Friday 2 February 2018

Wim Alberts


In a previous posting by Darren Olivier here, the decision of the American Supreme Court in In re Tam, case 2014-1203 was discussed.  Section 2(a) of the Lanham Act was declared unconstitutional, being perceived as an obstacle to the registration of the mark THE SLANTS.  The latter was seen as referring to people of an Oriental descent.  The case related to the word “disparage” in said section, which reads as follows:

“No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a)  Consists of or comprises immoral, deceptive, or scandalous matter;

or matter which may disparage…”

The important question left open was the Constitutional status of the phrases “immoral” and “scandalous”.  This question has not been answered yet by the Supreme Court.  However, the authoritative Court of Appeals for the Federal Circuit delivered a ruling in this regard ten days before Christmas in In re: Erik Brunetti Case 2015 – 1109 dated 15 December 2017 (available at Opinion.12-13-2017.1.PDF).  Rust keeps long hours  – seemingly these judges also do.


The facts simply were that an application for FUCT in relation to clothing was refused by the Patent and Trademark Office on the basis of being immoral or scandalous, the mark being the past tense of the verb “fuck”.  The matter came before the court following an appeal from the earlier ruling of the Trademark Trial and Appeal Board.  Based on the examining attorney’s Google Images search results, the Board stated that Mr. Brunetti used the mark in the context of “strong, and often explicit, sexual imagery that objectifies women and offers degrading examples of extreme misogyny..” The court considered two issues.

1.  The mark is vulgar and therefore scandalous

The court quoted from the examining attorney’s statement “…it [the mark] is “recognized as a slang and literal equivalent of the word ‘fucked,’” with “the same vulgar meaning.” (page 5).  The court made reference to numerous sources, including Wikipedia and the Urban Dictionary.  In this regard the court remarked that “For ex parte proceedings, the Board permits the examining attorney to consider materials from the Internet, having adopted a ‘somewhat more permissive stance with respect to the admissibility and probative value of evidence’.” (page 7). 

Mr Brunetti claimed that in over twenty years of operation, he received only a single complaint about his brand name.  This argument was rejected, as possibly relating only to a specific segment of the market.  “That does not satisfy his burden on appeal, however, to establish that the Board lacked substantial evidence for its determination that a ‘substantial composite’ of the American public would find the mark vulgar.” (page 8).  The conclusion reached by the court was that the mark is indeed vulgar (page 9).

2.   Section 2(a) is unconstitutional

The crisp question stated by the court was what the impact of the Tam decision on Mr. Brunetti’s case is, specifically whether there is any basis for treating immoral and scandalous marks differently from disparaging marks.

At the outset the court referred to certain constitutional principles (page 13) that will determine how the restriction in section 2(a) will be classified.  The first principle is “that the government is said to restrict speech based on content when ‘a law applies to particular speech because of the topic discussed or the idea or message expressed.’ Content based statutes are presumptively invalid. To survive, such statutes must withstand strict scrutiny review, which requires the government to ‘prove that the restriction furthers a compelling interest and is narrowly tailored to achieve that interest.’ United States v. Playboy Entm’t Grp., Inc 529 U.S. 803, 813 (2000)… (“If a statute regulates speech based on its content, it must be narrowly tailored to promote a compelling Government interest. If a less restrictive alternative would serve the Government’s purpose, the legislature must use that alternative.”).

The government conceded that section 2(a)’s bar on registering immoral or scandalous marks is a content-based restriction on speech (page 14).  It also did not assert that the immoral or scandalous provision survives strict scrutiny review.  Instead, it said that the First Amendment is not indicated because trademark registration is either a government subsidy program or limited public forum. Alternatively, the government argued that trademarks are commercial speech implicating only the intermediate level of scrutiny set forth in the famous Central Hudson case. Under a less exacting degree of scrutiny, the government argues the immoral or scandalous provision is an appropriate content-based restriction tailored to substantial government.

Suppressing the urge to delve deeper into American constitutional jurisprudence, it probably suffices to state that in the remainder of the judgment these arguments were considered and all rejected.  Some selected references may be constructive though:

-  Although commercial in nature, trade marks (even though scandalous or immoral) might indeed have an expressive content (page 26).  Examples are FUCK CANCER, FUCK RACISM, FUCK HEROIN, DEMOCRAT.B.S, AND REPUBLICAN B.S.

