ACLU of Virginia files brief on Redskins trademark rights case citing 1st Amendment


The ACLU of Virginia filed a friend-of-the-court brief Friday "urging the Fourth Circuit Court of Appeals to reverse the cancellation of the Washington National Football League team's trademarks on the grounds they are 'disparaging.'"

Saying that they agree that the Redskins' name and trademarks "are disparaging to Native Americans," they said that they "believe that government is prohibited by the First Amendment from denying a trademark on that basis."

UCLA Law School Professor Eugene Volokh found the ACLU's position of particular interest because it aligned them with the Redskins. In that regard, Volokh argued "it's not conservatives versus liberals."

"There are a lot of people who may not support the use of the mark, that may think the Redskins are in the wrong here but believe that they have a constitutional right to do this without the government stepping in."

This is not the first time the ACLU has accused the U.S. Patent and Trademark Office (USPTO) decision to cancel the professional football team's trademark registration. As noted in the press release "the ACLU of Virginia filed a similar brief in the team's original case in U.S. District Court in March."

Brief obtained by The Washington Post.

Both ACLU briefs challenge the constitutionality of Section 2(a) of the Lanham Act, which gives the USPTO the right to deny a trademark if it: "consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols."

"The fact that certain speech is disparaging, however, does not grant the government the right to disadvantage it for that reason," the ACLU argued in the brief filed Friday.

The Redskins case is not the only pending case to question Section 2(a) of the Lanham Act, experts pointed out.

A case brought by Simon Shinao Tam, the front-man of an Asian-American rock band known as "The Slants," also challenges its constitutionality.

Volokh explained in a piece on the Washington Post, the band claims they use the name "to wrest 'ownership' of the term from those who might use it with the intent to disparage."

"The argument there is we concede that [using slants to describe Asians] historically was insulting," but the rule regarding degrading trademarks should not apply to those with "pure motives," Schechter said.

As Volokh described in The Washington Post, the panel reviewing the case "followed Federal Circuit precedent on this, and concluded that "The Slants" would indeed be perceived as disparaging by a substantial fraction of Asians."

Volokh explained that Judge Kimberly Moore wrote an opinion "in which she argued in favor of overturning the Federal Circuit precedent on which the panel relied."

As Volokh explained, the precedent for the judge's decision is well developed.

"Past decisions have upheld denial of registration on these grounds," Volokh said.

"The [USPTO] has been pretty consistent with racially ethnically motivated marks," Schechter said.

Schechter described the case of a small magazine that was trying to appeal to younger Jewish Americans and register its name "Heeb" as a trademark.

The publication, Schechter said tried to argue that they were trying to reclaim the word and build a following to do so.

"What the trademark office said, is you're trying to but people are going to walk in and be offended, they don't know your motives," Schechter recalled.

While the panel cannot overrule precedent, Volokh explained, "the entire Federal Circuit sitting en banc can and the Federal Circuit has indeed agreed to consider whether to do this."

As Schechter described, this means that even though the small panel of judges reached a decision in the case, the issue will now go in front of the full court of judges.

Schechter explained that "The Slants" case "is being litigated in the court of appeals for the federal circuit," unlike the Redskins, which is in the fourth circuit. Having already received a decision from the appellate court, Schechter said "The Slants case is a little further along."

While the cases are at different points in the process, Schechter explained "the first amendment [free speech] issue raised by the two cases is essentially identical."

"They have the same material issue at fact, the issue is whether or not the [USPTO] has the right to decide what's disparaging," explained Ryanne Saucier, a copyright, entertainment and trademark attorney.

"The decision in the case may well affect the Redskins controversy," Volokh wrote in April, when the Redskins case was still pending.

The Redskins filed their formal appeal last week, in a manner that The Washington Post described as "provocative."

Brief obtained by The Washington Post.

The Redskins' lawyers, The Washington Post reported, listed "the names of porn, clothing and beer companies that use offensive language but nonetheless have the support of the U.S. Patent and Trademark Office."

"It was very interesting what they did," Schechter described, " they're pointing to a number of unsavory names that have been permitted trademark rights to suggest that at best people at [the USPTO] are applying the standard in a disorderly fashion."

Another matter of precedent pointed out by the Redskins' lawyers in their opening brief is the USPTO's apparently unprecedented revoking of a trademark.

