AMGEN INC., AMGEN MANUFACTURING, LIMITED, Plaintiffs-Appellants v. SANDOZ INC., Defendant-Appellee
No. 2015-1499
United States Court of Appeals, Federal Circuit
Decided: December 14, 2017
877 F.3d 1315
We have considered Amgen‘s remaining arguments but find them to be unpersuasive.
Conclusion
For the foregoing reasons, we affirm the dismissal of Amgen‘s unfair competition and conversion claims. Amgen‘s state law claims are preempted on both field and conflict grounds.
AFFIRMED
Costs
Each party shall bear its own costs.
IN RE: Erik BRUNETTI, Appellant
2015-1109
United States Court of Appeals, Federal Circuit.
Decided: December 15, 2017
877 F.3d 1330
Joshua Marc Salzman, Appellate Staff, Civil Division, United States Department of Justice, Washington, DC, argued for appellee Joseph Matal. Also represented by Daniel Tenny, Mark R. Freeman, Benjamin C. Mizer; Nathan K. Kelley, Thomas L. Casagrande, Christina Hieber, Mary Beth Walker, Molly R. Silfen, Thomas W. Krause, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA.
Before DYK, MOORE, and STOLL, Circuit Judges.
Concurring opinion filed by Circuit Judge Dyk.
MOORE, Circuit Judge.
Erik Brunetti appeals from the decision of the Trademark Trial and Appeal Board (“Board“) affirming the examining attorney‘s refusal to register the mark FUCT because it comprises immoral or scandalous matter under
Background
I. Section 2(a)‘s Bar on Registration of Immoral or Scandalous Marks
Section 2(a) of the Lanham Act provides that the Patent and Trademark Office (“PTO“) may refuse to register a trademark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or
To determine whether a mark should be disqualified under § 2(a), the PTO asks whether a “substantial composite of the general public” would find the mark scandalous, defined as “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to conscience or moral feelings; . . . or calling out for condemnation.” In re Fox, 702 F.3d 633, 635 (Fed. Cir. 2012) (alterations omitted) (quoting In re Mavety Media Grp. Ltd., 33 F.3d 1367, 1371 (Fed. Cir. 1994)). Alternatively, “the PTO may prove scandalousness by establishing that a mark is ‘vulgar.‘” Id. (quoting In re Boulevard Entm‘t, Inc., 334 F.3d 1336, 1340 (Fed. Cir. 2003)). Vulgar marks are “lacking in taste, indelicate, [and] morally crude . . . .” See McGinley, 660 F.2d at 486 (quoting In re Runsdorf, 171 U.S.P.Q. 443, 443-44 (1971)). The PTO makes a determination as to whether a mark is scandalous “in the context of contemporary attitudes” and “in the context of the marketplace as applied to only the goods described in the application.” Fox, 702 F.3d at 635 (internal quotation marks and alterations omitted) (quoting Mavety, 33 F.3d at 1371).
Because the scandalousness determination is made in the context of contemporary attitudes, the concept of what is actually immoral or scandalous changes over time. Early cases often, but not always, focused on religious words or symbols. See, e.g., In re Riverbank Canning Co., 95 F.2d 327, 329 (CCPA 1938) (MADONNA for wine); Ex parte Martha Maid Mfg. Co., 37 U.S.P.Q. 156 (Comm‘r Pat. 1938) (QUEEN MARY for women‘s underwear); Ex Parte Summit Brass & Bronze Works, Inc., 59 U.S.P.Q. 22 (Comm‘r Pat. 1943) (AGNUS DEI for safes); In re P. J. Valckenberg, Gmbh, 122 U.S.P.Q. 334 (T.T.A.B. 1959) (MADONNA for wine); In re Reemtsma Cigarettenfabriken G.M.B.H., 122 U.S.P.Q. 339 (T.T.A.B. 1959) (SENUSSI (a Muslim sect that forbids smoking) for cigarettes); In re Sociedade Agricola E Comerical Dos Vinhos Messias, S.A.R.L., 159 U.S.P.Q. 275 (T.T.A.B. 1968) (MESSIAS for wine and brandy). In later cases, the PTO rejected a wider variety of marks as scandalous. See, e.g., Runsdorf, 171 U.S.P.Q. at 443 (BUB-
II. Facts of This Case
Mr. Brunetti owns the clothing brand “fuct,” which he founded in 1990. In 2011, two individuals filed an intent-to-use application (No. 85/310,960) for the mark FUCT for various items of apparel. The original applicants assigned the application to Mr. Brunetti, who amended it to allege use of the mark. The examining attorney refused to register the mark under § 2(a) of the Lanham Act, finding it comprised immoral or scandalous matter. The examining attorney reasoned that FUCT is the past tense of the verb “fuck,” a vulgar word, and is therefore scandalous. J.A. 203.
Mr. Brunetti requested reconsideration and appealed to the Board. The examining attorney denied reconsideration, and the Board affirmed. In its decision, the Board stated the dictionary definitions in the record uniformly characterize the word “fuck” as offensive, profane, or vulgar. The Board noted that the word “fuct” is defined by Urban Dictionary as the past tense of the verb “fuck” and pronounced the same as the word “fucked,” and therefore found it is “recognized as a slang and literal equivalent of the word ‘fucked,‘” with “the same vulgar meaning.” J.A. 6-7 & n.6. Based on the examining attorney‘s Google Images search results, the Board stated Mr. Brunetti used the mark in the context of “strong, and often explicit, sexual imagery that objectifies women and offers degrading examples of extreme misogyny,” with a theme “of extreme nihilism—displaying an unending succession of anti-social imagery of executions, despair, violent and bloody scenes including dismemberment, hellacious or apocalyptic events, and dozens of examples of other imagery lacking in taste.” J.A. 8-9. The Board explained that Mr. Brunetti‘s use of the mark “will be perceived by his targeted market segment as the phonetic equivalent of the wor[d] ‘fucked.‘” J.A. 9. In light of the record, it found Mr. Brunetti‘s assertion that the mark “was chosen as an invented or coined term stretches credulity.” Id. It concluded that the mark is vulgar and therefore unregistrable under § 2(a) of the Lanham Act. Mr. Brunetti appealed. We have jurisdiction under
Discussion
Mr. Brunetti argues substantial evidence does not support the Board‘s finding the mark FUCT is vulgar under § 2(a) of the Lanham Act. He argues even if the mark is vulgar, § 2(a) does not expressly prohibit the registration of vulgar marks and a mark should be approved for registration when there is doubt as to its meaning, as he alleges there is here. Alternatively, Mr. Brunetti challenges the constitutionality of § 2(a)‘s bar on immoral or scandalous marks.
