Lanham Act Archives - Cokato Copyright Attorney: The Law Blog of Thomas James

Enduring (Non-AI) Legal Issues

With so much attention being given to the legal issues that AI-powered technologies are generating, it can be easy to overlook or underestimate the importance of long-standing legal issues having nothing to do with artificial intelligence. While it would be neither possible nor particularly useful to catalog all of them in a single blog post, it might be helpful to highlight a few key legal issues that are developing alongside developments in AI law.

Copyright Law

The core principles of intellectual property remain anchored in traditional law. In that connection, it is important to understand the philosophy of copyright. Copyright is not the only kind of intellectual property there is, but it is by far the most common. Everyone who has ever written a story or a poem, scribbled a doodle, or composed an email message is very likely a copyright owner. Merit is not a requirement. In theory, even that terrible drawing of a turkey you made in first grade by tracing your fingers and hand on paper and drawing a head and two legs on it may be protected by copyright. Whether it makes sense to pay the filing fee to register something like that is a different story.

A key issue in copyright law that continues to develop is fair use. Courts have been grappling with how to interpret and apply the four vaguely worded factors they must to make findings about whether a particular otherwise-infringing use is “fair” or not. The idea of “transformative use” is at the center of this evolving doctrine. Andy Warhol Foundation for the Visual Arts v. Goldsmith, decided in 2023, is a leading case in this area now. Other limitations on copyright infringement liability, such as the safe harbors set out in the Digital Millennium Copyright Act (DMCA), are also important. There are also evolving protections for sound recordings and licensing. Other topics in copyright law include such things as the registration requirement, damages for infringement, diversity, copyright estoppel, the limitations period, the extent of protection for shorter works, compulsory e-book licensing, and circumvention of copyright protection measures.

The Internet Archive lawsuit addressed the phenomenon of digitized e-books and the impact on authors of making them freely available to readers via an online digital library.

The new administrative court for resolving smaller copyright claims, the Copyright Claims Board, is one of the more significant developments in copyright law in a long time. Find out what to know about the new CCB.

Read about the top copyright cases of 2021.

Read about the top copyright cases of 2022.

Read about the top copyright cases of 2024.

Meanwhile, more and more works continue to enter the public domain.

Trademark Law

There has been a surge in interest in trademark law ever since the COVID-19 phenomenon. Many small brick-and-mortar businesses had to shut down as people were instructed to quarantine at home. While quarantining at home, a lot of people had the same idea: Starting a home-based, online business. Those new online businesses needed to have names. The USPTO was soon flooded with an unusually large number of trademark registration applications. Competition in the trademark space became fierce. Descriptiveness and likelihood-of-confusion challenges increased. New laws and procedures, such as the Trademark Modernization Act, were enacted to clear more room for new businesses by cancelling unused trademarks and cancelling registrations for classes of goods and services no longer being used by the trademark owners. Interest in nontraditional marks like color marks, trade dress, and sound and olfactory trademarks (smell marks) has also grown.

The clash between First Amendment values and trademark interests continues to surface from time to time. Courts have addressed trademark speech rights on several occasions now.

And of course, distinctiveness, likelihood of confusion, and registration disputes are ongoing.

Foundational Context: Major IP Developments of 2023

This section is a repost of an article I wrote in 2023 describing major developments in various areas of intellectual property law that took place that year. While I have broadened the scope of the discussion, it can still be useful to look back at what went on during that pivotal year, as it provides important context for the developments in IP law that are taking place now.

Copyright: Fair Use

Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith et al.

I’ve written about this case before here and here. The Supreme Court issued a ruling in the case in May. The decision is significant because it finally reined in the “transformative use” doctrine that the Court first announced in Campbell v. Acuff-Rose Music back in 1994. In that case, 2 Live Crew had copied key parts of the Roy Orbison song, “Oh, Pretty Women” to make a parody of the song in its own rap style. The Court held that the 2 Live Crew version, although reproducing portions of both the original song and the original recording of it without permission, transformed it into something else. Therefore, even though it infringed the copyright, the 2 Live Crew version was for a transformative purpose and therefore protected as fair use.

