In June 2014, the Trademark Trial and Appeal Board, a part of the U.S. Patent And Trademark Office that handles adjudication of patent and trademark disputes, ruled that the trademarks of the Washington Redskins, which had been granted way back in the 1960s, were invalid because they violated statutory provisions that prohibits trademarks that are disparaging to racial and minority groups. As I noted at the time, the ruling was troubling on several levels, including both the seemingly obvious First Amendment issues involved, the property rights issue created by the Redskins’ interest in the value of their trademarks, and the fact that the board was seeking to apply 21st Century standards to a trademark decision made more than fifty years in the past. Notwithstanding these arguments, earlier this year a U.S. District Court Judge in Virginia upheld the decision in a ruling that largely accepted the Board’s findings regarding the alleged disparaging nature of the trademarks. That case is now under appeal, but a separate ruling from the Court of Appeals for the Federal Circuit in an unrelated case appears to provide the Redskins with a strong legal argument against the Board’s decision, and to suggest that the attempt to revoke the team’s trademarks cannot withstanding legal scrutiny:
In a ruling that could bolster the Washington Redskins’ legal case to keep the registered trademarks to their name, a federal appeals court struck down part of a law Tuesday that let the government reject trademarks it deemed offensive or disparaging to others.
The United States Court of Appeals for the Federal Circuit in Washington made the ruling in a case involving an Asian-American dance-rock band that sought to register a trademark for its provocative name, the Slants. The court said the First Amendment “forbids government regulators to deny registration because they find the speech likely to offend others.”
Writing for the majority, Kimberly A. Moore, a judge on the appeals court, said: “It is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys.”
The ruling overturned a previous decision by a three-judge panel of the court that had upheld the United States Patent and Trademark Office’s rejection of the band’s application.
And it was viewed as a something of a victory by the Redskins. “We’re pleased with the decision,” said Lisa Blatt, a partner at Arnold & Porter who is part of the Redskins’ legal team.
The decision is being closely watched for its implications in the team’s higher-profile case, in which it is attempting to reverse the trademark agency’s cancellation of the six registered trademarks to the Redskins name.
The Redskins, who have rejected calls by Native American groups and President Obama to change the name, have made similar arguments in court as the band’s, that the government could not decide what names would offend others. The frontman for the band, Simon Shiao Tam, said in court filings that the band chose the name to undercut slurs about Asian-Americans that band members heard in childhood, not to promote them.
The continued registration of their trademarks is largely a symbolic issue for the Redskins — as is their legal battle to keep from losing them, nearly 50 years after getting one for the first time.
Winning the case, in the team’s view, carries benefits in its public relations campaign asserting that the name is not offensive, and that it has the right to continue to use it.
As a legal matter, a trademarked name, like the Redskins, or a slogan, like Nike’s “Just Do It,” does not have to be registered, but doing so provides various benefits. They include a central place to inform others that the trademarks exist; the ability to sue infringers of the trademark in federal court; and the right to have the United States Customs Office police the importing of infringing goods.
Legal experts said the Federal Circuit’s ruling could be considered, but not necessarily followed, by the appellate court for the Fourth Circuit, which is hearing the Redskins’ appeal of the government’s pending withdrawal of their trademark protection.
“The Fourth Circuit could say the Federal Circuit is prestigious but we’re not bound by their precedent,” said Jane Shay Wald, partner emeritus at Irell & Manella in Los Angeles. “It can say, ‘We don’t agree with what you said.’ ”
If the Fourth Circuit’s ruling is the opposite of the Federal Circuit’s, the Supreme Court will probably have to resolve the constitutional issue.
“The Supreme Court’s job, among others, is to determine constitutional questions and try to promote harmony among the different parts of the United States,” Ms. Wald said.
Still, Tuesday’s ruling was considered a major one in trademark law — the striking down of a provision of the nearly 70-year-old Lanham Act that deals with disparaging or offensive trademarks.
“The majority opinion is a very broad rejection of the proposition that the federal government can refuse registration or use of a trademark based on whether certain groups find the mark to be disparaging,” said Jeremy Sheff, a law professor at St. John’s University School of Law who specializes in intellectual property. “It was exactly on that basis that the Redskins’ marks were canceled.”
