Artistic Expression or Crass Commercialism? Drawing the lines in Right of Publicity, Lanham Act, and Commercial Speech Cases

PLI Media Law conference

RT: There’s been a rapid and somewhat disorienting shift from a seemingly ever-growing First Amendment freedom of speech to a seeming indifference to speech and press based claims (as contrasted to religious freedom claims) in many categories, concentrated in the sudden conservative abandonment of the commercial speech doctrine. Historically, conservatives opposed the commercial speech doctrine, which held out the prospect of greater regulation of commercial speech than of noncommercial speech. However, as conservatives identified commercial speech, or even just corporate speech and practices, they’d like to regulate as being too woke, and in line with populist, anti-monopoly principles, a number of judges, including judges from varying political backgrounds, have signaled their lack of interest in free speech claims, whether made against copyright, trademark, false advertising, or right of publicity lawsuits. Although the Court long ago recognized that defamation claims need First Amendment safeguards because the state, through the judiciary, is making rules for speech, it is now unwilling to recognize the need for similar limits on other causes of action.

 I’m going to talk briefly about last term’s Jack Daniels case—a trademark infringement and dilution case—as well as Elster, argued last week, in which the Justices appeared inclined to reject a First Amendment challenge to the refusal to register the claimed mark “TRUMP TOO SMALL” for t-shirts. Then I’ll talk about the 9^th Circuit case Enigma Software v. Malwarebytes, which allowed a false advertising claim to proceed based on one software provider’s use of the terms “malicious” and “threat” to describe its alleged competitor’s software, despite a dissent raising free speech arguments. I’ll conclude with some general remarks about commercial speech doctrine after 303 Creative and the pending NetChoice cases. 

Trademark: In Jack Daniel’s v. VIP Products, the Court held that it did not need to apply or even decide the validity of a speech-protective limit on trademark law designed to prevent trademark owners from shutting down expressive works that comment on trademarks, known as the Rogers test.  So long as the defendant was using a similar term as a trademark to brand its own goods (here, dog toys that parodied Jack Daniel’s well-known whisky bottle), trademark law’s test for consumer confusion was all that was required. The First Amendment offered no further protection for this speech, even though the Court did not categorize it as commercial speech, and it would not have qualified as commercial speech under ordinary standards.   The Court did not decide whether the First Amendment offered any protection against trademark infringement claims even for purely expressive noncommercial speech, as every circuit to have considered the issue had held.   But three Justices wrote separately to express their skepticism that even purely expressive noncommercial speech involving trademarks merited a speech-protective test, basing their argument on the fact that the statute did not specifically outline such a test.

 The Court’s conclusion that a defendant’s use as a trademark obviates the need for any further consideration of the First Amendment makes sense, if at all, only as a strong form of the rule that commercial speech receives significantly less protection that other forms of speech, combined with an incredibly expansive definition of commercial speech. In Jack Daniels, the Court claimed that the likely confusion test “does enough work to account for the interest in free expression” in the context of trademark uses.  This language, as others have noted, is very similar to its previous statement in Eldred that fair use and the idea/expression distinction internal to copyright law provide all the First Amendment protection necessary in the context of copyright infringement.   But in Eldred, the Court followed its statement by explaining that the Copyright Clause provided a robust foundation for federal copyright, and that the contemporaneous adoption of the Bill of Rights and the first federal copyright act showed their compatibility. In Jack Daniels, the Court said nothing further; its statement remained ipse dixit. Nor could the court have said more: There is no Trademark Clause and no Founding Era federal trademark law; indeed, the Court invalidated Congress’s first attempt, nearly a century later.  And what current courts call “likely confusion” would be unrecognizable to Founding-era courts—or post-Reconstruction courts—both of which protected trademark owners in far more limited circumstances: only in cases of “passing off,” where the defendant’s goods would substitute for purchases of the plaintiff’s goods. Current confusion doctrine is very different in many ways, two of the most important being, first, that there is no materiality requirement—consumers need not care at all about the thing they’re supposedly confused about, and that itself makes confusion easier to find because people aren’t careful about things they don’t care about. Second, modern confusion covers not just confusion over the source of goods or services but, in many cases, confusion over whether the plaintiff’s permission was required or whether there is some sort of undefined “affiliation” between the parties. The Court’s statement that the likely confusion test provides the only necessary protection for the First Amendment thus lacks either the explanatory apparatus it offered in Eldred or a basis in text, history, or structure.

