Courthouse Steps Decision: Vidal v. Elster

Edith Harold: Today we're excited to host this Courthouse Steps Decision on Vidal v. Elster and its Implications for trademark law and First Amendment free speech protections, featuring John Farmer as moderator and Michael Friedland, our speaker. Mr. Farmer is the founder and attorney at Leading Edge Law Group and devotes his practice to Intellectual Property and technology issues. Most of his cases have taken place in federal court and the Trademark Trials and Appeal Board. He has served in numerous leadership positions in the bar, including as Chairman of the Trademark Public Advisory Committee of the United States Patent and Trademark Office, and as Chairman of the Board of Governors of the Intellectual Property section of the Virginia State Bar. Mr. Friedland is the founding partner of Friedland Cianfrani in Irvine, California. Mr. Friedland has three decades of Intellectual Property enforcement experience. He has represented clients in more than 200 Intellectual Property cases in state and federal courts throughout the country and before the Trademark Trials and Appeal Board.

His practice includes patent, trademark, trade secret, and copyright cases. And if you'd like to learn more about today's speakers, their full bios can be viewed on our website. After our speakers give their opening remarks, we'll turn to the audience for questions. If you have a question, please enter it into the Q&A function at the bottom of your Zoom window and we will do our best to answer as many as we can. Finally, I'll note that as always, all expressions of opinion today are those of our guest speakers, not the Federalist Society. With that, Mr. Farmer, thank you for joining us today and I'll hand things over to you.

John Farmer: Thank you very much, Edith. I'm going to share my screen because I have a few slides to help keep track of what I'm going to say. So let me share my screen and we should be good to go there. If anyone has a problem seeing that, please alert me. So actually let's take that off. That's going to be confusing. There we go. Alright, so today we're going to discuss a case called Elder versus Vidal and in order to understand it we need to do a little bit of background so I'm going to provide the background and Mike's going to give you the talk about the case. So I'm a small appetizer. Mike is the generous main course. There are a couple of provisions of the Lanham Act that we need to know about. These are sections of the Lanham Act that prohibit the registration of certain types of marks.

There's one prohibition that is going to come up in a later part of my talk where I talk about two cases that led to the case, Mike is going to discuss, and after this slide, I'll tell you about the provision that's at issue in that case. So one section of the Lanham Act, Section 2-A, prohibits the registration of marks that consist of or comprise immoral, deceptive, or scandalous matter, or matter which may disparage or falsely suggest a connection with persons living or dead, institutions, beliefs, other national symbols, or bring them into contempt or disrepute. This section is seen as having two components. One is called the "dirty words" clause. That's what it means by immoral or scandalous. You can't register dirty words like the F-bomb and the other one's referred to as the disparagement clause. You can't register something that disparages a person or group of people, an institution, or a set of beliefs.

Another section of the Lanham Act that also prohibits registration of certain kinds of marks is section 2-C. It prohibits the registration of a mark that consists of or comprises a name, portrait, or signature of a particular living individual, except by his written consent or the name, signature, or portrait of a deceased president of the United States during the life of his widow if any, except with the written consent of his widow. So if you're a sports fan nowadays you may have heard of NIL - Name, Image, and Likeness. You may have referred to it as the "right of publicity." Essentially, you can't federally register someone else's NIL without their permission. So the other provision we need to know about today is one everyone here knows well about and that is the First Amendment to the Constitution, specifically the Free Speech Clause. Now the first case that gets us on the road to Elster is a case the Supreme Court decided in 2017 called Matal v. Tam.

That case concerned an application to register a mark, that is "The Slants" and it was the name of a rock band consisting of Asian men or men of Asian ethnicity. And you could say this is the case where the term you could say is derogatory to call someone Asian a slant, but they were owning the term. I guess you would call that irony or whatever. I'm not quite sure what to call that. Well, even though they were owning it, the trademark office denied registration citing section 2-A of the Lanham Act, specifically the prohibition on registering disparaging marks. 

The case made its way up to the Supreme Court and in an opinion written by Justice Alito, the court ruled unanimously that that restriction on registering disparaging marks facially violates the Free Speech Clause, because it is viewpoint discriminatory. The government argued that trademark registration is really government speech, not private speech so that the government has more latitude to decide what can and cannot be said in a registration, and the court rejected that and held that trademark registrations are not government speaking when someone uses a mark, they're not speaking on behalf of the government, they're expressing themselves, and the court pointed out that if trademark registrations were government speech, copyright registrations would also be government speech, and that makes no sense because you can get a copyright registration on any original work of expression fixed in a tangible medium and all sorts of viewpoints are expressed in copyrights, so that can't possibly be the government speaking. Now after that, the court broke down a bit.

There were portions of Justice Alito's opinion that were joined only by Justice Roberts - or Chief Justice Roberts - and Justices Thomas and Breyer. This section of the opinion narrowed things some and the other concurrents did not agree with that narrowing. Now again, these justices pointed out that this is viewpoint discrimination, that's unconstitutional. Everyone on the court agreed with that, but then Justice Alito said, we're not really sure what the standard of review should be here. If you're familiar with First Amendment law, certain speech restrictions are considered to be "especially problematic" and they get strict scrutiny.

