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Redskins May Benefit from Flowering of First Amendment Rights in IP Realm

Wednesday, June 17th, 2015

The First Amendment right to free speech is coming on strong in the world of intellectual property. It could save the REDSKINS federal trademark registrations from cancellation.

Recall the federal Trademark Office found the REDSKINS trademarks disparage American Indians and ordered cancellation of the registrations.

The Redskins appealed to a federal trial court in Northern Virginia. Motions are pending to decide the case before trial, which is scheduled for late July.

Under current federal law you cannot register a scandalous or disparaging trademark. The Redskins are attacking that law as violating the First Amendment right to free speech. The ACLU recently filed a brief supporting this argument.

Also helpful to the Redskins is a recent case involving a rock band of Asian men called THE SLANTS. The Trademark Office denied trademark registration for the band name, holding it is disparaging to Asians.

The band appealed to the Court of Appeals for the Federal Circuit. The court upheld the denial, saying it was bound to do so by a 1981 decision of that court.

The earlier decision held the First Amendment is not violated when trademark registration is denied to a scandalous or disparaging trademark, because being denied a trademark registration doesn’t keep you from using the trademark. Trademark rights arise from using a trademark in commerce. Registration just strengthens your rights.

Yet, the appellate judge who wrote The Slants opinion, Kimberly Moore, also wrote a side opinion in which she forcefully argued that the federal proscription against registering scandalous and disparaging trademarks is an unconstitutional restriction on free speech. She cited the REDSKINS case as one where constitutionally protected speech is at issue.

Judge Moore’s argument persuaded the Federal Circuit to vacate its opinion ruling against the Slants and to schedule a hearing on whether this prohibition is unconstitutional. I think the court is going to side with Judge Moore’s view.

Side note to entrepreneurs: If you want to register a scandalous or disparaging trademark, perhaps you should rush to apply now. If you do so, you might be able to keep that application alive until the ruling in The Slants case is made. There might be a gold rush for such trademark registrations.

In another case, the Fourth Circuit Court of Appeals, whose territory includes the trial court hearing the Redskins case, recently issued a decision that elevated the power of First Amendment rights in trademark cases.

That case concerned a trademark dispute between the NAACP and an anti-abortion advocacy group. A federal trial court found trademark infringement in an advocacy group’s use of the slogan NAACP: THE NATIONAL ASSOCIATION FOR THE ABORTION OF COLORED PEOPLE to criticize the NAACP as being pro-abortion. (NAACP really stands for “National Association for the Advancement of Colored People.”)

The Fourth Circuit reversed the trial court and held there was no trademark infringement. Importantly, the Fourth Circuit recognized that the advocacy group had a First Amendment right to use a critical parody of the NAACP’s name, and that trademark rights must be tempered to protect First Amendment rights.

Another recent First Amendment case concerned the YouTube video “The Innocence of the Muslims,” which became sensational when some politicians claimed it caused rioting in the Middle East.

An actress in that video, who appeared for only five seconds, apparently was deceived by the movie’s maker as to the purpose of the film. She didn’t know it was an anti-Mohammed movie. Her brief dialog was voiced over with provocative words. She says she received death threats from radical Muslims as a result.

The actress claimed she owned a copyright in her acting performance and used a copyright-infringement claim to ask a court to order that the video be taken off YouTube. At first, the Ninth Circuit Court of Appeals granted her request.

Yet, recently that court reversed its decision. While it mainly addressed copyright law, it undergirded its opinion with First Amendment concern about using copyright law to suppress speech about important public events.

This brings us back to the Redskins. They have good trademark-law arguments and might defeat the legal challenge to their trademark registrations on that basis alone. But they now have a strengthening First Amendment argument to boot.

In April 2013, Redskins quarterback Robert Griffin III tweeted “In a land of freedom we are held hostage by the tyranny of political correctness.” Perhaps the First Amendment will put an end to that for the Redskins.

Written on June 17, 2015
by John B. Farmer

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