Supreme Court: Denial Of Trademarks Because They Are ‘Disparaging’ Violates First Amendment
Earlier today, the Supreme Court ruled that denying a trademark because it is disparaging to ethnic groups or others is not permitted by the First Amendment in a case that is likely to have a major impact on the efforts to strip the Washington Redskins of trademarks granted to them more than fifty years ago:
The Supreme Court ruled Monday that a law that prohibits the government from registering trademarks that “disparage” others violates the First Amendment, a decision that could impact the Washington Redskins’ efforts to hang on to its controversial name.
Justice Samuel A. Alito Jr. delivered the opinion for a largely united court. He said the law could not be saved just because it evenhandedly prohibits disparagement of all groups.
“That is viewpoint discrimination in the sense relevant here: Giving offense is a viewpoint,” Alito wrote.
He added that the disparagement clause in the law “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”
All of the participating justices — Neil M. Gorsuch was not on the court when the case was argued — joined that part of Alito’s opinion. Four justices peeled off from parts of the opinion where they say Alito opined on more than what was needed to decide the case.
The trademark office in 2011 said registering the trademark of the Slants, an Asian American rock group, would violate a part of the 1946 Lanham Trademark Act that prohibits registration of a trademark that “may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
The office said the name was likely to disparage a significant number of Asian Americans. But founder Simon Tam said the point of the band’s name is just the opposite: an attempt to reclaim a slur and use it as “a badge of pride.”
In a Facebook post after the decision, Tam wrote:
“After an excruciating legal battle that has spanned nearly eight years, we’re beyond humbled and thrilled to have won this case at the Supreme Court. This journey has always been much bigger than our band: it’s been about the rights of all marginalized communities to determine what’s best for ourselves.”
Tam lost in the first legal rounds. But then a majority of the U.S. Court of Appeals for the Federal Circuit said the law violates the First Amendment’s guarantee of free speech. The government may not “penalize private speech merely because it disapproves of the message it conveys,” a majority of that court found.
Free speech advocates had supported The Slants, and the court’s decision seemed likely from the oral arguments.
But some worried about what kinds of trademarks the government will now be forced to register. “It seems this decision will indeed open the floodgates to applications for all sorts of potentially offensive and hateful marks,” said Lisa Simpson, an intellectual property lawyer in New York. She added: “While this may be the right result under the First Amendment and the principles of free speech that are foundational to our country, it seems the responsibility will now pass to the public.
For several reasons, the Court’s ruling is hardly surprising. First, when the case was argued in January, the Justices appeared to be highly skeptical of the arguments made by the Federal Government in favor of the law and especially skeptical of the idea that the law could be reconciled with the Court’s existing First Amendment case law, which has held repeatedly that banning or punishing in some way speech based on its content is quite simply impermissible. This has been true even in cases where the speech in question can be highly offensive. In Snyder v. Phelps, for example, the Court struck down a ruling against the Westboro Baptist Church that was based entirely on the allegedly offensive content of their speech in a public area outside the funeral of a soldier who had died in Iraq. That case, though was only the latest in a long line of cases that stretches back decades and holds that the government cannot ban speech just because it might be ‘offensive’
The Volokh Conspiracy’s Eugene Volokh notes that the case is consistent with previous Supreme Court case law and that it reaffirms previous court rulings that have essentially stated that there is no ‘hate speech’ exception to the First Amendment:
[T]he justices made clear that speech that some view as racially offensive is protected not just against outright prohibition but also against lesser restrictions. In Matal, the government refused to register “The Slants” as a band’s trademark, on the ground that the name might be seen as demeaning to Asian Americans. The government wasn’t trying to forbid the band from using the mark; it was just denying it certain protections that trademarks get against unauthorized use by third parties. But even in this sort of program, the court held, viewpoint discrimination — including against allegedly racially offensive viewpoints — is unconstitutional. And this no-viewpoint-discrimination principle has long been seen as applying to exclusion of speakers from universities, denial of tax exemptions to nonprofits, and much more.
I first wrote about The Slants case back in December 2015 when the Court of Appeals for the Federal Circuit ruled that the Patent and Trademark Office rules barring trademark protection to trademarks that are deemed to be offensive were unconstitutional. In this case, the trademark that the band was requesting was deemed to be offensive to Asians and therefore the office declined to issue the trademark. As I noted at the time, the courts ruling was likely to have an impact well beyond the issuance of one trademark and the authority of a government office to ban that trademark based on the arbitrary decision that it was “offensive” or otherwise not acceptable. Most specifically, that would be in the litigation that was raged for years over the trademarks that were granted to the Washington Redskins in the early 1960s only to be revoked more than fifty years later after a group claiming to speak for Native Americans was successful in arguing to the appeals board at the Patent and Trademark Office that the issuance of the trademark violated the bar against issuing trademark protection to marks that are disparaging on the basis or race, ethnicity or other criteria. As I noted at the time, that action by the Patent and Trademark Office was legally dubious given what the Supreme Court had previously stated regarding the ability of laws and governmental authorities to restrict speech based on content specifically because it was “offensive.” The PTO appeals board ruling, however, was upheld by a Federal District Court Judge in Virginia who relied to a significant degree on a 2015 opinion from the Supreme Court that found that states could decline to allow certain messages to appear on license plates based on content because the license plate was a form of what that decision called ‘governmental speech,” in which the government had discretion in what messages it would promote and which ones it would not. As Eugene Volokh noted at the time, though, the argument that granting trademark protection was “governmental speech” in the same way that a license plate on an automobile was held to be is rather weak to begin with, and falls apart largely because the government doesn’t really have any authority over a trademark after the grant of protection whereas the license plate remains, at least in some theoretical sense, government property that must be turned over to the state when a car is sold or otherwise disposed of by the owner. For that reason, the District Court ruling against the Redskins seemed at the time to be unlikely to withstanding appeal. That case was appealed to the Fourth Circuit Court of Appeals, where it is still pending.
Given the Supreme Court ruling in this case, the future of the Redskins case seems to be rather clear. If the Court cannot deny trademark protection because it is “offensive,” then it similarly cannot revoke trademarks that have already been granted based on a post hoc finding that the trademark is ‘disparaging.’ Because of this, the original action by the Patent and Trademark Office will most likely be overturned by the Fourth Circuit and the Redskins will have their trademarks restored, although the formal impact of the original revocation had yet to be held since the ruling was put on hold pending final resolution by the Courts. With today’s ruling, that final resolution appears to be certain.
Here’s today’s opinion: