ERIK BRUNETTI (pictured), the proprietor of a streetwear brand called FUCT, says the name is an acronym for “Friends U Can’t Trust”. The United States Patent and Trademark Office (PTO) saw it rather differently. FUCT, it said, was “highly offensive” and “vulgar” with “decidedly negative sexual connotations”. Pointing to a provision in the Lanham Act that bars the registration of “immoral or scandalous” marks, the agency declined to bless the brand name. Mr Brunetti took the PTO to court and won; the agency’s director then asked the Supreme Court to review the case. On June 24th, Justice Elena Kagan wrote an opinion siding with Mr Brunetti.
She did so for a straightforward reason: for years, the Supreme Court has interpreted the First Amendment to prohibit discrimination “against speech based on the ideas or opinions it conveys”. Like a cousin of the rule the justices dispatched in 2017—a bar on “disparaging” trademarks—the “immoral or scandalous” no-no violates the constitution because, Justice Kagan wrote, it “disfavours certain ideas”. It is fine to refuse to register a mark because it too closely resembles another or because it is “merely descriptive” (two of a handful of other criteria in the Lanham Act), but turning down an application because the term communicates an edgy idea undermines the freedom of speech.
The heart of Justice Kagan’s opinion in Iancu v Brunetti is her analysis of immorality and scandalousness, the two concepts the PTO relied upon to deny FUCT a registration. “When is expressive material ‘immoral’?” she asked. “According to a standard definition, when it is 'inconsistent with rectitude, purity, or good morals’; ‘wicked’; or ‘vicious’.” The Lanham Act thus approves of marks that “champion society’s sense of rectitude and morality” but rejects those that challenge social norms. That is blatant discrimination based on the slant of a speaker’s ideas.
Up to this point, Justice Kagan’s analysis commanded a unanimous vote. All nine justices agreed that the bar on immoral marks must be thrown out. But an interesting divide opened over how to conceive of the “scandalous” half of the rule under review. For Justice Kagan and five of her colleagues, “scandalous” is just as problematic as “immoral”: it applies when a message is “shocking to the sense of truth, decency or propriety” or “offensive”, she wrote. The Lanham Act empowers bureaucrats to approve of marks “aligned with conventional moral standards” and to reject “those provoking offense and condemnation”.
But three members of the court—Justices Stephen Breyer and Sonia Sotomayor and John Roberts, the chief—opted to read “scandalous” more narrowly. In an opinion partially concurring with and partially dissenting from Justice Kagan’s ruling, Justice Sotomayor warned the decision “will beget unfortunate results”. The PTO will no longer have any basis for turning down marks “containing the most vulgar, profane, or obscene words and images imaginable”. This situation could have been prevented, she suggested, if the court had understood scandalous to mean “simply indecent, shocking or generally offensive”. Alleged immorality should not be a basis for denying an application, Justice Sotomayor acknowledged, because that has to do with the content of ideas. But scandalous marks should be proscribable “because of the mode in which they are expressed”. The First Amendment protects your right to communicate what you want in a mark, in other words, but it doesn’t require the PTO to bless every way you might want to say it.
Chief Justice Roberts did not sign Justice Sotomayor’s opinion but went out of his way to praise her “narrowing construction” of the Lanham Act and to agree with her point that there is no First Amendment right to vulgar trademark protection. Businesses are free to use whatever names they like, whether or not the mark is registered, but it is fine for Congress to deny extra benefits to those who express themselves rudely. Justice Breyer joined Justice Sotomayor’s 19-page opinion and added a concurrence/dissent of his own urging a more pragmatic, less rule-bound approach to limning the boundaries of protected expression. “The First Amendment is not the Tax Code”, he quipped. Better to use “rules of thumb” than formal categories and to ask whether regulations serve worthy goals without clamping down too much on expression. The government is right to “disincentivise” the use of vulgarity in commerce by withholding extra benefits from those who spout them.
All the justices seem to agree that Congress can write a new law targeting flat-out profanity or vulgarity as long as only modes of expression—not ideas themselves—are cabined. But as Justice Samuel Alito wrote, the justices “are not legislators and cannot substitute a new statute for the one now in force” on their own. If Congress does not accept this invitation—which seems probable given the Senate’s penchant for not legislating—will America’s malls and parks soon be filled with trademarked vulgarities and epithets?
The warning from Justice Sotomayor that there will now be a “rush to register such trademarks” seems overblown. There are already quite a few “viscerally offensive words and images” on the roster of registered marks. “FCUK” is there, as is “FWORD”. “FUCK BITCHES GET MONEY” has even earned a bureaucrat’s blessing. In fact, a search for the four-letter word beginning with “f” on the PTO’s database yields 382 relevant records. Few people—beyond those who read deeply into this case’s court filings—have encountered these terms, and nobody will face them out shopping or on public transport. Along with its other virtues, the decision in Iancu should not boost those odds very much at all.