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Monday, March 23, 2015
The First Amendment and the Redskins Tradement, part I: Government speech

The following post is by Robert L. Tsai and Christine Haight Farley (both of American); it is the first several guest posts on the Washington Professional Football Team trademark case. It is cross-posted at PrawfsBlawg.

The ACLU recently filed an amicus brief in the Washington Redskins trademark case, arguing that the Patent and Trademark Office’s (PTO) cancellation of Redskins registrations constitutes viewpoint discrimination contrary to the First Amendment, and urging the federal court to strike down those portions of Section 2(a) of the Lanham Act that prohibit the registration of “immoral,” “scandalous,” or “disparage[ing]” marks.  We are deeply concerned with the ACLU’s position.  Its proposal to thrust First Amendment law into an area of commercial regulation in unprecedented ways would wreak havoc with trademark law’s careful balance of concerns for property rights, economic exchange, and consumer protection.  We believe that the ACLU’s fundamental misunderstanding of trademark law has caused it to misapply First Amendment doctrine.

In this first post, we wish to focus on the ACLU’s invocation of two First Amendment doctrines: viewpoint discrimination and unconstitutional conditions (we leave for a separate post whether the commercial speech doctrine might be appropriate).  The ACLU’s position erroneously elides the various forms of government regulation and their contexts, treating trademark law like criminal law, municipal ordinances dealing with protests, laws creating public fora, and public subsidies.  But the strongest First Amendment doctrines designed to ensure robust public debate simply don’t map on to trademark regulation without creating a major upheaval in trademark law.  First Amendment doctrine requires strict scrutiny whenever there is a direct, content-based regulation of private speech.  The federal trademark registry, however, does not operate like a direct regulation of private speech, nor does it create a forum for the expression of private speech.

Congress’s power to regulate trademarks flows from, and is constrained by its constitutional authority over interstate commerce.  Federal registration of a mark confers certain benefits (e.g., registration is treated as prima facie evidence of validity and ownership of a mark, gives a nationwide priority over subsequent users, and offers access to certain remedies), but it does not create rights. These advantages are more procedural in nature than substantive, closer to internal court rules than criminal laws, permit ordinances, or public subsidies.  Trademark rights are instead established by common law from the actual commercial use of the mark; these rights can be asserted in federal court without a registration.  It is in this crucial sense that the Lanham Act does not directly regulate expression as such—certainly not in the same way that a criminal law preventing offensive speech, a regulation banning parades without a permit, or even laws that subsidize private speech do.  Section 2(a) does not prohibit the utterance of the word “Redskins” or attach any conditions on anyone’s use of that term.

This provision simply refuses to confer the benefits of registration on the Washington football team.  The team would still retain the right to assert itself as the first and exclusive user of the term for commercial purposes under federal law.  Consequently, the provision offers the Native American challengers in this case only the possibility of a symbolic victory—there would be no need for the team to change its name as it may still use and enforce the mark.  Section 2(a) neither chills the free expression of ideas nor inhibits robust public debate.

Unable to point to a public forum or a direct inhibition of expression, the ACLU contends that the PTO registry imposes an unconstitutional condition on speech.  In support of this proposition, the ACLU cites Legal Services Corporation v. Velazquez, where the Supreme Court struck down a federal law that prevented publicly-funded legal services lawyers from challenging “existing law.”  As Robert has discussed elsewhere, this restriction of subsidized advocacy was tantamount to a ban on anti-government speech.  But there is nowhere near the same threat to freedom of expression entailed by Section 2(a) of the Lanham Act—it is not even in the same ballpark.  After cancellation of its registration, the Washington football team remains just as free to use the Redskins marks, in commerce or political discourse.  Moreover, the fact that registration is cancelled in no way inhibits the mark user’s legally-oriented expression or distorts the normal operations of the legal system, two findings central to the Velazquez ruling.  Section 2(a) does not restrict what lawyers can say in court and does not even prevent the mark’s owner from relying on statutory and common law trademark doctrines.  It imposes no condition whatsoever on non-commercial expression.  As Adam Cox and Adam Samaha have shown, truly unconstitutional conditions are rare, and virtually every constitutional issue can be reframed as an allegedly unconstitutional condition (as the ACLU has done).  It is a mistake to do that here.

