Today, the Court announced its opinion in Matal v. Tam, previously (well) known as Lee v. Tam.  This post will be the final post in a series on that case.  The Court unanimously held that federal law prohibiting registration of disparaging trademarks violates the First Amendment.  Respondent Tam, a member of The Slants, now has the opportunity to register The Slants’ trademark, if the band name meets the other trademark requirements.  The cancellation of the Washington football team’s registration is now also likely illegal.  Speech, according to Justice Alito’s opinion, “may not be banned on the ground that it expresses ideas that offend.”

After oral argument, in a Court without Justice Gorsuch, I predicted that the Court would split 4-4.  In that event, the Federal Circuit’s decision striking down the disparagement clause would be affirmed by an equally divided Court.  This prediction was mostly wrong.  Every Justice voted to strike down the disparagement clause, although the Court did split 4-4 in its reasoning.  This post will cover the fractured opinions in Matal v. Tam.

 

Here is the breakdown of the opinion:

“ALITO, J., announced the judgment of the Court and delivered the opinion of the Court with respect to Parts I, II, and III–A, in which ROBERTS, C. J., and KENNEDY, GINSBURG, BREYER, SOTOMAYOR, and KAGAN, JJ., joined, and in which THOMAS, J., joined except for Part II, and an opinion with respect to Parts III–B, III–C, and IV, in which ROBERTS, C. J., and THOMAS and BREYER, JJ., joined. KENNEDY, J., filed an opinion concurring in part and concurring in the judgment, in which GINSBURG, SOTOMAYOR, and KAGAN, JJ., joined. THOMAS, J., filed an opinion concurring in part and concurring in the judgment. GORSUCH, J., took no part in the consideration or decision of the case.”

First, the entire Court joined parts I and III.A:

The Court explained that the Patent and Trademark Office (PTO) comes to deem a trademark disparaging by (1) looking to its ordinary meaning, and (2) determining if some substantial composite of the population would find the trademark disparaging in light of contemporary attitudes, regardless of whether the trademark applicant was a member of the referenced group.  The entire Court deemed trademarks more than simply identifiers of commercial goods, but ways to convey a message.  Although these messages may still be communicated even without a registered trademark, trademark registration confers important legal benefits.  (I explored the benefits of trademark registration in Part I.)

The Court also unanimously concluded that the trademark registration scheme fosters private speech, not government speech.  The government is permitted to express its own viewpoint when speaking for itself, and can concomitantly discriminate against other viewpoints in its own speech.  However, trademarks are private speech.  Simply registering trademarks does not constitute government speech (an argument I outline in Part V of my series).  The Court distinguished Walker v. Sons of Confederate Veterans, a recent case expanding government speech to vanity license plates.  License plates, according to the Court, are closely associated in the public’s mind with government speech, and the government tightly controls the messages conveyed on license plates.

Although the Court rightly held that the government is not speaking when it issues a trademark to The Slants, this distinction with Walker is not entirely satisfying.  The vanity message plates in Walker were also selected by private individuals.  Walker likely represents the high water mark of when personal messages can be attributed to the government, because of the public’s perception of the state’s heavy involvement in license plate issuance.

The Court also refused to distinguish trademark and copyright (an argument made by Petitioner PTO that I outline in Part III of my series).  The Court did not want to give the government the ability to deny copyright to works that are perceived as disparaging individuals or groups.

The entire Court except for Justice Thomas joined Part II.

Part II of the opinion addressed Respondent Tam’s claim that the trademark disparagement clause applies only to individuals, not racial groups.  Tam argued that denial of registration to The Slants was impermissible on statutory grounds – because the PTO misinterpreted the disparagement clause.

The Court did not grant certiorari on the statutory issue but nonetheless addressed it, because Tam’s argument would render unnecessary resolution of the free speech question.  According to the seven Justices who joined this portion, the disparagement clause does apply to racial and ethnic groups.  The plain language of the disparagement clause prohibits registration of trademarks that disparage “persons … living or dead,” and also “institutions” and “beliefs.”  Tam’s reading of “persons” to mean only individuals and not groups is too narrow; it fails to account for the breadth of the disparagement clause and the fact that groups are made up of “persons.”

Justices Alito, Roberts, Thomas, and Breyer joined Parts III-B, III-C, and IV.

