Amicus Curiae Brief — Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office, Petitioner v. Erik Brunetti

No. 18-302

In the

Supreme Court of the United States

_________________________

ANDREI IANCU, UNDER SECRETARY OF COMMERCE

FOR INTELLECTUAL PROPERTY AND DIRECTOR,

UNITED STATES PATENT AND TRADEMARK OFFICE,

Petitioner,

V.

ERIK BRUNETTI,

Respondent.

_________________________

On Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit

_________________________

BRIEF OF AMICUS CURIAE SIMON TAM

IN SUPPORT OF RESPONDENT

_________________________

STUART BANNER

Counsel of Record

UCLA School of Law

Supreme Court Clinic

405 Hilgard Ave.

Los Angeles, CA 90095

(310) 206-8506

banner@law.ucla.edu

i

TABLE OF CONTENTS

TABLE OF AUTHORITIES ...................................... ii

INTEREST OF AMICUS CURIAE ............................ 1

SUMMARY OF ARGUMENT..................................... 1

ARGUMENT .............................................................. 2

The ban on registering immoral trademarks

is the last vestige of a Victorian legal culture

in which government officials routinely restricted speech to promote morality. ......................... 2

A. When Congress banned the registration

of immoral trademarks, there were many

other areas of law in which judges and

other officials restricted speech they considered immoral. ................................................... 3

1. Copyright ........................................................... 3

2. The Comstock laws ........................................... 6

3. Film censorship ................................................. 8

B. The Lanham Act’s “immoral … or scandalous” clause is the last remnant of federal law authorizing the restriction of

immoral but non-obscene speech. ...................... 10

C. The only interest advanced by the ban on

registering immoral trademarks is the

now-impermissible Victorian aim of insulating the public from offensive speech. ............. 11

CONCLUSION ......................................................... 13

ii

TABLE OF AUTHORITIES

Barnes v. Miner, 122 F. 480 (C.C.S.D.N.Y.

1903) ........................................................................ 5

Bleistein v. Donaldson Lithographing Co.,

188 U.S. 239 (1903) ................................................. 6

Block v. City of Chicago, 87 N.E. 1011 (Ill.

1909) .................................................................... 8, 9

Broder v. Zeno Mauvais Music Co., 88 F. 74

(C.C.N.D. Cal. 1898) ................................................ 4

Carey v. Population Servs., Int’l, 431 U.S.

678 (1977) .............................................................. 11

Forsyth Cty. v. Nationalist Movement, 505

U.S. 123 (1992) ...................................................... 12

Hallmark Prods., Inc. v. Carroll, 121 A.2d

584 (Pa. 1956) .......................................................... 9

Hamling v. United States, 418 U.S. 87

(1974) ..................................................................... 10

Hoffman v. Le Traunik, 209 F. 375 (N.D.N.Y.

1913) ........................................................................ 5

Joseph Burstyn, Inc. v. Wilson, 343 U.S. 495

(1952) ....................................................................... 9

Keene v. Kimball, 82 Mass. 545 (1860) ...................... 5

Manual Enters., Inc. v. Day, 370 U.S. 478

(1962) ..................................................................... 10

Martinetti v. Maguire, 16 F. Cas. 920 (C.C.D.

Cal. 1867) ................................................................. 4

Matal v. Tam, 137 S. Ct. 1744 (2017) .................. 1, 12

Message Photo-Play Co. v. Bell, 166 N.Y.S.

338 (N.Y. App. Div. 1917) ....................................... 9

Miller v. California, 413 U.S. 15 (1973) .................. 11

Mitchell Bros. Film Grp. v. Cinema Adult

Theater, 604 F.2d 852 (5th Cir. 1979) .................... 5

Mutual Film Corp. v. Industrial Comm’n,

236 U.S. 230 (1915) ................................................. 8

iii

People v. Muller, 96 N.Y. 408 (1884) ......................... 7

Roth v. United States, 354 U.S. 476 (1957) ............. 11

Shook v. Daly, 49 How. Pr. 366 (N.Y. Ct.

