A clothing line with a vulgar-sounding name is about to test the US Supreme Court’s commitment to free speech.
The justices will hear arguments Monday from a lawyer for Erik Brunetti, who was rejected when he sought federal protection for his “FUCT” trademark. Brunetti is asking the court to strike down a century-old provision that bars the inclusion of “scandalous” and “immoral” trademarks on a US government registry.
Recent history suggests the justices will be sceptical about the prohibition. Two years ago, the court unanimously threw out a similar ban on disparaging trademarks, saying that provision violated the First Amendment.
Critics of the vulgarity ban, part of the federal statute that governs trademarks, say it can’t be applied consistently. In other cases the US Patent and Trademark Office allowed registration of “fcuk,” “wtf is up with my love life?!” and “fword,” as well as various scatological references and words describing sexual activity.
“It’s inherent in the nature of this,” said Barton Beebe, a New York University law professor who analysed the 6.7 million trademark applications filed from 1985 through 2016. “There’s no clear, administrable way to distinguish between something that’s too scandalous versus not-quite-so-scandalous.”
Federal registration gives trademark owners protections on top of those they already have under state law. Registration can confer exclusive rights in parts of the country where no one was already using the name or image, help owners win lawsuits, and put would-be competitors on notice that a trademark is legally protected.
Thunderpussy on hold
The Trump administration is defending the ban. US Solicitor General Noel Francisco says Brunetti is free to use the FUCT label but doesn’t have the right to claim the legal benefits of federal registration.
“The scandalous-marks provision does not restrict speech, but simply imposes a condition on the availability of a government benefit,” Francisco argued in court papers.
Brunetti describes his clothes as “street fashion” and says his products have been sold at Urban Outfitters and small skate shops, as well as online.
In tossing out the ban, a federal appeals court in Washington said the First Amendment “protects private expression, even private expression which is offensive to a substantial composite of the general public.”
The federal trademark office has suspended consideration of vulgar and lewd marks during the court fight. Among those on hold are applications by the all-women music groups Pussy Riot and Thunderpussy over their band names. Miramax LLC is awaiting word on its bid to register “bad mother f---er,” without the hyphens, for use on Pulp Fiction-themed goods.
The office rejected almost 2,000 applications for word trademarks as “immoral” or “scandalous” from 2003 to 2015, according to the study by Beebe and fellow New York University law professor Jeanne Fromer.
The 2017 ruling on disparaging trademarks was a victory for an Asian-American dance-rock band called The Slants and helped the Washington Redskins football team defeat a challenge to its registered trademark. Although the eight justices taking part splintered in their reasoning, all said the provision was a form of unconstitutional viewpoint discrimination.
Brunetti’s lawyers argued in court papers that “there is no principled reason to reach a different result here than this court reached as to the disparagement clause.”
Francisco contends the vulgarity ban is different because it doesn’t depend on the viewpoint of the applicant.
“It bars registration of scandalous marks not because such marks are thought to convey offensive ideas, but because they reflect an offensive mode of expressing whatever idea the speaker wishes to convey,” the solicitor general argued.
Beebe says the high court has plenty of other grounds to strike down the vulgarity ban, including its impact on “high value” speech.
He points to the Patent and Trademark Office’s 2013 rejection of an application to register “P.H.U.C CANCER (PLEASE HELP US CURE CANCER).” Officials gave two reasons for the rejection: the vulgarity ban and the earlier filing of another application the term “PHUC.” The oddity was that the earlier application was approved, he says.
“That kind of inconsistency with respect to that kind of speech is exactly what the First Amendment is designed to prevent when it comes to government regulation,” Beebe said.
The court will rule by the end of June in the case, Iancu v. Brunetti, 18-302.
Copyright Bloomberg News