Initial thoughts on Elster

In part so as not to repudiate big chunks of Tam/Brunetti, the Court instead delivers a major rebuke to Reed v. Town of Gilbert, 576 U.S. 155 (2015) (content-based regulation triggers strict scrutiny), except it doesn’t tell us the scope of the change. The Court seems to rely on the idea that we aren’t really worried that the registration system is government suppression of specific ideas. If so, why did the sign regulations of a city trigger that worry? And, trademark-specific question, does that mean that trademark infringement claims are also not worrisome, or does the difference between denying the benefits of registration and the full suppression/punishment of infringement (and sign ordinances) matter? The swing away from Reed, which less than ten years ago was a major innovation that seemed highly deregulatory, is another example of how the weight of Trump-appointed judges is quickly changing the "conservative" approach to First Amendment free speech doctrine in ways that create divisions among conservatives, as even this relatively unimportant issue demonstrates. (My article with Mark Lemley doesn't cover Elster, but it talks a bit about this dynamic.)

Justice Thomas’s project of dismantling modern defamation law is the undercurrent of his insistence that history and tradition answers the question here. Trademark, conveniently for him, even uses the word “reputation”! Justice Barrett does a good job of showing that history and tradition doesn’t give anything like an answer without also picking a level of generality according to some other principle—since modern registration doesn’t have a history and tradition until the 1940s. This leads her to a surprisingly Breyer-like place of balancing interests.

Under Thomas’s approach, we learn that it just doesn’t matter how tailored the rule is to the underlying interest in protecting against fraud/false connections with people/free riding on their reputations, because 2(c) is enough like previous doctrines reserving rights in names to people who have those names. That reads like a jump away from strict scrutiny right down to rational basis scrutiny, which is concerning, especially since we don’t know what “enough like” means. Next up in registration: flags? Special protections for wines and spirits?

Dilution: tarnishment’s obvious viewpoint-discrimination problem remains untouched by this decision. Some parts of the opinions suggest openness to blurring, whatever the hell blurring is: Defenders of blurring will point to the opinions’ discussions of protecting “reputation” and deterring free riding as legitimate justifications for trademark registration bars, without inquiry into the contours of those concepts or the difference between registration bars and infringement, as well as Thomas’s discussion of the Gay Olympics case, S.F. Arts & Athletics, Inc. v. USOC, 483 U.S. 522 (1987). (Ah yes, the grand history & tradition of making USOC-specific laws.) On the other side, the lack of historical precedent for blurring seems like a problem for some number of Justices (even if a free-riding-based cause of action might be ok). Uncertainties are multiplied by the explicit “good for this day and train only” statements in Thomas’s opinion, as against Barrett’s call for an actual rule of general applicability. For example, I think it would clearly be a mistake to read this opinion as holding that personality interests could justify prohibiting Elster from selling shirts that say TRUMP TOO SMALL, despite the lack of much explicit discussion in the opinions. But that just takes us back to the question of S.F. Arts & Athletics.