Iancu v. Brunetti
Argument: April 15, 2019
Respondent Brief: Erik Brunetti
Can Brunetti get a trademark on the word “FUCT”?
Erik Brunetti is obviously a cool guy. He’s been using the word “FUCT” on very cool clothing since 1990. We all know what he’s going for, but the question is: Can the U.S. Patent and Trademark Office reject his application for a patent because FUCT is “scandalous”?
The trademark rule banning immoral or scandalous matter
The Lanham Act of 1946 sets out the rules on what the government can trademark. It prohibits trademarks that:
[consist] of or [comprise] immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.
The federal government generally considers marks that might be “immoral” or “scandalous” together. Thus, the rule relevant to this case is the rule against “immoral or scandalous” matter.
The First Amendment generally
The First Amendment protects individuals from government attempts to censor speech. The founders valued free speech and discourse as essential to a government “of the people.” The First Amendment’s right to free speech includes freedom from discrimination based on the speaker’s viewpoint and freedom from speech censoring based on content.
The USPTO ruling
The USPTO rejected Brunetti’s request for a patent by relying on the rule against scandalous and immoral matter. The Board decided FUCT was the slang equivalent of the past tense of the word “fuck,” noting FUCT is FUCKED’s phonetic equivalent. Furthermore, the Board explained:
Mr. Brunetti used the mark in the context of "strong, and often explicit, sexual imagery that objectifies women and offers degrading examples of extreme misogyny," with a theme "of extreme nihilism—displaying an unending succession of anti-social imagery of executions, despair, violent and bloody scenes including dismemberment, hellacious or apocalyptic events, and dozens of examples of other imagery lacking in taste."
In conclusion, FUCT is a vulgar word, and federal precedent allows the USPTO to prove scandalousness by showing vulgarity. Thus, no trademark for FUCT.
Brunetti appealed the USPTO ruling denying his trademark application. Brunetti argued the First Amendment protects exactly the type of speech he is making with the word FUCT. The government cannot deny his expression based on taste and value judgements. That’s viewpoint discrimination. Even if it’s merely content-based discrimination (which the government concedes), the rule against scandalous matter cannot stand.
Brunetti has a fairly strong card to play. In 2017, the Supreme Court questioned a trademark rule that comes within the same paragraph containing the rule against scandalous and immoral matter. In Matal v. Tam, the Supreme Court considered a challenge by an individual seeking to register a trademark on his band name, The Slants. The USPTO had determined the band name “disparaging” in violation of the rule. Brunetti convinced the Supreme Court that the Disparagement Clause in the same Lanham Act rule was viewpoint discrimination and should not be upheld. Will the “immoral and scandalous” rule have the same fate?
The government’s defense of the rule
The USPTO will have to weave its way through First Amendment rules to argue the trademark rule is valid. The government argues that its trademark program does not restrict speech. In fact, Brunetti is still free to use the word if he wants. The program rather is a government benefit, and the rule is a condition on access to the benefit. The government argues it should have a choice on whether to promote certain marks, and the rule evidences its preference in promoting marks that are suitable for all audiences (like children). The government preference is tied to its interest in the “orderly flow of commerce.”
Here are the First Amendment rules the government will have to maneuver when it argues to the Court.
Viewpoint discrimination is very bad. The government cannot regulate speech based on the viewpoint of the speaker. A law doing so will almost never pass court scrutiny.
When can a law restricting speech based on viewpoint pass court scrutiny? The answer is:
If the government has a compelling interest and the law is narrowly tailored to serve that compelling interest, then the speech limitation might pass. In other words, the government must have a REALLY good reason to make the law, and the law must attack that objective very precisely so that the only infringement on viewpoint discrimination is very minor and completely necessary.
That’s the test for strict scrutiny, which is the harshest of the levels of scrutiny that a court may apply.
