SCOTUS Watch: Bar on Immoral and Scandalous Marks Violates First Amendment

1st amendment scotus watch section 2(a) trademark
Source: FUCT™, soon to be FUCT®

On June 24, 2019, the U.S. Supreme Court handed down Iancu v. Brunetti,[1] dealing with the Lanham Act’s Section 2(a) bars to trademark registration’s collision against the First Amendment brick wall; the Justices in a 6-3 vote struck down the immoral and scandalous clause of §2(a) in a somewhat mixed-up and divided Court.  Brunetti is consistent with the Court’s decision from its 2016 term in Matal v. Tam,[2] striking down §2(a)’s disparagement clause as unconstitutional for also violating the First Amendment.

The case stems from fashion designer Erik Brunetti’s trademark application for the mark FUCT for clothing and accessories (Class 25, among others), for which the USPTO promptly refused to register due to the §2(a) registration bar.  Brunetti appealed, and the Fed Circuit overturned the USPTO.  The USPTO appealed for writ of certiorari, which was granted.  The Supreme Court affirmed the Fed Circuit’s judgment.

Justice Kagan wrote for the Court.  She begins her opinion with:

Two Terms ago, in Matal v. Tam, this Court invalidated the Lanham Act’s bar on the registration of “disparaging” trademarks.  15 U.S.C. §1052(a).  Although split between two non-majority opinions, all Members of the Court agreed that the provision violated the First Amendment because it discriminated on the basis of viewpoint.  Today we consider a First Amendment challenge to a neighboring provision of the Act, prohibiting the registration of “immoral or scandalous” trademarks.  We hold that this provision infringes the First Amendment for the same reason: It too disfavors certain ideas.

She makes heavy citation to the Tam case throughout her opinion.  She noted that two Tam precedents were created, in spite of the divided Court opinion in that case.  First, a bar on trademark registration that is viewpoint-based is unconstitutional.  Second, the disparagement clause was viewpoint-based.  Using this as her starting point, she noted that “immoral” was defined as “inconsistent with rectitude, purity, or good morals,” and “wicked or vicious.”  “Scandalous” “excited reprobation,” “called out condemnation,” was “shocking to the sense of truth, decency, or propriety,” “disgraceful,” “offensive,” and “disreputable.”  She continued to note that the USPTO’s inconsistent registration of marks deemed either immoral or scandalous seemed to point to a viewpoint-based discrimination of free speech.  For example, the USPTO refused registration for marks YOU CAN’T SPELL HEALTHCARE WITHOUT THC and KO KANE because these marks “glamorized drug abuse.”  However, the USPTO concurrently registered marks D.A.R.E. TO RESIST DRUGS AND VIOLENCE and SAY NO TO DRUGS – REALITY IS THE BEST TRIP IN LIFE, which reference a disapproval of drug use.  Both refer to a viewpoint-based belief of drug use.  Therefore, §2(a) was viewpoint-based discrimination of free speech.

She concluded:

[I]n any event the “immoral and scandalous” bar is substantially overbroad.  There are a great many immoral and scandalous ideas in the world (even more than there are swear words), and the Lanham Act covers them all.  It therefore violates the First Amendment.

Justice Alito concurred, noting that a more carefully constructed statute prohibiting vulgar marks from registration could pass muster.  He wrote:

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.  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.  The particular mark in question in this case could be denied registration 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.  The registration of such marks serves only to further coarsen our popular culture.  But we are not legislators and cannot substitute a new statute for the one now in force.

Justice Kagan was joined in her majority opinion by Justices Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh.  The remaining members of the Court agreed only insofar as that the immoral prong of the clause was unconstitutionally overbroad, thus violating the First Amendment.  However, they dissented on the reading of the scandalous prong of the statute.  All of the dissenters agreed that §2(a) should be narrowly read to bar speech based on the mode of expression that is obscene, vulgar, or profane – all which are deemed constitutionally unprotected by the First Amendment.  Chief Justice Roberts in his dissent wrote:

Whether such marks can be registered does not affect the extent to which their owners may use them in commerce to identify goods.  No speech is being restricted; no one is being punished.  The owners of such marks are merely denied certain additional benefits associated with federal trademark registration.  The Government, meanwhile, has an interest in not associating itself with trademarks whose content is obscene, vulgar, or profane.  The First Amendment protects the freedom of speech; it does not require the Government to give aid and comfort to those using obscene, vulgar, or profane modes of expression.  For those reasons, I concur in part and dissent in part.

