Iancu v Brunetti: A marker in the moral policing of IP, say lawyers
Lawyers have welcomed the US Supreme Court’s decision to overturn the ban on scandalous and disparaging marks, after the court found yesterday, June 24, that it violated the First Amendment of the US Constitution.
Speaking to WIPR, Marshall Schmitt, partner at Michael Best & Friedrich in Chicago, said that the ruling in Iancu v Brunetti was a “rare case where the oral argument for the most part foreshadowed the outcome”.
“During the oral argument, it was clear that the justices were struggling to grapple with drawing a line on marks that everyone acknowledged were offensive,” Schmitt said.
Megan Bannigan, counsel at Debevoise & Plimpton in New York, hailed the ruling as a “victory for the First Amendment”.
While welcoming the decision, however, Bannigan explained that future was still not entirely clear with respect to the moral policing of trademarks.
“It will be interesting to see whether the US Patent and Trademark Office (USPTO) will pursue—and whether Congress will enact—a narrower prohibition against registration of marks that are lewd, sexually explicit, or profane,” Bannigan said.
“If proposed, such legislation will need to be closely scrutinised to ensure it does not unfairly prohibit use and registration of trademarks based on someone’s inherently subjective view,” she added.
‘Mental gymnastics’
As Ted Davis, partner at Kilpatrick Townsend & Stockton in Atlanta, explained, the ruling was a “logical extension” of the court’s previous decision in Matal v Tam. Deviating from the model it outlined in that case, Davis said, would have required the court “to engage in considerable mental gymnastics”.
According to Danielle Johnson, associate at Goldberg Kohn in Chicago, the court “got this right” by overturning the ban, which she said “has resulted in many instances of viewpoint discrimination by the USPTO over the years”.
Johnson also praised the majority decision for refusing to engage in what it called “statutory surgery”, by limiting the meaning of scandalous to only refer to vulgarity, obscenity, or profanity.
Justice Sotomayor’s dissenting opinion argued that such an interpretation could be permissibly viewpoint neutral, Johnson said.
Next step, congress?
Marsha Gentner, attorney at Dykema in Washington, D.C, agreed that the USPTO may now seek legislative change following the ruling.
“There is a road map here for legislative action which I expect the USPTO will pursue–a provision that bars registration, at least, of obscene, vulgar, or profane marks,” Gentner said.
As Genter explained, the three dissenting opinions “expressly indicated [that] such a provision would withstand a First Amendment challenge”.
Echoing this view, Davis said that the dissenting opinions “undoubtedly will attract congressional attention, suggesting that the battle over the registrability of offensive marks has not yet reached a final resolution”.
While lawyers agree that there is still more work to be done in clarifying the registrability of such marks, Christopher Larus, partner at Robins Kaplan, said the Supreme Court’s ruling may have ramifications beyond just trademarks.
“This decision opens the door for challenges to similar prohibitions in the patent realm,” Larus said, explaining that: “ ...the Patent Act prohibits granting of design patents that could be deemed offensive to any race, religion, sex, ethnic group, or nationality, such as those which include caricatures or depiction.”
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