They-Who-Must-not-be-Named-or-at-Least-Must-not-be-Named-THAT

The tangled history of Pro Football, Inc (PFI) and the issue of disparaging trademarks is back in the spotlight with recent accusations of bribery and an anti-Washington Redskins prime time commercial from the National Congress of American Indians.

Currently, the US District Court is considering an appeal of the decision by the US Patent and Trademark Office (USPTO) to cancel six federal trademark registrations for the mark “Washington Redskins”. One of the grounds for appeal by PFI is that the provisions in the Lanham Act (15 U.S.C. §1052), which allow the USPTO to decline to register a mark, are an infringement of their First Amendment rights.  Recently, a SCOTUS case involving the Confederate flag on licence plates was added into the mix when the two sides in Blackhorse v Pro Football, Inc. argued whether a trademark registration is a form of government speech.

On June 18th (less than a week before a hearing for Blackhorse), the Supreme Court of the United States decided Walker v Sons of Confederate Veterans. The Sons of the Confederate Veterans (SCV) wanted the Confederate flag on their licence plates and applied to a Texas program that allowed community groups to request the creation of specialty licence plates. Texas denied their request on the grounds that many people find the Confederate flag offensive. SCV sued, arguing that the government’s rejection of their licence plate was an infringement of their First Amendment rights. In response, Texas argued that licence plates were a form of government speech rather than private speech, and that the First Amendment did not require the government to perform any speech that members of the public might wish them to perform. SCOTUS sided with the government, holding that Texas is not obligated to issue licence plate designs that it feels are inappropriate.

USA Today reported that in the hearing on June 23rd, District Court Judge Gerald Lee asked the parties whether the decision in Walker should impact the questions in Blackhorse.

The SCV case resembles arguments the US Department of Justice submitted for Blackhorse. The Department of Justice did not address the specific content of PFI’s marks, nor did it address whether or not the marks are disparaging, but it did address the constitutionality of the Lanham Act provisions. The Department argued that refusing to register the mark did not preclude the owner from using the mark. Additionally, it argued that the act of registering the mark would imbue it with the government’s authority, making the registration a form of government speech rather than strictly private or commercial speech. Thus, the government would not be infringing the First Amendment rights of the mark owner by refusing to register it, but rather protecting the government’s own right to choose which speech to perform.

The news report states that PFI’s lawyer attempted to distinguish Blackhorse from Walker on the grounds that licence plates are more obviously government speech than trademark registrations, that is, issuing a licence plate bearing a state’s name and a Confederate flag together can appear to be a government endorsement of the owner’s appreciation of the flag, while registering a trademark would not confer the same endorsement.  “No one looks at a Coke can and sees the federal government speaking”, stated PFI’s lawyer.

The lawyer for Blackhorse lawyer on the other hand, is reported to have argued that the reason for disallowing the licence plates and the reason for disallowing the trademark are strikingly similar. He also noted that a registered trademark allows the use of the circle-R, which does attach a level of government expression to the mark.

The fight to have PFI’s marks declared disparaging has been long and difficult, and it has taken multiple sets of Native American complainants to bring the case to this point. Regardless of the outcome of this hearing, it is likely that further appeals will follow, making the fight far from over. But current events suggest that Americans are particularly attuned to issues of race and symbols of disparagement at the present time. Hopefully American courts will prove to be as well.

 

Jacquilynne Schlesier is an IPilogue Editor and a JD candidate at Osgoode Hall Law School.
2 Comments
  1. The District Court has released its decision in Blackhorse. In addition to the First Amendment claims outlined above, PFI had also made arguments regarding Fifth Amendment infringements (that the provisions in the Lanham act are arbitrary and discriminatory and that cancelling the mark would be government taking of assets without due process), whether Blackhorse had adequately demonstrated disparagement at the time of the registration of the marks and whether laches applied to bar the Blackhorse claim. The court rejected each of PFI’s claims and provided summary judgement in favour of Blackhorse’s cross-claims. The full decision is available, but I’m going to keep this comment focused on the First Amendment issues discussed above. (Here, amongst other document repositories: http://pdfserver.amlaw.com/nlj/ProFootball%20Blackhorse%20opinion.pdf )

    Before examining the first amendment claims, the court stopped to draw a distinction between regulating the use of trademarks and regulating the registration of trademarks. The Lanham act covers the registration of trademarks and confers some statutory benefits for registered owners, but an unregistered trademark is still available to be used and protected under common law.

    The court looked at whether cancelling the trademark impacted PFI’s free speech rights and determined that it did not because PFI would still be able to use the marks without registration.

    It then considered whether the registration program is government speech and determined that it was, applying tests from both cases involving the SCV in both Texas and Virginia (Walker, as discussed above and SCV v. Virginia Dept of Motor Vehicles).

    In Walker, SCOTUS had three reasons for viewing the issuing of licence plates as government speech: licence plates have long been used to communicate more than registration information, the public closely associates licence plate designs with the state, and the state retains active control and approval over the messages conveyed on the plates. In this case, the court viewed the registration scheme as communicating the message that the federal government has approved the trademark, concerning itself with the message of the registration, rather than the message of the mark itself. It also accepted the circle-R as conveying a close association between the government and the registration. Finally, it considered the ongoing editorial control that the PTO exercises as similar to the editorial functions exercised in the licence plate case.

    The court then turned to the decision in the Virginia licence plate case, which provided four factors for determining government speech: the purpose of the program, the degree of editorial control, the identity of the literal speaker and who has ultimate responsibility for the content. The court found that the purpose of registration was not to express the views of the trademark owner, but to provide government protection to trademarks and provide public notice of that protection. The court noted that the PTO’s ongoing review and rejection of marks as part of the registration process was a significant degree of editorial control. For the identity factor, the court considered the publication of the Official Gazette and the Principle Register by the government to be the literal speech. Finally, the court found that the ultimate responsibility fell more to private speech since the mark owner was obligated to defend their trademarks if they were challenged. Balancing 3 factors for government speech and 1 for private speech, the court found that the registration of trademarks was government speech using the test from the Virginia case, as well.

    Because only registration and not use was at issue and because registration was considered an act of government speech, the court concluded that PFI’s free speech rights were not infringed.

  2. PFI had appealed to the Supreme Court for a writ of certiorari before judgement — asking them to hear the case before it went through a circuit court of appeals — but was denied. The court did recently grant cert to Lee v. Tam, another case involving a disparaging mark (see IPOsgoode coverage here: http://www.iposgoode.ca/2015/08/new-developments-in-trademark-dispute-of-asian-american-rock-band-the-slants-reignite-free-speech-debate/) so it seems likely the main controversies in Blackhorse will be addressed in that decision.

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