The Brunetti Case
The United States Supreme Court decision in Iancu v. Brunetti issued June 24, 2019 held that the Lanham Act provision barring federal registration of immoral and scandalous marks violated the First Amendment. The majority opinion, by an odd fellows grouping of justices (Kagan, Thomas, Ginsburg, Alito, Gorsuch and Kavanaugh) explained that this part of Section 2(a) of the Lanham Act was as repugnant to First Amendment values as was the disparagement clause of the same provision, found unconstitutional in Matal v. Tam just two terms ago. (J. Gorsuch had been seated on the High Court a few months earlier but took no part in the Tam decision, while J. Kavanaugh had not yet been appointed when Tam was considered.) The central tenet of the majority opinion in Brunetti is that a bar on registering marks that a substantial composite of the general public would find offensive or shocking is a form of viewpoint-based discrimination against content. (“Immoral and scandalous” had been treated by the USPTO as a “unitary term” with no separate meaning for each part of the statutory language.) Because trademarks can be words, names, symbols and images that express ideas, they are treated as expressive forms of speech subject to First Amendment protections. The Justices turned to leading dictionaries to see what “immoral” and “scandalous” mean and concluded that the Lanham Act language at issue bars registration of marks whose messages “defy society’s sense of decency or propriety,” but allows registration of marks that align with “conventional moral standards.” Such uneven treatment of ideas expressed by means of trademarks amounted to viewpoint-based content discrimination.
Obvious inconsistent application by the USPTO of Section 2(a) over the years contributed to the Justices’ discomfort with the language of Section 2(a). According to the record below, the USPTO had refused registration for marks that conveyed approval of drug use [e.g., KO KANE and MARIJUANA COLA] and those that denigrated religious symbols [BONG HITS 4 JESUS] or seemed to praise terrorists [BABY AL QAEDA], but allowed registration of some marks that praised religious practice [PRAISE THE LORD] or fighting terrorism [WAR ON TERROR MEMORIAL]. That the marks refused registration were deemed offensive to many Americans was not a permissible ground to bar their registration when viewed through the prism of the First Amendment and prior jurisprudence on viewpoint-based content discrimination, according to the majority opinion.
The mark at issue in the recent case was F.U.C.T. as used for clothing, belonging to Erik Brunetti of California. The majority accepted that the mark was a proxy for a common vulgar term, but they also seemed convinced that use of the term conveyed a viewpoint. However, it was unclear in all the briefs and writings exactly what viewpoint was understood to be expressed by this mark, other than perhaps an attitude of vulgarity or general rebelliousness. The Court dismissed the Government’s rather awkwardly articulated argument that what was offensive about the mark was its mode of expression, rather than the content of the mark. The Government had argued that the Court could salvage the “scandalous” prohibition of Section 2(a) by construing it to refer only to “lewd, sexually explicit or profane marks,” an approach that might have rendered the language of Section 2(a) viewpoint-neutral. But the majority declined to “rewrite” the statute, despite ample prior Supreme Court guidance about how to avoid findings of unconstitutionality by limiting the construction of a statute.
Opening the Floodgates?
It’s clear that the prospect of permitting federal registration of vulgar and obscene marks troubled several of the Justices. The Brunetti oral hearing in the spring at the Supreme Court had been telling. No lawyer or Justice dared speak aloud the mark at issue. Their reluctance and circumlocutions alone might have indicated to observers that the mark was not fit for the courtroom, let alone for tender ears, the airwaves, or the national marketplace with the imprimatur of a ®. And hovering in the background, without express mention, was the prospect that if this portion of Section 2(a) were struck down, the “N Word” might be registrable for any number of products. Under the majority opinion, that is now a possible and disquieting scenario.
Justice Alito suggested in his brief concurrence that Congress might easily fix our discomfort by adopting a “more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.” A seven dirty words approach to the Lanham Act? (He declined to sketch out how such a list of marks might be generated.) In a lengthier dissent, J. Breyer chastised the majority for relying on hard and fast categorizations like “viewpoint-based content discrimination” and urged that the question be re-framed to ask whether a regulation like the ban on registering immoral and scandalous marks works “speech-related harm” that is “out of proportion to its justification.” In other words, does refusing to register F.U.C.T. limit speech in such a way that is not proportionate with the justification to avoid conferring registration (something akin to a government benefit) on a term that the public finds truly vulgar? Rather brilliantly, J. Breyer brought to bear current research about the effect of profanity on the brain and admonished that sexually explicit language, race-based epithets, and vulgarities originate in a different part of the brain than do words. Perhaps, he seemed to suggest, they are not communication or speech at all, at least not the same kind of speech that is worthy of Constitutional protection.
Is there a Way Out?
Drawing on Supreme Court precedent in the field of obscenity and harmful and threatening speech, J. Sotomayor provided an analytic framework in her dissent for an approach that would prohibit registration of obscene, profane or vulgar marks as reasonable, viewpoint-neutral, content-based regulations while striking down the ban in Section 2(a) on registering immoral marks. J. Breyer supported this approach but the majority was having none of it. They objected that this kind of dicing of statutes has never been applied in cases dealing with viewpoint discrimination. Moreover, it ruled that the entire provision at issue was substantially overbroad, thereby violating the First Amendment.
Despite laying out a possible roadmap for Congress, J. Sotomayor (as well as J. Breyer and J. Alito) dodged the process question of how to define the obscene, profane and vulgar marks that would be barred if Congress were to take up their approach. Obscenity has traditionally been judged against prevailing community standards. Assuming Congress followed J. Alito’s suggestion and enacted a narrow Section 2(a) barring registration of obscene, profane and vulgar marks, would such language withstand Constitutional muster under the present Court perhaps with a twist of Breyer-esque analysis of emotion vs. thought? Would the USPTO know obscenity when it sees it? Might we need a group of expert consultants to advise every 5 or 10 years on the most obscene, profane and vulgar words and images in our language, a kind of Academy of Unmentionables? Could representatives of a nation as diverse and fractured as the USA agree on a set of terms that repulse us all and thereby wind up uniting us? It could be a worthwhile and instructive exercise.
Coming up Next
In our next installment, we will look at how the European Union has dealt with registration of immoral marks and marks deemed contrary to public policy. We might learn something about how other societies deal with a vexing issue in free speech and commerce.