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Did The Supreme Court Just Suppress Speech in the Interest of Protecting The First Amendment? Iancu v. Brunetti

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18 Jul 2019
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July 18, 2019

Iancu v. Brunetti, 588 U.S. ___ (2019) (Kagan, J.).
Response by Roger E. Schechter
Geo. Wash. L. Rev. On the Docket (Oct. Term 2018)
Slip Opinion | SCOTUSblog

Did The Supreme Court Just Suppress Speech in the Interest of Protecting The First Amendment?
Iancu v. Brunetti

In Matal v. Tam,1 the Supreme Court ruled that the provision of the federal trademark statute forbidding registration of “disparaging” marks violated the First Amendment because it was an unconstitutional viewpoint-based regulation of speech. In its recent decision in Iancu v. Brunetti,2 the other shoe dropped and the Court found a companion provision covering marks “comprising immoral or scandalous material” unconstitutional on the same ground.3

Erik Brunetti’s efforts to register the mark FUCT for several categories of goods and services including clothing were rebuffed by the U.S. Patent and Trademark Office (“PTO”) on the grounds that the mark was scandalous and immoral.4 He then appealed to the U.S. Court of Appeals for the Federal Circuit, which found the relevant portion of the provision violative of the First Amendment.5

The government’s petition for certiorari brought the case to the Supreme Court, but its defense of the statute seemed half-hearted. Virtually no amici filed briefs in support of the statute, and the result of the decision seemed largely pre-ordained by the decision in Matal v. Tam two terms ago.

In the end all nine justices agreed that the provision of the statute referring to “immoral” marks could not pass Constitutional muster. Writing for a six-Justice majority, Justice Kagan found the “scandalous” prong of the statute also failed First Amendment scrutiny. Her opinion made quick work of the statute. She noted that the consistent practice at the PTO was to accept for registration marks that, for instance, expressed patriotic or pro-religious sentiments, but to classify as immoral and unregistrable those that praised terrorists or mocked religious beliefs. This was impermissible viewpoint discrimination because it “disfavors certain ideas.”6

In a brief concurrence, Justice Alito observed that the Court’s opinion did not preclude Congress from crafting a more narrow provision that was limited to a prohibition against the registration of “vulgar” terms as trademarks.7 He seemed to suggest that the mark at issue in this case might be such a term, characterizing it as a word that “is not needed to express any idea and, in fact, as commonly used today, generally signifies nothing except emotion and a severely limited vocabulary.”8

Justice Sotomayor, joined by Justice Breyer, dissented in part. She argued that the portion of the statute referencing “scandalous” marks could be severed from the rest of the statute and subject to a limiting construction that would only cover vulgar marks; in a separate opinion, the Chief Justice agreed.9 While she conceded that this would still be a content-based restriction of speech she felt that thus construed it would be viewpoint-neutral and would therefore be acceptable under the First Amendment, especially given her view that the Lanham Act was merely a statute conferring optional benefits and not, for instance, a criminal statute that punished speech.

Justice Breyer wrote separately to predict that the result in the case would be a proliferation of vulgar and offensive marks which “may lead to the creation of public spaces that many will find repellent, perhaps on occasion creating the risk of verbal altercations or even physical confrontations.”10 His prediction may prove accurate; there are nearly 400 applications to register the word FUCK or variations of it already pending at the PTO, many filed after the Court of Appeals decision in this case. It seems inevitable that there will be many more.11

Curiously, no member of the Court cited San Francisco Arts & Athletics, Inc. v. United States Olympic Committee.12 In that case a group sponsoring an athletic competition called the GAY OLYMPIC GAMES was sued by the U.S. Olympic Committee (“USOC”) under section 110 of the Amateur Sports Act.13 That provision grants the USOC exclusive rights to use the word OLYMPIC. The defendant group argued that the provision violated the First Amendment, but the Court upheld the statute, reasoning that the provision did not forbid a “message” but only the “manner” in which the message was conveyed.14

