Does the Lanham Act’s prohibition on registration of scandalous or immoral trademarks violate free speech rights guaranteed by the First Amendment?
Erik Brunetti founded a clothing brand named “FUCT” and applied to register the name as a trademark. The registration was denied by the examining attorney at the United States Patent and Trademark Office for not complying with Section 2(a) of the Lanham Act, which prohibits registration of scandalous or immoral marks. On appeal, the United States Court of Appeals for the Federal Circuit concluded that the provision was an unconstitutional violation of the First Amendment of the Constitution. Brunetti asks the Court to affirm the lower court’s invalidation of the provision because it amounts to viewpoint discrimination warranting strict scrutiny review, which the provision then fails. Iancu asks the Court to reverse the lower court decision because the scandalous marks provision is viewpoint neutral and does not impose an unconstitutional burden on speech. Iancu argues that the Court should instead apply the rational basis review standard and recognize that the provision serves legitimate government interests in protecting the moral sensibilities of all audiences as well as the orderly flow of commerce. The Court’s decision may have a chilling effect on free speech in commercial contexts and make it difficult for owners of marks deemed scandalous or immoral to reap commercial benefits from their marks.
Questions as Framed for the Court by the Parties
Whether Section 2(a) of the Lanham Act’s prohibition on the federal registration of “immoral” or “scandalous” marks is facially invalid under the free speech clause of the First Amendment.
Respondent Erik Brunetti founded a clothing brand, “FUCT,” in 1990. In 2011, Brunetti was assigned an application filed by two unrelated individuals to register the name “FUCT” as a trademark for future use. The examining attorney at the United States Patent and Trademark Office (“USPTO”) denied the registration application, placing reliance on Section 2(a) of the Lanham Act§ 2(a) of the Lanham Act—the federal trademark law which prohibits the registration of scandalous or immoral marks. Under Section 2, the examining attorney decides whether a mark is scandalous or immoral in the context of contemporary sensibilities such that the meaning of the term is allowed to change with the times. The examining attorney’s reasoning for the denial was that the term “FUCT” had its origin in the past tense of the vulgar verb, “fuck.”
The Trademark Trial and Appeal Board (“the Board”) denied reconsideration of the decision and affirmed the examiner’s finding that Brunetti’s usage of the mark promoted “anti-social imagery,” and contained a theme of “extreme nihilism.” The Board also placed weight on the website Urban Dictionary, which defines “fuct” as the “past tense of the verb fuck.” The Board explained that the target audience of Brunetti’s brand would perceive the mark as referring to a wordplay of the verb “fucked” because of the way the mark was being used by him. The Board also referred to the usage of the mark on apparel bearing sexual imagery, such as a group sex scene, and the appearance of the logo above the phrase “1970 smoking dope & fucking in the streets,” in making this decision.
On appeal, the Court of Appeals for the Federal Circuit (“Federal Circuit”) concluded that, although the Board did not err in finding that Brunetti’s “FUCT” mark was scandalous and therefore prohibited, Section 2(a) of the Lanham Act was an impermissible violation of the First Amendment’s protections on free speech. In reaching this conclusion, the Federal Circuit found the provision to be an impermissible content-based discrimination that failed the rigorous strict scrutiny standard, which required the government to show that the restriction furthered a compelling state interest and was narrowly tailored to that interest. The Federal Circuit also considered the government’s argument that Section 2(a) did not implicate the First Amendment because trademark registration is a government subsidy program or a limited public forum. The Federal Circuit first dismissed the subsidy argument, holding that trademark registration is not dependent on congressional spending powers for funding but on application fees. The Federal Circuit also rejected the government’s limited public forum argument on the ground that trademark registration did not involve restriction of speech on any government owned property and also dismissed the contention that the principal register where trademarks are registered is government property.
Judge Dyk of the Federal Circuit concurred with the majority in reversing the Board’s decision, but disagreed that Section 2(a) of the Lanham Act was unconstitutional and instead chose to narrowly construe the statute as prohibiting only obscene marks. The USPTO, through Andrei Iancu, the Under Secretary of Commerce for Intellectual Property and the Director of the USPTO, appealed the Federal Circuit’s decision; on January 4, 2019 the Supreme Court of the United States granted Iancu’s petition for writ of certiorari.
WHETHER THE IMMORAL/SCANDALOUS CLAUSES ARE VIEWPOINT NEUTRAL
Petitioner Andrei Iancu, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, argues that the scandalous marks provision of the Lanham Act is viewpoint neutral because the refusals by the USPTO to register a trademark are based on the offensive mode of expression, regardless of the idea that the speaker intends to convey. Iancu contends that scandalous modes of expression—often sexually explicit or profane material—offend moral standards and therefore do not warrant First Amendment protections, just as obscene content lacks such protections. Iancu claims that Supreme Court precedent supports the distinction between viewpoint and mode of expression, asserting that prior governmental speech regulations have already established disparate treatment of manner and substance. According to Iancu, the provision’s viewpoint neutrality renders Section 2(a)’s constitutionality outside the scope of Matal v. Tam. In Tam, Iancu notes, the Court invalidated the Lanham Act’s disparagement clause, which prohibited registration for trademarks which may disparage “persons living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” Iancu further points out that the two opinions in Tam both concluded that the disparagement clause led to content-based restrictions on speech, and therefore warranted strict scrutiny review. Iancu argues that because Section 2(a) polices mode of expression rather than the idea expressed, the Tam decision should not affect the Court’s decision in this matter.
