A copy of the case, edited specifically for this assignment, is provided below.
Included in the FIRAC CASES folder of the Canvas website for this course is a Memorandum on how to do a FIRAC analysis. The memorandum contains a link (“How to do a FIRAC Analysisâ€) that connects to an article containing a more detailed description of FIRAC methodology written by a law professor. That article goes into more depth than you need to complete this assignment, but it may be helpful.
The FIRAC CASES folder also includes the analysis I did for the Nelson case. It is there for your reference in case it may provide you with some guidance.
Additionally, in the HOMEWORK file, you can find the Instructor Examples I have posted for the previous Homework assignments this quarter.
This assignment will count for up to 5 points if turned in before the deadline, as follows:
Facts: 1 point
Issue/s: 1 point
Rule/s: 1 point
Application/s & Conclusion: 2 points
THE CASE:
JOSEPH MATAL, Petitioner, v. SIMON SHIAO TAM, Respondent.
582 US ___ (2017), 137 S.Ct. 1744 (2017)
SUPREME COURT OF UNITED STATES
Argued January 18, 2017. Decided June 19, 2017.
Justice ALITO announced the judgment of the Court and delivered the opinion of the Court . . . .
Simon Tam is the lead singer of “The Slants.” He chose this moniker in order to “reclaim” and “take ownership” of stereotypes about people of Asian ethnicity. The group “draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes” and has given its albums names such as “The Yellow Album” and “Slanted Eyes, Slanted Hearts.”
Tam sought federal registration of “THE SLANTS,” as a trademark, but an examining attorney at the PTO [U.S. Patent and Trademark Office] rejected the request, finding that “there is … a substantial composite of persons who find the term in the applied-for mark offensive.” The examining attorney found that (a) “numerous dictionaries define `slants’ or `slant-eyes’ as a derogatory or offensive term; (b) “the band’s name has been found offensive numerous times,” citing a performance that was canceled because of the band’s moniker; and (c) “several bloggers and commenters to articles on the band have indicated that they find the term and the applied-for mark offensive.” The PTO denied the application based on a provision of federal law prohibiting the registration of trademarks that may “disparage… or bring … into contempt or disrepute” any “persons, living or dead.” 15 U.S.C. § 1052(a).
Tam contested the denial of registration before the examining attorney and before the PTO’s Trademark Trial and Appeal Board (TTAB) but to no avail. Eventually, he took the case to federal court, where the en banc Federal Circuit ultimately found the disparagement clause unconstitutional under the First Amendment’s Free Speech Clause. The majority found that (a) the clause engages in viewpoint-based discrimination; (b) the clause regulates the expressive component of trademarks, which cannot be treated as commercial speech; and (c) the clause is subject to and cannot satisfy strict scrutiny. The majority also rejected the Government’s arguments that registered trademarks constitute government speech and that federal registration is a form of government subsidy. Additionally, the majority concluded that even if the disparagement clause were analyzed under this Court’s “intermediate scrutiny†standard applicable to commercial speech cases, the clause would fail that test.
The Government filed a petition for certiorari, which we granted in order to decide whether the disparagement clause “is facially invalid under the Free Speech Clause of the First Amendment.”
At issue in this case is a provision of the Lanham Act which we will call “the disparagement clause.” This provision prohibits the registration of a trademark “which may disparage… persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” § 1052(a). We must decide whether the disparagement clause violates the Free Speech Clause of the First Amendment.
The First Amendment prohibits Congress and other government entities and actors from abridging the freedom of speech. But the First Amendment does not say that Congress and other government entities must abridge their own ability to speak freely. The Free Speech Clause does not require government officials to maintain viewpoint neutrality when they speak about any course of action contemplated or taken by the government.
The Government makes three arguments that would either eliminate any First Amendment protection or result in highly permissive rational-basis review:
(1) That trademarks are government speech, not private speech;
(2) That trademarks are a form of government subsidy; and
(3) That the constitutionality of the disparagement clause should be tested under a new “government-program” doctrine. We address each of these arguments below.
The first argument relates to the content of trademarks that are registered by the PTO. The Federal Government does not dream up these marks, and it does not edit marks submitted for registration. Except as required by the disparagement clause, an examiner may not reject a mark based on the viewpoint that it appears to express. Unless the disparagement clause applies, an examiner does not inquire whether any viewpoint conveyed by a mark is consistent with Government policy or with any viewpoint expressed by other marks already on the principal register. Instead, if the mark meets the Lanham Act’s viewpoint-neutral requirements, registration is mandatory.
In light of this, it is far-fetched to suggest that the content of a registered mark is government speech. To decide otherwise would constitute a huge and dangerous extension of the government-speech doctrine. This case illustrates that trademarks often have an expressive content. Companies spend huge amounts to create trademarks that convey a message. The necessary brevity of trademarks limits what they can say. But powerful messages can sometimes be conveyed in just a few words. Trademarks are private speech, not government speech.
