Constitution Check: Does the First Amendment protect offensive trademarks?

Lyle Denniston, the National Constitution Center’s constitutional literacy adviser, explains how a First Amendment case about “offensive” trademarks seems headed to the Supreme Court.

THE STATEMENT AT ISSUE:

“When the government refuses to register a trademark under Section 2(a) of the Lanham Act, it does so because it disapproves of the message a speaker conveys by the mark.  Underscoring its hostility to these messages, the government repeatedly asserts in its briefing before this court that it ought to be able to prevent the registration of ‘the most vile racial epithets and messages’ and ‘to disassociate itself from speech it finds odious.’….From its enactment in 1946 through its defense of the statute today, the government has argued that the prohibited marks ought not to be registered because of the messages the marks convey….The government [thus] discriminates on the basis of viewpoint.”

– Excerpt from a 9-to-3 decision by the special federal court in Washington that decides patent and trademark cases – the U.S. Court of Appeals for the Federal Circuit.   The decision, issued December 22, applies the First Amendment to bar the government from enforcing in any trademark case the Lanham Act’s ban on trademarks that “disparage persons, living or dead,…or bring them into contempt or disrepute.”  The section at issue also bans other negative trademarks and, while this decision was confined solely to the ban on disparaging remarks, the court openly invited constitutional challenges to those other bans.   The case of In re Simon Shiao Tam is almost certainly headed for the Supreme Court.

WE CHECKED THE CONSTITUTION, AND…

The Constitution is, of course, more than two centuries old, but its meaning is not carved in stone or settled once and for all in a given court decision, or even several of them.  For example, it has been definitely understood for at least a third of a century – and maybe as long as seven decades -- that the First Amendment simply has nothing to do with the government’s decisions to accept or reject trademarks for registration.  Trademarks are, in fact, a form of speech – usually commercially-oriented speech, but not necessarily so.

Official registration, of course, carries with it special protections on the exclusive right to use an identifying word, phrase or symbol.   Such an identifying mark can be used without being registered, but there are clear legal advantages of having it recorded with the government Trademark Office.

Under a federal law first enacted in 1946 (the Lanham Act), the government has had the authority to refuse to officially register trademarks that it found to be offensive, in some way.  The constitutionality of that approach simply went untested.  Indeed, when a test finally came in 1981, the Federal Circuit Court, a special tribunal that reviews appeals dealing with intellectual property rights, said very little when it simply declared that the First Amendment guarantee of free speech imposes no duty on the government to allow anyone to register an offensive trademark.   That decision, in a case known as In re McGinley, has been routinely applied as precedent by court after court.

But, because Americans place a very high value on free speech, it has seemed inevitable for years that free-speech advocates would challenge the continued existence of a zone of public expression without First Amendment protection – a lack that, they would argue, inhibited the creativity of those who craft trademark symbols or slogans.

If that was inevitable, so also was the deepening of social sensitivity where resentment would build over the hurt that could result from racial or ethnic slurs, including in very prominent trademarks

The result, of course, was a clash of opposites over the freedom of this mode of expression.

That clash has played out for about two decades in the costly legal battle over the effort to take away the trademark rights of the Washington, D.C., professional football team to continue to use “Redskins” as a mascot name.  The government trademark office ultimately moved to cancel several of the team’s trademarks, and a federal judge has upheld that decision, leading the team’s owners to appeal to a higher court.

That legal contest has been centered on the part of the Lanham Act’s ban on offensive marks that government officials deem to be “disparaging” to an identifiable group of persons, casting aspersions on their identity or modes of living.

As matters have now turned out, another test case has moved ahead of the Redskins fight, and has now resulted in a historic decision striking down the Lanham Act ban on registering “disparaging” marks.   The Federal Circuit Court did not simply rule in favor of one band leader who wanted to register the word “Slants” as the name for his troupe – he said it was to honor, not to disparage, the members’ Chinese heritage.   The Trademark Office had said no to registration, so the band’s “front man” appealed.

The Circuit Court went further and found that no one, proposing any kind of trademark, could be barred from registering it because it was deemed to be disparaging.  In other words, the Lanham Act provision about disparagement was simply erased altogether from the statute books, no matter what the particular facts in a given case.

The nine-judge majority explicitly overruled that 1981 precedent, In re McGinley, so that it would no longer guide any other court in disparagement cases.   The majority also rejected the federal government’s argument that, because trademark registration conferred the government’s approval or disapproval of what was said or shown by a trademark that the process amounted to a form of “government speech,” not even subject to First Amendment limitations.

No one in the field of trademark law, apparently, expects the legal dispute to stop with that decision.  In fact, the Justice Department usually feels obliged to act to defend the constitutionality of federal laws when they are challenged, so it is entirely likely that this case will be on its way on the Supreme Court before much longer.

And, if the majority of the Federal Circuit Court is right about expecting other parts of the registration limitations to be challenged under the First Amendment, this case might only be the first in a developing string.  The Justices can hardly avoid getting involved.