I. The Mark FUCT is Vulgar and Therefore Scandalous
The determination that a mark is scandalous is a conclusion of law based upon underlying factual inquiries. Fox, 702 F.3d at 637. We review the Board‘s factual findings for substantial evidence and its ultimate conclusion de novo. Id. Substantial evidence is “more than a mere scintilla” and “such relevant evidence as a rea-
It is undisputed that the word “fuck” is vulgar. Dictionaries in the record characterize the word as “taboo,” “one of the most offensive” English words, “almost universally considered vulgar,” and an “extremely offensive expression.” J.A. 5-6; J.A. 206 (Collins Online Dictionary); J.A. 209 (Vocabulary.com); J.A. 211 (Wikipedia.com); J.A. 351 (MacMillan Dictionary). Mr. Brunetti argues that the vulgarity of “fuck” is irrelevant to whether the mark FUCT is vulgar. We do not agree.
Substantial evidence supports the Board‘s finding that “fuct” is a “phonetic twin” of “fucked,” the past tense of the word “fuck.” J.A. 10. Urban Dictionary defines “fuct” as the “past tense of the verb fuck.” J.A. 83. MacMillan Dictionary indicates that the word “fucked” is pronounced phonetically as /fΛkt/, which the Board found sounds like “fukt” or “fuct.” J.A. 6 & n.6. This evidence linking the two terms is sufficient to render the vulgarity of the word “fuck” relevant to the vulgarity of Mr. Brunetti‘s mark.
Evidence of the use of Mr. Brunetti‘s mark in the marketplace further buttresses the Board‘s finding of a link between the mark and the word “fuck.” The Board found the term “fuct” is used on products containing sexual imagery and that consumers perceive the mark as having “an unmistakable aura of negative sexual connotations.” J.A. 9. One T-shirt—captioned the “FUCT Orgy” shirt—depicts a group sex scene. J.A. 346. Another T-shirt contains the word “FUCK” in yellow letters, with a “T” superimposed over the “K” such that the word FUCK is still visible. J.A. 325. A third T-shirt has the brand name FUCT depicted above the slogan “1970 smokin dope & fucking in the streets.” J.A. 312. Because one meaning of “fuck” is “to have sex with someone,” the placement of the mark on products containing sexual imagery makes it more likely that the mark will be perceived as the phonetic equivalent of the word “fucked.” J.A. 9.
Mr. Brunetti challenges the evidence on which the Board relied in making the vulgarity finding. He argues that Urban Dictionary is not a standard dictionary edited by lexicographers and the author of the definition cited by the Board lacks lexicographic expertise. He argues that the Board did not consider his current line of products, which he provided to the examining attorney, but instead relied on a random collection of outdated products collected from Google Images. He argues the Board should not have considered these images because they lack foundation, are inadmissible hearsay, and are irrelevant to the current perception of the mark in the marketplace. He also argues that the majority of the marked products contain no sexual imagery.
Mr. Brunetti‘s arguments have no merit. For ex parte proceedings, the Board permits the examining attorney to consider materials from the Internet, having adopted a “somewhat more permissive stance with respect to the admissibility and probative value of evidence.” TBMP §§ 1208, 1208.03. The pedigree of the author of a definition may affect the weight that evidence is given but does not render the definition irrelevant. Similarly, the ages of the images collected by the examining attorney may affect evidentiary weight, not relevance.
Mr. Brunetti also argues that the Board ignored probative evidence that the mark is not vulgar. He argues that both he and the owner of a high-end clothing store declared that the mark was not vulgar. He
Mr. Brunetti‘s proffered evidence does not change our conclusion that substantial evidence supports the Board‘s findings. The Board explicitly considered Mr. Brunetti‘s declaration and found it “stretche[d] credulity” that “fuct” was chosen as an invented or coined term for “Friends yoU Can‘t Trust,” given the contradictory record evidence. J.A. 9-10. Mr. Brunetti‘s unverifiable claim about the number of customer complaints may demonstrate that the mark is not offensive to a certain segment of the market. That does not satisfy his burden on appeal, however, to establish that the Board lacked substantial evidence for its determination that a “substantial composite” of the American public would find the mark vulgar. And the fact that the Board could have relied on one of the other five definitions of the term “fuct” on Urban Dictionary—a website to which anyone can anonymously submit definitions—does not demonstrate that the Board‘s reliance on that website is not substantial evidence. The Board reasonably focused on the highest rated definition, suggesting that it is more common or accurate than the alternative, non-vulgar definitions.
Mr. Brunetti argues that even if FUCT is vulgar, § 2(a) does not prohibit the registration of vulgar marks—only “immoral” or “scandalous” marks. He argues that to be immoral or scandalous, a mark must be more than merely vulgar. He argues that extending § 2(a) to vulgar marks is contrary to the plain language of the statute.
We do not agree. We have previously held “the PTO may prove scandalousness by establishing that a mark is ‘vulgar.‘” Fox, 702 F.3d at 635; see also Boulevard Entm‘t, 334 F.3d at 1340 (“A showing that a mark is vulgar is sufficient to establish that it ‘consists of or comprises immoral . . . or scandalous matter’ within the meaning of section 1052(a).“). We are bound by these holdings.
Even if we could overrule our prior holding that a showing of vulgarity is sufficient to establish that a mark “consists of or comprises immoral . . . or scandalous matter,” we see no justification for doing so in light of the evidence of record. At the time of the passage of the Lanham Act, dictionaries defined “scandalous” as “shocking to the sense of truth, decency, or propriety,” “[g]iving offense to the conscience or moral feelings,” or “calling out [for] condemnation.” McGinley, 660 F.2d at 485-86 (citing Webster‘s New International Dictionary (2d ed. 1942); Funk & Wagnalls New Standard Dictionary (1945)). Other definitions characterize scandalous as “disgraceful,” “offensive,” or “disreputable.” Id. (citing Webster‘s New International Dictionary (2d ed. 1942); Funk & Wagnalls New Standard Dictionary (1945)). We see no definition of scandalous that, in light of the PTO‘s fact findings, would exempt Mr. Brunetti‘s mark.
We see no merit in Mr. Brunetti‘s arguments relating to whether the mark is scandalous and therefore prohibited registration under § 2(a). Substantial evidence
II. Section 2(a)‘s Bar on Immoral or Scandalous Marks is Unconstitutional Under the First Amendment
When Mr. Brunetti filed his appeal, his constitutional argument was foreclosed by binding precedent. In McGinley, our predecessor court held the refusal to register a mark under § 2(a) does not bar the applicant from using the mark, and therefore does not implicate the First Amendment. 660 F.2d at 484. Commentators heavily criticized McGinley and our continued reliance on it, particularly in light of the many changes to First Amendment jurisprudence over the last thirty years. In In re Tam, 808 F.3d 1321, 1333-34 & n.4 (Fed. Cir. 2015) (en banc). We reconsidered McGinley en banc in Tam, which held the disparagement provision of § 2(a) unconstitutional under the First Amendment because it discriminated on the basis of content, message, and viewpoint. Id. at 1334-37, 1358. We held that, although trademarks serve a commercial purpose as source identifiers in the marketplace, the disparagement provision of § 2(a) related to the expressive character of marks, not their commercial purpose. Id. at 1337-39. As either a content-based or viewpoint-based regulation of expressive speech, the disparagement provision was subject to strict scrutiny. Id. at 1339. It was undisputed that the measure did not survive such scrutiny. Id.
