No. 15-741
______________________________________________________________________________
In The
Supreme Court of the United States
--------------------------------- ♦ ---------------------------------
LAX-LEAGUE, INC.
Petitioner,
v.
NZINGA CORTEZ, ET. AL.,
Intervener-Respondent
--------------------------------- ♦ ---------------------------------
On Writ of Certiorari To The
United States Court of Appeals
For The Fourth Circuit
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BRIEF OF PETIONER
--------------------------------- ♦ ---------------------------------
Team 1501A
QUESTIONS PRESENTED
The first issue is whether Lax-League, Inc.’s trademark registration constitutes
government speech. The second issue is, if Lax-League, Inc.’s trademark registration does not
constitute government speech, does Section 2(a) of the Lanham Act, which allows for denial of
trademark registrations based on offensive or disparaging words, violate the First Amendment.
i
TABLE OF CONTENTS
QUESTIONS PRESENTED ......................................................................................................... i
TABLE OF CONTENTS ............................................................................................................. ii
TABLE OF AUTHORITIES ...................................................................................................... iii
STATEMENT OF JURISDICTION ........................................................................................... 1
STATEMENT OF THE CASE .................................................................................................... 1
SUMMARY OF THE ARGUMENT .......................................................................................... 3
ARGUMENT ................................................................................................................................. 5
I. TRADEMARK REGISTRATION DOES NOT COMMUNICATE GOVERNMENT
INTERESTS AND THUS DOES NOT CONSTITUTE GOVERNMENT SPEECH. ....... 5
a. WHEN APPLYING THE WALKER FACTORS, THE FEDERAL TRADEMARK
REGISTRATION PROGRAM IS NOT GOVERNMENT SPEECH. .................................. 5
i. The trademark registration program cannot be characterized as government speech
because it does not communicate messages from the government. .................................. 6
ii. The trademark registration program cannot be characterized as government speech
because the program’s actions and communications do not identify with the government
according to the public. ..................................................................................................... 8
iii. The trademark registration program cannot be characterized as government speech
because the government does not maintain control over what communication the
trademark conveys. .......................................................................................................... 10
b. WHEN THE GOVERNMENT IS NOT PROVIDING FEDERAL FUNDS FOR A
PROGRAM, IT MAY NOT DETERMINE THE CONTENT AND LIMITATIONS OF
ITS COMMUNICATION.................................................................................................... 12
i. The federal government cannot regulate speech that is not directly related to the
mandate of the federal program in question. ................................................................... 13
ii. Ill intent cannot be behind a government’s decision to change existing policy or
programs. ......................................................................................................................... 14
II. SECTION 2(A) VIOALTES THE FIRST AMENDMENT BECAUSE IT IS A
CONTENT-BASED AND VIEWPOINT-BASED BURDEN ON SPEECH, AND AS
SUCH, IT DOES NOT MEET STRICT SCRUTINY......................................................... 16
a. CANCELING LLI'S TRADEMARK IS A CONTENT-BASED AND VIEWPOINTBASED BURDEN ON SPEECH AND VIOLATES THE FIRST AMENDMENT. ......... 17
i. Section 2(a) draws an impermissible distinction because it treats marks differently
based on their content and viewpoint. ............................................................................. 17
ii. Burdening speech is as impermissible as banning speech. ...................................... 18
b. THE COURT MUST ANALYZE § 2(A) USING STRICT SCRUTINY, AND
UNDER THAT STANDARD, THE STATUTE IS UNCONSTITUTIONAL BECAUSE
THE GOVERNMENT DOES NOT HAVE A COMPELLING INTEREST AND THE
STATUTE IS NOT NARROLY TAILORED..................................................................... 21
i. The Court has not recognized that the government has a compelling interest to
burden speech that is offensive or disparaging. .............................................................. 21
ii. Section 2(a) is not narrowly tailored. ...................................................................... 22
CONCLUSION ........................................................................................................................... 23
ii
TABLE OF AUTHORITIES
Cases
Agency for Int’l Dev. v. All. for Open Soc’y Int’l, Inc. (Open Society), 133 S. Ct. 2321 (2013). 13,
14
R.A.V. v. City of St. Paul, 505 U.S. 377 (1992) ............................................................................ 22
B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2015) .................................... passim
Bd. of Educ. v. Pico, 457 U.S. 853 (1982) .............................................................................. 15, 16
Cleveland v. United States, 531 U.S. 12 (2000) ..................................................................... 6, 7, 8
Cohen v. California, 403 U.S. 15 (1971) ...................................................................................... 22
In re Boulevard Entertainment, Inc., 334 F.3d 1336 (Fed. Cir. 2003) ......................................... 18
In re Fox, 702 F.3d 633 (Fed. Cir. 2012)...................................................................................... 18
In re Mavety Media Group Ltd., 33 F.3d 1367 (Fed. Cir. 1994) .................................................. 18
In re McGinley, 660 F.2d 481 (C.C.P.A. 1981) ............................................................................ 18
In re Tam, --- F.3d ----, No. 2014-1203, 2015 WL 9287035, *14 (Fed. Cir. December 22, 2015)
...................................................................................................................................... 17, 21, 23
Legal Servs. Corp. v. Velazquez, 532 U.S. 533 (2001) ............................................................. 9, 10
Perry v. Sindermann, 408 U.S. 593 (1972)............................................................................. 19, 20
Pico v. Board of Education, 474 F. Supp. 387 (E.D.N.Y. 1979).................................................. 15
Pitt News v. Pappert, 379 F.3d 96 (3d Cir. 2004) ........................................................................ 19
Planned Parenthood of S.C., Inc. v. Rose, 361 F.3d 786 (2004) ................................................. 15
Pleasant Grove City v. Summum, 555 U.S. 460 (2009) ....................................................... 7, 9, 11
Reed v. Town of Gilbert, 135 S. Ct. 2218 (2015).................................................................... 17, 22
Ritchie v. Simpson, 170 F.3d 1092 (Fed. Cir. 1999) ..................................................................... 19
Rosenberger v. Rector & Visitors of Univ. of Virginia, 515 U.S. 819 (1995) .............................. 17
Rust v. Sullivan, 500 U.S. 173 (1991) ..................................................................................... 12, 13
Simon & Schuster, Inc. v. Members of New York State Crime Victims Bd., 502 U.S. (1991) 17, 18,
19, 21
Sorrell v. IMS Health Inc., 131 S. Ct. 2653 (2011) ................................................................ 19, 21
Texas v. Johnson, 491 U.S. 397 (1989) ........................................................................................ 16
United States v. Playboy Entm’t Grp., Inc., 529 U.S. 803 (2000) ................................................ 19
Walker v. Texas Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015) .............. passim
Statutes
15 U. S. C. § 1072 (2012) ............................................................................................................. 11
15 U.S.C. § 1052(b)-(e) (2012)..................................................................................................... 12
15 U.S.C. 1052(a) (2012).............................................................................................................. 16
22 U.S.C. §§ 7631(e), 7631(f) (2012)........................................................................................... 14
28 U.S.C. § 1254(a) (2012)............................................................................................................. 1
28 U.S.C. § 1253 (2012) ................................................................................................................. 1
42 C.F.R. § 59.9 (2016) ................................................................................................................ 13
42 C.F.R. §§ 59.8(a)(1), 59.10(a) (2016) ...................................................................................... 12
Tex. Transp. Code § 504.005 (West 2015) ................................................................................... 11
Tex. Transp. Code Ann. §§ 504.607, 504.613, 504.620, 504.622 (West 2015) ............................. 7
iii
STATEMENT OF JURISDICTION
This Court has jurisdiction over this matter under 28 U.S. C. § 1254(a) because a writ of
certiorari was granted to Petitioner. This Court has jurisdiction over this appeal pursuant to 28
U.S.C. § 1253 from a Fourth Circuit decision affirming the holding of the District Court for the
Southern District of Howard Van Ness Division.
The district court entered the order from which appeal No. 2015 CV-6452 was decided
on May 6, 2015. Petitioner/Appellant filed its Notice of Appeal, and a writ of certiaori was
granted on November 30, 2015, and it is limited to the two specific questions brought up on
appeal.
STATEMENT OF THE CASE
In 1988, the United States Patent and Trademark Office (“PTO”) approved and registered
the team name “Brooklyn Bean Bandits,” giving ownership of the well-known lacrosse team’s
name to LAX-League, Inc. (“LLI”), the respondent-appellant in this case. Since then, the
trademark has been continuously renewed, most recently in 2014.
Immediately after the initial registration, newspapers began publishing one-sided articles
about the team name, detailing how the term “Bean Bandits” was derogatory towards MexicanAmericans and could be interpreted as a racial slur. Along with this, the articles stated that
certain Latin-American communities were unhappy with the name and its use.
In 1992, a group filed a petition under Section 2(a) of the Lanham Act to cancel the
Brooklyn Bean Bandits trademark registration. In 1998, the Trademark Trial and Appeal Board
(“TTAB”) ruled that the team name “may disparage” groups of Latin Americans and ordered that
the trademark be cancelled. The United States District Court for the District of Marshall reversed
this decision, finding the decision to cancel was not supported by evidence.
1
In 2012, Nzinga Cortez and other members from the La Alianza Brooklyn group, the
petitioner-appellee in this case, filed a petition to cancel the Brooklyn Bean Bandits trademark
registration and image. In 2013, the TTAB scheduled the cancelation, again citing Section 2(a)
of the Lanham Act. The board found that the mark consists of matter that “may disparage” a
substantial part of the Latin American community and can be seen as offensive and culturally
insensitive.
This matter was presented before the United States District Court for the Southern
District of Howard Van Ness Division on two sets of cross-motions for summary judgment.
First, Appellees filed cross motions for summary judgments on LLI’s claims challenging the
constitutionality of Section 2(a) of the Lanham Act. Secondly, Appellees and LLI filed cross
motions for summary judgment on the TTAB’s order cancelling the LLI trademark registration.
This case concerns Appellees’ petition to cancel the trademark registration owned by Appellant
on the grounds that the marks “may disparage” a significant percentage of Latin-Americans and
bring them into contempt or disrepute under Section 2(a) of the Lanham Act, 15 U.S.C. §
1053(a) at the time of their registration in 1988.
The appeal to the Fourth Circuit presented two separate issues: (1) does trademark
registration constitute government speech; and (2) if it does not, is Section 2(a) of the Lanham
Act, which allows denial of trademark registration based on offensive or disparaging words,
permissible under the First Amendment? The District Court answered in the positive, finding that
trademark registration is government speech, and that Section 2(a) of the Lanham Act does not
violate the First Amendment. The Fourth Circuit affirmed.
LLI petitioned for writ of certiorari, limiting the appeal to the two issues detailed above.
On November 30, 2015, the Supreme Court granted certiorari.
2
SUMMARY OF THE ARGUMENT
The Petitioner has two main arguments as to why this Court should reverse the Fourth
Circuit’s decision that the federal trademark registration program is government speech and that
Section 2(a) of the Lanham Act does not implicate the First Amendment. First, trademark
registration does not communicate government interests and thus does not constitute as
government speech. Second, Section 2(a) violates the First Amendment because it is a contentbased and viewpoint-based burden on speech, and as such, it does not meet strict scrutiny.
I.
Government Speech
The Supreme Court articulated three factors to consider when deciding if a program
constitutes government speech in its decision in Walker v. Tex. Div., Sons of Confederate
Veterans, Inc. It is government speech if a program satisfies the three following Walker factors:
(1) if a program communicates messages from the government; (2) if a program acts to identify
with the government; and (3) if the government has direct control over the messages the program
conveys.
In the present case, the trademark registration program resembles licensing schemes long
characterized by this Court as exercises of state police powers. Similar to the regulatory video
licensing program in Cleveland, the trademark registration program does not give rise to any
proprietary government interest and therefore does not satisfy the first Walker factor. The
trademark registration program, like the Legal Service Corporation Act in Legal Servs. Corp.,
was designed to facilitate private speech, not to promote a governmental message and therefore
does not satisfy the second Walker factor. Lastly, unlike the government’s effective control in
Pleasant Grove City and its final approval authority in Walker, the trademark registration
program gives marks legal rights and legal advantages solely to protect the marks and not to
3
control them, as required by the third Walker factor.
In addition to the Walker factor analysis, when the government is not providing federal
funds for a program, it may not determine the content and limitations of its communication.
Unlike in Rust v. Sullivan, the federal trademark office is not a federally funded program, thus
the federal government cannot establish limits on the content and communications of a private
party’s trademark. On the contrary, the PTO operates off of the money from these outside
companies and individuals, making them more of a regulatory office than anything else.
Even in situations when the government can regulate federal programs, it cannot do so
outside of the scope of the purpose of the project nor can it take away resources that have already
been approved but are potentially offensive and vulgar without showing a lack of ill intent.
Doing so would be a First Amendment violation.
II.
First Amendment Violation
Section 2(a) of the Lanham Act violates the First Amendment because the act draws a
content-based and viewpoint-based distinction that burdens LLI's speech, namely the use of its
trademark. The act treats marks differently based on the marks' content and whether they have a
positive or negative viewpoint. Furthermore, burdening speech by cancelling the registration of
LLI's mark is as impermissible as banning the use of the mark under the Supreme Court's
precedents.
Because the Act draws content-based and viewpoint-based distinctions, the Government
must have narrowly tailored the law to serve a compelling state interest, which it hasn't in this
case. The Act is not narrowly tailored because it is over-inclusive and leads to different results
for the same mark. Lastly, the Act does not serve a compelling state interest because burdening
offensive speech is not a compelling interest according to Supreme Court case law.
4
ARGUMENT
I.
TRADEMARK REGISTRATION DOES NOT COMMUNICATE
GOVERNMENT INTERESTS AND THUS DOES NOT CONSTITUTE
GOVERNMENT SPEECH.
a. When applying the Walker factors, the federal trademark registration
program is not government speech.
The Supreme Court articulated three factors to consider when deciding if a program
constitutes government speech in its decision in Walker v. Texas Div., Sons of Confederate
Veterans, Inc., 135 S. Ct. 2239 (2015). If a program satisfies the three following Walker factors,
it is government speech: (1) if a program communicates messages from the government; (2) if a
program acts to identify with the government; and (3) if the government has direct control over
the messages the program conveys. See id.
In Walker, the issue involved the Sons of Confederate Veterans, Texas Division’s
(“S.C.V. Texas”) application for a specialty license plate with a design that included a picture of
the confederate flag. Id. at 2245. Texas’s specialty license plate program allows the Department
of Motor Vehicles Board to “refuse to create a new specialty license plate” for many reasons,
including “if the design might be offensive to any member of the public...or for any reason
established by rule.” Id. at 2243. If the Sons of Confederate Veterans’ specialty license plate is
approved, the license plate design becomes available for Texans to select and place on their
vehicles. See id.
The Board initially rejected the design because many members of the general public
found the Confederate flag portion of the design to be offensive. See id. However, the Fifth
Circuit held that the plate designs are private speech and by rejecting the design, the Board
engaged in constitutionally forbidden viewpoint discrimination. See id. Ultimately, however, the
Supreme Court reversed the Fifth Circuit’s decision and held that Texas’ specialty license plate
5
program is government speech based on three factors. See id. If a program satisfies the Walker
factors, it is government speech. See id.
i. The trademark registration program cannot be characterized as
government speech because it does not communicate messages from the
government.
The Supreme Court has determined that registering a trademark, like registering a
copyright or issuing a video poker license, is regulatory in nature and does not give rise to any
proprietary government interest. See Cleveland v. United States, 531 U.S. 12, 22-24 (2000).
The first factor of the Walker analysis considers if a program communicates messages
from the government. In Walker, the history of license plates shows that, insofar as license plates
have conveyed more than state names and vehicle identification numbers, they long have
communicated messages from the states. See Walker, 135 S. Ct. at 2248. Before Walker, the
Supreme Court decided in Pleasant Grove City, which considered a religious organization’s
request to erect in a 2.5-acre city park a monument setting forth the organization’s religious
tenets, that “[w]hen a government entity arranges for the construction of a monument, it does so
because it wishes to convey some thought or instill some feeling in those who see the structure.”
Pleasant Grove City v. Summum, 555 U.S. 460, 464-465 (2009).
Similarly in Walker, Texas, the Court explained, selected various messages to
communicate through its license plate designs such as the display of the “Lone Star” emblem on
its plates. See Walker, 135 S. Ct. at 2248. Additionally, the Texas Legislature specifically
authorized specialty plate designs stating, among other things, “Read to Succeed,” “Houston
Livestock Show and Rodeo,” “Texans Conquer Cancer,” and “Girl Scouts” thereby
communicating some thought from the government of Texas by displaying these messages on
the license plates. Tex. Transp. Code Ann. §§ 504.607, 504.613, 504.620, 504.622 (West 2015).
