SCOTUS and FUCT

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.

 

 

 

FUCT, Reprise

This is a special edition of the Bee Blog to convey some breaking news.

There’s a statute that says which trademarks can’t be registered. Here’s what part of it says:

“No trademark . . .  shall be refused registration . . . unless it— . . . [c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage . . .  persons . . .”

Back in 2017, the United States Supreme Court ruled that it was unconstitutional to refuse to register a trademark because it’s disparaging. Because of that ruling Simon Tam was allowed to register THE SLANTS for an Asian rock band.46051501_01

The U.S. Court of Appeals for the Federal Circuit recently used the Tam decision to support it’s ruling that it’s also unconstitutional to refuse to register a trademark because it’s immoral or scandalous. That a victory for Erik Brunetti and his trademark FUCT.

That means lots and lots of applications to register will be moving forward. The Queen Bee will definitely be following their progress.

 

 

FUCT is Not

Last week you could not register the trademark FUCK. Today you can.  If that’s all you wanted to know, you can stop reading, but you’ll miss a pretty cool story.

Here’s how it went down.

There’s a statute that prohibits registration of a trademark that “Consists of . . . scandalous matter; or matter which may disparage” a group of people.*

Earlier this year, the U.S. Supreme Court heard a case brought by Simon Tam. Mr. Tam is the front man for an Asian-American rock band called The Slants. The Trademark Office refused to register THE SLANTS because it was disparaging to Asians. The Supreme Court ruled that it’s an impermissible restriction on speech for the government to refuse registration on that basis. Mr. Tam and The Slants were able to register and rock on.

Waiting in the wings was Mr. Erik Brunetti. Mr. Brunetti had been trying to register his clothing brand FUCT. He was refused registration because FUCT is a naughty word and therefore “scandalous.”

The Supreme Court’s ruling focused only on the “disparagement” part of the statute, so we have all been waiting to hear what the Court of Appeals for the Federal Circuit (CAFC) would say about FUCT which implicates the “scandalous” part of the statute.

On Friday, we found out. Along with Mr. Brunetti’s application, the following applications will now move forward:

  • NAMASTE AS FUCK
  • HIPSTER FUCK COFFEE
  • POLITE AS FUCK
  • FUCK RACISM
  • FUCK FEAR
  • FU CANCER

It also means that Work Release Records, Inc.’s application to register CERTIFIED STREET NIGGAZ, which the Trademark Office said was both disparaging and scandalous, will move ahead.

That’s all you need to know, but here is the most hilarious bit from the decision: The government argued at one point that the statute is constitutional because the government has an interest in “whether or not its examiners are forced to decide whether one drawing of genitalia is confusingly similar to another drawing of genitalia.” [Opinion at page 30]

 

And here is the majority’s inspiring conclusion:

“The trademark at issue is vulgar. And the government included an appendix in its briefing to the court which contains numerous highly offensive, even shocking, images and words for which individuals have sought trademark registration. Many of the marks rejected under § 2(a)’s bar on immoral or scandalous marks, including the marks discussed in this opinion, are lewd, crass, or even disturbing. We find the use of such marks in commerce discomforting, and are not eager to see a proliferation of such marks in the marketplace. There are, however, a cadre of similarly offensive images and words that have secured copyright registration by the government. There are countless songs with vulgar lyrics, blasphemous images, scandalous books and paintings, all of which are protected under federal law. No doubt many works registered with the Copyright Office offend a substantial composite of the general public. There are words and images that we do not wish to be confronted with, not as art, nor in the marketplace. The First Amendment, however, protects private expression, even private expression which is offensive to a substantial composite of the general public. The government has offered no substantial government interest for policing offensive speech in the context of a registration program such as the one at issue in this case. We hold that the bar in § 2(a) against immoral or scandalous marks is unconstitutional because it violates the First Amendment. We reverse the Board’s holding that Mr. Brunetti’s mark is unregistrable under § 2(a).” [Opinion at pages 41-42]

Yay trademarks! Yay freedom!

 

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*USC Section 1052(a)

**Matal v. Tam, 137 S. Ct. 1744 (2017).

Disparaging and Vulgar?

