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. The government argues that it isn’t stopping Fuct from using its name, only declining to register it as a trademark. Under the First Amendment, should federal officials be making calls about what’s “scandalous” or “disparaging.” Ilya Shapiro, lead counsel of an amicus brief for the Cato Institute, P.J. O’Rourke, and other individuals and groups, is attending the April 15 argument and will share his thoughts afterwards.
Mr. Ilya Shapiro, Director, Robert A. Levy Center for Constitutional Studies, Cato Institute
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Operator: Welcome to The Federalist Society's Practice Group Podcast. The following podcast, hosted by The Federalist Society's Free Speech & Election Law Practice Group, as well as the Intellectual Property Practice Group, was recorded on Monday, April 15, 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 Oral Argument discussion on Iancu v. Brunetti. My name is Wesley Hodges, and I’m 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. Ilya Shapiro, who is Director of the Robert A. Levy Center for Constitutional Studies at the Cato Institute. After our speaker gives his remarks today, we will move to an audience Q&A, so please keep in mind what questions you have for our speaker or for the case. Thank you very much for sharing with us today, Ilya. The floor is yours.
Ilya Shapiro: Great. Well, thanks very much. It was an interesting argument that didn’t go quite the way I think a lot of people expected, not in terms of who’s going to win but in what the focus would be going into the argument. And I should say that I filed a brief on behalf of not just Cato but also P.J. O’Rourke, Nadine Strossen, the D.K.T Liberty Project and other scandalous individuals and organizations. This was one of Cato’s periodic funny briefs. Although, I guess this one is more of a vulgar one. But anyway, our expectation and the conventional wisdom is that it will all be about can we distinguish this case from Tam because is it scandal -- if the government isn’t capable or shouldn’t be the one determining what offensive or disparaging is -- that is, from that case two years ago, where they struct down restrictions on trademarks that were offensive or disparaging to certain people or groups -- then what is scandalous or amoral?
That seems like more very broad things that the analysis works the same way. But that did not turn out to be the focus so much. It was more about, well, Tam was about viewpoint, even if racist viewpoint or what have you. And here is about content and specifically modes of expression. In the trademark realm, the government is allowed to look at content of various kinds: flags or names of people or, indeed, whether there’s a likelihood of confusion. That’s a judgement call involving the content of the applied for mark. So similarly here, the case was broader. It involves an attempt to register the F-U-C-T, pronounced fucked, just like you might have just thought I was pronouncing the swear word. Not so. I was pronouncing this brand that was trying to be registered.
As I said, it was a different sort of focus. The actual profanity or vulgarity was not used. None of George Carlin’s seven dirty words were used; although, the late comedian’s formulation was invoked several times. The lawyer for the government, Malcolm Stewart, who by the way was the same lawyer who argued the first argument in Citizens United—and I’ll tell you why that is relevant in a moment—described the scandal ad hominin here as the, quote, “past-participle of paradigmatic profanity.” I don’t know whether he meant to alliterate. It was kind of a catchy way of speaking around the word.
At the very end, Chief Justice Roberts asked whether the word -- and he spelled out F-U-C-K -- could be registered as a trademark. So that’s the closest that anyone came to actually using the seventh dirty word, if you will.
So to go back to the beginning, the government’s argument, Malcom Stewart, the Deputy SG, began talking about how this is not a restriction on speech. The brand can continue using it’s Fuct, F-U-C-T, logo trademark. It just can’t register it because this is a regulation of a federal program. You’re registering to participate in a federal program. The government doesn’t want to include these sorts of things associated with certain kinds of words.
“Well,” Justice Sotomayor asked, “how do you define scandalous?” And the response is, well, something that’s offensive or shocking because of the mode of expression. And then Justice Sotomayor says, “Well, that seems to run headlong into Tam, that is this is a subjective test in what’s offensive or shocking to some people.” And Justice Ginsberg jumped on and said, “How is that determined?” “Well,” Stewart said, “it’s perceived by significant part of the population.” “Well,” Sotomayor said, “then, again, this is subjective. Why not just say something that’s obscene or profane or vulgar?” And Kagan asked, “What are we supposed to be doing here? Are you asking us to rewrite the statute to make it narrower? Are you asking us to follow some federal circuit precedent that’s already narrowed the application? Or are you simply asking us to trust you in your promises that you’re not going to apply it broadly to what Tam said you can’t?”
