Commercial Litigation Update

The question of whether a would-be trademark, “TRUMP TOO SMALL,” warrants a First Amendment exception to the Lanham Act’s prohibition on registering a living person’s name as a trademark without that person’s permission has now reached the United States Supreme Court. On June 5, 2023, in Vidal v. Elster, Case 22-704, the high court granted the United States Patent and Trademark Office’s (hereinafter, the “Government”) petition for certiorari to determine whether, under 15 U.S.C. § 1052(c), the refusal to register a trademark containing another person’s name violates the Free Speech Clause of the First Amendment when that mark implies criticism of a government official or public figure. As we wrote last year, one cannot normally trademark another person’s name, but in the case of Steve Elster’s trademark application for TRUMP TOO SMALL, the United States Court of Appeals for the Federal Circuit (the “CAFC”) held in In re Elster, 26 F.4th 1328, 2022 USPQ2d 195 (Fed. Cir. 2022), that one’s First Amendment right to make social commentary about a public figure trumps (bad pun intended) the Lanham Act. Whether the Supreme Court agrees with the CAFC soon will be determined.

As I recently noted in an article on trademarks in the U.S. and internationally, Metro-Goldin-Mayer and Pennsylvania State University are two entities in different, yet related, channels of trade (sports and entertainment, which were melded together as ESPN’s original name). But they do have something in common in that each is known for the roar of a lion:

In a recent article examining international trademark, copyright and related issues, we started with a focus on the place humor holds as a possible defense. To understand the roots of the penchant for humor to act as a bulwark of humanity’s way of defending itself, consider this story:

Recently I was going back and forth with a colleague about training programs for our developing lawyers. This colleague, a respected friend, looked at the list I proudly provided of the various advocacy, writing, presentation and positioning lessons filling the educational schedule, and responded with the pith of perception “Not a word about listening.” I immediately saw the gap absent in my perception only moments before. And, I knew the truth of which Oliver Wendell Holmes (not the judge, but the judge’s father) wrote in Chapter X of The Poet At The Breakfast Table (1872), when he said "It is the province of knowledge to speak. And it is the privilege of wisdom to listen." What a great lesson for lawyers, especially trial lawyers, to remember.

Interesting question: Can someone trademark another person’s name without that person’s consent? The answer to that is usually “no,” but, hey, we would not be the first people to say that we live in interesting times. And if we said that, we would not be infringing on anyone’s rights. That aside, the answer to the first question this week is “yes,” at least when the person is a public figure, and the trademark is viewed as an exercise of free speech critical of that public figure.

We recently wrote about the pros and cons of the virtual deposition, a mechanism which saw its use burgeon during the pandemic. Epstein Becker & Green’s Managing Director, James P. Flynn, has taken the virtual experience to the next level having recently participated in a virtual bench trial. I asked Jim about his experience, and also received some of his big-picture thoughts on this medium.

Q: Were any aspects of the trial easier, or more streamlined, because it was being conducted virtually?

On March 26, 2021, the United States Court of Appeals for the Second Circuit decided The Andy Warhol Foundation v. Goldsmith, a decision addressing the “fair use” doctrine, an important part of copyright law. “Fair use” tries to balance the extent to which one artist may build on a prior artist’s work without getting the first artist’s approval or license for doing so, and when so much of the quality or quantity of first work is copied that that artist’s work deserves protection against the latter piece. In the recently-decided case, which the Warhol Foundation had won ...

Long before the birth of Elvis Presley in 1935, and even longer before his recent 86^th birthday on January 8, 2021, King Arthur was the legendary king of choice, and his story was most completely told in Le Morte d'Arthur by Sir Thomas Malory. Hence, we embrace the paraphrased allusion in the title above, to both Arthur and the King of Rock-n-Roll, who despite his absence from the public stage since 1977 remains a brand. Thus, Elvis is a good example of what a lay person would call post-mortem publicity rights, as his brand remains one today valued at over $300 million. What is also ...