Courthouse Steps Decision: Iancu v Brunetti

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Remember “The Slants,” the Asian-American rock band who were denied a trademark because the U.S. Patent and Trademark Office (PTO) thought the band’s name was “disparaging”? In Matal v. Tam (2017), the Supreme Court unanimously struck down the Lanham Act’s anti-disparagement provision. (That also resolved the battle over the Washington Redskins’ trademarks.) Well, here we go again, this time with a related provision that prevents registration of “immoral” or “scandalous” marks. It doesn’t take much imagination to figure out what the clothing brand “Fuct” is going for, and the PTO decided it did not pass muster. The Federal Circuit struck down the relevant provision—as it had in Tam—and the Supreme Court again took the case. 

On June 24, the Supreme Court affirmed 6-3, holding that the Lanham Act prohibition on the registration of “immoral” or “scandalous” trademarks infringes the First Amendment. Thomas Berry, who contributed to an interesting and entertaining amicus brief submitted by the CATO Institute, will share his thoughts on the decision and its implications on free speech and intellectual property.


Thomas Berry, Attorney, Pacific Legal Foundation


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Event Transcript

Operator:  Welcome to The Federalist Society's Practice Group Podcast. The following podcast, hosted by the Free Speech & Election Law Practice Group and the Intellectual Property Practice Group, was recorded on July 11, 2019, during a live teleforum conference call held exclusively for Federalist Society members.     


Wesley Hodges:  Welcome to The Federalist Society's teleforum conference call. This afternoon's topic is a Courthouse Steps Decision discussion on Iancu v. Brunetti. My name is Wesley Hodges, and I am the Associate Director of Practice Groups at The Federalist Society.


      As always, please note that all expressions of opinion are those of the expert on today's call.


      Today we are very fortunate to have with us Mr. Thomas Berry, who is an attorney with the Pacific Legal Foundation. Thomas contributed to a brief that Cato submitted for this case. After our speaker gives his opening remarks today, we will move to an audience Q&A, so please keep in mind what questions you have for this case or for Thomas himself. Thank you very much for speaking with us, Thomas. The floor is yours.


Thomas Berry:  Well, thanks so much for having me. I think I'll start in describing what this case is about by going back two years because this case is very, very closely connected to a Supreme Court case called Matal v. Tam that concerned the same clause of the Lanham Act. So the Lanham Act is the federal trademark registration statute that was passed all the way back in 1905. And since then, since 1905, there's been a clause on the books that describes what sorts of reasons the Patent and Trademark Office can have for denying a trademark. And most of them are pretty standard, what you'd expect reasons to be for denying a trademark. For example, it's misleading, it tells people -- it gives people the false impression that some good is connected to some other company which it's not connected to or connected to a country that it's not connected to.


      But there's one specific part of that clause that has suddenly got a ton of attention more than 100 years after it was originally passed. And I think it's worth giving the full version of that because particular parts of it have been litigated so much in isolation that you rarely actually hear what it sounds like all in a row. And it's a very interesting sort of grab bag collection of words that are pretty broad, and the breadth of those words is actually what turned out to be determinative of the case we're talking about today, even though most people didn't expect it to be.


      So what it says is that one reason that the Trademark Office can deny federal registration for a trademark is if it "consists or comprises a moral, 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." And so for decades, that was just applied without any real consideration of whether there was a First Amendment issue.


      But over the 20th century, First Amendment doctrine got broader. Courts started looking not just at sort of your quintessential bans on speech, but the doctrine started to take note that punishing people or putting people at a disadvantage for their speech or their ideas is really just as bad as outright banning speech. And that's when people started to wonder are some of these essentially punishing people who want to register trademarks for what they're saying, for the ideas that they're saying. And the part of that -- the word that got the most attention to start with is the part that says you can't register a trademark that disparages persons living or dead, or those other categories.