6
Conversely, in Cleveland, a video licensing program was found only to be a regulatory
program. In Cleveland, a lawyer assisted in preparing a partnership’s initial and subsequent
video poker license applications. Cleveland, 531 U.S. at 22-24. Louisiana allows certain
businesses to operate video poker machines. Id. The state itself, however, does not run such
machinery. See id. Louisiana law requires prospective owners of video poker machines to apply
for a license from the state and in order to qualify for a license, an applicant must meet suitability
requirements designed to ensure that licensees have good character and fiscal integrity. See id.
The Supreme Court held that the only interests Louisiana might be said to have in its video poker
licenses are regulatory. Id. The statute, the Court explained, licenses, subject to certain
conditions, engagement in pursuits that private actors may not undertake without official
authorization. See id. In this regard, the video-licensing program resembles other licensing
schemes long characterized by this Court as exercises of state police powers. See id. Although
the state could have chosen to run the business itself, the Government says, it decided to
maintain its regulatory position and to only franchise private entities to carry out the operations
instead. See id.
While respondents say that the trademark registry is “government speech” in the same
way that Texas license plates communicate messages from the state, the two million registered
trademarks have never “communicated messages” from the government. Similar to the videolicensing program found only to be a regulatory program in Cleveland, the trademark registration
program only regulates which trademarks are approved and does not communicate any interests
from the government. See Cleveland, 531 U.S at 341. The PTO processing of registration
applications no more transforms private speech into government speech than when the
government issues permits for street parades; grants medical, hunting, fishing, or drivers’
7
licenses; records property titles or birth certificates; or issues articles of incorporation. LaxLeague, Inc. v. Cortez, et al., No. 2015 CV-6452, at 20 (4th Cir. May 6, 2015) (Moore, J.
dissenting). The registration certificate signed by the Director of the PTO with the seal of the
PTO is only a piece of paper authorizing the trademark owner to use the trademark in any way he
wishes. The certificates do not convert the registered subject matter into government speech such
that the government is free to regulate its content. Therefore, by maintaining the team
registration name Bean Bandits, the trademark registration program is not communicating a
governmental message, and therefore, cannot be characterized as government speech based on
the first Walker factor.
ii. The trademark registration program cannot be characterized as
government speech because the program’s actions and communications
do not identify with the government according to the public.
Registration is “designed to facilitate private speech, not to promote a governmental
message.” Legal Servs. Corp. v. Velazquez, 532 U.S. 533, 542 (2001).
The second factor of the Walker analysis considers how a program’s actions are identified
with the state. In Walker, the Court declared that Texas license plate designs “are often closely
identified in the public mind with the [state].” See Walker, 135 S. Ct. at 2248. Similarly, in
Pleasant Grove City the Court explained that “persons who observe donated monuments
routinely—and reasonably—interpret them as conveying some message on the property owner’s
behalf.” Pleasant Grove City, 555 U.S. at 471.
In Walker, the Court decided that each Texas license plate is a government article serving
the governmental purposes of vehicle registration and identification. See Walker, 135 S. Ct. at
2248. The governmental nature of the plates is clear from their faces: The state places the name
“TEXAS” in large letters at the top of every plate. Id. Moreover, the state requires Texas vehicle
8
owners to display license plates, and every Texas license plate is issued by the state. Id.
Essentially Texas license plates are Government IDs. See id. at 2249. Conclusively, issuers of ID
“typically do not permit” the placement on their IDs of “message[s] with which they do not wish
to be associated and “persons who observe” designs on IDs “routinely—and reasonably—
interpret them as conveying some message on the [issuer’s] behalf.” Pleasant Grove City, 555
U.S. at 471.
In this case, however, the trademark registration program, like the Legal Service
Corporation Act in Legal Servs. Corp., is designed to facilitate private speech, not to promote a
governmental message. Legal Servs. Corp. v. Velazquez, 531 U.S. 533, 536 (U.S. 2001). In Legal
Servs. Corp. the Legal Services Corporation Act authorized Legal Services Corporation (LSC) to
distribute funds appropriated by Congress to local grantee organizations providing free legal
assistance to indigent clients in welfare benefits claims. See id. In every annual appropriations
Act since 1996, Congress has prohibited LSC funding of any organization that represented
clients in an effort to amend or otherwise challenge existing welfare law. Id. Grantees cannot
continue representation in a welfare matter even where a constitutional or statutory validity
challenge becomes apparent after representation is well under way. See id. The Court held that
the litigation restriction violated the First Amendment rights of LSC grantees and their clients as,
among other reasons, the LSC program was designed to facilitate private speech, not to promote
a message from the government. See id.
Similar to the LSC program in Legal Servs. Corp., the trademark registration program is
designed only to facilitate private speech, not to promote speech closely identified with the
government. The public does not view these registration certificates as the government's
expression or endorsement of the ideas, inventions, or trademarks of the private speakers to
9
whom they are issued. Therefore, by registering the team name Brooklyn Bean Bandits, the
trademark registration program is not endorsing the government’s acceptance of the name and
does not satisfy the second Walker factor.
iii. The trademark registration program cannot be characterized as
government speech because the government does not maintain control
over what communication the trademark conveys.
The government does not maintain “direct control” over the trademarks it registers. B&B
Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1299-1301 (2015).
The third factor of the Walker analysis considers if the government has direct control over
the messages the program conveys. In Walker, the Court held that the state of Texas maintains
direct control over the messages conveyed on its specialty plates. See Walker, 135 S. Ct. at 2249.
Texas law provides that the state “has sole control over the design, typeface, color, and
alphanumeric pattern for all license plates.” Tex. Transp. Code § 504.005 (West 2015).
Additionally, Texas reserves the right to deny a plate for any reason and has rejected at least a
dozen proposed designs. See Walker, 135 S. Ct. at 2249.
