A Federal District Court Judge in Virginia has upheld a controversial ruling by the U.S. Patent and Trademark Office revoking the trademarks granted more than fifty years ago to the Washington Redskins due to the fact that the name is allegedly offensive:
The Washington Redskins lost the biggest legal and public relations battle yet in the war over the NFL team’s name after a federal judge Wednesday ordered the cancellation of its federal trademark registrations, opposed for decades by Native American activists who call the name disparaging.
The cancellation, called a “huge victory” by the activists, doesn’t go into effect until the team has exhausted the appeals process in the federal court system. And Redskins President Bruce Allen vowed Wednesday that the team would appeal.
“We are convinced that we will win on appeal as the facts and the law are on the side of our franchise that has proudly used the name Washington Redskins for more than 80 years,” Allen said in a statement.
But even if the Redskins ultimately take the case to the Supreme Court and lose, the team can still use “Redskins” and seek trademark protection under state law. The team has argued, however, that a cancellation of its trademarks could taint its brand and remove legal benefits that would protect it against copycat entrepreneurs.
U.S. District Judge Gerald Bruce Lee’s decision affirmed an earlier ruling by the federal Trademark Trial and Appeal Board. Last year, the appeal board declared in a 2-to-1 vote that the team’s moniker is o
The trademark case against the Redskins has been pursued by five Native American activists, including Amanda Blackhorse, a Navajo who is known for leading protests against the team outside stadiums wherever it plays.
After the trademark appeal board’s ruling against the team, the Redskins tried to overturn the decision by suing Blackhorse and the four other Native American activists in federal court in Alexandria. The team argued that the Lanham Act conflicts with its First Amendment rights. It also contended that Blackhorse didn’t prove that enough Native Americans opposed the name at the time the team registered its trademarks in 1967, 1974, 1978 and 1990
Lee agreed with that assessment, rejecting the team’s argument that the vast majority of Native Americans had no objection to the name when the trademarks were granted between 1967 and 1990. Instead, the judge questioned why the team ever chose the name, pointing out in his ruling that Webster’s Collegiate Dictionary defined the word as “often contemptuous” in 1898, “seventy years prior to the registration of the first Redskins Mark.”
But Lee also emphasized that his decision does not stop the team from using its name or fans from buying the team’s gear emblazoned with the word.
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Last year, the appeal board ruled in Blackhorse’s favor, voting to cancel the Redskins’ trademark registrations in a decision that reinvigorated the movement against the name. Members of Congress proposed legislation to strip the NFL of its nonprofit status if the league continued using the name. (The league announced in April that it was stripping itself of its tax-exempt structure.)
In its ruling, the appeal board asserted that “Redskins” offends a large number of Native Americans and is therefore ineligible for trademark registration under the Lanham Act. The board based its vote on several factors, including that “Redskins” is a dictionary-defined slur and the National Congress of American Indians declared the name racist.
The team, in the lawsuit it filed against the Native American activists in August, argued that U.S. patent officials had infringed on the Redskins’ free-speech rights and took away a valuable commodity “without just compensation” because the organization had invested millions of dollars in the use, promotion and protection of its trademarks. (The Redskins’ lawyers said in court papers that the team’s value increased from $741 million in 2000 to $2.4 billion by August 2014, with its brand management valued at $214 million.)
The Supreme Court held that states don’t have to issue speciality license plates whose messages they don’t want to endorse but that would nonetheless carry the government’s imprimatur. The Native Americans’ attorneys argued that the same rationale holds true in this case. The government, the judge wrote, is exempt from First Amendment scrutiny.
The team also claimed that Blackhorse and her fellow defendants didn’t meet the legal burden of proof by showing that enough Native Americans viewed the Redskins trademarks as offensive at the time each registration was issued. But the judge countered, pointing to “highly probative” testimony from the Redskins’ own linguistics expert, who conceded that the team name “certainly might be offensive” from 1967 onward.
But Lee said the appeal board’s decision and the Lanham Act do not violate the First Amendment. He cited a fresh Supreme Court ruling in June that declared Texas didn’t violate the First Amendment when it banned specialty license plates bearing the Confederate flag proposed by the Sons of Confederate Veterans.
The Supreme Court held that states don’t have to issue speciality license plates whose messages they don’t want to endorse but that would nonetheless carry the government’s imprimatur. The Native Americans’ attorneys argued that the same rationale holds true in this case. The government, the judge wrote, is exempt from First Amendment scrutiny.
The team also claimed that Blackhorse and her fellow defendants didn’t meet the legal burden of proof by showing that enough Native Americans viewed the Redskins trademarks as offensive at the time each registration was issued. But the judge countered, pointing to “highly probative” testimony from the Redskins’ own linguistics expert, who conceded that the team name “certainly might be offensive” from 1967 onward.
Eugene Volokh, who was critical of the PTO decision last year, notes that this case clearly seems to have been influenced by last month’s Supreme Court decision involving license plates:
The chief question is whether the exclusion of “disparag[ing]” marks violates the First Amendment. To be sure, the cancellation doesn’t directly restrict the speech of the trademark’s owner; indeed, the more a trademark is protected, the more the speech of others who want to copy the mark is restricted. But the cancellation can serve as an incentive to change a mark as well as a deterrence to others who are considering using such marks.
