The Supreme Court Continues To Struggle With How To Apply The First Amendment In Intellectual Property Cases

For not the first time, the Supreme Court seems to regard the First Amendment as secondary when it comes to cases involving some form of intellectual property. This has happened all too frequently. Perhaps most famously, in Eldred v. Ashcroft, the Court more or less said that the First Amendment gets a pass in copyright cases, so long as fair use exists as a sort of (rarely used) vent.

More recently, we wrote about how the Supreme Court seemed to forget about the First Amendment entirely in the Andy Warhol Foundation case.

It just seems way too easy for the Court to somehow dance around the First Amendment when it comes to copyright law, and sometimes that extends to other areas as well. Often that’s because the First Amendment and the tests it already gives us are kind of inconvenient if they were applied properly.

Last summer, we wrote about the Vidal v. Elster case, which the Supreme Court decided on Thursday.

In this case, Steve Elster tried to register a trademark on the phrase “Trump too small” and it was rejected, based on a part of the Lanham Act that bars trademark registrations on the names of living people. For some, the case was reminiscent of Matal v. Tam, the case about the band “The Slants” not being able to get a trademark on their name, because it was deemed to be disparaging, and the USPTO would not issue disparaging trademarks under the Lanham Act.

In that case, the Court found that the Disparagement Clause of the Lanham Act violated the First Amendment. So, some thought that the “no living people” part of the Lanham Act might be similarly voided by the First Amendment. As we pointed out last year, building on an argument made in an amicus brief from Public Citizen, was that it was important not to get too caught up in whether or not the First Amendment voided the clause, but rather to make sure the court thought more broadly about what the First Amendment supported more broadly regarding speech.

And that’s because trademark law, in some ways, is in conflict with the concept of free speech. It is literally giving trademark holders at least some ability to limit the speech of others. So, in some cases, you could argue that large parts of trademark law are potentially against the First Amendment. The way to get around this is to view trademark law the way it should naturally be used: as a consumer protection law where the only issue is about protecting consumers from products that falsely claim to be from one company.

Public Citizen argued that no one should be barred from using the phrase “Trump Too Small,” because it was “core political speech.” Therefore, the First Amendment argument shouldn’t be that the “living people” clause was unconstitutional, but that this phrase specifically, as political speech, should be denied a trademark on First Amendment grounds.

Unfortunately, the Supreme Court decided to make this… messy. I mean:

THOMAS, J., announced the judgment of the Court and delivered the opinion of the Court, except as to Part III. ALITO and GORSUCH, JJ., joined that opinion in full; ROBERTS, C. J., and KAVANAUGH, J., joined all but Part III; and BARRETT, J., joined Parts I, II–A, and II–B. KAVANAUGH, J., filed an opinion concurring in part, in which ROBERTS, C. J., joined. BARRETT, J., filed an opinion concurring in part, in which KAGAN, J., joined, in which SOTOMAYOR, J., joined as to Parts I, II, and III–B, and in which JACKSON, J., joined as to Parts I and II. SOTOMAYOR, J., filed an opinion concurring in the judgment, in which KAGAN and JACKSON, JJ., joined.

Clear as mud.

In short, all the Justices agree that the First Amendment does not restrict a prohibition on giving trademarks on the names of living people. But they really don’t agree to why the First Amendment works that way. Some point to history and tradition, while others point to existing First Amendment tests.

So only part of the opinion is actually agreed upon by enough Justices to make it matter. It starts out okay, highlighting how the court has, reasonably, in the past tossed out rules that discriminate based on viewpoints.

In the trademark context, we have twice concluded that trademark restrictions that discriminate based on viewpoint violate the First Amendment. In Matal v. Tam, 582 U. S. 218, 223 (2017), we held that the Lanham Act’s bar on disparaging trademarks violated the First Amendment. All Justices in Tam agreed that this bar was viewpoint based because it prohibited trademarks based only on one viewpoint: “[g]iving offense.” Id., at 243 (plurality opinion); see also id., at 248–249 (Kennedy, J., concurring in part and concurring in judgment). And, in Brunetti, we held that the Lanham Act’s bar on trademarks containing immoral or scandalous matter likewise violated the First Amendment. 588 U. S., at 390. We concluded that the bar was viewpoint based because it prohibited trademarks based only on one viewpoint, immoral or scandalous matter, while permitting trademarks based on other viewpoints.

But, they note:

The names clause does not facially discriminate against any viewpoint

The court notes, as it has done before, that the entire concept of trademarks should be deemed constitutional. This is because they date back to the time of the Constitution and no one argued that they violate the First Amendment. But, as part of the history lesson, the Court explains that there have always been some limitations on trademarks:

This first law contained prohibitions on what could be protected as a trademark. For example, the law would not protect a trademark that contained “merely the name of a person . . . only, unaccompanied by a mark sufficient to distinguish it from the same name when used by other persons.” Id., at 211. It thus restricted a trademark based upon its content (i.e., whether it contained more than a name). As trademark disputes increased, courts continued to assess trademarks based on their content. For example, this Court’s first trademark decision explained that a trademark cannot consist of a purely geographical name, rejecting an attempt by one of several coal producers in Pennsylvania’s Lackawanna Valley to trademark “Lackawanna coal.” Canal Co. v. Clark, 13 Wall. 311, 321 (1872). Throughout its development, trademark law has required content-based distinctions.