 Where, then, is the sufficiency of likely confusion from? It has long been true that the First Amendment assigned no value to “false statements of fact,” justifying restrictions on deceptive commercial speech.  But, as I’ll discuss more in a moment, it is possible to turn almost any objection to speech into the claim that the speech is misleading. Jack Daniels suggests that speech might get no First Amendment protection against claims labeled “trademark” claims beyond whatever dubious safety a multifactor likelihood of confusion test may provide—something that generally requires expensive litigation to work out.  The Court also revived Jack Daniel’s dilution claim, which was not based on any falsity or risk of confusion but on the theory that being associated with dog poop would “tarnish” the consumer image of Jack Daniel’s even though consumers understood that there was no relation between the companies. 

 Last week’s oral argument in Elster highlighted both the Justices’ skepticism about free speech claims in the trademark realm and their lack of interest in the realities of litigation. The Court seems likely to uphold the prohibition on registering TRUMP TOO SMALL without Trump’s consent, even though the use isn’t confusing. This will be based on the assertion that Elster has the right to use TRUMP TOO SMALL on the front of t shirts even without a registration, and that he couldn’t be prohibited from doing so. But, if the Court also says there is a legitimate interest in prohibiting source-indicating uses of an unconsenting person’s name, then that will suggest a more formalist version of what counts as a trademark use. 

Consider for example this argument by Gov’t: “As long as [Elster] can use the expression and as long as he can obtain the benefits of trademark registration by choosing a different source identifier to distinguish his goods from others, he has all he needs [for his free speech]”

 This concept of source identifiers is very important: it has to be somewhat normative if we are preserving his ability to use the expression. The limit case is when TM owners convince 15% or more of consumers that any reference to them at all requires permission—the Court seemed unwilling to deal with that scenario, which fits the facts of a number of the Rogers cases it distinguished in JDI where the court simply declared that song titles and movie titles weren’t being used as indicators of source.

 Everything here turns on what the Court understands source identification to mean; if any use that causes any confusion about anything is source-identifying, then the Court will be allowing huge amounts of speech suppression, but if it adheres to the idea that trademark, source-indicating use can be objectively identified and doesn’t exist merely because there’s some kind of confusion, that can point the way to a workable regime.

 My main worry is that the Justices have no interest in the fact that lower courts have routinely considered the existence of confusion about something, including about whether the TM owner gave permission for an accused use, as proof of trademark use.

 For example, Justice Jackson said: “trademark is not about expression. Trademark is not about the First Amendment and … people's ability to speak. Trademark is about source identifying and preventing consumer confusion.”

 That has to be a normative concept of source identification! And it’s incoherent without more (if things are confusing, it’s because they express a message about source or sponsorship; Justice Jackson has to mean that trademark infringement is not about protected expression—but that doesn’t really explain what trademark registration is about).

 The Court’s indifference to expressive elements of TMs also conflicts with the Court’s previous claims in Tam, and even Jack Daniel’s, that TMs themselves often have lots of non-source-indicating expressive meaning: Jack Daniels isn’t just a piece of information, it is a lifestyle and brand identity—but then shouldn’t people be able to criticize that identity if they aren’t making false claims?  Court can’t seem to figure out how to handle that duality between pure information and brand value.

 The Court’s First Amendment jurisprudence in IP may reflect its current preoccupation with legislative over judicial restrictions on speech.  The legal realists taught us that an injunction issued by a judge and enforced by the threat of prison is every bit as much state action as an ordinance passed by a city council. But the Court today seems much less concerned about courts actually ordering people not to speak. The Court’s willingness to see threats to speech in the government’s refusal to register trademarks but not in the government’s banning the sale of products bearing messages altogether suggests that the imperial judiciary is alive and well in the First Amendment arena.

