by Dennis Crouch
In an important trademark law and free speech decision, the Supreme Court held in Vidal v. Elster, 602 U.S. ___ (2024), that the Lanham Act’s “names clause” barring registration of a mark that “[c]onsists of or comprises a name . . . identifying a particular living individual except by his written consent”, 15 U.S.C. § 1052(c), does not violate the First Amendment. Writing for the Court, Justice Thomas distinguished this case from the Court’s prior decisions in Matal v. Tam, 582 U.S. 218 (2017) (disparaging marks) and Iancu v. Brunetti, 588 U.S. 388 (2019) (scandalous marks), which struck down other Lanham Act restrictions as unconstitutional viewpoint discrimination. Although content-based, the Court concluded that the names clause is viewpoint-neutral and consistent with the longstanding history and tradition of trademark law.
In the case, Steve Elster sought to register the trademark “TRUMP TOO SMALL” for use on t-shirts and other tchotchkes, referencing a comment made during a 2016 presidential primary debate. The USPTO refused the registration based on the Lanham Act’s “names clause,” which prohibits trademarks that consist of or comprise a name identifying a particular living individual without their consent. Elster did not dispute that TRUMP referenced Donald Trump who was not directly involved in the case.
The Thomas opinion consists of Parts I-IV. However, part III was joined only by Justices Alito and Gorsuch, and so is not part of the majority opinion. Chief Justice Roberts and Justice Kavanaugh joined I, II, and IV, and Justice Barrett joined Parts I, II-A, and II-B. A key distinction among the justices is the role of history – with Justice Thomas indicating in Part III that history is dispositive. Justice Kavanaugh filed a concurring opinion, joined by Chief Justice Roberts, agreeing with upholding the names clause but suggesting a viewpoint-neutral provision could be constitutional even without such historical support. Justice Barrett filed an opinion concurring in part, joined by Justice Kagan, arguing the names clause is constitutional because it reasonably serves trademark’s source-identifying function, not based on history and tradition alone (Justices Sotomayor and Jackson joined parts of Justice Barrett’s opinion.) Justice Sotomayor also filed an opinion concurring only in the judgment.
Lets look at the majority opinion: The Court first held the names clause is viewpoint-neutral because it applies regardless of the message conveyed and does not target particular views. This contrasts with the disparagement clause in Tam and immoral/scandalous bar in Brunetti, which the Court found impermissibly discriminated based on viewpoint. However, the Court acknowledged the names clause is content-based since it turns on whether the mark contains a person’s name.
In my view, this aspect of the decision is in error — the use of an individual’s name (such as Trump) is at least as viewpoint based as the immoral/scandalous marks in Brunetti. This is especially true if you recognize that an individual’s name is permitted to be registered – with permission. But the problem here is that the court had found the restriction viewpoint based, it would have been hard pressed to find the names-restriction constitutional, which is the correct outcome.
Of course, even content-based speech restrictions are typically presumptively unconstitutional. Here though the court declined to apply strict scrutiny to this content-based. The court emphasized that trademark law has been content-based since the Founding without raising First Amendment concerns, reflecting the inherently source-identifying function of trademarks.
The Court traced the history of trademark law from English common law through the first American trademark statutes to the Lanham Act, showing restrictions have always been based on a mark’s content. This history, in the Court’s view, establishes that content-based trademark rules have long coexisted with the First Amendment, so heightened scrutiny is unwarranted.
Turning to the names clause specifically, the Court found it has “deep roots in our legal tradition”, with restrictions on trademarking names “grounded in the notion that a person has ownership over his own name.” See, Brown Chemical Co. v. Meyer, 139 U.S. 540, 542 (1891). The Court also found no evidence the common law or speech rights allowed using another living person’s name as a trademark without consent. It explained this rule reflects trademark’s goals of identifying a product’s source and safeguarding the markholder’s goodwill and reputation. A person “has no First Amendment right to piggyback off the goodwill another entity has built in its name.” San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522 (1987)). Based on this history and tradition, the Court concluded the names clause comports with the First Amendment. Although the limitations found in Brunetti and Tam were also longstanding, those are distinguishable by the court because they were deemed viewpoint based rather than viewpoint neutral.
In his concurring opinion, Justice Kavanaugh, joined by Chief Justice Roberts, agreed the names clause is constitutional based on the historical evidence, but suggested a viewpoint-neutral provision could satisfy the First Amendment even without such history.
