WASHINGTON, D.C.—On Monday, April 15, the nine justices of the U.S. Supreme Court heard arguments from attorneys for both clothing designer Erik Brunetti and Andrei Iancu, Under Secretary in the U.S. Patent and Trademark Office (USPTO), over Brunetti's attempt to trademark the name of his fashion line, "FUCT."
Since Brunetti had won at the appeals court level, it was the USPTO that brought the issue to the Supreme Court's attention, and its attorney, Malcolm L. Stewart, was the first to address the justices.
"The Lanham Act's ban on federal registration of scandalous trademarks is not a restriction on speech but a valid condition on participation in a federal program," Stewart began. "On its face, and as applied here, the provision is viewpoint-neutral."
But when Justice Sonia Sotomayor asked Stewart for his definition of "scandalous" as used in the trademark law, known as the Lanham Act, he replied with the terms "shocking," "disgraceful," "offensive" and "disreputable," which led Sotomayor to frame the exact problem with the government's case: "Well, if you use all those adjectives, you run head-on to Tam," referring to an earlier challenge to the Lanham Act, Matal v. Tam, where the Asian band The Slants won the ability to trademark its name, even though the USPTO had originally claimed that the term "slants" was "disparaging" to Asians. The Supreme Court decision in Tam's favor deleted "disparaging" from the Lanham Act.
Stewart then claimed that in light of Tam, his office would exclusively be focusing on marks that it considers "shocking" or "offensive," though Justice Ruth Bader Ginsburg questioned how the USPTO came to the conclusion that the public would react negatively to a word like FUCT (without, of course, using the term itself). (The closest anyone came to saying "FUCT" was when Stewart described the mark as something that "would be perceived as the equivalent of the past participle form of the paradigmatic profane word in our culture.")
Stewart quickly back-tracked, claiming that "there are certainly some segments of society that are more likely to find particular marks shocking than others." Sotomayor then chastised him for using such a "subjective standard," suggesting that the USPTO should instead use other (supposedly non-subjective) terms like "obscene," "vulgar" or "profane."
Stewart essentially had no response to that, but Chief Justice John Roberts stepped in to help, asking if the "scandalous" objection applied to images as well as words, which Stewart agreed it did. Roberts also suggested that if the trademark provisions of the Lanham Act were struck down, "the government would not be able to restrict trademarks that are obscene." Stewart waffled, but eventually agreed, though he wasn't happy about it—and of course, images and even words that are found by a court to be "obscene" would have their own problems under the reigning Supreme Court obscenity decision, Miller v. California.
Sotomayor stepped in to note that the famous George Carlin "seven filthy words" monologue that formed the basis of the Supreme Court's case in FCC v. Pacifica Foundation was both "profane" and "copyrightable," and that no one who didn't want to hear/read those words was required to do so.
This time, Justice Samuel Alito stepped in to try to save the day, asking whether Congress has "an independent interest in not having the federal government associated with certain words? Or is it just an interest in following whatever the population thinks is offensive or scandalous or immoral at a particular point in time?" Stewart replied that the USPTO's interest is in "protecting unwilling viewers from material that they find offensive," but that "the whole point of a trademark is to serve as a source identifier." In other words, if FUCT is out there, it's out there.
But Alito actually shot down that argument by noting that even without trademark protection, the mark can still be used in commerce, to which Stewart replied that not giving FUCT—again, no one used the actual word—a trademark would "disincentivize it"—essentially meaning that anyone could steal the mark for themselves.
There was also some discussion about marks that had previously been granted protection, including one containing PHUC, but Stewart claimed that in such cases, the USPTO "examined the context" in which the mark was being used—but no one on the court thought that was a valid excuse.
But perhaps Alito asked the most salient question: "[I]f this is held to be unconstitutional, what is going to happen with whatever list of really dirty words still exist and all of their variations?"—and then answered it: "There's going to be a mad scramble by people to register these marks. And the ones who get there first are going to have exclusive ... those who get there first are going to be the ones who have these."
Um ... Yay? (Adult entrepreneurs, take note!)
