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Matal v. Tam

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Supreme Court of the United States
Matal v. Tam
Reference: 15-1293
Issue: First Amendment
Trademark law
Term: 2016
Important Dates
Argued: January 18, 2017
Decided: June 19, 2017
Outcome
Federal Circuit Court of Appeals affirmed
Vote
8-0 to affirm
Majority
Chief Justice John G. Roberts • Anthony Kennedy • Clarence Thomas • Ruth Bader Ginsburg • Stephen Breyer • Samuel Alito • Sonia Sotomayor • Elena Kagan
Concurring
Kennedy • Thomas • Ginsburg • Sotomayor • Kagan


Matal v. Tam is a case argued during the October 2016 term of the U.S. Supreme Court. Argument in the case was held on January 18, 2017. The case came on a writ of certiorari to the United States Court of Appeals for the Federal Circuit. On June 19, 2017, in a judgment for the court announced by Justice Samuel Alito, the court affirmed the judgment of the Federal Circuit. Chief Justice John G. Roberts along with Justice Stephen Breyer joined Justice Alito's opinion in full. Justice Anthony Kennedy authored an opinion concurring in part and in the judgment that was joined by Justices Ruth Bader Ginsburg, Sonia Sotomayor, and Elena Kagan. Justice Clarence Thomas wrote a separate opinion for himself concurring in part and concurring in the judgment. Justices Kennedy, Thomas, Ginsburg, Sotomayor, and Kagan each joined portions of Justice Alito's opinion. All eight sitting justices when the case was argued agreed with the principal holding to affirm the Federal Circuit.

In this case, the court held that a provision of the Lanham Act—one that gave the Patent and Trademark Office authority to refuse to register trademarks that, in its view, were scandalous, immoral, or disparaging—was unconstitutional. The court held that such authority discriminated in favor of the government's preferred positions in violation of the First Amendment.

HIGHLIGHTS
  • The case: Michelle Lee, the former director of the U.S. Patent and Trademark Office (PTO), challenged a Federal Circuit Court of Appeals' decision that a provision of the Lanham Act, a federal trademark law, prohibiting trademark protection for registering scandalous, immoral, or disparaging marks was unconstitutional.
  • The issue: Does 15 U.S.C. § 1052(a), which prohibits "registering scandalous, immoral, or disparaging marks," violate the First Amendment?
  • The outcome: On June 19, 2017, the court held that 15 U.S.C. § 1052(a) violated the First Amendment because such authority discriminated in favor of the government's preferred positions.


    • In brief: Simon Shiao Tam, the founder of a rock band called THE SLANTS, attempted to register the band's name with the U.S. Patent and Trademark Office (PTO) for trademark protection. The PTO refused, citing a provision under the Lanham Act, a federal trademark law, that prohibits extending trademark protection for anyone registering scandalous, immoral, or disparaging marks. The Federal Circuit Court of Appeals rejected the PTO's claim, holding that the provision of the Lanham Act in question, 15 U.S.C. § 1052(a), was unconstitutional. Argument in the case was held on January 18, 2017.

    You can review the Federal Circuit's opinion here.[1]

    Click on the tabs below to learn more about this Supreme Court case.

    Case


    Background

    This is a case about whether a provision of a federal law governing trademark registration was unconstitutional.

    In 1946, Congress passed the Lanham Act (which from here will be referred to simply as Act) to provide a national system for registering and protecting trademarks used in interstate and foreign commerce. Congress advanced two goals in adopting the legislation: to ensure the public that trademark-bearing products are the genuine articles purchased and that trademark holders can stop manufacturers of pirated or fraudulent copies of trademarked goods from earning profits off of the efforts of the trademark bearer.

    The Act, codified as 15 U.S.C. Ch. 22, requires a federal agency, the U.S. Patent and Trademark Office (PTO), to register trademarks unless the mark falls into one of several categories of marks precluded from registration. One such excluded category falls under Section 2(a) of the Act, which prohibits the PTO from registering trademarks consisting of or comprising "immoral, deceptive, or scandalous matter; matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute."[2] This provision of the Act is known as the "disparagement provision."

