Supreme Court Strikes Down Ban on Scandalous Trademark Registrations

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U.S. Supreme Court 

Throughout the history of the United States, the government has policed morality of its citizenry in both subtle and obvious ways. On Monday, the Supreme Court tackled one of the more subtle forms of rectitude — a nearly century-old prohibition on the federal registration of “immoral” or “scandalous” trademarks. In its decision, the high court held that the refusal by the U.S. Patent and Trademark Office to accept the registration of "FUCT" amounted to viewpoint discrimination in violation of the First Amendment to the U.S. Constitution.

"FUCT" is the clothing line founded by Erik Brunetti, who took on trademark examiners after being turned away. In December 2017, he got the the United States Court of Appeals for the Federal Circuit to hold that the Lanham Act's ban on immoral or scandalous matter was unconstitutional. That seemingly opened the door to more registrations of f-bombs and other profane marks that could be associated with sponsors.

The Federal Circuit's 2017 decision came months after the Supreme Court opinion involving Simon Tam, the Asian-American frontman of The Slants, who convinced a majority of justices to strike down a separate provision of the Lanham Act — one that looked down on the registration of disparaging marks.

The Tam case presaged the the Brunetti one, but the government was nevertheless hopeful that its prurient concerns would survive another day.

The government's main contention was that the trademark registration program doesn't really restrict speech. To hold a trademark, meaning a work or phrase used to identify goods and services in commerce, one doesn't necessarily need to register. Doing so only provides certain advantages like good evidence of that trademark's validity. As such, the government framed registration as a subsidy for marks it wishes to promote rather than a restriction on marks that are excluded. In the Tam case, a majority of justices didn't come to a firm conclusion on that proposition. A plurality of justices led by Samuel Alito rejected the subsidy argument, but what ultimately carried the day two years ago was the conclusion in Justice Anthony Kennnedy's concurrence that the ban on disparaging marks was a viewpoint-based restriction of speech.

Filling in the gaps in its follow-up opinion today, the Supreme Court agrees with Brunetti that no principled reason exists for distinguishing the disparagement ban from the scandalous ban.

As Justice Elena Kagan writes, "We hold that this provision infringes the First Amendment for the same reason: It too disfavors certain ideas."

The government's claim that it's a content neutral action to establish criteria on profanity, excretory and sexual matter can't survive the sniff test, not when such regulation amounts to a perspective on what's offensive and not when trademark examiners have in the past applied their standards inconsistently.

"The facial viewpoint bias in the law results in viewpoint-discriminatory application," writes Kagan. "The PTO, for example, asks whether the public would view the mark as 'shocking to the sense of truth, decency, or propriety'; 'calling out for condemnation'; 'offensive'; or 'disreputable.' Using those guideposts, the PTO has refused to register marks communicating 'immoral' or 'scandalous' views about (among other things) drug use, religion, and terrorism. But all the while, it has approved registration of marks expressing more accepted views on the same topics."

Here's the full opinion.

More to come.

In other Supreme Court news, the justices have rejected a petition brought by ReDigi to examine whether its secondhand digital market was blessed by the First Sale Doctrine, or as a lower appeals court concluded, whether the resale of digital songs amounted to impermissible reproduction in violation of copyright law. The petition brought an amicus brief arguing that the conclusion would mean less old movies on streaming networks. 

On the other hand, the Supreme Court has accepted the review of a case -- Georgia v. Public.Resource.Org Inc -- that will decide whether annotations of state government code are copyrightable. The Eleventh Circuit concluded they weren't based on the government edicts doctrine.

Finally, in a blow to journalists using the Freedom of Information Act, the Supreme Court today reversed a lower court opinion in ruling that when confidential and financial information is treated as private by its owner and provided to the government with an expectation of privacy, such information is exempted from disclosure. See that decision here.

This article was originally published by The Hollywood Reporter.