Respondent Erik Brunetti contends that Iancu’s argument about viewpoint neutrality conflicts with the Tam Court’s determination that offensiveness is a viewpoint, and that regulating based on offensiveness is viewpoint-discriminatory. Noting the inconsistencies of USPTO decisions based on perceived offensiveness, Brunetti argues that those decisions often explicitly rest on an asserted meaning which cannot be separated from the speech itself. Brunetti further argues that Iancu’s distinction between the speech itself and the mode of expression is a false dichotomy and misconstrues the Supreme Court’s decision in Cohen v. California. According to Brunetti, Iancu cites Cohen as support for this dichotomy, but the Court there held that both the idea and the mode of expression at issue—a jacket with the phrase “Fuck the Draft” on the back—constituted protected speech that could not be distinguished for First Amendment purposes. Further, Brunetti posits, the FCC v. Pacifica Foundation Court’s discussion of offensiveness on which Iancu relies was only a plurality decision, and the Court emphasized that the decision was narrow and specific to the context of radio content broadcasted over public airwaves. Because determinations of offensiveness rely on viewpoint discrimination, and because Supreme Court precedent does not support Iancu’s bifurcation between protecting the idea and protecting the mode of expression, Brunetti argues that the provision is content regulation warranting strict scrutiny.
THE APPLICABLE STANDARD OF REVIEW
Iancu argues that the Court in this situation should ask whether Section 2(a) is “reasonably related to a legitimate government interest,” which is the standard the Court traditionally applies where the government declines to promote speech rather than restricts that speech. Courts typically apply strict scrutiny—whether the controversial statute is “narrowly tailored to serve compelling state interest”—to situations where the government restricts speech through content-based discrimination, according to Iancu. Iancu asserts that strict scrutiny is unwarranted here because the provision does not restrict speech because treating the provision as speech restriction would disrupt the entire trademark system. Strict scrutiny is also inappropriate here, Iancu posits, because the content-based determination examines the mode of expression rather than the idea itself. Iancu contends that Section 2(a) merely conditions government benefits upon a standard which bans neither the mode of expression nor the idea itself. Iancu notes that the applicant can continue to use the mark commercially and invoke certain trademark rights without registration. Strict scrutiny is inappropriate where the government declines to promote speech through allocated benefits, Iancu asserts, and funding conditions must simply be reasonable where the government subsidizes only certain speech. While the desire for government benefits may indirectly pressure mark modification, Iancu argues that the Court has distinguished between direct pressure on speech warranting strict scrutiny and the indirect pressure present here. Iancu asserts that the entire trademark system depends upon content-based, viewpoint-neutral determinations—i.e., whether a mark adequately identifies the product or is deceptive or misleading—which has not previously warranted strict scrutiny, and which should not now be subjected to such review.
Brunetti replies that the scandalous marks provision does not survive the strict scrutiny review that content-based speech regulation requires. Brunetti asserts that the trademark registration system is a method of conferring legal recognition and rights by listing the trademark in a centralized database, and he argues that government regulation of such a database does not allow the government to avoid constitutional scrutiny. Brunetti asserts that the trademark registration database is not a public forum for expressive activity and thus should not be monitored for vulgarity, and that government approval of a trademark does not convert private speech into government-associated speech. Additionally, there is nothing in the Lanham Act’s legislative history suggesting a congressional intent for the trademark system to act as a subsidy, which Brunetti argues undermines Iancu’s assertion that the scandalous mark provision warrants only reasonable funding conditions. Instead, according to Brunetti Congress intended the trademark system to prevent consumer confusion and to protect mark owners, which indicates that the system is not a government subsidy. Further, Brunetti argues that Section 2(a) unconstitutionally burdens speech because a trademark denial impacts law enforcement’s and online retailer’s willingness to remove counterfeit products. The denial also impacts the applicant’s ability to sell under the brand name or to obtain financing, which Brunetti asserts imposes a severe burden on the mark’s user.
APPLYING THE STANDARD OF REVIEW TO THE SCANDALOUS MARKS PROVISION
Iancu argues that the provision is reasonably related to a legitimate government interest and does not unconstitutionally burden speech. Iancu contends that the legitimate government interests implicated here include encouraging the use of trademarks that are appropriate for audiences of all ages, facilitating the orderly flow of commerce, and avoiding any appearance of the government approval of such marks. Iancu asserts that scandalous marks would harm children by exposing them to potential sexual and vulgar content, would disrupt the orderly flow of commerce by subjecting the population to shocking and thus disruptive material, and would create the undesirable appearance of government approval through the trademark registration symbol next to the offensive mark. Further, the scandalous marks provision does not impose an unconstitutional condition on speech because the provision does not require registrants to endorse a certain opinion about vulgarity, according to Iancu. Additionally, Iancu notes that rejection of one trademark application does not affect the applicant’s access to state, common law, and even certain Lanham Act rights for the scandalous mark, and does not affect the applicant’s chances on registering other marks. Considering these elements, Iancu contends that the provision meets rational review and imposes no unconstitutional burden on speech.
