Supreme Court of the United States
ANDREI IANCU, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, UNITED STATES PATENT AND TRADEMARK OFFICE, PETITIONER
BRIEF FOR THE RESPONDENT
"Congress shall make no law . . . abridging the freedom of speech .... " Constitution, First Amendment.
"No person shall be . . . deprived of life, liberty, or property, without due process of law; .... " Constitution, Fifth Amendment.
"No trademark ... shall be refused registration ... unless it-
(a) Consists of or comprises immoral or scandalous matter; .... " Lanham Act,
In a facial challenge, the facts in the specific case are often irrelevant. But here, Brunetti's application demonstrates the negative impact of the Immoral and Scandalous Clauses ("Clauses") on free speech.
1. Brunetti is an artist. He founded the FUCT brand in 1990. The name of the brand is pronounced as four letters, one after another.
Brunetti's brand focuses on questioning authority: the assumptions of society, the government, and accepted wisdom. Brunetti's brand comments on current political and societal issues, sometimes obviously, and sometimes subtly. To the extent FUCT has a meaning, it is FRIENDS U CAN'T TRUST.
Since 1991, his products have been distributed throughout America. His products have never been sold at general retailers such as Walmart or Target. During the pendency of this matter, Brunetti has stopped selling to brick-and-mortar stores and now sells only on the internet.
2. The application in question was filed in 2011. The United States Patent and Trademark Office ("PTO). The examining attorney approved the mark for publication. The law office managing-attorney did not raise the vulgarity of the FUCT mark. Publication review was completed on June 11, 2012, without any immoral or scandalous objection. It was only afterwards that some PTO official, whose name has been concealed from the record, decided to withdraw the application from publication and return it to the examining attorney with instructions to refuse the application.
Thereafter the application was refused on the ground that FUCT is the phonetic equivalent of the word "fucked," the past tense form of the verb "fuck." Ultimately, the application was finally refused.
3. Brunetti appealed the refusal to the Trademark Trial and Appeal Board ("Board"). It issued its decision on August 1, 2014. The Board wrote:
Erik Brunetti is an artist and entrepreneur whose graphics are infused with cultural strands from skateboarding, graffiti culture, punk rock music, and remnants of Situationist Ideal ideologies. He has been a trailblazer since the early nineties in popularizing "streetwear" having revolutionary themes, proudly subversive graphics and in-your-face imagery. His assaults on American culture critique capitalism, government, religion and pop culture. Brunetti's blog is directed to a cult following that he, his company, Fuct Manuf. Co., and Fuct's "Same Shit Different Day" line of clothing have developed since he allegedly first adopted this designation in 1991.
The Board concluded that Brunetti's website and blog contained "anti-social imagery," was "lacking in taste," and contained a theme "of extreme nihilism. Applicant's cult following may well represent a reliable niche market for its goods and ideology."
The Board discounted Brunetti's meaning of Friends U Can't Trust. The Board refused to give any weight to Brunetti's evidence that only one person in the history of the brand objected to his trademark.
The Board affirmed the refusal.
4. A timely appeal was filed to the Federal Circuit. While this case was pending, the Supreme Court decided Matal v. Tam (2017). The Court of Appeals requested further briefing on the impact of this Court's decision. Thereafter, this case was re-argued before the same panel. The Court of Appeals issued its decision on December 15, 2017. It held the Clauses facially unconstitutional because they targeted the expressive function of trademarks and therefore strict scrutiny applied. The Government conceded the Clauses did not survive strict scrutiny. The Court of Appeals held, alternatively, that even if the Clauses regulated purely commercial speech, they did not survive intermediate scrutiny because the Government had no substantial interest that was served by the Clauses. Brunetti argues that the Court of Appeals' decision was correct and should be affirmed by this Court.
5. In the Court of Appeals and in its Petition, the Government failed to discuss many of Brunetti's arguments (e.g., refusal of registration under the Clauses is always due to viewpoint, profanity expresses viewpoint, the PTO refuses only some profanity, and the Clauses are not readily susceptible of being read in the manner the Government contends). Accordingly, in his Brief in Response to Petition, Brunetti wrote that "the Government hopefully will address these arguments in its opening brief on the merits .... " However, the Government mostly ignored these critical points.
SUMMARY OF ARGUMENT
The Court of Appeals should be affirmed.
The Immoral and Scandalous Clauses of Section 2(a) prohibit registration of trademarks involving politics, religion, social issues, ethnicity, the role of women, drugs, violence, humor, double entendres, slang, patriotism, profanity, and excretory and sexual references. Any mark that is likely to offend some part of the public is to be refused. The Government wisely chooses not to defend the plain language of the Clauses because such language is clearly unconstitutional.
