Prof. Jennifer E. Rothman shares her insight on Vidal v. Elster, a trademark case recently argued before the Supreme Court.
At Rothman’s Roadmap to the Right of Publicity, Jennifer E. Rothman, Nicholas F. Gallicchio Professor of Law, discusses Vidal v. Elster, which concerns the constitutionality of the 15 U.S.C. § 1052(c) bar to registering a trademark that “consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.”
“Based on the oral arguments,” writes Rothman, “the Supreme Court seems likely to reverse the Federal Circuit holding that this bar was unconstitutional.”
Rothman is nationally recognized for her scholarship in the field of intellectual property law. She is the leading expert on the right of publicity and is frequently sought after to consult on legislation, high-profile litigation, and the development of creative projects. Rothman holds a secondary appointment at Penn’s Annenberg School for Communication.
Rothman’s Roadmap to the Right of Publicity is an online resource that provides a comprehensive analysis of state right of publicity laws and commentary on recent cases and legislation.
From Rothman’s Roadmap:
The Applicant here, Steve Elster, had sought to register “Trump Too Small” for use on t-shirts and other apparel. The application initially had been rejected for violating both this bar and the § 1052(a) bar against “falsely suggesting a connection with a person, living or dead.” Upon review by the Trademark Trial and Appeal Board, this rejection of the application was upheld on the basis of the § 1052(c) bar alone. The Federal Circuit than reversed and held that this bar was a content-based speech restriction that was unconstitutional at least when applied, as it was here, to restrict a mark that commented on a public figure, like former President Trump.
The lawyer for the United States, Malcolm Stewart, Deputy Solicitor General, highlighted that bars to registration do not restrict speech. Elster can sell his shirts with the same message on them without a registered mark. He can also obtain a registration for these exact shirts as long as he chooses a source-identifier that does not contain a reference to another person’s name without permission. Many of the justices seemed to agree that there was no speech restriction at issue in the case.
The justices, however, still seemed not to agree on how to categorize the federal trademark registration system. Is it a government benefit? Is it a limited public forum? Neither? The Court dodged definitively answering those questions in Tamand Brunetti, prior Supreme Court cases on the trademark registration system, and I expect them to do the same here… .