Next, the Government argues that this case should be governed by cases in which this Court has upheld the constitutionality of government programs that subsidized speech expressing a particular viewpoint. However, the decisions on which the Government relies all involved cash subsidies or their equivalent. But federal registration of a trademark is nothing like the programs at issue in those cases. The PTO does not pay money to parties seeking registration of a mark. On the contrary, an applicant for registration must pay the PTO a filing fee of $225-$600. Tam submitted a fee of $275 as part of his application to register THE SLANTS. And to maintain federal registration, the holder of a mark must pay a fee of $300-$500 every 10 years.
The Government responds that registration provides valuable non-monetary benefits that “are directly traceable to the resources devoted by the federal government to examining, publishing, and issuing certificates of registration for those marks.” But just about every government service requires the expenditure of government funds. This is true of services that benefit everyone, like police and fire protection, as well as services that are utilized by only some, such as the adjudication of private lawsuits and the use of public parks and highways.
Trademark registration is not the only government registration scheme. For example, the Federal Government registers copyrights and patents. State governments and their subdivisions register the title to real property and security interests; they issue driver’s licenses, motor vehicle registrations, and hunting, fishing, and boating licenses or permits. Cases involving government subsidies are not instructive in analyzing the constitutionality of restrictions on speech imposed in connection with such services. Trademark registration is not a government subsidy.
Finally, the Government urges us to sustain the disparagement clause under a new doctrine that would apply to “government-program” cases. Our cases use the term “viewpoint” discrimination in a broad sense, and in that sense, the disparagement clause discriminates on the bases of “viewpoint.” To be sure, the clause applies equally to marks that damn Democrats and Republicans, capitalists and socialists, and those arrayed on both sides of every possible issue. It denies registration to any mark that is offensive to a substantial percentage of the members of any group. But in the sense relevant here, that is viewpoint discrimination. Giving offense is a viewpoint. We have said time and again that “the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.” A bedrock principle underlying the First Amendment is that the government may not prohibit the expression of an idea simply because society finds the idea itself offensive or disagreeable. For this reason, the disparagement clause cannot be saved by analyzing it as a type of government program in which some content-based and speaker-based restrictions are permitted.
Having concluded that the disparagement clause cannot be sustained under our government-speech or subsidy cases or under the Government’s proposed “government-program” doctrine, we must confront a dispute between the parties on the question whether trademarks are commercial speech and are thus subject to [intermediate scrutiny]. On the one hand, the Government argues that trademarks are commercial speech, noting that the central purposes of trademarks are commercial and that federal law regulates trademarks to promote fair and orderly interstate commerce. Tam, on the other hand, contends that many, if not all, trademarks have an expressive component. In other words, these trademarks do not simply identify the source of a product or service but go on to say something more, either about the product or service or some broader issue. The trademark in this case illustrates this point. The name “The Slants” not only identifies the band but expresses a view about social issues.
We need not resolve this debate between the parties because the disparagement clause cannot withstand even intermediate scrutiny. In order to be subject to intermediate review, a restriction of speech must serve “a substantial interest,” and it must be “narrowly drawn.” The disparagement clause fails this requirement.
The government claims that the disparagement clause serves two interests. First, an interest in preventing “underrepresented groups'” from being “`bombarded with demeaning messages in commercial advertising.” In other words, the Government claims an interest in preventing speech expressing ideas that offend. [But], as we have explained, that idea strikes at the heart of the First Amendment. Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express “the thought that we hate.”
The second interest asserted by the Government is protecting the orderly flow of commerce, which may be disrupted by trademarks that involve disparagement. A simple answer to this argument is that the disparagement clause is not “narrowly drawn” to drive out trademarks that support invidious discrimination. The clause reaches any trademark that disparages any person, group, or institution. 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.
The clause is far too broad in other ways as well. The clause protects every person living or dead as well as every institution. Is it conceivable that commerce would be disrupted by a trademark saying: “James Buchanan was a disastrous president” or “Slavery is an evil institution”?
There is also a deeper problem with the argument that commercial speech should be cleansed of any expression likely to cause offense. The line between commercial and non-commercial speech is not always clear, as this case llustrates. If affixing the commercial label permits the suppression of any speech that may lead to political or social “volatility,” free speech would be endangered.
For these reasons, we hold that the disparagement clause violates the Free Speech Clause of the First Amendment. The judgment of the Federal Circuit is affirmed.
It is so ordered.
Justice GORSUCH took no part in the consideration or decision of this case.
PLEASE USE THE TEMPLATE PROVIDED WITH THIS ASSIGNMENT FOR YOUR ANALYSIS. FAILURE TO DO SO WILL RESULT IN A ONE (1) POINT DEDUCTION FROM YOUR SCORE
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