Free speech: US Supreme Court strikes down law that prohibited “disparaging” trademarks

Joseph Matal, Interim Director, United States Patent and Trademark Office, Petitioner v Simon Shia Tam 582 U.S. ____ (2017)

Summary

The United States Supreme Court has struck down a section of the US Federal trademark law known as ‘the Lanham Act’ on the basis that it violates the First Amendment’s free speech clause. The particular section of the Act, known as the ‘disparagement clause’, prohibits the registration of trademarks that may 'disparage . . . or bring . . . into contempt or disrepute' any 'persons, living or dead' (§1052(a) of the Lanham Act).

Summary of the facts

In 2011, Simon Shiao Tam (Tam), the front-man of Asian-American rock band 'The Slants', applied to have the band’s name registered on the Federal Register as a trademark. This sparked controversy as 'slants' is a derogatory word for people of Asian descent. However, the band members, who were of Asian-American descent, chose this moniker in an attempt to ‘drain its denigrating force’ by reclaiming the term.

The United States Patent and Trademark Office (PTO) refused to register the trademark on the grounds that it was disparaging to persons of Asian ancestry. The Trademark Trial and Appeal Board affirmed the initial decision of the PTO and Tam appealed to United States Court of Appeals for the Federal Circuit. The full bench found that the disparagement clause was facially unconstitutional and in violation of the First Amendment. A statute is facially unconstitutional where it is invalid in its entirety and there is no instance where it can be applied in a constitutionally valid manner.

The present case concerned an appeal by the Government to the Supreme Court in relation to the constitutional validity of the disparagement clause.

Decision

The core issue in the case was whether the disparagement clause constituted viewpoint discrimination. Viewpoint discrimination is when the Government, through its actions and decisions, suppresses particular points of view that it disapproves of. Viewpoint discrimination is considered to undermine the First Amendment’s freedom of speech protections.

The Court's decision turned on whether the disparagement clause enabled the Government (namely, the PTO) to promote or penalise certain ideas by declining to register offensive trade marks.

Ultimately, the Court held that the disparagement clause did result in viewpoint discrimination because the clause obliges an examining trademark officer to determine whether a trademark was offensive to a substantial percentage of members in a group. Accordingly, the Court determined that the disparagement clause was unconstitutional because it violated the First Amendment.

In arriving at its decision, the Court considered a number of arguments advanced by the Government, the main one being that registration of trade marks constitutes government speech as opposed to private speech, and therefore is outside the ambit of the First Amendment and free from the requirement of viewpoint neutrality.

It is settled law in the US that the First Amendment does not apply government speech. The Government argued that trade mark registrations should be considered government speech because they are issued with a government seal. However the Court strongly cautioned against extending the government speech doctrine to trademarks, for the following reasons:

  • Trademarks are generally generated in the private sphere rather than by government;
  • If trademarks are considered government speech then, by extension, this would render other works which are subject to government registration (such as copyright works) as government speech. This is extremely undesirable given the propensity of copyright works to express multiple perspectives which should be protected by the First Amendment;
  • Similar to copyright works, but in a significantly limited sense, trademarks contain an expressive element that deserves First Amendment protection;
  • The examining trademark officer does not reject trademarks based on the viewpoint conveyed and does not inquire into whether the trademark is consistent with policy or other trademarks registered;
  • If the requirements of the Lanham Act are met, registration is mandatory rather than discretionary; and
  • Unlike licence plates, trademarks are not associated with the Federal Government in the mind of the public.

Commentary

In a unanimous decision, the Supreme Court has adopted an interpretation of the First Amendment that restricts the ability of governments to censor, even where the speech that would be censored could be considered offensive. It has done so by reallocating the burden of determining what is ‘disparaging’ away from a government body and to the consumer.

The Court’s decision promotes the availability of a marketplace of ideas and will likely impact on other contentious trademark cases including that of the Washington Redskins (where, in contrast to The Slants, there is no cultural reappropriation involved). However, the impact of the decision should be tempered by the fact that trademarks can still be refused for being scandalous and immoral as codified by other sections of the Lanham Act, which survive this decision.

Anjali Narendra is a Solicitor at DLA Piper

MichelleBennettDemocratic Freedoms