An unusual configuration of justices from both ideological wings of the Supreme Court came together Monday to strike down provisions in federal law denying federal registration to trademarks deemed “immoral” or “scandalous.”
The decision, which won the full backing of six of the justices, was the second time in two years that the high court knocked out a portion of federal trademark law as a violation of free speech rights.
Writing for the court’s majority, Justice Elena Kagan said the law ran afoul of the First Amendment rights of artist Erik Brunetti, who sought trademark protection for a clothing line called “FUCT.”
Officials at the Patent and Trademark Office rejected the proposed trademark, calling it “vulgar” and "highly offensive” and therefore banned from registration under the federal law on trademarks, the Lanham Act.
Justice Department attorneys sought to narrow the meaning of immoral and scandalous to cover just marks that are sexually explicit or profane, but Kagan said that didn’t comport closely enough with the statute, which seemed to sweep in a broader range of potential marks.
“Once the ‘immoral or scandalous’ bar is interpreted fairly, it must be invalidated,” she wrote in a relatively brief, 11-page opinion. “There are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all. It therefore violates the First Amendment.”
Kagan also pointed to what she suggested was inequitable enforcement of the law, allowing anti-drug trademarks while banning pro-drug ones, and barring some religious references like a “Madonna” wine, while allowing trademarks that seemed to promote religion on T-shirts and games.
At arguments in the case in April, the justices and litigants carefully avoided around the swear word that is a homophone for Brunetti’s proposed trademark, with his attorney Malcolm Stewart noting that the trademark office found that many people would view the mark as “the equivalent of the profane past participle form of a well-known word of profanity and perhaps the paradigmatic word of profanity in our language.”
Kagan’s opinion was fully endorsed by liberal Justice Ruth Bader Ginsburg as well as all the court’s Republican appointees, save for Chief Justice John Roberts.
Roberts, along with Justices Sonia Sotomayor and Stephen Breyer, partially dissented, arguing that the ban on “scandalous” trademarks was constitutional when read to cover marks that are vulgar or obscene.
The chief justice said core free speech rights were not threatened in the case because no one was proposing to prevent Brunetti from using his “FUCT” logo, just denying it trademark status.
“The Government…has an interest in not associating itself with trademarks whose content is obscene, vulgar, or profane. The First Amendment protects the freedom of speech; it does not require the Government to give aid and comfort to those using obscene, vulgar, and profane modes of expression,” Roberts wrote.
The court ruled two years ago that the government could not use a ban on “disparaging” trademarks to deny registration to a band that called itself “the Slants.”
But Breyer and Sotomayor seemed particularly concerned that the ruling Monday could lead to a proliferation of clothing and other merchandise emblazoned with racial epithets.
“These attention-grabbing words, though financially valuable to some businesses that seek to attract interest in their products, threaten to distract consumers and disrupt commerce. And they may lead to the creation of public spaces that many will find repellant, perhaps on occasion creating the risk of verbal altercations or even physical confrontations. (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.
“The Government thus has an interest in seeking to disincentivize the use of such words in commerce by denying the benefit of trademark registration,” Breyer added.
Sotomayor expressed worry that “some more extreme” trademarks than the “FUCT” one at issue in the case would now wind up with federal approval. She suggested “at least one particularly egregious racial epithet” should be considered “scandalous,” but she did not specify which one.
While Justice Samuel Alito joined the majority, he also wrote separately to say he saw no real value in Brunetti’s “FUCT” mark and would find a ban on it constitutional if more narrowly written.
“The term suggested by that mark is not needed to express any idea and, in fact, as commonly used today, generally signifies nothing except emotion and a severely limited vocabulary,” he wrote. “The registration of such marks serves only to further coarsen our popular culture. But we are not legislators and cannot substitute a new statute for the one now in force.”
Article originally published on POLITICO Magazine