And that’s where that got me thinking to Citizens United because, at a prophetic circumstance in that argument, the first time it was argued the government kept saying, “Well, we would never prosecute a book publisher just for putting ‘Vote Hilary Clinton’ or ‘Vote Against Hilary Clinton’ at the very end of their 300-page book.” And John Roberts jumped in, “Really? We’re supposed to just trust you for that? We’re supposed to trust our First Amendment rights to the noblesse oblige of prosecutors and bureaucrats?” So same lawyer, kind of a curious thing. And then, of course, Justice Kagan, when she was Solicitor General, argued the reargument in Citizens United. But anyway, here, Malcolm Stewart replied that the government is asking the Court to apply constitutional avoidance – that is to interpret the statute in a way that the Court would not have to strike down this particular provision.
So he kept going back to obscenity and vulgarity, these sorts of things, which, at least on the obscenity side, Mr. Sommer, Brunetti’s lawyer, ended up saying that you don’t need -- the government doesn’t need this provision to not register an obscenity because obscenity can already be illegal. And there’s another provision in the Lanham Act that says that you can’t do things that are -- you can’t have marks that are illegal for some way.
John Roberts, the Chief Justice, then introduces an interesting discussion about whether after all, since this is a facial challenge, he asks the government’s lawyer “Why did you spend seemingly most of your time in the brief arguing from general propositions rather than simply saying, look, with a facial challenge, the side bringing the challenge has to say that there are, essentially, no circumstances where it’s lawful or constitutional for this law to be applied? And here, there seems to be agreement that obscenities can be restricted, certain other things. Maybe this brand wins, but we don’t have to strike down the statute.”
He didn’t say that explicitly, but you could see that that is potentially one way the Court resolves this case. Curiously, when Chief Justice Roberts asks, “If you lose this case, could you still deny obscene marks?” and the government’s lawyer said, “No.” Although, there’s disagreement on that from Mr. Brunetti’s lawyer. Justice Alito, when he jumped in, asked about what the standard should be or what’s Congress’ interest in regulating this area or making these kinds of restrictions? The answer there is to protect unwilling viewers from seeing things that might, again, shock or scandalize them in some way. But Alito says “Words can be used. This is just about registration, right? You’ve argued that registration is a federal program and that you’re not being a sensor. Well, if words can be used, then these people are going to be using them. And viewers are, unwittingly, going to be seeing these things.”
But the Deputy SG replied, “The government still can attempt to disincentivize. We’re talking about commercial relations here. Trademark registration does facilitate the getting out of your commercial message. So if registration is denied, sure, these people can still use their brand, but it won’t be as widespread. And that goes towards the government interest.” Justice Kavanaugh got in to ask about how the Court’s supposed to deal with the seemingly erratic and unprincipled enforcement of this provision – that is, just as with Tam with the disparaging trademark provision, there’s a whole list of trademarks or trademark applications some of which have been accepted, some of which were rejected that Brunetti’s counsel put into his brief. And yet, there’s no rhyme or reason. So either this is overbroad or -- anyway. Explain yourself.
The Deputy SG says, “Well, all of this has been limited by Tam, and the government does get more leeway when it’s not prohibiting speech, when it’s not acting as a censure. It’s just saying, again, this federal program.” So then Justice Kagan goes back to her points here. “Asking us to narrow this statute based on your commitment to follow our previous ruling.” Again, the Court -- “You’re asking us to rewrite the statute, here.” She clearly was troubled throughout the whole argument about having to explain what the government’s position actually should be in recodifiying the standard. Justice Gorsuch speaks for the first time at this point, picking up on the point about many similar marks being granted or rejected. Couldn’t see a rational line through a chart that was provided in Brunetti’s brief.
Justice Breyer I haven’t mentioned yet. He raised an interesting line of questions about the dirty words. This is when George Carlin starts figuring in. He starts talking about racial slurs, and what about certain kinds of words that evoke a physiological effect – that is you can measure, I guess, people’s heartrates or their skin conductivity or these very scientific measures -- that they’re simply effected in a certain way by certain slurs and, perhaps, even the most prominent, most negative, most historically charged racial slur—he doesn’t name it. Nobody does—that could be even worse than any of George Carlin’s seven dirty words. So what goes on there?
Later on, we learn, by the way, that in the rebuttal, in fact, of the Deputy SG, he notes that the Patent and Trademark Office, with respect to that particular heavy racial slur -- that the PTO’s actions are being held in abeyance, pending the result of this case because that particular word is being thought of as potentially both scandalous, and not just offensive. Although, for other things -- other kinds of racial slurs, Stewart said -- the Deputy SG said that the PTO is indeed registering them after Tam. Then, Chief Justice Roberts says, “Well, what about the argument that being edgy or nonconformist is itself a message or a view point that we shouldn’t be getting in the middle of?” It’s where, for the first time, a hypothetical that I think really is useful for understanding this case came up when Malcolm Stewart used the example of bus advertising – that is, in effect, striking down this statute would put into jeopardy time, place, and manner restrictions.
I was sort of puzzled by that, just my editorial comment that I think the bus example is all you need here in the sense that it’s a different question about whether the PTO should have to register trademarks that come short of obscenity. And obscenity, as comes out later in the argument, is generally pictures or sentences, right? Kind of erotic literature or what have you could rise to the obscene, rather than single words. Right? That’s vulgarity. Whatever it is. It’s not obscenity, generally speaking. But whether a trademark is registered or unregistered, it can still be properly subject to time, place, and manner restrictions, limited public forum analysis, like the side of the bus or a municipal park bench or any of these other things. Or even a perfectly clean, non-vulgar trademark can’t be shouted in the middle of residential street in the middle of the night, right? So similarly here.
The question is different about whether you can expose sensitive populations to certain messages, how to regulate those things versus whether the PTO should have to register them or not. We’ll see if that hypothetical or something similar is ultimately what turns the Court or any of it’s votes. So appropriately, after that discussion of that bus advertising, the government ends it’s argument with Justice Sotomayor talking about isn’t this akin to a limited public forum or Tam says that this is different than a normal government program because you’re paying the government. And the government doesn’t explicitly -- doesn’t necessarily approve of both Coke or Pepsi or either.
And the Deputy SG resists that. He says that this isn’t really a limited public forum. It’s really more about protections against would-be infringers rather than messages to consumers. And indeed, the PTO spends resources on promoting and publishing all of these trademarks.
So then Mr. Brunetti’s lawyer comes in and leads with the two overall points that are the theme of his presentation. First, he points out that the government is not defending either the plain language of the statute prohibiting scandalous or immoral trademarks or how it’s been applied. So in effect, the government is just saying, “Well, we understand. Nudge, nudge, wink, wink. We’re really going to limit this to obscenity or vulgarity or really, really bad stuff, not anything that has a viewpoint. You can trust us.” Again, that harkens again to that exchange with Chief Justice Roberts from Citizens United.
And secondly, a substantial number of people in America think that anything ranging from meat to abortion to guns to immigration are immoral. So if the test is -- the subjective standard is something that significant populations -- there’s a substantial portion of the potential audience is scandalized, well, there’s a lot of stuff that, forgetting viewpoint, would come into contact with this law. Again, Breyer then raises his “Why don’t we turn this into a physiological effect test?” That is most people can tell -- you don’t necessarily need to hook somebody up and see when their blood rate elevates or what have you. But, quote, “Most people know what words we’re talking about,” as if that helps kind of putting in some sort of standard. But anyway, Justice Kagan then asks, “Well, what if the statute was more precise? What if it just said modes of speech?”
And it’s at that point that Brunetti’s counsel says, “Well, prohibiting obscenity is okay because, after all, obscenity is illegal, same with fighting words, same with child pornography.” All of these exceptions to the First Amendment, nobody is arguing that those things should be registered. He’s just saying that the courts should not create a further exception for the trademark context. Justice Alito asks, then, whether this really is the same as Cohen v. California, when the jacket worn into the courthouse with the evocative message “Fuck the draft”? Nobody is being punished here. Right? Again, the government is not saying the brand F-U-C-T can’t go into the courtroom or anywhere for that matter with its brand.
The response to that from Brunetti’s counsel is that there are some registered trademarks already that have some of the seven dirty words. “F Cancer, for example,” he said, “or F Racism.” This goes further to the point -- Alito said that this has been applied inconsistently, but what about the statute itself? I think that ultimately, this facial versus as applied is really going to be an issue here. So again, will the Justices narrow the statute to say -- to avoid constitutionally striking this down, we’re going to interpret to mean obscene, vulgar, non-viewpoint based, just a mode of expression rather than conveying any sort of message. The Chief Justice pushes back on Brunetti’s lawyer, and says, “Well, you say that this isn’t going to be on the main street or in Wal-Mart, but what about people wearing your client’s T-shirts at the mall? This, after all, the trademark registration facilitates commercial speech, so it’d be a non-marginal increase in exposure to these things if we allow this registration.”
And then Breyer continues -- seems to be walking away from his own vote in Tam by saying that, in Tam, the word was used ironically. As you might recall, the Asian-American rock band was taking back the slur “The Slants” by naming themselves after that. And again, the response to that is that racial slurs have been, in fact, registered since Tam. And Breyer says, “Well, yeah. But those kinds of slurs don’t really raise the same physiological effect that some of the things that we’re talking about here are.” Justice Kavanagh goes back to the bus advertising, with respect specifically to words and letters, not obscene pictures. Can any combination of words and letter be barred?
At that point, Mr. Sommer, Brunetti’s counsel, says, “Well, maybe a sentence or two. One word cannot really be obscene.” If you had a paragraph from the most lascivious literature or something, that could be judged obscene somewhere. That would be a different thing, but that’s not really what we’re talking about here. Justice Gorsuch brought it back to the facial versus as applied. “And what do we do,” Justice Gorsuch asked, “with the fact that this is a facial challenge?” And the response is, well, simply that this restricts a substantial amount of speech. It’s clearly overbroad, and in past overbroad cases, the Court has told Congress to go back to the drawing board.
It’s at that point that the Chief Justice asks, “Well, can you trademark F-U-C-K?” And there’s kind of a complicated discussion there about, well, yes, if you use it commercially as your brand on the neck -- which I guess is any IP lawyers on the line could explain to me the significance of being on the neck as part of your brand, rather than something else, I guess, to convey a message. Mr. Sommer also reminded the Court that the government doesn’t dispute that, here, a viewpoint is indeed involved, one of rebellion or being edgy. As I mentioned, in rebuttal, then, Malcolm Stewart says that the PTO is waiting for the result of this case to see whether the N word might be scandalous and reminded the Court that content-based distinctions are often used in adjudicating trademarks, whether something is merely descriptive or generic or what the likelihood of confusion is.
And in short, he says at the very end, “This isn’t about denying profanity a trademark because of the message that it sends but because it’s profanity.” So you see how this all breaks down, how all the Justices grapple with the idea of what is a message versus mere expression, utterance, profanity, vulgarity, what have you, and how do they handle the facial versus as applied or kind of a very broad statute that, at least lately, seems to be applied more narrowly, although still inconsistently. So I don’t think it’s going to be a full win for either side here. I don’t think it’s going to simply be a clean reversal of the federal circuit saying, yeah, you can go back to what you’ve always been doing, and this is fully on the books. No interpretation.
Nor can I see happen what did in Tam -- that is a wholesale striking down altogether. Curious in that way because, as I said, the expectation going in was that this would all be about can you distinguish -- how is this case different than Tam? And here you saw Breyer at least walking away from Tam in the first place and others being skeptical that there was a viewpoint discrimination or a message being conveyed here. So I think I’ll stop there. I’m happy to take or dodge any questions that might come on the line.
Wesley Hodges: Very good. Well, thank you so much for the take on that, Ilya. Ilya, it does look like we do have two questions out of the gate, and I guess we’ll go to our first caller.
Caller 1: Good afternoon and thank you, Ilya, for a great presentation. I want to explore a little bit about the time, place, and manner restrictions and the outcome of this case. It seems to me that, if you did in fact have a trademark, either for “The Slants” or for the one that was at issue in this case, that that lends a sort of imprimatur of the Patent and Trademark Office so that you might be -- have a leg up on any later time, place, and manner restriction that you wanted to put that logo on a city bus. I’m reminded, like all trial lawyers, of the great case of the Miracle on 34th Street where Kris Kringle’s identity was established because, of course, the post office delivered him mail in open court. Again, I’m making an analogy to the imprimatur of the Patent and Trademark Office. Don’t you have a better than fighting chance, or at least better equities, if, wow, the Trademark Office recognizes it? How could it be inappropriate speech for the 16 bus?
Ilya Shapiro: That’s possible, but it really depends how the Supreme Court would write that opinion because it could put in, and very well would if that was the result, just a complete striking down of the restriction. It would say this does not mean in any way and should not be taken for any legal purpose that the government endorses or puts an imprimatur on this -- something in those words or not in so many words. I imagine there would be something like that because there are all sorts of restrictions on speech that are time, place, and manner that we don’t allow just vel non. That’s just my opinion. Who knows how they would actually do it? But that’s my opinion. That’s how I would do it.
Wesley Hodges: Well, very good. We do have another question in the audience. Here’s our second caller.
Caller 2: A couple of things made me wonder. And I wonder why has everybody apparently conceded, according to your, I guess, telling, that this is not a viewpoint, or at least viewpoint-like, discrimination? As this case was coming up, so the one trademark I was constantly thinking about that is registered and that is sort of popular is the F-C-U-K, which apparently stands for French Connection United Kingdom, but was obviously picked for a specific reason, not because it stands for French Connection United Kingdom but because it looks like something entirely different. So I just wonder what people sort of discussed why that one is in while -- what is it? -- F-U-C-T is out, and how can the government sort of choose one versus the other? Because it’s not clear to me that this is just content. It seems like it’s either viewpoint or at least complete randomization of what’s in and what’s out.
Ilya Shapiro: I don’t know if everyone’s conceding that it’s not -- well, in fact, Brunetti’s lawyer is not saying that it’s pure content but there’s no viewpoint. He’s saying that this is a message of edginess and rebellion in how it’s used. The context is important. It’s not just a matter of abstractly considering whether there’s a message from a particular word. And indeed, if it’s just a particular word and it’s just generic and descriptive, that can’t be trademarked for that reason. So I do think the Justices weren’t necessarily—or certainly not a majority of them—were buying that F-U-C-T or F-C-U-K can be -- prohibiting it could be viewpoint discrimination. And F-C-U-K did come up at a certain point. Yeah. Because it’s really no different than F-U-C-T.
Wesley Hodges: Well, thank you very much. We do have another caller in the audience with a question. Here’s our third caller of the day.
Cameron Atkinson: Hi, Ilya. Cameron Atkinson. I have a quick question on judicial philosophy. What do you think the indication is for Justice Kavanagh and Justice Gorsuch to employ the constitutional avoidance canon here?
Ilya Shapiro: Well, we’ll have to see which opinion they join or write. Justices try out different things in oral argument. I certainly hesitate to predict results based on oral argument, let alone broader conclusions about judicial philosophy from individual Justices based on their questions. We’ll see whether the fact that trademarks, after all, are positive rights. And at one point, I think Justice Alito mentioned that in a case last -- no, Justice Gorsuch, I think, mentioned that in a case last term, the Court ruled that patents were public benefits rather than private rights. And so trademarks, I guess, the Court would see as the same thing, as a positive benefit, even if not necessarily agreeing with the government’s formulation of this being a federal program.
Their attitude towards public benefits are understandably different than natural rights or unenumerated rights or what have you. But I don’t think this is the case where you’re really going to be able to tease out doctrinal differences over broad, philosophical things as between Gorsuch and Thomas and Roberts and Kavanaugh, or what have you. Maybe. But it’s kind of a weird case, the interplay of intellectual property statute and First Amendment.
Wesley Hodges: Thank you for your question, caller. I’m seeing no questions from the audience, and you still have a little bit of time if you’d like to ask one. Ilya, is there anything that you’d like to go into more detail or talk about from the case?
Ilya Shapiro: I don’t think so. I gave a pretty complete play by play, I thought. Getting some feedback on Twitter and in email that maybe Roberts did not spell out F-U-C-K. Maybe I misheard or mentally interpolated his asking a previous time about the homonym on which F-U-C-T is based, so maybe I was wrong there. But that, yes, goes to mental impressions and messages you convey in that way. But anyway, I guess I will underline one more time the way that the government’s lawyer, Malcolm Stewart, talked about the “past-participle of paradigmatic profanity.” I think that’s a statement that deserves to be remember and evoked in all sorts of unrelated cases, kind of like nattering nabobs of negativity. These kinds of weird alliterative legal phrases, I appreciate that sort of thing.
Wesley Hodges: Well, very good. Well, seeing no more audience questions. Ilya, we do want to thank you for joining us today. On behalf of The Federalist Society, I’d like to thank you for the benefit of your very valuable time and expertise. We welcome all listener feedback by email at firstname.lastname@example.org. Thank you all for joining. This call is now adjourned.
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