Below, and in its petition, the Government focused on defending the Clauses as allegedly content-neutral so long as the Clauses are interpreted as applying only to profanity, excretory, and sexual matters ("PES marks"). Brunetti pointed out that the Clauses are not readily susceptible of such interpretation. Additionally, the PTO allows some PES marks and refuses others, so it is not applying the Clauses in a content-neutral manner, but rather based upon the perceived offensiveness of the marks and the applicant's intended meaning. The Government also assumes that profanity does not express a viewpoint. Profanity usually expresses a viewpoint: at minimum, of non-compliance with societal mores. But Brunetti's mark, as the Board found, was offensive because he "critiqued capitalism, government, religion and pop culture."
In its merits brief, the Government further narrows its interpretation of the Clauses to apply only to sexual activity/imagery/organs, although it occasionally refers to profanity. The Clauses are not readily susceptible to that construction. The Government conflates obscenity, which can be refused, with vulgarity. The Government implicitly argues that it can prohibit speech relating to sexual matters without such speech actually being obscene.
There is no principled reason to reach a different result here than this Court reached as to the Disparagement Clause in Matal v. Tam. Trademarks are refused because they are offensive.
In deciding this case, if the Court determines that marks refused under the Immoral/Scandalous Clauses do not express viewpoint, then the Court should confirm that the appropriate level of scrutiny for content regulation is strict scrutiny. The Government's reasons for a lesser level of or no scrutiny should be rejected. If trademark registration is not government association, forum, program, speech, or subsidy for disparaging trademarks, then trademark registration cannot be so for immoral or scandalous marks. Although some of these contentions were not explicitly rejected in Tam, all lack merit.
And if even the Court does not reach the vagueness of the Clauses, such vagueness informs whether the Clauses are unconstitutionally overbroad.
In order to determine the extent to which Tam is a binding precedent, the Court must decide the many unanswered questions about how the Marks Rule applies. Brunetti suggests the Court should return to the common law rule of Dual Majority: majority on the judgment and majority on the reasoning.
I. THE IMMORAL/SCANDALOUS CLAUSES ARE FACIALLY INVALID
The Tam Court was unanimous that giving offense is a viewpoint. Trademarks are refused under the Immoral/Scandalous Clauses solely due to offensiveness. Therefore, the Clauses discriminate on viewpoint and strict scrutiny applies.
The Government seeks to distinguish Tam by advancing a novel interpretation of the Clauses: that they are merely content-regulation (of either profanity, excretory and sexual matter) or of sexual activity/ imagery/organs. That is not how the Clauses have been interpreted for seventy years.
The other position advanced by the Government is that the "mode of expression" (i.e., profanity) can be regulated.
A. The Immoral/Scandalous Clauses Regulate Viewpoint.
The Court was unanimous that giving offense is a viewpoint.
Giving offense is a viewpoint. We have said time and again that "the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers."
The Court's cases have long prohibited the government from justifying a First Amendment burden by pointing to the offensiveness of the speech to be suppressed. Since the Government seems to question the applicability of Tam, it should be noted the Court's prior decisions, such as Street v. New York, (1969), and Texas v. Johnson, (1989), reach the same conclusion.
1. Brunetti's Mark Was Refused Because It Was Offensive.
The record is clear that Brunetti's mark was refused due to its offensiveness. The Board wrote:
Whether one considers "fucked" as a sexual term, or finds that Applicant has used "fuckedlfuct" in the context of extreme misogyny, nihilism or violence, we have no question but that these are still extremely offensive terms in the year 2014.
We find that the Trademark Examining Attorney has shown by a preponderance of the evidence that a substantial composite of the general public would find this designation vulgar.
2. Refusals Under the Immoral/Scandalous Clauses Are Always Based Upon the Degree of Offensiveness.
a. The Test for Refusal Is Offensiveness.
A mark is refused if "it would be considered offensive by a substantial portion of the public." Trademark Manual of Examining Procedure ("TMEP").
The Government Is Regulating Offensiveness.
The Government allows some profanity, excretory, and sexual content and refuses some. So it is not engaging in a content-neutral regulation of PES marks. Rather, the basis for deciding whether to approve an application is degree of the perceived offensiveness of the mark.
Actual practice shows that the Government allows registration of some profanity. For example, it always allows "damn." Sometimes it allows "ass," "cock," "dick," "pussy;'" The Government even allows marks that are "fuck," provided they are misspelled or not spelled out (FCUK; FWORD; and WTF IS UP WITH MY LOVE LIFE?!
As to excretory words, the Government allows "feces" "poop" "turd" “FAMOUS FECES”, “POOP”, and “TURD TOTER”, “BECAUSE NOBODY WANTS TO SEE YOUR TURD” even though their meaning is identical to "shit." The Government also allows "piss" and "urine." (SATAN'S PISS and URINE OFF).
The Government approves some sexual terms, for example, "pink taco" (when referring to female genitalia, "foreplay," "intercourse", 69 (when referring to sexual activity as in MILE HIGH 69) and LOOPY SEX GAME 69. Although the Government claims it has a content-neutral prohibition of profanity, excretory, and sexual marks, that clearly is not true.
3. Immoral/Scandalous Refusals Are Based Upon Viewpoint.
a. Profanity Expresses Viewpoint.
