Saturday, April 30, 2016

FESC: Trademark Registration and Free Speech

Presenter: Deven Desai: Latest Trojan Horse in 1A law. §2(a) allows denial of registration for disparaging marks.  This piece of TM law is a chance to rethink the 1A in general.  The Washington football team & In re Tam.  Fed. Cir. drew on Reed to find §2(a) disparagement unconstitutional content-based regulation. Threatens the ability to have a proper regulatory state. The fact that the acid logic of current 1A protection makes the bar on registering merely descriptive terms even arguably unconstitutional shows that something has gone seriously wrong w/current law. Forcing TM law into strict scrutiny makes little sense and could do great damage in general.
Bar on disparaging marks has been justified in various ways: gov’t endorsement, gov’t resources, user’s continuing right to use.  There is enough gov’t involvement to be sufficiently like Confederate Veterans.  Is the only constitutionally sound purpose of TM law to improve the quality of the truthful/nondeceptive signals consumers receive?  Can our concept of quality include disparagement? Tam used unconstitutional conditions, but RT says that was wrong, b/c TM always involves gov’t intervention into the speech market.  We’d like to appropriate ROOT BEER or BARQ’s for root beer, but we can’t; PTO would rightly deny registration.  Deception-adjacent bars would be suspect/fail under the Tam approach.  There’s an easy way out under commercial speech doctrine under Friedman, but b/c so much has changed since 1979 there’s a problem.
What would happen if we gave full 1A scrutiny to TM? These bars would all falter/crumble under real 1A scrutiny.  Key point: denying registration isn’t a punishment. Lack of sufficient justification to grant the private right in the first place. This is what we need for a regulatory system.  If you say that other marks should have been denied; we have inconsistency in regulatory systems, and this isn’t a ban on speech.
Is this viewpoint discrimination? No, it’s equal: you can’t disparage any group with your choice of mark; we don’t care what the speaker thinks.  Straightforward.  We also make decisions about subject matter protectability in ©.  To have a regulatory state, we need to do certain things. The FDA has to manage drug labels. Debt collection practices. Registering TMs—economic regs assaulted by modern 1A theory.  We should embrace ordinary economic regulations with content regulation involved.  That’s what the regulatory state is supposed to do when it works well.
What content-based determinations are legitimate? We might have to leave it to the legislature.
RT: Thanks to Deven and the participants!  I know I’m a bit of a contrarian.
Balkin: This is different than other kinds of regulations.  Characterize what the nature of the regulatory practice is to fit it into 1A thought. First cut: this is a close cousin of the regulation of commercial speech. Either part of that or close cousin. There, our basic goal is to promote truthful, nonmisleading information for the purpose of improving cultural competence.  It’s really a form of market behavior we protect b/c in essence it throws information into the system. Much market behavior isn’t protected b/c it isn’t info producing. Tries to influence desire by reshaping culture.  [those two things aren’t the same, desire and info]  But why don’t we allow TM registration for everything? The gov’t must have a view that there are certain registrations that will produce a certain kind of market that’s desirable: but what is that?  Once we know what the gov’t’s goals are, the real test is whether there is a rational relation b/t organization of the registration system and the kind of market we want.  If true, that’s just Central Hudson, which is reasonableness under the circumstances.  If it’s truthful or not misleading, we do intermediate scrutiny. The distinction between viewpoint based and content based is not part of the test, just a means-end rationality test.  Must be an allocation of economic power somewhere (rights or no-rights) and the gov’t’s choice among them just has to be reasonable.
Desai: constitutionally sound purpose of TM/harm done to significant segments of the population—need to develop that more in the paper.
Tamara Piety: On misleadingness, case law has assumed that if it’s lawful or that a whole bunch of stuff that doesn’t make an assertion about truthfulness meets that prong; elides disputes about what constitutes misleadingness or truthfulness. Doesn’t fit neatly in to truthfulness/nontruthfulness. We could place this dispute in (1) or (2) of Central Hudson.  State action problem: Gov’t’s thumb on the side of a matter of public concern. But it would be if they had the registration too! Gov’t’s doing so in a regime that if they get the right they get to suppress others’ speech. What’s the justification for that?  Market-making v. gov’t’s desire to avoid identification with disparagement.  1A discussion seems to be at the first level of taking a side on disparagement rather than what TM as a regime does.
Andrew: not a TM expert: struck down disparagement bar in toto. But doctrinally: other ways that might attack disparagement bar.  I don’t like Confederate Veterans: majority opinion has difficult-to-foresee implications; giving up on Finley—gov’t doesn’t want its hands dirtied by art it doesn’t like.  One thing you might draw on is admin law: idea of Congress not delegating this power to this group to make this decision.  Petition for cancellation is an interesting mechanism: Washington team already had a registration; Tam didn’t have a registration—is there a difference/vested right?  King v. Burwell—why would you let the TM office make a disparagement determination? There’s no way that moral adequacy questions would ever be delegated to the PTO.
RT: reminds me of talking about © 15 years ago. [Congress was super clear about delegation.]
Vision of market making: Civilizing commerce.
Kate Klonick: even though we keep talking about avoiding deception, honest info flow—the other question is why do we want that to be the marketplace? It benefits consumers and companies in general (market for lemons)—that’s also why we allow the TM office to regulate speech that is derogatory.  We want to protect users.
RT: issue: continuing right to use; can the market take care of it?  Not always! Doux-commerce: a market can segment so that the racists are enough to support the product.
Annemarie Bridy: Source identification is not a semantic function—when the gov’t is regulating whether or not it will give you a mark, it’s only regulating whether it will approve of that as a source identifier.  Does that mean it’s content neutral, b/c what you’re regulating is the source identification function?
RT: not under Reed’s excitingly broad definition of “content based,” but that’s silly—it’s a perfectly sensible content-based regulation.
Balkin: RAV.  Scalia would say: imagine two different products: Happy Jew bagels; Smelly Jew bagels.  According to Scalia, you can’t register one but not the other.  Exception: where the distinction is related to the purpose of the regulation itself.  If you accept that disparagement is part of a special master plan of sweet commerce, that would be ok.
RT: deceptive marks: a ban would be effective; refusal to register by hypothesis is not b/c it’s material to consumers, thus helping to sell the product; why would the applicant stop using?  So unless something about the regulatory system is important to distinguish it from a ban, gov’t should have to use a ban instead.
Piety: external justification for regulation: since you’re handing a potential stream of income to someone. Materially different from a speech ban. 
Priority rules—why aren’t they suspect under the 1A?  ITU, foreign rights owners, etc.  Even if the common law were a neutral baseline, that isn’t the common law.
Analogy to names: gets past the commercial speech issue; doesn’t have to be commercial speech for the gov’t to be able to regulate it in this particular way.  [avoid the Central Hudson question of reasonable basis if it’s a general regulation that goes beyond commercial speech]
Consider Gallo v. Gallo and other personal names cases: courts have not to date seen a 1A problem in barring use of personal name (though query whether that should continue—here we have the private speech v. private speech issue not directly presented by TM registration)

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