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

FILED UNDER: First Amendment, Law and the Courts, Supreme Court, U.S. Constitution
Doug Mataconis
About Doug Mataconis
Doug holds a B.A. in Political Science from Rutgers University and J.D. from George Mason University School of Law. He joined the staff of OTB in May 2010. Before joining OTB, he wrote at Below The BeltwayThe Liberty Papers, and United Liberty Follow Doug on Twitter | Facebook

Comments

  1. grumpy realist says:

    Expect a huge slew of trademarks of Nazi swastikas and other imagery, the N-word, etc…..

    Just the sort of thing to make those of a Jewish persuasion and African-Americans to feel happy and protected in our society, nu?

    Sometimes SCOTUS comes out with decisions that sound great in the abstract but have nasty side effects when carried out in real life.

  2. Raoul says:

    The Supreme Court truly does not know how to handle 1st Amendment cases. With Citizen United, Hobby Lobby and this case the court has placed the cart in front the wheel. Freedom of Speech has everything to do with open discourse and not a right to make a profit. Let me explain: in this case the owner of the trademark was simply not allowed to register and thus not given a certain presumption which purpose is simply to monetize one’s concept. The owner is still free to express his idea and pursue profits from it -the government is simply saying that one is on their own and it does not want to be complicit in a person making money of N***** or F*** shirts. The sooner the Court gets off its $=speech bandwagon the better. No way are our Founding Fathers our legislators of the last 230 years agree with this idiosyncratic formulation. The one thing the Court needs above everything else is common sense which is especially lacking here. Instead of saying one cannot register a certain term -really easy to do-the Court contributes to the continuing degradation of our discourse. Shameful.

  3. Daryl and his brother Darryl says:

    I mean…is anyone going to get upset about a t-shirt that says FUKT…when the POTUS is a credibly-accused rapist and, seemingly, no one cares? Outrage is dead.

  4. Gustopher says:

    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.”

    the only difference is whether the racial slur can be trademarked. Racists gonna racist.

  5. grumpy realist says:

    (Actually what I would do if I were the NAACP and the ADL is to immediately go ahead and file for trademarks on every single anti-Semitic/racist epithet/symbol I could think of, hold on to them and then whenever anyone uses one on a tee-shirt etc. go after them for trademark infringement, injunctions, and damages…..but that’s just me….)

    (They’ll have to deal with the “putting into the stream of commerce” requirement, but the NAACP and the ADL could just sell to each other and a few other picked parties, then quit.)

  6. James Joyner says:

    @Raoul:

    The owner is still free to express his idea and pursue profits from it -the government is simply saying that one is on their own and it does not want to be complicit in a person making money of N***** or F*** shirts.

    The problem is that the government is denying the registration on the basis of content. I’d be perfectly happy with a ruling that FUCT is insufficiently transformative of a common dictionary word to qualify for protection. But saying “FUCT” can’t be protected as a trademark because it’s offensive is clearly a 1st Amendment issue.

    @grumpy realist: Expect a huge slew of trademarks of Nazi swastikas and other imagery, the N-word, etc…..

    and

    @grumpy realist:

    Actually what I would do if I were the NAACP and the ADL is to immediately go ahead and file for trademarks on every single anti-Semitic/racist epithet/symbol I could think of,

    I don’t think common words are trademarkable.

  7. Raoul says:

    JJ: common words are not registrable? You mean like Giant, Sharp, Liberty, or Apple? And your comment about content and the 1st amendment is risible- after all content defines pornograhy or national security issues. And what does sufficiently transformative mean? That’s a new legal standard. Look everyone has an opinion but your knowledge of Trademark Law is limited- to quote a well known trademarkable phrase: stay in your lane, bro.

  8. James Joyner says:

    @Raoul:

    JJ: common words are not registrable? You mean like Giant, Sharp, Liberty, or Apple?

    None of those marks claim exclusive right to use or market a word, as was implied upthread. Indeed, while there have been legal fights over it, Apple Music and Apple Computer are completely different brands, each of which have limited rights to use the word “Apple” in their mark.

    And your comment about content and the 1st amendment is risible- after all content defines pornograhy or national security issues.

    I don’t understand what you’re trying to argue here. It’s a well-established principle in 1st Amendment jurisprudence that government can’t go after speech on the basis that it doesn’t like the message.

    And what does sufficiently transformative mean? That’s a new legal standard.

    It’s at the heart of the Fair Use doctrine, which applies to copyrights of intellectual property. It applies to patent law as well, in that you can’t patent concepts which are obvious.

  9. James Joyner says:

    @Raoul: See also,

    Generic words are the weakest types of “marks” (and cannot even qualify as “marks” in the legal sense) and are never registrable or enforceable against third parties. Because generic words are the common, everyday name for goods and services and everyone has the right to use such terms to refer to their goods and services, they are not protectable. Be aware that if you adopt a generic term to identify your goods or services, you will not be able to prevent others from using it to identify potentially competing products or services. In addition, even a fanciful mark that is very strong can, over time, become generic if the owner either starts using the mark in a nontrademark manner (see ESCALATOR and ASPIRIN examples, below) or fails to police use of
    its mark properly and take appropriate action. Without proper policing over time, the original owner of a mark could lose any trademark rights it has in the mark.

    Examples of generic marks:
    Applied-for trademarks that would be considered generic at the time of filing because they
    are the name of the good or product offered by the service:
    BICYCLE for “bicycles” or “retail bicycle stores”
    MILK for “a dairy-based beverage”
    Trademarks that eventually became generic because of long-term widespread, nontrademark use:
    ESCALATOR for “moving staircases,” ASPIRIN for “pain relief medication”

  10. grumpy realist says:

    @James Joyner: Oh, common words can pretty easily be trademarked, especially when a) used in an area totally unrelated to its normal meaning (e.g. Apple for computers) and b) when combined with drawings/decorations/circles etc. I don’t think the USPTO will have any problems about “genericide” killing racial epithet trademarks, especially when “used on clothing.”

    (“Genericide” usually refers to when a trademark gets to stand for an object rather than a brand–one of the reasons Xerox insisted so much on people using the term “copying” rather than “xeroxing” to refer to the situation when a printed sheet of paper was copied using their or their rivals’ machines. Google is fighting a similar battle at present and is probably losing, which means that “google” will join such noted trademarks as aspirin, Murphy bed, escalator, dry ice, cellophane…..)