Professor Christine Haight Farley, who teaches courses on Intellectual Property Law and Trademark Law among others, has followed the Redskins trademark dispute with interest over the years. She shares her take on the decision from the Honorable Judge Lee affirming the cancellation of the Redskins trademarks.

Another Excellent Decision in the NEVER-ending Struggle to Cancel the Washington Football Team’s Name

10

By Christine Haight Farley

Today, the District Court for the Eastern District of Virginia issued its decision in Pro-Football v. Blackhorse and affirmed the Trademark Trial and Appeal Board’s (TTAB) decision to cancel the team’s six “Redskins” trademark registrations on the ground that they are disparaging to Native Americans.  It was a long-awaited decision as it has been 23 years since the first case challenging the marks was filed.  But it was swift justice in the Eastern District where the court just heard oral arguments on June 23rd

In a 70 page opinion written by Judge Gerald Bruce Lee, the court rejected every one of the football team’s arguments and ultimately ordered the trademark registrations to be cancelled. Although the case has been litigated for over two decades with numerous decisions by both the TTAB and federal courts in the DC and Fourth Circuits, this case represented the biggest contest in the dispute as the team mounted various constitutional challenges to the cancellation.  Mainly, the team argued that the Lanham Act’s prohibition on the registration of disparaging marks was a violation of the First Amendment.  The team also argued that the statutory provision was unconstitutionally vague and that a cancellation of a registration under the provision was an unconstitutional taking of property without just compensation.

The First Amendment argument provoked the DOJ to intervene on the side of the Native Americans challenging the registrations, and the ACLU to participate as amici supporting the team’s position.  Subsequently, decisions were rendered in two separate cases that were pertinent.  One judge in the Federal Circuit, in an opinion that has since been vacated, issued “additional views” that laid out the case for finding the disparagement provision unconstitutional.  That case is now pending a rehearing en banc.  And in a timely case involving the confederate flag this June, the Supreme Court ruled that editorial control of a state’s specialty license plate program is government speech and not an unlawful content-based restriction nor viewpoint discrimination. 

Today the district court found that the First Amendment was not implicated in trademark registration decisions since these decisions do not restrict persons from speaking or using their trademarks.  The court rightly noted that trademark rights are created by common law through use in commerce; they are not created by federal statute and the government has no authority to cancel trademark rights.

The court further ruled that trademark registration constitutes government speech, not private speech under the factors laid out in the Supreme Court’s June decision in Walker v. Texas Division, Sons of Confederate Veterans.  A trademark registration clearly communicates that the government approved the mark, and the government exercises editorial control over the trademark register.  The First Amendment does not prohibit the government from speaking and it does not compel the government to speak.  The Constitution also does not prohibit the government from exercising editorial discretion over its own programs.

The court also ruled that the Native Americans challenging the registrations had presented sufficient evidence to satisfy the disparagement standard.  There have already been three decisions on this point: two from the TTAB (sufficient evidence); and one from the District Court for the District of Columbia (insufficient evidence).  The parties both stipulated that the entire record from the prior litigation would be admitted into evidence, and supplemented that record with new submissions.  The tricky part for the challengers of the registrations was that the standard is that a substantial composite of the referenced group find the mark disparaging at the time of registration.  Thus it had to be proven that Native Americans found the mark disparaging between 1967 and 1990, the years of registration of the six marks.  Evidence therefore must be from that period, and must indicate the views of the community.  This tough standard was met by the Native American challengers through the introduction of contemporary dictionary definitions, media references, and statements and positions made by Native American organizations and leaders.  One particularly compelling piece of evidence is a memo written in 1972 by then team president Edward Bennet Williams to NFL Commissioner Pete Rozelle after he met with eight leaders of major Native American organizations.  He explained in the memo that these organizations were “vigorously” opposed to the name and that he found their arguments “cogently expressed.”  The court concluded that the challengers showed, by a preponderance of the evidence, that there is no genuine issue of material fact that during the relevant time period the marks “may disparage” a substantial composite of Native Americans.

Finally, the court ruled that laches did not bar the cancellation.  As the challengers in this case filed suit not long after reaching the age of majority, there was no delay.  But more importantly, the court held that laches does not apply in cases in which there is an overriding public interest.  In this case, the court found that there was an overriding public interest in removing disparaging cases from the trademark register.  This was the argument Vicki Phillips and I made in an amicus brief to the Supreme Court urging the Court to hear the appeal in 2009.

This is a very thorough and careful opinion by Judge Lee.  Robert Tsai and I have written and blogged about our thoughts on the free speech challenge to denying registration to disparaging marks.  I think Judge Lee’s opinion is spot on.

Of course the team can continue to use the mark after their registrations are cancelled, and they will no doubt appeal this decision.  But as I have recently written, this trademark provision and its application here are more than symbolic acts of the government denouncing racial slurs.  The case has served to raise awareness about hateful stereotypes, which when accepted against one group suggests tolerance of other hateful language and treatment toward other groups.