The Partnership of Natural Law With the “History and Tradition” Framework

The New Digest is delighted to welcome back to our pages Mr. Jacob Neu, a partner and patent attorney at Bradley Arant Boult Cummings, LLP in Nashville, Tennessee.

Watch out for the seemingly mundane cases, which “can be more illuminating of justices’ legal analysis and interpretative methods” than the high profile or politically sensitive cases. I wrote this observation three years ago in response to Iancu v. Brunetti, which held that the statutory bar against the registration of immoral or scandalous words as trademarks violated the First Amendment’s protection of free speech. That seemingly straightforward question resulted in five very different opinions. Two years later, trademark law did it again. In 2024 Vidal v. Elster, a seemingly mundane case, revealed a surprising divide between the conservative justices over the application of the “history and tradition” standard for evaluating the constitutionality of a statutory provision. This post discusses that divide from a classical legal perspective.

The facts in Vidal v. Elster are both a sign and a symptom of our times. They are a sign because the trademark at the heart of the dispute, TRUMP TOO SMALL, recalls a memorably vulgar exchange between 2016 Presidential candidates Donald Trump and Marco Rubio during a primary debate that election cycle. Only in the overwrought political climate of the last decade would Steve Elster try to turn an insult into an oppositional marketing ploy. They are a symptom because, naturally, Elster’s dubious attempt to sell t-shirts turned into a matter of constitutional concern. The Lanham Act bars a party from registering a mark bearing the name of a particular living individual without his consent. On the basis of the court’s opinion in Brunetti, Elster challenged this consent requirement as unconstitutional. The Court of Appeals for the Federal Circuit, which hears appeals for rejected trademark applications, agreed and held the “Names Clause” in the Lanham Act was unconstitutional. The Supreme Court then took up the case.

The justices were unanimous in holding that the Names Clause was constitutional, but split across four different opinions. Justice Thomas authored the majority opinion, joined in full by Justices Alito and Gorsuch. Justice Kavanaugh (joined by Chief Justice Roberts) signed onto part of Thomas’s opinion but wrote a separate concurrence in part. Justice Barrett also joined in part and wrote another concurrence in part, joined (again, in part) by Justices Kagan, Sotomayor, and Jackson. Finally, Justice Sotomayor wrote a concurrence in the judgment, joined (in full!) by Justices Kagan and Jackson. To very briefly summarize the areas of agreement, the justices unanimously held that the Names Clause was viewpoint neutral, for it does not matter whether the registrant seeks to use another individual’s name in a positive or negative manner. They also agreed the provision was content-based as it targeted the content of the trademark, an individual’s name. And they all agreed that, despite being content-based, the Names Clause passed constitutional muster.

The disagreement, as Justice Sotomayor wrote, “boils down primarily to methodology.” For our purposes, the key disagreement lies in the different understandings and application of the “history and tradition” framework between Justices Thomas, Barrett, and Kavanaugh (with a slight detour through his opinion in U.S. v. Rahimi, decided a week after Elster).¹

Justice Thomas, in a portion of his opinion that was joined by Roberts, Alito, Gorsuch, and Kavanaugh held that “in evaluating a solely content-based trademark restriction, we can consider its history and tradition, as we have done before when considering the scope of the First Amendment.” Justice Thomas then outlined a historical tradition of permitting individuals to use their own names as trademarks at common law and in statutory provisions, with the further right of restricting others from using the same mark unless that also happened to be the other person’s name. (So, for example, John Doe can enjoin Joe Campbell from using DOE as Campbell’s trademark, but he cannot so enjoin Jane Doe.) Thomas then found that such restrictions reflect “trademark law’s historical rationale of identifying the source of goods” protector the markholder’s reputation. These traditional trademark rationales had “deep roots in our legal tradition” and have not been traditionally found to be in tension with the First Amendment. Thomas then found that the Names Clause, which requires the consent of the living person referenced in the mark, was a reasonable restriction within that tradition, even if there was not a necessarily identical provision in laws predating the current federal trademark statute enacted in 1946.

There was one key point of Justice Thomas’ review of the history and tradition of name-usage restrictions: All of his cited historical tradition arose long after the Constitution was ratified. The earliest cited case is from 1837. The first federal trademark statute was enacted in 1870. Justice Thomas (and four other justices, forming a majority of the Court) held that this was a sufficient showing of history and tradition to buttress the constitutionality of the Names Clause. As Justice Thomas concluded, “a firm grounding in traditional trademark law is sufficient to justify the content-based trademark restriction before us, but we do not opine on what may be required or sufficient in other cases,” such as when such a tradition is not present.

