Lee v. Tam post-argument

Lee v. Tam

My thoughts on observing the argument: I was surprised how much attention the Justices paid to the copyright comparison.  The SG centered his response around the idea that copyright is historically a mechanism to stimulate expression, while trademark lacks the same speech-promoting role (and indeed serves a speech-suppressing function).  I might have spent more time saying that, under unconstitutional conditions doctrine, an exclusion from copyrightability for disparaging works would almost by definition be trying to affect speech outside the government program at issue—that is to say, it would be trying to leverage the government’s power to grant protection to expression to deter people from speech that includes disparaging ideas; therefore the unconstitutional conditions analysis would be sharply different if Congress decided to disallow copyright in disparaging works.

I have no prediction at all.

Post-argument panel at AU:

John Connell, Archer Law (Counsel for Respondent)

Denial of registration is always b/c gov’t finds mark disparaging, offensive to 3d party.  Gov’t disfavors that. That’s inherently viewpoint discrim b/c positive/neutral views are permitted to register.  Lanham Act is widely available to broad range of mark holders.  Selectively denying mark b/c of negative views expressed by mark is viewpoint discrimination.

Ilya Shapiro, Cato Institute (representing Cato Institute on amicus brief): added examples of offensive marks like Raging Bitch beer.  Beyond black letter law on viewpoint discrimination or unconstitutional conditions. Not thrown into jail, but denied a gov’t benefit for exercising his first amendment rights.  TM registration is an important statutory right—easier to defend infringements. Record label won’t sign w/o registration.

Mike Carroll: how does Wash. Football team dispute bear on this?

Jesse Witten, Drinker Biddle (representing Amanda Blackhorse, et al. on amicus brief)

No question that our case hangs over Tam, especially locally.  Overshadowing our case is the n word.  If you open the door to the Slants, you have to issue registrations for everything. Maybe that’s good policy, maybe not, but many judges will be leery of official registrations for incredibly racist marks.  We have examples of horrific marks registered before the statute was changed in the 1940s.  Gov’t felt it couldn’t be quite as brazen.  Intended to complement gov’t’s brief.  Simple argument: there’s no burden on the speaker.  Can still make claims under §43(a).  TM empowers you to silence somebody else. It’s not a 1A issue, it’s an exception to the 1A.  Refusal of registration reduces marginal ability to silence, but that’s not a 1A right.  J. Sotomayor asked some relevant questions. 

Q: unregistered owner can bring claim?

Prof. Rebecca Tushnet, Georgetown University (representing Law Professors on amicus brief)

TM is a right to suppress speech.  If Tam gets trademark protection for the expressive aspects of his mark, he is able to suppress other speakers—including a racist band using the term to express its racism.  This characteristic of TM and TM registration means that 1A analysis targeted at traditional punishments is inappropriate—there is no neutral baseline.  It also highlights that the gov’t is regulating only the registration aspects, not the expressive aspects of the mark.

Not denied a gov’t benefit outside the contours of the gov’t program itself. Unconstitutional conditions is a doctrine that prevents attempts to leverage a gov’t benefit to change constitutionally protected behavior outside the program.  Gov’t can decline to pay for abortion, but it can’t decline to provide other health care to someone who has exercised her const’l right to abortion.  Simon Tam can register TMs in logos, names, other features; if he were denied any TM registration until he changed the name, Shapiro would be right.

Why is viewpoint discrimination bad?  Because it targets a particular group for suppression.  Disparagement bar doesn’t do that.  Hating gays is a viewpoint; hating is not.  Materiality: do consumers care about the feature at issue?  If a blanket ban on disparagement is viewpoint based, then a ban on material falsehoods and not immaterial falsehoods is also viewpoint based because it depends on whether consumers care about the feature you’re discussing or not.

Shapiro: Agree that this is about unconstitutional conditions.  Also issues of scope of IP more broadly. If you’re going to have a registration system, it’s the gov’t administering and not speaking.  It can’t discriminate in this way.

Joel MacMull, Archer Law (Counsel for Respondent)

Notion that Simon Tam has not been burdened.  Keep in mind: this is a facial challenge to a constsitutional provision.  In all instances, §2(a) is discriminatory. When you have a facial challenge, you don’t have to demonstrate individual burden.  He can only continue using the mark if he’s not second in time in a given territory.  He’s based in Portland Oregon—someone could beat him if he didn’t have the benefit of the nationwide priority from the registration, which would allow him to prevent other people from using it nationwide.  43(a) isn’t a good enough fallback for those reasons.

Jesse Witten: the burden is that it’s harder for him to silence people outside of Portland?

MacMull: he may not be first in these other territories.

Witten: SCt has identified TM as an exception to free speech, not an instance of free speech.  Gay Olympics case: passes muster as a legit. regulation of commercial speech, satisfying intermediate scrutiny.

[RT: I hate that case but think it’s distinguishable.]

Shapiro: none of that has to do with registrability. Bracketing suppression, we take the law as given, and it’s an equal protection question.  Can your registration be denied b/c the gov’t doesn’t like it.

RT: on 43(a) and distant users: why wouldn’t they have 1A rights to do so? Denying them rights based on registration’s nationwide priority can’t be about protecting consumers in Michigan who don’t know about the Portland Slants and can’t be confused.  It is about another objective: helping businesses manage relations.

Carroll: what happened at argument?

Connell: the Ct wanted to rule unanimously against both sides. [h/t Mark Lemley]

Shapiro: Ct was struggling w/how to write the opinion. Justices weren’t satisfied w/gov’t or petitioners in terms of bright line for what they’re going to do.  He thinks 5 votes for pet’r; Breyer on fence; Sotomayor leaning towards gov’t; Thomas was silent but was deciding vote on Confederate flag case.  That’s distinguishable b/c nobody thinks every TM is endorsed by the gov’t.

Witten: no established doctrinal bucket.  I felt like a surprisingly large number had an open mind.  There are good arguments & weaknesses on both sides.

Connell: false association/no names w/o consent is a right of publicity issue, a completely different animal.

Shapiro: surprised Court wasn’t that interested in vagueness issues.  Dykes on Bikes: name approved but logo rejected b/c had name in it.  Denied to Have you heard Satan is a Republican but not The Devil is a Democrat.

Carroll: SG said no one rejected non-disparaging marks that were rejected.

Shapiro: Fag-dog has been registered 2x and refused 2x.

MacMull: it’s the gov’t’s burden.

Witten: open Qs: can you do a facial challenge on vagueness grounds?  SCt has said yes and no.  There may be some cases that are really hard and others, like N-word, are not hard.  Should not facially invalidate in such cases.  Marsh v. Chambers: SCt articulated a test that prayer was fine as long as it didn’t proselytize or disparage. If that’s the word employed to interpret Establishment Clause, hard to find that “may disparage” is vague.

MacMull: threw in constitutional stuff as a side issue; initial issue was an evidentiary one.  Vagueness, I long thought, was one of the strongest arguments, but it was never the one the Court or the Fed Cir en banc put in front of the parties. 

Q: reappropriation as potential distinction?

MacMull: PTO shouldn’t care about applicant’s intent, for many reasons not the least of which is that intent can change.  Tam’s intent could be different tomorrow.  TMs are freely assignable [w/goodwill]. 

Shapiro: vile marks are registrable, but that’s not a guarantee of success in the commercial marketplace. College football teams changed names b/c they found it untenable. It wasn’t the gov’t telling them to do so. Private solutions matter.  If The Slants’ name hurts ticket sales, that will take care of the problem.