Argument Recap / Supreme Court Activity

This past Wednesday, the Supreme Court heard oral argument in Vidal v. Elster, a trademark case concerning the First Amendment. In this case, the Court is considering 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 recap.

Malcolm L. Stewart presented the government’s arguments. Section 1052(c) of the Lanham Act, he said, “imposes a condition on a federal benefit, not a restriction on speech.” To support this, Stewart argued that, while “Mr. Elster cannot register” his mark due to the living-individual clause, “he can sell shirts with that slogan.” Stewart next argued that the living-individual clause “is viewpoint neutral.” Regarding this point, Stewart asserted, the USPTO “does not consider whether the mark is flattering, critical, or neutral with respect to the named individual.”

As part of his line of questioning, Justice Thomas asked how Stewart’s view “would . . . affect copyright law.” Stewart reasoned the “whole purpose” of copyright law “is to promote incentives for creative expressive endeavors.” According to Stewart, trademark law serves a “very different purpose,” reasoning that “the benefits of federal trademark registration are economic.” 

Justice Alito asked about the “the government’s authority to attach conditions to government benefits.” Specifically, he asked, if the Supreme Court does not agree that this is a government benefit, “does that mean that [the government] lose[s] this case?” In response, Stewart asserted no government “could prohibit Mr. Elster from selling those shirts” because “that is constitutionally protected expression.” 

Justice Gorsuch followed up on this line of questioning, asking, “why not just look to the history here and see whether historical evidence comports with this being a First Amendment liberty or not?” In response, Stewart said “if the Court feels that the historical evidence is sufficient to decide the case in [the government’s] favor,” then the government does not “object to that.”

Justice Barrett explained her view that “there is a speaker-based discrimination,” reasoning that Trump could register the trademark “and then that trademark be valid and so it stops Elster from having T-shirts or signs or anything that says it.” In response, Stewart argued that, for initial and continuing trademark registration and trademark protection, you have to assert at least the intent to use the mark in commerce.” Furthermore, Stewart asserted, “the PTO does periodic checks.” Thus, according to Stewart, Trump “couldn’t just reserve it without using it.”

Jonathan E. Taylor argued for Elster. Taylor argued the provision in question “withholds valuable legal protections generally available to all trademark holders who pay the fee . . . and it does so based solely on the applicant’s speech.” Taylor also argued the provision “leverages the registration system . . . to achieve a purpose wholly unrelated to the purpose of trademark law.” He asserted the provision “involves express speaker-based discrimination . . .that lends itself to viewpoint discrimination.” He argued the sole purpose of the provision is “protecting the feelings of famous people, but that is not a legitimate reason to burden protected speech.”

Justice Thomas asked Taylor to clarify how Elster’s speech is “being impeded or burdened.” In response, Taylor argued that, “when the government withholds important generally available legal protections solely because of the content of the applicant’s speech, that imposes a burden on speech.” According to Taylor, the government’s approach “effectively pushes [applicants] to use different words to receive equal status in the eyes of the law.”

Justice Jackson highlighted her view that trademark law “is not about the First Amendment,” but is “about source identifying and preventing consumer confusion.” Taylor, however, argued that if this provision is “invalidated . . . the government is still going to have ample tools at its disposal.” According to Taylor, for example, “marks are not registered if . . . they may falsely suggest a connection between a product and living persons, if they’re deceptive, [or] if they’re likely to confuse or mislead as to source.”

Justice Alito asked about a hypothetical where Congress passed legislation in which, “because each living person has a trademark right to his or her own name, nobody can register a trademark containing the name of another person without obtaining that person’s written consent.” Taylor asserted that, under this hypothetical, “Congress is now trying to leverage the benefits of the registration system . . . to discourage people from selecting marks that are valid marks simply because Congress doesn’t like the message conveyed there.” According to Taylor, this is “something that [Congress] can’t do directly.”

Justice Jackson sought clarification regarding whether this provision actually gives rise to viewpoint-based concerns.” In response, Taylor asserted that “it’s a matter of common sense whether someone would consent to a derogatory use of their name on a trademark and that that’s not likely to occur.” Thus, Taylor concluded, the Supreme Court “doesn’t have to parse the distinction between a content-based law that is viewpoint-based and a content-based law that is not viewpoint-based.” According to Taylor, these content-based restrictions “get strict scrutiny either way.”

In his rebuttal, Stewart argued the “PTO . . . looks to what the average consumer would think.” Furthermore, Stewart asserted, “for words or images to be registered by the PTO, they have to function as a trademark, as a source identifier.” According to Stewart, this “unchallenged requirement just highlights the fact that [the provision in question] is not a restriction on speech.” Stewart maintained, moreover, that “there is a strong tradition that individuals can exert control over their own names.” 

We’ll report more when the Court decides the case.