In a major win for free speech advocates, on Monday, June 24, 2019, the United States Supreme Court ruled that a federal statutory ban on the trademarking of words and symbols that are “immoral” or “scandalous” violates the First Amendment.
Erik Brunetti of Los Angeles, a fashion designer for the streetwear brand “FUCT,” brought suit after being denied registration of the mark “F-U-C-T.” Brunetti applied for registration of the mark in 2011, but an examining attorney of the United Stated Patent and Trademark Office refused registration on the grounds that the phonetically profane term was too “highly offensive” and too “vulgar.” Brunetti appealed to the Trademark Trial and Appeal Board (the “TTAB”), but to no avail, as the TTAB affirmed the registration refusal. Brunetti took his case to the Court of Appeals for the Federal Circuit and sought a facial Constitutional challenge to the Lanham Act’s ban on “immoral or scandalous” marks; the appeals court held that the ban violated the First Amendment, and the Supreme Court granted cert.
In a rare bipartisan ruling, Justice Elena Kagan wrote for the majority, and in a 6-3 decision, was joined by Ruth Bader Ginsburg, Samuel Alito, Neil Gorsuch, Brett Kavanaugh, and Clarence Thomas. Justice Alito added a brief concurrence, and justices Sotomayor, Roberts, and Breyer each concurred in part and dissented in part.
Lanham Act § 1052(a)
The section of the Lanham Act at issue in Brunetti provides in relevant part: “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it –
- Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . . .”
Brunetti challenged the constitutionality of the bolded language of subsection (a) in a highly anticipated follow-up to a recent challenge to the language that immediately follows.
Unconstitutional Ban in Tam
Just two years ago in Matal v. Tam, the Supreme Court was faced with ruling on the constitutionality of a similar ban in § 1052(a) of the Lanham Act – the registration of trademarks that “disparage” a person or group of people. The Court ruled then that the ban on the registration of “disparaging” marks, which was deemed a “viewpoint based” ban, violated the First Amendment by restricting free speech. Justice Anthony Kennedy held that the disparagement bar was the “essence of viewpoint discrimination” which is presumptively unconstitutional. Tam’s decision was also a closely watched victory for the Redskins, whose registration had been canceled by the USPTO on the same ground, and whose case had been wending its way through the court system as well.
Due to Tam’s ruling, the Brunetti case has been closely analyzed in comparison. Justice Kagan’s opinion held that a ban on “immoral” or “scandalous” marks was just as unconstitutional as the ban on “disparaging” marks, in that barring marks that may offend a person or people discriminates on the basis of viewpoint, and thus “collides with our First Amendment doctrine.” Justice Kagan clarified that “the statute, on its face, distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them; those including societal nods of approval and those provoking offense and condemnation. The statute favors the former, and disfavors the latter.” This, Justice Kagan continues, is “facial viewpoint bias in the law” which “results in viewpoint-discriminatory application.”
No Re-writing of the Law to Make it Constitutional
Justice Kagan noted that the federal government could not genuinely claim that the “immoral or scandalous” bar is viewpoint-neutral, as it conceded that the “Lanham Act’s language, on its face, disfavors some ideas.” The government proposed a limiting construction of the statute to ban “marks that are offensive [or] shocking to a substantial segment of the public because of their mode of expression, independent of any views that they may express.” However, the Court pointed to the statutory language, noting that the ban goes further than what the government proposed. Quoting United States v. Stevens, Justice Kagan declined to entertain the government’s proposal, reminding the government that “[w]e will not rewrite a law to conform it to constitutional requirements.” Justice Alito, in his concurrence, added that the justices “are not legislators and cannot substitute a new statute for the one now in force.”
Accordingly, the “immoral or scandalous” bar of § 1052(a) has been deemed substantially overbroad and the Supreme Court affirmed the Court of Appeals’ ruling.
Concurrences and Dissents
While Justices Sotomayor, Breyer, and Roberts concurred with the majority on the unconstitutionality of banning “immoral” marks, in their dissents, they partially agreed with the government’s proposal of providing a limiting construction for “scandalous” marks. According to Justice Sotomayor, the term “scandalous” is ambiguous and can be read either broadly or narrowly, and in order to save that language from unconstitutionality, a limiting construction for “modes of expression” may be appropriate. Justice Breyer, agreeing with Justice Sotomayor, stated that the Supreme Court’s speech-related categories should be treated as rules of thumb, and instead of focusing on categorization, one should ask: “does [the prohibition on registering ‘scandalous’ marks] wor[k] harm to First Amendment interests that is disproportionate in light of the relevant regulatory objectives?” Using that analysis, Justice Breyer answered his own question in the negative. Justice Roberts went as far in his dissent to say that refusing trademark registration of “scandalous” marks does not restrict speech or punish anyone because trademark owners would still be able to use their marks in commerce.
While the majority opinion in Brunetti does away with the “scandalous marks” provision of § 1052(a) of the Lanham Act, the three dissenting opinions may provide a roadmap for Congress to amend the Lanham Act to deal with the issue of trademarking “scandalous” marks in a narrower way that the current Supreme Court may tolerate. Should Congress decide to act, it is possible that we may see a crop of cases dealing with the intersection of free speech and trademark rights. But for now, “those provoking offense and condemnation” have the freedom to express that angst (albeit in a commercial way) despite potential profanity – a result consistent with long-established First Amendment principles.