Justice Barrett, in an opinion concurring in part joined by Justice Kagan, argued the focus on history was misplaced and the Court should have evaluated the names clause under a generally applicable First Amendment framework. She contended content-based trademark rules are constitutional if they reasonably relate to trademark’s source-identifying purpose and preventing consumer confusion. In her view, the names clause is constitutional under that standard because it helps ensure marks identify source and safeguards markholder goodwill. Justices Sotomayor and Jackson joined this portion of Justice Barrett’s opinion.
In a separate concurring opinion, Justice Sotomayor maintained the Court should have resolved the case based on its precedents rather than an ill-defined history-and-tradition test. Drawing on cases involving limited public forums and government subsidies (where, IMO, speech rights are more tenuous), she argued viewpoint-neutral trademark criteria are constitutional if reasonable in light of trademark’s purpose. The names clause satisfies that standard, in her view, because it facilitates source identification and prevents consumer confusion.
Elster provides important guidance on the constitutionality of content-based trademark registration restrictions, and also provides an indication that the Court is unlikely to further dismantle trademark law based upon free-speech grounds. The decision suggests provisions that have long been part of U.S. trademark law are likely valid, even if content-based, so long as they are viewpoint-neutral. However, the splintered reasoning leaves uncertainty about the proper framework for evaluating provisions without such historical pedigree.
“Trump Too Small”
Was Stormy Daniels an eye witness in the case?
The ridiculously wrong In re Tam needs to be reversed. This is a baby step along the way, I guess.
Yet again Malcolm you comment with no c1ue to the meaning of the case.
You haven’t the faintest idea about Trademark law, do you?
Does anyone think Thomas would have reached the same conclusion if the mark was about Biden?
Doesn’t Thomas’ decision permit more expansive use of the mark?
No pun intended.
How is it that Thomas always seems to get the IP opinions? This one seems to be right down his alley as he is generally a First Amendment contrarian, though.
It’s kind of nice that he drew some dissent/disagreement among even the “new” justices on his strained originalist justification that resulted in the bizarre Bruen decision that is going to prove to be intractable in real life.
BTW the Supremes also just issued a decision holding that even the NLRB itself cannot issue an injuntion to protect employees contesting being fired for union activites without applying the same generally applicable 4-factor test they required for enjoining patent infringers. [In case anyone still thought they were just picking on patents.]
They were picking on patents because what a patent means is fundamentally different.
I’ve provided the solid reasoning literally hundreds of times.
Patents are a negative right, not an affirmative right to DO/MAKE; actual principles of remedies (make the transgressed as whole as possible, avoid the clear mistake of thinking that injunctions are the ‘Atom B0mb’ of remedies, reserved only for the gravest of offenses, and so on.
Dennis should publish some trustworthy statistics on how many final decisions of patent infringement included an injuntion against the infringer these days – I have seen some surprising assertions that it is considerably more frequent than “the ‘Atom B0mb’ of remedies, reserved only for the gravest of offenses” even though excluding PAEs only interested in money damages.
You are still (albeit subtly) peddling the “0h N0es Tr011s” propaganda of what “PAEs” may be interested in.
Their interest has NO bearing on the actual (negative) right infringed and what remedy best makes that transgressed rights holder whole.
Attempting to focus on “money” is a deliberate ploy of the Efficient Infringers in order to draw parallel to contract law’s Efficient Breach.
I think you could have made the title less biased and defamatory etc
Did the Court at least get straight the difference between anyone being free to SAY anything like this vis a vis merely getting a federal trademark registration for protection of PRODUCTS SOLD with a trademark without permission?
I believe that THAT is directly reflected in the discussion of the Names clause.
Granted, some of the writeups that I have seen today are simply – and horribly – difficult to read.
Who is the dope that says “This history demonstrates that
restrictions on trademarks have always turned on a mark’s content
and have existed harmoniously alongside the First Amendment from
the beginning.” after Matal v. Tam expressly ruled that restrictions on trademarks violated the first amendment? Oh, yeah, that guy. He should stop talking about history.
“Justice Sotomayor maintained the Court should have resolved the case based on its precedents rather than an ill-defined history-and-tradition test.”
But isn’t it more important to ask how “Justice” Alito’s favorite 17th century witch burning judge would have ruled?
I suspect this case will end up being heavily cited by the government in support of future speech restrictions e.g., a future mis/dis/mal-information law. “We’re not viewpoint based, we’re just censoring false information, and therefore, we don’t have to satisfy strict scrutiny.”
Kavanaugh had it right. The better approach would be to bite the bullet, apply strict scrutiny, and justify it as narrowly tailored to protect the other party’s property interest in their own name/reputation.
Doubtful – given the express narrowness and pertaining to the Names Clause.
That just cannot be stretched to cover “information” as you suggest.