In 2019, the nation’s highest court took on a case that centered on the name of a cult-followed streetwear brand. The name – FUCT, which is pronounced a whole lot like the “f” word – had been deemed “immoral” or “scandalous” by the U.S. Patent and Trademark Office (“USPTO”) when its owner Erik Brunetti sought a registration for it in 2011, a development that prompted a closely-watched case that brought about questions of free speech and the preference of certain viewpoints over others.
Ultimately, the case landed before the U.S. Supreme Court, which sided with Brunetti and his nearly 30-year old, Los Angeles-based brand. Brunetti’s counsel argued that in determining what marks are subject to registration, the USPTO decides what is offensive to the general public, and in the process, necessarily prefers some viewpoints over others. That is significant, as such “viewpoint discrimination” is not a valid basis for the denial of a trademark application, and thus, runs afoul of the free speech clause of the First Amendment.
In the majority’s June 2019 decision, Justice Kagan agreed, pointing to the fact that the U.S. trademark statute’s bar against the registration of “immoral” or “scandalous” marks “on its face, distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them; those inducing societal nods of approval and those provoking offense and condemnation.” As such, the longstanding prohibition on registration of such marks with the USPTO violates the First Amendment.
Less than a year later, something of a similar decision has been handed down in the European Union … albeit this time, the case centers on a quest for the registration of the phrase “Fack Ju” – or actually “Fack Ju Göhte,” which is the title of a German film comedy produced by the applicant – after the European Union Intellectual Property Office (“EUIPO”) determined in 2015 that the mark was ineligible for registration. The basis for that decision? The mark is “contrary to public policy or to accepted principles of morality,” which is an absolute ground for refusal, per the EU Council Regulation on trademarks.
In short: the EUIPO found the mark to be “vulgar” and in “bad taste,” and thus, not eligible for registration. The applicant, Constantin Film Produktion GmbH, asserted on appeal that “the expressions ‘Fuck’ and ‘Fuck you’ have lost their vulgar meaning due to the evolution of language in society,” and argued that the fact that millions of German and Austrian citizens had watched the film implied that the title “was not perceived as morally unacceptable.” As such, its mark should be subject to registration and the benefits that come with that.
Fast forward 5 years, and the European Union Court of Justice (“CJEU”) has held that the mark may, in fact, be subject to registration. In a decision dated February 27, a three-judge panel for the CJEU stated that “although the success of a film does not automatically prove the social acceptance of its title and of a [trademark] of the same name, it is at least an indication of such acceptance.” That element, paired with others, such as the fact that the film was permitted to be shown in schools, “indicates that, despite the assimilation of the terms ‘Fack ju’ to the English phrase ‘Fuck you’, the title of the comedies was not perceived as morally unacceptable by the German-speaking public at large.”
Moreover, the court held that “it should be noted that the perception of the English phrase [“fuck you”] by the German-speaking public is not necessarily the same as the perception thereof by the English-speaking public, even if it is well known to the German-speaking public and the latter knows its meaning, since sensitivity in the mother tongue may be greater than in a foreign language.”
With the forgoing in mind, the CJEU panel found “no concrete evidence … that would plausibly explain why the German-speaking public at large will perceive the word sign ‘Fack Ju Göhte’ as going against the fundamental moral values and standards of society when it is used as a trade mark,” and thus, the mark should be eligible for registration.
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