Federal Circuit Holds the Lanham Act's Antidisparagement Provision Unconstitutional.
Comment on: 808 F.3d 1321 (Fed. Cir. 2015) (en banc)
Passed in 1946, section 2(a) of the Lanham Act 1 (§ 2(a)) authorizes the Patent and Trademark Office to deny registration of marks that “disparage . . . persons, . . . institutions, beliefs, or national symbols.” 2 Though mark holders have challenged the provision on free speech grounds in the past, courts have categorically rejected such claims, deeming registration uncovered by the First Amendment. 3 Recently, in In re Tam, 4 the Federal Circuit reversed course. 5 Because the provision was a content- and viewpoint-based regulation of trademark’s “expressive” aspect, the en banc court held that it was subject to and failed to satisfy strict scrutiny. As a normative matter, Tam effected a partial shift in regulatory control from the legislature to the judiciary in an area of law particularly unfit for judicial management. Doctrinally, it constitutes a problematic compromise with the recent Supreme Court case Reed v. Town of Gilbert, 6 which significantly expanded the definition of content-based laws deemed presumptively unconstitutional. 7 In an effort to insulate trademark law’s central provisions from Reed, Tam claimed the unprecedented power to distinguish between trademark’s expressive and commercial regulations and subject each to varying levels of scrutiny. But this move is too tenuous to cabin Reed’s deregulatory implications for key areas of trademark law.
In 2011, Simon Shiao Tam, “‘front man’ for the Asian-American dance-rock band The Slants,” sought federal registration for his band’s mark. 8 The examining attorney refused under § 2(a), finding the band name likely disparaged people of Asian descent. 9 Tam appealed, and the Trademark Trial and Appeal Board affirmed, holding that his mark satisfied both prongs of the governing test: (1) its “likely meaning . . . refer[red] to identifiable persons,” and (2) it disparaged “a substantial composite of the referenced group.” 10 Almost as an afterthought, the Board cited to In re McGinley 11 for the proposition that because Tam could still call his band The Slants, registration refusal didn’t implicate his speech rights. 12 Again Tam appealed, this time raising a First Amendment challenge, and the Federal Circuit affirmed. 13 Writing for the panel, Judge Moore confirmed the Board’s analysis, noting McGinley foreclosed Tam’s constitutional claim. 14 Discontent with the result, Judge Moore penned “additional views,” urging the court to sit en banc and overturn its own precedent. 15
Sitting en banc, the court held the disparagement provision unconstitutional. 16 Writing again for the majority, Judge Moore 17 argued the provision was content and viewpoint discriminatory, and, therefore, subject to strict scrutiny. 18 A law is content based if “its reach is defined . . . by the topic (subject matter) of the covered speech,” 19 and viewpoint based if it aims to exclude specific “viewpoints from the marketplace.” 20 The provision not only singled out disparaging speech as a subject matter for regulation, 21 but also discriminated among viewpoints in attempting to eliminate disparaging, and not dignifying, marks from the market. 22 Hence, it faced and failed strict scrutiny. 23
The majority then rejected the government’s characterization of the provision as a regulation of “commercial speech,” subject to a lower standard of scrutiny. 24 Trademarks, in the majority’s view, embody two “inextricably intertwined” aspects 25 : they are both commercial “source identifier[s]” and expressive mediums of social discourse. 26 Because the disparagement provision specifically targeted “the mark[’s] expressive content,” it was subject to strict scrutiny. 27 In contrast, § 2’s most central provisions — § 2(d) (bar on marks causing consumer confusion) and § 2(e) (bar on misdescriptive marks) — target misleading commercial speech, thereby evading strict scrutiny. 28
Turning next to McGinley, the majority rejected the view that because Tam could still call his band The Slants, the disparagement provision left his speech rights undisturbed. 29 Perry v. Sindermann 30 repudiated this reasoning, barring the government from conditioning receipt of benefits on the relinquishment of a constitutional entitlement. 31 Per Perry, the provision conditions the benefits of registration on the use of a nondisparaging mark and therefore “creates a serious disincentive to adopt [offensive] mark[s]” like The Slants. 32 The court deemed this “chilling effect” sufficient to violate the First Amendment. 33