In the thirty years since Campbell, lower courts have been applying the “transformative use” principle announced in Campbell in diverse and divergent ways. Some interpretations severely eviscerated the copyright owner’s exclusive right to make derivative works. Their interpretations often conflicted. What one circuit called transformative “fair use” another circuit called actionable infringement. Hence the need for Supreme Court intervention.

In 1984, Vanity Fair licensed one of photographer Lynn Goldsmith’s photographs of Prince to illustrate a magazine article about him. Per the agreement, Andy Warhol made a silkscreen using the photograph for the magazine and Vanity Fair credited the original photograph to Goldsmith. Unknown to her, however, Warhol proceeded to make 15 additional works based on Goldsmith’s photograph withour her permission.. In 2016, the Andy Warhol Foundation for the Arts licensed one of them to Condé Nast as an illustration for one of their magazines. The Foundation received a cool $10,000 for it, with neither payment nor credit given to Goldsmith. The Foundation then filed a lawsuit seeking a declaration that its use of the photograph was a protected fair use under 17 U.S.C. § 107. The district court granted declaratory judgment in favor of the Foundation. The Second Circuit Court of Appeals reversed, ruling that the four-factor “fair use” analysis favored Goldsmith. The Supreme Court sided with the Court of Appeals.

Noting that it was not ruling on whether Warhol’s making of works using the photograph was fair use, the Court limited its analysis to the narrow question whether the Foundation’s licensing of the Warhol work to Condé Nast was fair use. On that point, the Court determined that the use of the photograph to illustrate a story about Prince was identical to the use Goldsmith had made of the photograph (i.e., to illustrate a magazine article about Prince.) Unlike 2 Live Crew’s use of “Oh, Pretty Woman,” the purpose of the use in this case was not to mock or parody the original work.

The case is significant for vindicating the Copyright Act’s promise to copyright owners of an exclusive right to make derivative works. While Warhol put his own artistic spin on the photograph – and that might have been sufficient to sustain a fair use defense if he had been the one being sued – the Warhol Foundation’s and Condé Nast’s purpose was no different from Goldsmith’s, i.e., as an illustration for an article about Prince. Differences in the purpose or character of a use, the Court held, “must be evaluated in the context of the specific use at issue.” Had the Warhol Foundation been sued for displaying Warhol’s modifications of the photograph for purposes of social commentary in its own gallery, the result might have been different.

Although the holding is a seemingly narrow one, the Court did take the opportunity to disapprove the lower court practice of ending a fair use inquiry at the moment an infringer asserted that an unauthorized copy or derivative work was created for a purpose different from the original author’s.

Copyright Statute of Limitations and Damages

Warner Chappell Music, Inc. v. Nealy

The U.S. Supreme Court has granted certiorari to review this Eleventh Circuit decision. At issue is whether a copyright plaintiff may recover damages for infringement that occurred outside of the limitations period, that is, infringement occurring more than three years before a lawsuit was filed.

The circuits are split on this question. According to the Second Circuit, damages are recoverable only for acts of infringement that occurred during the 3-year period preceding the filing of the complaint. The Ninth and Eleventh Circuits, on the other hand, have held that as long as the lawsuit is timely filed, damages may be awarded for infringement that occurred more than three years prior to the filing, at least when the discovery rule has been invoked to allow a later filing. In Nealy, the Eleventh Circuit held that damages may be recovered for infringement occurring more than three years before the claim is filed if the plaintiff did not discover the infringement until some time after it first began.

A decision will be coming in 2024.

Artificial Intelligence

Copyrightability

Thaler v. Perlmutter, et. al.

This was an APA proceeding initiated in the federal district court of the District of Columbia for review of the United States Copyright Office’s refusal to register a copyright in an AI-generated work. In August, the district court upheld the Copyright Office’s decision that an AI-generated work is not protected by copyright, asserting that “human creativity is the sine qua non at the core of copyrightability….” For purposes of the Copyright Act, only human beings can be “authors.” Machines, non-human animals, spirits and natural forces do not get copyright protection for their creations.

An appeal of the decision is pending in the D.C. Circuit Court of Appeals.

Infringement

Many cases that were filed or are still pending in 2023 allege that using copyrighted works to train AI, or creating derivative works using AI, infringes the copyrights in the works so used. Most of these cases make additional claims as well, such as claims of unfair competition, trademark infringement, or violations of publicity and DMCA rights.

