In the

Supreme Court of the United States

MICHELLE K. LEE, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, UNITED STATES PATENT AND TRADEMARK OFFICE, PETITIONER

v.

SIMON SHIAO TAM , Respondent.

 

QUESTION PRESENTED

Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), provides that no trademark shall be refused registra­tion on account of its nature unless it "consists of matter which may disparage persons, living or dead, institutions, beliefs, or nation­al symbols, or bring them into contempt, or disre­pute." The question presented is as follows:

Whether the disparagement provision in 15 U.S.C. 1052(a) is facially invalid under the Free Speech Clause of the First Amendment.

 

BRIEF FOR THE RESPONDENT

STATEMENT

In the decision below, the en bane Court of Ap­peals correctly held that the disparagement clause of the Lanham Act is contrary to the First Amendment. This provision bars the registration of a trademark that "may disparage persons, living or dead." As the Court of Appeals found, the disparagement clause discriminates on the basis of viewpoint, by imposing a substantial burden on speech with a particular message. The government offers no justification for this viewpoint discrimina­tion other than preventing offense to listeners, but that is not a valid basis for restricting expression.

The judgment of the Court of Appeals can also be affirmed on two other grounds that respondent Si­mon Tam raised below. First, as a matter of statuto­ry interpretation, the disparagement clause simply does not bar the registration of his trademark. Sec­ond, the disparagement clause is unconstitutionally vague.

1. Simon Tam is an Asian-American musician, lec­turer, and political activist. He is the founder and leader of The Slants, a rock band based in Portland, Oregon. When Tam formed the band in 2006, his purpose was not just to play music. He also intended the band to be a vehicle for expressing his views on discrimination against Asian-Americans. To that end, he recruited Asian-American band members, and he called his band The Slants.

In choosing that name, Tam was following in the long tradition of reappropriation, in which members of minority groups have reclaimed terms that were once directed at them as insults and redirected the terms outward as badges of pride. In recent times, the most conspicuous exam­ples of reappropriation have involved words such as "queer," "dyke," and so on -formerly derogatory terms that have been so successfully adopted by members of the gay and lesbian community that they have now lost most, if not all, of their pejorative connotations. In earlier periods, regional nicknames such as "hoosier" and ''badger'' were originally de­rogatory, but were adopted with pride by Indianans and Wisconsinites respectively. Even "Methodist" and "Quaker" began as pe­jorative epithets, but were adopted by Methodists and Quakers themselves and lost their negative con­notations.

Tam aimed to do the same for "slant," a derogato­ry reference to Asian-Americans. "We want to take on these stereotypes that people have about us, like the slanted eyes, and own them," he explained. He observed: "For our band, we're not just Chinese, we're not just Vietnamese, we're kind of a pan-Asian band that celebrates all the different Asian cultures out there. Everyone in the band really loves the fact that we can try and empower Asian Americans and say, 'You know what? We are slanted. Who cares? We're proud of that.'

In their music, as the Court of Appeals found, "Mr. Tam and his band weigh in on cultural and po­litical discussions about race and society." Sometimes The Slants offer wry commentary on racial stereotypes. Their first album is called "Slant­ed Eyes, Slanted Hearts." Their fourth is "The Yel­low Album," a title that combines references to the Beatles' 1968 "White Album" and Jay-Z's 2003 "Black Album" with a reference to the once-common use of the color yellow to refer pejoratively to Asians, as in the phrase ''Yellow Peril."

At other times, The Slants come closer to straight­forward advocacy. For example, the chorus of their song "Sakura, Sakura" is:

We sing for the Japanese and the Chinese and all the dirty knees.

Can you see me? We sing in harmony for the babies in the alleys.

The title of "Sakura, Sakura" refers to the well­-known Japanese folk song of the same name. The Slants' song echoes the melody of the folk song. The first line of the chorus recalls a schoolyard taunt painful­ly familiar to many Asian-Americans: "Chinese, Jap­anese, dirty knees, look at these." As Tam has explained, The Slants "feel strongly that Asians should be proud of their cultural heritage, and not be of­fended by stereotypical descriptions."

In 2011, Tam sought to register THE SLANTS as a trademark. The examiner refused to register the mark, on the ground that it is disparag­ing to "persons of Asian descent."

2. The Trademark Trial and Appeal Board af­firmed. The Board acknowl­edged that Tam's purpose in naming his band The Slants was "an attempt not to disparage, but rather to wrest 'ownership' of the term from those who might use it with the intent to disparage." The Board nevertheless determined that "the evidence of public perception of the meaning of THE SLANTS, as used in connection with applicant's ser­vices, shows that meaning to be a derogatory refer­ence to people of Asian descent." Board concluded that "the fact that applicant has good intentions underlying his use of the term does not obviate the fact that a substantial composite of the referenced group find the term objectionable."

Tam appealed to the Court of Appeals for the Fed­eral Circuit. He argued that the Board erred in find­ing his trademark unregistrable under section 2(a) of the Lanham Act, and that section 2(a)'s disparage­ment clause is contrary to the First Amendment and unconstitutionally vague.

3. A panel of the Court of Appeals affirmed. The Court of Appeals found that "the evidence here supports the Board's finding that the mark THE SLANTS likely refers to people of Asian descent." The court also found that "substantial evidence supports the Board's finding that the mark THE SLANTS is likely offensive to a substantial composite of people of Asian de­scent." The Court of Appeals relied on the precedent of its predecessor court, the Court of Customs and Patent Appeals, to reject Tam's con­stitutional arguments.

4. The en banc Court of Appeals vacated the Board's decision and remanded the case to the Board for further proceedings. The court began by observing that "Mr. Simon Shiao Tam named his band THE SLANTS to make a statement about racial and cultural issues in this country. With his band name, Mr. Tam conveys more about our so­ciety than many volumes of undisputedly protected speech." The en banc court reinstated the panel's holding that THE SLANTS is disparaging. But the en banc court went on to hold that section 2(a)'s disparagement clause is con­trary to the First Amendment.

The Court of Appeals concluded that the dispar­agement clause discriminates on the basis of viewpoint. As the court observed, "the PTO rejects marks under ¤ 2(a) when it finds the marks refer to a group in a negative way, but it permits the registration of marks that refer to a group in a positive, non-disparaging manner." The court concluded: "Section 2(a) is a viewpoint-discriminatory regulation of speech, creat­ed and applied in order to stifle the use of certain disfavored messages. Strict scrutiny therefore gov­erns its First Amendment assessment-and no ar­gument has been made that the measure survives such scrutiny."

The Court of Appeals further held that the dis­paragement clause could not be upheld as a permis­sible regulation of commercial speech. The court not­ed that the disparagement clause regulates the ex­pressive aspects of a trademark, not the mark's commercial function as the identifier of the source of a good or service. "Importantly," the court noted, "every time the PTO refuses to register a mark under ¤ 2(a), it does so because it believes the mark conveys an expressive message." The court thus concluded that the First Amendment requires strict scrutiny.

The Court of Appeals rejected the government's contention that section 2(a) restricts no speech and is thus immune from First Amendment scrutiny. The court concluded that the First Amendment presumptively prohibits content-­based and viewpoint-based burdens on speech, just as it prohibits similarly discriminatory bans on speech. The court recognized that the advantages of trademark registration are so significant that "the ¤ 2(a) bar on registration creates a strong disincentive to choose a 'disparaging' mark."

The Court of Appeals also rejected the govern­ment's suggestion that trademark registrations are government speech. court held that registration does not change the fact that trademarks are private speech, not government speech. The court further held that the accoutrements of registration, such as the placement of a mark on the Principal Register and the PTO's issuance of a registration certificate, "do not convert the underlying speech to government speech." As the court noted, "the PTO routinely registers marks that no one can say the government endorses," such as CAPITALISM SUCKS DONKEY BALLS and MURDER 4 HIRE. The court observed, moreover, that "copyright reg­istration has identical accoutrements," so the gov­ernment's theory would allow it to deny copyright registrations to works that disparaged others, an outcome that would clearly violate the First Amendment.

The Court of Appeals likewise rejected, on two grounds, the government's argument that section 2(a) is a government subsidy exempt from strict scrutiny. First, the court noted that under the unconstitutional conditions doctrine, the government may not attach "'conditions that seek to leverage funding to regulate speech outside the contours of the program itself.'" Because trademark registration "is not a program through which the government is seeking to get its message out through recipients of funding," the court held, the government cannot condition trademark registration on the avoidance of a particular view­point.