Similarly, in Pleasant Grove City, the government maintained control over the selection
of monuments. See Pleasant Grove City, 555 U.S. at 473. The city government “‘effectively
controlled’ the messages sent by the monuments in the [p]ark by exercising ‘final approval
authority’ over their selection.” Id. Like the city government in Pleasant Grove City, Texas “has
‘effectively controlled’ the messages [conveyed] by exercising ‘final approval authority’ over
their selection.” See Walker, 135 S. Ct. at 2243.
Unlike the government’s effective control in Pleasant Grove City and its final approval
authority in Walker, the trademark registration program gives marks legal rights and legal
advantages solely to protect the marks and not to control them. Though federal law does not
10
create trademarks, Congress has long played a role in protecting them. See B&B Hardware, Inc.,
135 S. Ct. at 1299. In 1946, Congress enacted the Lanham Act, the current federal trademark
scheme. Id. The Lanham Act confers “important legal rights and benefits” on trademark owners
who register their marks. Id. Registration, for instance, serves as “constructive notice of the
registrant’s claim of ownership” of the mark. 15 U. S. C. § 1072 (2012). It also is “prima facie
evidence of the validity of the registered mark and of the registration of the mark, of the owner’s
ownership of the mark, and of the owner’s exclusive right to use the registered mark in
commerce on or in connection with the goods or services specified in the certificate.” B&B
Hardware, Inc., 135 S. Ct. at 1300. However, the Lanham Act does not give the federal
government direct control over the use of the mark.
Unlike the direct control Texas has over license plate selection in Walker, the PTO hardly
retains direct control over cancellation and relies exclusively on private citizens to seek
cancellation. See Lax-League, Inc. v. Cortez, et al., No. 2015 CV-6452, at 21 (4th Cir. May 6,
2015). The respondents will argue that the federal government exercises editorial control over
the federal trademark registration program because Section (b-e) of the Lanham Act empowers
the PTO to deny or cancel a mark’s registration, and thus control what appears on the Principal
Register. 15 U.S.C. § 1052(b)-(e) (2012). However, even if the First Amendment does not
preclude the government from exercising editorial discretion over its own medium of expression,
editorial discretion does not amount to direct control. See Lax-League, Inc., No. 2015 CV-6452,
at 9. Therefore, by registering the team name Bean Bandits, the trademark registration program
is not directly controlling the use of the name and does not satisfy the third Walker factor.
11
b. When the government is not providing federal funds for a program, it may
not determine the content and limitations of communication.
In Rust v. Sullivan, 500 U.S. 173 (1991), petitioners brought a First Amendment
challenge to Title X of the Public Health Service Act, which authorized the Secretary of Health
and Human Services to “make grants to and enter into contracts with public or nonprofit private
entities” that focused on family-planning services. Rust, 500 U.S. at 178. By accepting the grant,
organizations were prohibited from providing ”counseling concerning the use of abortion as a
method of family planning or provide referral for abortion as a method of family planning” or
“engaging in activities that ‘encourage, promote or advocate abortion as a method of family
planning.’” Id. at 179, citing 42 C.F.R. §§ 59.8(a)(1), 59.10(a). Overall, Title X projects needed
to be organized “so that they are ‘physically and financially separate’ from prohibited abortion
activities.” Id. at 180, citing 42 C.F.R. § 59.9. The court found that these conditions were
constitutional because “when the Government appropriates public funds to establish a program it
is entitled to define the limits of that program” in an effort to further the “purposes of the grant.”
Id. at 194, 198.
Unlike in Rust, the government, through the PTO, does not provide any type of federal
funding to companies that hold trademark rights. On the contrary, applying, registering, and
maintaining a trademark costs companies money. Trademarks FAQ, United States Patent and
Trademark Office, http://www.uspto.gov/learning-and-resources/trademark-faqs. Accordingly,
this makes the PTO “unique because it operates solely on fees collected by its users, and not on
taxpayer dollars.” A Four Part Series on Open Notebook Science (Part 4), SciLogs, February 11,
2014, http://www.scilogs.com/scientific_and_medical_libraries/a-four-part-series-on-opennotebook-science-part-4/. Applying that information to the case at hand, discontinuing an already
registered trademark does not constitute as an effort to “define the limits of” a program under
12
Rust because the government does not provide any funds, through taxpayers’ money or via other
funds, to LLI but actually receives money from the company. Rust, U.S. at 194. While the
trademark program is a federal program, it was not created to communicate a one-sided
government message or policy that is furthered through the use of privately held trademarks.
i. The federal government cannot regulate speech that is not directly related
to the mandate of the federal program in question.
While it is argued that Agency for Int’l Dev. v. All. for Open Soc’y Int’l, Inc. (Open
Society), 133 S. Ct. 2321 (2013) affirms the lower court’s judgment here, this is incorrect. In
Open Society, the Supreme Court ruled it a First Amendment violation for the government to
require organizations that accepted federal funds to create a policy that mirrors the government’s
policies. Here, the United States Leadership Against HIV/AIDS, Tuberculosis, and Malaria Act
of 2003 provided funding for nongovernment organizations solely for the purpose of preventing
HIV/AIDS. Open Society, 133 S. Ct. at 2322. These organizations were required to meet two
conditions: “(1) No funds ‘may be used to promote or advocate the legalization or practice of
prostitution,’ and (2) no funds may be used by an organization ‘that does not have a policy
explicitly opposing prostitution.’” Id., citing 22 U.S.C. §§ 7631(e), 7631(f). Challengers opposed
these requirements, wishing to remain neutral on the practice of prostitution, and argued that
following these conditions was a violation of their First Amendment rights. Open Society, 133 S.
Ct. at 2323. The Court ultimately found that the requirements were a constitutional violation
since the act made it mandatory that these organizations affirm “a belief that by its nature cannot
be confined within the scope of the Government program.” Id. It distinguished the case from
Rust by stating that Rust was not a violation “because the regulations did not prohibit speech”
that occurred outside of Title X, unlike in Open Society and in the case at hand. Id. at 2323.