Sadly, Justice Stephen Breyer then threw a bit of a monkey wrench into the works by essentially arguing that Tam may have been wrongly decided, because, he said, "I've looked into [it] a little, and there are certain [terms] that have exactly the same physiological effect on a person, if any, as the word we're using here, and there is a physiological effect ... it's stored in a different place in the brain. It leads to retention of the word. There are lots of physiological effect with very few words." However, Stewart distinguished the word in question from the racial term at issue in Tam, opining that FUCT isn't a term that offends because of its relationship to ethnicity or even religiosity.
Fortunately, Sotomayor returned to the idea that "FUCT" is less valuable if it can't be protected by trademark: "Without it, he can't enforce any federal rights. So he needs registration to be able to do what he wants to do."
When it came time to hear Brunetti's attorney John R. Sommer, he began by arguing two points: First, that even the government isn't actually defending the Lanham Act as it currently reads post-Tam. And second, that there are a lot of things in society that will offend one person or another—"gambling, drinking, eating some types of meat"—and generally speaking, the law doesn't cater to their prejudices, but essentially tells them to suck it up, which is what Sommer feels it should tell them regarding FUCT.
That last point sent Breyer back to his "physiological effects" argument, and again in contradiction to the Tam decision, suggested that a company "is totally free to use any word you want right next to this registered trademark; we just don't want to be associated with it."
But Sommer had a quick retort: "Well, if you're asking about the government association, the Tam Court dealt with that already."
Sommer then asked if Breyer proposed taking some sort of poll of the public to see which words it finds offensive, but the Justice denied it, opining, "I mean, most people know what words we're talking about. And, of course, you could come in and show they're all wrong on this, but they probably aren't."
Sommer then tried to bring the discussion back to whether FUCT expresses a viewpoint, implying that to deny it a trademark would be viewpoint discrimination, adding, "even if it's not viewpoint, it's still content."
Justice Elena Kagan then asked whether the Lanham Act could be saved if it were, in the future, interpreted as Stewart said it would be: "In other words, the PTO is not going to touch ideas that are offensive or scandalous or immoral or anything like that; it's just going to focus on modes of speech and, essentially, what that means ... is it won't allow trademarks that are profane."
Sommer actually agreed that the Act could be saved if that were the case: "Yes, because, if you want to have a statute that prohibits profanity, obscenity, that would be constitutional," though he couched that with the understanding that trademarks are meant to be used in commerce—that is, in full public view—and while the high court has been clear, ever since Stanley v. Georgia, that anyone can own obscene materials in the privacy of their own home, it's when they reach public view that restrictions may be valid.
Interestingly, Kagan retorted, "Well, our standard for obscenity is so high, I can't believe that many trademarks would really qualify as obscene..."
Sommer ran with that remark, noting that in the 1971 case of Cohen v. California, the Supreme Court had given the plaintiff Paul Robert Cohen a pass on a "disturbing the peace" charge for having worn a jacket in a California courthouse with the slogan "Fuck the Draft," leading Sommer to argue that whether or not FUCT expresses a viewpoint, as had been discussed, there seemed to be no problem, legally, with using an almost identical word in a very public place; hence, it should be trademark-able.
Alito then attempted to split hairs, claiming that "the government is not saying, you can't use this phrase, this word, you—we just won't register it," but Sommer noted that even if the government had a list of "seven dirty words" it refused to trademark, that in itself would be unconstitutional, and further noted that trademarks had already be granted for words like FCUK and FVCK, so what's the problem?
"Okay. It's been inconsistently applied, but let's say we're going forward and there's a list of words and you just can't use those," Alito said. "Your position is, that would be unconstitutional?"
"I think so," Sommer replied. "If Congress were to pass that, we'd be here again in a few years to determine whether that's true."
Breyer then tried another tack, comparing FUCT to the already-prohibited "fighting words": "I think that very often the word involved in your case and the racial slur [in Tam] is not viewpoint. It is used to insult somebody, rather like fighting words, or it's used to call attention to yourself. That's the purpose of the slur. That isn't viewpoint. Fighting words isn't viewpoint. Or, if it is, it's overcome."
Sommer disagreed, referencing Cohen: "Well, Mr. Brunetti's viewpoint is, as already pointed out, I can be offensive, I don't have to obey the authority. And that's viewpoint."