We rejected the government‘s arguments that § 2(a) did not implicate the First Amendment, holding instead that the PTO‘s denial of marks had a chilling effect on speech. Id. at 1339-45. We also rejected the government‘s arguments that trademark registration was government speech, id. at 1345-48, and that trademark registration was a federal subsidy, id. at 1348-55. Finally, we held the disparagement provision did not survive even the lesser scrutiny afforded to commercial speech under Central Hudson Gas & Electric Corp. v. Public Service Commission, 447 U.S. 557, 563 (1980), because the government had put forth no substantial interests justifying the regulation of speech. Tam, 808 F.3d at 1355-58.
The en banc court noted that § 2(a) contains a hodgepodge of differing prohibitions on registration, and as such, the holding in Tam was limited to § 2(a)‘s disparagement provision. Id. at 1330; see also id. at 1330 n.1. However, the court left open whether other portions of § 2 may also be unconstitutional, and held that McGinley was overruled insofar as it could prevent a future panel from reconsidering the constitutionality of other portions of § 2. Id. at 1330 n.1.
Following the issuance of our en banc decision in Tam, we requested additional briefing from both parties in this case on “the impact of the Tam decision on Mr. Brunetti‘s case, and in particular whether there is any basis for treating immoral and scandalous marks differently than disparaging marks.” In re Brunetti, No. 15-1109, Docket No. 51 (Fed. Cir. Dec. 22, 2015). Both parties filed letter briefs. The government stated that “given the breadth of the Court‘s Tam decision and in view of the totality of the Court‘s reasoning,” there is no reasonable basis for treating immoral or scandalous marks differently than disparaging marks. Gov‘t Letter Br. 2, In re Brunetti, No. 15-1109, Docket No. 52 (Fed. Cir. Jan. 21, 2016). It maintained, however, that if the Solicitor General sought Supreme Court review of our en banc decision in Tam, “the government may argue that, under reasoning less sweeping than that adopted in Tam, the
On June 19, 2017, the Supreme Court unanimously affirmed our en banc decision in Tam. Matal v. Tam, — U.S. —, 137 S.Ct. 1744, 198 L.Ed.2d 366 (2017). The Court held that trademarks are private, not government, speech. Id. at 1757-61. Pursuant to two opinions authored by Justice Alito and Justice Kennedy, it concluded that § 2(a)‘s bar on the registration of disparaging marks discriminated based on viewpoint. Id. at 1763 (Alito, J.); id. at 1765 (Kennedy, J.). The Court explained the disparagement provision “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” Id. at 1751 (Alito, J.); accord id. at 1766 (Kennedy, J.). The plurality opinion, authored by Justice Alito and joined by Chief Justice Roberts, Justice Thomas, and Justice Breyer, further concluded that the constitutionality of the disparagement provision could not be sustained by analyzing trademark registration as either a federal subsidy or a federal program. Id. at 1760-63 (Alito, J.). The remaining four participating Justices opined, in a concurring opinion authored by Justice Kennedy, that “the viewpoint discrimination rationale renders unnecessary any extended treatment of other questions raised by the parties.” Id. at 1765 (Kennedy, J.).
Both opinions held the disparagement provision unconstitutionally restricted free speech, left open was “the question of whether Central Hudson provides the appropriate test for deciding free speech challenges to provisions of the Lanham Act.” Id. at 1764 n.17 (Alito, J.); see also id. at 1767 (Kennedy, J.). Justice Alito‘s opinion concluded the disparagement provision failed even the intermediate test under Central Hudson because the prohibition was not narrowly drawn to a substantial government interest. Id. at 1764-65 (Alito, J.). Justice Kennedy‘s opinion concluded that, because the disparagement provision discriminates based on viewpoint, it was subject to heightened scrutiny, which it did not withstand. Id. at 1767-68 (Kennedy, J.). Neither opinion reached the constitutionality of other provisions of § 2 of the Lanham Act. See, e.g., id. at 1768 (Kennedy, J.).
Following the issuance of the Supreme Court‘s decision in Tam, we requested additional briefing from the parties regarding the impact of the Supreme Court‘s decision on Mr. Brunetti‘s case. In re Brunetti, No. 15-1109, Docket No. 58 (Fed. Cir. June 20, 2017). Both parties submitted letter briefs and we heard oral argument on August 29, 2017. The government contends Tam does not resolve the constitutionality of § 2(a)‘s bar on registering immoral or scandalous marks because the disparagement provision implicates viewpoint discrimination, whereas the immoral or scandalous provision is viewpoint neutral. Gov‘t Letter Br. 6-9, In re Brunetti, No. 15-1109, Docket No. 60 (Fed. Cir. July 20, 2017).
While we question the viewpoint neutrality of the immoral or scandalous provision, we need not resolve that issue. Independent of whether the immoral or scandalous provision is viewpoint discriminatory, we conclude the provision impermissibly discriminates based on content in violation of the First Amendment.
A. Section 2(a)‘s Bar on Registering Immoral or Scandalous Marks is an Unconstitutional Content-Based Restriction on Speech
The government restricts speech based on content when “a law ap-
The government concedes that § 2(a)‘s bar on registering immoral or scandalous marks is a content-based restriction on speech. Oral Arg. at 11:57-12:05. And the government does not assert that the immoral or scandalous provision survives strict scrutiny review. Instead, the government contends § 2(a)‘s content-based bar on registering immoral or scandalous marks does not implicate the First Amendment because trademark registration is either a government subsidy program or limited public forum. Gov‘t Letter Br. 14, In re Brunetti, No. 15-1109, Docket No. 60 (Fed. Cir. July 20, 2017); Oral Arg. at 12:06-21, 18:15-39. Alternatively, the government argues trademarks are commercial speech implicating only the intermediate level of scrutiny set forth in Central Hudson. Gov‘t Letter Br. 15, In re Brunetti, No. 15-1109, Docket No. 60 (Fed. Cir. July 20, 2017); Oral Arg. at 35:05-17. Under a less exacting degree of scrutiny, the government argues the immoral or scandalous provision is an appropriate content-based restriction tailored to substantial government interests. We consider these arguments in turn.
1. Trademark Registration is Not a Government Subsidy Program
The Spending Clause of the U.S. Constitution “provides Congress broad discretion to tax and spend for the ‘general Welfare,’ including by funding particular state or private programs or activities.” Agency for Int‘l Dev. v. All. for Open Soc‘y Int‘l, Inc., 570 U.S. 205, 133 S.Ct. 2321, 2327-28, 186 L.Ed.2d 398 (2013);
[E]ven though a person has no “right” to a valuable governmental benefit and even though the government may deny him the benefit for any number of reasons, there are some reasons upon which the government may not rely. It may
not deny a benefit to a person on a basis that infringes his constitutionally protected interests—especially, his interest in freedom of speech.
