by Dennis Crouch
Trademark rights have long held substantial sway and power in courts and among administrators who are often required by regulations to respect trademark rights. This case – expanding the scope of rights to include immoral and scandalous content – is likely to undermine and begin an erosion of those protections.
Iancu v. Brunetti (2019)
In an interesting free speech opinion, the Supreme Court has sided against Congress and the USPTO — finding the statutory prohibitions on registering immoral or scandalous trademarks to be an unconstitutional limit on free speech. The decision here follows Matal v. Tam (2017) where the court similarly held unconstitutional a parallel provision restricting disparaging marks.
Justice Kagan wrote the 6-person majority opinion that was joined by Justices Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh. The remaining justices agreed that the First Amendment requires the government to register immoral marks, but argued that at least some scandalous marks can be properly prohibited. In the minority viewpoint, the court should have narrowly construed that aspect of the statute to a Constitutional scope while retaining some of its effectiveness.
This case involves the mark “FUCT” that Brunetti has been using for many years in association with his product line for wealthy rebellious skaters. However, when he decided to register the mark, the PTO rejected his application as directed toward immoral or scandalous matter as required by the Lanham Act. Brunetti appealed.
The big question in the case was whether the court would see these restrictions as viewpoint based — they did. The court explains:
So the key question becomes: Is the “immoral or scandalous” criterion in the Lanham Act viewpoint-neutral or viewpoint-based?
It is viewpoint-based. . . . [T]he Lanham Act permits registration of marks that champion society’s sense of rectitude and morality, but not marks that denigrate those concepts. . . . [T]he Lanham Act allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety. Put the pair of overlapping terms together and the statute, on its face, distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them; those inducing societal nods of approval and those provoking offense and condemnation.
Once the limitation is defined as viewpoint based, the result was easy for the court — invalid as unconstitutional.
The decision here did not resolve the open question in Tam: whether the Lanham Act registration bars are (1) conditions on a government benefit or instead (2) simply restrictions on speech.
Although not fully stated, I expect that a slight majority of the justices would agree with Justice Alito’s concurring opinion that Congress could adopt “a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.” Alito goes on to suggest that the particular mark here – FUCT – could be barred under such a statute. “The term suggested by that mark is not needed to express any idea and, in fact, as commonly used today, generally signifies nothing except emotion and a severely limited vocabulary.” Chief Justice Roberts further explained: “The First Amendment protects the freedom of speech; it does not require the Government to give aid and comfort to those using obscene, vulgar, and profane modes of expression.”
I have to admit difficulty in working through the fundamentals of this case — how does a limit on registering a mark equate with a limit on speech? The majority opinion entirely skipped this debate because it was covered in Tam – although tersely and incompletely. Justice Breyer did a nice job of explaining the problem that free speech analysis has become intensely category-based , and that “the trademark statute does not clearly fit within any of the existing outcome-determinative categories. Why, then, should we rigidly adhere to these categories?”