Argument Preview / Supreme Court Activity

On Wednesday, November 1, the Supreme Court will hear oral arguments in Vidal v. Elster, a trademark case concerning the First Amendment. The Court granted review to consider whether the U.S. Patent and Trademark Office’s “refusal to register a mark under Section 1052(c) [of the Lanham Act] violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.” This is our argument preview.

In its opening merits brief, the government makes three arguments in support of reversing the Federal Circuit’s holding that Section 1052(c) of the Lanham Act violates the Free Speech Clause of the First Amendment. First, it argues that Section 1052(c) is a “viewpoint-neutral condition.” Second, the government argues that Section 1052(c) does not violate the First Amendment because it is not a limitation imposed on speech. Third, the government argues that, specifically concerning marks “criticizing government officials or public figures,” Section 1052(c) does not violate the First Amendment.

The government’s first argument centers on the assertion that the statute imposes a viewpoint-neutral condition and, thus, is not invalidated by prior decisions of the Supreme Court regarding the constitutionality of statutory bars on federal trademark registration. The government maintains the USPTO “concluded that respondent’s mark ‘identif[ies]’ former President Trump within the meaning of Section 1052(c)” and then “determined that the record contained no written consent from him.” Thus, the USPTO did not “consider ‘the ideas or opinions’ that respondent’s mark might convey.” Furthermore, the government argues,

[b]ecause Section 1052(c) does not discriminate based on viewpoint, this Court’s decisions in [Matal v.] Tam and [Iancu v.] Brunetti are not controlling here. Instead, this case presents the question that the Court left open in Tam and Brunetti : how a viewpoint-neutral bar on federal trademark registration should be evaluated under the First Amendment, including whether it should be considered ‘a condition on a government benefit or a simple restriction on speech.’ 

The government then argues that, “because Section 1052(c) is a reasonable, viewpoint-neutral condition on registration, it is consistent with the First Amendment.” The government contends the Supreme Court’s “First Amendment precedents have long distinguished restrictions on speech from conditions on government benefits.” The government argues that the statutory provision is a condition on a government benefit because the “USPTO’s refusal of registration does not prevent respondent from using his mark to identify his goods and distinguish them from the goods of others.” According to the government, because “[r]espondent is just as free to use his mark and to speak those words as he would be if the mark were registered,” the “only effect of Section 1052(c) is to deny owners of a specified type of mark ‘certain additional benefits associated with federal trademark registration.’”

Finally, the government argues that the Federal Circuit “erred in holding Section 1052(c) unconstitutional as applied to marks that criticize a government official or public figure.” According to the government,

while the court of appeals expressed concern about respondent’s free-speech right to criticize public officials, the court’s decision makes it easier for individuals like respondent to invoke federal enforcement mechanisms to restrict the speech of others. To be sure, that speech-impairing effect is a usual and ordinarily unproblematic consequence of federal trademark registration, and of trademark-protection laws more generally. It would be anomalous to conclude, however, that respondent has a First Amendment right to restrict others’ speech and to obtain the government’s assistance in that endeavor, notwithstanding Congress’s decision to exclude respondent’s mark from eligibility for federal registration.

In his merits brief, Elster argues three main points. First, Elster argues, the effects of Section 1052(c) is a burden on speech and, thus, is not viewpoint-neutral. Second, Elster asserts, even under intermediate scrutiny, the government’s claim would still fail. Finally, Elster contends, even if this provision was classified as a condition on a government benefit, Section 1052(c) would still be unconstitutional.

Elster first argues that the purpose behind Section 1052(c) is “to suppress certain ‘disfavored’ speech—messages about the president and other well-known figures that have not received their express approval.” Elster argues this “grants public figures what is in essence a ‘heckler’s veto’—the absolute right to decide whether speech about them can be registered as a trademark.” According to Elster,

the clause does more than just ‘single out [a] topic or subject matter for differential treatment.’ It also discriminates among speakers. It allows ‘a particular living individual’ to use his or her name (or let someone else use it) in a registered mark by providing written consent. As interpreted by the PTO, this language permits people who have achieved ‘fame or public recognition’ to register a mark using the same word that is denied to everyone else, and even to express the same message.

Elster next argues the government “concedes that the right of publicity does not trump Elster’s First Amendment right to express his political message on T-shirts.” Elster asserts more broadly that “[n]o legitimate governmental interest justifies the law’s content- and speaker-based regulation of speech.” According to Elster, the Supreme Court “has repeatedly held that the mere possibility that commercial speech ‘may, under some circumstances, be deceptive’ does not justify a blanket restriction on that speech.” Elster contends that “[m]isleading marks, moreover, ‘are already barred’ by other provisions” and, thus, the restrictions within Section 1052(c) are not needed.

Finally, Elster argues “the clause would fail even the government’s preferred test, making it unnecessary for th[e] [Supreme] Court to resolve the parties’ dispute about the correct test to apply here.”

Under the government’s test, the constitutionality of the names clause turns on whether it is reasonable and viewpoint-neutral. But while the government has a lot to say about why it thinks this is the right test, it has little to say about what this test means or how to apply it here.

