Matal v. Tam: Difference between revisions - Wikipedia


Article Images

Line 1:

{{Use mdy dates|date=September 2023}}

{{Infobox SCOTUS case

| Litigants = Matal v. Tam

| ArgueDate = January 18

| ArgueYear = 2017

| DecideDate = June 19

| DecideYear = 2017

| FullName = Joseph Matal, Interim Director, United States Patent and Trademark Office, Petitioner v. Simon Shiao Tam

| Docket = 15-1293

| OpinionAnnouncement = <!-- this parameter is for URL of AUDIO (from the Oyez website) of opinion announcement -->

| USVol = 582

| USPage =___ 218

| ParallelCitations = 137 S. Ct. 1744; 198 [[L. Ed. 2d]] 366; 122 [[U.S.P.Q.2d]] 1757

| Prior = ''In re Tam'', 808 [[F.3d]] [https://scholar.google.com/scholar_case?case=9806644333158430855 1321] ([[Fed. Cir.]] 2015); [[Certiorari|cert]]. granted, 137 S. Ct. 30 (2016).

| Subsequent =

| OralArgument = https://www.oyez.org/cases/2016/15-1293

| Holding = The [[Lanham Act]]'s prohibition against registering disparaging trademarks with the [[United States Patent and Trademark Office]] violates the [[First Amendment to the United States Constitution]].

|Majority=Alito

| Majority = Alito (Parts I, II, and III–A)

| JoinMajority |JoinMajority= Roberts, Kennedy, Ginsburg, Breyer, Sotomayor, Kagan (Parts I, II, and III–A); Thomas (except Part II); Roberts, Thomas, Breyer (Parts III–B, III–C, and IV)

|Concurrence=Kennedy (in part)▼

| Plurality = Alito (Parts III–B, III–C, and IV)

|JoinConcurrence=Ginsburg, Sotomayor, Kagan▼

| JoinPlurality = Roberts, Thomas, Breyer

|Concurrence2=Thomas (in part)▼

▲ | Concurrence = Kennedy (in part and in judgment)

|NotParticipating=Gorsuch▼

▲ | JoinConcurrence = Ginsburg, Sotomayor, Kagan

|LawsApplied={{hlist | [[First Amendment to the United States Constitution|U.S. Const. amend. I]]|[[Lanham Act]]}}▼

▲ | Concurrence2 = Thomas (in part and in judgment)

▲ | NotParticipating = Gorsuch

▲ | LawsApplied = {{hlist | [[First Amendment to the United States Constitution|U.S. Const. amend. I]]|[[Lanham Act]]}}

}}

'''''Matal v. Tam''''', 582 U.S. ___218 (2017) (previously known as '''''Lee v. Tam'''''), is a [[US Supreme Court of the United States]] case that affirmed unanimously the judgment of the [[United States Court of Appeals for the Federal Circuit]] that the provisions of the [[Lanham Act]] prohibiting registration of trademarks that may "disparage" persons, institutions, beliefs, or national symbols with the [[United States Patent and Trademark Office]] violated the [[First Amendment to the United States Constitution|First Amendment]].<ref name="SCOTUS">{{ussc|name=Matal v. Tam|volume=582|docket=15-1293}}, 137 S. Ct. 1744 (2017).</ref>

