Tam 2.0? SCOTUS Likely to Strike Down Bar on Immoral/Scandalous Marks in Iancu v. Brunetti

“The government ran into two headwinds from the outset. One was the sweeping breadth of the statute. The other was the USPTO’s long history of granting registration to some profane or sexually themed marks but not others, seemingly without rhyme or reason .”

https://depositphotos.com/65447921/stock-illustration-various-expression-bubbles.htmlFollowing our visit to the Supreme Court for Monday’s entertaining oral argument in Iancu v. Brunetti, we can report that the Court seems likely to strike down, on First Amendment grounds, the statutory restriction on federal registration of trademarks that are “immoral or scandalous.”  It seems less likely that the case will generate a clear and ringing statement of First Amendment principles.

Rather, the justices’ comments at argument seem to presage a limited, cautious opinion. The Court’s main legal concerns appear to be the facial overbreadth of the existing statute and its history of inconsistent application. Congress and the U.S. Patent and Trademark Office (USPTO) may  therefore be left with room to try again, seeking a narrower and more predictable approach to limiting the federal registration of dirty words as trademarks (especially given the Court’s main practical concern of the loss of civility represented by the proliferation of such marks).

A full transcript of the argument is available here. A lively post-argument panel discussion featuring Erik Brunetti himself can be found here.

The Case in Brief

Streetwear entrepreneur Erik Brunetti had long sought to register the name of his apparel brand FUCT. His concern was that, without a federal registration, it would be difficult to police the extensive counterfeiting of the brand on e-commerce sites. The USPTO rejected Brunetti’s registration under the “immoral or scandalous” limitation of Lanham Act Section 2(a).

The Court of Appeals for the Federal Circuit struck down the limitation, citing the Supreme Court’s unanimous 2017 decision in Matal v. Tam that invalidated the Lanham Act’s restriction on registration of “disparaging” marks. Somewhat surprisingly, given how recent and seemingly strong the Tam decision was, the Supreme Court then granted certiorari in Brunetti.

For more detailed background on Brunetti, see our previous blog post. See also the amicus brief we co-authored for the International Trademark Association (INTA), urging that the “immoral or scandalous” restriction be struck down on First Amendment grounds. Our brief for INTA argued principally that the restriction fails the Central Hudson “intermediate scrutiny” test for regulation of commercial speech.

Decorum Prevails

SCOTUS has a strong history of protecting extreme speech, but also a strong history of decorum in its own courtroom. That led to an hour’s discussion of the meaning of, reaction to, and registration of FUCT in which the mark was never spoken aloud. Government lawyer Malcolm Stewart memorably referred to the mark from the podium as “the equivalent of the past participle form of . . . the paradigmatic profane word in our culture.”  Brunetti lawyer John Sommer likewise did not speak the mark aloud. Justice Breyer noted that “most people know what words we’re talking about.”  After Mr. Stewart spelled out the term “P-H-U-C” as an example of the types of phonetic terms that the USPTO has to assess, Justice Neil Gorsuch remarked:  “I don’t want to go through the examples. I really don’t want to do that.”  Laughter ensued.

The Government’s Challenges

On a more substantive note, the government ran into two headwinds from the outset. One was the sweeping breadth of the statute. The other was the USPTO’s long history of granting registration to some profane or sexually themed marks but not others, seemingly without rhyme or reason (a history exhaustively catalogued by NYU Professors Barton Beebe and Jeanne Fromer).

Mr. Stewart began by asserting that the USPTO had learned its lesson in Tam. Going forward, he said, the USPTO would narrowly apply the “immoral or scandalous” restriction to a limited range of vulgar words, focusing on the “mode of expression” rather than the content of the mark.

This proposed approach was new and unfamiliar to readers of the briefs, such as Justice Elena Kagan. She asked, with an apparent touch of exasperation: “[W]hat are we supposed to be doing here? . . . [A]re we supposed to be looking just at your commitments as to what you’re doing going forward?”  The statutory words are very broad, she noted, and Congress was free to try and write a narrower statute but had not done so.

She and other justices repeatedly noted their skepticism that the constitutional flaws in the statute could be solved by an opinion holding the USPTO to its belated new promise of a narrower administrative approach. That approach, Justice Kagan said, would be “strange.”  As Justice Gorsuch said to Mr. Stewart at one point, “we can fix your problem for you, I got that”—the unspoken but clear conclusion being, “but we’re not going to.”

