Part Three:  The Best Arguments for Allowing the Denial of Registration to Disparaging Trademarks

This post is the third in a series on Lee v. Tam, a case addressing whether the federal government may deny registration to trademarks that disparage individuals, institutions, or racial and ethnic groups.  The previous posts are here and here.

In this post, I will present the strongest case for reversing the Federal Circuit, which struck down the disparagement clause as unconstitutional.  Some of the best arguments for the position that the disparagement clause is constitutional are articulated in an excellent brief written by amici curiae Law Professors, whose research and teaching focuses on intellectual property law.  After presenting these arguments, I will begin a rebuttal.  My current inclination is that the Federal Circuit’s holding is correct.  Much of the Law Professors’ argument depends on classifying the disparagement clause as targeting only content, not viewpoint, but I believe the disparagement clause is an impermissible viewpoint-based classification of speech.

Amici’s argument, in essence, is as follows  (in my words):

Trademark registration provisions do not censor speech.  Instead, trademark registration extends benefits in a constitutional manner to source-identifying marks that meet the criteria for trademark registration.  The Federal Circuit thus improperly applied strict scrutiny, the high level of scrutiny appropriate for assessing content- or viewpoint-based restrictions on the general public’s speech, to the disparagement clause of the trademark registration provisions.  

Trademark registration is a government program that, by necessity, must make content-based judgments about speech.  As examples, trademark registration is also denied to marks that are immoral or deceptive, marks that use terms that describe a product (this denial enables other companies to associate these descriptions with their product as well), or marks that use the flag or insignia of the United States or another country. If the disparagement clause is invalidated under strict scrutiny, many of these other provisions of registration law would also be susceptible to invalidation.  Invalidating the disparagement clause would thus cause “widespread chaos” in trademark law. 

The government is permitted to make content-based judgments about speech when administering a government program even if it cannot make those types of judgments when censoring speech.  Denial of a trademark registration is not akin to censorship because the applicant for trademark registration (be it Washington’s football team or The Slants) can still use its trade name and express its viewpoints outside of the trademark program.  Any speech interests the applicant has outside of the program remain unaffected by trademark registration.  Indeed, trademark registration gives applicants the right to censor other people’s speech, to prevent others from using their trademark.  (The amicus brief of Amanda Blackhorse et al., in the pending case involving Pro-Football and Washington’s football team,  makes a similar argument and goes even farther to argue that therefore the First Amendment is not even implicated here.)

Amici also argue that trademark registration should not be compared to the intersection of copyright law and the First Amendment.  Copyright, unlike trademark, protects expression itself.  Denying copyright to material because it is disparaging or offensive would prohibit the copyright seeker from getting the benefits of copyright because of the content of the expression.  Copyright truly targets the content of a work as a condition of benefits.  Trademark law is different because “it protects only the source identification function of a symbol and not the symbol itself.”  Trademark law therefore permits an applicant to use the disparaging expression, while still getting the benefits of trademark registration, so long as the applicant comes up with another non-disparaging source-identifying mark.  Applicants are not denied the benefit of trademark simply due to their expression and can still use that expression alongside a more appropriate trademark.  Applicants can still use the disparaging expression while getting the benefit of trademark, and the government can avoid the appearance of endorsing discrimination in commerce.

Amici’s brief is, truly, inspiring to read in its mastery of legal nuance and persuasive advocacy.  I found amici’s argument about copyright law to be the most convincing.  I therefore tentatively believe that The Slants’ position cannot depend on the argument that the government cannot restrict trademark registration simply because it could not deny copyright protection in the same circumstances.  The amicus brief also gave me pause about whether strict scrutiny should be applied here, given the other content-based provisions of the trademark registration scheme.  However, the amicus brief has not (yet) caused me to alter my view that the Federal Circuit’s decision is correct.  This is because I believe the disparagement clause discriminates on the basis of viewpoint (not content), and viewpoint-based discrimination is basically never constitutional.

I think this amicus brief is so good partially because it had to be good to make a persuasive case for the denial of trademark registration to The Slants.  The nuances of this brief are what make it such an enjoyable read.  But I believe those nuances betray an argument that is built upon a house of cards that ultimately cannot hold up.  If you pull away one of the cards – if the Supreme Court declares the disparagement clause to be viewpoint based (not merely content based) – the entire house of cards will fall.

The distinction between content-based discrimination of speech and viewpoint discrimination of speech undergirds much of the Law Professors’ position.  Content-based restrictions on speech target whole categories of speech, such as political speech or violent speech, whereas viewpoint-based restrictions target actual opinions within a category, such as lobbying for environmental regulations or advocating in favor of non-violent protest.  If the disparagement clause is viewpoint based, many of Law Professors’ arguments are nullified.

First, trademark law wouldn’t fall into disarray if the Supreme Court deemed other provisions of trademark registration, such as the ban on deceptive trademarks or the ban on the use of flags, to be merely content-based, not viewpoint based.  Then the Court could strike down the disparagement clause while upholding the important other provisions.  Even the ban on registering immoral or scandalous material could potentially be classified as a content-based provision, not a viewpoint-based provision (although that is a closer case).

Of course, strict scrutiny applies even to content-based restrictions on speech.   Thus, under the Federal Circuit’s analysis, the ban on registering immoral or scandalous trademarks might also be deemed unconstitutional.  However, the ban on deceptive trademarks, which is critical to the registration scheme, would likely be upheld, as would the use of flags if the flags were deployed in a way that deceived the consumer.  Deceptive speech warrants less protection in the same way fraud is an actionable tort and libel can be restricted if the speech is false.

The content/viewpoint distinction matters more if, as amici argue, trademark registration were deemed a government program.  Analyzing the disparagement clause as if it is part of a government program is critical to reversing the Federal Circuit’s decision.  In Part II, tackled some arguments against why trademark registration should not be considered a government program (although there is more to say to contend with Law Professors’ brief).  But even if trademark registration is considered a government program, government programs are not permitted to deny benefits on the basis of viewpoint, even if the government can make content-based determinations.  The only time the government is allowed to discriminate on the basis of the viewpoint (as opposed to content) of speech is when the speech belongs to the government.  For example, the government may run an anti-smoking campaign, but it need not run a pro-smoking campaign.  Trademarks, which span enemies from the Yankees to the Red Sox, do not involve speech coming from the government.

In my next post, I will address the imprecise boundary between content-based and viewpoint-based classifications of speech.  This distinction is critical to the entire case.  Even though there is a fuzzy line separating when a restriction is content based or viewpoint based, I do not believe the disparagement clause presents a close case.  If the Court were to hold that the disparagement clause was only a content-based restriction on speech so as to revive the disparagement clause, the Court would be further muddling the doctrine.  Classifying the disparagement clause as a mere content-based determination would do a severe disservice to both First Amendment doctrine and rule of law values.

I want to finish by adding that it is essential that the Supreme Court not credit the argument that the government does not want to appear to be endorsing discrimination in commerce.  This line of reasoning could allow the government to deny all sorts of benefits (and perhaps even impose penalties) on commercial entities whose expression (not conduct) the government finds disparaging.  Trademarks so clearly belong to their owners that the government cannot use a fear of endorsement to deny benefits based on any attenuated connection between the trademark and government approval.  Further, the government’s concern that it wishes to avoid endorsing discrimination lends even more support to the position that the disparagement clause involves impermissible viewpoint discrimination, a position which I will fully flesh out next time.