Washington Redskins Legal Position Bolstered

As many readers have noticed, this blog has taken several opportunities to provide commentary on the continuing sage of the registered trademarks of the Washington Redskins professional football organization.  Just last month, this blog noted a similar alleged-disparagement case ("THE SLANTS") winding its way through the appeals process with a pending writ of certiorari filed with SCOTUS.  Today, the Washington Post published a new poll it conducted revealing that a significant majority of self-identifying Native Americans do not find the use of "Washington Redskins" or "Redskins" disparaging to the group.  Although this is an internally-commissioned poll by WaPo, the significance of the results could signal the final tolls of the bell for this decades-long trademark challenge. Recall, in 1992, Susan Harjo filed a petition with the USPTO to cancel six registered trademarks owned by the Washington Redskins football organization.  After multiple appeals within and without the administrative agency, the original challenge was nixed based on the legal theory that laches (waiting too long) prohibited the challengers from continuing with the cancellation proceeding in 2005, and mercifully buried by SCOTUS denying to hear the appeal in 2009.  Yet, as the Harjo petition was pending before SCOTUS, a new round of challenges to the same six registrations (on behalf of Amanda Blackhorse and five other individuals).  The Blackhorse challenge will reach its first-decade if it lasts until August 2016.

What threatens the viability of the Blackhorse challenge is the newly published WaPo poll, which reveals that of the 504 respondents self-identifying as Native Americans, 90% are not bothered by the use of "Redskins" by the Washington football organization, 1% offered no opinion, while the remaining 9% find the usage "offensive".  Recall the standard for appropriately holding that a term is "disparaging" is that it is deemed disparaging of a "substantial composite" of the identified group.  While there are no bright-line formulas for determining what is or is not a "substantial composite", a total of 9% finding the term(s) and/or uses "offensive" hardly seems to rise to the level of "substantial composite".

Something that gets a bit lost in the noise of these challenges is that this is the same problem that Harjo had.  Neither Harjo (nor apparently Blackhorse) can marshal the evidence that demonstrates a "substantial composite" of the group find the term offensive.  As noted in an ESPN article, it seems the average person finds the terms more offensive than members of the targeted-group - which is probably a bigger comment on the psychological/sociological issues within our progressively PC society.  Yet, even that evidence has historically favored the Washington organization, as the vast majority of people associate "Washington Redskins" and "Redskins" as identifying the NFL team, with hardly any data indicating such uses are of actual people/persons.

Between the publication of the WaPo poll, the trend in "THE SLANTS" case, as well as general first amendment and trademark examination principles, it appears the "Redskins" matter may reach a finality in favor of the club and its registrations.  Although I never underestimate the federal judiciary to surprise (esp. the intellectual property challenged members of SCOTUS).

CNN Money Botches Redskins' TM Case

After a promising headline ("Redskins ask Supreme Court to hear trademark case"), CNNMoney's description of the legal status and issues in that matter leave a lot to be desired.  While I don't expect laser-like precision from lay reporters, this particular article is light on accuracy. For example, the article states:

The Redskins were told by the U.S. Patent and Trademark Office in June 2014 that the team could not trademark its name because federal law prohibits the registration of anything "scandalous, immoral, or disparaging."

I get what the writer is trying to say - and I'm not one to pick nits with lay reporters - but this is really misleading.  The USPTO canceled six registered trademarks based on the (federal trademark law) Lanham Act's section 2(a) provision against registering a mark or marks that may "disparage" others.  While the federal trademark law does empower the USPTO to prevent registration of such marks, that does not mean that the team cannot "trademark" the "name".  The posture of the Washington Redskins' case is that six registrations of the many marks that the organization possess (either registered or unregistered) have been cancelled from the federal principal register; legally, the organization may (and still does) use the six marks as it has before, since the cancellation of the registered marks has no impact on the usage of the marks in commerce.

As egregious is this sentence:

Revoking its trademark does not mean the Redskins won't be able to keep its name, but losing trademark protection would allow anyone to sell goods with the Redskins name or logo without paying the league as they now must do.

Despite the cancellation of the six registered marks (pending the likely consolidation of appeals / writ for certiorari of the "REDSKINS" and "THE SLANTS" cases), the organization has NOT lost trademark protection.  In fact, the value derived from a trademark springs from the use of the trademark, not the registration.  And registration is not a requirement (unlike copyright) for adopting, using, and enforcing trademark rights. Accordingly, the organization has not lost any of its substantive trademark rights and protections, and any would-be business thinking that it can pilfer these marks for t-shirt or apparel applications would quickly find itself in the cross-hairs of a trademark infringement suit.

