By Gordon Hull
The Supreme Court just granted cert in an important trademark case, in re Brunetti. The case concerns whether Eric Brunetti can get federal trademark registration for his FUCT line of clothing. Although Brunetti can of course market the clothing in any case, and can claim common law trademark rights, federal registration confers a number of benefits, especially if the owner ends up litigating the mark. A little background.
Section 2 of the Lanham Act specifies a few things that are not eligible for registration, such as official insignia of governmental entities and the identifying name, signature or portrait of a living person without their consent. The statute also prohibits registration of a mark which:
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 (15 USC 1052(a)).
In denying registration to scandalous or disparaging material, the Lanham Act seems to be generally biopolitical in that it is concerned with optimizing the population: independently of its viability in commerce, putting governmental imprimatur on a scandalous or disparaging mark is viewed as bad for the polity. In the case of disparaging marks, the idea is that the use of the mark would be damaging to those targeted by the mark in question. The First Amendment means that the government cannot stop such use, but it is also not required to reward the use with the benefits of trademark registration, and so the policy explicitly values a vision of civil discourse over commercial benefit.
Various marks were denied registration under the disparagement clause, including both those that repeat slurs assumed to disparage others (the NFL’s Washington “Redskins”) and those where members of targeted groups intend to reappropriate the terms, as in “Dykes on Bikes.” In Matal v. Tam (2017), the Supreme Court ruled on First Amendment grounds that the government did not have the right to refuse registration to disparaging marks. The case pitted Simon Tam, an Asian-American who wanted to register the name of his band – the “Slants” – in order to reclaim a racial slur, against the PTO, which argued that the term disparaged Asian-Americans, many of whom would find it offensive. After the decision, Tam got his band name and the Redskins got their registration back.
Citing the Tam decision, the Federal Circuit ruled at the end of 2017 in Brunetti that the ban on scandalous marks also violated the First Amendment.
Now the Supreme Court has taken up the Brunetti case. The two main parts of Justice Alito’s opinion for the Court in Tam were that the regulation was viewpoint discriminiation, that First Amendment protects speech that offends, and that the proposed regulation was far too broad a restriction on speech to serve the end of protecting the orderly flow of commerce. In a concurrence, Justice Kennedy (joined by Ginsburg, Sotomayor and Kagan) doubled down on the opinion’s argument that the regulation was a clear case of viewpoint discrimination, since the government disfavored speech it deemed disparaging. The concurrence thought this point was strong enough that no further analysis was necessary.
So there’s a whole bunch of First Amendment arguments that all or several justices agree with. The decision was unanimous; nobody sided with the government (Gorsuch didn’t participate, but he’s sufficiently libertarian that I can’t imagine he’d have done so. As for Kavanaugh? Who knows. He says vulgar and scandalous things, though). Which leads to an obvious question: why is the Court agreeing to hear Brunetti? At least four justices have to vote to hear the case, which means they think there’s something to discuss.
One question presented in the petition to the Court is whether the scandalous clause directly violates the First Amendment. I have some difficulty in applying the Court’s reasoning in Tam to the Brunetti case and thinking it does not. Protection for speech that offends? Yep – and scandalous speech is probably even less offensive than disparaging speech. Necessary for the orderly flow of commerce? Not a chance. Viewpoint discrimination? I guess you could argue that the statute doesn’t take sides between kinds of scandalous speech, but then you’d have to explain why that mattered more than the discrimination between milquetoast and scandalous speech. The Circuit Court opinion substantiates this hunch in great detail.
The PTO decided that FUCT was the past tense of a vulgar word, and so was itself vulgar. Brunetti went appealed to the PTO’s review board, which affirmed the argument of the initial examiner. They also did a little online research:
“Based on the examining attorney’s Google Images search results, the Board stated Mr. Brunetti used the mark in the context of “strong, and often explicit, sexual imagery that objectifies women and offers degrading examples of extreme misogyny,” with a theme “of extreme nihilism—displaying an unending succession of anti-social imagery of executions, despair, violent and bloody scenes including dismemberment, hellacious or apocalyptic events, and dozens of examples of other imagery lacking in taste.”
