A Belated Hanukkah Gift For A Wealthy Man

Hanukkah ended last week. Christmas isn’t until Friday. But Daniel Snyder, whose most visible business asset, a professional football team based near Washington, D.C., has come under criticism for maintaining the nickname “Redskins”, ¹ got his gift today.

On June 18, 2014, the team lost its claim before the Trademark Trial and Appeal Board (the “TTAB”), the quasi-judicial administrative branch of the U.S. Patent and Trademark Office (the “PTO”), in a case called Blackhorse v. Pro-Football, Inc. In its opinion, the TTAB said that the name “Washington Redskins” was disparaging to a substantial number of Native Americans even in the late 1960’s when the label was first registered as a trademark. ² Therefore, TTAB withdrew recognition of the trademark “Redskins.”

On appeal, before the U.S. District Court for the Northern District of Virginia, the team lost again on July 8, 2015, for substantially the same reasons it lost before TTAB. A further appeal is currently pending before the Fourth Circuit.

Today, the Federal Circuit ³ issued an opinion in another case, one involving a rock band fronted and managed by a man named Simon Shiao Tam. I’ll let the Federal Circuit’s opinion describe what was at stake:

Mr. Tam is the “front man” for the Asian-American dance-rock band The Slants. Mr. Tam named his band The Slants to “reclaim” and “take ownership” of Asian stereotypes. … The band draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes, … and its albums include “The Yellow Album” and “Slanted Eyes, Slanted Hearts.” The band “feel[s] strongly that Asians should be proud of their cultural heri[ta]ge, and not be offended by stereotypical descriptions.” In Re Tam, slip op. at 10-11.

The PTO examiner denied Mr. Tam’s trademark application. She thought that a significant number of Asian-Americans might find a name called “The Slants” objectionable and disparaging. No wonder, since Tam deliberately selected a name that is commonly held to be objectionable and disparaging.

The nine judges in the majority of the Federal Circuit’s twelve-judge en banc panel wrote that the PTO examiner’s evaluation, guided by section 2(a) of the principal Federal trademark law, known as the Lanham Act, constituted a governmental evaluation about the objectionable content of speech — and the denial of the trademark protection as penalizing speech containing content of which government disapproved. When the government engages in content-based viewpoint selection, well-established precedent is that strict scrutiny applies to the law that the government uses. Strict scrutiny, Constitutional scholars, lawyers, and law junkies alike will recall, requires the government to demonstrate that 1) the law in question, here a restriction on trademark restrictions, is necessary to realize a compelling governmental interest, and 2) the law in question is narrowly-tailored to permit as much freedom as possible while still realizing that compelling interest. If the government cannot do this, then the law is unconstitutional.

Based on that, the Federal Circuit struck down section 2(a) of the Lanham Act as unconstitutional, finding that on its face it contains viewpoint discrimination without substantial justification. The logic is inevitable; strict scrutiny applies to content-based restrictions on speech and has for a very long time. Nothing new here. The government really did offer very little justification that can be offered other than that “Yeah, this is pretty offensive stuff.” But as we all know, the First Amendment does protect offensive speech.

Or, you might argue that putting a label on a bottle of sweet fizzy water to identify the manufacturer is not speech, it is commercial activity. Thus, you might claim, trademarks are not speech at all, they are commerce. And Congress can regulate commerce essentially as it chooses. Alternatively, you might argue that trademarks are something of a hybrid — a kind of communication known as “commercial speech.” Courts review laws regulating commercial speech under a different and more deferential standard of review known as “intermediate scrutiny.” The government may regulate the content of communication to advance an “important” governmental objective, with the same sort of narrow tailoring as under strict scrutiny, and prevention of fraud is one such “important” objective permitting the regulation and possible prohibition of false advertising. The dissent in Tam places significant weight on the fact that whatever speech and communication is going on with a trademark is done by associating that speech with a particular product (or service) and as such the high level of scrutiny demanded by the First Amendment is simply not in play.

About the only other significant place you can go from a strict scrutiny standard is to say that the racially-charged nature of a band name like “The Slants” (or a team name like “the Redskins”) is something that the government has a compelling interest in regulating, because to do otherwise would deny people in the identified groups the equal protection of the laws. Note that this notion, or at least something akin to it was dismissed by the majority: It is not the government’s job to tell people how to think; it is only the government’s job to treat people equally. Tellingly, the dissents completely ignored this concept.

Tam’s implication for the ongoing Blackhorse case is obvious: If Mr. Tam has a Constitutional right to have his band’s name treated the same by the government as it would treat a less offensive name like, say, “The Rolling Stones,” then Mr. Snyder has a similar Constitutional right to have his football team’s name treated the same way as a similarly less-offensive name like “The Tampa Bay Buccaneers,” and the earlier holdings in the Blackhorse case should be reversed.

Tam does three ambitious things that are legally significant: First, it classifies trademarks as pure speech rather than commercial speech. Second, it flies directly against the holding of the very high-profile Blackhorse case. Third and perhaps most breathtaking, it uses novel reasoning to strike down as unconstitutional a sixty-year old statute from a sexy and well-monied field of law which has become integrated into daily use and application by lawyers and corporations. Consequently, I’m reasonably confident that we will be seeing In re Tam on the SCOTUS docket next year.

Hat tip to @michael-drew for sending me notice of the decision earlier today.

Image by Mike Licht, NotionsCapital.com

1. It turns out, criticism of this name has been underway for nearly my entire life.
2. The name was originally used for the franchise as early as 1933 when it was based in Boston, and selected to distinguish the football team from Boston’s baseball team nicknamed the “Braves,” who currently play in Atlanta and also endure some criticism, albeit less intense, for their continuing to use a racially-specific nickname.
3. The Federal Circuit seems at first blush like the proper place for the Blackhorse appeal to have gone, so I don’t rightly know why it’s before the Fourth Circuit, but I’m not litigating the case so there may be a wrinkle I don’t know or haven’t researched yet.