Identifying Boundaries in Patent and Trademark Law.

The American University Law Review is proud to present its annual Federal Circuit symposium, 

Panel 2: Trademarks

First Amendment Freedom of Speech and Trademarks: What Is, and What Should Be, the Relationship Between the Two?

Christine Farley, American University Washington College of Law (Moderator)

Ned Snow, University of South Carolina

Gov’t interest in not registering marks?  Ultimate question is whether it aligns with the purpose of TM law.  Breyer provided an answer himself: we want a marketplace where people are nice to one another, an economic marketplace w/o namecalling. That’s right. The economic marketplace is better off w/o that.  Both individually and macro perspective.  There are more participants that will join if they’re less offended/excluded.  You could say: if I want fewer people to buy my good, that’s my own business, but there’s a spillover effect on other market participants and other transactions. We want to make the marketplace one that people are not offended to enter into.  Macro: it is more attractive on the whole even if I’m not going to purchase disparagingly marked products.  Gov’t’s interest is preserving a marketplace where individual participants can get along well.

Douglas Rettew, Finnegan

A lot of TM answers at the argument could have been given but weren’t. SCt was looking for a gov’t justification consistent w/consumer protection and business protection from freeloaders. Gov’t interest: if something is disparaging/scandalous, it’s far off from source identifying function, it’s distracting and the non source identifying function overwhelms the source identification function.

Lee Rowland, ACLU

This case is a perfect storm of threats to 1A.  Really reasonable people who think the economic market is better off w/o namecalling.  Breyer asked why the 1A means we can’t have nice things. The reality is that our 1A comes with harm.  Is there something different about the market?  I can’t begin to find a justification for that. The marketplace for ideas is where the gov’t should be most hands off.  Gov’t making choices about the kind of speech we see in the aisles, or should consumers make choices about what to support?  People fill seats at the Washington team’s game; liberty doesn’t always lead to justice or right moral course.  Breadth of disparagement clause: any institution. End the Fed; Yankees Suck. Those are good source identifiers.

Rebecca Tushnet, Georgetown University

No, those are very good expressive messages about the person wearing the T-shirt, not good source identifiers—PTO denies rights to I heart DC, etc. on a regular basis b/c it’s good information not good source identification.  Rowland’s passionate defense of the 1A applied to “the market” is why this case is ultimately about Lochner.  You should hate TM law and registration in its entirety if you really want the gov’t to be hands off.  TM registration (and infringement law) is not common law fraud.

Snow: 1A is all about context.  If you had an anti-disparagement law in political debates, that would be clearly unconstitutional. What about trademark allows or doesn’t allow for gov’t to play a role in the benefit it will give to TM registrants?  We can learn a lot from other provisions of TM law—other criteria for registration should teach us something about the reach of TM law. If we think about source identification—source identification is expressive, self-identification.  Calling your hotel Marriott if your name is Marriott is the ability to communicate something about your product.  Distinctiveness says you can’t get a TM unless it is sufficiently distinct from the product you’re selling.  I can’t call a product Ned Snow, but we’re fine with it—b/c common names require distinctiveness for TM rights.  So the ultimate question is whether criteria other than distinctiveness/lack of genericity are also sufficiently like distinctiveness in aligning w/the purpose of TM. The purpose becomes very important in order to understand the legitimacy: so what is the purpose? If we can find a rational basis for disparagement, we should be good to go with that content-based distinction.

Rowland: I agree, but it’s not content based.  It’s viewpoint based.  We wouldn’t challenge distinctiveness b/c of the implications for other areas of 1A doctrine.  The difference b/t content based and viewpoint based restriction on speech.  You can say things in a public park you can’t in a private place.  Forum law has gotten too robust, often to the detriment of speech. Whether you’re in a forum analysis or gov’t benefit/unconstitutional conditions, there’s a gradation depending on how much the gov’t is trying to manipulate the content or viewpoint of your speech.  TPM=not much scrutiny.  Content-based rule: then you get strict scrutiny, though commercial speech or limited public forum or gov’t program changes the standard. Third rail: no viewpont or speaker-based discrimination: nobody who supports abortion rights can speak in this room b/c it’s owned by the gov’t. Gov’t may never have as valid interest suppression of private speech.  Except for terrorism, Holder.  That’s true in tax benefits.

RT: That’s all cool, and if Tam were denied any registration at all until he stopped using the name, Rowland would be right.  But he’s not.  He’s allowed to enter the room, he just has to sign in with a nondisparaging name; he’s allowed to chant his name while he’s in the room.  What is viewpoint based/why is it bad?  Hating gays is a viewpoint.  Hating is not.

