The Redskins and The Slants: How an Asian American band name case may affect the Redskins trademark

Photo courtesy of The Slants.

A federal district court today upheld the Trademark Trial and Appeal Board's cancellation of the Redskins mark. A federal statute bars registrations of marks that "may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute"; the district court agreed that the Redskins fell within this prohibition. This decision doesn't bar the Redskins from using their name, but it does reduce their ability to use trademark law to stop various infringing Redskins gear.

It turns out, though, that the Court of Appeals for the Federal Circuit (the chief American court, below the Supreme Court, for trademark matters) is already considering this issue in In re Tam, a case involving The Slants, a band whose founders and members are Asian Americans. (Other decisions in the past that might be overruled—or reaffirmed—by the Federal Circuit—include ones dealing with "Stop the Islamization of America," "Khoran" as a mark for wine, "Heeb," "Porno Jesus" and "Squaw Valley," the last of these as to some goods but not others.)

The chief question is whether the exclusion of "disparag[ing]" marks violates the First Amendment. To be sure, the cancellation doesn't directly restrict the speech of the trademark's owner; indeed, the more a trademark is protected, the more the speech of others who want to copy the mark is restricted. But the cancellation can serve as an incentive to change a mark as well as a deterrence to others who are considering using such marks.

Consider an analogy (though not a perfect one) from copyright law: Say Congress decided to deny copyright to movies that expressed "anti-American" views; this would strongly deter people from investing in such movies and would thus reduce the amount of such movies that are made. Likewise, if Congress decided to deny copyright to movies that "disparage" racial, ethnic, or religious groups, or for that matter "institutions, beliefs, or national symbols." (The analogy is imperfect because copyright protection is probably more important to a typical filmmaker than federal trademark registration is to a typical sports team.)

And indeed, First Amendment law has recognized that if the government creates a broadly available benefit scheme aimed at promoting private speech—such as the tax exemption for charitable or educational institutions, funding for university student groups, access to meeting rooms in a public library, and so on—the government generally may not then deny such access to some speakers based on their viewpoints. On the other hand, if the government is viewed as itself speaking, even in cooperation with private speakers, the government may indeed pick and choose which viewpoints it promotes or fails to promote; that was most recently reaffirmed in the Confederate flag license plate case, Walker v. Sons of Confederate Veterans. And as Sons of Confederate Veterans shows, whether a program is viewed as a promoting-private-speech "limited public forum"/"nonpublic forum" program (in which viewpoint discrimination is forbidden) or as a "government speech" program (in which viewpoint discrimination is allowed) is often highly controversial.

When I blogged about Sons of Confederate Veterans, I noted that it was likely to come up in the trademark litigation; and, today's district court decision does indeed heavily rely on Sons of Confederate Veterans. Here is an excerpt (though the decision itself also discusses Fourth Circuit precedent and other material):

The Court finds that the federal trademark registration program is government speech under the Supreme Court's decision in Walker. Walker involved Texas' specialty license plate program. Groups may propose license plate designs with a slogan, graphic, or both, to the Department of Motor Vehicles Board ("the Board"). The Board "may refuse to create a new specialty license plate" for many reasons, including "if the design might be offensive to any member of the public … or for any other reason established by rule." …The Supreme Court … held that Texas' specialty license plate program is government speech. The Court found that the program was government speech for three reasons. First, history shows that "insofar as license plates have conveyed more than state names and vehicle identification numbers, they long have communicated messages from the States." Second, the public closely associates official state license plate designs with the state. The Court further explained that Texas license plates "are[] essentially government IDs" and issuers of IDs '"typically do not permit' the placement on their IDs of 'messages with which they do not wish to be associated.'" Third, Texas maintains "direct control" over the message conveyed on the plates as the Board must approve every specialty plate design. The Board has "actively exercised this authority" by rejecting designs. "This final approval authority allows Texas to choose how to present itself and its constituency."

Here, the federal trademark program is government speech under the Supreme Court's analysis in Walker. The first Walker factor weighs in favor of government speech as registry with the federal trademark registration program communicates the message that the federal government has approved the trademark. See 15 U.S.C. §§ 1072, 1127. The second Walker factor weighs in favor of government speech because the public closely associates federal trademark registration with the federal government as the insignia for federal trademark registration, ®, is a manifestation of the federal government's recognition of the mark.

Finally, the third Walker factor weighs in favor of government speech because the federal government exercises editorial control over the federal trademark registration program. Section 2 of the Lanham Act empowers the PTO to deny or cancel a mark's registration, and thus control what appears on the Principal Register, on a number of grounds, including [besides the prohibition on disparaging marks] any mark that:

(b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof;

(c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States …;

(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely … to cause confusion … ;

(e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive … (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.

… "[T]he First Amendment does not prohibit the government, itself, from speaking, nor require the government to speak. Similarly, the First Amendment does not preclude the government from exercising editorial discretion over its own medium of expression." By approving or denying registrations under Section 2(a) of the Lanham Act, the government is merely exercising editorial discretion over what is published in the Official Gazette of the PTO and in the Principal Register. Accordingly, the Court finds that the third Walker factor weighs in favor of finding that the federal trademark registration program is government speech.

Because all three Walker factors weigh in favor of government speech, the Court finds that the federal trademark registration program is government speech.

The analysis strikes me as unpersuasive: I don't think that historically trademarks have been used to "communicate[] messages from the [government]." I don't think "the publicly closely associates [trademarks] with the [government]." And while the government does have and does exercise some control over which trademarks are allowed, I don't think that this itself can suffice to justify viewpoint discrimination, since in all viewpoint-discriminatory programs (including ones the Court has condemned), the whole dispute was about the fact that the government was trying to exercise control about what speech is allowed.

Instead, it seems to me that trademark law is much closer to the programs in which viewpoint discrimination is forbidden (as Sons of Confederate Veterans acknowledged): advertising on city-owned buses, messages distributed through a school-district-owned mail system, and fundraising messages printed on behalf of private charities by the federal government and distributed to federal employees in federal workplaces. All these programs were treated as promoting private speech (and thus having to treat speakers' viewpoints equally), not government speech, despite the government's involvement. The special government-provided benefits given to trademark owners—or copyright owners—are similarly private speech, despite the government involvement, and the government shouldn't selectively deny those benefits to speakers who have certain views.

Nonetheless, the district court's reliance on Sons of Confederate Veterans illustrates how important the case will be in the Federal Circuit's consideration of In re Tam, whichever way the Federal Circuit comes down on that. Oral argument in Tam is scheduled for Oct. 2.