Liberty or Licentiousness: Disincentivizing Disparaging and Scandalous Marks Post-Tam and Brunetti

Abstract

Recently, the US. Supreme Court struck down two provisions of section 2(a) of the Lanham Act. The provisions prohibiting the registration of disparaging marks and the prohibition on registering immoral or scandalous trademarks. In both cases, the court found that the regulation was not viewpoint neutral as required by the First Amendment. Of the challenged provisions, only the term "scandalous" is susceptible to a narrowing interpretation. Petty vulgar or offensive terms are on par without societal norms. This article contends that the worst of these terms should not receive trademark incentives to encourage their registration. As the dissents note in Burnetti, scandalous, if narrowly limited to the indecent or vulgar could be subject to some regulation of the manner of the speech and not the content. This article suggests that Congress change the law and bring the most offensive of epithets such as the N-word, C-word, etc. in as scandalous terms rather disparaging terms. It is unlikely that Congress will do so. Therefore, this article reviews the basic principles of trademark law and concludes that these terms will rarely serve a trademark function in the marketplace, and therefore, profane marks should not be protected under trademark law. Finally, for the rare marks that survive this scrutiny, equity may provide a solution. The article concludes by reviewing the history of morality in intellectual property and its role in equity. The doctrine of a public interest role in fashioning an equitable remedy is sufficiently broad to allow a court to consider the effects of the mark on society in determining whether to grant an injunction and the scope of the order.

Keywords: Brunetii, Tam, First Amendment, Equity, Trademark, Trademark Remedies, Scandalous, Immoral, Race, Gender, Sexual Orientation, Hate Speech