The Government argues that profanity does not express viewpoint. That is contrary to the unanimous holding of Tam that giving offense is viewpoint.
At minimum, use of profanity expresses nonconformance to conventional social mores.
Justice Harlan's reasoning in Cohen v. California, (1971), rejects the contention that profanity does not express viewpoint:
"Much linguistic expression serves a dual communicative function: it conveys not only ideas capable of relatively precise, detached explication, but otherwise inexpressible emotions as well. In fact, words are often chosen as much for their emotive as their cognitive force. We cannot sanction the view that the Constitution, while solicitous of the cognitive content of individual speech, has little or no regard for that emotive function which, practically speaking, may often be the more important element of the overall message sought to be communicated."
The Government seeks to distinguish Cohen on the basis that the "conviction rested on 'the asserted offensiveness of the words.'" That is no distinction: in both Cohen and here, the Government is prohibiting a word (virtually the identical word). As Cohen held, words are protected speech. Thus, we deal here with a conviction resting solely upon 'speech'"
No one who hears George Carlin's Filthy Words (often referred to as Seven Words You Can Never Say on Television), the subject of FCC v. Pacifica Foundation, (1978), can doubt that profanity does express viewpoint. "The words of the Carlin monologue are unquestionably 'speech' within the meaning of the First Amendment." (Stevens, J., plurality - no justice expressed doubt that Carlin's monologue expressed viewpoint).
b. The PTO Inquires into the Applicant's Meaning When Deciding Whether a Mark Is Offensive.
The Government often explicitly considers the applicant's meaning. Boulevard Entm't, Inc., 2003 - "it is clear that the marks as used by Boulevard in connection with the services described in Boulevard's application refer to masturbation" and "the applicant's use of the word is clearly limited to the vulgar meaning of the word.
Compare refused marks: SPECIALIZING IN CELEBRITY HAND JOBS, for manicure services (refused), and HANDJOB (refused). The applicant argues that the mark is not immoral or scandalous because it is a play on words suggestive of the services performed by the applicant. This argument, however, is not persuasive because the term 'hand job' does not have a non-vulgar meaning.
With approved marks: HANDJOB NAILS AND SPA, for day spa services, namely, nail care, manicures, pedicures; BUBBLES CAR WASH BETTER THAN A HAND JOB, for car wash (refused only due to likelihood of confusion; examining attorney even referred to the double entendre.
And compare refused mark FAT COCK BEER with approved mark I BRAKE FOR COCK!
Because the PTO routinely inquires into the applicant's intended meaning before deciding whether a mark is immoral/scandalous, it is unambiguously regulating viewpoint.
c. Immoral/Scandalous Clause Refusals Are Always Based Upon Viewpoint.
On an even broader level, Immoral/Scandalous Clause refusals are always based upon the Government's opinion that the expressed viewpoint is offensive. Marks favorable to religion are allowed, but marks critical of religion or likely to cause religious controversy are prohibited. Marks that are cheerful and positive (e.g., Smiley Face) are granted, while viewpoints that are negative or controversial (e.g., middle finger-shaped bottle design) are refused. Marks about input into the digestive system are approved, while marks about output are rejected. Polite humor is fine, raunchy humor is scandalous. Raising babies is sweet, making babies is disgusting. Kissing is fine, sex is dirty. Feminism is good, misogyny is bad. The word PENIS is allowed, an outline of a penis is not. Promotion of capitalism is okay, criticism of capitalism is scandalous. In all these situations, the Government prefers certain viewpoints to other, disfavored viewpoints.
B. There Is No "Mode of Expression" Exception to Viewpoint Regulation.
The Government asserts that the Free Speech Clause only protects ideas and not "mode" of expression. It argues that the Immoral/Scandalous Clauses are viewpoint-neutral because, it contends, it is only regulating the "mode of expressing whatever idea the speaker wishes to convey." This illustrates the danger of an isolated quote.
The Government's reliance on a quote from Cohen is equally misplaced. Justice Harlan did refer to Cohen's language as a "distasteful mode of expression." But the Court held such expression to be protected speech. The Government correctly notes Justice Harlan's distinction between the emotive force of the vulgarity of Cohen's expression from the cognitive force of Cohen's idea. However, contrary to the Government's contention that only the idea is protected, Justice Harlan concluded that both the idea and the mode of expression were protected.
C. The Government Conceded that the Clauses Regulate Content. Strict Scrutiny Accordingly Is Required.
Assuming the Clauses are readily susceptible of being limited to PES marks or sexual organs, and further assuming that such limitation were viewpoint neutral, the Government is still regulating content. The Government restricts speech based on content when "a law applies to particular speech because of the topic discussed or the idea or message expressed." To be content neutral the regulation must be "applicable to all speech irrespective of content."
Brunetti urges the Court to affirm the Court of Appeals by finding the Immoral/Scandalous Clauses facially unconstitutional. In doing so, Brunetti urges this Court to explicitly adopt a level of scrutiny that is strict. Should it be necessary to reach the issue, the Immoral/Scandalous Clauses are unconstitutionally vague.