By: Josh H. Escovedo
If you’re a fan of intellectual property or the National Football League, you may have heard about last July’s ruling in the United States District Court for the Eastern District of Virginia. There, Judge Gerald Bruce Lee affirmed the Trademark Trial and Appeal Board’s ruling that the team’s moniker is offensive to Native Americans, and therefore ineligible for trademark protection under the Lanham Act, which prohibits registration of disparaging marks. This battle was fought over more than 20 years. The effect is that the Redskins can continue to use the mark, but they do not have the trademark protections provided by the Lanham Act. The Redskins, clearly unhappy with this result, have appealed the matter to the Fourth Circuit of Appeal. That matter is currently pending and the opening briefs were recently filed.
In its opening brief, the Redskins immediately attacked the District Court’s ruling that the Redskins’ registration is not entitled to First Amendment scrutiny because registered trademarks are “government speech” and the registration is a government subsidy “program.” Counsel for the Redskins, Quinn Emanuel and Arnold & Porter, argue that this notion is disturbing. Specifically the opening brief states that: “The PTO has registered hundreds if not thousands of marks that the Team believes are racist, or misogynistic, vulgar, or otherwise offensive. By way of example only, the following marks are registered today…DANGEROUS NEGRO shirts… DAGO SWAGG clothing…BAKED BY A NEGRO bakery goods….These are not isolated instances. The government routinely registers pornographers’ marks” as well. These marks are clearly offensive, and like the Redskins mark, racially charged.
The Redskins argued that this is not government speech, nor is the government subsidizing these marks. Instead, the government is a regulator who determines whether a trademark meets certain criteria, such as distinctiveness. And according to the Redskins, because the registration constitutes government regulation, a ban on registering disparaging trademarks unconstitutionally burdens speech based on content and viewpoint; both of which are prohibited by the First Amendment.
The Redskins argued that contrary to the District Court’s ruling, it does not matter whether or not the cancellation leaves the Redskins able to utilize the mark. The test for First Amendment violations is not whether the mark can still be used, but whether the government can regulate it. The brief makes an interesting analogy where it states that “The government cannot turn the lights off at a Redskins night game because the government disfavors the name, and defend the action because the Redskins can still play in the dark.” The fact is, the registration provides valuable legal protections and as such, the government cannot condition those protections on a trademark-owner’s agreement to forgo controversial speech.
This seems like a pretty strong argument. The registered marks listed in the opening brief are outrageously racist, offensive, and disparaging. Yet, the USPTO had no issue registering those marks. So why should the Redskins mark be any different? This is, of course, up for debate, but it seems that if you are going to ban offensive conduct, then all of it needs to be banned not just some of it. But given the Supreme Court’s First Amendment precedent and its liberal protection of offensive and obscene speech, it is rare that the government can preclude private speech—no matter how hateful or offensive it may be.
Just a few days ago, the Federal Circuit Court of Appeals, the preeminent Court of Appeal for intellectual property disputes, ruled on a similar situation. And given the influence of the Federal Circuit on intellectual property matters, it could ultimate result in the Virginia District Court’s decision being overturned by the Fourth Circuit. In the matter of In re Simon Shiao Tam, the front man for the Asian-American dance-rock band The Slants appealed the USPTO’s refusal to registered the mark THE SLANTS on the ground that it is likely disparaging to “persons of Asian descent.” According to the trademark examiner, the term slant has “a long history of being used to deride and mock a physical feature” of people of Asian descent.
Tam appealed the decision to the Federal Circuit arguing that he named his band The Slants to “reclaim” and “take ownership of Asian stereo types.” He argues that his band draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes. In fact, “its albums include The Yellow Album and Slanted Eyes, Slanted Hearts.” Thus, the band “feels strongly that Asians should be proud of their cultural heritage and not be offended by stereotypical descriptions.” Accordingly, Tam argued that the USPTO’s refusal to register his trademark constituted a violation of his free speech because it constituted a content-based regulation.
The Federal Circuit agreed with Mr. Tam and found that the disparagement provision in the Lanham Act is viewpoint discriminatory on its face. When the USPTO rejects marks that it believes refer to people in a negative way, but permits the registration of marks that refer to a group positively, it is regulating based on content. This, the Federal Circuit held, is unacceptable and a clear violation of the First Amendment. Finding that the registration of a trademark is private speech and not government speech, the Federal Circuit held the disparagement provision of the Lanham Act unconstitutional.
So, how do we go from discussing the Redskins’ trademark to a lesser-known rock band known as the Slants? Well, the answer is simple: if the Federal government cannot refuse to register THE SLANTS trademark on the ground that it is disparaging, then it also cannot refuse to register the REDSKINS trademark. Both marks are, at the very least, arguably offensive to certain people. But the First Amendment provides freedom of speech from government regulation, and the disparagement provision of the Lanham Act constitutes a content-based regulation of speech. Or, at least, that’s what the Federal Circuit held. The question is: will the Fourth Circuit follow the Federal Circuit? The Fourth Circuit is not obligated to. They are equals. However, the Federal Circuit is generally given a certain level of deference regarding intellectual property issues. One thing is certain: if the Fourth Circuit does not follow the Federal Circuit’s ruling, the matter will be ripe for Supreme Court review. This is especially true given that the Federal Circuit has held an entire provision of the Lanham Act unconstitutional.