Publications

Greetings, Court Fans!

The Court issued four significant decisions this morning:

• Harrington v. Purdue Pharma L.P. (No. 23-124), holding (5-4, with an interesting “horseshoe” alignment) that the Bankruptcy Code does not authorize nonconsensual releases of claims against nondebtors, thereby scuttling a bankruptcy plan that would have released claims against the Sackler family in exchange for their return of approximately $6 billion to Purdue Pharma’s bankruptcy estate;
• SEC v. Jarkesy (No. 22-859), holding (6-3 in a more typical alignment) that, when the SEC seeks civil penalties against a defendant for securities fraud, the Seventh Amendment entitles the defendant to a jury trial;
• Ohio v. EPA (No. 23A349), staying (5-4, with Justice Barrett joining the left in dissent) an EPA “good neighbor” plan, which would have required power plants in Western and Midwestern states to cut ozone pollution that drifts into Eastern States; and
• Moyle v. United States (No. 73-726), dismissing as improvidently granted (as previewed in a draft accidentally posted on the Supreme Court’s website yesterday) a cert petition concerning whether provisions of the Emergency Medical Treatment and Labor Act preempt Idaho law prohibiting abortions unless necessary to prevent a pregnant woman’s death, thereby reinstating a district court injunction against the Idaho law with respect to emergency abortions.

That still leaves at least seven decisions (in nine cases) outstanding, which would likely be a record for one announcement day. And indeed, shortly after decisions were announced, the Court’s website was updated to indicate that additional decisions will be released on Monday. It’s just as well that the Court isn’t breaking its backlog on the last days of June, as we’ve got a backlog of our own to get through.

A modest dent in that backlog follows, with summaries of Vidal v. Elster (No. 22-704) a unanimous judgment upholding the Lanham Act’s “names clause” while simultaneously revealing rifts among the originalist Justices, and Chiaverini v. City of Napoleon, Ohio (No. 23-50), addressing the scope of an exception to the general rule that the existence of probable cause precludes a claim for malicious prosecution.

In Vidal v. Elster (No. 22-704), the Court unanimously rebuffed a First Amendment challenge to a provision of the Lanham Act that prohibits the registration of trademarks that include the name of a living person, but that unanimous judgment splintered when it came to a rationale. The case may ultimately reveal more about the philosophical divisions within the Court’s conservative majority—something of a theme in recent decisions—than it does about trademark law.

Like many of the marquis cases of the term, Vidal arises, at least in a but-for sense, from Donald J. Trump, and specifically his purportedly small hands. After “Little Marco” Rubio made a joke about the future president’s hands during the 2016 primaries, an enterprising attorney named Steve Elster smelled an opportunity. He began marketing t-shirts and other wares with the phrase “Trump Too Small,” accompanied by a list of positions the candidate was “too small” on, including “civil rights” and “democracy.” When Elster sought to register the phrase as a trademark, the Patent and Trademark Office rejected his application, concluding that it violated the Lanham Act’s “names clause,” which prohibits the use of another living person’s name in a trademark without his consent. Elster appealed and the Federal Circuit ultimately concluded that the names clause violates the First Amendment as a content-based restriction on speech. The Supreme Court granted cert, and unanimously reversed.

All nine Justices agreed that the names clause imposes a content-based restriction on speech. But all nine agreed that it is nevertheless constitutional, and that content-based trademark-registration restrictions need not satisfy strict, or immediate, scrutiny. And all nine found support for this position in the history of trademark regulation in the United States. But they differed in the degree to which they found that history dispositive and in their view of whether trademark restrictions can be analogized to other areas of speech regulation.

Justice Thomas authored the lead opinion, joined in its various sections by as many as five and as few as two other Justices. Writing for a majority, Thomas began by confirming that viewpoint-based restrictions on speech are presumptively unconstitutional, even in the trademark realm—reiterating the Court’s recent holdings in Matal v. Tam (2017) and Iancu v. Brunetti (2019). But the names clause is viewpoint-neutral—it’s impermissible to use a living person’s name in a registered trademark whether the use would be flattering or critical—and Thomas acknowledged that the Court had not previously addressed a content-based, but viewpoint-neutral, restriction in the trademark context. Turning to that question, Thomas found that several features of trademark law counseled against any presumption of unconstitutionality for such restrictions. Most importantly, he concluded, history showed that, while trademark law is inherently content based, the content-based nature of trademark law had never given rise to constitutional concerns. Thomas traced the development of trademark regulation, from English and state common law through the passage of the Lanham Act in 1946, citing cases addressing the trademarking of individual names. The common law, Thomas observed, prevented a person from trademarking any name (even his own) by itself; but it permitted a person to obtain a trademark containing his name provided that he could not use the mark to the exclusion of another person with the same. This content-based regime has long coexisted with the First Amendment.

