throbber
No. 18-302
`
`IN THE
`
`d
`
`Supreme Court of the United States
`
`ANDREI IANCU, UNDER SECRETARY OF COMMERCE
`FOR INTELLECTUAL PROPERTY AND DIRECTOR,
`UNITED STATES PATENT AND TRADEMARK OFFICE,
`
`—v.—
`
`ERIK BRUNETTI,
`
`Petitioner,
`
`Respondent.
`
`ON WRIT OF CERTIORARI TO THE UNITED STATES
`COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`BRIEF AMICI CURIAE OF
`THE AMERICAN CIVIL LIBERTIES UNION AND
`THE ACLU OF THE DISTRICT OF COLUMBIA,
`IN SUPPORT OF RESPONDENT
`
`Arthur B. Spitzer
`AMERICAN CIVIL LIBERTIES
`UNION OF THE DISTRICT
`OF COLUMBIA
`915 15th Street, NW, 2nd Floor
`Washington, DC 20005
`
`David D. Cole
`Counsel of Record
`AMERICAN CIVIL LIBERTIES
`UNION FOUNDATION
`915 15th Street, NW
`Washington, DC 20005
`(202) 675-2330
`dcole@aclu.org
`
`Emerson Sykes
`Vera Eidelman
`Esha Bhandari
`Jennesa Calvo-Friedman
`AMERICAN CIVIL LIBERTIES
`UNION FOUNDATION
`125 Broad Street
`New York, NY 10004
`
`

`

`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ....................................... ii
`
`INTERESTS OF AMICI CURIAE ............................. 1
`
`SUMMARY OF ARGUMENT .................................... 2
`
`ARGUMENT ............................................................... 5
`
`I.
`
`II.
`
`THE LANHAM ACT’S PROHIBITION
`ON REGISTERING TRADEMARKS THAT
`INCLUDE “IMMORAL …OR SCANDALOUS
`MATTER” IS VIEWPOINT-BASED
`DISCRIMINATION IN VIOLATION OF
`THE FIRST AMENDMENT. ........................... 5
`
`THE GOVERNMENT’S ATTEMPT TO
`NARROW THE SCANDALOUS-MARKS
`PROVISION TO PROHIBIT ONLY VULGAR
`MARKS CANNOT SAVE IT. ........................... 7
`
`III. EVEN IF THE SCANDALOUS-
`MARKS PROVISION WERE DEEMED
`VIEWPOINT-NEUTRAL, IT COULD NOT
`PASS CONSTITUTIONAL MUSTER. .......... 11
`
`IV. THE SCANDALOUS-MARKS PROVISION
`IS UNCONSTITUTIONALLY VAGUE. ....... 16
`
`V.
`
`INVALIDATING THE SCANDALOUS-
`MARKS PROVISION WOULD BRING
`TRADEMARK LAW IN LINE WITH
`COPYRIGHT AND PATENT LAW,
`WHERE VIEWPOINT-BASED
`“MORALITY” JUDGMENTS PLAY
`NO ROLE. ...................................................... 21
`
`CONCLUSION .......................................................... 23
`
`
`
`i
`
`

`

`TABLE OF AUTHORITIES
`
`CASES
`
`Agency for Int’l Dev. v. All. for Open Soc’y Int’l, Inc.,
`570 U.S. 205 (2013) ............................................... 14
`
`Belcher v. Tarbox, 486 F.2d 1087 (9th Cir. 1973) .... 22
`
`Bethel Sch. Dist. No. 403 v. Fraser,
`478 U.S. 675 (1986) ........................................... 9, 10
`
`Bleistein v. Donaldson Lithographing Co.,
`188 U.S. 239 (1903) ............................................... 22
`
`Central Hudson Gas & Elec. Corp. v. Public Serv.
`Comm’n, 447 U.S. 557 (1980) ................................ 15
`
`Christian Legal Soc’y Chapter of the Univ. of Cal.
`Hastings Coll. of the Law v. Martinez,
`561 U.S. 661 (2010) ......................................... 13, 14
`
`City of Renton v. Playtime Theatres, Inc.,
`475 U.S. 41 (1986) ................................................. 10
`
`Cohen v. California, 403 U.S. 15 (1971) ............ passim
`
`Ex parte Murphy,
`200 U.S.P.Q. (BNA) 801 (1977) ............................. 21
`
`FCC v. Pacifica Foundation,
`438 U.S. 726 (1978). ............................................ 7, 9
`
`Grayned v. City of Rockford, 408 U.S. 104 (1972) ... 16
`
`In Re Red Bull Gmbh,
`78 U.S.P.Q.2d 1375 (T.T.A.B. 2006) ....................... 6
`
`In re Riverbank Canning Co.,
`95 F.2d 327 (C.C.P.A. 1938) .................................... 6
`
`In Re Tinseltown, Inc.,
`212 U.S.P.Q. (BNA) 863 (T.T.A.B. 1981) ................ 6
`
`ii
`
`

