Fooey on the Draft

Iancu v. Brunetti (Supreme Court 2019) [Oral Arg Transcript]

In this case, the Federal Circuit held that the prohibition on registering “immoral” or “scandalous” marks is a facial violation of a registrant’s First Amendment free speech rights.  Here, Brunetti is seeking to register the mark “FUCT,” which the solicitor identified as a close homonym of “the paradigmatic word of profanity in our language.” Oral arguments were held on April 15 before the nine Supreme Court justices.

In the case before the Supreme Court, the Government has conceded that the USPTO’s historic application of the test has been hit-or-miss, but that going forward the agency can be trusted to to draw the line against “marks that are offensive [or] shocking to a substantial segment of the public because of their mode of expression,
independent of any views that they may express.”  This would include words like FUCT, as well as certain sexually explicit images, for instance.

Although the prohibition is content based, the government argues that its approach would be viewpoint neutral – just like many of the other conditions for obtaining trademark rights.  This should lead to a lower level of scrutiny than that faced in Tam v. Matal (2017).  In addition, my view is that Tam itself was decided on thin grounds because trademark denial does not actually limit anyone’s speech.  The difficulty with merging speech issues with trademark law is – as Chief Justice Roberts stated at oral arguements – The whole point of this program [i.e., trademark law] is to regulate content.”

Here, it is clear that some regulations would be allowable — such as prohibiting registration of “obscene” marks.  However, the statute goes to far by broadly prohibiting registration of both “immoral” and “scandalous” marks.  The question is whether the Supreme Court is willing to effectively rewrite the statute to fit within the constitutional limits.  Justice Gorsuch got to the point: “We can fix your [overbroad statute] problem for you, I got that. . . [But] how is a person who wants to get a mark supposed to tell what the PTO is going to do? Is it a flip of the coin?”  As an example, this case focuses on FUCT, but FCUK and FVCK are already registered marks.

Justice Alito sees the case as potentially reinvigorating manifest destiny – “There’s going to be a mad scramble by people to register these marks . . . whatever lists of really dirty words . . . and all their variations.”

Brunetti’s attorney John Sommer started off well with his two points:

There are two important points to be made. First, the government does not defend the plain language of the statute. Nor does it defend how it’s been consistently interpreted for the last 70 years. Rather, it asks this Court to validate a hypothetical statute not enacted.

The second point is that a substantial number of Americans think that gambling, drinking, eating some types of meat, eating meat at all is immoral. A substantial number of Americans, as to abortion, gun control, immigration, our two political parties, a substantial number think that those are — the con is immoral, and a substantial number think that the pro is immoral. There’s no — simply
no way to make a — a sensible determination between those that come in and those must stay out.

In a classic line, Sommer also discussed the Supreme Court’s 1971 decision in Cohen v. California:

Mr. SOMMER: Cohen could have said fooey on the draft, and that’s what the government says he should have done, and if he said something else, he should have been arrested and his conviction should have been affirmed, but we know his conviction was reversed. . . . You know, if the government had a list of seven dirty words [that cannot be registered], would that be constitutional?

JUSTICE ALITO: Oh, come on. You know, come on.

JUSTICE GORSUCH: Cohen can have his T-shirt, but we are not going to trademark them, and we’ve held just last year that a patent is a public benefit that can be withdrawn without a judge. Why isn’t this also similarly a public benefit rather than a private right?

JUSTICE SOTOMAYOR: Why can’t the government say, no, we’re not going to give you space on our public registry for words that we find are not acceptable?

MR. SOMMER: Would the government be allowed to refuse registration of ownership of property because it’s bought by a church with a name that’s considered offensive? Could the Coast Guard refuse to register a boat because they think the name of the boat is a little bit salacious?

JUSTICE SOTOMAYOR: Actually, you’re right.

. . .

MR. SOMMER: We have a facial challenge here, so the question is, is it overbroad? And it doesn’t matter if Mr. Brunetti’s mark should be granted or not. It’s the statute as written and as applied, without exception, covers a fair amount of clearly core speech, of high-value speech.