The majority then considered and rejected the government’s classification of registration as either a “subsidy” or “government speech,” both of which lie largely outside the bounds of the First Amendment. 34 As to the first, the majority argued that subsidies come in only two forms — monetary gifts or use of government property — and registration assumes neither. 35 As to the second, the court rejected the government’s position that it could “convert the underlying speech to government speech” simply by affixing a symbol (®) or listing the mark in a register. 36 If this were so, copyright — which uses these same “indicia of registration” — would also constitute government speech, a result clearly “[in]consistent with the First Amendment.” 37 Judge Moore concluded that even if strict scrutiny didn’t apply, the provision would still fail the commercial-speech test in Central Hudson Gas & Electric Corp. v. Public Service Commission 38 for lack of a legitimating state interest. 39
Judge Dyk concurred in part and dissented in part. 40 Though he agreed the provision was unconstitutional as applied to Tam, he rejected the majority’s facial invalidation. First, he noted that many marks, devoid of expressive content, warrant only intermediate scrutiny. When applied to these purely commercial marks, the provision survives intermediate scrutiny because it “protect[s] underrepresented groups . . . from being bombarded with demeaning messages.” 41 He then rejected the majority’s narrow view of subsidies, deeming registration a nonmonetary subsidy subject to mere reasonableness review. 42 Writing for himself, Judge Dyk concluded the provision was still unconstitutional as applied to Tam’s “core political” speech. 43
Judge Reyna dissented as well. 44 He argued that registration, “considered as a whole, is indisputably commercial, not political.” 45 Because the provision could have survived Central Hudson scrutiny, he would have upheld it both facially and as applied to Tam’s mark. 46
Tam’s novelty — that denial of registration burdens a constitutional speech interest — effected an undesirable shift in regulatory control from the legislature to the judiciary, one that could be amplified by Reed’s broadened definition of “content-based” laws. Tam attempted to insulate trademark’s key provisions from Reed, but its doctrinal method proves wanting. According to the majority, courts can distinguish between trademark’s “expressive” and “commercial” regulations and subject each to varying levels of scrutiny. But this apparently unprecedented move is tenuous at best, leaving open the possibility that trademark’s most central provisions could face strict scrutiny.
As a normative matter, trademark presents a clash of speech-versus-speech, where vindicating one speech interest entails suppressing another. 47 Consider the case of two bands both calling themselves The Slants: Tam’s group and a racist counterpart. As the majority observes, the disparagement provision burdens Tam’s speech interest in reappropriating the slur. But if Tam were to receive registration, he could then enjoin the racist group from exercising its racist speech interest in the mark. In this zero-sum game, § 2 reflects legislative choices as to whose speech should prevail. 48 Before Tam was decided, when registration was uncovered by the First Amendment, courts generally let these legislative choices lie. 49 Tam’s novelty was to constitutionalize a speech interest in registration and thereby wrest power from the legislature to partially redraw trademark’s boundaries. 50
Trademark’s speech-versus-speech quality compounds the countermajoritarian difficulty here on two accounts. 51 First, the moral quandary: between racist and reappropriative Slants, whose speech right ought to prevail? Should both groups be granted nonexclusive rights to the mark, or should the first to register win the power to exclude? 52 In settling this rights contest, trademark regulators must decide on the moral status of intellectual property rights, 53 “essentially contested concepts” 54 best left to the legislature. 55 Second, the epistemic difficulty: to draw a defensible boundary, regulators require contextual, empirical data as to the incentive effects of registration refusal. 56 Consider Tam: did the provision really “chill” Tam’s speech? 57 Even so, might it have had the justifying effect of maximizing aggregate speech? 58 In short, Tam’s novelty invites courts to implicitly adjudicate trademark’s murkiest moral and empirical questions.
A recent shift in the Supreme Court’s First Amendment jurisprudence risks exacerbating this normative problem. Last Term in Reed, the Court vastly expanded the category of content-based regulations deemed presumptively unconstitutional. 59 Before Reed, laws were content based when animated by disagreement with the regulated speech. 60 Reed’s definition swept more broadly, including any law “that depend[s for its application] on an evaluation of the content of the speech.” 61 Decided in our post-Reed world, Tam rightly branded the disparagement provision content based. 62 But as Professor Rebecca Tushnet has argued, the same could be said of § 2(d) and § 2(e): whether a mark is confusing or misdescriptive will similarly depend upon its content. 63 Taken together, Tam’s novelty and Reed’s broad definition of “content based” might be used to justify an expansion of strict scrutiny to § 2’s key content-based provisions.
