned that the First Amendment protects the private rights of citizens to exercise free speech rights in order to influence government, which itself then may speak in a manner responsive to the mandate of the body politic.

As the Court saw it, this understanding of the First Amendment was essential to the very working of government, which otherwise would be paralyzed:

Were the Free Speech Clause interpreted otherwise, government would not work. How could a city government create a successful recycling program if officials, when writing householders asking them to recycle cans and bottles, had to include in the letter a long plea from the local trash disposal enterprise demanding the contrary?  How could a state government effectively develop programs designed to encourage and provide vaccinations, if officials also had to voice the perspective of those who oppose this type of immunization?  “[I]t is not easy to imagine how government could function if it lacked the freedom” to select the messages it wishes to convey.

The Court reasoned that any other rule would give citizens an untenably broad First Amendment veto over government policy.  Even the rule against viewpoint discrimination is applied with a different lens when examining government speech, the Court in Walker observed, noting that the Court had “refused ‘[t]o hold that the Government unconstitutionally discriminates on the basis of viewpoint when it chooses to fund a program dedicated to advance certain permissible goals, because the program in advancing those goals necessarily discourages alternative goals.’”5  With the exception of government speech that might constitute an “establishment of religion” and thus run afoul of a different First Amendment provision, the Establishment Clause, or the unusual case in which the government is forcing a private citizen to convey a government message against the citizen’s will (such as forcing a conscientious objector to display on a license plate the motto “Live Free or Die”), Walker held that “as a general matter, when the government speaks it is entitled to promote a program, to espouse a policy, or to take a position.”

Whether or not to treat a specialty license plate as “private speech” of citizens or “government speech” was a closer question.  The majority held that the Texas specialty license plate program constituted government speech for four reasons.  “First, the history of license plates shows that, insofar as license plates have conveyed more than state names and vehicle identification numbers, they long have communicated messages from the States.”  States, the Court observed, “have used license plate slogans to urge action, to promote tourism, and to tout local industries.”  Texas had often engaged in such license plate messaging.  Secondly, the Court reasoned, Texas license plate designs are often closely identified in the public mind with the State of Texas, including the facts that the state places the name “TEXAS” in large letters at the top of every plate.  (No surprise, everything’s big in Texas.)  Texas vehicle owners are required by law to display license plates, and all Texas license plate are issued by the State.  Texas license plates, the Court reasoned, are “essentially, government IDs.”  Moreover, the private person or entity seeking a specialty plate, the Court reasoned, is likely to be intentionally playing on the suggestion that Texas has endorsed the message on the plate:

Indeed, a person who displays a message on a Texas license plate likely intends to convey to the public that the State has endorsed that message.  If not, the individual could simply display the message in question in larger letters on a bumper sticker right next to the plate.  But the individual prefers a license plate design to the purely private speech expressed through bumper stickers.  That may well be because Texas’s license plate designs convey government agreement with the message displayed.

The Court in Walker also heavily emphasized the degree of direct control Texas maintained over the messages conveyed on its specialty plates, citing rules on design, the fact that the DMV “Board must approve every specialty plate design proposal before the design can appear on a Texas plate,” an authority that had been actively exercised.6  The Court noted that Texas was free to take sides on the issues it chose to promote or not promote in exercising this approval:

This final approval authority allows Texas to choose how to present itself and its constituency.  Thus, Texas offers plates celebrating the many educational institutions attended by its citizens….  But it need not issue plates deriding schooling.  Texas offers plates that pay tribute to the Texas citrus industry….  But it need not issue plates praising Florida’s oranges as far better.  And Texas offers plates that say “Fight Terrorism.” …  But it need not issue plates promoting al Qaeda.

The Court in Walker rejected the claim that the plates were private speech because the designs and slogans were proposed by private parties.  The Court rejected the argument that the license plate regime constituted a public forum.  Clearly the plates were not a traditional public forum, the Court reasoned, such as a street or a park.  Nor did the plates program constitute a designated public forum,8 or a limited public forum, or even a nonforum.  The program, rather, was not a forum of any sort at all, but the government engaged in its own speech:

With respect to specialty license plate designs, Texas is not simply managing government property, but instead is engaging in expressive conduct.  As we have described, we reach this conclusion based on the historical context, observers’ reasonable interpretation of the messages conveyed by Texas specialty plates, and the effective control that the State exerts over the design selection process.  Texas’s specialty license plate designs “are meant to convey and have the effect of conveying a government message.” …  They “constitute government speech.”

Having reached the conclusion that the Texas specialty plates constituted government speech, the Court rejected the Sons of Confederate Veterans’ First Amendment challenge.

