On Monday, April 15th, 2019 the Supreme Court will hear oral arguments in Iancu v. Brunetti, which will likely address whether Section 2(a) of the Lanham Act’s prohibition on the federal registration of “immoral” or “scandalous” marks is facially invalid under the free speech clause of the First Amendment. Erik Brunetti, a streetwear icon, was barred by the USPTO for receiving a trademark registration because his clothing company FUCT was considered immoral or scandalous.
Our team at Alt Legal had the opportunity to interview John Sommer, the attorney representing Brunetti in this landmark case. We asked him about representing Brunetti, working in the streetwear industry, and the impact this case may have on trademark law.
What led you to working in the streetwear industry?
I got involved in the streetwear industry because as a young lawyer, I was referred to Levi Strauss & Co., and did a lot of work for it. That lead to me doing work for others in the industry, such as Stussy, Quiksilver, and eventually Erik Brunetti.
Was Erik always interested in taking up this fight? What would it mean for Erik to win this fight beyond obtaining a registration for the brand?
It was never Erik’s plan to have a big battle. Erik’s only goal was to get his trademark registered. As an artist, he always believed in free speech. But I doubt that he had much occasion to spend a lot of time thinking about Free Speech. For me, since we live in a free society we don’t need to think much about free speech. Until it comes up and you realize the importance. So now it is different.
To be honest, I never expected to go to the Supreme Court, even after the Federal Circuit ruled in Erik’s favor. When the government petitioned for certiorari in [Lee v.] Tam, I was hoping both Tam and Brunetti would go up together. As it turns out, there are interesting issues to be decided in Brunetti that were not, at least in the government’s view, definitively decided by the Court in Tam.
Fortunately, we live in a democracy so free speech isn’t an issue that I gave much thought to. But once I realized the broader implications of the government’s position in this case, then I became very interested. If the government is correct, then state and local governments could be using registrations and licensing to make it difficult or impossible for organizations that are offensive to a portion of the public to do business. So in parts of this country, the NRA or the Second Amendment Foundation could be effectively prevented from doing business. In other parts, Planned Parenthood would be effectively prohibited by denying building permits, occupancy permits, business licenses or sales tax permits. I don’t think that is what we want as a country. The marketplace of ideas is that everyone has the right to give their views. And everyone has the right to listen, or not listen, as they wish.
The response brief to the government’s petition has a number of different references to “scandalous” marks that have been registered. How did you select these marks in particular?
The marks were selected to illustrate our arguments. I am sure there are probably some examples that are even better, but that is what we used. My colleagues had to spend a lot of time searching the trademark database for a variety of surprising words.
What impact do you expect this decision having in the streetwear and skate industries?
There always are new brands that try to get started by incorporating illegal drugs or other cutting edge viewpoints. Usually they do not last long, because success takes many skills, and luck. So I do not expect much impact. Erik’s brand FUCT seems to fill the niche for such brands pretty fully.
What has been the most challenging aspect of this case?
The case has been intellectually challenging. I have always taken all aspects the case seriously. Even more so now. I have had to do a lot of studying of cases and law review articles, and do some creative thinking.
The client is wonderful. I have great colleagues. The subject matter is interesting. And, to be enjoyable, it doesn’t hurt to win (so far!).
Have you argued before the Supreme Court before? Is there anything in particular that you are looking forward to?
This is my first time. I went back to watch some arguments in other cases.
I am looking forward to responding to probing questions from the justices, both on the Free Speech question, as well as on a procedural question: whether opinions are binding precedents when there was no majority opinion. Tam, the Court’s previous decision on this subject was decided 8-0 on some issues, but others were decided 4-4, or 4-0 (since some of the justices did not think it was necessary to decide certain issues at all).