Free Speech

Congress May Not Bar Registration of "Immoral or Scandalous" Trademarks—But "Vulgar or Profane" Marks, Maybe

The Supreme Court rules that the bar on "immoral or scandalous" marks is viewpoint-based, but Chief Justice Roberts and Justices Breyer, Alito, and Sotomayor say that an exclusion of "vulgar or profane" marks would be viewpoint-neutral though content-based. (The other five Justices express no opinion on a hypothetical "vulgar or profane" mark ban.)

|The Volokh Conspiracy |

The federal trademark statute (the Lanham Act) provides various legal protections for registered trademarks, but bars the registration of (among other marks) disparaging, immoral, or scandalous trademarks. People are still free to use such marks, but they don't get the same kinds of legal protections against infringement of such marks that owners of other marks get.

In Matal v. Tam (2017), the Supreme Court held that the disparaging marks exclusion—applied there to the mark "The Slants," which the Patent and Trademark Office viewed as racially disparaging—was unconstitutionally viewpoint-based, and thus impermissible. In today's Iancu v. Brunetti, all the Justices concluded that the exclusion of "immoral" marks was also viewpoint-based; and six Justices (Justice Kagan, joined by Justices Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh) held the same about the exclusion of "scandalous" marks:

When is expressive material "immoral"? According to a standard [dictionary] definition, when it is "inconsistent with rectitude, purity, or good morals"; "wicked"; or "vicious." Or again, when it is "opposed to or violating morality"; or "morally evil." 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 when is such material "scandalous"? Says a typical definition, when it "giv[es] offense to the conscience or moral feelings"; "excite[s] reprobation"; or "call[s] out condemnation." Or again, when it is "shocking to the sense of truth, decency, or propriety"; "disgraceful"; "offensive"; or "disreputable." 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.

Put the pair of overlapping terms together and 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. The statute favors the former, and disfavors the latter. "Love rules"? "Always be good"? Registration follows. "Hate rules"? "Always be cruel"? Not according to the Lanham Act's "immoral or scandalous" bar.

The facial viewpoint bias in the law results in viewpoint-discriminatory application. Recall that the PTO itself describes the "immoral or scandalous" criterion using much the same language as in the dictionary definitions recited above. The PTO, for example, asks whether the public would view the mark as "shocking to the sense of truth, decency, or propriety"; "calling out for condemnation"; "offensive"; or "disreputable." Using those guideposts, 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.

Here are some samples. The PTO rejected marks conveying approval of drug use (YOU CAN'T SPELL HEALTHCARE WITHOUT THC for pain-relief medication, MARIJUANA COLA and KO KANE for beverages) because it is scandalous to "inappropriately glamoriz[e] drug abuse." But at the same time, the PTO registered marks with such sayings as D.A.R.E. TO RESIST DRUGS AND VIOLENCE and SAY NO TO DRUGS—REALITY IS THE BEST TRIP IN LIFE..

Similarly, the PTO disapproved registration for the mark BONG HITS 4 JESUS because it "suggests that people should engage in an illegal activity [in connection with] worship" and because "Christians would be morally outraged by a statement that connects Jesus Christ with illegal drug use." And the PTO refused to register trademarks associating religious references with products (AGNUS DEI for safes and MADONNA for wine) because they would be "offensive to most individuals of the Christian faith" and "shocking to the sense of propriety." But once again, the PTO approved marks—PRAISE THE LORD for a game and JESUS DIED FOR YOU on clothing—whose message suggested religious faith rather than blasphemy or irreverence.

Finally, the PTO rejected marks reflecting support for al-Qaeda (BABY AL QAEDA and AL-QAEDA on t-shirts) "because the bombing of civilians and other terrorist acts are shocking to the sense of decency and call out for condemnation." Yet it approved registration of a mark with the words WAR ON TERROR MEMORIAL.

Of course, all these decisions are understandable. The rejected marks express opinions that are, at the least, offensive to many Americans. But as the Court made clear in Tam, a law disfavoring "ideas that offend" discriminates based on viewpoint, in violation of the First Amendment….

The majority also rejected the government's argument that "scandalous" should be read as limited to "obscene, vulgar, or profane" marks; that, the majority held, was just not a plausible interpretation of the statute. On this score, Chief Justice Roberts and Justices Breyer and Sotomayor disagreed.

What if Congress revised the statute to exclude vulgar or profane marks? (Outright "obscene" marks, in the sense of the sort of highly pornographic material that falls within the "obscenity" exception, are already practically forbidden, since distributing obscene material is generally an outright crime.)

Four Justices held that this would be constitutional: Roberts, Breyer, and Sotomayor thought the exclusion of "scandalous" marks already permissibly did just this; Alito disagreed about how this statute should be interpreted, but expressly said that "Our decision does not prevent Congress from adopting a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas."

The five remaining Justices (all the Justices in the majority except Alito) expressly stated that they "say nothing at all about … a [hypothetical] statute limited to lewd, sexually explicit, and profane marks."

So we don't know for sure whether such a specific rule against registering vulgar and profane marks would be constitutional, though we know that it might be, and that this decision doesn't settle the matter.

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  1. BONG HITS FOR JESUS!

    I wonder if the liberal justices would be so understanding of:

    [insert culturally-appropriated form of smoking] HITS FOR JESUS!

    Or Mohammed, for that matter.

