Lori Kozak writes:
It’s no secret that football is big business, and the Washington Redskins, recently ranked the third most valuable team in the NFL by Forbes, are heavyweights within that enterprise. So the ongoing legal battles over the “Redskins” trademarks have attracted a lot of interest and controversy, particularly among sports fans who also happen to be trademark lawyers.
In July, the Eastern District of Virginia ordered cancellation of six federal trademark registrations of the “Redskins” on the grounds that the marks violate Section 2(a) of the Lanham Act, which states that a mark “shall be refused registration on the principal register” if it “consists of or comprises…matter which may disparage…persons.” 15 USC § 1052(a). This case came up on appeal from the Trademark Trial and Appeal Board, which had held in June of 2014 that the term “Redskins” is disparaging to Native Americans.
Pro-Football, Inc. (“PFI”) appealed further to the 4th Circuit on behalf of the team, and recently filed its opening brief. Various entities, including the ACLU, have filed amicus briefs in the case. PFI makes two intriguing constitutional arguments on appeal: (1) that Section 2(a) violates the First Amendment right to free speech, and (2) that Section 2(a) violates the Fifth Amendment Due Process and Takings Clause.
(a) At a basic level, these key issues can be broken down as follows:The district court held that Section 2(a) does not implicate the First Amendment because the decision does not prevent the team from using the term “Redskins”; rather, it simply means that PFI cannot access the benefits associated with federal trademark registration. PFI argues that Section 2(a) impermissibly denies protections to marks based on content and viewpoint, excessively burdens speech, and simply doesn’t pass the strict scrutiny or intermediate scrutiny applicable to commercial speech.
(b) The district court further held that the federal trademark registration program is government speech and therefore is exempt from First Amendment scrutiny. PFI argues that no one associates the message of a particular trademark with the government, and any speech implicated by a particular trademark is private speech and thus is protected by the First Amendment.
(c) PFI argues that Section 2(a) is unconstitutionally vague and thus violates Fifth Amendments Due Process Clause. The lower court had held that Section 2(a) gives fair warning of what is prohibited, and the PTO provides sufficient guidance as to what “may disparage” through its publicly available decisions, manuals, and letters approving or denying registration. However, PFI argues that the term “disparage” is itself vague, as are the PTO guidelines and decisions. It also argues that Section 2(a) fosters arbitrary and discriminatory enforcement, driven by the subjective personal views of PTO officials, and offers up examples of other arguably offensive marks that have been allowed for registration by the PTO.
(d) Finally, the district court held the Takings Clause and Due Process Clause claims fail because a trademark registration is not considered property under the Fifth Amendment, again making a distinction between the registration and PFI’s underlying property right in the trademark. However, PFI argues that because owners can sell their registered marks and exclude others from infringing them, they have a protected property interest. Moreover, because they have held the trademark registrations for so long, they have an expectation to continue that property interest, and the cancellations are takings that trigger due process, which was violated by the long delay.
Lori S. Kozak is a partner in the firm’s Los Angeles (Century City) office.