Others are considered to be less problematic, such as maybe commercial speech, and they only get intermediate scrutiny. Justice Alito declined to say which standard of review applies because he said that even if intermediate scrutiny applied in this case, it would not pass that. Another thing he did that the other concurring justices didn't go along with is suggested that Congress might be able to rewrite the statute more narrowly in a way that would pass the free speech test. And that is if Congress narrowed that provision to only prohibiting terms that encourage invidious discrimination. Justice Kennedy spoke for the other justices on the court in filing a different concurring opinion. Joining him were Justices Ginsburg, Sotomayor, and Kagan. He said, Justice Alito said that this is viewpoint discrimination and that can't pass, but he said even commercial speech is no exception, ever, to the prohibition on viewpoint discrimination and said in his view that strict scrutiny should always be applied in cases of viewpoint discrimination even if it is commercial speech.

He also declined to endorse the suggested narrower wording that Justice Alito talked about in his opinion as a way Congress might be able to save part of what it was trying to do. Justice Thomas also filed a concurring opinion and there he restated his long standing view that strict scrutiny always should be applied to truthful speech regardless of whether the speech is commercial - he doesn't buy the commercial/non-commercial dichotomy. Alright, the second case, and the only other case I'm going to tell you about that paves the road to the decision Mike will discuss, is Iancu v. Brunetti, which was decided in 2019. This concerned an application to register the mark - cover your ears children -"FUCT" for items of clothing, although it was spelled FUCT, but that's the phonetic equivalent of the F-Bomb, and under trademarks, phonetic equivalents count as the properly spelled version, and he got denied registration.

He appealed it all the way up to the Supreme Court and the Supreme Court struck down another section of the Lanham Act. This time, what barred registration and what the Supreme Court struck down facially was the restriction on registering marks constituting, "immoral or scandalous words". 

We call this the "dirty words" clause. So the dirty words clause fell away here just as the disparaging terms clause fell away in the previous case. This time, the justices were even a little more fractured. It was a 6-3 decision. The majority opinion was written by Justice Kagan and joined by justices Thomas Ginsburg, Alito, Gorsuch, and Kavanaugh. They said this prohibition on registering immoral and scandalous terms is viewpoint discrimination just like in Tam, so just like in Tam it must fail. And the government had tried to argue a narrowed interpretation of those words to save that ban from being unconstitutional, and this group of justices said that that's not possible.

The language of the statute does not bear making such a limiting interpretation. There are a bunch of additional opinions there. I won't break them all down, but you'll get the flavor of things. Justice Alito filed a concurrence that emphasized that viewpoint discrimination always violates the Free Speech Clause. He once again returned to the idea of suggesting to Congress how it could save the situation. He pointed out - or he felt - that Congress might be able to ban registering vulgar marks, and that such a term would not get into the expression of ideas one where the others said that might pass constitutional scrutiny. So that's similar to the suggestion of narrowing in the Tam decision. There were three justices or three separate opinions, one by Chief Justice Roberts, one by Justice Breyer, one by Justice Sotomayor that Justice Breyer joined, that concurred in part and dissented in part, and mainly it was how much you might be able to reinterpret the statute.

All three of these justices in their various concurrences said that immoral cannot be construed narrowly enough to be constitutional because remember, the prohibition is not technically dirty words, it's immoral and scandalous terms, but they said scandalous could be construed sufficiently narrowly to be constitutional. They argued it could be construed to attack obscene, vulgar, and profane statements. Now remember, the majority said there's no way you can interpret this in a way - or narrow the interpretation in a way that's constitutional because that would be reading too much into the statute. So at the end of the day, ultimately all the justices agreed that this was viewpoint discrimination, that viewpoint discrimination is unlawful, but they disagreed as to whether a saving interpretation might be possible. Alright, before I turn things over to Mike, I want to point out through - I've got three more slides - on this slide in the next slide, there are some other sections of the Lanham Act that bar registering marks because of what they consist of, and the two decisions I told you about, and the one decision that Mike's going to mention are going to raise the question of whether some of these other prohibitions might also be unconstitutional under the Free Speech Clause. I'm not suggesting they are, although there's a lot of commentary about one of them. For example, section 2-B of the Lanham Act prohibits the registration essentially of flags and coats of arms and municipal logos or those of any foreign country in addition to those of the United States for a municipality, but there's another section. This is the one that gets a lot of chatter - one that prohibits the registration of a mark that would dilute a famous mark. It also prohibits the use of a mark that would dilute a famous mark. If your trademark is not a household word like Coca-Cola, then the only protection you receive is against infringement, which is someone else - a junior user - using the same or a similar mark for the same or similar goods or services.

