Scandal, Disrepute, and the Future of First Amendment Challenges to the Lanham Act

On April 15, Malcolm L. Stewart, Assistant Solicitor General of the United States, in keeping with a centuries-old tradition, wore a morning coat to argue before the Supreme Court of the United States.[1]  His role was to argue that the U.S.P.T.O. need not register the trademark of a skate brand called “FUCT.”  Over the course of the oral argument, it was clear that the United States was not having a particularly easy go of it.  Iancu v. Brunetti is an appeal by the United States from a favorable ruling for Mr. Brunetti, and his brand, FUCT.  The Federal Circuit found, as the Supreme Court seems likely to, that the restrictions on trademarks that consist of “immoral, deceptive, or scandalous matter”[2] could not stand in light of the First Amendment.  In Matal v. Tam, 137 S. Ct. 1744 (2017), the Supreme Court found that the part of the Lanham Act’s § 2(a), which barred marks which “disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute”[3] was unconstitutional.  The Court is likely to hold in Brunetti, as it did in Tam, that the restrictions in the Lanham Act are government viewpoint discrimination, and therefore impermissible under the First Amendment’s guarantee of free speech.  This follows from the government’s failure to win a majority for its position in Tam that trademark registration constituted government speech.

After Tam, the fall of the immoral and scandalous bar seemed nearly inevitable.  However, the Lanham Act’s § 2(c) contains another, somewhat less controversial, but nevertheless strange limitation on the scope of trademark.  No mark may be registered that “consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.”[4]  This provision singles out a particular type of speech that the government especially disfavors as well.  Notably, it provides a Federal protection to the families of deceased governmental figures—presidents.  In most states, rights of publicity terminate with death, and thus, a deceased president’s family has no way of preventing others from profiting off his or her likeness.[5]  While this goal is honorable, is it consistent with the Court’s recent recognition that the PTO must take care to avoid infringing on free speech rights?  The Court has not had a chance to decide.  In fact, there appear to have been no appeals from decision not to certify a mark pertaining to a deceased president since the passage of the Lanham Act.

On the side of the government, this Lanham provision appears much more closely linked to the goals of trademark law writ large.  It aims to prevent the labelling of goods in a way that misrepresents their source.  In doing so, it reduces consumer search cost and promotes fair marketplace competition.  The government need not make a value judgment about the speech, as in the case of immoral or disrepute-bringing marks.  However, it nonetheless limits a particular kind of speech.  This is speech that involves putting the likeness of a U.S. president on a product.  While this statute may have been written to provide spouses of presidents with the ability to profit from their likeness, it also gives surviving spouses veto power over the types of products which bear marks associated with a president.  The Act’s legislative history is unforthcoming on the provisions’ aims.[6]  The First Amendment clearly protects the right of the people to criticize and mock the government and those who serve in it.  As a result, § 2(c) appears to grant a small class of persons the resources of the U.S.P.T.O to push back against unflattering representations.  This provision is the only one in the Lanham Act that rests the P.T.O.’s discretion as to registration of a trademark not with that office, but with a private individual.  In doing so, it allows that individual to regulate the speech of others.  Given what the Supreme Court has already said about the restrictions on trademark registration, it may not be permissible to grant such special protection to those who happen to, at one point, possess great authority in the government. This area of the law is sleepy.  There clearly is not a great deal of commercial pressure on the deceased presidents provision of the Lanham Act.  Moreover, the act currently protects no one—no deceased president has a widow who is still alive as of this writing.  This is in contrast with the possibility of a veritable race to trademark potentially scandalous marks, posited by Justice Alito at oral argument in the Brunetti case.[7]  However, the broad First Amendment jurisprudence of the current Court elaborated in Tam is likely to be extended in Brunetti.  Consequently, in the event an unsuccessful applicant for a mark incorporating the likeness of a deceased president ever has reason to bring a suit, § 1052(c) may find itself resembling Mr. Brunetti’s mark.

Gabriel Ferrante is a J.D. candidate, 2020, at NYU School of Law.

[1] See The Court and Its Traditions, SupremeCourt.gov, https://www.supremecourt.gov/about/traditions.aspx (last visited Apr. 22, 2019).

[2] 15 U.S.C. § 1052(a) (2012).

[3] Id.

[4] Id. at 2(c).

[5] See Rich Stim, The Right of Publicity, Nolo, https://www.nolo.com/legal-encyclopedia/the-right-publicity.html (last visited Apr. 22, 2019) (noting that the states of Tennessee and California have recognized a legally descendible right of publicity).

[6] See generally S. Rep. 79-1333 (1946).

[7] Transcript of Oral Argument at 22, Iancu v. Brunetti, __ S.Ct. __ (2019) (No. 18-302).