Justice Barrett disagreed that this was sufficient for use of “history and tradition” in the context of constitutional interpretation. Barrett noted that trademark law presents a more difficult case for reliance on “history and tradition,” because the 1st Amendment only became applicable against the states’ common law rules in 1868 with the passage of the 14th Amendment, and there was no federal trademark law until 1870. She also took issue with Justice Thomas’ treatment of the historical record, finding that it is not particularly robust and that there was no direct historical analog to the current Names Clause restriction in the Lanham Act. Ultimately, Barrett found that a reliance on “history and tradition” was not appropriate when asking how the First Amendment’s “original meaning” applied to a body of law that largely developed after its ratification. “To be sure,” she writes, “tradition has a legitimate role to play in constitutional adjudication,” and she gave some examples. Longstanding practice of the political branches can “reinforce” the Court’s understanding of a clause. Or, it can “liquidate” otherwise ambiguous clauses. The post-ratification practices may be persuasive authority, or if they constitute stare decisis, may be binding. But, wrote Barrett, Justice Thomas “presents tradition itself as the constitutional argument; the late-19th and early-20th century evidence is dispositive of the First Amendment issue” for the majority. Barrett asserts that this has no theoretical justification. “Relying exclusively on history and tradition may seem like a way of avoiding judge-made tests,” she notes, “but a rule rendering tradition dispositive is itself a judge-made test.” (emphasis in original). Rather, Justice Barrett states she would look to the traditional foundation of trademark law: “content-based trademark restrictions have long been central to trademark’s purpose of facilitating source identification, and they have not posed serious risk of censorship.” This, she states, is sufficient grounds for finding the law constitutional.

Justice Kavanaugh largely joined Justice Thomas’ majority opinion but did not sign onto the final section in which Thomas addressed Justice Barrett’s and Sotomayor’s opinions. His opinion in Elster simply stated that the historical pedigree of the Names Clause was enough to support the holding in this case, and he did not see the need to address the question of a “viewpoint-neutral, content based” restriction that lacked such a historical pedigree. But a week after Elster was published, Kavanaugh seemingly responded to Justice Barrett in U.S. v. Rahimi, a case involving the constitutionality of a gun restriction preventing individuals who pose “a credible threat of physical safety” from possessing firearms at least temporarily. Kavanaugh’s Rahimi concurrence provided his analysis of how pre- and post-ratification history should apply to constitutional interpretation. Pre-ratification provides important context about what the drafters were concerned about, but “courts must exercise care to rely only on the history that the Constitution actually incorporated and not on the history that the Constitution left behind.” But more importantly for the Elster case, Kavanaugh writes that post-ratification history is important when the text is vague and pre-ratification history is elusive or inconclusive–exactly the situation we find ourselves in trademark law. Kavanaugh states that in such cases, post-ratification history constitutes a “tradition” that even the Framers believed “would shed light on the meaning of vague constitutional text.” The key point here, for Kavanaugh, is that post-ratification history comes into play today when reviewing vague constitutional text. When the text is clear, then post-ratification history is less important. While Kavanaugh avoided stating these principles in Elster, it is obvious that this understanding of the importance of the various names restrictions in trademark law informed Kavanaugh’s decision to join Thomas’ majority opinion.

Well, then. Here we have three justices disagreeing about how exactly the “history and tradition” framework should be applied. All three signed onto the great trio of cases in 2022–Dobbs v. Jackson Women’s Health Organization, Kennedy v. Bremerton School District, and New York State Rifle & Pistol Association v. Bruen–that essentially announced the “history and tradition” framework as the appropriate methodology of constitutional interpretation. The disagreements between Thomas, Kavanaugh, and Barrett lay bare the problems I highlighted with the “history and tradition” framework the summer after those cases. First, there is the problem of framing both the question and the relevant historical evidence. Thomas and Kavanaugh assert that the “frame” for reviewing trademark law and the usage of personal names is broad, while Barrett believes the scope of the question should be narrowly focused on the usage of another living person’s name in connection with noncompetitive goods or services.

Second, there is the problem of why we should care about history and tradition at all–what is it that history and tradition are telling us? As Barrett puts it, Thomas simply uses the tradition of restrictions on usage of names as the constitutional analysis. Barrett herself argues that the post-ratification tradition, even if she were to agree with Thomas’ analysis of the historical evidence, is not relevant to the original meaning of the text in 1791. Kavanaugh disagrees, arguing that the post-ratification history elucidates the vague and general text of the First Amendment in the context of trademark law.

