Guest Professor: Arguing the Scandalous Clause

Prof. Ned Snow (SC) has published several articles on the interplay between free speech and intellectual property rights. His most recent article is titled Denying Trademark for Scandalous Speech. I asked him to provide some comments on the Brunetti FUCT case. – DC

by Prof. Ned Snow

The arguments against the scandalous clause are several.  Trademark law, it is argued, should concern itself with consumer efficiencies and commercial goodwill—not the psychological protection of children or the majoritarian morality.  Consumers choose whether they will view a mark; so by trademarking a scandalous image, no one is forcing anything on anyone.  Besides, it’s inevitable that children will hear and see much worse in schools and on the internet.  Furthermore, given the diverse moral views in society, a moral-based criterion seems very subjective to enforce.  Trademark eligibility, it is argued, should not reflect the moral code of the PTO, a judge, or anyone else for that matter.  It should reflect laissez-faire ideals: if there is demand, let the market supply it.  So go the arguments.

But these arguments are misplaced.  The focal point of Brunetti is not about whether the scandalous clause seems unwarranted or foolish.  That the clause apparently does not reflect good policy is irrelevant to the discussion at hand.  Why?  Because this is a case about separation of powers—not about policy arguments for or against the scandalous clause.  This is a case about whether courts have power to strike down an act of Congress.  As seemingly unwise as congressional acts may be, the Constitution provides Congress a large measure of discretion before a court must step in and strip away the majority’s will.  This simple, bedrock principle often gets lost in the debate.  The debate quickly moves to the merits of whether the scandalous clause makes good sense in trademark law.  As interesting as that question may be, it is not the focus here.  The question here is whether Congress has exceeded its broad discretionary authority.

Viewed through this framework, the issue takes on a new light.  The presumption is that Congress always acts within its discretionary authority to pass a law.  But of course Congress shall make no law abridging the freedom of speech.  And when does “abridging” occur?   Case law indicates that when Congress is imparting a benefit rather than imposing a penalty, the argument that an abridgment has occurred becomes much weaker.  When Congress is giving a property right rather than taking one away, the Court has interpreted the Constitution as providing Congress much more leeway to make laws that affect speech content.  Enter the limited-public-forum doctrine.  The trademark system amounts to Congress distributing a resource in order to facilitate private speech that promotes commercial transactions.  This description nicely fits the meaning of a limited public forum.  Accordingly, insofar as Congress’s choice of how to determine trademark eligibility is at least reasonable in light of trademark’s purpose, and insofar as Congress does not favor a particular viewpoint, Congress is not abridging speech.  In that situation, courts lack power to invoke the First Amendment as a basis to condemn Congress’s choice.

The issue, then, boils down to whether the scandalous clause is viewpoint neutral, and whether its restriction is at least reasonable in view of trademark’s general purpose of promoting commercial transactions.  Viewpoint neutrality turns on the meaning of scandalous.  If scandalous means anything offensively immoral (which is what the “immoral clause” means), or alternatively, if scandalous means an actual scandal (e.g., no trademarking content about Russian election meddling (?)), then the clause would be viewpoint discriminatory.  Under those meanings, the clause would enable government to restrict speech based on offense caused by a speaker’s view of what is right and wrong, or based on offense caused by a speaker’s view on a public matter.  Matal v. Tam teaches that a restriction based on offense caused by a speaker’s view (i.e., disparaging content) is viewpoint discriminatory.  On the other hand, if scandalous means offensively pornographic or vulgar—which represents the overwhelming majority of content that the PTO currently rejects for registration under that clause—the clause appears viewpoint neutral.  Under that meaning, the clause would not be targeting content based on offensiveness of any viewpoint, but rather based on offensiveness of the content’s public visibility and effects.  That a person is offended by an image of sex used as a trademark—publicly visible for anyone to see—does not imply that the person is offended at the idea of sex.  This distinction is important in assessing viewpoint neutrality.  On this point I direct readers to my article, Denying Trademark for Scandalous Speech, 51 U.C. Davis 2331 (2018), for further discussion.

As for the question of reasonableness, the bar is not high.  The reason for Congress’s enacting the scandalous clause need not compel the conclusion that the clause makes good sense as a matter of policy.  It need not demonstrate the wisdom of its enactment.  Rather, the reason must merely show that Congress was attempting to pass a law that supported the general purpose of trademark law—promoting commercial transactions.  Congress can meet that burden.  First, children represent a significant segment of the commercial marketplace.  Pornographic and vulgar content pose psychological harms to children, so discouraging such content promotes children’s well being in the commercial marketplace.  Second, a significant segment of the commercial marketplace finds the public visibility of pornographic or vulgar content to be objectionable.  Arguably, then, scandalous marks inhibit full market participation.  Third, pornographic marks may cause consumers to make decisions based on imperfect information.  Social science suggests that pornography leads to addictive behaviors in some consumers, harming marriages and family relationships.  Consumers often fail to account for such negative effects, thereby inaccurately valuing the utility that they will receive from the pornographic marks or their associated products.  Thus, the restriction on scandalous content appears reasonable in light of trademark’s general purpose of promoting commercial transactions.

