A clothing line with a vulgar-sounding name is about to test the U.S. Supreme Court’s commitment to free speech.
The justices will hear arguments April 15 from a lawyer for Erik Brunetti, who was rejected when he sought federal protection for his “FUCT” trademark. Brunetti is asking the court to strike down a century-old provision that bars the inclusion of “scandalous” and “immoral” trademarks on a U.S. government registry.
Recent history suggests the justices will be skeptical about the prohibition. Two years ago, the court unanimously threw out a similar ban on disparaging trademarks in Tam v. Matal, a case involving an Asian-American dance-rock band called The Slants, saying it violated the First Amendment.
Critics of the vulgarity ban, part of the federal statute that governs trademarks, say it can’t be applied consistently. In other cases, the U.S. Patent and Trademark Office allowed registration of “fcuk,” “wtf is up with my love life?!” and “fword,” as well as various scatological references and words describing sexual activity.
“It’s inherent in the nature of this,” said Barton Beebe, a New York University law professor who analyzed the 6.7 million trademark applications filed from 1985 through 2016. “There’s no clear, administrable way to distinguish between something that’s too scandalous versus not-quite-so-scandalous.”
Federal registration gives trademark owners protections on top of those they already have under state law. Registration can confer exclusive rights in parts of the country where no one was already using the name or image, help owners win lawsuits, and put would-be competitors on notice that a trademark is legally protected.
Thunderpussy on Hold
The Trump administration is defending the ban. U.S. Solicitor General Noel Francisco says Brunetti is free to use the FUCT label but doesn’t have the right to claim the legal benefits of federal registration.
“The scandalous-marks provision does not restrict speech, but simply imposes a condition on the availability of a government benefit,” Francisco argued in court papers.
Brunetti describes his clothes as “street fashion” and says his products have been sold at Urban Outfitters and small skate shops, as well as online.
In tossing out the ban, the U.S. Court of Appeals for the Federal Circuit said the First Amendment “protects private expression, even private expression which is offensive to a substantial composite of the general public.”
The federal trademark office has suspended consideration of vulgar and lewd marks during the court fight. Among those on hold are applications by the all-women music groups Pussy Riot and Thunderpussy over their band names. Miramax LLC is awaiting word on its bid to register “bad mother f---er,” without the hyphens, for use on Pulp Fiction-themed goods.
The office rejected almost 2,000 applications for word trademarks as “immoral” or “scandalous” from 2003 to 2015, according to the study by Beebe and fellow New York University law professor Jeanne Fromer.
Intellectual property attorney Fabio E. Marino of Polsinelli PC also cited inconsistency in how the law is applied, and said he doesn’t expect the justices to overrule the Federal Circuit.
“I don’t know how you would draft that opinion unless you reverse Tam,” he said.
Marino said the Supreme Court generally doesn’t review Federal Circuit opinions with which it fully agrees, suggesting the high court could issue a limited reversal. But the justices may just want to solidify the appellate court’s ruling as nationwide precedent, he said.
Jacqueline Lesser, a copyright and trademark attorney at Baker Hostetler, said the law banning scandalous trademarks is “void for vagueness” because it’s so subjective. But, she said, the justices could also provide a framework for the government to restrict “shock value” marks for not functioning as trademarks, which identify a source of a product.
Trademarks applicants often secure registration because they initially only have to say that they intend to use the mark, and generally face little or no third-party opposition, she said.
“Say a Nazi symbol is approved as a trademark, and a T-shirt is submitted as evidence of use,” Lesser said. Unless someone notices the application, and has standing to oppose, “It’s just going to go through,” she said.
“Is that really a trademark?” she asked. “I’d say no, it’s simply words on a T-shirt intended for shock value.”
The 2017 ruling on disparaging trademarks was a victory for The Slants and helped the Washington Redskins football team defeat a challenge to its registered trademark. Although the eight justices taking part splintered in their reasoning, all said the provision was a form of unconstitutional viewpoint discrimination.
Brunetti’s lawyers argued in court papers that “there is no principled reason to reach a different result here than this court reached as to the disparagement clause.”
Francisco contends the vulgarity ban is different because it doesn’t depend on the viewpoint of the applicant.
“It bars registration of scandalous marks not because such marks are thought to convey offensive ideas, but because they reflect an offensive mode of expressing whatever idea the speaker wishes to convey,” the solicitor general argued.
Beebe says the high court has plenty of other grounds to strike down the vulgarity ban, including its impact on “high value” speech.
He points to the Patent and Trademark Office’s 2013 rejection of an application to register “P.H.U.C CANCER (PLEASE HELP US CURE CANCER).” Officials gave two reasons for the rejection: the vulgarity ban and the earlier filing of another application the term “PHUC.” The oddity was that the earlier application was approved, he says.
“That kind of inconsistency with respect to that kind of speech is exactly what the First Amendment is designed to prevent when it comes to government regulation,” Beebe said.
The court will rule by the end of June in the case, Iancu v. Brunetti, 18-302.
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(Updated with additional reporting)