      And that led to litigation two years ago over an all Asian-American rock band called "The Slants." And they were sort of a punk rock band. They wanted to, as they put it, reclaim a slur that is often used against Asian-Americans referring to their slant eyes, and they wanted to turn it into a point of pride in ways that other racial groups have taken slurs and turned them into terms of endearment and terms of pride. And when their attempt to register the trademark on their name was denied, they appealed all the way to the Supreme Court. And they won in a case called Matal v. Tam.


      And the Supreme Court said that this denial of their trademark was a viewpoint-based denial, that if you have a rule that you can't register something that disparages people, you're essentially saying that trademarks which express negative viewpoints or which people take to express negative viewpoints are disfavored, whereas trademarks that say positive things about groups are favored. And that's quintessential viewpoint discrimination.


      And it was an eight-Justice court at the time. It was after Justice Scalia passed away and before Justice Gorsuch was confirmed. And on the reasoning, the eight Justices split evenly into two opinions of four each. And it's interesting to see what some of the Justices, but not all of them, were willing to say. So four of the Justices said that a trademark is not equivalent to a government subsidy, and they outright rejected that argument, which was one of the government's arguments. And they said, "Look, the key difference here is that government subsidies come from what you could call limited amounts of money."


      So a program -- the quintessential case is the Federal Arts Program. There was a Supreme Court case about that. And what the Supreme Court said there is, "Look, if the government has a limited amount of money to fund some artists and not others, yes, they can draw some lines." They can, at the very least, draw content-based lines, although it's less clear whether they could draw viewpoint-based lines. So four Justices outright said trademark is nothing like that. In fact, it costs more money to litigate a denial than it would to grant a trademark. And in fact, when people apply to register a trademark, they pay fees to the government, so it's really a net positive for the government's coffers.


      Whereas four other Justices in a plurality opinion by Justice Kennedy said, "We're not going to decide that issue. We're just going to say that this is viewpoint discriminatory and leave it at that." Even if it were a subsidy or a limited public forum, which was the other argument, and that's -- the quintessential limited public forums might be a school or a bus ad, perhaps, where the government can, to some extent, restrict what's on there in the same way that a private company that ran a school or a bus could reasonably restrict what's said on that land. That four-Justice plurality just said, "We're going to say this is viewpoint and leave it at that."


      And so that is what keyed up the topic of this particular case. And what this case is about is an attempted trademark registration of a clothing brand where if you just look at it, it's the letters "F-U-C-T," which obviously, if you pronounce that phonetically, sounds like the past tense of a naughty word, although the somewhat tongue in cheek -- Eric Brunetti, the founder of it, says "No, you just pronounce it as an acronym, F-U-C-T for Friends You U Can't Trust."


      But in either event, the Trademark Office denied registration to that term under the two other words in that long paragraph I read, "immoral" and "scandalous." Now, interestingly, they're not back to back, even though many people, I think, have the assumption that they are because they're so often treated as equivalent. It says immoral, deceptive, or scandalous matter. But for essentially a century, the PTO treated immoral and scandalous as synonyms and denied saying that they were both.


      As the case law developed—not at the Supreme Court level, it had never reached the Supreme Court level—but at the level of the Federal Circuit, which is the Court of Appeals that handles all trademark appeals, they essentially slowly narrowed down the meaning of immoral and scandalous to something analogous to obscenity, naughty words, and also profanities. So not just obscenity in the sense of pornography, in court's parlance, but things one level below profanity, things that the government can't outright ban. But they said it's all right if the government at least chooses not to register these trademarks. And so once the trademark examiner found that F-U-C-T was a profanity, that was enough to deny it.


      Well, after Tam was decided, this case went back to the Federal Circuit, and they said, "In light of the reasoning of Tam, the immoral and scandalous part of the Lanham Act has to fall as well." But interestingly, they used a different reasoning than what they had used in Tam. They didn't go so far as to decide whether it was viewpoint discrimination. They said even if it is just content based discrimination, it falls. And that's a very important distinction in First Amendment law.


