Should Erik Brunetti be allowed to register FUCT for clothing?

If you seem to remember that question already being answered, you’re right, but it’s still going to be argued at the United States Supreme Court [SCOTUS] this morning. Here’s the really short version of the history of this issue.

I predicted that Mr. Brunetti’s application would move forward as a result of the Court of Appeals ruling.

I did not foresee that the Trademark Office would appeal the Court of Appeals ruling to SCOTUS. Why in the world would you appeal a ruling made on the basis of a just-made precedential finding?

Because there are new justices on the Supreme Court.

I guess we’ll see if the changes to the justices will result in a change to the ruling.




Mr. Tam Goes to Washington

Yesterday I was privileged and awed to attend oral argument in Simon Tam’s quest to register the trademark for his band, The Slants. Listening to great minds debate the First Amendment is powerful and inspiring in the way that few things are.

I arrived at 6:00 a.m. and was #2 in the line for attorneys admitted to the U.S. Supreme Court bar. Within minutes we were joined by three more attorneys who, unsurprisingly, were the attorneys for the Redskins.

Oral argument was spirited, probing, and intense. Justice Kagan asked Assistant Solicitor General Malcolm L. Stewart to explain why the statute prohibiting The Slants from getting a registration is not just flat out impermissible viewpoint discrimination. Justice Breyer pressed Mr. Stewart relentlessly to explain how the purpose of the trademark law is advanced by prohibiting registration of disparaging trademarks. Justice Ginsburg was troubled that the Trademark Office appeared to be so arbitrary, letting some disparaging trademarks to be registered, while denying others.

When Mr. Tam’s attorney took his turn, the Justices probed the upper limits of what should be granted a registration.

We can’t know how the Court will rule based the questions that were asked and how the argument went, but we can take heart that our rights and freedoms are a matter of utmost importance to the Court. If I were on the bench, I would strike down the “disparaging” clause as unconstitutional.

How would you rule?

Just Kidding

Q: Can I use a trademark for parody?[1]

A: Yes, if the interests of free speech outweigh the rights of the trademark owner.[2]

WTF: What’s that mean?

OK: Maybe some examples will help.

HMMM: So, it’s OK as long as it’s hilariously funny.

NOPE: “First Amendment protections do not apply only to those . . . whose jokes are funny and whose parodies succeed.”[4]

SO: Really bad parody can be OK?

MAYBE: But if the parody totally fails then you’re probably infringing because when people don’t get the joke, they’re more likely to be confused about the source of the goods or service.[5]

UH OH: Maybe I just shouldn’t do it.

NO NO: Parody is really important and the courts go out of their way to protect the 1st Amendment from overzealous trademark owners.

BUT: If I do it, I’ll probably get sued.

OH YEAH: And only famous trademarks are worthy of parody, so the company suing you will have lots of money. But, Topps® made Whacky Packaging for years.

HA!: Yeah, until they got sued by Coleco over the Garbage Pail Kids series.

WELL: That did happen. What can I say? Comedy is a risky business.


[1] We’ll be talking about parody, but the rule is the same for any type of comedy, criticism, news reporting, or commentary. It’s just that parody really pisses off trademark owners and those are the ones that get litigated. “The message of these cases is not merely that parody is accorded First Amendment deference, but rather that the use of a trademark in the communication of an expressive message is accorded such deference.” Yankee Pub. Inc. v. News America Pub. Inc., 809 F. Supp. 267 at 279 (S.D.N.Y. 1992).

[2] Yankee Pub. Inc. v. News America Pub. Inc., 809 F.Supp. 267, 276 (S.D.N.Y. 1992)

[3]  The image of the poster is about half way down the page.

[4] Yankee Pub. Inc. v. News America Pub. Inc., 809 F. Supp. 267 at 280 (S.D.N.Y. 1992).

[5] “A parody must convey two simultaneous – and contradictory – messages: that it is the original, but also that it is not the original and is instead a parody. To the extent that it does only the former but not the latter, it is not only a poor parody but also vulnerable under trademark law, since the customer will be confused.”Cliff Notes, Inc. v. Bantam Doubleday Dell Publishing, 886 F.2d 490, 494 (2nd Cir. 1989)