That's infringement. If you have a famous mark, in other words, it's a household word, then you receive additional protection. You get protection from dilution by tarnishment and dilution by blurring. Dilution by tarnishment is where someone takes your famous mark and uses it on something controversial like porn or alcohol or drugs or tobacco or firearms like Mercedes rolling papers for example. That's something you can't register. You also can't register a mark when it blurs a famous mark. And this means when you take a famous mark that's only been used for what that manufacturer uses it for and you put it on something unrelated, the idea is by putting it on something unrelated where it wouldn't be a trademark infringement because it's unrelated, you are destroying the singular association between that mark and the particular goods. Like if you made Coca-Cola socket wrenches. There's a lot of discussion in the academic literature as to whether that dilution prohibition is especially vulnerable to a free speech challenge.

There are some other restrictions on registration - I'm going to gloss over these quickly because they're rather lengthy to read - there's a restriction on keeping a certification mark registered. A certification mark is like a good housekeeping seal of approval. It's when you certify others as meeting certain standards. There is a basis for canceling registrations if they misrepresent the source of the goods or services. It's hard for me to see that one not withstanding a First Amendment challenge. And similarly, there's another section that prohibits a laundry list of no-nos with marks such as marks that are merely descriptive, deceptively misdescriptive, primarily geographically misdescriptive, primarily geographically deceptively misdescriptive, registering surnames, and anything that's functional -iIn other words, it's not a mark. I know this is a lot of gobbledygook, just take that as knowledge that there's a laundry list of other sort of categorical rules against registering certain kinds of marks.

The last thing I'm going to leave you with before I hand things over to Mike, and this is my last slide, is that getting past these hurdles is not enough to get a trademark registration. If something does not function as a mark, it can't be a mark and it can't be registered as a mark. One thing you should know is that trademark registration does not create trademark rights. It only strengthens rights that are created by using a mark out in the real world. Like if I open a hot dog stand called Farmers Famous Franks, I have a common law trademark to that from the minute I start doing business but it's limited to the geographical area I serve, I can strengthen those rights by federally registering them. When you go to federally register anything, one of the first questions the trademark office asks is "Does this thing you're seeking to register actually function as a trademark?" To function as a trademark, it's supposed to signify the origin of the goods or the provider of the services. It's really a consumer protection law so that consumers can see the mark and say, "Oh, I know who made that, or I know who provides that service. I know their reputation for quality. I can make my buy or no buy decision based on that." And so if something doesn't perform that source-signaling function, it's not a mark. And so for example, the trademark office frequently will shoot down applications for terms that are actually just ornamental things, like a phrase that might go on a T-shirt, and that's going to come up today. Or it might just be a merely informational phrase, it might be a commonplace message. None of those things really function as trademarks. Or it might be a generic term. You can't take generic terms out of the public vocabulary, so you can call the car an automobile, but you can't get a trademark registration on "car" for automobiles or "automobile" for a car because that's a generic term.

You also can't get a registration in a term that merely describes some feature, facet, or function of something unless you prove the public recognizes that the descriptive term is referring to your specific goods like US News and World Report, for magazines. Lastly, you can't register anything -even despite the "names clause" that Mike's about to tell you about, the 2-C prohibition on registering someone's name - you can't ever register something if it falsely suggests an association with sponsorship by or approval of the person or entity referenced. So the sum of the slide is that there are all sorts of things that might stop something from being registered other than the 2-C bar that we're going to discuss today, and the bar in dirty words and derogatory terms. So that's all I have. I will turn things over to you now, Mike, and we may have had one question come in. I'm not certain. I see one in Q&A.

Michael Friedland: Let's take that one. That one's great. Let's take that one after. So thanks so much, John. I really appreciate that. That was a nice overview. The other thing that hadn't occurred to me at all until you mentioned it was that you might get a registration for, I think you said hotdogs - of course as someone who grew up in the southern California area, being a Dodgers fan - we all grew up hearing Vince Scully describe his favorite hot dogs, Farmer John Hot Dogs, the official hotdog of Dodger baseball. So this case is Vidal v. Elster and it starts with a debate between Donald Trump and other Republican candidates for the nomination for President, and so Marco Rubio's on the stage, and Donald Trump always likes to poke at people, and he made fun of Marco Rubio's relatively diminutive stature, and Marco then responded by making fun of Donald Trump. What Marco said were Donald Trump's relatively small hands, and Trump insisted that his hands were perfectly normal-sized average size, perfectly right, but that inspired a man named Steve Elster - who I believe was a labor attorney - it inspired Mr. Elster to seek to register a trademark for "Trump too small" and I think he was going to use it primarily on T-shirt designs. He filed a trademark application for it with the trademark office.

The trademark office rejected it. As John talked about a minute ago, there's something called Section 1052-C, the "names clause", which says that the trademark office shouldn't register a trademark that uses somebody else's name without their consent - a living person's name - without their consent. Mr. Elster appealed that rejection to the TTAB - the Trademark Trial and Appeal Board. The Trademark Trial and Appeal Board affirmed the rejection. The argument that Mr. Elster made was, look, there's Tam and there's Brunetti, and both of those talk about First Amendment rights. I think that this section that the "names clause" also violates the First Amendment and TTAB said, no, it doesn't. He then appealed to the Federal Circuit and the Federal Circuit agreed with him, and said, Yeah, we do think that it violates the First Amendment. We're looking at this, we're going to follow Tam, we're going to follow Brunetti.

