Guest Post by Samuel F. Ernst, Professor of Law, Golden Gate University School of Law.
Can you register a famous person’s name as your trademark without their consent? The Lanham Act seems to say no, and the U.S. Patent and Trademark Office interprets this to mean no, never, no matter what. 15 U.S.C. § 1052(c) provides, in pertinent part, that the PTO must deny federal registration to a trademark if it “[c]onsists of or comprises a name, portrait, or signature identifying a particular individual except by his written consent….” Unlike registration denials under Section 1052(a), the PTO denies registration without any inquiry into whether the mark suggests a false connection between the mark and the famous person. Nor does the PTO inquire into whether the famous person also sells the goods or services in question, as it does with private individuals under Section 1052(c). Rather, with respect to celebrities and world famous political figures, registration is denied based solely on the determinations that (1) “the public would recognize and understand the mark as identifying a particular living individual”; and (2) the record does not contain the famous person’s consent to register the mark. Under this provision, the PTO routinely denies registration to marks that appear calculated to capitalize on the famous person’s name to sell products. For example, the PTO denied registration under Section 1052(c) to ROYAL KATE as applied to watches, cufflinks, jewelry, and other luxury products based solely on the determination that “ROYAL KATE identifies Kate Middleton whose identity is renowned.” Id. And the PTO denied registration to OBAMA PAJAMA in connection with pajamas based on the examining attorney’s “excellent job marshalling a variety of press excerpts to demonstrate the obvious – namely, that President Barack Obama is extremely well known.”
But the PTO also denies registration to marks under this provision even if they constitute political commentary, parody, or other public discourse at the heart of the First Amendment. For example, in 2020 the PTO denied registration to the mark TRUMP TOO SMALL in connection with T-shirts, even though the applicant argued that the mark was “political commentary about presidential candidate and president Donald Trump that the relevant consumer in the United States would not understand to be sponsored by, endorsed by, or affiliated with Donald Trump.” In particular, the mark “is political commentary about [Trump’s] refutation at the March 3, 2016 Republican debate of presidential candidate Marco Rubio’s insinuation that Donald Trump has a small penis”; and “is also political commentary about the smallness of Donald Trump’s overall approach to governing as President of the United States.” The applicant appealed the PTAB’s denial to the Court of Appeals for the Federal Circuit, which is now deciding whether Section 1052(c) is unconstitutional in violation of the First Amendment, as that court and the Supreme Court have already decided with respect to the provisions in the Lanham Act barring registration of scandalous, immoral, or disparaging marks.
Unlike the bars on registration at issue in Tam and Brunetti, the PTO’s ban on registration under Section 1052(c) does not discriminate against speech based on the viewpoint expressed. Rather, the PTO bars registration whether the mark praises, criticizes, ridicules, parodies, or is neutral toward the famous person. Nonetheless, the bar is a content-based restriction because “its reach is defined simply by the topic (subject matter) of the covered speech” – here, the topic being the famous person in question. And even if viewed as a regulation of purely commercial speech – and therefore not subject to strict scrutiny – the restriction would at least have to pass muster under the Supreme Court’s test in Central Hudson Gas & Electric Corp. v. Public Service Commission, which asks, in pertinent part, whether the regulation burdening speech directly advances a substantial government interest, and whether the regulation “is not more extensive than necessary to serve the interest.” Section 1052(c), at least as broadly interpreted by the PTO, fails this test and is, therefore, unconstitutional.
The PTO’s asserted justification for this total ban on registration is “to protect the intellectual property right of privacy and publicity that a living person has in his/her identity.” Putting aside whether the PTO has a legitimate interest under the Lanham Act in protecting intellectual property rights that are creatures of state law, these justifications plainly fail on their merits.
With respect to the right of privacy, the government does not have a legitimate interest in protecting public figures, such as former President Trump, from speech that criticizes, ridicules, or even praises them. Rather, the First Amendment recognizes “a profound national commitment to the principle that debate on public issues should be uninhibited, robust, and wide-open, and that it may well include vehement, caustic, and sometimes unpleasantly sharp attacks on government and public officials.”
