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Clarence Thomas, on the left; Amy Coney Barrett, in the center; Sonia Sotomayor, on the right. All pictured are U.S. Supreme Court justices

Thomas opinion rejects ‘Trump too small’ trademark while Barrett and Sotomayor team up to ridicule ‘history and tradition’ analysis, sharply criticize majority in footnotes

Left: Justice Clarence Thomas (YouTube/Library of Congress); Center: Justice Amy Coney Barrett (AP Photo/Damian Dovarganes, File); Right: Justice Sonia Sotomayor (AP Photo/Mark Schiefelbein, File)

The U.S. Supreme Court on Thursday shot down a trademark about the size of Donald Trump’s hands in a highly fractured opinion.

In the case stylized as Vidal v. Elster, Steve Elster sought to trademark the phrase “Trump too small,” a reference to a 2016 GOP primary debate moment between Trump and Florida Sen. Marco Rubio.

The Patent and Trademark Office turned the application down, citing the “names clause” of the Lanham Act, which prohibits the registration of a mark “identifying a particular living individual except by his written consent.” The PTO’s internal tribunal affirmed, Elster appealed and the U.S. Court of Appeals for the Federal Circuit overturned the decision, finding the names clause a violation of the First Amendment.

In a majority opinion by Justice Clarence Thomas, the court reversed the Federal Circuit and salvaged the names clause — maintaining the law that someone cannot trademark another person’s name without their express, written consent. Notably, the entire court agreed with the ultimate conclusion in the particular case — but sharply disagreed about the correct legal analysis used to reach the same endpoint.

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    Elster can still sell hats and T-shirts using the “Trump too small” phrase — which the court explains is also “accompanied by an illustration of a hand gesture,” but he does not have federal registration of the trademark. Such registration would have given Elster the benefit of prima facie evidence for exclusive use in a potential lawsuit against copycat sellers. In other words, the intellectual property does not have a state-granted monopoly that can be used to sue infringers.

    The fractious majority opinion — only joined in full by Justices Sam Alito and Neil Gorsuch — makes mention of the right to free speech but ultimately determines trademark law and First Amendment law occupy something like parallel paths that rarely intertwine.

    The court decides the current case is “the first time” the nine justices have been asked to rule on “the constitutionality of a content-based — but viewpoint-neutral — trademark restriction.” This distinction is important because the court relatively recently began to invalidate restrictions on granting viewpoint-based trademarks — for marks previously denied as “immoral” or that disparage groups of people.

    “Although a content-based regulation of speech is presumptively unconstitutional as a general matter, we have not decided whether heightened scrutiny extends to a viewpoint-neutral trademark restriction,” the majority opinion reads. “Several features of trademark counsel against a per se rule of applying heightened scrutiny to viewpoint-neutral, but content-based trademark regulations. Most importantly, trademark rights have always coexisted with the First Amendment, despite the fact that trademark protection necessarily requires content-based distinctions.”

    In other words, the high court mostly jettisons a First Amendment analysis in favor of looking to the history and tradition of trademark law in the country — present since the nation’s founding.

    “We conclude that the names clause is of a piece with a common-law tradition regarding the trademarking of names,” the majority opinion goes on. “We see no reason to disturb this longstanding tradition, which supports the restriction of the use of another’s name in a trademark.”

    But the paean to history and tradition did not sit well at all with Justice Amy Coney Barrett.

    From her concurrence, at length:

    The Court claims that “history and tradition” settle the constitutionality of the names clause, rendering it unnecessary to adopt a standard for gauging whether a content-based trademark registration restriction abridges the right to free speech. That is wrong twice over. First, the Court’s evidence, consisting of loosely related cases from the late-19th and early-20th centuries, does not establish a historical analogue for the names clause. Second, the Court never explains why hunting for historical forebears on a restriction-by-restriction basis is the right way to analyze the constitutional question.

    The Court does not (and could not) argue that the late 19th and early-20th century names-restriction tradition serves as evidence of the original meaning of the Free Speech Clause. Nor does it treat the history it recites as a persuasive data point. Instead, it presents tradition itself as the constitutional argument; the late-19th and early-20th century evidence is dispositive of the First Amendment issue. Yet what is the theoretical justification for using tradition that way?

    Relying exclusively on history and tradition may seem like a way of avoiding judge-made tests. But a rule rendering tradition dispositive is itself a judge-made test.

    Barrett, for her part, believes First Amendment and trademark law considerations are more akin to hopelessly intertwined. But, she argues, the analysis can — and should — still move forward on this track.

    “Trademark protection cannot exist without content discrimination,” the concurrence reads. “So long as content-based registration restrictions reasonably relate to the purposes of the trademark system, they are constitutional.”

    Specifically attacking the majority’s history and tradition analysis, Barrett goes on to say: “For one thing, the record does not support the Court’s conclusion. For another, I disagree with its choice to treat tradition as dispositive of the First Amendment issue.”

    Nor did the history and tradition approach win over Justice Sonia Sotomayor. In her own concurrence, she bashes the idea in favor of using basic trademark and First Amendment law tests in tandem.

    At once, Sotomayor says a court should make sure the “content-based scheme” is viewpoint neutral and reasonable as well as in line with the purpose of trademark law — “that is, to serve as a source identifier.” In the end, Sotomayor largely agrees with Barrett’s own analysis but goes on to offer a slightly different analogy and an example about a fictional suite of baseball-related trademarks that would be disallowed under her own tests.

    The fractured nature of the dispute over how to approach the issue shines through in most concurrences as well.

    Justice Elena Kagan joined Barrett’s concurrence in full. Sotomayor, however, only joined two-and-a-half out of three sections — rejecting a section discussing history and tradition. Justice Ketanji Brown Jackson also concurred with Barrett in part — joining just two sections.

    Sotomayor’s own concurrence, on the other hand, did not get Barrett’s reciprocal approval. Only Kagan and Jackson joined — but in full.

    Justice Brett Kavanaugh and Chief Justice John Roberts made up the majority opinion that found the names clause constitutional — in a one-paragraph-long, Kavanaugh-penned concurrence where they explicitly endorse using “the long history of restricting the use of another’s name in a trademark.”

    Kavanaugh and Roberts, however, reject a section of the majority opinion in which Thomas criticizes Barrett and Sotomayor as a bridge too far. Barrett, in a footnote, complains that this section “mistakenly” misrepresents and “ignores” her position. Sotomayor offers similar objections in a series of footnotes.

    From the concurrence to the judgment:

    According to JUSTICE THOMAS (who is joined by two Justices), I focus primarily on cash-subsidy and union-dues cases. A closer look at this opinion and the cases that I cite will reveal that is not exactly true.

    JUSTICE THOMAS responds that these precedents are an “ill fit” for the names clause because this case does not involve “cash subsid[ies],” “union dues,” or a “limited public forum.” That response misses the entire point. In the past, this Court has relied on limited-public-forum cases as instructive, even if not controlling, when resolving constitutional challenges to governmental subsidies (and vice versa). The Court relied on these decisions for their underlying legal principle only. That is, after all, how law works. That the trademark registration system does not involve cash subsidies, union dues, or a limited public forum is immaterial for purposes of the analysis in this opinion. As just discussed, the legal principle in each of these cases is that the Constitution permits reasonable, viewpoint-neutral limitations on speech where, as here, the Government only benefits certain forms of expression through initiatives that are intrinsically content based without restricting other expression.

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    The post Thomas opinion rejects ‘Trump too small’ trademark while Barrett and Sotomayor team up to ridicule ‘history and tradition’ analysis, sharply criticize majority in footnotes first appeared on Law & Crime.