`

`Keyishian v. Bd. of Regents,
`385 U.S. 589 (1967) ............................................... 16
`
`Matal v. Tam, 137 S. Ct. 1744 (2017) ............... passim
`
`Miller v. California, 413 U.S. 15 (1973) ................... 10
`
`Mitchell Bros. Film Grp. v. Cinema Adult Theater,
`604 F.2d 852 (5th Cir. 1979) ........................... 21, 22
`
`Perry Educ. Ass’n v. Perry Local Educators’ Ass’n,
`460 U.S. 37 (1983) ................................................. 11
`
`Police Dep’t of Chicago v. Mosley,
`408 U.S. 92 (1972) ................................................. 11
`
`R. A. V. v. City of St. Paul,
`505 U.S. 377 (1992) ........................................... 8, 11
`
`Regan v. Taxation With Representation of Wash.,
`461 U.S. 540 (1983) ............................................... 14
`
`Reno v. American Civil Liberties Union,
`521 U.S. 844 (1997) ......................................... 12, 16
`
`Rust v. Sullivan, 500 U.S. 173 (1991) ...................... 14
`
`Texas v. Johnson, 491 U.S. 397 (1989) ................. 2, 12
`
`Thomas v. Union Carbide Agric. Prods. Co.,
`473 U.S. 568 (1985) ............................................... 17
`
`Widmar v. Vincent, 454 U.S. 263 (1981) .................. 14
`
`Ysursa v. Pocatello Educ. Ass’n,
`555 U.S. 353 (2009) ............................................... 14
`
`CONSTITUTION & STATUTES
`
`U.S. Const. amend. I .......................................... passim
`
`15 U.S.C. § 1052(a) ............................................ passim
`
`
`
`iii
`
`

`

`OTHER AUTHORITIES
`
`Jean M. Twenge, Hannah VanLandingham, & W.
`Keith Campbell, The Seven Words You Can Never
`Say on Television: Increases in the Use of Swear
`Words in American Books, 1950–2008, SAGE Open
`(2017), https://journals.sagepub.com/doi/
`pdf/10.1177/2158244017723689 ............................ 20
`
`Merriam-Webster Dictionary, occupy,
`https://www.merriam-webster.com/dictionary/
`occupy (last visited Mar. 19, 2019) ....................... 20
`
`Trademark Manual of Examining Procedure (TMEP)
`(Oct. 2018) ............................................. 6, 16, 17, 19
`
`
`
`
`
`
`
`
`
`iv
`
`

`

`INTERESTS OF AMICI CURIAE
`
`The American Civil Liberties Union (“ACLU”)
`is a nationwide, nonprofit, nonpartisan organization
`with nearly 2 million members and supporters
`dedicated to the principles of liberty and equality
`embodied in our nation’s Constitution and civil rights
`laws. Since its founding in 1920, the ACLU has
`frequently appeared before this Court in First
`Amendment cases, both as counsel of record and as
`amicus curiae. To preserve the principle of viewpoint
`neutrality, the ACLU and
`its affiliates have
`appeared in many cases throughout the country.
`Accordingly, the proper resolution of this case is a
`matter of substantial interest to the ACLU and its
`members. The American Civil Liberties Union of the
`District of Columbia is an affiliate of the national
`ACLU.1
`
`
`
`
`
`
`1 Letters of consent to the filing of this brief have been
`lodged with the Clerk of the Court. Pursuant to Supreme Court
`Rule 37.6, counsel for amici state that no counsel for any party
`authored this brief in whole or in part, and no person or entity
`other than amici made a monetary contribution intended to
`fund preparation or submission of this brief.
`
`1
`
`

