Symposium: Most important free speech case in many years

Hugh C. Hansen is a professor of law at Fordham University School of Law. He is the founder and director of the Fordham Conference on IP Law and Policy and the Fordham IP Institute. He submitted amicus curiae briefs in support of Simon Tam in both the U.S. Court of Appeals for the Federal Circuit and the Supreme Court.

Matal v. Tam is one of the most important First Amendment free speech cases to come along in many years. The result is not much of a surprise. For the record, on October 24, 2016, I tweeted: “TAM prediction: from doctrinal, policy, realist analysis + cert before 4 cir op = 2A ‘disparage’ violates 1st Amend; ‘scandalous’ reserved.” What was a surprise was how strongly all eight justices viewed the applicable free speech protection.

Justice Samuel Alito’s opinion meticulously addressed all arguments, making sure there were no loose ends to clutter future cases. His style was critical and even mocking. He left no doubts on the merits of the free speech issues. Justice Anthony Kennedy’s opinion took more of a Gordian knot approach. No need to worry about untying various threads and arguments; viewpoint discrimination allows us to just cut right through them. The purpose of both opinions appeared to be to make sure that there was no way around the Supreme Court’s conclusions in the future. The court also seemed to take offense at the government’s and amici’s arguments as to why there was no viewpoint discrimination. The opinions together amounted to a serious defeat for the government and its amici supporters.

The government and amici put up a strong effort defending Section 2(a) of the Lanham Act. This in part derived from their admirable concern for the feelings of minority groups and the value of Section 2(a). This is the reason the Patent and Trademark Office in effect rewrote the Section 2(a) disparagement provision, years after passage of the act in 1946, to how it is applied today. There is no problem with any of this until someone’s free speech rights become involved. One reason the government and amici are so emphatic in their defense of Section 2(a) is perhaps that free speech took no serious part in their consideration of the issues.

If so, they are not alone. Free speech has never had many true friends. It receives plenty of lip service. We are generally in favor of free speech when we like the speech for which protection is sought but lose interest in it when we do not.

In his 1919 dissent in Abrams v. United States, Justice Oliver Wendell Holmes extolled the idea that freedom of speech in the First Amendment is based upon a marketplace of ideas. No ideas are sacrosanct and all have to withstand scrutiny and debate. Truth will win out in this process and democracy will benefit.

Although that is a very worthy ideal, it is difficult to find any such marketplace today. Newspapers are in decline. Television news shows are divided ideologically, with viewers driven by confirmation bias. The Internet is primarily a gathering place for digital mobs ready to tar and feather those who hold opposing views.

The rest of us have gathered not in the public square but in private groups to which admission is dependent upon adherence to politically correct orthodoxy. It is safe inside these groups, where shared views are sacrosanct and never have to withstand scrutiny. Opposing views are there too, but only to be mocked from a distance.

In this environment, free speech is permitted for somebody with the same views but is disdained when it comes to opposing ones. Political correctness is the new tribalism.

It was upon this highly fraught platform that the government argued that it should be able to enforce politically correct views through Section 2(a). It tells those that are distressed, and are in the right private group, that it will challenge offensive marks on their behalf or allow the distressed to do it themselves. It will not debate these marks in the public square but rather seek to exclude them from it.

Simon Tam’s mark, which encapsulates the group’s controversial ideas, is barred because of those ideas. Yet it is such use of expressive marks that today — ironically, considering this case — are the best hope to keep alive a marketplace of ideas. No private group can exclude these ideas in an effort to insulate themselves from exposure. Moreover, people receive access to the mark without warning and in neutral territory. They are in a setting where they might actually consider the ideas on their merits – before they can jump-start their ideological protective screening.

In sum, I think that court saw that the use of marks for expressive content provides an important nascent marketplace for the reception and debate of ideas. The government’s construction of Section 2(a) effectively stifles this marketplace.

I think it that might be the reason the court’s opinion is so bold and unyielding. The court realizes that there is a serious fight for free speech and this is the beginning of an effort to free it from current cultural confines. (In any case, that is my personal view, and you can’t criticize it because it might seriously hurt my feelings.)