I have been blogging about these cases throughout the year. Significant rulings on the issues raised in them are expected to be made in 2024.

Trademark: Parody Goods

Jack Daniels’s Properties Inc. v. VIP Products LLC

For more information about this case, read my blog post about it here.

This is the “parody goods” case. VIP Products used the “Bad Spaniels” name to market its dog toys, which were patterned on the distinctive shape of a Jack Daniel’s whiskey bottle. VIP filed a lawsuit seeking a declaratory judgment that its product did not infringe the Jack Daniel’s brand. Jack Daniel’s counterclaimed for trademark infringement and dilution. Regarding infringement, VIP claimed First Amendment protection. Regarding dilution, VIP claimed the use was a parody of a famous mark and therefore qualified for protection as trademark fair use. The district court granted summary judgment to VIP.

The Supreme Court reversed. The Court held that when an alleged infringer uses the trademark of another (or something confusingly similar to it) as a designation of source for the infringer’s own goods, it is a commercial, not an expressive, use. Accordingly, the First Amendment is not a consideration in such cases.

Rogers v. Grimaldi had held that when the title of a creative work (in that case, a film) makes reference to a trademark for an artistic or expressive purposes (in that case, Fred Astaire and Ginger Rogers), the First Amendment shields the creator from trademark liability. In the Jack Daniel’s case, the Court distinguished Rogers, holding that it does not insulate the use of trademarks as trademarks (i.e. as indicators of the source or origin of a product or service) from ordinary trademark scrutiny. Even through the dog toys may have had an expressive purpose, VIP admitted it used Bad Spaniels as a source identifier. Therefore, the First Amendment does not apply.

The Court held that the same rule applies to dilution claims. The First Amendment does not shield parody goods from a dilution claim when the alleged diluter uses a mark (or something confusingly similar to it) as a designation of source for its own products or services.

Trademark: International Law

Abitron Austria v. Hetronic International

Here, the Supreme Court held that the Lanham Act does not have extraterritorial reach. Specifically, the Court held that Sections 1114(1)(a) and 1125 (a)(1) extend only to those claims where the infringing use in commerce occurs in the United States. They do not extend to infringement occurring solely outside of the United States, even if consumer confusion occurs in the United States.

The decision is a reminder to trademark owners that if they want to protect their trademark rights in other countries, they should take steps to protect their rights in those countries, such as by registering their trademarks there.

Patents: Enablement

Amgen v. Sanofi

In this case, the Supreme Court considered the validity of certain patents on antibodies used to lower cholesterol under the Patent Act’s enablement requirement (35 U.S.C. 112(a)). At issue was whether Amgen could patent an entire genus of antibodies without disclosing sufficient information to enable a person skilled in the art to create the potentially millions of antibodies in it. The Court basically said no.

If a patent claims an entire class of processes, machines, manufactures, or compositions of matter, the patent’s specification must enable a person skilled in the art to make and use the entire class. In other words, the specification must enable the full scope of the invention as defined by its claims. Amgen v. Sanofi, 598 U.S. ____ (2023)

Patents: Executive Power

In December, the Biden administration asserted that it can cite “excessive prices” to justify the exercise of Bayh-Dole march-in rights. The Biden Administration also has continued to support a World Trade Organization TRIPS patent waiver for COVID-19 medicines. These developments are obviously of some concern to pharmaceutical companies and members of the patent bar.

Conclusion

My vote for the most significant IP case of 2023 was Andy Warhol Foundation v. Goldsmith. Lower courts had all but allowed the transformative use defense to swallow up the exclusive right of a copyright owner to create derivative works. The Supreme Court provided much-needed correction. I predicted that in 2024, the most significant decisions would also be in the copyright realm, but that they would have to do with AI. The prediction turned out to be accurate.

Voice Cloning

Painting of Nipper by Francis Barraud (1898-99); subsequently used as a trademark with “His Master’s Voice.”

Voice cloning is one of the generative-AI technologies that I have described as a perfect tool for the age of deception. Now the issues it raises are reaching the courts.

Lehrman v. Lovo, Inc.

