Tuesday, June 20, 2017

Some preliminary thoughts on Matal v. Tam, Trademarks, and the First Amendment [UPDATED]

Marty Lederman

The constitutional analysis in the Supreme Court's decision yesterday in Matal v. Tam is, with one exception, split between two four-Justice opinions, the first written by Justice Alito (joined by the Chief Justice, and Justices Thomas and Breyer), and the second written by Justice Kennedy (joined by Justices Ginsburg. Sotomayor and Kagan).   Here are a few preliminary reactions to those opinions.

1.  The "Government Speech?" Diversion.  There is one section of Justice Alito’s constitutional analysis that is an opinion for a unanimous Court—Part III-A, in which Justice Alito rejects what he calls the Government’s “conten[tion] that trademarks are government speech, not private speech.”  Justice Alito goes on at some length, over six pages, to demonstrate what appears to be an obvious point—namely, that “it is far-fetched to suggest that the content of a registered [trade]mark is government speech.”  “Holding that the registration of a trademark converts the mark into government speech,” Justice Alito concludes, “would constitute a huge and dangerous extension of the government-speech doctrine” (emphasis added).

Well, yes, that would be a radical extension of government-speech doctrine.  And yes, it would be “far-fetched” to suggest that federal registration by the Patent and Trademark Office (PTO) turns a trademark itself into speech by the United States Government.

Which is why the Government didn’t make that argument.  Contrary to what you might think from the Court’s opinion, the Government did not “contend” that “trademarks are government speech, not private speech.”  The reason it was so easy for Justice Alito to, well, disparage this argument is that it’s a straw man that no party proposed or defended.

The Government did make two arguments that have a superficial similarity to the notion that the marks are “government speech,” but those arguments were actually distinct from it in important respects. 

First, the Government argued in passing that the PTO’s registration of the mark is a form of government speech (and, what’s more, that such government speech is a form of government subsidy, a distinct argument that Justice Alito addressed for a plurality in a subsequent section of his opinion—see point 2, below).

Of course, the Government is right about that:  The PTO’s certificate of registration—as opposed to the mark itself—is government speech.  As the Solicitor General stressed in his brief, it is issued “in the name of the United States” and is transmitted by the U.S. Government to foreign countries.  Such PTO registration, and the ® symbol that mark owners can then use to signal such registration, conveys to the public that the mark has an official status.  It does, and is intended to, send a message to the viewer (e.g., “this is a federally registered mark”) about how the federal government has chosen to treat the mark.  That message, in turn, further conveys to the relevant viewers that certain consequences of federal law can attach if they use the mark without authorization.  (At the bottom of page 17 of his opinion, Justice Alito slips from discussing whether the mark is government speech to a sentence, perhaps inadvertent, suggesting that “the registration of trademarks” does not “constitut[e] government speech.”  If that’s what Justice Alito intended to say, it’s simply mistaken, and nothing in his opinion supports it.)

I do not mean to suggest that the fact that PTO registration is government speech means that denial of such registration to disparaging marks is constitutional.  Primarily for the reason I explain in Point 3, below—and the fact that registration is not only government speech, but also a formal, legally enforceable reallocation of speech rights among private parties—I tend to agree with the Court’s ultimate judgment.  Justice Alito’s extended exegesis on how the mark itself is not government speech, however, is simply nonresponsive to the Government’s argument that registration of the mark is speech by the U.S. Government.

Second, the Government argued that even though the mark itself is the speech of a private party, PTO registration is “a form of government assistance that will closely associate the government with offensive terminology.”  The government stressed this point in order to establish a legitimate, benign, justification for its refusal to register disparaging remarks.  [R]egistration of racial slurs would result in the incorporation of such slurs into various official governmental communications,” explained the government, and thus “[t]he government has a substantial interest in disassociating itself from such messages.”

