Editor’s Note: Clay Calvert is professor and Brechner Eminent Scholar in Mass Communication in the College of Journalism and Communications at the University of Florida in Gainesville, where he also directs the Marion B. Brechner First Amendment Project. View more opinion at CNN.
The United States Supreme Court on Monday gave the green light to individuals and businesses seeking to register racy and offensive trademarks, striking down – on First Amendment grounds – a law giving the US Patent and Trademark Office (USPTO) the power to deny registration for marks it deems “immoral” and “scandalous.”
This result is a clear victory for free speech, but it also shows that some of the justices are hesitant to protect all forms of offensive expression. Writing for a six-justice majority in Iancu v. Brunetti, Justice Elena Kagan concluded the ban on such trademarks was unconstitutional because it “disfavors certain ideas.” Indeed, a key principle of First Amendment law is that the government cannot engage in what Kagan called “viewpoint-based” discrimination. In other words, the government must not take sides on any subject – limiting a person’s ability to choose a trademark based on individual justices’ ideas of morality.
But this judicial outcome easily could have been predicted. That’s because just two years ago, the Court in Matal v. Tam unanimously struck down another law allowing the USPTO to reject registration for marks that “disparage” individuals and groups of people. That case involved the efforts of an Asian American band called “The Slants” to register its name in an effort, according to its front man Simon Tam, to culturally reappropriate a derogatory term for Asians.
However, some of the justices in Brunetti were clearly torn about allowing individuals to register scandalous marks. Justice Samuel Alito wrote a brief concurrence contending that Congress should now draft “a more carefully focused statute” because registering scandalous “marks serves only to further coarsen our popular culture.”
Indeed, the nine justices fractured badly in Brunetti, which pivoted on Erik Brunetti’s attempt to register the mark “FUCT” for a line of clothing. In fact, the case spawned five separate opinions.
Most significantly, three justices – Chief Justice John Roberts, along with Justices Stephen Breyer and Sonia Sotomayor – wrote separately to express their willingness to strike down the ban against “immoral” marks but to uphold the prohibition on “scandalous” ones by giving that term a very narrow interpretation. Kagan and the majority, however, rejected this approach, calling it “statutory surgery.”
Roberts, Breyer and Sotomayor would have upheld the ban on “scandalous” marks by limiting its scope to refusing registration for only obscene, vulgar or profane marks.
Is that a viable solution? Should Congress now go back to the drawing board and adopt that language as the definition of scandalous?
Denying registration for obscene marks would not be a problem. That’s because the Supreme Court ruled in 1957 in Roth v. United States that obscenity is not protected by the First Amendment. The Court also defined what it means by obscenity in 1973 in Miller v. California. In Miller, the Court fashioned a test for obscenity that considers such things as whether the content, when viewed as a whole, appeals to a prurient interest in sex and whether the speech has serious literary, artistic, political or scientific value.
But banning registration for marks that are vulgar or profane would raise a host of new definitional problems because such speech is generally protected by the First Amendment. As the Supreme Court wrote in 1971 in Cohen v. California, protecting the right of a man to wear a jacket bearing the words “Fuck the Draft” in a public courthouse, it is “often true that one man’s vulgarity is another’s lyric. Indeed, we think it is largely because governmental officials cannot make principled distinctions in this area that the Constitution leaves matters of taste and style so largely to the individual.”
But the difference in Brunetti is that the government is actually giving its support to such vulgarity by allowing the USPTO to register it and thereby confer it greater legal rights as a registered trademark. As Sotomayor explained Monday, “the government has a reasonable interest in refraining from lending its ancillary support to marks that are obscene, vulgar, or profane.”
Get our free weekly newsletter
Under the leadership of Roberts, the Court generally has been very protective of offensive speech. For example, in 2011 in Snyder v. Phelps, the Court safeguarded the right of members of the Westboro Baptist Church to display signs with messages such as “God Hates Fags” and “Thank God for Dead Soldiers” near a funeral held for a US soldier killed in Iraq in the line of duty. Roberts wrote the opinion in Phelps in favor of the Westboro Baptist Church, but his opinion in Brunetti showing support for the scandalous clause suggests that even he has limits on how far the First Amendment should go in protecting offensive expression.
Will the Brunetti decision now open the floodgates to the registration of offensive marks? That was the apparent concern of Sotomayor. She predicted a “coming rush to register such trademarks” and that the case “will beget unfortunate results.”
For now, however, it is up to Congress to decide whether it wants to take another stab at drafting the “scandalous” provision and heed the advice about how to do so offered by Roberts, Breyer and Sotomayor. With a multitude of other issues already on its agenda, such as immigration at the southern border, that is not likely to occur any time soon.