Symposium: Slanted in favor of speech – Why mere offense is not enough

Dwayne Sam is an associate and Megan Brown a partner at Wiley Rein LLP. Representing the Rutherford Institute, they filed an amicus brief in this case in the Federal Circuit and a brief in Pro-Football, Inc. v. Blackhorse in the 4th Circuit.

Some First Amendment cases are hard. Lee v. Tam is not one of them. Simon Tam, the “front man” for an Asian-American rock band known as The Slants, was denied trademark registration for the mark THE SLANTS. Why? Not because the proposed mark was inaccurate or misleading or violated someone’s intellectual property interests. The government denied Tam the beneficial trademark status routinely afforded others solely on the basis that the government considers THE SLANTS, as used by Tam, to be “disparaging” to some subset of Asian-Americans. It is rare that a First Amendment case presents such an obvious example of both content and viewpoint discrimination being embraced by the government.

The disparagement clause of Section 2(a) of the Lanham Act provides, among other things, that the U.S. Patent and Trademark Office may refuse to register a trademark that “[c]onsists of … matter which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The PTO may also cancel registrations under this standard if, for example, a party claiming offense asks the PTO to find that a mark was disparaging at the time of registration. The Lanham Act’s disparagement bar, and its application by the government, openly require the government to discriminate based on the content of speech, and cannot co-exist with the First Amendment.

The concept at issue is so fundamental it scarcely bears repeating: Our Constitution is designed to protect offensive and unpopular speech from the whims and sensitivities of government regulators, even – or perhaps especially – when the government is purporting to protect individuals or groups from “offense.” The Constitution makes it exceedingly difficult to regulate communications based on the “impact that speech has on its listeners.” The court recognized this principle in Boos v. Barry, in which it struck down a District of Columbia ordinance prohibiting the display of any sign bringing a foreign government into “disrepute” within 500 feet of an embassy. Similarly, in United States v. Playboy Entertainment Group, Inc., the court explained that, “[w]here the designed benefit of a content-based speech restriction is to shield the sensibilities of listeners, the general rule is that the right of expression prevails.” And in Tinker v. Des Moines Independent Community School District, the court struck down a school regulation that prohibited students who wanted to protest the war in Vietnam from wearing black armbands. There, the court counseled that the First Amendment requires the government to “show that its action was caused by something more than a mere desire to avoid the discomfort and unpleasantness that always accompany an unpopular viewpoint.” But the avoidance of discomfort and offense are precisely the goals the government seeks to attain under Section 2(a)’s disparagement prong.

There can be no serious dispute that trademarks meet all of the criteria of protected speech and should be treated as such. Applicants and beneficiaries intend to communicate. Trademarked material – a name, word, phrase, logo or design – can inform and persuade potential customers, but it also can do far more. Trademarked names, phrases, and mottos can define a group’s identity, express a political opinion, convey artistic ideas, or spark useful debate and controversy. This case aptly illustrates the power of trademarks to communicate ideas. In applying to register THE SLANTS, Tam wanted to reclaim the name, divorce it from its connotation as a term of derision, and empower Asian-Americans in the process. The expressive purpose behind Tam’s use of the term could not be clearer. The government nonetheless contends that Section 2(a) does not implicate the First Amendment because Tam remains free to use the mark. But although Section 2(a) does not prevent applicants from otherwise using marks the government deems “offensive,” the First Amendment applies to more than simple prohibitions. As the Supreme Court recognized in Perry v. Sindermann, the First Amendment also prohibits the government from burdening expression, either directly or by denying access to a benefit based on speech’s disfavored content. The court reaffirmed that principle recently in Agency for International Development v. Alliance for Open Society International, Inc., holding that the First Amendment imposes limits on government power, even when the government grants benefits to which the recipient otherwise “has no entitlement.”

Perhaps what makes Section 2(a) especially insidious, however, is its disregard for two of the most time-honored tenets of First Amendment jurisprudence: The Constitution does not permit the government either to enforce a heckler’s veto or to vest administrative officials with unbridled discretion to curtail speech.

