If and when the Washington Redskins trademark dispute gets to the U.S. Supreme Court, it is not certain the justices would uphold last week’s ruling canceling the team’s marks as disparaging to Native Americans.
A divided panel of three administrative law judges from the U.S. Patent and Trademark Office on June 18 canceled six of the National Football League team’s trademarks. The majority concluded that the trademark registrations “must be canceled” because a substantial number of Native Americans saw the term “redskin” as offensive as long ago as 1967, when the first of the trademarks was issued.
“This racial designation based on skin color is disparaging to Native Americans,” Trademark Trial and Appeal Board Administrative Trademark Judge Karen Kuhlke wrote, joined by Peter Cataldo. Trademark Judge Marc Bergsman dissented.
The football team can appeal to the U.S. District Court for the Eastern District of Virginia, where it can further develop the record and introduce new evidence, or the U.S. Court of Appeals for the Federal Circuit, where the record will remain as-is. Numerous other issues could form the basis of an appeal, including “laches” — the principle that those challenging the trademarks delayed doing so for too long. But a First Amendment claim is also possible.
If the team frames the controversy as a violation of its owner’s First Amendment rights, the high court could feel compelled to consider whether government agencies should decide which marks are “disparaging” and which are not.
In the aftermath of the Trademark Trial and Appeal Board decision, team officials have pledged to appeal — and they have reason for confidence. A similar ruling in a 1999 predecessor case was overturned and, after a lengthy appeal, the Supreme Court denied review in 2009.
The Supreme Court traditionally gives fewer First Amendment protections to commercial speech, although in recent years its value has risen among justices. According to First Amendment expert Erwin Chemerinsky, the court generally has not applied the First Amendment to trademark and copyright cases.
“The difficult underlying question is the extent to which the First Amendment limits decisions of the U.S. Patent and Trademark Office,” said Chemerinsky, dean of University of California, Irvine School of Law. “All grants of intellectual property, such as copyrights and trademarks, limit speech. But the court has been unwilling to use the First Amendment as a limit in this area.”
Nonetheless, Chemerinsky said, “This is different. This is the government making a decision on conferring a benefit based on the content of the speech. I think this raises a real basis for a First Amendment challenge.”
FIRST AMENDMENT’S REACH
The Roberts Court has expanded the reach of the First Amendment in other contexts — such as campaign finance restrictions — in which, critics say, the court seems eager to embrace the First Amendment when businesses claim their right to free expression is being infringed.
“My tentative view is that the general exclusion of marks that disparage persons, institutions, beliefs or national symbols should be seen as unconstitutional,” First Amendment scholar Eugene Volokh wrote on his Volokh Conspiracy blog. “An exclusion of marks that disparage groups while allowing marks that praise those groups strikes me as viewpoint discrimination.”
Drinker Biddle & Reath spent more than 10 years, almost 9,000 billable hours and $3.5 million in pro bono services in the fight to cancel the Redskins’ trademark. The firm, for its effort, missed out on potentially lucrative work related to the National Football League.
“We like the NFL; we’d like to be considered to work for the NFL, just like any other law firm,” Drinker Biddle chairman Alfred Putnam Jr. said. “Obviously, given this case, that put us at a disadvantage for being considered for that type of work. We understood that we were unable to take work from the NFL and we have some regret about that, but although we might have some regret about that, our clients were our clients, so there was nothing to be done.”
Jesse Witten, a Drinker Biddle partner who represented the five Native American petitioners, said the trademark office should have never registered the marks in the first place.
“We presented a wide variety of evidence — including dictionary definitions and other reference works, newspaper clippings, movie clips, scholarly articles, expert linguist testimony and evidence of the historic opposition by Native American groups — to demonstrate that the word ‘redskin’ is an ethnic slur,” Witten said.
Robert Raskopf, Claudia Bogdanos and Todd Anten of Quinn Emanuel Urquhart & Sullivan represented the football team in the dispute. “We are confident we will prevail once again, and that the Trademark Trial and Appeal Board’s divided ruling will be overturned on appeal,” Raskopf said in a written statement. “This case is no different than an earlier case, where the board canceled the Redskins’ trademark registrations, and where a federal district court disagreed and reversed the board.”
If the trademark board’s decision stands, it won’t bar the team, owned by Daniel Snyder, from using the trademark.
But the team’s ability to “stop others from using the name or to force licensing of the name in all situations would be severely curtailed, which would cut into both the team’s profit margin and its ability to choose the products and services with which the team and its name are associated,” Reed Smith trademark litigator Brad Newberg said in an email.
“This could be close to the final straw in forcing the NFL and Daniel Snyder to change the name of the team,” Newberg said.
The decision is not a carte blanche for anyone to start selling Redskins T-shirts, said Mark Sommers, a partner at Finnegan, Henderson, Farabow, Garrett & Dunner.
“Given the newsworthy nature of this decision, the board expressly noted at the outset of the opinion that its decision concerns only the ‘statutory right to register’ the Redskins mark and that it lacked the statutory authority to determine the ‘right to use’ the Redskins name,” he said. “As such, one of the main takeaways from this decision is that the Redskins are not required to stop using their name and that third parties have not been gifted the opportunity to start freely selling Redskins merchandise.”
Putnam of Drinker Biddle said his firm expects to continue its involvement as the football team’s attorneys press an appeal.
“No doubt this is not all over anymore than it was all over back then,” Putnam said.