Supremes Say 'FUCT' Okay To Trademark

WASHINGTON, D.C.—In a landmark decision announced today, the U.S. Supreme Court, in the case of Iancu v. Brunetti, has eliminated the restrictions in the Lanham Act that would eliminate "scandalous" or "immoral" words and images from the prohibition in federal law on terms/images eligible to receive trademark status. The case was filed in 2018 in the wake of the high court's 2017 decision in Matal v. Tam, which struck down the prohibition against "disparaging" marks, thus allowing the band The Slants, which name the U.S. Patent and Trademark Office (USPTO) had ruled was disparaging to Asians, to trademark its name. A similar logic regarding the Lanham Act's conflict with the First Amendment also forms the basis for the court's most recent decision. The high court's decision, which was unanimous (though with some partial dissents) and delivered by Justice Elena Kagan, an Obama appointee, delved right into the name's controversy. "Respondent Erik Brunetti is an artist and entrepreneur who founded a clothing line that uses the trademark FUCT," Kagan notes in the second paragraph of the opinion's summary. "According to Brunetti, the mark (which functions as the clothing’s brand name) is pronounced as four letters, one after the other: F-U-C-T. But you might read it differently and, if so, you would hardly be alone," noting that in oral argument, one of the participants described the brand name as “the equivalent of [the] past participle form of a well-known word of profanity.” "Both a PTO examining attorney and the PTO’s Trademark Trial and Appeal Board decided that Brunetti’s mark flunked that test," she later adds. "The attorney determined that FUCT was 'a total vulgar' and 'therefore[] unregistrable.' On review, the Board stated that the mark was 'highly offensive' and 'vulgar,' and that it had 'decidedly negative sexual connotations.' As part of its review, the Board also considered evidence of how Brunetti used the mark. It found that Brunetti’s website and products contained imagery, near the mark, of 'extreme nihilism' and 'anti-social' behavior." (Citations omitted here and below.) Only one problem with that analysis (and the Lanham Act itself): There's nothing in the First Amendment that excludes sexual or "vulgar" terms or even "profanity" from constitutional protection—as the Court had previously found in Tam. "[In Tam], the eight-Justice Court divided evenly between two opinions and could not agree on the overall framework for deciding the case. (In particular, no majority emerged to resolve whether a Lanham Act bar is a condition on a government benefit or a simple restriction on speech.)" Kagan's opinion states. "But all the Justices agreed on two propositions. First, if a trademark registration bar is viewpoint-based, it is unconstitutional. And second, the disparagement bar was viewpoint-based. The Justices thus found common ground in a core postulate of free speech law: The government may not discriminate against speech based on the ideas or opinions it conveys." And, as the opinion notes, it's not as if the USPTO has been consistent as to which marks it accepts or rejects. "The PTO rejected marks conveying approval of drug use (YOU CAN’T SPELL HEALTHCARE WITHOUT THC for pain-relief medication, MARIJUANA COLA and KO KANE for beverages) because it is scandalous to 'inappropriately glamoriz[e] drug abuse.' But at the same time, the PTO registered marks with such sayings as D.A.R.E. TO RESIST DRUGS AND VIOLENCE and SAY NO TO DRUGS—REALITY IS THE BEST TRIP IN LIFE,' the opinion recounts. "Similarly, the PTO disapproved registration for the mark BONG HITS 4 JESUS because it 'suggests that people should engage in an illegal activity [in connection with] worship' and because 'Christians would be morally outraged by a statement that connects Jesus Christ with illegal drug use.' And the PTO refused to register trademarks associating religious references with products (AGNUS DEI for safes and MADONNA for wine) because they would be 'offensive to most individuals of the Christian faith' and 'shocking to the sense of propriety.' But once again, the PTO approved marks—PRAISE THE LORD for a game and JESUS DIED FOR YOU on clothing—whose message suggested religious faith rather than blasphemy or irreverence." Several other similar examples are cited—but they seemed to serve only as cautionary nodes for a couple of the Court's more liberal justices. "The Court’s decision today will beget unfortunate results," opines Justice Sonia Sotomayor. "With the Lanham Act’s scandalous-marks provision struck down as unconstitutional viewpoint discrimination, the Government will have no statutory basis to refuse (and thus no choice but to begin) registering marks containing the most vulgar, profane, or obscene words and images imaginable. "The coming rush to register such trademarks—and the Government’s immediate powerlessness to say no—is eminently avoidable," she continues. "Rather than read the relevant text as the majority does, it is equally possible to read that provision’s bar on the registration of 'scandalous' marks to address only obscenity, vulgarity, and profanity. Such a narrowing construction would save that duly enacted legislative text by rendering it a reasonable, viewpoint-neutral restriction on speech that is permissible in the context of a beneficial governmental initiative like the trademark-registration system. I would apply that narrowing construction to the term 'scandalous' and accordingly reject petitioner Erik Brunetti’s facial challenge." Unfortunately for Justice Sotomayor, that proposed exemption flies in the face of the majority ruling, though it apparently leaves the door open for Congress to attempt to redefine what terms are unacceptable—but would still leave it up to the USPTO to interpret that new rule. Justice Steven Breyer, in his own affirmation/dissent, agrees with Justice Sotomayor, in part for different reason: Although the Tam decision is now the law of the land, Breyer reaches back to a 1973 obscenity case, U.S. v. 12 200-ft. Reels Of Super 8MM. Film, to argue that the current decision seems to violate Supreme Court precedent in that the Court should refrain from finding statutes unconstitutional if there's a way to interpret them as not so. "After all, these rules are not absolute," he writes. "The First Amendment is not the Tax Code. Indeed, even when we consider a regulation that is ostensibly 'viewpoint discriminatory' or that is subject to 'strict scrutiny,' we sometimes find the regulation to be constitutional after weighing the competing interests