In short, Thomas’ opinion in Elster is susceptible to the very weakness I worried about in 2022: that the “history and tradition” framework was “an attempt to adopt some of the historical rights (or not) found in the natural law and based in the common good without adopting the logical basis for those decisions.” In different ways, both Barrett and Kavanaugh recognize this problem. But as Professor Jonathan Green explained in a new paper recently commented on by Professor Conor Casey here at The New Digest, Barrett’s Elster opinion and Kavanaugh’s Rahimi opinion also have weaknesses. Neither answer the question of what constitutes a “tradition” in the first place. Moreover, both opinions assume that the original text of the First Amendment is itself qualified by atextual implied limits. What are those limits? (Both Kavanaugh and Barrett seemingly assume that the judicially created exceptions over the last 200 years are those limits.) And are they static or dynamic? (Barrett says they are static, while Kavanaugh implies a more dynamic account in his discussion of post-ratification history.) And can we really say that the text of the 1st Amendment is “vague” when applied to trademark law, which the Founders could not have envisioned as being subject to the 1st Amendment at all in 1791?

Casey’s commentary on Green concluded by noting some high level points of agreement among 18th century jurists to further illuminate the points raised by Green. To help advance this line of thought in a concrete case, I want to conclude here by applying two of Casey’s points of agreement to Elster. First, quoting Dick Helmholz, the jurists generally agreed that natural law played an “‘internalist’ role in that they were used to “discover the meaning of existing laws [and] to help supply the answer to a legal question where the import of positive law was uncertain.” Second, rather than taking an individualist view of rights, as the current conservatives on the Supreme Court do, the classical legal view is that “rights are due to persons as they contribute to states of affairs and arrangements within a polity that are just, in the right and help conduce to the flourishing of each and all – the whole point of government and society.”

I believe these two points cut through the Gordian knot created by Thomas, Kavanaugh, and Barrett in Elster and Rahimi. Green’s paper describes the understanding of custom, how custom can change, and custom’s effect on English constitutional analysis in the 18th century. The Founders were well aware of these debates at that time. We can view the development of trademark law in the 19th century as a development of customary right, later adopted through the common law and then modified and formalized through legislation. The custom is based on social expectations of proper conduct in the marketplace: competitors should not be permitted to pass off their goods as those of another, and the public should be protected from fraudulent claims of the source of the goods. These are classically natural law concerns, forming an “internalist” basis for trademark law’s development. Moreover, in this formulation, trademark law is fundamentally about the common good, contributing to a “state of affairs and arrangements within a polity that are just,” as Casey puts it.

When confronted with a question of constitutionality, then, courts should not simply ask whether the given statutory clause has a sufficiently robust history and tradition, as Thomas’ opinion does. This, as I said before, is merely adopting the result without the legal reasoning. Courts can discern whether the law in question derives from a growing customary understanding of the social good through particularized legal doctrines. It should be fully acceptable to recognize the common good foundation of trademark law. And that understanding shapes the contours of the 1st Amendment not merely when the text is vague or subject to certain implied limits, but rather through our understanding of how particular speech does or does not promote the common good. In this view, post-ratification history is not just for liquidating the text, as Barrett puts it. Nor is post-ratification history only for filling in the vague or underdetermined gaps, as Kavanaugh holds.

Rather, post-ratification history develops our understanding of the constitutional scope of free speech itself, molding the right in view of new developments in the custom and traditions of the people. One can say, in effect, that through the 19th and 20th century, the American people came to understand and expect the social good of a well-functioning marketplace that punished fraud and facilitated the exchange of important commercial information regarding the source and quality of goods through trademarks. That understanding in turn became formalized through case law and statutes. The constitutional right of free speech both facilitated that understanding by allowing merchants to adopt their own marks consistent with various public policy principles and limited it by placing conditions on it that protected personal welfare and the public nature of the market. Such limits traditionally included bans on disparaging, scandalous and immoral marks (which the Court has recently struck down) and requiring consent to use another person’s name (which the Court upheld).

In other words, this view of the First Amendment eschews the view of free speech as a cudgel to strike down laws protective of the common good in favor of individual autonomy. Instead, the First Amendment is itself shaped by the communal understanding of the common good as new legal doctrines develop. This ties the constitutional analysis back to the natural law–arranging the rights of all in furtherance of a harmonious and functioning social order. In this view, history and tradition are important not because they are gap fillers, but because they confirm the contours of the natural law within the constitutional framework.

1. Justice Sotomayor and the liberal justices chose not to engage in the interpretation of the “history and tradition” framework at all, instead finding that the Names Clause was necessarily content-based in view of the purpose of the trademark system and implemented reasonable criteria to achieve its goals. This is the de rigeur First Amendment analysis of content-based statutes of the last 60 years. Justice Sotomayor is correct that the conservative majority went out of its way to apply the “history and tradition” framework in this case, rather than what until recently has been the usual manner of analyzing content-based statutes. But it need not concern us here; that analysis itself applies a modern analytical lens rather than the classical legal tradition, and also is now the framework of a minority of the justices. Whether Sotomayor and her more liberal colleagues like it or not, the focus of the legal community is on the “history and tradition” framework for now.