The Supreme Court of the United States, Trade Mark Law, And

School for Scandal: the Supreme Court of the United States, Trade Mark Law, and Freedom of Speech in the Age of Trump Matthew Rimmer The Supreme Court of the United States ruling in Matal v. Tam in 2017 over the Oregon rock group The Slants sets down a landmark precedent in respect of trade mark law, racism, bigotry, disparagement, and freedom of speech.1 The ruling also larger implications and ramifications for the protection of Indigenous intellectual property – both in respect of the contentious Washington Redskins trademark, and more generally. This case note considers the twin trade mark conflicts over the Slants and the Washington Redskins in the United States. It questions the reasoning of the Supreme Court of the United States ruling in Matal v. Tam, raising questions about its coherence and its consistency. It contends that the Supreme Court of the United States ruling is an exceptional one, which would not be easily translated to other jurisdictions such as Australia, New Zealand, and Canada. 1. The Slants The factual scenario of the dispute in Matal v. Tam is an unusual one.2 Alito J observed of the nature of the dispute: This case concerns a dance-rock band’s application for federal trademark registration of the band’s name, “The Slants.” “Slants” is a derogatory term for persons of Asian descent, and members of the 1 Matal v. Tam 137 S. Ct 1744 (2017) 2 Matal v. Tam 137 S. Ct 1744 (2017) 1 band are Asian–Americans. But the band members believe that by taking that slur as the name of their group, they will help to “reclaim” the term and drain its denigrating force. 3 It was a hard set of circumstances to extrapolate general principles from in respect of trade mark law, disparagement, and freedom of speech. The lead singer of the Slants, Simon Tam, maintained that the band was engaged in counter- appropriation of a derogatory term: We grew up and the notion of having slanted eyes was always considered a negative thing. Kids would pull their eyes back in a slant-eyed gesture to make fun of us ... I wanted to change it to something that was powerful, something that was considered beautiful or a point of pride instead.4 Tam maintained: ‘If the government really truly cared about fighting racist messages they would have cancelled the registrations for numerous white supremacist groups before they even approached our case.’5 The United States Patent and Trademark Office’s examining attorney refused registration of ‘The Slants’ on the grounds that it was a highly disparaging reference to people of Asian 3 Matal v. Tam 137 S. Ct 1744 at 1751 (2017). 4 Kat Chow, ‘The Slants: Fighting for the Right to Rock a Racial Slur’, NPR, 19 January 2017, http://www.npr.org/sections/codeswitch/2017/01/19/510467679/the-slants-fighting-for-the-right-to-rock-a- racial-slur 5 Ibid. 2 descent.6 Simon Tam sought review of the decision of the Patent and Trademark Office’s Trademark Trial and Appeal Board, which affirmed an examining attorney’s refusal to register the trademark ‘The Slants’ for a musical band, on grounds that the mark was disparaging to people of Asian descent.7 A panel of the United States Court of Appeals for the Federal Circuit, Moore J8 affirmed, but on rehearing en banc, the Court of Appeals, Moore J vacated and remanded.9 Certiorari was granted by the Supreme Court of the United States. There was a wide range of submissions from the parties, and the friends of the court – including civil society, industry groups, and academics. The docket contains 55 appellate court documents. Of particular note was one submission by two leading American trade mark academics. Professor Christine Haight Farley of American University Washington College of Law and Professor Rebecca Tushnet – now of Harvard Law School – filed a brief, warning: ‘The decision below – that all content-based trademark rules must survive strict scrutiny – would wreak havoc on trademark law’.10 The academics observed: ‘The Federal Circuit’s treatment of the Lanham Act’s regulatory scheme as presumptively unconstitutional is misguided because it wrongly treats trademark registration refusal as a ban on speech.’11 Farley and Tushnet concluded: ‘Trademark law is pervasively content-based, but that is not a fatal 6 ‘The Slants’, Federal Trademark 85472044, 14 November 2011. 7 In re Tam 2013 WL 5498164 (2013). 8 In re Tam 785 F.3d 567 (2015). 9 In re Tam 808 F.3d 1321 (2015). 10 ‘Brief of Law Professors as Amici Curiae in Support of the Petitioner in Lee v. Tam’, 36, https://tushnet.files.wordpress.com/2016/11/15-1293-tsac-law-professors.pdf 11 Ibid., 36. 