In patent cases, we might not always want to slavishly follow the Supreme Court, but in trademark matters, we're going to try and get this right here. We got the message, we're going to go ahead and rule that the names clause violates the First Amendment. Then the appeal goes to the Supreme Court, and the Supreme Court - It's a weird decision - because just to talk about the holding, would take me 30 seconds and the 30-second version of it is every single justice agrees. Every single justice agrees that the names clause does not violate the First Amendment. Justice Thomas writes for the court, but there are huge disagreements within the court as to the reason why the names clause doesn't violate the Constitution. So Justice Thomas's opinion comes in four parts, part one, part three, and part four are all unanimous - pardon - part one, part two, and part four are unanimous.

Part three is joined only by Thomas, Alito, and Gorsuch. So we'll talk a little bit about Justice Thomas and talk about why there's such disagreement. It's one of those things when you look at it and say, "Well, if they all agree on the holding, why is there such a dispute?" And it's because there's a different issue that's lurking in the background and we'll probably find out a little bit more about it in the next couple of days. It has to do with, it isn't really about trademarks, it's really about how you interpret the Constitution, and it's probably even more about guns than it is about trademarks, but we'll get to that in a moment. Okay, so here's what Justice Thomas says. Justice Thomas says when we analyze the First Amendment, we always look at it in terms of "Are we making restrictions based on content or are we making restrictions based on viewpoint?"

And so what he talks about is that content-based restrictions target the subject of the speech. It basically says you can't talk about a particular - it restricts what can be said in terms of what the topic is. Thomas says that those types of restrictions are presumptively unconstitutional and they have to be traditionally narrowly tailored to sell - to serve a compelling state interest. Viewpoint discrimination is also unconstitutional, presumptively, but it's even more egregious. And viewpoint discrimination is where the government says "Not only are we going to restrict in some manner what topics you can discuss, but what views there are." And just to kind of think about it, where the government might do this, the government might have a forum where they say "We're all going to discuss sustainable energy." And so it's probably permissible to say "Anyone who grabs the podium, this is what we're going to be talking about today."

That would be content discrimination. Viewpoint discrimination would be if the government said, "We're going to talk about sustainable energy and we're only going to allow people to speak if they're speaking in favor of our preferred viewpoint." So both of those are subject traditionally to heightened scrutiny, but with viewpoint discrimination, the potential for violation of the First Amendment is even more blatant. So Thomas talks about Tam, he talks about Brunetti. He says in the last two cases we had for trademarks, we both found that the restrictions violated the First Amendment. He then gets to the names clause and he says, okay, the names clause itself, that's definitely viewpoint neutral. What they're carving out is a particular area of content, basically the use of somebody's names, but we don't care what view was being expressed. You can't use somebody else's name without their permission. Elster had made the argument that even though on its face the restriction wasn't a viewpoint restriction, in reality it was.

And his argument was that by requiring you to get consent to use somebody else's name, you're inherently supporting a viewpoint. Because if I wanted to get President Trump's approval for the use of the trademark, he is absolutely not going to approve of a derogatory use of his name, but he might approve of a flattering interpretation, a flattering trademark that's using his name, and the court dismissed that and says, no, that's nothing to do with the statute there. There are lots of uses of his name, but he would still reject the owner of a name, but the person can reject the use of his name for any reason at all or no reason at all. So it's not viewpoint-based, but it is content-based. And so then Justice Thomas and the court says, we need to have some type of analysis for that. He starts with a proposition that trademark law has always coexisted with the First Amendment and the restrictions have always necessarily been content-based.

He goes back through the history, he talks about the history of trademark law in the United States was a heritage from England. For a hundred years. It was all a creature of state law. There was no federal trademark law even until 1870, and when he gets to the law of 1870, he recounts that even that 1870 law had content-based restrictions. For example, the trademark can't merely be a person's name and it can't be merely a geographical name. He then goes to 1946 when the Lanham Act was passed and says that that also contained content-based restrictions, including the restriction against registering marks that are confusingly similar, and that does necessarily require looking at the content of something. So Justice Thomas says that history confirms that trademarks have always been content-based. They've always had to be content-based in order to prevent confusion. So heightened scrutiny probably isn't the right way to examine this.

So Justice Thomas says, "Look, when we're evaluating a solely content-based trademark restriction, we're going to need to look at history and tradition." He talks about the Lanham Act's deep roots in legal tradition going all the way back to the law that we inherited from England, cases from the 1800s, cases from the 1900s, and cases from the 20th century as well, and says that there is this very long history of having regulations that have something to do with somebody's name, either prohibiting somebody else's use of somebody else's name, prohibiting just your own name, there's always been content regulation, and all of that is consistent with the trademark law's purpose, which is to prevent confusion and make it clear who the source, what the source of goods is, who's actually providing those goods. It also says that there can't be an argument that the First Amendment gives somebody the right to - he says the word "piggyback" - to piggyback back off of another person's name.

