Trademark cases are unusual for the United States Supreme Court to take.
Facts of Case:
Matal v. Tam arose in 2011 from a trademark appeal by the band, “The Slants”. The bands lead singer, Simon Tam, requested for the bands name to be trademarked with the US Patent and Trademark Office (USPTO). According to the background evidence in the final Supreme Court opinion, Tam and the band “chose this moniker in order to reclaim the term and drain its denigrating force as a derogatory term for Asian persons” (Supreme Court of The United States 1). Regardless, the USPTO denied the request because it found that the name would likely be derogatory towards “persons of Asian descent.” The office cited the Disparagement Clause of the Lanham Act of 1946, which forbids trademarks that “[consist] of or [comprise] immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” (Oyez 1). Tam then appealed the trademark to a board comprised of members of the office again and was later denied. After the second denial, judges on the U.S. Court of Appeals for the Federal Circuit looked at the case and confirmed that the trademark officials were within their rights to refuse the trademark application under the Disparagement Clause because it “engages in viewpoint-based discrimination” and was unconstitutional (Supreme Court of The United States 7). It was not until the appellate court reviewed the case en banc that they found that the USPTO was incorrect in refusing the trademark application and that the Disparement Clause did in fact violate the First Amendment. Joseph Matal, the Interim Director of the USPTO then appealed to the Supreme Court for a resolution.
Arguments of Case:
Matal v. Tam was disputed on January 18, 2017. Despite the several questions debated throughout the case, the most crucial one debated was, “is the Disparagement Clause of the Lanham Act in violation of the First Amendment of the Constitution of the United States, which provides constitutional protection of the freedom of speech?” (Bro 1). However, there were other questions posed to the Supreme Court that required an opinion. Related questions included: Do trademarks constitute free speech? Can the government deny registration to trademarks on the basis they were “disparaging” to a specific person or group of persons? (Bro 1).
Each side had a variety of arguments while government had three main arguments. First, the government thought that trademarks were to be viewed as government speech, not private speech. Because the government has a stricter level of Free Speech rules and trademarks contrasting government issued marks, then trademarks are not allowed the same Free Speech levels as private speech. The second argument the government made was that trademarks were a type of government subsidy. They argued that as a government subsidy, trademarks are not considered private and therefore must adhere to strict speech rules. Third, the government hoped to establish this as a good test for disparagement clauses under a “government-doctrine” program (Khodykina and Hancock 3).
In response, Tam argued against the government’s position that trademarks were government speech. His view required that trademarks were private and should be provided Frist Amendment Free Speech benefits. Tam pointed out the unconstitutionality of the USPTO disparaging policy and harmonized with the Circuit court that it amounted to “viewpoint discrimination” (Khodykina and Hancock 4).
On June 19, 2017, Judge Alito delivered the court verdict in the Matal v. Tam case. In a unanimous 8-0 opinion, the Supreme Court agreed that denying the Tam trademark request “violate[d] the Free Speech Clause of the First Amendment”. The denial of this trademark rejected a core First Amendment principle which states: “Speech may not be banned on the ground that it expresses ideas that offend” (Supreme Court of The United States 1). Regardless of the trademarks nature, they are private ideas and therefore protected under the First Amendment. The Supreme Court was able to counter arguments made by the USPTO which would have eliminated the First Amendment protection of trademarks.
First, trademarks were established as a form of private speech versus government speech. As a result, trademarks were granted Free Speech guidelines versus a stricter government speech. Alito wrote that “federal law does not create trademarks” (Supreme Court of The United States 2). Furthermore, the “First Amendment forbids the governments regulation of speech in ways that favor some viewpoints or ideas at the expense of others” (Supreme Court of The United States 13).
Secondly, the court confirmed that trademarks were not a form of government subsidy. A trademark does not express a government message, and the government does not provide any treasured benefits or support to the applicant like in a regular subsidy situation. Trademarks are not an derivative government entity paid by the government with intent to convey a message. Rather, for a trademark, “an applicant for registration must pay the PTO a filing fee of $225–$600” . . . and then continue to re-file every ten years (Supreme Court of The United States 19).
Finally, the court ruled that a new “government-program” that utilizes the Disparagement Clause to review potentially derogatory trademarks was not suitable. It was decided that it was unjust to establish a program to judge the disparaging nature of a specific mark as “potentially disparaging”. In fact, the disparagement clause in itself discriminates because “giving offense is a viewpoint” (Supreme Court of The United States 22).
While the Matal v. Tam ruling received a large amount of support by many Free Speech advocates, the ruling also escorted to other distinguished outcomes. For example, Pike noted that following the decision in favor of Tam, the USPTO received an increased number of applications with racist and Nazi-themed words and images (25). The case did not only open the door for minority groups who, like “The Slants,” applied to “drain the terms of their denigrating force”, it also allowed groups to secure potentially offensive trademarks, with the hope to prevent others from using them. Unfortunately, not all trademark appeals are made with honorable causes. There are some trademark applicants who “wish to express genuine discrimination” (Watkins 1). Regardless of intent, there is concern that acceptance of disparaging terms and images has created a slippery slope (Pike 25). Pike called in to question how this ruling will impact concepts such as “hate speech” and how far-reaching the decision will go beyond trademarks.
Further, the Matal v. Tam decision profoundly impacted the Washington Redskins who had been in the court process fighting to get their trademark renewed. After the decision, the government abandoned their fight with the Redskins. Despite the belief by many that the name disparaged Native Americans, it was determined that the same rules in Matal v. Tam apply; it would be “unconstitutional for the U.S. Patent and Trademark Office to discriminate against it, citing the First Amendment’s free speech protection” (Williams 1). As such, the decision is far reaching to many organizations with names and images that might be found culturally insensitive by some. Again, while this ruling pertained explicitly to trademarks, it will impact further decisions on other forms of speech.
In an interesting reaction to the Redskins not being required to change their name, Simon Tam said he hoped the Redskins would voluntarily change their name. Tam stated, “just because something is permissible, it does not mean it is the right thing. I think it is their social responsibility to do that” (Nelson 1). This is helpful advice to not only organizations but people involved in marketing, public relations and advertising. Although Matal v. Tam provided a clearer definition of freedom of speech, it does not mean that freedom of speech is without consequences. Despite being technically legal, there could be financial, ethical, or other ramifications that come along with the use of “controversial” words or images.
While there are laws that govern speech, there are many other factors to consider in regards to word and image choice. In the end, the Supreme Court determined that “speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate’” (Supreme Court of The United States 25). The long-term impact will be watched closely not only by the courts but schools, media, and businesses, as well.
Matal v. Tam. (n.d.). Oyez. from https://www.oyez.org/cases/2016/15-1293
Supreme Court of The United States. Matal, Interim Director, United States Patent and hhafhTrademark Office v. Tam 19 June 2017. Supremecourt.gov
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