Closer examination of the idea of viewpoint discrimination shows that it doesn’t really capture how Section 2(a) of the Lanham Act actually works.  That concept has been invoked in cases where there is a serious fear of chilling of political speech, i.e., when one side in a debate has to fight with an arm tied behind her back.  But there’s no serious concern that anyone’s ideological message is hampered or distorted by the Lanham Act.

Section 2(a) does not turn on a speaker’s actual perspective on an issue.  It instead permits an objective determination that a mark, regardless of the owner’s viewpoint, will be perceived as disparaging by the referenced group when used in commerce.  Someone who wishes to coopt a disparaging term for positive ends may be barred from registry just as someone whose intended use is to disparage.  Thus, Section 2(a) operates without regard to the ideological intention of a speaker.  For example, the PTO refused the registration of the mark “The Slants” finding it was disparaging to Asian Americans despite the fact that the applicant was a band whose members are Asian and who intended to take on stereotypes about Asians.  The applicant’s viewpoint was irrelevant.
Moreover, enforcement of Section 2(a) does not prevent the utterance of noncommercial pro-Redskins speech, just as it does not prohibit the utterance of non-commercial anti-Redskins speech.  Decisions like Rosenberger v. Rectors of Virginia, and R.A.V. v. City of St. Paul are simply inapposite.

We think that the best analogue for this type of government regulation is government speech.  Under that body of caselaw, the PTO registry constitutes “government speech” rather than regulation of private speech.  The doctrine permits government-wide latitude to design its own programs and express its own views, consistent with Congress’s mix of commercial and ideological goals.  Reliance on this doctrine would recognize that the PTO registry simply is not a forum created for the exchange of private ideas; rather, it is a tool to facilitate Congress’s goals of regulating interstate commerce and protecting a diverse population of consumers from business practices that foster racial discrimination and stereotyping.  These core programmatic goals place Section 2(a) well within the reasoning of two government-speech rulings by the Supreme Court: Rust v. Sullivan, where Congress barred government-funded doctors from advising about the availability of abortion, and FCC v. Pacifica Foundation, which permitted Congress to protect listeners from “obscene, indecent, or profane” broadcasts.

Accepting the ACLU’s invitation to apply First Amendment law maximally to the PTO registry would improperly convert the registry into a free speech forum.  It would force the PTO to register all manner of marks, interfering with the government’s delicate balance of regulatory objectives.
A ruling in this case against the football team does express the government’s belief, after careful fact finding, that the term “Redskins,” as used by the Washington football team in commerce, is disparaging to an entire group of people.  Under the government speech doctrine, Congress is free to express the view that racially-inflected commerce is wrong, that certain ideas harm consumers in a pluralistic marketplace, and that government sanction of the trademark’s usage might inhibit commercial activity.  The PTO, relying on Section 2(a), has expressed that view here, leaving private actors at liberty to agree or disagree.

Finally, consider what actually happens when the PTO refuses to register a mark on the ground that it is “disparaging.”  It means that the mark owner cannot claim that the federal government has endorsed or supported that expression for commercial reasons.  But he or she can continue to use it in public debate.  Moreover, to the extent that the benefits of registration hinder the mark owner from excluding others from using the term in commercial activity, the absence of a registration guarantees a more robust public debate.  That result seems far more consistent with ensuring wide-open conversation on matters of public importance than a federal court ruling invalidating this portion of Section 2(a).


I tend to agree with everything except: "After cancellation of its registration, the Washington football team remains just as free to use the Redskins marks, in commerce or political discourse."
Federal registration for a trademark is a highly valued commodity. To say that the team remains no worse off without one is not true. The loss of the registration puts a financial burden on the team to enforce and defend its mark. For an organization such as the Redskins it might not stop them. But for smaller organizations it could easily force them to change their mark. Sure, the Redskins are able to continue use of the mark if they choose, but they are not "free" to do so.
It is akin to the government handing out megaphones to every entity whose marks are not disparaging and not to those whose marks are disparaging. Of course they are all free to communicate in the marketplace, but not equally.
All this is not to say that the mark should retain its registration. Just, that you can't really say the team is just as free to communicate without the registration.

Blogger AndrewSensi -- 4/01/2015 10:55 AM  

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