So Justice Thomas concludes that the tradition of restricting trademark of names has coexisted with the First Amendment and the names clause fits well within that tradition. Okay, so that section is unanimous. The next section of Justice Thomas's opinion consists largely of criticism of Justice Barrett's concurrence and Justice Sotomayor's concurrence, it is relatively short and I'll address that a little bit later. Part four of his decision is also unanimous, and that's one where he really has the holding, well, it's the entire court holding because everyone joined in it. He says, "Our decision today is very narrow." He admits that there's not a comprehensive framework for judging whether all content-based, but viewpoint-neutral trademark restrictions are constitutional, and he also doesn't say that even though he uses history and tradition to determine that this particular one is constitutional, he's not saying that history and tradition would need to be used to uphold every content-based trademark restriction.

He says, "All we're holding today is the history and tradition establishes that the names clause doesn't violate the First Amendment." And then finally he says, “At a later date, we might find a restriction where there isn't history and tradition that's going to establish one way or another whether or not the restriction violates the First Amendment, and at that point, we might have to figure out a different way to do it." So that's what he does. Kavanaugh writes his own concurrence and is joined by Roberts, and basically, it's just a paragraph that says "We concur in everything except the section that criticizes Justice Barrett and Justice Sotomayor. So that's the entirety of Kavanaugh and Roberts. Justice Barrett writes a concurrence that's interesting. 

So she joins, of course, in the holding as everyone does, but she attacks history and tradition.

She says that "The analysis based on history and tradition is wrong twice over" and you'll probably hear that phrase if you haven't read it already because it's fairly strong. It's wrong twice over. She says it's wrong first because Justice Thomas's historical recitation doesn't really support his argument - that the cases that Justice Thomas cites don't actually relate to the prohibition on using somebody else's name. A lot of them refer to the prohibition on using your own name. So that's the first question. That's the first criticism she has. The second one is, she says Justice Thomas never explains why "Hunting for historical forebearers on a restriction-by-restriction basis is the right way to analyze a Constitutional question." She says that there needs to be a standard that's grounded in the relationship between trademark and the First Amendment and what she would propose is a standard that says "Content-based restrictions are okay in the trademark context as long as they're reasonable in light of the purpose of trademark law, which is to facilitate source identification"

She agrees the names clause is reasonable in light of the trademark law's purpose and therefore she would find that, well, she did find of course that 1052-C's restrictions are perfectly viable in light of the Constitution. That's the first section of Barrett's concurrence. The second section is joined by Kagan and Sotomayor, and this is one that is criticized specifically by Justice Thomas. She says, "I think I see an analogy to limited public forums and when the government creates limited public forums, it can regulate content in a viewpoint-neutral way." And she said I think that's a helpful analogy. Justice Thomas says "You can't argue, Justice Barrett, that the trademark registry system is a limited public forum.' Justice Barrett says "I'm not arguing that it is. I'm just saying it's similar." So that's basically her opinion.

Then you get to the next section which is joined by Kagan. It's a very specific criticism of Justice Thomas's historical analysis, and that gives us Barrett. Then you get to Sotomayor, which is joined by Kagan and Jackson, and in Sotomayor's opinion, you get to see a little bit more about what this case is about. Again, Sotomayor, Kagan, and Jackson all agree that the names clause restriction is perfectly Constitutional, but they strongly dispute the reuse and reliance entirely on history and tradition. They say "History and tradition are useful. We think that people should look at it and we think that's perfectly okay, but you have to look at the text of the law that texts the Constitution" and here she's mocking Justice Thomas and Textualism a little bit for not having done that. They would analogize to government entitlement cases as mentioned, that Barrett would analogize to limited public forums and they agreed with that, but they also say it's kind of like a government entitlement case, like a national endowment from the arts grants or legal services, where the government does provide some type of a benefit to people based on content, not based on viewpoint, but based on content and says that giving grants to artists, yeah, it benefits some artists who receive those grants, but it doesn't provide a huge disadvantage to those who don't.

We're not saying that artists whose content who aren't speaking on a particular creative content within the category can't speak, they still can, can create. We're simply not giving them funds. And there's a number of cases that approve of that. Justice Thomas criticizes that as well and says, this is not a government entitlement. Justice Sotomayor says, "The court has never solely relied on history and tradition in the First Amendment context", she says that he's "cherry-picking." She uses the analogy of walking into a crowded cocktail party and basically looking for your friends, trying to find the ones that you like. And that's what Justice Thomas has done. And then she comes to what the case is really about, why there's so much heat and so much disagreement about an issue on which everyone agrees, she attacks Bruin, the Second Amendment case. In that particular case, the Supreme Court had ruled that you look to history and tradition to determine whether or not particular gun restrictions - Second Amendment restrictions - are valid. And she said that's been an absolute disaster. It's created an enormous amount of confusion. That confusion has not been helpful. If you look at the lower courts, we're asking them to become armchair amateur historians, and that's not what courts are really meant to do.

