Federal Appeals Court Ruling Raises Doubts About Rulings Against Redskins Trademarks
A ruling in an unrelated case raises serious doubts about the law used to revoke the Washington Redskins trademarks because they are allegedly 'disparaging.'
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:
Huh? Since when is a brand name (or trademark, for Pete’s sake) “private speech”?
If by ‘private’ they simply mean “non-government”, then this statement is patently (heh) false, with bales of case law precedent confirming the government’s right to penalize all sorts of “private speech”.
As for the rest… sorry, trademark is not a ‘right’ in the first place — it’s a privilege, subject to regulation like any other legal privilege (like a driver’s license). You cannot force the government to endorse and protect your racial slur. Similarly, any claim that the government is “banning speech” here is fatuous — the team is free to say whatever they want. Just as you are legally free to call your boss a micromanaging PMS witch — but are not protected from being fired for that.
Does Volokh also argue that it is unconstitutional for the FCC to censor profanity in public broadcasts? That would at least be consistent…
Snyder should just change the name to the Washington Co*ns. The he could try to make the ridiculous argument that he is honoring the black community and the black players on the team. After all, Washington’s current nickname comes up as a slur or derogatory on pretty much any dictionary.
Or maybe the Washington Heb*s, and then have the logo be an Orthodox Jew with payos. Hey, we’re just honoring the Jewish community, so what if we use a word accepted as a slur.
To those who say it isn’t a slur, try going to Gallup. NM or Kayenta, AZ and start using it loudly in public. I’m sure you’ll get an interesting reaction from the townspeople (almost of whom are Navajo)..
@SenyorDave: poor little flower…… .. life must be so difficult for you
It’s interesting to see the downvotes on this thread – methinks Outside The Beltway is largely “Inside” the beltway based on the preponderance of traditionalist Washington DC football team fans
I love the logic here.
A group of people don’t like the name a guy gives his team. So, to express that dislike, they want to take away his property rights and make it easy for anyone and everyone to use the name they don’t like. They want to take away his right to make money off the name by allowing everyone to use that name they don’t like in any way they choose.
Just what is the goal here, anyway?
It is very serious and concerning that the government holds sway over what a business can call itself, products, mascots, etc. How far does this go when someone feels offended by something ? Would a movie company have to start having its titles and characters subject to approval by the judgment seat of the Federal government ? What if I started a barbecue or fish joint and named it “Big Fat Man’s” ? Someone could certainly find offense with that.
A few years ago a local school board in a hasty, ill conceived decision voted to change the name of the high school. This was done without input from the current staff, fans, parents, boosters, athletes, and students. And especially left out was the alumni. This move ended up costing the taxpayers thousands of dollars for scoreboard changes, signs at the school, and other changeover work: a waste of good money in a school system that is always short on funds !!
I am not crazy about “Redskins”. I have suggested some options: Generals, Warriors, or just Washington would certainly work. But the team name, brand of hot dogs, colors, popcorn price, ticket prices, souvenirs, and name of the stadium resides first with the owners, then the fans. The fans vote by buying tickets, merchandise, and $5 hot dogs. It certainly should not be decided by the government, some misguided judge, or a small group of people. The president should have stepped in and stopped this over reach, and abuse of power.
All of those arguments are both valid and eventually ineffectual. The name is going to change. The NFL is not in the alienating people business, nor is it in the business of being intentionally offensive to a hefty slice of the population.
It is just rank foolishness for Snyder to pick this linguistic hill to die on. His team has a name that no one would use in casual or colleaguial conversation. Snyder is an owner of a team, but the rules governing the NFL are heavily weighted towards the league over the owner. Snyder is basically a franchisee, but with fewer rights that a rando McDonalds store owner has.
Roger Goodell has had a very, very bad few years. He is not going to abide another festering PR problem (especially another PR problem that makes him – and by extension the league – look like it is going to stick by “tradition” over common human decency. The Ray Rice debacle was a wake up call; Goodell is not going to have another situation like that, because, frankly, he probably wouldn’t survive it.