"It's extremely interesting that this is really the first registration that tests whether or not a trademark can be cancelled for being disparaging' , this is a mark that's been in place for over 80 years and it is only now that the culture has decided that the trademark is disparaging."

As Schechter described, one element of the statute of limitations being questioned by the Redskins is that "the relative period is not today, "it's when the marks were adopted, when they were first registered."

"It's going to be an interesting question if a remark can become disparaging over time," Lawrence G. Walters, the Managing Partner of the Walters Law Group remarked.

"To our knowledge, of the over three million trademarks registered since 1870, no registration has ever been retroactively cancelled for being disparaging. The Redskins are the first and only," the appeal argues.

"It's also possible redskins in 1965 is different meaning," Schechter said "we don't have time machines to go back and figure that out, so there's a little bit of an obstacle in your case."

Schechter noted the connotation of the term queer as an example. While queer was once a disparaging word, Schechter explained the word has since evolved.

"It's been reclaimed the word queer today is an academically respected word to gay and lesbian studies, some colleges have departments or majors called queer studies, a word could evolve from insulting to non-insulting it could evolve in another way," Schechter explained.

Walters noted that if the court decides the classification of a word being disparaging can evolve, it would be difficult to advise "existing trademark holders whether they're still valid."

"There should be a permanent determination applicable, this should not be a retroactive analysis of whether a remark has become disparaging over time," Walters said.

"Offensive speech is protected. I don't think I it's constitutional for the government to condition the grant of a privilege on the forfeiture of free speech rights."

If the decision delves into the evolving connotations of words, Walters warned the process of registering trademarks would become more difficult for those involved in the process. For lawyers Walters said, "It becomes extremely complicated to advise clients as to what marks can be registered."

"It's going to be a significant precedent for the nation and any trademark hold."

While the precedents set by the courts decision on either case may hold major significance for trademark holders, seekers and lawyers, experts note that the actual decision has no impact on whether "The Slants" and Redskins can continue to use their name.

The USPTO can refuse to provide a trademark registration, but it cannot demand the organization stop using that mark.

Many have argued that the loss of their trademark registration would be detrimental to the Redskins because they would lose revenue to people creating and distributing Redskins-branded paraphernalia.

Though Schechter explained the Redskins do not necessarily need them because they have enough national name recognition to be protected by common law rights.

"The Washington Redskins still have what likely are very strong common law rights to use the word 'Redskins' in connection with professional football," explained attorney Andrew P. Connors on a blog post on the Creekmore Law Firm website. He said it is because "common law rights exist immediately upon use in a reasonable geographic area around the use."

While Connor mentioned the Redskins "may find a tougher time enforcing their marks in Montana, compared to, say, northern Virginia," Schechter explained the prominence of the NFL means the Redskins won't face too many challenges.

"Everything is going to continue in pretty much the same way," Schechter said, though the cancellation of their trademark rights would "create an enormous amount of pressure on them to change the name."

The mounting pressure for the team to change the name grew Thursday, when Adidas announced they would provide "free design resources to schools looking to shelve Native American mascots, nicknames, imagery or symbolism."

As the Associated Press reported, Adidas "also pledged to provide financial support to ensure the cost of changing is not prohibitive."

Change The Mascot, the organization started by Oneida Nation to protest the Redskins mascot promptly released a statement "applauding Adidas for its announcement.

"This is a tremendous display of corporate leadership by Adidas," declared Jackie Pata, the Executive Director of the National Congress of American Indians, and Oneida Nation Representative Ray Halbritter in the statement.

"We hope that a number of companies including FedEx, whose name adorns the Washington NFL team's stadium, will step forward and follow Adidas's lead."

In a statement obtained by the Washington Post the Redskins blasted Adidas, who sponsors quarterback Robert Griffin III.

"The hypocrisy of changing names at the high school level of play and continuing to profit off of professional like-named teams is absurd," Redskins spoekperson Maury Lane said in a statement obtained by numerous media outlets, including the International Business Times.

The Redskins' response was unsurprising given the team's staunch refusal to abandon their name.

Redskins owner Dan Snyder has been adamant that no amount of pressure or loss of a trademark is going to lead him to a name change for his franchise. That insistence is part of why experts were un-surprised when the Redskins filed their appeal last week.

Calling the appeal "inevitable," Schechter said , "this is an issue that is essentially a matter of religious fervor to Dan Snyder to defend the current team name."

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