10th Annual Evil Twin Debate,”Free Speech or Free to Reject?: Trademark Registration & the First Amendment”

Sponsored by the University of Richmond School of Law and the AALS IP Section and hosted at Golden Gate University School of Law.   Mark Lemley & I debated, and though I usually try to point out that my summaries may not be complete, here my summary of Lemley’s statements is very disjointed, because in this case I was trying to prepare my rebuttal while taking occasional notes, so for a fairer explication of his arguments you should read his amicus brief on behalf of Dykes on Bikes, linked below.  I also hope a recording of the event will be made available.

My presentation: Four big things the
parties and amici disagree on, and some thoughts about vagueness and
inconsistency in 2(a) refusals:

First: Whether
43(a)(1)(A) incorporates the same policy based limits as registration under
section 2.  If 43(a) protection is still available
when use of an unregistered symbol causes confusion then the impact of denying
registration will be much less.  The
problem for those arguing that 43(a) is still available is that the text of the
provision leaves us with no real way to distinguish the bars in 2 that we
definitely want to apply to 43(a)—like the bar on protecting generic terms as
such—from bars that we don’t.  So, you
get cases like Belmora in the 4th Circuit, which essentially removed
territoriality as a limit on 43(a).  By
contrast, the Renna case from New Jersey said that a section 2
registration-barred mark couldn’t be protected by 43(a) and explained why it
thought that such a result was sensible in light of the underlying policy
behind the Lanham Act and questions of administrability.  Regardless of which way one comes out on
Belmora and Renna, the point is that this question has implications far beyond
disparagement, and I think that it’s a bad idea to try to answer that broader
question merely as a waystation to the First Amendment question about
Second: TM’s effects
on non-owners or non-registrants. In what way, if at all, should it matter that
granting Tam a registration enhances his capacity to suppress the speech of
others? Most of those on Tam’s side, Lemley’s brief excepted, don’t say much
about this.  Relatedly, and the source of
troubling inconsistencies in those on Tam’s side, is a trademark commercial
speech? Tam says it isn’t always commercial speech and some amici say it never
is because there’s always non-trademark meaning in a mark; if that’s so we’re
subjecting infringement cases to far less scrutiny than necessary. Implicit in
Tam’s argument seems to be that trademark owners have messages but infringers
don’t – except that Tam also says one of his objectives is to prevent a racist
band from calling itself the Slants.
From Lemley’s amicus
brief: Dykes on Bikes wants to control commercialization of the mark.  Which is to say it wants to prevent other
people from using the mark in expressive ways such as on T-shirts and
mugs.  Mark Lemley and Stacey Dogan,
among others, have argued that this shouldn’t be understood as trademark use,
but at the very least it has both commercial and message-delivering aspects.  The difference between the infringer’s desire
to speak and Tam’s situation is, supposedly, the harm done by confusion—but as
we know, there’s usually no such evidence of harm, and no legislature has made
factual findings that confusion itself does harm.  Lemley’s brief gives another example of the
benefits of registration by pointing to his client’s ability to use the Sunrise
registration process to control a Dykesonbikes.xxx domain  name registration: like it or not, though,
that website would have expressed a message, and not one inherently based on
confusion with the existing organization.
Third: What
framework to analyze 2(a) under: is it government speech, commercial speech
under Central Hudson, viewpoint discrimination, unconstitutional conditions, or
something else?  One of the problems is our
ornate First Amendment doctrine, which grows new protrusions every year.  But another is the problem of applying the
First Amendment to government programs that change the structure of the
marketplace; trademark registration, not to mention trademark infringement
doctrine, does that, and so does the existence of public schools.  When the government is deeply embedded into
the structure of an institution, how does that affect our understanding of the
government’s freedom to make choices about what to support, as long as it’s not
fining people for speech or sending them to jail? I conclude that the best
framework is unconstitutional Conditions: the government can’t leverage its
program to affect speech outside the program. 
And on that framework, it’s clear that there is no effect on Tam’s
ability to communicate his message outside of the trademark context. He doesn’t
have to give up the name to get trademark protection for the content that
includes the name, the way that a prohibition on copyright for disparaging
works would require the author to give up on disparagement in order to get
Fourth: Viewpoint
versus content discrimination.  The line
between the two can be unclear, and I think especially in combination with the
previous problem it is very important to understand exactly what the
government’s trying to do.  Is the
government trying to suppress discussion of racial issues?  Stigmatize abortion?  Or something else?  For better or worse, the government in 2(a)
disparagement is trying to limit registrations to those not perceived as
disparaging to a targeted group.  To me,
that is content discrimination, not viewpoint discrimination.  The government doesn’t care which person or group
you target. 