13
Overlooking the fact that the federal trademark program is not federally funded but only a
government regulated program, the government still should not be able control the
communication because prohibiting trademarks that may be deemed offensive to some groups is
protecting “conduct outside of the scope” of the federal program. Id. at 2324. The PTO only
provides national recognition to something that is, in essence, owned by a private citizen or
business; it was not created to use those trademarks to communicate its own messages.
ii. Ill intent cannot be behind a government’s decision to change existing
policy or programs.
Even in situations where the government is constitutionally allowed to determine the
contents of its messages through its federal programs, the Supreme Court made it clear in Bd. of
Educ. v. Pico, 457 U.S. 853 (1982) that there is a difference between determining
communication at the beginning of the program versus after it has already been implemented. In
essence, the government cannot alter messages that have already been approved and maintained
without showing a lack of ill intent.
In Pico, the Supreme Court ruled it unconstitutional for a school board to remove “books
from school libraries and [proscribe] their use in the curriculum because particular passages in
the books offended their social, political and moral tastes . . ..” Pico, 457 U.S. at 858-59, 875.
The District Court upheld the board’s decision, finding “that the books were removed from the
library because the school board believed them ‘to be, in essence, vulgar.’” Id. at 883, citing Pico
v. Board of Education, 474 F. Supp. 387, 397 (E.D.N.Y. 1979). A three-judge panel on the Court
of Appeals reversed and remanded this decision. Id. at 860. In his opinion, Judge Sifton
“‘concluded that petitioners were obliged to demonstrate a reasonable basis for interfering with
respondents' First Amendment rights,” which they did not do. Id. The Supreme Court affirmed
the Second Circuit’s decision. Id. at 875.
14
While there is not a First Amendment violation “when a public school makes contentbased decisions about its curriculum,” Planned Parenthood of S.C., Inc. v. Rose, 361 F.3d 786,
796 (2004), one must look at the intent when the school decides to change an existing policy or
take away current resources. Pico, 457 U.S. at 871. The decision in Pico did not affect “the
discretion of a local school board to choose books to add to the libraries,” but only to remove
those books already there. Id. Physically removing books that have already been paid for, stored,
and used needs to come with good intent in order to be constitutionally sufficient. Id. While
purchasing books through government resources that will later be included in school libraries is
largely based on the books’ content, taking books out of libraries, and arguably wasting already
spent resources, is content-based to the extent that it is a violation of the constitution if the intent
was to deny “respondents access to ideas with which [the government] disagreed.” Id. at 889,
917. Similar to our case, Brooklyn Bean Bandits has already been registered as a trademark,
meaning that any resources needed to apply, register, and maintain the mark have been
distributed. Changing its status after already having received approval can only be done if the
government does so without discriminating based on content. They have not done so here.
Prohibiting LAX-League, Inc. from registering the Brooklyn Bean Bandits cannot be
justified using Rust since the federal trademark program that is regulated through the PTO does
not distribute funds to nongovernment organizations. On the contrary, it is a program that private
citizens or companies apply and pay to be a part of. Along with that, the federal government does
not have unlimited discretion in controlling and regulating messages that come out of every
single program that they do create, regardless of whether or not they provide federal funds. Any
censored communication has to be at the inception of the program and be within the scope of the
project, neither of which is the case here.
15
II.
SECTION 2(A) VIOLATES THE FIRST AMENDMENT BECAUSE IT IS A
CONTENT-BASED AND VIEWPOINT-BASED BURDEN ON SPEECH, AND
AS SUCH, IT DOES NOT MEET STRICT SCRUTINY.
The government may refuse to register a trademark if it “consists of or comprises
immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a
connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them
into contempt, or disrepute[.]” 15 U.S.C. 1052(a) (2012).
However, the First Amendment dictates “that the government may not prohibit the
expression of an idea simply because society finds the idea itself offensive or disagreeable.”
Texas v. Johnson, 491 U.S. 397, 414 (1989). Furthermore, the government may not regulate
speech in a way that favors certain speakers and may not financially burden speech “based on the
content of their expression.” Rosenberger v. Rector & Visitors of Univ. of Virginia, 515 U.S.
819, 828 (1995). Content-based restrictions occur when the government regulates speech based
on “the message it conveys.” Id. Viewpoint-based distinctions arise when the government
restricts speech based on “ideology or the opinion or perspective of the speaker.” Id. at 829.
This section will first analyze the propriety of burdening speech based on its content and
viewpoint, finding that § 2(a) is an unconstitutional burden on LLI’s speech; second, this section
will analyze whether § 2(a) serves a compelling governmental interest and is narrowly tailored,
finding that the law does not serve a compelling governmental interest because banning
offensive and disparaging speech does not meet that standard and the law is not narrowly tailored
because it is over-inclusive and burdens more speech than is necessary.
16
a. Cancelling LLI’s trademark is a content-based and viewpoint-based burden
on speech and violates the First Amendment.
i.
Section 2(a) draws an impermissible distinction because it treats marks
differently based on their content and viewpoint.
Regulations that burden speech based on content are “presumptively inconsistent with the
First Amendment.” Simon & Schuster, Inc. v. Members of New York State Crime Victims Bd.,
502 U.S. 105, 115 (1991); see also Reed v. Town of Gilbert, 135 S. Ct. 2218, 2230 (2015)
(“Government discrimination among viewpoints . . . is a more blatant and egregious form of
content discrimination.”), Lax-League, Inc. v. Cortez, et al., No. 2015 CV-6452, at 18 (4th Cir.
