'Catchy Phrases That Convey a Message': The Danger of Tam’s Copymark Creep and Trademark Law’s New First Amendment Analysis

Abstract

In 2017, the Supreme Court decided Matal v. Tam, in which an Asian-American band called The Slants challenged the Patent and Trademark Office’s refusal to register the mark based on its disparaging nature. In a First-Amendment-focused opinion, the Supreme Court positioned trademarks as important expressive speech that must be protected as such. In so doing, the Supreme Court distorted the important foundations of trademark protection that had distinguished it from copyrights, putting the two on effectively equal footing.

The Supreme Court’s decision makes fully explicit an ongoing blurring of the lines between copyright and trademark, as virtually all speech has come to be understood as essentially commercial, rendering commercial speech therefore also expressive by default. Copyright holders have sought to treat their copyrights more like trademarks, wishing to expand them indefinitely to protect their status as the source of particular creative franchises. Meanwhile, as the Supreme Court’s decision in Tam illustrates, trademark holders have sought to treat their trademarks more like copyrights, proposing artistic expression rather than commercial transactions.

This Article contrasts the analysis of Tam with previous disparaging trademark cases, highlighting how Tam shifts trademark analysis from its traditional considerations of commerce and marketplace into a discussion of traditional copyright considerations of expressive creativity and artistic viewpoints. This Article argues that Tam’s treatment of trademarks, carried to its natural conclusion, could have the result of hollowing out many trademark law ideals, such as protecting consumers from deception, encouraging effective and efficient marketplace competition, and defending public discourse from commercial ownership. This Article concludes that there is value in maintaining the separation of trademarks and copyrights and remembering their separate foundational values, in order to protect all speech from now seemingly inevitable commodification.

Keywords: copyright, trademark, intellectual property, tam, disparagement, free speech, first amendment, commercial speech, supreme court