WCL Glushko-Samuelson IP Clinic

Today, the District Court for the Eastern District of Virginia issued its rocket-docket decision in Pro-Football v. Blackhorse and affirmed the Trademark Trial and Appeal Board’s (TTAB) decision to cancel the team’s six team name trademark registrations on the ground that they are disparaging to Native Americans under federal trademark law.   Judge Gerald Bruce Lee rejected each of the football team’s arguments and defenses and ordered that the trademark registrations be cancelled.  Although the case has been litigated for over two decades with numerous decisions by both the TTAB and federal courts in the DC and Fourth Circuits, this case represented the biggest challenge in the dispute as the team mounted strong constitutional challenges to the cancellation in its appeal. 

 The team  argued that the Lanham Act’s prohibition on the registration of disparaging marks is a violation of the First Amendment.  Judge Lee found that the First Amendment was not implicated in trademark registration decisions since these decisions to do not restrict persons from speaking or using their trademarks.  He ruled that trademark registration constitutes government speech, not private speech under the factors laid out in the Supreme Court’s June decision in Walker v. Texas Division, Sons of Confederate Veterans. The team also argued that the statutory provision was unconstitutionally vague and that a cancellation of a registration under the provision was an unconstitutional taking.  Lee dismissed these arguments finding that a trademark registration is not considered property under the Fifth Amendment and that the bar to registration of such marks gives applicants fair warning of what is prohibited.  In addition, he found that the doctrine of  laches did not bar cancellation of the marks as petitioners did not unreasonably delay in filing suit upon reaching the age of majority.  Lee also held that laches does not apply in cases in which there is an overriding public interest.  He then granted petitioners’ motion for summary judgment on the disparagement claim concluding that they had demonstrated, by a preponderance of the evidence, that was no genuine issue of material fact that during the relevant time period when the marks were registered “may disparage” a substantial composite of Native Americans.  This standard had been met by the Native American petitioners in the stipulated record from the TTAB through the introduction of contemporary dictionary definitions, media references, and numerous statements made by Native American leaders and groups.

PIJIP faculty members and IP Clinic students have collaborated with Suzan Shown Harjo, the Morningstar Institute and other Native American advocates to help rid the American sports world of its most racist slur.  Professors Christine Farley and Victoria Phillips authored an amicus brief on behalf of law scholars whose research and teaching focus is intellectual property law, federal Indian law and constitutional law supporting the petition for review by the United States Supreme Court in the initial case on this issue Harjo et al v. Pro Football, Inc. (2009).  amicus brief Pro Football had asserted as a defense that the petitioners should have been barred from seeking cancellation because the registrations have existed for so long, been the subject of significant investment and the Native Americans had unreasonable delayed in bringing the action.  Farley and Phillips argued that the doctrine of laches should not apply to trademark cancellation claims based on disparagement, because of the strong public interest in being free from the harms which included damaging stereotyping and stigmatization.  These harms are deserving of protection no matter what private harm may be caused by delay to a trademark registrant.  As the USPTO correctly found in the Harjo case 1999, the injury to Native Americans by Pro-Football’s use of this slur as a trademark is self-evident.  In addition, the social costs to the public at large are huge and include reinforcing hateful and erroneous stereotypes and misinformation about our fellow citizens. The brief concluded that the psychological harms of such racialized representations are at once to the referenced group of Native Americans but also to society as a whole.  Judge Lee’s decision today echoed that reasoning. 

PIJIP faculty also worked with Harjo on presenting PIJIP’s second annual Cherry Blossom Symposium on Federal Intellectual Policy in March, 2014.  The theme of this symposium was Traditional Knowledge: IP and Federal Policy and included a panel moderated by Prof. Phillips on initiatives to regulate commercial appropriation of tribal names, symbols, and modes of cultural production featuring Dr. Harjo.  PIJIP Cherry Blossom Conf.

In recent years student teams from the Glushko-Samuelson Intellectual Property Law Clinic have also been involved in the case and related matters in a variety of ways.  Dr. Harjo has sought the clinic’s help in a variety of projects related to mascotting and tribal cultural policy.  The students assisted Harjo in preparing research for a landmark 2013 symposium at the National Museum of the American Indian exploring the negative impact of Native American stereotyping in the sports industry and beyond.  The clinic students drafted case studies about how this issue played out in earlier efforts to remove Native American imagery from college athletics and discussed how this movement might inform the present-day efforts to do the same in professional sports.   Another point of contention in the ongoing discussion about the trademark has also been reference to surveys and public opinion polls about the issue, including the oft-cited result of a 2004 poll conducted by the Annenberg Public Policy Center of the University of Pennsylvania. The Annenberg Study has been cited by team owner Dan Snyder in support of Pro-Football’s position that the team name is not disparaging to Native Americans.  In response to the continued citation of that survey, IP Clinic students developed and circulated a list of reasons to question the Annenberg Study’s results and making the case for why that survey should no longer be cited in defense of the team name.  This posting was quoted in the Washington Post  W Post and the Think Progress blog Think Progress  and was also referenced in the recent oral argument before Judge Lee on the motions decided in his opinion today. Oral Argument

Just last summer, Prof. Phillips co-authored a report with Erik Stegman at The Center for American Progress (CAP) titled “Missing the Point: The Real Impact of Mascots on American Indian and Alaska Native Youth.”  The report examines the research on the mental health impacts of racist team names and mascots on AIAN youth, the effects on their education, and proposes new recommendations to local, state, and federal education agencies to tackle the problem. Missing the Point  

Phillips noted today–“What a great decision by Judge Lee.  This is  “trademark bullying” in every respect.  This phrase is typically used to describe attempts by trademark owners to bully others out of the marketplace by enforcing trademark rights beyond the scope of those they actually own. But the continued use of this disparaging term by Pro Football in this case after our U.S. Patent and Trademark Office has ordered the marks cancelled twice is indistinguishable from the domination,  dehumanization and emotional scarring associated with the kind of bullying we are sadly all too familiar with.  Now a federal court has spoken and agreed that our government should not sanction such hatred.  The team and league should listen this time.”