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Lisa Ramsey: A Free Speech Right to Trademark Protection?
Michael Ramsey

Lisa P. Ramsey (University of San Diego School of Law) has posted A Free Speech Right to Trademark Protection? (106 Trademark Reporter 797 (2016)) on SSRN.  Although not originalist in methodology, the article highlights an issue (now pending before the U.S. Supreme Court in Lee v. Tam) that poses an interesting challenge for originalists.  Here is the abstract:   

This Article explores whether the right to freedom of expression requires governments to register trademarks that are immoral, scandalous, disparaging, or otherwise offensive. Many nations ban the registration of offensive marks, including the United States for the last 100 years. In the U.S. Federal Circuit’s 2015 en banc decision in In re Tam, which involved an appeal from the U.S. Patent and Trademark Office’s refusal to register the mark THE SLANTS for an Asian-American rock band, the court held the disparagement provision in Section 2(a) of the U.S. Lanham Act violated the Free Speech Clause in the First Amendment of the U.S. Constitution. The U.S. Supreme Court has now agreed to address the issue.

This Article first contends that international law does not require U.S. and foreign courts to recognize a free speech right to trademark protection of offensive marks. It then argues that courts and commentators often do not raise and correctly evaluate all of the issues that may arise in a free expression challenge to a trademark law. The Article provides a framework–a list of “elements” required to establish a free speech violation–that can be used to evaluate whether a trademark law violates the right to freedom of expression in a nation’s constitution or human rights treaties. This framework is then applied to the provision in Section 2(a) of the U.S. Lanham Act banning registration of marks which are immoral or scandalous, or which may disparage others, with the resulting conclusion that Section 2(a) is constitutional.

So how should originalists approach the question?  I assume the first step is to ask whether this issue ever came up in the founding era -- that is, whether there is evidence that governments denied trademark protection to offensive (or otherwise inappropriate) marks.  If they did, and no one seemed much bothered by that, I would find that essentially conclusive: the "freedom of speech" would not then have included the right to trademark protection, and so refusing to protect certain marks would not "abridge" it.

But assume the issue never came up (as far as I know, it didn't).  Now I think originalists would be in something of a bind.  Not only is direct historical evidence lacking, but I'm not able to think of any close (or even not-so-close) analogies to controversies or practices that were going on in the founding era.  Who wins would then turn to a significant extent on who has the burden of proof.  But who does?  Must the trademark claimant show that trademark protection was part of the freedom of speech, or must the government show that it was not part of the freedom of speech?

I don't think originalism has a clear answer, or even a consensus framework for approaching the question.  One might say, as Richard Kay seems to say in this outstanding essay that the burden is always on the claimant to show a constitutional violation.  The claimant, however, will respond that the First Amendment's absolute terms are sufficient to do so.  True, we know the First Amendment isn't absolute; lots of things that seem like free speech to us were not part of the founders' understanding of "the freedom of speech."  But shouldn't the plain text be enough to shift the burden to the government to show that something that looks like an abridgment of the freedom of speech actually isn't?

Or perhaps this is a situation where original meaning "runs out" and we must resolve it according to some other principle.

Professor Ramsey's article offers one other escape.  Although she does not go back to the founding era, she does cite (p. 810 & n.42) an 1873 treatise stating that "[t]o be a ‘lawful trade-mark’ the emblem must not transgress the rules of morality or public policy," which the treatise author called "a rule of universal application."  That's at least some evidence that the practice of rejecting offensive marks was historically widespread and noncontroversial.  True, this is very weak originalist evidence, as it's far from the founding and also fairly speculative.  But perhaps it is better than nothing.  And we are hypothesizing that there isn't any other evidence.  So in that case, perhaps even weak evidence should prevail.

In any event, I think the case and the article pose a difficult puzzle for originalism.