__ U.S. __, 18-302, Iancu v. Brunetti

Docket Nº:18-302
Citation:__ U.S. __, 139 S.Ct. 2294, 204 L.Ed.2d 714, 27 Fla.L.Weekly Fed. S 1057
Opinion Judge:KAGAN, Justice.
Party Name:Andrei IANCU, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office, Petitioner v. Erik BRUNETTI
Attorney:Malcolm L. Stewart, Washington, DC, for the petitioner. John R. Sommer, Irvine, CA, for the respondent. Sarah Harris, General Counsel, Thomas W. Krause, Solicitor, Christina J. Hieber, Thomas L. Casagrande, Mary Beth Walker, Molly R. Silfen, Associate Solicitors, U.S. Patent and Trademark, Office...
Judge Panel:KAGAN, J., delivered the opinion of the Court, in which THOMAS, GINSBURG, ALITO, GORSUCH and KAVANAUGH, JJ., joined. ALITO, J., filed a concurring opinion. ROBERTS, C. J., and BREYER, J., filed opinions concurring in part and dissenting in part. SOTOMAYOR, J., filed an opinion concurring in part ...
Case Date:June 24, 2019
Court:United States Supreme Court
 
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__ U.S. __

139 S.Ct. 2294, 204 L.Ed.2d 714, 27 Fla.L.Weekly Fed. S 1057

Andrei IANCU, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office, Petitioner

v.

Erik BRUNETTI

No. 18-302

United States Supreme Court

June 24, 2019

Argued April 15, 2019

Syllabus

[*]

Respondent Erik Brunetti sought federal registration of the trademark FUCT. The Patent and Trademark Office (PTO) denied his application under a provision of the Lanham Act that prohibits registration of trademarks that "[c]onsist[ ] of or comprise[ ] immoral[ ] or scandalous matter," 15 U.S.C. § 1052(a). Brunetti brought a First Amendment challenge to the "immoral or scandalous" bar in the Federal Circuit, which invalidated the provision.

Held : The Lanham Act’s prohibition on registration of "immoral[ ] or scandalous" trademarks violates the First Amendment.

In Matal v. Tam, 582 U.S. __, 137 S.Ct. 1744, 198 L.Ed.2d 366, this Court declared unconstitutional the Lanham Act’s ban on registering marks that "disparage" any "person[ ], living or dead." § 1052(a). A divided Court agreed on two propositions. First, if a trademark registration bar is viewpoint based, it is unconstitutional. And second, the disparagement bar was viewpoint based.

The "immoral or scandalous" bar similarly discriminates on the basis of viewpoint and so collides with this Court’s First Amendment doctrine. Expressive material is "immoral" when it is "inconsistent with rectitude, purity, or good morals"; "wicked"; or "vicious." So the Lanham Act permits registration of marks that champion society’s sense of rectitude and morality, but not marks that denigrate those concepts. And material is "scandalous" when it "giv[es] offense to the conscience or moral feelings"; "excite[s] reprobation"; or "call[s] out condemnation." So the Lanham Act allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety. The statute, on its face, 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. The PTO has refused to register marks communicating "immoral" or "scandalous" views about (among other things) drug use, religion, and terrorism. But all the while, it has approved registration of marks expressing more accepted views on the same topics.

The Government says the statute is susceptible of a limiting construction that would remove its viewpoint bias. The Government’s idea is to narrow the statutory bar to "marks that are offensive [or] shocking[ ] because of their mode of expression, independent of any views that they may express," which would mostly restrict the PTO to refusing marks that are lewd, sexually explicit, or profane. But this Court cannot accept the Government’s proposal, because the statute says something markedly different. The "immoral or scandalous" bar does not draw the line at lewd, sexually explicit, or profane marks. Nor does it refer only to marks whose "mode of expression," independent of viewpoint, is particularly offensive. To cut the statute off where the Government urges is not to interpret the statute Congress enacted, but to fashion a new one. And once the "immoral or scandalous" bar is interpreted fairly, it must be invalidated. Pp. 2298 - 2302.

877 F.3d 1330, affirmed.

KAGAN, J., delivered the opinion of the Court, in which THOMAS, GINSBURG, ALITO, GORSUCH and KAVANAUGH, JJ., joined. ALITO, J., filed a concurring opinion. ROBERTS, C. J., and BREYER, J., filed opinions concurring in part and dissenting in part. SOTOMAYOR, J., filed an opinion concurring in part and dissenting in part, in which BREYER, J., joined.

[139 S.Ct. 2296] Malcolm L. Stewart, Washington, DC, for the petitioner.

John R. Sommer, Irvine, CA, for the respondent.