      And essentially, the difference is that viewpoint discrimination is where some law or some rule says saying, "I like Asian-Americans," is acceptable. Saying, "I don't like Asian-Americans," is unacceptable. Content based would be something more like you're not allowed to discuss race, or you're not allowed to have a bus add that discusses abortion. It's a rule that, at least on its face, doesn't distinguish based on what your opinion is. It simply says some topics are going to be off limits. And Supreme Court doctrine is in flux, First Amendment doctrine is in flux about how to treat these content-based distinctions.


      But in general, those also rise to the level of strict scrutiny which means bans are usually going to get struck down, but there's a lot more exceptions to that which makes it muddier. So for example, at least currently, if something is purely commercial speech, meaning proposing a transaction, then content-based distinctions face a lower level of scrutiny. That's something that Pacific Legal Foundation's amicus brief lobbied to change. Unfortunately, the Court didn't have to reach that question, so that's still in flux. But the Federal Circuit said, "Look, even if all this does is ban registering profanity, and even if that's just a content-based distinction, we're going to say that this gets struck down anyway under strict scrutiny." And they once again rejected the arguments that it's either a subsidy, or government speech, or anything else that could potentially get around that.


      So it went up to the Supreme Court, as cases normally do when part of a federal statute is struck down. And during oral argument is the first time ever where Justice Kagan really changed the trajectory of this case and really challenged everyone's assumptions about what this case was about. The plaintiff, Eric Brunetti himself, or the person trying to get his trademark registered, essentially accepted the conventional wisdom that immoral or scandalous is a synonym for profanity and fought the case on that assumption. The government, likewise, in their briefing, they simply brushed over the possibility that immoral or scandalous could reach further than just profanity and assumed that. And the Federal Circuit essentially assumed that as well, going along with what had been the general case law in the Federal Circuit.


      But then Justice Kagan at oral argument took a step back and said, "Well, you know," she famously said, "we're all textualist now." And she says, "What are we supposed to be doing here? Are we supposed to be looking at the statutory words? Are we supposed to be looking at the standard that the Federal Circuit has given to explain those words? Or are we supposed to just be looking at the commitments that Trademark Office has made as to what they're going to be doing going forward, that they're only going to apply it to profanity?" And she went on to say, "Look, immoral means, on its face, against popular morality." And that sounds like viewpoint discrimination to her.


      And it didn't help matters that if you look at the actual decision making process in the Trademark Office, a lot of the denials they made really did look like they were viewpoint based, even if they claimed they were only basing it on mode of expression, so only focusing on profanity. If you look at even Eric Brunetti's trademark application itself and the reason it was denied, the examining attorney did a google image search of F-U-C-T and noted that he found his mark was used in advertising that had strong and often explicit sexual imagery that objectifies women and offers degrading examples of extreme misogyny with themes of nihilism, antisocial imagery, and dozens of examples of other images lacking in taste. And when you listed to that, that also kind of sounds like it's viewpoint based, that part of the reason it was denied was nihilism, antisocial viewpoint.


      And a lot of people didn't know what to make of what Kagan had said because for 100 years, we just sort of assumed that really all this did was extend to profanity. And based on the rest of oral argument, a lot of commenters thought that this was going to go the other way, that unlike Matal v. Tam, the Court was going to find that profanity does not express a viewpoint, it's simply an intensifier, something you add to mean you really mean something or you're really angry about it, and that on that basis, it's essentially not that important to expression, and that perhaps the government -- which have compelling enough justification to discourage the use of profanity in the public square by not registering trademarks.


      So the opinion comes down, and Justice Kagan does, in fact, write the majority opinion, joined in full by six other Justices. And what the opinion says is that they're essentially going to reject the statutory interpretation that the Federal Circuit had used for about 100 years and actually just go back and look at the statute afresh. This is the first time the Supreme Court has looked at the statute, and if you simply look at the dictionary definitions of immoral and scandalous, they clearly are viewpoint based. And no amount of assurances on the part of an agency that they're going to narrow it can change that textual fact.


