Amicus Curiae Brief — Lee v. Tam, 137 S. Ct. 30 (2016) (No. 15-1293)

No. 15-1293

IN THE

Supreme Court of the Anited States

MICHELLE K. LEE, UNDER SECRETARY OF COMMERCE

FOR INTELLECTUAL PROPERTY AND DIRECTOR, UNITED

STATES PATENT AND TRADEMARK OFFICE,

Petitioner,

Vv.

SIMON SHIAO TAM,

Respondent.

On Writ of Certiorari to the United States

Court of Appeals for the Federal Circuit

BRIEF OF AMICUS CURIAE

PUBLIC CITIZEN, INC.,

IN SUPPORT OF NEITHER PARTY

ScoTT L. NELSON

Counsel of Record

ALLISON M. ZIEVE

JULIE A. MURRAY

PUBLIC CITIZEN LITIGATION GROUP

1600 20th Street NW

Washington, DC 20009

(202) 588-1000

snelson @citizen.org

Attorneys for Amicus Curiae

November 2016

i

TABLE OF CONTENTS

TABLE OF AUTHORITIES ....... ........ccccceeececceeeeeteenens ili

INTEREST OF AMICUS CURIAE ............ccc:cesereees 1

SUMMARY OF ARGUMENT .............c::cccceeereeeeeeeeeeeee 3

ARGUMENT. ..........:.-0-.0:scccssscccccerensseseeencessncsssonenssensnees 5

To the extent the statute restricts or

burdens speech, the speech at issue is

Commercial SPEECH. ............0:eceeeereeeenesterreeerseteren enone 6

A. Trademark law regulates commercial

B. The Lanham Act’s limitations on

commercial trademark rights do not

burden pure speech, .............:.ssseeereeeeeeereeeeenenes 9

Commercial-speech regulations are

subject to intermediate First Amendment

SCTULINY. ........-sccceesessesrreeeeeeeressscessnreastrssneensesenenens 12

A. This Court has long applied intermediate

scrutiny to content-based commercial-

speech regulations. ............:::sseeseeseeeeeeeneeeneees 12

B. Sorrell and Reed do not alter the

intermediate scrutiny standard for

restrictions on commercial speech...............--- 15

C. Applying strict scrutiny to content-based

commercial-speech regulations is neither

NECESSALY MOLT PFOPET. ............eeeeeereerenrreeeenereeees 18

1. Applying strict scrutiny to commercial

speech would threaten a broad range of

commonsense regulations. ...............:.s::+++ 18

il

2. Applying strict scrutiny to commercial

speech would harm protection of pure

speech and is unnecessary to protect

COMMPRSTCIA] GHGSCTA. .......0.c00scccosccessosssossoseses

SED iicacesiaicerecinvncndacnnesivamvinateniviemiecinsiinnditi

21

ill

TABLE OF AUTHORITIES

Cases Page(s)

Bd. of Cty. Comm’rs v. Umbehr,

518 U.S. 668 (1996).........cccsccccccrcossseressseeeeeereessesess 11

Bd. of Trustees of State Univ. of N.Y. v. Fox,

492 U.S. 460 (1GGB).......csccrescercerccrcccccsrscrereerensee 4,12

Bolger v. Youngs Drug Prods. Corp.,

463 U.S. GO (19838)...........ccccccceeeeeseeeeeeeeeeees 13, 14, 22

Cent. Hudson Gas & Elec. Corp. v. Pub. Serv.

Comm ’n, 447 U.S. 557 (1980)..........ccceeeeeees passim

Clark v. Jeter,

486 U.S. 456 (1988)..............:cccceeeeeeeeeeenees diccdalesess 16

CTIA—The Wireless Ass’n v. City of Berkeley,

139 F. Supp. 3d 1048 (N.D. Cal. 2015), app. filed,

No. 16-15141 (9th Cir. Feb. 1, 2016).................++ 18

Edenfield v. Fane,

gl i fy aero 12, 22

Fla. Bar v. Went For It, Inc.,

>) Gis @ )! To. | 14, 18

Friedman v. Rogers,

OI, BS iciccnctcnsensccocopcevetennesnsessennesencsssnes 4,7

Greater New Orleans Broad. Ass’n, Inc. v.

