The Supreme Court on Thursday rejected a California lawyer’s attempt to trademark the phrase “Trump is so small.”
The decision was unanimous in its fundamentals but deeply fractured in its reasoning, with the justices arguing that the historically based methodology introduced in recent Second Amendment cases should be used to decide First Amendment disputes.
The case concerns a federal law that prohibits trademark registration from “identifying a specific living individual except with written consent.”
“We hold only that history and tradition that the particular limitation before us,” Justice Thomas wrote for the five justices, “does not violate the First Amendment.”
Justice Sonia Sotomayor, in a concurring opinion that reads like a dissent, was very critical of what she said was “the indeterminacy of judicial history-and-tradition inquiry, which can be accurately described as the equivalent of entering a noisy cocktail party and search everyone to find your friends.”
“To make matters worse,” he continued, “the majority of the five justices who carried out this tradition-as-dispositive investigation found their friends at a noisy party to which they were not invited. , all without the guidance of the litigants or the courts below.
In the trademark application, the lawyer, Steve Elster, said that he wanted to convey the message that “some features of President Trump and his policies are very little.” Mr. Elster has used the words on the front of a shirt with a list of Mr. Trump’s positions on the back. For example: “Little civil rights.”
Justice Thomas dryly noted the basis of the reference. “The sign evokes an exchange between candidate Donald Trump and Senator Marco Rubio during the 2016 presidential primary debate,” he wrote, without elaborating.
What Mr. Rubio, Republican of Florida, said was that Mr. Trump had “small hands,” adding, “And you know what they say about men with small hands.”
During the presidential debate, Mr. Trump addressed Mr. Rubio’s criticism.
“Look at those hands, aren’t they small?” Mr. Trump said, presenting them. “And, he mentioned my hand – ‘if it’s small, the others must be small.’ I assure you there is no problem I guarantee.”
The question in this case is not whether Mr. Elster can use the words, on T-shirts or otherwise. That is whether he can register as a trademark.
The Patent and Trademark Office rejected Mr. Elster’s application. But a unanimous three-judge panel of the US Court of Appeals for the Federal Circuit ruled that the First Amendment requires the office to allow registration.
“The government has no valid publicity interest that can overcome the First Amendment protection afforded to political criticism contained in Elster’s signature,” Judge Timothy B. Dyk wrote for the court. “As a result of the president’s status as a public official, and because Elster’s signature expressed disapproval and criticism of the then-president’s approach to government, the government had no interest in undermining Elster’s speech.”
In previous cases, the Supreme Court ruled that other provisions of trademark law did not implicate the First Amendment. But that case, Justice Thomas wrote, involved discrimination based on viewpoint.
In 2019, for example, reject the provision that prohibits the registration of “immoral” or “scandalous” trademarks.
The case concerned a line of clothing sold under the brand name FUCT. When the case was argued, government lawyers told the judges that the term “is the same as the past participle form of the paradigmatic profane word in our culture.”
Justice Elena Kagan, writing for the six-justice majority, did not dissent. But he said the law was unconstitutional because he “didn’t like a certain idea.”
A basic tenet of First Amendment law, he wrote, is that the government cannot discriminate based on a speaker’s point of view.
In 2017, an eight-judge court unanimously rejected another provision of trademark law, which prohibits signs that disparage people, living or dead, along with “national institutions, beliefs or symbols.”
Decision, Matal v. Tam, about an Asian American dance-rock band called Slants. The court split 4 to 4 on many grounds, but all judges agreed that the provision at issue in the case violated the Constitution because it took sides based on the speaker’s point of view.
A recent case, Vidal v. Elster, No. 22-704, dissenting, Justice Thomas wrote. The challenge provision, which applies to both positive and negative references to living individuals, does not discriminate based on viewpoint.
But that is not the end of the matter. As Justice Thomas wrote in a sweeping 2015 decision, Reed v. Town of Gilbert, even the law based on the content is presumptively unconstitutional.
He appeared to be backing away from that position on Thursday, at least in the trademark context. They based their conclusions on an extensive review of historical restrictions on trademark names.
“This history and tradition are sufficient to conclude that the naming clause — a content-based, but viewpoint-neutral limitation of trademarks — is compatible with the First Amendment,” Justice Thomas wrote. “We don’t need to look any further in this case.”
Justice Sotomayor, joined by Justices Kagan and Ketanji Brown Jackson, agreed that the provision was constitutional. But he said the majority’s reasoning was alarming.
“This court has never applied this history-and-tradition test to free speech challenges,” he wrote.
That test, Justice Sotomayor wrote, was borrowed from the court’s 2022 decision in New York State Rifle Association v. Bruen. “The majority attempts to reassure litigants and lower courts that the “historically focused approach” here is reasonable and workable,” he wrote.
Justice Sotomayor said the fallout from the Bruen decision showed that the new methodology was flawed. “One only has to read some of the lower court decisions applying Bruen to appreciate the confusion this court has created,” he wrote.