Well, enough of that. What does this opinion then mean for related issues? The most obvious issue concerns the constitutionality of the Section 2(a) bar on “scandalous and immoral” marks. The government took the position after the en banc decision of the U.S. Court of Appeals for the Federal Circuit that these were covered as controlled by that decision. Yet it reserved the right for the solicitor general to distinguish this case and argue that the PTO can still bar such marks from registration. That issue is currently being litigated in In re Brunetti in the Federal Circuit.

Analytically, this is an easy issue. Matal v. Tam controls. But first let’s look a little at the history of case law on the issue. The major case was In re McGinley (C.C.P.A. 1981). There the precursor to the Federal Circuit held that the Section 2(a) ban was constitutional. It reasoned that PTO’s refusal to register the appellant’s mark did not affect the right to use it and that no tangible form of expression was suppressed. Since then three panels of the Federal Circuit and the U.S. Courts of Appeals for the 1st, 3rd and 5th Circuits have all followed that reasoning.

McGinley was a mainstream (and Main Street) approach to the First Amendment. It was not an outlier. It was decided the way most if not all courts would have decided it. This is especially true for the Federal Circuit, the overseer/guardian of the PTO’s trademark registration system.

“Disparagement” and “scandalous and immoral” provisions are similar but different. The latter does not ring First Amendment free-speech bells with most people. This is because (1) the marks at issue are smutty, vulgar or worse and not intended to send any larger expressive message; (2) registration is not perceived as economically necessary for these mark owners; (3) when there are serious free speech issues they can be ameliorated on a case-by-case basis by careful or limiting application of the statutory tests; (4) this provision provides a desirable civilizing effect on what could be registered as marks; and (5) courts had already made Section 2(a) more First Amendment-friendly through a construction that effectively eliminated “immoral.”

On the other hand, the result of declaring a First Amendment violation would include: (1) disruption of the status quo – a removal of provisions in the law since 1905; (2) outrage in Congress and the public; and (3) a potential smut-bath of new applications.

For most who would balance these policies and effects, the choice is not difficult. And balancing is what courts do. The fact that neither the en banc Federal Circuit nor the Supreme Court addressed this question indicates the lack of appetite for deciding it. I think some courts might still try to find ways to uphold the “scandalous and immoral” provision. But this time the whole world will be watching and, ultimately, I think they will conclude it is covered by Matal v. Tam. And they can pass on the blame by saying “the Supreme Court made me do it.”

What is more interesting are the suggestions by some very smart people that this case threatens the viability of the tarnishment provision in dilution law and even the whole law of dilution. I don’t think that is the case for several reasons. First, the Supreme Court did not actually reach its result Matal v. Tam by applying or construing language from prior cases. It reached it by looking at public policies, possible conflicts in those policies, and other real-world issues. So the court will not seek to derive an answer on dilution and the First Amendment from language in Tam. Even if it did, I am doubtful it would reach the same conclusions as those that have been suggested.

Furthermore, the decision in Tam was based in part on the fact that the “disparagement” provision had nothing to do with the goals of trademark law. The court in fact was supportive of trademark law, noting that the “’Lanham Act provides national protection of trademarks in order to secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers.’” Dilution’s law whole purpose from the beginning was to protect the goodwill of the mark owner. It protects against the “whittling away” of a mark’s goodwill by unauthorized users. It also protects against increased consumer search costs. Tarnishment protects the goodwill of a product’s mark by preventing it from being associated when there is no likelihood of confusion with inferior or undesirable products. And finally, it is highly unlikely that a court will feel comfortable eliminating state dilution laws that are over 65 years old or federal laws, whatever the reason.

Free speech up until now has been a hothouse flower. It was beautiful to look at in its protected state, but out in the elements it rarely survived, let alone thrived. Matal v. Tam creates the possibility of breaking down those glass walls. The question is whether that is premature or whether free speech can survive outside on its own. I guess that will depend to some extent on what you and I do.