F is for Fashion…And Now A Whole Lot Else Too!

Comparing Underage Model Laws: New York vs California
February 26, 2019

F is for Fashion…And Now A Whole Lot Else Too!

This is a guest blog article, written by Attorney Hilary Jochmans, a Law On The Runway blog contributor. Thank you Hilary for your local D.C. insights!

On June 21, the United States Supreme Court struck down a century-old tenant of US trademark law ruling that it was a violation of the First Amendment’s Right to Free Speech.  

At issue, was whether the Patent and Trademark Office (PTO) could deny registration of a mark that was “immoral” or “scandalous.”  This is big news for the fashion industry where edgy, shocking, and racy are selling points. 

In this historic intellectual property Supreme Court case, Iancu v. Brunetti, plaintiff-respondent Erik Brunetti, a provocative, internet-only fashion designer, appealed the USPTO denial of registration for the trademark, FUCT.  This acronym stood for Friends You Can’t Trust, and each letter was to be pronounced separately, F-U-C-T.  Brunetti said his brand was merely commenting on current political and societal issues.  

The federal government argued the scandalous marks provision is facially constitutional under the Free Speech Clause of the 1stamendment and that it is not a restriction on free speech, but rather a requirement to receive a government benefit – a trademark.  Brunetti could have continued to use the name FUCT  in advertising or on the garments, just as an unregistered mark.  

In 2017, the intellectual property specialty court, the US Court of Appeals for the Federal Circuit, ruled in Brunetti’s favor on his facial challenge to the “immoral and scandalous” bar.  The Supreme Court agreed to hear the appeal as it often does when lower courts invalidate current federal law.  

This case concerns a provision in the 1946 Lanham Act, which sets out procedures for obtaining a trademark and the rights it confers.  An applicant can apply to the USPTO to record the mark and must provide a description of the good to receive the mark.  The owner of a trademark commonly gives notice of the ownership through the use of the symbol, ®.   While trademarks had been present in common law, the Lanham Act conferred a new level of government support for a mark.  

Congress empowered the USPTO to refuse registration for several reasons, including if the mark is deceptive, contains a flag or includes the name of a living person, without their consent.  Relevant to this case, is a provision that directs the USPTO to refuse registration of marks that are scandalous or immoral. 

But, how is one to determine what is scandalous? There is no one solid definition. Is it based on societal mores? Those change over time as society changes.  A century ago it might have been scandalous for a woman to reveal an ankle in a skirt or for a man to go out without a proper hat.  Today, much more than an ankle protrudes from a skirt and men only wear hats to support their favorite sports team or school.  The USPTO has relied on the definition of scandalous as that which is “shocking to the sense of truth, decency or propriety; disgraceful; offensive; disreputable;…giving offense to the conscience or moral feelings;…or calling out for condemnation.”  Which begs the question –whose “sense of truth, decency, or propriety” must be offended?  The USPTO says it’s a “substantial composite of the general public”.  But, what is a “substantial composite?” One third of the general public?  One half of the general public?  And, who is the general public?  People who would use the trademarked item?  People over 18 years of age?  There is ambiguity in the standard. 

Ultimately, the Court did not have to decide what is “scandalous” but rather struck down the entire provision saying it is in violation of the 1stAmendment.  

It is long held jurisprudence that the government cannot “penalize or disfavor or discriminate based on ideas or the viewpoints it conveys” said Justice Kagan.  “The ban on ‘immoral’ and ‘scandalous’ does just that.”  Justices Ginsburg, Thomas, Alito, Gorsuch, and Kavanaugh joined in the opinion.  

So what will the future hold in this area of law?  

Justice Alito, who sided with the majority, suggested Congress could tailor the provision to be constitutionally acceptable. However, do we really think in this political environment that Congress could ever agree on what is decent?  As Justice John Marshall Harlan II said in another famous Supreme Court case involving clothing and curse words, “one man’s vulgarity is another’s lyric.”

Justice Sotomayor wrote that this Brunettidecision, “will beget unfortunate results…the government will have no statutory basis to refuse (and thus no choice but to begin) registering marks containing the most vulgar, profane or obscene words and images imaginable.” Will we see a rise in trademarked profanity pants, scandalous shirts and immoral intimates? I guess we will have to check the runways in the Fall Fashion Weeks to find out.