Lee v. Tam post-argument

Lee v. Tam
My thoughts on
observing the argument: I was surprised how much attention the Justices paid to
the copyright comparison.  The SG centered
his response around the idea that copyright is historically a mechanism to
stimulate expression, while trademark lacks the same speech-promoting role (and
indeed serves a speech-suppressing function). 
I might have spent more time saying that, under unconstitutional
conditions doctrine, an exclusion from copyrightability for disparaging works
would almost by definition be trying to affect speech outside the government
program at issue—that is to say, it would be trying to leverage the
government’s power to grant protection to expression
to deter people from speech that includes disparaging ideas; therefore the unconstitutional conditions analysis would be
sharply different if Congress decided to disallow copyright in disparaging
I have no prediction
at all.
Post-argument panel
at AU:
John Connell, Archer
Law (Counsel for Respondent)
Denial of
registration is always b/c gov’t finds mark disparaging, offensive to 3d
party.  Gov’t disfavors that. That’s
inherently viewpoint discrim b/c positive/neutral views are permitted to
register.  Lanham Act is widely available
to broad range of mark holders. 
Selectively denying mark b/c of negative views expressed by mark is
viewpoint discrimination.
Ilya Shapiro, Cato
Institute (representing Cato Institute on amicus brief): added examples of
offensive marks like Raging Bitch beer. 
Beyond black letter law on viewpoint discrimination or unconstitutional
conditions. Not thrown into jail, but denied a gov’t benefit for exercising his
first amendment rights.  TM registration
is an important statutory right—easier to defend infringements. Record label
won’t sign w/o registration.
Mike Carroll: how
does Wash. Football team dispute bear on this?
Jesse Witten,
Drinker Biddle (representing Amanda Blackhorse, et al. on amicus brief)
No question that our
case hangs over Tam, especially locally. 
Overshadowing our case is the n word. 
If you open the door to the Slants, you have to issue registrations for
everything. Maybe that’s good policy, maybe not, but many judges will be leery
of official registrations for incredibly racist marks.  We have examples of horrific marks registered
before the statute was changed in the 1940s. 
Gov’t felt it couldn’t be quite as brazen.  Intended to complement gov’t’s brief.  Simple argument: there’s no burden on the
speaker.  Can still make claims under
§43(a).  TM empowers you to silence
somebody else. It’s not a 1A issue, it’s an exception to the 1A.  Refusal of registration reduces marginal
ability to silence, but that’s not a 1A right. 
J. Sotomayor asked some relevant questions. 
Q: unregistered
owner can bring claim?
Prof. Rebecca
Tushnet, Georgetown University (representing Law Professors on amicus brief)
TM is a right to
suppress speech.  If Tam gets trademark
protection for the expressive aspects of his mark, he is able to suppress other
speakers—including a racist band using the term to express its racism.  This characteristic of TM and TM registration
means that 1A analysis targeted at traditional punishments is
inappropriate—there is no neutral baseline. 
It also highlights that the gov’t is regulating only the registration
aspects, not the expressive aspects of the mark.
Not denied a gov’t
benefit outside the contours of the gov’t program itself. Unconstitutional
conditions is a doctrine that prevents attempts to leverage a gov’t benefit to
change constitutionally protected behavior outside the program.  Gov’t can decline to pay for abortion, but it
can’t decline to provide other health care to someone who has exercised her
const’l right to abortion.  Simon Tam can
register TMs in logos, names, other features; if he were denied any TM
registration until he changed the name, Shapiro would be right.
Why is viewpoint
discrimination bad?  Because it targets a
particular group for suppression. 
Disparagement bar doesn’t do that. 
Hating gays is a viewpoint; hating is not.  Materiality: do consumers care about the
feature at issue?  If a blanket ban on
disparagement is viewpoint based, then a ban on material falsehoods and not
immaterial falsehoods is also viewpoint based because it depends on whether