Justice Breyer, in dissent, focused not on the viewpoint-based vs. viewpoint-neutral, or any other categorization, but rather on looser rules of thumb to guide First Amendment analysis.  He would focus the analytical response as a balancing act on whether the government regulation that implicates the First Amendment is disproportionate given the relevant regulatory response.  Here, he opined:

How much harm to First Amendment interests does a bar on registering highly vulgar or obscene trademarks work?  Not much.  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.

He further opined that:

The Government has at least a reasonable interest in ensuring that it is not involved in promoting highly vulgar or obscene speech, and that it will not be associated with such speech.

He made this observation specifically toward constitutionally unprotected speech, i.e., offensive, obscene, or vulgar speech, that may harm certain segments of society, i.e., children, in which the government has an interest in protecting against the registration of marks that may harm this particular segment of society.

Justice Sotomayor also dissented, and was partially joined by Justice Breyer.  She agreed that the “immoral” prong of §2(a) was unconstitutionally impermissible, but disagreed, along with Chief Justice Roberts and Justice Breyer, that the “scandalous” prong of §2(a) could be construed constitutionally permissible without violating the First Amendment.  She differs from both the Chief Justice and Justice Breyer here, and wrote:

The word “scandalous” on its own, then, is ambiguous: It can be read broadly (to cover both offensive ideas and offensive manners of expressing ideas), or it can be read narrowly (to cover only offensive modes of expression).  That alone raises the possibility that a limiting construction might be appropriate.

She noted that the Tam decision focused on the Congressional intent to prevent marks from registration that disparaged a particular group or person.  Here, in Brunetti, interpreting Congressional intent as to the scandalous prong of §2(a) was more vague:

Congress meant for “scandalous” to target a third and distinct type of offensiveness: offensiveness in the mode of communication rather than the idea.  The other two words cover marks that are offensive because of the ideas they express; the “scandalous” clause covers marks that are offensive because of the mode of expression, apart from any particular message or idea.

Here, she criticized the majority for grouping both immoral speech and scandalous speech together, and finding both incompatible with the First Amendment.  Rather, she believed that each prong should occupy separate treatments of analysis – “immoral” covers marks that are offensive because of transgressions of “social norms,” and “scandalous” covers marks that are offensive because “of the mode in which they are expressed.”  Targeting only a limited aspect of the speech prohibited was consistent with both Congressional intent and Court precedent:

Registration, in short, is a helpful system, but it is one that the Government is under no obligation to establish and that is collateral to the existence and use of trademarks themselves.  There is no evidence that speech or commerce would be endangered if the Government were not to provide it at all.

She concluded that:

Prohibiting the registration of obscene, profane, or vulgar marks qualifies as reasonable, viewpoint-neutral, content-based regulation . . . . [T]he Court ought to adopt the narrower construction, rather than permit a rush to register trademarks for even the most viscerally offensive words and images that one can imagine.

The divisions in the Court’s opinions outline the difficulties in interpreting §2(a), and specifically as applied to trademark applications.  The dissents raise very strong arguments that there is a Government interest in protecting some members of society from certain unprotected, offensive speech, and construing §2(a) narrowly to effect that end.  This might be the most prudent decision, given the polarizing nature of contemporary speech.  However, the majority found otherwise, and it means there will be a floodgate of speech, arguably unprotected speech under normal circumstances, but would have safe haven under the Lanham Act in registration of trademarks and service marks used in commerce.  In this respect, Brunetti, à la Tam, may actually create more constitutional questions rather than answer them.

[1] 588 U.S.___ (2019), aff’g 877 F.3d 1330 (Fed. Cir. 2018).

[2] 582 U.S.___, 137 S. Ct. 1744 (2017), aff’g 808 F.3d 1321 (Fed. Cir. 2016).


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