. . .

[the risk of regulation here is that it can] take our level of discussion in our diverse society . . . to, you know, the lowest common denominator, the most squeamish among us.

Sommer made his point here, but where he faltered was on his additional argument that many of the scandalous restrictions are viewpoint based — the justices did not appear to follow that line of thinking.

JUSTICE BREYER: No, I don’t agree with it’s viewpoint. I think that very often the word involved in your case and the racial slur is not viewpoint. It is used to insult somebody, rather like fighting words, or it’s used to call attention to yourself. That’s the purpose of the slur. That isn’t viewpoint. Fighting words isn’t viewpoint. Or, if it is, it’s overcome.

MR. SOMMER: I don’t think the profanity always expresses viewpoint.

JUSTICE KAVANAUGH: When does it not?

MR. SOMMER: Well, fleeting expletives and I think when it’s used without any relevance to the subject matter, such as in high school speech, and, of course, there still can be – –

JUSTICE SOTOMAYOR: Some — some of us would say that a vulgar word with relationship to selling clothes is sort of irrelevant?

MR. SOMMER: Well, it’s not irrelevant because, as Justice Ginsburg pointed out, the audience that Mr. Brunetti is appealing to is young men who want to be rebels. And this is how they do it.

Some interesting points of the discussion: does the “scandalous” nature of the mark apply to the public as a whole or only potential consumers (gov says “public as a whole”); if the statute is struck down, can the PTO still reject obscene marks (ans: yes, if not used in commerce).

In the rebuttal, the Government offered what appeared to be something of a veiled threat of dire consequences if the statute is invalidated — noting that the PTO already views TAM as prohibiting denial of registration for racial slurs

But with respect to the single-most offensive racial slur, the PTO is currently holding in abeyance applications that incorporate that word, pending this Court’s decision on — leave open the possibility that that word might be viewed as scandalous.

Section 2 of the Lanham Act includes a host of reasons for refusing to register a trademark.  The PTO may not register immoral or scandalous marks; marks that are deceptive; marks that disparage, falsely suggest a connection with, bring into contempt, or disrepute “persons, living or dead, institutions, beliefs, or national symbols;” governmental flags or coats of arms; “name, portrait, or signature” of a living person (without consent) or of a dead President “during the life of his widow;” marks likely to cause confusion or mistake because of their resemblance to other registered marks; marks that are merely descriptive or deceptively misdescriptive of the goods; etc.  If the Federal Circuit is affirmed here, it will be interesting to see what comes next.

34 thoughts on “Fooey on the Draft

  1. 8

    The easy solution to this whole issue is for Congress – or heck, even the PTO – to step in and say that vulgarities, as often and widely used as they are, are generic. Given that large numbers of people say “f this” and “f that” and “look at this f-ing shirt”, it clearly has no source distinctive quality.
    Boom, issue resolved. :)

    1. 8.1

      Let me google that as I have my coke and see how far down the rabbit hole such generic arguments reach

  2. 6

    Sommer:

    A substantial number of Americans, as to abortion, gun control, immigration, our two political parties, a substantial number think that those are — the con is immoral, and a substantial number think that the pro is immoral.

    This analogy is absurdly simple-minded and completely misrepresents the statute at issue here and its effects.

    Sure, there is disagreement about aspects of gun control regulation and disagreement about aspects of how women’s bodies are regulated at the margins. But the number of people who believe, for example, that women who have ab0rtions should be executed (because that’s the “moral” thing to do) or who believe that everyone is “morally” entitled to own an atomic bomb is minimal.

    Do a substantial number of Americans really believe that a law which limits the number of machine guns that I can own is “immoral”? Do a substantial number of American parents believe that forcing their 13 year old daughter who was brutally raped by a “filthy immigrant” to give birth to the child is the “moral” thing to do? I’m pretty sure the answer is “no”, even in this st 00p it country.

