SCOTUS Decides in Favor of FUCT

On June 24, 2019 the Supreme Court of the United States released their decision in the case Iancu v. Brunetti , a case revolving around the trademark of the brand FUCT. The Court ruled unanimously to allow trademark protections for FUCT, though Chief Justice Roberts and Justices Breyer and Sotomayor concurred only in part and dissented in part.

Background

The three most common devices used to protect intellectual property are trademarks, copyrights, and patents. A copyright protects an original creative work such as a book, a song, or a character. Patents are used to protect new inventions, either products or processes which provide a new way to do something or offer a technical solution to a problem. Trademarks, which were the topic in this case, protect the signs, designs, or other elements which indicate that a product comes from a specific source. To illustrate the differences, if you purchased a dancing Mickey Mouse doll, the character of Mickey is protected by a copyright, the mechanism that allows the doll to dance is protected by a patent, and the Disney label on the packaging is a protected trademark.

Trademarks are important because they help consumers understand the source of what they are buying and what quality and features they can expect. If consumers purchase shoes adorned with the Nike swoosh because they have experience with the quality of products Nike produces, then other companies can be barred by a trademark from using that swoosh on shoes they produce. It is unfair to both the consumer who paid for shoes that are of lower than expected quality, and Nike who lost the revenue from that sale and had their reputation damaged by association with the low quality shoes.

The primary law governing trademarks in the United States is the Lanham Act. Enacted in 1946, the legislation most significantly allowed individuals the power to sue for trademark infringement. An infringement on a trademark can be punished with injunctions, preventing the use of the false mark, damages, reimbursing the rightful user of the mark for losses due to the false mark, and even bar importation if the false mark is being used by a foreign company. Relevant here is Section 2 of the Act which requires any application for a trademark containing “immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” to be refused.

Erik Brunetti is an entrepreneur from California who founded the clothing brand FUCT in 1990. The company produces casual clothing, such as t-shirts, shorts, and sweatpants, which prominently feature the brand name in large block letters. According to Brunetti, the name is an acronym for “Friends U Can’t Trust” and is pronounced by spelling out “F-U-C-T”. Brunetti applied to register his trademark so that he could sue individuals who were selling clothes online with FUCT printed on them. The United States Patent and Trademark Office (USPTO) rejected Brunetti’s application to trademark the brand name as immoral based on Section 2 of the Lanham Act. This provision was held unconstitutional by the majority of the Court.

Analysis

The thrust of the Court’s reasoning was concerned with whether the USPTO was right to label FUCT as immoral despite its alternate pronunciation. Justice Kagan made it clear in the majority opinion that the name’s expletive allusion was obvious, “you might read it differently and, if so, you would hardly be alone.” Rather, the Court found unanimously that the provision of the Lanham Act barring the registration of “immoral” trademarks, the label the USPTO placed on FUCT, was a violation of the First Amendment. The main focus of the opinion was the overbroad prohibition on the face of the statute which “does not draw the line at lewd, sexually explicit, or profane marks” according to Justice Kagan’s majority opinion, but instead covers “the universe of immoral or scandalous” marks. This decision is hardly surprising as the ACLU argued, on behalf of Brunetti, that the regulation of offensive words must be subjected to strict scrutiny based on Cohen v. California . It is rare for any regulation to survive strict scrutiny by the courts.

Not only did the Court overturn the statute for being overbroad, but their opinion highlights the concept of viewpoint discrimination implemented by the USPTO. The Court has consistently held that regulations which prohibit the content of speech rather, as opposed to the method of delivery, unjustly silence one side of the debate. These regulations are unconstitutional acts of viewpoint discrimination. Justice Alito wrote in his concurring opinion “Viewpoint discrimination is poison to a free society” a sentiment which has been reflected in numerous opinions by the Court. The majority opinion here reflects on the rejection of trademarks which suggest approval of drug use “YOU CAN’T SPELL HEALTHCARE WITHOUT THC”, “MARIJUANA COLA”, or “KO KANE” while consistently approving trademarks which disapprove of drug use, “D.A.R.E. TO RESIST DRUGS AND VIOLENCE” or “SAY NO TO DRUGS”. Viewpoint neutrality still allows the government to take actions which support a position, like banning certain drugs. However, viewpoint neutrality holds that the First Amendment prohibits the government from attempting to silence one side of the policy debate. Because the USPTO’s enforcement of the law was not viewpoint neutral the Court had no choice but to subject it to strict scrutiny and overturn it as unconstitutional.

Future Impact

While the majority of the Court overturned the entire clause from the Lanham Act quoted above as unconstitutional, there was only unanimous concurrence regarding the unconstitutionality of the “immoral” standard. The dissenting justices had hoped to preserve the rest of the clause including the prohibition on scandalous messages. Chief Justice Roberts wrote in dissent, “The Government, meanwhile has an interest in not associating itself with trademarks whose content is obscene, vulgar, or profane. The First Amendment protects the freedom of speech; it does not require the Government to give aid and comfort to those using obscene, vulgar, and profane modes of expression.” Breyer and Sotomayor’s dissents go even further than looking at government interest in not associating with certain trademarks, and speculate on the potential interest in actively seeking to discourage their use. Breyer for example wrote that without the prohibition on scandalous trademarks there may be incentive to brand clothing with race-based epithets that if worn in public create “the risk of verbal altercations or even physical confrontations.”

Regardless of the concerns expressed in dissent, the USPTO may no longer reject trademark applications which they might consider immoral or scandalous. In today’s competitive business environment, trademarks are critical in differentiating yourself from your competitors. Accordingly, you need to take action to create and protect your trademark. If you operate a business and would like register your trademark or would like to speak with an attorney about protecting your intellectual property, please contact Theodore M. McGinn at (847) 705-5555 or tmcginn@lavellelaw.com.