The Volokh Conspiracy
Mostly law professors | Sometimes contrarian | Often libertarian | Always independent
A. Federal trademark law lets people register their trademarks, which gives them various legal remedies for stopping others' infringement of those trademarks. But § 2(a) of the law excludes the registration of "scandalous, immoral, or disparaging marks." Among other things, that provision covers marks that a "substantial composite of the referenced group" perceives as disparaging a religion, nation, ethnic group, belief system, and the like.
Based on that provision, the Patent and Trademark Office has barred the registration of THE SLANTS (I use all-caps for this, to follow the Federal Circuit's style), a trademark used by Simon Tam's Asian-American musical group of that name. The PTO has famously canceled the registration of REDSKINS. And it's done the same for many other marks, as the court opinion I discuss below points out: STOP THE ISLAMIZATION OF AMERICA, THE CHRISTIAN PROSTITUTE, AMISHHOMO, MORMON WHISKEY, KHORAN for wine, HAVE YOU HEARD THAT SATAN IS A REPUBLICAN?, RIDE HARD RETARD, ABORT THE REPUBLICANS, HEEB, SEX ROD (apparently some sort of reference to the Red Sox), MARRIAGE IS FOR FAGS, DEMOCRATS SHOULDN'T BREED, REPUBLICANS SHOULDN'T BREED, 2 DYKE MINIMUM, WET BAC/WET B.A.C., URBAN INJUN, SQUAW VALLEY (in part), N.I.G.G.A. NATURALLY INTELLIGENT GOD GIFTED AFRICANS, "a mark depicting a defecating dog … (found to disparage Greyhound's trademarked running dog logo)," "an image consisting of the national symbol of the Soviet Union with an 'X' over it," and more.
This morning, the U.S. Court of Appeals for the Federal Circuit held (In re Tam), by a 9-to-3 vote, that this exclusion of "disparaging" marks violated the First Amendment. This decision isn't binding on the Fourth Circuit, which is considering the Redskins mark. Moreover, because the court has struck down part of a federal statute, the Supreme Court will likely agree to consider the case (if the government asks it to); so this isn't the final word on the matter.
But it's an important opinion nonetheless. If the court had upheld the bar on registering disparaging marks, and the Fourth Circuit had done the same in the Redskins case, then the Supreme Court likely wouldn't have considered the case. And the opinions in the case will likely be seriously reviewed by the Justices if the Court does indeed agree to hear the matter.
My view, which is very close to the majority's, is that the disparaging mark exclusion is a viewpoint-based denial of protection for private speakers' speech. Even if the program is viewed as a subsidy, such viewpoint-based exclusions are unconstitutional (except when the government itself is the speaker, and that's not so here). And the exclusion therefore violates the First Amendment.
But that's just a quick sketch; here's a longer summary of the opinions, though that too is necessarily an oversimplification—the opinions put together take up more than 100 pages.
B. The majority (9 judges, written by Judge Moore):
1. The law denies rights to certain speakers: The exclusion of disparaging marks denies important legal rights to trademark owners. It doesn't ban speech (since people remain free to use even unregistered marks). But it does deprive marks of protections that are important to trademark owners, and therefore tends to discourage people from using disparaging marks.
"[I]f the government could deny a benefit to a person because of his constitutionally protected speech or associations, his exercise of those freedoms would in effect be penalized and inhibited. This would allow the government to produce a result which it could not command directly." "Denial of [registered trademark] benefits creates a serious disincentive to adopt a mark which the government may deem offensive or disparaging….
2. This denial is viewpoint-based: The government instituted the exclusion because of "disapproval of the message conveyed" by the marks. "Underscoring its hostility to these messages, the government repeatedly asserts in its briefing before this court that it ought to be able to prevent the registration of 'the most vile racial epithets and images,' and 'to dissociate itself from speech it finds odious.'"
And "the disparagement provision at issue is viewpoint discriminatory on its face. The PTO rejects marks under § 2(a) when it finds the marks refer to a group in a negative way, but it permits the registration of marks that refer to a group in a positive, non-disparaging manner" (e.g., "CELEBRASIANS, ASIAN EFFICIENCY, … NAACP, THINK ISLAM, NEW MUSLIM COOL, MORMON SAVINGS, JEWISHSTAR, and PROUD 2 B CATHOLIC"). "Speech that is offensive or hostile to a particular group conveys a distinct viewpoint from speech that carries a positive message about the group. STOP THE ISLAMISATION OF AMERICA and THINK ISLAM express two different viewpoints. Under § 2(a), one of these viewpoints garners the benefits of registration, and one does not."
