Free Speech and Trademarks: From Poop-Themed Dog Toys to Anti-Trump-Themed T-Shirts

 by Michael C. Dorf

On Monday the Supreme Court granted certiorari in the amusing little case of Vidal v. Elster. Steve Elster sought to register the trademark "TRUMP TOO SMALL" on the t-shirts (and similar items) he sells. An examiner for the Patent and Trademark Office (PTO) rejected the mark on the ground that it uses the name "of a particular living individual" without his consent, in violation of 15 U.S.C. § 1052(c).  The Trademark Trial and Appeal Board affirmed that rejection, also rejecting Elster's First Amendment argument. However, the US Court of Appeals for the Federal Circuit reversed. In reliance on the SCOTUS decisions in Matal v. Tam and Iancu v. Brunetti, the court held that, as applied to TRUMP TOO SMALL, Section 1052(c) is unconstitutional content discrimination.

Throwing into the mix the currently pending case of Jack Daniel's v. VIP Products, the Elster case will mean that by roughly this time next year, the Supreme Court will have decided four cases involving First Amendment limits on the Lanham Act in a span of seven years. That's noteworthy. Free speech issues have previously arisen in the intellectual property context, of course. For example, in 1994, the Court held in Campbell v. Acuff-Rose Music that parody is fair use within the meaning of the Copyright Act--a statutory holding that was clearly influenced by constitutional avoidance. But until recently, these cases were relatively few and far between. Everyone understood that protection for expressive intellectual property could implicate constitutional protection for free speech. Even so, such issues were regarded mostly as internal to intellectual property law rather than as implicating an external First Amendment limit on it. What changed?

Part of the answer may be free speech formalism. Recent cases have adopted a wooden approach. The high point of formalism was the opinion of Justice Thomas for the Court in Reed v. Town of Gilbert, which prompted Justice Kagan (joined by Justices Ginsburg and Breyer), in a concurrence in the judgment that sharply disagreed with the majority, to worry that the Court's approach constitutionalized relatively trivial and local concerns far afield of any realistic worry about censorship. Some subsequent cases appear to cut back on the most far-reaching implications of Reed's expansive conception of content-based regulation, but it is fair to say that the current iteration of the Roberts Court has few qualms about aggressive use of the First Amendment. Because of the potential for collision between copyright and trademark law, on the one hand, and the First Amendment on the other, it's not all that surprising that the Court's docket at that intersection has swollen.

To be sure, it's possible that the free speech claim in the Jack Daniel's case will lose. As I noted at the time, the oral argument was a bit tricky to handicap. Moreover, although I do not generally agree with the Court's free speech formalism (or formalism more broadly), I do have considerable sympathy for some of the free speech claimants, including the maker of the poop-themed dog toy in the Jack Daniel's case and Elster for his "TRUMP TOO SMALL" t-shirts.

Notably, however, these cases arise in two quite distinct settings. In some cases, the holder of a trademark (or copyright) sues an alleged infringer, who then defends on the ground that the First Amendment provides either a direct defense to the infringement charge or that it should lead, via constitutional avoidance, to a forgiving construction of the statute. The defenses in Campbell and the Jack Daniel's case fall into this category. They tee up the free speech defense in the usual configuration: someone argues that their speech--in these two cases a parody song and a parody toy--should not be the basis for liability.

However, in other cases--like Matal v. Tam, Iancu v. Brunetti, and the newly added TRUMP TOO SMALL case--the PTO declined to register a trademark. In Matal, it rejected trademark protection for a band with the name "The Slants" on the ground that this was a pejorative term for Asian Americans (even though the band consists of Asian American musicians using the term ironically). In Iancu, the PTO rejected trademark protection for the clothing brand FUCT (pronounced exactly as you might think) because of a prohibition on protection for "immoral or scandalous matter." The Court sided with the First Amendment claimants in both cases. Whether the Court sides with Elster in his First Amendment bid to register TRUMP TOO SMALL remains to be seen. The key point for now is that in each of these cases, by contrast with Campbell and the Jack Daniel's case, free speech is invoked as the basis for intellectual property protection.

There is something at least a little odd about that. After all, granting a copyright or trademark to some work or mark means that the law restricts speech--namely the speech of others who would copy the work or use the mark without paying for a license. How can free speech be invoked to restrict free speech?

The official answer--which I find reasonable enough--is that free speech protection against censorship includes a kind of equality principle. The intellectual property clause of Article I, Section 8 largely leaves to the discretion of Congress how much protection to afford "to authors and inventors [for] their respective writings and discoveries." But if the government affords protection to some category of works, it cannot discriminate based on the messages within that category.

Writing for the Court in Iancu, Justice Kagan amply demonstrated that the PTO had applied the bar on immoral and scandalous marks in a viewpoint-discriminatory manner, but one could imagine an implementation that would be merely content-based but not viewpoint-based. For example, had the PTO refused to grant trademarks to a list of words and their variants, that would not obviously have been viewpoint based. (Following Iancu, I wrote a column suggesting that Congress could amend the Lanham Act to focus more narrowly on profanity.) It would deny protection to "Trump FUCT us" but also to "Biden FUCT us." Whether the Court ends up invalidating the PTO's rejection of TRUMP TOO SMALL might depend on whether the Court focuses on the censorious impact in cases like this one or the broader policy regarding using names without permission in trademarks.

In any event, my main point for now is that the irony of invoking the First Amendment to obtain intellectual property protection--even though that protection ends up being used to restrict speech of would-be infringers--is only an irony, not a contradiction. And that's true at a policy level as well, as the plaintiffs in these cases emphasize. The whole point of intellectual property protection is to incentivize production by permitting the creators of such property to capture the value of their work rather than suffering at the hands of plagiarists. That's pretty obviously true with respect to copyright. There's no necessary contradiction between free speech and copyright if we assume, as is often fair, that the copyrighted works would not have even existed were it not for copyright protection.

The issue is a bit murkier with respect to trademarks. The main point of the Lanham Act is not to encourage creative names for companies and products. Rather, it's to facilitate brand and product identification, which aids both buyers and sellers. However, there is overlap with the goals behind copyright, at least with respect to creative products, where the name can be indistinguishable from the product. If there is no trademark protection for FUCT or TRUMP TOO SMALL t-shirts, then anyone can sell t-shirts with these words on them, and therefore there's a risk that no one will, because makers of knockoff t-shirts will appropriate those messages.

If Elster loses in the Supreme Court, he will probably continue to sell his TRUMP TOO SMALL t-shirts despite the risk that he'll have to compete with sellers of knockoff TRUMP TOO SMALL t-shirts. But he might not devote his creative energies to creating other products that use the Trump name to criticize Trump. That is an admittedly modest loss to the marketplace of ideas but a loss nonetheless.

Accordingly, despite my misgivings about the formalism of the Court's recent free speech cases, I welcome its recent attention to the importance of free speech as either a limit on intellectual property law or a factor to guide it.