The Ongoing Dispute Over the REDSKINS Name

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1 The Ongoing Dispute Over the REDSKINS Name Roberta L. Horton and Michael E. Kientzle July 2015 A federal district court ruling issued Wednesday, July 8, ordered cancellation of the REDSKINS federal trademark registrations on the basis that they may disparage Native Americans. This signals the latest in an ongoing battle over the team s name. In a 70-page opinion, Judge Gerald Bruce Lee of the US District Court for the Eastern District of Virginia granted cross motions filed by Amanda Blackhorse and four other Native Americans (Blackhorse Defendants) against Plaintiff Pro-Football, Inc. (Pro-Football), the entity that does business as the Washington Redskins, at the same time denying Pro-Football s cross motions. Although it has already attracted significant attention, this decision will have a limited impact, because it does not affect the team s right to use the REDSKINS mark. The ruling only affects the team s ability to enhance those rights through the benefits afforded by federal registration with the US Patent and Trademark Office (PTO). These benefits include, among other things, constructive notice of the registrant s ownership of the mark and prima facie evidence of the mark s validity and the registrant s ownership of the mark. The Court s decision upheld the ruling by the Trademark Trial and Appeal Board (TTABor Board) that ordered cancellation of the registrations for the REDSKINS marks. In ordering their cancellation, the TTAB found that the REDSKINS marks may disparage Native Americans within the meaning of Section 2(a) of the Lanham Act (Act), the federal law governing trademarks. 1 Section 2(a), 15 U.S.C. 1052(a), prohibits registration of any matter which may disparage persons or bring them into contempt, or disrepute. Following the June 2014 Board decision, Plaintiff Pro-Football then brought the latest suit in Virginia district court, challenging the constitutionality of Section 2(a) of the Act, and contesting the TTAB s cancellation order. 2 1 Blackhorse et al. v. Pro-Football, Inc., Cancellation No , 111 U.S.P.Q.2d 1080, 2014 WL (June 18, 2014). This was the second time the TTAB decided to cancel the REDSKINS marks; the Board s earlier decision was reversed by the US District Court for the District of Columbia in Pro Football Inc. v. Harjo, 284 F. Supp. 2d 96 (D.D.C. 2003). 2 Pro-Football, Inc. v. Blackhorse et al., Case No. 1:14-cv GBL-IDD (July 8, 2015). 1

2 The First Amendment Issue Plaintiff Pro-Football first argued that Section 2(a) restricts protected speech. The Court dismissed this argument, finding that Section 2(a) did not implicate the First Amendment. Judge Lee relied on appellate decisions holding that the PTO s refusal to register a trademark did not impinge on any First Amendment rights because the trademark owner could still use its trademark. As the Court stated: Regardless of this Court s ruling, PFI [Pro-Football] can still use the Redskins Marks in commerce. 3 Moreover, the Court observed, the federal trademark registration program is government speech, exempt from First Amendment scrutiny. In so holding, Judge Lee relied in part on the test announced by the US Supreme Court this spring in Walker v. Tex. Div., Sons of Confederate Veterans, Inc., 135 S. Ct (2015) to hold that the PTO s decision to register a mark is government speech, not commercial speech, as Pro Football had argued. 4 Because the federal trademark program constitutes government speech, the Court explained, the government is permitted to determine the contents and limits of the program without running afoul of the First Amendment. 5 The Due Process Claims The Court held that Section 2(a) of the Act, as applied to the REDSKINS marks, was not void for vagueness, contrary to Pro-Football s argument. The Court found sufficient the PTO s guidelines as to which matters may disparage pursuant to Section 2(a) of the Action, citing, among other things, the instructions the PTO issues for its Examiners who consider PTO applications in the Trademark Manual of Examining Procedure. Indeed, the Court observed, Pro-Football should have been on notice that redskins was considered offensive by the PTO: The Office had refused to register this term on several separate occasions. As a corollary, Pro-Football claimed that the TTAB cancellation order amounted to a violation of the Fifth Amendment Takings Clause because it deprived Pro-Football of its property without due process. The 3 Id. at Blackhorse at Id. at 26 (citing Rust v. Sullivan, 500 U.S. 173 (1991)). 2