The government also
doesn’t care why you chose the symbol at issue—maybe you want to reclaim the
number fourteen for non-Nazis, or maybe you want to show your Nazi bona fides;
either way, it’s the reaction of the targeted group that matters and not your
malign or benign viewpoint.  Of course
your choice will express a viewpoint;
that’s not the issue.  The issue is
whether the overall system, not just the outcome in your case, discriminates
against the holders of any coherent class of viewpoints.  One can say that true threats express a
viewpoint, but that just highlights the point that it’s possible to reframe
almost any content regulation as a viewpoint regulation.  In my opinion, the better path is to ask: why
do we care about viewpoint regulation more than content regulation?  As the Supreme Court has previously said,
viewpoint discrimination is when the state is “attempting to give one group an
advantage over another in the marketplace of ideas,” and that’s just not what
the disparagement bar is.
Relatedly: The
applicant’s viewpoint about the term or the targeted group matters not at all.
The understanding of the targeted group is the key. And many on Tam’s side says
that consulting the views of the targeted group constitutes viewpoint
discrimination, even though heretofore we’ve used the idea of viewpoint
discrimination to identify discrimination based on the speaker’s viewpoint.  You
can, I suppose, create a new category of viewpoint discrimination “in the air,”
to borrow a phrase from Learned Hand.   But
if relying on the reaction of the audience to determine registrability makes
disparagement viewpoint based then so are descriptiveness and deceptiveness,
also dependent on audience understanding.
Final issue:
vagueness.  I think this is frankly the
most serious issue for the government, and here I do have to appeal to the
nature of registration as a government program in its defense. We’re up to half
a million applications a year.  If we are
going to have registration as an individualized determination at that scale, we
are going to have inconsistencies.  My
analogy is to public schools: if we’re going to have them, then some history
teachers are going to give better grades to the same essay than other history
teachers (which some plagiarists have surely learned to their sorrow).  We cannot have the scale of the government
participation in the marketplace without inconsistency; if we want the program
to continue to exist—which not everyone does for public schools, but Tam’s
supporters definitely want registration to continue to exist—then we have to
deal with inconsistency in procedural and not substantive ways. That is, we
have to provide mechanisms for making records and challenging adverse
decisions.  And we have this, though
there’s a reasonable argument to be made that the TTAB should take more account
of precedent.
If we decide that
disparagement is too vague a standard, then it will be difficult to distinguish
almost anything in trademark that we discuss with our students—the line between
suggestive and descriptive, which has significant consequences for
registrability; so too with the line between descriptiveness and genericity;
the standard for confusion refusals under 2(d) as well as the infringement
standard under 32 and 43(a); the definition of false advertising; and so
on.  Someone like Justice Breyer, who
likes to balance, could readily conclude that the game isn’t worth the candle
for disparagement but is for these other exclusions, but most of the Justices
on the Court are uncomfortable with that kind of ad hoc balancing.  I fear that if they accept the vagueness
argument they will just encourage other courts to lie about how vague the other
parts of trademark law are, and that makes our law less law-like.
Vagueness & the
contradictory Dykes on Bikes rulings, discussed in Lemley’s brief, where the word mark was allowed but a later
stylized word mark was refused even though it was just a narrower version of
the word mark: Great example because there’s a recent exact match in the
genericity space: Churrascos, which was allowed as a standard word mark for restaurants, then
rejected for being generic when the registrant tried to register a stylized
mark.  Is this dumb?  Yes. 
Should we change the rule so that there’s more issue preclusion at the
PTO?  Maybe, though I’m concerned given
the installed base of decisions, and given the lack of true adversity in many
of these cases in which the applicant is the sole source of information about
the meaning of the applied-for matter. 
But more to the point, I think we should be asking administrative
procedure questions about dealing with inconsistencies—if we constitutionalize
this process, then we’re inviting the process to grind to a halt, or convert
into a filing-based rather than truly examination-based regime.
