The Tightrope Between First Amendment Violations and Lawful Regulation of Vulgar Trademarks

Author: Sean Flaherty

Trademark attorneys and brand owners alike know that trademark applications are not to be refused registration by the USPTO unless they fall within certain codified prohibitions. 15 U.S.C. § 1052(a) (“Lanham Act Section 2(a)”), for example, bans trademarks which “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . .”

But in 2017, the Supreme Court ruled in Matal v. Tam, 137 S. Ct. 1744, 1763 (2017), that the “disparagement clause” of Section 2(a) was unconstitutional as amounting to viewpoint discrimination. This set the stage for subsequent challenge to the remaining part of 2(a)—the “immoral/scandalous” clause. This issue was recently argued on April 15, 2019 before the Supreme Court in Iancu v. Brunetti, Case No. 18-302.

Trademark Application and TTAB Appeal

In 2011, Erik Brunetti, “an artist and entrepreneur whose graphics are infused with cultural strands from skateboarding, graffiti culture, punk rock music, and remnants of Situationist Ideal ideologies” sought to register the trademark application no. 85310960 for “FUCT.” In re Brunetti, 2014 TTAB LEXIS 328, *3-4 (T.T.A.B. August 1, 2014). The PTO rejected the application under the prohibition against “immoral/scandalous” marks, and Brunetti appealed to the TTAB. There, Brunetti attempted to argue that the mark did not carry any particular meaning, was not being used for its phonetic equivalent, and instead was “an arbitrary made up word” which evoked an edgy aesthetic. Brunetti further argued that to the extent the term had any meaning, it correlated to each of the first letters of the phrase FRIENDS U CAN’T TRUST. However, the TTAB stated that the foregoing arguments “stretche[d] credulity.”

The TTAB affirmed the refusal, noting that “the threshold for objectionable matter is lower for what can be described as ‘scandalous’ than for ‘obscene,’” citing In re McGinley, 660 F.2d 481, 211 USPQ 668, 673 n.9 (CCPA 1981). The also TTAB recognized its own statutory limitations in noting it was not “the appropriate forum for re-evaluating the impacts of any evolving First Amendment jurisprudence within Article III courts upon determinations under Section 2(a) of the Lanham Act.” In re Brunetti, 2014 TTAB LEXIS 328 at *16.

Federal Circuit Appeal

Brunetti appealed the TTAB to the Federal Circuit. The Court of Appeals did not disturb the TTAB’s factual finding that the mark was vulgar and therefore fell within Section 2(a)’s prohibition against the registration of scandalous marks. In re Brunetti, 877 F.3d 1330, 1338 (Fed. Cir. 2017) (“Dictionaries in the record characterize the word as ‘taboo,’ ‘one of the most offensive’ English words, ‘almost universally considered vulgar,’ and an ‘extremely offensive expression.’”) But, while the case was on appeal, Matal v. Tam1 was decided. Applying that holding to Brunetti’s application, the Federal Circuit found the “immoral/scandalous” prohibition as an unconstitutional content-based restriction on speech. In re Brunetti, 877 F.3d at 1341. The Federal Circuit held that the regulation did not survive even intermediate, much less strict scrutiny, because (i) “the government ha[d] failed to identify a substantial interest justifying its suppression of immoral or scandalous trademarks”; (ii) the government could not show that the “regulation directly advance[d] the government’s asserted interest” (because the ban does not prevent actual use of the vulgarity and thus “does not protect the general population from scandalous material”); and (iii) the government failed to show that the regulation was “carefully tailored” given the significant evidence of inconsistent application and “vague nature of the scandalous inquiry.”

Finally, the Federal Circuit denied the government’s last-stand argument, which was to interpret the ban narrowly so as to uphold its constitutionality, by making the prohibition coextensive with a ban on obscenity. However, the Federal Circuit noted that due to the language used in the statute, no basis was provided to the Court to rewrite the law. Id. at 1357 (“We do not see how the words ‘immoral’ and ‘scandalous’ could reasonably be read to be limited to material of a sexual nature. We cannot stand in the shoes of the legislature and rewrite a statute.”).

Supreme Court Review

The Supreme Court granted certiorari and recently held oral argument.

Brunetti primarily argued that there was no principled distinction between the unconstitutionality of the prohibition against the offensive viewpoints targeted by “disparagement clause” in Tam and the offensive viewpoint targeted by the “immoral/scandalous clause” presently before the Court. Further, the applicant argued that all examination of trademarks necessarily implicated an evaluation of content, and thus the government could not argue that the prohibition amounted only to regulation of the “mode of expression.”

In light of Tam, the government was hard pressed to maintain the facial validity of the regulation. Instead, the government conceded the statute should be narrowed so as to preserve its validity.

At oral argument, Justice Kagan asked: “[J]ust so I could understand, you’re asking us to narrow this statute to exactly what?” Deputy Solicitor General Malcom Stewart replied, “To marks that are offensive, shocking to a substantial segment of the public because of their mode of expression, independent of any views that they may express.” Here, the government essentially argued that the PTO should be permitted to restrict speech akin to fighting words, which are susceptible to regulation because they are not based on viewpoint, but instead voiced merely to anger and incite. The government also distinguished Tam by arguing the prohibition against scandalous words is viewpoint-neutral and applied regardless of the applicant’s intended message.

The oral argument lasted nearly an hour with the Court peppering each party with a great number of questions. At several instances, the Court indicated uneasiness with vagueness of the regulation, as evidenced by the PTO’s track record of inconsistent application. But that is not to suggest an unconstitutionality ruling is assured. The Justices probed whether any speech in the context of trademarks could thereafter be regulated in the event this provision were ruled unconstitutional. Could a trademark registrant owning a vulgar mark for example, not be denied advertising space on the side of a public bus, given that its trademark registration was now approved by the federal government?

