Episode 010: Matal v. Tam, Part I

3 thoughts on “Episode 010: Matal v. Tam, Part I”

1. I like the recent format, and for this episode I really liked how you talked about the case and tied it into a larger context on derogatory terms, how uses change over time and about attempts at reappropriation.

   I have a couple of questions: you indicated that the reduced panel was more confined to established precedent than in the en banc rehearing. Is that codified somewhere, or more traditional? Also, you said that they indicated the previous trademark precedent wasn’t consistent with other current first amendment jurisprudence. Did they indicate a specific opinion or judgement that they had in mind?

   Thanks, looking forward to the next installment!

   1. Great questions, Lara. I’m going to break my answer into two parts.

      1) The difference between three-judge panels and en banc courts with respect to circuit precedent isn’t required by statute. It developed over time in circuit court decisions.

      The basic rule is this: whenever a three-judge panel decides a new issue, that becomes “law of the circuit” binding on the lower federal courts in the circuit, but also on later three-judge panels. This helps to create uniformity within the circuit, and prevents unseemly situations where rival panels of the same court are issuing contradictory rulings.

      But the courts also recognize that they will occasionally need to reconsider precedents if they prove to be unworkable, or inadequately reasoned, or out-of-step with other legal developments. So the general method that’s developed is to allow the full circuit court sitting “en banc” to overrule prior circuit decisions. A party that loses before a three-judge panel can petition for rehearing en banc, or occasionally, a judge will call for rehearing en banc without any request from the parties — that’s what happened in In re Tam.

      The circuits differ somewhat in how this process works. Most significantly, in most circuits there is now an “informal en banc” process, that can circumvent the formal process. The details vary from circuit to circuit, but in those circuits, when a three-judge panel is bound by a circuit precedent that it believes should be overruled, it will typically circulate its opinion overruling the precedent to all the judges of the circuit, and with (unanimous or majority, depending on the circuit) approval of the circuit judges, the overruling opinion is issued. The opinion usually contains a footnote explaining that it was circulated and approval was obtained to overrule a prior circuit precedent. Informal en banc has the advantage of efficiency, but it’s very lacking in transparency, and is somewhat controversial.

      In addition to informal en banc, circuits also vary dramatically on how willing they are to formally rehear cases en banc. Some circuits do it routinely; in others, almost never. The Ninth Circuit is unique in that its en banc hearings don’t actually include all the judges of the circuit. The Ninth Circuit is enormous, with 29 active judge seats (though only 25 are filled right now); the next largest circuit is the Fifth, with 17 active seats (14 filled). Because a 29-judge court would be so unwieldy, the Ninth Circuit circuit’s en banc hearings are actually before a randomly selected 11-judge panel. This oddity is frequently cited by proponents of splitting the Ninth Circuit into two smaller circuits.

   2. 2) In the initial In re Tam three-judge panel opinion, the court disposes of the First Amendment issue in a single paragraph. After introducing the issue, the courts says, “[t]his argument is foreclosed by our precedent” and quotes from the McGinley case. The court then says, “[i]n subsequent cases, we have accepted this reasoning” and cites three later Federal Circuit cases. That’s all.

      A separate opinion by one judge on the panel begins with the line, “[i]t is time for this Court to revisit McGinley’s holding on the constitutionality of § 2(a) of the Lanham Act.” The core of the legal argument is that “First Amendment jurisprudence on the ‘unconstitutional conditions’ doctrine and the protection accorded to commercial speech has evolved significantly since the McGinley decision.”

      The unconstitutional conditions doctrine is the idea that, in general, the government can’t condition the receipt of government benefits on the exercise of constitutional rights. The opinion doesn’t really rely on any single decision that overrules McGinley, but instead generally explains the doctrine — which predates McGinley, but has been further developed in a number of later cases — citing various cases from the Supreme Court and other circuit courts.

      The opinion concludes that Section 2(a) does condition government benefits on speech, and therefore it would be unconstitutional unless the speech restriction is otherwise permissible. It then, analyzes the speech restriction under the constitutional rules applying to commercial speech. There, the opinion notes that the the seminal Supreme Court case establishing the test for commercial speech, Central Hudson, was decided in 1980, only one year before McGinley: “McGinley was written only one year after Central Hudson and was decided against a background of law where the First Amendment had only recently begun to apply to commercial speech.” But again, the opinion doesn’t really rely on any single post-McGinley case, although it cites a number of cases in generally describing the commercial speech doctrine.

      I want to call attention to one additional interesting tidbit. I mentioned three significant Federal Circuit opinions in Tam: the original panel opinion citing McGinley to dismiss Tam’s First Amendment argument; the separate opinion criticizing McGinley and encouraging the court to reconsider it; and the en banc majority opinion overruling McGinley.

      All three were written by the same person: Circuit Judge Kimberly Ann Moore.

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