“FUCT” Overcomes Lanham Act: U.S. Supreme Court Protects Immoral or Scandalous Trademarks Under First Amendment
July 30, 2019 | Toby K. Henderson and Joshua R. Schierloh
On June 24, 2019, the Supreme Court of the United States issued their decision on Iancu v. Brunetti, invalidating the Lanham Act’s prohibition of “immoral or scandalous” trademarks for infringement of the First Amendment. Brunetti attempted to register the trademark “FUCT” for his clothing line but was denied because the U.S. Patent and Trademark Office (PTO) interpreted the mark to communicate “misogyny, depravity, and violence.” Justice Kagan articulated the dispute as follows: “According to Brunetti the mark is pronounced as four separate letters, one after the other: F-U-C-T. But, you might read it differently and, if so, you would hardly be alone. The brand name could be pronounced as the equivalent of the past participle form of a well-known word of profanity.”
Brunetti challenged the Lanham Act’s ban on “immoral or scandalous” trademarks in the Court of Appeals for the Federal Circuit, which found a violation of the First Amendment. The Supreme Court subsequently granted certiorari.
Writing for the majority, Justice Elena Kagan noted the Lanham Act’s approval of trademarks favoring societal endorsement and disapproval of trademarks provoking offense from the typical American viewpoint. For example, the PTO has approved the trademark “Jesus died for you” on clothing but rejected “Madonna” as a trademark for wine. Similarly, the PTO has approved “Say no to drugs – reality is the best trip in life” but rejected “You can’t spell healthcare without the THC.” This disparity inherently fosters a “viewpoint-discriminatory application” of the law based on what is considered societally acceptable to the majority of Americans. But, the First Amendment does not only protect the viewpoints which have received majority societal acceptance. Rather, as Justice Alito stated in his concurrence, “the First Amendment does not tolerate viewpoint discrimination.”
The Government attempted to argue that the Lanham Act should be read narrowly to only include “marks that are offensive or shocking because of their mode of expression, independent of any views that they may express.” These sort of marks would comprise only those that are “lewd, sexually explicit, or profane.” The three dissenting justices, Chief Justice Roberts and Justices Sotomayor and Breyer, agreed with the Government, arguing that the Lanham Act would remain constitutional if read narrowly in the Government’s suggested fashion. In reply, Kagan stated simply that the text of the statute plainly includes more than those sort of marks. Importantly, though, Alito added that Congress could pass a new statute that is narrowly tailored in such a way.
In the 2017 case Matal v. Tam, the Supreme Court found unconstitutional the Lanham Act’s ban on “disparaging” trademarks. Thus, Brunetti furthers the Supreme Court’s repudiation of laws which “aim at the suppression of views.”