Ad Block? Interpreting Matal v. Tam for Controversial Advertising

Noah Cothern, Contributing Member 2023-2024

Intellectual Property and Computer Law Journal

I. Introduction

Controversial content is a frequent subject of social debate. Unsurprisingly then, controversial content is often sought to be regulated.[1] One such attempt was the disparagement clause of the Lanham Act.[2] Prior to its reversal, the disparagement clause prevented the registration of certain controversial words as trademarks with the U.S. Patent and Trademark Office.[3] The Supreme Court found the disparagement clause unconstitutional in Matal v. Tam – a case with broad implications.[4] In the years since Matal, federal courts have disagreed over how Matal affects regulations of controversial advertisements.[5]

This article interprets Matal and considers the extent to which it interacts with state regulations on advertisement. Part II gives background on the Matal decision as well as background on two decisions from separate circuits that reached different conclusions applying Matal to regulations on advertisements in public transit settings. Part III examines the tension inherent between the two decisions and considers why that tension exists. Part IV concludes by emphasizing the challenges in distinguishing between content and viewpoint discrimination.

II. Background

Matal v. Tam

The plaintiffs in Matal were members of an Asian-American rock band called “The Slants” who sought to trademark their band name.[6] Their application was denied by the Patent and Trademark Office under the disparagement clause of the Lanham Act, which prohibited registration of trademarks that could “‘disparage … or bring … into contemp[t] or disrepute’ any ‘persons, living or dead’” because “Slants” is a derogatory term for persons of Asian descent.[7] This was despite the band’s motive “to ‘reclaim’ the term and drain its denigrating force.”[8]

The Court found that the disparagement clause amounted to viewpoint discrimination.[9] The Court noted that a broader understanding of viewpoint discrimination was warranted.[10] The clause “evenhandedly prohibit[ed] disparagement of all groups” and would “apply equally to marks that damn … those arrayed on both sides of every possible issue.”[11] However, this did not render the clause a permissible content-based regulation.[12] This is because the clause “denie[d] registration to any mark that is offensive to a substantial percentage of the members of any group.”[13] That denial, in effect, was viewpoint discrimination because “[g]iving offense is a viewpoint.”[14]

In a follow-up case, Iancu v. Brunetti, the Supreme Court struck down a related provision of the Lanham Act that prohibited the registration of trademarks that consist of immoral or scandalous matter for identical reasoning as that in Matal.[15]

American Freedom Defense Initiative v. Suburban Mobility Authority for Regional Transportation

The plaintiff in AFDI was an advocacy organization seeking to display advertisements that contained messages critical of Islam.[16] They sought to have their advertisements displayed inside the buses and bus stations of Detroit’s public transportation system, SMART.[17] SMART denied the plaintiff’s advertisements on the grounds that the advertisements were “political” and “likely to hold up to scorn or ridicule any person or group of persons.”[18] The Sixth Circuit, having originally declared SMART’s denial appropriate,[19] found the intervening decision in Matal to demand a new outcome.[20]

The Sixth Circuit recognized the broader view of viewpoint discrimination at play in Matal.[21] They found that to decide whether an advertisement subjects a group to “scorn or ridicule” necessarily requires SMART to “‘distinguish[] between two opposed sets of ideas’: those that promote the group and those that disparage it.”[22] This was akin to the Patent and Trademark Office being required to decide whether a requested mark was likely to disparage.[23]

White Coat Waste Project v. Washington Metropolitan Area Transit Authority

The plaintiff in White Coat Waste was a non-profit watchdog organization seeking to display advertisements criticizing taxpayer-funded, government experimentation on animals.[24] They sought to have their advertisements displayed inside the busses, subway cars, and stations of Washington D.C.’s public transportation system, WMATA.[25] WMATA denied the plaintiff’s advertisements on the grounds that the advertisements “intended to influence members of the public regarding an issue on which there are varying opinions,” and “intended to influence public policy.”[26] The District Court, relying on precedent from the D.C. Circuit, found Matal inapplicable and affirmed WMATA’s denial.[27]