May 6, 2015) (Moore, J. dissenting) (“The law permits registration of marks that express a
positive view of a person, but bars registration of marks that express a negative view of that same
person.”), In re Tam, --- F.3d ----, No. 2014-1203, 2015 WL 9287035, *14 (Fed. Cir. December
22, 2015) (finding § 1052(a) unconstitutional under the First Amendment and abrogating In re
McGinley, 660 F.2d 481 (C.C.P.A. 1981), In re Mavety Media Group Ltd., 33 F.3d 1367 (Fed.
Cir. 1994), In re Boulevard Entertainment, Inc., 334 F.3d 1336 (Fed. Cir. 2003), and In re Fox,
702 F.3d 633 (Fed. Cir. 2012)).
In Simon & Schuster, New York passed a law requiring publishers to give the crime
victims board any income due to a convicted person who participates in and profits from any
writings, depictions, or any other type of re-enactment of that convicted person’s crime. Simon &
Schuster, 502 U.S. at 504-05. The Court noted the statute was content-based because it “is
directed only at works with a specified content[,]” specifically depictions or books about the
convict’s crime, while leaving other potential works by the convict untouched. Id. at 508.
Similarly, the Lanham Act draws a content-based, viewpoint-based distinction when
considering whether to register or cancel the registration of a particular mark. The PTO canceled
17
the Brooklyn Bean Bandits registration because of its content and its viewpoint because some
view it as a racial slur. Lax-League, Inc. v. Cortez, et al., No. 2015 CV-6452, at 18 (4th Cir. May
6, 2015) (Moore, J. dissenting). The decision under the Act turns on the content and viewpoint of
the trademark. Had Lax-League used a trademark for their team that had a positive viewpoint,
then its trademark would not have been cancelled. Or if Hispanics viewed Bean Bandits
positively, it would not be at risk for cancellation. However, since some saw Bean Bandits as a
racial slur—portraying a negative viewpoint of Hispanics—the Act allows the trademark to be
cancelled. As the Fourth Circuit dissent noted: “The PTO singled out the Bean Bandits marks for
disfavored treatment solely based on the disapproval of the Team’s name.” Lax-League, Inc. v.
Cortez, et al., No. 2015 CV-6452, at 18 (4th Cir. May 6, 2015) (Moore, J. dissenting). That same
mark would not run afoul of the Act if Bean Bandits was viewed as a positive descriptor of
Hispanics, meaning the registration and cancellation depends on the content of the mark as well
as the government’s viewpoint of the mark and making § 2(a) a content-based, viewpoint-based
law.
ii. Burdening speech is as impermissible as banning speech.
The government may not withhold a benefit by violating one’s constitutional rights,
specifically “his interest in freedom of speech” because if allowed to do so, the government
could “produce a result which (it) could not command directly.” Perry v. Sindermann, 408 U.S.
593, 597 (1972) (“For if the government could deny a benefit to a person because of his
constitutionally protected speech or associations, his exercise of those freedoms would in effect
be penalized and inhibited.”). Furthermore, the government “may no more silence unwanted
speech by burdening its utterance than by censoring its content.” Sorrell v. IMS Health Inc., 131
S. Ct. 2653, 2664 (2011).
18
Although speech may not be banned under § 2(a), “content-based burdens must satisfy
the same rigorous scrutiny as . . . content-based bans.” United States v. Playboy Entm’t Grp.,
Inc., 529 U.S. 803, 812 (2000); see also Simon & Schuster, Inc. v. Members of New York State
Crime Victims Bd., 502 U.S. 105, 115 (1991) (“A statute is presumptively inconsistent with the
First Amendment if it imposes a financial burden on speakers because of the content of their
speech.”), Pitt News v. Pappert, 379 F.3d 96, 111-12 (3d Cir. 2004) (Alito, J.) (“The threat to the
First Amendment arises from the imposition of financial burdens that may have the effect of
influencing or suppressing speech, and whether those burdens take the form of taxes or some
other form is unimportant.”), Ritchie v. Simpson, 170 F.3d 1092, 1099 (Fed. Cir. 1999) (noting
that denial of registration “does not prevent the use of that mark . . . [b]e that as it may, the
Constitutional issue has not been raised or considered below, nor has it been briefed or argued
before this court.”).
In Perry v. Sindermann, the Court remanded the case to allow the plaintiff to provide
evidence that he was fired “as a reprisal for the exercise of constitutionally protected rights[,]”
specifically his First Amendment rights to free speech. Perry, 408 U.S. at 598. The plaintiff was
a teacher at Odessa Junior College, and during the 1968-1969 school year, he disagreed publicly
with decisions made by the college’s Board of Regents. Id. at 594-95. His employment contract
ended, and the board did not renew it. Id. Even though the plaintiff did not have a “right” to a
benefit, namely his government job, the Court noted that the government may not withhold that
benefit in violation of his constitutional rights. Id. at 597.
Like the plaintiff’s job in Perry, a governmental benefit is at stake if LLI’s trademark
registration is cancelled, and that benefit “is significant.” B&B Hardware, Inc. v. Hargis Indus,
Inc., 135 S. Ct. 1293, 1300 (2015). Registration creates constructive notice of the mark’s
19
ownership and serves as prima facie evidence of its validity as well as the owner’s right to use
the mark in connection with his or her company. Id. Registration also gives the mark’s owner the
right to file a federal lawsuit if another person or company is infringing on its trademark. Id. at
1301.
Without those protections, the PTO has placed a financial burden on LLI because LLI
will not be able to prevent others from using its trademarks to sell Bean Bandits clothing and
memorabilia—forcing it to lose money to competing vendors. Also, it will not be able to force
others to pay for the right to use the mark, taking money out of LLI’s pockets. Although LLI is
not banned from using the mark if its registration is cancelled, the Federal Circuit has found that
even the threat of cancelling a mark “effectively forces the mark’s owner to find a new mark.” In
re Tam, --- F.3d ----, No. 2014-1203, 2015 WL 9287035, *14 (Fed. Cir. December 22, 2015).