As already stated, these reasons do not necessarily imply that Congress should have enacted the scandalous clause.  Indeed, the clause may be criticized for various reasons.  The clause certainly calls for subjectivity in its enforcement—as much subjectivity as enforcing the distinction between descriptive and suggestive marks; assessing the presence of secondary meaning; or determining that a mark has become generic.  The clause certainly does not represent a laissez-faire approach—much like the regulation of public television and airwaves (restricting pornographic and vulgar content), or the very trademark system itself (creating an artificial monopoly).  The clause certainly does not further source identification—just like the clauses that prevent registration of government flags or insignia, portrayals of deceased presidents, portrayals of living individuals, and surnames.  The clause may even result in market inefficiency—although not as much inefficiency as results from trademark’s dilution rights.  All these problems with the scandalous clause may be lamented and bemoaned, but they do not suggest that Congress has abused its discretion by abridging the freedom of speech.  These problems are relevant to a much different discussion—a discussion about whether we—through Congress—should change this law.  They do not inform the discussion about whether the Constitution gives courts power to reject our will.

27 thoughts on “Guest Professor: Arguing the Scandalous Clause

  1. 8

    IDK, given that HBO is basically soft/hard porn and the shows that won Emmy’s sell themselves as soft core porn, it is really hard to object to any mark at this point.

    I guess things that are identifying groups that sell hate/intolerance should be banned.

    1. 8.1

      Groups that sell intolerance…

      You mean like universities?

      The “politically correct” Left are some of the most intolerant out there (if you do not belong to their group).

      1. 8.1.1

        True anon. This is really a hard issue.

  2. 7

    “Congress is giving a property right”

    something IMHO the founding fathers would never have conceived of as possible or rational, any more than a King could grant or revoke Rights to life, liberty, and the pursuit of happiness… rights in fact are not granted.

    But since this IS the Great Game Govt has been playing at for over a century.. we can safely ignore principles of a (democratic) constitutional republic.

    1. 7.1

      This is a different context (coming as it does from the Commerce Clause, as opposed to the Patent Clause).

      Trademark rights ARE granted at the Federal level (their genesis under State or common usage are a bit more nuanced).

      But that point really does not bear on the issues here, and the courts have already considered (see at least Tam) that even the lower protections of business speech would be adversely affected. The views being expressed by this professor are nothing more than him wanting to ignore what the courts have said – on direct point.

  3. 6

    What about the statute being void for vagueness? As pointed out in much of the discussion and in the article, “scandalous” can have different meanings. Whichever judge, jury, trademark examiner, TTAB member, etc. is making the decision will greatly influence that meaning, so unless Congress clearly defines the meaning of the term, there is no way to know what definition will prevail in a given circumstance.

  4. 5

    [When Congress is giving a property right rather than taking one away, the Court has interpreted the Constitution as providing Congress much more leeway to make laws that affect speech content. Enter the limited-public-forum doctrine. The trademark system amounts to Congress distributing a resource in order to facilitate private speech that promotes commercial transactions. . . . Accordingly, insofar as Congress’s choice of how to determine trademark eligibility is at least reasonable in light of trademark’s purpose, and insofar as Congress does not favor a particular viewpoint, Congress is not abridging speech.]

    Ugh. Unlike WRT patents, the USPTO only registers trademarks, it does not issue them. The statute in question does not reflect “Congress’s choice of how to determine trademark eligibility,” but rather Congress’s choice of how to determine eligibility for registration.

    1. 5.1

      The statute in question does not reflect “Congress’s choice of how to determine trademark eligibility,” but rather Congress’s choice of how to determine eligibility for registration.

      There’s no distinction here except for the words you are using.

      1. 5.1.1

        There’s no distinction here except for the words you are using.

        Yep, that is what Malcolm wrote….

      2. 5.1.2

        I’d really hope anyone practicing trademark law would recognize the significant difference.

        1. 5.1.2.1

          It’s not “significant” at all in the context of what we’re discussing here.

          Does the trademark eligibility determination analysis change in a significant manner after registration of the mark? If so, how?

  5. 4

    Snow: All these problems with the scandalous clause may be lamented and bemoaned, but they do not suggest that Congress has abused its discretion by abridging the freedom of speech.