Rettew: 2(a)’s breadth is such that it doesn’t cover any particular viewpoint.

Snow: Content/viewpoint is a mess.  This case is a hard one.  I came down on the side of content, but there’s more there than meets the eye b/c of the human subjectivity involved in determining disparagement. W/deceptiveness, at first glance, that seems objectively verifiable.  [Though I teach two courses almost entirely dedicated to figuring out what’s confusing/deceptive.]  The subjectivity of distinctiveness is different from the subjectivity of disparagement—it turns on morality and the judge’s perception of what the public morals are, which is inherently shaded by one’s moral code, and so there’s a better argument for invalidating this provision than others.  Ultimately I think it’s content based b/c deceptiveness criterion isn’t black and white, when you look at the actual test.  And on morality—which played a bigger role than we realized in the Fed. Cir. decision—that opens up a deeper question about the role of morality in the law. This is not Lawrence, where morality is the reason for the law; instead it’s about upsetting commerce if you upset the public [or specific groups who get excluded].  We can find that in many other legal contexts. 

Farley: inconsistency in results has been made much of by the challengers—examples of TMs approved by PTO compared to those disapproved.  To make the point about inevitable subjectivity. Lingering question of vagueness.  What do you make of that??

Rettew: this is one of the strongest arguments; I’ve argued cases on that.  One thing people are realizing is that TM is messy.  It’s very vague.  WANKER allowed for beer, rejected for clothing. TITMOUSE refused for computer cursor control devices, but ok for animation production services.  PUSSY POWER rejected for entertainment, but PUSSY POWER REVOLUTION for clothing. 

Farley: they do reject all SHIT marks.

Rettew: Madonna for wines was once considered scandalous.  Norms and viewpoints change over time.

Rowland: we don’t see the kind of inconsistency of other content-based rules.  TM bar and PTO: this isn’t an incredibly diverse bar, any more than this panel is. Not a coincidence that Dykes w/ Bikes was rejected, or that Heeb was rejected, but Redskins was approved and a 50-page federal opinion defends it.  It’s not a representative group of Americans.  Almost every group trying to reclaim a word has been rejected.  Nobody batted an eye on Redskins for decades. Combination of vagueness + demographics = viewpoint discrimination.

RT: (1) Vagueness doctrine, if an independent reason, should invalidate all registration system.  Churrascos: same applicant, different results; that’s not about political or demographic characteristics of examiners.  School grades, likewise are going to vary across the country—if vagueness if fatal to a gov’t program, bye-bye public school.  (2) Each examiner has limited time and resources; a lot depends on what the applicant does. Wanker and Titmouse actually have really easy explanations (product differences and audience interests—beer is an adult product and clothing is not so there’s more scope; the Titmouse clothing had a bird logo and the Titmouse computer peripheral was a mouse in the shape of a woman’s breast; Madonna was litigated at a different point in time, but that’s also true of genericity); it’s true that the Pussy ones are more inconsistent.

Snow: the one thing about disparagement/immoral/scandalous that’s different is moral judgments going on. The question as I see it reflects lack of diversity on moral norms/codes, but that doesn’t feed directly into viewpoint/content based Q. It’s about whether law can turn on moral judgments or not.

Rowland: A teacher having lots of rules: can’t write about Civil War b/c this is geography class.  And if you write about Trump, you can only write in favor.  That’s the difference.  Turn on political views of the teacher. Antidiscrimination laws are aimed at conduct.

RT: Can a student get a bad grade for denying the Holocaust? [Rowland says that’s about truth; I think that’s deep waters.] Could you have an assignment “write about someone you admire, not someone you hate”?  I think so.  You can’t disparage anyone is not you can’t disparage Trump; nature of gov’t program also matters—you can get a registration and keep using your disparaging term.

Farley: is denying registration really a huge deterrent?

Rettew: Registration is not that big a deal. Corporation: a lot of time companies can’t clear marks; they do search after search. We often tell them they can use it even if they can’t register it b/c the standard for registration is different from the standard for protectability/noninfringement of others’ marks. Many companies don’t care as much about registration because internet allows nationwide use/rights even without a registration. There are people who have overestimated the value. There are benefits to registration, but not the ones people talk about: (1) counterfeiting. (2) Juries like registrations; it’s a blue ribbon that means something to them.  Those are what matter.  So it really matters only if you’re going to trial or going after counterfeiters.