Justice Alito does not specifically identify this as the Government’s argument, but he actually addresses it in passing, in a single sentence and an accompanying citation to a case involving registration of a mark for condoms:  “The PTO has made it clear that registration does not constitute approval of a mark.  See In re Old Glory Condom Corp., 26 USPQ 2d 1216, 1220, n. 3 (TTAB 1993) (‘[I]ssuance of a trademark registration . . . is not a government imprimatur’).”  In other words, Justice Alito contends that the Government has no need to disassociate itself from the offensive mark, because no reasonable audience would conclude that registration constitutes the USG's “association” with, or “approval” of, the mark in the first instance.  [UPDATE:  Mike Dorf argues--correctly, I think--that this quick dismissal of the "disassociation" argument was very valuable, and might work to limit some of the least persuasive aspects of the rationale of the Walker "government speech" speech case (in which Justice Alito wrote a stinging dissent), even if it was only a peripheral part of the Tam case itself.]

That might, or it might not, be a sufficient response to the Government’s justification for not registering disparaging marks.  The fact that the mark itself is private speech, however, is simply inapposite to that question.  [P.S.  Justice Alito also mistakenly wrote that respondent Simon Tam "is the lead singer" of The Slants.  That would be Ken Shima.  Tam is principally the bass player.]

2.  Should Trademark Protection be Treated as a Government Benefit--or Subject to Searching First Amendment Scrutiny?  Justice Alito begins his opinion with the Court’s conclusion:  The government’s refusal to register “disparaging” marks “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”  In keeping with this idea that this is a case involving a “ban” on speech, Justice Alito’s opinion is peppered with citations to cases and doctrines warning of First Amendment problems when the state “prohibits,” “restricts” or “suppresses” speech on the basis of viewpoint.  In his opinion, Justice Kennedy likewise writes that “the Court is correct to hold [that] §1052(a) constitutes viewpoint discrimination—a form of speech suppression so potent that it must be subject to rigorous constitutional scrutiny,” and he insists that the case implicates the “fundamental principle of the First Amendment that the government may not punish or suppress speech based on disapproval of the ideas or perspectives the speech conveys.”

Once again, this is a response to a straw man--an argument that no party made.  The Government did not argue that it could “ban,” “restrict,” “punish” or “suppress” disparaging marks:  Indeed, it acknowledged that that would be unconstitutional—that its rationales “would be . . . constitutionally insufficient . . . for a ban on the use of disparaging language” (Reply Br. 8).

The heart of the government’s case was, instead, that the PTO’s refusal to register “Slants” was not a ban, or any sort of a restriction on the band’s legal right to use that mark.  Invoking the verb of the Free Speech Clause itself, the government insisted that the law does not “abridge” any speech at all.  The PTO’s refusal to register the mark does not prevent Simon Tam, or the Slants, from saying anything.  The band remains free to use the mark, as it has been doing for many years--indeed, as it did for five years before it even applied for federal registration.  (The Slants may even utilize common-law and other statutory remedies designed to prevent others from using the mark.)  At most, the government claims, PTO has denied the band a federal subsidy, or benefit—namely, the robust procedural and evidentiary protections available for registered marks under the Lanham Act.

Indeed, here’s one of the most interesting things about the case:  If and when the PTO does register “Slants,” as it presumably will do after yesterday’s decision, that registration itself will be speech-suppressive.  That’s because trademark law is a way of allocating speech rights among private parties.  Indeed, the most important aspect of “owning” a mark is that it gives the owner exclusive use—a monopoly, of sorts, that prevents competitors and others from using the mark in a commercial way that would confuse consumers or dilute the value of the owner’s use of the mark.  Likewise, federal registration makes it easier for the owner to prevent others from using the mark.  As the Slants themselves argued, a principal value of federal registration would be to ensure that other bands do not call themselves “the Slants.”  Now that they’ve won, the word “Slants” is less freely available for use by dance-rock bands.  Or think of it from the other direction:  If the Court had decided Tam in favor of the PTO, the world would soon be awash in a far greater outpouring of “Redskins” paraphernalia, because Dan Snyder’s monopoly would be more difficult to enforce.

Once again, even if the government is right about this—i.e., that the case involves a government “subsidy” or “benefit,” and that registering a mark actually works to suppress the ability of some private parties to speak as they wish—that would not necessarily mean that the anti-disparagement law is constitutional.  Indeed, the Court has held, in cases such as Denver Area Educational Telecommunications Consortium v. FCC (1996), that content-based regulations allocating speech rights between private parties—which is what trademark registration does—must be “scrutinized with the greatest care.”  It does mean, however, that the Court’s repeated invocations of rules regarding speech “bans,” and “suppression,” simply don’t engage with the government’s main argument.

