Examining the Unconstitutionality of Dilution by Tarnishment After Tam
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American University Journal of Gender, Social Policy & the Law Volume 27 Issue 3 Article 6 2019 Examining the Unconstitutionality of Dilution by Tarnishment after Tam Ryder Hogan American University Washington College of Law Follow this and additional works at: https://digitalcommons.wcl.american.edu/jgspl Part of the Civil Rights and Discrimination Commons, Constitutional Law Commons, First Amendment Commons, and the Intellectual Property Law Commons Recommended Citation Hogan, Ryder (2019) "Examining the Unconstitutionality of Dilution by Tarnishment after Tam," American University Journal of Gender, Social Policy & the Law: Vol. 27 : Iss. 3 , Article 6. Available at: https://digitalcommons.wcl.american.edu/jgspl/vol27/iss3/6 This Comment is brought to you for free and open access by the Washington College of Law Journals & Law Reviews at Digital Commons @ American University Washington College of Law. It has been accepted for inclusion in American University Journal of Gender, Social Policy & the Law by an authorized editor of Digital Commons @ American University Washington College of Law. For more information, please contact [email protected]. Hogan: Examining the Unconstitutionality of Dilution by Tarnishment afte EXAMINING THE UNCONSTITUTIONALITY OF DILUTION BY TARNISHMENT AFTER TAM RYDER HOGAN* Introduction ...................................................................................... 466 1. B ackgroun d ................................................................................... 468 A . Dilution by Tarnishm ent ................................................ 468 1. Source of L aw ........................................................... 468 2. E lem ents .................................................................... 468 3. Theories of H arm ...................................................... 469 B. First Amendment and Trademark Law ........................... 471 1. Commercial vs. Expressive Speech .......................... 471 2. Potential Standards of Review .................................. 472 3. Disparagement and Scandalousness Clauses ............ 473 II. An aly sis ........................................................................................ 4 74 A. Dilution by Tarnishment is Facially Unconstitutional Under the Free Speech Clause of the First Amendment Because It Discriminates Based on Viewpoint ............... 474 1. Dilution by Tarnishment Targets Viewpoint Because It Suppresses a Mark's Negative View of a Famous Tradem ark ................................................................. 474 2. Dilution by Tarnishment Does Not Survive Strict Scrutiny Review Because the Government Does Not Have a Compelling Interest in Regulating Tarnishing Sp eech .......................................................................4 7 8 3. Dilution by Tarnishment Fails Strict Scrutiny Because It Is Not Narrowly Tailored to Achieve a Compelling * American University Washington College of Law, J.D. Candidate, 2019; University of South Carolina, B.S.B.A. (magna cum laude) in International Business and Finance, 2016. Ryder Hogan is currently a Note and Comment Editor for the Journalof Gender, Social Policy & the Law. He has interned at the Department of Justice, the United States Patent and Trademark Office, and the American Society of Clinical Oncology. Published by Digital Commons @ American University Washington College of Law, 2019 1 American University Journal of Gender, Social Policy & the Law, Vol. 27, Iss. 3 [2019], Art. 6 466 JOURNAL OF GENDER, SOCIAL POLICY & THE LAW [Vol. 27:3 G overnm ent Interest .................................................. 480 B. Dilution by Tarnishment Also Fails Strict Scrutiny Because It Impermissibly Regulates the Expressive C ontent of a M ark ........................................................... 482 1. Dilution by Tarnishment Regulates the Expressive Content of Speech Because It Does Not Target the Commercial, Source Identifying Function of a M ark .......................................................................... 4 82 2. Dilution by Tarnishment Fails Strict Scrutiny for Content-Based Expressive Speech Regulations Because It Does Not Serve a Compelling Governmental In terest . ..................................................................... 4 87 3. Dilution by Tarnishment Does Not Survive Strict Scrutiny Because It Is Not Narrowly Tailored to Achieve a Compelling Government Interest ............. 489 C. Alternatively, Dilution by Tarnishment Fails Intermediate Scrutiny for Commercial Speech Regulations Because Congress Did Not Narrowly Tailor It to Advance a Substantial Governmental Interest ................................. 