The U.S. Supreme Court recently heard oral arguments in the long-awaited Iancu v. Brunetti case, which addresses the Lanham Act’s prohibition on federal trademark registration for scandalous marks. Iancu v. Brunetti, No. 18-302, oral argument held, 2019 WL 1598074 (U.S. Apr. 15, 2019).
The dispute stems from fashion designer Erik Brunetti’s attempt to register a “Fuct” trademark with the Patent and Trademark Office.
The PTO turned him down, saying the mark comprised “immoral or scandalous matter.” However, the U.S. Court of Appeals for the Federal Circuit said the PTO’s refusal to register the mark on this ground violated the First Amendment. In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017).
Brunetti follows on the heels of the Supreme Court’s holdings in Matal v. Tam, 137 S. Ct. 1744 (2017), in which the court ruled through a matrix of opinions and concurrences that the PTO, in barring registration of “disparaging” marks, engaged in “viewpoint discrimination” and, as such, acted unconstitutionally.
Given the wealth of reasonings the justices gave in Tam, many predicted that Brunetti would stay the course set by Tam heading into oral argument.
But oral argument suggested otherwise, as exchanges from the bench telegraphed what the court’s grant of certiorari hinted — that the court is, at a minimum, interested in weighing whether a line needs to be drawn between “scandalous” marks such as the one at issue in Brunetti and “disparaging” marks such as the one in Tam.
The crux of the Tam decision was viewpoint discrimination. There, the court held the disparagement provision of Section 2(a) of the Lanham Act, 15 U.S.C.A. § 1052(a), was viewpoint discriminatory and struck it down.
Had the court limited its interests and focus to the viewpoint-discriminatory nature of the scandalous marks ban, the fate of scandalous marks might have been sealed.
But none of the justices seemed overly taken by the contention of Brunetti’s counsel that the prohibition of scandalous marks constituted viewpoint discrimination, which signaled a fundamental departure from the judicial bedrock of Tam.
For example, Chief Justice John Roberts labeled Brunetti’s viewpoint argument “circular.”
Justice Sonia Sotomayor noted that “some of us (the justices) would say that a vulgar word with relationship to selling clothes is sort of irrelevant.”
And Justice Stephen Breyer said vulgar terms expressed no viewpoint and likened them to fighting words used as an insult.
But if not viewpoint-discriminatory, the scandalous mark ban certainly raises content-discrimination concerns, which Brunetti’s counsel pressed as warranting the same high levels of scrutiny and, ultimately, the ban’s now-timely demise.
Assuming scandalous marks are struck based on content discrimination, what other Lanham Act bans are deserving of like fates?
The court addressed that issue head-on. Chief Justice Roberts recognized that “the whole point of this (trademark registration) program is to regulate content.”
Justices Samuel Alito and Elena Kagan joined the chief justice, with Kagan forcing Brunetti’s counsel to admit that the Lanham Act contains other content-based restrictions and Justice Alito saying, in so many words, that the likelihood-of-confusion inquiry is facially content-driven.
The court’s recognition of the content-based nature of trademark law suggests that even if it invalidates the ban on scandalous marks, it will do so narrowly so as to safeguard the remainder of the Lanham Act’s content-based determinations.
The court’s apparent desire to frame the prohibition of scandalous marks as nonviewpoint discriminatory stems from a feeling that scandalous words are viewed and treated differently in society than their disparaging counterparts, and as such, perhaps less worthy of trademark registration.
This was underscored by the court’s and counsels’ extreme care to avoid uttering a single vulgar word during argument — a level of reverence that was not paid to disparaging terms during the oral arguments in Tam.
Justice Breyer captured it this way: “(In) Tam, they were using a word that doesn’t have, for whatever reasons, it doesn’t have this tremendous retentive power that would lead someone to try as quickly as possible to get his brand registered with that name in order to grab attention.”
If nothing else, the great care and attention paid by the court and counsel indicate that we, as a society, have not bridged the comfort zone of public tolerance for such words, whether entitled to federal registration as trademarks or otherwise.
Justice Breyer and Chief Justice Roberts expressed the greatest concern over jettisoning the scandalous marks ban.
