The Supreme Court struck down Monday a provision of federal law that prohibits the registration of “immoral” or “scandalous” trademarks as a violation of the First Amendment.
The ruling, which was unanimous in part and 6-3 in part, could open the doors to more requests to register words or phrases that have been considered vulgar, a concern that the court’s minority feared.
“We hold that this provision infringes the First Amendment,” Justice Elena Kagan wrote in the majority opinion, because it “disfavors certain ideas.”
Entrepreneur Erik Brunetti said he founded a clothing brand in 1990 to question authority and the assumptions of society. He said his company’s name stands for “FRIENDS U CAN’T TRUST.”
In 2011, Brunetti sought to register the mark with the United States Patent and Trademark Office in order to obtain benefits such as expanding rights against others attempting to use the same mark.
The office refused Brunetti’s request because it said FUCT was the “phonetic equivalent” of the past tense of a vulgar word, and determined that federal law prohibits the registration of trademarks that consist of “scandalous” subject matter.
“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. But you might read it differently and, if so, you would hardly be alone,” Kagan wrote.
Kagan wrote the statute “does not draw the line at lewd, sexually explicit, or profane marks” instead it covers “the universe of immoral or scandalous” material.
“A law disfavoring ‘ideas that offend’ discriminates based on viewpoint, in violation of the First Amendment,” she wrote.
Kagan was joined by Justices Clarence Thomas, Ruth Bader Ginsburg, Samuel Alito, Brett Kavanaugh, and Neil Gorsuch in full. Chief Justice John Roberts and Justices Stephen Breyer and Sonia Sotomayor concurred in part and dissented in part.
Alito suggested that Congress could step in and act.
“Our decision does not prevent Congress from adopting a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas,” Alito wrote in a concurring opinion
He conceded the registration of such marks “serves only to further coarsen our popular culture,” but the justices are “not legislators and cannot substitute a new statute for the one now in force.”
Roberts, Breyer and Sotomayor would have saved part of the statute that prohibits “scandalous” trademarks. Breyer said he would do so because “these attention-grabbing words” may lead “to the creation of public spaces that many will find repellant, perhaps on occasion creating the risk of verbal altercations or even physical confrontations.”
“Just think,” he wrote, “about how you might react if you saw someone wearing a t-shirt or using a product emblazoned with an odious racial epithet.”
Sotomayor added that the court’s decision “will beget unfortunate results.”
“Much of the debate between the Justices in this case is over just how far they can go to rewrite a poorly worded statute in order to save it from constitutional challenge,” said Steve Vladeck, CNN Supreme Court analyst and professor at the University of Texas School of Law.
“That fight shows up in three of the Court’s four decisions from Monday — and is, in many ways, a sign of the times, as the Court confronts an increasingly polarized Congress that, for various reasons, may be more likely to write vague statutes than clear ones,” Vladeck said.
The justices will deliver additional opinions on Wednesday.
This story has been updated.