And even if the government has a legitimate interest in guarding the state right of publicity, the Lanham Act’s absolute bar on registering the name of a famous individual absent written consent is far more extensive than necessary to serve that interest. No state recognizes such a sweeping right of publicity that it is subject to zero countervailing First Amendment protections. As Jennifer Rothman observes, “[a]t least five balancing approaches have been applied to evaluate First Amendment defenses in right of publicity cases.”:
- The Eighth Circuit’s general balancing test, requiring “that state law rights of publicity must be balanced against first amendment considerations.” Under this framework, the Eighth Circuit decided that a fantasy baseball company’s First Amendment right to use the names, statistics, and biographical information of major league baseball players “supersede[d] the players’ rights of publicity.” TRUMP TOO SMALL would pass this test because it is core political speech at the heart of the First Amendment that outweighs any right of publicity.
- Missouri’s predominant purpose test, which inquires into whether the predominant purpose of using the famous person’s name or identity is to exploit its commercial value; or whether “the predominant purpose of the product is to make an expressive comment on or about a celebrity.” Under this test, the Missouri Supreme Court found that the defendants did not have the First Amendment right to use the name of a famous hockey player as the name of a villain in a comic book because such use was “predominantly a ploy to sell comic books,” and “not a parody or other expressive comment or a fictionalized account.” TRUMP TOO SMALL would pass this test because its predominant purpose is to critique Donald Trump, not to exploit his identity to sell T-shirts.
- The California test, which borrows from copyright’s fair-use analysis the consideration of “whether the new work merely supersede[s] the objects of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is transformative.” Under this test, the court held that the defendant’s free speech rights did not allow him to sell lithographs and T-Shirts with highly realistic depictions of the Three Stooges. TRUMP TOO SMALL would pass this test because Elster’s T-Shirts says more than simply “Trump”; they add the transformative political critique “TOO SMALL” to Trump’s name.
- An approach adopted by the Third and Ninth Circuits inquiring into whether the use of the plaintiff’s identity was not merely imitative, but rather for purposes of lampoon, parody, caricature, or fanciful and creative, and therefore entitled to First Amendment protection. Under this test, Electronic Arts’ use of images of athletes in video games was too imitative to qualify for First Amendment protection against right of publicity claims. TRUMP TOO SMALL passes this test, because it is for the purpose of lampooning Trump, and does not merely parrot his name standing alone.
- The test adopted by the Restatement (Third) of Unfair Competition, which allows the use of a person’s identity “in news reporting, commentary, entertainment, works of fiction or nonfiction, or in advertising that is incidental to such uses,” but not “if they are used in advertising the user’s goods or services, or are placed on merchandise marketed by the user, or are used in connection with services rendered by the user.” Under this test, Ginger Rogers and the estate of Fred Astaire could not prevent a filmmaker from using the title “Ginger and Fred” in a fictional film because the use was “clearly related to the content of the movie and is not a disguised advertisement for the sale of goods or services or a collateral commercial product.” TRUMP TOO SMALL passes this test because it is commentary on TRUMP, not a disguised advertisement that is merely incidental to Donald Trump.
Accordingly, the PTO’s absolute ban on the registration of marks such as TRUMP TOO SMALL is far more extensive than necessary to protect the right of publicity, which would not prevent the use of TRUMP TOO SMALL under any state’s right of publicity regime.
These various free speech defenses to the right of publicity have been criticized by scholars for providing an inadequate, misleading patchwork of First Amendment protections. But the PTO’s application of Section 1052(c) is even worse: the PTO takes no countervailing interests into account before denying registration to a mark. The PTO fails to consider: whether registration of the mark would likely cause consumer confusion; whether it would cause dilution of the public figure’s brand; whether the mark suggests a false connection with the person (as separately provided by other provisions); whether there is unjust enrichment or any other type of unfair competition; whether the use of the famous person’s name constitutes news, political commentary, parody, or entertainment speech at the heart of the First Amendment; and indeed without considering any First Amendment defense or legitimate Lanham Act policy whatsoever.