The reason why it's so important right now is because of another case which is pending, which is Rahimi - which presumably is going to be analyzed consistent with Bruin - in Rahimi, the issue is whether or not someone convicted of a crime of domestic violence can be barred from exercising his or her Second Amendment right to firearms. And the question is, should that be analyzed like Bruin - based on history and tradition - or should it be analyzed based on some other principle? And this argument, all of this really is previewing Rahimi. That's what Sotomayor discusses. And there's speculation too because Barrett appeared a little bit skeptical of Rahimi in oral arguments that this is previewing where Barrett's going to come out on Rahimi, or that she's struggling a bit with using history and tradition as she did in Bruin - she did concur in Bruin at the time. And so that's the very detailed discussion of 57 pages of Supreme Court justices arguing about something on which they all agreed 100%, that Section 1052-C, prohibiting use of somebody else's name without their consent, is perfectly Constitutional under the First Amendment.

John Farmer: Alright, Mike, we've gotten some questions. I've read three of them. The fourth one just came in. I think that the first two questions are by the same person. I think the first one's probably better addressed by me, and the second one looks like it's more aimed at you and the third also. So I'll start just by reading 'em, and if we have time left over - I realize that we're about 39 minutes in - if we can get it in under an hour, there are some other things you and I might want to discuss, but we'll see how it goes. The first question we receive says this, "The premise of this line of cases is strange" - This was asked during my talk - "How does denying a trademark, which is under the commerce power, how is that an abridgment of freedom of speech? The band can call themselves what they want and the T-shirts can be printed with profanity, albeit without trademark protection."

Well, I think the answer there is that even if Congress is regulating through its commerce power, which it is in the case of trademarks, it still doesn't permit Congress to abridge the freedom of speech by using the commerce power. The questioner correctly points out that originally trademark regulation was not done with regard to the limits of the commerce power. And someone challenged that, I think it was in a court case, and that led to the writing of the law that regulates things through the commerce power. As a matter of fact, under the Lanham Act, in order to prove usage of a mark, which is a necessary prerequisite to achieving mark registration, you have to aver that you have used the mark in commerce, although that's interpreted to be very broad. But to answer the question, even if you go through that, that doesn't create a vehicle for abridging freedom of speech. So hopefully that answers your question

Michael Friedland: And that was - just to comment on that a little bit - that came up at oral argument and that came up in the opinion too, which is in no way does the denial of the registration mean that he can't make as many T-shirts as he wants to. That is, let's say "Trump too small." All that's at stake is not only can he do it, but other people can do it as well. If he'd gotten registration, he could have prevented other people, he could have had a monopoly on the use of the phrase "Trump too small" This way actually facilitates speech. And I think it was a comment by Sotomayor at oral argument and then that made it into her opinion as well.

John Farmer: I'm going to pull out a thread there, and that is many times people say, including Supreme Court justices, that "All that's at issue here is registration. Nothing is going to stop someone from using the mark in the real world." First, just a small thing, you can sue someone, I know you know this Mike, but the audience may not. You can sue someone for infringement of common law rights and do so under the Lanham Act, and do it in federal court. So registration is not a prerequisite to suing for infringement. What was my other point there? Just having a blank. Darn it. It just totally slipped me. Oh well, I'll come back to it. Alright, let's just ask the other question. "I know that content discrimination is in most contexts treated as viewpoint discrimination, but with less than strict scrutiny, would not profanity constitute content discrimination without viewpoint discrimination?" Mike, I think that question is the heart of what you're looking at in your opinion, so you might talk about how the court distinguished between content discrimination and viewpoint discrimination. And this question probably came in before you hit that part of your first talk.

Michael Friedland: Yeah, and I think the way that they deal with it is if there were a uniform definition of profanity and there wasn't a subjective aspect to it, I think that point would be correct. And I think that the way that the Supreme Court looked at it, particularly in Brunetti is you're asking the trademark office to decide whether or not a particular statement is scandalous or profane, and that requires a viewpoint. Some people might find FUCT profane and some people might not, and that's something that changes. So I think that's how the Supreme Court makes that distinction. But I don't know if John, if you agree with that.

John Farmer: Yeah, no, I agree. I agree. Oh, and I just recovered from my brain lapse earlier. The point I was going to make earlier is that many courts say that there's nothing about denying registration that really restricts freedom of speech because you can still use the mark on a common law basis and you can still sell the T-shirts you want to sell. And if it is indeed a mark, and I touched on that earlier, I take some issue with that statement. I once tried to catalog all of the advantages that come from federal trademark registration. I came up with I think 26 separate things. As a matter of fact, I made a list of them one time. And if you look at the totality of that list denying someone federal mark registration is really disabling in many contexts because of the privileges that are given to mark registrations.

For example, nowadays, whether or not you have a mark registration may determine whether you can sell on Amazon or whether you can keep someone else from selling under the same brand on Amazon due to the Amazon brand registry. So that can be a life or death distinction for a business, as to whether you're going to be able to continue in business putting your products out there. And so, I often think that jurists who comment that this really doesn't keep you from using the mark, don't fully appreciate the full power of a mark registration and all the things it can do for you. Alright, let's go on to another question, Mike, this one was expressly addressed to you, I'm happy to help out if you want. Someone said - oh, we've got a fifth question now - it says, "Mike, can you explain the difference between a mark that is a symbol like the Mercedes three-pointed logo and the name "Mercedes" spelled out? Then the person asks "If you can have Mercedes tacos, can you have Mercedes golf carts?" I think there are really two different questions in there, so I'll let you take your swing at that.

