Does the government’s refusal to register a trademark under a provision of trademark law requiring advance consent to use “a name… identifying a particular living individual” violate the Free Speech Clause of the First Amendment, where that trademark criticizes a public figure or government official?
Vidal v. Elster asks whether a federal statute prohibiting the use of a living individual’s name in a trademark without their advance consent violates the Free Speech Clause of the First Amendment. Katherine Vidal, director of the U.S. Patent and Trademark Office, argues that the law does not offend the First Amendment because it is viewpoint-neutral. But even if it did, she contends, the law would stand because it advances the important government interest of protecting individuals’ rights to exploit their identity for profit and protects against false endorsements. Challenging the law is Steve Elster, whose “Trump Too Small” trademark kicked off the dispute. Elster argues that the statute is not content-neutral since its prohibitions are triggered by invoking the specific “content” of an individual’s name. In this way, the rule allegedly differentiates certain speech for more intensive scrutiny by the Patent and Trademark Office. The outcome of this case will have an impact on general rights of publicity and privacy as well as on the freedom of political speech.
Questions as Framed for the Court by the Parties
Whether the refusal to register a trademark under 15 U.S.C. § 1052(c) violates the free speech clause of the First Amendment when the mark contains criticism of a government official or public figure.
The Lanham Act, enacted July 5, 1946 and codified in 15 U.S.C. §§1051 et seq., governs the application, maintenance and use of “trademarks”––identifiable signs, symbols or distinctions differentiating a product or service from other similar products or services. To qualify for trademark protection under the Lanham Act, this sign or expression must satisfy a number of statutory proscriptions and requirements. One of these provisions, §1052(c), prohibits registration of a trademark which “[c]onsists of or comprises a name … identifying a particular individual except by [their] written consent.”
In 2018, Steve Elster sought to register a trademark with the phrase “TRUMP TOO SMALL.” In re Elster at 1330. Elster intended to sell shirts with the phrase printed onto them with the purpose of invoking a memorable exchange between Marco Rubio and President Trump from a 2016 primary debate, while also “convey[ing] that some features of President Trump and his policies are diminutive.” Id.
An examiner at the United States Patent and Trademark Office (“PTO”) rejected Elster’s proposed mark on two grounds. First, the examiner concluded that the proposed mark violated 15 U.S.C. § 1052(c) (the “names clause”) by invoking President Trump’s name without his consent. Id. In a separate decision, the examiner also denied registration of the mark under section 2(a)’s false association clause, which bars registration of trademarks that “falsely suggest a connection with persons, living or dead.” Id. In both instances, the examiner did not accept Elster’s argument that this rejection constituted an infringement on his free speech rights under the First Amendment to the federal Constitution.
Elster appealed to the United States Trademark Trial and Appeal Board (“the Board”), which consolidated the two decisions. He argued that the sections 2(c) and 2(a) both constituted impermissible restrictions on free speech subject to strict scrutiny and that these provisions failed in being neither narrowly tailored nor advancing a compelling government purpose. The Board rejected Elster’s arguments and affirmed the examiner’s decision.
Elster then appealed to the United States Court of Appeals for the Federal Circuit. Finding that “‘the right to criticize public men’ is ‘[o]ne of the prerogatives of American citizenship,’” the Court concluded that no substantial government interest was served by applying 2(c) to Elster’s proposed trademark. The Federal Circuit also raised questions about the potential overbreadth of the statute; “[i]t may be,” Judge Dyk speculated in closing, “that a substantial number of section 2(c)’s applications would be unconstitutional.” The appeals court accordingly reversed the Board’s decision on Elster’s 2(c) claims.
On January 27, 2023, the USPTO filed a petition for certiorari to the Supreme Court on the First Amendment issue––specifically, whether the statute was unconstitutional as applied to Elster’s trademark. The Court granted certiorari on June 5, 2023, setting oral argument for November 1, 2023.
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.
RIGHTS OF PUBLICITY AND PRIVACY
The International Trademark Association (“INTA”), supporting Katherine Vidal, explained that § 1052 “harmonize[s] trademark law with a person’s right of privacy and publicity,” which the Court has recognized as “substantial government interests.” Brief of Amicus Curiae International Trademark Association (“INTA”), in Support of Petitioner, at 14. In Zacchini v. Scripps-Howard Broad Co., the Court noted that “[s]acrifical days devoted to… creative activities deserve rewards commensurate with the services rendered”––namely, exclusive rights in celebrities’ name, image and likeness. Id. at 18 (quoting Zacchini v. Scripps-Howard Broad Co.). The INTA argues that the same logic animates the names clause. Id. Moreover, the INTA argues that the clause helps prevent “false endorsements” of products and services by preventing unauthorized use of public figures’ names. Id. at 22. INTA expressed concern that a ruling favorable to Elster might injure property rights in identity and personhood, limiting individuals’ abilities to market their endorsements and otherwise retain rights in their celebrity status. Id. at 17–18.
