Viewpoint-Discriminatory Effect in the "Trump Too Small" Trademark Case
Sometimes constitutional law makes strange bedfellows. Thus, on Wednesday, the Biden administration--through the person of Deputy Solicitor General Malcolm Stewart making his 100th appearance in the Supreme Court--defended the 2018 decision by the Patent & Trademark Office (PTO) to reject registration of a trademark for "Trump Too Small" as it appears on t-shirts offered by Steve Elster.
Vidal v. Elster concerns the validity of 15 U.S.C. § 1052(c), which, in pertinent part, forbids registration of any trademark that "[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent . . . ." Because Donald Trump did not consent to registration of "Trump Too Small"--a reference to a suggestive joke about the size of Donald Trump's hands made by Marco Rubio during the 2016 primary campaign--the PTO denied the registration application. Given the SG's general duty to defend federal statutes challenged as unconstitutional, it was not surprising that the Biden administration did so, notwithstanding the fact that in do doing it was, in effect, defending Trump.
What was surprising (at least to me) was the central thrust of Deputy SG Stewart's argument. He spent much of his time at the lectern making two claims: (1) that registering a trademark impedes rather than facilitates speech (by restricting who can use it); and (2) that Section 1052(c) imposes conditions on a government benefit--the registering of a trademark--and is therefore subject only to reasonableness review, rather than the strict scrutiny triggered by content-based restrictions on speech or the intermediate scrutiny triggered by restrictions on commercial speech. That emphasis came as a surprise because in two cases in recent years--Matal v. Tam in 2017 and Iancu v. Brunetti in 2019--the Court seemingly rejected both of those propositions. In each case, it applied heightened scrutiny and invalidated on First Amendment grounds the PTO's reliance on two other provisions of the Lanham Act that had been used to deny trademark registration.
Nobody who isn't an excellent lawyer argues a hundred cases before the Supreme Court, so of course Deputy SG Stewart offered grounds for distinguishing the two recent cases. Even so, I would have thought the Justices would be less receptive to his arguments, which seemed to challenge at least the spirit if not the letter of those precedents. Nonetheless, I agree with the assessment of Professor Ronald Mann, who, after listening to the oral argument, concluded that the Court would likely reject the challenge to Section 1052(c).
Attorney Jonathan Taylor, who argued the case for the respondent, emphasized that Section 1052(c) is a speaker-based restriction on speech. Under the Court's precedents (including, notoriously, Citizens United v. FEC), speaker-based restrictions on speech trigger the same strict scrutiny as do content-based restrictions. Section 1052(c) requires Steve Elster but not Trump to obtain third-party permission to register "Trump Too Small."
There's something literally correct about the contention that Section 1052(c) is speaker-based but also something unpersuasive. The law provides everyone protection against the use of their name without permission. In practice, of course, some people get more protection because they're better known or because they have unusual if not unique names. If someone named Jill wants to register the trademark "Peter Piper" for her pipefitting business, Jill doesn't need written permission from Peter Dinklage, Pete Townsend, or any other Peter or Pete, but that's because no one would think that Peter Piper Pipefitters is associated with either of them or any other famous Peter known for something other than pipefitting.
Accordingly, Mr. Taylor might have leaned harder into what I regard as his stronger argument--that Section 1052(c) is viewpoint discriminatory in effect. He said that in his searches of the PTO's database he found no instances of anyone giving permission for their name to be used in a derogatory manner as part of a registered trademark. Justice Jackson wanted empirical evidence and Deputy SG Stewart countered Mr. Taylor by pointing to instances of people denying permission for even flattering uses of their name, but neither of these points seems all that strong. Some people do give permission for a trademark using their name in a complimentary manner but apparently--and in accordance with common sense--nobody gives permission to the registration of a derogatory trademark using their name.
Now one could argue that Section 1052(c) is thus only viewpoint discriminatory in effect. And that would be true in a sense. The discriminatory effect runs through the PTO giving effect to the predictably viewpoint discriminatory decisions of people who don't want their names used in a derogatory registered trademark. But in Palmore v. Sidoti the Court held that state actors cannot act as a pass-through for private racial discrimination. Something similar could be true of viewpoint discrimination.
I wish that Mr. Taylor would have pushed harder on the viewpoint-discriminatory effect of Section 1052(c). It probably wouldn't have made a difference to the bottom-line outcome to the case, but it would have focused attention on what strikes me as the core issue. Perhaps one or more Justices will give the question the attention it deserves in the written opinions, concurrences, and/or dissents.