In Part III-B of his opinion, for a four-Justice plurality, Justice Alito does purport to address the government’s subsidy/benefit argument directly.  If I’m understanding him correctly, he concludes that the Court’s precedents involving content-based discrimination in allocating “subsidies” and “benefits” are inapposite because trademark registration is a government “service” rather than a “benefit” or “subsidy.”  That’s not terribly convincing.  Just because it can be (arbitrarily) characterized as a “service” does not mean that trademark registration is not also a benefit or subsidy—which of course it is.  It is the allocation of certain types of speech rights among private parties--a distribution of legal entitlements.  Nor does Justice Alito offer any reason why the constitutional treatment should be different in the case of government “services,” i.e., why the government should be precluded from providing gratuitous “services” to private speech of one viewpoint but not another, in a way that would not be permissible with respect to "benefits" or "subsidies."

[UPDATE:  It is not exactly clear what the upshot of Justice Alito's Part III-B is intended to be.  On page 12 of his opinion, he suggests that what he is doing in Part III is rejecting any argument that the First Amendment does not apply to trademark law, or permits "highly permissive rational-basis review."  And in Part IV, he appears to be implying that trademark restrictions are subject to commercial speech "Central Hudson review" at a minimum.  Does Justice Alito truly mean to suggest that trademark decisions should be treated as analogous to ordinary speech "bans," or "restrictions"--or at least to such bans or restrictions on commercial speech?  If so, such a holding would open up wide swaths of trademark law to new constitutional scrutiny because, as Rebecca Tushnet has explained (see pp. 406-417), trademark law is shot through with content-based distinctions that would appear not to satisfy most of the doctrinal tests the Court uses to assess ordinary and commercial speech restrictions.  There's no indication Justice Alito intended to work any such radical constitutionalization of trademark law--and, in any event, his Parts III-B and IV did not carry a majority of the Court.

Unfortunately, Justice Kennedy's opinion, too, occasionally lapses into broad generalizations suggesting that trademark law should be treated just like ordinary speech restrictions.  He even goes so far as to invoke Justice Holmes's dissent in Abrams, in support of his ringing (yet hyperbolic) pronouncement that "in the realm of trademarks, the metaphorical marketplace of ideas becomes a tangible, powerful reality"--as if product names for "designer clothing" and "candy bars" (two of Justice Kennedy's examples) should be accorded constitutional protection on a par with the anti-war leaflets in Abrams.  "To permit viewpoint discrimination in this context" of trademarks, Justice Kennedy writes, "is to permit
Government censorship."  Taken to its logical conclusion, such an idea would subject large swaths of trademark law to constitutional doubts.  I cannot imagine Justice Kennedy intended, however--any more than did Justice Alito--to upend trademark law so fundamentally.  For more regarding the impact of the decision on trademark law, see Rebecca Tushnet's initial reactions.]

3.   The Narrowest Ground for Resolution--Based Upon An Inadmissible State Objective to Skew Public Debate.  Nevertheless, there was, I think, a fairly simple, and relatively narrow, way for the Court to dispose of the case in favor of the Slants--to merely hold, as Justice Kennedy wrote earlier in his opinion, that "the viewpoint based discrimination at issue here necessarily invokes heightened scrutiny," without any further, more radical implications for viewpoint-based trademark regulations.  Such a narrow holding would, I think, reflect what appears to have been most bothering the Justices about the nondisparagement provision; with one possible exception, however--another aside in Justice Kennedy's opinion--the Court overlooked it. 

Even in the context of government benefits, the Court has often emphasized that the Free Speech Clause imposes some limits on content- and viewpoint-based discrimination:  It has stated repeatedly, for instance, that, even in the provision of subsidies, the Government may not “ai[m] at the suppression of dangerous ideas.”  Regan v. Taxation With Representation of Wash. (1983); Legal Services Corp. v. Velazquez (2001).  The Court has also insisted that the government have at least some legitimate interest in drawing such lines. 

