ORAL ARGUMENT REVIEW: Vidal v. Elster (22-704) - 11/01/2023


"Certainty is an illusion ..."
Honoured Citizen
My plan to write up the last 2 arguments of last week ... sort of uh ... failed! But I wanted to get back it so I can finish up those AND the three new ones from this week at some point this week, so here is day 1. I left my notes on the first part of the second First Amendment case from last Tuesday at home and was doing some reading at work, so I will save that case for tomorrow and instead I reviewed the argument transcript from last Wednesday's case. Here goes nothing ...

This case is about trademarks. I suspect that there is a general understanding of what trademarks do - they are a mark that indicates that a particular name, symbol, logo, phrase, design etc. belongs to a particular owner. It's designed to let the public know that the chicken you're buying is from the *actual* Kentucky Fried Chicken and not from some near knock-off competitor, for example - only KFC is allowed to use that trademark once it has been registered. If that intellectual property has actual value, then the public benefits by knowing they are buying the real deal, and the business benefits because they are gaining the benefit of their efforts to build up the perception of their brand. If someone comes along and tries to profit off of that positive perception by infringing on the trademark, there are legal remedies available to the trademark holder to prevent that, so trademarks are quite important and valuable for the protection of intellectual property.

Not everyone who seeks trademark protection owns a brand quite as popular or valuable as KFC, however - and there are statutory requirements covering what things are able to be copyrighted trademarked (ed. note - yeah I screwed this up despite my best efforts not to use the terms interchangeably!). One of those statutory provisions governs what trademarks are eligible for something called the "Principle Registry" - and we don't need to get into the technical details here, but suffice it to say that this is where unique federal trademarks are registered, which provides the maximum trademark protections under federal law. The law indicates that no trademark should be denied access to the Principle Registry unless it meets one of several exceptions, one of which is the subject of this case. 15 U.S.C. sec. 1052 (c) says:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— ... (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

In this case, a man had sought to trademark the phrase "TRUMP TOO SMALL" as used on a variety of different kinds of shirt. His trademark application was denied on the grounds that it violated 1052(c), and the budding entrepreneur sued, alleging that the provision was an unconstitutional content based restriction on his First Amendment rights. The Supreme Court granted cert to answer this question:

Whether the refusal to register a trademark under 15 U.S.C. § 1052(c) violates the free speech clause of the First Amendment when the mark contains criticism of a government official or public figure.

The man seeking the trademark actually won in the Federal Circuit Court of Appeals (a specialized appellate court that hears all patent and trademark appeals), so the Petitioner in this case was actually the Director of the US Patent and Trademark Office, Katherine Vidal (in her official capacity). The position of the United States in defending the dismissal of the trademark application in this case - and asking for it to be reinstated - was largely based on the idea that it was not really speech that was being restricted here, but rather the conferral of a federal benefit (trademark protection). The shirt seller was free to put his mark on anything he wanted to, and to sell it where ever he wanted to ... he just couldn't claim federal trademark protection on it. Further, the government pointed out that the provision in question was viewpoint neutral - it doesn't matter what you're trying to say about a living person, whether it be praise or criticism. All trademarks that attempt to use a living person are denied.

The Justices asked a number of questions about how setting a rule for trademark would interact with the rules for copyright, but to be honest these questions seem a bit off to me - there's no reason that they have to use the same process to evaluate trademark as they do for copyright, and there's no reason that they couldn't (and wouldn't) adopt a rule that made more sense in the other context if the Justices thought it was appropriate to do so. Justice Jackson, meanwhile, was in 11th dimensional chess mode, asking if there would be ways for someone to use the existing laws to turn the viewpoint neutral standard in section c to something more nefarious that would impinge on a speaker's rights. These discussions didn't go much of anywhere and no other Justices really followed up on that idea, so it is likely something that Jackson will either write about alone when the opinion comes out, or will just drop.

