Washington Commanders

Why the Redskins scored a victory in the Supreme Court's ruling in favor of The Slants

Published Jun. 30, 2017 6:28 p.m. ET

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Sports Illustrated, Michael McCann/Sports Illustrated

Monday's decision by the U.S. Supreme Court in a case involving trademark law and the band The Slants has absolutely nothing to do with the football. And yet it has everything to do with the Washington Redskins. As explained below, the team and owner Daniel Snyder will celebrate the decision as a key victory in their quest to preserve the Redskins' name and ensure that it receives full legal protection under federal trademark law.

The Supreme Court declared as unconstitutional Section 2(a) of the Lanham Act, a section better known as the “disparagement clause”. Until Monday, the clause had authorized the U.S. Patent and Trademark Office (“PTO”) to cancel a trademark—which is a word, symbol or other mark that distinguishes a source of goods from others and can be registered with the federal government—if it disparages a substantial percentage of a distinct group of people, be it a racial, ethnic, religious or political group.

In a unanimous 8–0 decision (the recently appointed Justice Neil Gorsuch was not on the bench when the case was argued and thus played no role in the decision), the Supreme Court held that the disparagement clause violates the First Amendment's Free Speech Clause. While the eight justices offered somewhat different styles of logic for their decision, they collectively valued the Free Speech Clause's instruction that the government shall make no law abridging the freedom of speech of private citizens and businesses. Put simply: Under the Free Speech Clause, the government cannot decide which viewpoints it likes and doesn't like. Stressing that trademark law is primarily designed to assist consumers in distinguishing between products and to safeguard companies' investments in their name and brand, the Court regards governmental regulation of free speech as outside the scope of trademark law.

The Slants are an Asian-American dance rock band from Portland, Ore. The PTO rejected their trademark registration on grounds that the phrase “the slants” is a slur and offensive to Asian-Americans. The band, led by Simon Tam, challenged the rejection in court. Among other points, Tam argued that the government should not play any role in regulating free speech and that band who only sought to “reclaim” the word “slants” in a manner similar to the bands NWA and Dykes on Bikes.

Writing for the Court, Justice Samuel Alito ruled that trademarks constitute private speech—not government speech—and federal registration of trademarks does not convert such marks into government speech. Consider the alternative, writes Alito, in which the government would be advocating strange and inappropriate viewpoints:

[I]f trademarks represent government speech, what does the Government have in mind when it advises Americans to “make.believe” (Sony), “Think different” (Apple), “Just do it” (Nike), or “Have it your way” (Burger King)? Was the Government warning about a coming disaster when it registered the mark “End Time Ministries”?

To bolster this point, Alito cites the Redskins' Supreme Court amicus brief, which attempted to portray the PTO as illogically hypocritical in deciding which trademarks are offensive and which aren't:

The PTO thus refused to register THE SLANTS because it disparages people of Asian descent, but repeatedly “registered marks that refer positively to people of Asian descent,” including CELEBRASIAN and ASIAN EFFICIENCY. The PTO similarly registered THINK ISLAM, but refused to register STOP THE ISLAMISATION OF AMERICA under §2(a). ...

... the PTO refused to register THE SLANTS because the PTO found the term disparaging to Asian Americans in the context of an all-Asian American rock band. But the PTO has already registered WHITE TRASH COWBOYS and OFF-WHITE TRASH for two all-white rock bands, and registered N.W.A.—an acronym that includes a racial slur against African Americans—for an all-African American rap group. ...

The examples do not end with musical groups. The PTO has registered DANGEROUS NEGRO, BAKED BY A NEGRO, CELEBRETARDS, RETARDIPEDIA, YELLOWMAN, RED MAN, STINKY GRINGO, GRINGO STYLE SALSA, GRINGO BBQ, YID DISH, LITTLE INDIAN GIVER, MIDGET-MAN, CRIPPLED OLD BIKER BASTARDS, OL GEEZER, WHITE GIRL WITH A BOOTY, OH!MY NAPPY HAIR, NAPPY ROOTS, BOYS ARE STUPID THROW ROCKS AT THEM, WHITE TRASH REBEL, DAGO SWAGG, REDNECK ARMY, CRACKA AZZ SKATEBOARDS, and DUMB BLONDE (twice), with no apparent regard to whether such marks may disparage women, men, racial groups, religious groups, elderly people, and disabled people.