On July 10, 2025, the federal district court for the Southern District of New York issued an Order granting in part and denying in part a motion to dismiss a putative class action lawsuit that Paul Lehrman and Linnea Sage commenced against Lovo, Inc. The lawsuit, Lehrman v. Lovo, Inc., alleges that Lovo used artificial intelligence to make and sell unauthorized “clones” of their voices.

Specifically, the complaint alleges that the plaintiffs are voice-over actors. For a fee, they read and record scripts for their clients. Lovo allegedly sells a text-to-speech subscription service that allows clients to generate voice-over narrations. The service is described as one that uses “AI-driven software known as ‘Generator’ or ‘Genny,'” which was “created using ‘1000s of voices.'” Genny allegedly creates voice clones, i.e., copies of real people’s voices. Lovo allegedly granted its customers “commercial rights for all content generated,” including “any monetized, business-related uses such as videos, audio books, advertising promotion, web page vlogging, or product integration.” (Lovo terms of service.) The complaint alleges that Lovo hired the plaintiffs to provide voice recordings for “research purposes only,” but that Lovo proceeded to exploit them commercially by licensing their use to Lovo subscribers.

This lawsuit ensued.

The complaint sets out claims for:

Copyright infringement
Trademark infringement
Breach of contract
Fraud
Conversion
Unjust enrichment
Unfair competition
New York civil rights laws
New York consumer protection laws.

The defendant moved to dismiss the complaint for failure to state a claim.

The copyright claims

Sage alleged that Lovo infringed the copyright in one of her voice recordings by reproducing it in presentations and YouTube videos. The court allowed this claim to proceed.

Plaintiffs also claimed that Lovo’s unauthorized use of their voice recordings in training its generative-AI product infringed their copyrights in the sound recordings. The court ruled that the complaint did not contain enough factual detail about how the training process infringed one of the exclusive rights of copyright ownership. Therefore, it dismissed this claim with leave to amend.

The court dismissed the plaintiffs’ claims of output infringement, i.e., claims that the “cloned” voices the AI tool generated infringed copyrights in the original sound recordings.

Copyright protection in a sound recording extends only to the actual recording itself. Fixation of sounds that imitate or simulate the ones captured in the original recording does not infringe the copyright in the sound recording.

This issue often comes up in connection with copyrights in music recordings. If Chuck Berry writes a song called “Johnny B. Goode” and records himself performing it, he will own two copyrights – one in the musical composition and one in the sound recording. If a second person then records himself performing the same song, and he doesn’t have a license (compulsory or otherwise) to do so, that person would be infringing the copyright in the music but not the copyright in the sound recording. This is true even if he is very good at imitating Berry’s voice and guitar work. For a claim of sound recording infringement to succeed, it must be shown that the actual recording itself was copied.

Plaintiffs did not allege that Lovo used Genny to output AI-generated reproductions of their original recordings. Rather, they alleged that Genny is able to create new recordings that mimic attributes of their voices.

The court added that the sound of a voice is not copyrightable expression, and even if it were, the plaintiffs had registered claims of copyright in their recordings, not in their voices.

The trademark claims

In addition to infringement, the Lanham Act creates two other potential bases of trademark liability: (1) false association; and (2) false advertising. 15 U.S.C. sec. 1125(a)(1)(A) and (B). Plaintiffs asserted both kinds of claims. The judge dismissed these claims.

False association

The Second Circuit court of appeals recently held, in Electra v. 59 Murray Enter., Inc. and Souza v. Exotic Island Enters., Inc., that using a person’s likeness to create an endorsement without the person’s permission can constitute a “false association” violation. In other words, a federally-protected, trademark-like interest in one’s image, likeness, personality and identity exists. (See, e.g., Jackson v. Odenat.)

Although acknowledging that this right extends to one’s voice, the judge ruled that the voices in this case did not function as trademarks. They did not identify the source of a product or service. Rather, they were themselves the product or service. For this reason, the judge ruled that the plaintiffs had failed to show that their voices, as such, are protectable trademarks under Section 43(a)(1)(A) of the Lanham Act.

False Advertising

Section 43(a)(1)(B) of the Lanham Act (codified at 15 U.S.C. sec. 1125(a)(1)(B)) prohibits misrepresentations about “the nature, characteristics, qualities, or geographic origin of . . . goods, services, or commercial activities.” The plaintiffs claimed that Lovo marketed their voices under different names (“Kyle Snow” and “Sally Coleman.”) The court determined that this was not fraudulent, however, because Lovo marketed them as what they were, namely, synthetic clones of the actors’ voices, not as their actual voices.