And thus, the Supreme Court basically looks to punt on the larger issues:

We have acknowledged that trademark rights and restrictions can “play well with the First Amendment.” Jack Daniel’s, 599 U. S., at 159 (internal quotation marks omitted). In this case, we do not delineate an exhaustive framework for when a content-based trademark restriction passes muster under the First Amendment. But, in evaluating a solely content-based trademark restriction, we can consider its history and tradition, as we have done before when considering the scope of the First Amendment.

And, based on that, they say the restriction on names is probably fine, again pointing to history.

Recognizing a person’s ownership over his name, the common law restricted the trademarking of names. It prevented a person from trademarking any name—even his own—by itself. In “the early years of trademark law,” courts recognized that “there can be no trade-mark in the name of a person, because . . . every person has the right to use his own name for the purposes of trade.” 2 McCarthy §13:5 (internal quotation marks omitted); see also Restatement §14, Comment e (“[A]t early common law, the recognition of an unencumbered right to use one’s name in trade effectively precluded the existence of trademark or trade name rights in personal names”); W. Browne, Law of TradeMarks §206, p. 219 (2d ed. 1885) (“The rule is, that a man cannot turn his mere name into a trade-mark”); McLean v. Fleming, 96 U. S. 245, 252 (1878) (explaining that a person cannot obtain “the exclusive use of a name, merely as such, without more”).

The common law did, however, allow a person to obtain a trademark containing his own name—with a caveat: A person could not use a mark containing his name to the exclusion of a person with the same name. “A corollary of the right to use one’s own name and identity in trade is the right to stop others from doing so—at least those who don’t share the same name.” J. Rothman, Navigating the Identity Thicket, 135 Harv. L. Rev. 1271, 1306 (2022); see also Treadway 143–144. In other words, a person’s right to his name cannot be exclusive as to other people bearing the same name: John Smith cannot acquire a trademark that prohibits other John Smiths from using their own names. See McLean, 96 U. S., at 252 (“[H]e cannot have such a right, even in his own name, as against another person of the same name, unless such other person uses a form of stamp or label so like that used by the complaining party as to represent that the goods of the former are of the latter’s manufacture”); accord, Brown Chemical, 139 U. S., at 542; MeNeely v. MeNeely, 62 N. Y. 427, 432 (Ct. App. 1875); see also Treadway 143; accord, post, at 10 (opinion of BARRETT, J.). Consider the case of John L. Faber and John H. Faber, two men who independently manufactured lead pencils near Nuremberg, Germany. Both men stamped the pencils they manufactured with their shared surname. After recognizing that each man “had the right to put his own name on his own pencils,” the New York Supreme Court declined to allow one man to effectively trademark the other man’s name.

And thus:

We conclude that a tradition of restricting the trademarking of names has coexisted with the First Amendment, and the names clause fits within that tradition. Though the particulars of the doctrine have shifted over time, the consistent through line is that a person generally had a claim only to his own name. The names clause reflects this common-law tradition by prohibiting a person from obtaining a trademark of another living person’s name without consent, thereby protecting the other’s reputation and goodwill.

And… for the most part, it’s hard to argue with that point, which is why everyone agrees. It’s just that they all seem to agree for different reasons. And that creates a bit of a mess for thinking through the First Amendment.

Because, from there we get a bunch of concurrences and arguments over the specifics, which really shows how much of a mess trademark law is when it comes to the First Amendment. It’s not clear what is being protected or why. It’s not clear who is getting a benefit or why. And it’s certainly not clear what kind of test the courts should use going forward in looking over similar questions.

The various concurrences only drive home that point.

Kavanaugh thinks the history lesson is unnecessary and the same ruling can be made based on other tests. Justice Barrett also feels the history lesson is not just unnecessary, but potentially cherry-picks arguments. Rather, she feels that existing First Amendment tests bring us to this conclusion (Kagan agrees, while Sotomayor and Jackson agree to parts of it).

Sotomayor writes separately (which Kagan and Jackson signed onto) to make a similar point, again pointing out that we don’t need the history lesson and can come to the same conclusion just using First Amendment precedent.

This case involves a free-speech challenge to a viewpoint-neutral, content-based condition on trademark registration. In deciding how to evaluate this kind of challenge, the Court faces two options: Either look only to the history and tradition of the condition, or look to trademark law and settled First Amendment precedent. The first option, which asks whether the history of a particular trademark registration bar plays well with the First Amendment, leads this Court into uncharted territory that neither party requests. The other guides it through well-trodden terrain. I would follow the well-trodden path.

But… none of this gets to the underlying point that we (and Public Citizen) talked about last year regarding why core political speech shouldn’t be eligible for a trademark in the first place, because the trademark creates a way to suppress the political speech of others. That just doesn’t even get addressed.

Which is too bad.