Trademark Originalism in Vidal v. Elster [Updated]Michael Ramsey

At Volokh Conspiracy, Eugene Volokh highlights the dueling originalist opinions by Justices Thomas (majority) and Barrett (concurring) in Vidal v. Elster, decided yesterday: Justices Agree on Constitutionality of Trademark Restriction, Disagree on How to Approach Such Questions. From the introduction:

[Thursday's] decision in Vidal v. Elster unanimously upheld a federal trademark law provision that bars federal registration of any trademark that "[c]onsists of or comprises a name … identifying a particular living individual except by his written consent." The law doesn't bar people from using others' names as part of a trademark, but bars federal registration of such marks, which would provide trademark owners special protect against infringement. (The case involved plaintiff's attempt to register the mark "Trump Too Small," but the legal issue went far beyond this mark.)

The Court unanimously agreed that this was a content-based, though viewpoint-neutral, classification. But while content-based speech restrictions are presumptively unconstitutional, the Justices agreed that this law is fine.

But the Justices sharply disagreed on the rationale for this conclusion.

1. Justice Thomas, joined by Justices Alito and Gorsuch, concluded that the law is constitutional chiefly because of what they saw as a longstanding historical tradition of allowing such exclusions from trademark registration.

2. Justice Barrett, joined by Justice Kagan and in considerable part by Justices Sotomayor and Jackson, concluded that the law is constitutional chiefly by analogy to the First Amendment doctrine having to do with government-provided benefits for private speakers, under which reasonable, viewpoint-neutral restrictions on the benefits are constitutional; they were quite skeptical of Justice Thomas's historical focus. (Justice Sotomayor also wrote a similar opinion, joined by Justices Kagan and Jackson.)

3. And Justice Kavanaugh, joined by Chief Justice Roberts, tried as much as possible to abstain from this debate.

Here is a key excerpt from Justice Barrett's concurrence:

While I agree with the Court that the names clause does not violate the First Amendment, I disagree with some of its reasoning. The Court claims that "history and tradition" settle the constitutionality of the names clause, rendering it unnecessary to adopt a standard for gauging whether a content-based trademark registration restriction abridges the right to free speech. That is wrong twice over. First, the Court's evidence, consisting of loosely related cases from the late-19th and early-20th centuries, does not establish a historical analogue for the names clause. Second, the Court never explains why hunting for historical forebears on a restriction-by-restriction basis is the right way to analyze the constitutional question.

I would adopt a standard, grounded in both trademark law and First Amendment precedent, that reflects the relationship between content-based trademark registration restrictions and free speech. In my view, such restrictions, whether new or old, are permissible so long as they are reasonable in light of the trademark system's purpose of facilitating source identification.

...

I cannot agree with the Court that the existence of a "common-law tradition" and a "historical analogue" is sufficient to resolve this case. Even if the Court's evidence were rock solid, I still would not adopt this approach. To be sure, tradition has a legitimate role to play in constitutional adjudication. For instance, the longstanding practice of the political branches can reinforce our understanding of the Constitution's original meaning. The views of preceding generations can persuade, and, in the realm of stare decisis, even bind. But tradition is not an end in itself—and I fear that the Court uses it that way here.

The Court does not (and could not) argue that the late-19th and early-20th century names-restriction tradition serves as evidence of the original meaning of the Free Speech Clause. Nor does it treat the history it recites as a persuasive data point. Instead, it presents tradition itself as the constitutional argument; the late-19th and early-20th century evidence is dispositive of the First Amendment issue. Yet what is the theoretical justification for using tradition that way?

I'm no expert in free speech and trademark law (though I know someone who is), but on quick reflection this seems pretty persuasive.  I don't understand how late-nineteenth century/early-twentieth century practice is relevant to original meaning.  And yet, I also don't see how Justice Barrett's "reasonableness" test arises from original meaning either.

Further (again noting that I'm not a trademark scholar), I don't see how any of this is consistent with Iancu v. Brunetti, in which the Court held that the First Amendment prevented the federal government from rejecting a trademark registration for "FUCT" under a statutory direction that prohibits registration of trademarks that “[c]onsist[ ] of or comprise[ ] immoral[ ] or scandalous matter.” Without having looked into the matter, I'm quite confident that there is no history or tradition of registering marks consisting of thinly disguised profanity.

And finally, I don't see how any of this is consistent with CFPB v. Community Financial Services Association of America. [Yes, I promised I wouldn't post any more on that case but this is different because I say so.]  In that case Justice Thomas (for the majority) said that the original meaning was conclusive irrespective of subsequent practice, and Justice Barrett joined a concurrence saying that remote post-ratification practice (including apparently late-nineteenth century/early-twentieth century practice) should be considered.

UPDATE:  Josh Blackman adds that it also seems inconsistent with Counterman v. Colorado, the 2023 true threats case that he discussed here: Goldilocks and the Four Non-Originalists.