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Supreme Court Rejects Expansion of Government-Speech Doctrine In Tam Case

June 19, 2017
EFF Cat Speaking Freely

The Supreme Court’s unanimous decision in Matal v. Tam striking down the trademark non-disparagement requirement as unconstitutional is a big victory for the First Amendment. First, the Court strongly pushed back against the expansion of the government-speech doctrine, perhaps the biggest current threat to free speech jurisprudence. Second, the Court strengthened a position EFF has long advocated—that intellectual property rights and First Amendment rights must be balanced against each other rather than weighted in favor of the former.

The case arose when the band The Slants was denied a federal trademark based on a  federal law that prohibits the registration of a trademark that may “disparage  . . . or bring into contemp[t] or disrepute” any “persons, living or dead.” The Court found that provision violated the First Amendment. It may no longer be used as a basis for denying trademark registration.

EFF filed an amicus brief [PDF] in the case with the Thomas Jefferson Center for the Protection of Free Expression, advancing many of the arguments adopted by the Court.

Pushing Back on the Dangerous Government-Speech Doctrine

The Governments’ primary argument in defense of the disparaging trademark ban was that registered trademarks were “government-speech,” not the speech of the trademark owner. That is, in denying registration, the government was not punishing The Slants because it disagreed with the viewpoint the mark expressed; rather, the government was simply choosing not to include disparaging terms in its own speech.

The government-speech doctrine is unique among First Amendment law in that it is the only situation in which the government may discriminate on the basis of the speaker’s viewpoint. In its most basic application, it is noncontroversial: the government itself may adopt policy positions and promote them without having to equally promote opposing policies advocating the opposite viewpoint. In all other contexts, the government cannot deny a speaker access to a forum or otherwise punish them because of a disagreement with the views expressed.

The government-speech doctrine has a mess of problematic applications, especially when it is applied to private speakers, like governmental employees or others participating in governmental programs, or in situations where governmental and private speakers are mixed together and difficult to distinguish. In our amicus brief, EFF argued that the government-speech doctrine was both dangerous and a poor match for trademark registration.

As the Court recognized in Matal, the government-speech doctrine “is susceptible to dangerous misuse. If private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints. For this reason, we must exercise great caution before extending our government-speech precedents.”

Significantly, the Court put a stop to what many saw as a gradual expansion of the government-speech doctrine through its previous decisions. The Court characterized its most recent government-speech decision, Walker v. Texas Div., Sons of Confederate Veterans, Inc., in which it held that a state’s specialty license plate program was government-speech, as “likely mark[ing] the outer bounds of the government-speech doctrine.”

The government-speech doctrine is unique among First Amendment law in that it is the only situation in which the government may discriminate on the basis of the speaker’s viewpoint.

The Court thus resoundingly rejected the government’s argument in Matal, explaining that it “would constitute a huge and dangerous extension of the government-speech doctrine.” It characterized the government’s position as “far-fetched” and not even “remotely support[ed]” by any of the Court’s previous government-speech decisions. Trademark registration does not bear any of the hallmarks of government-speech. Rather than articulating an official position by registering various trademarks, often of conflicting views, “the Government is babbling prodigiously and incoherently.” Moreover, “[t]rademarks have not traditionally been used to convey a Government message” and “there is no evidence the public associates the contents of trademarks with the Federal Government.”

Also highly significant to First Amendment doctrine, a plurality of the Court limited another aspect of its government-speech jurisprudence. In several cases, the Court has held that speech by private speakers but subsidized by the government may also be government speech and thus the provision of the subsidy may be subject to viewpoint discrimination without offending the First Amendment. But in Matal, the four justices rejected this argument and sharply limited these subsidy cases to those in which in the government makes cash payments for speech, not any other kind of subsidy.

Reasserting a Better Balance Between Free Speech and Trademark Law

The Court also reaffirmed that trademarks are expressive and imbued with First Amendment protections.

Perhaps the most worrisome implication of the Government’s argument concerned the system of copyright registration. If federal registration makes a trademark government speech and thus eliminates all First Amendment protection, would the registration of the copyright for a book produce a similar transformation? The justices unanimously rejected the government’s suggestion that trademarks could be distinguished from copyright on the ground that they are not expressive:

The Government attempts to distinguish copyright on the ground that it is “‘the engine of free expression,’” Brief for Petitioner 47 (quoting Eldred v. Ashcroft, 537 U. S. 186, 219 (2003)), but as this case illustrates, trademarks often have an expressive content. Companies spend huge amounts to create and publicize trademarks that convey a message. It is true that the necessary brevity of trade- marks limits what they can say. But powerful messages can sometimes be conveyed in just a few words.

In addition, the Court explained that the government does not have a greater ability to discriminate against disfavored viewpoints in registering trademarks merely because trademarks are “commercial speech.” Although commercial speech in many contexts gets somewhat diminished First Amendment protections, even commercial speech is not subject to the government’s viewpoint discrimination.

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