The Supreme Court has indicated that it will hear an appeal by the Obama administration of a Federal Circuit holding that found that Section 2(a) of the Lanham Act, as applied, violated the First Amendment of the United States Constitution. NBC reports:
The U.S. Supreme Court on Thursday agreed to decide whether a federal law barring trademarks on racial slurs violates free speech rights in a case involving an Oregon band called The Slants that could impact the high-profile dispute over the name of the NFL's Washington Redskins.
The justices said they would hear the Obama administration's appeal of a lower court ruling last year that sided with the Portland-based Asian-American rock band in its free-speech challenge to part of the 1946 law governing federal trademarks.
The applicable statute states that the U.S. Patent and Trademark Office (“PTO”) need not grant any trademark which “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute[.]”[1]
In In re Tam, an all Asian-American band was denied a trademark for its name, ”The Slants,” on the grounds the name was racially offensive and disparaging and therefore violative of Section 2. The Federal Circuit initially affirmed the PTO’s denial, but upon further hearing en banc, the Court found the disparagement clause of the Lanham Act unconstitutional:
The government proffers several interests to justify its bar on disparaging trademarks. It argues principally that the United States is “entitled to dissociate itself from speech it finds odious.” Appellee’s En Banc Br. 41. This core argument rests on intense disapproval of the disparaging marks. See, e.g., Appellee’s En Banc Br. 1 (“the most vile racial epithets and images”); id. at 2–3 (“racial slurs . . . or religious insults, ethnic caricatures, misogynistic images, or any other disparaging terms or logos”); id. at 14 (“racial epithets”); id. at 21 (“racial slurs and similar disparagements”); id. at 22 (“including the most vile racial epithets”); id. at 41 (“speech [the government] finds odious”); id. at 44 (“racial slurs”). 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.” Appellee’s En Banc Br. 43. 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. See supra at 53–55. Its costs are the same costs that would be incidental to any governmental registration: articles of incorporation, copyrights, patents, property deeds, etc. (“More ‘public funds’ are being expended in the prosecution of this appeal than would ever result from the registration of the mark.”). Finally, labeling this sort of interest as substantial creates 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. This holds true even though the government claims to have a “compelling interest in fostering racial tolerance.” Appellee’s En Banc Br. 43 (citing Bob Jones Univ. v. United States, 461 U.S. 574, 604 (1983)). Bob Jones University 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. Id. at 595.
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.:
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.
505 U.S. at 392 (first alteration in original; citations omitted). What is true of direct “silencing” is also true of the denial of important legal rights. “[I]n public debate we must tolerate insulting, and even outrageous, speech in order to provide adequate breathing space to the freedoms protected by the First Amendment.” Snyder, 562 U.S. at 458 (quoting Boos v. Barry, 485 U.S. 312, 322 (1988)) (alterations omitted). The case law does not recognize a substantial interest in discriminatorily regulating private speech to try to reduce racial intolerance. Moreover, at the level of generality at which the government invokes “racial tolerance,” it is hard to see how one could find that § 2(a) “directly and materially advanc[es]” this interest and is narrowly tailored to achieve that objective. Lorillard Tobacco Co., 533 U.S. at 555–56. Disparaging speech abounds on the Internet and in books and songs bearing government registered copyrights. And the PTO has granted trademark registrations of many marks with a racially charged character. Further, the connection to a broad goal of racial tolerance would be even weaker to the extent that the government suggests, contrary to our conclusion in II.A supra, that denial of registration has no meaningful effect on the actual adoption and use of particular marks in the marketplace. Finally, the government argues that it has a legitimate interest in “allowing States to make their own determinations about whether trademarks should be unenforceable on grounds of public policy.” Appellee’s En Banc Br. 44. However, this interest cannot stand alone. If § 2(a) is otherwise unconstitutional, the government cannot render it constitutional by arguing that it is necessary so that states can partake in the same unconstitutional message-based regulation of trademarks. The government, in essence, argues that it has a legitimate interest in leaving the door open for states to violate the Constitution. This interest is certainly not legitimate, let alone substantial. We conclude that the government has not presented us with a substantial government interest justifying the § 2(a) bar on disparaging marks. All of the government’s proffered interests boil down to permitting the government to burden speech it finds offensive. This is not a legitimate interest. With no substantial government interests, the disparagement provision of § 2(a) cannot satisfy the Central Hudson test. We hold the disparagement provision of § 2(a) unconstitutional under the First Amendment.[2]
The PTO appealed the holding to the Supreme Court.
The case is of great interest because of its implications in a much more famous case, that over the revocation of trademarks for the Washington Redskins football team. We blogged on that case almost a year ago. The Supreme Court’s holding in In re Tam will doubtless have profound implications for the future of commercial speech in the United States.
[1] 15 U.S. Code § 1052(a).
[2] In re Simon Shiao Tam, 2014-1203, at 59-61 (Fed. Cir. Dec. 22, 2015).