CAMBRIDGE, MASSACHUSETTS – The U.S. Supreme Court has painted itself into a corner. Two years ago, it held that the First Amendment required the Patent and Trademark Office to register the trademark for a band called the Slants, despite the “offensive” character of the name. Now it has held that the office must register a clothing brand by the designer Erik Brunetti under the name “FUCT,” even though the PTO deemed the mark “immoral” or “scandalous.” Monday’s decision is a big step in the direction of an absolutist conception of free speech.
Although several justices wrote separately to say that they thought trademark law could be tweaked so that the government wouldn’t have to give the coveted “TM” designation to pure vulgarities, it’s far from clear that a majority of justices would uphold such a law if Congress adopted it.
For now, it’s open season for parties seeking trademark protection for essentially anything.
Someone should page Virgil Abloh, the fashion genius of the moment whose brand, Off-White, relies heavily on putting quotation marks around words and adding a superscript TM. Until Congress changes the law and the justices rule on it next time, he can trademark to his heart’s desire.
The Lanham Act, which specifies what can be trademarked, is pretty straightforward — and so is the majority opinion by Justice Elena Kagan in Iancu v. Brunetti. The law prohibits the registration of trademarks that in the view of the patent office “consist of” matter that is “immoral” or “scandalous.”
In the Slants case, Matal v. Tam, the justices struck down a parallel provision of the Lanham Act that banned the registration of marks that “disparage” anyone, living or dead.
The punchline of that opinion, written by Justice Samuel Alito, was that “offense is a viewpoint.”
And under well-established Supreme Court precedent, the government violates the First Amendment when it enacts a law that is not “viewpoint neutral.” Refusing to trademark offensive marks violated the principle of viewpoint neutrality, the court then held.
When the Slants case was decided, commentators, myself included, noted that the justices could have tried to avoid the issue by saying that refusing to grant a trademark is different from abridging the freedom of speech. But the court rejected that approach, taking the view that denying a benefit like trademark registration amounted to limiting the free speech of whoever was seeking the trademark.
Once the court adopted this position, the writing was on the wall for the “immoral” or “scandalous” provision of the Lanham Act. As Kagan pointed out, to determine that something is immoral or scandalous is every bit as connected to its viewpoint as determining that it is offensive.
In a desperate attempt to save the government from having to give trademark registration to marks containing swear words, the Department of Justice asked the court to focus on the word “scandalous” alone, and to conclude that the mark was not being banned because of the idea contained in the expression but only because of the “mode of expression.”
In a dissent, Justice Sonia Sotomayor agreed with the government. She proposed that the word “scandalous” in the Lanham Act should be interpreted only to reach expression that would count as technical obscenity (as defined by the Supreme Court in other cases), vulgarity or profanity. In her view, such a ban would be permissible because it would not relate to the viewpoint of the proposed mark but only how it was being said.
Only one justice, Stephen Breyer, joined Sotomayor’s dissent. Breyer also wrote a separate opinion — fascinating in its own right — arguing that the whole way the Supreme Court decides First Amendment cases is wrong. The doctrines, he maintained, should be treated as “rules of thumb.” And the court should adopt the European courts’ approach to hard constitutional cases, asking whether the challenged government action was “proportional” in light of competing values. (Breyer has proposed this idea before, notably in a 2015 book called “The Court and the World.)
Kagan rejected Sotomayor’s option by saying that the word “scandalous” just doesn’t mean what the government claimed and Sotomayor accepted.
Chief Justice John Roberts agreed with Kagan, but he wrote separately to signal that if Congress were to change the Lanham Act to cover marks that are “obscene, vulgar, or profane” then such a law would not be unconstitutional.
Alito also wrote separately to say that if Congress were to pass a law “carefully focused” on “vulgar terms that play no real part in the expression of ideas,” he would be inclined to uphold it.
That adds up to four votes to uphold a new law. But don’t be too sure about how the other justices would vote on it.
The big problem is that in the landmark 1971 case of Cohen v. California, the court held that the First Amendment protected the speech of a man who wore a jacket into a courthouse emblazoned with an obscene anti-draft slogan. In the decision’s most famous passage, Justice John Marshall Harlan II, wrote, “one man’s vulgarity is another’s lyric.”
Thus, vulgar expression is protected by the First Amendment. A vulgar trademark can absolutely express an idea. Alito won’t have a leg to stand on when he tries to distinguish his claim that “offense is a viewpoint” from the comparably powerful idea that “vulgarity is a viewpoint.”
The Supreme Court has boxed itself in. Congress can try to rewrite the Lanham Act to please the justices. But don’t be too sure the court will buy a future solution.
Noah Feldman is a Bloomberg columnist and a law professor at Harvard University.