-  “Supreme Court precedent makes clear that the government’s general interest in protecting the public from marks it deems ‘off-putting,’ whether to protect the general public or the government itself, is not a substantial interest justifying broad suppression of speech. ‘[T]he fact that society may find speech offensive is not a sufficient reason for suppressing it.’” (page 31 – with reference to the well-known decision in Hustler Magazine, Inc. v. Falwell, 485 U.S. 46 (1988) 55).

-  “In Tam, the Court acknowledged that it is a ‘bedrock First Amendment principle’ that “Speech may not be banned on the ground that it expresses ideas that offend.’” (paragraph 31).

-  The inconsistent registration of marks, for instance allowing DIARY OF A MILF, BACKROOM MILF, MUTHA EFFIN BINGO, and IF WE TOUCH IT, IT’S FN GOLDEN, but refusing similar marks was mentioned (page 36)

The court then held that the bar in section 2(a) against immoral or scandalous marks is unconstitutional because it violates the First Amendment.


Does this case have any significance for our law? Our Constitutional Court judges have been known to dip their toes into the waters of American constitutional law, so the judgment can have value (with the caveat that our constitutional law is of course not on all fours with the American system – see, specifically, S v Mamabolo [2001] ZACC 17 paragraph 40).  The probable area of application is of course section 10(12) of the Trade Marks Act which states that a mark that is “…likely to give offence to any class of persons” shall not be registered as a trade mark.  An example of the exercise of this power is the refusal of a mark which means nothing, to wit, S FOKOL (trade mark application number 2015/12311 in class 25 dated 13 May 2015).

Not much is left on the field, apparently, in view of the Laugh It Off decision (Laugh It Off Promotions CC v South African Breweries International (Finance) BV t/a Sabmark International [2005] ZACC 7).  The point here is that the Constitutional Court stated (paragraph 55) that:

“It is appropriate to observe that the mere fact that the expressive act may indeed stir discomfort in some and appear to be morally reprobate or unsavoury to others is not ordinarily indicative of a breach of section 34(1)(c). Such a moral or other censure is an irrelevant consideration if the expression enjoys protection under the Constitution. Of course freedom of expression is not boundless but may not be limited in a manner other than authorised by the Constitution itself such as by the law of defamation. The constitutional guarantee of free expression is available to all under the sway of our Constitution, even where others may deem the expression unsavoury, unwholesome or degrading. To that extent ordinarily such meaning should enjoy protection as fair use and should not amount to tarnishment of the trade marks.”

In other words, for our purposes, a moral censure is irrelevant.  The position has in fact been stated to be (Devenish “We are amused: Laugh It Off Promotions CC v SAB International (Finance) BV t/a Sabmark International 2005 SALJ 792) that “Therefore, even express vulgarity and coarseness may indeed in certain circumstances be legitimate vehicles for the conveyance of ideas.” (page 802).  Would FUCK CANCER be an example here?  Notably though, it was said, in a constitutional case predating the Laugh It Off ruling, that “The rest of the prohibitions in clause 2(a) deal with the regulation of material that is indecent, obscene or offensive to public morals… There is no doubt that these are important areas with which the government, or the relevant regulatory authority, might be expected to concern itself…  They implicate important competing rights as well as the government’s interest and duty to protect those rights.”  (Islamic Unity Convention v Independent Broadcasting Authority [2002] ZACC 3 paragraph 50).  This decision however “merely” appears as two footnotes (44 and 54) in the Laugh It Off judgment, which can only imply that the Constitutional Court differentiates between offence in a broadcast, vis-à-vis a trade mark context. This interpretation would be in line with the reasoning of the Brunetti decision (page 34).

Returning to the Laugh It Off ruling: The Constitional Court’s above earlier statement on vulgarity was of course made in the context of the alleged infringement of a mark, an issue of use thus.  When the above dictum of the court is juxtaposed with the issue of registration, it would seem that the same freedom should apply.  The Registrar would be bound by the Laugh It Off case.  To be blunt, words such as FUCT or MILF would be registrable in terms of our system.  It could be the issue of distinctiveness, and not moral considerations, that might be problematic.  This aspect did not receive any attention though in the Brunetti case.