That name is going to go away.
Many news organizations refuse to use that name, and many individuals who work for media outfits refuse to use that name, even though the corporation they work for has not yet instituted an outright ban on it’s use in headlines or copy.
Perhaps the owners / writers of OTB should think about not using that name anymore.
Dan Snyder is very likely well within his rights to use that word, and to continue to have that be the be the name of the team that he owns. But he’d be stupid to do so.
Imagine that there was no DC NFL team.
Instead, Washington has been granted a new expansion franchise slot in this scenario.
What is the likelihood that that name would be be the team name?
@de stijl: “hefty slice of the population”: I don’t know about that. How about the fans who have been supporting this team thick or thin for decades, handing their tickets down the family generations ? Maybe the Redskin players present and past could weigh in on this, one way or the other. They carry a lot of influence with the fans.
As I have said, if Snyder wants to change the name, fine. The bottom line for the “hefty slice of the population” is bringing the Lombardi Trophy back to “old D.C.”
Another question: how about the Redskins team song ? The best of any pro sports team. How would they handle that ?
As I have also said, if some federal bureaucrat can do this to an NFL team that they do not like the name of, who is next ? The corner barber shop ? Somebody’s hot dog wagon? A kid’s lemonade stand ? Slippery slope, not ! Too many times some agency has ruined someone’s life. Talk about a bully.
“Absolute power corrupts absolutely”
“Fight for old DC !!”
Grimm, Huff, Jurgenson, Kilmer, Riggins, Taylor, Theisman, Mosely, Hanburger, Williams, Coach Lombardi, Coach Allen, Coach Gibbs: the Hall of Fame, the roll call of winners !!
@Tyrell:
I’m making a utilitarian argument that the NFL is a business. A multi-billion dollar business that owns one day of the week for almost half the year. A business must adapt to changing market conditions. It is foolish to use a racial slur as a team name in 2015 because you are harming the brand.
It looks like you’re making an argument based on principle and tradition. That principle being that no one has or should have the right or the authority to force a business to change its name. And a tradition that if the name was good enough for Sonny Jurgenson, then, by golly, it’s good enough for today.
Does someone have the right to use a racial slur as the name of their business without government interference? Maybe. We’re going to find out.
Should one use a racial slur as the name of their business?
Let’s not avoid the obvious, that word *is* a racial slur and you would never use that word to describe a native American today.
Dan Snyder is really bad at the job of owning an NFL team. He is the owner but in his heart of hearts he wants to be the GM and the head coach and the draft guru, and he’s constructed the management and decision-making within his franchise so that he has input into picking talent and who starts and who sits. He’s really bad at evaluating and picking talent. If he’s in your fantasy league, he’s easy money.
But when you decide that you want to live or die by defending your right to call your team the Washington Racialslurs, you may very well win in court but lose in the marketplace. Even If he wins in court, it is not going to make the underlying issue go away. The very definition of winning the battle and losing the war.
Um, no. What was at issue in the IRS case was that these organizations seeking tax-exempt status were seeking it based on the claim that they were not primarily partisan conservative organizations exercising political speech, but were instead largely neutral social welfare organizations. If they were actually conservative organizations exercising political speech, then they deserved to be denied that tax-exempt status because their application was fraudulent.
@de stijl: My views on this are somewhat complicated and somewhat different than Doug’s.
I think the appeals court got this one right and that Daniel Snyder has every right to call his team by the name it had gone by for more than half a decade before he purchased it. Further, I’m actually sympathetic to the notion that “Washington Redskins” and “the Redskins” now are so overwhelmingly the only context in which the word “redskins” is used these days that the new use has simply overtaken the old one. It’s the name of a football team, not a slur against American Indians.
Additionally I think it’s silly for media outlets, even private little blogs like this one, to ostentatiously refuse to call something by its name simply to make a point. (I generally favor calling the Islamic State “the Islamic State,” only defaulting to ISIS/ISIL because it’s easier and more familiar but refuse to jump on the “DAESH” bandwagon.)