    At the time of this proceeding, a PTO examiner followed these requirements to determine if a mark was disparaging:

    “

    1. What is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and
    2. If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.[3]

    		”

    If, in the examiner's judgment, a substantial composite of the referenced group found the mark disparaging, the applicant was required to rebut that judgment or else the examiner rejected registration. The procedures at the time did not require an examiner to consult with a supervisor; the examiner's sole discretion was sufficient to render a mark disparaging under the Section 2(a).[1]

    In November of 2011, Simon Shiao Tam, the respondent, submitted an application to the PTO to register his band's name, THE SLANTS. The band had used its name since 2006. The PTO examiner denied registration for the mark, concluding that the mark would likely disparage people of Asian descent. The PTO's Trademark Trial and Appeal Board (referred to from here as simply Board) upheld both the examiner's finding of likely disparagement and the decision to deny registration. On appeal, Tam claimed that the denial violated his rights of free speech, but a three-judge panel of the United States Court of Appeals for the Federal Circuit affirmed the Board's decision, citing a 1981 precedent of that court, In re McGinley, which held that the PTO's refusal to register a trademark did not implicate an individual's rights to use the mark under the First Amendment. Tam appealed for en banc review by the full Federal Circuit, arguing that Section 2(a) was unconstitutionally discriminatory, in violation of the First Amendment.[1]

    On review before the full Federal Circuit, the court vacated and remanded the decision of the Board. Writing for a majority of the court, Judge Kimberly Moore found that the provision could not pass the standard used by courts for laws or regulations that implicate fundamental, constitutional rights. This standard is known as strict scrutiny. Strict scrutiny requires that a government intrusion on a fundamental right must further a compelling government interest through the least restrictive means available to the government. In the context of free speech, Judge Moore noted the First Amendment requires heightened scrutiny whenever the government creates a regulation of speech because of disagreement with the message it conveys. In the court's opinion, the disparagement provision as written unconstitutionally permitted the PTO to discriminate on both the content and viewpoints presented by a trademark applicant.

    The court also rejected the government's argument that because Section 2(a) regulates commercial speech, the standard of review for the provision should not be strict scrutiny. The opinion noted that "every time the PTO refuses to register a mark under § 2(a), it does so because it believes the mark conveys an expressive message ... Strict scrutiny must apply to a government regulation that is directed at the expressive component of speech. That the speech is used in commerce or has a commercial component should not change the inquiry when the government regulation is entirely directed to the expressive component of the speech."

    The court, however, reviewed the government's commercial speech argument and held that Section 2(a) would be unconstitutional under the test used to review laws or regulations implicating commercial speech, known as the Central Hudson test. The test derives from the U.S. Supreme Court's 1980 opinion in Central Hudson v. Public Service Commission and creates an intermediate scrutiny standard to review the constitutionality of government restrictions on commercial speech. The test first examines whether the regulated activity is lawful and not misleading and then assesses whether the interest asserted by the government is substantial, if the regulation directly and materially advances the government's asserted interest, and if the regulation is narrowly tailored to achieve the government's interest. Here, the court held that Tam's mark was neither illegal nor misleading. The court further noted that all of the government's proffered interests boiled down to permitting the government to burden speech it finds offensive and that none of the interests offered were legitimate. In so finding, the court held that the Act's disparagement provision was also an unconstitutional restriction of commercial speech in violation of the First Amendment.[1]

    Petitioner's challenge

    Michelle Lee, the PTO director, challenged the Federal Circuit's holding that the disparagement provision of the Lanham Act, Section 2(a), is an unconstitutional violation of free speech under the First Amendment. Joseph Matal was the named petitioner in the case when the court delivered its opinion after Lee resigned as PTO director.

    Certiorari granted

    On April 20, 2016, Michelle Lee, the petitioner, in her capacity as director of the U.S. Patent and Trademark Office initiated proceedings in the Supreme Court of the United States in filing a petition for a writ of certiorari to the United States Court of Appeals for the Federal Circuit. The U.S. Supreme Court granted Lee's certiorari request on September 29, 2016. Argument in the case was held on January 18, 2017. Joseph Matal was the named petitioner in the case when the court delivered its opinion after Lee resigned as PTO director.

