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High court strikes down 'scandalous' part of trademark law

Visitors line up to enter the Supreme Court on Capitol Hill in Washington, Monday, June 24, 2019. (AP Photo/J. Scott Applewhite)

By JESSICA GRESKO Associated Press
WASHINGTON (AP) — The Supreme Court struck down a section of federal law Monday that prevented businesses from registering trademarks seen as scandalous or immoral, handing a victory to California fashion brand FUCT.
The high court ruled that the century-old provision is an unconstitutional restriction on speech. Between 2005 and 2015, the United States Patent and Trademark Office ultimately refused about 150 trademark applications a year as a result of the provision. Those who were turned away could still use the words they were seeking to register, but they didn’t get the benefits that come with trademark registration. Going after counterfeiters was also difficult as a result.
The Trump administration had defended the provision, arguing that it encouraged trademarks that are appropriate for all audiences.
The high court’s ruling means that the people and companies behind applications that previously failed as a result of the scandalous or immoral provision can re-submit them for approval. And new trademark applications cannot be refused on the grounds they are scandalous or immoral.
Justice Elena Kagan said in reading her majority opinion that the most fundamental principle of free speech law is that the government can’t penalize or discriminate against expression based on the ideas or viewpoints they convey. She said Lanham Act’s ban on “immoral or scandalous” trademarks does just that.
In an opinion for herself and five colleagues, both conservatives and liberals, Kagan called the law’s immoral or scandalous provision “substantially overbroad.”
“There are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all. It therefore violates the First Amendment,” she wrote.
Kagan’s opinion suggested that a narrower law covering just lewd, sexually explicit or profane trademarks might be acceptable.
The justices’ ruling was in some ways expected because of one the court made two years ago . In 2017, the justices unanimously invalidated a related provision of federal law that told officials not to register disparaging trademarks, finding that restriction violated the First Amendment. In that case, an Asian-American rock band sued after the government refused to register its band name, “The Slants,” because it was seen as offensive to Asians.
The case the justices ruled in Monday involves Los Angeles-based FUCT, which began selling clothing in 1991. Federal officials refused to register the brand’s name, calling it “highly offensive” and “vulgar.” Erik Brunetti, the artist behind the brand, and his attorney didn’t immediately respond to a request for comment Monday.
The court’s decision could result in an uptick in requests to the United States Patent and Trademark Office to register trademarks that would have previously been considered scandalous or immoral.
But Barton Beebe, a New York University law professor who has studied the provision the justices struck down and co-authored a Supreme Court brief in the case , said he thinks that’s unlikely. Beebe said he doesn’t believe there’s a large, pent-up demand for trademark registration by people refused it previously under the provision.
A spokesman for the patent office, Paul Fucito, said the office is reviewing the decision.
The case is Iancu v. Brunetti, 18-302.
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