Dean Rodney A. Smolla, Delaware Law School, Widener University
December 28, 2015
As I and other contributors to IP Viewpoints have written in numerous essays over the last year, two fascinating cases have been wending their way through the federal courts testing whether the federal government may deny or cancel trademark registration to racially or ethnically disparaging trademarks, as authorized by Sec. 2(a) of the Lanham Act. One of those cases, In re Tam, involved the government’s refusal to register the mark of the Asian-American rock group, THE SLANTS. The other involves the question of whether the government may cancel the mark of the Washington Redskins professional football franchise. I have taken the position that cancellation of these marks is unconstitutional viewpoint discrimination and that Sec. 2(a) violates the First Amendment. In the Washington Redskins case, I co-authored an amicus brief with the great First Amendment champion Floyd Abrams, advancing that view.
On Dec. 22, 2015, the panel opinion in In re Tam was vacated and reversed by the full Federal Circuit sitting en banc.1 In a powerful opinion written by Judge Kimberly Ann Moore, the Federal Circuit declared Sec. 2(a) of the Lanham Act unconstitutional. The court properly identified Sec. 2(a) as a plainly unconstitutional exercise in viewpoint and content discrimination. In a stirring opening, the court pronounced:
The government enacted this law – and defends it today – because it disapproves of the messages conveyed by disparaging marks. It is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys. That principle governs even when the government’s message-discriminatory penalty is less than a prohibition. Courts have been slow to appreciate the expressive power of trademarks. Words – even a single word – can be powerful. Mr. Simon Shiao Tam named his band THE SLANTS to make a statement about racial and cultural issues in this country. With his band name, Mr. Tam conveys more about our society than many volumes of undisputedly protected speech. Another rejected mark, STOP THE ISLAMISATION OF AMERICA, proclaims that Islamisation is undesirable and should be stopped. Many of the marks rejected as disparaging convey hurtful speech that harms members of oft-stigmatized communities. But the First Amendment protects even hurtful speech. The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional.2
For good measure, the court went on to hold that even if the statute were measured under the intermediate scrutiny standard applicable to commercial speech, the law would be unconstitutional.3
The centerpiece of the court’s opinion was its conclusion that strict scrutiny was the appropriate standard of First Amendment review.4 The court held that the disparaging marks prohibition was both content-based and viewpoint-based discrimination. The court observed that the “test for disparagement – whether a substantial composite of the referenced group would find the mark disparaging – makes clear that it is the nature of the message conveyed by the speech which is being regulated.”5 Moreover, the court held, the law was no less content-based because it was grounded in the adverse perceptions of the trademark by others.6 Under the Act a mark is denied registration if it is found disparaging by the referenced group. But the “‘[l]isteners’ reaction to speech is not a content-neutral basis for regulation.’”7 Sec. 2(a), the court held, went beyond content-discrimination, to viewpoint discrimination, because it was manifestly based on the government’s disagreement with the message. “From its enactment in 1946 through its defense of the statute today, the government has argued that the prohibited marks ought not to be registered because of the messages the marks convey.”8 And “[w]hen the government discriminates against speech because it disapproves of the message conveyed by the speech, it discriminates on the basis of viewpoint.”9 The courtly rejected many efforts by the government to recast Sec. 2(a) as viewpoint-neutral, instead properly identifying the law as nothing less than a law enacted and defended as a measure calculated to penalize viewpoints that the government disfavors:
The government enacted § 2(a), and defends it today, because it is hostile to the messages conveyed by the refused marks. Section 2(a) is a viewpoint-discriminatory regulation of speech, created and applied in order to stifle the use of certain disfavored messages. Strict scrutiny therefore governs its First Amendment assessment – and no argument has been made that the measure survives such scrutiny.10
As an alternative ruling, the court held that even if analyzed under commercial speech principles, the law would be unconstitutional. The court began its commercial speech analysis by reasoning that the law was not properly treated as commercial speech regulation, because there was nothing in the commercial nature of trademarks that animated Sec. 2(a)’s prohibitions. Rather, the government’s motivation in passing Sec. 2(a) was entirely based on its political and cultural message, not its commercial aspects:
This case exemplifies how marks often have an expressive aspect over and above their commercial-speech aspect. Mr. Tam explicitly selected his mark to create a dialogue on controversial political and social issues. With his band name, Mr. Tam makes a statement about racial and ethnic identity. He seeks to shift the meaning of, and thereby reclaim, an emotionally charged word. He advocates for social change and challenges perceptions of people of Asian descent. His band name pushes people. It offends. Despite this – indeed, because of it – Mr. Tam’s band name is expressive speech.11
The court similarly rejected arguments that the anti-disparagement provisions of the Lanham Act could be defended as either the appropriate shaping of a government subsidy program or as government speech. With regard to the subsidy argument, the court properly saw the Act as barred by the doctrine of unconstitutional conditions. The government was attempting to use the leverage of the influence it wielded through its power to cancel trademarks to penalize speech with which it disagreed.12 The very purpose of the unconstitutional conditions doctrine is to prevent such abuse.13 The court similarly pierced the spurious argument that trademark registration was simply an exercise of government speech. The court recognized that the decision to grant or deny registration was an exercise of government regulation, not government speech, properly reasoning that under the logic of the government’s claim, even copyright registration would be government speech:
[T]he government appears to argue that trademark registration and the accoutrements of registration – such as the registrant’s right to attach the ® symbol to the registered mark, the mark’s placement on the Principal Register, and the issuance of a certificate of registration – amount to government speech. See Oral Argument at 52:40–53:07; 54:20–54:32. This argument is meritless. Trademark registration is a regulatory activity. These manifestations of government registration do not convert the underlying speech to government speech. And if they do, then copyright registration would likewise amount to government speech. Copyright registration has identical accouterments – the registrant can attach the © symbol to its work, registered copyrights are listed in a government database, and the copyright owner receives a certificate of registration. The logical extension of the government’s argument is that these indicia of registration convert the underlying speech into government speech unprotected by the First Amendment. Thus, the government would be free, under this logic, to prohibit the copyright registration of any work deemed immoral, scandalous, or disparaging to others. This sort of censorship is not consistent with the First Amendment or government speech jurisprudence.14
The en banc decision in In re Tam was a superbly crafted and entirely persuasive vindication of elemental First Amendment principles. The opinion engaged all of the various arguments that have been advanced to defend the Lanham Act’s ban on disparaging trademarks, and meticulously exposed them, one by one, as inconsistent with the core values and principles of the First Amendment.