    Arguments


    Question presented

    Question presented:

    "Whether the disparagement provision in 15 U.S.C. 1052(a) is facially invalid under the Free Speech Clause of the First Amendment."[4]


    Audio

    • Audio of oral argument:[5]



    Transcript

    • Transcript of oral argument:[6]


    Outcome

    Decision

    On June 19, 2017, in a judgment for the court announced by Justice Samuel Alito, the court affirmed the judgment of the Federal Circuit. Chief Justice John G. Roberts, along with Justices Clarence Thomas and Stephen Breyer, joined Justice Alito's opinion in full. Justice Anthony Kennedy authored an opinion concurring in part and in the judgment, and he was joined in this opinion by Justices Ruth Bader Ginsburg, Sonia Sotomayor, and Elena Kagan. Justices Kennedy, Ginsburg, Sotomayor, and Kagan also joined portions of Justice Alito's opinion. Justice Thomas wrote a separate opinion for himself concurring in part and concurring in the judgment. All eight sitting justices when the case was argued agreed with the principal holding to affirm the Federal Circuit.

    In this case, the court held that a provision of the Lanham Act—one that gave the Patent and Trademark Office authority to refuse to register trademarks that, in its view, were scandalous, immoral, or disparaging—was unconstitutional. The court held that such authority discriminated in favor of the government's preferred positions in violation of the First Amendment.[7]

    Opinion

    After a review of the factual and procedural record of the case, Justice Alito rejected three separate arguments advanced by the government: (1) that trademarks are government speech, not private speech, (2) that trademarks are a form of government subsidy, and (3) that the provision of the Lanham Act under review should be subjected under a new doctrine. In rejecting the first argument, Justice Alito noted that "holding that the registration of a trademark converts the mark into government speech would constitute a huge and dangerous extension of the government-speech doctrine. For if the registration of trademarks constituted government speech, other systems of government registration could easily be characterized in the same way. ... Trademarks are private, not government, speech."

    Justice Alito also did not accept the government's arguments that trademark registration functions as a government subsidy and, as a result, the government was not obligated to subsidize activities that the government did not wish to promote. In Justice Alito's words, "The Government responds that registration provides valuable non-monetary benefits that 'are directly traceable to the resources devoted by the federal government to examining, publishing, and issuing certificates of registration for those marks.' ... But just about every government service requires the expenditure of government funds. This is true of services that benefit everyone, like police and fire protection, as well as services that are utilized by only some, e.g., the adjudication of private lawsuits and the use of public parks and highways."

    Justice Alito further rejected the government's argument that the Lanham Act's disparagement clause should be upheld under a new doctrine that would apply to government-program cases. In Justice Alito's view,[7]

    “

    Potentially more analogous are cases in which a unit of government creates a limited public forum for private speech. When government creates such a forum, in either a literal or 'metaphysical' sense ... some content- and speaker-based restrictions may be allowed ... but... we have said time and again that 'the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.' ... For this reason, the disparagement clause cannot be saved by analyzing it as a type of government program in which some content- and speaker-based restrictions are permitted.[3]

    		”

    Finally, Justice Alito considered whether trademarks were commercial speech under the First Amendment. This was relevant because if trademarks were commercial speech, the Lanham Act's disparagement clause would be subject to a less strict form of scrutiny provided under the court's precedent in Central Hudson v. Public Service Commission. Justice Alito opted not to address this question as, in his view, the clause would not survive First Amendment scrutiny even under the relaxed free expression standards applied to commercial speech.

    As a result of the court's opinion, the judgment of the Federal Circuit Court of Appeals was affirmed.

