A New “Slant” on Pacifica? BY LEITA WALKER AND MICHAEL GIUDICESSI o paraphrase one observer: in Pacifica,” the Federal Circuit tried to Though its members diverged in their somewhere up there, George explain.6 reasoning, the Supreme Court unani- Carlin is smiling.1 Even so, there’s hope for vulgarity- mously affirmed (Justice Gorsuch took First, in June 2017, in loving true believers (a small but fierce no part in consideration or decision of TMatal v. Tam,2 the Supreme Court contingent, we imagine) that Carlin the case). struck as unconstitutional the Lan- may freely shout his seven dirty words The government raised three ham Act’s prohibition on the from the afterlife with the metaphysi- arguments in defense of the dispar- registration of “disparaging” trade- cal knowledge that, “in this electronic/ agement clause: (1) that trademarks marks, ruling that “[s]peech may Internet age,” Federal Communica- are a form of government speech, not be banned on the ground that it tions Commission (FCC) licensees rendering the First Amendment inap- expresses ideas that offend.” may broadcast them without fear or plicable, (2) that they are a form of Then, in December 2017, the Fed- sanction. government subsidy, and the gov- eral Circuit decided In re Brunetti,3 The hope stems in part from Asso- ernment is not required to subsidize striking a similar prohibition barring ciate Justice Ruth Bader Ginsburg’s activities it does not wish to pro- registration of “immoral” or “scandal- public statement that Pacifica “was mote, and (3) that a new test—a ous” marks—terms the court held wrong when it issued” and should be “government-program” doctrine— were synonymous with “vulgar.” Bru- revisited given “[t]ime, technologi- should apply.8 The Court unanimously netti held the government lacked a cal advances,” and recent rulings of rejected the first argument, stating substantial interest in “suppressing the FCC.7 Further, the sweeping, pro- that the government does not “dream speech because it is off-putting.” Even speech declarations Tam and Brunetti up” these marks, “edit” them, or (out- if it had such an interest, the court relied on to invalidate prohibitions on side of § 1052(a)) inquire into “whether quipped, “[i]n this electronic/Internet the registration of disparaging and any viewpoint conveyed by a mark is age . it has completely failed.” immoral and scandalous (i.e., vulgar) consistent with Government policy Actually, what Carlin would say— trademarks stand irreconcilable with or . that expressed by other marks” and, in fact did say, mercilessly and Pacifica and its ruling that the FCC already registered.9 “If the federal reg- with bug-eyes—is, “There is no ‘up can regulate speech that, though not istration of a trademark makes the there’ for people to be smiling down obscene, is “indecent.” mark government speech,” the Court from.”4 said, “the Federal Government is bab- Moreover, he might point out I. Background on Recent Lanham Act bling prodigiously and incoherently.”10 that, while making these modernday Decisions Only four justices—Alito, Thomas, assessments of values and effec- Breyer, and Chief Justice Roberts— tiveness, Brunetti also attempted to A. Matal v. Tam considered (and went on to reject) the distinguish FCC v. Pacifica Foun- Tam arose after Simon Tam, lead government’s other two arguments. dation5—the case arising out of an singer of the rock group “The Slants,” These justices also considered the afternoon radio broadcast of Carlin’s sought federal registration of his argument that trademarks are com- “Filthy Words” monologue. “The gov- band’s name—which he said he had mercial speech and thus subject to the ernment’s interest in protecting the adopted to “reclaim” the term and relaxed scrutiny outlined in Central public from profane and scandalous drain its denigrating force as a deroga- Hudson Gas & Elec. Corp. v. Public marks is not akin to the government’s tory term for Asians. Serv. Comm’n of N.Y. 11 They con- interest in protecting children and The Patent and Trademark Office cluded, however, that they did not other unsuspecting listeners from a (PTO) denied Tam’s application under need to resolve this debate because barrage of swear words over the radio 15 U.S.C. § 1052(a), which prohibits the disparagement clause could not the registration of trademarks that withstand even Central Hudson inter- may “disparage . or bring . into mediate review. Leita Walker is a partner in Faegre Baker contemp[t] or disrepute” any “persons, The remaining justices—Ken- Daniels LLP’s Minneapolis office, and living or dead.” After Tam unsuccess- nedy, Ginsburg, Sotomayor, and Michael Giudicessi is a partner in the firm’s fully contested the denial before the Kagan—found no reason to wade Des Moines office. Both practice media PTO’s Trademark Trial and Appeal into these issues, concluding instead law. Opinions expressed here are theirs Board (TTAB), he took his case to that because the Court had unani- and not their partners’, but they note those the Federal Circuit, which found the mously held § 1052(a) constituted partners who disagree can take a flying leap disparagement clause facially uncon- viewpoint discrimination, heightened at the moon. stitutional under the First Amendment. scrutiny applied and was not satisfied. 