Blog Editors

Recent Posts

Analyzing Tech Regulation: Shapiro's Critique and Policy Recommendations

UPCOMING EVENT: Automated Decision-Making Technology and Artificial Intelligence

Free Speech and Trademark Law Clash in Vidal v. Elster

Using Technical Solutions to Address Issues in Privacy Law: A Talk by Professor Zubair Shafiq

An Introduction to Venture Capital

Archive

Free Speech and Trademark Law Clash in Vidal v. Elster

Posted By Maja Kozlowska, Jan 26, 2024

On November 1st, the Supreme Court heard oral arguments in Vidal v. Elster,^[1] a case concerning restrictions to registrable trademarks under section 2 of the Lanham Act (the Name Clause) .^[2] This Clause prevents the registration of trademarks that use the name of a living individual without consent. This provision barred petitioner Steve Elster from registering the phrase TRUMP TOO SMALL for use on t-shirts and other apparel without first obtaining Donald Trump’s consent. This consent proved tough to obtain and the US Trademark Office denied registration. Elster appealed to the US Court of Appeals for the Federal Circuit, which unanimously reversed the decision of the Trademark Office on constitutional grounds.^[3] The Court of Appeals held that the denial of registration violated Elster’s First Amendment rights. The Trademark Office appealed to the Supreme Court.

It all went downhill in front of the Supreme Court

Elster raised three arguments supporting the position that the Name Clause curtailed his free speech rights. First, the Clause allows for “selective content-based” decisions to withhold government protection to speech.^[4] Second, the sole purpose of the Name Clause is to protect the “feelings of public figures.”^[5] Third, the Clause enables viewpoint discrimination because no individual would consent to a critical mark.^[6]

The Justices did not conceal their skeptical attitude toward the petitioner’s position. Justice Jackson questioned the very premise of Elster’s argument when she said, “trademark law is not about expression… [or] the First Amendment”; rather, she emphasized that the purpose of trademarks is source-identifying and preventing consumer confusion.^[7] Justice Gorsuch supported Justice Jackson’s point when he suggested that the Name Clause protects the core trademark function because using other people’s names creates consumer confusion.^[8] This common sense view had been accepted long before the adoption of the Lanham Act; the common law protected an individual’s right to remain free from association with other people’s products.^[9]

Other Justices queried whether the denial of trademark registration did in fact create a burden on Elster’s free speech. Justice Sotomayor pointed out that, by denying registration of the phrase TRUMP TOO SMALL, the government does not hinder Elster in producing and selling his garments with the slogan.^[10] Rather, restrictions on trademark registration, including the Name Clause, only impose a condition on obtaining a federal benefit in the form of protection from infringement.

Finally, Chief Justice Roberts put a nail in Elster’s coffin when he said that registration has the effect of restricting the speech of other people from using the trademarked slogan.^[11] As such, it seems backward to protect Elster’s trademark rights on First Amendment grounds. 

The Lanham Act Trilogy: Tam, Brunetti, and Elster

Considering the Justices’ glaring dissatisfaction with Elster’s arguments, one might wonder how the Federal Circuit granted unanimous judgment in his favor. The arguments advanced by Elster are more plausible if we consider two previous Supreme Court decisions on the Disparagement Clause of the Lanham Act, which also deals with content-based restrictions on trademarks. The Disparagement Clause prevents the registration of marks that contain “immoral, deceptive, or scandalous matter” or “disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt or disrepute.”^[12]

The first case, Matal v Tam,^[13] arose from the Trademark Office’s refusal to register an Asian-American rock band name “THE SLANTS” as a trademark.By taking up this controversial band name, Tam, the founder of the band, sought to “reclaim” and “take ownership” of an offensive stereotype.^[14] Nonetheless, the Trademark Office found that the trademark would be disparaging towards people of Asian descent and, therefore, violated the Disparagement Clause. Tam appealed and argued that the denial of registration infringed upon his First Amendment rights. In a unanimous decision, the Supreme Court held that the Disparagement Clause offended the “bedrock First Amendment principle” that speech may not be restricted based on its content or the viewpoint expressed.^[15] The offensive nature of a message is clearly not enough to override First Amendment considerations because “the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’”^[16] 

In Iancu v Brunetti,^[17] the Court considered the prohibition on the registration of trademarks containing “immoral” or “scandalous” matters. Brunetti wanted to register his brand name FUCT to be used for clothing. This time, in a 6-3 split, the majority of the Supreme Court held that the breadth and ambiguity of immoral and scandalous matter opened the door to “viewpoint discrimination” in violation of the First Amendment.^[18]

Were there better arguments to be made in light of Tam and Brunetti?

Tam and Brunetti demonstrated the Supreme Court’s readiness to scrutinize content-based restrictions on First Amendment grounds. Because Elster also deals with a content-based restriction, both decisions, at least on a superficial level, support the petitioner’s position.

Nonetheless, the Disparagement Clause and the Name Clause serve fundamentally different functions. The Disparagement Clause requires the Trademark Office to judge the moral and offensive character of a particular mark. Whenever the government evaluates speech on normative grounds, free speech is in jeopardy. As a result, the Disparagement Clause is susceptible to First Amendment scrutiny. The Name Clause, on the other hand, serves to prevent consumer confusion through a clear-cut bar on the non-consensual use of names in trademarks. The Name Clause does not open the door to viewpoint discrimination because whether the use of the name is critical is immaterial. No doubt people would refuse consent to the use of their name in a critical mark. Equally, however, they have good reasons to refuse consent to have their name used in a neutral or positive mark as this could create an impression of endorsement of the product.

It is hard to imagine the Supreme Court ruling in favor of Elster. Nonetheless, this is a great opportunity for the Court to clarify how the First Amendment ought to interact with trademark registration restrictions under the Lanham Act.

[1] Vidal v. Elster, 143 S.Ct. 2579 (U.S. 2023) (Mem.).

[2] 15 U.S.C. § 1052(c).

[3] In re Elster, 26 F.4th 1328 (Fed. Cir. 2022).

[4] Transcript of Oral Argument at 3, Vidal v. Elster 143 S. Ct. 2579 (2023) (No. 22-704).

[5] Id.

[6] Id. at 4.

[7] Id. at 53.

[8] Id. at 56.

[9] Id. at 14.

[10] Id. at 20-21.

[11] Id. at 60.

[12] 5 U.S.C. § 1052(a).

[13] Matal v. Tam, 582 U.S. 218 (2017).

[14] Id. at 218.

[15] Id. at 223.

[16] Id. at 246.

[17] Iancu v. Brunetti, 588 U.S. ---- (2019).

[18] Id. at 2297.