One might have thought the same logic was applicable to the scandalous and immoral language in the Lanham Act, with the added fact that it does not actually forbid the use of any language at all, but merely denies the benefits of trademark registration to affected applicants. For instance, take the mark BONG HITS 4 JESUS, which was cited by Justice Kagan as having been denied registration as immoral because of its viewpoint.15 She seemed to think it was rejected because of its viewpoint (that drugs and religious worship work well together). That is not self-evident. Perhaps alternatives such as GET HIGH WITH GOD, or STONED PRAYER WORKS would not have been denied registration. In other words, perhaps the flaw in the first mark was the reference to a specific piece of drug paraphernalia juxtaposed with a specific reference to the central figure of the Christian faith—the manner of expression—but other ways of expressing the idea of incorporating drugs into Christian worship would not have been as problematic.16 At a minimum, some discussion of the San Francisco Arts case in Brunetti would have been illuminating.

Even more curious is how little attention any of the Justices paid to the unique features of trademark law. Under conventional trademark law, any word, phrase, symbol, or design can serve as a trademark,17 but in order to do so it must function as a designation of origin. Material that merely serves as “ornamentation” on the surface of a product usually does not perform this purpose.

Courts have been alert to the ornamentation problem in cases involving trade dress, which is the physical design of a product’s packaging or of the product itself.18 The surface design of a paisley tie or a polka dotted pair of socks would not normally function as a trademark because consumers perceive it as part of the product’s design, not a statement about where the product comes from. Such product designs are not protectable unless the merchant can show that consumers have come to view them as designations of source—a concept known as secondary meaning in the trademark world.

Unfortunately, both the courts and the PTO have been less vigilant about applying the ornamentation logic where the material consists of a word or phrase and where the goods in question are items such as caps, tee shirts, jackets, and bumper stickers, and where the seller’s intent is to feature the mark on most or all of the surface of the product.19 We can think of these as “message-marks” and the goods as “billboard goods.”

It is highly likely that most message-marks on billboard goods do not function as trademarks at all, in that consumers likely perceive them as a sentiment unrelated to the product origin. When a person sees a passerby wearing a shirt that says HAVE A NICE DAY printed in large font on the shirt, it is not very likely the consumer thinks that the shirt is a HAVE A NICE DAY brand shirt.20 The same is true if one sees a shirt that says BACK THE F@#% OFF!21 or IT’S EASY TO GIVE A F*CK.22

Many of the cases involving scandalous or immoral marks have involved just this sort of situation. Where that is the case, the PTO should have been denying registration on the ornamentation ground, absent a strong showing that the applicant will be using, and that the public will perceive, the material as a true trademark. Of course this rule should be applied to all “message-marks” to be used on all “billboard goods” regardless of whether they are scandalous. Such an across-the-board approach would largely eliminate many of the more “expressive” uses of trademarks that are presented for registration and significantly curtail the First Amendment implications of any of the Lanham Act bars on registration.

To be sure, trademarks other than those I have labelled “message-marks,” including some meant for non-billboard type goods, could conceivably communicate a point of view. The mark SOBER WATER on bottled water might express the owner’s opposition to alcohol consumption, for instance. Nonetheless, of the over 600,000 federal trademark applications filed annually, most do not express any particular ascertainable viewpoint at all and will be used on goods where disseminating any such point of view would be ineffective. For the most part only marks that are meant to be used on “billboard goods” and to cover the majority of the surface of those goods are likely to be viewpoint-oriented, even if, in some cases, the viewpoint is the inarticulate grunt of a single four-letter word.

Moreover, there is a sense in which the Court’s opinion actually may work to undermine First Amendment values. None of the Justices who wrote in Brunetti recognized that the entire point of trademark law is to confer a right to exclude. A trademark only functions to identify goods if the owner can preclude others from using the same or similar marks. The owner of a trademark thus has the right to enjoin others from using the same or similar mark on the same or related goods.23

