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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Amicus Curiae Brief
- **Published:** January 1, 2016

## Text

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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385016_0662%3A35. Public record. Not legal advice.