Thursday, February 24, 2022

2(c) unconstitutional as applied to TRUMP TOO SMALL

Another round of “how far does this putatively narrow decision extend?”

In re Elster, No. 20202205 (Fed. Cir. Feb. 24, 2022)

Elster sought to register the phrase “TRUMP TOO SMALL” in standard characters for use on shirts. [Note lurking failure to function issue that might be an independent problem.] The examiner rejected on 2(a) and 2(c) grounds, but the TTAB affirmed only on 2(c), so the court doesn’t reach whether 2(a) can cover this kind of disparaging mark.

Besides resisting constitutional analysis, the TTAB reasoned that the 2(c) bar was narrowly tailored to advance two compelling government interests: protecting the named individual’s rights of privacy and publicity and protecting consumers against source deception.

While Tam and Brunetti were decided as viewpoint discrimination cases, the Federal Circuit had already decided that Brunetti involved unconstitutional content discrimination, whether analyzed under Central Hudson or strict scrutiny. [As I’m writing about in more detail, it’s weird that, more than 75 years after the Lanham Act was enacted, courts are not willing to tell us whether its scope matches or exceeds that of commercial speech.]

Brunetti established that, though 2(c) is not a speech ban, denying trademark registration “disfavors” the speech being regulated and thus must be analyzed as a free speech question. Paraphrase: Although content discrimination may be allowed when viewpoint discrimination is not, it makes no sense to say that First Amendment scrutiny of registration is only of whether there is viewpoint discrimination. “Elster’s mark is speech by a private party in a context in which controversial speech is part-and-parcel of the traditional trademark function.” Trademark registration is not like a limited public forum, because “refusals chill speech anywhere from the Internet to the grocery store.”  [This is where things get weird and tangled because all the cases on which this reasoning relies talk about the government suppressing speech, whereas registration confirms rights to suppress the speech of others. But anyway, the First Amendment protects speech that’s sold for profit. And speech printed on a t-shirt.

So, whether the standard was intermediate or strict scrutiny, the government needed at least a substantial interest in enforcing the restriction.

First, applicant had a “substantial” First Amendment interest in criticizing a public official. Such criticism “does not lose its constitutional protection merely be cause it is effective criticism and hence diminishes [public figures’] official reputations.”

The government responded that this interest was outweighed by its substantial interest in protecting state-law privacy and publicity rights, grounded in tort and unfair competition law.

Privacy” “Here, there can be no plausible claim that President Trump enjoys a right of privacy protecting him from criticism in the absence of actual malice—the publication of false information ‘with knowledge of its falsity or in reckless disregard of the truth.’” Time, Inc. v. Hill, 385 U.S. 374, 388 (1967). (Comment: As implicitly recognized in the subsequent discussion, Time extends this analysis beyond government officials to newsworthy matters, but the opinion is not pellucidly clear about whether 2(c)’s as-applied unconstitutionality extends to all nonconfusing uses of a person’s name or only to government officials or only to public figures; my guess is the last, but then again nonconfusing uses of an unknown name probably don’t trigger many 2(c) rejections in the first place).

Anyway, “[w]ith respect to privacy, the government has no legitimate interest in protecting the privacy of President Trump, ‘the least private name in American life,’ from any injury to his ‘personal feelings’ caused by the political criticism that Elster’s mark advances.”

What about the right of publicity? “The government, of course, has an in terest in protecting against copying or misappropriation of an existing mark, just as it has an interest in preventing misappropriation of other forms of intellectual property.” Neither party cited San Francisco Arts & Athletics, Inc. v. U.S. Olympic Com mittee, 483 U.S. 522 (1987), but that case allowed the government to bar even nonconfusing unauthorized uses that “nevertheless may harm the USOC by lessening the distinctiveness and thus the commercial value of the mark.” But “[n]o similar claim is made here that President Trump’s name is being misappropriated in a manner that exploits his commercial interests or dilutes the commercial value of his name, an existing trademark, or some other form of intellectual property.” [Note that this conclusion is accomplished by (again, mostly implicitly) holding that state ROP laws are constitutionally required to, and therefore do, exempt newsworthy uses.]

The government also has an interest in avoiding false endorsements, but that wasn’t at issue here. “No plausible claim could be or has been made that the disputed mark suggests that President Trump has endorsed Elster’s product,” and 2(a) already bars false endorsement. See, e.g., Bridgestone/Firestone Rsch., Inc. v. Auto. Club de l’Ouest de la Fr., 245 F.3d 1359, 1363 (Fed. Cir. 2001) (“This protection of rights of personal privacy and publicity distinguishes the § 2(a) false suggestion of connection provision from the § 2(d) likelihood of confusion provision.”). [Seen this way, not for nothing, 2(c) as incremental protection over 2(a) looks more viewpoint-based, because it will do work only in cases of nonconfusing marks, which are likely to be disparaging ones.] Footnote to legislative history “evincing Congress’s desire to prevent the use of presidential names to promote unsavory or other commercial products.”

Stripped to the ROP alone, that interest “does not support a government restriction on the use of a mark because the mark is critical of a public official without his or her consent.” The Restatement of Unfair Competition recognizes that the First Amendment limits the ROP, and so do courts around the country, e.g., Cardtoons, Saderup, ETW, Hart v. Electronic Arts (3d Cir., citing the part of the case that protected the montage against liability), Lohan v. TakeTwo Interactive (NY).

“The right of publicity is particularly constrained when speech critical of a public official is involved. The Restatement specifically notes that the right of publicity would be unavailable to ‘a candidate for public office’ who sought to ‘prohibit the distribution of posters or buttons bearing the candidate’s name or likeness, whether used to signify support or opposition.’” Thus, there was no valid publicity interest that could “overcome the First Amendment protections afforded to the political criticism embodied in Elster’s mark.” The government recast 2(c) as merely representing “a targeted effort to preclude federal registration that facilitates a particular type of commercial behavior that has already been banned by most states” but “our review of state-law cases revealed no authority holding that public officials may restrict expressive speech to vindicate their publicity rights, and the government cites no such cases.” Rather, most of the cases cited by the government “involve a routine use of a public figure’s name or likeness to promote a product or the misappropriation of the commercial value of their identity.”

Thus, the defense of 2(c) as applied failed at the government interest stage. There was no need to address any overbreadth problems. “It may be that a substantial number of section 2(c)’s applications would be unconstitutional. The statute leaves the PTO no discretion to exempt trademarks that advance parody, criticism, commentary on matters of public importance, artistic transformation, or any other First Amendment interests. It effectively grants all public figures the power to restrict trademarks constituting First Amendment expression before they occur.” But the court left final resolution of overbreadth for another day.

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