`

`SUMMARY OF ARGUMENT
`
`this Court
`two years ago,
`than
`Less
`
`unanimously held that the Lanham Act’s registration
`scheme constitutes government regulation of private
`speech, and that the government therefore cannot
`approve or deny trademark registration requests on
`the basis of viewpoint. In Matal v. Tam, 137 S. Ct.
`1744 (2017), the Court struck down the Lanham
`Act’s “disparagement clause,” which prohibited
`registration of trademarks that may disparage
`persons, institutions, beliefs, or national symbols,
`finding that
`it
`impermissibly regulates private
`speech because the speech “expresses ideas that
`offend.” Id. at 1751 (unanimous opinion).
`
`registering
`against
`prohibition
`The
`trademarks that are deemed “immoral … or
`scandalous,” 15 U.S.C. § 1052(a)
`(hereinafter
`“Section 2(a)” or “scandalous-marks provision”), is no
`less viewpoint-based. It, too, impermissibly regulates
`private speech because the speech “expresses ideas
`that offend.” Moreover, the principle that the
`government may not regulate private expression
`because it deems it immoral or offensive is a bedrock
`foundation of the freedom of expression. Texas v.
`Johnson, 491 U.S. 397, 414 (1989). If, as this Court
`held in Cohen v. California, 403 U.S. 15 (1971), the
`First Amendment bars government officials from
`penalizing someone for wearing a jacket because
`officials considered its “Fuck the Draft” message
`offensive, so, too, the First Amendment prohibits
`officials from denying registration to Respondent’s
`“FUCT” trademark because they deem it “immoral.”
`
`In an attempt to save a statute that, read
`literally, cannot possibly survive constitutional
`
`2
`
`

`

`scrutiny, the government argues that Section 2(a)
`can be construed to prohibit “vulgar” marks, and that
`such a prohibition is viewpoint-neutral. Pet. Br. 27.
`But the government’s own enforcement of Section
`2(a) has not been limited to an assessment of
`whether a mark is “vulgar”; it has considered
`the morality of the viewpoints expressed. In this very
`case, the Trademark Trial and Appeal Board denied
`registration under the challenged provision
`in
`part because
`it determined that Respondent’s
`trademarked goods expressed
`“misogyny” and
`“extreme nihilism.” In any event, substituting
`“vulgar” for “scandalous” would not cure Section
`2(a)’s infirmity, because denying registration on that
`basis would still constitute viewpoint discrimination;
`it would simply enforce the viewpoints of the public
`that ostensibly deems a mark “vulgar.”
`
`Even if Section 2(a) is merely content-based,
`which the government does not contest, it must
`satisfy strict scrutiny. Yet the government does not
`even attempt to make the demanding showing
`required by both content- and viewpoint-based
`regulations of private speech. The government
`asserts three interests, but identifies none of them as
`“compelling,” and makes no claim
`that
`the
`scandalous-marks provision is necessary to further
`the asserted interests, the showing required by strict
`scrutiny. Indeed, the nexus between the scandalous-
`marks provision and any legitimate interest is so
`tenuous that the provision would not even satisfy
`intermediate scrutiny.
`
`Section 2(a) is also impermissibly vague. The
`scandalous-marks provision requires government
`officials to speculate about what a “substantial
`composite of the general public” would think about a
`
`3
`
`

`

`particular mark. It provides little, if any, guidance
`to trademark applicants, and therefore risks causing
`individuals and businesses to self-censor in choosing
`their marks. The provision imposes on government
`regulators the impossible task of speculating about
`what some hypothetical “composite” of the American
`public will deem immoral or offensive. And because
`this is unknowable, the standard affords those
`regulators unbridled discretion to deny registry to
`marks on the basis of rank speculation. Here, for
`example, the Trademark Trial and Appeal Board
`upheld the denial of registration for Respondent’s
`mark, “FUCT,” because, inter alia: it is a “phonetic
`equivalent” of a vulgar word; it would be used on
`clothing that has a theme of “misogyny” and
`“extreme nihilism”; and the mark’s associated
`imagery is “lacking in taste.” Pet. App. 64a. These
`are quintessentially subjective,
`ill-defined, and
`viewpoint-based determinations. Moreover,
`the
`record of Section 2(a)’s enforcement is rife with
`starkly inconsistent applications, in which the same
`words have been approved for some marks and
`rejected for others.
`
`Finally, it is indisputable that the government
`could not deny copyrights and patents to otherwise
`eligible works on the basis of a bureaucrat’s
`determination that the work was “scandalous.” The
`same ought to hold true for trademarks. Ruling that
`the
`“immoral and
`scandalous” provision
`is
`unconstitutional for the same reasons that the
`“disparagement” provision is invalid would bring
`trademark law in line with copyright and patent law,
`both of which secure intellectual property rights
`without authorizing or requiring the government to
`
`4
`
`

`

`discriminate on the basis of inescapably subjective
`content- and viewpoint-based judgments.
`
`ARGUMENT
`
`I.
`
`THE LANHAM ACT’S PROHIBITION
`ON REGISTERING TRADEMARKS THAT
`INCLUDE “IMMORAL … OR SCANDA-
`LOUS MATTER” IS VIEWPOINT-BASED
`DISCRIMINATION IN VIOLATION OF
`THE FIRST AMENDMENT.
`
`
`In Matal v. Tam, this Court unanimously held
`that “[t]rademarks are private … speech” and that
`the government cannot prohibit registration of a
`trademark on the basis that it may “disparage” any
`“persons, living or dead.” Tam, 137 S. Ct. at 1744,
`1760 (unanimous opinion). The Court reaffirmed the
`“bedrock First Amendment principle” that “[s]peech
`may not be banned on the ground that it expresses
`ideas that offend.” Id. at 1751 (unanimous opinion).
`As Justice Alito wrote, “[g]iving offense
`is a
`viewpoint.” Id. at 1763 (plurality opinion). And, in
`the words of Justice Kennedy’s concurring opinion,
`“the Government’s disapproval of a subset of
`messages it finds offensive …. is the essence of
`viewpoint discrimination.” Id. at 1766 (Kennedy, J.,
`concurring in part).
`
`That logic applies with full force to the
`scandalous-marks provision, which,
`like
`the
`disparagement clause, allows government officials to
`refuse to register trademarks they deem offensive.
`The U.S. Patent and Trademark Office (“PTO”) has
`long understood “immoral … or scandalous matter”
`to mean “shocking to the sense of truth, decency, or
`propriety; disgraceful; offensive; disreputable ….
`
`5
`
`

`

`[g]iving offense to the conscience or moral feelings …
`[or] calling out [for] condemnation.” In re Riverbank
`Canning Co., 95 F.2d 327, 328–329 (C.C.P.A. 1938);
`see also In Re Tinseltown, Inc., 212 U.S.P.Q. (BNA)
`863 (T.T.A.B. 1981) (explaining that “the issue we
`have to decide . . . is whether the mark “BULLSHIT”
`comprises matter which gives offense to the
`conscience or moral feelings or is shocking to the
`sense of decency or propriety of a substantial
`composite of the general public of the United
`States”); In Re Red Bull Gmbh, 78 U.S.P.Q.2d 1375
`(T.T.A.B. 2006) (denying registration because the
`“term ‘bullshit’ is offensive to the conscience of a
`substantial composite of
`the general public”).
`According to current PTO definitions, “disparaging”
`marks are those that might offend a particular
`person or subset of society, while “scandalous” marks
`are those that might offend “a substantial composite
`of the general public.” Id.; see also Trademark
`Manual of Examining Procedure (TMEP) (Oct. 2018)
`§§ 1203.01, 1203.03. In short, the provision targets,
`not a trademark’s subject matter, but its “immoral,”
`“offensive,” or “disgraceful” viewpoint.
`
`In enforcing the scandalous-marks provision,
`the government “is attempting to remove certain
`ideas or perspectives from a broader debate”—just as
`its enforcement of
`the disparagement clause
`did. Tam, 137 S. Ct. at 1767 (Kennedy, J., concurring
`in
`part). This
`is
`quintessential
`viewpoint
`discrimination. If the government cannot deny
`registration in order to avoid offense to a particular
`individual or group, it cannot do so to avoid offending
`the general public—or, more accurately, what some
`government official deems to be a “substantial
`composite of the general public.” As this Court
`
`6
`
`

