Amicus Curiae Brief — Iancu v. Brunetti, 139 S. Ct. 782 (2019) (No. 18-302)

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No. 18-302

In the

Supreme Court of the United States

ANDREI LANCU, UNDER SECRETARY OF COMMERCE

FOR INTELLECTUAL PROPERTY AND DIRECTOR,

UNITED STATES PATENT AND TRADEMARK OFFICE,

Petitioner,

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

TABLE OF CONTENTS

TABLE OF AUTHORITIES . . ii

INTEREST OF AMICUS CURIAE .. 1

SUMMARY OF ARGUMENT. l

— ——— — 2

The ban on registering immoral trademarks

is the last vestige of a Victorian legal culture

in which government officials routinely re-

stricted 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 con-

r 3

F 3

1 T.... 6

77 TIED sniniciincccatsnnsscortenieennitannenesnniesenses 8

B. The Lanham Act’s “immoral ... or scan-

dalous” clause is the last remnant of fed-

eral 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 insu-

lating the public from offensive speech. ............. 11

— . ů ů —— 13

TABLE OF AUTHORITIES

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

— — 5

Bleistein v. Donaldson Lithographing Co.,

. 6

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

% ˙ initia dat tenaiia depratagingttiaieinsmeinses 8,9

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

r - 4

Carey v. Population Servs., Intl, 431 U.S.

rr 11

Forsyth Cty. v. Nationalist Movement, 505

K 12

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

.... ( 9

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

„ 10

Hoffman v. Le Traunik, 209 F. 375 N. D. N. V.

1 Q ——————————— 5

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

nnn dinate aitaastumverstncnenctene 9

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

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

11 10

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

nene . 4

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

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

Z 9

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

Mitchell Bros. Film Grp. v. Cinema Adult

Theater, 604 F. 2d 852 (5th Cir. 19799777 0.9᷑EE 5

Mutual Film Corp. v. Industrial Comm u,

e 8

e+.

People u. 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.

,, . 5

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

Texas v. Johnson, 491 U.S. 397 (1989999 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.

, decttceetivisecietseciiajenissscscnsss 10

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

coed Ee ̃ Ape ere ey ee 7

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

SEEPS BT ee RS TOR a BAM, OO 7

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

c 7

r 10

c A 10

Comstock Laws:

, x - 6

r oi canst iodt: i canienstebnadhiennbindiushandensid 6

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

, r 2

Samantha Barbas, How the Movies Became

Speech, 64 Rutgers L. Rev. 665 (20125 9

William Henry Browne, A Treatise on the

Law Of Trude Maris (18738) . . boese 2

Easton S. Drone, A Treatise on the Law of

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

Lawrence M. Friedman, Human Rights,

Freedom of Expression, and the Rise of the

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

E. H. Heywood, Cupid’s Yokes (1876) .

Harry D. Nims, The Law of Unfair

Competition and Trade-Marks (2d ed.

T1777 ——— 2

David M. Rabban, Free Speech in Its

r . ̃ ——.

Joseph Story, Commentaries on Equity

Jurisprudence (Isaac F. Redfield ed., 10th

%%§—ͤ—T—Vſſ———V—

Amy Werbel, Lust on Trial: Censorship and

the Rise of American Obscenity in the Age of

— FI GO vase ivcitavitccedsonesensasnnnessssexses

INTEREST OF AMICUS CURIAE!

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 marginal-

ized 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 en-

listed to scrub public discourse of anything that

might offend the most prudish sensibilities. Like the

tion 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 im-

moral.

Needless to say, that world is long gone. We rec-

ognized long ago that Americans hold extremely di-

verse views of what is moral and what is not, and

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

and no person other than amicus and his counsel made a mone-

tary contribution intended to fund the preparation or submis-

sion of this brief. The parties have consented to the filing of this

amicus brief.

that government officials have no business restrict-

ing non-obscene speech to enforce one view of moral-

ity over another. Today, the “immoral ... or scandal-

ous” clause of the Lanham Act is a holdover from an-

other age.

ARGUMENT

The ban on registering immoral trade-

marks is the last vestige of a Victorian le-

gal 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 pro-

tection. 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

ſelonsists 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 Com-

petition and Trade-Marks 384 (2d ed. 1917) (“The

provision of the United States statute excluding from

registration marks that are scandalous or immoral

in their purport, corresponds to the common-law

rule.”).?

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 pub-

lic 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 cf 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

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

S. Drone, A Treatise on the Law of Property in Intel-

lectual Productions 185 (1879) (“The protection of

the [copyright] law will not be extended to a publica-

tion which is obscene, or has a positive immoral ten-

dency.”); Joseph Story, Commentaries on Equity Ju-

* 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).

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 descrip-

tion”).