United States, 527 U.S. 173 (1999) ............cceeeeeeee 14

Int’! News Serv. v. Assoc. Press,

I eB I... cs ecadncosdnoncdbseninenersoesesossnneion 7

Jordan v. Jewel Food Stores, Inc.,

743 F.3d 509 (7th Cir. 2014)...........cccccceceeeeeeeeee 8,12

Lorillard Tobacco Co. v. Reilly,

ee 5 Se I a ae 1

iv

Mattel, Inc. v. MCA Records, Inc.,

296 F.3d 894 (9th Cir. 2002)........... cece cceecee econ 8

Nixon v. Shrink Mo. Gov’t PAC,

Sn nn en cingumnnsnauasopiionds 16

Ohralik v. Ohio State Bar Ass’n,

I a ccnladeliid 13, 21

Park ’N Fly, Inc. v. Dollar Park & Fly, Inc.,

re ee cdpabeddecasleiabienesehaiebe 7

POM Wonderful, LLC v. FTC,

gee 0: fi She SX | eee 1

Radiance Found., Inc. v. NAACP,

786 F.3d 316 (4th Cir. BO15).........cccccosccccessescovees 8,9

R.A.V. v. City of St. Paul,

i socshliannienenion 20

Reed v. Town of Gilbert,

135 S. Ct. 2218 (201B)................000 15, 16, 17, 18, 19

Riley v. Nat'l Fed’n of the Blind,

ey ee ee Oo sousisnteundiedionisaneionnll 11

In re R.M.2J.,

I, sea taser 14

Rubin v. Coors Brewing Co.,

I RRA eae Ce veSeon ee 14

S.F. Arts & Athletics, Inc. v. U.S. Olympic Comm.,

483 U.S. 522 (1987)..............cccccccscees 4,6, 7,9, 10, 11

Sorrell v. IMS Health Inc.,

564 U.S. 562 (2011)...............000-cse000 4, 15, 16, 17, 18

Taubman Co. v. Webfeats,

319 F.3d 770 (6th Cir. 2003)............:ccceeceeeesees 4,8,9

Trade-Mark Cases,

100 U_S. 82 (1879).....-.--csccsssesencceeeeesanseeeeetaranenanennnns 7

Two Pesos, Inc. v. Taco Cabana, Inc.,

BOS U.S. 763 (1992)....--.ccccsccrseseeerceensssreresnrsnrareeeeress 7

United States v. Alvarez,

132 S. Ct. 2B37 (2O1D)...........--ceeeeceeeeseeeeennsnneeceenenes 21

United States v. Virginia,

518 U.S. 515 (1996)............cccceeceeeeeeerenneerecreeeeeeneeee 16

Va. State Bd. of Pharm. v. Va. Citizens

Consumer Council, Inc.,

AQ5 U.S. 748 (1976)..........c-seseceeceeeesecereerensnneneetanenes 1

Williams-Yulee v. Fla. Bar,

135 S. Ct. 1656 (2015)...........::0:-seeeeceerenrerenees 3, 6, 20

Statutes and Rules

15 U.S.C. $ 1062(a)..........--.2cccccsenereneesssererassenernns sens 3, 20

15 U.S.C. § LO52(d).......ccccceeeeecesceeecenenenncressnrseneneenenenes 20

15 U.S.C. $ 1OG2(c) ............-.ccccceressececnencsssrenentranesnssenes 20

1B U.S.C. § 1062(d)..........:..:cccccecceserenecensetersnncenssasnenecs 20

15 U.S.C. $ LOB52(e).........--..cccserseeceeeeersenennnneseenenanereees 20

15 U.S.C. $ LOBSQ(f)...............-csccccsseeeeeeeserereerererennnenenens 20

15 U.S.C. $ 2114 .n....ccccccceceeseccesssereseeeesersnensosenensesenenene ss 8

1B U.S.C. $ 111G ...............ccceccecesrscccercoressrsscorroosscnssscnns 8

BS UF.G.C. © 1117 ....00....cccccsconccserenesccrscareessessoocssearsecsesens 8

15 U.S.C. § 1125(c) ........:0---eecceeeeeeees J celimcingutmemasiiatestiand 8

15 U.S.C. § 1692d(3)—(4) ....-------eeeesnnenerenenerenenneannnnrene .19

AD U.S.C. § B2Q9OB(D)...........-ceeeceeeeneeersenneensenenetacnneneenes 19

vi

Be ae OF NUE hich coiniiscdsndtancntidiesisinntebintiondsanedanedinaetetth

Be a: Oe i ice cecnnstivnnstscensindenneinennapicennintenemcti

Be Es Oe cD niciesintintnricenivigaciensisatinniasnegnests <aptii

DE CFT BG ccs ecccnicncscsenisannsnssccvntsccsarccnoucsanestseuees

Legislative History

92 Cong. Rec. 7524 (1946)......................c..cccssersosreeraees

S. Rep. No. 79-1333 (1946).............:-:csesesseeeeneeeeeeneneees

S. Rep. No. 100-515 (1988)..............cccceseeeeeeeereeneerenees

Other

Tamara Piety, The First Amendment and the

Corporate Civil Rights Movement,

11 J. Bus. & Tech. L. 1, 20 (2016) ...................000+

INTEREST OF AMICUS CURIAE'

Amicus curiae Public Citizen, Inc., is a nonprofit

c-msumer advocacy organization that appears on be-

half of its nationwide members and supporters before

Congress, administrative agencies, and courts on a

wide range of issues. Public Citizen has long played a

role in the development of commercial-speech doc-

trine. Public Citizen has defended commercial-speech

regulations in cases where those regulations were im-

portant to protecting public health or served other

important public interests, such as in Lorillard To-

bacco Co. v. Reilly, 533 U.S. 525 (2001), and POM

Wonderful, LLC v. FTC, 777 F.3d 478 (D.C. Cir.

2015). Its attorneys have also represented parties

seeking to invalidate overbroad commercial-speech

restraints that harmed competition and injured con-

sumers, including in Virginia State Board of Pharma-

cy v. Virginia Citizens Consumer Council, Inc., 425

U.S. 748 (1976).

Public Citizen has become increasingly concerned

that overly stringent applications of commercial-

speech doctrine may stifle legitimate economic regula-

tory measures and protections for consumers. This

case implicates that concern because the respondent

advocates application of strict scrutiny to a law that, if

it regulates or burdens speech at all, does so only with

respect to commercial speech. The application of strict

scrutiny to commercial-speech regulations would

' This brief was not authored in whole or part by counsel for

a party. No one other than amicus curiae or its counsel made a

monetary contribution to preparation or submission of this brief.

Letters of consent to filing from counsel for both parties are on

file with the Clerk.

2

wrongly tilt the First Amendment balance against

laws and regulations that serve important public in-

terests.

In addition, Public Citizen has in recent years be-

come involved in cases in which trademark holders

have sought to use those marks to suppress noncom-

mercial speech critical of the mark-holder or its prod-

ucts or services, particularly speech on the internet.