For Thomas (here joined only by Justices Alito and Gorsuch), “the history and tradition of restricting trademarks containing names [was] sufficient to conclude that the names clause is compatible with the First Amendment.” He criticized the concurring Justices for promoting frameworks that would essentially boil down to “what a judge believes is ‘reasonable in light of the purpose’ of trademark law,” the sort of means-ends balancing test that he abhors. The Chief and Justice Kavanaugh did not join the portion of Thomas’s opinion rejecting the concurring Justices’ proposed frameworks. (As Kavanaugh stated in a brief concurrence joined by the Chief, “a viewpoint-neutral, content-based trademark restriction might well be constitutional even absent … a historical pedigree” similar to that of the names clause, but that “distinct question” could be addressed in a future case.) However, they rejoined Thomas, Alito, and Gorsuch to form a majority for the conclusion that the Court would not set forth “a comprehensive framework for judging whether all content-based but viewpoint-neutral trademark restrictions are constitutional,” while at the same time insisting that they would not demand “an equivalent history and tradition . . . to uphold every content-based trademark restriction.” To decide this case, it was enough to conclude that history and tradition establish that this particular restriction, the names clause, does not violate the First Amendment.

Justice Barrett joined much of Thomas’s opinion (making it 6-3 at times). She agreed that the names clause is content-based but viewpoint-neutral, but that the history of trademark regulation demonstrated its compatibility with the First Amendment. However, as she explained in a concurrence joined entirely by Justice Kagan and in parts by Justices Sotomayor and Jackson, Barrett rejected Thomas’s view that “history and tradition” alone settled the constitutionality of the names clause, such that it was unnecessary to adopt a standard for gauging whether content-based trademark restrictions violate the First Amendment. In the first place, Barrett questioned Thomas’s historical evidence, picking apart the ”loosely related cases from the late-19th and early-20th centuries” that Justice Thomas had discussed. More broadly, she criticized the majority opinion for failing to explain “why hunting for historical forebears on a restriction-by-restriction basis is the right way to analyze the constitutional question.” While Justice Thomas (echoed by Justice Kavanaugh’s concurrence in Rahimi) valorized “history and tradition” as a way of avoiding judge-made balancing tests, Barrett insisted that “a rule rendering tradition dispositive is itself a judge-made test.” Moreover, there is a longstanding “tradition” of adopting generally applicable principles with which to adjudicate constitutional questions, dating back to the Marshall Court.

Rather than relying solely on history and tradition, Barrett would instead “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.” Under that framework, content-based restrictions—regardless of their historical pedigree—are permissible so long as they are reasonable in light of the trademark system’s purpose of facilitating source identification. In reaching this conclusion, Justice Barrett analogized to the Court’s cases on limited public fora, another area in which content-based restrictions are “inherent and inescapable.” In each context, the Court has permitted content-based restrictions that are reasonable and necessary in light of their respective purposes. Under this framework, Justice Barrett had no trouble finding that the names clause is constitutional, as it is reasonably relates to the purpose of trademark law.

Justice Sotomayor joined much of Justice Barrett’s concurrence and also filed one of her own, joined by Kagan and Jackson. Like Barrett, she rejected the majority’s narrow focus on “whether the history of a particular trademark registration bar plays well with the First Amendment,” which she said “leads this Court into uncharted territory that neither party requests.” Instead, she would “rely on this Court’s tried-and-tested First Amendment precedent,” specifically cases permitting the government to “withhold[] benefits for content-based, viewpoint-neutral reasons . . . when the applied criteria are reasonable and the scheme is necessarily content based.” To Sotomayor, trademark registration is effectively a government benefit. “Denying a trademark registration is therefore consistent with the First Amendment if it turns on reasonable, viewpoint-neutral content regulations.” The names clause, she concluded, easily satisfies that test.

So, at the end of 57 pages of opinions, all nine Justices agreed on the result: The names clause is constitutional, despite being a content-based restriction. Thomas, Alito, and Gorsuch, would uphold it solely on the basis of history and tradition; the Chief and Justice Kavanaugh were comfortable with that approach, but not to the exclusion of the alternatives advanced by the other concurring Justices; Barrett and Kagan (and to some extent Sotomayor and Jackson) would uphold it because it is reasonable in light of the trademark system’s purpose of facilitating source identification; and Sotomayor, Jackson, and Kagan would uphold it because trademark registration is a public benefit and the names clause is a reasonable and necessary content-based criterion within the trademark scheme. In short, Mr. Elster lost several times over. He can still sell his Trump Too Small wares (and does), but he can’t preclude others from using his mark.