The District Court found that for WMATA to decide whether an advertisement “intended to influence members of the public regarding an issue on which there are varying opinions” or “intended to influence public policy” would not require WMATA to “distinguish between controversial and non-controversial viewpoints.”[28] Instead, the regulations only demonstrate “WMATA’s preference for speech on an entirely different subject matter.”[29]

III. Discussion

Matal and its sister case Iancu demonstrate the notion that “it can often prove difficult to distinguish ordinary ‘content’ discrimination (restricting all speech on a subject) from the more troubling ‘viewpoint’ discrimination (restricting a particular message on a subject).”[30] This difficulty underscores the discrepancy between AFDI and White Coat Waste which, at first glance, appear to be at odds. As if illustrating this tension, the D.C. Circuit case which White Coat Waste relies on, American Freedom Defense Initiative v. Washington Metro. Area Transit Authority, directly cites the 2012 Sixth Circuit case which was explicitly overturned by AFDI in 2020.[31] Similarly, both the D.C. Circuit case and the Sixth Circuit case involved the same named plaintiff and nearly identical advertisements.[32]

A reasonable distinction may explain the difference – the regulations employed by SMART and WMATA were substantively different. SMART denied advertisements that were “likely to hold up to scorn or ridicule any person or group of persons.”[33] WMATA, in contrast, denied advertisements that “intended to influence members of the public regarding an issue on which there are varying opinions” or “intended to influence public policy.”[34] SMART’s restriction is more analogous to the disparagement clause at issue in Matal, while WMATA’s politically oriented restriction is not a direct fit. Rather, regulation of political advertising in non-public forums invokes a different line of case law exemplified by the Supreme Court in Minnesota Voters Alliance v. Mansky. Such regulations must be “reasonable in light of the purpose served by the forum.”[35] This reasonableness inquiry demands that the regulation be “capable of reasoned application.”[36]

The regulation at issue in Mansky prevented persons from wearing “political” apparel inside polling places on election days.[37] The Court found that the lack of a definition for the term “political” made the regulation impossible to apply consistently, thus inviting impermissible viewpoint discrimination.[38] The White Coat Waste Court found that the WMATA’s regulations were “sufficiently specific” and “considerably narrower” such that they could be applied in a reasoned manner that did not invite viewpoint discrimination.[39]

The two regulations – SMART’s “scorn or ridicule” restriction and WMATA’s “intended to influence public policy” and “intended to influence members of the public regarding an issue on which there are varying opinions” restrictions fall on opposite sides of the blurry spectrum between content and viewpoint discrimination. This precarious border begins to flex under scrutiny.

Some people argue that everything is political.[40] This line of thought challenges the distinction between the two regulations. For example, an advertisement critical of Islam might be “intended to influence members of the public regarding an issue on which there are varying opinions” in addition to subjecting a group to “scorn or ridicule.” SMART did have a restriction on “political” advertisements, but the Sixth Circuit quickly disposed of that regulation on Mansky grounds because SMART did not “adopt a ‘more discernible approach.’”[41] Had SMART employed a narrower and more specific guideline capable of reasoned application similar to the regulation employed by WAMTA, the Sixth Circuit would have faced a thornier question.

IV. Conclusion

To summarize, the Sixth Circuit views that deciding whether an advertisement subjects persons or groups to “scorn or ridicule” is impossible without engaging in viewpoint discrimination because deciding what is scornful necessarily requires a viewpoint judgment. By contrast, for the D.C. Circuit, to decide whether an advertisement is “intended to influence members of the public regarding an issue on which there are varying opinions” or “intended to influence public policy” is possible without engaging in viewpoint discrimination because to make that decision requires only a content judgment.

The D.C. Circuit noted that to prevent a transit authority from establishing permissible subject matter for advertising risks “eras[ing] the distinction between content-based and viewpoint-based restrictions.”[42] Despite this, the Supreme Court’s recent holdings in cases like Matal, Iancu, and Mansky have blurred that distinction. The future of this area is likely to be the subject of continued litigation.