    Also, every one of these arguments applies to the disparagement clause. Disparagement was also viewpoint neutral because the clause wasn’t concerned with who or what was being disparaged. What matters was the disparagement.

    The clause certainly does not represent a laissez-faire approach—much like the regulation of public television and airwaves (restricting pornographic and vulgar content), or the very trademark system itself (creating an artificial monopoly).

    Zing. Not just an artificial monopoly but — if you take the anti-clausers arguments at face value — an artificial monopoly that burdens the free speech of far more people than it protects.

    1. 4.1

      Your first “point” shows the opposite. Somebody is deciding that some content is deemed to belong under a certain label. You attempt to say that such is not viewpoint specific be moving the goalposts and saying that it does not matter who says the item. But that does not wash, and is similar to, Oh, saying, that a certain political view is not allowed, and not allowed no matter who tries to say it.

      The second paragraph also does not wash. You actually set out that ALL trademarks are unconstitutional — not just disparaging or scandalous ones. Worse, since all the other ones will naturally “see more use,” the problem (as you would have it) is far worse for all others.

      1. 4.1.1

        a certain political view is not allowed, and not allowed no matter who tries to say it.

        Because the Constitution doesn’t permit Congress to pass a law that prevents someone from :registering the trademark “Kill the President and r@ pe his daughter.”

        It’s a truly marvelous document! Read it backwards sometime . You can literally smell the freedom.

        1. 4.1.1.1

          Brush up on your First Amendment Fighting Words doctrine, please.

  6. 3

    I wonder which noble house Ned Snow is from?

    Also, MM don’t you think it is inhumane to ask anymore from this olde dame?

    link to youtube.com

  7. 2

    The argument leads in with a fallacy – as if the case had not been looked at in a Constitutional light.

    It has.

    Not liking the result of that looking in order to pretend to get your own “spin” on the Constitutional question is some “breath of fresh air or new light” when it is not is more than a bit duplicitous.

    Some of us here are rather comfortable and rather knowledgeable on the Constitution Law front.

    Others (like Paul Morgan) only cheerlead and snipe from the sidelines instead of actually engaging.

    1. 2.1

      Some of us here are rather comfortable and rather knowledgeable on the Constitution Law front.

      ROTFLMAO

      “The First Amendment does not apply to patent law.” <– this was a good one

      1. 2.1.1

        Nice misrepresentation Malcolm.

        Maybe you want to try again and get it right ? (or maybe— gasp — actually provide some cogent reasoning as to how the First Amendment backs up your “patent” position.

        I expect the usual nothingness from you.

        1. 2.1.1.1

          “The Constitution permits you to sue another person for thinking about a correlation, as long as you are drinking a glass of milk and the claim recites both the step of thinking about the correlation and the milk drinking.” <– another winner

          I could go on all day long.

          Dance, "anon", dance! You're the s00per expert on der Kernstertershun, yoppers, that's you derp derp derp.

          1. 2.1.1.1.1

            Your “thinking about” canard is your favorite strawman and shows only your attempt to move goalposts of claims that may have one particular element into a claim “Entirely in the mind.”

            This “game” of yours is beyond stale — and does not count as cogent.

        2. 2.1.1.2

          cogent reasoning

          Oh, enough with this “cogent” horseshirt already.

          1. 2.1.1.2.1

            The “horseshirt” is NOT my asking you for you to supply cogent reasoning, it is your inability to do so (and pretend that you do).

          2. 2.1.1.2.2

            Further, your inane and mindless ad hominem have not addressed the major counter point presented: the First Amendment arguments are NOT new, have been addressed by the courts, and you and Prof. Snow are retreading positions that simply were not accepted.

            Lots of pretending otherwise that just does not wash.

            1. 2.1.1.2.2.1

              you and Prof. Snow are retreading positions that simply were not accepted

              Not accepted?

              More like “not addressed.”

              Of course you were one of those deeply confused people who thought that “claim dissection” wasn’t permitted when examining the subject matter eligibility of a claim.

              1. 2.1.1.2.2.1.1

                Not accepted?

                More like “not addressed.”

                These WERE addressed.

                Try being informed. It does not really take that much effort, although you may have to work a little more to deal with the cognitive dissonance that you carry with you.

                (and please, do not try to kick up dust here by referencing a completely separate subject that has serious broken scoreboard issues)

  8. 1

    As noted before, trademark registrations merely assist existing trademark owner infringement suit rights. That is not an “abridgment” of free speech. The trademark registered word or emblem can be freely used by anyone for anything other than misleading the public by a commercial source of origin of a product as being from a source other than from the trademark owner or its licensee.

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