(Photo by Charley Gallay/Getty Images for RVCA)
“Fuct yeah!” went the screams of various court-watchers as the Supreme Court’s Iancu v. Brunetti decision hit the internet on Monday. The result will come as not much of a surprise to readers of this column and will bring cheer to those First Amendment maximalists who shiver when considering government restraint on speech.
The speech at issue here is a clothing company’s brand name, which comprises a word described during oral argument as “the equivalent of [the] past participle form of a well-known word of profanity.” This word, FUCT, had been denied trademark registration by certain language in the Lanham Act, language that has now been blown to bits by a Justice Kagan-penned opinion that was served up accompanied by a slew of in-part concurrences and dissents.
After the Supreme Court recently decided in Matal v. Tam that a Lanham Act prohibition against the registration of “disparaging” trademarks clashed with the First Amendment and was thus invalid, many believed that it wouldn’t be long before the Supremes closed the loop by striking down a similar prohibition against the registration of marks including “immoral” or “scandalous” or “immoral” material under §1052(a).
The FUCT mark was such a mark, as it was previously determined to have “decidedly negative sexual connotations” and found to be a “a total vulgar” under this Lanham Act section. Because the use of the mark’s homophone was often in the context of “misogyny, nihilism or violence,” it was found to be “highly offensive.” On these grounds, the FUCT mark’s trademark registration application was rejected by the Patent and Trademark Office, a decision that was upheld on appeal until it reached the Supreme Court.
There, the Court, referencing its Tam decision, conceded that they had not reached a consensus framework on whether the Lanham Act prohibitions were restrictions on free speech or conditions on a government benefit. But, they had adopted two premises to guide their consideration. First, if a trademark registration bar is “viewpoint-based,” it is unconstitutional. Second, the “disparagement” bar was viewpoint-based. So, the “core postulate” with which no justice disagreed was that “the government may not discriminate against speech based on the ideas or opinions it conveys.”
They followed those two premises and that core postulate to address the treatment of the FUCT mark. If the rejection of the FUCT mark was viewpoint-based and discriminated against free speech based on the ideas it conveys, that rejection would be reversed.
To get to the bottom of things, the Supremes mused etymological and rhetorical, asking, “When is expressive material ‘immoral’’’? Answering the question, they consult the dictionary and find that, according “to a standard definition,” a word is immoral when it is “inconsistent with rectitude, purity, or good morals; wicked; or vicious.”
The Court then concludes that the prohibition against immoral and scandalous marks is viewpoint-discriminatory because it allows registration of marks that accord with the viewpoint of purity or good morals or righteousness but denies registration to those marks that convey the opposite viewpoint.
This point is illustrated by a fantastic example of how the government uses the trademark registration process to push one viewpoint. The Court cites the PTO’s rejection of a number of marks that seemed to convey a drug-positive viewpoint: KO KANE and MARIJUANA COLA beverages, YOU CAN’T SPELL HEALTHCARE WITHOUT THC pain relief medication, and the slogan BONG HITS 4 JESUS. These are contrasted with the PTO’s approval of marks reflecting an anti-drug viewpoint, such as the one that branded a 1980s government education program and that you still see on the government’s (or at this point in time more likely a knock-off garmento’s) particularly distinctive t-shirts: D.A.R.E. TO RESIST DRUGS AND VIOLENCE and SAY NO TO DRUGS—REALITY IS THE BEST TRIP IN LIFE.
There is no way that this is not a viewpoint-based approach to what qualifies as a registrable U.S. trademark. The Court concludes that a prohibition against the registration of “immoral” or “scandalous” trademarks cannot stand in light of the Free Speech Clause of the First Amendment.
Justice Sonya Sotomayor pens a partial dissent, joined by Justice Breyer, that counts up all the worms that will be wiggling their way out of the can that the Supreme Court has just pried open. She notes that the court improperly collapses “immoral” with “scandalous” and opines that, given the location of the two words in the language of the text (separated, as they are, by the word “deceptive”), the language is susceptible to a reading that excises the doomed “immoral” clause and maintains the more Constitutional “scandalous” prohibition. Doing so would protect children and those who experience a visceral reaction upon hearing certain words, she states, and that would outweigh any free speech issues.
It would appear from her dissent and the position taken by Justice Alito in a separate opinion, that a rewrite of the statute to prohibit the registration of only “scandalous” trademarks would stand a fighting chance before the Court. But, for now, the PTO will be forced to register just about any mark thrown its way, regardless of content and assuming it is not generic or confusingly similar to an already registered mark. If the PTO has a swear jar, in other words, prepare for that thing to fill up mighty fast.
Scott Alan Burroughs, Esq. practices with Doniger / Burroughs, an art law firm based in Venice, California. He represents artists and content creators of all stripes and writes and speaks regularly on copyright issues. He can be reached at scott@copyrightLA.com, and you can follow his law firm on Instagram: @veniceartlaw.