During an hour of oral arguments, both Supreme Court justices and the arguing attorneys before them managed to avoid saying the F-word, in a case over a brand called FUCT.
Iancu v. Brunetti came before the Supreme Court last Monday because the Patent and Trademark Office has refused to register a trademark for the streetwear brand FUCT. The Lanham Act currently prohibits registration of “scandalous” and “immoral trademarks. But now case law does not appear to be on the USPTO’s side.
Two years ago, the Supreme Court struck down a provision of the Lanham Act that prohibited disparaging marks in Matal v. Tam. In that case, the USPTO had refused to register “The Slants,” the name of an Asian-American band. The Supreme Court held the provision against disparaging marks put an unconstitutional burden on free speech. In Iancu v. Brunetti, the Federal Circuit reversed the USPTO’s denial of registering the FUCT trademark.
The case’s arguing attorneys went out of their way to avoid saying the brand’s name. Deputy Solicitor General Malcolm Stewart referred to the mark as “the equivalent of the profane past participle of a well-known word of profanity” and a “paradigmatic word of profanity in our language.”
Brian O’Donnell, counsel at Kilpatrick Townsend & Stockton, said the Supreme Court will likely follow its Matal v. Tam precedent and strike down the ban on immoral and scandalous trademarks as well. But O’Donnell added he was struck by the time spent in oral arguments on whether the tests for “disparaging” and “immoral and scandalous” have any significant differences that would merit the court departing from its decision in Matal v. Tam.
Even if the court follows its decision in the Matal case, that may not mean a clean end to the issue. O’Donnell said because context matters for patents and trademarks, the court will probably wrestle with the practical consequences that could result from an end to the prohibition on marks deemed objectionable, and the case could prompt Congress to revise the law governing patents and trademarks.
What if, O’Donnell said, “The Slants” was the name of something other than a music group? What if, for example, someone tried to register a trademark for a name using a slur plus the word “killer” for a firearm?
“There’s no one that’s going to say that should be a government-sanctioned trademark,” he said. “An imminent threat, or fighting words, or some form of illegality that is not allowed under the First Amendment.”
If a government appears to deny a trademark based on its content, the decision has to stand up to strict scrutiny — the government’s interest in denying registration of a trademark has to outweigh the right of free speech. Stewart argued the government has interest in both not associating with certain words, and in protecting unwilling members of the public from material they find offensive.
While unpacking the Lanham Act’s interpretation over time, Stewart asked the court to narrow the act’s scope to prohibiting marks deemed “offensive” and “shocking” because of their mode of expression, not the views expressed. He acknowledged that would constitute viewpoint discrimination, not a valid basis for denying registration of a trademark.
But the attorneys and justices tussled over whether denying registration of the FUCT trademark is viewpoint discrimination.
“What about Mr. Brunetti’s argument that the use of the word expresses a viewpoint precisely because of its offensiveness?” Chief Justice John Roberts asked Stewart. “You know, it’s edgy, it expresses a non-conformist attitude, all of that?”
Stewart responded denial of registering a trademark such as FUCT could still be construed as a viewpoint-neutral approach because of the possibility the mark could appear in public settings where it could offend people — say, if Brunetti rented advertising space on city buses — regardless of the message the mark intends to convey.
“I think the government legitimately should be able to say … we don’t want profanity on our buses where they’re visible to unconsenting adults and children, we don’t want that word on our buses regardless of the message that you intend to convey,” Stewart said.
Later in his rebuttal, Stewart said “content-based distinctions are really ubiquitous in the registration program.”
“We look to see whether marks are descriptive, whether they’re generic, whether they’re confusingly similar to existing marks, and often the words that we find to be descriptive, generic, confusingly similar, are incorporated into what could be viewed as messages,” Stewart said. “And we simply want to be able to follow the same approach with respect to profanity. Profane words can be used as part of a larger message, but we’re not denying registration because of the message, it’s because of the profanity.”
Justice Samuel Alito put the theory to test in questioning Brunetti’s arguing attorney, John Sommer. “Can [a word] be distinguished on that ground, that it doesn’t express any sort of viewpoint? All it expresses is an emotion, a way of expressing something.”
Sommer responded he believes the court already decided that issue in Matal v. Tam. “Because of your decision in Tam, the provision in the whole is invalid,” he said.
O’Donnell said determining when something veers into the territory of viewpoint discrimination is one of the most difficult areas of jurisprudence, but trying to make the distinction is as important as ever.
“The government sanctioning certain types of trademarks over others, it matters,” he said. “And it would be naïve to think that it doesn’t matter.” O’Donnell explained trademarks are different from copyrights and patents because those types of intellectual property aren’t designed to protect the public the way trademarks are, and they only involve two parties — the private party seeking rights and the government. Trademarks involve the public as a third party because they’re intended as source identifiers for consumers.
“It doesn’t matter if the consumer knows the copyright is an indicator of source. It doesn’t matter if a patent is for potentially a moral technology, like a gun or a tank or a missile, because those forms of intellectual property are not designed to protect the public,” he said.
Both the justices and arguing attorneys grappled with the reality that perceptions of whether content is objectionable changes based on the audience and the particular point in time. When questioning Sommer, Alito toyed with the possibility of having a set list of prohibited terms, and variations that make clear what they’re conveying. He referred to comedian George Carlin’s list of “seven dirty words” that can’t be said on television.
“If Congress were to pass that, we’d be here again in a few years to determine whether” the restrictions are constitutional, Sommer responded.
Of course it’s difficult to predict exactly how the legislature would approach reworking the Lanham Act. But O’Donnell said lawmakers could look at how the Supreme Court and lower courts have previously determined what is protected free speech and what is not. Free speech has exceptions in instances when it violates legal rights of others or breaks other laws.
“More appropriate in this context is, the legislature might look at what marks might be considered threats, or targeted harassment, or something that creates an obviously hostile environment.” He returned to his example of using a racial slur plus the word “killer” to brand a weapon.
“You can’t engage someone to commit a crime,” such as perjury, blackmail or “fighting words,” O’Donnell said. “None of those are protectable as free speech, so they shouldn’t be protectable as brands.” He said he believes hate groups will take advantage of an ability to register trademarks, and that possibility likely weighs on the Supreme Court’s mind.
But he added he believes a narrowly construed limitation would suffice. “I think you are going to have a large number of hate groups registering trademarks, and it’s going to get a lot of media attention,” he said. “But at the end of the day, you’re not going to sell a lot of product.”
— Julia Cardi