Ok. The Federal Circuit said that Brunetti’s claim that the mark was not vulgar was “without merit.” They also agreed that the statute’s language could be interpreted to ban “vulgar” marks. But. The government suggested that the ban on scandalous material was viewpoint neutral. The Circuit Court argues that they need not reach the question of viewpoint discrimination, since “we conclude the provision impermissibly discriminates based on content in violation of the First Amendment.” The Court then offers a lengthy First Amendment analysis, covering such issues as whether the registration is a subsidy (I think there’s a good argument to be made that it is, but neither the CAFC nor SCOTUS think so), how the regulation of “scandalous” speech is overbroad, and so forth.
Brunetti – who won, remember – asked the Court to also determine if the statute was unconstitutionally vague. After all, what is “scandalous” is pretty much up to the eye of the beholder. How could a reasonable person know what marks would be eligible for registration and which not? It’s hard to see how Brunetti is wrong here. For example, the Court struck down the Communications Decency Act’s prohibition of “indecent” speech online, in part because nobody could know what the word “indecent” means. Here’s how the PTO determines what’s scandalous, per the Federal Circuit’s summary:
“To determine whether a mark should be disqualified under § 2(a), the PTO asks whether a “substantial composite of the general public” would find the mark scandalous, defined as “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . or calling out for condemnation.” Alternatively, “the PTO may prove scandalousness by establishing that a mark is ‘vulgar.’” Vulgar marks are “lacking in taste, indelicate, [and] morally crude . . . .” The PTO makes a determination as to whether a mark is scandalous “in the context of contemporary attitudes” and “in the context of the marketplace as applied to only the goods described in the application.”
Easy! The Circuit Court raises this issue in a slightly different context and effectively buries it. Here is one argument among a few:
“One commentator has written that, of the forty marks containing the acronym MILF for which written records were available as of 2011, twenty marks received an office action refusing registration based on § 2(a), while twenty did not. [Anne Gilson LaLonde & Jerome Gilson, Trademarks Laid Bare: Marks That May Be Scandalous or Immoral, 101 Trademark Rep. 1476, 1478–82 (2011)]. It is difficult to understand what distinguished the refused marks, which included GOT MILF (clothing), MILF MANIA (adult online services), MILF SEEKER (adult entertainment services), and FROM SOCCER MOM TO MILF (self-help books for women), from the marks which were registered, including DIARY OF A MILF (adult online services), BACKROOM MILF (adult online services), FAT MILF (sandwich), and MILF NEXT DOOR (adult online services).”
Wrong vulgar term? MILF not vulgar enough? Glad you asked! “Even marks that reference the indisputably vulgar term ‘fuck,’ like the mark at issue here, are not always rejected as a matter of course. The PTO registered the mark FCUK, but rejected the marks FUCT and F**K PROJECT as scandalous. It allowed the registration of MUTHA EFFIN BINGO, Reg. No. 4,183,272, and IF WE TOUCH IT, IT’S FN GOLDEN, Reg. No. 4,100,978, but not F ALL F’S APPAREL FOR THE F’N ANGRY, Appl. No. 78,420,315”
So the idea that the provision is unconstitutionally vague is, well, plausible: “subjectivity in the determination of what is immoral or scandalous and the disparate and unpredictable application of these principles” is a problem.
So to recap: the Supreme Court says the ban on registering disparaging marks violates the First Amendment. The Federal Circuit has applied that reasoning to strike down the ban on immoral and scandalous marks. The PTO therefore will register none of those. The Supreme Court did not find its decision confusing or close. There is no court split, and no evidence that the decision hasn’t been followed. It’s hard to imagine how the Court could rule one way on disparaging remarks and the other on scandalous, given the logic of the decision on scandalous marks. Maybe they’re picking up on the vagueness question, but that’s not necessary to resolve the case at hand. And in any case, there’s enough in the Circuit opinion to resolve that issue easily.
So what is SCOTUS up to?
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