Matal v Tam and the Question of Free Speech and Trademarks – Part I

The Slants. Album artwork from here

The Supreme Court of the United States, in a unanimous (8-0) decision in Matal v. Tam (582 US ___ (2017)) delivered on June 19, affirmed a federal court’s decision holding that US Trademark law’s restriction on registration of disparaging marks violates the First Amendment to the Constitution of the US, which provides protection against laws abridging the freedom of speech. In this post, I discuss the findings in Matal, and analyse the possible implications which the judgement may have for free speech jurisprudence in the US, particularly in the context of intellectual property rights.

The fascinating discussion concerning content neutrality and copyright protection on this blog recently, in the post by Justice Gautam Patel of the Bombay High Court and Prof. Joshua Sarnoff’s response, provides a great backdrop to an analysis of the core issue in this decision – the applicability of standards of free speech to intellectual property. In Part – II, I will address this issue from the perspective of trademark law and free speech jurisprudence in India.


Simon Tam, frontman of the rock group The Slants (emphasis supplied), hoping to ‘reclaim’ the racist epithet used for Asians in the US, applied for the registration of a trademark on the name of the group, before US Patents and Trademark Office (“PTO”). The US PTO denied Tam registration of the mark, on the grounds that the relevant US law dealing with trademark registration, the Lanham Act, prohibits the registration of any mark which “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” In particular, the PTO held that the trademark would ‘disparage…or bring into contempt, or disrepute’ persons of ‘Asian descent’.

Tam took the decision in Appeal before the Trademark Trial and Appeal Board and further to the Federal Circuit Court of Appeals, where the Federal Court found the clause to be facially unconstitutional. The PTO appealed to the Supreme Court, which upheld the Federal Court’s decision.

Issues and the Supreme Court’s Decision

The challenge before the Supreme Court essentially turned on the question of whether the disparagement clause of the Lanham Act was in violation of the first amendment to the Constitution of the United States, which provides constitutional protection to the freedom of speech. There were essentially two aspects to be considered in making this determination. Firstly, do trademarks constitute ‘speech’? If so, what kind of speech would they constitute, and what standard of scrutiny should the court apply to this speech? Secondly, whether the government could deny registration to trademarks on the basis that they were ‘disparaging’ to a certain person or group of persons. The Court found in favour of the Respondent in both issues.

On the first issue, the government argued that, by being officially recognised in the trademark registry, trademarks constituted government speech,  or in the alternative, trademarks constituted commercial speech, and in both cases the restrictions on speech should subject to less scrutiny from the court, which should be satisfied in this case.

The first argument rests on a well-recognised exception to constitutional free speech protection in the US, namely, that the government itself can promote a specific viewpoint or a policy position, without treating all such viewpoints equally in its own speech. The Court rejected the argument that trademarks are ‘government speech’, holding that trademarks are private speech. The Court ruled that the mere registration of a trademark does not make it government speech, as the government is (save for the disparagement clause) required to register any trademark that fulfils the qualifications of a valid trademark under the Lanham Act.

On the second argument, the Court accepted that trademarks are ‘commercial speech’, which is speech where the speaker is more likely to be engaged in commerce, where the intended audience is commercial or actual or potential consumers, and where the content of the message is commercial in character. This category of speech has previously been accorded less protection than private or expressive speech, such as political speech, and the standard for restrictions is that it should ‘serve a substantial interest’ and ‘be narrowly drawn’. However, the Court held that the disparagement clause could not even withstand the lower standard of scrutiny, even assuming that it was commercial speech.

The standard applied by the Court against which trademarks were judged was the standard of viewpoint neutrality, namely, that a law cannot discriminate between speech based on the government’s opinion of what such speech conveyed. The Court examined that the requirement that a mark should not be disparaging, bore no relation to the purpose of trademark registration, which was identified as being to facilitate source identification. The Court found that, inasmuch as the law restricted trademark protection for content which was ‘disparaging’ or brought any group of persons into ‘contempt or disrepute’, it prohibited content which gave offence, according to the government’s viewpoint. The Court went on to state that the ‘public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers’, and that the government ‘cannot single out a subset of messages for disfavor on the basis of the views expressed’. On this basis, the Court held that restriction of speech on this basis violated viewpoint neutrality, and could not be sustained under the first amendment.

In coming to its conclusion, the Court also assessed the implications of these issues upon copyright law, stating that, adopting the standard argued by the Appellant would imply that copyright registration may no longer be subject to the protections of the first amendment.

What Matal Could Mean for Trademarks and for Free Speech

Offensive trademarks and free speech are an important issue of public debate, particularly in light of the Washington Redskins trademark dispute. This blog has analysed previously incidences where ‘offensive’ trademarks have been sought to be registered for the infamy which they could bring along with them. As an outcome of this ruling, it is possible that plainly disparaging trademarks may be registered simply as a vehicle of public expression for some groups. The Supreme Court’s analysis of whether offensive trademarks can be sustained as ‘commercial speech’ is important in this respect. While Matal was an ‘easy’ case, one where the mark sought to be registered was not one expressly aimed at offending or being discriminatory, a similar finding on marks like the Redskins’ would be more difficult to digest. Some of the judges of the Court (in their separate opinions) held that the clause in its present form cannot sustain relaxed scrutiny, even if it qualifies as commercial speech. However, it remains to be seen if a more narrowly tailored clause, aimed, for example, specifically against hate speech, could pass a similar test.

The Supreme Court in Matal expressly limited its effect to the ‘disparagement’ and ‘contempt or disrepute’ qualifiers of the Lanham Act. This means that, somewhat incongruously, trademarks which are ‘immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols’ may still be registered, until the same are challenged. Under the viewpoint neutrality standard adopted by the Court, however, such clauses could be subject to a strong challenge before courts in the near future. This could bring into confusion important aspects of trademark protection, for example, by implicating the refusal of ‘deceptive’ trademarks, or trademarks which suggest a link with an unrelated person or entity, requirements which fulfill an important function of trademark law or protecting consumers.

Other questions concerning the effect of Matal on other aspects of trademark registration would possibly depend on a deeper analysis of the different functions of trademarks – firstly, as property rights for goodwill, and secondly, as expressive speech. Questions concerning trademark dilution, for example, which is also based, to some degree, on a ‘viewpoint’ of the portrayal of a trademark in negative light, could arguably be answered based on the fulfillment of the function of trademarks registration as the protection of property.

Part II of this post assesses the issues in Matal with respect to Indian trademark law and free speech jurisprudence.

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