Supreme Court Confirms Unconstitutionality of Lanham Act’s Disparagement Clause
Matal v. Tam, (June 19, 2017) (ALITO (for the Court as to the holding and certain sections; with Roberts, Thomas, and Breyer as to remaining sections); Concurrence in part/concurrence in the judgment by Kennedy (with Ginsburg, Sotomayor, Kagan); Concurrence in part/concurrence in the judgment by Thomas) (Fed. Cir. (en banc): MOORE (with Prost, Newman, O’Malley, Wallach, Taranto, Chen, Hughes, Stoll); Concurrence by O’Malley (with Wallach); CIP/DIP by Dyk (in part with Lourie, Reyna); dissent by Lourie; dissent by Reyna) (TTAB) (5 of 5 stars)
Supreme Court affirms Fed Cir’s determination that the Lanham Act’s prohibition on registration of disparaging trademarks violates the Free Speech Clause of the First Amendment. The opinion first rejects Mr. Tam’s argument that because his mark “THE SLANTS” addressed a racial/ethnic group (i.e., those of Asian ethnicity), and not a “natural or ‘juristic’ person,” it fell outside the Lanham Act’s disparagement clause. The clause applies to marks that disparage “persons,” and so a mark disparaging many or all members of a racial/ethnic group necessarily falls within the clause. The opinion rejects as “unpersuasive” and “unenlightening” Mr. Tam’s tender of evidence of “the PTO’s willingness for many years to register marks that plainly denigrated African-Americans and Native Americans.” Op. at 11.
As to the Constitutional arguments, the opinion rejects the government’s argument that registered marks are a form of government speech rather than private speech. It cites numerous examples of “contradictory views” among the marks on the register. Johanns, 544 U.S. 460 (2005), is not contrary because in that case the government was an active participant in the creation of certain advertisements. Summum, 555 U.S. 460 (2009), is also distinguishable because in that case there was a history of the public viewing monuments on public land as examples of public speech. And Walker, 135 S. Ct. 2239 (2015), is similarly distinguishable because of the history of states using license plates to convey messages, and Texas’s “direct control” over the messages conveyed thereon. Next, the opinion rejects the government’s argument that the disparagement clause is constitutional as an example of government-subsidized speech. It finds the government’s cited cases (Rust, 500 U.S. 173 (1991); Finley, 524 U.S. 569 (1998); Am. Library Ass’n, 539 U.S. 194 (2003); Regan, 461 U.S. 540 (1983)) all involved either cash subsidies or tax breaks, neither of which was present here. Third, the opinion rejects the government’s argument that the clause is constitutional as a “government program.” It distinguishes the government’s cited cases (Davenport, 551 U.S. 177 (2007); Ysursa, 555 U.S. 353 (2009)) as occupying a “special area of First Amendment case law” not applicable here.
The opinion declines to determine whether the disparagement clause is reviewable under strict scrutiny or relaxed scrutiny per Central Hudson, 447 U.S. 557 (1980). Even under Central Hudson review, the disparagement clause is insufficiently narrow to withstand Constitutional review.
[ NB: The opinion’s discussion of the “government subsidy,” and “government program” arguments, and its analysis of the Central Hudson issue, are plurality opinions supported by Justice Alito (as author), Chief Justice Roberts and Justices Thomas and Breyer. ]
Concurrence-in-part/concurrence in the judgment (Kennedy): Justice Kennedy views the disparagement clause as “viewpoint discrimination—a form of speech suppression so potent that it must be subject to rigorous constitutional scrutiny.” Kennedy Concur. at 1. In his view, this rationale renders the “extended treatment of other questions” by the parties unnecessary. Id.
Concurrence-in-part/concurrence in the judgment (Thomas): Justice Thomas would have deemed Mr. Tam’s argument that his mark fell outside the scope of the disparagement clause as waived, and not part of the certiorari grant. He also reiterates his view that strict scrutiny should apply to regulation of commercial speech, and his disagreement with the less stringent Central Hudson approach.
Justice Gorsuch did not participate.
KEYWORDS: TRADEMARK; DISPARAGEMENT; FIRST AMENDMENT; MATAL; TAM