      As she put it in the opinion, "We cannot accept the government's proposal to limit those words because the statute says something markedly different." And she noted that although there is a cannon of construction that, if possible, you should interpret a statute to make it constitutional, if such a statute -- if such an interpretation is reasonable, she says, "We cannot rewrite a law to conform it to constitutional requirements." And she found that to limit it to just profanity would not be to just interpret the law, but it would really be to rewrite it. And so once again, the Court found that taking those words on their face, just like the disparagement clause that was struck down in Matal v. Tam, the -- both immoral and scandalous are viewpoint-based distinctions.


      And interestingly, once again, no part of the majority came to a conclusion as to exactly how to justify where trademark registration fits in our First Amendment universe. Is it a subsidy? Is it government? Is it a limited public forum that the government has set up like a school? They said, once again, "We're not going to touch that question." And in fact, the six-Justice majority contained Justices from both of the two four-Justice pluralities in Tam. And it had one parenthetical in the majority opinion in Brunetti that says, in particular, no majority emerged to resolve whether a Lanham Act bar is a condition on a government benefit or a simple restriction on speech.


      Now, there was one concurring opinion by Justice Alito, and then several that concurred in part and dissented in part. Justice Alito's was essentially to stress that he found if the Act were rewritten and repassed to apply only to profanity that such a law would easily pass muster. And in fact, he took the opportunity to say that profanity plays no real part in the expression of ideas, and as commonly used today, quote, "generally signifies nothing except emotion and a severely limited vocabulary."


      Now, three Justices, Roberts, Breyer, and Sotomayor, each wrote separately, but they all essentially came to the same conclusion, which is they found that a line should be drawn between the word immoral and the word scandalous. And they all found that while immoral has to be interpreted as viewpoint based, they found that scandalous does not and, in fact, that scandalous could be reasonably interpreted to only refer to mode of expression, and thus that scandalous could be interpreted as viewpoint neutral, as essentially only applying to profanity as the government wanted. And so the reason that they were classified as concurring in part is that they concurred in striking down the immoral word but would have kept afloat -- kept in effect the scandalous part.


      And they had a few textual -- besides simply the cannon of constitutionality, I think the strongest argument Justice Sotomayor had was the cannon against surplusage, which is that, in general, you don't read statutes as simply being unnecessarily verbose, using two words when one will do. And so if you want to assume that immoral and scandalous are both doing work in the statute, then, she said, it made sense to think that immoral referred to expressions of unpopular views, whereas scandalous referred to modes of expression that were in poor taste.


      Now, Justice Breyer had an interesting concurrence, or partial concurrence, partial dissent, where he essentially, once again, laid out that he thinks about First Amendment cases in a way that's different from, really, any of the other Justices. He rejects a lot of the more formalistic means that the Supreme Court has taken on First Amendment cases where you start with these classifications, viewpoint, content, etc. He said snarkily that the First Amendment is not the tax code, and he takes a much more sort of fluid balancing approach. And he said he would simply look at what are the speech harms of a particular act and weigh those against what are the compelling benefits of it. And in this case, he finds that if it is narrowly interpreted as only banning registration of profanity, then that would be enough.


      He goes into -- as is often the case, his opinions can be a bit wonkier than other Justices. He cites some scientific studies that find that reactions to profanity can actually have a physiological difference in the listeners. He even says that skin conducting electricity has been measured to be higher in people when they hear profanity. And he has some citations to Supreme Court cases about so-called fighting words or incitements to violence, which are classic exceptions to the First Amendment, and says perhaps profanity borders on those, at least in extreme cases.