Once the Supreme Court established that trademarks are private speech, it was logical for Alito and the other justices to reason that the government cannot remain compliant with the First Amendment when picking which speech it finds offensive and which it does not.

The Slants ruling is very significant for the Redskins, whose federal trademark the PTO has scheduled for cancellation. To date, the Redskins have unsuccessfully challenged the scheduled cancellation in court. In 2015, U.S. District Judge Gerald Bruce Lee affirmed the PTO's scheduled cancellation of the Redskins' trademark on grounds it disparages Native Americans because of the historical meaning of “Redskins” as a derogatory term. The Redskins have appealed Judge Lee's ruling to the U.S. Court of Appeals for the Fourth Circuit.

To be clear, the cancellation of the Redskins trademark has never gone into effect. Under federal law, that only happens after the Redskins unsuccessfully exhaust all of their appeals.

As a consequence, the Redskins have maintained all of the benefits of federal trademark registration during the controversy. Those benefits include the exclusive right to use the mark in connection with specific goods and services, and a legal presumption of ownership. Further, trademark registration empowers the Redskins to work closely with U.S. Customs and Border Protection on preventing counterfeit Redskins goods from entering the United States. In the sports world, protection against counterfeit apparel and imitation merchandise is of enormous value. Trademark protection also authorizes courts to impose treble damages—which means damages automatically multiplied by three—on defendants who violate a trademark holder's rights. The possibility of treble damages is often a powerful deterrent from a company committing an unlawful practice under trademark law.

• MMQB: How Native American leaders and tribal communities feel about "Redskins"

It is worth noting that the Redskins are not completely dependent on federal trademark law to repel counterfeits and to protect their brand name. The team enjoys other, albeit weaker, legal protections to accomplish those same goals. Those other protections can found in states' laws and in licensing contracts between the Redskins and businesses that produce merchandise and apparel with “Redskins” on them. Still, losing federal trademark registration would be economically damaging to the Redskins. The registration supplies the strongest source of trademark protection for the team.

Going forward, the Redskins will likely file a petition with the U.S. Court of Appeals for the Fourth Circuit that attempts to seal the team's victory. More specifically, the team is poised to file a Rule 28(j) letter, which informs a court of new legal developments since briefs were filed. The letter would formally notify the Fourth Circuit of the Slants decision and request that the Fourth Circuit issue an order that reverses and vacates Judge Lee's decision. The Fourth Circuit will likely grant that order, which in turn would require the PTO to revoke the scheduled cancellation of the Redskins' trademark registrations.

Alexandra Roberts, a trademarks law professor at the University of New Hampshire School of Law who has written extensively on the Slants and Redskins litigation, tells SI.com that the Redskins have indeed won. “The federal trademark debate is effectively over,” Roberts says. “The Redskins cancellations must be reversed, the teams' registrations will stand, they can continue to use and register new marks regardless of whom they offend, and no further challenges of those marks or any others can go forward on the basis that they disparage people, institutions, beliefs or national symbols.”

Although the debate over the Redskins' name is often portrayed from a legal perspective, there is no law that could force the team to change its name. The Redskins are a private business and can use the name as long as they like. Perhaps the NFL could attempt to contractually compel the Redskins to change the name, but the league's constitution doesn't offer language expressly supportive of such a theory, and there is no reason to expect it would attempt to force a name change.

Instead, the legal debate has centered on whether the word “Redskins” as used in the context of a professional sports team ought to have federal trademark protection. The legal debate is thus much less sweeping than the political and social debate surrounding it.

This means that groups which oppose the Redskins name shouldn't be deterred by the Slants ruling. These groups, which include numerous Native American organizations and the Anti-Defamation League, have never been in a position to force the Redskins to change the team's name. The Slants decision doesn't change that calculus. Indeed, advocacy groups can continue to criticize the name and continue to applaud voluntary steps by industry actors—such as consumers who refuse to buy Redskins merchandise or members of the media who decline to use the nickname when referring to the team. As Roberts says, “the political and social debate about the Redskins team name, and other offensive and disparaging names and mascots in pro sports, will wage on.”

While the political and social debate over the Redskins' will wage on, the legal controversy is likely over.

Michael McCann is SI's legal analyst. He is also an attorney and a tenured law professor at the University of New Hampshire School of Law.

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