Amicus Brief: Vidal v. Elster

Under Section 1052(c) of the Lanham Act, the federal trademark law, the U.S. Patent and Trademark Office (PTO) denies registration of marks containing the name of a living person without that person's consent. That presents a First Amendment problem when the mark criticizes a politician or other public figure, because the government is, in effect, denying a benefit based on the viewpoint a speaker is taking.

In this case, Steve Elster sought to register the trademark TRUMP TOO SMALL—intended as irreverent political criticism of the former president—for use on T-shirts. The PTO rejected registration of that mark, even though dozens of trademarks using the former president’s name favorably have been registered (with his consent). This isn’t political bias—a similar dynamic is in play with President Obama’s name—just a disfavoring of speech critical of someone. Indeed, favoring positive rather than negative messages about a named person is Section 1052(c)’s only meaningful function. Other parts of the Lanham Act independently ensure that trademarks creating a false association with a named person or deception as to a product’s source cannot be registered. All that Section 1052(c) does is equip named persons with the unilateral power to veto the registration of trademarks that they dislike.

After the Federal Circuit ruled for Elster, the government appealed to the Supreme Court, which took the case. MI joined the Foundation for Individual Rights and Expression on an amicus brief supporting Elster. We argue, in an entertaining brief by rising appellate star Chris Michel, that (1) the First Amendment prohibits viewpoint discrimination in law and in fact; (2) Section 1052(c)’s consent requirement causes de facto viewpoint discrimination because it disfavors critical trademarks; and (3) Section 1052(c)’s viewpoint discrimination creates serious First Amendment harms.

Ilya Shapiro is a senior fellow and director of Constitutional Studies at the Manhattan Institute. Follow him on Twitter here.

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