Michael Friedland: So for trademark purposes, there really, from my perspective, there really isn't a significant difference if I'm enforcing a trademark or defending against one. If the name Mercedes has established meaning to consumers, I feel really good about being able to enforce it and I feel really uncomfortable about defending against it if its use would be confusingly similar. And I feel the same about the logo. If the logo has< what we call in trademark law, "secondary meaning" I feel that they should be treated relatively the same. In terms of Mercedes tacos, Mercedes golf carts, it's really going to come down to - in trademark law - the question of whether or not it's confusingly similar, the way that it's analyzed in different circuits is pretty much the same. At the trademark office, it's under a case called Dupont and they consider about 10 factors in the Ninth Circuit, where I primarily practice, it's the Sleekcraft factors, which is about the same number - it's nine factors - and relevant to tacos and golf carts, courts will look at how related the goods are. So would consumers, if they see Mercedes tacos, are they likely to, for a moment think, "I wonder if that's related to the car company. " And so, in the context of just straight trademark infringement, probably a court or a jury would say, no one's going to get confused and think that the Mercedes-Benz Motor Corporation, that Daimler-Benz is making tacos today. Golf carts on the other hand, probably - and this would be a factual question that people would have to address - if I heard "Mercedes golf carts", I might think that Daimler-Benz has gone into the golf cart business because golf carts are so related to cars. I think that's how it would be analyzed

John Farmer: To add a couple of things to that - I know you know this Mike, but it may have been buried in the question - you can have a trademark on a symbol, just like you can a word, and they both can be marks as long as they signify the source of the goods or services. So the three-pointed star is a mark just as much as the word "Mercedes" is a mark. Sometimes you can even have trademarks and things like sounds or product configurations if it's proven to be source-identifying or so forth and so on. For example, you've probably heard the famous NBC chimes, (imitates chime) and that's a registered trademark. And a trivia fact is that those notes are actually the notes on the keyboard, GEC, and it stands for General Electric Company, which used to be the owner of that broadcast service. So a little bit of trivia there. And also with Mercedes, that's probably a famous mark, and so you might not be able to have Mercedes tacos or Mercedes golf carts because using Mercedes on anything else would be dilution of Mercedes's famous mark, in this case blurring because it's not a scandalous product, tacos or golf carts, it just weakens the distinguishing power of having Mercedes refer only to cars. We have another question here.

This one's kind of convoluted, so I'm just going to read it out loud and then you and I can decipher it. The questioner asks, and Mike, I think this is addressed to you, at least I'll read it and you take the first swing at it. "Do you read the opinion as 1: treating trademark law differently? Content-based restrictions do not trigger heightened scrutiny or otherwise violate the Constitution in light of the long history of non-conflict and or the purpose of trademark law to facilitate source identification or 2: softening strict scrutiny for content-based restrictions more generally, or reinvigorating an intermediate scrutiny reasonableness analysis for some content-based regulation, whether historical or not, or 3: only a fight about Bruin, or (4) something else. So you've got a complex menu to choose from, Mike.

Michael Friedland: So it's a great question and I'm probably not going to give it as comprehensive an answer as it deserves. I'm going to take the opinion at face value a little bit and say it is very, very narrow and confined to trademark regulations that are viewpoint-neutral and say that's what it's confined to. I think the underlying motivation for all the justices where if we just follow along where we were with Tam and Brunetti and say the First Amendment has a lot of effect on the trademark registration system, the trademark sort of collapses. If we take this next step and say the First Amendment restricts this type of a - I'm sorry, prohibits this type of restriction - the entire trademark system ultimately seems like it would collapse. They just had to stop it right there. And they kept on emphasizing - and every concurrence mentions this in some way or another - trademark law has to be content-based. It just has to be. So I don't think it has broader implications to other First Amendment contexts. I do think it's a fight about Bruin. I think that's what's motivating a lot of that. But I really think that here it was nine justices on the main issue they all agree, if we're going to have trademark law at all, we have to do content-based regulation. We just have to.

John Farmer: Right. We have two other questions. I'm going to take them in reverse order. I'm going to take the first, and Mike, I'll give you the second. Someone asks, "Do you really think that the market issue, which is 'Trump too small', was capable of identifying the source of the product rather than falling into the line of cases that have taken issue with me or the ornamentation on T-shirts?" And the answer is no. I don't think it was capable of identifying the source at issue. And I think ultimately, trademark registration would have been denied on that basis if the case had made it further down the line if Section 2C didn't kill it. And this emphasizes something I brought up earlier. This happens all the time. There'll be some trending phrase or idea or meme or something out there and people will rush to the trademark office and think, "Oh, here's how I'm going to get rich. I'm going to go apply for a trademark registration on this and then I'm going to own it and I can sell whatever on it, but most importantly, I can stop everyone else from selling something on it and make 'em pay me royalties if they want to do so. And that's my plan to riches."

