‘Trump Too Small’ Trademark: la necessità del consenso del portatore del nome non viola il diritto difree speech

La corte suprema USA nega contrasti tra il Primo Emendamento e la norma (15 us code 1052(c), corrispondente più o meno al nostro art. 8 CPI) , per cui serve il consenso del titolare del nome per registrarlo come marchio.

Si tratta di SCOTUS 13.06.2024, No. 22–704, VIDAL vs ELSTER.

Sentenza interessante per la teoricità del problema dell’applicazione del diritto di free speech ad una pratica commercial-lucrativa.

Dal Syllabus iniziale (subito dopo aver spiegato la ratio di tutela del marchio nellordinamento  USA):

<<(c) The history and tradition of restricting trademarks containing
names is sufficient to conclude that the names clause is compatible
with the First Amendment. Pp. 12–19.
(1) Restrictions on trademarking names have historically been
grounded in the notion that a person has ownership over his own
name, and that he may not be excluded from using that name by an-
other’s trademark. See Brown Chemical Co. v. Meyer, 139 U. S. 540,
544. The common law prevented a person from trademarking any
name—even his own—by itself. It did, however, allow a person to ob-
tain a trademark containing his own name, provided that he could not
use the mark containing his name to the exclusion of a person with the
same name. The common-law approach thus protected only a person’s
right to use his own name, an understanding that was carried over
into federal statutory law and included in the names clause. The Court
finds no evidence that the common law afforded protection to a person
seeking a trademark of another living person’s name. This common-
law understanding is reflected in federal statutory law, and its re-
quirement that a trademark contain more than merely a name re-
mains largely intact. See §1052(e)(4). It is thus unsurprising that the
Lanham Act included the names clause.
The restriction on trademarking names also reflects trademark
law’s historical rationale of identifying the source of goods and thus
ensuring that consumers know the source of a product and can evalu-
ate it based upon the manufacturer’s reputation and goodwill. Moreo-
ver, the clause respects the established connection between a trade-
mark and its protection of the markholder’s reputation. This Court has long recognized that a trademark protects the markholder’s repu-
tation, and the connection is even stronger when the mark contains a
person’s name.
Applying these principles, the Court has also recognized that a party
has no First Amendment right to piggyback off the goodwill another
entity has built in its name. See San Francisco Arts & Athletics, Inc.
v. United States Olympic Comm., 483 U. S. 522, 528. By protecting a
person’s use of his name, the names clause “secur[es] to the producer
the benefits of [his] good reputation.” Park ’N Fly, Inc. v. Dollar Park
& Fly, Inc., 469 U. S. 189, 198. Pp. 12–19.
(2) A tradition of restricting the trademarking of names has coex-
isted with the First Amendment, and the names clause fits within that
tradition. The names clause reflects the common-law tradition by pro-
hibiting a person from obtaining a trademark of another living per-
son’s name without consent, thereby protecting the other’s reputation
and goodwill. A firm grounding in traditional trademark law is suffi-
cient to justify the content-based trademark restriction here, but a
case presenting a content-based trademark restriction without a his-
torical analog may require a different approach. In this case, the Court
sees no reason to disturb this longstanding tradition, which supports
the restriction of the use of another’s name in a trademark. P. 19–20.>>