One of this term’s most anticipated Supreme Court decisions is now available: Matal v Tam (formerly Lee v Tam, before Ms. Lee left the trademark office). In short, the Court decided that the government cannot refuse the registry of trademarks merely because they may be offensive. In long, read on!
Despite all the news coverage about the Washington Redskins, the aggrieved party here was, in fact, Simon Tam, the Asian-American frontman for a band called The Slants. The US Patent and Trademark Office (USPTO) refused to register their name as a trademark, citing 15 USC 1052(a). The statute allows the USPTO to refuse to register a trademark 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”.
Deciding that “Slant” is a racial slur, the USPTO denied registry.
This is a First Amendment case. Mr. Tam argued that the statute discriminates against certain viewpoints: namely, those that might offend somebody. Such discrimination is usually unconstitutional.
The government’s response came in four flavors: (1) that trademarks should be treated like government speech, not private speech, (2) that trademarks are a type of subsidy, which the government has more control over, (3) that the government should have extra leeway here because it is administering a “government program”, and (4) that trademarks should be considered commercial speech, which the government has more power to regulate.
All eight Justices (Gorsuch wasn’t yet seated when this case was argued) agreed on this much: the statute is a form of viewpoint discrimination, and the registry of trademarks is not government speech. Thus, the regulation is unconstitutional under the First Amendment.
Justices Alito, Roberts, Breyer, and Thomas further agree that trademarks aren’t subsidies and that they shouldn’t be treated as government programs.
Justices Kennedy, Ginsburg, Kagan, and Sotomayor don’t think it’s necessary to rule on the subsidy or government program issues. In their opinion, the statute is so egregious that it would be unconstitutional even under that more lax review. Because there’s an even split on this part, neither position is controlling.
All eight Justices agree the statute would be unconstitutional even if trademarks were commercial speech, but the former 4 apply a slightly different standard than the latter 4. Again, due to the even split, neither position is controlling.
The operative part of the ruling is the part about government speech. As a general principle, regulations on the content of speech, rather than the form, are unconstitutional. See Reed v Town of Gilbert (2015). But the government may regulate its own speech however it chooses.
Here, the USPTO argued that the registry of a trademark is an endorsement of that viewpoint. The Court, to put it bluntly, annihilated that argument. I will excerpt that part of the opinion for your reading pleasure. Please enjoy this magnificent legal owning.
[I]t is far-fetched to suggest that the content of a registered mark is government speech. If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently. It is saying many unseemly things . . . It is expressing contradictory views.It is unashamedly endorsing a vast array of commercial products and services. And it is providing Delphic advice to the consuming public.
For example, if trademarks represent government speech, what does the Government have in mind when it advises Americans to “make.believe” (Sony),“Think different” (Apple),“Just do it” (Nike),or “Have it your way” (Burger King)? Was the Government warning about a coming disaster when it registered the mark “EndTime Ministries”?
Astute SCOTUS junkies will recognize this argument from Justice Alito’s dissent in Walker v Texas Div, Sons of Confederate Veterans, Inc (2015), where the Court determined that license plates were government speech. In Tam, Alito is essentially writing the result he wanted in Walker—but in doing so, he has to explain why this case is different. That is, why are license plates government speech but trademarks aren’t?
Alito makes a good effort to explain the difference, saying that license plates are more closely associated with the government and that Texas maintained control over their content, but it feels like a distinction without a difference. Perhaps that’s unavoidable: maybe Walker and Tam really are inconsistent, and any attempt to distinguish them will feel artificial.
Why Does This Matter?
In the sports world, this case is a big deal. Pressure has been mounting for years on teams like the Washington Redskins to change their names to something, well, less obviously racist. (Maybe they could follow my alma mater, the Denison Big Red, formerly the Denison Big Red Indians.)
The Redskins have fought with the Trademark Office for years to register their trademark, and now they are virtually guaranteed to win their battle.
My opinion as a criminal lawyer in his mid-20’s doesn’t mean much. That said, I think this was the right decision. I sided with Alito in Walker, and I side with him again here.
Does that mean I want the Redskins to keep their name? No. But there’s an important difference between legality and decency. The Redskins’ name is distasteful, but it is not the business of the government to police good taste.
I leave you with another excellent quote from Tam: “the proudest boast of our free speech jurisprudence is that we protect the freedom to express the thought that we hate.”
(Image credit: Gage Skidmore)