      So I think the main takeaway from this case, if people want to take a lesson from it, it's that, really, everyone—and I'll include myself in this category—sort of forgot to go back to first principles of textualism and statutory interpretation, and really unnecessarily fought on the PTO's turf, and made this case harder for Brunetti than it had to be. So I contributed to Cato Institute's amicus brief, even though I'm currently working at Pacific Legal Foundation, essentially in a nostalgic, "get the band back together" purpose. My first job out of law school for a year was as a legal associate at the Cato Institute. I helped draft their brief in Matal v. Tam, and they wanted one in a similarly somewhat profane but with a purpose to it dial in this case.


      And that brief, I think, made a strong case for why profanity is actually important to discourse. It is not, as Justice Alito argued, just something used by people with limited vocabularies. In fact, profanity is remarkably versatile as a means of expression, and there are scientific studies that show use of profanity is actually correlated with higher intelligence and higher vocabularies, not the other way around. It's also -- if anyone wants to read Cato's brief, we also cite two scientific studies that show it's an effective painkiller and allows people to endure pain for longer, and that it's an effective rhetorical tool that can create greater trust between a speaker and an audience.


      And so as I put it, and as I think strongly, we should not so easily pass over striking out certain words from people's vocabulary as if it doesn't restrict their speech. It's kind of like conducting an orchestra with one hand tied behind your back. Even though we have lots of so-called synonyms in English, there's still a difference between words like educate and teach, and there's still often a right word to use and a wrong word in a given scenario. And we shouldn't assume that people can communicate just as well by striking out a few words from their vocabulary.


      So the ground we fought on, again, was assuming that this was going to be a case about profanity, but in the end, it turned out not to be a case about profanity. It turned out to be a case about two pretty clear and explicit words that had simply, over the course of 100 years of convoluted Federal Circuit opinions, lost their plain meanings that we should have seen the whole time if we'd just gone back and looked at them afresh.


      And I think with that, I'll wrap up for now and open for questions.


Wesley Hodges:  Well, very good. Thank you so much, Thomas. We do appreciate your remarks. Let's go to our first caller.


Don Padou:  Hi. Thank you for the presentation. My name is Don Padou. I'm a lawyer in the District of Columbia. Could you speculate on what the Court's findings might mean for cases involving bus advertising, particularly bus advertising that is not proposing a transaction, that is policy oriented? Thanks.


Thomas Berry:  Yeah, that's a good question. So bus advertising was used by the government quite a bit in its briefing as kind of the -- part of a parade of horribles or the supposedly terrible outcome that would result if bans on profanity were found to be viewpoint based. And the government essentially said, "Well, look, if the ban on profanity is a viewpoint-based distinction, then we won't be allowed to ban profanity, even on our bus ads," which in the past has been uncontroversial and standard.


      If the Court had found that the Act only applied to profanity, if they'd adopted the narrowing construction of the partial dissent, then we might have gotten some new doctrine on that, either affirming that or calling that into question. As it is, we don't have any new doctrine on profanity bans because the Court found that this extends -- the immoral and scandalous words extended far beyond profanity.


      I think the way that bus ads are generally construed now is as a limited public forum, meaning they're set up by the government to carry certain kinds of speech, but they're not traditional public forums in the sense that they weren't opened up really for the purpose, like a theatre or something, to be a new realm for people to say whatever they want, that the main purpose is just to run a transit system, and then so long as there's some extra space on the bus, getting to run advertising is a nice bonus source of revenue.


      I know that there was a lawsuit recently in the District of Columbia over ads on the D.C. Metro system when, I believe, Metro denied some advertising requests, for example, from Milo Yiannopoulos's book, and that was pretty clearly not just content based, but viewpoint based. And that was why those ran into trouble. So I would say that the current doctrine is still that viewpoint-based distinctions, even in a limited public forum such as a bus ad, is going to run into trouble. So if a municipality accepts advertising for a book—what can you say—supporting one political candidate but denies advertising for a book supporting the other political candidate, they're going to run into huge trouble.


      It's, once again, less clear if it's simply content based. What if a municipality simply says, "We're not going to have any political ads on the side of our bus."? But I think, even there it would come down to -- strict scrutiny would still be applied because even there, even in the limited public forum sense, you can't -- you'd have to show a compelling government interest for content-based distinctions, something like no political ads.


