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A Good Day for Free Speech Advocates: Supreme Court Holds Unconstitutional Federal Trademark Law’s Anti-Disparagement Provision

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By Andrew F. Halaby

In Matal v. Tam, the United States Supreme Court held unconstitutional, under the First Amendment, the “disparagement clause” of 15 U.S.C. § 1052(a), which permits denial of a trademark registration application by the United States Patent and Trademark Office on the ground that it may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.”  The PTO had rejected under that statute an Asian-American dance-rock band’s application to register the band’s name, “THE SLANTS.”

All of the eight justices considering the rejection – new Justice Gorsuch playing no role – viewed the statute as barred by the First Amendment’s free speech clause. And all agreed that, unlike the Texas license plate case, Walker v. Texas Div., Sons of Confederate Veterans, Inc., this case did not involve government speech.  The opinion otherwise is fractured, with four justices – Alito, Roberts, Thomas, and Breyer – viewing the disparagement clause as unconstitutional even applying the relaxed level of scrutiny due to commercial speech regulation under Central Hudson Gas & Elec. Corp. v. Public Serv. Comm’n of N.Y., and four other justices – Kennedy, Ginsburg, Sotomayor, and Kagan – viewing the statute as unconstitutional viewpoint discrimination without regard to Central Hudson.

For free speech advocates, in any event, the opinion marks a positive outcome.  From Justice Alito’s introductory invocation of the “bedrock First Amendment principle” that “[s]peech may not be banned on the ground that it expresses ideas that offend,” to Justice Kennedy’s concurring view that “[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 decision leaves little doubt as to the Court’s skepticism of governmental limitations on “offensive” speech.