    Concurring opinions

    Justice Anthony Kennedy authored an opinion concurring in part and in the judgment, and he was joined by Justices Ruth Bader Ginsburg, Sonia Sotomayor, and Elena Kagan. Justices Kennedy, Ginsburg, Sotomayor, and Kagan also joined portions of Justice Alito's opinion. Justice Kennedy wrote separately to proffer his view that he would not subject the disparagement clause to the Central Hudson standard even if trademarks were considered commercial speech. In his view, "to the extent trademarks qualify as commercial speech, they are an example of why that term or category does not serve as a blanket exemption from the First Amendment’s requirement of viewpoint neutrality. ... To permit viewpoint discrimination in this context is to permit Government censorship."[7]

    Justice Clarence Thomas wrote an opinion for himself concurring in part and in the judgment. Justice Thomas noted that he would not have addressed an argument that Tam himself failed to raise but which Justice Alito referenced in his opinion, noting that "I see no reason to address this legal question in the first instance." Justice Thomas also noted that he would have applied strict scrutiny to the Lanham Act's disparagement clause and not relied on the commercial speech test outlined in Central Hudson, though Justice Thomas did note his view that the clause failed that test as well.[7]

    Dissenting opinions

    There were no dissenting opinions filed in this case.

    The opinion


    Filings

    The court granted Lee's certiorari request on September 29, 2016.


    Merits filings

    Parties' filings

    • Michelle Lee, the petitioner, filed a merits brief on November 9, 2016. Joseph Matal was the named petitioner in the case when the court delivered its opinion after Lee resigned as PTO director.
    • Simon Shiao Tam, the respondent, filed a merits brief on December 9, 2016.
    • Lee filed a reply brief on the merits on January 9, 2017.

    Amicus curiae filings

    The following groups filed amicus curiae briefs in support of the petitioner, Michelle Lee.

    • Brief of Amanda Blackhorse et al.
    • Brief of the Fred T. Korematsu Center for Law and Equality et al.
    • Brief of various law professors
    • Brief of various Native American organizations

    The following groups filed amicus curiae briefs in support of neither party.

    • Brief of the American Intellectual Property Law Association
    • Brief of Asian Americans Advancing Justice et al.
    • Brief of the New York Intellectual Property Law Association
    • Brief of Public Knowledge
    • Brief of various members of Congress

    The following groups filed amicus curiae briefs in support of the respondent, Simon Shiao Tam.

    • Brief of Alliance Defending Freedom
    • Brief of the American Center for Law and Justice
    • Brief of the American Jewish Committee
    • Brief of the Becket Fund for Religious Liberty
    • Brief of the First Amendment Lawyers Association
    • Brief of the International Trademark Association
    • Brief of the Justice and Freedom Fund
    • Brief of Professor Hugh C. Hansen
    • Brief of Professors Edward Lee and Jake Linford
    • Brief of Pro Football, Inc.
    • Brief of the Rutherford Institute and Consumer's Research
    • Brief of the Thomas Jefferson Center for the Protection of Free Expression et al.
    • Brief of various constitutional law professors
    • Brief of various law professors

    Certiorari filings

    Parties' filings

    • Michelle Lee, the petitioner, filed a petition for certiorari on April 20, 2016. Joseph Matal was the named petitioner in the case when the court delivered its opinion after Lee resigned as PTO director.
    • Simon Shiao Tam, the respondent, filed a brief in opposition to certiorari on June 20, 2016, after an order extending time to file was granted by the court.

    Amicus curiae filings

    The following group filed an amicus curiae brief in support of granting certiorari.

    • Brief of Pro Football, Inc.

    See also

    Footnotes

    1. ↑ 1.0 1.1 1.2 1.3 U.S. Court of Appeals for the Federal Circuit, In re Simon Shiao Tam, December 22, 2015
    2. ↑ Cornell University Legal Information Institute, "15 U.S. Code § 1052 - Trademarks registrable on principal register; concurrent registration," accessed October 20, 2016
    3. ↑ 3.0 3.1 Note: This text is quoted verbatim from the original source. Any inconsistencies are attributable to the original source.
    4. ↑ Supreme Court of the United States, Lee v. Tam, September 29, 2016
    5. ↑ Supreme Court of the United States, Lee v. Tam, argued January 18, 2017
    6. ↑ Supreme Court of the United States, Lee v. Tam, argued January 18, 2017
    7. ↑ 7.0 7.1 7.2 7.3 Supreme Court of the United States, Joseph Matal, Interim Director, United States Patent and Trademark Office, v. Tam, June 19, 2017
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