Iancu v. Brunetti

139 S.Ct. 2294

204 L.Ed.2d 714

Andrei IANCU, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office, Petitioner

v.Erik BRUNETTI

No. 18-302

Supreme Court of the United States.

Argued April 15, 2019

Decided June 24, 2019

Malcolm L. Stewart, Washington, DC, for the petitioner.

John R. Sommer, Irvine, CA, for the respondent.

Sarah Harris, General Counsel, Thomas W. Krause, Solicitor, Christina J. Hieber, Thomas L. Casagrande, Mary Beth Walker, Molly R. Silfen, Associate Solicitors, U.S. Patent and Trademark, Office, Alexandria, VA, Noel J. Francisco, Solicitor General, Joseph H. Hunt, Assistant Attorney General, Malcolm L. Stewart, Deputy Solicitor General, Frederick Liu, Assistant to the Solicitor General, Mark R. Freeman, Daniel Tenny, Joshua M. Salzman, Attorneys, Department of Justice, Washington, DC, for petitioner.

John R. Sommer, Megan E. Gray, Devon A. Beckwith, Irvine, CA, for respondent.

Justice KAGAN delivered the opinion of the Court.

Two Terms ago, in Matal v. Tam , 582 U. S. ––––, 137 S.Ct. 1744, 198 L.Ed.2d 366 (2017), this Court invalidated the Lanham Act’s bar on the registration of "disparag[ing]" trademarks. 15 U.S.C. § 1052(a). Although split between two non-majority opinions, all Members of the Court agreed that the provision violated the First Amendment because it discriminated on the basis of viewpoint. Today we consider a First Amendment challenge to a neighboring provision of the Act, prohibiting the registration of "immoral[ ] or scandalous" trademarks. Ibid. We hold that this provision infringes the First Amendment for the same reason: It too disfavors certain ideas.

I

Respondent Erik Brunetti is an artist and entrepreneur who founded a clothing line that uses the trademark FUCT. According to Brunetti, the mark (which functions as the clothing’s brand name) is pronounced as four letters, one after the other: F-U-C-T. See Brief for Respondent 1. But you might read it differently and, if so, you would hardly be alone. See Tr. of Oral Arg. 5 (describing the brand name as "the equivalent of [the] past participle form of a well-known word of profanity"). That common perception caused difficulties for Brunetti when he tried to register his mark with the U. S. Patent and Trademark Office (PTO).

Under the Lanham Act, the PTO administers a federal registration system for trademarks. See 15 U.S.C. §§ 1051, 1052. Registration of a mark is not mandatory. The owner of an unregistered mark may still use it in commerce and enforce it against infringers. See Tam , 582 U. S., at ––––, 137 S.Ct., at 1752. But registration gives trademark owners valuable benefits. For example, registration constitutes "prima facie evidence" of the mark’s validity. § 1115(a). And registration serves as "constructive notice of the registrant’s claim of ownership," which forecloses some defenses in infringement actions. § 1072. Generally, a trademark is eligible for registration, and receipt of such benefits, if it is "used in commerce." § 1051(a)(1). But the Act directs the PTO to "refuse[ ] registration" of certain marks. § 1052. For instance, the PTO cannot register a mark that "so resembles" another mark as to create a likelihood of confusion. § 1052(d). It cannot register a mark that is "merely descriptive" of the goods on which it is used. § 1052(e). It cannot register a mark containing the flag or insignia of any nation or State. See § 1052(b). There are five or ten more (depending on how you count). And until we invalidated the criterion two years ago, the PTO could not register a mark that "disparage[d]" a "person[ ], living or dead." § 1052(a) ; see Tam , 582 U. S. ––––, 137 S.Ct. 1744, 198 L.Ed.2d 366.

This case involves another of the Lanham Act’s prohibitions on registration—one applying to marks that "[c]onsist[ ] of or comprise[ ] immoral[ ] or scandalous matter." § 1052(a). The PTO applies that bar as a "unitary provision," rather than treating the two adjectives in it separately. In re Brunetti , 877 F.3d 1330, 1336 (C.A. Fed. 2017) ; Brief for Petitioner 6 (stating that the PTO "has long treated the two terms as composing a single category"). To determine whether a mark fits in the category, the PTO asks whether a "substantial composite of the general public" would find the mark "shocking to the sense of truth, decency, or propriety"; "giving offense to the conscience or moral feelings"; "calling out for condemnation"; "disgraceful"; "offensive"; "disreputable"; or "vulgar." 877 F.3d at 1336 (internal quotation marks omitted); see Brief for Petitioner 6 (agreeing that the PTO "generally defines" the category in that way).

