Mcle Self-study Article

• Citation: Vol. 42 No. 3
• Publication year: 2017
• Author: Stephanie Spangler

MCLE Self-Study Article

Stephanie Spangler

Norris McLaughlin & Marcus, P.A.

MATAL V. TAM: CASE SUMMARY

(See end of this article for information on receiving 1.0 hour MCLE self-study credit.)

On June 19, 2017 the Supreme Court issued its decision in Matal v. Tam (formerly Lee v. Tam),¹ and unanimously² held that the disparagement clause of the Lanham Act violates the Free Speech Clause of the First Amendment. The Court found that the disparagement clause "offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend."³

Part I: Summary of the Facts and Procedural History

On November 14, 2011, Simon Tam, the leader ofthe all Asian-American rock band called The Slants, filed an application with the United States Patent and Trademark Office ("PTO") to register the trademark, THE SLANTS. The PTO denied registration because the mark was disparaging to Asian Americans under the disparagement clause of the Lanham Act.⁴ Tam, on a mission to reclaim or transform the derogatory meaning of"the slants" into one of empowerment, pressed on undeterred.

Tam filed an appeal before the U.S. Court of Appeals for the Federal Circuit, which initially agreed with the PTO.⁵ In a subsequent en banc rehearing, the Federal Circuit changed its tune, holding that because the Lanham Act's disparagement provision is a viewpoint-based restriction on speech, strict scrutiny applies.⁶ The court then held that the provision did not serve a compelling government interest.⁷ Going further, the court also noted that even if the disparagement provision were to be considered a restriction on commercial speech (where an intermediate scrutiny standard would apply), there was no substantial government interest that justified the restriction.⁸

On January 18, 2017, the Supreme Court held oral arguments in Lee v. Tam, No. 15-1293. The issue before the Court was whether the disparagement provision of the Lanham Act, which refuses trademark registration to any mark that "[c]onsists of...matter which may disparage...persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute,"⁹ is facially invalid under the Free Speech Clause of the First Amendment. The following provides a case summary of the Court's opinion.

Part II: The Disparagement Clause Applies to Persons, Institutions, and Beliefs

Before discussing the merits of the case, and even though it did not grant certiorari on the issue,¹⁰ the Court considered and rejected Tam's argument that the disparagement clause does not apply to racial or ethnic groups.¹¹ Finding such argument meritless,¹² the Court clarified that that the disparagement clause applies to persons, institutions, and beliefs (and members of institutions or of groups whose members share particular beliefs), corporations, unions, and other unincorporated associations.¹³

Part III: The Court Rejected the PTO's Arguments

Once determining that the disparagement clause applies to marks that disparage racial or ethnic group members, the Court then turned to the PTO's arguments, rejecting them all. The Court found that (1) "[t]rademarks are private, not government speech,"¹⁴ (2) trademarks are not a form of government subsidy,¹⁵ and (3) trademark registration is not a "government-program."¹⁶

Part III-A: Trademarks Are Not Government Speech

The Court found the PTO's argument that trademarks are government speech to be "far-fetched."¹⁷ The Court noted the "dangerous misuse" that could result if trademarks were government speech¹⁸ whereby the government could by "affixing a government seal of approval" "silence or muffle the expression of disfavored viewpoints."¹⁹

Part III-B: Trademarks Are Not a Government Subsidy

The question of whether the registration of trademarks is a government subsidy was "no difficult question."²⁰ Cases on which the PTO relied all involved cash subsidies or their equivalent.²¹ The PTO's trademark registration program is "nothing like the programs at issue" in prior subsidy cases because the PTO does not pay money to the trademark registration applicants.²²

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Part III-C: Trademark Registration Is Not a Government Program

Justice Alito, joined by Chief Justice Roberts and Justices Thomas and Breyer, rejected the PTO's attempt to merge the government-speech cases²³ and subsidy cases²⁴ into a broader "government-program" doctrine. Justice Alito's opinion also rejected the PTO's reliance on union fee cases,²⁵ because they were irrelevant to trademark registration.²⁶ Although other cases, where the government created a limited public forum for private speech, were "more analogous," even in those cases,²⁷...