When I first saw the decision of the United States Court of Appeals for the Federal Circuit in Elster v. Vidal, won by my friends and former colleagues Jon Taylor and Greg Beck, holding that the First Amendment forbade the United States Patent and Trademark Office from withholding registration of the proposed trademark “Trump Too Small” on the ground that Trump had not consented, I thought immediately about the brouhaha over the efforts of Chick-fil-A to block registration of the trademark “Eat More Kale.” Chick-fil-A had opposed on the ground that Eat More Kale would likely cause confusion with the chicken joint’s humorous ad campaign centered around images of cows coupled with the words “Eat Mo Chikin.” I discussed that controversy in a post on the predecessor of this blog. As much as I sympathized with an artist who wanted to sell “Eat More Kale” shirts, and admired him for standing up to bullying from a big company, I questioned why farmers who sell kale at farmers markets should not also be able to sell their own “Eat More Kale” shirts, or to use the “Eat More Kale” line in their advertising. Indeed, the artist had acknowledged that it was local farmers who first came up with the concept and asked him to put in on Tshirts. The artist who had been seeking the trademark could easily use the slogan without registering it as a trademark – I would gladly have defended him if Chick-fil-A had sued him over his shirts. A pox on both your houses, was my reaction. (The trademark was eventually granted, apparently with the aid of political pressure on the PTO from Vermont’s Washington legislators)
Same problem with Elster. It was easy to sympathize with Elster’s desire to make fun of Donald Trump by printing nasty Tshirts. And certainly the First Amendment would not allow the government to forbid criticizing or making fun of a trademark holder (or the owner of a right of publicity) unless the target of the speech gives consent to the use. Thus, there was superficial appeal to the argument that the application of section 1052(c) of the Lanham Act, which forbids registration of a mark containing the name of a living person without that person’s consent, to trademarks containing criticism of government officials, improperly discriminates against “core political speech.” And Elster made no bones about seeking the trademark registration to protect his printing his pungent criticism of Donald Trump on shirts (here is the front of the shirts that he supplied in support of registration) that he would offer for sale.
But as in the case of Eat More Kale, why should other people who want to use Marco Rubio’s nasty insult about the implied size of Donald Trump’s penis to attack Trump be barred by Steve Elster’s requested trademark from engaging in the same core political speech? (I care not a whit for Rubio, but why should he, the originator of the reference, be barred from making money off that slogan?) And the stakes are higher when the requested trademark would take a political slogan out of the public domain, not just limit access to a fun appeal for eating a healthy vegetable. The stakes became even higher when the Supreme Court granted review of the case. I trembled at the possibility that the Supreme Court might say that typical slogans attacking public officials or political candidates could be taken out of the public domain.
Yesterday, therefore, we filed an amicus brief urging reversal of the decision below. We do not defend the government’s argument that the PTO’s application of section 1052(c) of the Lanham Act to trademarks containing criticism of government officials is anything other than content-based discrimination, but we argue, as we did in the Jack Daniel’s case last Term, that the printing of criticisms of companies and political figures on T-shirts and other expressive merchandise is noncommercial speech protected by the First Amendment. We also contend that the Lanham Act cannot consistent with the First Amendment be enforced against this non-commercial speech, and that the only reason why Elster could want a trademark is to secure a limited monopoly in core political speech that would entitle him to decide who else could print this slogan on clothing or other paraphernalia offered for sale, or to charge a fee for a license to use the slogan. Elster’s papers admit (see page 19 of his opposition to a grant of certiorari), that he would enforce his trademark against “competing T-shirts using his brand name in a confusing manner.” In effect, the very fact about the phrase being trademarked—that it represents core political speech attacking the person whose name in part of the mark—that makes it appealing for an as-applied challenge to the statutory provision requiring consent from the person whose name appears in the mark, is the feature of the mark that makes it unacceptable under the First Amendment to grant a monopoly limiting its use on expressive merchandise. We suggest that the Court could decide the First Amendment bars the issuance of trademarks in slogans that criticize political and other public figures, or it could construe the Lanham Act as requiring the longstanding rule for trademark examiners that bars registration of political slogans.