To take the matter one step further, what is the position where a famous mark is tacked onto a “vulgar” word?  In the following examples “X” is a famous airline, and “Y” a famous hamburger chain.  What approach should be followed towards the use and/or registration of the marks FUCK X’S SERVICE, and Y MILF BURGERS, both appearing on t-shirts being sold.  An apparent objection might be that in both instances there are “nude” use of the marks, meaning no apparent message or idea are conveyed.  The latter seemingly influenced the Laugh It Off court.  So Judge Moseneke stated that “What is being sold is not another beer or other product under the guise or on the back of the registered marks. What is being sold is rather an abstract brand criticism.” (paragraph 62).  Sachs J characterised the use concerned as follows (paragraph 102):

“The objective of the enterprise, as clearly understood by all those involved, was to get a message across. The sale of the T-shirts was necessary for sustainability. This was not a commercial activity masquerading as a free speech one. To say that the message could have been conveyed by means other than the use of the trademark is to miss the point of the parody. The message lies precisely in the dislocated use of the trademark. The challenge is to the power of branding in general, as exemplified by the particular trademark. It is not to the particular beer as such. It should be stressed that the question is not whether the parody succeeds in hitting the mark. What matters is that it was part of a genuine attempt to critique the status quo in our society. The scales come down unequivocally on the side of Laugh it Off. In the felicitous phrase of an American judge, the evidence shows that in the present matter the parody was a take-off, not a rip-off, and the interdict should accordingly not have been granted.

The cynical observer might say that the activities of the above party exactly amounts to “a commercial activity masquerading as a free speech one.”  Leaving that aside, one might argue from the above that both judges’ opinions are based on the idea perceived to be conveyed by the parody.  From this point of view the parodies in our examples would not have constitutional protection, carrying no particular ideological message - bearing in mind also the above quotation from Devenish that refers to “ideas”.  But parodies seem to be pervasive.  Interestingly, Judge Sachs stated (paragraph 81) “Thus, the fact that the trademark image is central to the parody does not make it automatically or even presumptively liable for restraint.”  Arguably, a “parody” shorn of a message could consequently also be protected.  

One must also note, importantly, that there was no “idea” in the Brunetti ruling, the whole judgment rested on a single (unsavoury) word.  If one adds that the requirement of “substantial economic detriment” (paragraph 56 of the Laugh It Off decision) will probably also find application, constitutional protection for the use/registration of the above examples might seem not to be so improbable.  Or would the Laugh It Off case only be relevant for instances of use and not registration?  In the former instance, can X and Y then argue that the other parties’ applications contain marks in relation to which the applicant for registration has no bona fide claim to proprietorship (section 10(3) of the Trade Marks Act), their marks being wholly contained in the applications? Or section 10(7) that the application for registration was made mala fide?


When one contemplates the place the Brunetti judgment will occupy in trade mark jurisprudence henceforth, and its import apropos freedom of expression, one cannot but make the following observation.  This is the vast difference between a situation involving t-shirts protesting a particular government’s policies, and a t-shirt with the word FUCT on it being sold at a flea market.  Freedom of expression’s meaning is, on a reasonable interpretation, stretched immeasurably.  The outcome of the Brunetti decision might be technically correct, in a mechanical way, but it remains lamentable.  It is profound in this context to note the following statements of the court at the end of its judgment (page 41):

“The trademark at issue is vulgar. And the government included an appendix in its briefing to the court which contains numerous highly offensive, even shocking, images and words for which individuals have sought trademark registration. Many of the marks rejected under § 2(a)’s bar on immoral or scandalous marks, including the marks discussed in this opinion, are lewd, crass, or even disturbing. We find the use of such marks in commerce discomforting, and are not eager to see a proliferation of such marks in the marketplace. There are, however, a cadre of similarly offensive images and words that have secured copyright registration by the government. There are countless songs with vulgar lyrics, blasphemous images, scandalous books and paintings, all of which are protected under federal law. No doubt many works registered with the Copyright Office offend a substantial composite of the general public. There are words and images that we do not wish to be confronted with, not as art, nor in the marketplace. The First Amendment, however, protects private expression, even private expression which is offensive to a substantial composite of the general public.”


Further to the above quotation, interestingly, the word “fuck” was used, in terms of mainstream films, the most times (569) in the Wolf of Wall Street (

* Please check sensitivities at the door

Wim Alberts

Wim Alberts

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