    Note that refusing trademark registration for certain classes of marks does not limit in any way anyone’s ability to discuss the morality or obscenity of any issue. If anything, the opposite is closer to reality, i.e., registering “immoral” and “obscene” marks has the greater limiting effect how the public communicates because unscrupulous trademark owners will use their registered marks to threaten others and, by doing so, will chill their speech.

    1. 6.1

      Are you purposefully mischaracterizing things or is that simple 1gn0rance of the actual legal controlling concepts involved?

        1. 6.1.1.1

          simultaneously sinking [ ] discourse generally further into the gutter (assuming that’s even possible in 2019).

            1. 6.1.1.1.1.1

              I do not understand the point that you are attempting to make with this last comment.

  3. 5

    the audience that Mr. Brunetti is appealing to is … men who want to be rebels.

    Coincidentally, that’s pretty much the same audience that John Sommers’ legal arguments are appealing to.

    1. 5.1

      Your feelings are noted.

      Yet again, those feelings are getting in the way of you understanding the legal concepts at issue here.

      Maybe you should try NOT having every comment of yours come directly from your feelings (which is very Trump of you)….

  4. 4

    JUSTICE GORSUCH:… [W]e’ve held just last year that a patent is a public benefit that can be withdrawn without a judge. Why isn’t this also similarly a public benefit rather than a private right?

    Exactly. Pity that Justice Gorsuch was not able to explain that logic to his colleague’s last year.

    JUSTICE SOTOMAYOR: Why can’t the government say, no, we’re not going to give you space on our public registry for words that we find are not acceptable?

    Indeed, why not? This would have been a much better basis for a decision in Matal v. Tam than the actual grounds of the actual decision. This argument was presented to the Court to the court, but I did not read you writing in dissent, Justice Sotomayor, endorsing this point. Better late than never, I suppose, but it would have been better if you had put this in a separate opinion in Matal v. Tam.

    1. 4.1

      Two more comments:

      (1) Who knows how Justice Alito will vote in this case (oral argument is not a reliable tool for predicting outcome), but his questions in this case suggest that he is a possible vote for upholding the “scandalous and immoral” bar. This would be too rich to stomach, coming from the author of the Matal v. Tam opinion. He will have earned a century of scorn if he takes up the pen in service of the contention that racial slurs have first amendment protection but mere vulgarity does not.

      (2) The obvious solution to the Congress’ first amendment problem here is for the Congress to get the federal government out of the trademark registration business. If the Court says that “scandalous and immoral” cannot stand in the Lanham Act, then it is only a matter of time before the PTO has to start registering marks that offend the delicate sensibilities of the FOX News viewership (e.g., “all hail Al Qaeda” or some such). At that point the pressure in Congress to rescind the Lanham Act will quickly build.

    2. 4.2

      … explain that logic to his colleague’s last year.

      Er, “… explain that logic to his colleagues last year.” Mea culpa.

    3. 4.3

      Indeed, why not?

      You snipped the Sotomayor exchange too quickly. Read on.

      Also, your general view here of simply withdrawing the entirety of the Lanham Act is quite the example of throwing out the baby with the bathwater. Where does this extreme view come from?

      1. 4.3.1

        your general view here of simply withdrawing the entirety of the Lanham Act is quite the example of throwing out the baby with the bathwater.

        …says the hypocritical nertcase who insists ten times a day that the Supreme Court needs to be banned from deciding patent law cases.

        1. 4.3.1.1

          The fact that you think the one has any impact on the other is rather sad.

          Either you really don’t understand the law involved, or you are purposefully getting a things wrong.

          Either way, your comment is more an indictment against you than it is against me.

  5. 3

    The problem is, virtually all areas of law involve making a call. Is a term deceptive? To some people, sure; others, no way. Disparaging–again, to some, yes, others, no. False connection? Same. Disrepute–matter of opinion. As is contempt. We can go down the line. If this standard does not apply, almost no limitation does. If this standard needs a list of approved/unapproved words, so does every standard.

    1. 3.1

      That’s not the problem.

