June 24, 2019

Supreme Court again K-Os Ban on Offensive Speech

Several hours ago as I write, the Supreme Court knocked out the Scandalous Clause in the Lanham Act, the federal trademark statute, as predicted here last January, though by a smaller margin than I expected, and with a loophole that could but is unlikely to be exploited, at least not soon. The vote in the case, Iancu v. Brunetti, was 6–3.

The case stemmed from the efforts of Erik Brunetti, a clothing designer and retailer, to trademark a line of clothing he markets under the name “FUCT.” The Scandalous Clause bars the U.S. Patent and Trademark Office (PTO) from registering trademarks that are “immoral” or “scandalous.” The majority voided the statutory provision because, in the words of Justice Elena Kagan, in “disfavor[ing] certain ideas [it] infringes the First Amendment.”

In determining whether a particular mark falls within those terms (the courts read the two terms as a single category), Justice Kagan explained that “the PTO asks whether a ‘substantial composite of the general public’ would find the mark ‘shocking to the sense of truth, decency, or propriety’; ‘giving offense to the conscience or moral feelings’; ‘calling out for condemnation’; ‘disgraceful’; ‘offensive’; ‘disreputable’; or ‘vulgar.’” The PTO’s Trademark Trial and Appeal Board found that “whether one considers [“FUCT,” the trademark seeking registration] as a sexual term, or finds that [Brunetti] has used [the mark] in the context of extreme misogyny, nihilism or violence, we have no question but that [the term is] extremely offensive.” A federal appeals court overturned the PTO’s refusal to register the mark, holding that the Scandalous Clause violates the First Amendment.

The Supreme Court made it clear in an earlier case, Matal v. Tam, that the Disparagement Clause, a companion to the Scandalous Clause in the Lanham Act, was unconstitutional because it was “viewpoint based.” That is, it barred registration if the mark disparaged a person or an institution but not if it said nice things. Such a “happy talk” clause, Justice Samuel A. Alito said, is a classic case of viewpoint discrimination.

Summarizing precedent, Justice Kagan wrote that as “a core postulate of free speech law the government may not discriminate against speech based on the ideas or opinions it conveys.” For the majority she concluded that the Lanham Act’s “scandalous” criterion at issue in Iancu is also viewpoint-based. Whether to accept or reject a mark under the Scandalous Clause turns on agreeing with or defying “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.

Justice Kagan offered several examples of the PTO’s discriminating on the basis of viewpoint. Here’s one set:

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 . . . 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.

Conceding that a bias against offensive marks is discriminatory, the government argued that it didn’t really matter because there is a neat way around the problem: The Court can, in effect, rewrite the Scandalous Clause to avoid the difficulty. The government pressed what it saw as the Court’s obligation to carve out the bias by narrowing the meaning and reach of the Clause. This obligation, the government argued, stems from the general principle that courts should strive to avoid striking down laws on constitutional grounds if possible. The fallacy in this approach, Justice Kagan said, is that the principle applies only when a court is considering an ambiguous statute “to avoid serious constitutional doubts.” But the Scandalous Clause is not ambiguous. The Court “will not rewrite a law to conform it to constitutional requirements.”

Here’s a simple example of that proposition. Suppose that a legislature passes a law prohibiting a movie theater from showing a film “dealing with sex.” Such a law is obviously much too broad, since it would ban a documentary about court proceedings considering whether such a law is constitutional. A court may not sustain such a law against constitutional attack by narrowing it to mean that only obscene films may be suppressed.

In Iancu, the government argued that the Court should narrow the meaning of the Scandalous Clause to bar only marks that would offend or shock a substantial part of the public by the “mode of expression independent of any views that they may express.” In other words, the Court should declare that henceforth, shocking “ideas” in a mark may not be rejected but shocking “words” (lewd and profane vulgarisms) that express those ideas could be.

Justice Kagan refused the invitation. The problem, she said, is that such a narrow construction is not what Congress unambiguously legislated:

The “immoral or scandalous” bar stretches far beyond the Government’s proposed construction. The statute as written does not draw the line at lewd, sexually explicit, or profane marks. Nor does it refer only to marks whose “mode of expression,” independent of viewpoint, is particularly offensive. It covers the universe of immoral or scandalous—or (to use some PTO synonyms) offensive or disreputable—material. Whether or not lewd or profane. Whether the scandal and immorality comes from mode or instead from viewpoint. To cut the statute off where the Government urges is not to interpret the statute Congress enacted, but to fashion a new one. . . . There are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all. It therefore violates the First Amendment.

Concurring, Justice Alito agreed that the Court may not rewrite the statute. But he opened the door a little to the government’s ultimate objective, noting that Congress may always enact a new “but more carefully focused statute” that bars registering marks “containing vulgar terms that play no real part in the expression of ideas.” Brunetti’s mark would be an example of such a mark and it could be refused under such a new statute. Marks that “signif[y] nothing except emotion and a severely limited vocabulary,” Justice Alito believes, can be rejected under a proper law, because “such marks serve[] only to further coarsen our popular culture.” This from the fellow who felled Happy-Talk laws. Now, it seems, that which illumines must be allowed through the government sieve; that which is low and coarsens may be blocked. But this was a concurrence; the other five justices voting to strike the Scandalous Clause did not debate Justice Alito on the subtle points he raised, including the dubious notion that intensely felt emotional states expressed in corresponding language deserve no constitutional protection.

The three dissenters, in varying ways, argued that the Court ought to have narrowed the statute to prevent trademark registration of vulgar, obscene, or profane language (and presumably images). It seems that they would vote to uphold such a law if Congress ever got around to enacting it. Whether Congress has the will to overcome its current political paralysis is beyond my understanding. But at least at the moment, this narrowing will still have to overcome a majority standing firm against importing, for lack of a better phrase, “offensive modes of communication” into federal trademark law, and all the more obviously into law generally.