 Turning to Enigma and false advertising: Commercial speech doctrine has generally treated false or misleading commercial speech as completely unprotected by the First Amendment (with some wiggle room for speech that might be correctable with further disclosures). The attack on commercial speech doctrine has historically focused on preventing government regulation of non-false advertising—speech that might encourage unwise consumption of alcohol or tobacco, for example. Thus, commercial speech doctrine got closer and closer to strict scrutiny if the government was regulating outside of the false advertising context, but remained relatively lax if the government was targeting deception.

 But this sharp cliff between types of regulation puts a premium on being able to distinguish false and misleading speech from speech that persuades people to do unwise things. This has always been a weak point: if you defer to the government on what is misleading, then the government can regulate a lot of commercial speech, even if most people are persuaded rather than misled. A few Terms back: NIFLA said that these rules didn’t apply to antiabortion counseling, even with evidence that clients were misled about what these antiabortion services did. And some people took that as a signal that mandatory disclosures generally were in trouble, though I was never particularly persuaded: my own view is that abortion rules are special and the Court ignores the ordinary First Amendment analysis in abortion cases.

 Enigma is a useful test case because it sounds like a standard false advertising case: the parties allegedly compete (though the defendant doesn’t agree that they do) and its software labeled the plaintiff’s software as a potential threat or potential malware. Although the Ninth Circuit majority acknowledged that there’s a lot of judgment involved in deciding what is malware, it rejected the defendant’s argument that threat or malware were nonactionable opinion, in the context of threat defense software. A dissent argued that this was classic opinion, given the ambiguities in the definition of malware, which can include stuff that’s just not helpful. And I tend to think that we should be willing to find falsifiability where the advertiser claims some kind of expertise in the field, even if we shouldn’t find ordinary users’ characterizations of something as malware to be potentially defamatory. But it’s also useful to note that Enigma applied the Lanham Act, which bars false or misleading commercial advertising generally, rather than legislatively or administratively identifying a more specific practice. Thus, case by case adjudication in court is required to find deception. By contrast, a district court in Colorado last week granted antiabortion activists the right to advertise “abortion reversal” despite an legislative finding that there is no such thing—because the drugs at issue could lawfully be administered for other conditions, the activists had free exercise rights to promote them for abortion reversal. Of course the situation isn’t exactly the same, but it’s indicative of where judicial deference is going—to people making religious claims and not to legislatures making findings of fact.

 Compare the question: can one lawfully advertise conversion therapy to change a young person’s sexual orientation? NJ case a few years back allowed false advertising claims against the advertiser to proceed. But: If the government can decide that the promise of conversion therapy is false, can a different government also decide that it is false and misleading to offer gender affirming care to trans youth? If you think that the problem is that this issue is too politicized to allow one side to be labeled false, consider how many other things have become politicized, and will be politicized if one party acts. One recent Major area of contestation has been: vegan meat and dairy substitutes. Meat-producing states have tried to declare that it’s inherently misleading to use terms like chik’n or sausage, or even oat milk. Courts so far have struck those down because in the courts’ own views the terms aren’t misleading—but there are surveys out there that say otherwise for a nontrivial number of consumers. In addition, the real problem with the vegan alternatives is that they often have a very different nutritional profile; there are tragic cases of children who have suffered diseases like kwashiorkor because their parents were feeding them only vegan alternatives. And the evidence is very clear that ordinary consumers do not understand the nutritional differences between almond milk and cow’s milk. Does that mean a ban on the term “almond milk” is justified?

 The usual response is to punt to disclosures: we’ll fix this problem by telling people the nutritional content is different! Information overload makes this less effective; the very power of the term “milk” as a cognitive shortcut tends to lead people to believe they don’t need to know any more, meaning that they ignore additional information. So in fact you may not be able to solve the problem with more disclosures. But they’re politically palatable in ways that bans usually aren’t, so disclosures are a popular solution.

