United States: Fall Is In The Air: Are The Justices Getting Ready For The Gridiron?

Last Updated: September 21 2016
Article by Anthony Rufo

The Washington Redskins Ask The Supreme Court To Block Fourth Circuit From Participation In Important Trademark Cases

Another Labor Day is behind us, kids are back to school, and fall has unofficially arrived (it will become official on the September 22nd equinox). The autumn leaves bring with them two major opening days. One is already behind us, as the NFL literally kicked off its season on September 8 with a matchup between the Carolina Panthers (20) and the Denver Broncos (21).

The opening day for the Washington Redskins (16) and the Pittsburg Steelers (38) took place on September 12, but the D.C. team also has its eye on October 3 – the first day of the Supreme Court's new term. The Redskins have asked the Justices to take on the case of its controversial trademark even before the Court of Appeals for the Fourth Circuit has a say. Let's take a look at what to expect in this and another case concerning nearly identical issues that could go head to head in a Supreme Court constitutionality matchup. The cases concern free speech in relation to trademarks that allegedly disparage minority groups, but you might be surprised by which teams are throwing in the red challenge flag, and which ones are not.

Does the First Amendment Block Part of the Lanham Act?

The Judge in the Redskins Case Says No

As previously discussed here, Pro-Football, Inc. (the owner of the REDSKINS trademark) filed a petition for certiorari with the Supreme Court seeking review of a mid-2015 decision by the Eastern District of Virginia. In the case of Pro-Football, Inc. v. Blackhorse, the District Court upheld a ruling by the Trademark Trial and Appeal Board cancelling the REDSKINS trademark registrations on the grounds that they constitute offensive slurs against Native Americans. Section 2(a) of the Lanham Act bars registration of marks that may disparage or bring into contempt or disrepute people, institutions, beliefs, or national symbols. Since we last reported on this development, attorneys for Amanda Blackhorse, a Navajo who works as a psychiatric social worker, and other Native American parties, filed a brief opposing grant of certiorari on June 27, 2016. The United States also opposed certiorari in a brief filed on the same day.

An interesting twist here is that Pro-Football had already appealed the Eastern District of Virginia decision to the Fourth Circuit Court of Appeals. In that appeal, Pro-Football argues that Section 2(a) is an unconstitutional restraint of the free speech provision of the First Amendment. In fact, the Fourth Circuit appeal has been fully briefed and is tentatively scheduled for oral argument this coming December. So why is Pro-Football looking for a Supreme Court interception?

As discussed below, the Supreme Court has already been asked to review a very similar case decided by the Federal Circuit Court of Appeals, in which the appeals court found Section 2(a) unconstitutional.

Yes, Says the Court in the Case of the All-Asian American Rock Band vs. the Government

The Slants, a dance rock band from Portland, Oregon comprised of all Asian American musicians, was denied a registration for its SLANTS trademark based on a finding under Section 2(a) that the mark is offensive to persons of Asian descent. On behalf of the band, its front man, Simon Tam, appealed the refusal. The band does not consider their use of the term "slants" to be inherently offensive. Indeed, the band argues that the name reclaims Asian stereotypes (including that particular word) as a form of empowerment. Unlike the REDSKINS case, the SLANTS case ultimately resulted in a Federal Circuit decision declaring Section 2(a) unconstitutional for violating the First Amendment. The U.S. Government filed a petition for certiorari with the Supreme Court in April 2016, which has been fully briefed, but remains pending.

Will the Supreme Court Run With One Ball, Two Balls, or None?

By coincidence, two similar cases involving the same issue are winding their way through the courts at the same time, but at different speeds. In light of this unique circumstance, Pro-Football argued to the Supreme Court that, if the Tam case is taken up, the Court should also address the Blackhorse case at the same time, even if the Fourth Circuit has not yet rendered a decision. Such a move would be rare, but is not unprecedented and may be called for in light of what is at stake.

Both the Tam and Blackhorse petitions are ripe for a decision. The Supreme Court does not have to accept either case, but it could choose to hear Tam alone or both Tam and Blackhorse together. Although they deal with the same controversial issue (stereotypes of minority groups) in regard to the same provision of law, there is a compelling reason to hear both cases together instead of just one. The Tam court found Section 2(a) to be unconstitutional in light of arguments in favor of registration made by members of the minority group in question, while the Blackhorse court reached the opposite conclusion and upheld Section 2(a), but also did so in favor of the arguments made by members of the minority group at issue, this time in opposition to registration. By taking up these two cases at the same time, the Supreme Court will have the opportunity to determine what, if any, weight should be given to the identities of the parties in such cases, and to confront head on what appears may be an irreconcilable dichotomy. The overarching interests of justice seem to bend in this direction, but, as is always the case, it is the Supreme Court's play to make.

For even more background on these cases, see here, here, and here.

To view Foley Hoag's Trademark and Copyright Law Blog please click here

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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