Content Regulation / Censorship, Gender Expression, Indecency / Obscenity
The State v. Momar Sowe and Alieu Sarr
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The Supreme Court of the United States affirmed an appeals court ruling that the prohibition of “immoral” or “scandalous” trademarks under the Lanham Act (Act) constituted view-point discrimination in violation of the First Amendment. Fashion designer Erik Brunetti brought the challenge after his application to register the trademark FUCT was denied. The Court reasoned that the Act allowed trademarks that aligned with current social mores but rejected those that defied “society’s sense of decency or propriety.” In 2017 the Court struck down another provision of the of the Lanham Act in Matal v. Tam that prohibited the use of “disparaging” language in trademarks as unconstitutional.
Brunetti founded a clothing brand, using a trademark FUCT. Pronunciation of the word would be “equivalent of the past participle form of a well-known word of profanity”.
As per a provision in the Lanham Act [§1052(a)], application for registration of a mark can be rejected if the mark is found to be “immoral or scandalous”. In the present case, finding the mark to be “immoral or scandalous”, PTO rejected the application, which was upheld by the Appeal Board.
Before the Supreme Court, the Government conceded that registration cannot be denied based on the “views expressed by a mark.” [p. 5] It further conceded that ordinary meaning of the terms, “immoral” or “scandalous” would make it pervious to viewpoint-based discrimination. However, the Government offered to construct the phrase in a way to narrow the statutory bar to “marks that are offensive or shocking to a substantial segment of the public because of their mode of expression, independent of any views that they may express.” [p. 8] Such a construction would mostly limit the rejection of applications for marks which are vulgar, sexually explicit or profane and would not turn on viewpoint. [p. 9]
When an application for registration of a mark comes before PTO, it asks questions such as, “whether a substantial composite of the general public would find the mark shocking to the sense of truth, decency, or propriety, offensive, disreputable or vulgar”, to determine if it would fall within the category of “immoral or scandalous.” Based on the answers to these, the examining attorney determined Brunetti’s mark to be vulgar and hence unregistrable. The Appeal Board upheld the ruling and observed the mark to have negative sexual connotations. The Appeal Board also considered products and the website of the brand which contained images representing “extreme nihilism” and “antisocial” behavior. Accordingly, it found the mark to be offensive. Thereafter, Brunetti approached the Court of Appeal challenging the bar of “immoral or scandalous” mark. The Court of Appeal found the bar to violate the First Amendment and invalidated the provision. [p. 3]
The Supreme Court considered the decision of the Court of Appeal.
Justice Kagan delivered the majority opinion of the Court.
The underlying issue was whether the bar of “immoral or scandalous” for registration of marks violates the First Amendment and hence is unconstitutional.
The Supreme Court first considered the scheme of registration under the Lanham Act. It states that the registration of marks is not mandatory. However, registration gives some valuable benefits to the mark’s owner. Further, the Act directs PTO to refuse registration of certain marks. This included marks, comprising of “immoral or scandalous” matter. [p. 2] The Supreme Court also considered a case, Matal v. Tam, 582 U.S. (2017) [Tam], in which another ground for refusal of registration to a mark came into question. Before Tam, a mark could be refused registration if it disparaged any living or dead person. Such a ground was declared unconstitutional by the Supreme Court in Tam, however, the eight-judge bench therein was evenly divided among two concurring opinions. Overall, all the judges agreed on two propositions: (1) if a trademark registration bar is viewpoint-based, it is unconstitutional; and (2) the disparagement bar was viewpoint-based [p. 4]. Viewpoint-based discrimination is a form of content discrimination, in which a particular opinion on a subject matter is singled out. The Court in Brunetti had to consider whether the impugned provision constituted a viewpoint-based discrimination.
The Supreme Court concluded that the criterion of “immoral and scandalous” is viewpoint-based. It also rejected the contention of the Government that the statute could be narrowly construed to only refer to obscene marks. However, the Court considered that such an interpretation would amount to enacting a new provision and could not be judicially done.
Consequently, the Supreme Court affirmed the judgment of the Court of Appeals, holding it to be in violation of the First Amendment and hence unconstitutional.
Alito, J (concurring)-
He added that the “immoral” and “scandalous” bar could be used to meet illegitimate ends. However, the Government could adopt such a bar to preclude registration of marks with vulgar terms that play no real part in the expression of ideas, as the “registration of such marks serves only to further coarsen our popular culture.” [p. 2] He also noted that the mark in the present case, FUCT, could be refused registration under such a provision.
Roberts, CJ- (concurring in part and dissenting in part)
He agreed with the majority on the point that “immoral” was not susceptible to a narrowing construction. However, he found “scandalous” was susceptible to such a narrowing construction.
Sotomayor, J. (concurring in part and dissenting in part)-
She agreed with the declaration of the bar or immorality as unconstitutional. However, she objected to considering the terms, “scandalous” and “immoral” as comprising a unified standard. She further observed that if the term “scandalous” was considered on its own, it could be read either narrowly or broadly. Accordingly, a limiting construction would be both appropriate and possible. It could have been interpreted to regulate only obscenity, vulgarity, and profanity. The resulting prohibition would then be a reasonable, viewpoint-neutral, content-based regulation and would save the provision as well.
Breyer, J (concurring in part and dissenting in part.)
He agreed with the majority to the extent of deciding that the bar of immorality violated the First Amendment. However, he argued against the “category-based approach to the First Amendment”. Rather, he endorsed an approach based on proportionality with the objective sought to be achieved. To that end, he looked into the objective of the trademark law and then identified the Government’s interest in barring the registration of highly vulgar or obscene trademarks. Upon such consideration, he concluded that that the prohibition on registering “scandalous” marks does not “work harm to First Amendment interests that are disproportionate in light of the relevant regulatory objectives.”
Decision Direction indicates whether the decision expands or contracts expression based on an analysis of the case.
The case further expands the scope of expression under the First Amendment, finding the bar of “immoral or scandalous matter” in the grant of trademark to be view-point based discrimination.
Global Perspective demonstrates how the court’s decision was influenced by standards from one or many regions.
Case significance refers to how influential the case is and how its significance changes over time.
The decision is a judgment of the United States Supreme Court and has a binding effect on Courts within that jurisdiction.
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