And for a lot of reasons that just doesn't work like here, the "Trump too small." I think a specimen may have been filed, I'm not certain. I saw someone do a screenshot of a picture of the T-shirt and it's just displayed on a T-shirt and on the back it says something like "Trump and his policies are diminutive" and it lists five or six things that they claim are wrong with his policies. No one's going to look at that T-shirt and say, "Oh, 'Trump too small is an entity' and that made the T-shirt." No, it's the expression on it. And so sometimes with these things when the application is first filed, there's not enough of a basis for the office to say, "You're not using this as a mark, you're using it as speech." They have to wait until they see your specimen, which is your proof of use to see how it's actually used, and then they say, "Oh, you're only using this in an ornamental or speech while you're not using it as a source identifier" and they shoot you down at that stage.

Michael Friedland: Um-

John Farmer: Do you have any comment on that before I read the next question?

Michael Friedland: If a client had come to me and said, "I want it to be source identified," I'd say "That'd be great. Put on a hang tag, put the label on the back of the shirt, sew a label in, and have a variety of shirts that all have the - we're creating the brand Trump too small" and I think you could totally do it, but the way he was doing it, John's 100% right. Very, very, very skeptical that it would actually be source-identifying. It looked like it was just decorative.

John Farmer: And to go down a bit of a rabbit hole there in trademark law, there are certain types of marks that the trademark office will say, "Even if you use it as a mark, we won't accept it as a mark." So there are these things called "commonplace phrases" and if you can show that the phrase that someone seeks to claim as a mark is actually a "commonplace phrase", the trademark office has claimed the power to shoot you down. And even if you use it right, like you put it on hand tags or labels, it can still deny you trademark registration protection. And that's actually a little bit controversial, but that's not First Amendment controversial, that's just nuts and bolts trademark law. Mike, someone else asks a short question here, and this relates to the Elster decision. It says, "So what was Justice Thomas's counterargument against Justice Sotomayor's argument?" I don't know what specific Sotomayor or argument is being referenced, but you might be able to intuit that.

Michael Friedland:No, I think I do because I kept going back to look at it again and see how did Justice Thomas countered what I thought was Sotomayor's most interesting argument, which is "It's illegitimate just to rely on history and tradition." And there wasn't a response to that. When Justice Thomas responded to Justice Sotomayor, he responded only to her argument that you should analogize to a limited public forum. And he attacked that fairly vigorously saying no one's ever argued that the registration system is a limited public forum. The government has previously taken the position the Solicitor General had previously taken the position in, I think either Brunetti or Tam that it's not a limited public forum. So Justice Thomas really confronted that aspect of it, but never really responded to the criticism of relying solely on history and tradition. But we might find out more tomorrow about history and tradition or Friday, when Rahimi comes out.

John Farmer: Sure.

Michael Friedland: If it comes out.

John Farmer: We've got about four minutes left. We have one more question let me just throw it out there. We'll see if we can address it quickly. The person writes "In copyright law, the Supreme Court has held that traditional contours of the law generally make it consistent with the First Amendment" - I don't know anything about that one way or the other. That's my comment - "One of those contours is the Idea-expression dichotomy under which individual words or names are not per se copyrightable. If the uncopyrightability of names is part of the reason the overall law is consistent with the First Amendment and copyright, why is this similar prohibition in trademark law so complicated?" Do you want to take a swing at that or do you want me to?

Michael Friedland: Yeah, no, I can address it. So when I think of copyrightability and the First Amendment, I think of fair use and the idea-expression dichotomy I think is relevant. I think fair use is also relevant and in the trademark context, fair use is also respected, which would be consistent with the First Amendment, the trademark statute, even in the context of dilution and blurring - which is, to me, dilution by tarnishment - is questionable in light of this decision. But even in the statute that talks about fair use, which is a First Amendment type, which is the right to use somebody else's trademark for criticism and parody and things like that, that's still protected. For copyright, at least with regard to the use of names, I had always understood, and John, I'm sure you can correct me if I'm wrong, that a name by itself isn't copyrightable subject matter because it doesn't involve sufficient originality or creativity.

John Farmer: Yes, that's where I was going to go with that: there are all sorts of restrictions on copyright that are not speech restrictions. They don't make it through the filter of an original work of expression because, and the questioner correctly points out the idea-expression dichotomy. That is if you get a copyright registration on something, it doesn't protect the ideas expressed therein. It protects the particular ways in which they're expressed and someone else is at liberty, without infringing upon your copyright, to express the exact same idea in different words and not infringe upon your copyright at all.

Michael Friedland: Alright, so I'll thank you, John, for being such a terrific moderator and for the terrific discussion of Tam and Brunetti and answers to questions. I'll thank the Federal Society, thank you Edith, for organizing this and arranging this.

John Farmer: Ditto to all that. Mike, thanks for doing the heavy lifting by doing the opinion.

Edith Harold: And thank you so much on behalf of the Federalist Society for the benefit of your time and expertise today. And thank you audience for joining us as well. We appreciate your participation. Check out our website or social media to stay up to date with announcements. And thank you again. We're adjourned.