Plaintiffs also claimed that Lovo’s marketing materials falsely stated that the cloned voices “came with all commercial rights.” They asserted that they had not granted those rights to Lovo. The court ruled, however, that even if Lovo was guilty of misrepresentation, it was not the kind of misrepresentation that comes within Section 43(a)(1)(B), as it did not concern the nature, characteristics, qualities, or geographic origin of the voices.

State law claims

Although the court dismissed the copyright and trademark claims, it allowed some state law claims to proceed. Specifically, the court denied the motion to dismiss claims for breach of contract, violations of sections 50 and 51 of the New York Civil Rights Law, and violations of New York consumer protection law.

Both the common law and the New York Civil Rights Law prohibit the commercial use of a living person’s name, likeness or voice without consent. Known as “misappropriation of personality” or violation of publicity or privacy rights, this is emerging as one of the leading issues in AI law.

The court also allowed state law claims of false advertising and deceptive trade practices to proceed. The New York laws are not subject to the “nature, characteristics, qualities, or geographic origin” limitation set out in Section 43(a) of the Lanham Act.

Conclusion

I expect this case will come to be cited for the rule that copyright cannot be claimed in a voice. Copyright law protects only expression, not a person’s corporeal attributes. The lack of copyright protection for a person’s voice, however, does not mean that voice cloning is “legal.” Depending on the particular facts and circumstances, it may violate one or more other laws.

It also should be noted that after the Joe Biden voice-cloning incident of 2024, states have been enacting statutes regulating the creation and distribution of voice clones. Even where a specific statute is not applicable, though, a broader statute (such as the FTC Act or a similar state law) might cover the situation.

Images and references in this blog post are for illustrative purposes only. No endorsement, sponsorship or affiliation with any person, organization, company, brand, product or service is intended, implied, or exists.

Official portrait of Vice President Joe Biden in his West Wing Office at the White House, Jan. 10, 2013. (Official White House Photo by David Lienemann)

Can We Talk Here? – Trademark Speech Rights

In recent years, the United States Supreme Court has been grappling with the thorny question of how the First Amendment applies to trademarks. In this blog post, attorney Thomas B. James attempts a reconciliation of First Amenment trademark decisions

In recent years, the courts have been grappling with some long-standing legal issues which – believe it or not – do not involve AI. Some involve trademark rights. The United States Supreme Court has been grappling with the thorny question of how the First Amendment applies to trademarks. In this blog post, attorney Thomas B. James attempts a reconciliation of recent pronouncements.

The Slants (Matal v. Tam)

Simon Tam, lead singer of the band, The Slants, tried to register the band name as a trademark. The USPTO denied the application, citing 15 U.S.C. § 1052(a). That provision prohibited the registration of any trademark that could “disparage . . . or bring . . . into contemp[t] or disrepute” any persons. The Fifth Circuit Court of Appeals declared the statute facially unconstitutional under the First Amendment. The U.S. Supreme Court affirmed.

The USPTO argued that the issuance of a registration certificate is “government speech.” Since the government and its members are not required to maintain neutrality in the views they express and are only required to maintain viewpoint neutrality when regulating private speech, the USPTO contended that it was not required to maintain viewpoint neutrality when deciding whether to issue a trademark registration certificate or not. The Court rejected that argument, holding that a trademark is private speech. As such, the government is not free to engage in viewpoint discrimination when deciding which ones to favor with a registration certification.

“If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently.”

— Hon. Samuel Alito, in Matal v. Tam

Commercial speech

At one time, the Court took the position that the First Amendment does not protect commercial speech (speech relating to the marketing of products or services). Valentine v. Chrestensen (1942) (“[T]he Constitution imposes no . . . restraint on government as it respects purely commercial advertising.”)

In Virginia State Pharmacy Bd. v. Virginia Citizens Consumer Council (1976) the Court reversed its position on this point, declaring that “the free flow of commercial information” is important enough to warrant First Amendment protection.

The Court announced a framework for assessing the constitutionality of a restriction on commercial speech a few years later, in Central Hudson Gas & Elec. Co. v. Public Serv. Comm. of N.Y. (1980).