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[1] See Citizen’s Guide To U.S. Federal Law On Obscenity, United States Department of Justice, https://www.justice.gov/criminal/criminal-ceos/citizens-guide-us-federal-law-obscenity (last updated Aug. 11, 2023) (outlining various federal criminal obscenity laws).

[2] 15 U.S.C. § 1052(a).

[3] Id.

[4] Matal v. Tam, 582 U.S. 218 (2017).

[5] Compare White Coat Waste Project v. Washington Metro. Area Transit Auth., No. CV 23-1866, 2024 WL 68256 (D.D.C., 2024) with American Freedom Defense Initiative v. Suburban Mobility Authority for Regional Transportation, 978 F.3d 481 (6th Cir. 2020).

[6] Matal v. Tam, 582 U.S. 218, 223 (2017).

[7]  Id. (alteration in original) (quoting 15 U.S.C. § 1052(a)).

[8] Id.

[9] Id.

[10] Id. at 243.

[11] Id.

[12] Id.

[13] Id.

[14] Id.

[15] Iancu v. Brunetti, 588 U.S. 388, 390 (2019).

[16] American Freedom Defense Initiative v. Suburban Mobility Authority for Regional Transportation, 978 F.3d 481, 488 (6th Cir. 2020).

[17] Id.

[18] Id.

[19] See American Freedom Defense Initiative v. Suburban Mobility Authority for Regional Transportation, 698 F.3d 885 (6th Cir. 2012).

[20] AFDI, 978 F.3d 481, 485.

[21] Id. at 500.

[22] Id. (quoting Iancu v. Brunetti, 588 U.S. 388 (2019)).

[23] Id. at 501.

[24] White Coat Waste Project v. Washington Metro. Area Transit Auth., No. CV 23-1866, 2024 WL 68256 at *1 (D.D.C., 2024).

[25] Id.

[26] Id.

[27] Id. at *11.

[28] Id. at *5.

[29] Id. at *6.

[30] American Freedom Defense Initiative v. Suburban Mobility Authority for Regional Transportation, 978 F.3d 481, 499 (6th Cir. 2020) (citing Rosenberger v. Rector and Visitors of University of Virginia, 515 U.S. at 830–31, 115 S.Ct. 2510).

[31] American Freedom Defense Initiative v. Washington Metro. Area Transit Authority, 901 F.3d 356, 368 (D.C. Cir. 2018).

[32] Compare American Freedom Defense Initiative v. Washington Metro. Area Transit Authority, 901 F.3d 356 (D.C. Cir. 2018) and American Freedom Defense Initiative v. Suburban Mobility Authority for Regional Transportation, 978 F.3d 481 (6th Cir. 2020).

[33] AFDI, 978 F.3d 481, 488.

[34] White Coat Waste, No. CV 23-1866, 2024 WL 68256 at *1.

[35] Minnesota Voters Alliance v. Mansky, 585 U.S. 1, 13 (2018) (citing Cornelius v. NAACP Legal Defense and Educational Fund, Inc., 473 U.S. 788, 806 (1985)).

[36] American Freedom Defense Initiative v. Suburban Mobility Authority for Regional Transportation, 978 F.3d 481, 494 (6th Cir. 2020) (quoting Minnesota Voters Alliance v. Mansky, 585 U.S. 1 (2018)).

[37] Mansky, 585 U.S. 1 at 5.

[38] Id. at 23.

[39] White Coat Waste, No. CV 23-1866, 2024 WL 68256 at *9-10.

[40] See Paul Krugman: Everything Is Political, JSTOR Daily, (Feb. 12, 2020) https://daily.jstor.org/paul-krugman-everything-is-political/.

[41] American Freedom Defense Initiative v. Suburban Mobility Authority for Regional Transportation, 978 F.3d 481, 494 (6th Cir. 2020).

[42] American Freedom Defense Initiative v. Washington Metro. Area Transit Authority, 901 F.3d 356, 369 (D.C. Cir. 2018).