Elster argues the “government’s failure to make these showings means that it may not constitutionally apply the clause here.” Furthermore, Elster asserts, “the only speech that is restricted by Elster’s trademark is speech that would infringe his mark.” And, he says, a “competitor’s use does not infringe a mark unless it is likely to confuse consumers.” Because “the First Amendment does not protect confusing or misleading commercial speech,” Elster maintains, the Supreme Court does not need to “craft a new test just for bars on trademark registration.”

In its reply brief, the government asserts “the living-individual clause [in Section 1052(c)] does not ‘silence,’ ‘burden,’ or otherwise restrict speech.” According to the government, it “merely establishes a condition on the government-conferred benefits that flow from federal trademark registration.” Furthermore, the government asserts, the “living-individual clause” found in Section 1052(c) “allows named individuals to decide whether they are willing to tolerate the risk of being perceived as affiliated with the products.” The government maintains that, because a registered trademark allows for the owner “to restrict the speech of others, denial of registration may enhance overall free-speech rights.”

Finally, in response to Elster’s contention that Section 1052(c) serves no government interest, the government argues “using another individual’s name for commercial purposes without that individual’s consent has long been viewed as a form of commercial appropriation.” Thus, according to the government,  it “has a reasonable interest in not associating itself with [these types of] marks.” 

Interested parties have submitted numerous amicus briefs to present their perspectives and arguments on the issues in this case.

Two amicus briefs were filed in support of the government, the petitioner in this case:

  • Public Citizen filed an amicus brief in support of the government. Its brief comments how, “where a trademark claim implicates core political speech, the terms on which liability for trademark infringement is premised—that an infringing use is merely ‘likely’ to cause ‘confusion’ about source or affiliation—are not easily squared with the First Amendment’s heightened protection of political speech.” It argues “the First Amendment does not permit, let alone require, the registration of the proposed mark at issue in this case.”
  • The International Trademark Association filed its amicus brief in support of the government. Its brief asserts “Section 2(c) does not create any significant or undue restriction on speech” and that, “unlike the provisions struck down in” prior case law, it “is a viewpoint-neutral element of the registration program established by Congress.” The brief also contends “Congress has a substantial basis to regulate registration of trademarks that appropriate and trade upon the names and associated publicity rights of recognized individuals” and that, “like other viewpoint neutral restrictions on trademark registrations, Section 2(c) refusals permit more speech, not less.”

Two amicus briefs were filed in support of Elster, the respondent in this case:

  • Samuel F. Ernst filed an amicus brief in support of Elster. In this brief, Ernst argues that, due to Section 2(c) of the Lanham Act, “celebrities are free to veto marks that are critical of themselves while consenting to marks that are neutral or convey praise,” thus constituting “de facto viewpoint discrimination.” Ernst cites precedent, in particular Matal v. Tam and Iancu v. Brunetti, for support for his view that “such content-based restrictions are subject to strict scrutiny, just like viewpoint discriminatory provisions.” Further, Ernst asserts, the provision in question “burdens speech without taking any countervailing First Amendment interests into account.” 
  • The Foundation for Individual Rights and Expression filed an amicus brief in support of Elster. In its brief, the Foundation asserts that “favoring positive rather than negative messages about a named person is Section 1052(c)’s only meaningful function.” Thus, according to the Foundation, “Section 1052(c) . . . does precisely what th[e] [Supreme] Court has held a trademark-registration bar may not.” Further, the Foundation contends, Section 1052(c) “confers heightened protection against criticism on those with the greatest capacity to respond—precisely the opposite of the usual First Amendment rule.”

Three amicus briefs were filed in support of neither party:

  • The Motion Picture Association, Inc. filed its amicus brief in support of neither party. The brief clarifies that it was submitted “because the Court may address . . . an issue of great importance to the [Motion Picture Association’s] members: the relationship between the First Amendment and the right-of-publicity tort.” It maintains that, “[r]egardless of how this case comes out, the Court should make clear that the right of publicity cannot be used to silence or deter the creation of expressive works.”
  • The American Intellectual Property Law Association filed its amicus brief in support of neither party. Its brief argues the “Federal Circuit correctly held that the U.S. Patent and Trademark Office . . . violated the First Amendment in applying Section 2(c) of the Lanham Act, 15 U.S.C. 1052(c), to refuse registration of the trademark ‘Trump Too Small.’” It explains that, while it “does not take a position on the ultimate registrability of Elster’s mark, it respectfully submits that, if a mark is found to comment on a government official or public figure, applying Section 1052(c) as a basis for denying of registration violates the First Amendment.”
  • Matthew A. Handal filed an amicus brief in support of neither party. The brief contends the “Court should remand to the Federal Circuit with instructions to affirm the refusal to register the trademark in question under the Lanham Act, Section 2(a)’s False Association Clause, 15 U.S.C. §1052(a).” It also asserts that “Section 2(c), as applied to marks that comment on political figures, is viewpoint discrimination.”

We will continue to follow this case. After Wednesday’s argument, we will post an argument recap. As always, you can find all of the relevant documents and all of our coverage of this case on our Supreme Court cases page.