Perry v. Sindermann, 408 U.S. 593, 597 (1972); accord Bd. of Cty. Comm‘rs v. Umbehr, 518 U.S. 668, 674, 116 S.Ct. 2342, 135 L.Ed.2d 843 (1996) (“[T]he threat of the loss of [a valuable financial benefit] in retaliation for speech may chill speech on matters of public concern . . . .“). Conditions attached to government programs may unconstitutionally restrict First Amendment rights even if the program involves Congress’ authority to direct spending under the Spending Clause. See, e.g., Agency for Int‘l Dev., 133 S.Ct. at 2330-31 (holding Congress could not restrict appropriations aimed at combating the spread of HIV/AIDS to only organizations that affirmatively opposed prostitution and sex trafficking); FCC v. League of Women Voters, 468 U.S. 364, 399-400, 104 S.Ct. 3106, 82 L.Ed.2d 278 (1984) (rejecting the government‘s argument that Congress’ spending power justified conditioning funding to public broadcasters on their refraining from editorializing). The constitutional line, while “hardly clear,” rests between “conditions that define the limits of the government spending program—those that specify the activities Congress wants to subsidize—and conditions that seek to leverage funding to regulate speech outside the contours of the program itself.” Agency for Int‘l Dev., 133 S.Ct. at 2328.
The government argues, pursuant to the government subsidy framework articulated in Agency for International Development, that § 2(a)‘s bar on registering immoral or scandalous marks is simply a reasonable exercise of its spending power, in which the bar on registration is a constitutional condition defining the limits of trademark registration. Our court rejected the applicability of this analysis to trademark registration in our en banc decision in Tam.1 808 F.3d at 1348-55. The four Justices who reached the issue in Tam likewise held the government subsidy framework does not apply to trademark registration. 137 S.Ct. at 1761 (Alito, J.). Justice Alito explained in his plurality opinion that while the constitutional framework articulated in Agency for International Development “is not always self-evident,” no difficult question is presented here.” Id. (quoting 133 S.Ct. at 2330 (alterations omitted)).
Unlike trademark registration, the programs at issue in the Supreme Court‘s cases upholding the constitutionality of conditions under the Spending Clause necessarily and directly implicate Congress’ power to spend or control government property. For example, Rust addressed a condition on the distribution of federal funds for family planning services. 500 U.S. at 177, 111 S.Ct. 1759. The Supreme Court‘s plurality opinion in United States v. American Library Association, Inc. upheld a condition on federal funding for Internet access to public libraries. 539 U.S. 194, 212, 123 S.Ct. 2297, 156 L.Ed.2d 221 (2003). While Regan v. Taxation with Representation of Washington concerned tax exemptions and deductions, the Supreme
Trademark registration does not implicate Congress’ power to spend funds. An applicant does not receive federal funds upon the PTO‘s consideration of, or grant of, a trademark. The only exchange of funds flows from the applicant to the PTO. The applicant pays the applicable trademark process and service fees set forth in
Nor is the grant of trademark registration a subsidy equivalent. “Registration is significant. The Lanham Act confers important legal rights and benefits on trademark owners who register their marks.” B&B Hardware, Inc. v. Hargis Indus., Inc., — U.S. —, 135 S.Ct. 1293, 1300, 191 L.Ed.2d 222 (2015) (quotation marks omitted). These benefits are numerous and include the “right to exclusive nationwide use of that mark where there was no prior use by others,” Tam, 808 F.3d at 1328, a presumption of validity,
Our sister courts confirm that when government registration does not implicate Congress’ authority under the Spending Clause, the government subsidy line of case law does not govern the constitutionality of § 2(a)‘s bar on registering immoral or scandalous marks. See, e.g., Dep‘t of Tex., Veterans of Foreign Wars v. Tex. Lottery Comm‘n, 760 F.3d 427, 436 (5th Cir. 2014) (en banc) (holding a bingo program that was “merely licensed and regulated the state” was “wholly distinguishable from the subsidies in Taxation with Representation and Rust simply because no public monies or ‘spending’ by the state are involved“); Bullfrog Films, Inc. v. Wick, 847 F.2d 502, 503, 509 (9th Cir. 1988) (explaining that a treaty under which certain “educational, scientific and cultural audio-visual materials” were granted various benefits, but no federal funds, was “fundamentally different” from government subsidy programs). As the D.C. Circuit noted, “[t]he Supreme Court has never extended the subsidy doctrine to situations not involving financial benefits.” Autor v. Pritzker, 740 F.3d 176, 182-83 (D.C. Cir. 2014) (declining to apply the subsidy doctrine to a presidential directive that impacted committee members who were unpaid). We can see no reason to treat trademark registration differently.
If the government is correct that a registration program, such as this, gives the government the authority to regulate the content of speech, then every government registration program would provide the government with similar censorship authority. For example, there is no principled basis to distinguish between the registration of trademarks and the registration of copyrights under the government program rationale. The subsidy line of case law cannot justify the government‘s content-based bar on registering immoral or scandalous marks.
2. Trademark Registration is Not a Limited Public Forum
The constitutionality of speech restrictions on government property are analyzed under the Supreme Court‘s “forum analysis,” which “determine[s] when a governmental entity, in regulating property in its charge, may place limitations on speech.” See, e.g., Christian Legal Soc‘y Chapter of the Univ. of Cal., Hastings Coll. of the Law v. Martinez, 561 U.S. 661, 669, 130 S.Ct. 2971, 177 L.Ed.2d 838 (2010). The forum analysis is driven by the principle that “the government need not permit all forms of speech on property that it owns and controls.” Int‘l Soc‘y for Krishna Consciousness, Inc. v. Lee, 505 U.S. 672, 678, 112 S.Ct. 2701, 120 L.Ed.2d 541 (1992); see also Lehman v. City of Shaker Heights, 418 U.S. 298, 303, 94 S.Ct. 2714, 41 L.Ed.2d 770 (1974) (“In much the same way that a newspaper or periodical, or even a radio or television station, need not accept every proffer of advertising from the general public, a city transit system has discretion to develop and make reasonable choices concerning the type of advertising that may be displayed in its vehicles.“). The government may not, however, restrict all private speech on its property solely because it is the owner. To determine the constitutional bounds of speech restrictions on government property, the forum analysis instructs us to first classify the government‘s property as one of three forums.
The first two forums are traditional public forums and designated public forums. Traditional public forums are places such as “streets and parks which have immemorially been held in trust for the use of the public and, time out of mind,
The remaining forum category is the limited public forum, at times referred to as a non-public forum. Limited public forums are places the government has “limited to use by certain groups or dedicated solely to the discussion of certain subjects.” Id. at 470, 129 S.Ct. 1125. As with traditional and designated public forums, regulations that discriminate based on viewpoint in limited public forums are presumed unconstitutional. Rosenberger v. Rector & Visitors of Univ. of Va., 515 U.S. 819, 830, 115 S.Ct. 2510, 132 L.Ed.2d 700 (1995). Content-based restrictions on speech are subject to a lesser degree of scrutiny and remain constitutional “so long as the distinctions drawn are reasonable in light of the purpose served by the forum.” Cornelius v. NAACP Legal Def. & Educ. Fund, Inc., 473 U.S. 788, 806, 105 S.Ct. 3439, 87 L.Ed.2d 567 (1985). Thus, where the government has opened its property for a limited purpose, it can constitutionally restrict speech consistent with that purpose as long as “the regulation on speech is reasonable and not an effort to suppress expression merely because officials oppose the speaker‘s view.” Perry, 460 U.S. at 46, 103 S.Ct. 948.