Public Citizen’s experience in those cases has con-

firmed its conclusion that the proper realm of trade-

mark law is the regulation of commercial speech.

When it strays outside that realm, trademark law may

pose significant obstacles to freedom of speech; within

that realm, its application to commercial uses of

marks should be governed by the standards applicable

to commercial-speech regulation generally.

Because the government’s defense of the statute

rests on the argument that it does not regulate or

burden speech, the parties’ arguments may suggest an

all-or-nothing choice between no First Amendment

scrutiny and the strict scrutiny applicable to content-

based regulation of fully protected speech. Public Citi-

zen submits this brief to advocate another possibility:

that if the Court were to find that the statute regu-

lates or burdens speech, the affected speech would be

commercial speech, and thus the statute would be

subject only to the intermediate scrutiny applicable to

laws regulating commercial speech under Central

Hudson Gas & Electric Corp. v. Public Service Com-

mission, 447 U.S. 557 (1980). Public Citizen believes

that this view may be helpful to the Court as it con-

siders the important issues posed by this case.

3

SUMMARY OF ARGUMENT

The positions staked out by the parties in this case

could hardly be further apart. According to the gov-

ernment, the Lanham Act’s prohibition on the regis-

tration of disparaging trademarks, 15 U.S.C.

§ 1052(a), neither regulates nor burdens speech.

Thus, the government argues, the prohibition is not

subject to any level of First Amendment scrutiny at

all, but only to the rational-basis review applicable to

laws that regulate or affect commerce without impli-

cating fundamental rights. Pet. Br. 48.

By contrast, the respondent, Mr. Tam, asserts that

the statute is a content- and viewpoint-based regula-

tion of fully protected speech, subject to strict scrutiny

under the First Amendment. Resp. Br. Opp. 23, 25,

29. Alternatively, he appears to argue that even if the

statute is viewed as affecting commercial speech, its

content-based nature should subject it to strict seru-

tiny. Resp. Br. Opp. 25, 29. Laws that survive First

Amendment strict scrutiny are rare. See Williams-

Yulee v. Florida Bar, 135 S. Ct. 1656, 1666-67 (2015).

The government did not contend below, and does not

appear to argue now, that this law is one of them. See

Pet App. 23a-24a; Pet. Br. 48-50.

The parties’ positions, however, do not exhaust the

possible ways to answer the question that this Court

issued the writ of certiorari to answer: “Whether the

disparagement provision of the Lanham Act ... is fa-

cially invalid under the Free Speech Clause of the

First Amendment.” In particular, even assuming, con-

trary to the government’s argument, that the statute

does burden speech sufficiently to require First

Amendment scrutiny, it does not follow that strict

scrutiny applies. Rather, if assessed under the First

4

Amendment, the statute’s constitutionality should be

assessed under Central Hudson’s intermediate scruti-

ny standard for restrictions on commercial speech.

This Court has recognized repeatedly that trade-

marks and, more generally, trade names are a form of

commercial speech. See S.F. Arts & Athletics, Inc. v.

U.S. Olympic Comm., 483 U.S. 522 (1987); see also

Friedman v. Rogers, 440 U.S. 1 (1979). Moreover,

trademark protection operates by permitting the

mark-holder to restrain the commercial speech of

competitors. See, e.g., Taubman Co. v. Webfeats, 319

F.3d 770 (6th Cir. 2003). To the extent that the pro-

hibition on registration of disparaging marks burdens

the mark-holder, it is only by limiting to some extent

the ease with which he may use the mark to achieve

that commercial objective.

Because the law affects the commercial-speech

rights of the mark-holder and his commercial compet-

itors, the First Amendment scrutiny to which it is

subject should not exceed the level of scrutiny appli-

cable to commercial-speech restrictions generally.

That level of scrutiny is Central Hudson’s intermedi-

ate scrutiny, under which a substantial, not compel-

ling, governmental interest suffices, see 447 U.S. at

566, and a law must be tailored to advance that inter-

est directly, but need not do so in the least restrictive

manner possible. See Bd. of Trustees of State Univ. of

N.Y. v. Fox, 492 U.S. 469, 476-77 (1989).

Intermediate scrutiny applies to commercial-

speech regulations even when they may be character-

ized in a broad sense as content-based. See Sorrell v.

IMS Health Inc., 564 U.S. 552 (2011). Regulations of

commercial speech are inherently dependent on the

content of the speech subject to them; indeed, the cat-

5

egory of commercial speech is itself defined by the

content of the speech. A holding that Central Hud-

son’s intermediate scrutiny must be supplanted by

strict scrutiny whenever a commercial-speech re-

striction can be characterized as content-based would

contradict decades of this Court’s precedenis, render

Central Hudson a dead letter, and greatly impair the

government's ability to engage in economic regula-

tion.

ARGUMENT

Both parties to this case present arguments that, if

accepted, would avoid the need to address the applica-

ble level of First Amendment scrutiny. Consideration

of the applicable level of First Amendment scrutiny

would, of course, be unnecessary if the Court were to

hold that the disparagement provision does not re-

strict or burden speech at all, as the government ar-

gues. See Pet. Br. 20-43. Likewise, the case would not

present First Amendment issues if Mr. Tam’s mark is

not disparaging under the statute because he seeks to

reclaim and turn to other uses a term that originated

as one of disparagement, as Mr. Tam argued in his

brief in opposition to the government’s petition. See

Resp. Br. Opp. 13-21. This brief will not attempt to

improve upon either sides’ arguments on those points.

