Supreme Court Strikes Down Lanham Act Prohibition On “Immoral” Trademarks
The Supreme Court has struck down a provision of the Lanham Act barring approval of "immoral" or "scandalous" trademarks as unconstitutional.
The Supreme Court has struck down a provision of the Lanham Act, the primary Federal law governing trademarks and copyrights, that barred the granting of a trademark to marks that contain words that are “immoral,” “shocking,” “offensive” of “scandalous” words, arguing that this section of the law violates the First Amendment:
WASHINGTON — The Supreme Court on Monday struck down a federal law barring the registration of “immoral” or “scandalous” trademarks, saying it ran afoul of the First Amendment.
The court also made it harder for news organizations and the public to obtain commercial information under the Freedom of Information Act.
The trademark case concerned of a line of clothing sold under the brand name FUCT. When the case was argued in April, a government lawyer told the justices that the term was “the equivalent of the past participle form of the paradigmatic profane word in our culture.”
Justice Elena Kagan, writing for a six-justice majority, did not dispute that. But she said the law was unconstitutional because it “disfavors certain ideas.”
She gave examples. Government officials have granted trademark protection to antidrug messages but not to “Marijuana Cola,” to pro-religion messages but not to “Madonna” wine and to antiterrorism messages but not to “Baby Al Qaeda.”
The decisions were understandable, Justice Kagan wrote. “The rejected marks express opinions that are, at the least, offensive to many Americans,” she wrote.
But a bedrock principle of First Amendment law, she wrote, is that the government may not draw distinctions based on speakers’ viewpoints.
In 2017, addressing a companion provision in the trademark law, a unanimous eight-justice court struck down a restriction on trademarks that disparage people, living or dead, along with “institutions, beliefs or national symbols.”
The decision, Matal v. Tam, concerned an Asian-American dance-rock band called the Slants. The court split 4 to 4 in much of its reasoning, but all of the justices agreed that the provision at issue in that case violated the Constitution because it took sides based on speakers’ viewpoints. (The decision also effectively allowed the Washington Redskins football team to register its trademarks.)
On Monday, Justice Kagan wrote that the same analysis applied to the provision barring immoral or scandalous trademarks. She rejected arguments from the government and dissenting justices asking the court to read the statute narrowly to deny registration only to trademarks that use particularly offensive language, whatever their viewpoint. But she suggested that such a statute might survive constitutional scrutiny.
Justices Clarence Thomas, Ruth Bader Ginsburg, Samuel A. Alito Jr., Neil M. Gorsuch and Brett M. Kavanaugh joined Justice Kagan’s majority opinion.
Three justices filed partial dissents. All agreed that the ban on immoral trademarks must fall but said that the prohibition of scandalous ones could survive if narrowly interpreted.
“The First Amendment protects the freedom of speech,” Chief Justice John G. Roberts Jr. wrote. “It does not require the government to give aid and comfort to those using obscene, vulgar and profane modes of expression.”
In his own partial dissent, Justice Stephen G. Breyer cited social science research showing that swear words have special force, and he worried that the decision could encourage wider use of racial slurs. “Just think,” he wrote, “about how you might react if you saw someone wearing a T-shirt or using a product emblazoned with an odious racial epithet.”
Justice Sonia Sotomayor also filed a partial dissent in the case, Iancu v. Brunetti, No. 18-302, saying she would have interpreted the prohibition on scandalous trademarks to cover only “obscenity, vulgarity and profanity.”
As noted above, this decision comes just over two years since the Supreme Court ruled in another case that a provision of the same law that barred the granting of “disparaging” trademarks was unconstitutional. That case involved an effort by an Asian-American music group called “The Slants” to trademark their name, a petition which the Patent and Trademark Office denied. In reaching that decision, the Court relied on essentially the same arguments it did in the decision issued today.
Specifically, the court relied on a long line of cases that stand for the proposition that the fact that certain forms of speech are “offensive” is not a sufficient reason for the state to regulate that speech, or to deny to people rights or benefits such as a trademark or, presumably, the protection of a copyright because the content of the speech is “offensive.” Generally speaking, this is because the Court has been almost entirely consistent in holding that content-based regulation of speech is per se impermissible. This has been true even in cases where the speech in question can be highly offensive.
One of the most famous of cases dealing with “offensive” speech, of course, was National Socialist Party Of America v. Village of Skokie, a 1972 case that involved an effort by a predominantly Jewish Chicago suburb’s efforts to block a group of Nazis from staging a march through the town. In that case, the Illinois Supreme Court, acting after a reversal of an injunction against the march issued by the United States Supreme Court, ruled that the use of a swastika in the march was precisely the kind of symbolic speech protected by the First Amendment and that the government could not enact a prior restraint against such speech just based on the fear that it could provoke a violent response from on-lookers.
More recently, in Snyder v. Phelps, the Supreme Court set aside a civil judgment issued by a jury in Maryland against the Westboro Baptist Church in favor of the father of a fallen Marine whose funeral was protested by Westboro with its all-too-familiar signs and rhetoric. In its ruling, the Court held that the fact that Westboro’s rhetoric was highly offensive and hateful was not, in and of itself sufficient reason to exempt it from the protection of the First Amendment. In these and other cases, the Supreme Court has made clear that the mere fact that speech is offensive is not, in and of itself, sufficient justification for banning it or punishing those who might utter it in either criminal or civil Court. These cases and others made the outcome of today’s case essentially predictable, as James Joyner noted when the case was argued back in April.
Among other things, this case should put the final nail in the coffin of any legal effort that someone may try to undertake to try to deprive the Washington Redskins of trademark protection for their name. At essentially the same time that the case involving The Slants was pending in the Supreme Court, a group of activists claiming to represent Native Americans was trying to get the trademarks granted to the team in the early 1960s revoked because they were “disparaging” and “offensive.” trademarks that were granted to the Washington Redskins in the early 1960s. That effort was successful in a proceeding before the Patent and Trademark Office’s trial board, As I noted at the time, that action by the Patent and Trademark Office was legally dubious given what the Supreme Court had previously stated regarding the ability of laws and governmental authorities to restrict speech based on content specifically because it was “offensive.” The PTO appeals board ruling, however, was upheld by a Federal District Court Judge in Virginia who relied to a significant degree on a 2015 opinion from the Supreme Court that found that states could decline to allow certain messages to appear on license plates based on content because the license plate was a form of what that decision called ‘governmental speech,” in which the government had discretion in what messages it would promote and which ones it would not.
As Eugene Volokh noted at the time, though, the argument that granting trademark protection was “governmental speech” in the same way that a license plate on an automobile was held to be is rather weak to begin with, and falls apart largely because the government doesn’t really have any authority over a trademark after the grant of protection whereas the license plate remains, at least in some theoretical sense, government property that must be turned over to the state when a car is sold or otherwise disposed of by the owner. After the decision in the case involving The Slants, the Federal Government ended its defense of the PTO ruling, thus closing the book on that particular case. This case, combined with the previous ruling should preclude any future legal effort against the team, or at least to make any argument a Plaintiff might make legally dubious at best.
Here’s the opinion:
Iancu v. Brunetti by on Scribd