25 Apr Supreme Court Hears Oral Argument in Iancu v. Brunetti
On April 15, the Supreme Court heard oral argument over the question of whether immoral and scandalous brand identifiers can receive trademark protection.
Immoral and Scandalous Marks
The case, Iancu v. Brunetti, is spearheaded by Eric Brunetti, owner of the brand FUCT. His brand was denied protection under the Lanham Act’s prohibition on registering marks which the general public would find “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . or calling out for condemnation.”
At oral argument, the court focused on the First Amendment issues at play, expressing concern that this restriction amounts to unconstitutional viewpoint discrimination. This form of speech discrimination occurs when the government bans speech that expresses one viewpoint while allowing speech expressing another.
As the court noted, nothing prevents Brunetti from selling his designs. However, his ability to profit from his brand, which has existed since 1990, is hampered due to an inability to prevent counterfeiters from entering the market.
According to Brunetti’s attorneys, because of the different treatment of brands based on which trademarks they chose to use, the government is improperly granting benefits to some brands and withholding them from others, due to viewpoints expressed by the speech.
Difficulties in Distinguishing Scandalous and Non-Scandalous Marks
Another issue that came into play was the disparate way the US Trademark Office has treated marks. As Brunetti noted in his brief, marks like FCUK received protection, while his didn’t. Justice Gorsuch also noticed this discrepancy, stating: “there are shocking numbers of ones granted and ones refused that… look remarkably similar.”
Attorney Malcolm Stewart, arguing on behalf of the Department of Justice, argued that it is important to look at each requested mark in context, because it is difficult to create a hard and fast rule.
Who Takes Offense?
A final point raised during oral arguments was the question of who is actually offended by the speech. Justice Ginsberg noted that 20-year-olds are less likely to be offended by off-color language, while Chief Justice Roberts pointed out that sometimes offense is the purpose of the speech.
Attorney John Sommer, representing Brunetti, also made the point that many Americans find eating meat to be offensive, so trademarks for brands like Steak ‘n Shake could theoretically be denied under the Lanham Act’s current decision.
If the Supreme Court rules in favor of upholding the prohibition on immoral and scandalous marks, nothing will change. However, if the Court decides this requirement is unconstitutional, Justice Alito warned of a “mad scramble” for registration of the “list of really dirty words,” which is entirely likely.
A decision in Iancu v. Brunetti is expected in June 2019.
This article is for informational purposes only and does not provide legal advice. If you are interested in speaking with an intellectual property lawyer who also specializes in entertainment law, contact Heerde Blum LLP by calling 310-620-7172 or 212-920-5858 or by filling out the online contact form.