Brunetti asserts that, in addition to unconstitutionally burdening speech, Section 2(a) is impermissibly vague under the Due Process Clause because the ambiguous boundaries of what constitutes scandalous or immoral modes of expression inevitably chill protected speech and delegates speech protection to trademark officials who make decisions on an ad hoc basis. The ambiguity surrounding the provision’s coverage also thwarts any fair notice to the general public, and the consequences of the unclear coverage become readily apparent when examining the severely inconsistent decisions for trademark applications containing words considered scandalous colloquially, according to Brunetti. Not only are the asserted interests not compelling government interests, Brunetti argues, but the provision is not narrowly tailored to fit those interests. Brunetti posits that the provision is over-inclusive by subjecting humor and double entendre to the clause. Additionally, Brunetti adds that the vulgar marks are meant for adult products and would not reach the young audience the government allegedly seeks to protect. Brunetti argues that this provision restricts speech and thus warrants strict scrutiny review, but neither the interests nor the tailoring asserted are sufficient to meet this standard.
POTENTIAL FOR CHILLING SPEECH
Attorney Kurt M. Anderson, in support of Iancu, argues that if the Court reverses the Federal Circuit and upholds the constitutionality of Section 2(a) of the Lanham Act, the refusal to register trademarks on the ground that they are scandalous or immoral will not have any effect on free speech. , Anderson contends that such a refusal to register a mark is unlike a criminal condemnation of speech and therefore any potential chilling effect on speech is eliminated—or at the very least—diminished. Noting the commercial success of Brunetti’s fashion line even without registration of his mark, Anderson concludes that a refusal to register a trademark does not chill speech. IdIancu echoes Anderson’s argument, contending that Brunetti continues to enjoy First Amendment rights to use vulgar words to identify his goods in commerce, use it in advertisements, or any other form of speech without registering those words as trademark. Further, Iancu argues that if the Court finds Section 2(a) to be an unconstitutional restriction on speech, it would harm the government’s ability to regulate vulgar material in public forums and undermine the trademark program’s general structure, which uses content-based bans on descriptive and functional marks as well as on marks containing national symbols.
Brunetti disputes that the only effect of Section 2(a) of the Lanham Act is the denial of registration of the trademark and asserts that it burdens speech. Brunetti argues that even if a refusal to registration does not prevent a person from using the mark, the act of refusal burdens speech because without the recognition of trademark protection it is significantly more difficult to engage in selling products bearing the marks and also burdens the obtaining of financing as lenders and financial institutions will not be able to obtain a security interest in the unregistered mark. Id Further, Brunetti disagrees with Iancu’s position that trademarks do not constitute speech because they do not convey messages, arguing that trademarks are used in today’s world not only as a source of identification for a person’s goods but also in speech concerning politics, religion, and society. Id.The Cato Institute, in support of Brunetti, directly challenges Iancu’s assumption that limiting expression of ideas using vulgar words does not chill expression of the idea itself. The Cato Institute asserts that effectively expressing an idea requires usage of the most appropriate word, and the emotional force behind the idea may not in some instances be expressed adequately if profanity is replaced with politesse. Id.The Rutherford Institute, also in support of Brunetti, argues that an attempt by the government to police language it finds vulgar suppresses important messages, noting that the phrase “Fuck Cancer” was denied registration while “Screw Cancer” and “Suck it, Cancer” were considered acceptable.
DETERMINATION OF OFFENSIVENESS BY THE GOVERNMENT
Iancu contends that permitting registration of marks that are vulgar would communicate to the public that the government approved of the use of profanity. Iancu argues that the government’s association with trademarks is inevitable because registered marks are recorded in the USPTO’s official register and certificates of registration that are issued to trademark owners are transmitted to the World Intellectual Property Organization and to other countries to protect the trademark internationally. Id Iancu maintains that the same considerations that justify the policy that the government avoid any appearance of political favoritism, also justify regulating scandalous or immoral marks. Id.
The International Trademark Association (“ITA”), in support of Brunetti, argues that Iancu’s contention that the government will be seen as approving scandalous language is illogical in the face of the other major intellectual property regimes—copyright and patent—not containing similar prohibitions. The ITA explains that even if trademarks were considered government approved speech, a premise it contends is faulty, the ordinary layperson knows little about how trademarks work and so will not make this connection.
- Natasha Bach, Oral Arguments Could Get Interesting When FUCT Free Speech Case Hits SCOTUS, Fortune (Feb. 5, 2019).
- Jennifer J. Theis & Howard Michael, Iancu v. Brunetti: Supreme Court Grants Cert to “Scandalous Marks” Case, National Law Review (Jan. 10, 2019).
- Greg Stohr, Vulgar Trademarks Get U.S. Supreme Court Review in Speech Clash, Bloomberg (Jan. 4, 2019).