3 flaw for a government program’.12 Tushnet has elaborated upon her concerns in a piece for the Notre Dame Law Review.13 During oral argument, it was apparent that members of the Supreme Court of Justice were sceptical of the ability of the Federal Government to ban disparaging names from trademark protection.14 Kagan J wondered whether the rule meant that ‘[Y]ou can say good things about some person or group, but you can't say bad things.’15 Ginsburg J wondered whether the legislative clause was unconstitutionally vague. Sotomayor J expressed concern about the clarity of the provision. Breyer J asked how the anti-disparagement provision advanced the aims and goals of trade mark law. In the leading judgment, Alito J held that the disparagement clause of Lanham Act was facially invalid under the First Amendment’s Free Speech clause. 16 In his analysis, Alito J considered ‘three arguments that would either eliminate any First Amendment protection or result in highly permissive rational-basis review.’ 17 The judge analysed the contentions of the Government ‘(1) that trademarks are government speech, not 12 Ibid., 36-37. 13 Rebecca Tushnet, ‘The First Amendment Walks into a Bar: Trademark Registration and Free Speech’, (2017) 92 Notre Dame Law Review 381-424. 14 Chris Geidner, ‘Justices Skeptical of Law Allowing Government to Deny Trademarks for “Disparaging” Names’, Buzzfeed, 19 January 2017, https://www.buzzfeed.com/chrisgeidner/justices-take-on-the-slants-and- whether-the-government-can-d?utm_term=.sw782PYeO#.ghr9VjdWx 15 Ibid. 16 Matal v. Tam 137 S. Ct 1744 at 1751 (2017). 17 Matal v. Tam 137 S. Ct 1744 at 1757 (2017). 4 private speech, (2) that trademarks are a form of government subsidy, and (3) that the constitutionality of the disparagement clause should be tested under a new “government- program” doctrine.’ 18 First, Alito J held that ‘it is far-fetched to suggest that the content of a registered mark is government speech’. 19 The judge observed: If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently. It is saying many unseemly things. See App. to Brief for Pro–Football, Inc., as Amicus Curiae. It is expressing contradictory views. It is unashamedly endorsing a vast array of commercial products and services. And it is providing Delphic advice to the consuming public. 20 Alito J concluded: ‘Holding that the registration of a trademark converts the mark into government speech would constitute a huge and dangerous extension of the government-speech doctrine.’ 21 The judge insisted: ‘Trademarks are private, not government, speech’. 22 Second, the judge rejected the argument of the Government that trademarks are a form of government subsidy: Trademark registration is not the only government registration scheme. For example, the Federal 18 Matal v. Tam 137 S. Ct 1744 at 1757 (2017). 19 Matal v. Tam 137 S. Ct 1744 at 1758 (2017). 20 Matal v. Tam 137 S. Ct 1744 at 1758 (2017). 21 Matal v. Tam 137 S. Ct 1744 at 1760 (2017). 22 Matal v. Tam 137 S. Ct 1744 at 1760 (2017). 5 Government registers copyrights and patents. State governments and their subdivisions register the title to real property and security interests; they issue driver’s licenses, motor vehicle registrations, and hunting, fishing, and boating licenses or permits. 23 Alito J distinguished the dispute from cases in which the Supreme Court of the United States had upheld the constitutionality of subsidized speech expressing a particular viewpoint: ‘Cases like Rust and Finley are not instructive in analyzing the constitutionality of restrictions on speech imposed in connection with such services.’24 Third, Alito J rejected the argument of the Government that the disparagement clause was protected under a new doctrine of ‘government-program cases’. 25 The judge found that ‘the disparagement clause cannot be saved by analyzing it as a type of government program in which some content- and speaker-based restrictions are permitted’. 26 Finally, Alito J expressed concerns about the impact of the disparagement clause upon the freedom of commercial speech: There is also a deeper problem with the argument that commercial speech may be cleansed of any expression likely to cause offense. The commercial market is well stocked with merchandise that disparages prominent figures and groups, and the line between commercial and non-commercial speech 23 Matal v. Tam 137 S. Ct 1744 at 1761 (2017). 24 Matal v. Tam 137 S. Ct 1744 at 1761 (2017). 25 Matal v. Tam 137 S. Ct 1744 at 1763 (2017). 26 Matal v. Tam 137 S. Ct 1744 at 1763 (2017). 6 is not always clear, as this case illustrates. If affixing the commercial label permits the suppression of any speech that may lead to political or social “volatility,” free speech would be endangered. 27 Accordingly, the judge held that the disparagement clause violated the Free Speech clause of the First Amendment.

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