== Background ==

{{ibid|date=October 2021}}

[[Simon Tam (musician)|Simon Tam]] is the founder and bassist for the Asian-American dance-rock band [[The Slants]]. Tam gave that name to his band to "reclaim" and to "take ownership" of Asian stereotypes. On March 5, 2010, Tam filed his first application to register THE SLANTS. After several appeals, the application was eventually abandoned. On November 14, 2011, Tam filed his second application (App. No. 85/472,044) seeking to register the mark THE SLANTS for "Entertainment in the nature of live performances by a musical band", based on his use of the mark since 2006. The examiner at the [[US Patent and Trademark Office]] (PTO) refused to register Tam's mark and found it likely disparaging to "persons of Asian descent" under § 2(a). The examiner found that the mark likely referred to people of Asian descent in a disparaging way and explained that the term "slants" had "a long history of being used to deride and mock a physical feature" of people of Asian descent. The examiner found that a substantial composite of persons of Asian descent might find the term offensive<ref name="''id.''">''Id.''</ref> precisely because it was being used by an Asian American band: "Here, the evidence is uncontested that applicant is a founding member of a band that is self described as being composed of members of Asian descent.&nbsp;... Thus, the association of the term SLANTS with those of Asian descent is evidenced by how the applicant uses the work - as the name of an all Asian-American band."<ref>{{Cite news|url=https://www.jdsupra.com/legalnews/ex-parte-appeal-brief-of-simon-tam-of-th-95764/|title=In re Simon Shiao Tam – Ex Parte Appeal Brief of Simon Tam of the PTO's Refusal to Register THE SLANTS Trademark|work=JD Supra|access-date=2018-04-09|language=en}}</ref> That determination made Tam decide to appeal before the Federal Circuit.<ref name="''id.''"/>

Before the [[United States Court of Appeals for the Federal Circuit]] in [[Washington DC|Washington, DC]],<ref name=case1>{{cite court |litigants=In re Tam |vol=808 |reporter=F.3d |opinion=1321 |court=Fed. Cir. |date=2015 |url=https://scholar.google.com/scholar_case?case=9806644333158430855&q=808+F.3d+1321&hl=en&as_sdt=6,41&as_vis=1 |access-date=2017-09-23}}</ref><ref name=harv>[https://harvardlawreview.org/wp-content/uploads/2017/10/243-252_Online.pdf ''The Supreme Court, 2016 Term – Leading Cases''], 131 Harv. L. Rev. 243 (2017).</ref> the case was titled ''In re Tam''. The PTO interpreted the likely meaning of "The Slants" as a term to refer to people of Asian descent, despite claims from the band that the actual meaning referred to its perspective and that it was repurposing the term from an offensive slur.<ref>{{Cite news|url=https://www.nytimes.com/2017/06/23/opinion/the-power-of-repurposing-a-slur.html|title=The Slants on the Power of Repurposing a Slur|date=2017-06-23|work=The New York Times|access-date=2018-04-09|language=en-US|issn=0362-4331}}</ref> The PTO used anecdotal sources like ''[[Urban Dictionary]]'' to support its claims but ignored survey data, linguistics experts, and legal declarations from [[Asian American]] community leaders.<ref>{{Cite news|url=https://www.nytimes.com/2017/01/17/magazine/should-we-be-able-to-reclaim-a-racist-insult-as-a-registered-trademark.html|title=Should We Be Able to Reclaim a Racist Insult – as a Registered Trademark?|last=Jeong|first=Sarah|date=2017|work=The New York Times|access-date=2018-04-09|language=en-US|issn=0362-4331}}</ref><ref>{{Cite news|url=https://www.npr.org/sections/codeswitch/2013/10/20/236235813/asian-american-band-fights-to-trademark-name-the-slants|title=Asian-American Band Fights To Trademark Name 'The Slants'|work=NPR|access-date=2018-04-09|language=en}}</ref><ref>{{Cite news|url=https://www.rollingstone.com/music/news/asian-american-group-the-slants-head-to-supreme-court-w460214|title=Asian-American Group The Slants Head to Supreme Court Over Band Name|workmagazine=Rolling Stone|access-date=2018-04-09}}</ref> The opinion was heard [[en banc]] by the Federal Circuit and the majority, which was written by [[Kimberly AnnA. Moore|Circuit Judge Moore]]. The court determined that the Disparaging Provision ({{uscsub|15|1052|a}}) of the [[Lanham Act]] is [[unconstitutional]] and found that Tam was entitled to trademark registration.<ref name=case1/><ref>[http://harvardlawreview.org/wp-content/uploads/2016/06/2265-2272-Online.pdf "Recent Case: Federal Circuit Holds the Lanham Act's Antidisparagement Provision Unconstitutional"], 129 ''Harvard Law Review'' 2265 (2016).</ref> Tam was represented by John C. Connell, of Archer & Greiner and [[Ron Coleman (legal scholar)|Ron Coleman]] and Joel MacMull, nowthen of MandelbaumArcher Salsburg& Greiner.