At the end of the day, I think the name will and should change. (I happen to prefer “Washington Warriors” and a uniform modeled after that they wore from 1965-1969 and occasionally since.) While I don’t find “Redskins” offensive and don’t think the vast majority of the Americans do, either, some substantial plurality of American Indians apparently do. I think the League will force a change in the next five to ten years. I just don’t think it’s the job of the federal government to force it, let alone through the backdoor power of stripping the owner’s intellectual property rights. (Indeed, I presume “Washington Redskins” merchandise will continue to sell for decades after the team changes its name.)
@James Joyner:
I would argue that because they are the targets of the slur, only their opinion matters – not that of the ‘vast majority of the Americans’.
We don’t take a vote about whether the word ni33er is offensive, we simply defer to those who are offended by it and avoid its use. The only difference is that we do not have the momentum of many decades of a professional football franchise called the Washington Ni33ers.
Why don’t all the people so upset about the Redskins name get together and buy the team, then rename it whatever the hell they want? It’s be a refreshing change from trying to get the government to enforce their own morals on other people…
@de stijl: I do appreciate your reply and thoughts on this, and opinions on what I wrote.
There are a lot of team names, and business names that someone could find offensive. I have listed those before. Even animal names could be targets of extremist animal rights people (it has already happened ).
The government should not have the power to force, bully, or intimidate a business owner to make changes based on their judgements of what is offensive.
“No one has the right to not be offended “
I have to agree with the ACLU on this one:
https://www.aclu.org/blog/speakeasy/youre-not-wrong-youre-just-ahole
To add to that, the primary purpose of trademark law is to prevent consumer confusion, i.e. a consumer who wishes to drink Coca-Cola should be protected from look-alike packaging, logos, etc. that makes a fake knockoff copy appear to be the, er, real thing. I don’t see how consumer interests are being served by denying the team its trademark, even if its owner happens to be a dumb boorish jerk.
Anyone who wants to change the name of my beloved Chicago Blackhawks better bring a big gun to the fight…….
@James Joyner:
Why do you think that it’s silly and ostentatious to refuse to use that name? It’s a racial slur. It offends people.
In fact, you pretty ostentatiously just used that word twice in your response, albeit in quote marks. If you put that word inside quote marks then you’re not really responsible for the racial slur you just typed out.
Would you ever use that word in your conversations with your friends or family? If yes, then we don’t have a common understanding of the world to have a fruitful discussion. If no, then we can talk.
You are a generally thoughtful person.
But this statement:
is just oblivious.
The only way that word is not offensive is that you choose not to think about it. If it’s only a team name then it’s okay? Say that word out loud. Would you want to hear that word coming out of someone’s mouth that was dear to you?
And I don’t even know how to process this:
Wow!
You are equating not using a racial slur to identify a football team with this? You went *there*? Wuzza!?!
Seriously?
We all know who ISIS is and what they have done and what they are capable of doing. Your statement seems to imply that you are totally buying into this foul theory that people who don’t vote the way you want them to are afraid of saying “Islamic terrorist” or whatever else shibboleth you want to throw at our feet because we hate America and want it to fail and we want our loved ones to die at the hands of Islamic Terrorists because we hate America.
Did I say that we hate America? Because we do.
Please, just tell us what you want us to call these guys and we’ll do it – as long as it isn’t a racial slur 😉
You are implicitly comparing my refusal to say that word with this fantasy view of squishy PC liberals who hug each other all the time when we’re not saying “Namaste” and “Salaam” to one another.
You’re a smart guy. You should realize that that is the Limbaugh fantasy version of how Lefties talk with one another. You should know that.
This is not meant to be a a micro-aggression towards you. This is not a “check your privilege” moment. It is a simple question – is that word offensive to 2015 ears?
This ISIS ISIL Daesh connotation is just Rod Dreher-style anti-SJW silliness. In fact, if I’ve not been clear to this point, the ISIS ISIL Daesh comparison is offensive.