On January 5, 2017, Work Release Records, Inc. (WRR) filed an application to register CERTIFIED STREET NIGGAZ for baseball caps and T-shirts.

On January 18, the United States Supreme Court heard oral argument in Matal v. Tam, a case that would decide whether it’s unconstitutional to prohibit registration of trademarks that include a disparaging word.

Meanwhile, back at the Trademark Office, on June 8, the examiner assigned to WRR’s application suspended the application because “a substantial composite of black people would find the use of the term NIGGA . . . to be disparaging . . ..”

On June 19, the Supreme Court ruled that it’s unconstitutional to refuse to register a trademark because it includes a disparaging term.

So, WRR’s application can move forward, right?

Not so fast.

On September 13, the examiner issued another suspension because NIGGAZ isn’t just disparaging, apparently, it’s also vulgar: “In fact, the term NIGGA is akin to profanity because newspapers will not print the term and people cannot say it on TV, like other vulgar terms.”

Aaarrrggghhhhhh!!!!!!!

So, is WRR fucked out of luck? Not yet.

Way back in November 2015, a federal appeals court heard oral argument on whether it’s unconstitutional to prohibit registration of trademarks that include a vulgar word. The appeals court had been waiting for the ruling in Tam before making its decision.

WRR is now waiting for yet another court to decide the fate of its application. I’m eagerly waiting with them with fingers crossed. I’ll let you know as soon as I do.

 

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“Happy Talk” Law is Dead!

Today Simon Tam of The Slants won a tremendous victory for free speech.

If you’re feeling despondent about the state of the world, if you’re in need of a booster shot for enlightenment thinking, if you long to have the government bitch-slapped for stepping on civil rights, if you want to laugh out loud, read on.

The U.S. Supreme Court vehemently rejected all of the government’s arguments for preserving the “disparagement clause” that allows the Trademark Office to refuse to register trademarks that may disparage or bring into contempt or disrepute any persons, living or dead.[1]

Although the justices[2] supported different reasons for their judgment, all of them agreed that the provision is total BS, constitutionality-wise.

Government Speech Schmovernment Speech

The court started by rejecting the government’s argument that trademark registration is “government speech,” a category of speech not subject to First Amendment protection.[3] Here’s the court explaining why government speech is not protected:

“During the Second World War, the Federal Government produced and distributed millions of posters to promote the war effort. There were posters urging enlistment, the purchase of war bonds, and the conservation of scarce resources. These posters expressed a viewpoint, but the First Amendment did not demand that the Government balance the message of these posters by producing and distributing posters encouraging Americans to refrain from engaging in these activities.”[4]

The Court then hits the government upside the head with a baseball bat for its attempt to expand what’s included in “government speech.”

“But while the government-speech doctrine is important—indeed, essential—it is a doctrine that is susceptible to dangerous misuse. If private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints. For this reason, we must exercise great caution before extending our government-speech precedents.”[5]

Then, just in case the government didn’t feel the baseball-bat love tap, the Court took out the big ammo and blasted away.

“If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently. It is saying many unseemly things. It is expressing contradictory views. It is unashamedly endorsing a vast array of commercial products and services. And it is providing Delphic advice to the consuming public.

“For example, if trademarks represent government speech, what does the Government have in mind when it advises Americans to ‘make.believe’ (Sony), ‘Think different’ (Apple), ‘Just do it’ (Nike), or ‘Have it your way’ (Burger King)? Was the Government warning about a coming disaster when it registered the mark ‘EndTime Ministries’?”[6]

Not Even if It’s Commercial Speech

 The Court next considered whether trademark registration is merely “commercial speech,” which is subject to a lesser level of First Amendment protection than non-commercial speech. The Court chose “not to resolve” the debate about whether or not it’s commercial speech “because the disparagement clause cannot withstand even the lower level of review for commercial speech.”[7]

“A simple answer to this argument is that the disparagement clause is not ‘narrowly drawn’ to drive out trademarks that support invidious discrimination. The clause reaches any trademark that disparages any person, group, or institution. It applies to trademarks like the following: ‘Down with racists,’ ‘Down with sexists,’ ‘Down with homophobes.’ It is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.”[8]

In his opinion, Justice Kennedy sums it all up beautifully:

“A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all. The First Amendment does not entrust that power to the government’s benevolence. Instead, our reliance must be on the substantial safeguards of free and open discussion in a democratic society. ”[9]

Rock on, SLANTS. Rock on SCOTUS. Rock on RIGHTS.

