Ban on Scandalous Marks Given the Bird by SCOTUS

Los Angeles artist Erik Brunetti, the founder of the streetwear clothing company FUCT, poses for a photo in Los Angeles on April, 11, 2019. Brunetti’s four-letter clothing brand starts with an “f” and rhymes with “duct.” The federal government calls it “scandalous” and “immoral” and has refused to register the trademark. Brunetti says the century-old provision should be struck down as an unconstitutional restriction on speech. (AP Photo/Damian Dovarganes)

WASHINGTON (CN) – Flipping off a federal prohibition on offensive speech, the Supreme Court sided Monday with a designer seeking to protect his clothing line called FUCT.

Erik Brunetti says the label is an acronym for “Friends U Can’t Trust,” but trademark officials cited the Lanham Act’s prohibition against  scandalous or immoral trademarks in refusing his 2011 application.

The Federal Circuit reversed in 2017, saying the First Amendment trumps the government’s interest in banning vulgarity.

Well timed for Brunetti, the Supreme Court had ruled just that past June to strike down the Lanham Act’s ban on disparaging trademarks, a clause that the Patent and Trademark Office had invoked to stop Asian-American rocker Simon Tam from trademarking the name of his band, The Slants.

The Supreme Court heard arguments on Brunetti’s case in April, an hour in which attorneys and justices developed increasingly creative methods to avoid pronouncing Brunetti’s brand and other profanities.

Justice Elena Kagan repeatedly cited The Slants’ case in her 11-page opinion for the majority on Monday, saying the scandalous and immoral marks provision likewise “disfavors certain ideas.”

Cracking open her dictionary, Kagan wrote that what is deemed scandalous or immoral must be judged against prevailing cultural norms, and that the Lanham Act therefore necessarily allows for the registration of marks that echo what is acceptable to society while dismissing those that are not.

She then recounted some trademark cases in which the government applied different standards to marks that include the same words because of the message each put out.

For example, the people who wanted to trademark their Marijuana Cola brand left the Patent and Trademark Office disappointed, while those behind “Say No to Drugs – Reality Is the Best Trip in Life” were successful in getting their trademark.

Bong Hits for Jesus was similarly deemed unworthy of a trademark, while Jesus Died for You clothing enjoys trademark protection, Kagan wrote.

“Of course, all these decisions are understandable,” Kagan wrote. “The rejected marks express opinions that are, at the least, offensive to many Americans. But as the court made clear in Tam, a law disfavoring ‘ideas that offend’ discriminates on the basis of viewpoint, in violation of the First Amendment. 

No justice totally disagreed with Kagan’s opinion, though partial dissents were filed by Chief Justice John Roberts and Justices Stephen Breyer and Sonia Sotomayor.

In the longest of these, Sotomayor argued that the court should have done what it could to save the law, invalidating only the bar on immoral marks while preserving the scandalous provision. To Sotomayor, the word scandalous can be narrowed to bar only the registration of “obscenity, vulgarity and profanity.”

“Such a narrowing construction would save that duly enacted legislative text by rendering it a reasonable, viewpoint-neutral restriction on speech that is permissible in the context of a beneficial governmental initiative like the trademark-registration system,” Sotomayor wrote.

This would allow the government to deny marks that include generally agreed-upon words that “cause a visceral reaction, that are not commonly used around children and that are prohibited in comparable settings.”

Though she declined to offer an exhaustive list, Sotomayor said that limited reading of scandalous would include “four-letter words” and others most people agree are obscene.

“Everyone can think of a small number of words (including the apparent homonym of Brunetti’s mark) that would, however, plainly qualify,” Sotomayor wrote (parentheses in original).

The other two partial dissents agree with Sotomayor’s core contention, but with slight differences.

Roberts for one did not say whether he would have held Brunetti could register his brand, but Sotomayor and Breyer noted that FUCT would not enjoy trademark protection under their analyses. 

Roberts also argued the refusal to register “obscene, vulgar or profane” marks does not run against the First Amendment, saying the government has an interest in not being associated with such speech and the inability to obtain a trademark does not silence anybody.

“The First Amendment protects the freedom of speech,” Roberts wrote. “It does not require the government to give aid and comfort to those using obscene, vulgar and profane modes of expression.”

For his part, Breyer accused the court of being too “rigid” in how it assesses potential First Amendment violations. Instead of breaking First Amendment claims into categories, Breyer wrote, the court should “appeal more often and more directly to the values the First Amendment seeks to protect.”

“The First Amendment is not the tax code,” Breyer wrote.

Breyer wrote the government has a legitimate interest in discouraging the use of obscene words, as their common use could cause civil unrest or expose children to corrupting influences.

Brunetti was represented by Irvine, Calif., attorney John Sommer. Sommer did not immediately return a request for comment on the decision.

The Justice Department declined to comment on Monday.

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