In a 6-3 ruling, the Supreme Court today struck down a provision of the Lanham Act that prohibited trademark registration for marks deemed “immoral” or “scandalous.” This is a win for Eric Brunetti, whose trademark for a streetwear brand, FUCT, had been rejected on these grounds. The case follows the court’s 2017 decision in Matal v. Tam, which invalidated a ban on registration for disparaging trademarks on the same basis; the disparagement bar had allowed trademark owners to register a mark that was positive about a person, but denied registration to derogatory marks.

Justice Kagan with opinion in Iancu v. Brunetti (Art Lien)

Writing for the majority, Justice Elena Kagan found that the “immoral or scandalous” bar discriminated on the basis of viewpoint and violated the First Amendment: “It distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them; those inducing societal nods of approval and those provoking offense and condemnation. This facial viewpoint bias in the law results in viewpoint discriminatory application.” Justices Ruth Bader Ginsburg, Samuel Alito, Clarence Thomas, Neil Gorsuch and Brett Kavanaugh joined the majority opinion.

No one seemed to like the statute in its current form, although the justices expressed some discomfort with getting rid of it entirely, both during oral argument and in the Supreme Court’s divided opinions. For its part, the government argued that if the statute were upheld, it would interpret the provision more narrowly going forward. The government agreed that the statute as it has been interpreted incorporates viewpoint bias, yet suggested that the “immoral or scandalous” bar is capable of being limited in a way that would remove such bias — for example, by narrowing it to marks that are offensive or shocking because of their mode of expression, independent of viewpoint. The majority rejected this argument, noting that although the court may interpret ambiguous statutory language to avoid serious constitutional doubts, this provision was not ambiguous: “To cut the statute off where the Government urges is not to interpret the statute Congress enacted, but to fashion a new one.”

Justice Stephen Breyer wrote a divided opinion, concurring in the court’s holding that the bar on registering “immoral” marks violates the First Amendment holding but dissenting from that holding as applied to “scandalous” marks. He reasoned that this portion of statute passes First Amendment muster because the harm to the First Amendment interests is proportional in light of relevant regulatory objectives. Under his analysis, the First Amendment harm is limited because trademark owners can still use offensive trademarks, just not register them, and the government has a reasonable interest in not promoting or associating with highly vulgar or obscene speech.

Breyer also joined Justice Sonia Sotomayor’s divided opinion. Sotomayor was particularly concerned about outcomes from the decision, including a likely “rush to register” offensive marks and the “Government’s powerlessness to say no.” To avoid these problems, Sotomayor proposed separating “scandalous” and “immoral,” eliminating the “immoral” prong, and construing “scandalous” narrowly. In Sotomayor’s view,  the majority opinion collapsed the two concepts. Standing alone, the term “scandalous” need not be understood to reach marks that offend because of the ideas they convey; it can be read more narrowly to bar only marks that offend because of their mode of expression — marks that are obscene, vulgar or profane.

Multiple justices explicitly raised or alluded to the possibility that Congress could move forward with a more carefully focused statute that does not discriminate on the basis of viewpoint. In a concurrence, Justice Samuel Alito noted that the Supreme Court’s role is limited and it cannot substitute a new statute in place of this one as it is written. In particular, his concurrence explicitly stated that new legislation could preclude registration of marks that contain terms that “play no real part in the expression of ideas.” Chief Justice John Roberts also focused on narrower statutory language in his divided opinion. Roberts commented that the government is not required to “give aid and comfort to those using obscene, vulgar, and profane modes of expression.” And in his opinion, Breyer asserted that the statute would not discriminate based on viewpoint if it prohibited registration of only highly vulgar or obscene words.

In light of the decision in Tam, today’s outcome seemed the most likely one. To hold otherwise could have produced an anomalous situation in which the only types of “offensive” trademarks that could be registered are ones that disparage particular individuals or groups of people. And although Alito lamented that the “registration of such marks serves only to further coarsen our popular culture,” whether or not Congress steps in at this point remains to be seen.

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