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Published January 20, 2016.
A recent federal court of appeals decision makes it likely that the trademark registrations owned by the Redskins for their team name won’t be cancelled.
You probably already knew that a federal trial court in Northern Virginia ruled last summer that these registrations must be cancelled.
The federal trademarks act bans the registration of trademarks that disparage a group. That Virginia court ruled that the REDSKINS trademark was perceived as disparaging by a substantial fraction of American Indians.
The Redskins argued that this statutory prohibition violates the First Amendment protection for freedom of speech. The court rejected that argument.
A less publicized court case has been fought concerning another purportedly disparaging trademark. A member of the rock band THE SLANTS, which is composed of Asian men, sought to federally register the band name as a trademark.
The U.S. Patent and Trademark Office denied the application on disparagement grounds. The band appealed to the Court of Appeals for the Federal Circuit, arguing that the rule against registering disparaging marks is an unconstitutional violation of freedom of speech.
Just before Christmas, this appeals court ruled that the First Amendment is violated and struck down the prohibition on registering disparaging marks.
The Redskins have appealed to the appellate court that oversees Virginia – the Court of Appeals for the Fourth Circuit. The Fourth Circuit isn’t bound by the decision of the Federal Circuit, because the two courts are sister appellate courts. Yet, in my opinion, it’s likely that the Fourth Circuit will adopt the reasoning and ruling of the Federal Circuit.
The Federal Circuit opinion thoroughly demolishes the arguments that the ban on registering disparaging trademarks is constitutional.
In the Federal Circuit decision, nine of the 12 judges found the prohibition on disparaging marks unconstitutional. Of the three who disagreed, one thought the prohibition was unconstitutional in this specific case but declined to find the law generally unconstitutional. Only two judges dissented completely.
The majority opinion, 62 pages long, is forceful and detailed.
The Slants opinion addressed the REDSKINS case. The Redskins filed a friend-of-the-court brief in the Slants case supporting the argument that the ban on registering disparaging trademarks is unconstitutional. They were rewarded.
The opinion is peppered with strong inferences that the decision by the Virginia trial court to invalidate the REDSKINS mark registrations was wrong. It’s rare that a federal appellate court will practically tell a sister appellate court how it should rule on a case.
The Federal Circuit’s opinion held that the prohibition on disparaging marks is unconstitutional viewpoint discrimination.
It held that the First Amendment protects even hurtful, offensive speech. (College speech regulators – take note.)
It held that the prohibition is facially invalid, meaning it can’t be considered constitutional when other, purportedly disparaging marks are considered.
It held that, even if the constitutionality of the prohibition is considered under the less demanding standard applied to commercial speech, the prohibition can’t pass muster.
It also held that the government is wrong in claiming it can deny registration to disparaging marks because of governmental involvement in registering them and the use of federal courts to enforce them.
We now wait for the Fourth Circuit to consider the Redskins appeal. Oral argument should occur no later than next summer with a decision before next fall.
If the Fourth Circuit agrees with the Federal Circuit, which I expect will happen, that will end the long-running legal war to invalidate the REDSKINS mark registrations. I doubt the Supreme Court would take an appeal from either of those courts because there would be no split of opinion between them to resolve.
If, on the other hand, the Fourth Circuit disagrees with the Federal Circuit and upholds the prohibition, the Supreme Court is practically forced to take the case. It would have to resolve the split.
If that happens, I believe the Supreme Court will side with the Federal Circuit and find the prohibition unconstitutional. In the past couple of decades, the Supreme Court has interpreted First Amendment protection of speech more broadly than before.
If the Redskins ultimately lose their registrations, they are not forced to change the name of their team. But the team would face disadvantages and hassles in protecting the name of their team against counterfeiters and other mimics.
But if the Redskins win, that doesn’t end the broader fight either. Those who dislike the REDSKINS name remain free to fight in the court of public opinion – to picket, to boycott, and to criticize. That’s really the court in which this case belongs.
Written on January 20, 2016
by John B. Farmer
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