In addition to the money lost to competing vendors, cancelling the trademark would place
more financial burdens on LLI by forcing it to trash all of the materials that contain the
trademark registration symbol, and if cancellation forces LLI to find a new mark, as it likely
would, LLI would be forced to “make substantial new investments in educating the public that
the products known by the old mark are now known by the new mark and, more generally, in
establishing recognition of the new mark.” Id.
In Sorrell v. IMS Health, Inc., the burden took the form of a law prohibiting the sale of
information including the prescriptions written by individual doctors under certain
circumstances, restricting the speech of certain speakers for certain purposes. Sorrell, 131 S. Ct.
at 2662. In Simon & Schuster, the burden took the form of forcing a convict who makes money
“from works describing his crime” to be forced to give that money to the crime victims board.
Simon & Schuster, 502 U.S. at 108.
20
Lastly, like Sorrell, cancelling the mark restricts the speech of certain speakers—LLI—
for certain purposes: to obtain the benefits under federal law in the use of their mark. Like Simon
& Schuster, LLI’s burden is also financial.
In conclusion, the government has taken improper action against LLI based on the
content and viewpoint of its mark, and although the use of the mark is not banned, the financial
burden of cancelling the mark will force LLI to abandon the mark, chilling its expression under
the First Amendment.
b. The Court must analyze § 2(a) using strict scrutiny, and under that standard,
the statute is unconstitutional because the government does not have a
compelling interest and the statute is not narrowly tailored.
i. The Court has not recognized that the government has a compelling
interest to burden speech that is offensive or disparaging.
Laws that treat speech differently based on content and viewpoint “may be justified only
if the government proves that they are narrowly tailored to serve compelling state interests,”
Reed v. Town of Gilbert, 135 S. Ct. 2218, 2226 (2015), and banning speech solely because it is
offensive is not a compelling state interest. See Cohen v. California, 403 U.S. 15, 26 (1971); see
also R.A.V. v. City of St. Paul, 505 U.S. 377, 382 (1992) (“The First Amendment generally
prevents government from proscribing speech . . . because of disapproval of the ideas
expressed.”).
In Cohen, authorities convicted Paul Robert Cohen for disturbing the peace by offensive
conduct. Cohen, 403 U.S. at 16. The arrest and conviction came after Cohen arrived at a
courthouse wearing a jacket “bearing the words ‘Fuck the Draft’ which were plainly visible.” Id.
The Court noted that Cohen did not act violently or make any noise, but rather, he was wearing
the jacket. Id. Reversing the conviction, the Court noted that the state needed a “more
21
particularized and compelling reason for its action” to punish Cohen for the “public display.” Id.
at 26.
As in Cohen, the issue before the court is the public display of a mark that some people
find offensive and disparaging and the PTO’s power to burden that mark because it’s offensive.
However, unlike Cohen, the Bean Bandits’ mark is potentially less offensive in general and
potentially offends less people than does the word “Fuck” displayed in public, meaning if “Fuck”
is protected speech under the First Amendment, then LLI’s mark should also be protected under
the First Amendment. Avoiding offensive speech is not a compelling interest that allows the
government to burden speech.
ii. Section 2(a) is not narrowly tailored.
By banning disparaging speech, the statute is not narrowly tailored because it is
conversely over-inclusive and under-inclusive. The same mark could receive disparate treatment
based on the government’s and society’s view of the mark. See In re Tam, --- F.3d ----, No.
2014-1203, 2015 WL 9287035, *9 (Fed. Cir. December 22, 2015); see also Lax-League, Inc. v.
Cortez, et al., No. 2015 CV-6452, at 18 (4th Cir. May 6, 2015) (Moore, J. dissenting) (“What
makes the governments disregard of the First Amendment in this case more disturbing is the
allowance of similarly offending trademark registrations like MARIJUANA FOR SALE,
CAPITALISM SUCKS DONKEY BALLS, LICENSED SERIAL KILLER, YID DISH, DIRTY
WHOOORE CLOTHING COMPANY, AND MURDER 4 HIRE.”).
In In re Tam, the Federal Circuit found that Section 2(a) has a chilling effect on speech
and “violates the guarantees of the First Amendment.” In re Tam, --- F.3d ----, No. 2014-1203,
2015 WL 9287035, *16. The case involved a band made up of Asian-Americans who chose to
name their band “The Slants to ‘reclaim’ and ‘take ownership’ of Asian stereotypes.” Id. at *4.
22
It’s easy to imagine that had the term been reclaimed or if it “was often used with pride among
the relevant population[,]” id. at *9, the PTO would have registered the mark instead of refusing
to allow it. Id. at *4-*5.
The Federal Circuit noted that “the Board allowed the registration of the mark SQUAW
VALLEY in connection with one of the applied-for classes of goods (namely, skiing-related
products), but not in connection with a different class of goods.” In re Tam --- F.3d ----, No.
2014-1203, 2015 WL 9287035, *9.
Had the Lanham Act gave the PTO power to cancel or deny registration to marks that
could be confused with other marks, the law would likely be found to be narrowly tailored,
allowing the Act to survive a First Amendment challenge. However, by also allowing the PTO to
deny or cancel registration to marks that disparage, the Act loses its narrowness. For example, if
Hispanics viewed Bean Bandits as a laudatory term, then the mark would not face cancellation,
making the statute over-inclusive because it could capture marks that would be found to be
permissible under other circumstances.
CONCLUSION
We ask that this Court reverse the Fourth District’s decision and find that the federal
trademark registration program is not government speech and that Section 2(a) of the Lanham
Act is unconstitutional under the First Amendment.
23