WHAT’S IN A NAME?: MATAL V. TAM & THE RIGHT TO OWN DISPARAGING WORDS I. INTRODUCTION In June 2017, the Supreme Court decided Matal v. Tam,1 a rare case in which intellectual property and First Amendment law collided.2 The principal question was whether the Lanham Act’s (“the Act”) Disparagement Clause was constitutional.3 While the Court had declined to answer this question with previous plaintiffs, such as the Washington Redskins (“the Redskins”), the Court granted certiorari to Simon Tam (“Tam”) and his Asian-American bandmates to decide whether the U.S. Patent and Trademark Office (“PTO”) had wrongly denied trademark registration for their band name: The Slants.4 Tam and his bandmates (collectively “The Slants”) are more sympathetic plaintiffs than the Washington Redskins: they are Asian-Americans reclaiming an outdated term derogatory to Asian-Americans.5 The Redskins, on the other hand, operate under a long-reviled racist term for Native Americans, and at best, a slim minority of their members is Native American.6 The Slants won their Supreme Court case, but the Court left unresolved the next question, which is what this decision means for less-than-sympathetic parties like the Redskins.7 This paper will explore what rights individuals and organizations have in owning derogatory terminology. Part II provides the background of trademark registration criteria and benefits, a summary of the process to appeal rejected trademarks, an introduction to the Act and Disparagement Clause, and a brief overview of First Amendment law. Part III provides a history 1 137 S. Ct. 1744 (2017). 2 See generally id. 3 See generally id. 4 See generally id. 5 See generally id. 6 Ian Shapira, A Brief History of the Word ‘Redskin’ and How it Became a Source of Controversy, WASH. POST (May 19, 2016), https://www.washingtonpost.com/local/a-brief-history-of-the-word-redskin-and-how-it-became-a- source-of-controversy/2016/05/19/062cd618-187f-11e6-9e16-2e5a123aac62_story.html?utm_term=.ef0c18f81d1f. 7 See Michael McCann, Why the Redskins Scored a Victory in the Supreme Court’s Ruling in Favor of The Slants, SPORTS ILLUSTRATED (June 19, 2017), https://www.si.com/nfl/2017/06/19/washington-redskins-name-slants- trademark-supreme-court. 1 of Redskins litigation, highlighting previous disputes over the Disparagement Clause. Part IV introduces Matal v. Tam and provides its procedural history. Part V explores whether the Court could or should have provided a carve-out for those members of the potentially “disparaged” group reclaiming otherwise disparaging words. Ultimately, I conclude Tam was rightly decided, and both The Slants’ and the Redskins’ trademarks must stand according to First Amendment freedom of speech principles. II. BACKGROUND A. CRITERIA AND BENEFITS OF TRADEMARK REGISTRATION Trademark protection is born the first time a mark is used in commerce.8 The first individual to use a mark “acquires rights to that mark.”9 Trademarks are a form of intellectual property and differ from copyrights in that copyrights are necessarily expressive, while trademarks do not have this requirement.10 Trademark owners have common law rights in these marks upon commercial use, but often pursue trademark registration with the federal government for particular benefits.11 Trademark owners apply for trademark registration with the PTO.12 Should the PTO deny trademark registration, owners can appeal to the Trademark Trial and Appeal Board (“TTAB”).13 If the TTAB affirms the PTO’s rejection, an owner can then appeal to a circuit court, and then to the Supreme Court.14 8 See B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293, 1299 (2015). 9 Id. (citing 2 J. McCarthy, TRADEMARKS AND UNFAIR COMPETITION § 16:1 (4th ed. 2014)). 10 Compare 17 U.S.C.A. § 102 with 15 U.S.C.A. § 1051. 11 Christina S. Loza, Matal v. Tam: Disparaging Trademarks, Like The Slants, Can Be Registered Trademarks, 59 SEP ORANGE COUNTY LAW, 24, 25 (2017) (citing B&B Hardware, 135 S.Ct. at 1300; Wal-Mart Stores v. Samara Bros., 529 U.S. 205, 209 (2000); 15 U.S.C. §§ 1065, 1115(b), 1124 (2017). 12 See, e.g., In Re Tam, 108 U.S.P.Q.2d 1305 (Sept. 26, 2013). 13 See id. 14 See, e.g., In re Tam, 808 F.3d 1321 (Fed. Cir. 2015); Matal v. Tam, 137 S. Ct. 1744 (2017). 