`

`announced long ago, “[t]he fact that society may find
`speech offensive is not a sufficient reason for
`suppressing it.” FCC v. Pacifica Foundation, 438
`U.S. 726, 745 (1978).
`
`II.
`
`THE GOVERNMENT’S ATTEMPT TO
`NARROW THE SCANDALOUS-MARKS
`PROVISION TO PROHIBIT ONLY
`VULGAR MARKS CANNOT SAVE IT.
`
`The government does not even try to defend
`Section 2(a) as it has been applied by the PTO, to
`single out
`for disfavor those trademarks that
`government officials deem “immoral” or “offensive” to
`a “substantial composite of the general public.”
`Instead,
`the government argues
`that
`it
`is
`constitutional to deny registration to marks that are
`“vulgar,” a term it insists is viewpoint-neutral
`because it regulates only the “mode of express[ion].”
`Pet. Br. 27. That reading is inconsistent with the
`PTO’s long record of interpretation and application.
`And more importantly, the Court’s decision in Cohen
`v. California, 403 U.S. 15, makes clear that such a
`construction would not save the statute. Outside of
`narrowly circumscribed situations, the state has no
`business regulating the “morality” or “offensiveness”
`of private speech.
`
`As an initial matter, while the government’s
`brief in this Court characterizes the mark in this
`case as vulgar, it has made no representation that
`application of Section 2(a)’s scandalous-marks
`provision is limited to vulgar material. Here, the
`record makes clear that the government refused to
`register “FUCT” not simply as “vulgar,” but also
`because it was used in ways that the Board thought
`reflected “misogyny” and “extreme nihilism.” Pet.
`
`7
`
`

`

`App. 64a. However objectionable they may be,
`misogyny and nihilism are both viewpoints, and the
`government may not regulate private speech because
`it believes “a substantial composite of the general
`public” finds it distasteful or offensive.
`
`Moreover, even if the Court were to accept the
`government’s narrowing construction, a prohibition
`on the registration of vulgar marks would still run
`afoul of the First Amendment. The government
`argues that such a prohibition is viewpoint neutral
`because it suppresses not a viewpoint, but an
`“especially offensive mode of expression.” Pet. Br. 27–
`28 (quoting R. A. V. v. City of St. Paul, 505 U.S. 377,
`393 (1992)). But this formulation is itself ultimately
`viewpoint-based, as it targets not all speech on a
`general subject matter, but particular marks that it
`believes the public will view as offensive. It
`necessarily enforces the majority’s viewpoint in
`determining what can and cannot be registered. See
`Tam, 137 S. Ct. at 1763 (plurality opinion) (“Giving
`offense is a viewpoint.”); id. at 1766 (Kennedy, J.,
`concurring) (disapproval of “disparaging” marks is
`the “essence of viewpoint discrimination”).
`
`This Court has refused to “indulge the facile
`assumption that one can forbid particular words,”
`including the word “fuck,” “without also running a
`substantial risk of suppressing ideas in the process.”
`Cohen, 403 U.S. at 26 (holding that government
`could not punish an individual for wearing a “Fuck
`the Draft”
`jacket in a courthouse). Otherwise,
`“governments might soon seize upon the censorship
`of particular words as a convenient guise for banning
`the expression of unpopular views.” Id. In addition,
`such a prohibition would unduly
`inhibit the
`important “emotive function” of speech, id., and
`
`8
`
`