The Central Hudson test, as it has come to be known, holds, first, that commercial speech receives First Amendment protection only if it concerns lawful activity and is not false or misleading. If it clears those two hurdles, then government regulation of it is permissible only if the regulation directly advances a substantial government interest and is not more extensive than necessary to serve that interest. That is to say, the regulation must be narrowly tailored to advance a substantial government interest.

In other words, commercial speech receives an intermediate level of scrutiny. Unlike regulations of political speech, the government only needs to identify a “substantial” interest, not necessarily a “compelling” one. Also unlike political speech, the regulation in question does not have to be the least speech-restrictive means of achieving it. It is required to be no more extensive than necessary to serve the interest in question, however.

In Tam, the Court held that it did not need to decide whether trademarks are commercial speech or not. The Court rejected the government’s contention that it has a substantial interest in protecting people from hearing things they might find offensive, declaring that “the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.'” See United States v. Schwimmer, 279 U. S. 644, 655 (1929) (Holmes,
J., dissenting).

The Court also rejected the second justification the government offered, that disparaging trademarks disrupt the flow of commerce. The statute, the Court held, is not narrowly drawn to eradicate invidious discrimination. Prohibiting registration of trademarks that disparage any person, group or institution, it would also prohibit registration of marks like “Down with racists” or “Slavery is an evil institution.”

The Court also identified what it described as a “deeper problem”:

If affixing the commercial label permits the suppression of any speech that may lead to political or social “volatility,” free speech would be endangered.

— Hon. Samuel Alito, in Matal v. Tam

In short, the Court acknowledged that commercial speech can have non-commercial expressive content. When that is the case, courts should zealously guard against government encroachment on private speech rights.

FUCT

Two years later, the Court was asked to review the USPTO’s refusal to register FUCT as a trademark. The Court came to the same conclusion about the portion of the statute that prohibited the registration of “scandalous” or “immoral” trademarks as it did about the prohibition against registering “disparaging” trademarks. Because this, too, involves viewpoint discrimination, the Court held that this prohibition, too, violates the First Amendment. Iancu v. Brunetti, 139 S. Ct. 2294 (2019)

Bad Spaniels (Jack Daniels v. VIP Properties)

The Court revisited trademark speech rights in 2023, in Jack Daniel’s Properties v. VIP Products.

I’ve written about this case before. and about the Supreme Court’s decision to review it. Basically, Jack Daniel’s Property owned (and still owns) trademarks in the Jack Daniel’s bottle and in many of the words and graphics on its label for its alcoholic beverages. VIP Products began making and marketing a dog toy designed to look like a Jack Daniel’s whiskey bottle. The toy had labels affixed to it parodying the Jack Daniel’s label. For example, it used the phrase “Bad Spaniels” in place of “Jack Daniel’s.” And instead of “Old No. 7 Brand Tennessee Sour Mash Whiskey,” it displayed “The Old No. 2 On Your Tennessee Carpet.” Jack Daniel’s issued a cease-and-desist demand. In response, VIP Products filed a declaratory judgment action seeking a declaration that its parody neither infringed nor diluted Jack Daniel’s trademarks and, in any event, was a protected “fair use” under the First Amendment.

The district court rejected these claims, essentially holding that the First Amendment does not establish a “fair use” exception for the expressive aspect(s) of a trademark when it is used as a source-identifier for a product. The Ninth Circuit Court of Appeals reversed.

The United States Supreme Court reversed the Ninth Circuit. The Court opined that although using a trademark for an expressive purpose might qualify for First Amendment protection, that protection does not insulate the user from trademark infringement or dilution liability if it is also used as a source-identifier. Parodic uses are exempt from liability only if they are not used to designate the source of a product or service.

The Court did not mention Central Hudson or discuss the commercial speech doctrine. It is likely the Court did not feel a need to do that because trademark infringement involves trademarks that are claimed to be likely to confuse consumers about the source of a product or service. Such trademarks would not clear one of the first hurdles for commercial speech protection under Central Hudson, namely, that the speech must not be misleading.

