Updated at 8:19 p.m. ET
In a win for advocates of free speech, the Supreme Court has struck down a ban on trademarking words and symbols that are "immoral" or "scandalous." The 6-3 decision is also a victory for those seeking trademark protection for profane and even racist brand names.
The case was brought by clothing designer Erik Brunetti, who sought to trademark the phrase FUCT. The decision paves the way for him to get his brand trademarked.
The court, like others, struggled with how to deal with the word — in particular, its pronunciation. Here's how Justice Elena Kagan described it in her majority opinion: The clothing brand "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."
She noted that it has been described "as 'the equivalent of [the] past participle form of a well-known word of profanity.' "
Five justices, a mix of liberals and conservatives, joined Kagan's majority opinion: Clarence Thomas, Ruth Bader Ginsburg, Samuel Alito, Neil Gorsuch, and Brett Kavanaugh.
Most experts saw the decision as propelling a rush to get trademark protection for profane and racist trademarks. "I do believe that this will open the door to indiscriminate applications for terms and words that many or most us find to be really awful," said Jacqueline Lesser, a trademark attorney with the law firm of BakerHostetler.
Ilya Shapiro, the director of the Center For Constitutional Studies at the libertarian Cato Institute, dismissed those predictions, noting that, "You can't get a trademark for something that's already in common use."
First Amendment experts were divided as to whether Congress could enact a narrower law that would pass constitutional muster. Alito left no doubt where he was. "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," he wrote in a concurring opinion.
But the majority was not so welcoming, saying only that it was taking no position on statutes that Congress might write in the future.
All nine of the justices agreed that the federal law banning "immoral" trademarks was too broad, that it would allow the government to grant trademarks to messages it approved and deny trademarks for messages it disapproved. But when it came to "scandalous" trademarks, the unity fell apart.
Kagan, writing for the majority, looked to dictionary definitions of scandalous — "disgraceful, offensive, disreputable," to cite a few.
She pointed to varying treatments of opposing messages. Denied trademark protection, for instance, was "You Can't Spell Healthcare Without THC," but granted trademark protection was "Say No To Drugs." Granted trademark protection was a game called "Praise The Lord" and a line of clothing called "Jesus Died For You," but denied was "Bong Hits for Jesus."
Summing up, Kagan said that the law violates the First Amendment guarantee of free speech because "it disfavors certain ideas."
As for the dissenters — Chief Justice John Roberts, and Justices Stephen Breyer and Sonia Sotomayor — they would have upheld the statute by interpreting it narrowly to ban profane, vulgar and obscene trademarks. "The First Amendment protects the freedom of speech; it does not require the Government to give aid and comfort to those using obscene, vulgar, and profane modes of expression," wrote Roberts.
Breyer noted that the field of trademark protection is "highly regulated with a specialized mission" to help consumers identify goods and services that they wish to purchase as well as those they want to avoid. This mission, by its very nature, he wrote, requires the government to impose limitations on speech.
"The list of swear words may be evolving yet again, perhaps to race-based epithets," he observed. But "[these] attention-grabbing words, though financially valuable to some businesses ... may lead to the creation of public spaces that many will find repellent, perhaps on occasion creating the risk of verbal altercations or even physical confrontations."
Sotomayor, in her dissent, said that Brunetti, FUCT's owner, has the right to brand his clothing line as he wishes. But the government "need not ... be forced to confer" trademark benefits on his line in the face of a statute that clearly includes a ban on profane, vulgar, and obscene words. That the statute included more than that narrow category does not mean it cannot be read more narrowly, and that is what she, Breyer and Roberts would have done.
Brunetti's clothing line is mainly hoodies, loose pants, shorts and T-shirts, all with FUCT prominently displayed. Brunetti opened the line in 1990 aimed at 20-somethings. He has been trying since then to get the FUCT brand name trademarked so he can go after copycats.
These counterfeits, he says, are costing him real money.
The U.S. Patent and Trademark Office, however, consistently turned him down for trademark protection, contending that those letters violate a federal statute that bars trademark protection for immoral, shocking, offensive and scandalous words.