Comm. Pleas 1875) .................................................. 5

Snyder v. Phelps, 562 U.S. 443 (2011) ..................... 12

Texas v. Johnson, 491 U.S. 397 (1989) .................... 12

United States v. 12 200-Ft. Reels of Super

8MM. Film, 413 U.S. 123 (1973) ........................... 10

United States v. 31 Photographs, 156 F.

Supp. 350 (S.D.N.Y. 1957) .................................... 10

United States v. Bennett, 24 F. Cas. 1093

(C.C.S.D.N.Y. 1879) ................................................. 7

United States v. Britton, 17 F. 731 (S.D. Ohio

1883) ........................................................................ 7

United States v. Clarke, 38 F. 732 (E.D. Mo.

1889) ........................................................................ 7

18 U.S.C. § 1461 ....................................................... 10

18 U.S.C. § 1465 ....................................................... 10

Comstock Laws:

17 Stat. 302 (1872) .................................................. 6

17 Stat. 598 (1873) .................................................. 6

Trademark Act of 1905, Pub. L. No. 58-84, 33

Stat. 724 (1905) ....................................................... 2

Samantha Barbas, How the Movies Became

Speech, 64 Rutgers L. Rev. 665 (2012) ................... 9

William Henry Browne, A Treatise on the

Law of Trade-Marks (1873) .................................... 2

Easton S. Drone, A Treatise on the Law of

Property in Intellectual Productions (1879) ........... 3

iv

Lawrence M. Friedman, Human Rights,

Freedom of Expression, and the Rise of the

Silver Screen, 43 Hofstra L. Rev. 1 (2014) ............. 8

E.H. Heywood, Cupid’s Yokes (1876) ......................... 6

Harry D. Nims, The Law of Unfair

Competition and Trade-Marks (2d ed.

1917) ........................................................................ 2

David M. Rabban, Free Speech in Its

Forgotten Years (1997) ............................................ 6

Joseph Story, Commentaries on Equity

Jurisprudence (Isaac F. Redfield ed., 10th

ed. 1870) ................................................................... 3

Amy Werbel, Lust on Trial: Censorship and

the Rise of American Obscenity in the Age of

Anthony Comstock (2018) ........................................ 6

1

INTEREST OF AMICUS CURIAE 1

Amicus Simon Tam is a musician, lecturer, and

political activist. He is the founder of The Slants

Foundation, a nonprofit organization dedicated to

supporting the work of artists-activists. Tam was the

respondent in Matal v. Tam, 137 S. Ct. 1744 (2017),

thanks to which the name of his band—The Slants—

is now a registered trademark. He has an interest in

supporting the civil rights of members of marginalized communities, many of whom, like Tam, use

trademarks as a means of expression.

SUMMARY OF ARGUMENT

The ban on registering “immoral” or “scandalous”

trademarks is a relic of the Victorian era, when

judges and other government officials were often enlisted to scrub public discourse of anything that

might offend the most prudish sensibilities. Like the

copyright law (which at the time also denied protection to ostensibly immoral works), the Comstock

laws, and the early film censorship schemes, the ban

on registering immoral trademarks was part of a

world in which the government routinely restricted

speech that government officials deemed to be immoral.

Needless to say, that world is long gone. We recognized long ago that Americans hold extremely diverse views of what is moral and what is not, and

1 No counsel for a party authored this brief in whole or in part,

and no person other than amicus and his counsel made a monetary contribution intended to fund the preparation or submission of this brief. The parties have consented to the filing of this

amicus brief.

2

that government officials have no business restricting non-obscene speech to enforce one view of morality over another. Today, the “immoral … or scandalous” clause of the Lanham Act is a holdover from another age.

ARGUMENT

The ban on registering immoral trademarks is the last vestige of a Victorian legal culture in which government officials

routinely restricted speech to promote

morality.

