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  • Writer's pictureTodd

TRUMP TOO SMALL (Vidal v. Elster) Trademark Issue Oral Argument

Section 2(c) of the Lanham Act prohibits marks to be registered, in part, that have the name of a living individual without consent. Initially, I thought the Supreme Court would strike down section 2(c) of the Lanham Act under the First Amendment just like it did before in Matal v. Tam, 582 U.S. ___ (2017) (finding prohibition of disparaging marks under 2(a) unconstitutional) and Iancu v. Brunetti, No. 18–302, 588 U.S. ___ (2019) (finding scandalous and immoral matter under 2(a) unconstitutional).


When the Court heard the Jack Daniels case I was hoping that case would provide broad protection for free speech of trademark parodies under the First Amendment. Ultimately, the Court reached a conclusion without addressing the First Amendment, instead focusing on the nature of the trademark in question as a source-identifier. The Court held that just because a mark has a humorous message does not mean it gets protection when it’s used as a source-identifier.


In the Government’s brief in the TRUMP TOO SMALL case, it argued that 2(c) is viewpoint-neutral. Prohibiting use of another's name without consent, it argued, does not violate the First Amendment, whereas Tam and Brunetti discriminated based on viewpoint. This case is about evaluation viewpoint-neutral prohibitions of trademark registration. The Government argued there should be no heightened scrutiny because 2(c) has a reasonable basis. Frankly, I found the Government’s brief persuasive.


The Court heard oral argument in Vidal v. Elsterl today, and at oral argument, the Government argued 2(c) is constitutional because (1) It’s a condition on a federal benefit, not a restriction on speech; (2) it’s viewpoint neutral; and (3) registration would allow restriction of speech and reduce political speech.


The Court focused primarily on the first argument, discussing whether this is a speech issue at all. It would be unconstitutional to prohibit selling the shirt as protected expression, but a seller shouldn’t be allowed to prevent others from using Mr. Trump’s name. That persons are more likely to consent to flattering remarks does not mean it’s constitutionally suspect. In Jack Daniels, the Court didn’t suggest it was viewpoint discrimination simply because it’s less likely that a company would parody its own product.


Justice Gorsuch noted the historical aspect may be enough to decide the First Amendment issue. Justice Sotomayor stated rejection of trademark protection when there is no consent of the persons is not an infringement on speech. Justice Kagan suggested the trademark registration forum is a limited public forum. Justice Alito didn’t like the condition of federal benefit argument, but hinted he thinks it’s constitutional under a different theory.


Elster argued for a heightened scrutiny because (1) 2(c) is content-based because it withholds legal protection to trademark holders who pay the fee; (2) leverages a registration system for reasons other than trademark law, discouraging marks because it hurts the feelings of public figures; and (3) there is speaker-based discrimination that leads to viewpoint-based discrimination, because a person could consent to some marks but not to others.


The Court effectively dismantled these points. Some of the Justices seemed frustrated with Elster’s attorney for not being able to answer some of their questions.

Justice Thomas questioned how Elster’s speech was being impeded or burdened because he could sell the shirts with the mark even without registration.

Justice Sotomayor queried whether Elster was conceding the government benefit argument by immediately discussing speech. In her view, there is no violation of free speech, Elster just would not be allowed to stop others from selling the shirts. Justice Kagan also cited several cases to say that a government benefit that is viewpoint neutral can be upheld, and Elster didn’t have much of a response.


Justice Jackson stated trademark is not about expression or the First Amendment; rather it's about source-identifying and preventing consumer confusion in the marketplace.


Justice Gorsuch noted the robust common law history of restricting names including geographic names, functional names, and descriptive names. Elster conceded this could be a justification for the law, but says they may be overcome if they can show secondary meaning. This is an odd argument because according to the record, there has not been any use yet (because it’s an Intent to Use application).


During the Government’s presentation, Justice Barrett asked whether Trump could come in and register the mark and keep Elster from selling the T-shirts. During Elster’s argument, it came out that the record contained several examples of marks that were flattering or favorable, but were rejected because the persons did not give consent, undermining Elster’s viewpoint-based discrimination argument.


One part of the argument that was perplexing was that the Justices asked so many questions on how a decision in this case would affect copyright. As we know, trademark is different than copyright, so this line of questions surprised me.

Overall, it seemed as if the Justices were unanimous that 2(c) is not unconstitutional, but had multiple rationales, including historical context, limited public forum, and rational-basis scrutiny. I wouldn’t be surprised to see the Court unanimous in judgment, but with multiple opinions explaining rationale.


(Edit: 11/2/23: Changed “She” that appeared to reference Justice Sotomayor to Justice Kagan.)

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