Slants Route May Help Redskins

Unusual developments in Federal Circuit trademark case bode well for Dan Snyder and company.

For years the NFL franchise associated with Washington, D.C. has been a laughingstock on a number of fronts. Image-wise, both on the field and off, it's hard to beat them for comedic source material. Here in the CommLawBlog bunker, though, we tend not to focus on things like team record (a .350 winning record over five years - if only that were a batting average, they'd be heading for Cooperstown!), dubious management decisions and the like.

But we have covered at least one aspect of the team's notoriety: its name. As we reported last year, some folks filed petitions to deny at the FCC objecting to a renewal application for a radio station that happened to be owned by a company controlled by Daniel Snyder, the team's owner. In the petitioners' view, the team name "Redskins" is so offensive that it warrants denial of license renewal. Ouch.

The FCC had the good judgment to reject the petitions. But the name debate has raged on elsewhere, most notably in the Patent and Trademark Office (PTO), where a number of Native Americans have been waging a years-long battle to have the registration of the mark "Redskins" cancelled because it's disparaging to, um, Native Americans. Most recently, they made considerable headway: last year the Trademark Trial and Appeal Board ruled that the mark is indeed disparaging, and it cancelled the mark's registration, a move that threatens the team's exclusive right to use the name and certain associated trademarks). [Blogmeister's Note: Our blogger, Kevin "the Swami" Goldberg, is too modest to mention this, but we aren't. You can catch a recording of him analyzing the decision for the local CBS TV affiliatehere.] Mr. Snyder and company have taken the case to the United States District Court for the Eastern District of Virginia, where it's currently pending.

Which brings us to the Slants.

The Slants are an all-Asian, "ChinatownDanceRock" band formed in 2006 and fronted by Simon Shiao Tam. In 2010, Tam decided it was time to register the band's name as a trademark. As it happens, though, federal trademark law expressly permits rejection of a proposed registration if the mark "disparages" people (as well as institutions, beliefs or national symbols). Tam's first application was rejected by the PTO Trademark Examiner, who concluded that the name "Slants" disparages people of Asian descent, even though Tam pointed out that he and his band are themselves Asians. Tam re-filed his application in 2011. The Examiner again concluded that the mark is disparaging. On review, the Trademark Trial and Appeal Board agreed.

That conclusion is important for Dan Snyder because, but for that "disparagement" provision, there probably wouldn't be any basis for challenging the "Redskins" trademark.

Back to the Slants. Tam appealed the Board's decision to the U.S. Court of Appeals for the Federal Circuit, arguing (among other things) that the "disparagement" provision of the law is unconstitutional. In an opinion authored by Circuit Judge Kimberly Ann Moore, a three-judge panel of the Court affirmed the rejection of Tam's application because "Slants" disparages Asians.

So that's good news for the Native Americans and bad news for Snyder when it comes to the "Redskins" mark, right?

Not so fast.

Tacked onto Judge Moore's 11-page opinion for the Court is a separate 24-page item, also penned by Moore, titled "additional views". And in those "additional views", Judge Moore explains in considerable detail why she thinks it's time to take another look at the supposed constitutionality of the "disparagement" provision.

Say what?

It appears that Moore and her two colleagues OK'd the rejection of the Slants application because Federal Circuit precedent supports the constitutionality of the "disparagement" provision. That, of course, was entirely consistent with the well-established concept of stare decisis, which provides that courts should generally follow their own precedent.

As Judge Moore explains in her "additional views", however, the hoary Federal Circuit precedent which the panel was following was based on the traditional view that trademarks are "commercial speech" not entitled to any First Amendment protection. But times have changed and commercial speech has gradually been accorded increasing constitutional protection. To the extent that trademarks are "commercial speech", they should be entitled to that protection.

