JURIST Guest Columnist Robert A. Sedler of Wayne State University Law School discusses the validity of censoring disparaging trademarks…

The Constitution changes everything. When the US Patent and Trademark Office (USPTO) refused to register as a trademark the name of an Asian-American rock band, The Slants [official site], on the ground that the name “disparages and is offensive to Asian-Americans,” that action brought into play the First Amendment’s guarantee of freedom of speech.

The US Supreme Court has interpreted that First Amendment’s guarantee of freedom of speech very expansively, and the constitutional protection afforded freedom of speech is perhaps the strongest protection afforded to any individual right under the Constitution. It is also fair to say that the constitutional protection afforded to freedom of speech in the US is seemingly unparalleled in other constitutional systems, and that in the US, as a constitutional matter, the value of freedom of speech generally prevails over other democratic values, such as equality and human dignity.

The Supreme Court decides First Amendment questions under what I have referred to as “The Law of the First Amendment.” The “law of the First Amendment” consists in large part of concepts, principles, specific doctrines and precedents that the court has developed over the years in the process of deciding First Amendment cases. In many cases, once the appropriate concept, principle, specific doctrine or precedents have been identified and applied, the parameters for the resolution of the First Amendment issue have been established, and the result is often fairly clear. The application of most of the components of the “law of the First Amendment” involves strict scrutiny, which imposes a very high burden on the government to justify the restriction on freedom of speech. A few of the components involve intermediate scrutiny, which still requires substantial justification for the restriction.

The most important First Amendment principle in terms of its application in actual litigation is the principle of content neutrality. Under this principle, the government may not proscribe any expression because of its content, and an otherwise valid regulation will violate the First Amendment if it discriminates between different types of expression based on their content. One aspect of the principle, to which the court has recognized no exceptions, is that of viewpoint neutrality. The government cannot regulate or legislate in reference to expression in such a way as to favor one viewpoint over another viewpoint. Thus, a law prohibiting the display of a sign in front of a foreign embassy that “tends to bring the foreign government into public odium or public disrepute” violates the First Amendment, since it only prohibits displays of the foreign government that are critical of the foreign government and not display that are favorable to it. So does a federal law that allowed the wearing of American military uniforms in a portrayal only if the portrayal did not “tend to discredit the military.” The viewpoint neutrality aspect of the principle was the basis of the court’s invalidation of federal and state laws prohibiting the burning of the American flag because these laws authorized burning as a proper means of disposing of a torn or soiled flag, but prohibited burning as a means of protest or criticism of government policy. The court has also held that viewpoint neutrality applies to governmental regulation of speech that is not itself constitutionally protected, such as “fighting words”: this being so, a law prohibiting only “fighting words” expressing a message of “racial hatred,” but not “fighting words” expressing a message of “racial tolerance,” violated the First Amendment.

The viewpoint neutrality aspect of the principle also constrains the government when it provides funding or other benefits to groups or individuals. The court has held that a regulation of a federal agency funding local legal assistance programs that prohibited those programs from engaging in representation involving efforts to amend or challenge the validity of existing welfare laws was impermissible viewpoint discrimination and so was unconstitutional. Similarly, while the First Amendment does not require that the government allow private groups to parade on the public streets, if the government does allow such parades pursuant to a “parade permit” law, the law must contain narrow, objective and definite standards, controlling the discretion of the licensing official, so that the licensing official will not be able to deny the permit based on the content of the parade. Finally, the viewpoint neutrality requirement applies even when the government claims that the speech at issue is commercial speech and so not entitled to the same protection as non-commercial speech. Applying the viewpoint neutrality requirement, the court has held violative of the First Amendment a state law that prohibited pharmacies from selling or disclosing pharmacy records that revealed the prescribing practices of individual doctors and that prohibited the use of this information by pharmaceutical manufacturers. This was because the law permitted the use of this information by those who wished to engage in certain “educational communications,” such as academic organizations, for “use in countering the messages of brand-name pharmaceutical manufacturers, and in promoting the prescription of generic drugs.”