Assuming, though, that the statute applies to this

mark, and that its application affects Mr. Tam’s

speech in a way that calls the First Amendment into

play, this Court must confront the question of what

level of First Amendment scrutiny applies. As this

Court’s decisions reflect, determining at the outset

the appropriate level of scrutiny based on the nature

of the speech at issue is typically essential to arriving

at the correct result in a First Amendment case. See,

6

e.g., Williams-Yulee, 135 S. Ct. at 1664-65; Fox, 492

U.S. at 473-74; Cent. Hudson, 447 U.S. at 561-66. In

this case, however, neither party adequately comes to

grips with that issue.

The government points out that “trademarks are

‘commercial speech’ and receive ‘a limited form of

First Amendment protection.’” Pet. Br. 48 (quoting

S.F. Arts, 483 U.S. at 535). Beyond the “see general-

ly” citation to Central Hudson that follows that

statement, however, the government does not flesh

out the point. Mr. Tam, on the other hand, contends

that the statute is a content-based burden on fully

protected speech subject to strict scrutiny, see Resp.

Br. Opp. 23, and, alternatively, that, even if commer-

cial speech is at issue, the statute remains subject to

strict scrutiny because it is content-based, see id. at

29.

The government’s position comes nearer the mark

but does not carry the point to its conclusion: If ‘he

Court decides First Amendment scrutiny is required,

the appropriate standard must be intermediate scru-

tiny under Central Hudson. To the extent that the

law here has an impact on speech, that speech is

commercial, and the application of the strict scrutiny

that Mr. Tam advocates is unwarranted.

I. To the extent the statute restricts or

burdens speech, the speech at issue is

commercial speech.

A. Trademark law regulates commercial

speech.

The essential characteristic of a trademark is that

it is a word, set of words, or image that denotes goods

or services offered in commerce. The legal protections

afforded trademarks affect the owner’s commercial

7

interests. Trademark protection exists to achieve the

economic objective of giving “a limited property right

in [a] word” that has “acquire/d] value ‘as the result

of organization and the expenditure of labor, skill, and

money” by the mark-holder. S.F. Arts, 483 U.S. at

532 (quoting Int'l News Serv. v. Assoc. Press, 248 U.S.

215, 239 (1918)).

The purpose of trademark protection is not to ad-

vance the mark-holder’s expressive interests, but to

maintain the integrity of the marketplace, protect

businesses’ investment in the goodwill attaching to

their marks, and “protect the ability of consumers to

distinguish among competing producers.” Park ‘N

Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198

(1985); see also Two Pesos, Inc. v. Taco Cabana, Inc.,

505 U.S. 763, 774 (1992). As Congressman Lanham

stated, “The purpose of [the Act] is to protect legiti-

mate business and the consumers of the country.” 92

Cong. Rec. 7524 (1946). The Senate Report on the

Lanham Act made the same points, see S. Rep. No. 79-

1333, at 3-4 (1946), which are reiterated in the legis-

lative history of the 1988 amendments to the Act, see

S. Rep. No. 100-515, at 4 (1988).

Trademark laws achieve those market- and con-

sumer-protective purposes by creating rights “to dis-

tinguish the good or property [of] the person whose

mark it is, to the exclusion of use by all other per-

sons” in the commercial arena. S.F. Arts, 483 U.S. at

534 (quoting Trade-Mark Cases, 100 U.S. 82, 92

(1879)). In regulating the extent of such rights in

words used for commercial speech, trademark law’s

“application is to commercial speech.” Jd. at 535; see

also Friedman, 440 U.S. at 11 (holding that use of

8

trade name to denote a business is commercial

speech).

Moreover, trademark protection achieves its com-

mercial ends by suppressing other commercial

speech—namely, the use of the mark in commerce by

the mark-holder’s competitors or by other actors

whose commercial uses of the mark cause consumer

confusion or dilute the mark’s commercial value.’ As

Judge Wilkinson has explained, trademark laws “re-

strict speech in order to promote the government’s

interest in protecting consumers from confusing mis-

appropriations of product identifications.” Radiance

Found., Inc. v. NAACP, 786 F.3d 316, 321 (4th Cir.

2015).

Because “[(t]rademark protection comes at a poten-

tial cost to free expression,” id., trademark infringe-

ment and dilution actions under the Lanham Act are,

as a general matter, carefully confined to uses of a

mark in commercial speech. See id. at 421-25; Taub-

man, 319 F.3d at 774; see also Jordan v. Jewel Food

Stores, Inc., 743 F.3d 509, 515-20 (7th Cir. 2014) (al-

lowing Lanham Act claims based on uses of mark in

commercial speech); Mattel, Inc. v. MCA Records, Inc.,

296 F.3d 894, 904-07 (9th Cir. 2002) (denying Lan-

ham Act claims based on uses of mark in noncommer-

cial speech).

Trademark law, as so confined, represents little

threat to First Amendment values because the com-

* See 15 U.S.C. §§ 1114 (right of action for trademark in-

fringement); 1116 (injunctive relief for violations of trademark

rights); 1117 (damages for violations of trademark rights);

1125(c) (injunctive relief and other remedies for trademark dilu-

tion).

9

mercial speech to which it applies receives less exten-

sive constitutional protection than the fully protected

speech that is generally outside trademark law’s pur-

view. Radiance Found., 786 F.3d at 321-22. As one

court has put it, the “Lanham Act is constitutional

because it only regulates commercial speech, which is

entitled to reduced protections under the First

Amendment.” Taubman, 319 F.3d at 774; see also

S.F. Arts & Athletics, 483 U.S. at 536.° Insofar as the

Act adjusts the commercial interests of those who use

marks in the marketplace, the limitations it places on

both mark-holders and other market participants are

properly viewed as commercial-speech regulations.

B. The Lanham Act’s limitations on com-

mercial trademark rights do not burden

pure speech.

