breaking newsIn a near complete win for the Blackhorse defendants and the United States government, the Eastern District of Virginia granted summary judgement on almost all claims in favor of the defendants and ordered the cancellation of six of the Washington Redskins federal trademark registrations.  The Eastern District held that the Redskins marks “may disparage” Native Americans. The ruling was also a win for the United States government, who intervened to defend Pro Football’s claim that section 2(a) of the Lanham Act, which gives the USPTO authority to deny a trademark that “may disparage” a group of individuals, was unconstitutional. However, the Court was very clear that this ruling in no way prevents Pro Football from using the Redskins marks. The ruling only effects the Redskins federal trademark registrations. In fact, the takeaway from this case for most American’s will likely be the following passage:

“To be clear, the Court’s judgment is not an order that precludes [Pro Football] from using the marks in commerce. Nor does the Court’s ruling that the Redskins Marks consisted of matter that “may disparage” a substantial composite of Native Americans during the relevant time period preclude sports fans from collecting, wearing, or displaying the Redskins Marks. Courts do not create trademarks; only businesses like PFI control their own destiny with respect to how the public discerns the source and origin of [Pro Football]’s goods and services. What actions, if any, [Pro Football] takes going forward with the marks are a business judgment beyond the purview of this Court’s jurisdiction.”

Part 1 of our coverage on the July 8th, 2015 Redskins ruling will discuss the Eastern District of Virginia’s granting of summary judgement in favor of Blackhorse on the claim that the Redskins marks “may disparage” Native Americans. Part 2 will discuss the Court’s granting of summary judgement in favor of Blackhorse and the U.S. government on Pro Football’s claim that Section 2(a) of the Lanham Act is unconstitutional.

Part 1: Federal Judge Finds ‘Washington Redskins’ Trademark is ‘Disparaging’  as defined by US Trademark Law

The Eastern District of Virginia found that in light of the (1) dictionary evidence, (2) literary, scholarly, and media references, and (3) statements of individuals and groups in the referenced group, the Washington Redskins marks consisted of matter that “may disparage” a substantial composite of Native Americans during the relevant time period.

The Court’s analysis on whether the marks were disparaging focused on how the Redskins marks were perceived by Native American’s at the time they were registered (1967, 1974, 1978, 1990). It started by using dictionary evidence, holding that “several dictionaries defining ‘redskins’ as a term referring to North American Indians and characterizing ‘redskins’ as offensive or contemptuous”.  This included dictionary “usage labels” which listed the word ‘redskins’ as “considered offense,” “not the preferred term,” “contemptuous,” and other labels designed to inform the reader that the word was often derogatory.

Next, the Court held that the word ‘redskins’ “may disparage” Native American’s based on literary and scholarly use of the word ‘redskins’ during the relevant time frame. The Court cited dozens of scholarly works from the 60s to the early 90s, including the Encyclopedia Britannica, journals, newspaper articles and more, which stated that the word redskins was offensive. For example, it cited an academic article from 1963 stating that “’[a]lmost all the students’ at the Haskell Institute, a federally operated post-secondary coeducational vocational training school for Native Americans, ‘resent being called redskins.’”

Finally, the Court found that the word ‘redskins’ “may disparage” Native American’s based on statements from individuals and group leads. For example, the Blackhorse defendant’s brought referenced a 1972 meeting between Pro Football and a few major Native American organizations where the Native American organizations demanded that the Redskins team name be changed. The Court found the dozens of declarations by members of the Native American community persuasive to show that the word ‘redskins’ “may disparage” Native Americans.

Pro Football argued that there were several instances of Native American’s themselves using the term REDSKINS in different events and advertising the use of the word “in a positive tone.” The Court found Pro Football’s arguments unpersuasive because the evidence did not involve a “substantial composite of Native Americans.”  Pro Football also argued that “disparagement” required “intent to disparage,” which it claimed that it did not have. The Court disagreed, finding that intent is not a factor in whether a term “may disparage.” It held that “Section 2(a)’s ‘may disparage’ prohibition sets a lower bar as it only requires a showing that the mark consists of or comprises matter that ‘may disparage’” not that all uses of the word would be disparaging.

The Court found that the Blackhorse Defendants had shown, by a preponderance of the evidence that there is no genuine issue of material fact as to the “may disparage” claim. It held that “the record evidence shows that the term ‘redskin,’ in the context of Native Americans and during the relevant time period, was offensive and one that ‘may disparage’ a substantial composite of Native Americans, ‘no matter what the goods or services with which the mark is used.’”