Before the enactment of the Trademark Act of

1905, trademarks were governed by common law,

under which an immoral mark was ineligible for protection. As one of the earliest American trademark

treatises observed, “[t]o be a ‘lawful trade-mark’ the

emblem must not transgress the rules of morality.”

William Henry Browne, A Treatise on the Law of

Trade-Marks 465 (1873). This ban on immoral

trademarks was incorporated in the Trademark Act

of 1905, which required the Patent Office (as it was

then called) to refuse registration to any mark that

“[c]onsists of or comprises immoral or scandalous

matter.” Pub. L. No. 58-84, § 5(a), 33 Stat. 724, 725

(1905). See Harry D. Nims, The Law of Unfair Competition and Trade-Marks 384 (2d ed. 1917) (“The

provision of the United States statute excluding from

registration marks that are scandalous or immoral

3

in their purport, corresponds to the common-law

rule.”). 2

At the time, there were many other areas of the

law in which judges and other government officials

were likewise enlisted to purge immorality from public discourse. In these other areas, however, public

officials are no longer called upon to perform this

role. Today, the prohibition on registering immoral

trademarks stands as an anachronistic remnant of

an era that vanished long ago.

A. When Congress banned the registration

of immoral trademarks, there were many

other areas of law in which judges and

other officials restricted speech they

considered immoral.

Trademark law circa 1905 was typical of the era’s

law in restricting speech to promote morality. We

will discuss three examples: copyright, the Comstock

laws, and film censorship.

1. Copyright

The most obvious analogue to trademark law was

copyright law, which likewise denied protection to

expression a court deemed immoral. See, e.g., Easton

S. Drone, A Treatise on the Law of Property in Intellectual Productions 185 (1879) (“The protection of

the [copyright] law will not be extended to a publication which is obscene, or has a positive immoral tendency.”); Joseph Story, Commentaries on Equity Ju2 The PTO has long treated “immoral” and “scandalous” as syn-

onyms, so we will do the same. Cf. Gov’t Br. 6 (also treating the

two terms as synonyms).

4

risprudence 2:124 (Isaac F. Redfield ed., 10th ed.

1870) (“no copyright can exist, consistently with

principles of public policy, in any work of a clearly

irreligious, immoral, libellous, or obscene description”).

For example, when the owner of a copyrighted

play called “The Black Crook” sued an infringer who

presented a nearly identical play called “The Black

Rook,” the court refused to enforce the copyright because the judge believed “The Black Crook” was immoral. “The principal part and attraction of the spectacle seems to be the exhibition of women in novel

dress or no dress,” he complained. Martinetti v.

Maguire, 16 F. Cas. 920, 922 (C.C.D. Cal. 1867).

“[T]he benefit of copyright is a privilege conferred by

congress,” the court declared. “In conferring this

privilege or monopoly upon authors and inventors, I

suppose that it is both proper and constitutional for

congress so to legislate, as to encourage virtue and

discourage immorality.” Id.

Similarly, in a suit alleging the infringement of a

copyrighted song entitled “Dora Dean,” the court

would not enforce the copyright because the song included this line: “She’s the hottest thing you ever

seen.” Broder v. Zeno Mauvais Music Co., 88 F. 74,

78 (C.C.N.D. Cal. 1898). The court reasoned: “It is

difficult to escape the conclusion that the word ‘hottest,’ as used in the song ‘Dora Dean,’ has an immoral signification.” Id. at 79. The court concluded that

the word “has an indelicate and vulgar meaning, and

that for that reason the song cannot be protected by

copyright.” Id.

Another court denied copyright protection to a

combined stage and film performance portraying “a

5

human being in nude or seminude conditions making

quick changes of dress or costume,” on the ground

that it was “lascivious and immoral.” Barnes v. Miner, 122 F. 480, 489 (C.C.S.D.N.Y. 1903). The performance was not “of a nature calculated to elevate,

cultivate, inform, or improve the moral or intellectual natures of the audience,” the court insisted. Id.