There were also multiple exchanges of interest between the government's attorney and Justice Alito, who as usual is a bit off on his own little island as far as how he approaches oral arguments, although he was jovially antagonistic today (is that a thing? I'm going to decide that's a thing). He made very clear that he doesn't believe in the idea of analyzing this issue as one involving "government benefits" and asked if the government loses the case (or at least his vote) if that is their only theory of the case. He got a laugh for suggesting maybe they don't care and have written him off as a hopeless case ... (something that sounds like a good idea on all important cases, if only it were that simple ...).

Alito even asked a question that I've never seen asked before, concerning the party presentation rule. Normally, it is considered inappropriate to decide a case outside of the bounds that are argued by the parties (hence - party presentation rule). However, Alito asked here what he should do if he would find a provision Constitutional, but only on grounds not argued by one of the parties. In other words, Alito was saying "You've done a horrible job with the arguments in this case and you have not raised the grounds that I would prefer to find for you, but theoretically your side should win, so what should I do about that?" It's a somewhat weird question because the party presentation rule usually does not constrain the Supreme Court when they are resolving constitutional disputes ... they are articulating constitutional principles, after all, and they are generally going to lay down a rule that is Constitutionally appropriate whether or not the parties thought to raise it in their arguments.

However, it isn't just a "nice to have" - back in 2020 the Supreme Court overturned a 9th Circuit opinion for ignoring the party presentation rule. That case did not involve any justification for an extraordinary departure from the principle of party presentation, as the Court put it, so the 9th Circuit shouldn't have just gone in their own direction. When you're the highest court in the land, though, and you're articulating Constitutional principles, the circumstances are essentially extraordinary by definition. Hearing Justice Alito ask this question was therefore a bit surreal ... but it also shows that his particular view of how this issue should be resolved is out there in crazy land somewhere.

Justice Gorsuch clarified and expanded the question, helpfully, asking if history and tradition were enough, without taking into account the question of whether this was a "government benefit" or a "free speech" issue, and pointed out that while statutory history of trademark law only goes back to the 1870s, common law extends far further back, to well before the constitutional era, and that an individual's interest in preventing others from profiting off their name has been pretty firmly engrained. Reading through the lines (or, reading the actual comments - Gorsuch wasn't exactly subtle here) it seems pretty clear that he very clearly believes that this is a bedrock principle and is very likely to find for the government here.

Justice Sotomayor also seems to come out fairly clearly in favor of the government here, albeit by a different analysis. For her, the first question is whether this is an infringement on speech - and she just flat out says no (siding with the government's proposed classification of this as a benefit, not a first amendment question). Since the conferral of that benefit isn't a question that leads to "heightened scrutiny", the only thing that matters is whether preventing someone from profiting off another living person's name passes the standard "rational basis" test for legislation, and it clearly does.

That leads to some further questioning throughout the argument on whether the right test is the "rational basis" test or a "reasonableness" test that is some sort of "higher than rational basis but lower than intermediate scrutiny" standard. Both parties suggest they are sort of fine with that because both think they would win in application of the test ... which means of course that someone is going to be very wrong!

The lawyer for the Respondent/T-Shirt designer in this case made, in my opinion, a misstep by trying to be flippant about the purpose of the case. Both in his initial argument statement and later in questioning he asserted that the only interest protected by this "living persons" provision was "protecting the feelings of famous people," an awfully dismissive statement of the purpose of this provision. The Court doesn't usually great such flippancy enthusiastically as it suggests a lack of depth of thought. The Respondent's argument struck me as a bit half baked throughout, and I suspect most of the Justices will think so as well.

There were a few other strands of the argument that I'm not going to get into summarizing because they didn't seem crucial to the resolution (watch, when the opinion comes out one of those things will be the basis of the ruling ...). I do think we are going to see a very easy win for the government overturning the Federal Circuit opinion below here. It will probably be unanimous in terms of the judgment, although you might see Alito write a concurrence in the judgement (meaning he agrees with the result but disagrees with the reasoning). I think his question about the party presentation rule sort of foreshadows his intent there. Anything other than a very clear win for the government here would, however, be very surprising to me.
Last edited: