Preventing Tam's "proudest Boast" from Protecting the Proud Boys: a Response to Free Speech Absolutism in Trademark Law

• Jurisdiction: United States,Federal
• Publication year: 2022
• Citation: Vol. 71 No. 3

Preventing Tam's "Proudest Boast" from Protecting the Proud Boys: A Response to Free Speech Absolutism in Trademark Law

Katherine K. Carey

PREVENTING TAM'S "PROUDEST BOAST" FROM PROTECTING THE PROUD BOYS: A RESPONSE TO FREE SPEECH ABSOLUTISM IN TRADEMARK LAW

Abstract

Recent events, including the infamous Unite the Right rally in Charlottesville in 2017 and the attack on the U.S. Capitol on January 6, 2021, have brought the First Amendment, hate speech, and the resurgence of white nationalist rhetoric into the public eye. Throughout the twentieth and twenty-first centuries, while much of the Western World and the United Nations worked to restrict hate speech, the U.S. Supreme Court increasingly expanded protections for speech and expression under the First Amendment and narrowed the exceptions under which speech is not protected. In particular, under the near-absolutist interpretation of the First Amendment, hate speech is protected unless it falls within the exceedingly narrow exceptions to First Amendment protection, such as the "fighting words" or "incitement to imminent violence" exceptions. Critics of the absolutist approach and the protection it affords hateful and racist speech argue that this approach to the First Amendment is inconsistent with, and in fact denies to minorities, other constitutional guarantees, namely the Fourteenth Amendment right to equal protection.

Through an exploration of the evolution of the absolutist interpretation of the First Amendment, this Comment joins that argument and seeks to further examine the place of hate speech in First Amendment jurisprudence within the context of federal trademark law, particularly through Matal v. Tam. In Tam, the landmark trademark case in which the Supreme Court struck down the disparagement clause of the Lanham Act as violative of the First Amendment, the Court furthered its current absolutist interpretation of the First Amendment and firmly stated that the "proudest boast" of the First Amendment is protection for the thought that we hate. In the context of Tam, this meant that Simon Tam's Asian American band The Slants—which, in choosing that name, engaged in reappropriation of the traditionally disparaging term "slant"—could obtain the federal trademark registration for a band name that it had been denied under the disparagement clause. However, under Tam's holding and the holding of its companion case, Iancu v. Brunetti, others with intentions less pure and tolerant than reappropriation may now also obtain federal trademark registrations for and profit from the most hateful and offensive marks.

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This Comment proposes a solution—an anti-hate speech amendment to the Lanham Act—to the double-edged sword created by Tam and Brunetti. Under this solution, marks that would constitute hate speech would be presumptively barred from registration. However, the amendment would also include a reappropriation exception by which applicants could obtain registration of an otherwise hateful or disparaging mark by successfully demonstrating that they are using the mark to engage in reappropriation to reclaim the disparaging mark and empower their community.

Introduction.............................................................................................611

I. The First Amendment....................................................................616

A. It Wasn't Always So: The Evolution of the Absolutist Interpretation of the First Amendment ..................................... 616
B. Exceptions to First Amendment Protection .............................. 621

1. The "Fighting Words" Exception....................................... 622
2. The "Incitement to Imminent Violence" Exception............ 624

II. Hate Speech and the Power of Reappropriation.....................625

A. Defining Hate Speech and Identifying Its Harms ..................... 625
B. Reappropriation ....................................................................... 628

III. Trademarks and the Lanham Act ..............................................630

A. The Lanham Act: Codifying Common Law Trademark Rights . 630
B. Why Register? Benefits of Federal Registration on the Principal Register ..................................................................... 631

IV. Free Speech Absolutism Comes to Trademark Law...............632

A. Matal v. Tam ............................................................................ 632

1. The Road to the Supreme Court ......................................... 632
2. The Slants's Success at the Supreme Court ........................ 635
3. Reactions and Ramifications to Tam: A Double-Edged Sword .................................................................................. 639