The history of inconsistency at the USPTO also clearly troubled Justice Gorsuch, Justice Brett Kavanagh, and others. Justice Gorsuch focused on a striking appendix to Brunetti’s brief—a chart that showed how the USPTO had frequently allowed, or not, registration of marks embodying the key terms from comedian George Carlin’s famous “Filthy Words” monologue, among other profane words.

As Justice Gorsuch noted, the chart showed “shocking numbers of ones granted and ones refused that . . . do look remarkably similar.”  He wondered aloud: “How is a reasonable citizen supposed to know?  What notice do they have about how the government’s going to treat their mark?” The sense of the room was that the government’s response—that apparent inconsistencies were inevitable in a case by case process like the registration of trademarks—did little to ease the justices’ minds.

Those were not the government’s only difficulties. Justice Ruth Bader Ginsburg noted that it was unclear how the government could apply the historical test, i.e., whether a substantial composite of the public would find a proposed mark shocking or offensive. The 86-year-old justice pointedly noted that Brunetti’s brand is targeted to a younger demographic that might not find the mark shocking at all.

The government also faced tough questions from Justice Samuel Alito and others about the nature of the public interest behind Section 2(a). Is the government trying to limit the use of dirty words in the culture?  Is it trying to avoid giving a sense of government imprimatur to or association with dirty words? The government spoke about wanting to protect unwilling viewers, but that seemed to strike Justice Alito as unpersuasive. He noted that the words in question are omnipresent in commerce with or without federal trademark registrations.

Chief Justice John Roberts also, albeit unintentionally, seemed to undercut the imprimatur argument. He pictured a parent leading children through a public place and spotting a shirt with a provocative word. The hypothetical parent, who wants to teach children not to use words like that, then spots “the little trademark thing” and expresses concern that the word is a registered trademark. The chief justice then interrupted himself with a touch of amusement: “Well, they won’t say that.”  The courtroom broke into laughter. That gallery’s reaction seemed to confirm an argument made by INTA and others:  Trademarks are not government speech in any legal or constitutional sense, nor are they perceived by the public as such.

Brunetti’s Challenges

Brunetti’s side faced different but also forceful concerns from the Court. In a nutshell, these boiled down to:

  • Are profane words expressing ideas at all when used as trademarks? Justice Alito, author of the lead opinion in Tam, speculated that they are not—rather, their purpose may just be to shock or “shout[].” The distinction is potentially quite important, since the stated rationale in Tam for striking down the restriction on disparaging marks was to permit the expression of offensive ideas.
  • If Section 2(a) falls, do the floodgates open? A number of justices noted that Brunetti poses a facial challenge to the statute. They wondered if there would be any restrictions to registration left standing if they affirm the Federal Circuit. The justices asked if the F-word itself (properly spelled, past participle or otherwise) could be registered, and speculated that the USPTO could be hit with a large number of requests to register profane and vulgar marks.
  • Is there something to the unwilling viewer concern after all? Notwithstanding the laughter that Justice Roberts’ hypothetical elicited, the justices did seem troubled by the notion of the F-word floating down public streets in advertisements on the sides of buses.

These concerns seem likely to recede as the Court further considers the issues. The bar for what constitutes a protectible idea, for example, has never been high in the Court’s jurisprudence. From the podium, Brunetti’s counsel noted examples where the F-word clearly conveys a message, as when it insults an individual or when it is paired with “racism”, “cancer”, or—as in a famous Supreme Court case—“the draft.”

The floodgates issue will likely be easily solved in a number of ways. For one, it will always be difficult under basic trademark principles to establish that any ordinary word (dirty or not) is seen by consumers as a source identifier. For another, restrictions on obscenity, fighting words, and other forms of speech that are outside the First Amendment would plainly survive the invalidation of section 2(a) (as John Sommer noted from the podium).

As for the buses, various time/place/manner restrictions on advertising or other forms of public forum speech have long been held constitutional over the years. That point perhaps could have come out more sharply in yesterday’s colloquy. It was suggested at one point that such ads could be barred because of the risk of public disruption, to which Justice Kavanaugh incredulously asked why, “[b]ecause people see a word and all of a sudden . . . [they] can’t handle themselves?”

Glimpses of a possible deeper concern among the Court may have been spotted at the argument: Are the justices showing buyer’s remorse over their invalidation of the “disparaging” restriction in Tam? 

In an interesting detour, the government acknowledged from the podium that the USPTO is now essentially permitting registration for almost all racial slurs—but is “holding in abeyance” and further considering applications for an unspecified racial slur that is particularly troubling. Most observers thought this referred to the “N-word.”

Some justices, notably Justice Breyer, seemed concerned that, as social mores continue to change, an increasing usage of disparaging terms in commerce may go further than the Court would want to see or meant to permit in Tam. That concern, perhaps more than any concern about profane marks, may underlie the Court’s apparent caution in Brunetti.