Mr. Tam asserts that the Lanham Act’s dispar-

agement provision is subject to strict scrutiny be-

cause, in limiting to some degree the commercial-law

protection afforded his use of the name “The Slants”

to denote the name of his band, the provision has

burdened his expressive interests in using that name

to make points about racism. Resp. Br. Opp. 2—4, 21.

Paradoxically, however, the trademark protection Mr.

Tam seeks is the ability to prevent anyone else from

engaging in precisely the same expression for which

he claims full First Amendment protection. Trade-

* Although this Court held in San Francisco Arts that consti-

tutional limits on the rights of mark-holders may be somewhat

broader than the limits of the Lanham Act, it also emphasized

that the constitutionality of laws governing use of marks for

commercial and promotional purposes is determined by commer-

cial-speech analysis. See 483 U.S. at 540.

10

mark law, after all, achieves its purposes by granting

the mark-holder the right to exclude competitors from

using the mark in commerce, see S.F. Arts, 483 U.S. at

534, and Mr. Tam acknowledges that acquiring “pow-

erful tools” to prevent other bands from engaging in

the same speech (that is, marketing themselves as

“The Slants”) is the point of registering his trade-

mark. Resp. Br. Opp. 23. If Mr. Tam were correct that

burdening the right to use that name in commerce is

a restriction of pure speech calling for strict scrutiny,

the argument would suggest that a decision to grant

Mr. Tam a trademark—which would not merely bur-

den similar speech by others, but prevent it out-

right—should be subject to strict First Amendment

scrutiny as well.

To avoid such conundrums, the Court should reit-

erate that laws delineating the scope of trademark

protection address commercial speech—both that of

mark-holders and that of rival commercial speakers

who may be accused of infringing or diluting mark-

holders’ rights. S.F. Arts, 483 U.S. at 535. To the ex-

tent such laws are properly limited to uses of trade-

marks in commerce, First Amendment challenges to

their definitions of the scope of trademark rights or of

the matter appropriate for trademark registration or

protection thus should be considered under the stand-

ards applicable to commercial-speech regulations. See

id.

This Court’s decision in San Francisco Arts under-

scores the point. The Court there upheld the special

statutory grant to the U.S. Olympic Committee

(USOC) of exclusive rights to the word “Olympic” in

the marketplace, even though some uses of the word

to promote athletic or theatrical events might “go be-

1]

yond the ‘strictly business’ context.” 483 U.S. at 583.

The Court held that because the Act primarily affect-

ed commercial speech and only “incidental[ly)” affect-

ed noncommercial expressive interests, any such inci-

dental burden did not call for the scrutiny applicable

to a direct restraint on fully protected speech, id. at

536-37 & nn. 15-16, and was justified by the substan-

tial interest in securing to the USOC the “commercial

value of {its] marks” and its “legitimate property

right.” Jd. at 539, 541. San Francisco Arts directly

contradicts Mr. Tam’s argument that any incidental

effect the regulation of his commercial and property

rights in a mark may have on his expressive interests

takes the law outside the bounds of commercial

speech.

Adhering to the view that trademark laws regulate

commercial speech would not suggest that the gov-

ernment could prohibit artists, journalists, musicians,

writers, scholars, publishers, entities engaged in polit-

ical or social advocacy, and others engaged in fully

protected speech from calling themselves names of

which the government disapproves. Any such laws

would constitute restrictions of fully protected speech

(even if those subject to them made money from their

speech, see Riley v. Nat’l Fed’n of the Blind, 487 U.S.

781, 801 (1988)) and would be subject to strict scruti-

ny. The same would be true of laws that denied per-

sons or groups trademark protection because of gov-

ernment disapproval of speech other than the mark

itself. Cf. Bd. of Cty. Comm’rs v. Umbehr, 518 U.S.

668 (1996) (holding that the government may not de-

ny access to government benefits because of disap-

proval of a person’s speech).

12

The law at issue here, however, is very different

from those examples. It does not prohibit Mr. Tam

from calling his band “The Slants” or penalize him

because of the content of his songs. The law affects

only consequences of the use of the name in commerce

as a trademark, and any burden the law imposes is

only on Mr. Tam’s ability to claim exclusive rights to

profit from the name in the marketplace. Because it is

so limited, the commercial-speech regulation is not

“inextricably intertwined” with regulation of pure

speech, see Fox, 492 U.S. at 474; Jordan, 743 F.3d at

520-22. Accordingly, to the extent such a law is con-

sidered a regulation of or burden on speech, it should

be analyzed under the standards applicable to com-

mercial speech.

II. Commercial-speech regulations are sub-

ject to intermediate First Amendment

scrutiny.

A. This Court has long applied intermedi-

ate scrutiny to content-based commer-

cial-speech regulations.

For nearly four decades, the First Amendment

standard that applies to restrictions on commercial

speech has been clear: The government may regulate

such speech where it has “substantial” interests in

the regulation, the regulation “advances these inter-

ests in a direct and material way,” and “the extent of

the restriction on protected speech is in reasonable

proportion to the interests served.” Edenfield v. Fane,

507 U.S. 761, 767 (1993) (citing Cent. Hudson, 447

U.S. at 564). This standard—termed intermediate

scrutiny or Central Hudson review—affords less pro-

tection for commercial speech than the strict scrutiny

ordinarily applicable to fully protected speech, such as

13

political, literary, artistic or religious expression. This

“common-sense distinction” between commercial and

noncommercial speech stems from commercial

speech’s “subordinate position in the scale of First

Amendment values.” Ohralik v. Ohio State Bar Ass’n,

436 U.S. 447, 455-56 (1978) (internal quotation

marks omitted).

