Free Speech and Trademarks

Published 10/22/2021 by CIONCA IP TEAM (SE)

Introduction

In 1990, Erik Brunetti (“the respondent or “Brunetti”), an artist and entrepreneur, founded and owned a clothing brand. The brand had a trademark “FUCT”, which stands for “Friends U Can’t Trust”.

In 2011, Brunetti sought an official registration for the trademark. However, the Patent and Trademark Office (“PTO”) examined the application and determined the proposed brand as “a total vulgar” on the ground that it had “decisively negative sexual connotations”. Therefore, it constituted an “immoral or scandalous matter”. The PTO relied on section 1052(a) of the Lanham Act. Notably, section 2(a) of the Act was considered. Thus, PTO refused to register the trademark.

Brunetti brought the decision before the Trademark Trial and Appeal Board (the “Board”). The board also characterized the brand “FUCT” as offensive and vulgar because it related to “fuck”. Therefore, falling under the “immoral or scandalous” trademarks prohibited by the Lanham Act.

Discussion

Dissatisfied, Brunetti appealed to the US Court of Appeals (the “Federal Circuit”). The Federal Circuit overturned the board’s decision. The Federal Circuit’s decision was premised on the First Amendment Rights (“FAR”), as preventing Brunetti from using “FUCT” violated his FAR.

Dissatisfied, Iancu appealed to the US Supreme Court (the “Supreme Court”)on behalf of PTO. The Supreme Court agreed to hear the appeal on January 4, 2019. The Supreme Court affirmed the Federal Circuit’s decision by six majority opinions and three dissents.

The Supreme Court held that the Lanham Act violated the FAR. Specifically, provisions on the prohibition of the immoral or scandalous trademark. In penning the majority opinion, Justice Kagan relied on the FAR. She held that “immoral or scandalous” was substantially overboard. She further stated that there are many great immoral and scandalous ideas in the world. Therefore, the Lanham Act covering them violated the FAR.

Concurring with the majority opinion, Justice Alito held that the Lanham Act was discriminatory as it violated the free speech clause in the FAR. He further stated that the Lanham Act discriminated against subjects based on viewpoint. Therefore, it could not be fixed without rewriting the statute.

Chief Justice Roberts and Justice Breyer concurred and dissented in part. However, the Chief Justice dissented on the free speech clause in the FAR. Instead, he said there was merely a denial of certain benefits from the refusal of the trademark’s registration. Therefore, it could not fall under the free speech clause as there was no speech restricted or anyone punished.

Justice Breyer, in his dissenting opinion, considered the degree of harm to the first amendment interest. According to him, there was not much harm to FAR due to the bar of vulgar trademarks. Also, it would result in the use of words of other trademarks’ owners.

Conclusion

On the strength of the majority opinion, the Supreme Court affirmed the Federal Circuit’s decision, holding that the denial of trademarks under the Lanham Act was unconstitutionally discriminatory.

Therefore, such bar on immoral or scandalous matters in the Act contradicted the FAR. Moreover, the prohibition was considered to be independently and particularly offensive.

Source: https://www.supremecourt.gov/opinions/18pdf/18-302_e29g.pdf

Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.

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