Symposium: The cacophony of trademarks is not government speech

Irina D. Manta is a professor of law and Founding Director of the Center for Intellectual Property Law at the Maurice A. Deane School of Law at Hofstra University. Her trademark and other legal scholarship is available here.

In Matal v. Tam, the Supreme Court finally gave its answer to a question long debated in the intellectual property world: Is a prohibition on registering disparaging trademarks a violation of free speech under the First Amendment? All eight justices who took part in the case (everyone except Justice Neil Gorsuch) concluded that the answer to that question is a resounding yes. As an amicus brief that I joined also explained, the ban on disparaging trademarks is indeed a form of unconstitutional viewpoint discrimination.

Although the outcome of the case is certain to affect the enduring litigation involving the Washington Redskins trademark, the plaintiff in Tam was more sympathetic than the football team. Simon Tam sought to register the name “The Slants” as a way to reclaim a term that had been used to insult members of the Asian–American community for many years. The Supreme Court certainly did not endorse all of Tam’s arguments – such as his attempt to distinguish between “persons” and groups under the Lanham Act – but the main argument that trademarks are private rather than government speech succeeded.

Justice Samuel Alito does not mince words on this topic in rejecting the claim that trademarks are a form of government speech, writing: “If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently.” He goes on to list trademarked statements that would represent dubious advice on the part of the government (such as “make.believe” by Sony), and juxtaposes marks with contradictory statements (like “Capitalism Is Not Moral, Not Fair, Not Freedom” and “Capitalism Ensuring Innovation”). Alito explains how the world of trademarks cannot be likened to other forms of government speech in which the state seeks to promote a specific message, such as the encouragement of beef-product consumption at issue in Johanns v. Livestock Marketing Association. It is noteworthy that all the justices joined this part of the opinion.

As Alito’s opinion recognizes, the claim that trademarks by necessity bear a form of government imprimatur is highly troubling. If anything, removing the disparagement clause eliminates any lingering doubt as to whether the government endorses some messages over others when deciding which trademarks to issue. To those who question how the government can possibly be tolerant of – in the legal sense of giving trademarks to – racist or homophobic statements that otherwise meet the requirements of the Lanham Act, Alito would respond that “[g]iving offense is a viewpoint” and hence deserves the same level of protection as all other opinions.

This case also rejects the idea that the government can limit what trademarks to register based on precedent holding that it can decide what monuments to include in its parks. Alito indicates that the speech embodied in government-owned entities like parks, which includes speech conveyed through monuments, can be viewed by the public as part of a government message in ways that trademarks are not. Alito also underlines a distinction based on the greater rivalrousness of tangible resources. Because the space in public parks is limited, the government must choose what to include, but our trademark registers can accommodate a near-infinite number of marks.

The opinion is also deeply suspicious of the possibility that the government could use methods similar to the bar on disparaging trademarks to make distinctions as to who should be allowed to register a copyright. After all, what is a copyright registration but a legal right that attaches and creates additional protections and remedies against infringement in ways similar to trademark registration? The idea that this could occur in copyright is not far–fetched. Indeed, in the early 1940s, the Register of Copyrights stated that registration could be refused for obscene materials. The attorney general wrote in the late 1950s that the boundaries of the Register’s authority in that area were unclear, and the Register ultimately reversed course. The Supreme Court’s decision in Tam sends a strong warning to government actors who seek to limit the rights of authors based on the viewpoints expressed in their writings.

Although Section 2(a) of the Lanham Act prohibits not just “disparaging,” but also “scandalous” or “immoral” marks, the Tam case deals directly only with the disparagement proviso. Nonetheless, given the reasoning of the opinion, it is very likely that the “scandalous or immoral” bar cannot survive Tam. For one thing, it is not clear at this time whether the government will even claim that this distinction is viable. For example, in a pending case at the U.S. Court of Appeals for the Federal Circuit, the government conceded that under the Federal Circuit’s opinion in Tam (which the Supreme Court just affirmed), the “scandalous or immoral” proviso could not stand. And although the government reserved the right to argue that the provisions should be subject to different legal tests, that would appear to be a very tough row to hoe.

In addition to fairly strong language in the Tam opinion, the government, should it choose to defend the “scandalous or immoral” bar, would have to grapple with some relatively problematic history. Over time, a number of the trademarks that were denied registration for being “scandalous or immoral” involved religious content. In the 1930s, for example, registration was denied for the mark “Madonna” for wine. The specter of viewpoint discrimination, and for good measure the free exercise clause, looms just as large in this context as in that of disparagement. In both cases, the government would be policing which attempted mental associations are deemed permissible and which are not. Furthermore, given the vagueness of these terms, the application of the law to facts has been inconsistent at best. Indeed, the one statement that Alito’s opinion makes about these types of marks, in Footnote 5 of Tam, notes that the Patent and Trademark Office has admitted on several occasions the vagueness inherent in making determinations regarding not only disparaging but also scandalous marks. This likely does not bode well for the government if it were to seek to maintain these kinds of prohibitions.

Some have raised questions as to the implications of Tam for the other, less politically controversial provisos in trademark law such as prohibitions on use of marks that cause dilution and especially tarnishment of existing marks. One version of the argument tying the Tam case to tarnishment is that if the government cannot discriminate against the viewpoint of someone seeking a trademark, it also cannot discriminate against someone who depicts a trademark in a negative light. Under that line of reasoning, the government has to allow both types of speech even if they are offensive. This argument, however, misses the mark on both Tam and the meaning of tarnishment. Trademarks possess a dual nature of both speech and property interest. Improper use of a mark, including a tarnishing use, changes the meaning of a mark and has the power to harm a property interest. Just because the government cannot refuse to register a car bearing a racist bumper sticker does not mean it cannot prohibit others from vandalizing that racist bumper sticker.

Viewed a different way, for trademarks to fulfill their function as distinctive indicators, owners have to be able to shape the content of their marks and preserve their goodwill. Tarnishment interferes with that ability and threatens the effectiveness of marks. Those who wish to express negative views about a trademark are not prevented from doing so; rather, they are limited in how they can use the mark itself (that they did not create) in their attempt. Would–be tarnishers are certainly free to create their own marks to express a variety of opinions – including offensive ones post–Tam – as long as they do not engage in inappropriate use of others’ materials. In short, it is difficult to see a First Amendment problem in the dilution or tarnishment doctrines, especially when they are cabined by the robust fair-use defense which in turn permits the use of marks in non–commercial ways to comment on or criticize the mark-holder.