Mark Lemley: Viewpoint/content
doesn’t matter for the outcome because Tam wins either way.  Under any kind of reasonable way, this has to
be viewpoint based. Redskins, if it goes down in TM office, goes down b/c it’s
offensive to Native Americans. But “Native Americans” is ok.  They want to discourage bad messages and not
discourage good ones.  Sorrell:
Regulation b/c of disagreement w/message it conveys is subject to heightened
scrutiny.  NAACP is registrable but not
Nat’l Ass’n for Colored Persons—that’s classic viewpoint discrimination.
At the very least,
this is content based restriction on speech. They are applying this new and
special law b/c of the topic discussed. That makes it content based.  It is true that the justification is that
people are upset by disparagement.  Heckler’s

Our odyssey: the only evidence was that lesbians were perfectly happy w/our use
of the term dyke.  What we did see was
that the second examiner looked it up and found bad terms including dykes.
Counsel said “I’m a dyke,” and you could hear an audible gasp—this examiner was
personally shocked.  Even if we say we
will apply it neutrally, we use gov’t as listener, gov’t as decisionmaker, and
that’s why you get crazy inconsistent decisions.
Can’t pass strict
scrutiny under content based. Gov’t has no interest justifying rule other than
suppression of speech itself. Less restrictive alternatives. Gov’t can
disassociate itself from the speech. Could say on each registration.  Could even probably get away with only not
endorsing some of them.  But there’s no
way in which they can survive strict scrutiny.
speech/not doesn’t matter. TM can promote and repress speech. But that fact
doesn’t change the fact that what we’re doing when we regulate disparaging
speech is regulating things w/real expressive impact.
We’ve all assumed
that 43 protection was available w/refusal of registration, but there aren’t
any cases saying that. Most of the other aspects of 2 have been incorporated
into 43, so it wouldn’t be surprising to have this one either.  If you’re restricting the right to have TM
protection at all, that’s well beyond unconstitutional conditions.  This isn’t just a gov’t benefit; it has real
significant consequences in enforcement. 
It was impossible for a small nonprofit to prevent blatant knockoffs w/o
registration: eBay, Etsy, CafePress all want registrations to pull merchandise.
If you can’t show them TM registration, they say go away. That’s perfectly
reasonable; they don’t know who has common law rights or who’s the first user.  At least TM registration makes them
comfortable. Practical effect isn’t just additional remedies.  It’s the difference b/t effective enforcement
and lack of effective enforcement.  Even
if that weren’t true, unconstitutional conditions cases don’t necessarily
apply—just b/c I can impose a harm on you, doesn’t mean I can do it for reasons
or purposes themselves directed at the repression of speech.  Even w/ no right to benefit, some reasons on
which gov’t may not rely.
Real problem: even
if we try to fit this in unconstitutional conditions doctrine, doesn’t avoid
scrutiny of purpose.  US v. Playboy:
distinction between burden and ban is just a matter of degree; burdens must
satisfy the same rigorous scrutiny as bans.
If this is
unconstitutional, what else goes down with it? 
This is a slippery slope argument. Refuse to do the right thing today
for fear of being forced to do the right thing tomorrow.  If we applied rigorous First Amendment, most
results would be salutary. We might lose scandalousness.   One
way might be to decide this on viewpoint discrimination and then say the rest
are just content-based.
RT: It’s not
viewpoint discrimination.  Other groups
are protected to the same extent as Native Americans. That’s not viewpoint
based b/c it doesn’t promote any group over any other.  Content based sure, as is the rest of TM law.
Note all the quotes in
Lemley’s presentation about prohibition, and ban, and suppression, and
punishment—these quotes make sense when you are talking about sending people to
jail or fining them for their speech. But the government deciding not to
include specific words in their program is different.  If Tam couldn’t get a registration until he
gave up using Slants, everything Lemley said would be correct.  But he can, so it isn’t.
disagreement w/the message = heightened scrutiny.  Consider this statement: The Holocaust
happened. Can public schools teach this and give students bad grades if they
don’t acknowledge it on tests?  Don’t
want to impose Sorrell’s standard when the gov’t is creating the program, and
that’s why we have unconstitutional conditions. 
Can fund abortion and not contraception or vice versa.  Democracy promotion but not authoritarianism
(or perhaps, upcoming, vice versa). 
of TM law is content based.  That’s the
problem. The rest of TM registration
can’t survive strict scrutiny either; the less restrictive alternative is
always fraud, or even the common law.