Justice Breyer repeatedly raised the point that even today, a limited number of dirty words and racial slurs are well defined and well documented to have a physiological effect on the hearer, and asked why the government should not be permitted to ban those words from the trademark registration program. Similarly, Justice Gorsuch asked with regard to the trademark registration program, “why can’t the people choose to withhold the benefit [of registration] on the basis that there are certain words that are profane and that we, as a matter of civility in our culture, would like to see less of rather than more of, and you can use – you’re free to use them . . .but we are not going to trademark them, and we’ve held just last year that a patent is a public benefit that can be withdrawn without a judge. Why isn’t this also similarly a public benefit rather than a private right?” Additionally, Justice Sotomayor posited, “Why can’t the government say, no, we’re not going to give you space on our public registry for words that we find are not acceptable?”

Although the expected bet is on another decision striking down the prohibition as unconstitutional in light of Tam, don’t be surprised if the Court instead decides to walk a tightrope and find that certain vulgarities do not implicate bona fide viewpoints, are used for no more than to create a shocking response in the hearer, and are thus susceptible to regulation without running afoul of the First Amendment.

About the author: Sean Flaherty is a partner in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. His practice focuses on litigation matters involving copyright, trademarks, trade secrets, and patents, as well as transactional matters related to intellectual property licensing. Mr. Flaherty is a registered patent attorney with a degree in Civil Engineering. Mr. Flaherty’s biography can be found here.
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1 Prior to this Supreme Court decision, the Federal Circuit had held Section 2(a)’s disparagement provision as unconstitutional under the First Amendment, failing to survive either intermediate or strict scrutiny. See In re Tam, 808 F.3d 1321, 1358 (Fed. Cir. 2015)

Section 230 Remains a Powerful Weapon to Defend Online Businesses

The Ninth Circuit affirmed the continued  viability of the Section 230 defense, which is often employed by online review boards, social media platforms, and other crowd-sourced website operators. In Kimzey v. Yelp! Inc., 2016 U.S. App. LEXIS 16665, (9th Cir. Sep. 12, 2016), the Court found that the plaintiff could not plead around the broad immunity granted by Section 230 of the Communications Decency Act. Specifically, Yelp’s publication of user-generated speech harmful to plaintiff was not actionable. Id. at 3.

Section 230 provides in relevant part, “[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.” 47 USC §230(c)(1). “Interactive computer service” is defined as “any information service, system, or access software provider that provides or enables computer access by multiple users to a computer server…” while “information content provider” is separately defined as “any person or entity that is responsible, in whole or in part, for the creation or development of information provided through the Internet or any other interactive computer service.” Id. at §230(f)(2)-(3). Section 230 effectively “immunizes providers of interactive computer services against liability arising from content created by third parties.” Kimzey, at 1, citing Fair Hous. Council of San Fernando Valley v. Roommates.Com, LLC, 521 F.3d 1157, 1162 (9th Cir. 2008). Additionally, Section 230 provides a “Good Samaritan” safe harbor, which precludes liability for an operator when it restricts access or scrubs “obscene, lewd, lascivious, filthy, excessively violent, harassing, or otherwise objectionable” content. 47 USC §230(c)(2)(A). Despite these protections, the Section 230 defense is not absolute. Rather, where the “interactive computer service” and the “information content provider” are one in the same, immunity will not apply.

Plaintiff attempted to hold Yelp liable for an unfavorable review about the Plaintiff’s locksmith business by alleging more nuanced theories. First, plaintiff alleged that the post was not genuinely user-generated, and that instead Yelp “caused [the review] to appear” by copying it from another source and further disseminated the review in advertisements on Google and Yelp.  Id., at 10. Second, plaintiff alleged that liability vested because the review appeared with Yelp’s star-rating indicia. Id. at 12. The Court found that neither allegation amounted to a “creation” or “development” by Yelp which would take it beyond the scope of immunity provided by Section 230. Id. at 14.

Because Yelp’s star-rating system comprises a “neutral tool” of “voluntary inputs” from users, it did not amount to “creation” or “development” by Yelp such that the company could be considered an “information content provider.” Id. at 15. Similarly, even if Yelp obtained the review from another website and republished it or provided it to Google as an advertisement, liability would not vest because “[n]othing in the text of the CDA indicates that immunity turns on how many times an interactive computer service publishes ‘information provided by another information content provider.’” Id. at 16.  The Court concluded that “proliferation and dissemination of content does not equal creation or development of content.” Id. The Court of Appeals affirmed the Western District of Washington’s dismissal of Plaintiff’s complaint.

Every online business accused of republishing false, misleading, defamatory, or other unlawful content should have a Section 230 defense close at hand, as the Kimzey decision may further heighten a plaintiff’s burden to show that the objectionable content was created or developed by the business. However, businesses must also recognize that their immunity is not absolute and liability remains, where for example, the business creates the content itself, or where it is “responsible, in whole or in part” for developing the content. Fair Hous. Council v. Roommates.com, LLC, 521 F.3d 1157, 1162 (9th Cir. 2008). Therefore, best practices dictate that online businesses refrain from inducing the creation of any particular content, or exercising substantive editorial authority in the creation of content. Instead, online business should remain committed to providing a neutral platform for third party content generation, and when appropriate, only act to restrict “objectionable” content under Section 230’s “Good Samaritan” safe harbor.

The full opinion in In Kimzey v. Yelp! Inc., 2016 U.S. App. LEXIS 16665, (9th Cir. Sep. 12, 2016), is available here.