Symposium: Increasing First Amendment scrutiny of trademark law after Matal v. Tam

Lisa P. Ramsey is a Professor of Law at the University of San Diego, and has written about the potential conflict of trademark laws and free speech rights in A Free Speech Right to Trademark Protection? and Increasing First Amendment Scrutiny of Trademark Law.

Owners of trademarks deemed by the government to be disparaging – such as THE SLANTS and REDSKINS – and free speech advocates are celebrating the U.S. Supreme Court’s holding in Matal v. Tam. The Supreme Court evaluated the constitutionality of the disparagement clause of the U.S. federal trademark law, 15 U.S.C. § 1052(a), and the eight justices unanimously agreed this law violates the free speech clause of the First Amendment because the government discriminates based on viewpoint and targets offensive expression with an intent to discourage its use. (Justice Neil Gorsuch did not participate in the consideration or decision of the case.) The court held that Section 1052(a) is a viewpoint-discriminatory law because it denies registration of marks that may disparage persons, institutions, beliefs or national symbols, while allowing registration of words or symbols that are positive or benign – “happy-talk,” per Justice Samuel Alito’s opinion. Laws that discriminate based on viewpoint are subject to constitutional scrutiny unless the regulation involves government speech, and trademark registrations by private parties are not government speech.

The decision in Tam is important because the Supreme Court directly addressed the question of whether a trademark law violates the First Amendment right to freedom of expression; avoidance of constitutional analysis is more common by courts in trademark disputes. It is also significant because the court acknowledged that trademarks can contain constitutionally protected commercial and noncommercial expression. After Tam, it is clear that trademarks are not included among the categories of expression that may be regulated by the government without subjecting the law to a constitutional balancing test, such as fraudulent speech or speech that incites others to imminent illegal activity. Moreover, unlike Eldred v. Ashcroft and Golan v. Holder, in which the court held that U.S. copyright laws are constitutional and not subject to First Amendment scrutiny as long as Congress does not alter the traditional contours of protection, the Tam decision suggests that trademark laws are content-based regulations that should be subject to constitutional scrutiny when they regulate noncommercial expression or non-misleading commercial expression. When faced with a First Amendment challenge to a trademark law, courts should determine whether the law is narrowly tailored to further a compelling or substantial government interest and consider the extent to which the law harms expression.

Although the court did not decide whether trademarks are commercial speech subject to “relaxed” constitutional analysis under Central Hudson Gas & Electric Corp. v. Public Service Commission of New York and a majority of the justices did not agree on the appropriate framework for evaluating a First Amendment challenge to provisions of the federal trademark law, it is clear from Alito’s opinion (joined by Chief Justice John Roberts and Justices Clarence Thomas and Stephen Breyer) that trademark laws must at least survive Central Hudson’s intermediate-scrutiny analysis. Section 1052(a) failed that test. Justice Anthony Kennedy (joined by Justices Ruth Bader Ginsburg, Sonia Sotomayor and Elena Kagan) argued that the viewpoint discrimination in Section 1052(a) is subject to “rigorous constitutional scrutiny” – which it did not survive – and noted that “commercial speech is no exception” to the “heightened scrutiny” required by Sorrell v. IMS Health Inc. when the government is regulating speech because of disagreement with the message it conveys. Citing his concurring opinions in Lorillard Tobacco Co. v. Reilly and 44 Liquormart, Inc. v. Rhode Island, Thomas also favored rigorous constitutional scrutiny of Section 1052(a) and said he “continue[s] to believe that when the government seeks to restrict truthful speech in order to suppress the ideas it conveys, strict scrutiny is appropriate, whether or not the speech in question may be characterized as ‘commercial.’” Trademark infringement laws and other trademark statutes regulating misleading commercial expression will likely not violate the First Amendment right to free expression, but dilution laws and other expansive trademark doctrines that allow the government to prohibit or punish non-misleading uses of protected trademarks may not survive constitutional scrutiny after Tam.