The government argues that the federal trademark registration program is a limited public forum, subjecting § 2(a)‘s content-based restriction on marks comprising immoral or scandalous subject matter to a less demanding degree of scrutiny. Gov‘t Letter Br. 14-15, In re Brunetti, No. 15-1109, Docket No. 60 (Fed. Cir. July 20, 2017). Without articulating why the federal trademark registration program is a limited public forum, the government‘s letter brief analogizes trademark registration to city buses and a military cemetery. Id. at 14. At oral argument, the government identified the principal register as the limited public forum, which it contended is a metaphysical forum much like the forum at issue in Rosenberger. Oral Arg. at 28:40-58.2
The Supreme Court has found the existence of a limited public forum only when the government restricts speech on its own property. At one end of that spectrum are venues that are owned and controlled by government entities. See, e.g., Greer v. Spock, 424 U.S. 828, 838, 96 S.Ct. 1211, 47 L.Ed.2d 505 (1976) (military base); Jones v. N.C. Prisoners’ Labor Union, Inc., 433 U.S. 119, 134, 97 S.Ct. 2532, 53 L.Ed.2d 629 (1977) (prison facilities); Int‘l Soc. for
While some of the Supreme Court‘s limited public forum cases have involved forums that exist “more in a metaphysical than in a spatial or geographic sense,” these forums have nonetheless been tethered to government properties. See Rosenberger, 515 U.S. at 830, 115 S.Ct. 2510. In Rosenberger, the Supreme Court considered a University‘s distribution of funds through a Student Activities Fund (“SAF“) intended to “support a broad range of extracurricular student activities that ‘are related to the educational purpose of the University.‘” Id. at 824, 115 S.Ct. 2510. The Court concluded the SAF was a limited public forum that “effects a sweeping restriction on student thought and student inquiry in the context of University sponsored publications.” Id. at 829-30, 836, 115 S.Ct. 2510. Although the SAF was “metaphysical“—in that it concerned use of the University‘s funds rather than the University‘s facilities, id. at 830, 115 S.Ct. 2510—the effect of its restrictions on speech were felt on the government‘s property, the University. See id. at 836, 115 S.Ct. 2510 (explaining the SAF “risks the suppression of free speech and creative inquiry in one of the vital centers for the Nation‘s intellectual life, its college and university campuses“). The forum at issue in Cornelius likewise involved a more abstract forum—a charity drive—but that drive was “conducted in the federal workplace during working hours.” 473 U.S. at 790, 105 S.Ct. 3439. And while the Supreme Court has applied the forum analysis to broadcasting, it did so in the context of a state-owned broadcaster‘s sponsorship of a particular debate at its facilities. See Ark. Educ. Television Comm‘n v. Forbes, 523 U.S. 666, 669, 672, 118 S.Ct. 1633, 140 L.Ed.2d 875 (1998).
Because trademarks are by definition used in commerce, the trademark registration program bears no resemblance to these limited public forums. The speech that flows from trademark registration is not tethered to a public school, federal workplace, or any other government property. A principal feature of trademarks is that they help “consumers identify goods and services that they wish to purchase, as well as those they want to avoid.” Tam, 137 S.Ct. at 1751. “These marks make up part of the expression of everyday life, as with the names of entertainment groups, broadcast networks, designer clothing, newspapers, automobiles, candy bars, toys, and so on.” Id. at 1768 (Kennedy, J.). By their very purpose, trademarks exist to convey messages throughout commerce. It is difficult to analogize the Nike swoosh or
A snapshot of marks recently rejected under the immoral or scandalous provision reveals the breadth of goods and services impacted by § 2(a)‘s bar on such marks, including speech occurring on clothing, books, websites, beverages, mechanical contraptions, and live entertainment. These refusals chill speech anywhere from the Internet to the grocery store. And none of them involve government property over which the government can assert a right to “legally preserve the property under its control for the use to which it is dedicated.” Lamb‘s Chapel, 508 U.S. at 390, 113 S.Ct. 2141.
That registered marks also appear on the government‘s principal register does not transform trademark registration into a limited public forum. The government does not open the principal register to any exchange of ideas—it is ancillary to trademark registration. The principal register is simply a database identifying the marks approved for use in commerce. Oral Arg. at 29:28-41. Apart from its function as a database, the government has been unable to define exactly what the principal register is, or where it is located. Id. at 29:34-54. If the government can constitutionally restrain the expression of private speech in commerce because such speech is identified in a government database, so too could the government restrain speech occurring on private land or in connection with privately-owned vehicles, simply because those private properties are listed in a database. Cf. Tam, 137 S.Ct. at 1760 (“For if the registration of trademarks constituted government speech, other systems of government registration could easily be characterized in the same way.“). As the government recognized, such a suppression of speech would raise serious concerns under the unconstitutional conditions doctrine. See Oral Arg. at 29:56-30:34 (“The key difference there is the application of the unconstitutional conditions doctrine, which is the significant constraint on the government‘s ability to abuse its power over something like a land registry to influence speech outside a program.“). The government fails to articulate a reason why the government‘s listing of registered trademarks in a database creates a limited public forum. And if it did then every government registration program including titles to land, registration of cars, registration of wills or estates, copyrights, even marriage licenses could similarly implicate a limited public forum. We thus conclude that government registration of trademarks does not create a limited public forum in which the government can more freely restrict speech.
3. The Prohibition on the Registration of Immoral or Scandalous Trademarks Targets the Expressive Content of Speech and Therefore Strict Scrutiny Should Be Applied
Commercial speech is speech which does “no more than propose a commercial transaction.” Va. State Bd. of Pharmacy v. Va. Citizens Consumer Council, Inc., 425 U.S. 748, 762 (1976) (citation omitted). Trademarks certainly convey a commercial message, but not exclusively so. There is no doubt that trade-
The test used by the PTO to prohibit immoral or scandalous marks is whether a “substantial composite of the general public”3 would find the mark “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . or calling out for condemnation.” Fox, 702 F.3d at 665. There can be no question that the immoral or scandalous prohibition targets the expressive components of the speech. As in this case, the agency often justifies its rejection of marks on the grounds that they convey offensive ideas. J.A. 8-9 (explaining that Mr. Brunetti‘s use of his trademark is scandalous because his mark “objectifies women and offers degrading examples of extreme misogyny” and contains a theme “of extreme nihilism” with “anti-social imagery” and is “lacking in taste“). These are each value judgments about the expressive message behind the trademark. Whether marks comprise immoral or scandalous subject matter hinges on the expressive, not source-identifying, nature of trademarks.