Further, contrary to the Federal Circuit's previous holdings in this area (the primary one of which dates back several decades), denial of a trademark registration does impose the loss of several significant legal rights and benefits - e.g., the right to exclusive use of the mark, a presumption of validity of your trademark rights, the right to sue. The government's ability to deny such rights and benefits imposes a chilling effect ostensibly intended to discourage the use of supposedly "disparaging" marks because of the marks' content. In general, such chilling effects raise serious First Amendment problems.

Moreover, requiring a mark to be non-disparaging appears (to Judge Moore, at least) to impose an "unconstitutional condition" placed on speech. While the government is entitled to define the limits of a program when it appropriates public funds to establish that program, the government cannot attach conditions that seek to leverage funding to regulate speech outside the contours of the program itself.

And finally, Moore notes that the "disparagement" provision permits registration of marks that refer to a particular group in a positive manner, but does not permit registration of marks that do so in a negative manner. That smacks of viewpoint discrimination, which makes the law presumptively invalid. And there are no countervailing "substantial interests" which might justify the bar against disparaging marks. At most, the bar reflects a desire to disfavor certain unpopular messages, which violates the "bedrock principle underlying the First Amendment " that the Government may not prohibit the expression of an idea simply because society finds the idea itself offensive or disagreeable."

In other words, as Moore sees it, a lot has changed on the landscape encompassing trademarks and the First Amendment since the Federal Circuit last considered the constitutionality of the "disparagement" provision in depth. While she stops slightly short of declaring that provision unconstitutional, you can tell where she's heading. And she does expressly announce that, in her view, it's time for the Federal Circuit to "revisit" this issue. If the rest of her Federal Circuit confrires were to agree, the validity of the "disparagement" provision would be seriously in question, which would be good news for (a) Mr. Tam and (b) Mr. Snyder.

And what do you know. A mere week after the three-judge panel (led by Judge Moore) had - notwithstanding her stated reservations - concluded that "The Slants" had properly been rejected for trademark registration, the full Federal Circuit - acting on its own motion - has vacated that panel decision. The full Court has set the matter for an en banc hearing on the specific question:

Does the bar on registration of disparaging marks in 15 U.S.C. 1052(a) violate the First Amendment?

While the vacation of the panel decision and the setting of an en banc proceeding don't necessarily mean that the "disparagement" provision is toast, that's not a bad bet. En bancs don't happen every day; sua sponte en bancs are even rarer; and sua sponte en bancs that pop up only a week after the panel opinion being reviewed are about as rare as a winning season at FedEx Field. So Mr. Tam has reason to be optimistic about his chances. And that means that Snyder and his team should be equally optimistic about their chances.

The "Redskins" case is pending in the Eastern District of Virginia (and presumably heading from there to the Fourth Circuit, rather than the Federal Circuit). Should the PTO's Slants decision get overturned by the en banc Federal Circuit - with the "disparagement" provision getting tossed as unconstitutional - the District Court (even one in a different Circuit) could be convinced to follow suit in the Redskins case. (Of course, if the Federal Circuit were to go one way on the issue and the Fourth Circuit the other way, that would set up what we in the biz refer to as a "circuit split". That's the kind of thing that often leads to review by the Supreme Court. A trip to the Supremes would be the legal equivalent of making it to the Super Bowl(R), which would presumably give Mr. Snyder the type of thrill he has yet to - and doesn't seem likely to - experience in the football universe.)

Why would Judge Moore take the extraordinary step she took - tacking on "additional views" that seem to contradict her own opinion? Who knows? Maybe this was, in her view, the most appropriate way to honor both the strictures of stare decisis and her own personal commitment to First Amendment values.

Or maybe it's because, according to Wikipedia, Judge Moore, a Maryland native, is "a big fan of the Washington Redskins." And maybe, just maybe, she's sick of their losing.

In any event, even though Dan Snyder has not (as far as we know) been involved in any way with Mr. Tam and the Slants, his prospects for success on the trademark front are suddenly looking a lot rosier. Perhaps this is what he and his organization mean when they claim that they're "winning off the field".