The Tam majority seemed to have understood that its holding could be extended beyond the disparagement provision. 64 And so to insulate § 2’s key provisions from strict scrutiny, the majority offered a three-step doctrinal argument: (1) Reed covers only expressive speech; 65 (2) commercial and expressive aspects are “inextricably intertwined” in registration; 66 and (3) the standard of scrutiny for a particular trademark provision should depend upon which aspect it regulates. In defense of this last move, Tam cited to R.A.V. v. City of St. Paul 67 for the proposition that “speech can be proscribable on the basis of one feature [e.g., its commercial function] . . . but not [necessarily] on the basis of another [e.g., its expressive content].” 68 On this view, Tam could limit Reed to the disparagement provision (a regulation of expressive content), while leaving § 2(d) and § 2(e) (regulations of trademark’s commercial function) completely undisturbed. 69 What’s more, because these latter provisions bar distinctly deceptive commercial speech, they need only satisfy reasonableness review. 70
But this argument rests § 2’s constitutionality on tenuous doctrinal grounds. When the Court first introduced “inextricably intertwined” speech in Riley v. National Federation of the Blind of North Carolina, Inc., 71 it expressly rejected Tam’s limiting principle, holding that speech does not “retain[] its commercial character when it is inextricably intertwined with . . . fully protected speech.” 72 As recognized by other circuits, Riley requires a ratcheting up of protection whenever speech’s commercial and expressive aspects are sufficiently intertwined. 73 Assuming, as Tam did, that the commercial and expressive really are intertwined in registration, 74 any effort to regulate the former should trigger the full protections accorded to the latter. 75 And though it’s true that § 2(d) and § 2(e) regulate purportedly deceptive speech, the Supreme Court has held in United States v. Alvarez 76 that expressive deception warrants full constitutional protection, absent a clear showing of harm. 77 Riley, in requiring that intertwined speech be treated like expressive speech, would seem to trigger Alvarez, subjecting even § 2(d) and § 2(e) to strict scrutiny. 78 Under the tetrarchy of Riley, Reed, Alvarez, and now Tam, just about every provision in § 2 could face the fatal test of narrow tailoring. 79
In reply, Tam would likely reemphasize R.A.V., where the Court struck down a statute — similar to the one in Tam — that singled out and criminalized disparaging “fighting words.” 80 Though fighting words are generally excepted from First Amendment protection, R.A.V. held they still cannot be regulated on the basis of “nonproscribable,” racist content. 81 Analogously, Tam held registration regulable on the basis of a mark’s commercial misleadingness, just not on the basis of its expressive, offensive message. 82 But this analogy engenders doctrinal tension: for R.A.V. has never been applied to intertwined speech, 83 and by extending its logic to the commercial/expressive distinction, Tam placed it on a direct collision course with Riley’s ratcheting-up requirement. Perhaps this tension reflects the unsettled nature of intertwined speech law. 84 But with Reed lying in wait, courts should seek more than a contestable argument from an unresolved area of doctrine to shield § 2 from heightened scrutiny.
Within a few weeks of Tam, the government conceded that § 2(a)’s bar on immoral and scandalous marks was also unconstitutional. 85 This may have been Tam’s easiest extension; but given Reed, Riley, and Alvarez, it needn’t be the last. For the sake of both a functioning trademark system and a coherent free speech jurisprudence, courts should “hesitate, and then hesitate some more” 86 before constitutionalizing the mark holder’s right to silence dissent. 87 Even free speech absolutists can agree that a subject so fraught with rights conflicts and epistemic complexity should rest primarily with the legislature.
Footnotes Hide^ Ch. 540, 60 Stat. 427 (1946) (codified as amended in scattered sections of 15 U.S.C.). Return to citation ^
^ 15 U.S.C. § 1052(a) (2012). The Lanham Act is the federal law of trademarks, and § 2 specifies conditions under which marks cannot be registered. The list includes, but isn’t limited to, descriptive, functional, deceptively misdescriptive, deceptive, confusing, scandalous, immoral, and disparaging marks. See id. § 1052(a), (d), (e). Return to citation ^
^ See, e.g., In re Mavety Media Grp. Ltd., 33 F.3d 1367, 1374 (Fed. Cir. 1994); see also Test Masters Educ. Servs., Inc. v. Singh, 428 F.3d 559, 578 n.9 (5th Cir. 2005). Return to citation ^