“The ban on ‘immoral’ and ‘scandalous’ trademarks does just that.”
Five justices joined Kagan’s opinion in Iancu v. Brunetti. Los Angeles artist Erik Brunetti had sued the government, saying it violated the First Amendment by refusing to register the trademark for his “subversive” clothing line: FUCT.
Other justices on both sides of the court’s ideological divide worried that the ruling went too far and would leave the Patent and Trademark Office powerless to refuse, in the words of Justice Sonia Sotomayor, “registering marks containing the most vulgar, profane, or obscene words and images imaginable.”
Sotomayor feared that the government would now be forced to register trademarks that include even a “particularly egregious racial epithet.” The Justice Department declined to comment on the decision or the trademark office’s next steps.
Justice Stephen G. Breyer worried that approving particularly divisive trademarks could lead to violence. “Just think about how you might react if you saw someone wearing a t-shirt or using a product emblazoned with an odious racial epithet,” Breyer wrote.
Answered Justice Samuel A. Alito Jr., who concurred with Kagan’s opinion: “Viewpoint discrimination is poison to a free society.”
The dispute might sound familiar. Two years ago, when an Asian American rock group, the Slants, challenged the law against registering “disparaging” trademarks, the court ruled it was unconstitutional. The band was supported in the case by pro football’s Washington Redskins.
Brunetti challenged a neighboring provision prohibiting the registration of “immoral” or “scandalous” trademarks.
The U.S. Court of Appeals for the Federal Circuit ruled in his favor in late 2017, saying that the provocative name he chose for his skater-inspired clothing line was indeed scandalous but that the law against it could not be upheld.
Kagan wrote that “according to Brunetti, the mark . . . 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.”
The court’s previous decision, over the law’s disparagement provision, also was splintered, but Kagan said all the justices agreed on one thing: “The government may not discriminate against speech based on the ideas or opinions it conveys.”
This time, all members of the court agreed that the “immoral” provision of the law could not survive because there was no way to construe it except as viewpoint bias. The disagreement was over whether “scandalous” swept too broadly.
Kagan said some of the Patent and Trademark Office’s rulings answered the question.
“The PTO has refused to register marks communicating ‘immoral’ or ‘scandalous’ views about (among other things) drug use, religion, and terrorism,” she wrote. “But all the while, it has approved registration of marks expressing more accepted views on the same topics.”
As an example, she wrote, the office rejected marks for T-shirts that said “BABY AL QAEDA” but accepted a mark for “WAR ON TERROR MEMORIAL.”
That is “understandable,” she wrote. “The rejected marks express opinions that are, at the least, offensive to many Americans. But as the Court made clear in [the disparagement case], a law disfavoring ‘ideas that offend’ discriminates based on viewpoint, in violation of the First Amendment.”
In a footnote, Kagan hinted that Congress might try again, saying the court’s majority was not passing judgment on a law that would forbid only “lewd, sexually explicit, or profane marks.”
Washington lawyer Marsha Gentner, who specializes in trademark enforcement, said that offers “a road map here for legislative action which I expect the USPTO will pursue — a provision that bars registration, at least, of obscene, vulgar, or profane marks.”
Kagan was joined by an ideologically mixed group of justices: Alito, Clarence Thomas, Ruth Bader Ginsburg, Neil M. Gorsuch and Brett M. Kavanaugh.
Alito wrote separately to emphasize that a “law banning speech deemed by government officials to be ‘immoral’ or ‘scandalous’ can easily be exploited for illegitimate ends.”
“In many countries with constitutions or legal traditions that claim to protect freedom of speech, serious viewpoint discrimination is now tolerated, and such discrimination has become increasingly prevalent in this country,” he wrote. “At a time when free speech is under attack, it is especially important for this Court to remain firm on the principle that the First Amendment does not tolerate viewpoint discrimination.”
Alito was not more specific than that, but many in the conservative legal establishment have been upset by reports that some college campuses have banned speakers with views on the political right or made it more difficult for them to be heard.
Sotomayor, Breyer and Chief Justice John G. Roberts Jr. wrote opinions saying there was a way to construe the law’s “scandalous” prohibition that would keep it within constitutional confines.
Roberts noted that the patent decision did not impinge Brunetti’s rights. “No speech is being restricted; no one is being punished,” the chief justice wrote. “The owners of such marks are merely denied certain additional benefits associated with federal trademark registration. The Government, meanwhile, has an interest in not associating itself with trademarks whose content is obscene, vulgar or profane,” he wrote.
Breyer worried about a coarsening of society. “Scientific evidence suggests that certain highly vulgar words have a physiological and emotional impact that makes them different in kind from most other words,” he wrote, adding, “These vulgar words originate in a different part of our brains than most other words.”
Breyer’s bottom line: “How much harm to First Amendment interests does a bar on registering highly vulgar or obscene trademarks work? Not much.”
Sotomayor said the majority opinion was “reasonable,” but she thought that “scandalous” could be narrowed to a “viewpoint-neutral form of content discrimination” that could survive constitutional scrutiny.
The court has decided that obscenity falls outside First Amendment protection, Sotomayor noted. She said she would not detail a list of “scandalous” words but would permit the PTO to restrict “the small group of lewd or ‘swear’ words that cause a visceral reaction, that are not commonly used around children, and that are prohibited in comparable settings.”
Sotomayor added that “the apparent homonym of Brunetti’s mark” would “plainly qualify.”
So would certain racial epithets, she said. In a footnote, she said the PTO had been “holding in abeyance” trademark applications with such words. The government now presumably will have to accept them, she said.