The Intersection of Free Speech and Trademark Law

We recently discussed the convergence of Anti-SLAPP laws and copyright law. As ongoing litigation in the Federal Circuit demonstrates, the First Amendment also intersects intellectual property law in the context of trademark rights.

In April, the Federal Circuit upheld the U.S. Patent and Trademark Office’s denial of trademark registration for an Asian-American band called “The Slants.” The Court reasoned that denying registration for a “disparaging” trademark as defined by the Lanham Act did not amount to a First Amendment violation since the “PTO’s refusal to register appellant’s mark does not affect his right to use it. No conduct is proscribed, and no tangible form of expression is suppressed.” A week later the earlier opinion was vacated and the Court voted for a sua sponte en banc hearing for another chance to answer this constitutional question: whether denying registration for a  “disparaging” trademark violates the First Amendment.

More recently, in what the Consumer Law & Policy Blog called “Another Important Win for Free Speech,” the Fourth Circuit, in Radiance Foundation v. NAACP, held that the Radiance Foundation’s characterization of the NAACP as “National Association for the Abortion of Colored People,” did not infringe on the NAACP’s trademark rights. Citing New Kids on the Block v. News Am. Publ’g, Inc., the Court held that if such a characterization constituted trademark infringement, “many social commentators and websites would find themselves victims of litigation aimed at silencing or altering their message, because, as noted, ‘it is often virtually impossible to refer to a particular product for purposes of comparison, criticism, point of reference or any other such purposes without using the mark.’”

The line of demarcation between Constitutionally-protected free speech and disparaging names unworthy of trademark protection will likely remain a “moving target” for years to come, and will have substantial economic impact for those that wish to keep or enforce trademarks that are viewed as “disparaging” – just ask the Washington Redskins.  Check back for further updates on this interesting intersection of free speech and trademark law.

Retired NFL Players Record First Victory Against National Football League

Court Allows Players to Proceed with Claims

Minneapolis, MN: Retired NFL players received a boost in their class action lawsuit against the NFL today after a Federal District Court in St. Paul allowed them to move forward with claims that the league is profiting from the identities of retired players without consent or compensation.

The retired NFL players, led by Fred Dryer, Jim Marshall, Elvin Bethea, Joe Senser, Dan Pastorini, Ed White, and Toby Wright, allege the NFL, including its NFL Films division, has used retired players’ identities to promote the league and earn substantial revenues without consent from the players. “There is no dispute that these videos promote the NFL,” said Bob Stein, a former NFL player and attorney representing the players. “This suit is on behalf of thousands of players who want nothing more than to obtain their fair share of the revenues the NFL has earned, and the brand it has built due to their contributions. This is especially current with the growth of distribution channels such as the NFL network and worldwide internet marketing.”

The Federal District Court for the District of Minnesota denied the NFL’s contentions that several defenses, including the First Amendment, allowed the League to use retired players’ identities for any purpose it chooses.

The NFL ranks as one of the largest entertainment conglomerates in the world, raking in an estimated $6.9 billion in 2008 alone. It became the most powerful and profitable sport in America through the sacrifice of these players. Stein adds, “This is an opportunity for the NFL to do the right thing by its retired players, on whose back the league was built.”

Charles Zimmerman whose firm represents the players along with Stein agreed, saying, “Ultimately, we hope both the NFL and its retired players are able to move forward in a mutually respectful, equitable way. In the meantime, we intend to vigorously pursue all avenues of recovery for these players.”

The retired players are represented by Zimmerman Reed, PLLP, Bob Stein and Ward & Ward, PLLC. To view a copy of the complaint and district court’s order, please visit Retired players can receive information on joining the class by calling (888) 621-1103. For further information contact Michael Abbott at Zimmerman Reed (612) 385-8134.

Redskins in the Supreme Court

The Redskins’ day in court is soon to come — will the Court determine that the name is racist and offensive, and thus not entitled to trademark protection under the Lanham Act?  If so, what’s a Skins fan (or its Napoleonic owner, Dan Snyder) to do? Frankly, I’m amazed the ‘Skins have held on to the name this long, and I am a lifelong fan.  Part of me says it is a testament to the warrior spirit, and thus a compliment, that a football team would choose to name itself after your race or ethnic group — the Fightin’ Irish come to mind.  But “Redskin” is universally seen as a very derogatory term for a Native American, so the “testament to the warrior spirit” argument breaks down, big time. It is interesting to note that the previous attack on the Redskins’ trademark was thrown out as being time-barred under the doctrine of Laches, but the current assault cites Marshak v. Treadwell, a 2001 3rd Circuit opinion which held that the law allows for trademark cancellation “at any time.”  The author of Marshak?  None other than current Supreme Court Justice Samuel Alito, Jr. Could be interesting . . . and