 They can also be incredibly burdensome, often not because of the costs of publicizing the disclosure itself but because of the record keeping that needs to be done. For example, keeping records to ensure that all one’s contractors feed cows organic feed can be difficult, as can identifying the country of origin of each head of cattle if it’s cheapest to just commingle them in huge lots. And here we arrive at the latest wrinkle in Commercial speech doctrine generally:

 NetChoice: Texas and Florida, explicitly trying to punish companies perceived as being too liberal, enacted burdensome requirements on large social media companies. I’m not going to discuss the viewpoint neutrality mandate, but both states also ordered social media companies to provide detailed information to users about every moderation decision they made, with risks of substantial penalties for every error or failure to disclose enough information to satisfy the states’ AGs. The 11^th Circuit struck this compelled speech down even using intermediate scrutiny, while the 5^th Circuit held it was an unremarkable disclosure mandate regulating commercial speech. The key move made by the 5^th Circuit was to treat all content policies as commercial speech, which also suggests that the Washington Post’s editorial policies are commercial speech. Of course, the point was to make it extremely expensive, burdensome and risky to moderate content, with the predictable result that companies would do a lot less moderation, so here we have disclosure that is defended as protecting consumers—so they’ll know what the actual terms of service are and how they’re enforced—but actually enacted to change the underlying content policies. Nor are liberals immune from this: Washington DC’s AG is seeking to get information about individual facebook accounts to make a claim about its actual policies on covid denial being other than they were supposedly advertised to be.

 I hesitate to make predictions here but I posit to you that a Court that no longer sees the point of protecting nonreligious speech, or no longer sees media entities as having their own speech interests distinct from those of their users, is going to be dangerous for media freedom far beyond intellectual property claims.

 Bennett Cooper (Bad Spaniels/VIP): Without a safe harbor, we have to fight hard on the confusion arguments on remand. We are confident in that, as well as a challenge to the viewpoint discriminatory nature of dilution by tarnishment. You have to sell the joke: if the courts don’t get it, you’re having a harder time: Kagan didn’t get the joke.

 Panel Leader: Jeremy Feigelson: Is the 1A in trouble when courts avoid doctrine and say “this is just a TM case”?

 A: We’ll have to see. Speech as its own category/do other categories take free speech into account, for example if the multifactor test can offer true speakers offramps from the multilane highway of litigation, that can help.

 Bruce Johnson: Commercial speech doctrine is becoming more uncertain as a category. NetChoice cases are compelled editorial transparency; both 11^th and 5^th Circuit used commercial speech/Zauderer, which is the weakest test available. It only applies to ads! Why use this category to interpret compelled editorial transparency? Baffling! Unclear to what extent we’ll have commercial speech as a separate doctrine, as opposed to “Zauderer for speech we don’t like.” AG pressures: efforts to prohibit Yelp users from communicating about crisis pregnancy centers, using the Little FTC act in Texas. Washington/Value Village case: if we can squeeze this into commercial speech, we can regulate the hell out of it. Users were commenting about things protected by 1A until Ken Paxton decided that wasn’t ok. Making commercial speech law incoherent.

 Jennifer Rothman: Commercial speech doctrine has been eroded/diluted over decades. Part of a larger story of Court deferring to property rights over speech. After Jack Daniels we have questions and concerns both within TM and 1A. Rogers is important to a variety of creative industries that have relied on it for references to identities/marks. Court clearly signals that it doesn’t love Rogers, but they didn’t make a bright line about use as a mark. But that’s also true of Rogers itself, where Ginger Rogers’ name was incorporated into the movie title itself, which seems to function at least in part like a source identifier (contingent on identifying a particular creative work, which because of copyright law will be from a particular source for a while).