      It is not an issue of “making a call” PER SE.

      Going down the line as you suggest does nothing but misconstrue the actual issue here.

      1. 3.1.1

        If this standard does not apply, almost no limitation does. If this standard needs a list of approved/unapproved words, so does every standard.

        What, pray tell, is the “actual issue” in your opinion?

        That’s a rhetorical question, of course. Your comment pretty much proves the point that Trademark Tim was making which is that just because opinions may differ at the margins doesn’t mean that a statute is incapable of fair interpretation.

    2. 3.2

      If this standard does not apply, almost no limitation does. If this standard needs a list of approved/unapproved words, so does every standard.

      Yup.

      Shades of subjectivity abound in the law and that’s just fine in nearly every instance. Certainly the statutory language here has worked acceptably for a long, long time, at least as far as most people are concerned.

      As Dennis has pointed out, this case isn’t about the government putting limits on “free speech”. It’s about the government putting limits on registering trademarks, where the trademarks exist solely as a means of avoiding consumer confusion. It’s the marks themselves that have the effect — necessarily — of regulating what others can do with their own products. By broadening the scope of marks that can be registered, the Court here is creating additional liability for the public and simultaneously sinking commercial discourse generally further into the gutter (assuming that’s even possible in 2019).

          1. 3.2.1.1.1

            In other words, you simply do not understand the legal concepts under discussion there.

            Not all that surprising, as you like to mouth “First Amendment” in some of your patent rants and have never even attempted to formulate a proper or cogent actual First Amendment argument.

            As typical for you – what you don’t understand you denigrate.

            Yet another Trump like attribute of yours.

      1. 3.2.2

        simultaneously sinking [ ] discourse generally further into the gutter (assuming that’s even possible in 2019).

        Coming from Malcolm, that’s stunningly stultifying.

        Clean up yourself before you attempt to get on a soapbox, eh?

      2. 3.2.3

        By broadening the scope of marks that can be registered, the Court here is creating additional liability for the public

        Another example of how flimsy your grasp of the legal issues involved here is, Malcolm.

        Your “warning” (of course, being merely “feeling” based and without any cogent legal connection) carries with it an EVEN LARGER concern for the REST of language that falls to protection under Trademark law and creates a MUCH MORE MASSIVE “additional liability” for the public.

        0 H N0es, how are we ever going to ‘escape’ that massive liability that SO MANY words are currently being “snapped” up in trademarks.

        The “h0rr0r” of such liability….

        1. 3.2.3.1

          Your “warning” (of course, being merely “feeling” based and without any cogent legal connection) carries with it an EVEN LARGER concern for the REST of language that falls to protection under Trademark law and creates a MUCH MORE MASSIVE “additional liability” for the public.

          Indeed. That’s why there are all kinds of other “subjective” rules in place which address those concerns. Should there be more such limitations? Absolutely.

          1. 3.2.3.1.1

            so… something about THESE words are different from all those other words?

            Your feelings are not alignment here.

  6. 2

    I think the correct statutory approach would be for Congress to make a list of prohibited words (and by extension their cognates). This would provide visibility to potential registrants, and any individual words on the list could be challenged in an Article III court for viewpoint discrimination in those instances where Congress may have overstepped. Or simply rule that the government may make no decision on the basis of the morality or extrinsic meaning of a word. But stay out of the messy middle.

    1. 2.1

      Your suggestion of challenging any particular words misses the legal point that the misstep is in the action of the list itself.

    2. 2.2

      The correct statutory approach will be for Congress to rescind the Lanham Act entirely. The federal government is not obliged to run a trademark registry. If the SCotUS tells Congress that they may only run a registry that registers slogans that trespass against the culture war sympathies of this or that year’s electoral majority, then it is only a matter of time before the electoral majority tears down the whole edifice of federal trademark registration.

  7. 1

    This should lead to a lower level of scrutiny than that faced in Tam v. Matal (2017).

    It is worth noting that the Tam case would still have been decided the same at the lower level of scrutiny — as noted in that case.

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