Heckler’s veto

The Supreme Court has emphatically rejected laws that “confer broad powers of censorship, in the form of a ‘heckler’s veto.’” As the court explained in Texas v. Johnson, “[i]f there is a bedrock principle underlying the First Amendment, it is that the government may not prohibit the expression of an idea simply because society finds the idea itself offensive or disagreeable.” In its most critical applications, the First Amendment protects speech that others find offensive. This idea is not new. The court held nearly fifty years ago in Street v. New York that “the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.” Indeed, it is precisely when speech might offend that the First Amendment is most critical, because this is the type of speech that invites regulation in the first place.

Yet the government insists it is free to reject trademarks whenever it believes that “a substantial composite” of a group might be offended. It claims to be protecting “underrepresented groups” from “bombard[ment] with demeaning messages.” By embracing its role in subordinating free speech to the possible reactions of third parties, the government seeks to create out of whole cloth an entirely new category of prohibited speech.

Categories of speech that fall outside the First Amendment are few and narrowly defined – and “disparaging speech” is not one of them. Unprotected speech includes obscenity, defamation, incitement and situations of imminent danger the government has the power to prevent. Other forms of speech – including disparagement – are protected, and the Supreme Court has resisted attempts to create new exceptions to that rule. As the court recognized in United States v. Stevens, “[c]ourts do not have freewheeling authority to declare new categories of speech outside the scope of the First Amendment” based on “an ad hoc balancing of relative social costs and benefits.” In Stevens, the Supreme Court asked whether depictions of unlawful animal cruelty had been historically unprotected and, finding no such history, applied searching First Amendment scrutiny. The court reaffirmed this approach in Brown v. Entertainment Merchants, which invalidated a ban on the sale or rental of violent video games to minors. The same level of scrutiny should apply in this case to the government’s attempts to manufacture a new category of prohibited speech.

At bottom, the First Amendment protects offensive speech from officious government meddling, even where discrete classes of persons find the speech deplorable and offensive.

Unbridled discretion

Under Section 2(a), a government employee must police applications for potential offense and evaluate them in light of the applicant’s characteristics, the message being sent, overall context, and the likely subjective reaction of a subsection of the group to be protected from offense. Not surprisingly, given these flexible and shifting considerations – the evaluating agent apparently has to be an expert in anthropology, sociology, and psychology, among other fields – “disparagement” review has yielded unpredictable approaches, linked by a common denominator: subjective and paternalistic review of the potential for offense from a message conveyed. Such review is hard to square with our system of content-neutral government.

The Trademark Trial and Appeal Board, the PTO’s administrative-law tribunal for deciding registration issues, applies a two-part test to determine if a mark is barred from registration because it is “disparaging”: (1) What is the likely meaning of the matter in question, taking into account dictionary definitions, and the relationship of the matter to other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services?; and (2) Is the meaning disparaging to a substantial composite of the referenced group? During an examination, the PTO examiner sets forth a prima facie case, and then the burden shifts to the applicant to rebut the prima facie case with “competent evidence.”

Aside from the two-part test, which offers little in the way of guidance, PTO examiners have no standards to apply to the exercise of their discretion. The Supreme Court has repeatedly held that providing unbridled discretion to administrative officials is anathema to the First Amendment. In Saia v. New York, for example, the court struck down a New York loudspeaker-permitting scheme that granted the police chief unbounded discretion to grant or deny permits. Here, as explained in the Rutherford Institute’s amicus brief, the PTO’s record is replete with examples of its boundless discretion, decisions that reveal confusion bordering on incoherence. For example, modest scrutiny of PTO records reveals examples of marks once considered disparaging that now are registered routinely; marks containing words deemed unregistrable despite being legally equivalent to registrable terms; terms defined in dictionaries as disparaging that are not found disparaging by the PTO; and terms that the PTO now finds disparaging despite past findings to the contrary.

These shifting sands offer no useful guidance to applicants and are precisely why the court has been so skeptical about decisions implicating the First Amendment that are rendered by government officials unmoored from any constitutional anchors.

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Trademark law is being used, by the PTO on its own and at the urging of entities that claim offense, to burden and disfavor certain speakers. This case represents an opportunity for the court to reaffirm its long line of precedents holding that mere offense is not enough to justify censoring speech.

Posted in: Featured, Symposium before the oral argument in Lee v. Tam

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