3 Court similarly denied Pro-Football s motion, finding that a federal trademark registration is not property for purposes of the Fifth Amendment analysis. The Disparagement Claim Pro-Football asserted that the record did not show, by a preponderance of the evidence, that a substantial composite (in the Court s words) of Native Americans believed that the REDSKINS marks were disparaging at the time the marks were registered. Judge Lee disagreed. Judge Lee made clear that a substantial composite does not require a majority. The Court cited dictionary evidence, literary, scholarly, and media evidence, and statements of Native Americans, showing that the REDSKINS marks consisted of matter that may disparage a substantial composite of Native Americans at the time when the marks were registered, i.e., between 1967 and In finding that the mark may disparage, the Court emphasized that no intent to disparage was necessary. The Court also noted, in passing, that Pro-Football s own linguistic expert had stated that redskins might be offensive. Among other things, Judge Lee also cited a March 1972 meeting between a delegation of Native American leaders and then- President of Pro-Football, Edward Bennett Williams, in which the Native American leaders demanded that the team change its name. The Court also looked to declarations submitted in the litigation by prominent Native Americans. An Ironic Twist? The Blackhorse Defendants latest victory may have a negative effect. If this decision stands, and the REDSKINS registrations are cancelled, this could open the doors for third parties to adopt the Redskins name and confusingly similar monikers for use on goods presently marketed and sold only by the team or under its authorization. It would certainly be ironic if the result of the decision were that additional parties adopted the REDSKINS mark. It seems clear, however -- or at least the team would forcefully argue, based on its longstanding use -- that for as long as it continues to use the mark (which will almost certainly be for as long as these proceedings continue), it would have strong common law rights in the mark. Indeed, the courts are unlikely to have any difficulty in finding willful infringement, even absent federal registrations for the REDSKINS marks. Other possible implications, however, include a decreased ability to obtain injunctive relief. In many if not most jurisdictions, courts explicitly balance the public interest in advance of issuing a preliminary injunction. As a practical matter, Pro-Football may encounter an additional set of issues to deal with following this ruling, if an individual judge lacked sympathy for its position. Where Do We Go From Here? 3

4 The dispute over the REDSKINS marks is likely to continue. An appeal by Pro-Football is expected. Indeed, the day following the decision, REDSKINS team President Bruce Allen was quoted in The Washington Post as saying We look forward to winning at the US Court of Appeals for the Fourth Circuit. He stated [w]e are convinced that we will win on appeal as the facts and the law are on the side of our franchise that has prominently used the name Washington Redskins for more than 80 years. 6 The REDSKINS dispute is not the only case of its kind. A similar issue is currently pending before the Federal Circuit in a case captioned In re Tam, No (Fed. Cir.). Rather than a trademark cancellation proceeding, however, In re Tam arises from an Examining Attorney s decision to deny registration of the mark THE SLANTS on the basis that it disparages Asian Americans. The applicant challenged the denial on First Amendment grounds -- among others -- but the TTAB and the Federal Circuit affirmed the Examining Attorney s decision. 7 On April 27, however, the US Court of Appeals for the Federal Circuit decided sua sponte to re-hear the issue en banc, and later scheduled oral argument for October 2 of this year. Like Blackhorse, In re Tam has generated considerable interest from both trademark owners and civil liberties groups, many of which, including Pro-Football, have filed amicus briefs. If you have any questions about any of the topics discussed in this advisory, please contact your Arnold & Porter attorney or any of the following attorneys: Roberta L. Horton Roberta.Horton@aporter.com Michael E. Kientzle Michael.Kientzle@aporter.com 2015 Arnold & Porter LLP. This Advisory is intended to be a general summary of the law and does not constitute legal advice. You should consult with counsel to 6 Ian Shapira, Federal judge cancels Redskins trademarks, The Washington Post, B1, B2 (July 8, 2015). 7 In re Tam, App. No (Fed. Cir. April 20, 2015). 4

5 determine applicable legal requirements in a specific fact situation. 5