Supreme Court Update: Matal v. Tam (15-1293)

June 23, 2017 Supreme Court Update

Greetings, Court Fans!

Three more decisions this morning, leaving us with six to go (and a hint that perhaps a couple of these may be left undecided, fizzling out as 4-4 affirmances or being set for reargument next term). We'll be back later with summaries of today's cases, but here's the blackletter: In Lee v. United States (No. 16-327), the Court held that a permanent resident who pleaded guilty to an aggravated felony based on the erroneous advice of his attorney that it would not result in deportation can show prejudice, for purposes of making out an ineffective-assistance-of-counsel claim, even though he would likely have been convicted of the same aggravated felony after trial. In Perry v. Merit Systems Protection Board (No. 16-399), the Court held that when the Merit Systems Protection Board, which reviews serious personnel actions against federal employees, dismisses a "mixed case" (i.e. one involving rights asserted under the Civil Service Reform Act and federal antidiscrimination law) for lack of jurisdiction, the decision should be reviewed in federal district court, not the Federal Circuit. And in Murr v. Wisconsin (No. 15-214), the Court set forth factors for courts to consider in regulatory takings when determining what counts as the proper unit of property against which to assess the effect of the challenged governmental action (i.e. the "parcel as a whole"), and held that, in this case involving two contiguous lots that were effectively merged by a local ordinance, it was proper to analyze the lots as a single unit.

While we have your attention, let's talk about one of the marquis cases of the term, Matal v. Tam (No. 15-1293) (née Lee v. Tam), in which the Court held that the "disparagement clause" of the Lanham Act, which prohibits the registration of any trademark that may "disparage . . . or bring . . . into contemp[t] or disrepute" any "persons, living or dead," violates the First Amendment. While the case involved an Asian-American rock group's efforts to trademark the name "The Slants" as a means of "reclaiming" a racial slur (and preventing others from using it without a license), it has broader implications for the validity of potentially disparaging trademarks, including most notably that of "Washington's pro football team" (a name which itself may be trademarked soon, given how many publications now use it in place of the offending term, "Redskins"). The breakdown in Matal is a bit complicated, but only on the finer points. All eight voting Justices agreed that the disparagement clause amounts to viewpoint discrimination and that lower court decision holding it unconstitutional should be affirmed. Which is saying something, given that the lower court was the Federal Circuit.

Writing for the Court, Justice Alito first explained the history and value of trademarks, before turning to a non-constitutional argument that Tam had not raised below, and on which the Court had declined certiorari (Justice Thomas declined to join in this departure from usual Court practice): That the clause does not cover disparagement of non-natural or "juristic" persons (like "Asians," generally, as opposed to a particular person "living or dead"). The Court decided to consider the argument under the principle of constitutional avoidance, but quickly dispensed with it. The clause refers to "persons" in the plural, and a mark that disparages a substantial percentage of any group would necessarily disparage persons. The fact that the PTO historically registered marks that denigrated racial groups did not indicate support for Tam's position, but rather, "the regrettable attitudes and sensibilities of the time in question." Moving on to the issues on which it had granted cert, the Court (with Thomas back on board) rejected the Government's argument that trademarks are government speech and therefore not covered by the First Amendment. Alito observed that the Government does not generate or edit the marks submitted for registration, and noted that if trademarks were considered government speech, the Government would be "babbling prodigiously and incoherently" and "saying many unseemly things." The Court distinguished trademarks from prior government speech cases, most notably Walker v. Texas Div., Sons of Confederate Veterans (2015), which held that the messages on specialty license plates are government speech. Walker "likely marks the outer bounds" of the government-speech doctrine, Alito opined. To extend it to trademark registration would endanger other activities and speech that involved government registration, most critically copyright.

At this point, the Eight parted ways. Alito, now joined by the Chief, Thomas, and Breyer, addressed and rejected the Government's second and third arguments that the case should be governed by the Court's precedents on government-subsidized speech, or a new "government program" standard. These four then considered whether trademarks are commercial speech, and therefore subject to relaxed scrutiny under Central Hudson Gas & Elect. v. Public Serv. Comm'n of N. Y. (1980), but ultimately concluded that the disparagement clause could not survive even that relaxed standard. To say that the Government has a "special interest" in protecting underrepresented groups or encouraging racial tolerance runs counter to the First Amendment's protection of free speech, including speech that we hate. And even if it could be argued that the Government had a substantial interest in protecting the orderly flow of commerce, the disparagement clause is not narrowly drawn, and indeed would restrict the disparagement of individuals or groups believed to be bigoted. Justices Kennedy, Ginsburg, Sotomayor, and Kagan declined to joint this portion of the opinion. Writing separately, Kennedy argued that because the disparagement clause constitutes viewpoint discrimination (it permits registration of a positive or benign mark, but not a derogatory one), it is necessary subject to heightened scrutiny, regardless of whether trademarks are commercial speech or a federal subsidy or anything else. As Kennedy concluded, "[a] law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all. The First Amendment does not entrust that power to the government's benevolence."

In sum, the First Amendment wins, and you can no longer make sick t-shirts and concert posters for The Slants without their permission.

There are still six more cases left to be decided (and a few more than that left for us to summarize), but the Court indicated that Monday will be the final D-Day of the year. That either means we're going to have a lot of reading to do Monday or, perhaps, that a few of the pre-Gorsuch cases will end up without opinions, either as 4-4 summary affirmances or set for reargument next term. We'll find out soon enough, and so will you!

Enjoy the weekend!