With message-marks, that means that once trademark rights are granted, the holder of those rights can enjoin others from making the same or similar statements on most other type of “billboard” goods. This is already a problem with nonoffensive, nonscandalous message-marks, but the Court has simply enlarged the problem. Assume someone seeks to register the mark FUCK THE XXXXX, for tee shirts, bumper stickers, and caps, where the unspecified final word is an ethnic group such as JEWS, BLACKS, LATINOS or the like. While the view is loathsome it is presumably constitutionally protected. However, once a mark comprising those words is registered, the holder of the mark has a significant possibility of using the trademark to prevent all others from printing a similar24 sentiment on their own tee shirts, bumper stickers or caps. Effectively, granting trademark protection in a case like this provides a way for the holder of the mark to suppress the message in question on “billboard goods.” This grants a form of backdoor copyright to material that would normally be ineligible for copyright.25

A ban on registration actually leaves the material free for the public to use after the first party slaps the words on a tee shirt.26 If there is viewpoint discrimination inherent in the challenged statutory provision, it ironically may run in the opposite direction of the one assumed by the court. The effect of the statute arguably made popular, conventional or anodyne sentiments registrable, and thus subject to injunctions when used by anyone other than the holder of the trademark registration, while leaving everyone free to splash crude and countercultural sentiments on billboard goods. After the result in the case all messages will be subject to injunction, both those that are mainstream and those that raise eyebrows or more. The result is, perhaps, greater symmetry in allowing trademark to suppress all viewpoints across the spectrum, but one which hardly moves us closely to maximizing First Amendment values.

A revision of practice at the PTO that took a more expansive view of the ornamentation concept and denied registration to all message-marks would have gone a long way toward avoiding the problems the Brunetti Court saw with the statute and toward draining trademark registration practice of First Amendment freight, and in that world, provisions like the one challenged in Brunetti might have suffered a different fate.

Roger E. Schechter joined the George Washington University Law School faculty in 1980. Before coming to GW Law, he was a litigator with the New York City firm of Paul, Weiss, Rifkind, Wharton & Garrison, where he handled a variety of antitrust, securities, and commercial cases. Prior to that, he served as a judicial law clerk for Judge Paul H. Roney of the U.S. Court of Appeals for the Fifth Circuit. While practicing in New York, he also was an adjunct instructor at the Cardozo Law School in New York, where he taught courses in legal writing and appellate advocacy. At GW Law, Professor Schechter teaches the basic course in torts and a variety of intellectual property courses, such as copyright law and trademark law. He is also a bar review lecturer on torts and family law in numerous jurisdictions around the country. He has twice received the Law School’s Distinguished Faculty Service Award; he also was awarded the 1997 Trachtenberg Prize for University Service. In 2004, the Brand Names Education Foundation awarded him their Pattishall Medal for excellence in the teaching of trademark law.

  1. 137 S. Ct. 1744 (2017).
  2. No. 18-302 (U.S. June 24, 2019).
  3. The provision in question is section 2(a) of the statute known as the Lanham Act, codified at 15 U.S.C. § 1052. In relevant part it provides that “[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—(a) Consists of or comprises immoral, deceptive, or scandalous matter.”
  4. As Justice Kagan euphemistically put it, “[a]ccording to Brunetti, the mark (which functions as the clothing’s brand name) is pronounced as four letters, one after the other: F-U-C-T. But you might read it differently and, if so, you would hardly be alone.” Brunetti, slip op. at 1–2 (citations omitted) (citing Transcript of Oral Argument at 5, Brunetti, No. 18-302 (U.S. June 24, 2019)). The brand name is described as “the equivalent of the profane past participle form of a well-known word of profanity.” Transcript of Oral Argument, supra, at 5.
  5. In re Brunetti, 877 F.3d 1330, 1357 (Fed. Cir. 2017).
  6. Brunetti, slip op. at 3.
  7. Id. at 1–2 (Alito, J., concurring).
  8. Id. at 2.
  9. See id. at 6–8 (Sotomayor, J., dissenting); id. at 1–2 (Roberts, C.J., concurring in part and dissenting in part). This view of the statutory language departs from the consistent interpretation of the Patent Office that the phrase “scandalous and immoral” was a unitary concept with the two separate words having no distinct meaning.
  10. Id. at 7 (Breyer, J., concurring in part and dissenting in part).
  11. For a brief list of some of the applications pending to register marks that many might perceive as crude, see Drew Schwartz, Now That You Can Trademark Swear Words, Here Are All the Wildest NSFW Requests, Vice (July 1, 2019), https://www.vice.com/en_ca/article/8xz3v3/supreme-court-ruling-on-trademarking-bad-words-fuct-all-the-funniest-new-requests.
  12. 483 U.S. 522 (1987).
  13. At the time the statute was codified as 36 U.S.C. § 380, and it can now be found at 36 U.S.C. § 220506.
  14. See S.F. Arts & Athletics, 483 U.S. at 536 (1987).
  15. See Brunetti, slip op. at 7.
  16. Justice Kagan also cited the registration denial for BABY AL QAEDA (for tee shirts) as another instance of “viewpoint” discrimination, since marks expressing anti-terrorist sentiments are not subject to any ban. See id. at 7–8. But the mark TERRORIST (for shirts) has been granted registration. See Registration No. 4,185,500. While this might be evidence of inconsistent application of the statute, it might also reflect a distinction between “manner” and “message,” with an explicit reference to Al Qaeda being viewed as particularly incendiary given its role in the 9-11 attacks.
  17. “[I]f a design is solely or merely ornamental and does not also identify and distinguish source, then it cannot be given the status of a valid trademark.” 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 7.24 (5th ed. 2019).
  18. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 213 (2000) (“In the case of product design, as in the case of color, we think consumer predisposition to equate the feature with the source does not exist. Consumers are aware of the reality that, almost invariably, even the most unusual of product designs—such as a cocktail shaker shaped like a penguin—is intended not to identify the source, but to render the product itself more useful or more appealing.”).
  19. The Trademark Manual of Examining Procedure provides that:

