Matal v. Tam

Matal v. Tam, decided June 19th, 2017. The Supreme Court affirmed the en banc Federal Circuit and held that the Lanham Act's disparagement clause — the bar on registering trademarks that may disparage persons, living or dead — violates the First Amendment's Free Speech Clause. Justice Alito announced the judgment of the Court. The vote was eight to zero; Justice Gorsuch took no part. Here's the brief.

Simon Tam is the lead singer of a dance-rock band called The Slants. "Slants" is a derogatory term for people of Asian descent. Tam, who is Asian-American, chose the name to reclaim the slur and drain its denigrating force.

Tam sought federal registration of the mark THE SLANTS. The Patent and Trademark Office refused, invoking a provision of the Lanham Act that bars registration of marks that may disparage persons, institutions, or beliefs, or bring them into contempt or disrepute — the disparagement clause. A PTO examining attorney and the Trademark Trial and Appeal Board both found the mark disparaging to persons of Asian descent and denied registration.

Tam pursued the administrative appeals without success, then took the case to federal court. Sitting en banc, the Federal Circuit held the disparagement clause facially unconstitutional under the Free Speech Clause. The Government sought review, and the Supreme Court granted cert.

The question presented: does the Lanham Act's disparagement clause violate the Free Speech Clause?

The clause sits in section 1052(a) of Title 15. It directs the Office to refuse registration of any mark that may disparage — or bring into contempt or disrepute — persons living or dead, institutions, beliefs, or national symbols.

The Court's analysis moved through three frameworks. First, the government-speech doctrine: the Free Speech Clause does not regulate government speech, so if trademarks were government speech, the government could impose viewpoint-based conditions at will. Second, whether the clause discriminates on the basis of viewpoint — a presumptively unconstitutional form of speech regulation. And third, the relaxed scrutiny that governs commercial speech under Central Hudson.

The Court first rejected the government-speech argument. Trademarks, it held, are private speech, not government speech.

Justice Alito explained that the federal government does not create the marks it registers; an examiner may not reject a mark for the views it expresses, and registration is mandatory once a mark meets the Act's viewpoint-neutral requirements. To treat registered marks as government speech, the Court observed, would mean the government is "babbling prodigiously and incoherently" — and would dangerously extend the government-speech doctrine to reach other registration systems, like copyright. That portion of the opinion was for a unanimous Court.

On the constitutional core, all eight Justices agreed that the disparagement clause is viewpoint discrimination. The clause denies registration to any mark offensive to a substantial percentage of a group; and, as the Court put it, giving offense is a viewpoint.

From there the opinion fractured. A four-Justice plurality — Justice Alito, joined by the Chief Justice and Justices Thomas and Breyer — concluded that the clause fails even the relaxed scrutiny for commercial speech under Central Hudson, because it is not narrowly drawn to any substantial interest. Justice Kennedy, joined by three colleagues, concurred in part and in the judgment; he rested on viewpoint discrimination alone and would not reach the commercial-speech question. Justice Thomas concurred separately.

Matal v. Tam established two propositions for a unanimous Court: that trademark registration does not convert a private mark into government speech, and that a registration bar turning on whether a mark gives offense is viewpoint discrimination the First Amendment forbids. What splintered was only the remaining rationale — whether the clause independently failed commercial-speech scrutiny, or whether viewpoint discrimination alone was enough to condemn it. Two Terms later, in Iancu v. Brunetti, the Court applied Tam's viewpoint-discrimination holding to strike the Act's separate bar on "immoral or scandalous" marks.

Matal v. Tam, 582 U.S. 218, decided June 19th, 2017. I'm John Goodhue. Thanks for watching.