Second, the Court of Appeals determined that trademark registration is not a subsidy. As the court noted, "the subsidy cases have all involved government funding or government property." Trademark registration, by contrast, involves neither. "Unlike a subsidy consist­ing of, for example, HIV/AIDS funding, or tax ex­emptions, a trademark registration does not directly affect the public fisc," the court concluded. "Instead, a registered trademark redefines the nature of the mark holder's rights as against the rights of other cit­izens." Thus "the system of trademark registration is a regulatory regime, not a govern­ment subsidy program."

Finally, the Court of Appeals held that section 2(a)'s bar on disparaging trademarks would be con­trary to the First Amendment even if it were classi­fied as a regulation of commercial speech. Under the intermediate scrutiny applicable to commercial speech, regulation must advance a substantial government interest, but the court found that 2(a) immediately fails at this step," because "the entire interest of the government in ¤ 2(a) de­pends on disapproval of the message."

Judge O'Malley, joined by Judge Wallach, filed a concurring opinion. She agreed that section 2(a)'s disparagement clause is contrary to the First Amendment. She also concluded that the disparagement clause is unconstitutionally vague.

Judge Dyk filed an opinion concurring in part and dissenting in part, which Judges Lourie and Reyna joined in part. He concluded that section 2(a)'s disparagement clause is contrary to the First Amendment only as applied to marks, such as Simon Tam's, that are ''both political and commer­cial." He would have upheld the clause as applied to "routine product identifiers," which he characterized as trademarks that "lack the kind of 'expressive character' that would merit First Amendment protection for offen­sive content."

Judge Lourie dissented, on the ground that the PTO's refusal to register a trademark "is not a denial of an applicant's right of free speech," because "Mr. Tam may use his trade­mark as he likes" even without federal registration. Judge Reyna dissented, on the ground that trademarks are com­mercial speech and that the disparagement clause satisfies the intermediate scrutiny applicable to commercial speech.

SUMMARY OF ARGUMENT

The Lanham Act's disparagement clause is con­trary to the First Amendment. The judgment of the Court of Appeals can also be affirmed on two other grounds Simon Tam raised below. First, as a matter of statutory construction, the disparagement clause does not bar the registration of his trademark. Sec­ond, the disparagement clause is unconstitutionally vague.

I. The disparagement clause is contrary to the First Amendment.

A. The disparagement clause imposes a significant viewpoint-based burden on speech. It permits the registration of marks that express a positive or neu­tral view of a person, but bars the registration of marks that express a negative view. The denial of registration is a serious burden, because registration confers important legal rights on trademark owners. The First Amendment does not permit the govern­ment to impose such a burden on speakers based on their viewpoint.

Even if viewpoint discrimination could be justified by a compelling interest, the government is unable to make that showing here. The only interest the gov­ernment asserts, and the only interest the dispar­agement clause conceivably advances, is that of pro­tecting people from being offended by the viewpoints expressed in disparaging trademarks, but the First Amendment does not allow the government to im­pose burdens on speech to protect listeners against offense.

B. In an attempt to avoid the application of settled First Amendment principles, the government tries to wedge the disparagement clause into three different doctrinal boxes, but the clause does not fit into any of them.

1. Trademark registration is not a government subsidy. Trademark registrants receive no money from the government. In contrast, the Court's subsi­dy cases all involve actual disbursements of funds to speakers, or the equivalent in the form of tax exemp­tions or the use of government payroll mechanisms for the purpose of obtaining funds for expression. If trademark registration were a subsidy, copyright registration would be a subsidy too, which would al­low the government to deny copyright registrations to works with content the government disfavors.

In any event, the disparagement clause would be unconstitutional even if trademark registration were a subsidy. Viewpoint discrimination in subsidies for private speech is just as impermissible as viewpoint discrimination in any other context. Moreover, where the government places speech-related condi­tions on the recipients of public funds, those condi­tions must advance the purpose of the particular program the government is funding. A ban on dis­paraging marks does not advance the purpose of the Lanham Act, because disparaging marks can identi­fy the source of a product just as accurately as non­-disparaging marks.

2. Trademark registration is not government speech. Registration of a trademark does not connote government approval of the mark or the product to which it refers. A trademark, whether registered or unregistered, is speech by the trademark owner, not by the government. Unlike government speech such as license plates and public monuments, trademarks do not communicate messages from the government. They are not understood by the public as statements by the government. And the government does not control their design or content. The issuance of a trademark registration no more transforms a mark into government speech than the issuance of a copy­right registration converts a copyrighted work into government speech.

