Another week, another unanimous SCOTUS IP Decision – this time, disparaging Trademarks

The Supreme Court ruled unanimously today (well, an opinion and a concurrence) that a provision in the Lanham Act banning “disparaging” trademarks violated the First Amendment. In the case in question, an Asian-American musician named Simon Tam had attempted to register his band’s name, “The Slants,” in a clear effort to reclaim the slur.  The PTO had refused the registration, on the grounds that it was a disparaging term. The Federal Circuit ruled in favor of Tam (my thoughts on that decision are here).  Writing for the Supreme Court, Justice Alito declined to resolve whether the case required strict or intermediate scrutiny, on the grounds that the disparagement clause failed the weaker, intermediate scrutiny standard.  Alito found two asserted government interests: one was protecting against speech that offends, and he dismissed that argument on the grounds that the “the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate’” (citing a 1929 dissent by Justice Holmes).  The second interest was in the protection of the orderly flow of commerce.  Here, he pointed out that the statute was in no way narrowly-drawn, as intermediate scrutiny would require.  In the first of a series of reductios, he argued that:

“The clause reaches any trademark that disparages any person, group, or institution [emphasis original; he is quoting statutory text]. It applies to trademarks like the following: “Down with racists,” “Down with sexists,” “Down with homophobes.” It is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.”

A concurrence by Justice Kennedy (joined by Ginsburg, Sotomayor and Kagan) doubled down on the viewpoint discrimination argument, essentially saying that the law so clearly fell afoul of that part of the First Amendment that no further analysis was necessary.  The government had argued that in preventing all disparaging marks, it was content-neutral.  The concurrence was having none of it: the “logic of the Government’s rule is that a law would be viewpoint neutral even if it provided that public officials could be praised but not condemned.”  In response to the claim that the law should be upheld on the grounds that, even though the “Slants” was designed to reappropriate an ethnic slur, nonetheless some portion of the Asian-American community would be offended, Kennedy pointed out that this was viewpoint discrimination in another guise: the speech was disfavored because the government made an assumption about how the speech would be heard that contradicted the intention of Tam.  Kennedy: “While thoughtful persons can agree or disagree with this approach, the dissonance between the trademark’s potential to teach and the Government’s insistence on its own, opposite, and negative interpretation confirms the constitutional vice of the statute.”

As a practical matter, it’s worth pointing out that the reach of today’s decision is fairly narrow; even without official registration, trademark claimants can pursue actions against similar marks.  Thus the Washington Redskins (who will get their registration back) could still sue to stop usage of their name by, for example, unlicensed T-Shirt vendors.  Still, registration confers prima facie validity for a claim, which serves to clear a hurdle in litigation.  So it is not without benefit.

I think this case is important for a couple of reasons.  First, for the third time in as many weeks, the Supreme Court has issued rights-based arguments to strike down efforts of intellectual property regimes to directly regulate the bios.  This case is distinct because it is not about patents (and it is also not a rebuke to the CAFC, with which SCOTUS agreed); instead, it invalidated a statutory provision of trademark law that had been in place since 1946 and an agency interpretation of it.  In that sense, it is an even more clear-cut example of the assertion of juridical power against biopower than the patent cases, which revolve around an ongoing battle between the Federal Circuit and Supreme Court.

Second, the Court’s reasoning was based largely (I am reading tea leaves here a bit, and I didn’t track down all the cases cited in the opinion, so what follows is provisional) on the traditional justification for trademark, that it helped to avoid consumer confusion.  The main opinion did refer to the ways that trademarks spur firms to maintain quality because of their good name, but this too is a standard economic justification (see the basic case here).  What struck me as conspicuously absent from this discussion was any notion of dilution.  Dilution, one will recall, is a recent addition to trademark law that is based on the theory that, even if no consumers will be confused, trademark protection can be used to stop the usage of a mark that might “tarnish” or “dilute” the brand image of a trademark.  In one of the main dilution cases, the Court tried to rule that Victoria’s Secret could not quash a sex shop called “Victor’s Little Secret” on the grounds that Victoria’s Secret could show no evidence of harm to its reputation (the supporting briefs and lower court opinions showed clearly that, because nobody was confused in the least about the difference between the shops).  Congress immediately revised the statute to specify that the harm was presumptive, and so Victoria’s “sexy” image was damaged by the “tawdry” association with actual sex (no, I am not making this up).

It seems to me that the logic of the Slants decision is pointing in a different direction from dilution theory.  Dilution doctrine, at least in its tarnishment variation, allows a private party to use the government to stop speech by another private party on the grounds that some people will find that speech offensive.  To my ears, at least, this sounds close to the argument that Kennedy condemned today: the government is discriminating against a viewpoint on the grounds that some hypothetical audience will be offended (recall that the showing of actual harm is no longer required by the statute).  Even the more neutral dilution theory – that the mark being enjoined will somehow diminish the specificity of affect that consumers feel for a given brand – requires an assumption about consumers’ uptake of a given expression.  So today’s decision makes me wonder about the constitutionality of a statutory provision that says no finding of actual harm is required.