`

`would offer no limiting principle for stopping short of
`“cleans[ing] public debate to the point where it is
`grammatically palatable to the most squeamish
`among us.” Id. at 25. Turning to the word “fuck”
`itself, the Court in Cohen held that “while the
`particular four-letter word being litigated here is
`perhaps more distasteful than most others of its
`genre, it is nevertheless often true that one man’s
`vulgarity is another’s lyric.” Id. This reasoning
`forecloses the government’s arguments that limiting
`the scandalous-marks provision to prohibit only the
`registration of vulgar marks would cure
`its
`constitutional infirmity.
`
`This Court’s narrow acceptance of prohibitions
`on vulgarity
`in the specific settings of radio
`broadcasts, see Pacifica, 438 U.S. at 748, and school
`assemblies, see Bethel Sch. Dist. No. 403 v. Fraser,
`478 U.S. 675 (1986), does not alter this conclusion. In
`each case, the Court took pains to limit its holding to
`a specific context involving children, intrusions into
`the privacy of the home, or both. In FCC v. Pacifica,
`the Court expressly restricted its decision to the
`radio broadcast context, which “has received the
`most limited First Amendment protection,” both
`because it intrudes upon “the privacy of the home,
`where the individual’s right to be left alone plainly
`outweighs the First Amendment rights of an
`intruder” and because it “is uniquely accessible to
`children.” 438 U.S. at 748–49. As the court below
`held, “[t]he 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.”
`Pet. App. 37a.
`
`9
`
`

`

`Similarly, in Bethel, the Court limited its
`holding to the school setting, noting that the “rights
`of students in public school are not automatically
`coextensive with the rights of adults in other
`settings.” 478 U.S. at 682. Neither case can be read
`as justifying the regulation of offensive speech
`outside those contexts. Indeed, the Court in Bethel
`expressly distinguished Cohen by noting the limited
`rights of students. Id. at 692 n.2. And in Cohen
`itself, the Court refused to countenance similar
`restrictions on an adult’s speech on government
`property, even though the government invoked the
`“presumed presence of unwitting
`listeners or
`viewers.” 403 U.S. at 21. The Court cautioning that
`to do otherwise “would effectively empower a
`majority to silence dissidents simply as a matter of
`personal predilections.” Id.2
`
`Thus, even if the scandalous-marks provision
`could be
`rewritten
`to prohibit only vulgar
`trademarks, it would be unconstitutional.
`
`
`
`
`
`
`
`
`
`
`2 Nor are the Court’s cases addressing obscenity and sexually
`explicit entertainment zoning relevant. Obscenity is a form of
`unprotected speech. And the zoning of sexually explicit
`entertainment has turned on considerations of “secondary
`effects” rather than the perceived offensiveness of the
`expression. See, e.g., Miller v. California, 413 U.S. 15, 24 (1973)
`(obscenity); City of Renton v. Playtime Theatres, Inc., 475 U.S.
`41 (1986) (zoning of adult movie theaters).
`
`10
`
`

`

`SCANDALOUS-
`THE
`IF
`III. EVEN
`MARKS PROVISION WERE DEEMED
`VIEWPOINT-NEUTRAL, IT COULD NOT
`PASS CONSTITUTIONAL MUSTER.
`
`The scandalous-marks provision fails First
`Amendment
`scrutiny whether
`it
`is deemed
`viewpoint-based or merely content-based. While the
`government labors mightily to characterize the
`provision as viewpoint-neutral, it does not dispute
`that the provision is content-based. Pet. Br. 19. But
`strict scrutiny applies
`to both content- and
`viewpoint-based regulations of speech. “Content-
`based regulations are presumptively invalid.” R. A.
`V. 505 U.S. at 382; see also Police Dep’t of Chicago v.
`Mosley, 408 U.S. 92, 95 (1972). “For the state to
`enforce a content-based exclusion it must show that
`its regulation is necessary to serve a compelling state
`interest and that it is narrowly drawn to achieve that
`end.” Perry Educ. Ass’n v. Perry Local Educators’
`Ass’n, 460 U.S. 37, 45 (1983). Yet remarkably, the
`government does not even argue that the scandalous-
`marks provision can survive strict scrutiny. See Pet.
`Br. 19–30.
`
`Instead, it applies only lenient scrutiny and
`asserts three
`interests that
`it maintains are
`“substantial” (and notably, not “compelling”) and are
`advanced by the provision (and again notably, not
`“necessary” to further the asserted interests). Pet.
`Br. 16. The government invokes interests in: (1)
`“protecting the sensibilities of the public,” id. at 32,
`(2) preserving “the orderly flow of commerce,” id. at
`33–34, and (3) “avoiding any appearance that the
`government approves of such marks,” id. at 34. None
`of these justifications satisfies strict scrutiny. The
`first
`and
`third
`interests
`are
`affirmatively
`
`11
`
`