      Obviously, as I've said, commercial speech is still held to a lower standard, so a lot of the fights in that realm are probably going to come down to is this ad for a book merely proposing a commercial transaction, "Buy my book," or is it also expressing a political viewpoint, "Agree with the message of my book." And that's going to make a big difference under current doctrine over what the level of scrutiny is.


Wesley Hodges:  Thank you, caller. We do appreciate your question. Here is our second caller.


Mitchell Keiter:  Hi. Mitchell Keiter calling from Los Angeles. I wanted to know how you connect this case to some of the other big ones the Court just decided. In particular, I'm thinking about the Bladensburg Cross case where Justice Gorsuch was emphatic in saying that just because some person is offended, that's not enough to shut down the cross or speech. And it seems almost as if the Court's conservatives, in particular, are saying, "We realize the full ramifications of this. We realize that if we're going to protect all voices in the public square from censorship, from suppression, including religious symbols, maybe it also means that the F-word is also going to have some protection, and that's just the tradeoff that has to be made, lest government censors have too much power." I wonder if you see that the Court is sort of pushing back the culture of taking offense at things.


Thomas Berry:  Yeah, that's a great point and definitely something that's going on, at least in the background, and in some instances, in the foreground of these two trademark cases. So one of the arguments the government made for why this is not -- in Matal v. Tam, they made an argument, "Oh, this isn't viewpoint based. This is purely an objective factual inquiry. We just look and ask as a matter of fact, are there a substantial number of people who are offended, who feel disparaged by this term, whatever it may be—The Slants, the Redskins, which was another case challenging the same provision—and if there are, then we deny it." So it has nothing to do with -- the government argued, "It has nothing to do with which speech, we, the government, prefer or want to support or don't want to support. It's merely us reacting to an empirical question about a survey of people's attitudes."


      And Justice Kennedy's plurality opinion actually responded to that more explicitly than Justice Alito's did in Matal, and said, "Look, that's essentially a sophistic argument, not a correct argument because that's still a stand-in for whether it's the government objecting to a viewpoint or a large group of the country objecting to a viewpoint, it's still the viewpoint that triggers it, and that's still viewpoint discrimination." So in other words, you can't -- the government can't pass the buck or pass responsibility for viewpoint-based distinctions in its statutes by saying, "It's not us who's making the determination, it's the public as a whole."


      And I think that is connected to, as you were saying, in the religious cases. Should it make a difference what the man on the street reacts or what his view is of a display, whether he sees it as establishing religion, etc. And I think in -- again, because they took this broader interpretation, we didn't get any majority analysis of just profanity bans. And I think it's somewhat unfortunate that all we got was concurring opinions or partial concurrences, partial dissents, all of which kind of took a negative view of profanity.


      Alito's and Robert's pretty much explicitly say Congress -- if you go back and write a narrower statute that only bans profanity, we think that would be fine. And I think it was, perhaps, a little bit jumping the gun for them to write that because, as it turned out, that wasn't the case in front of them based on the interpretation the majority came up with. So I think that's still to be -- that's only dicta in their concurring opinions, and that's still to be decided, if Congress does decide to go back and attempt to write a narrower statute.


      In my Cato amicus brief, we discussed how it's actually a lot harder than you'd think to come up with an objective list, even for profanity. So New Zealand actually attempts to do this. They run a semi-regular survey of what people think is acceptable and not acceptable for broadcast television, and opinions are actually quite variable on the population as whole. There were some words where it was split almost exactly 50/50 whether people thought a word was sometimes acceptable or never acceptable on broadcast television.


      Sotomayor's opinion in Brunetti kind of brushes past this and says, "Well, if we got down to profanity, that would be -- everybody knows what words are profane. It's easy to just make a list and avoid problems of inconsistent application." But I think in practice, in fact, not only does it change from one generation to the next, but even within generations and within the same culture, attitudes vary widely.


Wesley Hodges:  Very good. Thank you so much, caller. We do appreciate your contribution. Next caller, you are up.


Cliff Hutchinson:  This is Cliff Hutchinson. I'm an attorney in Dallas. Although my issue is less legalistic, hearing all this -- and you covered that in your last answer to some degree, but just the question are there any limits now on the publication of profanity using some rationale like fighting words or like fire in the theatre? Where do we stand now?


Thomas Berry:  So that's a good question. That's essentially a statutory question. And just to reiterate, this isn't about publication in all senses, this is just limited to registration of trademarks. But it appears -- and Justice Sotomayor in her partial dissent points out that in her light, this is unfortunate, that because the scandalous and immoral part of the Lanham Act has been struck down, even obscenity in the Supreme Court doctrine sense, which covers like hardcore pornography, until Congress comes back and passes an amendment, even that right now, it appears, could be trademarked because the scandalous and immoral clauses in the Lanham Act were really the only plausible source for an examining attorney to deny a trademark kind of on the basis of content, on the basis of offensiveness.


      And this is why striking down a law under a facial challenge is tough medicine, because there probably are some applications of the scandalous or immoral clause that would have passed First Amendment scrutiny. I think, clearly, hardcore pornography -- if it had simply said hardcore pornography, or even if it had simply just copied the First Amendment, the Supreme Court's language, if it had said you cannot register anything that is obscenity as that term has been defined in the Supreme Court under First Amendment doctrine, for example. And Congress could come back and make a new part of the Lanham Act that says exactly that, but until they do, there is no limit on what you can register as a trademark.


      This does not affect other codes or other laws banning what can be said in the public square. The only thing it does is it should make people go back and look at what is the actual wording of statutes that have been taken to be profanity bans in the public square. So I think this is a reminder to people, hey, that municipal ordinance that's been used for 100 years to stop people from swearing in the park, what is the actual language that was used there because especially the older a statute is, probably the less careful, the broader the words might be in there.


      So if there's a municipal ordinance that says someone shall not use immoral language in the park, even if that's only been enforced against people using profanity in the park, what this case tells us is that the plain text can't be interpreted to only cover profanity. And a facial challenge to an ordinance like that, I think, would have to succeed as well under this precedent.


Cliff Hutchinson:  Thank you. I suppose this would leave out statements in the public square by soccer players.


Thomas Berry:  Quite a lot of them, yeah.


Cliff Hutchinson:  [Laughter]


Wesley Hodges:  Well, very good. Thank you so much, caller, for your question. Looks like we do have one more question from the audience. Caller, you are up.


Mitchell Keiter:  Hi. Thank you for taking a second question from me. I'm just curious -- I know that Justice Sotomayor referenced Cohen v. California which, of course, held the First Amendment protected a profane message about the draft which, of course, did have political expression contained within it. But how do the concurring opinions or those that would permit the office to proscribe profanity, I mean, how does that square with Cohen? Would Cohen have come out differently if -- I mean, was it directed against the message, or could there have been some kind of viewpoint-neutral prohibition of the F-word in public, regardless of whether was opposed to or in favor of the draft?


Thomas Berry:  Yeah, that's a great question. And I think what Cohen stands for is, again, still something that has not fully been resolved and that you're going to get different answers from different people on. There is language in Cohen in the opinion that I think was very useful to and was used effectively by Brunetti's lawyers where -- I'm not going to get the exact quote right, but something like, "One man's vulgarity is another man's lyric," with the point being that even profane words, vulgar words that some people find offensive, other people will use to great effect.


      So the two things that people use to narrow Cohen -- one is that it obviously -- so the jacket said, "F-U-C-K the draft." Now, obviously, that's expressing a viewpoint against the draft, and that in itself was likely enough to invalidate that particular usage of the ban on disorderly conduct in a courtroom.


      And then the second thing that people will use to narrow it is that it was a criminal statute. So Cohen faced criminal penalties for wearing that jacket, and that's how Justice Sotomayor distinguishes it. She says, "Well, this is just a loss of fairly minor government benefit. This isn't like being fined or threatened with jail time." I don't think that's a very convincing distinction just because there's a long line of First Amendment precedents that essentially say once you've triggered the threshold of this is an abridgement of free speech, you don't go further to say, like, is it de minimis or not? There's no such thing as a de minimis restriction abridgement of freedom of speech.


      And I think, again, it was unfortunate that a lot of the concurring opinions, especially Justice Roberts, which surprised me, said, "Well, this is just the loss of a government benefit. It's not like he's being really punished or would be punished for using profanity." And that, to me, really flies in the face of the Alito opinion, which Roberts joined two years ago in Matal v. Tam, that rejected all the arguments, all the distinguishing arguments for why trademark law is different.


      I think the easiest for people to understand is if you simply think about copyright. Could the government deny a copyright to a book it didn't like or a book that contained a lot of profanity on the theory that the government has an interest in discouraging the use of profanity in the public square, and the loss of a copyright isn't that bad because you can still sell the book? I certainly don't think so. There is, in fact, a famous Supreme Court case that struck down New York's ban on collecting royalties for books describing crimes that you've committed. I mean, that's a fairly extreme case, but even there, the Supreme Court said, "Look, a ban on collecting royalties for a book you wrote is essentially a ban on any economic incentive to write a book on that topic, and that just goes too far."


      And so I think there are some differences between trademarks and copyrights, but it's not that clear that you could draw an objective line between the two. And so I don't want the Court to start going down that path of saying that a loss of a trademark is simply just a loss of a government benefit.


      But as for whether Cohen and -- that profanity -- clearly, there's not yet a majority on the Court to say that profanity has a role to play in expression. Maybe there was when Cohen was decided, but until we get a case about a statute more narrowly targeted at just profanity, we won't know exactly what the standing is of Cohen.


Wesley Hodges:  Thank you, caller. Appreciate you giving another question. Seeing that there's no more questions from the audience, Thomas, do you have any closing thoughts or additional thoughts for us before we end today?


Thomas Berry:  Well, first of all, let's just thank you for having me. I'm really glad to talk about this case. I had a lot of fun, as I said, both writing amicus briefs in Matal and in this case. And I think it's a lesson for lawyers that just because a statue is old and perhaps venerated, don't assume that it's on the up and up and fully constitutional. It's a fascinating story that the statute just kind of hung around for 110 years, and then people noticed, "Oh, wait, a significant portion of it violates the First Amendment." And so don't assume that there aren't other statutes like that just hanging out there.


      So I should give a shout out again to Pacific Legal's brief which emphasized that the Court is really due to, once again, look at the commercial speech doctrine in the Court. I think that's something that if people want to keep an eye out for the next big blockbuster First Amendment case, that's where I'd put my money is one that tees up explicitly whether the so-called Central Hudson test should be overruled. A lot of the Court's more recent opinions have essentially said that the logic of them -- there's a case called Reed about sign codes, essentially says that any content-based distinction should trigger strict scrutiny under the First Amendment.


      And if you look at the reasoning of that, there's really no rational reason why that shouldn't apply to commercial speech as well, especially when commercial speech can so often be inextricably bound up with political viewpoints. And so even though it wasn't necessary to decide this case, I think perhaps another case about trademarks or some similar business speech is going to come up in the next decade, and we're going to get a case where the question presented is whether Central Hudson should be overruled.


Wesley Hodges:  Well, very good. Thomas, thank you so much for those thoughts and those predictions. It really has been our privilege to have you here today. And again, everyone, this is Thomas Berry of the Pacific Legal Foundation. On behalf of The Federalist Society, I would like to thank you for the benefit of your very valuable time and expertise today. We welcome all listener feedback by email at [email protected]. Thank you all for joining us for this call. We're now adjourned.


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