What’s in a Name: Supreme Court Upholds Constitutionality of Federal Trademark Statute Against Free-Speech Claims in Vidal v. Elster

In recent years, the Supreme Court has taken a keen interest in harmonizing intellectual property and the free speech protections of the First Amendment.[1] In 2023, the Court held that artist Andy Warhol’s unauthorized use of a photograph of Prince to create a silk screen portrait of the artist was not a protected fair use under the Copyright Act.[2] In the copyright context, fair use carves out a line of demarcation between an author’s right to monopolize his creative expressions and free speech by allowing others to engage in non-infringing uses like critiques, commentary, new reporting, teaching, and research.[3] Fair use also exists in trademark law, albeit in a narrower context. Trademark law protects words, phrases, symbols, and even smells that are used in commerce to distinguish one source of goods from others in relevant markets. Shortly after its Warhol decision, the Court ruled that VIP Products’ dog toy, fashioned as a parody of the Jack Daniel’s brand, was not a fair use of Jack Daniel’s’ trademarks because the parody still functioned to identify VIP Products as the source of the toy – meaning the parody was used as a trademark.[4] In 2017 and 2019, the Supreme Court held that certain clauses in the Lanham Act, which denied trademark protection to disparaging, scandalous, or immoral marks, violated the First Amendment’s prohibitions against viewpoint discrimination.[5] On June 13, 2024, the Supreme Court addressed a new free speech challenge to intellectual property law: whether Section 2(c), of the Lanham Act, often called the names clause, amounts to viewpoint discrimination under the First Amendment. The Court’s answer? A resounding no.

In 2018, Steve Elster filed an application to register the phrase “TRUMP TOO SMALL” (the “Mark”) as trademark with the United States Patent & Trademark Office.[6] The phrase draws on an “exchange between [former U.S. President] Donald Trump and Senator Marco Rubio during a 2016 Presidential primary debate.”[7] Both the trademark examiner and Trademark Trial and Appeal Board refused to register the mark on the grounds that it violated Section 2(c) of the Lanham Act, which prohibits the registration of a real person’s name as a trademark without that person’s written consent.[8] Elster appealed, claiming that Section 2(c) verges on viewpoint discrimination because “it is easier to obtain consent for a trademark that flatters a person rather than mocks him.”[9] The Supreme Court, for various reasons, unanimously disagreed.

In the principal opinion, Justice Thomas, explained that Section 2(c) is viewpoint-neutral but not content neutral, a point that distinguishes this case from the Court’s earlier decisions in Matal v. Tam and Iancu v. Brunetti– where the Court struck down clauses in Section 2(a) as unconstitutional viewpoint discrimination. Thomas addressed the statute’s viewpoint neutrality, noting that Section 2(c) “is thus not singling out a trademark ‘based on the specific motivating ideology or the opinion or perspective of the speaker.’”[10] The constitutionality of viewpoint-neutral, content-based trademark registrations proved to be an issue of first impression for the Court. Refusal of a trademark registration under Section 2(c) turns distinctly on whether the proposed mark contains a person’s name. Such a restriction is content-based because “the law applies to particular speech because of the topic discussed or the idea or message expressed.”[11] It was in evaluating viewpoint neutral but content-based speech restrictions that the Justices diverged. Justice Thomas relied heavily on Section 2(c)’s “deep roots in our legal tradition,” using historical precedent to explain that people have long been entitled to use their own names in commerce.[12] The other justices were less wed to the historical justification. Justice Barrett, mostly joined by Kagan, Jackson, and Sotomayor, questioned “why hunting for historical forebears on a restriction-by-restriction basis” is the optimal solution.[13] Justice Sotomayor, joined by Jackson and Kagan, criticized the majority’s “hunting far into a dimmy past” and suggested that, when the restriction is viewpoint-neutral, it need only reasonably fit the purposes of trademark law to be constitutional.[14] Regardless of each justice’s approach, the Court ultimately decided that refusing to allow trademark registrations for personal names by third parties without consent it is a constitutionally protected restriction on speech.

Beyond the Court’s various constitutional analyses, there are attractive economic reasons for maintaining Section 2(c)’s place within trademark law’s architecture. Trademark protection serves two vital, intertwined functions: (1) protecting consumers by reducing search costs and deterring counterfeits and (2) preventing freeriding and unfair competition by competitors. Section 2(c) furthers both objectives. Allowing the unfettered, unauthorized use of a personal name as a trademark by someone other than the named individual would significantly increase the risk that consumers draw a false affiliation between the mark holder and person named. Further, such a policy would allow third parties to use the names of competitors with strong reputations in the market to freeride on the name’s goodwill, discouraging investment in the kind of quality advertising that reduces consumer search costs in the first place. Despite the nature of the mark in contention, this case falls far outside the norm of the political sphere. Instead, the ruling here contributes some clarity to the often-abstruse bounds of intellectual property. Though a day may come when history alone cannot answer free speech-related trademark questions, the Court’s ruling in Vidal v. Elster implicitly heartens the economic justifications that form the bedrock of trademark law.

[1] See Matal v. Tam, 582 U.S. 218 (2017) (holding that the USPTO could not deny trademark protection on the grounds that a mark was disparaging); Iancu v. Brunetti, 588 U.S. 388 (2019) (holding that the USPTO could not deny trademark protection on the grounds that a mark was immoral or scandalous); Google, Inc. v. Oracle Am., Inc., 593 U.S. 1 (2021) (holding that Oracle’s use of Google’s declaring code to create a transformative, new platform was a fair use of Google’s copyright); Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508, 550–51 (2023) (holding that Andy Warhol’s use of a copyrighted photo to create a silk-screen portrait was not a fair use due to the commercial nature of the use); Jack Daniel’s Props. v. VIP Prods. LLC, 599 U.S. 140 (2023) (holding that VIP Products’ “Bad Spaniels, Old No. 2, Tennessee Carpet” parody dog toy was not a fair use of Jack Daniel’s trademarks and trade dress); Vidal v. Elster, 2024 U.S. LEXIS 2605 (2024) (holding that Elster was not entitled to trademark protection for the “Trump Too Small” mark without Donald Trump’s consent).
[2] See Goldsmith, 598 U.S., at 550–51.
[3] See 17 U.S.C. §107; Harper & Rowe, Publrs. v. Nation Enters., 471 U.S. 539, 560 (1985); Eldred v. Ashcroft, 537 U.S. 186, 197 (2003).
[4] See Jack Daniel’s Props., 599 U.S. 140.
[5] See Tam, 582 U.S. 218; Brunetti, 588 U.S. 388.
[6] See In re Elster, 2020 TTAB LEXIS 373 (T.T.A.B. 2020).
[7] Vidal v. Elster, 2024 U.S. LEXIS 2605, at 10.
[8] In Re Elster, 2020 TTAB LEXIS 373; 15 U.S.C. § 1052(c).
[9] Vidal v. Elster, 2024 U.S. LEXIS 2605, at 13.
[10] Id.
[11] Id. at 14 (quoting Reed v. Town of Gilbert, 576 U.S. 155, 163 (2015)).
[12] Id. at 23–24.
[13] Id. at 37 (Barret J., concurring).
[14] Id. at 60–61 (Sotomayor J., concurring) (quotations omitted).