    Subject matter that is merely a decorative feature does not identify and distinguish the applicant’s goods and, thus, does not function as a trademark. A decorative feature may include words, designs, slogans, or trade dress. This matter should be refused registration because it is merely ornamentation and, therefore, does not function as a trademark, as required by §§ 1, 2, and 45 of the Trademark Act.

    Patent & Trademark Office § 1202.03, Refusal on Basis of Ornamentation (2018) (emphasis added).

  20. It is unclear what consumers think when seeing someone sporting a baseball hat which says MAKE AMERICA GREAT AGAIN but among the range of reactions, thoughts about trademark law are probably pretty far down the list.
  21. U.S. Trademark Application Serial No. 88,465,079 (filed June 8, 2019).
  22. U.S. Trademark Application Serial No. 88,353,967 (filed Mar. 24, 2019).
  23. See 15 U.S.C. § 1116 (2018); Restatement (Third) of Unfair Competition § 35 (1995).
  24. The holder of a trademark may enjoin others from using a mark that creates a “likelihood of confusion” and it is well established that defendant’s mark need not be identical to plaintiff’s to create that likelihood. See, e.g., Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 228 (5th Cir. 2009) (“Even if two marks are distinguishable, we ask whether, under the circumstances of use, the marks are similar enough that a reasonable person could believe the two products have a common origin or association.”). Thus, in the example cited in the text, the mark holder could enjoin shirts that said SCREW THE XXXX as well as those that contained the precise registered phrase.
  25. “Cases also deny protection to fragmentary words or phrases.” 1 Nimmer on Copyright § 2.01 (2019).
  26. This is imprecise to the extent that marks can be protected under state law as well as under the Lanham Act. However state law bans on protectable marks generally follow the Lanham Act approach, and state courts might have, prior to Brunetti, denied an injunction to the owner of an immoral or scandalous mark on grounds of “unclean hands” or general public policy. After Brunetti, the refusal, under state law, to grant an injunction to the holder of an “immoral” mark, might be considered unconstitutional viewpoint discrimination, meaning that the state would be obligated to grant an injunction and the first user could monopolize the message.

Recommended Citation
Roger E. Schechter, Response, Did The Supreme Court Just Suppress Speech in the Interest of Protecting The First Amendment? Iancu v. Brunetti, Geo. Wash. L. Rev. On the Docket (July 18, 2019), https://www.gwlr.org/did-the-supreme-court-just-suppress-speech-in-the-interest-of-protecting-the-first-amendment-iancu-v-brunetti/.

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