`

`impermissible bases for regulating the speech of
`adults, and denying registration to scandalous marks
`is by no means “necessary” to further the second
`interest in an orderly flow of commerce.
`
`that
`first maintains
`government
`The
`“Congress has a legitimate interest in encouraging
`the use of trademarks that are appropriate for all
`audiences, including children.” Pet. Br. 33. But as
`noted above, the Court in Cohen already rejected
`limiting adult speech in public on the ground that
`children may be present. Cohen, 403 U.S. at 21. The
`government “may not reduce the adult population to
`only what is fit for children.” Reno v. American Civil
`Liberties Union, 521 U.S. 844, 875 (1997) (internal
`quotation marks and alterations omitted). As this
`Court warned in Tam, the government’s interest in
`denying registration to marks that may be offensive
`to some audiences “strikes at the heart of the First
`Amendment.” Tam, 137 S. Ct. at 1764 (plurality
`opinion). Indeed, “[i]f there is a bedrock principle
`underlying the First Amendment, it is that the
`government may not prohibit the expression of an
`idea simply because society finds the idea itself
`offensive or disagreeable.” Texas v. Johnson, 491 U.S.
`at 414. The government’s purported interest in
`“protecting the sensibilities of the public” is just
`another way of saying speech should be prohibited
`because
`society
`finds
`the
`idea
`expressed
`disagreeable.
`
`The second interest, preserving an “orderly
`flow of commerce,” may be legitimate, but the
`government has not made any showing that denying
`registration to “immoral” trademarks is the least
`restrictive means, let alone necessary, to further that
`interest. Indeed, the government makes no showing
`
`12
`
`

`

`that marks like Respondent’s have any impact
`whatsoever on the orderly flow of commerce. Such
`marks can be used without registration, yet the
`government has offered not even a single anecdote to
`show how they have disrupted commerce. And as
`shown
`in the following section, the PTO has
`registered many marks that are indistinguishable
`from marks that other PTO officials have deemed
`“scandalous”—again, without any showing that their
`registration disrupted commerce.
`
`The government’s third interest—avoiding the
`appearance that it approves of the message of
`registered trademarks—was rejected in Tam, There,
`this Court squarely held that trademarks are
`private, not government, speech, Tam, 137 S. Ct. at
`1760 (unanimous opinion), and noted that “[t]he PTO
`has made
`it clear that registration does not
`constitute approval of a mark.” Id. at 1759
`(unanimous opinion). As a result, “it is unlikely that
`more than a tiny fraction of the public has any idea
`what federal registration of a trademark means.” Id.
`
`The government seeks to evade strict scrutiny
`by invoking inapposite doctrines governing at public
`universities, government subsidies, and commercial
`speech. Pet. Br. 19–23. But none of these doctrines is
`applicable here, where the government seeks to
`regulate private speech in the general marketplace of
`ideas because it deems it immoral.
`
`First, the scandalous-marks prohibition is not
`associated with the running of a public university.
`The Court’s rulings in the public university cases are
`“shaped by the educational context in which [they]
`arise[ ] … : First Amendment rights ... must be
`analyzed in light of the special characteristics of the
`
`13
`
`