Part 2: Federal Judge Finds Cancellation of ‘Washington Redskins’ Trademarks is Not a Violation of 1st Amendment Rights

As part of his ruling on the Washington Redksins trademark, Judge Gerald Bruce Lee also delivered a win for the U.S. government.  The U.S. government joined the case in April 2015 to defend against Pro Football’s argument that Section 2(a) of the Lanham Act, which allows for rejection or cancellation of a mark that “may disparage” a group of people, was unconstitutional.

Pro Football argued that Section 2(a) of the Lanham Act chills constitutionally protected speech and violated the First Amendment. It also argued that Section 2(a) is overly vague and ambiguous and that the cancellation of its trademarks deprives Pro Football of its due-process rights and is an unconstitutional taking of Pro Football’s property without just compensation. The Eastern District of Virginia disagreed and granted summary judgment on all constitutional claims in favor of Blackhorse and the United States Government.

The Court began by stating, in stark terms, that Section 2(a) of the Lanham Act did not implicate the First Amendment.  It stated that “[n]othing about Section 2(a) impedes the ability of members of society to discuss a trademark that was not registered by the PTO.” Furthermore, the Court held that the cancellation of the Redskins marks do not “burden, restrict, or prohibit” Pro Football from using the marks.  Pro Football argued that the cancellation of the registrations of the Redskins marks effected the ongoing debate about the team name in the public, but the Court disagreed, holding that “Section 2(a) imposes no financial penalty on speech – it simply cancels a trademark’s registration; the speech itself is uninhibited.”

Next, the Eastern District of Virginia held that the federal trademark registration program was government speech not subject to scrutiny under the First Amendment. The Court compared this case to the recent Supreme Court decisions holding that the State of Texas’s refusal to print a vanity license plate with a confederate flag on it was not a violation of the First Amendment. Using the reasoning from that decision, the Court in the present case found that the federal trademark registration program “communicates the message that the federal government has approved the trademark” and that the USPTO is simply utilizing the editorial discretion that it was given by Congress.

The Court also cited Fourth Circuit First Amendment precedent in holding that “that the purpose of the [trademark] program is not for the expression of private views or interests.” Instead, the court stated, the expression of private views would “lay in the creation of the mark itself, which is done by the owner by using the mark in commerce.” The federal trademark registration program provides notice to the public of what trademarks are registered through the Principal Register and does not restrict private speech.

Furthermore, the Court held that Section 2(a) was not void for vagueness because (I) Pro-Football could not show that Section 2(a) was unconstitutional in all of its applications; (2) Section 2(a) gives fair warning of what conduct is prohibited; (3) Section 2(a) does not authorize or encourage “arbitrary and discriminatory enforcement”; and (4) Section 2(a) is not impennissibly vague as-applied to Pro Football. The “void-for-vagueness” constitutional doctrine under the Fifth Amendment ensures that statutes and regulations give a “person of ordinary intelligence a reasonable opportunity to know what is prohibited, so that he may act accordingly.”

The Court began by holding that Section 2(a) was not vague on its face because Pro Football could not “demonstrate that every conceivable set of words, symbols, or combination thereof would be invalid under Section 2(a).” Next, it held that the word disparage had a widely known definition that was generally agreed upon by dictionaries and even the Supreme Court.

The Court held that the PTO established sufficient guidelines that identify which matters “may disparage” under Section 2(a). The USPTO routinely publishes all Office Actions detailing the reasons why a trademark was refused under 2(a). These Office Actions are written by licensed attorneys training by the USPTO. Furthermore, the USPTO publishes the Trademark Manual of Examining Procedure, which addresses the “may disparage” portion of Section 2(a). Therefore, the court reasoned, Pro Football had ample guidelines to determine whether its marks may be disparaging.

In addition, the Court held that Section 2(a) was not vague as applied to Pro Football itself because dictionary evidence before the registration of the Redskins marks showed that the mark was offensive and that the USPTO has shown “no inconsistency” regarding the “redskins” as a term that may disparage. In fact, at least

Finally, the Court held that Pro Football’s Takings Clause and Due Process Clause claims failed because a trademark registration is not considered property under the Fifth Amendment. The Takings Clause prohibits the taking of private property for public use, without just compensation. The Court held that a trademark registration (as opposed to the underlying trademark) is not a property interest under the Fifth Amendment. Because Pro Football had no property interest in the registration of its marks, the Court denied the Takings claim.

The Court’s ruling was a big win for the United States government, who intervened in this case to defend the Lanham Act challenge. This decision, which will be appealed, solidifies the government’s stance that it is not forced to provide federal protection for potentially disparaging trademarks.