2 The Act was enacted to “safeguard the public and mark holders by providing a national system to register and protect trademarks” through infringement suits.15 Trademarks can be denied for several reasons, most often for potentially causing consumer confusion.16 Section 2(a) of the Act provides grounds for denial of trademarks – grounds that greatly differ from the overall goal of consumer protection.17 Section 2(a) is comprised of three different clauses – two of which are of note.18 The first, referred to as the “Scandalousness Clause,” allows refusal of registration of “immoral, deceptive, or scandalous” marks.19 The second, the Disparagement Clause at issue in Matal v. Tam, restricts marks that “may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”20 The Act does not define the word “disparage” or “disparagement.”21 Black’s Law Dictionary relevantly defines “disparage” as “[t]o degrade in estimation by disrespectful or sneering treatment.”22 Disparaging seems to involve both an intent to “degrade” and a more subjective measure of how the audience would receive the comment. Despite the lack of statutory guidance, courts have used a two-tiered framework to determine whether a mark is disparaging: (1) determining the likely meaning of the mark and (2) determining whether that meaning would be “disparaging to a substantial composite of the referenced group.”23 15 Elizabeth Brabb, Will Simon Tam and The Slants Bring An End to the Disparagement Provision Within Section 2(A) of the Lanham Act? One Rock Band’s Fight for Free Speech, 69 BAYLOR L. REV. 194, 195–96 (2017) (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 782 n.15 (1992) (Stevens, J., concurring)). 16 Id. at 196. 17 Id. 18 See 15 U.S.C. § 1052(a). See generally Matal v. Tam, 137 S. Ct. 1744 (2017). 19 15 U.S.C. § 1052(a). See also Loza, supra note 11. 20 15 U.S.C. § 1052(a). See generally Tam, 137 S. Ct. 1744. 21 See Brabb, supra note 15 at 197 (citing 15 U.S.C. §§ 1051–1127). 22 Disparage, BLACK’S LAW DICTIONARY (10th ed. 2014). 23 In Re Tam, 785 F.3d 567, 569 (Fed. Cir. 2015). 3 B. FREEDOM OF SPEECH When analyzing content-based regulations of speech, courts test regulations under strict scrutiny: there is a presumption in favor of speech and a presumption against viewpoint or content regulation.24 Some categories of speech are “unprotected,” such as incitement and fighting words.25 Other categories of speech, like commercial speech, are given less protection under intermediate scrutiny, and government speech is not regulated by the First Amendment’s free speech clause.26 Government speech and commercial speech are especially relevant in this case, as the government attempted to classify trademark registration under these categories of speech.27 Government speech is not regulated by the First Amendment’s free speech clause, thereby allowing for no limit on regulations of that speech.28 To be considered government speech, it must be reasonable for the public to believe there is a connection between the speech and the government.29 For example, in Walker v. Texas Division, Sons of Confederate Veterans, Inc., the Supreme Court decided license plate designs were government speech because the public likely and reasonably can conclude the state has endorsed a specific message.30 In the case at hand, the government argued that trademark registration should be considered government speech because 24 See Tam, 137 S. Ct. at 1763 (internal citations omitted). 25 See, e.g., Brandenburg v. Ohio, 395 U.S. 444 (1969); Chaplinsky v. New Hampshire, 315 U.S. 568 (1942); Cohen v. California, 404 U.S. 876 (1971); R.A.V. v. City of St. Paul, Minnesota, 505 U.S. 377 (1992). 26 See Central Hudson Gas & Elec. Corp. v. Public Service Commission of New York, 447 U.S. 557 (1980); Pleasant Grove City, Utah v. Summum, 555 U.S. 460 (2009); Walker v. Texas Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015). 27 See Tam, 137 S.Ct. at 1759–60, 1763–65. 28 See Summum, 555 U.S. at 467. 29 See Tam, 137 S. Ct. at 1759–60 (citing Johanns v. Livestock Marketing Ass’n, 544 U.S. 550, 561 (2005); Summum, 555 U.S. at 464; Walker, 135 S.Ct. at 2246–47). 30 See Walker, 135 S. Ct. at 2248–49 (quoting Summum, 555 U.S. at 472). 4 trademark registration is similar to the license plate registration in Walker, and that the Disparagement Clause was thereby constitutional.31 Commercial speech, on the other hand, is subject to an intermediate scrutiny test outlined in Central Hudson Gas & Elec. Corp. v. Public Serv. Comm’n.32 Under this test, “a restriction of speech must serve ‘a substantial interest’ and it must be ‘narrowly drawn’” for it to pass constiutional muster.33 In Tam, the government attempted to persuade both the Federal Circuit Court of Appeals and the Supreme Court that: (1) trademark registration should be considered commercial speech, and (2) the government interests advanced by the Disparagement Clause were substantial and narrowly tailored to pass the Central Hudson test.34 III.