6 n Communications Lawyer n Winter 2018 Justice Thomas also wrote separately. not assert that the clause could sur- made on the logic of Pacifica. The Although he agreed that the dispar- vive strict scrutiny review. Rather, recent Lanham Act decisions, how- agement clause could not survive refining somewhat the position it ever, put the decision on even shakier Central Hudson analysis, he wrote to took in Tam, the government argued ground by suggesting that, one way express his belief that strict scrutiny that the clause did not implicate the or another, governmental regulation should apply regardless whether the First Amendment because trademark of scandalous and immoral—i.e., inde- speech was commercial.12 registration is either a government cent—content merits strict scrutiny subsidy program or a limited pub- and under that test violates the Consti- lic forum. Alternatively, it argued that tution. This article identifies two legal B. In re Brunetti trademarks are commercial speech strategies that emerge from those Tam did not address another pro- implicating only Central Hudson decisions. hibition in § 1052(a)—namely, one review.14 The court rejected all these barring registration of marks that “con- arguments, concluding that strict scru- sist[] of or comprise[] immoral . or tiny applied and that the scandalous A. Strategy No. 1: Arguing That the scandalous matter.” However, after clause could not survive intermediate FCC’s Indecency Regime Discriminates Tam, many predicted the demise of scrutiny, anyway. Based on Viewpoint this clause, as well. And, indeed, six In Tam, Kennedy, Ginsburg, Soto- months after Tam, the Federal Circuit II. Discussion mayor, and Kagan were steadfast that struck down the scandalous clause as In Pacifica, the Supreme Court con- strict scrutiny is automatic anytime unconstitutional. cluded nearly 40 years ago that the there is viewpoint discrimination,19 At issue in Brunetti was an attempt First Amendment permitted the FCC and in his separate concurrence to register the trademark “FUCT” for to “channel” broadcasting of indecent Thomas expressed his belief that use on clothing. The TTAB affirmed speech to the late-night hours. In so “when the government seeks to the PTO’s refusal to register the mark holding, the Court did not apply either restrict truthful speech in order to under the scandalous clause. On strict or intermediate scrutiny, though suppress the ideas it conveys, strict appeal, the Federal Circuit agreed that it acknowledged that the “Commis- scrutiny is appropriate, whether or not the FUCT mark was vulgar and there- sion’s objections to the broadcast were the speech in question may be charac- fore immoral and scandalous but based in part on its content” and that terized as ‘commercial.’”20 Meanwhile, concluded that the bar on registra- “the fact that society may find speech Alito, joined by Thomas, Breyer, and tion of such marks violated the First offensive is not a sufficient reason for Roberts acknowledged the possibility Amendment. suppressing it.”15 that Central Hudson’s intermedi- Because the meanings of “vulgar,” Instead, it engaged in a contextual ate scrutiny might apply, but only “immoral,” and “scandalous” are similar analysis, concluding that the FCC’s because trademarks have a commer- to, and perhaps synonymous with, the order was justified on two grounds. cial component.21 meaning of the FCC buzzword “inde- “First,” the Court said, “the broadcast Unlike trademarks, the speech tar- cent,” it is worth examining how the media have established a uniquely geted by the FCC’s indecency regime Federal Circuit defined these words. pervasive presence in the lives of all is purely expressive. Thus, it seems a The court began with the undisputed Americans,” meaning that when inde- foregone conclusion that strict scru- point that the word “fuck” is vulgar cent material is broadcast it “confronts tiny would apply if the FCC’s indecency and quickly concluded that FUCT, the citizen, not only in public, but also regime is deemed viewpoint based. the phonetic twin of “fucked,” is also in the privacy of the home, where So, is a ban on dirty words view- vulgar. It then went on to hold that the individuals’ right to be left alone point discrimination? The Federal a vulgar mark