3. Trademarks are not pure commercial speech. Trademarks have both commercial and expressive purposes; they identify the sources of products and they express points of view. The disparagement clause regulates only the expressive component of trademarks, never the commercial component. The appropriate First Amendment standard is the one for fully protected expression, not commercial speech.

In any event, the disparagement clause would be contrary to the First Amendment even under the doctrine applied to commercial speech. Viewpoint discrimination is impermissible for commercial speech, just like for noncommercial speech. Moreo­ver, the government can advance no interest other than that of preventing offense to listeners, but that is an interest the First Amendment renders off-­limits, for commercial speech just like for noncom­mercial speech.

4. For the second time in recent years, the gov­ernment advances a theory under which speech gets reduced protection or no protection at all when it shares a "common thread" with categories of speech that get reduced or no protection, even when the speech does not fall within one of these categories.

II. The disparagement clause does not bar the reg­istration of Simon Tam's trademark, for two reasons.

A. Simon Tam's trademark is not disparaging. By calling his band The Slants, Tam is not disparaging Asian-Americans. He is doing precisely the opposite: He is appropriating a slur and using it as a badge of pride. The PTO found the name disparaging only be­cause the PTO uses a two-part test of its own inven­tion to determine whether a mark is disparaging, a test that departs in important ways from the text of the statute the PTO is ostensibly interpreting.

B. Simon Tam's trademark does not "disparage ... persons," because ̉personÓ is defined in the Lanham Act to include only natural and juristic persons. Non-juristic entities such as racial and ethnic groups are excluded from this definition. To be sure, each individual Asian-American is a nat­ural person, but the statute cannot be read to bar marks that disparage Asian-Americans on this ground, because all collective entities, juristic and non-juristic alike, are made up of natural persons. If the disparagement of a non-juristic group were deemed to constitute the disparagement of the indi­viduals who make up that group, the Lanham Act's distinction between juristic and non-juristic entities would be a nullity.

The history of the disparagement clause confirms that the clause does not protect racial and ethnic groups. The clause was added to the Lanham Act to bring American law into compliance with our treaty obligations, not to protect minority groups. For dec­ades before and decades after the enactment of the Lanham Act, the PTO routinely registered trade­marks derogatory to minority groups. Only in recent years has the PTO applied the disparagement clause to such non-juristic groups. But of course the PTO may not rewrite a statute.

IlI. The disparagement clause is unconstitutional­ly vague. The PTO has a sorry record of utterly arbi­trary disparagement decisions. Part of the problem is the subjectivity inherent in deciding whether a mark is disparaging. The PTO has made the vague­ness problem even worse by construing the statute non-literally to bar the registration of marks that disparage non-juristic groups, and has compounded it again by refusing to say how many members of the referenced group must perceive disparagement. Ap­plicants have no way to predict what the PTO will do.

Vague speech restrictions chill speech. The dis­paragement clause is a strong incentive to stay away from any name the PTO might conceivably find dis­paraging, because it can be extraordinarily costly and disruptive to change the name of a product that is already in the market. Vague speech restrictions also facilitate discriminatory enforcement. The dis­paragement clause provides PTO examiners with broad power to grant or refuse registration based on the examiners' own subjective preferences. The PTO has been aware of this problem ever since the Lan­ham Act was enacted, but it is no closer to a solution today than at any time in the past.

Vague speech restrictions do not just chill speech; they also facilitate "discriminatory enforcement," be­cause a "vague law impermissibly delegates basic policy matters" to low-level decision-makers "for res­olution on an ad hoc and subjective basis, with the attendant dangers of arbitrary and discriminatory application." The PTO's consideration and re­jection of MARRIAGE IS FOR FAGS took place right in the midst of the controversy over California's Propo­sition 8, which prohibited same-sex marriage. The applicant lived in California. We will never know whether the PTO's examiner was discriminating against the view expressed in the trademark, and that is precisely why vague speech restrictions like the disparagement clause are so pernicious.

The problem is not, as the government contends merely that some of the PTO's less skillful examiners make occasional mistakes in ap­plying the disparagement clause. The problem is deeper than that. The disparagement clause is too vague to be applied in a predictable manner, even by the best of examiners. The PTO itself has admitted that the clause is "vague" and that decisions under it are "highly subjective." The PTO has had seventy years to work on this problem, and it is no closer to a solution today than at any time in the past.

CONCLUSION

The judgment of the Court of Appeals should be affirmed.