By Nebyu Retta
“We shouldn’t let our fear of a football team re-gaining their trademark justify the suppression of rights for other groups. I think it’s possible to support free speech while opposing hate speech. And it is definitely possible to frame questions about free speech around the marginalized groups who need it instead of writing laws around one football team or one flag or one candidate.”
– Simon Tam
The Supreme Court announced on September 29, 2016, that they would hear the case of Lee v. Tam, (Docket No. 15-1293) and determine whether the disparagement provision of the Lanham Act is facially invalid under the free speech clause of the First Amendment. The impact of this decision could potentially stamp new precedence in free speech rights as well as trademark law.
Lee v. Tam—Facts and Procedural Posture
USPTO Denied Registration of Trademark
The critical facts of the case involved a plaintiff, Simon Shiao Tam, who launched an Asian-American band out of Portland, Oregon called “The Slants.” The name was a social commentary intended to reappropriate a derogatory term to people of Asian descent. After attempting to trademark the band name—he was denied registration by the United States Patent Organization (“USPTO”) because the term SLANTS was “disparaging” to Asians under § 2(a) of the Lanham (Trademark) Act, 15 U.S.C. § 1052(a) –which bars registration of “scandalous, immoral, or disparaging marks.” The Trademark Trial and Appeal Board (the “Board) sided with the USPTO—and Tam appealed to the Federal Circuit.
Federal Circuit Holds Statute Violates First Amendment Free Speech
In April 2015, the Court affirmed the Board’s refusal to register THE SLANTS, but was reluctant to rule out Tam’s argument that § 2(a) was a violation of First Amendment Free Speech. The United States Court of Appeals Federal Circuit’s, Justice Kimberly Moore, even released a 24-page “Additional Views” opinion, questioning the legitimacy of the governmental interest in denying the trademark under the First Amendment. Thus, on December 22, 2015, the Court in a 9-3 vote led by Judge Moore, issued a landmark decision en banc, In re Tam, No. 14-1203 (Fed. Cir., December 22, 2015), holding that the Lanham Act’s prohibition against the registration of disparaging marks – which was used to cancel the registration of the Washington REDSKINS, as well as bar registration of numerous other marks – was unconstitutional because it was a restriction on free speech and did not pass strict scrutiny.
Government Petitions Supreme Court for Further Review
As one might imagine, this decision was met with objection from USPTO authorities. The federal government (on behalf of Michelle Lee, the director of the USPTO) asked the Supreme Court to review the Federal Circuit’s decision, arguing that the lower court’s ruling would bar the USPTO from refusing to register “even the most vile racial epithets.” In addition, they contended that 1052(a) does not prohibit any speech, proscribe any conduct, or restrict the use of any trademark. Distinguishing rather, that it directs the USPTO not to provide the benefits of federal registration to disparaging marks. As such, the government’s petition rested on the argument that the Federal Circuit erroneously applied a strict scrutiny test because this was not an affirmative restriction on speech. To date, Pro Football has filed the only amicus brief in support of the Respondents.
Recap of Major Litigation Involving The Washington Redskins
The National Football League’s (“NFL”) 85-year storied franchise team, the Washington Redskins, have recently faced backlash for their franchise name as being disparaging to the Native American community.
1992: The Year after The Redskins Won Their Last Super Bowl
Litigation began in 1992, two years after the team was granted their last trademark for their cheerleading squad, called The REDSKINETTS. Suzan Shown Harjo, a Presidential Medal of Freedom winner and advocate for indigenous people and Native American rights, first brought a lawsuit against the Washington Redskins claiming it to be a disparaging trademark. After seven years, the Board cancelled the trademark registration of the mark REDSKINS, on grounds that it was indeed disparaging. Subsequently, the team owners appealed the decision to the District Court of the District of Columbia, who went on to rule that there was insufficient evidence of disparagement.
2013-2015: More Trademark Woes for The DC Franchise Team
Almost a decade later, in 2013, Congress, led by a group of House Democrats, unsuccessfully tried to pass a bill to void any existing trademarks that include the mark REDSKINS, and to prevent the term from being trademarked in the future. However, in 2015, Congress reintroduced the bill titled, H.R.684 – Non-Disparagement of Native American Persons or Peoples in Trademark Registration Act of 2015.
In 2014, six Redskins trademarks were denied by the USPTO.
Perhaps the biggest loss for the franchise came in July of 2015, when the US Court of Appeals for the Federal Circuit in Washington DC affirmed the Board’s determination that the franchise name was disparaging to at least a substantial composite of Native Americans. The aforementioned decisions ultimately continue to bar the franchise from receiving federal benefit protections, including the right to exclude nationwide use of the mark. Since the Circuit Court’s holding, several subsequent briefs have been filed including the USPTO and Pro Football who petitioned for Supreme Court further review. Despite this, as of October 2016, the Supreme Court has decided not to take up this case.
Court of Public Opinion
It is well documented that the term, “Redskins” has historically been used to disparagingly describe Native Americans. (See clip at :50 mark). Even President Obama weighed in on the debate; telling the Associated Press: “If I were the owner of the team and I knew that there was a name of my team — even if it had a storied history — that was offending a sizeable group of people, I’d think about changing it.”
However, the current pulse of American society seems to be split on the issue. A 2014 Washington Post poll found 9 in 10 are not offended by the Redskins name. Similarly, a 2014 ESPN poll found that only less than a quarter of Americans found the name offensive. This back and forth in public opinion has made the issue even more fascinating to watch.
Potential Impact of the Upcoming Lee v. tam Decision on The Washington Redskins
The Federal Circuit previously rejected the government’s arguments that:
- 2(a) does not “prohibit” or suppress speech at all because trademark registration is government speech;
- and because §2(a) merely withholds a government subsidy.
In granting certiorari, the Supreme Court will assess “whether the disparagement provision in 15 U.S.C. 1052(a) is facially invalid under the Free Speech Clause of the First Amendment.” The Court may tackle this legal issue by taking a number of routes and could decide that:
- The entirety of 2(a) Constitutionally violates First Amendment freedom of speech because it serves as viewpoint discrimination.
- Only the disparagement clause excluding “immoral or scandalous marks or marks that bring persons, institutions, beliefs, or national symbols into contempt or disrepute,” violates freedom of speech as a form of viewpoint discrimination.
- 2(a) does not violate the Constitution because the Lanham Act was enacted to protect consumers from misleading acts and consumer confusion. Therefore, the government could argue that they have a legitimate interest in baring deceptive marks or marks that mislead consumers by re-appropriating names from their original meanings.
The Supreme Court will revisit these issues and may come out a different way. If the Court decides to uphold the current law, trademark applicants will have to continue being very selective in the marks they choose to register. Alternatively, a decision favorable to the plaintiffs in this case, could open the floodgates for some extremely controversial and inflammatory trademark registrations. But it’s also important to keep in mind that there are other legal impediments that may bar this from happening, such as dilution laws. At stake for the Redskins is their right to reclaim their trademark and tap into huge financial benefits associated with them. Therefore, the Redskins ultimate trademark fate will likely fringe on this upcoming decision. But for now, they will just have to wait from the sidelines like all of us.
Student Bio: Nebyu, Candidate for JD, December 2016. He is a fourth-year evening student and Lead Articles Editor of The Journal of High Technology Law. He also serves as a Litigation Assistant at the Energy and Environmental Bureau of the Mass. Attorney General’s Office.
Disclaimer: The views expressed in this blog are the views of the author alone and do not represent the views of JHTL or Suffolk University Law School.