consumers care about the feature you’re discussing or not.
Shapiro: Agree that this
is about unconstitutional conditions. 
Also issues of scope of IP more broadly. If you’re going to have a
registration system, it’s the gov’t administering and not speaking.  It can’t discriminate in this way.
Joel MacMull, Archer
Law (Counsel for Respondent)
Notion that Simon
Tam has not been burdened.  Keep in mind:
this is a facial challenge to a constsitutional provision.  In all instances, §2(a) is discriminatory.
When you have a facial challenge, you don’t have to demonstrate individual
burden.  He can only continue using the
mark if he’s not second in time in a given territory.  He’s based in Portland Oregon—someone could
beat him if he didn’t have the benefit of the nationwide priority from the
registration, which would allow him to prevent other people from using it
nationwide.  43(a) isn’t a good enough
fallback for those reasons.
Jesse Witten: the
burden is that it’s harder for him to silence people outside of Portland?
MacMull: he may not
be first in these other territories.
Witten: SCt has
identified TM as an exception to free speech, not an instance of free
speech.  Gay Olympics case: passes muster
as a legit. regulation of commercial speech, satisfying intermediate scrutiny.
[RT: I hate that
case but think it’s distinguishable.]
Shapiro: none of
that has to do with registrability. Bracketing suppression, we take the law as
given, and it’s an equal protection question. 
Can your registration be denied b/c the gov’t doesn’t like it.
RT: on 43(a) and
distant users: why wouldn’t they have 1A rights to do so? Denying them rights
based on registration’s nationwide priority can’t be about protecting consumers
in Michigan who don’t know about the Portland Slants and can’t be confused.  It is about another objective: helping
businesses manage relations.
Carroll: what
happened at argument?
Connell: the Ct
wanted to rule unanimously against both sides. [h/t Mark Lemley]
Shapiro: Ct was
struggling w/how to write the opinion. Justices weren’t satisfied w/gov’t or
petitioners in terms of bright line for what they’re going to do.  He thinks 5 votes for pet’r; Breyer on fence;
Sotomayor leaning towards gov’t; Thomas was silent but was deciding vote on
Confederate flag case.  That’s distinguishable
b/c nobody thinks every TM is endorsed by the gov’t.
Witten: no established
doctrinal bucket.  I felt like a
surprisingly large number had an open mind. 
There are good arguments & weaknesses on both sides.
Connell: false
association/no names w/o consent is a right of publicity issue, a completely
different animal.
Shapiro: surprised
Court wasn’t that interested in vagueness issues.  Dykes on Bikes: name approved but logo
rejected b/c had name in it.  Denied to
Have you heard Satan is a Republican but not The Devil is a Democrat.
Carroll: SG said no
one rejected non-disparaging marks that were rejected.
Shapiro: Fag-dog has
been registered 2x and refused 2x.
MacMull: it’s the
gov’t’s burden.
Witten: open Qs: can
you do a facial challenge on vagueness grounds? 
SCt has said yes and no.  There
may be some cases that are really hard and others, like N-word, are not
hard.  Should not facially invalidate in
such cases.  Marsh v. Chambers: SCt
articulated a test that prayer was fine as long as it didn’t proselytize or
disparage. If that’s the word employed to interpret Establishment Clause, hard
to find that “may disparage” is vague.
MacMull: threw in
constitutional stuff as a side issue; initial issue was an evidentiary
one.  Vagueness, I long thought, was one
of the strongest arguments, but it was never the one the Court or the Fed Cir
en banc put in front of the parties. 
Q: reappropriation
as potential distinction?
MacMull: PTO
shouldn’t care about applicant’s intent, for many reasons not the least of
which is that intent can change.  Tam’s
intent could be different tomorrow.  TMs
are freely assignable [w/goodwill]. 

Shapiro: vile marks
are registrable, but that’s not a guarantee of success in the commercial
marketplace. College football teams changed names b/c they found it untenable.
It wasn’t the gov’t telling them to do so. Private solutions matter.  If The Slants’ name hurts ticket sales, that
will take care of the problem.

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