Consider an analogy (though not a perfect one) from copyright law: Say Congress decided to deny copyright to movies that expressed “anti-American” views; this would strongly deter people from investing in such movies and would thus reduce the amount of such movies that are made. Likewise, if Congress decided to deny copyright to movies that “disparage” racial, ethnic, or religious groups, or for that matter “institutions, beliefs, or national symbols.” (The analogy is imperfect because copyright protection is probably more important to a typical filmmaker than federal trademark registration is to a typical sports team.)
And indeed, First Amendment law has recognized that if the government creates a broadly available benefit scheme aimed at promoting private speech — such as the tax exemption for charitable or educational institutions, funding for university student groups, access to meeting rooms in a public library, and so on — the government generally may not then deny such access to some speakers based on their viewpoints. On the other hand, if the government is viewed as itself speaking, even in cooperation with private speakers, the government may indeed pick and choose which viewpoints it promotes or fails to promote; that was most recently reaffirmed in the Confederate flag license plate case, Walker v. Sons of Confederate Veterans. And as Sons of Confederate Veterans shows, whether a program is viewed as a promoting-private-speech “limited public forum”/”nonpublic forum” program (in which viewpoint discrimination is forbidden) or as a “government speech” program (in which viewpoint discrimination is allowed) is often highly controversial.
At the center of Judge Lee’s decision is the question of whether or not the Redskins name is “disparaging,” which is a central due to the provisions of the Lanham that bar the issuance of a trademark that “disparages” a racial or ethnic group. As I said when I wrote about the PTO Board’s decision last year, there is something about that entire provision that is troubling from a First Amendment perspective. A law that allows the government to reject or rescind a trademark that is allegedly “disparaging” is quite clearly a content-based restriction on speech. Presumably, there would be no restriction on an application for a trademark that was complementary of such groups, and for that reason alone the law would seem to fair under the First Amendment because it allows the government to regulate speech based solely on the content of that speech, and in this case based largely on subjective opinions from what may or may not be a representative group of people from the group allegedly being disparaged. Additionally, I think trademarks are distinguishable from the license plates that were at issue in the Supreme Court’s recent opinion. In that case, we were dealing with a product that essentially required state governments to put some kind of official imprimatur on the messages of private organizations. While I believe that Justice Breyer’s opinion in that case was far broader than it needed to be to reach the result, I think the result itself was correct. In this case, trademarks require no real action on the part of the government beyond processing an application All that granting a trademark does is give a party certain legal rights in case someone else tries to impersonate their business or profit from their name. If that happens, any enforcement those trademark rights is generally left to private legal action by the trademark holder, the government isn’t really required to act at all except insofar as it operates the court system. Given that, I don’t think it’s appropriate to apply the broad standards granted to states to regulate content of license places to clerk’s in the Patent Office who process trademark applications.
In addition to the First Amendment issues, it also seems as though there are some fairly compelling Fifth Amendment issues arising out of the Patent And Trademark Offices decision. Quite obviously, the Redskins and National League Football have serious property interests in the Redskins name and trademarks. Taking those away more than a half century after they had been granted based on a finding that they are “disparaging” seems to me to arbitrary and capricious, and to qualify as a taking of property without just compensation. By revoking trademarks that were determined to be valid when they were first granted, and which have been in used for decades since then in reliance upon that, the government has taken property of significant, quantifiable value from the Redskins for which they will not be compensated. Additionally, retroactively applying the “disparaging” provisions more than 40 years after the Redskins received their trademarks seems to me to be a clear case of government overreach, especially when there are other equally disparaging trademarks that remain valid under the law. These issues don’t seem to be directly addressed by Judge Lee, but I would assume that they will be addressed on appeal.
Practically speaking, this decision doesn’t mean the end of the Redskins at all, For one thing, the effect of the ruling is stayed pending the exhaustion of the team’s appeals, which is likely to take at least another few years if not longer. Additionally, even if the team ultimately loses its appeals it would still be able to use the Redskins name and the trademarks. The only thing that the loss of the trademark rights means is that they would lose some ability to prevent others from making and selling merchandise with the team on it, although common law and state trademark law will allow them to continue to enforce their rights at least to some extent. The hope, of course, is that the loss of the trademark will compel the team to change the name simply for business reason, but it’s not clear at all if that will work. The fact that surveys of the American public as a whole show overwhelming support for the team keeping its name suggests that, even in the face of a loss, the Redskins will still be able to profit handsomely from the sale of official merchandise. Indeed, the prospect of a backlash against such an outcome in the Washington, D.C. area suggests that they may actually end up making money off all of this in the end.
This isn’t the first time that Native Americans have attempted to use trademark law to go after the Redskins. More than a decade, there was a similar challenge filed at the Patent and Trademark Office, with a similar outcome from at the administrative level. That case, however, ended up being dismissed on appeal to a Federal Court on technical grounds that didn’t directly address the fundamental issues in the case. This time around, the parties seeking to revoke the Redskins’ trademarks did not suffer from the same technical standing issue that plagued and ultimately doomed the first case, so we have gotten our first ruling on the merits of the claims against the Redskins from a Federal Judge. This is hardly the end of the road, of course, The Redskins will appeal this matter to the Fourth Circuit Court of Appeals in Richmond, and the matter could ultimately end up before the Supreme Court. For now, though, we have a Federal Court that has upheld a statute that is legally questionable at best and a decision that may not have the impact that many opponents of the Redskins name might hope that it would.
Here’s Judge Lee’s opinion:
