Oral Argument in Lee v. Tam: Justice by Justice

Today, the Supreme Court heard oral argument in Lee v. Tam, a case about whether a federal statute barring registration of racially offensive trademarks violates the First Amendment.  For background and legal analysis on the case, I have written a blog series, which starts here.  Because the Justices framed the issues in this case so differently, this oral argument post will detail the views and concerns of each Justice, Justice by Justice.  I will also address how the attorneys for each side handled those concerns, and who I thought won over each Justice.


Chief Justice Roberts:

Chief Justice Roberts asked tough questions of both attorneys.  He asked Malcolm Stewart, Deputy Solicitor General (representing the Petitioner Patent and Trademark Office’s decision to deny trademark registration to The Slants), about the limits of Petitioner’s argument that the government should be permitted to restrict disparaging speech within its own government program.  The Chief described Petitioner’s argument as “circular,” because the government was defining its own program as permitting trademarks that are not disparaging.  Chief Justice Roberts also seemed to reject Deputy S.G. Stewart’s position that because a school is permitted to set up a bulletin board with limitations on disparaging speech (unclear if this is constitutional at a public university), the PTO should be able to do so as well with its trademark registrations.  The Chief replied that trademark registration is a much broader program than one “particular discussion venue.”

Chief Justice Roberts also posed the toughest hypothetical to Mr. John Connell, the attorney representing Respondent The Slants.  If the government wanted to put on a Shakespeare lecture series, could it limit participants to only those who celebrate Shakespeare?  Mr. Connell indicated that this would be permissible, leading The Chief to note that the disparagement bar should then be permissible as well.

On balance, I think Chief Justice Roberts is likely to side with Respondent, but he seemed concerned with the implications of both sides’ legal positions.

Justice Kagan: 

Justice Kagan’s questions tracked my analysis most closely.  Her questions to Petitioner centered on the fact that trademark registration is not government speech.  The government therefore cannot discriminate on the basis of viewpoint, even if trademark registration is a government program.  The disparagement clause appears to embody impermissible viewpoint-based discrimination because trademarks expressing disparaging views cannot be registered, but a trademark of a hypothetical band called “Asian Pride” could be registered.

Deputy S.G. Stewart gave an interesting reply – that the disparagement clause does not discriminate on the basis of viewpoint because the statute does not evince government suppression of a particular viewpoint.  The PTO does not deny trademarks to those who disparage Democrats, or even all politicians.  Instead, no trademarks that are disparaging to anyone are permitted.  To this, Kagan rebutted: “But that’s like saying [the government] does so much viewpoint-based discrimination that it becomes all right.”

Justice Kagan thus appeared to favor Respondent The Slants’ legal position.  However, she, at one point, took the position that trademark registration approaches government speech, and perhaps the government should have more leeway to regulate who received trademark registration.  Justice Kagan elicited a laugh when she asked Respondent why the government couldn’t set up some sort of forum for speech that is only positive: “I mean, maybe the government just decides we want to celebrate everything. We want to be relentlessly positive.”

Justice Breyer:

Justice Breyer explicitly informed both sides that he had only one question:  How does a ban on disparaging trademarks serve the purposes of trademark law?

Justice Breyer likely wanted an answer to this question because he believes that the government should be permitted to enact regulations that reasonably serve the purposes of a government program.  Deputy S.G. Stewart seemed to satisfy Justice Breyer, claiming that the point of trademark law is to allow consumers to identify the source of a trademark, and racially disparaging trademarks distract from that source-identifying function.  However, as Justice Breyer noted, so many trademarks that are distracting are registered.

The Slants’ attorney, John Connell, did not serve his client (or the First Amendment) well in his response to Justice Breyer.  Mr. Connell claimed that preventing insults is completely unrelated to trademark law and the Lanham Act.  This is a fine point, except Mr. Connell then claimed that therefore the PTO would have to register libelous trademarks, and even trademarks that use one of George Carlin’s “Seven Dirty Words.”

Mr. Connell did smartly note that the government is now pulling “out of thin air” the notion that one of the purposes of trademark law is to prevent consumers from being insulted.  However, his argument relied on positions far more extreme than his case demanded.  At one point, he was forced to retract his argument that trademark registration is a traditional public forum, an argument that is unnecessary because viewpoint discrimination is unconstitutional even in a more limited forum.

Justice Breyer appeared to favor Petitioner’s side.   He also seemed to want to treat the denial of trademark registration as a time, place, and manner restriction, even though the disparagement clause is not content neutral.

Justice Ginsburg:

Justice Ginsburg seemed to strongly favor Petitioner’s side.  She feared that if the disparagement clause were overturned, other provisions like the bar on scandalous or immoral trademarks would also be invalidated.  She also noted that The Slants were seeking to reclaim a racist stereotype, not actually disparage, although I believe (as does Justice Kennedy) that this point is irrelevant to the First Amendment analysis.

Justice Ginsburg also sided with Petitioner that trademark is different than copyright.  The Justices all seemed to agree that copyright registration could not be denied based on whether a term was offensive, and Deputy S.G. Stewart seemed to satisfy many of the Justices that copyright was historically tied to free expression and thus is distinguishable from trademark registration.

