v31#4 Cases of Note — Immoral Trademarks

by | Oct 4, 2019 | 0 comments

Column Editor:  Bruce Strauch  (The Citadel, Emeritus) 


Following up from our insightful analysis of Matal v. Tam, 582 137 S.Ct. 1744 (2017) (ATG April 2019, v.31#2) your esteemed column editor and retired scholar will be allowed to say “I could see this coming.”

Matal struck down the Lanham Act’s bar on “disparaging” trademarks (the band called “The Slants” if you recall) on the basis of viewpoint discrimination.  Here we deal with “immoral or scandalous” trademarks.

Erik Brunetti pioneered an early brand of streetwear with the trademark FUCT.  He says the brand name is pronounced one letter after the next: F-U-C-T.  And of course, there is another way to read it as … ahem … profanity.

Brunetti says it is an acronym for Friends U Can’t Trust.  He and a skateboarder pal founded the company in a one-bedroom apartment in Venice Beach, CA.  They marketed through skateboarder magazines. It quickly became a market powerhouse and partnered via images with Snoop Dogg, The Notorious B.I.G., and Kate Moss.  Celebrities like Leonardo DiCaprio, Rihanna, and Hailey Baldwin have been seen out and about in FUCT wear.

Cultural impact?  If Rihanna doesn’t convince you, in 1999, The Face magazine named it one of the top forty iconic labels in fashion.  And … Cornell University Library’s Rare Book and Manuscript Collection has a collection of FUCT clothing due to its cultural significance.

As he hit the big time, Brunetti wanted to register his trademark.

It is not essential to register a mark.  It can be used in commerce and enforced against infringers.  But registration is prima facie evidence of validity and serves as constructive notice to infringers.

15 U.S.C. §1052(a) prohibits marks that “[c]onsist of or comprise immoral or scandalous matter.”  Historically, the Patent and Trademark Office (PTO) has asked whether a “substantial composite of the general public” would find the mark “shocking to the sense of truth, decency and propriety.” 

Of course, they don’t actually run surveys or polls.  They just pronounce. Perhaps they have in-office pow-wows.

PTO determined FUCT to be totally vulgar and unregistrable.  They also did not care for images of “extreme misogyny, nihilism and violence” on the apparel.

Going to their website, I’m having trouble seeing this.  Am I hardened by a coarse society to the point where I no longer recognize it?  I see a $125 t-shirt emblazoned with a skull and horned helmet. I see “Duct Tape It Can’t Fix Stupid But It Can Muffle The Sound.”

It is very much slacker skateboarder attire.  Or maybe something you’d see on meth-heads on Breaking Bad.

Hmm.  Here’s “Cocaine Cool” with a crow leaning against a mound of flake.  And two women wrestlers with bared breasts.

Brunetti sued, and the case made its way to the Supreme Court on certiorari.

In Tam, the Justices all agreed that government may not discriminate against speech based on the ideas or opinions it conveys.  See Rosenberger v. Rector and Visitors of Univ. of Va., 515 U.S. 819, 829-830 (1995).  Being able to present ideas which offend are a bedrock First Amendment principle.  Viewpoint discrimination is a no-no.

By the PTO’s interpretation, the Lanham Act allows marks whose messages accord with society’s sense of decency, but not when they defy it.  The PTO has refused to register marks expressing drug use and terrorism (positive) and religion (negative).  D.A.R.E. TO RESIST DRUGS AND VIOLENCE (yes). BONG HITS 4 JESUS (no). AGNUS DEI for safes and MADONNA for wine were refused registration.  Also BABY AL QAEDA on t-shirts.

The PTO knew they were on thin ice and argued the prohibition should be limited to lewd, sexually explicit or profane marks.  They said the overbreadth in application by the PTO was not “substantial” relative to “the statute’s plainly legitimate sweep.”

The Court kind of shook its head at that and said the PTO was trying to fashion a new statute.  Once viewpoint bias is found, it’s all over.  It would not compare permissible and impermissible applications if Congress banned “offensive” or “divisive” speech. 

And the current mania about “hate speech” really takes you down a rabbit hole.

There are more immoral and scandalous ideas roaming the land than there are swearwords, and the Lanham Act is trying to forbid them all.  So, big violation of the First Amendment.

And in celebration of their signal victory, there is an “I Fuct the Supreme Court” t-shirt.  

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