No matter what you think of the various fights over whether or not the Washington NFL professional football team should be named the Redskins
, the legal side of the fight is raising a fairly interesting First Amendment question. As we've discussed in the past, trademark law (notably 15 USC 1052(a)
) says that the Trademark Office has the right to deny a registered trademark on "matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute." The US Patent and Trademark Office used that tidbit to cancel
the registration on the Redskins a few months back (a few months after rejecting
a mark on "Washington Redskin Potatoes" using similar logic). Dan Snyder's football team is going to court
over this and raising a few arguments, though the one that is most interesting to me is whether or not that clause in the Lanham Act violates the First Amendment. As the complaint argues:
The terms "disparage," "may disparage,""contempt," "disrepute," and "may bring...
into contempt or disrepute"—which the TTAB acknowledges are not defined in the statute or in its
legislative history—are unconstitutionally vague. The statutory language of Section 2(a) fails to
provide people of ordinary intelligence a reasonable opportunity to understand what conduct it
prohibits, and therefore conveys no ascertainable standards for trademark owners to follow. The
statutory language of Section 2(a) thereby encourages and authorizes arbitrary and discriminatory
enforcement by leaving the Board with virtually unfettered discretion to deny registration or to
cancel registrations, even in situations such as the one presented here, where for over eighty years
Pro-Football has worked to establish valuable rights in its marks, and has owned its initial
registration in the series of marks, for over forty years. Section 2(a) thus effectively chills First
Amendment free speech rights.
The terms "disparage," "may disparage," "contempt,""disrepute,"and "may bring...
into contempt or disrepute" are unconstitutionally overbroad and sweep under their rubrics speech
that is not capable of being legitimately regulated by the government. There is no core of easily
identifiable and constitutionally proscribable conduct prohibited by Section 2(a). Rather, to the
extent there are any legitimate applications of Section 2(a), they are few in comparison to the
substantial unconstitutional applications of the law that impermissibly restrict protected speech.
Section 2(a) thus chills protected speech that falls within its overbroad language.
The team makes a further argument that the name is a form of protected speech and removing the trademark stifles that speech, but that's a slightly different issue (and one that I don't think is as strong).
The DOJ has now stepped in specifically to defend the constitutionality of that section of the Lanham Act
The United States will defend the constitutionality of the federal statute.
“The Department of Justice is dedicated to defending the constitutionality of the important statute ensuring that trademark issues involving disparaging and derogatory language are dealt with fairly,” said Acting
Assistant Attorney General Joyce R. Branda for the Civil Division. “I believe strongly in the rights of all Americans to celebrate and maintain their unique cultural heritage. Going forward, we will strive to maintain the ability of the United States Patent and Trademark Office to make its own judgment on these matters, based on clear authorities established by law.”
From a pure legal wonkery position, this whole thing is fascinating. I have to admit that specifically putting into law that the USPTO can deny trademarks based on "matter which may disparage" or which might bring "persons, living or dead, institutions, beliefs, or national symbols... into contempt, or disrepute" bothers me on a basic First Amendment level. Asking bureaucrats to determine whether or not content is disparaging or might bring someone into disrepute certainly seems to raise some First Amendment issues. It certainly doesn't seem to fall into the very limited categories
of "content-based restrictions" that the Supreme Court has allowed.
That, however, is only half of the equation. The more important half is the question of whether denying a trademark registration is a content-based "restriction on speech."
And that doesn't seem even close to reasonable. There are tons of trademarks that are denied all the time, and it seems perfectly reasonable to say that the USPTO can deny a trademark. If it's somehow argued that denying (or cancelling) a trademark registration can be seen as a First Amendment violation, then would the USPTO be able to reject any trademarks? Or would it always face a First Amendment challenge?
And that brings us to the final point. Cancelling a trademark registration doesn't actually
block any form of speech. The team can still use the name (and could even still claim a common law trademark, allowing it to block most others' attempts to use the mark anyway -- it basically just limits the ability to get monetary damages). In fact, the trademark lawyer for the Redskins, Bob Raskopf, more or less made this point himself
in response to the USPTO cancelling the registration, noting (among other things) that:
This ruling – which of course we will appeal – simply addresses the team’s federal trademark registrations, and the team will continue to own and be able to protect its marks without the registrations.
He's right, but it also undermines the First Amendment question raised in the appeal, and more or less makes the DOJ's case for it on this particular point. If no speech is hindered or stopped by the cancelling of the registration (or a denial of a registration) based on 1052(a) then where is the First Amendment problem? It may be a "content-based" regulation, but it's not clear that it's a content-based restriction on speech
Either way, as a First Amendment issue, it's an interesting one to watch. Should the Redskins prevail, and the DOJ fail, on this particular point, there could be some other interesting challenges to rejections of trademarks -- or even potentially patents or copyrights as well. Saying that rejecting a registered form of intellectual property is a violation of the First Amendment could open the door on a series of troubling legal questions. Still, this isn't the only case exploring this issue. A case in front of CAFC currently, involving the USPTO rejecting a trademark for the band "The Slants" via this same part of the Lanham Act has opened the door
to it being called unconstitutional. At least one judge seems to agree with the Redskins' take on this:
At the Federal Circuit, Tam and attorney Ronald Coleman are swimming against 34 years of precedents. But it sounded from Friday's argument as if at least one judge wants to reconsider them. Judge Kimberly Moore described the seminal decision upholding Section 2(a) of the Lanham Act as outdated, cursory and a candidate for en banc review in light of "an immense evolution of Supreme Court jurisprudence on this point."
In that case, one of the judges pointed out, as we have, that rejecting the trademark doesn't limit speech, but in fact expands
it by not restricting it via the trademark. After some coaxing from Judge Moore, the lawyer for The Slants' Simon Tam disagreed with that point. However, again, the others on the panel seem to feel as we do that it's not clear what speech is being stifled here. According to Judge Kathleen O'Malley:
"Isn't there a difference, though, between prohibiting speech on the one hand, which very much would be censorship, and refusing to give one a monopoly on a particular mechanism for that speech?"
Indeed, there is. And it seems likely that the Redskins are going to lose on this point as well.