Eugene Volokh, who has been critical of both the original Trial And Appeals Board and the District Court decision earlier this year, has summarized and examined the argument that the majority makes in its opinion:
This morning, the U.S. Court of Appeals for the Federal Circuit held (In re Tam), by a 9-to-3 vote, that this exclusion of “disparaging” marks violated the First Amendment. This decision isn’t binding on the Fourth Circuit, which is considering the Redskins mark. Moreover, because the court has struck down part of a federal statute, the Supreme Court will likely agree to consider the case (if the government asks it to); so this isn’t the final word on the matter.
But it’s an important opinion nonetheless. If the court had upheld the bar on registering disparaging marks, and the Fourth Circuit had done the same in the Redskins case, then the Supreme Court likely wouldn’t have considered the case. And the opinions in the case will likely be seriously reviewed by the Justices if the Court does indeed agree to hear the matter.
My view, which is very close to the majority’s, is that the disparaging mark exclusion is a viewpoint-based denial of protection for private speakers’ speech. Even if the program is viewed as a subsidy, such viewpoint-based exclusions are unconstitutional (except when the government itself is the speaker, and that’s not so here). And the exclusion therefore violates the First Amendment.
There’s much more to Volokh’s analysis but it defies being excerpted fairly, so I’ll just recommend the piece to you if you’re interested in an analysis of the First Amendment implications of a ruling under the same provisions of the Lanham Act that were applied to strip the Redskins of their trademarks. Suffice it to say that, as Volokh notes, it seems fairly clear given the decisions from the Supreme Court and lower Federal Courts on issues involving so-called offensive speech that barring speech based solely on its content is not permissible and that these provisions of the Act are unconstitutional to the extent that it is aimed at speech solely based on the content of the speech or the viewpoint it represents. One counterargument to the First Amendment argument, of course, would be that the Lanham Act provisions regarding so-called disparaging trademarks doesn’t seek to ban speech, only to deny certain legal rights to the proposed trademark owner. Even without the trademark, the Redskins and the band at issue in this case can continue to use the name and other marks in question, the only thing the lack of trademark registration means is that they cannot use the courts to stop others from using trademarks as well or to produce and sell material using the marks. As Volokh notes, and the Court notes in its opinion, the effect of the act is nearly identical because the decision means that someone is being denied an important and valuable legal right based solely on the content of their speech. It would be similar to a situation where, for example, a political organization was denied a business license or some other benefit because of the content of its speech. This is the issue that was potentially being implicated in the IRS targeting scandal, where it was alleged that conservative organizations were being denied tax exempt status because of the content of their speech. Such actions are barred by the First Amendment as much as an effort to ban the speech outright would be.
As Volokh notes, the Fourth Circuit Court of Appeals, which is current considering the appeal in the Redskins case, is not bound by the decision in this case, but it seems rather obvious that the Redskins will likely cite this ruling in their arguments to the Court along with all the others that it has made since that case was first before the Patent And Trademark Office. The Fourth Circuit could end up agreeing with the basic holding in this case and use it to strike down the lower court decision against the Redskins, or it could either distinguish the ruling or ignore it entirely and uphold the decisions below. In either case, it would seem all but certain that this matter is headed to the Supreme Court. First, as Volokh notes, the fact that the Federal Circuit has struck down a portion of the Federal statute virtually guarantees that it would accept an appeal in this case regardless of what the Fourth Circuit does. Indeed, it may end up accepting the case for appeal before we hear from the Fourth Circuit in the Redskins case. Second, if the Fourth Circuit ends up siding with the Patent Office in the Redskins case then we will have the Circuit split that also tends to guarantee that the Court will accept a case for appeal. Given how the Roberts Court has been dealing with freedom of speech cases, most notably cases such as the Westboro Baptist Church case and others dealing with so-called “offensive” speech, the initial thought would seem to be that the Federal Government will be in a rather weak position trying to defend this provision of the Lanham Act. However, it’s far too early to predict how the Justices will handle either this specific case, or the Redskins case if it ends up dealing with that case directly.
Here’s the opinion in In Re Simon Shiao Tam:
