Vidal v Elster: Manhood, Methodology, and Free Speech

Prof. Laura E. Little and Hailey McHugh Gilles (Temple University School of Law)

Continuing its string of decisions focusing on trademark parodies, the U.S. Supreme Court handed down last week its decision in Vidal v. Elster, once again reminding us of debates about the intersection of free-speech doctrine, the Court’s methodological split, and quips about the size of Donald Trump’s hands. 602 U.S. __ (2024).

The reference to small hands stems from a jab made by U.S. Senator Marco Rubio against then candidate Donald Trump during the 2016 election: “You know what they say about guys with small hands.” California lawyer and activist Steve Elster reworked the insult, the long running cultural fascination with Trump’s hand size, and its allusion to genital size, into the phrase “Trump too small.” The phrase appeared on T-shirts with the corresponding phrase “Trump’s package is too small” printed on the back.

Elster’s joke fell flat when he attempted to register the phrase, “Trump too small,” as a trademark with the U.S. Patent and Trademark Office in 2018. Elster stated in his application that he wanted to spread a message that “some features of President Trump and his policies are diminutive.” The Trademark Office rejected Elster’s application, citing U.S. trademark law prohibiting the registration of trademarks that consist of someone’s name or that identify a living individual without their consent. Lanham Act, 15 U. S. C. §1052(c).  In other words, the U.S. government would not extend its trademark protection to the message Elster wanted to convey.

Elster’s appeal of the Trademark Office’s decision is the most recent case in a line of decisions challenging U.S. trademark law’s registration restrictions concerning tongue-in-cheek trademarks. In 2017 the Court held that the U.S. Lanham Act’s disparagement clause was unconstitutional. Matal v. Tam, 137 S Ct. 1744 (2017) (ruling the Trademark Office’s refusal to approve trademark protection for an ironic use of a racial slur in the name of a musical group was unconstitutional). Two years later the Court nullified restrictions on “scandalous” trademarks on similar grounds. Iancu v. Brunetti, 139 S. Ct. 2294 (2019) (disapproving refusal to provide trademark protection to a clothing company wishing to use the label “FUCT”). Building on these cases, Elster argued that the Trademark Office discriminated based on viewpoint by preferring trademarks that flattered over those that mocked.

The U.S. Supreme Court disagreed, stating that anyone, even larger-than-life political figures, could withhold consent for the use of their name in a trademark for any reason under the law. Nonetheless, the Court did not hold that the U.S. Constitution disapproves the names clause prohibition, but rather called the names rule an example of a permissible, neutral viewpoint distinction.  While the justices unanimously held that the names clause lives another day, they resolutely disagreed among themselves, thereby highlighting the deep divisions in their preferred methodologies for constitutional interpretation.

Justice Thomas, writing for a five-justice majority, purported to search the history books for his answer, pulling from some of America’s very first trademark disputes, to find that trademark rights and restrictions, and especially those surrounding the use of another’s name, have always “play[ed] well with” the Constitution’s protection of free speech. Thomas’ opinion echoed a larger move towards “history and tradition” by the Court’s conservative justices. Critics of this approach point out that conservative justices pursue a “history if convenient” methodology for constitutional interpretation, cherry-picking only those historical points that support their predetermined bottom-line decision.

Even Justice Barrett, breaking from her fellow conservatives, stated in her concurrence that the Court’s choice to sidestep their duty to set a standard “for gauging whether a content-based trademark registration restriction abridges the right to free speech” is “wrong twice over.”   Liberal Justices Sotomayor, Kagan, and Jackson also asserted their criticism, writing that the “biggest surprise (and disappointment) of today’s five-Justice majority opinion is its reliance on history and tradition as a dispositive test to resolve this case” and adding that “the Court’s laser-like focus on the history of this single restriction misses the forest for the trees.”

But despite the dispute’s subject matter and the Court’s prior championing of the virtues of parody in U.S. society and culture, the opinions in the case did not mention parody, satire, or even the importance of political speech. In particular, the five-justice majority concluded that unprivileged use of another’s name in a trademark acted to ‘trump’ all other considerations, even when the requested trademark conjured a deeply personal attribute that some regard as a metaphor for more salient features of a leading candidate for President of the United States.

While the Court’s holding, narrow as it was, may be seen as a blow to legal protection for political speech within the realm of humor, the Court was quick to point out that a lack of federal trademark protection does not spell the end for political T-shirts. Indeed, the merchandise mocking Trump’s manhood can still be found for sale all over the internet. Although the subject matter of this specific dispute may be cast aside as silly or puerile, the Court’s interpretative divide in this case may show us what both the current and next Supreme Court term may bring. With more Trump-related cases soon to be released, the divide among the Court’s methodologies and the cracks in the Court’s public perception suggest that we can expect special scrutiny of rulings concerning political plaintiffs.  But, one worries, will humor be the casualty?