Gov’t as
decisionmaker: he says that vagueness of disparagement is why you get crazy
inconsistent decisions.  But it’s not—Churrascos
is the same. The size of the program is why you get crazy inconsistent
Gov’t interest is
nonparticipation in disparagement by gov’t. 
Shelly v. Kraemer type rationale.
He says: “what we’re
doing when we regulate disparaging speech is regulating things w/real
expressive impact.” But that’s the point: because the alleged infringers will
have an expressive impact too, there is no neutral position from which to
evaluate a rights-granting program.
If we applied
rigorous First Amendment, he says most results would be salutary. I like that
with infringement, sure, but not so much ITUs and nationwide protection and
extension of protection under Paris Convention.   And TM plaintiffs get to yell property
rights and not have the same rules apply to them.  Note the majority in Tam said that protecting
investment was unquestionably one of the okay purposes of TM law, so I fear
that only some parts would get real scrutiny.
Jake Linford: why
doesn’t SCt pretend that TM are just like © and find some traditional
contour—there’s enough 1A protection in the system already?
Lemley: That would
be wrong. There are substantial differences explaining why the court hasn’t
said a 1A free ride. You’ve built in more speech protections to © than TM. Fair
use might or might not be sufficient, but it’s an effort to protect expressive
The Court is
influenced by existence of Patent/© clause in Constitution; couldn’t say that
with a straight face re: Commerce Clause.
Linford: recent UHS of Delaware case: pleading standards for 32 and 43 increase
the requirements for success under 43: does that shift your perspective on harm
to TM owners who can’t get registrations?
RT: No, b/c I think
it’s ok not to give 43 protection to disparaging marks.
Jennifer Rothman:
Whether it matters who’s filing w/r/t disparagement.  It does seem that perspective is based on
who’s filing.  Dykes on Bikes. Even if
it’s just content based, not convinced that gov’t interest is sufficient, b/c
it’s not gov’t speech.
RT: I don’t think
the record bears that out. Democrats and Republican examples, not to mention
all the Bitch and anti-woman marks, suggest differently.  They go all different ways.
Gov’t doesn’t have
to be speaking to have an interest in not endorsing.  Shelly v. Kraemer is not about public
perception but about what positions the gov’t can accept without implicating
itself in discrimination, e.g., it’s acceptable to call women the c-word.
Irene Calboli: A
child wearing Dykes on Bikes would be sent home from public school. That’s
suppression of speech. How do you reconcile that?
Lemley: True in
elementary school; untrue in college; shouldn’t be true in high school.  If they throw me out of college, I’ve got a
slam-dunk First Amendment case.  We
pretend that kids aren’t actual people.
Ann Bartow: My sense
became that it mattered if someone complained; that can help make sense of
inconsistent outcomes.
Lemley: that
certainly matters.  In Dykes on Bikes
there was one guy who thought lesbianism was bad; lost for lack of
standing.  My sense is same as Rothman’s—this
is not neutrally applied, but gendered, even as it is supposedly protecting
minority groups.  Systematically
reinforces some standards.
Bill McG:
Lemley: affirm.  Viewpoint; or content discrimination with bad
justification; may not say anything about the rest of the system. As a
practical matter, there’s not much reason to be concerned.  Beyond scandalous marks and maybe emblem or
insignia, where there is a plausible confusion based or search cost based
justification, courts will just continue as is.
Tyler Ochoa: Does
not registering suppress speech? 
Granting TM gives Tam a right to suppress others’ speech: on balance
registration suppresses more speech than it encourages.
Lemley: always true
that there are speech interests on both sides. It’s burdening Tam’s speech to
shunt him towards certain types of speech rather than others. That’s problematic
under 1A even if the result is more infringement.
RT: The registration
will also shunt potential defendants towards certain types of speech rather
than others.  Lemley is right that it’s
impossible to add this up and that we should probably look to reasons
instead.  Then we disagree about whether
the reasons are ok.
Q: Institutional
counterfactual about vagueness: The PTO is weak; it can’t write substantive
rules. In an alternative universe where it were like the EPA or SEC, would a
code have helped?

Lemley: it would
have helped if you think the problem is vagueness, not an affirmative burden on

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