The [[US government]] petitioned the [[US Supreme Court]] for a [[writ]] of [[certiorari]], which was granted in September 2016. In addition to the case, there was another case before the Fourth Circuit, ''[[Washington Redskins|Pro-Football, Inc.]] v. [[Amanda Blackhorse|Blackhorse]]'', 112 F. Supp. 3d 439 (E.D. Va. 2015), to decide the same issue of whether or not the disparaging provision of the Lanham Act was unconstitutional.<ref>[http://potentelaw.com/disparaging-trademarks-case-re-tam-current-impact/ "DISPARAGING TRADEMARKS: The case of 'in re Tam' and its current impact"]. Potente.</ref><ref>[https://www.npr.org/sections/thetwo-way/2015/12/22/460692655/government-cant-deny-trademarks-over-offensive-names-appeals-court-rules "Government Can't Deny Trademarks Over Offensive Names, Appeals Court Rules"]. NPR.</ref> Despite an attempt by Pro Football to merge the two cases, the Supreme Court refused to grant the motion.

Line 43 ⟶ 46:

=== Content discrimination ===

In ''[[Reed v. Town of Gilbert]]'', the court stated, "Government regulation of speech is content based if a law applies to particular speech because of the topic discussed or the idea or message expressed."<ref>''Reed v. Town of Gilbert'', [https://www.supremecourt.gov/opinions/14pdf/13-502_9olb.pdf 135 S. Ct. 2218], 2227 (2015).</ref> The Court further determined, "This commonsense meaning of the phrase 'content based' requires a court to consider whether a regulation of speech 'on its face" draws distinctions based on the message a speaker conveys."<ref name=":0">''Reed'', 135 S. Ct. at 2227 (citing ''Sorrell'', 131 S. Ct. 2653, 2663, 180 L. Ed. 2d

544-55).</ref> For that reason, content-based discrimination is presumptively invalid.<ref>Id.< name=":0" /ref> If something is found to discriminate on the basis of content, it must survive strict scrutiny.<ref>See ''[[Pleasant Grove City v. Summum]]'', [https://supreme.justia.com/cases/federal/us/555/460/ 555 U.S. 460], 469 (2009).</ref>

=== Strict scrutiny ===

Line 57 ⟶ 60:

== Federal Circuit ==

{{Infobox U.S. Courts of Appeals case

| Litigants = Simon Tam v. United States Patent and Trademark Office

| Court = [[United States Court of Appeals for the Federal Circuit]]

| ArgueDate = October 2,

| ArgueYear = 2015

| DecideDate = December 22,

| DecideYear = 2015

| FullName = In re Tam

| Citations = 808 F.3d 1321

| Prior = 108 U.S.P.Q.2d 1305 (finding THE SLANTS trademark invalid as disparaging under § 2(a) of the Lanham Act)

| Subsequent =

| Holding = The disparaging provision of the Lanham Act is unconstitutional for violating citizen's First Amendment rights. Vacated and Remanded.

| Judges = Moore, Prost, Newman, O'Malley, Wallach, Taranto, Chen, Hughes, Stoll, Dyk, Lourie, Reyna

| Majority = Moore

| JoinMajority = Prost, Newman, O'Malley, Wallach, Taranto, Chen, Hughes, Stoll

| Concurrence = O'Malley

| JoinConcurrence = Wallach

| Concurrence2 = Dyk

| JoinConcurrence2 = Lourie, Reyna

| Dissent = Lourie

| Dissent2 = Reyna

| LawsApplied = {{hlist | [[First Amendment to the United States Constitution|First Amendment]]|[[Lanham Act]], {{UnitedStatesCode|15|1052}}}}

}}

The central issue before the Federal Circuit was to determine whether the disparaging provision of the Lanham Act was unconstitutional and should therefore be voided.<ref name=case1/> In the case ''In re Tam'', 808 F.3d 1321 (Fed. Cir. 2015), Circuit Judge Moore decided that the disparaging provision of the Lanham Act was unconstitutional for various reasons and that Tam should be granted trademark protection on THE SLANTS.<ref name=case1/><ref>[https://arstechnica.com/tech-policy/2015/12/federal-circuit-judges-say-rule-against-disparaging-trademarks-is-unconstitutional/ "Asian-American band 'The Slants' overturns USPTO rule on 'disparaging' trademarks"]. ''Ars Technica''.</ref>

Line 84 ⟶ 87:

The court determined that the Lanham Act was viewpoint-based discriminatory because the government chooses to deny trademark protection to a mark always because of the message that the mark conveys.<ref name=case1/> The government tried to defend their position before the Federal Circuit by saying that it should be able to deny protection to the most "vile" racial epithets and images, but the Federal Circuit stated, "When the government discriminates against speech because it disapproves of the message conveyed by the speech, it discriminates on the basis of viewpoint."<ref>''In Re Tam'', 808 F.3d 1321 (Fed. Cir. 2015) (citing ''Sorrell'', 131 S.Ct. at 2664).</ref> The Federal Circuit bolstered its stance that it is viewpoint discriminatory because the PTO refused to register "The Slants", but registered marks such as "Celebrasians" and "Asian Efficiency".<ref name=case1/>

The Federal Circuit found the only difference between marks such as "The Slants" and "Celebrasians" and "Asian Efficiency" is the messages conveyed. The Slants could be seen as being derogatory towards those of Asian descent and the others positive. Since the court determined that the disparaging provision is viewpoint discriminatory, which makes it immediately unconstitutional.<ref name=case1/>

In the alternative, the Federal Circuit determined that the disparaging provision is content-based discriminatory, in addition to viewpoint-discriminatory.<ref name=case1/> Additionally, the Federal Circuit came to the determination that even though trademarks inherently deal more with commercial speech that expressive speech, when the government cancels a mark under the disparaging provision, it affects more the expressive aspects of speech than not its commerciality.<ref name=case1/> Therefore, the Federal Circuit found that if the disparaging provision is not found to be viewpoint discriminatory in light of a higher court potentially overturning parts of the case, it must be content-based discriminatory and survive [[strict scrutiny]] unless an exception applied.<ref name=case1/><ref>[https://www.washingtonpost.com/news/volokh-conspiracy/wp/2015/12/22/federal-appeals-court-decides-the-slants-case-excluding-disparaging-marks-from-trademark-registration-violates-the-first-amendment/ "Federal appeals court decides 'The Slants' case: excluding 'disparaging marks' from trademark registration violates the First Amendment"]. ''The Washington Post''.</ref>

Line 102 ⟶ 105:

=== Government subsidy ===

The government raised the argument that the Lanham Act should be classified as a government subsidy and therefore exempt from the strict scrutiny requirement.<ref name=case1/> The Federal Circuit ultimately determined that no taxpayer dollars are used in registering trademarks, and ittheir operation is completely user-funded in theirfrom application fees. Therefore, theThe Federal Circuit determined that it did not fall undertherefore the government subsidy exception to strict scrutiny did not apply.<ref name="''id.''"/>

=== Government speech ===

Line 117 ⟶ 120:

=== Dissent by Judge Lourie ===

Lourie disagreed with the majority in many ways:

* Lourie argued that the Lanham Act existed for 70 years, was continuously applied during that time, and was only then found to be unconstitutional, which seemed bizarre.<ref name=case1/> ''[[Stare decisis]]'' was the first reason that the majority was making a mistake.<ref name=case1/><ref>Eriq Gardner (December 22, 2015). [http://www.hollywoodreporter.com/thr-esq/rock-band-wins-first-amendment-850689 http://www.hollywoodreporter.com/thr-esq/rock-band-wins-first-amendment-850689 "Rock Band Wins First Amendment Appeal Over 'Disparaging' Trademarks"]. ''Hollywood Reporter''.</ref>