Why would you even go there? How are those things comparable?
@Pch101:
Nice! Clever wordplay is always a thumbs-up.
@James Joyner:
Daesh is an Arabic acronym for IS. Let’s remember that this is primarily an Arabic-speaking organization.
The reason to use it is to show respect to our allies, which also use it as a pejorative pun (again in Arabic.) Not sure why you would have a problem with this.
@Pch101:
Apparently, if we show respect to our ME allies and try to understand the language, then we’re somehow harming America in some odd fashion.
I’m trying to process this through Joyner’s perspective but I’m probably doing a really bad job at it because I don’t get it.
How this got tied up with DC’s NFL team name is utterly confusing.
Edit: I stumbled my way on to the word shibboleth in my earlier response. In retrospect, I think that’s the crux of it.
It seems that having the “best country in the world” mindset requires us to lack the ability to intelligently make the comparison.
@James Joyner:
Followed two paragraphs down in the same post by:
So it’s simultaneously “not a slur against American Indians” but a “substantial plurality of American Indians” do consider it a slur? How’s that work, exactly? It’s not a slur except to the group of people it describes and who consider themselves slurred by it?
Also, I actually don’t believe you, James, that you don’t find “Redskins” offensive, and here’s why: I don’t believe you’d ever walk up to an American Indian and greet him with “hey, Redskin”, or use the phrase in casual conversation (as for example “yeah, sorry I was late but a redskin grabbed the last cab so I had to take a bus….”). You’d be too afraid to give personal offense and would never dare to use it to someone’s face in a non-football context (and rightly so). When you say you don’t find “Redskins” offensive, your’e simply lying: what you really mean is that you just don’t care that it’s offensive as long as you’re personally not affected.
@Tony W:
Well, no. Those who found the word offensive persuaded the rest of society that the word was offensive and hurtful and we have overwhelmingly ceased to use it. There is a constant battle over language and it evolves over time to reflect the new consensus, but anyone who is offended by the existing language doesn’t simply get to impose their will on the rest of us by fiat.
Again, I happen to think that “Redskins” is sufficiently offensive to a sufficiently large number of people that it ought to go away as the team nickname. I just also think that the vast majority of Americans who hear “Washington Redskins” think of a football team with no sense of the original meaning of the word, just as most of us don’t think of Paul Brown when we hear “Cleveland Browns” or of workmen in a meat packing plant when we hear “Green Bay Packers.”
@de stijl: We’re having a discussion about the name “Washington Redskins.” Having it while avoiding the use of the word “Redskins” strikes me as ostentatious and, well, odd.
I don’t in any way suggest that ISIL has anything to do with American Indians. I’m talking about the narrow point of calling things by the name by which the group self-identifies. The ownership, players, and fans of DC’s NFL franchise have called the team the “Washington Redskins” from the beginning of the franchise’s existence. I think the name ought to change. But I think it’s silly to refuse to call them by their name until such point as the name changes.
No, I’m not personally offended by the name “Washington Redskins.” I hear it multiple times a day, living as I do in the National Capitol Region. Never once have I thought, “That individual is slurring Native Americans!” I happen to be a fan of the team’s chief rival, the Dallas Cowboys. But in neither case does hearing the team nickname cause me to think of the historical roots of the names but rather the long history of the football teams. When I hear “Dallas Cowboys,” I think of Roger Staubach, Troy Aikman, and company, not John Wayne, Wyatt Earp, or Billy the Kid.
And I use quotation marks in these comments because it’s the convention for referring to a word as a word rather than referring to the thing being named. Thus “The Washington Redskins won the awful NFC East this season” but “The name of Washington’s NFL franchise is ‘Redskins'”
@de stijl: It wouldn’t.
I notice that a lot of First Amendment lawyers have no understanding of trademark law. I bet Volokh is next going to claim that the government needs to compensate trademark holders for a taking when their trademark goes PFFFT! because of genericide.
Get the man to take a course in business speech rights, mmmkay?