Mr. Tam suggests, however, that because the dis-

paragement provision is “content-based” in the sense

that its application turns on the content of a mark,

the Court should apply the strict scrutiny normally

applicable to restrictions on fully protected speech

even if it recognizes that the affected speech is com-

mercial. He suggests that any content-based re-

striction on commercial speech should be treated the

same as content-based restrictions on speech about

religious or political views. That position fails to

acknowledge this Court’s decisions recognizing that

“regulation of commercial speech based on content is

less problematic” than regulation of content-based

noncommercial speech. Bolger v. Youngs Drug Prods.

Corp., 463 U.S. 60, 65 (1983). In Central Hudson it-

self, the Court explained that “regulation of {commer-

cial speech’s] content” is permissible in part because

such “speech, the offspring of economic self-interest,

is a hardy breed of expression that is not particularly

susceptible to being crushed by overbroad regulation.”

Cent. Hudson, 447 U.S. at 564 n.6. By contrast, “[i]n

most other contexts, the First Amendment prohibits

regulation based on the content of the message.” Jd.

The argument for strict scrutiny of content-based

commercial-speech regulations also runs counter to a

line of cases in which this Court has applied interme-

diate scrutiny to content-based restrictions on lawful,

14

non-misleading commercial speech. See, e.g., Greater

New Orleans Broad. Ass’n, Inc. v. United States, 527

U.S. 173, 176, 183-84 (1999) (striking down a statute

that forbade broadcast advertising of casino gambling

as applied to advertisements in jurisdictions where

such gambling was legal); Rubin v. Coors Brewing Co.,

514 U.S. 476, 478, 482, 488 (1995) (invalidating feder-

al law that prohibited labels for beer, but not wine or

distilled spirits, from displaying alcohol content); Fila.

Bar v. Went For It, Inc., 515 U.S. 618, 620, 635 (1995)

(upholding rule prohibiting attorneys from sending

certain written solicitations to prospective clients that

“relate[d] to an accident or disaster involving the per-

son to whom the communication [was] addressed or a

relative of that person”); Bolger, 463 U.S. at 61, 68-69

(holding unconstitutional as applied a statute that

prohibited unsolicited advertisements for contracep-

tives); In re R.M.J., 455 U.S. 191, 194, 205-07 (1982)

(holding unconstitutional a rule that barred attorney

advertisements from identifying jurisdictions in which

attorneys were licensed). In each case, the restrictions

turned on the “subject matter” of the speech and the

identity of the speaker. Yet in each case, the Court

held that the restrictions were subject to intermediate

scrutiny.

Indeed, Central Hudson itself struck down a regu-

lation that banned all “advertising intended to stimu-

late the purchase of utility services,” a content-based

restriction that, under Mr. Tam’s position, would be

subject to strict scrutiny. Cent. Hudson, 447 U.S. at

559 (internal quotation marks omitted). Thus, Mr.

Tam/’s argument for strict scrutiny suggests that the

Court applied the wrong standard in the very case

that gave First Amendment intermediate scrutiny its

name.

15

B. Sorrell and Reed do not alter the

intermediate scrutiny standard for

restrictions on commercial speech.

Mr. Tam’s argument for strict scrutiny hinges on

this Court’s recent decisions in Reed v. Town of Gil-

bert, 135 S. Ct. 2218 (2015), and Sorrell v. IMS

Health, 564 U.S. 552. Those decisions, however, do

not step back from the Court’s well-established dis-

tinction between commercial and noncommercial

speech, even for restrictions that are content-based.

In Sorrell, the Court struck down on First

Amendment grounds a Vermont law that prohibited,

with limited exceptions, “pharmacies, health insurers,

and similar entities from disclosing or otherwise al-

lowing prescriber-identifying information to be used

for marketing” and “pharmaceutical manufacturers

and detailers from using the information for market-

ing.” 564 U.S. at 563. The Court held that the law im-

posed a “speaker- and content based burden on pro-

tected expression” by allowing the use of information

by other entities, such as “private or academic re-

searchers,” and for non-marketing purposes, such as

“educational communications.” Jd. at 564. The Court

therefore concluded that “heightened judicial scrutiny

[was] warranted.” Id. at 565.

Importantly, however, the Court went on to note

the two types of “heightened” scrutiny that could ap-

ply to the speech at issue: “a special commercial

speech inquiry or a stricter form of judicial scrutiny”

for noncommercial speech. Jd. at 571. The Court con-

cluded that it was unnecessary to decide whether the

speech at issue was commercial or noncommercial be-

cause, even under the less stringent “commercial

speech inquiry,” the law was unconstitutional. See id.

16

at 571-72 (citing Cent. Hudson, 447 U.S. at 566). Far

from announcing a new rule, Sorrell’s repeated dis-

tinction between the standard for commercial speech

and the “stricter” standard for noncommercial speech

supports the continued application of intermediate

scrutiny to commercial speech.

As the Sorrell opinion makes clear, the phrase

“heightened scrutiny” does not refer to strict scruti-

ny. Sorrell’s application of intermediate scrutiny con-

tradicts any such reading, and many of the Court’s

other opinions demonstrate that “heightened scruti-

ny” is a generic term indicating a level of scrutiny

higher than rational-basis scrutiny, including both

intermediate scrutiny and strict scrutiny. For exam-

ple, the Court’s equal protection precedents frequent-

ly use the term “heightened scrutiny” to describe the

intermediate scrutiny applicable to gender classifica-

tions. See, e.g., United States v. Virginia, 518 U.S.

515, 533, 555 (1996); Clark v. Jeter, 486 U.S. 456, 463,

465 (1988). In the First Amendment area, the Court

has likewise referred to the intermediate scrutiny ap-

plied to limits on political contributions as a form of

“heightened judicial scrutiny.” Nixon v. Shrink Mo.

