Vidal v. Elster

Vidal versus Elster, decided June 13th, 2024. The Supreme Court reversed the Federal Circuit and held that the Lanham Act's names clause — the bar on registering a trademark identifying a living individual without his written consent — does not violate the First Amendment. The judgment was unanimous; the reasoning was not. Justice Thomas wrote for the Court, but four justices rejected his history-and-tradition rationale. Here's the brief.

Steve Elster sought to federally register the trademark "Trump too small," accompanied by an illustration of a hand gesture, for use on shirts and hats. The mark draws on an exchange between then-candidate Donald Trump and Senator Marco Rubio during a 2016 presidential primary debate.

An examiner at the Patent and Trademark Office refused registration under the names clause because the mark used President Trump's name without his consent. Federal registration is not mandatory — an unregistered mark can still be used and enforced — but registration confers important legal rights and benefits. The Trademark Trial and Appeal Board affirmed the refusal and rejected Elster's argument that the names clause violates his First Amendment right to free speech.

The Federal Circuit reversed. It held that the names clause is a viewpoint-neutral but content-based restriction on speech, subject to at least intermediate scrutiny, and that the government could not satisfy even that standard because the clause does not advance any substantial governmental interest. The Supreme Court granted cert.

The question presented: does the Lanham Act's names clause violate the First Amendment?

The names clause bars registration of a mark that consists of or comprises a name identifying a particular living individual, except by his written consent. The framework comes from the Court's content-discrimination precedents: content-based regulations of speech are presumptively unconstitutional, and viewpoint discrimination is a particularly egregious form of content discrimination. The Court had twice struck down Lanham Act registration bars on that basis — the bar on disparaging marks, in the 2017 decision in Tam, and the bar on immoral or scandalous marks, in the 2019 decision in Brunetti. Both were viewpoint based. The names clause is different. It is viewpoint neutral, because it applies whether the use of the name is flattering, critical, or neutral — but it is content based, because it turns on whether the mark contains a person's name. Neither Tam nor Brunetti had addressed that combination.

Justice Thomas's opinion moved in three steps. First, the names clause does not discriminate based on viewpoint, on its face or in practice — there are many reasons a person may withhold consent, whatever the mark's message.

Second, the Court declined to apply heightened scrutiny.

Trademark law, the Court explained, has been content based since the founding and has always coexisted with the First Amendment.

Third, the Court examined the specific tradition of restricting the trademarking of names — the common-law principle that a person has ownership over his own name, and the source-identifying and reputational functions those restrictions have served.

The Court was explicit about the limits of its decision.

The reasoning, though, was fractured. Justice Kavanaugh, joined by the Chief Justice, joined all but one part of the Court's opinion and wrote separately: a viewpoint-neutral, content-based trademark restriction might well be constitutional even without a historical pedigree.

Justice Barrett, joined in full by Justice Kagan and in part by Justices Sotomayor and Jackson, rejected history and tradition as the test; she would ask instead whether a registration restriction is reasonable in light of the trademark system's source-identifying purpose. And Justice Sotomayor, joined by Justices Kagan and Jackson, concurred only in the judgment, resting on the Court's precedents treating registration as a government benefit subject to reasonable, viewpoint-neutral conditions.

Elster completes a trilogy. Tam and Brunetti struck down viewpoint-based registration bars; Elster is the first of those challenges in which the bar survived — a viewpoint-neutral, content-based restriction, sustained. But the decision is deliberately narrow. The Court adopted no comprehensive framework and did not require an equivalent historical pedigree for every content-based trademark restriction. The governing test for viewpoint-neutral, content-based trademark restrictions that lack such a tradition remains open — a question the separate writings answered in different ways.

Vidal against Elster, 602 U.S. 286, decided June 13th, 2024. I'm John Goodhue. Thanks for watching.