The Dogs That Didn’t Bark

Tam left open whether restrictions on trademark registration should be subject to strict or intermediate scrutiny. INTA’s primary focus was to argue for intermediate scrutiny. The issue seems likely to remain open. It received virtually no attention at oral argument.

There also was little attention given to the “immoral” prong of Section 2(a). Perhaps that is because the PTO has always treated the “immoral or scandalous” clause as a unitary concept (a problem that we noted in our brief; different words in statutes of course are supposed to have different meanings). Immorality is different than scandalousness, a point Brunetti’s counsel made when he pointed out that morality is inherently viewpoint-discriminatory. He noted that some Americans may find gambling or drinking or abortion or eating meat to be immoral, but the PTO should not be in the business of selecting which of those views to reward with registration and which to deny.  Alas, none of the Justices picked up on the distinction in their questioning.

What Next?

Adding it all up, it seems likely that the Court will hold section 2(a) invalid on First Amendment grounds. The overbreadth and inconsistency concerns seem powerful enough to command a majority.

At the same time, a substantial number of justices seemed genuinely troubled by the prospects, for constitutional law and for the culture, of simply cutting down section 2(a) with a broadax.

A reasonable guess, then, is that we will see a limited opinion. Section 2(a) will fall. Mr. Brunetti will get his FUCT mark. The doctrinal grounds for cutting down 2(a) may not be marked out with neon clarity. And the Court may make some effort to mark out guideposts for further efforts by Congress and the USPTO that are more likely to survive constitutional scrutiny.

There also was a passing reference to Lanham Act Section 2(b), which prohibits registration of certain flags and symbols, and 2(c), which prohibits registrations of names of living persons without their consent, as potentially raising constitutional concerns in certain contexts. Will those provisions of the Lanham Act give rise to Tam 3.0?

We will report back when the Court issues its opinion. Per Court custom, that will be by the end of the term in June, if not before.

Image Source: Deposit Photos
Copyright: theblackrhino
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The Author

David Bernstein

David Bernstein is the chair of Debevoise & Plimpton’s Intellectual Property Litigation Group and widely recognized as one of the world’s “preeminent” trademark lawyers. He helps global companies navigate their most important and complex intellectual property matters, including those involving trademark and trade dress infringement and dilution, false advertising, domain names, copyrights and publicity rights. Legal directories and clients have described Mr. Bernstein as a “rockstar,” “indisputably one of the very best trademark lawyers in the country” and “the dean of the IP litigation bar.” Mr. Bernstein litigates IP cases nationwide, manages multi-jurisdictional litigations, and mediates and arbitrates IP cases around the world, including both as advocate and arbitrator.

For More information or to contact David, please visit his Firm Profile Page.

David Bernstein

Jeremy Feigelson is a litigation partner, Co-Chair of the firm’s Cybersecurity & Data Privacy practice, and a member of Debevoise’s Intellectual Property and Media Group. He frequently represents clients in litigations and government investigations that involve the Internet and new technologies. His practice includes litigation and counseling on cybersecurity, data privacy, trademark, right of publicity, false advertising, copyright, and defamation matters. In 2018, American Lawyer named him “Litigator of the Week” based on the right of publicity victories of Debevoise client Take-Two Interactive in Lohan v. Take-Two and Gravano v. Take-Two at the New York Court of Appeals.

For more information or to contact Jeremy, please visit his Firm Profile Page.

David Bernstein

Pooja Boisture is a senior associate in Debevoise’s Litigation Department. Her practice focuses on general commercial litigation and appeals, and includes an array of civil rights matters. Prior to joining Debevoise in 2018, she worked for a large international firm in New York and clerked on the Third Circuit for the Hon. Jane Richards Roth. Ms. Boisture graduated Columbia Law School in 2012 as a Harlan Fiske Stone scholar. At Columbia, she served as an Articles Editor of the Columbia Journal of Gender and Law. Ms. Boisture received a B.S. from Boston College in 2007.

For more information or to contact Pooja, please visit her Firm Profile Page.

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Discuss this

There are currently 2 Comments comments.

  1. Anon April 16, 2019 5:45 pm

    Is “loss of civility” even a modest (proper) government concern? Would not a whole host of alternative and less intrusive manners exist to address that (remote) concern?

  2. mike April 17, 2019 12:22 am

    @Anon.
    “Loss of civility” should not be a concern by a court whose duty is to interpret law written by representatives elected by citizens who decide what comprises “civility”.