3. The law isn't saved by the "commercial speech" doctrine: Though trademarks are often used as "commercial speech," which is to say commercial advertising, and such speech is generally somewhat less protected than noncommercial speech, that doesn't apply here: It is not the mark's commercial nature as source identifier, but rather its "expressive character"—disparagement of some person, group, or institution—that makes it nonregistrable.
For instance, "STOP THE ISLAMISATION OF AMERICA is expressive. In refusing to register the mark, the Board explained that the mark's admonition to 'STOP' Islamisation in America 'sets a negative tone and signals that Islamization is undesirable and is something that must be brought to an end in America.'" And by finding HEEB and SQUAW VALLEY disparaging, the PTO necessarily did so based on its finding that the marks convey an expressive message over and above their function as source identifiers—namely, an expressive message disparaging Jewish and Native American people."
4. Trademark registration is not "government speech": "Use of a mark by its owner is clearly private speech. Trademarks identify the source of a product, and are often closely associated with the actual product. A mark's purpose—to identify the source of goods—is antithetical to the notion that a trademark is tied to the government. The fact that COCA COLA and PEPSI may be registered trademarks does not mean the government has endorsed these brands of cola, or prefers them over other brands."
"[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. This argument is meritless. Trademark registration is a regulatory activity. These manifestations of government registration do not convert the underlying speech to government speech."
The court thus distinguishes Walker v. Texas Division, Sons of Confederate Veterans, Inc. (2015), which held that a specialty license plate program constituted "government speech," so that the government could discriminate based on viewpoint in deciding which plates to allow:
The government's argument in this case that trademark registration amounts to government speech is at odds with the Supreme Court's analysis in Walker and unmoored from the very concept of government speech. When the government registers a trademark, the only message it conveys is that a mark is registered. The vast array of private trademarks are not created by the government, owned or monopolized by the government, sized and formatted by the government, immediately understood as performing any government function (like unique, visible vehicle identification), aligned with the government, or (putting aside any specific government-secured trademarks) used as a platform for government speech. There is simply no meaningful basis for finding that consumers associate registered private trademarks with the government….
Indeed, the PTO routinely registers marks that no one can say the government endorses. See, e.g., RADICALLY FOLLOWING CHRIST IN MISSION TOGETHER; THINK ISLAM; GANJA UNIVERSITY; CAPITALISM SUCKS DONKEY BALLS; TAKE YO PANTIES OFF; and MURDER 4 HIRE. [EV notes: I should think that the government endorses people taking their panties off at least under some circumstances.] As the government itself explains, "the USPTO does not endorse any particular product, service, mark, or registrant" when it registers a mark.
For decades, the government has maintained that:
[J]ust as the issuance of a trademark registration by this Office does not amount to government endorsement of the quality of the goods to which the mark is applied, the act of registration is not a government imprimatur or pronouncement that the mark is a "good" one in an aesthetic, or any analogous, sense.
And "use of the symbol, being listed in a database of registered marks, and having been issued a registration certificate makes trademark registration government speech" likewise "do not convert private speech into government speech."
5. The government's argument, if accepted, would give it similarly broad power to discriminate in granting copyrights. That, the Federal Circuit concludes, would be unconstitutional; and the same applies to trademarks. Likewise, the government-controlled copyright registration system doesn't make copyrighted works into government speech; the same applies to trademarks. "Just as the public does not associate the copyrighted works Nigger: The Strange Career of a Troublesome Word or Fifty Shades of Grey with the government, neither does the public associate individual trademarks such as THE SLANTS with the government." …
6. The government can't exclude disparaging marks on the theory that trademark law is a form of subsidy. "The Supreme Court has repeatedly invalidated denials of 'benefits' based on message-based disapproval of private speech that is not part of a government-speech program. In such circumstances, denial of an otherwise-available benefit is unconstitutional at least where, as here, it has a significant chilling effect on private speech."
True, the court says, "viewpoint-based funding decisions can be sustained in instances … in which the government used private speakers to transmit specific information pertaining to its own program." See, e.g., Rust v. Sullivan (which held that "the government could prohibit the expenditure of public federal family planning funds on abortion-related counseling because the government distributed those funds to promote the conveying of a particular message"). "But as already described, trademark registration is not a program through which the government is seeking to get its message out through recipients of funding (direct or indirect)."
Moreover, the court argues, "the scope of the subsidy cases has never been extended to a 'benefit' like recognition of legal rights in speakers against private interference. The cases cannot be extended to any 'program' conferring legal rights on the theory that the government is free to distribute the legal rights it creates without respecting First Amendment limits on content and viewpoint discrimination."
7. The government may not exclude disparaging marks on the theory that it doesn't want to be associated with those marks. The government's "dissociat[ion]" argument "rests on intense disapproval of the disparaging marks. … And that disapproval is not a legitimate government interest where, as here, for the reasons we have already discussed, there is no plausible basis for treating the speech as government speech or as reasonably attributed to the government by the public."
The government also argues that it has a legitimate interest in "declining to expend its resources to facilitate the use of racial slurs as source identifiers in interstate commerce." The government's interest in directing its resources does not warrant regulation of these marks. As discussed, trademark registration is user-funded, not taxpayer-funded. The government expends few resources registering these marks. Its costs are the same costs that would be incidental to any governmental registration: articles of incorporation, copyrights, patents, property deeds, etc. In fact, the government spends far more significant funds defending its refusal decisions under the statute.
Finally, [accepting the government's argument would create] an end-run around the unconstitutional conditions doctrine, as virtually all government benefits involve the resources of the federal government in a similar sense. Nearly every government act could be justified under this ground, no matter how minimal. For example, the government could also claim an interest in declining to spend resources to issue permits to racist, sexist, or homophobic protests. The government cannot target speech on this basis, even if it must expend resources to grant parade permits or close down streets to facilitate such speech.
8. Nor can the government relying on a "compelling interest in fostering racial tolerance." Bob Jones University v. United States, which the government cites to support that interest, "does not stand for the broad proposition the government claims. Bob Jones University is a case about racially discriminatory conduct, not speech. The Court held that the government has an interest in combating 'racial discrimination in education,' not a more general interest in fostering racial tolerance that would justify preventing disparaging speech."
The invocation of the general racial-tolerance interest to support speech regulation is a sharply different matter, as the Supreme Court explained in R.A.V. v. City of St. Paul:
One must wholeheartedly agree with the Minnesota Supreme Court that "[i]t is the responsibility, even the obligation, of diverse communities to confront [virulent notions of racial supremacy] in whatever form they appear," but the manner of that confrontation cannot consist of selective limitations upon speech. St. Paul's brief asserts that a general "fighting words" law would not meet the city's needs because only a content-specific measure can communicate to minority groups that the "group hatred" aspect of such speech "is not condoned by the majority." The point of the First Amendment is that majority preferences must be expressed in some fashion other than silencing speech on the basis of its content.
What is true of direct "silencing" is also true of the denial of important legal rights…. The case law does not recognize a substantial interest in discriminatorily regulating private speech to try to reduce racial intolerance….
C. Two of the judges in the majority, Judges O'Malley and Wallach, joined the majority opinion but also reasoned that the exclusion of disparaging marks is unconstitutionally vague (and pointed to interesting examples of how inconsistently the exclusion has been applied).
D. Judge Dyk concurred in part and dissented in part: He reasoned that the exclusion was constitutional as applied to commercial uses of trademarks, but not to "core political" uses. And he concluded that The Slants were using the trademark in a sufficiently political way, so the exclusion violated the First Amendment as applied to them. Here is Judge Dyk's reasoning as to the constitutionality of the exclusion (and this reasoning was also joined by Judges Lourie and Reyna):
1. Trademark registration is a government subsidy, which the government may deny based on content. "Section 2(a) does not regulate any speech, much less impose a blanket ban. It merely deprives a benefit."
2. Such subsidies need not necessarily be viewpoint-neutral. "[T]he Court has upheld subsidies that were facially viewpoint discriminatory. See, e.g., Rust v. Sullivan, 500 U.S. 173 (1991) (upholding a condition limiting Title X funding to clinics that do not advocate abortion as a method of family planning)."
3. And in any event the disparaging marks exclusion is viewpoint-neutral.
In Boos v. Barry, 485 U.S. 312 (1988), the Court addressed a nearly identical standard as applied to core political speech. The law there prohibited the display of any sign within 500 feet of a foreign embassy if the sign would tend to bring that foreign government into "public odium" or "disrepute." Justice O'Connor's plurality opinion confirmed that the restriction is "content-based," but it specifically found that "the provision is not viewpoint based" (emphasis added). "The display clause determines which viewpoint is acceptable in a neutral fashion by looking to the policies of foreign governments" (emphasis added). This aspect of the plurality opinion has since been cited with approval by a majority of the Court in Turner Broadcasting System, Inc. v. FCC, 512 U.S. 622, 645 (1994)….
Finding § 2(a) to be viewpoint neutral is consistent with the Court's treatment of viewpoint discrimination in other areas. The Court has defined viewpoint discrimination as the government's disagreement with the underlying "ideology," "opinion" or "perspective of the speaker." Here, as in Boos, the standard is not based on the government's disagreement with anything. Rather, it is based on an objective, "neutral" assessment of a non-government perspective—in this case, a "substantial composite of the referenced group." … [T]here is no "realistic possibility that official suppression of ideas is afoot," and the content-based regulation here is not subject to heightened First Amendment scrutiny.
