Some Aspects of the Matal v. Tam Trademark Case That Would Have Benefitted from More Explanation

In what some commentators believe is one of the most important cases of the Supreme Court’s recently concluded term, Matal v. Tam, eight justices (Justice Gorsuch did not participate) unanimously struck down a part of the federal trademark registration statute that prohibits registration of marks that may “disparage . . . or bring into contemp[t] or disrepute” any “persons, living or dead.” The trademark application at issue in the case was sought by a rock band for the name “The Slants,” a moniker chosen by lead singer Simon Tam—an Asian American—in an attempt to “reclaim” and “take ownership” of the term in order to undo the derogatory way in which the word is often used to demean Asian persons. Although the justices diverged on some aspects of the case, they did all agree that the statute at issue violated the First Amendment because it constituted “viewpoint-based” regulation of speech, something in which the government has very little authority to engage, unless (as the Court held was not the case here) the government is uttering in its own, government, speech.

In the space below, I analyze some of the significant intellectual/doctrinal moves the justices made in the case. I don’t necessarily disagree with the outcome the Court reached—I take no position on that here—but I do feel that the justices’ analyses in the case point up some flaws in prior decisions by the Court, and also some areas where more clarification is needed. In some respects, the Tam case was a missed opportunity to move the doctrine forward for future disputes.

For present purposes I needn’t wallow in the facts; Mr. Tam and his group were denied a federal trademark because the statute prohibits registration of disparaging marks, and the term “Slants” is disparaging of Asians (whether Mr. Tam and his group themselves wanted to try to reverse the term’s denigrating connotations.) He then went to court, where the U.S. Court of Appeals for the Federal Circuit (which handles federal intellectual property matters) struck down the statute on its face as violating the First Amendment. The federal government sought review in the Supreme Court, and the Court, without dissent, affirmed.

Although there was no majority opinion for the Court (but instead essentially two groups of four justices each), all eight participating justices found that the statute regulated speech in a viewpoint-based way, which would make it subject to the strictest of tests, unless the statute in question constituted government speech or otherwise fell into a free speech category in which the ultra-strong presumption against viewpoint discrimination does not apply.

The Court (rightly, to my mind) rejected the government’s argument that the conferral of trademark registration constituted the government’s own speech. To be sure, the government can and does engage in speech of its own (think of military ads, or public service ad campaigns against smoking or other unhealthful practices), and when the government itself speaks, of course it has to adopt a particular viewpoint, essentially discriminating against all others. (PSAs against smoking aren’t—and can’t be—viewpoint neutral; the viewpoint that smoking is good is absent from the picture.)

Because the government, when it speaks, has such broad leeway to promote some (and in the process diminish other) viewpoints, the Court was correct to observe that we must be careful not to expand the category of government speech too far. As one group of justices for whom Justice Alito wrote put the point (in a way the other group likely would accept too), “[i]f private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints” quite easily.

In the Tam case, Justice Alito’s opinion (for himself and three others) said it is “far-fetched to suggest that the content of a registered trademark is government speech” because if that is so, the “Federal Government is babbling prodigiously and incoherently. It is saying many unseemly things. It is expressing contradictory views. It is unashamedly endorsing a vast array of commercial products and services. And it providing Delphic advice to the consuming public.”

Fair enough. The problem is, just two years ago, in Walker v. Texas Division, Sons of Confederate Soldiers, the Court, in upholding Texas’s refusal to approve a specialty license plate design that made extensive use of the Confederate flag image, the Court ruled that the issuance of specialty license plates constituted government speech. As I wrote for this website back then (suggesting a more convincing reason to have upheld Texas’ decision not to issue the Confederate flag plate), it is completely implausible to think that the state of Texas intends to endorse the wide and competing array of services and products (consider, for example, the approved specialty plate “GET IT SOLD WITH RE/MAX”), as well as out-of-state university athletic teams (“Go [Michigan State] Spartans,” or “Roll [Alabama] Tide Roll”), that are displayed on Texas specialty license plates. If trademarks, collectively, constitute “prodigious,” “incoherent,” sometimes “unseemly,” internally “contradictory” and often “commercial” “babbling,” so too of specialty plates. There is no qualitative difference between the two.

When one reads Justice Alito’s opinion in Tam, one almost thinks the Court has completely forgotten about its holding in Walker. (To be fair to Justice Alito, he dissented in Walker, but Justice Breyer wrote the majority opinion in Walker and also joined Justice Alito’s opinion in Tam.) Justice Alito’s Tam opinion does try to formally distinguish Walker, but in a way that serves only to underscore the weakness of the reasoning in Walker. Referring back to Walker’s own analysis, Justice Alito points out that license plates: 1) have historically been used by states to convey state messages, like state mottos (true for old-fashioned plates but irrelevant to modern, specialty plate programs); 2) have often been identified in the public mind with the state (again, true for the old-fashioned standard-issue plates but not for the modern personalized ones); and 3) have been directly controlled by state governments (true, but not in a way that is clearly different from trademark approval).

Again, I am not suggesting the Tam Court was wrong to reject the government’s claim that trademark registration constitutes government speech; I am saying that the reasons the Court was correct in Tam strongly suggest that its reasoning (though not its result) in the Walker case was profoundly unconvincing.