Four of the Justices, I believe correctly (as I analyze in Part II of my series), distinguished cases involving government programs.  These Justices considered the PTO’s argument that the government need not subsidize speech with which it disagrees.  According to Justice Alito, cases involving government programs are distinguishable because they either “involved cash subsidies or their equivalent,” or designated a substantial non-cash benefit only to activities they “particularly desired to promote.”

In contrast, trademark registration confers legal entitlements, not funds devoted to a particular government program (such as family planning in Rust v. Sullivan).  The government is not promoting some activities at the expense of others, but simply designating when a mark can be registered to demonstrate trademark protection.  Every government service requires the expenditure of government funds, but that expenditure does not give the government cover to deny benefits to private speech based on viewpoint.

Trademark registration is not a government program but a limited forum for private speech.  Even in a limited forum, the government may not discriminate against this speech on the basis of viewpoint.  Because “[g]iving offense is a viewpoint,” the disparagement clause constitutes impermissible viewpoint discrimination.  (I agree and further explore this tricky argument in Part IV of my series.)

These Justices also held that they need not decide whether trademarks are commercial speech. Even using the more deferential scrutiny applied to commercial speech, the government does not have a legitimate interest in “preventing speech expressing ideas that offend.”  Justice Breyer must not have been satisfied by the PTO’s argument that disparaging trademarks detract from the legitimate purposes trademarks service.  Interestingly, these Justices thought that prohibiting any disparagement was simply too broad, but appeared sympathetic to a narrower government interest in preventing discrimination in commerce.  There is some room in this opinion for the idea that the disparagement clause could have been sustained, if trademarks were commercial speech and the disparagement clause were limited to trademarks that “support invidious discrimination.”

Justice Kennedy wrote an opinion concurring in part and in the judgment, joined by Justices Ginsburg, Sotomayor, and Kagan:

Justice Kennedy’s opinion explains that because the disparagement clause constitutes impermissible viewpoint discrimination, the Court’s analysis covering government programs and the commercial speech issue is unnecessary.  Viewpoint discrimination is “presumptively unconstitutional” in almost any context.

The analysis here on viewpoint discrimination is helpful and illuminating.  Although the disparagement clause applies to all sides or an argument, mandating positivity might silence dissent and distort debate.  The government is not allowed to select the content for a particular forum (here, trademarkable material) and then mandate only one sort of comment about that content.  The government also may not discriminate against speech based on audience reaction.  The government’s attachment of burdens to certain speech simply because it believes audiences will be offended is “simply government hostility and intervention in a different guise.”

Justice Kennedy’s concurrence may prevent this opinion from affecting the more commercial aspects of trademark law, such as labeling provisions and consumer protections from misleading speech.  The disparagement clause involves, in a less commercial way, “the expression of everyday life.”

Justice Thomas wrote an opinion concurring in part and in the judgment.

Justice Thomas’s short opinion explained that he declined to join Part II because Respondent Tam did not present the statutory argument before the PTO.  He also noted that strict scrutiny is appropriate, whether or not the speech is classified as commercial.

———————————————————————————————————————

Although Matal v. Tam fractures into separate opinions, these opinions never contradict each other, but simply augment each other.  Justice Kennedy’s concurrence provides necessary illumination of why the disparagement clause constitutes impermissible viewpoint discrimination — even though the clause prohibits all disparaging speech, not tied to a particular view.  Justice Alito’s portions that are joined by three other Justices quite rightly distinguish government-program cases.  That line of analysis may not technically be necessary, given that the disparagement clause works unconstitutional viewpoint discrimination.  However, these portions of the opinion address critical arguments made by the PTO that affect the framework we use to analyze the disparagement clause.

Every member of this Court affirmed the fundamental idea that the government may not decide which speech is too offensive to enter the marketplace of ideas.  The government further may not discriminate against speech based on perceived listener response, regardless of the intent of the speaker.  Although these principles are already embedded in our First Amendment jurisprudence, many question them, especially in cases where the government may seem to endorse the speech.  Matal v. Tam is therefore a significant case that limits the government’s ability to restrict speech based on the provision of some government benefits.  Contexts as varied as speakers invited to universities to our copyright scheme are protected from censorship by today’s decision.

[Edit:  Other provisions of trademark registration – such as the prohibitions on registering profane and scandalous material – are now vulnerable to being struck down.  These provisions could be upheld if they are deemed merely content-based discrimination and not viewpoint-based discrimination.]