Another important principle is the protection of offensive speech. Under this principle, the government cannot prohibit the expression of an idea on the ground that the idea itself or the manner in which the idea is expressed is highly offensive to many people. As the court stated in Texas v. Johnson: “If there is a bedrock principle underlying the First Amendment, it is that the government may not prohibit the expression of an idea simply because society itself finds the idea itself offensive or disagreeable.” Thus, any time the government tries to justify a restriction on expression on the grounds of its offensiveness, that justification is necessarily improper. A public university, for example, cannot constitutionally justify a ban on “racist speech” on the ground that it expresses a highly offensive idea or that it is very offensive to the “victim groups.” The author was counsel for the plaintiffs in these cases. Nor can a city with a large Jewish population, including many Holocaust survivors, ban a march by self-styled “Nazis” with Nazi uniforms and swastikas. Likewise, the court has held that the First Amendment protects the right of a religious group to picket on a public street near the site of a military funeral with the message that the death of American soldiers in combat is God’s punishment for America’s tolerance of homosexuality. Nor can the state prohibit the expression of an idea on the ground that the manner in which the idea is expressed is highly offensive to many people, such as a person’s appearing in public wearing a jacket expressing his opposition to the military draft by the use of an “unseemly expletive.” The principle of protection of offensive speech also applies to the government’s regulation of commercial speech, so the government cannot prohibit an advertisement for contraceptives on the ground that such advertising would be offensive to many people.

Under the void on its face or overbreadth doctrine, laws that by their terms include within their prohibition a substantial amount of protected speech are invalidated on their face. In such a circumstance the court’s analysis does not go beyond the terms of the law, and it does not matter whether the activity of the party asserting the overbreadth challenge is itself constitutionally protected.

Applying the “law of the First Amendment,” it is clear, as the US Court of Appeals for the Federal Circuit held, that the provision of sec.2(a) banning the federal registration of a trademark that is “disparaging” is void on its face for overbreadth. It violates both the principle of content neutrality and the principle of protection of offensive speech. Under the principle of content neutrality, the government cannot deny The Slants the benefits of trademark registration because of its disagreement with the idea that the The Slants are trying to express in their trademark, namely that “Asians should be proud of their cultural heritage and should not be offended by stereotypical descriptions.” Under the principle of protection of offensive speech, the government cannot deny The Slants the benefits of trademark registration because it finds that the use of the term “Slants’ would be highly offensive to many persons of Asian descent. It is as simple as all that.

It should be noted that the government’s efforts to uphold the ban on the ground that trademark registration is “government speech” and that trademark registration is a government subsidy on which the government can impose the condition that it not be disparaging cannot be supported under the doctrine relating to “government speech” or the doctrine relating to unconstitutional conditions. The “government speech” doctrine applies only when the government itself is conveying a message, such as when the government sponsors a display on public property or when the government issues an automobile license containing a message such as the state motto or the message of the holder of the license that the state has endorsed. Trademark registration is not “government speech,” because it does not convey any message other than that the mark is registered. As to conditions on governmental subsidies, it is questionable whether trademark registration constitutes a government subsidy for First Amendment purposes. In any event, whenever the government provides a subsidy, it cannot under the unconstitutional conditions doctrine, impose a condition that violates the First Amendment rights of the recipient. The only condition that the government may impose on the granting of a subsidy, consistent with the First Amendment, relates to government speech in the sense that the government may require that the recipient of a subsidy not contradict that message that the government is trying to convey with the grant of the subsidy. Since federal law prohibits the use of federal funds to subsidize abortion, the government may require that recipients of federal funds for family planning adhere to the government’s policy that “abortion is not a recognized method of family planning” and not provide counseling regarding the use of abortion as a means of federal planning or make referrals for abortion as a means of family planning.

As stated above, the government is not trying to convey any message by the registration of a trademark, so that it may not impose the condition that the trademark not be “disparaging” on the registration of the trademark. Thus the imposition of this condition violates the First Amendment.

Finally, it does not matter under the “law of the First Amendment” that a person can still use the trademark even if federal registration is denied. Federal registration of the trademark is a very valuable governmental benefit, and the government cannot deny a benefit on ground that violate the First Amendment.

Robert A. Sedler is Distinguished Professor of Law at Wayne State University Law School in Detroit, Michigan. He received an B.A. from the University of Pittsburgh and a JD from the University of Pittsburgh School of Law.

Suggested citation: Robert A. Sedler, Disparaging Trademarks and the First Amendment, JURIST – Academic Commentary, January 13, 2016, http://jurist.org/forum/2016/robert-sedler-first-amendment.php.