While different provisions of the Lanham Act may appropriately be classified as targeting a mark‘s source-identifying information—for example, § 2(e)‘s bar on registering marks that are “merely descriptive” or “geographically descriptive“—the immoral or scandalous provision targets a mark‘s expressive message, which is separate and distinct from the commercial purpose of a mark as a source identifier. Justice Kennedy explained in his concurrence: “The central purpose of trademark registration is to facilitate source identification. . . . Whether a mark is disparaging bears no plausible relation to that goal.” 137 S.Ct. at 1768 (Kennedy, J.). We find the same logic applies to the immoral or scandalous prohibition. As in the case of disparaging marks, the PTO‘s rejections under § 2(a)‘s bar on immoral or scandalous marks are necessarily based in the government‘s belief that the rejected mark conveys an expressive message—namely, a message that is scandalous or offensive to a substantial composite of the general population. See Tam, 808 F.3d at 1338. Section 2(a) regulates the expressive components of speech, not the commercial components of speech, and as such it should be subject to strict scrutiny. See Sorrell v. IMS Health Inc., 564 U.S. 552, 565, 131 S.Ct. 2653, 180 L.Ed.2d 544 (2011). There is no dispute that § 2(a)‘s bar on the registration of immoral or scandalous marks is unconstitutional if strict scrutiny applies.
Section 2(a)‘s bar on the registration of immoral or scandalous marks is unconstitutional even if treated as a regulation of purely commercial speech reviewed according to the intermediate scrutiny framework established in Central Hudson, 447 U.S. at 566, 100 S.Ct. 2343. Intermediate scrutiny requires that “the State must show at least that the statute directly advances a substantial governmental interest and that the measure is drawn to achieve that interest.” Sorrell, 564 U.S. at 572, 131 S.Ct. 2653.
Commercial speech is subject to a four-part test which asks whether (1) the speech concerns lawful activity and is not misleading; (2) the asserted government interest is substantial; (3) the regulation directly advances that government interest; and (4) whether the regulation is “not more extensive than necessary to serve that interest.” Central Hudson, 447 U.S. at 566, 100 S.Ct. 2343; see also Bd. of Trs. of State Univ. of N.Y. v. Fox, 492 U.S. 469, 479-80, 109 S.Ct. 3028, 106 L.Ed.2d 388 (1989) (explaining the fourth prong of Central Hudson requires “not necessarily the least restrictive means but ... a means narrowly tailored to achieve the desired objective“). “Under a commercial speech inquiry, it is the State‘s burden to justify its content-based law as consistent with the First Amendment.” Sorrell, 564 U.S. at 565, 131 S.Ct. 2653.
The immoral or scandalous provision clearly meets the first prong of the Central Hudson test, which requires we first confirm the speech “concern lawful activity and not be misleading.” 447 U.S. at 566, 100 S.Ct. 2343. Section 2(a)‘s provision barring immoral or scandalous marks, like the disparagement provision, does not address misleading, deceptive, or unlawful marks. Rather it is concerned with whether a mark is offensive, scandalous, or vulgar to a substantial composite of the general public.
Central Hudson‘s second prong, requiring a substantial government interest, is not met. The only government interest related to the immoral or scandalous provision that we can discern from the government‘s briefing is its interest in “protecting public order and morality.” Gov‘t Letter Br. 15 & n.6, In re Brunetti, No. 15-1109, Docket No. 60 (Fed. Cir. July 20, 2017).4 At oral argument, the government struggled to identify the substantial interest in barring registration of trademarks comprising immoral or scandalous subject matter. The government framed its interest based on the government‘s own perception of proposed marks, including what types of marks the government would “want to promote” or “has deemed to be most suitable.” Oral Arg. at 22:35-41, 22:56-23:00. At another point, the government indicated its interest is to shield its examiners from immoral or scandalous marks: “whether or not its examiners are forced to decide whether one drawing of genitalia is confusingly similar to another drawing of genitalia.” Id. at 21:51-22:12. Ultimately, the government stated, “Congress’ primary interest is the promotion of the use of non-scandalous marks in commerce.” Id. at 23:33-42; see also id. at 25:21-32 (“Promoting commerce that doesn‘t include the use of source identifiers
First, the government does not have a substantial interest in promoting certain trademarks over others. The Supreme Court rejected the government‘s claim that trademarks are government speech. Tam, 137 S.Ct. at 1757-61. Our conclusion that trademark registration is neither a government subsidy nor a limited public forum forecloses any remaining interest the government may have in approving only marks it “has deemed to be most suitable.” Oral Arg. at 22:56-23:00; see also Tam, 137 S.Ct. at 1760-63 (plurality rejecting the government subsidy argument) (Alito, J.).
Second, Supreme Court precedent makes clear that the government‘s general interest in protecting the public from marks it deems “off-putting,” whether to protect the general public or the government itself, is not a substantial interest justifying broad suppression of speech. “[T]he fact that society may find speech offensive is not a sufficient reason for suppressing it.” Hustler Magazine, Inc. v. Falwell, 485 U.S. 46, 55, 108 S.Ct. 876, 99 L.Ed.2d 41 (1988); Bolger v. Youngs Drug Prods. Corp., 463 U.S. 60, 71, 103 S.Ct. 2875, 77 L.Ed.2d 469 (1983) (“At least where obscenity is not involved, we have consistently held that the fact that protected speech may be offensive to some does not justify its suppression.” (citation omitted)); Cohen v. California, 403 U.S. 15, 21, 91 S.Ct. 1780, 29 L.Ed.2d 284 (1971) (“[T]he mere presumed presence of unwitting listeners or viewers does not serve automatically to justify curtailing all speech capable of giving offense.“); Cox, 379 U.S. at 551 (“[C]onstitutional rights may not be denied simply because of hostility to their assertion or exercise.“). “Where the designed benefit of a content-based speech restriction is to shield the sensibilities of listeners, the general rule is that the right of expression prevails, even where no less restrictive alternative exists.” Playboy, 529 U.S. at 813, 120 S.Ct. 1878.