Gov’t PAC, 528 U.S. 377, 391 (2000). The Court’s

opinion in Sorrell uses the term “heightened scruti-

ny” in the same way—as a general description of scru-

tiny above a rational-basis test—not as another way of

saying strict scrutiny.

Likewise, Reed offers no support for application of

strict scrutiny to commercial-speech regulations. Reed

struck down a local law that prohibited outdoor signs

without a permit but exempted twenty-three catego-

ries of signs, including political and ideological signs

and temporary directional signs of short duration. See

17

135 S. Ct. at 2224-25. The law did not, however, ex-

empt signs that the plaintiffs—a church and its pas-

tor—sought to display for extended periods to publi-

cize the time and location of upcoming church ser-

vices. Id. at 2225. The Court cited noncommercial-

speech cases for the proposition that “|clontent-based

laws—those that target speech based on its communi-

cative content—are presumptively unconstitutional

and may be justified only if the government proves

that they are narrowly tailored to serve compelling

state interests.” Jd. at 2226. The Court cited Sorrell, a

commercial-speech case, only in defining the “com-

monsense meaning of the phrase ‘content based.’” Jd.

at 2227. The Court explained that “[glovernment reg-

ulation of speech is content based if a law applies to

particular speech because of the topic discussed or the

idea or message expressed.” Jd. (citing Sorrell, 564

U.S. at 565). The Court thus found that the town or-

dinance in Reed was content-based because it “sin-

gle[d] out specific subject matter for differential

treatment.” Jd. at 2230. The Court then applied strict

scrutiny to the ordinance as a content-based regula-

tion of noncommercial speech. Id. at 2231.

Critically, Reed did not hold—or even discuss the

possibility—that strict scrutiny would apply to con-

tent-based commercial-speech restrictions. Surely if

the Court intended to overrule its many decisions dis-

tinguishing commercial speech from noncommercial

speech, its opinion would acknowledge such a momen-

tous aspect of the decision. Reed does not do so. In-

deed, the Court’s opinion does not use the term

“commercial speech” even once.

18

C. Applying strict scrutiny to content-

based commercial-speech regulations is

neither necessary nor proper.

The view that content- or speaker-based commer-

cial-speech restrictions are subject to strict scrutiny

has exceptionally far-reaching implications because

commercial-speech restrictions are always, or virtual-

ly always, content- or speaker-based in the broad

sense in which the Court has used the term in Reed

and Sorrell. Commercial-speech restrictions, by defi-

nition, apply to commercial messages and commercial!

speakers, and usually to particular types of speakers

and messages (for example, the written solicitations

‘om attorneys that were at issue in Went for It). More

broadly, “the classification of speech between com-

mercial and noncommercial is itself a content-based

distinction.” CTlA—The Wireless Ass’n v. City of

Berkeley, 139 F. Supp. 3d 1048, 1061 n.9 (N.D. Cal.

2015), app. filed, No. 16-15141 (9th Cir. Feb. 1, 2016).

As one scholar has observed, “this argument, that a

statute which treats marketing differently than other

speech, is constitutionally infirm on that ground,

makes a hash of the commercial-speech doctrine be-

cause, by definition, the commercial-speech doctrine is

applicable only to a specific type of content—

commercial content.” Tamara Piety, The Firsi

Amendment and the Corporate Civil Rights Move-

ment, 11d. Bus. & Tech. L. 1, 20 (2016).

1. Applying strict scrutiny to commer-

cial speech would threaten a broad

range of commonsense regulations.

Applying strict scrutiny to content-based commer-

cial-speech restrictions—in addition to making a mess

of the case law—would risk devastating consequences

19

for the government’s ability to adopt commonsense

marketplace regulations. Regulations of commercial

speech typically apply to specific market participants,

such as food manufacturers, debt collectors, and drug

companies, and they deal with problems unique to in-

dustries in which those participants operate. For ex-

ample, federal law limits the circumstances in which

food manufacturers can make claims about health

benefits of their products, 21 C.F.R. § 101.14, or ad-

vertise the addition of vitamins to infant formula, id.

§ 107.10(b). It forbids debt collectors from advertising

the sale of a debt to coerce a debtor to pay it and from

publishing lists of consumers who refuse to pay debts.

15 U.S.C. § 1692d(3)-(4). If content-based commer-

cial-speech restrictions are subject to strict scrutiny,

all these restrictions would have to satisfy such scru-

tiny because they apply “to particular speech because

of the topic discussed or the idea or message ex-

pressed.” Reed, 135 S. Ct. at 2227.

In the disclosure context, too, the government fre-

quently mandates speech on a particular subject and

requires that commercial actors use specific :anguage.

For example, vehicle manufacturers must label, in ac-

cordance with Environmental Protection Agency

rules, each vehicle with its fuel economy. 49 U.S.C.

§ 32908(b). Drug manufacturers must include “black

box” warnings on labels of certain drugs to emphasize

particular hazards. 21 C.F.R. § 201.57. And food man-

ufacturers must disclose nutritional information

about their products. Jd. § 101.9.

The government would have a much higher bur-

den to justify rules like these if they were deemed con-

tent-based and subject to strict scrutiny. It “is the

rare case” in which the government “demonstrates

20

that a speech restriction is narrowly tailored to serve

a compelling interest,” as required to satisfy strict

scrutiny. Williams-Yulee, 135 S. Ct. at 1665-66. In-

deed, in the noncommercial-speech context, the Court

has described content-based restrictions as “presump-

tively invalid.” R.A.V. v. City of St. Paul, 505 U.S. 377,

382 (1992). Applying such scrutiny to content-based

commercial-speech restrictions could obliterate many

laws and regulations that are longstanding and criti-

cal to the protection of consumers.