Defendants in trademark disputes should therefore consider including a First Amendment defense in their answer and filing a motion to dismiss or summary judgment motion challenging the constitutionality of the trademark law or its application when they are using the plaintiff’s mark in noncommercial expression or commercial expression that is not misleading. Although the government can generally regulate misleading commercial expression, current trademark laws regulate expression that is not misleading. The federal dilution law, 15 U.S.C. § 1125(c), protects famous and distinctive trademarks against dilution by blurring or tarnishment “regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” Some commentators believe that dilution laws may survive constitutional scrutiny under the Supreme Court’s approach in the 1987 case San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comittee (also known as the “Gay Olympic Games” case); the court applied intermediate-scrutiny analysis to a law prohibiting unauthorized use of the word “Olympic” and held the law was constitutional. Yet the court’s recent heightened scrutiny of commercial speech regulations and other content-based laws and its analysis in Tam suggest otherwise. Companies accused of trademark dilution may be able to argue that the dilution statute is an unconstitutional content-based regulation of non-misleading expression and is facially invalid under the First Amendment.

Unlike the dilution statute, the infringement statutes require proof that the accused infringer’s use of the mark is likely to cause confusion, but they do not explicitly require “commercial use” of the mark for trademark protection or infringement. Politicians have registered political slogans as trademarks, such as MAKE AMERICA GREAT AGAIN used in connection with expressive merchandise, blogs, political action committee services, and other goods and services, and have discouraged others from using the slogan in political expression. In addition, courts have enforced trademark rights against individuals and political, social and religious organizations that were using the marks of others to cause confusion about the source of noncommercial expression. Although there are good reasons to prohibit and punish misleading uses of trademarks in noncommercial expression, after Tam courts will not be able to reject First Amendment challenges in trademark disputes simply by saying that trademark laws only regulate commercial expression or that trademarks do not qualify as constitutionally protected expression.

The constitutionality of the government’s ban on registration of immoral or scandalous marks may also be doubtful after Tam, but the more interesting question is whether the court’s First Amendment analysis allows free speech advocates to argue that certain types of subject matter should not be registered or protected as a trademark to preserve the public domain and promote the free flow of commercial expression. Although Tam quotes the statutory provision in the federal trademark law that states that merely descriptive marks cannot be registered as trademarks, 15 U.S.C. § 1052(e)(1), descriptive words and symbols can be registered under 15 U.S.C. § 1052(f) if they acquire distinctiveness through use in connection with the advertising and sale of products. Companies can also register distinctive and nonfunctional product configurations, colors, scents, sounds, tastes, textures and other “nontraditional” subject matter used as trademarks if they communicate information about the source of products. Legislatures and courts should consider whether granting trademark rights in inherently valuable descriptive words, product attributes or hand gestures (such as the iconic rock hand gesture the Kiss band front man Gene Simmons recently sought to register as a mark for entertainment services) is constitutional under the First Amendment. Perhaps such content-based trademark laws can only survive constitutional analysis under Central Hudson or Sorrell if there is strong proof of acquired distinctiveness and the accused infringer’s use of the mark constitutes misleading commercial expression.

Finally, one significant problem with the Tam decision is that the court emphasizes the harm to expression caused by the disparagement clause of Section 1052(a) – and suggests it is akin to a prohibition of expression – without discussing the fact that a trademark right includes the ability to ask the government to assist the trademark owner in suppressing and punishing the expression of third parties who infringe or dilute the mark. Throughout the Tam opinion are statements of the court’s First Amendment doctrines disfavoring laws that ban, prohibit, suppress or censor expression, but Section 1052(a) allows the trademark owner to use the expression even if it cannot be registered. Contrary to suggestions otherwise by the news media, the Asian-American rock band “The Slants” still had the right to call itself by a disparaging name after its trademark registration was denied. Contrast Section 1052(a)’s denial of the benefits of a registration with trademark infringement and dilution statutes that actually prohibit and punish expression by allowing injunctions and awards of monetary damages to a prevailing trademark owner. The inability to obtain a trademark registration for an offensive mark may discourage use of that phrase or symbol as a mark, but registration of a trademark and expansive trademark protection will discourage use of the same language by many people for a variety of goods and services. Trademark law will only promote a marketplace of ideas if the legislature focuses on protecting consumers against misleading uses of trademarks, and courts follow the Tam court’s approach of increasing First Amendment scrutiny of trademark laws.