 

 

[1] 15 U. S. C. §1052(a)

[2] C.J. Roberts, J. Alito, J. Thomas, J. Breyer, J. Kennedy, J Ginsburg, J. Sotomayor, and J. Kagan. J. Gorsuch took no part in the consideration or decision of the case.

[3] The Court also rejected various related arguments about lesser levels of government involvement in speech. Read the full opinion for details.

[4] Slip Opinion at p 13.

[5] Slip Opinion at p 13-14. Emphasis added.

[6] Slip Opinion at pp 14-15. Emphasis added. Citations omitted.

[7] Slip Opinion at p 24.

[8] Slip Opinion at p. 25. Emphasis added.

[9] Opinion of J. Kennedy’s at p 8. Emphasis added.

Protection of Clothing Designs

The U.S. Supreme Court recently ruled in the Star Athletica v. Varsity Brands case, which involved copyrights for designs on cheerleading uniforms.

The Court ruled in favor of Varsity Brands (the owner of the copyrights), but fashion designers shouldn’t get too excited. The ruling doesn’t expand their rights all that much.

Think of it this way:

  1. It’s always been true that a fabric design CAN be copyrighted.
  2. It’s always been true that a dress design can NOT be copyrighted.

All the Court said is that Varsity Brands’ copyrighted designs on the fabric of their uniforms are more like statement 1 (rather than statement 2) and the court should hold a trial to determine whether Star Athletica’s cheerleader uniforms infringe on Varsity Brand’s copyrights.

The ruling does NOT mean that the cut, shape, style, or fit of a piece of clothing can be protected through copyright. Here’s what the court said:

“[T]he only feature of the cheerleading uniform eligible for a copyright in this case is the two-dimensional work of art fixed in the tangible medium of the uniform fabric. [Varsity Brands has] no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimensions . . .. They may prohibit only the reproduction of the surface designs in any tangible medium of expression—a uniform or otherwise.”

Clothing designers are going to have to continue to rely primarily on the strength of their brands, the quality of their goods, and the loyalty of their customers.

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?

First Amendment v. Trademark

Simon Tam named his band The Slants “to make a statement about racial and cultural issues”[1]. Now he’s the front man for the First Amendment before the United States Supreme Court with his first gig on January 18.

How’d that happen?

Mr. Tam’s application to register his trademark was rejected because it “consists [of] matter which may disparage” people.[2] That particular section of the Lanham Act doesn’t come up very often. Its most famous use to date was to de-register the Redskins trademarks.

Now Mr. Tam is fighting the Trademark Office and this law.

The First Amendment prohibits the government from regulating speech because of its content or the message conveyed. This isn’t like the government saying you can’t have a march because there’s already another group having a march in the same place that day. This is the government saying you can’t have a march because some people don’t like what you’re marching about.

That’s the very essence of the First Amendment. The government can’t stop us from speaking because it doesn’t like what we’re saying.

The courts recognize that invalidating the disparagement clause “may lead to wider registration of marks that offend vulnerable communities.” If the Supreme Court rules for Mr. Tam, the Redskins will also be allowed to register.

But, there’s no need to protect popular or harmless speech. It’s speech on the edge that needs protection “to ensure that we do not stifle public debate.”[3]

That’s why the “First Amendment [should protect] Mr. Tam’s speech . . ..”[4]

 

 

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Photo of Supreme Court building used under Creative Commons license: CC-BY-SA-3.0/Matt H. Wade.

[1] In re Simon Shiao Tam, at page 4

[2] 15 USC 1052, subsection (a), also know as Section 2(a) of the Lanham Act.

[3] Snyder v. Phelps, 562 U.S. 443, 461 (2011)

[4] In re Simon Shiao Tam, at page 50