Roberts thought he'd tripped Sommer up by noting, "[T]hat's completely circular. It's like saying my protest is that I want to use words prohibited by, you know, not given trademark protection, and because I have that viewpoint, you have to give them trademark protection. That's totally circular."
Sommer reminded the Chief Justice that his challenge to the Lanham Act was facial, noting that "the statute as written and as applied, without exception, covers a fair amount of clearly core speech, of high-value speech," but Breyer interrupted to voice concerns about "the racial slur we all know about, okay, suddenly, in certain places in the United States, appearing as a product name, appearing on every bus where it's advertised, appearing on newsstands in Times Square where it wouldn't be, but it might be in some other city, and where children and others see it." (We're guessing he was referring, again without stating it, to "the N word.")
Sommer's response was simple: "Well, just granting federal registration doesn't require that anyone use a trademark. And my client's goods are not going to be [at Target,] at Wal-Mart."
But Justice Neil Gorsuch, true to his Republican philosophy, came out in favor of outright governmental censorship: "Why isn't it a government benefit and why can't the people choose to withhold the benefit on the basis that there are certain words that are profane and that we, as a matter of civility in our culture, would like to see less of rather than more of, and you can use—you're free to use them."
Sommer's retort was reasonable: "[T]he government doesn't have to have a fire department, but it can't go to a church and say, we're not going to protect your church unless you drop your Santeria beliefs because we find that offensive, and I think that's a good analogy."
On the other hand, Sotomayor's objection to the mark's registration also smacked of support for government censorship: "Why can't the government say, no, we're not going to give you space on our public registry for words that we find are not acceptable?" Sommer's response? The trademark registry isn't a public forum—"It's not a forum at all."—so who's going to see it unless they pore over obscure government records? After he explained some analogous situations, causing Sotomayor to agree with his point.
Roberts didn't: "But it is going to be on people walking down through the mall. And, you know, for parents who are trying to teach their children not to use those kinds of words, they're going to look at that and say, well, look at that, and then, you know, they're going to see the little trademark thing and say, well, it's registered trademark. Well, they won't say that, but ... you understand my point, is that the government's registration of it will facilitate its use in commerce, not necessarily as speech, but as a commercial product, and that has consequences beyond—regardless of where the product is sold?"
Sommer's response was straight out of adult zoning cases, arguing that the government, "assuming even if it's only intermediate scrutiny, doesn't have a compelling interest if it can't stop people from using it. ... Mr. Brunetti can still use his mark regardless of whether it's registered or not."
But Roberts was stuck on the idea that if the mark isn't registered, fewer people will see it: "I mean, that's the government's argument. You can do whatever you want with it; you're just not going to get the benefit of the government's participation in promotion of vulgarity."
Justice Brett Kavanaugh, though, wanted to get back to the idea that FUCT is somehow an insult, but Sommer reminded him that whether a mark can be insulting was decided in Tam, which allowed exactly that: "Well, since Tam, the trademark office has taken the position that it cannot refuse any racial slur. And, in fact, it is approving them. But even before Tam, there were variations on that racial slur registered."
Roberts continued to harp on the idea that more people than Brunetti's target customers would see the mark—and he went so far as to concede that refusing the mark would be a content-based decision, and while the concept was discussed for several pages in the argument transcript, in the end, Sommer's position was that only obscenity could be refused a mark, and "I have shown that there's a substantial amount of speech that is improperly refused under this provision... And the statute says any word or symbol can be a trademark, unless there's a disqualifying condition."
Having reserved a few minutes of argument time for rebuttal, Stewart spent them essentially picking nits, like that the USPTO already had several applications pending which wanted to trademark "the single most offensive racial slur" (hint: the N word); that FUCT could be trademarked if it were part of a longer phrase; and that, "in response to any allegation of viewpoint discrimination, we would say we're not denying registration because it is being used to convey this message. We're denying registration to—because it is descriptive, generic, et cetera. And we simply want to be able to follow the same approach with respect to profanity."
The argument took just about an hour, during which some conservative justices seemed to agree that the trademark refusal was unconstitutional viewpoint discrimination, while some liberal justices actually seemed in favor of just that. But whatever the case, a decision should be forthcoming by the end of June.
The argument transcript may be read here.
Pictured: Doggie Supreme Court, courtesy of John Oliver
