Argument Preview

This week we are previewing three cases scheduled to be argued next week at the Federal Circuit that attracted amicus briefs. Today we highlight a trademark case, In re Elster. In this case, Elster asks the Federal Circuit to hold that the Lanham Act’s prohibition on any trademark that “[c]onsists of or comprises a name . . . identifying a particular living individual except by his written consent” violates the Constitution’s First Amendment. This is our argument preview.

Elster sought to register a trademark on “Trump too small,” but the Trademark Trial and Appeal Board affirmed a refusal of his registration based on Section 2(c) the Lanham Act. In his opening brief, Elster argues that “section 2(c) [of the Lanham Act] imposes a content-based and speaker-based burden on speech [by] prohibiting the registration of any mark that ‘identif[ies] a particular living individual.’” Elster argues that “[t]hat alone ‘is sufficient to justify application of heightened scrutiny.’” Elster, however, alternatively maintains that “section 2(c) is subject to at least intermediate scrutiny.”

Elster notes that the “statute bars registration of any trademark that identifies a living person without regard to whether the speech is false or misleading—and, as this case shows, it does so even in the context of political criticism of the president.” Elster also argues that “section 2(c) is not aimed at false or misleading speech—that is the concern of other provisions in the Lanham Act.” As a result, he maintains, “the government’s interest in the provision has nothing to do with protecting against source confusion or false endorsement of goods.” This means, he argues, that the government lacks “a substantial interest in restricting the protected speech.” Finally, Elster argues that, “[e]ven if there were a substantial governmental interest at stake, section 2(c) would [still] run aground.”  Elster claims the “government [must] prove that its restriction on speech directly and materially advances the government’s substantial interests,” which is “an impossible task here because section 2(c) does nothing of the sort.”  Elster also argues Section 2(c) “is far more extensive than necessary to serve any legitimate interest.”

In its response brief, the government notes that, “under the laws of most states, it is tortious to appropriate someone’s identity for use in a trademark without that person’s consent.” As such, the government argues Section 2(c) is “fully consistent with the First Amendment, both facially and as applied here.” The government notes that “Section 2(c) bears no resemblance to other restrictions on registrability that have been found to violate the First Amendment” because it is “viewpoint neutral and reflects a permissible balancing between competing intellectual property interests in the commercial sphere.” Further, the government argues, “neither the Supreme Court nor this Court has yet decided the proper framework for analyzing appellant’s challenge here” when there are “First Amendment challenges to eligibility restrictions that are not viewpoint based.” Accordingly, the government maintains, “there is no cause for applying heightened scrutiny here” and, as a result, the “appellant’s challenge plainly lacks merit.” The government further argues that “Section 2(c) serves a substantial governmental interest in respecting the widely recognized rights of publicity and privacy.”

In his reply brief, Elster maintains that Section 2(c) “purports to protect the right of privacy, yet it covers only ‘celebrities and world-famous political figures’” while also granting “special protection on the President alone—the least private figure in American life.” Elster claims “the statute routinely targets speech that could never give rise to liability for violating” the right of publicity. In this case, Elster claims, “section 2(c) does not come close to satisfying” the relevant level of scrutiny and the provision “is unconstitutional as applied to the proposed mark ‘Trump too small.’”

An individual named Matthew Handel filed an amicus brief in his own name because, he asserts, he has filed numerous trademark registrations that include the word “Trump.” Interestingly, Handel contends that “[t]he refusal of TRUMP TOO SMALL should be affirmed pursuant to the False Association Clause of Section 2(a).” Handel, moreover, argues that “Section 2(a) is clearly constitutional since it relates to a core purpose of the Lanham Act: prevention of confusion (or deception or false association).” Handel, however, also argues that “Section 2(c) is unconstitutional” because the “only type [of trademark Section 2(c)] does not allow is those that discuss specific named candidates,” which is “unconstitutional as viewpoint regulation.”

This case will be argued on Wednesday, November 3. We will report on developments.