Both a PTO examining attorney and the PTO’s Trademark Trial and Appeal Board decided that Brunetti’s mark flunked that test. The attorney determined that FUCT was "a total vulgar" and "therefore[ ] unregistrable." App. 27–28. On review, the Board stated that the mark was "highly offensive" and "vulgar," and that it had "decidedly negative sexual connotations." App. to Pet. for Cert. 59a, 64a–65a. As part of its review, the Board also considered evidence of how Brunetti used the mark. It found that Brunetti’s website and products contained imagery, near the mark, of "extreme nihilism" and "anti-social" behavior. Id., at 64a. In that context, the Board thought, the mark communicated "misogyny, depravity, [and] violence." Ibid . The Board concluded: "Whether one considers [the mark] as a sexual term, or finds that [Brunetti] has used [the mark] in the context of extreme misogyny, nihilism or violence, we have no question but that [the term is] extremely offensive." Id., at 65a.

Brunetti then brought a facial challenge to the "immoral or scandalous" bar in the Court of Appeals for the Federal Circuit. That court found the prohibition to violate the First Amendment. As usual when a lower court has invalidated a federal statute, we granted certiorari. 586 U. S. ––––, 139 S.Ct. 782, 202 L.Ed.2d 510 (2019).

II

This Court first considered a First Amendment challenge to a trademark registration restriction in Tam , just two Terms ago. There, the Court declared unconstitutional the Lanham Act’s ban on registering marks that "disparage" any "person[ ], living or dead." § 1052(a). The eight-Justice Court divided evenly between two opinions and could not agree on the overall framework for deciding the case. (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.) But all the Justices agreed on two propositions. First, if a trademark registration bar is viewpoint-based, it is unconstitutional. See 582 U. S., at –––– – ––––, –––– – ––––, 137 S.Ct., at 1751, 1762–1763 (opinion of ALITO, J.); id., at –––– – ––––, ––––, 137 S.Ct., at 1751, 1753 (opinion of Kennedy, J.). And second, the disparagement bar was viewpoint-based. See id., at –––– – ––––, –––– – ––––, 137 S.Ct., at 1751, 1762–1763 (opinion of ALITO, J.); id., at –––– – ––––, 137 S.Ct., at 1751–1753 (opinion of Kennedy, J.)

The Justices thus found common ground in a core postulate of free speech law: The government may not discriminate against speech based on the ideas or opinions it conveys. See Rosenberger v. Rector and Visitors of Univ. of Va. , 515 U.S. 819, 829–830, 115 S.Ct. 2510, 132 L.Ed.2d 700 (1995) (explaining that viewpoint discrimination is an "egregious form of content discrimination" and is "presumptively unconstitutional"). In Justice Kennedy’s explanation, the disparagement bar allowed a trademark owner to register a mark if it was "positive" about a person, but not if it was "derogatory." Tam , 582 U. S., at ––––, 137 S.Ct., at 1750. That was the "essence of viewpoint discrimination," he continued, because "[t]he law thus reflects the Government’s disapproval of a subset of messages it finds offensive." Id., at –––– – ––––, 137 S.Ct., at 1766. Justice ALITO emphasized that the statute "denie[d] registration to any mark" whose disparaging message was "offensive to a substantial percentage of the members of any group." Id., at ––––, 137 S.Ct., at 1763. The bar thus violated the "bedrock First Amendment principle" that the government cannot discriminate against "ideas that offend." Id., at –––– – ––––, 137 S.Ct., at 1751. Slightly different explanations, then, but a shared conclusion: Viewpoint discrimination doomed the disparagement bar.

If the "immoral or scandalous" bar similarly discriminates on the basis of viewpoint, it must also collide with our First Amendment doctrine. The Government does not argue otherwise. In briefs and oral argument, the Government offers a theory for upholding the bar if it is viewpoint-neutral (essentially, that the bar would then be a reasonable condition on a government benefit). See Brief for Petitioner 14–26. But the Government agrees that under Tam it may not "deny registration based on the views expressed" by a mark. Tr. of Oral Arg. 24. "As the Court’s Tam decision establishes," the Government says, "the criteria for federal trademark registration" must be "viewpoint-neutral to survive Free Speech Clause review." Pet. for Cert. 19. So the key question becomes: Is the "immoral or scandalous" criterion in the Lanham Act viewpoint-neutral or viewpoint-based?

It is viewpoint-based. The meanings of "immoral" and "scandalous" are not mysterious, but resort to some dictionaries still helps to lay bare the problem. When is expressive material "immoral"? According to a standard definition, when it is "inconsistent with rectitude, purity, or good morals"; "wicked"; or "vicious." Webster’s New International Dictionary 1246 (2d ed. 1949). Or again, when it is "opposed to or violating morality"; or "morally evil." Shorter Oxford English Dictionary 961 (3d ed. 1947). So the Lanham Act permits registration of marks that champion society’s sense of rectitude and morality, but not marks that denigrate those concepts. And when is such material "scandalous"? Says a typical definition, when it "...