The Supreme Court‘s decision in Tam supports our conclusion that the government‘s interest in protecting the public from off-putting marks is an inadequate government interest for First Amendment purposes. See, e.g., 137 S.Ct. at 1764 (applying Central Hudson and rejecting the government‘s “interest in preventing speech expressing ideas that offend” because “that idea strikes at the heart of the First Amendment“) (Alito, J.). In Tam, the Court acknowledged that it is a “bedrock First Amendment principle” that “Speech may not be banned on the ground that it expresses ideas that offend.” Tam, 137 S.Ct. at 1751 (Alito, J.); see also id. at 1767 (“[T]he Court‘s cases have long prohibited the government from justifying a First Amendment burden by pointing to the offensiveness of the speech to be suppressed.“) (Kennedy, J.). Both Justice Alito‘s and Justice Kennedy‘s opinions support their conclusions that the disparagement provision is unconstitutional citing cases holding “the
While the government‘s interest in Tam related to a viewpoint-based restriction on speech, we note the cases on which the Supreme Court relied are not so limited. The cases cited in Tam are directed to speech that may be offensive, but not all involve speech that is disparaging or viewpoint discriminatory. Many involve speech that, rather than disparaging others, involved peaceful demonstrations. See, e.g., Bachellar v. Maryland, 397 U.S. 564, 566-67, 90 S.Ct. 1312, 25 L.Ed.2d 570 (1970) (peaceful Vietnam war protest carrying signs such as “Make Love not War“); Tinker v. Des Moines Indep. Cmty. Sch. Dist., 393 U.S. 503, 509-14, 89 S.Ct. 733, 21 L.Ed.2d 731 (1969) (wearing black armbands to protest Vietnam war); Cox v. Louisiana, 379 U.S. 536, 545, 550-51, 85 S.Ct. 453, 13 L.Ed.2d 471 (1965) (protesting segregation and discrimination); De Jonge v. Oregon, 299 U.S. 353, 365, 57 S.Ct. 255, 81 L.Ed. 278 (1937) (peaceful political meeting). Several other cases do not appear to involve viewpoint discrimination at all. For example, Hustler Magazine concerned a parody interview of Jerry Falwell in which the actor playing him stated his “first time” was during a drunken incestuous rendezvous with his mother in an outhouse. 485 U.S. at 48, 108 S.Ct. 876. While such a parody interview is offensive, its function as a parody does not clearly involve the expression of beliefs, ideas, or perspectives. Similarly, the ordinance at issue in Coates was not limited to restricting disparaging speech or certain viewpoints, but prohibited any conduct perceived as “annoying to persons passing by.” 402 U.S. at 611, 91 S.Ct. 1686. The Supreme Court‘s narrative that the government cannot justify restricting speech because it offends, together with its reliance on cases involving a variety of different speech restrictions, reinforce our conclusion that the government‘s interest in protecting the public from off-putting marks is not substantial.
Finally, the government does not have a substantial interest in protecting the public from scandalousness and profanities. The government attempts to justify this interest by pointing to the Supreme Court‘s decision in FCC v. Pacifica Foundation, 438 U.S. 726, 98 S.Ct. 3026, 57 L.Ed.2d 1073 (1978). In Pacifica, the Supreme Court upheld the constitutionality of the FCC‘s declaratory order determining that an afternoon radio broadcast of George Carlin‘s “Filthy Words” monologue was indecent and potentially sanctionable. Id. at 730-32, 98 S.Ct. 3026. The Court explained “references to excretory and sexual material ... surely lie at the periphery of First Amendment concern.” Id. at 742, 98 S.Ct. 3026. The Court justified the FCC‘s order, however, because radio broadcasting has “a uniquely pervasive presence in the lives of all Americans” and is “uniquely accessible to children, even
The government‘s interest in protecting the public from profane and scandalous marks is not akin to the government‘s interest in protecting children and other unsuspecting listeners from a barrage of swear words over the radio in Pacifica. A trademark is not foisted upon listeners by virtue of its being registered. Nor does registration make a scandalous mark more accessible to children. Absent any concerns that trademark registration invades a substantial privacy interest in an intolerable manner, the government‘s interest amounts to protecting everyone, including adults, from scandalous content. But even when “many adults themselves would find the material highly offensive,” adults have a First Amendment right to view and hear speech that is profane and scandalous. Playboy, 529 U.S. at 811, 120 S.Ct. 1878 (First Amendment right to view “sexually explicit adult programming or other programming that is indecent“); Sable, 492 U.S. at 115, 109 S.Ct. 2829 (“Sexual expression which is indecent but not obscene is protected by the First Amendment.“). In crafting a substantial government interest, “the government may not ‘reduce the adult population ... to ... only what is fit for children.‘” Bolger, 463 U.S. at 73, 103 S.Ct. 2875 (citation omitted); cf. Sable, 492 U.S. at 131, 109 S.Ct. 2829 (“[T]he statute‘s denial of adult access to telephone messages which are indecent but not obscene far exceeds that which is necessary to limit the access of minors to such messages ....“).
Even if we were to hold that the government has a substantial interest in protecting the public from scandalous or immoral marks, the government could not meet the third prong of Central Hudson, which requires the regulation directly advance the government‘s asserted interest. 447 U.S. at 566, 100 S.Ct. 2343. As the government has repeatedly exhorted,
Finally, no matter the government‘s interest, it cannot meet the fourth prong of Central Hudson. The PTO‘s inconsistent application of the immoral or scandalous provision creates an “uncertainty [that] undermines the likelihood that the [provision] has been carefully tailored.” See Reno, 521 U.S. at 871, 117 S.Ct. 2329. Nearly identical marks have been ap
One commentator has written that, of the forty marks containing the acronym MILF for which written records were available as of 2011, twenty marks received an office action refusing registration based on
The Trademark Trial and Appeal Board has itself noted the vague and subjective nature of the scandalous inquiry. In re In Over Our Heads, Inc., 1990 WL 354546 at *1 (“[T]he guidelines for determining whether a mark is scandalous or disparaging are somewhat vague and the determination of whether a mark is scandalous or disparaging is necessarily a highly subjective one.“). It can no doubt be a difficult task to determine public perceptions of a trademark‘s morality or immorality, offensiveness, or even vulgarity. As the Su
We conclude that the government has not presented us with a substantial government interest justifying the
5. There Is No Reasonable Definition of the Statutory Terms Scandalous and Immoral Which Would Preserve Their Constitutionality
We construe statutes narrowly to preserve their constitutionality, when possible. See Schneider v. Smith, 390 U.S. 17, 26, 88 S.Ct. 682, 19 L.Ed.2d 799 (1968). However, “[t]he infringement of First Amendment rights will not be cured if the narrowing construction is so unforeseeable that men of common intelligence could not have realized the law‘s limited scope at the only relevant time, when their acts were committed, or if the law remains excessively sweeping even as narrowed.” Gregory v. City of Chi., 394 U.S. 111, 121, 89 S.Ct. 946, 22 L.Ed.2d 134 (1969) (citations omitted). Our duty to avoid constitutional questions “is not a license for the judiciary to rewrite language enacted by the legislature. Any other conclusion, while purporting to be an exercise in judicial restraint, would trench upon the legislative powers vested in Congress.” United States v. Albertini, 472 U.S. 675, 680, 105 S.Ct. 2897, 86 L.Ed.2d 536 (1985) (citations omitted). It is thus permissible to construe a statute in a manner that preserves its constitutionality only where the construction is reasonable.
The concurrence agrees that the scandalous and immoral prohibitions as construed by the government, this court, and our predecessor court are unconstitutional. This court and its predecessor have consistently defined “scandalous” as “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; giving offense to the conscience or moral feelings; or calling out for condemnation.” Fox, 702 F.3d at 635; accord McGinley, 660 F.2d at 485; Riverbank Canning Co., 95 F.2d at 328. The concurrence proposes that we “narrow the immoral-scandalous provision‘s scope to obscene marks in order to preserve its constitutionality.” Conc. Op. 5-6. While the legislature could rewrite the statute to adopt such a standard, we cannot.
