Iancu v. Brunetti

WHETHER THE IMMORAL/SCANDALOUS CLAUSES ARE VIEWPOINT NEUTRAL

Petitioner Andrei Iancu, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, argues that the scandalous marks provision of the Lanham Act is viewpoint neutral because the refusals by the USPTO to register a trademark are based on the offensive mode of expression, regardless of the idea that the speaker intends to convey. Iancu contends that scandalous modes of expression—often sexually explicit or profane material—offend moral standards and therefore do not warrant First Amendment protections, just as obscene content lacks such protections. Iancu claims that Supreme Court precedent supports the distinction between viewpoint and mode of expression, asserting that prior governmental speech regulations have already established disparate treatment of manner and substance. According to Iancu, the provision’s viewpoint neutrality renders Section 2(a)’s constitutionality outside the scope of Matal v. Tam. In Tam, Iancu notes, the Court invalidated the Lanham Act’s disparagement clause, which prohibited registration for trademarks which may disparage “persons living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” Iancu further points out that the two opinions in Tam both concluded that the disparagement clause led to content-based restrictions on speech, and therefore warranted strict scrutiny review. Iancu argues that because Section 2(a) polices mode of expression rather than the idea expressed, the Tam decision should not affect the Court’s decision in this matter.

Respondent Erik Brunetti contends that Iancu’s argument about viewpoint neutrality conflicts with the Tam Court’s determination that offensiveness is a viewpoint, and that regulating based on offensiveness is viewpoint-discriminatory. Noting the inconsistencies of USPTO decisions based on perceived offensiveness, Brunetti argues that those decisions often explicitly rest on an asserted meaning which cannot be separated from the speech itself. Brunetti further argues that Iancu’s distinction between the speech itself and the mode of expression is a false dichotomy and misconstrues the Supreme Court’s decision in Cohen v. California. According to Brunetti, Iancu cites Cohen as support for this dichotomy, but the Court there held that both the idea and the mode of expression at issue—a jacket with the phrase “Fuck the Draft” on the back—constituted protected speech that could not be distinguished for First Amendment purposes. Further, Brunetti posits, the FCC v. Pacifica Foundation Court’s discussion of offensiveness on which Iancu relies was only a plurality decision, and the Court emphasized that the decision was narrow and specific to the context of radio content broadcasted over public airwaves. Because determinations of offensiveness rely on viewpoint discrimination, and because Supreme Court precedent does not support Iancu’s bifurcation between protecting the idea and protecting the mode of expression, Brunetti argues that the provision is content regulation warranting strict scrutiny.

THE APPLICABLE STANDARD OF REVIEW

Iancu argues that the Court in this situation should ask whether Section 2(a) is “reasonably related to a legitimate government interest,” which is the standard the Court traditionally applies where the government declines to promote speech rather than restricts that speech. Courts typically apply strict scrutiny—whether the controversial statute is “narrowly tailored to serve compelling state interest”—to situations where the government restricts speech through content-based discrimination, according to Iancu. Iancu asserts that strict scrutiny is unwarranted here because the provision does not restrict speech because treating the provision as speech restriction would disrupt the entire trademark system. Strict scrutiny is also inappropriate here, Iancu posits, because the content-based determination examines the mode of expression rather than the idea itself. Iancu contends that Section 2(a) merely conditions government benefits upon a standard which bans neither the mode of expression nor the idea itself. Iancu notes that the applicant can continue to use the mark commercially and invoke certain trademark rights without registration. Strict scrutiny is inappropriate where the government declines to promote speech through allocated benefits, Iancu asserts, and funding conditions must simply be reasonable where the government subsidizes only certain speech. While the desire for government benefits may indirectly pressure mark modification, Iancu argues that the Court has distinguished between direct pressure on speech warranting strict scrutiny and the indirect pressure present here. Iancu asserts that the entire trademark system depends upon content-based, viewpoint-neutral determinations—i.e., whether a mark adequately identifies the product or is deceptive or misleading—which has not previously warranted strict scrutiny, and which should not now be subjected to such review.

Brunetti replies that the scandalous marks provision does not survive the strict scrutiny review that content-based speech regulation requires. Brunetti asserts that the trademark registration system is a method of conferring legal recognition and rights by listing the trademark in a centralized database, and he argues that government regulation of such a database does not allow the government to avoid constitutional scrutiny. Brunetti asserts that the trademark registration database is not a public forum for expressive activity and thus should not be monitored for vulgarity, and that government approval of a trademark does not convert private speech into government-associated speech. Additionally, there is nothing in the Lanham Act’s legislative history suggesting a congressional intent for the trademark system to act as a subsidy, which Brunetti argues undermines Iancu’s assertion that the scandalous mark provision warrants only reasonable funding conditions. Instead, according to Brunetti Congress intended the trademark system to prevent consumer confusion and to protect mark owners, which indicates that the system is not a government subsidy. Further, Brunetti argues that Section 2(a) unconstitutionally burdens speech because a trademark denial impacts law enforcement’s and online retailer’s willingness to remove counterfeit products. The denial also impacts the applicant’s ability to sell under the brand name or to obtain financing, which Brunetti asserts imposes a severe burden on the mark’s user.

APPLYING THE STANDARD OF REVIEW TO THE SCANDALOUS MARKS PROVISION

Iancu argues that the provision is reasonably related to a legitimate government interest and does not unconstitutionally burden speech. Iancu contends that the legitimate government interests implicated here include encouraging the use of trademarks that are appropriate for audiences of all ages, facilitating the orderly flow of commerce, and avoiding any appearance of the government approval of such marks. Iancu asserts that scandalous marks would harm children by exposing them to potential sexual and vulgar content, would disrupt the orderly flow of commerce by subjecting the population to shocking and thus disruptive material, and would create the undesirable appearance of government approval through the trademark registration symbol next to the offensive mark. Further, the scandalous marks provision does not impose an unconstitutional condition on speech because the provision does not require registrants to endorse a certain opinion about vulgarity, according to Iancu. Additionally, Iancu notes that rejection of one trademark application does not affect the applicant’s access to state, common law, and even certain Lanham Act rights for the scandalous mark, and does not affect the applicant’s chances on registering other marks. Considering these elements, Iancu contends that the provision meets rational review and imposes no unconstitutional burden on speech.

Brunetti asserts that, in addition to unconstitutionally burdening speech, Section 2(a) is impermissibly vague under the Due Process Clause because the ambiguous boundaries of what constitutes scandalous or immoral modes of expression inevitably chill protected speech and delegates speech protection to trademark officials who make decisions on an ad hoc basis. The ambiguity surrounding the provision’s coverage also thwarts any fair notice to the general public, and the consequences of the unclear coverage become readily apparent when examining the severely inconsistent decisions for trademark applications containing words considered scandalous colloquially, according to Brunetti. Not only are the asserted interests not compelling government interests, Brunetti argues, but the provision is not narrowly tailored to fit those interests. Brunetti posits that the provision is over-inclusive by subjecting humor and double entendre to the clause. Additionally, Brunetti adds that the vulgar marks are meant for adult products and would not reach the young audience the government allegedly seeks to protect. Brunetti argues that this provision restricts speech and thus warrants strict scrutiny review, but neither the interests nor the tailoring asserted are sufficient to meet this standard.