There’s not much of a legitimate interest here, however.  As I noted above, the government made a passing effort to argue that it refuses to register disparaging marks in order to ensure that others won’t perceive government endorsement, or approval, of those marks—the “disassociation” argument.  Although Justice Alito didn’t do enough to explain why, I think he’s almost certainly right that the disparaging-marks nonregistration rule is a solution in search of a problem:  As Alito notes (citing the examples in the Appendix to the Redskins’ amicus brief), “[e]ven today, the principal register is replete with marks that many would regard as disparaging to racial and ethnic groups.”  In light of this longstanding PTO practice, no reasonable observer could possibly conclude that the U.S. government approves or endorses all of the marks that it registers.  The “avoiding endorsement” concern, in other words, is at best unreasonable, and at worst a pretext.

So what is the government’s actual interest, anyway?  The Solicitor General’s briefs are refreshingly candid on that score.  Page 8 of the reply brief, in particular, acknowledged that the purpose of refusing registration to disparaging marks is to “[e]ncourag[e] commercial actors to conduct business in a way that does not insult potential consumers.”  “The government . . . has an interest in encouraging marks that identify and promote a person’s own goods and services without disparaging competitors,” wrote the Solicitor General.  Congress may seek to encourage the use of non-disparaging marks by making the benefits of federal registration unavailable for racial slurs and personal insults.”

In other words, Congress (and the PTO) are trying to use the registration system to “encourage” people to choose identifiers that will avoid insulting or disparaging others--which, in this case, means not using marks, for the same goods and services, that do disparage (because, after all, when it comes to trademarks, it’s usually a zero-sum game: either the band will call itself “the Slants” or it will choose a different name).  That might be a laudable goal—to skew the private “marketplace of ideas” in the direction of civility—but it’s one that classic Free Speech doctrine views with deep skepticism. 

It is true, as the government noted, the Court has held in cases such as Rust v. Sullivan (1991) that “Congress may ‘selectively fund a program to encourage certain activities it believes to be in the public interest without at the same time funding an alternative program which seeks to deal with the problem another way.’”  But where, as here, the state’s admitted object is not only to “encourage certain activities it believes to be in the public interest,” but also to incentivize people to abjure the use of disfavored speech, well, then, as in Legal Services Corp. v. Velazquez, that seems to come awfully close to describing what the Court presumably means when it warns that the government may not use selective speech subsidies to “ai[m] at the suppression of dangerous ideas.”

In other words, the Court might have resolved the case by simply holding that the government’s acknowledged objective is a constitutionally illegitimate one, at least when it comes to the use of government subsidies (or “services”).  (To be sure, the Court has held that the government can try to achieve those same ends by way of its own speech—using the “bully pulpit,” for example, to implore people to be more civil to one another.  Public schools teach their students that lesson every day.  See also, e.g., Meese v. Keene (1987); Johanns v. Livestock Marketing Assn. (2005).  Rightly or wrongly, however, the Court has repeatedly said that what the state can attempt to achieve by speaking it cannot always aim to do via selective conferral of state benefits.)

There is one sentence in Tam that points toward this rationale:  Justice Kennedy writes that “[t]he danger of viewpoint discrimination is that the government is attempting to remove certain ideas or perspectives from a broader debate.”  Perhaps a majority of the Court should have picked up on that notion, and simply held that the Constitution forbids the viewpoint-based manipulation of government subsidies when it is done—as the government concedes it was here—in an effort “to remove certain ideas or perspectives from a broader debate.”  

Such a holding would hardly have resolved all the famously difficult questions raised by doctrinal distinctions between benefits and burdens—that would be too much to ask of any single Free Speech decision.  Most obviously, it would not explain why it is permissible for the government to selectively subsidize private speech in order to promote one side of a public debate (e.g., in Rust, discouraging abortions), but not permissible to use subsidies as a means of persuading others to forego expressing a particular viewpoint or perspective (in Justice Kennedy’s words, to “remove” an idea or perspective from the public debate).  Even so, such a rationale would have been more explicable, and thus more satisfying, than the hodge-podge of analysis found throughout the two principal opinions, neither of which commanded a majority of the Court on the case’s central questions.

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