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 be-

cause the judge believed “The Black Crook” was im-

moral. “The principal part and attraction of the spec-

tacle 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, |

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 in-

cluded 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 ‘hot-

test,’ as used in the song ‘Dora Dean,’ has an immor-

al signification.” Jd. 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

Another court denied copyright protection to a

combined stage and film performance portraying “a

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. Min-

er, 122 F. 480, 489 (C.C.S.D.N.Y. 1903). The perfor-

mance was not “of a nature calculated to elevate,

cultivate, inform, or improve the moral or intellectu-

al natures of the audience,” the court insisted. /d.

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 copyright-

ed, 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) (inter-

nal quotation marks omitted).

It has been a very long time since copyright law

was used to police morality. By the 1970s, such deci-

sions had long been deemed “vestiges of a bygone

era.” Mitchell Bros. Film Grp. v. Cinema Adult Thea-

ter, 604 F.2d 852, 861 (5th Cir. 1979). “[I]t is inap-

propriate for a court,” the Fifth Circuit concluded, to

use copyright law “to interpose its moral views be-

tween an author and his willing audience.” Id. In

stark contrast to the prim censoriousness of the Vic-

torians, we have come to recognize the wisdom of

Justice Holmes’s remark that it is “a dangerous un-

dertaking for persons trained only to the law to con-

stitute themselves final judges of the worth of picto-

rial illustrations” or indeed any other form of expres-

sion. 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 materi-

als from the marketplace and the mail. Under what

were colloquially known as the Comstock laws (in

honor of Anthony Comstock, their enthusiastic pro-

ponent), 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 An-

thony 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 mono-

maniac” who has contrived “to use the Federal

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

pid’s Yokes 12 (1876).) The court nevertheless con-

cluded that Heywood’s pamphlet was “offensive to

decency” and capable of causing “thoughts of an im-

moral tendency.” United States v. Bennett, 24 F. Cas.

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

Similar cases were common during the period. In

New York, a store clerk was convicted of selling pho-

tographs 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. Mul-

ler, 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 inde-

cent matter.” United States v. Clarke, 38 F. 732, 733

(E.D. Mo. 1889). Even those who wrote sealed per-

sonal 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 inhab-

ited 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 pu-

rifying discourse of all kinds, including trademarks.

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 Law-

rence M. Friedman, Human Rights, Freedom of Ex-

pression, and the Rise of the Silver Screen, 43 Hof-

stra L. Rev. 1 (2014). Many states and cities estab-

lished censorship regimes that required a govern-

ment 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) (up-

holding an Ohio statute allowing the screening of

ſolnly such films as are, in the judgment and discre-

tion of the board of censors, of a moral, educational,

or amusing and harmless character’).

In 1907, for example, Chicago enacted an ordi-

nance prohibiting the exhibition of “immoral pic-

tures.” Block v. City of Chicago, 87 N.E. 1011, 1012

(II. 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 cele-

brated 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 “[pjictures which at-

tempt to exhibit that career necessarily portray ex-

hibitions of crime.” Id. The court concluded of “The

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

are both immoral, and their exhibition would neces-

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 advo-

cate Margaret Sanger, because the city official re-

sponsible for censoring films determined “that in his

judgment the film tends to teach immorality.” Mes-

sage 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 watch-

ing the film might cause audience members to devel-

op an interest in using birth control. Id. at 344. “[I)}t

fairly appears,” the court worried, “that the concen-

tration of the minds of those in attendance at such a

production on this question of birth control for a con-

siderable 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.” /d.

These film censorship regimes were held unconsti-

tutional 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 Sa-

mantha Barbas, How the Movies Became Speech, 64

Rutgers L. Rev. 665 (2012). But they were just get-

ting off the ground in 1905, when Congress prohibit-

ed the registration of immoral trademarks. At the

time, regulators and courts vigilantly policed speech

of all kinds in order to prevent any sort of immorali-

ty from reaching the public.

B. The Lanham Act’s “immoral ... or scan-

dalous” clause is the last remnant of fed-

eral 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 pur-

pose.” 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 coexten-

sive with the ban on obscenity. That is, for many

years it has been the case that speech cannot be re-

stricted 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 Gov-

ernment has not contended that it does.”); see also

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

(1962) dead 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, 112-

14 (1974).

This narrowing construction has been necessary

because the Court has made clear that while obscen-

ity is unprotected by the First Amendment, speech

that is not obscene is protected even if some consider

it immoral. [Where 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 u. 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 nov be sup-

pressed merely because it offends the moral code of

the censor.” Roth, 354 U.S. at 513 (Douglas, J., dis-

senting).

The Lanham Act thus appears to be the only sur-

viving federal statute ostensibly authorizing the re-

striction of speech for being immoral but not ob-

scene. When Congress enacted this provision in

1905, examples of such regulation were common-

place. 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 insu-

lating the public from offensive speech.

The government’s brief demonstrates all too clear-

ly that the only interest advanced by the “immoral

... or scandalous” clause is that of preventing mem-

bers of the public from being offended by speech they

consider immoral. The government offers a few dif-

ferent 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

to the sense of propriety,” Gov't Br. 34 (internal quo-

tation 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 litiga-

tion. 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.

CONCLUSION

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

Federal Circuit should be affirmed.

Respectfully submitted,