4. When it comes to such subsidy programs, the government may restrict subsidies to "protect … disparaged groups."
Even in subsidy cases, however, the government needs some interest sufficient to justify its regulation defined in terms of "reasonableness." In my view, the protection of disparaged groups is sufficient. As demonstrated on college campuses across the nation, members of some groups, whether or not justified, are particularly sensitive to disparaging material. There is significant social science evidence demonstrating the harmful psychological effects of holding a minority group up for ridicule on a national stage, particularly on children and young adults.
In the case of core protected speech, as discussed above, the government has no legitimate interest in protecting disparaged groups. The groups must tolerate the disparagement in pursuit of the greater goal of a free marketplace of ideas. But … commercial speech is different. Disparagement as defined by the Board "is essentially a violation of one's right of privacy—the right to be let alone from contempt or ridicule." The government has an interest in "proscribing intrusive and unpleasant formats" for commercial expression.
E. Judge Lourie wrote a separate dissenting opinion, largely agreeing with most of Judge Dyk's reasoning, but also arguing that registered trademark are government speech, and stressing the history of the disparaging mark exclusion:
The USPTO's authority to refuse to issue trademark registrations with certain offensive content has … existed in U.S. law for over one hundred years…. The USPTO has been rejecting applications for trademark registrations on this basis throughout this period of time. By finding § 2(a) unconstitutional, we interfere with the long-standing Congressional policy of delegating authority to the USPTO to filter out certain undesirable marks from the federal trademark registration system. We should not further the degradation of civil discourse by overturning our precedent that holds that the First Amendment is not implicated by § 2(a)'s prohibition against disparaging trademarks.
F. Judge Reyna dissented, arguing that the government could permissibly restrict disparaging commercial speech to protect "the orderly flow of commerce."
Section 2(a) serves the same substantial government interest as the Lanham Act as a whole—the orderly flow of commerce. Commercial speech that insults groups of people, particularly based on their race, gender, religion, or other demographic identity, tends to disrupt commercial activity and to undermine the stability of the marketplace in much the same manner as discriminatory conduct. The government's refusal to promote such speech in commerce is not an effort to suppress free expression, but to mitigate the disruptive secondary effects that a particular type of low-value speech may have when used in a commercial context. Because the government's purpose is to mitigate these secondary effects on commerce rather than to suppress speech, the regulation is content-neutral and intermediate scrutiny applies….
The marketplace of ideas differs dramatically from the marketplace of goods and services. While the marketplace of ideas may tolerate or even benefit from the volatility that accompanies disparaging and insulting speech, the marketplace of goods and services is a wholly different animal. Commerce does not benefit from political volatility, nor from insults, discrimination, or bigotry. Commerce is a communal institution regulated for the mutual economic benefit of all. Commercial speech that discredits or brings reproach upon groups of Americans, particularly based on their race, has a discriminatory impact that undermines commercial activity and the stability of the marketplace in much the same manner as discriminatory conduct.
That discriminatory conduct disrupts commerce is long established…. Discriminatory messages within … commercial channels threaten the same disruptive effects as the discrimination itself. Although the Majority distinguishes between conduct and speech, the distinction is without a difference in this context. Whether a restaurant named "SPICS NOT WELCOME" would actually serve a Hispanic patron is hardly the point. The mere use of the demeaning mark in commerce communicates a discriminatory intent as harmful as the fruit produced by the discriminatory conduct….
Nearly every disparaging mark identified in the voluminous briefing and opinions in this case has involved disparagement of race, gender, ethnicity, national origin, religion, sexual orientation, and similar demographic classification. The impact of advancing these bigoted messages through the ubiquitous channels of commerce may be discriminatory, and even if not discriminatory, at least disruptive to commerce.
And though the government doesn't have a free hand to "ban any speech it finds commercially undesirable," it may do so when "the government's substantial interest in the orderly flow of commerce is counterbalanced only by a minimal 'burden' on a small subset of low-value commercial speech":
First, the statute applies only in the commercial context, meaning that it does nothing to impact private speech. Mr. Tam remains free to spread his chosen message to all who would listen without fear of government intervention or reprisal.
Second, § 2(a) does not strictly "burden" Mr. Tam's speech, but only denies him a government-created benefit—the exclusive right to use that speech in commerce in connection with the sale of particular goods or services….
Section 2(a) also implicates only a modest sliver of particularly low-value speech. Speech that disparages is a narrow subset of speech that offends, and it is a particularly low-value subset at that….
Additionally, any minimal value disparaging speech might offer in the marketplace of ideas is far diminished in the marketplace of goods and services, which is the only context at issue in this appeal. One can hardly imagine what legitimate interest a vendor of goods or services may have in insulting potential customers. Whatever value disparaging speech might possess when used in private life, it loses when used in commerce.