    1. The entire ruling is difficult to comprehend. There is no clear rationale why the government can decide, for example, which forms of “parody” cross the line into criminal conduct, but not which forms of immorality do the same. See, for example, the documentation of our nation’s leading criminal “satire” case at:

      https://raphaelgolbtrial.wordpress.com/

    2. Krayt: Why do you wonder that? All four liberal Justices, for instance, made clear in Matal v. Tam that the exclusion of marks that are “derogatory” to groups — used by the Patent and Trademark Office to forbid the registration of marks that are seen as racially offensive — was unconstitutionally viewpoint-based. I see no evidence that they would say that “Mohammed” should be treated differently from “Jesus,” or references to “culturally-appropriated form[s] of smoking” should be treated differently from references to smoking marijuana.

  2. As a cultural milestone, I think it notable that Justice Sotomayor discusses Cohen v. California in her opinion, but unlike its author, Justice Harlan, cannot bring herself to spell out the famous text of Cohen’s jacket, writing F*** the draft. Similarly, both Justice Breyer and Justice Sotomayor refer to a “particularly egregious racial epithet” without naming it, to make their point that the statute should be construed to prevent its use in trademarks.

    Justice Breyer went further, inviting us to consider how we would react were we to see the “odious racial epithet” on a t-shirt, perhaps an allusion to the fighting words doctrine. With his discussion of neurology, perhaps he means to suggest that the government ought to be able to forbid the use of specific epithets and swear words in public spaces, or at least public spaces where children might be found, because of the different way in which they impact the brain.

    Collectively, the concurrence and dissenting opinions seem to invite legislators to reconsider the assumption that they are powerless to regulate epithets and swear words outside the broadcast media.

    1. I noticed that, and will go further than you did. I noticed that while apparently saying the f-word is considered out of bounds for the Court, they didn’t censor the name of the Washington professional football team, a racial slur, in a footnote.

      And that’s just precisely bass-ackward. Personally, I think that if a Court needs to say either word, it should say it. But the f-word, which is, of course, basically a meaningless epithet used for emphasis or insult, is not nearly as bad as a racial slur against Indians.

      I worry that Congress is just going to pass a new statute stripping trademark registration for these sorts of marks. The proper rule here is a broader one- you ought to be able to trademark anything that has secondary meaning in commerce or is inherently distinctive, whether or not anyone is offended. And the justices should stop accepting a desire that people not say anything profane or vulgar as any sort of legitimate state interest. It isn’t.

      1. 1. I’m not sure the Court views “fuck” as out of bounds; I just think some of the Justices may want to avoid it when doing so isn’t that hard, for instance when they are describing facts that could be described coyly. (It’s not clear whether Justice Kagan has such a preference, or whether her somewhat oblique discussion of what FUCT sounds like might have been an attempt at some mild humor.) The reference to “Redskins,” on the other hand, came in Justice Kagan’s citation to an article title; article titles are generally rendered literally, rather than being paraphrased. Note that Justices have been fine using the word “fuck” in opinions when literally quoting facts from the record, see, e.g., Wisconsin v. Mitchell (Rehnquist) and Masson v. New Yorker Magazine (Kennedy).

        2. As you may know, a 2016 Washington Post survey found that 90% of American Indian respondents weren’t bothered by the Washington Redskins team name; that study has been criticized, but it does suggest that the team name use isn’t viewed as a “racial slur against Indians” by the great majority of Indians.

        1. My objection to the Redskins team name is that it is confusing to children. Or at least it was confusing to me as a kid growing up in the DC area in the 1950s. Redskins? WTF?

          1. All the Redskins have to do is change their logo. A square divided into 4 smaller squares, one white, one black, one yellow and one red. Then they can call themselves the Four Skins, problem solved.

        2. ” it does suggest that the team name use isn’t viewed as a ‘racial slur against Indians’ by the great majority of Indians.”

          Meh. There’s lots of reasons why that might be, but the word IS a racial slur against Native Americans, even if the team and most of its fans have no particular animosity.

          1. Yep. We don’t need to take a poll here. The name singles out a group, and does so not based on some asserted positive characteristic of the group (the Atlanta Braves) or some neutral association with it (the Florida State Seminoles), but rather specifically identifying skin color, in a very archaic way using a slang term coined by whites who saw the Indians as their enemies.

            It’s so clearly a racial slur.

            (As for Prof. Volokh’s argument that the Court didn’t need to say the f-word, they should have anyway. And as I said, we need a broader holding than this. The f-word is protected by the First Amendment, period. It isn’t 1950 anymore and we shouldn’t pretend that nobody has heard it or that people should be “protected” from it.)

            1. Meh. “civility”. As long as the reader knows what word is in question, the ruling is adequate. Loading up the US Reporter with swears doesn’t seem necessary to me.

  3. Considering that “vulgar” and “profane” are determined by the listener (and the speaker), I fail to see how SCOTUS could even pretend that laws pertaining to those two things could be ‘viewpoint-neutral.’

    Of course, our laws don’t really matter anymore, so what SCOTUS says about them certainly doesn’t matter either.

    1. I’ve been thinking the same thing. It strikes me that the Court — in its infinite wisdom — is saying that you can’t deny trademark protection to terms that are “immoral” or “scandalous,” but if you just call them “vulgar” or “profane” then it’s fine.

    2. Vulgar and profane will no longer by determined by the speaker or listener, we have a government agency for that now, the Patent and Trademark Office. Welcome to 1984.

  4. I think this entire issue is wrongly decided.

    The problem, allegedly, is abridgement of free speech. But trademarks themselves are an abridgement of free speech. If someone uses a mark to indicate the source of goods, then all others are precluded from using that mark in a way that might be confused as indicating the source of the goods. In other words, when trademark status is given, it limits the freedom of others.

    In contrast, when a trademark is not recognized as a trademark, others remain free to use it, their freedom to do so is NOT abridged by trademark law.

    Therefore, refusing official recognition of a trademark cannot be an abridgement of free speech.

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