 Thinks the lower courts will still gravitate to Rogers in traditional expressive use cases, not product cases. But products can be expressive, some will say! Still, courts are going to draw lines. Not really a comment; using value of mark to make a joke, which is generally disfavored. We may see less destabilization b/c courts are still going to prefer/protect traditional expressive uses and not “commercial products.” But this also destabilizes defenses to ROP claims, in conjunction with Warhol, b/c some courts have also relied on Rogers in ROP cases. To the extent that Warhol calls transformativeness into question v. market harm, states like California that use transformativeness in 1A defenses to ROP will also see those destabilized. Finally, dilution: doesn’t think Court shares her (or RT’s) concerns—dicta suggests that Court will find dilution by tarnishment ok, even if it seems viewpoint-based.

Johnson: Bigelow v. VA was an abortion speech case; Court went out of its way to protect commercial speech where something was legal in one state and illegal in another; we’ll see more efforts pushed on whether and to what extent speech is purely commercial or whether there are expressive rights underneath it.

Feigelson: connection to 303 Creative?

A: decided on slender record; Court went out of its way to protect website developer from being compelled against her will to respond to a person who allegedly called her and wanted to have a gay wedding website; this doesn’t seem to be true but the Court still said she didn’t have to provide service. Court eliminated Colorado’s disclosure requirements too. Zauderer requires you to provide corrective speech where your affirmative commercial speech would otherwise be misleading; but the test is “purely factual/noncontroversial,” and that doesn’t seem to apply here.

Feigelson: Elster: is Court going out of its way to limit the First Amendment?

A: not really what the case is about—don’t overcommit to preliminary interpretations. But they were suggesting that the free speech interests weighed in the other direction: allowing one registration of Trump Too Small could prevent other criticism of Trump b/c Elster could block competitors. There are some arguments that the 1A weighs against registration here [though will the Court recognize that with other registrations?]. Other connections: 2(c) bar is about gov’t interest in protecting individual identity—“longstanding” protections for individual identities in TM law. This is an instance where you don’t have to show likely confusion about sponsorship/endorsement. That suggests again the Justices’ willingness to allow claims not rooted in showings of likely confusion—which would be helpful for dilution’s survival.

Cooper: These cases are on a spectrum: viewpoint discrimination v. neutrality; whether you’re talking about the right to have a good name v. effectiveness as a source identifier. Tam/Brunetti found viewpoint discrimination, whereas 2(c) is viewpoint-neutral [except in combination with 2(a) and 2(d)]. Tarnishment situation is more like Tam/Brunetti, because you’re talking about banning nonconfusing uses with a particular viewpoint. 2(c)’s consent requirement is more about source identification: worry about potential endorsement/connection. Blurring is about effectiveness of mark as wayfinder in marketplace; the Court might favor that b/c it’s closer to TM’s function. Tarnishment is a “happy talk” provision.

Turning to ROP:

Rothman: Writers’ strike is settled; actors continue—they seem close on residuals, pay structure, streaming. But still outstanding in external reporting is AI provisions. Concerned about studios/producers scanning actors and reusing them w/out control or payments.

Lots of legislation proposed furthering particular parties’ interests, including NO FAKES act—resurrecting James Dean—deceased performers could replace work for the living, and we don’t necessarily want to create more robust rights in the dead to allow that replacement to take place. SAG/draft legislation hasn’t addressed need for disclaimers/revealing to the public that the actual person had nothing to do with the work, which could be important far beyond creative industries.

Originally NO FAKES was fast-tracked, sponsored across party lines. But it turned out not everyone could agree on it.

Feigelson: should Enigma cause worries about product reviewers?

RT: depends on how integrated you are with your sponsors. If you are heavily integrated, then disclosure at a minimum is required. And if you’re making health claims then yes you should worry. But Wirecutter is unlikely to be treated as commercial speech—that’s a product review.

Johnson: “threat” and “malware” would be 1A protected opinion in most circumstances; the 9^th Circuit found them suspicious b/c a competitor used those terms—an exception created when it’s not quite commercial speech (footnote says that it wasn’t clear this was commercial speech; that was for remand). Liability wouldn’t arise in a pure op-ed.