In particular, the Lanham Act specifically sets out that unregistered trademarks are protected from the likelihood of source confusion (section 43(a)) in a manner very similar to the protections extended to registered marks.  Although the procedure and proof required to demonstrate to a court/jury that a mark enjoys such protection is slightly higher than if the mark was registered, for lack of a government issued certificate that carries some weight, if adoption, usage, maintenance, and overall-ownership is so demonstrated, the analysis for the likelihood of source confusion is nearly identical whether the mark is registered or unregistered (with some variants between circuits on the number of factors considered in a likelihood of confusion analysis).

Kudos to CNNMoney for revealing that the football organization is seeking a consolidation of its case with "THE SLANTS"; the impact on the organization's appeal to the Fourth Circuit Court of Appeals (pending) is unclear, though.

The Washington Redskins Trademark Controversy - Part II

In part I, this author briefly discussed the recent decision by District Court Judge Gerald Lee (E.D. Va.) that independently agreed (under the statute's de novo review required by a district court) with the USPTO's Trademark Trial and Appeal Board's (TTAB) decision to cancel six registered trademarks for the NFL's Washington Redskin franchise.  In that entry, this author stated disagreement with both recent opinions, but without much analysis, saving the beginning of that discussion for this and future entries. As mentioned in the previous post, and although pilfered from John Adams and the Massachusetts Constitution (1780) and oft-applied to the Union that soon followed (1787), if this republic is a government of laws and not of men, and if the consent of the governed demands clearly written and applied laws and not the unpredictable will of the few, then these recent trademark decisions are but two of a growing list of decisions (and laws) violating these bedrock principles. 

To be clear, Judge Lee clarified certain issues that have been incorrectly conflated with the issues in this case (and the legacy case of Harjo).  For example, Judge Lee made it clear that it is the trademark registrations and not the trademarks that are at issue.  Rather, the statutory provision asserted (15 USC Sect. 1052(a) - "Sect. 2(a)") only allows for cancellation of the registration, not prohibition of use in commerce.  Neither the TTAB nor the District Court (in this instance) can prohibit the use of the marks despite any cancellation that may transpire.

Moreover, Judge Lee correctly pointed out (to anyone understanding and paying attention) that not only can the NFL franchise continue to use the marks in commerce despite any cancellation(s), the Lanham (trademark) Act allows a party to sue for infringement of its unregistered trademarks (15 USC Sect. 1125(a) - "Sect. 43(a)").  Therefore, despite the political and legal hand-wringing that continues over this matter, any speculated termination of the Washington Redskins trademarks is premature and highly exaggerated.

Now for the substance of Judge Lee's decision; as a preliminary matter, I am reserving comment on the constitutional questions for a future time.  IMO, the constitutional arguments are nuanced and deserving of considerable thought before comment.  Nor will I address the laches (unreasonable delay in pursuing suit) issue at this time.

Judge Lee's order was based on motions for (and opposing) summary judgment, which requires that there be no genuine issue of material fact and the movant is entitled to judgment as a matter of law (e.g., Fed. R. Civ. Pro. 56(a)).  IMO, this is problematic for several reasons.  First, to the question of whether a particular trademark has disparaging capabilities to a group of individuals, the USPTO asks: (1) is the mark understood as referring to an identifiable group of people? and (2) may that reference be perceived as disparaging to a substantial representation of that group?  Judge Lee answers:

[. . .] the record evidence shows that the term "redskin" in the context of Native Americans and during the relevant time period, was offensive and one that "may disparage" a substantial composite of Native Americans, "no matter what the goods or services with which the mark is used." [citation omitted]  p. 63

Despite their respective decisions, neither the TTAB nor Judge Lee seem to properly analyze question (1), both relying heavily on dictionary definitions to define "redskin" as an offensive term used in connection to Native Americans to skip ahead to question (2).  Yet question (1) is a threshold question - and if the mark is not understood as referring to an identifiable group of people, a tribunal does not reach question (2).

This is where the marks are of considerable importance.  While each of the six marks uses "redskins" in some manner, the usage is critical to answering question (1).  The six marks include:  a stylized (script) "The Redskins", the stylized "The Redskins" + arrow + Indian profile, non-stylized "Redskins", "Redskinettes", the word mark "Washington Redskins", and the word mark "Washington Redskins" + Indian profile.

It is highly arguable that any of the marks are understood to identify a group of people, since all of these marks are predominantly (if not exclusively) used in association with the NFL franchise and not as a pejorative against Native Americans.  "Redskinettes" and the two marks using "Washington Redskins" are particularly difficult to associate with a group/race of people when considered in context of commercial use.