involved." "How much harm to First Amendment interests does a bar on registering highly vulgar or obscene trademarks work? Not much," he later adds. "The statute leaves businesses free to use highly vulgar or obscene words on their products, and even to use such words directly next to other registered marks. Indeed, a business owner might even use a vulgar word as a trademark, provided that he or she is willing to forgo the benefits of registration." One problem there: The inability to register the mark prevents (or at least highly restricts) a company's ability to sue for trademark violation. However, Breyer is all for Sotomayor's proposed restriction on marks that are "vulgar" (as FUCT was claimed to be), obscene or profane, suggesting that the government should not have to be "associated" with such marks through the trademark process. Moreover, "These attention-grabbing words, though financially valuable to some businesses that seek to attract interest in their products, threaten to distract consumers and disrupt commerce," he claims. "And they may lead to the creation of public spaces that many will find repellant, perhaps on occasion creating the risk of verbal altercations or even physical confrontations... These attention-grabbing words, though financially valuable to some businesses that seek to attract interest in their products, threaten to distract consumers and disrupt commerce. And they may lead to the creation of public spaces that many will find repellant, perhaps on occasion creating the risk of verbal altercations or even physical confrontations." Unfortunately for him, the First Amendment wasn't created to protect children from seeing "bad" words. Interestingly, two of the Court's conservatives concurred with the overall decision, using some unexpectedly liberal language. "Viewpoint discrimination is poison to a free society," declares Justice Samuel Alito. "But in many countries with constitutions or legal traditions that claim to protect freedom of speech, serious viewpoint discrimination is now tolerated, and such discrimination has become increasingly prevalent in this country. At a time when free speech is under attack, it is especially important for this Court to remain firm on the principle that the First Amendment does not tolerate viewpoint discrimination. We reaffirm that principle today. "Our decision is not based on moral relativism but on the recognition that a law banning speech deemed by government officials to be 'immoral' or 'scandalous' can easily be exploited for illegitimate ends," he adds, though cautioning, "Our decision does not prevent Congress from 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." Chief Justice Roberts takes that caveat one step further, noting, "The Government urges, however, that the provision can be given a narrowing construction—it can be understood to cover only marks that offend because of their mode of expression. The Court rejects that proposal on the ground that it would in effect rewrite the statute. I agree with the majority that the 'immoral' portion of the provision is not susceptible of a narrowing construction that would eliminate its viewpoint bias. As JUSTICE SOTOMAYOR explains, however, the 'scandalous' portion of the provision is susceptible of such a narrowing construction. Standing alone, the term 'scandalous' need not be understood to reach marks that offend because of the ideas they convey; it can be read more narrowly to bar only marks that offend because of their mode of expression—marks that are obscene, vulgar, or profane. That is how the PTO now understands the term, in light of our decision in Matal v. Tam... I also agree that, regardless of how exactly the trademark registration system is best conceived under our precedents—a question we left open in Tam—refusing registration to obscene, vulgar, or profane marks does not offend the First Amendment." Interestingly, Simon Tam himself had some thoughts on the new decision. "Today, the Supreme Court finished the work that they started with my case, Matal v. Tam, affirming that the government has no place in discriminating against the views of its citizens and that democracy is strengthened with freedom of expression. I've always believed that the battles around language shouldn’t be waged at the Trademark Office, decided by those who have no connections to the people actually affected. Those skirmishes lead to arbitrary, inconsistent results and slowly chip away at the dignity and agency of people to decide appropriateness on our words. I am thrilled to see that the Supreme Court agreed and further protected Americans from government overreach in one of the most fundamental rights we have as citizens." Top First Amendment attorney Lawrence G. Walters had some similar thoughts from an adult industry perspective. "This case represents a watershed moment in trademark law," he told AVN in an emailed statement. "For decades, the USPTO has rejected trademark applications that it deemed 'immoral' or 'scandalous.' The decisions were often arbitrary and based on the viewpoint of the applicant. Today’s decision puts an end to that unconstitutional practice. Adult industry businesses will now be able to pursue registration of their brand names, without fear of rejection because of the sexually-oriented nature of their business. Moving forward, adult companies will be able to enjoy the same rights as other businesses with more mainstream brand names. "Fortunately, the Court did not give in to the temptation offered by the Government to narrow the scope of the law’s prohibition to marks that were vulgar, lewd, sexually explicit, or profane. Such a ruling would have allowed the USPTO to continue discriminating against adult businesses based on their viewpoint," he added.  "Justice Alito made a particularly apt observation in his concurring opinion: 'At a time when free speech is under attack, it is especially important for this Court to remain firm on the principle that the First Amendment does not tolerate viewpoint discrimination.' This is an encouraging sign from the Court, and the decision provides hope for an industry that has been attacked on multiple fronts for years." However, exactly how this decision, especially with the caveats from both liberal and conservative justices, will affect adult companies' attempts to trademark some of their more commonly used supposedly "scandalous" terms is not yet known—but there's little doubt that some so-called "scandalous" trademarks will attempt to be registered in the near future. The full Supreme Court decision in Iancu v. Brunetti may be read here.