Welcome back to Legal Geek. This week, we update you on a case we covered over two years ago regarding a Kickstarter pulled down for a book entitled "Oh The Places You'll Boldly Go," and then turn to this week's Supreme Court oral arguments covering whether the U.S. ban on registering scandalous trademarks is constitutional.
Back at the end of 2016, authors of a parody Star Trek/Dr. Seuss mashup book "Oh The Places You'll Boldly Go" had a Kickstarter pulled down for claims of copyright and trademark infringement by Dr. Seuss Enterprises. At the time we covered it on this segment, I opined that this book likely was fair use under copyright law, but it was a close call.
Well, the battle over this book did end up going to court, and last month a California district court ruled that this parody mashup was protected by fair use. The court focused in the fair use analysis on the fact that while "Boldly Go" borrows heavily from the original Seuss work, everything taken is highly adapted or transformed to fit the Trek theme, and also that this book does not appear to substantively negatively affect the market for the original Seuss book, which remains strong. So count this as a win for creative mashup makers, although it is possible Seuss Enterprises will continue the battle with an appeal to the Ninth Circuit.
Now we move to today's main topic, that being the oral arguments heard this week at the Supreme Court over the U.S. trademark law's ban on registering trademarks containing scandalous subject matter. The mark at hand in this particular case is F-U-C-T, which phonetically sounds like a past participle of the well-known profane word. According to court reporters, the justices went out of their way to avoid saying this trademark and similar examples, making for some fun leaps of language during the arguments with both sides' counsel.
You'll recall that a similar trademark law ban on disparaging marks that disparage groups of people or individuals was struck down as unconstitutional two years ago when the band The Slants took their refusal of trademark all the way to the Supreme Court. Many trademark law experts opined that it was simply a matter of time before this similar ban on scandalous trademarks would be before the Court, and they were correct. But the Court during arguments did not seem as eager to strike this ban down as they were to do in the disparaging ban.
One reason for this is that while the ban on disparaging trademarks was seen as viewpoint restriction, which comes with a heightened standard to be constitutional, banning vulgar language might be viewpoint neutral and thus, easier to support as constitutional. Indeed, some of the justices questioned whether this invoked First Amendment speech protection at all. On the other hand, the Court was very critical in its questioning of the government's attorney regarding the wildly inconsistent application of this ban on prior trademark applicants. In one highlight example, Justice Ginsburg noted that some prior trademark applications had been refused not because of this scandalous ban but because they were too similar to other lewd terms that had previously been allowed and registered. The Court just doesn't think this rule can be applied fairly.
The Bottom Line is, while the U.S. Trademark Office and government probably has an easier case to defend this scandalous ban than they did two years ago in the disparagement ban case, it's hard to see the Supreme Court ruling that there is enough distinction between these bans to keep one but not the other. I expect this ruling to come in June and we will update you on it when it comes, as one of the biggest trademark decisions of this year's Court term.
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