As used, "Redskinettes" is a mark associated with the female cheerleaders of the football franchise, a term presumptively coined by the franchise and used only by the franchise in this association.  There does not appear to be any evidence that the term "Redskinette" is plausibly understood to refer to Native Americans.  It is doubtful that anything above a statistically insignificant number of Americans would understand this term to mean anything other than in connection with an athletic team nickname (although not necessarily the nickname itself).

Likewise, when used, the two marks utilizing "Washington Redskins" are clearly referring to the NFL franchise located near Washington, D.C., and not a group of Native Americans.  These marks are so identifiable with the NFL franchise that the experts used by the complainants could find scant-little instances of recorded usage of the term "redskin" as a pejorative after 1969 (with 143,000+ articles making at least one "redskin" reference, with the overwhelming majority of these references to the Washington D.C. pro football franchise).

Illogically, the TTAB majority noted that the extreme drop-off in usage of "redskin" as a derogatory term was evidence of the derogatory and disparaging nature of the term; in many circles, this is considered a logical fallacy (as evidence of absence and a false dichotomy).  One could more plausibly conclude that the drop-off in the use of "redskins" in a derogatory manner (compared to the number of actual media uses) is evidence of the strong association between the term and the NFL franchise.

Accordingly, it is reasonable to suggest that Judge Lee put the cart before the horse by divorcing the actual context of the marks as used and labeling the "context" of these marks as being understood to refer to Native Americans.  In part III, additional aspects of this decision will be examined.

The Washington Redskins Trademark Controversy - Part I

Given the recent controversies over the Confederate Flag in South Carolina, as well as the recent SCOTUS decision regarding Confederate Veterans and license plates in Texas, and the alleged implications of these outcomes on the Washington Redskins trademark controversy, I've been building toward a post on the subject.  However, before I could get there, Federal District Court Judge Gerald Lee affirmed the decision of the US Patent and Trademark Office (USPTO) and its Trademark Trial and Appeal Board's (TTAB) decision to cancel six of the trademark registrations the franchise possesses for "Washington Redskins".  So, the time is right for some analysis and critical comment on this very recent decision and the related decision(s) and commentary that have come before. As one might expect, this will be a multi-part post, as one entry will simply not be sufficient to cover all the ground necessary to explain why, in the opinion this author, the USPTO and the Federal Courts have got it wrong so far.  If this is a nation of laws (as is said), then both the TTAB and the Federal Court for the Eastern District of Virginia (E.D. Va.) (and Judge Lee) have ignored that principle because trademark law and judicial precedent say one thing on the standard to apply while these tribunals have misstated, misapplied, and wrongly analyzed the law and doctrine at issue.

Moreover, and as a threshold gripe, the reporting on this matter continues to miss the mark.  Like the TTAB and federal court(s), the news agencies misstate or simply miss the real, relevant issues in analyzing a cancellation proceeding for alleged disparaging marks.  Rather than focus on the appropriate legal standard, the news (and the tribunals), have focused on the term "Redskins" completely devoid of the use of the term in commerce, which is required.  Moreover, to cancel such a mark, significant evidence must be marshaled that shows a substantial composite of the group allegedly disparaged finds the term disparaging.  As was the case in the original Washington Redskins trademark row (Harjo), which took more than 13 years to resolve (in favor of the NFL franchise), there simply is not significant evidence of such disparagement.  Yet, the tribunals have lurched and groped to find "evidence" deemed sufficient to cancel the marks.

In addition, the news reports have been inadequate in describing what will result even in the unlikely event Washington's marks are cancelled.  For example, the Washington Post asserts that the franchise would still have state law rights in the trademarks - but that is not only an incomplete answer, but an answer/option that if far less valuable for the franchise.  Although state law may provide some protection(s), the franchise will still have very valuable rights under the federal trademark statute - the Lanham Act.

Unlike patents and copyrights, trademarks do not derive value and become a legally protectable asset until the mark(s) is/are used in commerce.  For federal protection via the Lanham Act, that use must be in interstate commerce.  However, federal protection is not contingent upon registration; rather, the Lanham Act protects unregistered trademarks as well (under Sect. 43(a) of the act - 15 USC Sect. 1125).

Some commentators have questioned whether a mark previously registered and then cancelled because of offensiveness or disparagement would then enjoy trademark protection under the unregistered provision of the Lanham Act.  It is an interesting question, and there is no substantive precedent in this area, so it would be a case of first impression with any court that is forced to set over this matter.  This, and other issues, will be reserved for subsequent parts to follow.

In part 2, the next entry will explore my reason and rationale for finding the TTAB and federal court decisions in error.