When we move on to the question whether the trademark registration statute was properly deemed by the Tam Court to be viewpoint based, things get more complicated. Justice Alito’s opinion rejects (as does Justice Kennedy’s writing for the other grouping of the Court) the government’s argument that the statute can be upheld on the ground that it creates a “limited public forum for private speech.” Precisely when there is—or isn’t—the creation of a limited public forum is a difficult question, and one on which the Court in the past has not provided adequate guidance. Tam could have been used to offer some more specific delineation of limited forum doctrine, but instead the justices avoided the issue by observing (in, for example, Justice Alito’s opinion), that although “some content- and speaker-based restrictions may be allowed” in limited public fora, even in such fora “viewpoint discrimination is forbidden.” By characterizing the statute as an example of viewpoint discrimination, the Court sidestepped the question of whether a limited public forum was an apt analogy in the first place.

Avoiding some constitutional questions by answering other (easier) ones is a common (and defensible) practice by the Court. But is it so clear that the trademark statute constitutes viewpoint discrimination? The justices (rightly) describe viewpoint discrimination as discrimination against particular “ideas,” “perspectives,” and “messages,” but does a ban on disparagement—that applies equally to protect all persons from being disparaged—single out identifiable “ideas,” “perspectives” or “messages”? In other words, is a requirement of “happy talk”—the justices’ term to describe the old adage that if you can’t say something nice about someone, don’t say anything at all—really viewpoint discriminatory? I think that is a hard question.

To be sure, if government tried to prohibit everyone from disparaging one another in their backyards and living rooms, that would violate the First Amendment. But that is because a ban on disparagement is undeniably content based (that is, based on the meaning of the speech in question), whether or not it is viewpoint based. And in regulating the general public on private property or at street corners and parks, government cannot ordinarily engage in content discrimination.

But the rules are different in limited public fora, as the justices themselves acknowledged. There, content discrimination is often allowed, but viewpoint discrimination is not. So in the context of limited public fora, it becomes important to distinguish between the two.

And at one level it is hard to see which particular ideas of viewpoints are especially burdened by an anti-disparagement rule. All disparagement is banned, regardless of the target, or of the motive, political objective, or policy preference of the speaker. In some ways, the statute is similar to a civility rule, telling people not what to talk about but to talk nicely.

There are plausible counterarguments. One is that prohibiting disparagement privileges the status quo, and change is a form—albeit a broad one—of viewpoint. To tear down the existing state of affairs, one needs to criticize it, sometimes vigorously. For example, a rule prohibiting all candidates for office from attacking each other at a publicly sponsored forum would be problematic, insofar as challengers need to attack incumbents more than the other way around. (This is why, contrary to Justice Alito’s misdescription of the government’s position, the government well understood and acknowledged at oral argument that “certainly if you singled out a particular category of people like political officials and . . . said you can’t say anything bad about any of them, but you can say all the good things you want, . . . that would be viewpoint-based, because it would be protect[ing] a discrete group of people.” Disclaimer here: the lawyer who argued the case for the government, Malcolm Stewart, was my co-clerk and is one of my best friends.)

Another concern I have about the statute is that what constitutes “disparagement” is open to interpretation, and the government’s trademark office may use that interpretive wiggle room to disfavor particular political points of view. Vagueness is always a First Amendment concern, and ambiguity needn’t rise to the level of making something totally vague (so as to cause invalidation on the basis of vagueness alone) to inform application of other free speech doctrine.

Yet, as I said above, I think if the trademark statute really were a limited public forum (as the justices seem to concede arguendo), the case is far from as easy as the Court made it out to be. As Mr. Stewart (the lawyer for the government) hypothesized at oral argument:

Suppose . . . a public university . . . set aside a particular room where students could post messages on topics that were of interest or concern to them as a way of promoting debate in a nonconfrontational way, and the school said, just two ground rules: No racial epithets and no personal attacks on any other members of the school community. [This would be a classic limited public forum and] it would seem extraordinary to say that’s a viewpoint-based distinction that can’t stand because you’re allowed to say complimentary things about your fellow students.

Perhaps Mr. Stewart’s hypothetical proves his case that the anti-disparagement provision in the trademark statute should not be considered as viewpoint discrimination, but perhaps not. It could be that bans on “personal attacks” should be considered content-based (but not viewpoint-based) requirements merely that people stick to the merits of topics for which the forum was created and not engage in ad hominem and other irrelevant arguments. But “personal attacks” may be different in this regard from “disparagement”—the latter could be understood to include controversial assertions about the value of racial equality or diversity, or the value of immigrants to America, etc., that really are policy-oriented rather than ad hominem. Again, the imprecision in the term “disparage” opens the door here.

In any event, my own view would be that the Court should have taken the limited public forum issue head on and provided needed guidance on the question of how we know when such a forum exists. And if they did take up that question, my tentative sense is that there is some force to the instinct—expressed at oral argument by Chief Justice Roberts in response to Mr. Stewart’s hypothetical—that the trademark registration program is simply too wide and open-ended to be considered a limited public forum: “But one distinction [of your hypothetical] is the scope of the government program. If you’re talking about a particular discussion venue at a public university, that’s one thing. If you’re talking about the entire trademark program, it seems to me to be something else.” If the Court had gone that route (and developed the doctrine of limited public fora a bit), it might have provided some helpful clarity there, and it wouldn’t have had to wade into the viewpoint-discrimination thicket, since the anti-disparagement provision is clearly content based.