Because it depicted “domestic infelicity and marital

infidelity and gross immorality,” it was not entitled

to copyright. Id.

In such cases, courts earnestly believed they had a

duty to shield the public from immoral speech. “The

rights of the author are secondary to the right of the

public, to be protected from what is subversive of

good morals,” one court declared. Shook v. Daly, 49

How. Pr. 366, 368 (N.Y. Ct. Comm. Pleas 1875).

Courts thus refused “to vindicate the claims of any

party to the exclusive enjoyment or disposal of an

immoral or licentious production.” Keene v. Kimball,

82 Mass. 545, 549 (1860). It was well established

during the era that “[t]o be entitled to be copyrighted, the composition must be original, meritorious,

and free from illegality or immorality.” Hoffman v.

Le Traunik, 209 F. 375, 379 (N.D.N.Y. 1913) (internal quotation marks omitted).

It has been a very long time since copyright law

was used to police morality. By the 1970s, such decisions had long been deemed “vestiges of a bygone

era.” Mitchell Bros. Film Grp. v. Cinema Adult Theater, 604 F.2d 852, 861 (5th Cir. 1979). “[I]t is inappropriate for a court,” the Fifth Circuit concluded, to

use copyright law “to interpose its moral views between an author and his willing audience.” Id. In

stark contrast to the prim censoriousness of the Vic-

6

torians, we have come to recognize the wisdom of

Justice Holmes’s remark that it is “a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations” or indeed any other form of expression. Bleistein v. Donaldson Lithographing Co., 188

U.S. 239, 251 (1903).

2. The Comstock laws

When the ban on registering immoral trademarks

was enacted, the state and federal governments were

engaged in a similar effort to purge immoral materials from the marketplace and the mail. Under what

were colloquially known as the Comstock laws (in

honor of Anthony Comstock, their enthusiastic proponent), Congress prohibited the exhibition and sale

of any “article of an immoral nature,” 17 Stat. 598

(1873), and barred from the mail every “publication

of a vulgar or indecent character,” 17 Stat. 302

(1872). See Amy Werbel, Lust on Trial: Censorship

and the Rise of American Obscenity in the Age of Anthony Comstock (2018).

In one typical case, the early libertarian Ezra

Heywood was convicted and sentenced to two years

in prison for publishing a short pamphlet called

“Cupid’s Yokes,” in which he argued that marriage

should be abolished. David M. Rabban, Free Speech

in Its Forgotten Years 32-38 (1997). The pamphlet

consisted entirely of policy arguments and could not

have been thought, even then, to appeal to anyone’s

prurient interest. (The most heated passage is one in

which Heywood calls Comstock “a religious monomaniac” who has contrived “to use the Federal

Courts to suppress free inquiry.” E.H. Heywood, Cu-

7

pid’s Yokes 12 (1876).) The court nevertheless concluded that Heywood’s pamphlet was “offensive to

decency” and capable of causing “thoughts of an immoral tendency.” United States v. Bennett, 24 F. Cas.

1093, 1104 (C.C.S.D.N.Y. 1879).

Similar cases were common during the period. In

New York, a store clerk was convicted of selling photographs of paintings from the Salon in Paris and

the Centennial Exhibition in Philadelphia, paintings

that depicted nude women. The fact that experts

considered the paintings fine art made no difference,

in the view of the state Court of Appeals, because the

images might “deprave or corrupt those whose minds

are open to such immoral influences.” People v. Muller, 96 N.Y. 408, 411 (1884). A St. Louis physician

was convicted of placing in the mail his treatise on

venereal disease, because, as the trial court charged

the jury, the treatise included “immodest and indecent matter.” United States v. Clarke, 38 F. 732, 733

(E.D. Mo. 1889). Even those who wrote sealed personal letters were prosecuted, on the theory that the

purpose of the Comstock laws was “to purify the

mails by stopping the dissemination of immoral and

debasing matter” regardless of whether anyone but

the addressee would read it. United States v. Britton,

17 F. 731, 732 (S.D. Ohio 1883).

Such opinions seem comically puritanical today,

because our world is so different from the one inhabited by the judges and legislators of the era. In the

late 19th and early 20th centuries, however, the

managers of the legal system were committed to purifying discourse of all kinds, including trademarks.

