Content Regulation / Censorship, Artistic Expression
Bakri v. Israel Film Council
Closed Expands Expression
Global Freedom of Expression is an academic initiative and therefore, we encourage you to share and republish excerpts of our content so long as they are not used for commercial purposes and you respect the following policy:
Attribution, copyright, and license information for media used by Global Freedom of Expression is available on our Credits page.
The U.S. Supreme Court affirmed that the disparagement clause in the Lanham Act denying registration for trademarks that “may disparage any persons” was facially unconstitutional under the First Amendment. The U.S. Patent and Trademark Office (PTO) refused an Asian-American rock band registration of a trademark in the name of THE SLANTS on the basis that it fell foul of the disparagement clause that denies registration to a trademark if it “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The Court reasoned that, by denying registration for trademarks that may disparage people living or dead along with “institutions, beliefs or symbols”, the disparagement clause constituted viewpoint discrimination and was therefore unconstitutional under the First Amendment. It rejected the Government’s argument that trademarks are “commercial speech” because, it said, even commercial speech is not subject to the government’s viewpoint discrimination. The Court also rejected the Government’s attempt to pass off trademarks as government speech, because to do so would enable government to silence the expression of disfavored viewpoints.
The Applicant, Simon Shiao Tam, sought to register the mark THE SLANTS for services identified as “entertainment in the nature of live performances by a musical band.” The trademark registration was refused on the grounds that the mark consisted of or included matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols under section 2(a) of the Lanham Act (“the disparagement clause”). Once the refusal was made final, Tam appealed and requested reconsideration. The examining attorney at the PTO denied this request finding that “there is . . . a substantial composite of persons who find the term in the applied for mark offensive.” Tam had submitted that he chose this moniker specifically in order to “reclaim” and “take ownership” of stereotypes about people of Asian ethnicity.
The Trademark Trial and Appeal Board (Board) affirmed the PTO’s decision and denied the trademark request because of concern that the band name was “a highly disparaging reference to people of Asian descent.” Tam contested the denial of registration before the examining attorney and before the PTO’s Trademark Trial and Appeal Board (TTAB) but to no avail.
Eventually, he took the case to federal court where, on December 22, 2015, an en banc Federal Circuit ultimately found the disparagement clause facially unconstitutional under the First Amendment’s Free Speech Clause. The majority found that the clause engages in viewpoint-based discrimination, that the clause regulates the expressive component of trademarks and consequently cannot be treated as commercial speech, and that the clause is subject to and cannot satisfy strict scrutiny. The Court vacated the ruling of the Trademark Trial and Appeal Board and remanded the case to the Board.
The Supreme Court granted a petition for certiorari to the Government in order to decide whether the disparagement clause “is facially invalid under the Free Speech Clause of the First Amendment”.
Alito, J. delivered the opinion of the Court with Roberts, C. J., and Kennedy, Ginsburg, Breyer, Sotomayor, and Kagan, JJ., joining. Thomas, J., joined in part and Roberts, C. J., and Thomas and Breyer, JJ., joined. Kennedy, J. also filed an opinion concurring in part and concurring in the judgment, in which Ginsburg, Sotomayo, and Kagan, JJ., joined. In addition, Thomas, J. filed an opinion concurring in part and concurring in the judgment. Gorsuch, J.,did not take part in the consideration or decision of the case.
The Court noted that the disparagement clause applied to marks that disparaged members of a racial or ethnic group and that by its broad terms applied not just to “persons,” but also to “institutions” and “beliefs.” It was held that the disparagement clause violated the First Amendment’s Free Speech Clause because, contrary to the Government’s contention, trademarks were private, not government speech. (The Free speech Clause does not regulate government speech, so the Government is not required to maintain viewpoint neutrality on its own speech Pleasant Grove City v. Summum). In reaching its decision on this point, the Court said it must exercise great caution in extending government speech precedents given that, if private speech were to be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints. Further, to convert the registration of a trademark into government speech would potentially open the way for other systems of government registration, such as copyright, to be brought under the same government speech umbrella.
Joined by Chief Justice Thomas, the majority also held that, by denying registration of any marks that were offensive to a substantial percentage of the members of any group, the disparagement clause constituted viewpoint discrimination. “Giving offense is a viewpoint,” the Court said, and the “public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.”
The Court said that it was not necessary to consider whether trademarks were commercial speech subject to the relaxed scrutiny outlined in Central Hudson because the disparagement clause would not withstand the case’s finding that a restriction of speech must serve “a substantial interest” and be “narrowly drawn.” In the present case, one purported interest was to prevent speech expressing ideas that offend, which the Court held struck at the heart of the First Amendment. The second interest asserted was the protection of the orderly flow of commerce from disruption caused by trademarks that support invidious discrimination; but the Court held that the disparagement clause, which reached any trademark that disparaged any person, group, or institution, was not narrowly drawn.
Justice Kennedy, joined by Justice Ginsburg, Sotomayor, and Kagan agreed that the disparagement clause constituted viewpoint discrimination and also concluded that with few narrow exceptions, a fundamental principle of the First Amendment was that the government may not punish or suppress speech based on the disapproval of the ideas or perspectives the speech conveyed. The test for viewpoint discrimination was whether—within the relevant subject category—the government has singled out a subset of messages for disfavor based on the views expressed. In this case, the disparagement clause identified the relevant subject as “persons, living or dead, institutions, beliefs, or national symbols,” and within that category, an applicant could register a positive or benign mark but not a derogatory one. The law therefore reflected the government’s disapproval of a subset of messages it found offensive, which was the essence of viewpoint discrimination. As far as trademarks were concerned, the metaphorical marketplace of ideas was a tangible, powerful reality and to permit viewpoint discrimination in this context would be to permit government censorship.
Accordingly, the Supreme Court held that the disparagement clause violated the Free Speech Clause of the First Amendment and affirmed the judgment of the Federal Circuit.
Decision Direction indicates whether the decision expands or contracts expression based on an analysis of the case.
By striking down the disparagement clause as viewpoint discrimination, this decision limits governmental censorship of expression.
Global Perspective demonstrates how the court’s decision was influenced by standards from one or many regions.
Case significance refers to how influential the case is and how its significance changes over time.
Let us know if you notice errors or if the case analysis needs revision.