Is scandalous trademark bar unconstitutional, too?

Does the Lanham Act's scandalous clause violate the First Amendment? The scandalous clause prohibits trademark registration of expression that offends a person's conscience or moral feelings, which, as a practical matter, means no registration for pornographic or vulgar expression. At first glance, that prohibition would seem unconstitutional, especially after last year's decision in Matal v. Tam, where the U.S. Supreme Court unanimously held that the disparagement clause violated the First Amendment. The disparagement clause prohibited trademark registration for expression that was disparaging. So, if denying trademark registration for disparaging content is unconstitutional (under Tam), it would seem to follow that denying trademark registration for pornographic and vulgar content is also unconstitutional -- so goes the argument, and so held the U.S. Court of Appeals for the Federal Circuit in the recent case of In re Brunetti [ruling attached below]. I disagree.

According to Tam, the disparagement clause is viewpoint discriminatory because it targets expression that gives offense. As Justice Samuel Alito stated, "[g]iving offense is a viewpoint," and by definition, a disparaging trademark gives offense. On its face, this reasoning seems to damn the scandalous clause, for like the disparaging clause, the scandalous clause denies trademark registration for expression that gives offense (based on its pornographic or vulgar content). But this is not so. There is a difference between offense caused by disparaging marks and offense caused by pornographic or vulgar marks. The former offense stems from disagreement with the content of an idea; the latter offense stems from public visibility of an idea -- not the idea itself. Consider, for instance, the disparaging phrase "down with librarians!" Such a phrase is disparaging because the idea communicated by the content -- that librarians should be banished -- is itself the offensive proposition. By contrast, expression comprising a nude couple engaged in sexual activity does not offend because of the idea communicated by the content -- i.e., the idea of sex. The idea of sex is not offensive. Only its public display is. Or perhaps more accurately, the effects of the public display of sexual activity raises concern among a large segment of society, many of whom are parents, who -- incidentally -- support, practice and condone the idea of sex. In short, the offense caused by disparagement is distinct from the offense caused by pornography: the former offense constitutes disagreement with a proposition that content proposes; the latter offense constitutes disagreement with the effects of an expression's public visibility.

Albeit subtle, this distinction is important. To begin with, speech law gives place for restrictions that are based on the offensiveness that results from content's public display. Consider the tort of invasion of privacy. An invasion of privacy occurs where a person publicly expresses private facts about another and the public expression of those facts is highly offensive to a reasonable person. The tort restricts speech based on the offensiveness of the speech's public display. Admittedly, though, this tort does not apply where the publicly-expressed facts are matters of public concern. But that is not the case with the content that the scandalous clause restricts --pornography and vulgarity. Furthermore, the secondary-effects doctrine in speech law allows for restrictions of protected speech (which is usually pornographic) because of effects that follow from the speech's public visibility. Effects of public visibility allow for content to be restricted. Which is all to say that the law treats offense stemming from ideas in content differently than offense stemming from public visibility and effects of content. The offenses are not the same.

Why does this distinction matter? It matters because the offense for which the First Amendment provides greatest protection is the offense that follows directly from content's specific idea (not the offense the follows from content's effects). At the core of free speech is the principle that ideas must be able to compete against each other without government interference. Indeed, speech law gives heightened protection against viewpoint discrimination in order to protect the process of debate between competing ideas. Yet if content contains no debatable ideas -- if it lacks opposable views -- the process of ensuring free competition among ideas is pointless. The marketplace of ideas -- where ideas can freely compete against each other -- can only work if opposable ideas are present. Ideas must consist of content that is debatable or assertive. To be a viewpoint, content must reflect an opinion or assertion with which another speaker can disagree. Viewpoint discrimination, then, is not possible where speech lacks any viewpoint.

Scandalous content lacks any viewpoint. Pornography communicates expression for the purpose of arousing sexual stimulation. Its purpose is to cause a sexual effect on the reader -- not to propose any belief or further an opinion. See Cass Sunstein, "Pornography and the First Amendment," 1986 Duke L.J. 589, 606 ("Though comprised of words and pictures, pornography does not have the special properties that single out speech for special protection; it is more akin to a sexual aid than a communicative expression."); cf. John Fee, "The Pornographic Secondary Effects Doctrine," 60 Ala. L. Rev. 291, 314 (2009) ("[P]ornography does not typically express any concrete viewpoint (although it may be used to do so), but rather, is characterized by its sexual explicitness."). In pornography, a seeming invitation for sex is not an actual invitation; it is mere stimulation. Vulgarity, likewise, exists to evoke emotive emphasis. Although vulgar expression is often attached to a proposition, the vulgarity itself does not assert anything; it merely adds emotional force. In short, the content of pornography and vulgarity -- as distinct from the proposition to make them publicly visible -- cannot be disagreed with. They can only be perceived and experienced -- not opposed. So as sexually stimulating, emotionally provocative, or even entertaining as scandalous content may be, the content lacks an opposable idea. Scandalous content does not serve the purpose of free speech. Lacking any debatable proposition, belief, or opinion, scandalous content lacks a viewpoint. And in the absence of a viewpoint, its restriction cannot be viewpoint discriminatory.

Of course a viewpoint-neutral restriction does not mean that the restriction is constitutional. Subject-matter restrictions are also suspect. But if the scandalous clause is only subject-matter discriminatory (rather than viewpoint), its discrimination is much more likely to be justified. For starters, most other restrictions on trademark registration represent subject-matter restrictions. Consider restrictions that bar registration for marks that describe another product, that are too similar to another mark, that represent a surname, that comprise government insignia, that portray a living individual without consent, or that resemble a deceased president. See 15 U.S.C. Section 1052. These restrictions, along with the scandalous clause, must be justified under one of the more lenient speech frameworks for evaluating content-based restrictions -- limited-public forum or commercial-speech frameworks. Like these other restrictions, reasons support the restriction of scandalous speech -- i.e., protecting children from the effects of pornographic and vulgar images, or alternatively, facilitating commercial transactions among all people. Those reasons, however, are relevant only if the clause is viewpoint neutral. That is the lesson of Tam. And that is why the scandalous clause is distinct from the disparaging clause. It is viewpoint neutral.

My argument here only touches upon the main points for the scandalous clause's constitutionality. For a fuller discussion, I direct readers to my article, "Denying Trademark for Scandalous Speech," recently appearing in the UC Davis Law Review.