Brunetti's case got a boost two years ago when the Supreme Court ruled that an Asian American band called The Slants could not be denied trademark protection just because the name used a term viewed as racially disparaging.
The FUCT case seemed considerably more daunting when the high court heard the case argued in April, and the justices went to great lengths not to use the FUCT name out loud.
ARI SHAPIRO, HOST:
We have to be careful about how we report on this next Supreme Court ruling for reasons that you are about to understand. NPR legal affairs correspondent Nina Totenberg is going to tiptoe through this 6-3 decision that has free speech advocates cheering. The case is about trademarking, quote, "scandalous and immoral" brand names.
NINA TOTENBERG, BYLINE: The brand name at issue in the case is F-U-C-T. You can say it. I can't. It's a casual clothing line owned by designer Erik Brunetti - hoodies, T-shirts, et cetera - all with that brand name prominently displayed. Brunetti has been trying to get federal trademark protection for the line for years. With it, he will now have more clout in shutting down knockoffs.
But the case he brought to the Supreme Court produced five separate opinions today. Justice Elena Kagan wrote the majority opinion, joined by the court's two most conservative Justices, Clarence Thomas and Neil Gorsuch, plus its most liberal justice, Ruth Bader Ginsburg, and another conservative justice, Samuel Alito, who wrote separately.
In dissent were two of the court's liberal justices, Sonia Sotomayor and Stephen Breyer, plus conservative Chief Justice John Roberts. In the aftermath of the decision, trademark attorney Jacqueline Lesser expects a rush to get trademark protection now for lots of vulgar and racist brands.
JACQUELINE LESSER: I do believe that this will open the door to indiscriminate applications for terms and words that many or most of us find to be really awful.
TOTENBERG: Ilya Shapiro of the libertarian Cato Institute pooh-poohs that idea, noting there are lots of other restrictions on trademarks.
ILYA SHAPIRO: I'd like to see the business plan. You can't get a trademark for something that's already in common use or generic in a certain way.
TOTENBERG: Today's decision produced a fascinating debate among the justices. All nine agreed that the federal law banning immoral trademarks was just too broad, that it would allow the government to grant trademarks to messages it approved and denied trademarks for messages it disapproved. But the ban on scandalous trademarks - well, that's where the unanimity fell apart. Justice Kagan, writing for the majority, looked to dictionary definitions of scandalous - disgraceful, offensive, disreputable for instance.
Put that with immoral, she said, and what you have is a statute, on its face, that distinguishes between conventional moral standards and those hostile to them. Denied trademark protection, for instance, was, you can't spell health care without T-H-C. But granted trademark protection was, say no to drugs. Granted trademark protection was a game called, Praise the Lord, and a line of clothing called, Jesus Died For You, but denied was, Bong Hits for Jesus.
Summing up, Kagan said, we hold that the law violates the First Amendment guarantee of free speech because it disfavors certain ideas. Justice Alito provided the sixth vote, but he wasn't happy about it. He was signing on, he said, because viewpoint discrimination is poison to a free society and because he sees free speech as under attack in modern America. But he specifically said the court's decision does not prevent Congress from adopting a statute that would ban vulgar terms that play no real part in the expression of ideas. The F-U-C-T brand, he said, signifies nothing except emotion and a severely limited vocabulary.
The three dissenters would have interpreted the existing statute as limited to profanity and vulgarity, perhaps even specific words. And under that interpretation, the dissenters would have upheld denying trademark protection for the F-U-C-T brand. Congress, of course, could try to do that now by enacting a very narrow law that bans trademarks for profane and obscene speech.
Or it could enact a trademark ban for certain words, even the N-word. Congress has taken similar action to narrow other statutes struck down on First Amendment grounds. But as Genevieve Lakier of the University of Chicago Law School observes, it's never simple.
GENEVIEVE LAKIER: Vulgarity expresses a point of view. That's one of the reasons the government often wants to censor it.
TOTENBERG: Nina Totenberg, NPR News, Washington. Transcript provided by NPR, Copyright NPR.