First Amendment

Ban on scandalous trademarks violates First Amendment, Supreme Court rules

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The U.S. Supreme Court ruled Monday that the Lanham Act's ban on immoral or scandalous trademarks violates the First Amendment because it disfavors certain ideas.

Justice Elena Kagan wrote the majority opinion, joined in full by Justices Clarence Thomas, Ruth Bader Ginsburg, Samuel A. Alito Jr., Neil M. Gorsuch and Brett M. Kavanaugh.

The Supreme Court ruled in favor of a clothing brand that was initially denied a trademark for an unusual spelling of the F-word. The clothing line, made by clothing designer and artist Erik Brunetti, is FUCT.

Kagan noted that the U.S. Supreme Court had ruled in 2017 in Matal v. Tam that the Lanham Act’s ban on “disparaging” trademarks violated the First Amendment because of discrimination on the basis of viewpoint. The ban on immoral or scandalous trademarks violates the First Amendment for the same reason, her opinion said.

On its face, the Lanham Act’s ban on immoral and scandalous trademarks favors ideas “inducing societal nods of approval” and disfavors those “provoking offense and condemnation,” Kagan said.

Kagan outlined several trademarks approved and disapproved under the immoral and scandalous standard. The U.S. Patent and Trademark Office rejected drug-related trademarks such as “You can’t spell healthcare without the THC” for pain-relief medication, and “Ko Kane” for a beverage. But it did approve “Say no to drugs—reality is the best trip in life.”

Similarly, the office rejected the religious-reference trademark “Madonna” for wine but approved “Jesus died for you” on clothing. It rejected trademarks reflecting support for al-Qaida but approved a trademark for a war on terrorism memorial.

The decisions are understandable because they reject opinions that are offensive to many Americans, Kagan said. But, as Tam made clear, a law that disfavors ideas is a law that discriminates based on viewpoint in violation of the First Amendment, Kagan said.

“There are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all,” Kagan wrote. “It therefore violates the First Amendment.”

Alito wrote a separate concurrence. “At a time when free speech is under attack,” he wrote, “it is especially important for this court to remain firm on the principle that the First Amendment does not tolerate viewpoint discrimination.”

Alito added that the court’s decision doesn’t prevent Congress from passing a more narrowly tailored statute that bans registration of certain trademarks “containing vulgar terms that play no real part in the expression of ideas.”

Such a statute could deny registration to the trademark at issue in this case, he said.

Chief Justice John G. Roberts Jr. and Justices Sonia Sotomayor and Stephen G. Breyer wrote partial dissents.

The three justices would have upheld the ban on scandalous trademarks but not the ban on immoral trademarks. The justices said the ban on scandalous trademarks did not violate the First Amendment when read narrowly to address only obscenity, vulgarity and profanity.

Sotomayor said the majority decision will “beget unfortunate results.”

“The government will have no statutory basis to refuse (and thus no choice but to begin) registering marks containing the most vulgar, profane or obscene words and images imaginable,” she wrote.

The case is Iancu v. Brunetti.

Hat tip to SCOTUSblog, which had early coverage of the decision.

Related articles: “SCOTUS to decide whether ban on ‘scandalous’ trademarks is constitutional” “SCOTUS justices avoid mention of ‘profane past participle’ in arguments on scandalous trademarks”

ABA Journal: “Too tasteless to trademark? SCOTUS considers whether vulgar-sounding brand name is protected by First Amendment”

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