Justice Alito, joined by Chief Justice Roberts, and Justices Kennedy and Scalia, dissented.  Justice Alito’s dissent opened with the lament that “[t]he Court’s decision passes off private speech as government speech and, in doing so, establishes a precedent that threatens private speech that government finds displeasing.”  Justice Alito argued that in First Amendment cases, “the distinction between government speech and private speech is critical.”  As Justice Alito saw it, the Court’s holding that all the privately created messages on the many specialty plates issued by the State of Texas convey a government message could not possibly be correct.

He offered this test:

Here is a test.  Suppose you sat by the side of a Texas highway and studied the license plates on the vehicles passing by.  You would see, in addition to the standard Texas plates, an impressive array of specialty plates.  (There are now more than 350 varieties.)  You would likely observe plates that honor numerous colleges and universities.  You might see plates bearing the name of a high school, a fraternity or sorority, the Masons, the Knights of Columbus, the Daughters of the American Revolution, a realty company, a favorite soft drink, a favorite burger restaurant, and a favorite NASCAR driver.

As you sat there watching these plates speed by, would you really think that the sentiments reflected in these specialty plates are the views of the State of Texas and not those of the owners of the cars?  If a car with a plate that says “Rather Be Golfing” passed by at 8:30 am on a Monday morning, would you think: “This is the official policy of the State – better to golf than to work?”  If you did your viewing at the start of the college football season and you saw Texas plates with the names of the University of Texas’s out-of-state competitors in upcoming games – Notre Dame, Oklahoma State, the University of Oklahoma, Kansas State, Iowa State – would you assume that the State of Texas was officially (and perhaps treasonously) rooting for the Longhorns’ opponents?  And when a car zipped by with a plate that reads “NASCAR – 24 Jeff Gordon,” would you think that Gordon (born in California, raised in Indiana, resides in North Carolina) is the official favorite of the State government?

The Court says that all of these messages are government speech.  It is essential that government be able to express its own viewpoint, the Court reminds us, because otherwise, how would it promote its programs, like recycling and vaccinations?  Ante, at ____ – ____.  So when Texas issues a “Rather Be Golfing” plate, but not a “Rather Be Playing Tennis” or “Rather Be Bowling” plate, it is furthering a state policy to promote golf but not tennis or bowling.  And when Texas allows motorists to obtain a Notre Dame license plate but not a University of Southern California plate, it is taking sides in that long-time rivalry.8

There is undeniable power to Justice Alito’s dissent, and his assertion that the Walker Court’s capacious interpretation of government speech threatens to take “a large and painful bite out of the First Amendment.”

Now, back to the Redskins’ trademark registration.  When the decision is appealed to the United States Court of Appeals for the Fourth Circuit, or perhaps, ultimately, to the Supreme Court, will the analogy between license plates and trademark registration hold up?  I doubt it.  We may safely assume that in the Supreme Court, Justices Alito, Scalia, Kennedy, and Chief Justice Roberts would already be aligned with the Redskins, given their views in Walker.  Beyond that, however, I think it likely that one or more justices who formed the majority in Walker would migrate to the view that trademark registration is not government speech.

Trademark registration, like copyright registration, has not historically been understood in our culture and our law as “government speaking,” or to use the parlance of Walker, as “government IDs.”  Trademark is a common-law right that comes into existence through use by private parties.  Trademark registration, like trademark itself, is the bestowal of certain legal benefits to private individuals and entities regarding the private expression of those individuals and entities.  Whereas it is at least understandable that a license plate required by the government to be affixed to a vehicle, bearing the government’s name and logo, and serving a government function regarding vehicle registration and law enforcement, is a form of “government speech,” to treat the registration of the millions and millions of private trademarks in the for-profit and nonprofit sector as the government speaking is all but incoherent.  The denial of trademark registration is not government speech, it is government discrimination.

As I wrote in my prior post on this issue, it is no answer to say that the Redskins are still allowed to use their mark, or to say that conferral of registration is a “privilege” created by government.  Registration as an official registered student organization on state college campuses is also a “privilege,” but the Supreme Court held long ago that the First Amendment was violated when a university sought to deny registered organization status to a controversial radical student group, the SDS, purely on the basis of that group’s message.  The whole point of the First Amendment is to protect unpopular speech.  Unpopular speakers often seek government benefits to enable their expression – authors seek copyright registration, marchers seek parade permits, businesses and organizations seek trademark registration.  If all decisions to grant or deny such benefits are to be swept away from the shelter of the First Amendment by the invocation of the “government speech” doctrine, freedom of speech will be dealt a terrible blow.