Drinker Biddle & Reath spent more than 10 years, almost 9,000 billable hours and $3.5 million in pro bono legal services working to get the Washington Redskins’ trademark registrations canceled.
The pro bono work, which reached a milestone victory Wednesday with the U.S. Patent and Trademark Office canceling the registration for the “disparaging” marks, also meant the firm was forced to miss out on potentially lucrative work related to the NFL.
Drinker Biddle Chairman Alfred W. Putnam Jr., who was involved in the matter, said he couldn’t remember whether the work at issue was directly from the NFL or another related entity, but he said the firm’s handling of the Redskins case “did preclude us from getting some NFL work.”
The challenge to the football team’s name is hardly new. In 1992, the first case, Harjo v. Pro-Football, was brought before the USPTO by a group of Native Americans who challenged the trademark registration as “disparaging.” The initial USPTO panel found in favor of the plaintiffs and ruled the trademark was in fact disparaging. But an appeals court determined the claims were barred because the suit wasn’t timely filed.
As that issue went back and forth on appeal, Drinker Biddle intellectual property attorney Norm St. Landau, who was based in Washington, was asked for some appellate advice on the case. That was in 2003. His partner, Phil Mause, led the firm’s representation on appeal on behalf of the plaintiffs. Mause is now retired and Washington-based commercial litigation partner Jesse Witten has led the firm’s representation since joining Drinker Biddle.
As that appeal was ongoing, a new crop of plaintiffs, who were younger Native Americans and could overcome the time element that barred some of the older plaintiffs in the original case from successfully challenging the trademarks, filed a new suit. Drinker Biddle has led that case—Blackhorse v. Pro-Football—ever since.
Putnam, who participated in drafting briefs in the case, said he isn’t sure whether the issue was “more attractive” this time around than in the first case. He observed that cultural attitudes have changed on a range of issues since the early ’90s.
“Gay marriage is suddenly, obviously constitutional all over the place,” Putnam said. “I remember a different world. Whether there is some of that here, I don’t know. I think the arguments are pretty much the same. I can’t tell you I think the case is any stronger than it was then.”
Putnam said he doesn’t think those inside the law firm have viewed the case as a “politically correct” or social action. But Putnam said he understands some people outside of the firm may view it that way.
“To the extent that you get some downside of taking on cases like this, it may have been whether there were people out there that would react in such a way that you would lose business,” Putnam said.
He said, from the point of view of a law firm, no one wants to be adverse to the NFL.
“We like the NFL, we’d like to be considered to work for the NFL, just like any other law firm,” Putnam 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.”
Any pro bono case can lead to potential conflicts or negative reactions inside or outside a law firm, Putnam said.
“But of course at the end of the day if you actually lose clients or make your clients angry … we always regret that. No one likes it, but you can’t pick up the phone and say, ‘Now that I’ve thought about this,’” we won’t represent you anymore, Putnam said.
Appeals in the Redskins case are expected and Putnam said he expects his firm’s involvement to continue.
“No doubt this is not all over anymore than it was all over back then,” Putnam said.
But the public perception has changed. Putnam said there has been a “sea change of opinion” in Washington, with the Senate saying the team should consider changing its name.
The cancellation of the six Redskins trademarks at issue in the case doesn’t mean the team has to change its name. But Putnam said it might want to consider doing so given it will no longer have exclusive rights to its Redskins merchandise now that anyone could sell products with the unregistered trademarks.
Putnam noted it is a somewhat curious result given the whole argument in the case is that the name is offensive and now more people could have the ability to use it. That is if the team keeps the name.
One of Putnam’s partners asked him whether the team had a First Amendment right to use the name. Putnam said no one can stop the team from using the name, but that doesn’t mean the team is owed federal legal protections in the form of trademarking it.