On Monday, the Court struck down yet another provision of the Lanham Act’s trademark registration provisions in Iancu v. Brunetti. Two years earlier, the Court had struck down the disparaging provisions of the Lanham Act in Matal v. Tam. This time, the United States Patent and Trademark Office (PTO) decided it wanted to try to pursue denial of a trademark on the grounds that the mark is immoral or scandalous. In a highly fractured opinion, all nine justices found against the PTO, agreeing that its application of the immoral or scandalous standard had quite clearly amounted to viewpoint discrimination, however, several justices felt the need to point out that it is possible for Congress to craft narrower legislation that does effectively regulate the extreme types of conduct that may be genuinely reprehensible while still preserving far more marks for registration free from the nannying of bureaucrats.
Justice Kagan’s majority opinion, joined by Justices Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh, is relatively short and focuses primarily on continuing the centrally agreed upon premises all eight justices signed onto in Matal. Justice Alito filed a concurring opinion articulating his concerns that facially neutral regulations are being used for censorial purposes in modern American society, and that his preference is for Congress to craft a new statute that addresses the First Amendment infirmities in the Lanham Act, as he does not believe the “F-U-C-T” trademark at issue in Iancu would otherwise be worthy of protection and could be properly excluded under a more carefully drawn statutory regime.
Chief Justice John Roberts believes that the Court could have resolved the case without needing to address scandalous marks, and would have preferred to address only the “immoral” prong of the statute. He believes an objective test is possible to determine whether a mark is scandalous, though he concedes the PTO has done a poor job of articulating such possibilities (possibly because the PTO has become accustomed to being an unchecked censor, as articulated by Justice Kagan). Justice Breyer filed an opinion articulating a nonsensical scrutiny standard to First Amendment cases, believing strict scrutiny is not always necessary in viewpoint discrimination. Instead, he advocates for a type of proportionality analysis for what he perceives as commercial speech, and hence less worthy of absolute First Amendment protection. Finally, Justice Sotomayor filed an opinion joined by Justice Breyer emphasizing the point that scandalous marks can still be rejected in a viewpoint neutral way, and that the Court ought to save a statute whenever possible.
This fracturing a mere two years after Matal betrays deep divisions between the justices on free speech jurisprudence, and presents government actors with potential avenues to preserve their statutory regimes if the right pitch is made to the right combination of justices. The opinion in this case does continue to uphold the post-War tradition of the United States as a guiding light on free expression. Unlike virtually any other nation or any other peoples in the history of mankind, Americans enjoy the freedom to offend on any and all bases. As Justice Alito succinctly stated in Matal v. Tam:
“Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’ United States v. Schwimmer, 279 U. S. 644, 655 (1929) (Holmes, J., dissenting).”