8

3. Film censorship

As Americans began watching movies around the

turn of the 20th century, judges and legislators

placed great importance on preventing the public

from seeing any immorality on the screen. See Lawrence M. Friedman, Human Rights, Freedom of Expression, and the Rise of the Silver Screen, 43 Hofstra L. Rev. 1 (2014). Many states and cities established censorship regimes that required a government official to approve a film as moral before it

could be exhibited. See, e.g., Mutual Film Corp. v.

Industrial Comm’n, 236 U.S. 230, 240 (1915) (upholding an Ohio statute allowing the screening of

“[o]nly such films as are, in the judgment and discretion of the board of censors, of a moral, educational,

or amusing and harmless character”).

In 1907, for example, Chicago enacted an ordinance prohibiting the exhibition of “immoral pictures.” Block v. City of Chicago, 87 N.E. 1011, 1012

(Ill. 1909). Under this ordinance, the city banned the

showing of a 1908 film called “The James Boys,”

which depicted the career of the outlaw Jesse James

and his gang, who had committed a series of celebrated robberies approximately forty years earlier.

“It is true that pictures representing the career of

the ‘James Boys’ illustrate experiences connected

with the history of the country,” the Illinois Supreme

Court acknowledged in upholding the ban—“but it

does not follow that they are not immoral.” Id. at

1016. The court reasoned that “[p]ictures which attempt to exhibit that career necessarily portray exhibitions of crime.” Id. The court concluded of “The

James Boys,” along with another banned film: “They

are both immoral, and their exhibition would neces-

9

sarily be attended with evil effects upon youthful

spectators.” Id.

A few years later, New York barred the exhibition

of a film depicting the life of the birth control advocate Margaret Sanger, because the city official responsible for censoring films determined “that in his

judgment the film tends to teach immorality.” Message Photo-Play Co. v. Bell, 166 N.Y.S. 338, 341

(N.Y. App. Div. 1917). When the ban was challenged,

the court had little doubt that “the action of the

commissioner is justified, both in the interests of

public decency and public welfare,” because watching the film might cause audience members to develop an interest in using birth control. Id. at 344. “[I]t

fairly appears,” the court worried, “that the concentration of the minds of those in attendance at such a

production on this question of birth control for a considerable period of time—for the film is long—may

engender a desire to obtain the information, of the

existence of which they are thus assured.” Id.

These film censorship regimes were held unconstitutional long ago. See, e.g., Joseph Burstyn, Inc. v.

Wilson, 343 U.S. 495 (1952); Hallmark Prods., Inc. v.

Carroll, 121 A.2d 584 (Pa. 1956); see generally Samantha Barbas, How the Movies Became Speech, 64

Rutgers L. Rev. 665 (2012). But they were just getting off the ground in 1905, when Congress prohibited the registration of immoral trademarks. At the

time, regulators and courts vigilantly policed speech

of all kinds in order to prevent any sort of immorality from reaching the public.

10

B. The Lanham Act’s “immoral … or scandalous” clause is the last remnant of federal law authorizing the restriction of

immoral but non-obscene speech.

There appear to be only two other federal statutes

that, like the Lanham Act, still include text facially

authorizing government officials to restrict speech

for being immoral. These are the statutes governing

obscenity. On their face, these statutes purport to

govern immoral speech as well as obscene speech. 18

U.S.C. § 1461 bars obscene matter from the mail, as

well as “[e]very paper, writing, advertisement, or

representation … for any indecent or immoral purpose.” 18 U.S.C. § 1465 prohibits the production and

transportation of obscene material, as well as “any

other matter of indecent or immoral character.”

