The saga of the Washington Redskins trademarks is ongoing, and in an interesting twist, the fate of the team’s registrations will likely be determined by the Supreme Court in a case involving a little-known rock band known as The Slants.
The team has been fighting a legal battle over its trademarks for some time. In 2014, at the urging of a group of Native Americans, the U.S. Patent and Trademark Office Trademark Trial and Appeals Board canceled six of the team’s registered trademarks, many of which had been registered since the 1960s.
The basis for the cancellation was Section 2(a) of the Lanham Act, which provides that a trademark may be refused if the mark “consists of … matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols or bring them into contempt or disrepute.” 15 U.S.C. 1052(a).
After the appeals board canceled the Redskins’ marks, the team brought an action in the Eastern District of Virginia asserting, among other things, that Section 2(a) of the Lanham Act was unconstitutionally vague.
The U.S. District Court affirmed the cancellation of the trademarks. See Pro-Football Inc. v. Blackhorse, 112 F. Supp. 3d 439 (E.D. Va. 2015).
The Redskins appealed to the 4th U.S. Circuit Court of Appeals. Then, in an unusual move, the team appealed directly to the Supreme Court through a process known as certiorari before judgment, which allows the Supreme Court to hear cases on the appellate docket when the matter is of “imperative public importance.” S. Ct. R. 11.
In its request for certiorari before judgment, the Redskins argued that the case should be heard because of its similarity to The Slants case that the Supreme Court has recently agreed to hear. See Lee v. Tam, 808 F.3d 1321 (Fed. Cir. 2015). The Redskins’ request for certiorari was denied, and its case before the 4th Circuit has since been stayed at the request of counsel, meaning that the Supreme Court’s ruling in Tam is likely to have a profound impact on the Redskins trademarks.
The Asian-American lead singer for the The Slants, Simon Shiao Tam, has said that the name was chosen to reclaim ownership of a negative stereotype about Asian-Americans. The crux of the Tam case, and a key issue in the Redskins’ case, is whether Section 2(a) of the Lanham Act violates the free speech clause of the First Amendment.
The case is likely to turn on whether the Supreme Court finds that the Lanham Act provision constitutes “content-based” restrictions on free speech, which would be presumptively invalid, and subject to strict scrutiny. This is the level of scrutiny that the Federal Circuit applied in deeming the disparagement provision facially invalid.
In contrast, the government will argue that the provision merely “reflects Congress’ judgment that the federal government should not affirmatively promote the use of racial slurs and other disparaging terms by granting them the benefits of registration,” and that “the Constitution does not require Congress to open the federal trademark registration system to racial epithets.”
The Tam case is likely to be decided by the Supreme Court this spring. Broadly speaking, a win for the Slants could lead to an influx of trademark applications and registrations that previously would have been denied registration based on the Lanham Act.
It could also lead to in uptick in litigation challenging other cancellations and registration refusals. In an indication of the potential impact of the case, a number of high-profile parties have filed amicus curiae briefs in Tam, including the named parties in the Redskins’ case, certain members of Congress, Native American organizations and the Korematsu Center for Law and Equality.
More narrowly, a win for The Slants is likely to be a win for the Redskins since it would effectively adjudicate the disparagement provision in Section 2(a) of the Lanham Act as unconstitutional. This section was the basis for the cancellation of the Redskins claim. A loss for The Slants would certainly be a blow to the Redskins’ ability to prevail in their case, but it would not necessarily be fatal.
The Redskins have asserted several arguments not necessarily available to Tam, namely that their marks had previously been registered, not just refused and that the registrations had been valid for a long period of time. To that end, the Redskins have also challenged the cancellations on the basis of a Fifth Amendment due process violation and that the Native American group challenging their registrations waited too long to do so.
As evidenced by their litigious fight, the Redskins team, and primarily owner Daniel Snyder, have dug in their heels on the issue. Presumably, the motivation is a fiscal one, as the team has been valued at more than $1 billion, with a substantial portion of that tied to its name. However, the team has drawn heavy scrutiny, particularly in recent years, for the use of the name.
A lack of formal trademark registrations would not preclude the Redskins from using the name, but it would preclude the team from enforcing its trademark rights against any potential third parties, which would severely diminish the value of the mark.
If that happens, the incentive to continue use of the name may subside, and perhaps the team would rethink its stance on the name. The NFL has thus far not stepped in on the matter, but it is certainly possible it could do so.
Ultimately, the fate of the name of one of the NFL’s most valuable franchises is going to be directly impacted by eight (or nine) Supreme Court justices sitting down the street from where the team plays.
The justices will not be adjudicating whether the Redskins name is disparaging, but rather, whether the name of a band that is allegedly disparaging to the band’s own members should be afforded the right of trademark protection under the First Amendment.
There has long been an intersection of music and sports in pop culture and now that crossover has extended to the courts.