Justice Sotomayor:

Justice Sotomayor also seemed to strongly favor Petitioner’s side.   She focused on the fact that the disparagement clause does not actually ban speech outright, and that the denial of trademark registration does not actually burden The Slants much (a point I cover here).

Justice Kennedy:

Justice Kennedy seemed to weakly favor Respondent’s side.  He disliked the idea of the government as “omnipresent schoolteacher,” telling us when we can and cannot insult each other.  However, he seemed quite displeased with Mr. Connell’s argument that trademark is just like a public park (an unnecessarily extreme position).  Justice Kennedy and Mr. Connell also elicited laughter when, after Justice Kennedy told Mr. Connell that he had to take the position that the disparagement clause would be unconstitutional even if The Slants were a band of non-Asian racists, Mr. Connell then took that position.

Justice Alito:

Justice Alito seemed most concerned with whether trademarks are expressive or whether they are simply commercial speech.  Although he did help Mr. Connell out of a legal jam at one point, and he asked tougher questions of Petitioner, my guess is that he would favor Petitioner (because Justice Alito is, to my mind, the least speech-protective Justice on the Court).

Justice Thomas:

Justice Thomas did not ask questions at oral argument, but I will guess that he favors Respondents, for fear of giving the government too much power to determine what is and is not a slur.

Given the views and concerns of the Justices, I think this case may split 4-4.  A split decision would create no Supreme Court precedent but would uphold the decision of the Federal Circuit, which invalidated the disparagement bar as unconstitutional.  If Chief Justice Roberts feels a strong need to create precedent, I could see him joining the Justices willing to side with Petitioner and allow this law.  My hope, regardless of the outcome, is that the Court does not muddle First Amendment law too badly, because many of the articulated frameworks for resolving this case were fairly legally incoherent.  The argument is nonetheless an enjoyable read, and I look forward to listening to the audio.

(Analysis of the opinion is now here.)

5 thoughts on “Oral Argument in Lee v. Tam: Justice by Justice”

  1. I attended this argument (#41 in the public line at 04:35, so well-attended). My thoughts are roughly consistent with yours, with some notable distinctions.

    Chief Justice Roberts musing about circularity may be a deliberate, implicit callback to Justice Kennedy making the same point in oral argument in Walker v. Texas Division, Sons of Confederate Veterans (another oral argument I attended). Given how Kennedy voted there, I doubt Roberts needs to worry about Kennedy. But a subtle reference can’t hurt.

    As to the “toughest hypothetical”, maybe. (I would have classified the Shakespeare festival as a nonpublic forum.) But it seemed to me the response was the problem, not the hypothetical’s difficulty. In court I assumed comparing trademarks to a traditional (rather than limited) public forum was a thinko or argument jitters, because then “too short can’t be trademarked” and other innocuous limits would have to fall, which would eviscerate the idea of a trademark. Only later did I learn about cert-stage worries that Tam’s counsel couldn’t handle the big stage. (Self-servingly by the Redskins wanting to argue their petition, yet others agreed with them.) Those views seem validated (at least as to oral argument).

    Justice Kagan’s lean looks right, but that government-speech question worries me, as does her Walker vote.

    Justice Breyer’s probably going to write a mushy opinion that suppressing disparaging trademarks is “close enough” to the purpose of trademark that it’s permissible. Maybe a better advocate could have fobbed off the dirty-words question somehow, but it seems to me the logic of his position leads directly to that, and trademark’s positives vastly outweigh the small negative of allowing Cohen v. California-style trademarks.

    Justice Ginsburg’s lean is sad. I really expected more of her as a former ACLU lawyer, in Walker and now here. Maybe she’ll surprise me now. Justice Sotomayor, on the other hand, wanting to “protect” especially minorities is par for the course.

    I think Walker places Justice Kennedy solidly on Tam’s side. His frustration with the public-park bit seemed based in its clear wrongness, not in antipathy toward Tam.

    I’ll be extremely surprised if Justice Alito votes for the Government. He’s least speech-protective about some things, but Walker seems peas in a pod with this case, and for the varyingly-political valence of the speech in the two cases. I think he sees trademarks as too obviously speech to have any cold feet.

    I want to think Justice Thomas will see trademarks as speech that can’t be limited based on viewpoint, but his casting the deciding vote in Walker greatly worries me. Given the attenuation of government imprimatur here (as opposed to on license plates), I suspect he favors Tam.

    That’s 5-3 for Tam. By deciding the case, the Court would very fortunately not give the Redskins as a less sympathetic plaintiff the ability to argue this issue before a full Court. But the justices this term have generally granted cases they could dispose of without fear of significant division, and in advance Walker boded poorly for Tam. Finally, I predicted Texas SCV would win unanimously, so my track record in this area isn’t good.


    1. Thanks for these thoughts, Jeff. I hope you’re right. Walker is a major problem, but, as I thought that wasn’t correctly decided in the first place, I certainly hope the Court recognizes the many distinctions here.


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