Indeed, one need look no further than the statute

at issue here to see the potential consequences of ap-

plying strict scrutiny to content-based commercial-

speech rules. In addition to forbidding registration of

disparaging marks, the statute also prohibits registra-

tion of “deceptive” marks, 15 U.S.C. § 1052(a); marks

containing certain “geographical indications” with re-

spect to wine or spirits, id.; marks comprising flags

and insignia of the United States and other domestic

and foreign governmental entities, id. § 1052(b);

marks using names or images of living individuals, or

of United States Presidents, living and dead, id.

§ 1052(c); marks that are “confusing” in similarity to

other marks, id. § 1052(d); marks that are “merely

descriptive” or “functional,” id. § 1052(e); and, sub-

ject to certain procedural requirements, marks that

would “be likely to cause dilution by blurring or dilu-

tion by tarnishment” of other marks, id. § 1052(f),

All of these limitations are based on the content of

a mark and, if Mr. Tam’s broadest arguments were

correct, would be subject to strict scrutiny. These

longstanding and useful limits on registration might

survive such scrutiny, but they might not. In the

realm of fully protected speech, for example, limita-

21

tions on confusing or deceptive speech, or speech that

appropriated a national symbol, would be unlikely to

satisfy strict scrutiny. See United States v. Alvarez,

132 S. Ct. 2537 (2012). That such limitations are gen-

erally permissible in the realm of commercial speech,

see id. at 2547 (plurality), is in large measure at-

tributable to the less exacting, though still height-

ened, standard applicable to commercial-speech regu-

lation. But even if these limits on registration might

survive strict scrutiny, the fundamental question is

whether there is reason to apply such strong medicine

to laws affecting the commercial use of words. This

Court’s decisions have consistently indicated that the

answer to that question is no.

2. Applying strict scrutiny to commer-

cial speech would harm protection of

pure speech and is unnecessary to

protect commercial speech.

Applying strict scrutiny to content-based commer-

cial-speech restrictions could also unnecessarily create

unintended, harmful consequences for the protection

of noncommercial speech. “To require a parity of con-

stitutional protection for commercial and noncom-

mercial speech alike could invite dilution, simply by a

leveling process, of the force of the [First] Amend-

ment’s guarantee with respect to the latter kind of

speech.” Ohralik, 436 U.S. at 456. That is, if strict

scrutiny were applied to the many valuable commer-

cial-speech regulations on which the public has de-

pended for decades, the inclination of courts to uphold

sensible marketplace rules might lead them to relax

strict scrutiny as we know it, to the detriment of

speakers engaged in fully protected expression.

22

That result would be particularly troubling be-

cause application of strict scrutiny is not necessary to

curb true government excesses in the realm of com-

mercial speech. Central Hudson intermediate scrutiny

is already quite protective, perhaps in some cases

overly protective, of commercial-speech interests. For

example, in this case, assuming that the government’s

arguments against treating the disparagement provi-

sion as restricting or burdening speech fail, the stat-

ute can be sustained under Central Hudson only if the

interests identified by the government (see Pet. Br.

48-50) are not only legitimate, but also “substantial,”

and if the statute advances them “directly” and in a

“reasonablly| proportion[ate|” way. Edenfield, 507

U.S. at 767.

The requirement of a substantial government in-

terest gives very significant protection to the interests

Mr. Tam seeks to assert. This Court held in Bolger v.

Youngs Drug Products Corp. that the interest in sup-

pressing offensive speech does not qualify as a sub-

stantial, or even legitimate, government interest with

respect to commercial speech any more than it does

with respect to fully protected speech. 463 U.S. at 71-

72. Thus, if the disparagement provision is subject to

First Amendment scrutiny, the determinative issues

are whether the government’s interests can meaning-

fully be distinguished from the one rejected in Bolger,

whether they are substantial, and whether the dis-

paragement provision advances them directly and

proportionately enough to be sustained under the

Central Hudson test.

On those questions we express no view, in part be-

cause, in light of the parties’ focus on other issues, the

government’s brief does not present a fully formed

23

argument concerning the application of intermediate

scrutiny to the statute in light of the interests the

government asserts are served by the provision. That

omission is understandable given the government’s

theory that the case involves no restriction or burden

on speech of any kind necessitating review under any

First Amendment standard.

If, however, the Court concludes that First

Amendment scrutiny is required, application of the

appropriate intermediate scrutiny will be critical to

the outcome. Unlike strict scrutiny, which the gov-

ernment has never asserted this statutory provision

could survive, intermediate scrutiny would not neces-

sarily condemn the provision. Under such circum-

stances, it would be imprudent to sustain a decision

striking down a federal statute as facially unconstitu-

tional without receiving briefing fully addressing the

application of the proper level of scrutiny. Thus, the

Court may wish to request additional briefing if it

concludes that the statute restricts or burdens com-

mercial speech.

CONCLUSION

If the Court finds that the disparagement provi-

sion restricts or burdens Mr. Tam’s speech, it should

evaluate the constitutionality of that restriction or

burden under the intermediate scrutiny standard ap-

plicable to regulation of commercial speech.

November 2016

24

Respectfully submitted,

ScoTt L. NELSON

Counsel of Record

ALLISON M. ZIEVE

JULIE A. MURRAY

PUBLIC CITIZEN LITIGATION

GROUP

1600 20th Street NW

Washington, DC 20009

(202) 588-1000

snelson@citizen.org

Attorneys for Amicus Curiae