U.S. law creates three basic types of “intellectual property” rights. A patent gives an inventor the exclusive right to make the product that he invented (which most people then sell to others or grant others license to develop that product). A copyright gives an author, musician or film producer control over the work that she has created and prevents others from making copies of that work for sale. Finally, a trademark gives an individual control over a name or design.
Trademark law includes several provisions preventing inappropriate trademarks. And, in recent years, the U.S. Supreme Court has held that some of those provisions are invalid because they are attempts to restrict certain viewpoints (e.g., offensive names) and deny such viewpoints the protection of copyright law in violation of the First Amendment. This week, the U.S. Supreme Court issued an opinion in Vidal vs. Elster. This case involves the provision of copyright law that prohibits the creation of a copyright in a person’s name without that person’s consent. Applicant wanted to trademark the slogan “Trump too small” for use on articles of clothing but his request was denied under this provision. He challenged this decision asserting that this provision also violates the First Amendment
In this case that was argued in November, the Supreme Court this week unanimously agreed that the federal agency which reviews such applications properly denied the application under that provision as that provision did not violate the First Amendment. But there was significant disagreement about the justices about why this provision did not violate the First Amendment. While Justice Thomas wrote the lead opinion, there were three separate opinions written by Justice Kavanaugh (joined by Chief Justice Roberts), Justice Barrett (joined by Justice Kagan), and Justice Sotomayor (joined by Justice Kagan and Justice Jackson). The main disagreement, which got a little bit heated, was over Justice Thomas misusing isolated historical examples to show that this limited restriction on speech was justified by the traditional approach to trademark and thus was a trademark-specific exception to the First Amendment. Justice Barrett, Justice Kagan, Justice Sotomayor, and Justice Jackson would find “viewpoint neutral” as functionally equivalent to the established doctrine of content-neutrality as trademarks are inherently based on content an approach that also draws in part on the rules that apply to limited public forums. Thus, they would uphold any trademark rule which applied equally to certain content regardless of the viewpoint expressed but would reject a rule which examined whether the content was positive or negative. Justice Kavanaugh and Chief Justice Roberts do not see the need to address this viewpoint-neutrality test at the present time but express openness to that test. Justice Sotomayor, Justice Kagan, and Justice Jackson also disagree with the recent cases because they find that trademark protection is a government benefit and the government need not be content-neutral when awarding benefits.
Given the majority’s willingness to decide this case on an ambiguous and inapplicable historical record, it is unclear what this case means for other restrictions on trademarks which is ultimately the problem with a history-based test. History is often less than clear, and a history-based test leaves it to the judge to decide what that history means. That encourages parties to bring cases and fight to the bitter end because the final decision could go either way. It is much better to establish a clear standard that can be applied to future cases.
Of course, formal registration of a trademark is merely a means to protect the designer of the trademarked item. The lack of a trademark means that Mr. Elder does not get exclusive use of the reality-based slogan that Trump is too small. It does not mean that he can’t sell t-shirts and hats making reference to this reality.