It is not reasonable to construe the words immoral and scandalous as confined to obscene material. There is no dispute that an obscene mark would be scandalous or immoral; however, not all scandalous or immoral marks are obscene. All apples are fruit, but not all
The Supreme Court has made clear that the definition of obscenity for purposes of the First Amendment is “material which deals with sex in a manner appealing to prurient interest,” i.e., “material having a tendency to excite lustful thoughts.” Roth v. United States, 354 U.S. 476, 487 & n.20, 77 S.Ct. 1304, 1 L.Ed.2d 1498 (1957). This “definition does not reflect the precise meaning of ‘obscene’ as traditionally used in the English language,” and instead is limited to “obscene material ‘which deals with sex.‘” Miller v. California, 413 U.S. 15, 20 n.2, 93 S.Ct. 2607, 37 L.Ed.2d 419 (1973) (emphasis added).
Despite the concurrence‘s suggestion to the contrary, none of the dictionary definitions cited define “immoral” or “scandalous” in sexual terms.8 Immoral, Black‘s Law Dictionary (1st ed. 1891) (“Contrary to good morals; inconsistent with the rules and principles of morality which regard men as living in a community, and which are necessary for the public welfare, order, and decency.“); Immoral, Webster‘s Collegiate Dictionary (1898) (“Not moral; inconsistent with good morals; contrary to conscience or the divine law.“); Scandalous, Id. (“1. Giving offense to the conscience or moral feelings. 2. Disgraceful to reputation; opprobrious. 3. Defamatory; libellous.“); Immoral, Webster‘s Complete Dictionary (1886) (“Not moral; inconsistent rectitude; contrary to conscience or the divine law; wicked; unjust; dishonest; vicious“); Scandalous, Id. (“1. Giving offense; exciting reprobation; calling out condemnation; extremely offensive to duty or propriety” “2. Disgraceful to reputation; bringing shame or infamy; opprobrious” “3. Defamatory; libelous“).
Unlike the terms “immoral” and “scandalous,” the statutory terms at issue in the cases cited in the concurrence are by their nature limited to material “which deals with sex.” See, e.g., Brockett v. Spokane Arcades, Inc., 472 U.S. 491, 494, 105 S.Ct. 2794, 86 L.Ed.2d 394 (1985) (construing phrase “that which incites lasciviousness or lust“); Manual Enters., Inc. v. Day, 370 U.S. 478, 482-83, 82 S.Ct. 1432, 8 L.Ed.2d 639 (1962) (opinion of Harlan, J.) (“While in common usage the words have different shades of meaning, the statute since its
Conclusion
The trademark at issue is vulgar. And the government included an appendix in its briefing to the court which contains numerous highly offensive, even shocking, images and words for which individuals have sought trademark registration. Many of the marks rejected under
We hold that the bar in
REVERSED
DYK, Circuit Judge, concurring in the judgment.
The majority today strikes down as unconstitutional a century-old provision of the Lanham Act that prohibits the registration of “immoral ... or scandalous” marks.
As an initial matter, I agree with the majority that the Supreme Court‘s recent decision in Matal v. Tam, --- U.S. ---, 137 S.Ct. 1744, 198 L.Ed.2d 366 (2017), does not dictate the facial invalidity of the immoral-scandalous provision. Tam held only that the disparagement provision of the Lanham Act was unconstitutional because it was not viewpoint neutral; it did not address the immoral-scandalous provision at issue here. See id. at 1763-65 (plurality op.); id. at 1765-69 (Kennedy, J., concurring in part and concurring in the judgment). So too did the opinions reserve judgment as to the other Lanham Act provisions. Id. at 1763 n.16 (plurality op.) (“We leave open the question whether this is the appropriate framework for analyzing free speech challenges to provisions of the Lanham Act.“); id. at 1768 (Kennedy, J.) (“This case does not present the question
I think that we are obligated to construe the statute to avoid these constitutional questions. Courts must, “where possible, construe federal statutes so as ‘to avoid serious doubt of their constitutionality.‘” Stern v. Marshall, 564 U.S. 462, 477, 131 S.Ct. 2594, 180 L.Ed.2d 475 (2011) (quoting Commodity Futures Trading Comm‘n v. Schor, 478 U.S. 833, 841, 106 S.Ct. 3245, 92 L.Ed.2d 675 (1986)). A saving construction of a statute need only be “fairly possible,” and “every reasonable construction must be resorted to.” Nat‘l Fed‘n of Indep. Bus. v. Sebelius, 567 U.S. 519, 563, 132 S.Ct. 2566, 183 L.Ed.2d 450 (2012) (first quoting Crowell v. Benson, 285 U.S. 22, 62, 52 S.Ct. 285, 76 L.Ed. 598 (1932); then quoting Hooper v. California, 155 U.S. 648, 657, 15 S.Ct. 207, 39 L.Ed. 297 (1895)).
One such fairly possible reading is available to us here by limiting the clause‘s reach to obscene marks, which are not protected by the First Amendment. Where the regulation of speech is concerned, the Supreme Court has a long history of narrowing the scope of similarly worded statutes to cover only obscene speech. The most prominent examples are the federal obscenity statutes. In 1896, the Supreme Court considered an early version of these laws, which criminalized the mailing of “obscene, lewd or lascivious” materials. Swearingen v. United States, 161 U.S. 446, 450, 16 S.Ct. 562, 40 L.Ed. 765 (1896). While acknowledging that “it might be inferred that each of those epithets pointed out a distinct offense” — the familiar canon against superfluities — the Court nevertheless construed the statute narrowly to “describ[e] one and the same offense,” namely, the mailing of obscene materials. Id.
The obscenity statutes were later amended to include an even broader description of the targeted matter. Today,
As the Supreme Court has done with the obscenity statutes, here when faced with constitutional doubt as to the immoral-scandalous provision, we should adopt a narrowing construction and limit the statute to obscenity.3 As in the earlier Supreme Court cases, there is no question that the trademark statute bars registration of obscene marks. While the statute does not use the word “obscene” to define its scope, the absence of the word in my view makes a narrowing construction easier rather than more difficult, since it suggests that the drafters did not use the word “obscene” to differentiate “immoral” and “scandalous” material from obscenity.4 And the fact that the immoral-scandalous provision may appear to be broader than obscenity does not preclude our adopting a narrowing construction of the statute. Contemporary dictionaries from the period before the 1905 enactment of the provision suggest that “immoral” and “scandalous” were understood as equivalent to “obscene.” For example, “obscene” was itself listed as a synonym for “immoral.”5
Under these circumstances, we can appropriately narrow the immoral-scandalous provision‘s scope to obscene marks in order to preserve its constitutionality, and we are obligated to do so.6
* * *
The First Amendment does not protect obscene speech. E.g., United States v. Williams, 553 U.S. 285, 288, 128 S.Ct. 1830, 170 L.Ed.2d 650 (2008). Under the narrow construction I have proposed, then, the bar on the registration of obscene marks would withstand constitutional challenge. If Congress wished to expand the scope of
Because there is no suggestion that Mr. Brunetti‘s mark is obscene, however, I agree that the decision of the Trademark Trial and Appeal Board must be reversed. For these reasons, I concur in the judgment.