`

`school environment.” Christian Legal Soc’y Chapter
`of the Univ. of Cal. Hastings Coll. of the Law v.
`Martinez, 561 U.S. 661, 685–86 (2010) (quoting
`Widmar v. Vincent, 454 U.S. 263, 267 n. 5 (1981)
`(internal
`quotation marks
`omitted)). Those
`characteristics are not present here, where the
`government seeks
`to regulate private speech
`irrespective of where it is expressed.
`
`Second, as four Justices agreed in Tam, the
`government
`subsidy
`cases—including Rust v.
`Sullivan, 500 U.S. 173 (1991), Regan v. Taxation
`With Representation of Wash., 461 U.S. 540 (1983),
`and Agency for Int’l Dev. v. All. for Open Soc’y Int’l,
`Inc., 570 U.S. 205 (2013)—are also inapposite.3 “The
`federal registration of a trademark is nothing like
`the [subsidy] programs at issue in th[o]se cases.”
`Tam, 137 S. Ct. at 1761 (plurality opinion). Likewise,
`Ysursa v. Pocatello Educ. Ass’n, 555 U.S. 353 (2009)
`and Davenport v. Washington Educ. Ass’n, 551 U.S.
`177
`(2007),
`“occupy a special area of First
`Amendment case law, and they are far removed from
`the registration of trademarks.” Tam, 137 S. Ct. at
`1762 (plurality opinion).4
`
`
`3 Section III-B of Justice Alito’s decision, addressing the
`applicability of government subsidy cases to trademark
`registration, was not joined by Justice Kennedy on the ground
`that it was not necessary to resolve the issue before the Court.
`See Tam, 137 S. Ct. at 1765 (Kennedy, J., concurring in part).
`
`4 Section III-C of Justice Alito’s opinion was joined by Chief
`Justice Roberts, and Justices Thomas and Breyer. Justice
`Kennedy’s concurrence in part, which was joined by Justices
`Ginsburg, Sotomayor and Kagan, declined to address whether
`the trademark registration scheme is subject to lesser scrutiny,
`reasoning that the disparagement clause constituted viewpoint-
`discrimination and was therefore unconstitutional regardless of
`
`
`14
`
`

`

`Third, this is not a regulation of commercial
`speech, as the scandalous-marks provision regulates
`nothing commercial about the mark. See Central
`Hudson Gas & Elec. Corp. v. Public Serv. Comm’n,
`447 U.S. 557 (1980). It regulates trademarks on the
`basis of
`their perceived
`“immorality,” wholly
`unrelated to any commercial regulatory interest. See
`Tam, 137 S. Ct. at 1763 (plurality opinion). The
`commercial speech doctrine’s intermediate scrutiny
`is predicated on the government’s regulation of
`commercial transactions. Laws that do not serve that
`interest are not properly subject to commercial
`speech analysis. Thus, a law that denied registration
`to “liberal” or “conservative” marks would not be
`subject to intermediate review, even though it, too,
`would regulate marks used to sell goods. Where the
`government’s interest is not in regulating commerce,
`the commercial speech doctrine does not apply.
`
`In any event, the scandalous-marks provision
`would fail even intermediate scrutiny, because it is
`not “narrowly drawn” to serve a “substantial
`interest.” Central Hudson, 447 U.S. at 564–65.
`Justice Alito’s plurality opinion in Tam explained
`that “the disparagement clause [could not] withstand
`even Central Hudson review” because the clause is
`“far too broad” and because “[if] affixing the
`commercial label permits the suppression of any
`speech that may lead to political or social ‘volatility,’
`free speech would be endangered.” Tam, 137 S. Ct at
`1764–65 (plurality opinion).
`
`
`the level of scrutiny applied. See Tam, 137 S. Ct. at 1765–69
`(Kennedy, J., concurring in part).
`
`15
`
`

`

`IV. THE SCANDALOUS-MARKS PROVISION
`IS UNCONSTITUTIONALLY VAGUE.
`
`is also
`The scandalous-marks provision
`unconstitutionally vague. See Pet. App. 40a n.6, 41a.
`Where a law is both content-based and vague, it
`creates an “obvious chilling effect.” Reno, 521 U.S. at
`871–72. That is plainly the case here.
`
` This Court has examined statutes that vest
`unbridled discretion to regulate speech under both
`the First Amendment and the Due Process Clause.
`“It is a basic principle of due process that an
`enactment is void for vagueness if its prohibitions are
`not clearly defined.” Grayned v. City of Rockford, 408
`U.S. 104, 108 (1972). The requirement of clarity is
`especially stringent when a law interferes with First
`Amendment rights. See Keyishian v. Bd. of Regents,
`385 U.S. 589, 604 (1967). The Constitution requires
`the government to define restrictions on speech with
`clarity both to ensure procedural fairness and to
`avoid chilling speech.
`
`Section 2(a) provides little practical guidance
`to the PTO as to the meaning of “scandalous,” or
`“immoral,” leading to a

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