* Lourie also said that the denial of an applicant's trademark did not deny its right to speak freely.<ref name=case1/> The mark holder may still generally use the mark as it wishes, and without federal registration, "it simply lacks access to certain federal statutory enforcement mechanisms for excusing others from confusingly similar uses of the mark."<ref name=case1/>

* Lourie also said that there are other ways for the mark holder to have protections, including common law rights.<ref name="''id.''"/><ref>Brent Kendall (December 22, 2015). [https://www.wsj.com/articles/government-cant-reject-trademarks-for-being-disparaging-or-offensive-court-says-1450809668 https://www.wsj.com/articles/government-cant-reject-trademarks-for-being-disparaging-or-offensive-court-says-1450809668 "Government Can't Reject Trademarks for Being Offensive, Court Says"]. ''Wall Street Journal''.</ref>

* Lourie finally determined that trademarks are exclusively commercial speech and so should not be analyzed under strict scrutiny.<ref name=case1/>

=== Dissent by Judge Reyna ===

Reyna disagreed with the majority, in the sensefeeling that trademarktrademarks are exclusively commercial speech and so should be analyzed under the ''Central Hudson'' test, andmeaning intermediate scrutiny.<ref name=case1/> Reyna then determined that thehe government has a legitimate interest in promoting the orderly flow of commerce and so the law should pass intermediate scrutiny.<ref name=case1/> Reyna stated that when the legitimate interest of the disparaging provision is balanced on how narrowly tailored the statute is, it makes sense for the Lanham Act provision to survive scrutiny.<ref name=case1/>

== Supreme Court ==

Line 131 ⟶ 134:

| audio1 = [https://www.oyez.org/cases/2016/15-1293 Audio] from [[Oyez Project|Oyez]] (click "Oral Argument - January 18, 2017" at left)

}}

The United States Patent and Trademark Office appealed the decision to the United States Supreme Court by presenting the following question in its petition for [[certiorari]]: "whether the disparagement provision in 15 U.S.C. 1052(a) is facially invalid under the Free Speech Clause of the First Amendment?"<ref>''Lee v. Tam'', No. 15-1293, [http://www.scotusblog.com/wp-content/uploads/2016/04/Petition-for-writ_Michelle-K.-Lee-Director-United-States-Patent-and-Trademark-Office-Petitioner-v.-Simon-Shiao-Tam.pdf Pet. for Certiorari] at ''I''.</ref> The Supreme Court agreed to grant certiorari in September 2016.<ref name="SCOTUS docket">Docket No. 15-1293, Supreme Court of the United States, [https://www.supremecourt.gov/Search.aspx?FileName=/docketfiles/15-1293.htm https://wwwDocket No.supremecourt.gov/Search.aspx?FileName=/docketfiles/ 15-1293.htm], Supreme Court of the United States (last accessed June 3, 2017).</ref> Oral arguments were heard on January 18, 2017.<ref name="SCOTUS docket"/>

On June 19, 2017, the Supreme Court delivered judgment in favor of Tam by voting unanimously to affirm the lower court.<ref>{{cite news|last1=Liptak|first1=Adam|title=Justices Strike Down Law Banning Disparaging Trademarks|url=https://www.nytimes.com/2017/06/19/us/politics/supreme-court-trademarks-redskins.html|access-date=5 December 2017|work=[[The New York Times]]|date=20 June 2017|page=A14}}</ref><ref>[https://object.cato.org/sites/cato.org/files/serials/files/supreme-court-review/2017/9/2017-supreme-court-review-1.pdf Clay Calvert, ''Beyond Trademarks and Offense:'' Tam ''and the Justices’ Evolution on Free Speech''], 2016–2017 Cato Sup. Ct. Rev. 105 (2017)</ref> The majority opinion stated, "The disparagement clause violates the First Amendment’sAmendment's Free Speech Clause. Contrary to the Government’s contention, trademarks are private, not government speech."<ref name="SCOTUS"/>