B. The Companion Case: Iancu v. Brunetti .................................. 640

V. A Solution to Tam's Double-Edged Sword...............................643

A. The Problems with Protecting Hate Speech ............................. 643
B. A Solution Within Trademark Law ........................................... 646
C. Distinguishing from Other Solutions........................................ 647
D. A Response to Arguments Against a Hate Speech Exception to First Amendment Protection ..................................................... 649

1. The "Slippery Slope" Argument......................................... 649
2. The marketplace Argument ................................................ 651

Conclusion.................................................................................................652

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Introduction

On June 19, 2017, the U.S. Supreme Court decided Matal v. Tam, a landmark case for trademark law and the First Amendment.¹ Less than two months later, on August 11, 2017, a horde of white supremacists marched through the streets of Charlottesville, Virginia, bearing "tiki torches, swastikas, and semi-automatic rifles and chanting slogans like 'White lives matter' and 'Jews will not replace us!'" in the Unite the Right rally.² At first glance, the connection between an intellectual property decision from the Supreme Court and a white supremacist rally may not be apparent, but the two are more closely related than they appear.

Since the rally in Charlottesville, white supremacist groups spewing hate speech have continued to operate with increasing frequency and visibility. In August 2018, the weekend before the first anniversary of the Charlottesville rally, groups led by the Proud Boys, "a white nationalist fight club," arrived in Portland to "brawl in the name of 'free speech.'"³ Even more recently, the summer of 2020 "brought eerie echoes" of 2017.⁴ In response to the unprecedented surge of support for the Black Lives Matter movement,⁵ right-wing, white-supremacist paramilitary groups rallied in communities across the country, often with the intention of escalating their rallies to open conflict with government officials and Black Lives Matter activists.⁶

Many brands, influenced by the Black Lives Matter movement, have changed, or announced plans to change, their trademarked brand names and logos,⁷ many of which have been criticized as racially insensitive since long before the summer of 2020.⁸ However, from a legal standpoint, when it comes

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to the hate speech spouted by white supremacist groups, "rigid First Amendment doctrines [protecting hate speech] . . . can tie the hands of . . . leaders trying to keep [citizens] safe."⁹ After Tam, the First Amendment now also ties the hands of those wishing to keep hate speech and disparagement out of the federal trademark registry.

In Tam, the Supreme Court struck down the "disparagement clause," a provision of Section 2(a) of the Lanham Act, as a violation of the Free Speech Clause of the First Amendment.¹⁰ The Lanham Act governs federal trademark law in the United States, including federal trademark registration.¹¹ Prior to Tam, the disparagement clause barred federal registration of marks that "[c]onsist[ed] of or comprise[ed] . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols."¹² Tam concerned Simon Tam's Portland-based dance-rock band and their quest to obtain federal trademark registration for their band name.¹³ The Asian American band chose the name "The Slants" in an effort to reclaim and reappropriate "slant"—a racial slur used to disparage people of Asian ethnicity—by using the term in a way that would make a social commentary on and provoke conversation about discrimination.¹⁴ Despite the band's intent to reclaim the term for the Asian American community through this reappropriation—a tactic minority groups commonly employ to empower themselves and fight discrimination¹⁵ —the U.S. Patent and Trademark Office (USPTO) denied the band's application for federal registration twice on the grounds that "The Slants" was disparaging to people of Asian ethnicity.¹⁶

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Ultimately, the disparagement clause was struck down as violative of the First Amendment, and The Slants got their federal registration.¹⁷

While there is a moral intuition that Tam saw justice done for The Slants, and while the result was legally correct under current First Amendment doctrine,¹⁸ much of the commentary surrounding the case has focused on the room the decision created for hate speech in trademark law¹⁹ and alternative ways the Court could have decided the case without voiding the disparagement clause in its entirety.²⁰ Further, for some, Tam constitutes one of the more recent steps the Court has taken in its absolutist interpretation of the Free Speech Clause of the First Amendment.²¹

The absolutist approach to free speech provides remarkably broad protection for freedom of expression—including "the most hateful, offensive, illiberal, and dangerous ideas"—to an extent that "is unusual around the world, even among other constitutional democracies."²² This position was affirmed in Justice Alito's plurality opinion in...