A squeamish Supreme Court did not need to hear the “f-word” or an explicit racial slur to understand the linguistic minefield it was entering Monday when considering a free-speech challenge to the federal law forbidding registration of “immoral” or “scandalous” trademarks.
“I don’t want to go through the examples,” Justice Neil M. Gorsuch told the government’s lawyer, Malcolm L. Stewart. “I really don’t.”
Justices generally don’t need to tell lawyers to avoid the profane during oral arguments, but they found themselves making hairpin swerves to avoid vulgar language Monday.
Los Angeles artist Erik Brunetti was challenging the U.S. Patent and Trademark Office’s decision not to register the trademark for his FUCT clothing line. His application had been denied, as Stewart delicately put it, because it “would be perceived by a substantial segment of the public as the equivalent of the profane past participle form of . . . perhaps the paradigmatic word of profanity in our language.”
For more than a century, the trademark office has been told to deny registration of such marks. But two years ago, the court unanimously decided that a neighboring provision about “disparaging” trademarks was an unconstitutional infringement on the First Amendment.
Stewart attempted to convince the justices that the outcome of that case — brought by Simon Tam, founder of an Asian American rock band, the Slants, and advantageous to the Washington Redskins professional football team — did not dictate the result in this one.
The “ban on federal registration of scandalous trademarks is not a restriction on speech but a valid condition on participation in a federal program,” Stewart said. Brunetti can call his clothing line whatever he wants, but the government does not have to endorse it by providing trademark registration, he said.
But Stewart was blitzed by questions about examples of seemingly arbitrary decisions on which trademarks were registered and which were not, and how the government could decide when a “substantial” portion of the public would be offended.
“One way or another, it’s always subjective,” said Justice Sonia Sotomayor. Gorsuch said the decision-making resembled “a flip of the coin.”
Justice Elena Kagan said the standards set in the law are “very broad. They do include things that are offensive because of the ideas they express. So why isn’t that just the end of the matter? And if Congress wants to pass a statute that’s narrower, that’s focused on vulgarity or profanity, then Congress can do that.”
Perhaps, suggested Justice Ruth Bader Ginsburg, the word Brunetti’s brand mimics might not be immoral or scandalous to “say, 20-year-olds,” an audience he might target for his streetwear.
“These goods, as I understand it, are meant to attract a particular market, and if we concentrate on that market, from their perception, the word is mainstream,” Ginsburg said.
And she noted an anomaly from the briefs: The office rejected some trademarks because they were found to be scandalous and because they too closely resembled marks that already had been approved.
But the tables turned a bit after Brunetti’s lawyer, John R. Sommer of Irvine, Calif., told the court there was no way to “make a sensible determination” about which trademarks are acceptable and which are not.
Justice Stephen G. Breyer was particularly concerned about whether racial slurs and the coarsest of words have a lingering effect.
“It’s stored in a different place in the brain,” Breyer said. “It leads to retention of the word. There are lots of physiological effects with very few words.”
Brunetti has said his brand stands for Friends U Can’t Trust. But when Sommer offered that the acronym was not really a profane word, Justice Samuel A. Alito Jr. was not buying it.
“Oh, come on,” Alito said, adding, “We know what — you know what he’s trying to say.”
A number of justices worried whether recognizing trademarks with profanity or racial slurs might either lead to their more widespread use or be seen as some sort of government endorsement of the terms.
“The racial slur we all know about, okay, suddenly, in certain places in the United States, appearing as a product name, appearing on every bus where it’s advertised, appearing on newsstands in Times Square . . . and where children and others see it,” Breyer said in describing his concerns.
“As they point out, this doesn’t stop anybody from saying [it], it does stop them from claiming it’s a registered trademark, i.e., product source recognized by the government.”
When Sommer said his client’s merchandise would not be available at Target or Walmart, Chief Justice John G. Roberts Jr. said that doesn’t solve the problem.
“It is going to be on people walking down through the mall,” Roberts said. “And, you know, for parents who are trying to teach their children not to use those kinds of words, they’re going to look at that and say” the word has a trademark recognized by the federal government.
In his rebuttal, Stewart seemed to raise the stakes for the justices. He said that the Patent and Trademark Office is treating the court’s decision in Matal v. Tam, regarding disparaging trademarks, as prohibiting a denial of registration for racial slurs.
“But with respect to the single most offensive racial slur, the PTO is currently holding in abeyance applications that incorporate that word, pending this court’s decision” in Brunetti’s case, Stewart said.
The case is Iancu v. Brunetti.