Chiaverini v. City of Napoleon, Ohio (No. 23-50) resolves one very narrow question: Does the existence of probable cause for one charge insulate officers from a civil suit for malicious prosecution over another charge for which officers lacked probable cause? The Sixth Circuit thought it did, creating a circuit split in the process. But writing for a six-justice majority, Justice Kagan rejected the Sixth Circuit’s categorical approach without providing much guidance as to how the existence of probable cause affects for one charge other obvious issues in the now-proceeding case, like causation.

The facts are worth a mention. A jewelry store owner, Jascha Chiaverini, bought a ring from someone who turned out to be a petty thief for $45. The ring’s rightful owners, along with the police, asked Chiaverini to return the ring. He refused. During the exchange, Chiaverini apparently let slip that he was operating his store without a license. The officers then began investigating him and ultimately brought three charges: two misdemeanors (receiving stolen property and dealing in precious metals without a license) and one felony (money laundering, the theory being that he knew the ring represented the proceeds of illegal activity). A judge ordered Chiaverini arrested, and he then spent three days in jail waiting to be arraigned. But the county prosecutor apparently concluded the case wasn’t worth pursuing and dismissed all the charges.

Chiaverini then sued the officers involved under Section 1983 for malicious prosecution based on the three days he spent in jail following his arrest. And while he didn’t really dispute that the officers had probable cause for charging him with the two misdemeanors, he very much did dispute that they had any reason to think the elements of the felony money-laundering charge were met. In an ordinary single-charge case, the existence of probable cause for the charge that prompted the plaintiff’s arrest would provide officers with a complete defense to a civil suit for malicious prosecution. But what if there is probable cause for one of the charges but not the others? The officers convinced the District Court and the Sixth Circuit that in this situation the existence of probable cause for any charge categorically defeats a malicious-prosecution claim over any other charge too. Because that approach conflicted with other circuits’ decisions, the Court granted certiorari.

After the Supreme Court accepted the case, it took a bit of a turn. The officers backed off from the Sixth Circuit’s position, agreeing with the United States (as amicus) and Chiaverini that probable cause isn’t a categorical bar to his suit. But while everybody now agreed on that issue, they disagreed on a follow-up question: causation. Even if the existence of probable cause for one charge didn’t categorically bar a suit over another charge, the officers argued his suit still must fail unless he proves that his detention (a “seizure” in violation of the Fourth Amendment) was caused by the officers’ money-laundering charge, as opposed to the misdemeanor charges for which probable cause existed. In the officers’ view, that meant Chiaverini must prove the judge could not have ordered him detained without that invalid charge. The United States offered a slightly more laxer standard, proposing that the question should be whether the judge actually would have ordered Chiaverini detained without the invalid charge. Finally, Chiaverini argued that causation was irrelevant: His entire detention was tainted so long as it was based in any way on a charge lacking probable cause.

In a very short opinion written for a majority of six, Justice Kagan agreed with everybody but the Sixth Circuit on the threshold question: The existence of probable cause for one charge does not categorically bar a malicious-prosecution suit over other charges for which probable cause was lacking. But having settled that now-undisputed issue, Kagan declined to decide the question the parties did disagree on, namely causation. Instead, the Court left that question to the Sixth Circuit to take up in the first instance on remand. So perhaps we’ll see this case again after the Sixth Circuit decides whether Chiaverini’s wrongful detention was actually caused by a charge for which probable cause was lacking.

Justice Thomas penned a dissent, which Justice Alito joined. Unsurprisingly, he “continue[d] to adhere to [his] belief that a malicious prosecution claim cannot be based on the Fourth Amendment,” period. Without going too far into the details, the Court has long looked to common-law torts to determine the precise contours of Section 1983 claims like Chiaverini’s. But as Justice Alito argued in his dissent in Thompson v. Clark (2022), the elements of, and interests protected by, a common-law malicious-prosecution claim aren’t analogous to the interests protected by the Fourth Amendment, which guards against unreasonable seizures (i.e., those lacking probable cause). In Thomas’s and Alito’s view, Thompson was thus wrong to assume (without really deciding) that a Section 1983 malicious-prosecution claim is a real thing to begin with.

Writing only for himself, Justice Gorsuch dissented on similar grounds. But he went somewhat further, suggesting that while the Fourth Amendment may not provide a hook for a malicious-prosecution claim, perhaps the Fourteenth Amendment due-process clause does. He acknowledged, however, that re-theorizing the claim in this manner might have secondary consequences with respect to the elements and defenses for this sort of claim.