June 24, 2019 12:47PM

Supreme Court Does Well to Strike Down Trademark‐​Office Censorship

In a replay of the Slants case Matal v. Tam from two years ago, the Supreme Court was right to strike down the ban on “scandalous” or “immoral” trademarks because government officials shouldn’t be making those kinds of values judgments. While the outcome was only ever in doubt becuase of an an unusually contentious oral argument, the majority, in a typically evocative opinion by Justice Elena Kagan, did well to show how similar the cases were.

This case illustrates a bedrock principle of First Amendment law. As Kagan puts it, "The government may not discriminate against speech based on the ideas or opinions it conveys." The problem here is that "the Lanham Act [the federal trademark statute] allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety." You could register anti-drug marks ("Say No to Drugs") but not pro-drug ones "Marijuana Cola." You could register pro-religion marks ("Praise the Lord") but not religious marks for commercial products ("Agnus Dei" safes or "Madonna" wine). That just won't fly. 

While three justices (John Roberts, Stephen Breyer, and Sonia Sotomayor), adopting the government's argument, would’ve narrowed the statute to ban only obscene or vulgar epithets, that would be an improper use of the judicial power. As Kagan says, "To cut the statute off where the Government urges is not to interpret the statute Congress enacted, but to fashion a new one." As Justice Samuel Alito writes in his concurrence, "we are not legislators and cannot substitute a new statute for the one now in force."

Moreover, Justice Kagan drops a footnote to point out that the majority may yet be open to a new statute "limited to lewd, sexually explicit, and profane marks." Alito echoes that in suggesting to Congress a statute focusing on "vulgar terms that play no real part in the expression of ideas."

I'm not so sure about that, but regardless local time, place, and manner restrictions are still available to cover, say, a billboard with a swear word outside a school. There are also viewpoint-neutral trademark rules that may take care of whatever problems the justices are thinking about. In any event, as Cato has long argued, it’s simply not the government’s role to tell people what’s “scandalous” -- whether in the trademark context or anywhere else. 

See here for more background and to read the "funny brief" that we filed in this case.