The Court ruled that the government cannot ban expression merely because it is offensive. In the majority opinion, Justice Alito wrote: <blockquote>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." [[United States v. Schwimmer|''United States ''v. ''Schwimmer'']], 279 U. S. 644, 655 (1929) (Holmes, J., dissenting).<ref name="SCOTUS"/></blockquote>

{{blockquote|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." [[United States v. Schwimmer|''United States ''v. ''Schwimmer'']], 279 U. S. 644, 655 (1929) (Holmes, J., dissenting).<ref name="SCOTUS"/><ref>{{cite news | url = https://www.nytimes.com/2017/06/19/us/politics/supreme-court-trademarks-redskins.html | title = Justices Strike Down Law Banning Disparaging Trademarks | first= Adam | last = Liptak | date = June 19, 2017 | access-date = June 30, 2019 | work = [[The New York Times]]|archive-url=https://web.archive.org/web/20240410094035/https://www.nytimes.com/2017/06/19/us/politics/supreme-court-trademarks-redskins.html|archive-date=April 10, 2024 }}</ref>}}

The Court also ruled that the law was viewpoint discriminatory. Alito reasoned that the Court need not resolve whether the speech involved only commercial speech or also political speech because the federal law at issue could not pass even the Central Hudson test. Justice Kennedy wrote a concurring opinion that stated "by mandating positivity, the law here might silence dissent and distort the marketplace of ideas."<ref>{{Cite web|url=https://www.scotusblog.com/case-files/cases/lee-v-tam/|title=Matal v. Tam|website=SCOTUSblog|language=en|access-date=2020-02-25}}</ref>

Justice [[Neil Gorsuch]] had not yet been a member of the court during the oral argument and so he did not participate in the decision.

== Impact on racial reclamation practices ==

''Matal v. Tam'' has become linked with the ''Pro-Football, Inc. v. Blackhorse,'' which was vacated after ''Tam''. ''Pro-Football'' had ruled in favor of Blackhorse's claim that the "Redskins" trademark "may disparage" Native Americans.<ref>Doori Song, Blackhorse's Last Stand: The First Amendment Battle against the

Washington Redskins Trademark after Matal v. Tam, 19 WAKE Forest J. Bus. & INTELL.

PROP. L. 173 (2019).:https://heinonline.org/HOL/Page?handle=hein.journals/wakfinp19&div=14&g_sent=1&casa_token=&collection=journals</ref> ''Tam'' limited the option for Blackhorse to use Section 2(a) to challenge the disparaging Redskins mark. Simon Tam stated in a New York Times Article that ''Matal v. Tam'' was "a win for all marginalized groups" while recognizing that "[n]o one builds better communities by shutting people out."<ref>{{Cite news|last=Coscarelli|first=Joe|date=2017-06-20|title=Why the Slants Took a Fight Over Their Band Name to the Supreme Court|language=en-US|work=The New York Times|url=https://www.nytimes.com/2017/06/19/arts/music/slants-name-supreme-court-ruling.html|access-date=2021-12-30|issn=0362-4331|archive-url=https://web.archive.org/web/20230810164814/https://www.nytimes.com/2017/06/19/arts/music/slants-name-supreme-court-ruling.html|archive-date=August 10, 2023}}</ref>

==See also==

Line 146 ⟶ 156:

==References==

{{Ibid|date=June 2017}}

{{BBstyle}}

{{reflist|30em}}

==External links==

*[https://www.supremecourt.gov/opinions/16pdf/15-1293_1o13.pdf ''Matal v. Tam'', 582 U.S. 218 (2017)] Supreme Court opinion

*[http://www.scotusblog.com/case-files/cases/lee-v-tam/ Case coverage] from [[SCOTUSblog]]

*[https://legaltalknetwork.com/podcasts/make-no-law/2018/03/disparagement-contempt-and-disrepute/ ''Disparagement, Contempt, and Disrepute''], a podcast episode covering the case