490 III. Policy Recom m endation ............................................................. 492 C on clu sion ........................................................................................ 4 92 INTRODUCTION The Supreme Court decided Matal v. Tam in the summer of 2017, officially striking down a provision of the Lanham Act that had been a staple of trademark law for the past century.' The decision elicited mixed responses. 2 On one side, the case was a victory for the First Amendment combating government censorship of a band's attempt to reclaim a racial slur.3 On the other side, the case legitimized the registration of racially 1. See Matal v. Tam, 137 S. Ct. 1744, 1768 (2017) (holding the government impermissibly denied registration to the "Slants"). 2. See Ben Natter et al., USPTO Navigates New Territory in The Wake of Matal v. Tam, IPWATCHDOG (Aug. 17, 2017), http://www.ipwatchdog.com/2017/08/17/uspto- navigates-matal-v-tam/id= 86961 (noting the controversy surrounding the Supreme Court's decision). 3. See Lisa Ramsey, Symposium: Increasing First Amendment scrutiny of trademarklaw after Matal v. Tam, SCOTUsBLOG (Jun. 20, 2017, 2:33 PM), http://www. scotusblog.com/2017/06/symposium-increasing-first-amendment-scrutiny-trademark- law-matal-v-tam (explaining courts often avoid the constitutional analysis in trademark disputes). https://digitalcommons.wcl.american.edu/jgspl/vol27/iss3/6 2 Hogan: Examining the Unconstitutionality of Dilution by Tarnishment afte 2019] DILUTION BY TARNISHMENT AFTER TAM charged trademarks such as "the Redskins.",4 Despite the often controversial outcomes of First Amendment case law, protection of free speech is central to the liberty at the heart of the United States' legal system.5 Now, uncertainty abounds as to whether the government is impermissibly censoring speech in other provisions of the Lanham Act.6 Specifically, dilution by tarnishment, a niche area of trademark law, may not withstand a First Amendment challenge in the wake of the Supreme Court's recent landmark decision in Matal.' This comment argues that dilution by tarnishment violates the First Amendment of the United States Constitution.8 Part II describes the source, elements, legal theory, and scientific evidence concerning dilution by tarnishment. 9 Part II also explains the interaction between trademark law and First Amendment free speech protections. 10 Part III identifies three potential standards for constitutional analysis of dilution by tarnishment. 11 Part III further asserts that dilution by tarnishment does not survive any of the three potential tests under the First Amendment. 12 Part IV recommends elimination of dilution by tarnishment and further examination of the constitutionality of dilution by blurring, the only other form trademark dilution.'3 Part V reiterates that dilution by tarnishment restricts protected 4. See JusticeDepartment drops Redskins name fight, CBS NEWS (Jun. 29, 2017), http://www.cbsnews.com/news/justice-department-drops-fight-over-redskins-name (implying that circuit courts have a significant role in shaping the interpretation of trademarks within First Amendment jurisprudence). 5. See generally DAVID S. SCHWARTZ & LORI A. RINGHAND, CONSTITUTIONAL LAW: A CONTEXT AND PRACTICE CASEBOOK 937 (2013) (charting the development of the First Amendment's Free Speech Clause). 6. See Natter, supra note 2 (suggesting the U.S. Patent and Trademark Office may seek alternative methods for rejecting disparaging, scandalous, or offensive marks). 7. See Ramsey, supra note 3 (questioning the future of dilution by tarnishment). 8. See U.S. CONST. amend. I (prohibiting Congress from "abridging the freedom of speech). 9. See infra Part II (discussing the disconnect between dilution by tarnishment and its alleged harm). 10. See infra Part II (identifying the tension between trademark law and the First Amendment). 11. See infra Part III (asserting that dilution by tarnishment targets viewpoint, expressive speech, or, in the alternative, commercial speech). 12. See infra Part III (arguing dilution by tarnishment constitutes viewpoint discrimination, fails the strict scrutiny expressive speech test, or fails the intermediate scrutiny commercial speech test). 13. See infra Part IV (suggesting the government proactively address the constitutional problems of dilution by tarnishment). Published by Digital Commons @ American University Washington College of Law, 2019 3 American University Journal of Gender, Social Policy & the Law, Vol. 27, Iss. 3 [2019], Art. 6 468 JOURNAL OF GENDER, SOCIAL POLICY & THE LAW [Vol. 27:3 speech and should be struck down as an impermissible violation of the free speech protections guaranteed by the First Amendment. 14 I. BACKGROUND A. Dilution by Tarnishment 1. Source ofLaw Dilution became an actionable legal theory in the early 20 th century, yet Congress