Supreme Court Finds Bar on Scandalous or Immoral Trademarks Unconstitutional

Written June 25, 2019

On June 24, 2019, the Supreme Court upheld the Federal Circuit's decision in In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017), ruling that the Lanham Act provision which bars the registration of “immoral[ ] or scandalous” trademarks violates the First Amendment. Iancu v. Brunetti, No. 18-302, 6/24/2019.


The case involves the refusal to register the term "FUCT" as the name of a clothing line. The Court concluded that any viewpoint-based trademark registration bar is unconstitutional, and secondly, that the "immoral or scandalous" criterion in the Lanham Act is viewpoint-based.


The decision is consistent with the position advocated in AIPLA's amicus brief filed in this case.



Opinion of the Court


Writing for six justices, Justice Kagan applied the reasoning in the Supreme Court's decision in Matal v. Tam, 137 S. Ct. 1744 (2017), where the Court declared the Lanham Act’s ban on registering marks that “disparage” any “person[ ], living or dead,” unconstitutional. "If the 'immoral or scandalous' bar similarly discriminates on the basis of viewpoint, it must collide with our First Amendment doctrine,” Kagan said.


The Government argued that the "immoral or scandalous" bar is viewpoint-neutral because the statute can be read narrowly to only bar "marks that are offensive [or] shocking to a substantial segment of the public because of their mode of expression, independent of any view that they may express."


Justice Kagan said that the Court could not adopt this narrow reading because it was not evidenced in the statutory language. "The rejected marks express opinions that are, at the least, offensive to many Americans,” Kagan said. “But as the Court made clear in Tam, a law disfavoring ‘ideas that offend’ discriminates based on viewpoint, in violation of the First Amendment.”



Concurring and Dissenting Opinions


Justice Alito filed a concurring opinion, contending that “[v]iewpoint discrimination is poison to a free society," and that the responsibility falls on Congress to fashion a more focused statute.


Chief Justice Roberts filed a concurring and dissenting opinion arguing that while the "immoral" portion of the provision could not be read narrowly in a way that would eliminate its viewpoint bias, the "scandalous" portion could be read in that manner.


Justice Breyer filed a concurring and dissenting opinion, agreeing with Justice Sotomayor that the word "scandalous" should be interpreted to refer to only certain "obscene" modes of expression.


Justice Sotomayor, joined by Justice Breyer, filed a concurring and dissenting opinion, arguing that the Court should have applied the aforementioned narrow construction to the term "scandalous."


Read the opinion in this case.