In a brief supporting neither party, the Motion Picture Association, Inc. wrote with concern regarding the decision’s impact on the scope of the “right of publicity”––defined as property rights to exploit an individual’s name, image and likeness. Brief of Amicus Curiae The Motion Picture Association, Inc. (“MPA”), at 2. The MPA identifies the names clause as an important statutory codification of rights to publicity. Id. “In telling stories,” they note, “filmmakers frequently draw upon actual events and people[.]” Id. As a result, MPA members often face “protracted and expensive” litigation over publicity rights in these stories. Id. An expansive First Amendment has often proven crucial to defeating such litigation. Id. at 2–3. While not taking any explicit position as between the parties, the MPA does appear to endorse tighter limitations on the names clause. Id. at 4–5. The MPA asserts that a holding that upholds the clause could mean that “[p]ublic figures effectively would have the power to veto unflattering depictions” of themselves[.]” Id. at 4.
FREEDOM OF CRITICAL POLITICAL SPEECH
Public Citizen, supporting Vidal, argues that trademark restrictions like the names clause help to facilitate freedom of expression, especially with respect to core political speech. Brief of Amicus Curiae Public Citizen, in Support of Petitioner, at 15. Public Citizen argues that, by definition, when the government grants a trademark, it provides the new owner with a legal right to exclude others from using their registered mark. Id. As such, if Elster’s politically charged phrase were to be registered, the permission would constitute a “government-authorized restraint on other people’s use of that political speech.” Id. at 10. Private Citizen contends that the speech “chilled or suppressed” by this registration is protected by the First Amendment. Id. To that end, Public Citizen argues that disallowing this type of trademark registration is consistent with principles of free expression by allowing political speech to remain in the public domain, accessible to any person, including Elster. Id. at 15. Public Citizen emphasizes that “‘words associated with news events and social movements [and] political phrases,’ are ‘inherently valuable in the marketplace,’” and are not appropriate for trademark protection. Id.
Golden State University Professor of Law Samuel Ernst, supporting Elster, asserts that the names clause is plainly unconstitutional. Brief of Amicus Curiae Professor Samuel F. Ernst, in Support of Respondent, at 30. Even applying intermediate scrutiny, Ernst writes, the names clause is blind to First Amendment concerns by “Requir[ing] that the PTO take nothing into account beyond whether the mark identifies a famous person” who has consented to the trademark. Id. at 4. This absolute bar on speech does not accord with the consumer protection or trade regulation functions of the Lanham Act, and merely “burdens free speech in a broad range of contexts even beyond marks that criticize a political figure.” Id. at 5.
The Foundation for Individual Rights and Expression (FIRE) and the Manhattan Institute concurred with, amicus Ernst, arguing that 1052(c) burdens political speech rights. Brief of Amicus Curiae Foundation for Individual Rights and Expression (“FIRE”) et al., in Support of Respondent, at 9–11. Like Elster, FIRE and the Manhattan Institute argue that both in purpose and practice, the restriction functions to protect public officials and figures. Id. at 3–4. Citing the legislative record, the joint brief contends that members of the Congressional subcommittee which passed 1052(c) were concerned with trademarks which might disparage a president’s name. Id. at 15–16. Amici argues that these concerns have operated to protect public officials from any trademarked critiques. Id. at 16. Upholding §1052(c) would provide public figures with the “ultimate heckler’s veto by outsourcing trademark registration to them alone.” Id. The distribution of power under this regime, in the view of FIRE and the Manhattan Institute, imposes a serious cost on free expression without meaningful limiting principles. Id. at 16–17.
Thanks to Sara Fekkak.
- Robert Barnes, Supreme Court will hear attempt to trademark ‘Trump Too Small,’ The Washington Post (June 5, 2023), https://www.washingtonpost.com/politics/2023/06/05/trump-small-trademark-supreme-court-elster/.
- Jimmy Hoover, Justices Will Hear Free Speech Challenge to Rejection of Suggestive Trump Trademark, Law.com (June 5, 2023), https://www.law.com/nationallawjournal/2023/06/05/justices-will-hear-free-speech-challenge-to-rejection-of-suggestive-trump-trademark/.
- Melissa Quinn, Supreme Court agrees to hear dispute over effort to trademark “Trump Too Small,” CBS News (June 5, 2023), https://www.cbsnews.com/news/supreme-court-trump-too-small-trademark/.