Special Episode: Iancu v. Brunetti (USSC deals with FUCT trademark)

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Welcome to this special episode of Entertainment Law Update

SHOW NOTES

The mark, as the decision lays out, is supposed to be pronounced as four letters, one after the other, as in “F-U-C-T” (Phonetically “eff-eww-see-tee” and not as one word “Fuct”) 

Iancau v. Brunetti-SCOTUS

https://www.law.com/2019/06/24/immoral-trademarks-like-fuct-are-allowed-divided-us-supreme-court-says/?kw=%27Immoral%27%20Trademarks%20Like%20%27FUCT%27%20Are%20Allowed,%20Divided%20US%20Supreme%20Court%20Says

https://casetext.com/case/iancu-v-brunetti

https://www.mtsu.edu/first-amendment/article/1028/viewpoint-discrimination

So in our usual luck, the Supreme Court elected to wait until the last possible moment to release this ruling on trademark, expanding on the former Slants decision.  

Background: 

Brunetti sought to have his mark “FUCT” registered with the Patent and Trademark Office. The mark functions as his clothing brand’s name, while, if not said “correctly” sounds like the “past participle form of a well-known word of profanity.”  

However, Brunetti claims it’s supposed to be read as “F-U-C-T” (as in “Friends U Can’t Trust”).  Yet, the USPTO thought differently as it sounded too much like that certain profane word, resulting in refusals to the word “FUCT.” 

 This is due to the remaining part of the Lanham Act, that prohibits marks that “[c]onsist[] of or comprise [ ] immoral[ ] or scandalous matter.” 15 U.S.C. Section 1052(a).   While this was weakened in Matal v. Tam (the Slants case), the matter of “immoral or scandalous” marks was left undecided until now.  

Ruling (6-3, Written by Justice Kagan)

  • What makes a mark Profane
    • After reciting the basic facts of the case, as well as the importance of a trademark being granted, Kagan lists the qualification as to what is “profane”
    • THE PTO determines this by asking whether “a substantial composite of the general public would find the mark shocking . . . giving offense to the conscience or moral feelings . . . disgraceful; offensive; disreputable; or vulgar” (internal quotation marks omitted). 
      • The PTO determined that FUCT was “highly offensive,” “vulgar,” and had “decidedly negative sexual connotations.”
        • Jon’s Aside: This probably didn’t help that this was for clothing. 
        •  The PTO also claimed the website showed the mark was being used to conjure “extreme nihilism” and “anti-social” behaviors (SEE EXAMPLES BELOW)
          • The one on the LEFT says “the People are Fuct”
          • The one on the RIGHT says “FUCT ™ kill people; not animals.” 
          • (apparently they also sell children’s clothing, who knew?)  
  • Needless to say, Brunetti believed this was incorrect, as the statute was violating the first amendment. 
  • Is it Violating the First Amendment? 
    • The Justices agreed in Tam that (a) if a trademark registration bar is viewpoint-based, it is unconstitutional) and that (b) the disparagement bar was viewpoint based. 
    • Therefore, IF THE IMMORAL OR SCANDALOUS BAR discriminates based on viewpoint, then it must collide with First Amendment Doctrine.  
      • So what is Immoral or Scandalous? 
        • Kagan checks a dictionary, finding that it is generally something that goes against society’s decency or propriety.  
        • This would mean, to Kagan, that trademarks like “Hate Rules,” or “Always be cruel” would be subject to denial under the statute.  
          • This (while being good for society) is deemed to be viewpoint discrimination, as marks communicating “immoral” or “scandalous” views about drug use, religion or terrorism (yes Kagan put that in) would be prohibited, unlike marks with more society-friendly views.  
        • List of examples Kagan gives: 
          • “You Can’t Spell “Healthcare” without THC” for pain relief meds-Glamorizes drug abuse
          • “Marijuana Cola” and “Ko Kane” for beverages -Glamorizes drug abuse
          • “Bong Hits 4 Jesus” encourages illegal activities and Christians would be outraged by the connection between Jesus and illegal drug use. 
          • Agnus Dei for safes-offensive to most Christians
          • Madonna for wine-Offensive to most Christians
          • Baby Al Qaeda and Al-Queda on t-Shirts
      • In short: What is Scandalous/Immoral is PURELY A VIEWPOINT MATTER, and the law, as currently written, discriminates on viewpoints.  
        • Driving the point further home, the government asks that the restriction be read as applying to only “vulgar” or “lewd” marks. 
        • Kagan refuses to do this, citing the Court’s reluctance to re-write legislation to avoid constitutional conflict (Jon’s note: Scalia would be proud)
          • Her exact words were “The statute as written does not draw the line at lewd, sexually explicit, or profane marks.  Nor does it refer oly to marks whose mode of expression, independent of Viewpoint, is particularly offensive.” 
  • END RULING:
    • The statute is overbroad and violates the First Amendment.  If congress wishes to fix this they need to amend the Lanham Act to provide for a narrowly tailored and viewpoint neutral avenue. 

Other Justices

  • Alito: He agrees, but wants to stress that the decision was not a morally relative one, but rather that a recognition it can be used for illegitimate ends, stressing that Congress can fix this (while taking a jab at the use of vulgar language in general)
  • Roberts: Concurring and Dissenting in part.  He agrees that viewpoint discrimination currently exists, but there is no offense to the First Amendment to refuse registration to obscene, vulgar or profane marks.  
  • Breyer: Concurring in part with Sotomayor and Dissenting in part.  He believes this should be addressed as a “rule of thumb” and less “strict guidelines” due to competing interests.  He would propose more of a proportionality analysis, and would read the statute in a way that (a) would prohibit the granting of marks for vulgar words.  
  • Sotomayor: Concurring in part and Dissenting in part.  
    • a) First, Sotomayor declares that the word “scandalous” should be read as ONLY referring to Obscenity, vulgarity, and profanity. This would save the statute as being viewpoint neutral.  
    • b) Sotomayor would similarly reject the “Fuct” mark. 
    • c) Sotomayor focuses on Immoral OR Scandalous, opting to read Scandalous and Immoral as two separate categories.  
    • d) Sotomayor agrees that “immoral” is unconstitutional, but not necessarily “Scandalous” 

Likely path going forward: There is a common thread to the court’s decisions: HAVE CONGRESS DRAFT A BETTER LAW. 

Sotomayor’s interpretation has some traction, and would actively limit lewd marks, while removing the thorny issue of viewpoint discrimination.