Sarah Harris, General Counsel, Thomas W. Krause, Solicitor, Christina J. Hieber, Thomas L. Casagrande, Mary Beth Walker, Molly R. Silfen, Associate Solicitors, U.S. Patent and Trademark, Office, Alexandria, VA, Noel J. Francisco, Solicitor General, Joseph H. Hunt, Assistant Attorney General, Malcolm L. Stewart, Deputy Solicitor General, Frederick Liu, Assistant to the Solicitor General, Mark R. Freeman, Daniel Tenny, Joshua M. Salzman, Attorneys, Department of Justice, Washington, DC, for petitioner.

John R. Sommer, Megan E. Gray, Devon A. Beckwith, Irvine, CA, for respondent.

OPINION

KAGAN, Justice.

[139 S.Ct. 2297] Two Terms ago, in Matal v. Tam, 582 U.S. __, 137 S.Ct. 1744, 198 L.Ed.2d 366 (2017), this Court invalidated the Lanham Act’s bar on the registration of "disparag[ing]" trademarks. 15 U.S.C. § 1052(a). Although split between two non-majority opinions, all Members of the Court agreed that the provision violated the First Amendment because it discriminated on the basis of viewpoint. Today we consider a First Amendment challenge to a neighboring provision of the Act, prohibiting the registration of "immoral[ ] or scandalous" trademarks. Ibid. We hold that this provision infringes the First Amendment for the same reason: It too disfavors certain ideas.

I

Respondent Erik Brunetti is an artist and entrepreneur who founded a clothing line that uses the trademark FUCT. According to Brunetti, the mark (which functions as the clothing’s brand name) is pronounced as four letters, one after the other: F-U-C-T. See Brief for Respondent 1. But you might read it differently and, if so, you would hardly be alone. See Tr. of Oral Arg. 5 (describing the brand name as "the equivalent of [the] past participle form of a well-known word of profanity"). That common perception caused difficulties for Brunetti when he tried to register his mark with the U.S. Patent and Trademark Office (PTO).

Under the Lanham Act, the PTO administers a federal registration system for trademarks. See 15 U.S.C. § § 1051, 1052. Registration of a mark is not mandatory. The owner of an unregistered mark may still use it in commerce and enforce it against infringers. See Tam, 582 U.S. at __, 137 S.Ct., at 1752. But registration gives trademark owners valuable benefits. For example, registration constitutes "prima facie evidence" of the mark’s validity. § 1115(a). And registration serves as "constructive notice of the registrant’s claim of [139 S.Ct. 2298] ownership," which forecloses some defenses in infringement actions. § 1072. Generally, a trademark is eligible for registration, and receipt of such benefits, if it is "used in commerce." § 1051(a)(1). But the Act directs the PTO to "refuse[ ] registration" of certain marks. § 1052. For instance, the PTO cannot register a mark that "so resembles" another mark as to create a likelihood of confusion. § 1052(d). It cannot register a mark that is "merely descriptive" of the goods on which it is used. § 1052(e). It cannot register a mark containing the flag or insignia of any nation or State. See § 1052(b). There are five or ten more (depending on how you count). And until we invalidated the criterion two years ago, the PTO could not register a mark that "disparage[d]" a "person[ ], living or dead." § 1052(a); see Tam, 582 U.S. __, 137 S.Ct. 1744, 198 L.Ed.2d 366.

This case involves another of the Lanham Act’s prohibitions on registration— one applying to marks that "[c]onsist[ ] of or comprise[ ] immoral[ ] or scandalous matter." § 1052(a). The PTO applies that bar as a "unitary provision," rather than treating the two adjectives in it separately. In re Brunetti, 877 F.3d 1330, 1336 (C.A. Fed. 2017); Brief for Petitioner 6 (stating that the PTO "has long treated the two terms as composing a single category"). To determine whether a mark fits in the category, the PTO asks whether a "substantial composite of the general public" would find the mark "shocking to the sense of truth, decency, or propriety"; "giving offense to the conscience or moral feelings"; "calling out for condemnation"; "disgraceful"; "offensive"; "disreputable"; or "vulgar." 877 F.3d at 1336 (internal quotation marks omitted); see Brief for Petitioner 6 (agreeing that the PTO "generally defines" the category in that way).

Both a PTO examining attorney and the PTOs Trademark Trial and Appeal Board decided that Brunettis mark flunked that test. The attorney determined that FUCT was "a total vulgar" and "therefore[ ] unregistrable." App. 27-28. On review, the Board stated that the mark was "highly offensive" and "vulgar," and that it had "decidedly negative sexual connotations." App. to Pet. for Cert. 59a, 64a-65a. As part of its review, the Board also considered evidence of how Brunetti used the...

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