In these two statutes, however, the “immoral”

provisions have long been interpreted to be coextensive with the ban on obscenity. That is, for many

years it has been the case that speech cannot be restricted as immoral if it is not obscene. See, e.g.,

United States v. 31 Photographs, 156 F. Supp. 350,

352 n.2 (S.D.N.Y. 1957) (“I do not believe that the

word ‘immoral’ adds to the class of material excluded

from importation by the word ‘obscene,’ and the Government has not contended that it does.”); see also

Manual Enters., Inc. v. Day, 370 U.S. 478, 482-84

(1962) (lead opinion); United States v. 12 200-Ft.

Reels of Super 8MM. Film, 413 U.S. 123, 130 n.7

(1973); Hamling v. United States, 418 U.S. 87, 11214 (1974).

This narrowing construction has been necessary

because the Court has made clear that while obscenity is unprotected by the First Amendment, speech

11

that is not obscene is protected even if some consider

it immoral. “[W]here obscenity is not involved, we

have consistently held that the fact that protected

speech may be offensive to some does not justify its

suppression.” Carey v. Population Servs., Int’l, 431

U.S. 678, 701 (1977); see also Roth v. United States,

354 U.S. 476 (1957); Miller v. California, 413 U.S. 15

(1973). It has been well established for more than

half a century that expression “should not be suppressed merely because it offends the moral code of

the censor.” Roth, 354 U.S. at 513 (Douglas, J., dissenting).

The Lanham Act thus appears to be the only surviving federal statute ostensibly authorizing the restriction of speech for being immoral but not obscene. When Congress enacted this provision in

1905, examples of such regulation were commonplace. Today, the “immoral … or scandalous” clause

of the Lanham Act is the last one standing.

C. The only interest advanced by the ban on

registering immoral trademarks is the

now-impermissible Victorian aim of insulating the public from offensive speech.

The government’s brief demonstrates all too clearly that the only interest advanced by the “immoral

… or scandalous” clause is that of preventing members of the public from being offended by speech they

consider immoral. The government offers a few different euphemisms for this interest: “protecting the

sensibilities of the public,” Gov’t Br. 32; “encouraging

the use of trademarks that are appropriate for all

audiences,” Gov’t Br. 33; and preventing members of

the public from viewing material they find “shocking

12

to the sense of propriety,” Gov’t Br. 34 (internal quotation marks and ellipsis omitted). These all mean

the same thing—restricting speech that might offend

some people because they find it immoral.

In 1905, when this provision was enacted, the

First Amendment was an infrequent basis for litigation. First Amendment doctrine barely existed. The

government routinely restricted speech on the

ground that it might offend some people’s sense of

morality.

Today, by contrast, it is a staple of First

Amendment jurisprudence that speech may not be

restricted for the purpose of preventing listeners

from being offended. See Matal v. Tam, 137 S. Ct.

1744, 1764 (2017) (lead opinion) (rejecting the notion

that “[t]he Government has an interest in preventing

speech expressing ideas that offend”); Snyder v.

Phelps, 562 U.S. 443, 458 (2011) (“[S]peech cannot be

restricted simply because it is upsetting.”); Forsyth

Cty. v. Nationalist Movement, 505 U.S. 123, 134-35

(1992) (“Speech cannot be financially burdened, any

more than it can be punished or banned, simply

because it might offend.”); Texas v. Johnson, 491

U.S. 397, 414 (1989) (“If 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.”).

The government’s proffered interest is thus just as

anachronistic as the “immoral … or scandalous”

clause itself. It would have been a good argument in

1905, but it hasn’t been for a very long time.

13

CONCLUSION

The judgment of the U.S. Court of Appeals for the

Federal Circuit should be affirmed.

Respectfully submitted,

STUART BANNER

Counsel of Record

UCLA School of Law

Supreme Court Clinic

405 Hilgard Ave.

Los Angeles, CA 90095

(310) 206-8506

banner@law.ucla.edu