Their questions honed in on the consequences a favorable ruling for Brunetti would produce for some of the most paradigmatic vulgar words in our society, i.e., f--- and n----- (the focus on these terms was clear, although no justice explicitly mentioned them).
Both justices seemed genuinely concerned that striking down the scandalous marks ban would encourage the commercialization of inherently offensive words on the general public — and particularly children — that neither wants nor welcomes in-your-face vulgarity as part of daily life.
Chief Justice Roberts, a father of two, expressed specific concern about “parents who are trying to teach their children not to use those kinds of words.”
Justice Neil Gorsuch echoed such concerns, asking Brunetti’s counsel, “Why isn’t it (registration) a government benefit and why can’t the people choose to withhold the benefit on the basis that there are certain words that are profane and that we, as a matter of civility in our culture, would like to see less of rather than more of?”
These concerns accentuate the court’s struggle and possible willingness to draw a line between the “disparaging” mark ban that defined Tam and the scandalous” mark ban that must be vetted in Brunetti.
Despite the justices’ seeming receptiveness to distinguishing Tam based on viewpoint discrimination, they did not pull their punches during the government’s argument.
Unsurprisingly, the government faced waves of questions about the inconsistent application of the ban on scandalous marks.
Justice Brett Kavanaugh called it “erratic.” Justice Gorsuch asked whether it is merely a “flip of the coin.” Justice Sotomayor termed it a “subjective standard.”
And Justice Ruth Bader Ginsburg pointed to the paradoxical and ironic circumstance where some marks had been rejected as both scandalous and likely to cause confusion with a prior similar registered term.
To quell the justices’ concerns, the government proposed that the bar be enforced more narrowly than as written by limiting refusal only “to marks that are offensive, shocking to a substantial segment of the public because of their mode of expression.”
That solution, supported by Judge Timothy Dyk in his concurrence at the Federal Circuit, would allow the court to uphold the statute as constitutional (which the court typically prefers), while providing limitations on the inconsistent application of the ban, which seemed to have troubled the court most.
But Justice Kagan, who appeared most skeptical of the government’s position, was not moved by the idea of leaving it to the government to narrow an overly broad statute in practice. “That’s a strange thing for us to do, isn’t it, to basically, you know, take your commitment that, look, these are very broad words, but we’re going to pretend they say something much narrower than they do?”
Many of the other justices seemed more receptive to the government’s narrowing concept.
Justice Sotomayor suggested that “a limiting principle that has its own substance,” like refusing registration of “obscene, vulgar, even profane” marks, might pass muster.
Justices Alito and Breyer both suggested a list of words that simply will not be registrable, such as comedian George Carlin’s “Seven Dirty Words.” The Supreme Court found the seven words from Carlin’s routine “indecent.” FCC v. Pacifica Found., 438 U.S. 726 (1978).
Justice Gorsuch agreed with Kagan to an extent, noting the PTO’s failure to properly practice the clause in the first instance and reliance on the courts for a fix, but did appear to signal support for a list of unregistrable terms.
Despite the hostility from the bench toward Brunetti’s viewpoint-based arguments, the government still faces an uphill battle.
The court in Tam held that “giving offense is a viewpoint” and struck down the disparaging marks ban that textually appeared right next to the scandalous marks ban.
While the justices probed for distinctions from Tam, the bench clearly recognized that such distinctions might stretch beyond comfort or reason.
For instance, Justice Breyer noted, after attempting to distinguish Tam, that “I don’t know that I’ve just articulated much of a distinction, but there may be something there.”
Further, while not addressed at oral argument, should the scandalous mark ban stand, considerable tension would remain between registrable disparaging marks and unregistrable scandalous marks, e.g., [Insert here your disparaging word of choice as an adjective and insert here your scandalous word of choice as a noun, and you’ll get the idea].
Such a distinction could and future litigants back in court reliving and rearguing the moments of the oral argument in Brunetti.
In the end, the justices’ decision, as indicated by the oral argument, might not save the scandalous mark ban from tumbling into obscurity. The argument certainly did not sound the death knell either, as many had predicted. After all, the court clearly did not grant certiorari in Brunetti to simply rule, well, Tam says so.