As mentioned above, the government did not pass strict scrutiny for its rule against disparaging trademarks (Matal v. Tam (2017)). Once the Court determined the law discriminated based on viewpoint, the government didn’t stand a chance.
Content-based regulation of speech also gets strict scrutiny. Courts do not let the government regulate speech just because of its content.
But content-based discrimination has given way to some exceptions. First of all, there are certain categories of speech that the Supreme Court has determined are exempt from First Amendment protection. Child pornography, for example, doesn’t get free speech. It’s distasteful enough to qualify as the Platonic form of disgust. Other obscene and offensive sexual materials with no artistic, political or scientific value get grouped into that category too (although the Court was divided 5-4 on this question: Miller v. California (1973)). Speech inciting violence can be controlled too, because of its harmful consequences.
Otherwise, though, courts will protect speech against content-based regulation. Here are the only other qualifications:
When the speech is not technically individual speech but “government speech.”
When the speech isn’t in a traditional public speaking venue. The government can limit speech in certain government-owned venues because of safety issues or other government interests relating more to regulating the venues rather than regulating the speech.
When the speech is “commercial speech.”
In Brunetti’s trademark case, the government has conceded that the trademark rule’s restriction (on “immoral or scandalous” matter) is a content-based restriction. But it argues the rule is still valid because the trademark program does not restrict speech; just access to a government benefit. The argument looks like a sneaky version of trying to qualify trademarks as “government speech,” but the government may be avoiding that route because of precedent working against it.
Is a trademark government speech? It’s a government certification of private speech. Is that good enough? For example, the government has the right to restrict speech on license plates because license plates are a form of government speech. Is a government trademark also government speech?
The Supreme Court answered this question in the negative in Matal v. Tam when the Court considered the validity of the Disparagement Clause provision. The government will have a hard time telling the Court why the “immoral or scandalous” provision of the same rule should be any different.
The government attempts to distinguish this case based on the type of speech restriction. In Matal v. Tam, the government says, the trademark rule engaged in viewpoint discrimination. But here, it’s just content-based discrimination. And the government trademark program must — inherently — makes content-based distinctions. That’s how the program does its job. So, the government argues:
Because the scandalous-marks provision establishes a reasonable condition for participation in a federal program that inherently requires content-based distinctions, it is consistent with the First Amendment.
That’s a mouthful. Let’s see how the Justices like it.
If the government successfully argued that the restriction applies only to government speech, the First Amendment will not apply at all. The Court could, however, decide a trademark is not exactly government speech but the expression is within a government forum where regulations can get less-than-strict scrutiny.
In “commercial speech” settings, the government can regulate speech with slightly more leniency, stemming from its power to regulate commerce. The Free Speech leniency for commercial speech is not huge: instead of strict scrutiny, the government must pass only intermediate scrutiny. In 1980, the Supreme Court established the standard of scrutiny. In Central Hudson Gas & Electric Corporation v. Public Service Commission of New York (1980), New York had banned electric companies from promotional advertising because the state was worried about excessive energy usage. The Court agreed that the state had a legitimate interest, but the law restricted more speech than necessary because it prevented even promotional materials that would not affect energy usage.
The lower court, the Federal Circuit Court of Appeals, rejected classifying the trademark rule as a restriction on commercial speech. Even though trademarks “serve a commercial purpose as source identifiers in the marketplace,” the trademark rule wasn’t limiting the commercial nature of Brunetti’s proposed mark but the expressive nature of it, which the First Amendment does not allow.
In the government’s briefing to the Supreme Court, it avoided directly focusing on qualifying the trademark rule in the “commercial speech” setting because the government would rather the Court view the rule is not a restriction on speech at all. The difference: commercial speech gets intermediate scrutiny, which is not a trivial standard (see, e.g. Lorrilard Tobacco v. Reilly (2001) and NIFLA v. Becerra (2018)), and not restricting free speech at all gets a trivial standard of review.
The Supreme Court will hear arguments on April 15, 2018.