Vidal v. Elster

BURDEN ON SPEECH

Katherine Vidal, Director of the USPTO, seeks to distinguish §1052(c) from the statutory restrictions at issue in Iancu v. Brunetti and Matal v. Tam. Brief for Petitioner, Katherine Vidal at 11. Vidal contends that, unlike Brunetti and Tam, the restriction set by the names clause is a “reasonable, viewpoint-neutral condition” on trademark protections. Id. at 13. In those cases, the Court ruled that certain statutory, viewpoint-based restrictions on trademark registrations constituted restrictions on speech, and as a result, required a more intrusive inquiry against the government.

Vidal attempts to draw support by explaining that, under the clause’s evaluation process, a particular person’s consent is required if “the mark would be recognized and understood by the public as identifying the person,” without reference to the intended use of, or viewpoint conveyed by, the mark. Brief for Petitioner at 14. Vidal emphasizes that Elster’s mark “TRUMP SMALL HANDS” would inarguably evoke “the name of a particular living individual” within the meaning of the names clause. Id. at 28a. As such, the denial of Elster’s trademark application in no way considered the “ideas or opinions” that his mark conveyed, and therefore, falls outside of the scope viewpoint discrimination of concern in Tam and Brunetti. Id. at 15. Vidal also notes that since the owner of the design “remains free to use the mark in commerce,” the Lanham bar contains no provision “punish[ing]” or otherwise “bar[ring]” an individual for engaging in protected speech. Id. at 13–14. Since the names clause merely determines whether an individual is entitled to “the ancillary benefits that come with registration” such as “additional protections against infringers,” denial of a trademark under this statute cannot be regarded as a restriction on speech. Id. at 14. These characteristics would place it among similar speech-related programs the Court has upheld against Free Speech challenge, like “financial subsidies” and “access to government-provided forums[.]” Id.

Steve Elster invokes Brunetti and Tam in efforts to subject the names clause to a heightened level of scrutiny. Brief of Respondent, Steve Elster at 15. Elster notes that, while the clause does “not reveal the same ‘facial viewpoint bias’ as the clauses in Tam and Brunetti, its text [still] ‘imposes a burden based on the content of speech and the identity of the speaker.’” Id. at 19. Since §1052(c) requires “a PTO examiner to assess the content of a proposed mark” for compliance with the living-individual rule, Elster argues the statute “singles out specific subject matter for differential treatment” in violation of the First Amendment. Id. at 15. Challenging Vidal’s contention that the Lanham bar “places no constraints on [Elster’s] freedom to use his chosen mark,” Elster cites Court precedent holding that trademark denials “disfavor” certain speech and deprives individuals of “important legal rights and benefits” like exclusive use rights. Id. at 16 (quoting Brunetti at 1). Finally, Elster rejects as inapposite the analogy between trademark registration and government subsidies to speech. Id. at 8. Trademark registration, Elster contends, is not government-funded speech offered via private actors but “legal efforts to facilitate private speech itself.” Id. at 18 (quoting Legal Services Corporation v. Velazquez at 547). Where the government forbids an individual from securing those legal rights, Elster argues, it has burdened private speech. Id.

Vidal argues §1052(c) does not warrant evaluation under a heightened scrutiny standard and asserts several governmental interests in support of the statute. Brief of Petitioner at 15. First, Vidal contends that the government has an interest in protecting the property rights implicated in the use of another’s name without their consent. Id. at 28. Second, Vidal argues it would be consistent with historical tradition for the government to refrain from providing protection for those marks which may potentially impose on the common law right of publicity. Id. at 29. Third, Vidal asserts that trademarks explicitly associate the United States government with registered marks, and as such, Congress may “reasonably draw the line at efforts to assert an exclusive right in an unconsenting person’s name.” Id. at 31. Lastly, Vidal argues that “the government has a reasonable interest in not promoting ‘misleading or deceptive source-identifiers.’” Id. at 32. Specifically, the government purports to be concerned with granting marks whose content “falsely suggest a connection with persons, living or dead.” 15 U.S.C. 1052(a).

Elster, maintaining that §1052(c) burdens speech, evaluates the restriction under intermediate scrutiny. Brief of Respondent at 17–19. Overall, Elster contends the names clause fails to advance a legitimate interest and is “dramatically overbroad.” Id. at 28. With respect to government interests, Elster argues that Vidal’s reliance on common law right of publicity is misplaced. Id. at 20–21. First, Elster argues that, rather than common law right of publicity, Congress’s true intent lies in protecting the privacy and dignitary interests of those depicted without consent. Id. at 20. According to Elster, however, such interests do not sustain the burden of a legitimate government interest. Id. at 21. Elster then insists, conversely, that even an interest in upholding the right of publicity would not satisfy intermediate scrutiny. Id. at 20. Elster provides that the right must be balanced against the First Amendment’s interest in protecting “speech that contains ‘social commentary on public figures.’” Id. at 32.

STRICT OR INTERMEDIATE SCRUTINY

Vidal argues that the names clause serves an important government interest which is viewpoint-neutral in nature. Brief of Petitioner at 15–16. Accordingly, Vidal maintains that the government “has an interest in not promoting or associating itself with marks that ‘appropriate[] or commercially exploit[]’ a living person’s name,” and preserving individual citizens’ rights to their own names. Id. at 16. Vidal argues that this limitation on trademark does not chill protected speech or draw content-based distinctions; consequently, even were the Court to apply heightened scrutiny on the basis that the names clause constituted a “restriction on speech,” it would nonetheless further an important government interest justifying these restrictions. Id. at 15–16.

Elster challenges that the §1052(c) is “viewpoint-neutral” by alleging that it intentionally imposes viewpoint- and content-biased burdens on affected speech, and as such, must be evaluated under intermediate scrutiny. Brief of Respondent at 18–19. Averring that government regulation is content-based where it “applies to particular speech because of the topic discussed,” Elster maintains that the statute “makes it virtually impossible to register a mark that expresses an opinion about a public figure[.]” Id. at 15. Elster further scrutinizes the supposedly “substantial interest in protecting state-law privacy and publicity rights,” arguing that this rationale cannot apply to protecting political figures from criticism. Id. at 8. The government’s interest in preventing the risk of false endorsements, Elster contends, cannot apply in this case; “There is ‘[n]o plausible claim’ that Elster’s mark “suggests that President Trump has endorsed Elster’s product.” Id.