“Trump Too Small” (Vidal v. Elster)

Steve Elster applied to federally register the trademark “Trump too small” to
use on shirts and hats. The USPTO denied the application, citing 15 U. S. C. §1052(c). That provision prohibits the registration of a mark that “[c]onsists of or comprises a name . . . identifying a particular living individual except by
his written consent.” Elster appealed, asserting that this statute infringed his First Amendment right to free speech.

The Federal Circuit Court of Appeals agreed with him. The U.S. Supreme Court, however, reversed the Federal Circuit, holding that this provision of the Lanham Act does not violate the First Amendment. V i dal v. Elster, 602 U.S. __ (2024).

The decision in this case is consistent with Jack Daniel’s. Unlike Jack Daniel’s, this case did not involve a claim that the use of the trademark was likely to cause consumer confusion about the source of the product. (After all, how likely would consumers be to mistakenly believe that Trump was marketing products ridiculing his own size?) In this case, the first two hurdles for commercial speech protection under Central Hudson would appear to have been cleared.

Reconciling this decision with Tam is not as easy. What happened to the idea the Court voiced in Tam that when commercial speech has non-commercial expressive content, courts should zealously guard against government encroachment on private speech rights?

The legislative history of Section 1052(c) demonstrates that the prohibition against using a living person’s name as part of a trademark was enacted for essentially the same reason that the prohibitions against disparaging, scandalous or immoral trademarks were: Members of Congress found the “idea of prostituting great names by sticking them on all kinds of goods” — like the idea of including scandalous, immoral or disparaging content in a trademark — to be “very distasteful,” and wanted “to prevent such outrages of the sensibilities of the American people.”¹ That was the very same kind of “interest” that the government invoked in Tam and that the Court found insufficient and not tailored narrowly enough to sustain the speech restriction at issue in that case. What was different here?

By requiring consent, Section 1052(c) effectively precludes the registration of a mark that criticizes an elected government official while allowing the official to register positive messages about himself or herself. HILLARY FOR AMERICA was permitted to be registered, but HILLARY FOR PRISON was not. It seems an awful lot like viewpoint discrimination, doesn’t it?

Why shouldn’t the politically expressive aspect of a trademark (as distinguished from the purely source-identifying aspect) receive the same exacting strict scrutiny analysis that normally applies to regulations of political speech?

Well, the Supreme Court did not think this case involved viewpoint discrimination. The requirement of consent to use a person’s name in a trademark applies to people of all political persuasions, the Court reasoned. Consent would be required to register a politician’s name as a trademark whether the politician in question is a Democrat, a Republican, a Communist, or anything else, and consent would be required whether the politician in question supports or opposes, say, abortion rights, or gun rights, or anything else.

Nevertheless, the fact remains that the statute, as applied, requires an elected official’s prior approval of a trademark before it can be registered. Maybe that doesn’t rise to the level of a direct prior restraint on speech, but it would certainly seem to have a chilling effect on political speech at the core of the First Amendment.

Conclusion

It is not at all clear to me that the cases can be reconciled on a logically coherent doctrinal basis. Reliance on the common law history of trademarks might support a determination that Section 1052(c) is not unconstitutional on its face. I am not completely convinced, however, that the Court was adequately responsive to the argument that the statute is unconstitutional as applied to the names of elected officials. But what do I know? I’m just some guy living next to a cornfield in the middle of nowhere.

See Respondent’s Brief at p. 7. ↩︎

Top IP Developments of 2023

2023 was a big year for U.S. intellectual property law. Major developments occurred in every area. Here are the highlights

2023 was a big year for U.S. intellectual property law. Major developments occurred in every area. Here are the highlights.

Copyright

Fair Use

Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith et al.

This was one of the top copyright cases of 2022. It was a case that was pushing the limits of transformative fair use of photographs. The Supreme Court issued a ruling in the case in May. The decision is significant because it finally reined in the “transformative use” doctrine that the Court first announced in Campbell v. Acuff-Rose Music back in 1994. In that case, 2 Live Crew had copied key parts of the Roy Orbison song, “Oh, Pretty Women” to make a parody of the song in its own rap style. The Court held that the 2 Live Crew version, although reproducing portions of both the original song and the original recording of it without permission, transformed it into something else. Therefore, even though it infringed the copyright, the 2 Live Crew version was for a transformative purpose and therefore protected as fair use.