Hence, the PTO’s interpretation of Section1052(c) is a First Amendment-free zone. But what remedy should the Federal Circuit provide? Should the statute be construed so as to require source confusion, dilution, or a false connection with the celebrity before denying registration? Such an interpretation is not plausible because there are separate provisions preventing registration under these circumstances, such that this interpretation would render Section 1052(c) duplicative of Sections 1052(a), (d), and (f). Should the Federal Circuit remand with instructions that the PTO apply one of the First Amendment defenses to the right of publicity detailed above before declining to register a mark, even though those defenses are roundly criticized by scholars?; or perhaps one of the First Amendment defenses that are recommended by scholars? Which one? Is the PTO capable of applying First Amendment balancing tests such as transformative use or fair use in routine registration decisions?; determinations that befuddle and confuse Article III federal courts? Is the PTAB the right body to make such determinations? Do we really want the PTO to be judging distinctions between political speech and purely commercial speech, or might that result in new speech discrimination issues? If the PTO cannot apply a First Amendment test in a reliable, predictable way, must the statute be invalidated because it is impermissibly vague with respect to what speech it burdens?
Or have we gotten this whole question exactly backwards? Perhaps the prohibition on registering famous persons’ names serves in some way to protect political speech. After all, if the PTO registers a mark that is political commentary about a famous person, this gives the registrant certain nationwide rights allowing the registrant to burden other speakers from using the political speech in commerce to the extent it would result in likely confusion. Hence, in some circumstances registration of famous person’s names could perhaps result in less political speech, not more. One thinks of a potential 2024 Marco Rubio presidential campaign that seeks to sell T-Shirts saying TRUMP TOO SMALL, but is burdened by the national registration of that mark by Mr. Elster. As Judge Reyna wrote in dissent in In re Tam, “if the expressive content of the mark precludes regulation, on what authority may the government grant Mr. Tam the exclusive right to use this mark in commerce?” Perhaps the courts should analyze statutes such as this one in the flexible way Justice Breyer suggests in his partial dissent in Brunetti: by focusing on “the interests the First Amendment protects” and considering whether the harm to those interests is “disproportionate in light of the relevant regulatory objectives.” But these are mere dissents, not the law. The government has not met its burden of advancing such a pro-speech rationale. If protecting political speech were the true government interest behind Section 1052(c), it is a wholly insufficient vehicle for protecting that interest. It is insufficient protection because it still allows the political figure himself to register the political speech including his name, thereby burdening others from using that speech in commerce. Moreover, the PTO can register all kinds of marks that constitute political speech so long as they do not contain the name of a famous person without his consent. The binding precedent of the Federal Circuit and the Supreme Court requires the conclusion that denying the benefits of national registration to marks constituting political speech under these circumstances constitutes an impermissible burden on free speech in violation of the First Amendment.
 In re Nieves & Nieves LLC, 113 USPQ2d 1629, 2015 WL 496132, *12 (TTAB 2015).
 Id. at *12-*14.
 In re Hoefflin, 97 USPQ2d 1176, 2010 WL 5191373, *3 (TTAB 2010).
 In re Elster, No. 20-2205, Doc. 43 (Corrected Joint Appendix) at 111 (Response to Office Action of Feb. 19, 2018) (Fed. Cir.) (available on Pacer).
 See In re Elster, No 20-2205 (Fed. Cir.).
 See In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) (en banc) (holding that 15 U.S.C. § 1052(a) is unconstitutional with respect to the bar on disparaging marks), aff’d, Matal v. Tam, 137 Sup. Ct.1744 (2017); In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017) (holding that 15 U.S.C. § 1052(a) is unconstitutional with respect to the bar on immoral and scandalous marks), aff’d, Iancu v. Brunetti, 139 Sup. Ct. 2294 (2019).
 In re Tam, 808 F.3d at 1334 (citing Reed v. Town of Gilbert, 135 S.Ct. 2218, 2230 (2015)).