Rowlands: matters b/c people value it.  It’s definitely a meaningful benefit. If gov’t denies you benefit based on viewpoint or content of speech, that’s a burden.  Simon & Schuster, Son of Sam case.  Commandeered his money and gave it to victims.  When the gov’t is using the power of the purse to penalize speech, that’s a massive burden.  Practically people won’t speak. Denial of benefit should always be considered a burden.  Irony: ACLU really does have weird relation to IP b/c it’s a restriction on speech. If we’re better off w/o namecalling—denying registration allows proliferation of that kind of mark—not accomplishing the goal.  Our positions are bizarre b/c end result doesn’t align.

RT: I think my position aligns.  Depends on whether or not you’re committed to the expressive message!  I heart DC shirts will be more prolific when there’s no registration b/c people can compete to provide the message.  Baking soda sold with racist mascots won’t be. And that probably reflects the right balance—when you have a commercial motive distinct from your expressive motive, you are more likely to modify the message than when you think the expression sells the product.

Farley: 43(a)?

Rettew: yes and no. I don’t know the answer; I think you could and would bet on that side, but then Taco Cabana says otherwise.

RT: [brief precis of my argument]

Farley: what will the Court do?  Gov’t speech, unconstitutional conditions?  Consider some marks expressive and subject to different rules?  Content/viewpoint?

Rowlands: the third rail is gov’t speech.  The four-part test is not great (ACLU was on the other side), but at least makes some sense about observers/gov’t’s historical role.  Administrative involvement isn’t enough.  Adjudicating application is what happens when you apply for a park permit. Gov’t itself has disclaimed that TMs represent gov’t speech.  Far more likely to be unconstitutional conditions.  Distinctions in that case law b/t money and program that isn’t money; this is the latter.  Where they focus in on: the nature of this benefit, and is the gov’t’s role close enough to gov’t speech to justify this regulation?  The worst case scenario for the Justices is gov’t imprimatur for a slur.  There’s no case that really is on point.  Manipulating private viewpoints outside the scope of the program, you lose.

Snow: Agree—think unconstitutional conditions.  One other spin: something to be said for content of speech? Are they more likely to find viewpoint-based discrimination when it deals w/religion or politics v. registration of a commercial TM.  Maybe obscenity is viewpoint based, but we didn’t really know.

Q: any way to reduce vagueness?

Rowlands: blacklists, as state license plate authorities have.  A stretch to interpret the statute that way, but PTO has some discretion.  Or interpret disparaging as meaning of a real person, but “institutions” in statute makes that a dead letter.

Q: how the standard of substantial composite works in practice. 

Rowlands: Badly!

Rettew: Best you can do is analogize to infringement.  15% or higher is usually enough for confusion.

Rowlands: Heckler’s veto.

Q: Reed v. Town of Gilbert/Brown v. EA.  Key issue: morality/content based.  Strict scrutiny.  If this is content based, would it survive?

Rowlands: Reed isn’t in one of these compromised areas of the law—commercial speech, gov’t benefit.  It’s the purest version of what the 1A stands for. We’ve conceded already, if this is just content distinctions, we wouldn’t have filed.  Brown + Reed + Ward v. Rock Against Racism—Ct articulated more of a mushy, touchy-feely definition: gov’t targeting speech b/c of content, and Reed rejects that test and begins more textual analysis.  Get more protection even if the motive is suppressing content even if the law looks content-neutral on its face.  Morality is all through this, but at the same time we’re seeing a Ct rejecting more subjective moral framewk. They will likely back off Reed—pretend it doesn’t mean what it says.  Reed: you could see 2 distinct categories of speech treated differently, and they’ll say Reed only means that. We didn’t mean to eclipse everything else.  Otherwise they can’t issue judgments based on morality, and the new nominee will want to do so.  E.g., new attempts to crack down on revenge porn, mandating filters.

Q: how grandfathering comes into this.  You can find a large segment of Af-Am population that would object to Negro or Colored People, yet NAACP/UNCF are old, established marks. If someone came in today, they probably wouldn’t be able to get it through.

Farley: Whitelist/blacklist.

Snow: Also an issue w/genericity. There is one distinction b/t the two. A markholder can police the mark; these cases lie in a sea of ambiguity and policing will be persuasive to a judge. But we can’t police morality and make sure the morals of society change/don’t change.

Rowlands: it’s a one-way ratchet.  NFL team 40 years ago wasn’t considered offensive, but Tam wants to reappropriate – language gets more offensive over time. Creeping chill about what future society will accept; unfair to ask any markholder.

RT: w/o 1A controlling, you can have an easy doctrinal answer: evaluate at time of application. Madonna! You already showed it wasn’t a one way ratchet. That wasn’t the standard applied to the Washington team.  That means no TM law uncertainty, though societal change may still produce uncertainty.