HBO's "Ballers" & the NFL's Trademark(s) and Image(ry)

(hat-tip to Uni-Watch) As notably reported by NBC's online outlet "Pro Football Talk" (Mike Florio), HBO has a new quasi-fictional series about life in-and-around the NFL entitled "Ballers" and starring ex-college football player and professional wrestler Dwayne "The Rock" Johnson. Admirably, Johnson has turned himself into quite an entertainment force, and is a natural for this type of serial vehicle in television. The series promises to hold a mirror up to the NFL and its personalities, although how close and how detailed the mirror actual is will be sorted out down the line. With the various public relations issues the NFL has suffered in the last twenty-four months, the NFL has to hope that the series is either (a) well received by the public in depicting ordinary day-to-day issues players have (and operating to rehabilitate the league image) or (b) doesn't put too fine a point on these issues and instead puts a little (lip) gloss (on the pig, perhaps?).

Aside from the ripped-from-the-headlines-of-the-NFL inspired storyline(s), as pointed out by Florio at "Pro Football Talk", what is also notable is HBO's non-licensed use of the league's and teams' logos and trademarks. I specifically use the term "non-licensed" as opposed to "unauthorized" or "impermissible" - the NFL has not given HBO written authorization to use the trademarks, and perhaps from the league's perspective it is semantics: non-licensed is the same as unauthorized and impermissible. The NFL is considered a image (if not trademark) zealot by many, and often stepping over the line a bit.  However, whether HBO's proposed non-licensed use of the marks is illegal (and thus, truly unauthorized and impermissible) is a different question. A question that tends to not get litigated.

Unless a film or television production has an agreement with a company for product or mark placement, most film/television production houses avoid using real products and associated marks. In instances where the show/film is scripted, then faux brands and products are created, such as the many faux Internet browsers, email clients, databases, and other electronic devices and interfaces that permeate scripted visual performances. In the reality genre, or in quasi-news reporting, video and still photos may feature someone with a shirt or other article with a brand logo that is blurred out. These efforts are undertaken to avoid any perceived (or real) trademark entanglements, in which the brand holder may be thought to endorse the show/film and its content. Many folks assume that unless an owner authorizes trademark use that any such use implies approval, endorsement, sponsorship, or some type of association between the content creator and the brand owner that is unwanted, undesirable, and/or uncompensated free-riding.

Because logo blurring and simple non-use have become the practice in trade for the tv/film industries, it does not address the tension between HBO's perspective and the NFL's perspective. Against industry standard, HBO has declared that its use of these marks is not a legal concern; the NFL's "no comment" echoes rather loudly that at the least they are huddled with legal counsel crafting a response and/or a potential challenge. But the question remains - who is (most) right?

I cannot say with 100% certainty that this is a case of first impression, but I'm not aware of any cases litigated to a decision in this area because the industry standard is practiced by virtually every entity in the industry. In particular, sports-themed fictional shows/films have often avoided these issues by completely fictionalizing the league, the teams and trademarks, and the personalities, unless it is a bio-pic or documentary. Though not exhaustive, here are several examples. The book and film "North Dallas Forty" were fictionalizations of writer Peter Gent's stent with the Dallas Cowboys, with the film depicting a pro football franchise named the "North Dallas Bulls". The films "The Replacements" and "Any Given Sunday" created leagues and teams for their respective pro football worlds. In the 1980s, the HBO television show "1st and 10" about professional football was wholly fictionalized. More recently, ESPN produced the fictionalized world of pro football entitled "Playmakers".

So, what does HBO know or sense about this situation that it can say with confidence that there are no trademark issues here, against industry practice and little-to-no legal precedent (for or against)?

Although one would not expect HBO and the NFL's collaboration on the reality series "Hard Knocks" to have transferred any authorization to HBO beyond that used with that series, perhaps HBO negotiated a grand bargain and took advantage? However, that seems unlikely. Since trademark infringement and trademark dilution are the big potential legal issues in play, and because each is analyzed under a "likelihood of" infringement/dilution standard, perhaps HBO is relying upon the degree of care exercised by and sophistication of the viewer to appreciate that the show is fictional and the use of the marks adds a flavor of realism without creating an endorsement or sponsorship by the NFL? In connection with carefully crafted credits, including long pauses on the production company(ies) involved (and perhaps a disclaimer at the start or end, or both), perhaps it will be evident that the NFL has no part in the show other than as props? Or, maybe HBO doubts the propriety of the NFL speaking for all 32 teams on this issue, and will use a nominal number of teams and marks and roll the dice that each individual team isn't going to devote the resources to litigate the matter? The NFL teams pool their licensing money and divide the revenue, but whether the NFL is authorized to act on behalf of each individual team in regard to each of the 32 team trademarks is less-than clear (though I suspect it to be up to each team to act).

Regardless of what the parties believe at this moment, this may become an interesting trademark tussle between two giants in U.S. pop culture. And we'll be watching.