 447 U.S. 557, 566 (1980). See also Matal, 137 Sup. Ct. at 1764 & n. 17 (opinion of Alito, J.) (“[W]e leave open the question whether Central Hudson provides the appropriate test for deciding free speech challenges to provisions of the Lanham Act” because “the disparagement clause cannot withstand even Central Hudson scrutiny”); Brunetti, 139 Sup.Ct. at 2298 (The Court in Tam held that viewpoint discrimination is unconstitutional but “could not agree on the overall framework for deciding the case”); In re Tam, 808 F.3d at 1364-68 (Dyk, J., concurring in part and dissenting in part) (purely commercial speech can be regulated subject to the Central Hudson test).
 In re Hoefflin, 2010 WL 5191373, *1.
 New York Times Co. v. Sullivan, 376 U.S. 254, 270 (1964).
 Jennifer Rothman, The Right of Publicity 145 (Harvard U. Press 2018).
 C.B.C. Distribution & Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 505 F.3d 818, 823 (8th Cir. 2007).
 Id. at 824.
 Doe v. TCI Cablevision, 110 S.W.3d 363, 374 (Mo. 2003) (quoting Mark S. Lee, Agents of Chaos: Judicial Confusion in Defining the Right of Publicity-Free Speech Interface, 23 Loy. L.A. Ent. L. Rev. 471, 500 (2003)).
 Id. at 374.
 Comedy III Prods., Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387, 404 (2001) (internal citations and quotation marks omitted).
 Id. at 409-10.
 See, e.g., Davis v. Electronic Arts., 775 F.3d 1172 (9th Cir. 2015).
 Restatement (Third) of Unfair Competition § 47. Rothman refers to this as the “relatedness test.” Rothman, Right of Publicity 146.
 Rogers v. Grimaldi, 875 F.2d 994, 1004–05 (2d Cir. 1989).
 See, e.g., David Franklyn & Adam Kuhn, Owning Oneself in a World of Others: Towards a Paid-for First Amendment, 49 Wake Forest L. Rev. 977, 1011 (2014) (“The right [of publicity] is growing unchecked, and attempts to balance it against the First Amendment have resulted in a patchwork of misleading potential defenses.”); Rothman, The Right of Publicity at 145 (“The uncertainty of what a speaker can do has itself chilled speech because content creators do not want to risk litigation or liability.”); Stacey L. Dogan & Mark A. Lemley, What the Right of Publicity Can Learn from Trademark Law, 58 Stan. L. Rev. 1161, 1162 (2006) (“[T]he courts have developed no meaningful counterweight to this ever-expanding right [of publicity]. Instead, they have created a few ad hoc exceptions in cases where the sweeping logic of the right of publicity seems to lead to results they consider unfair.”); Eugene Volokh, Freedom of Speech and the Right of Publicity, 40 Hous. L. Rev. 903, 930 (2003) (“[T]here is good reason to think… that the right of publicity is unconstitutional as to all noncommercial speech, and perhaps even as to commercial advertising as well.”)
 See Brunetti, 139 Sup.Ct. at 2304 (Breyer, J., concurring in part and dissenting in part) (“Our precedents warn us against interpreting statutes in ways that would likely render them unconstitutional”).
 See In re Brunetti, 877 F.3d at 1355 (“It is thus permissible to construe a statute in a manner that preserves its constitutionality only where the construction is reasonable.”); Brunetti, 139 Sup. Ct. at 2302 & note * (declining to narrowly construe the bar on registering scandalous marks to avoid unconstitutionality).
 See, e.g., Franklin & Kuhn; Dogan & Lemley, supra note 23.
 See In re Tam, 808 F.3d at 1358 (O’Malley, J., concurring) (opining that the disparagement provision of Section 1052(a) should be invalidated because it is impermissibly vague in violation of the Fifth Amendment).
 In re Tam, 808 F.3d at 1378 (Reyna, J., dissenting).
 Brunetti, 139 Sup.Ct. at 2306 (Breyer, J., concurring in part and dissenting in part).