4 October 2016Trademarks

SCOTUS declines to hear Redskins case, but lawyers are unsurprised

The US Supreme Court has declined to hear the Blackhorse v Pro Football trademark dispute, rejecting an appeal from the Washington Redskins, with lawyers saying the case was not “ripe for review”.

The justices announced the decision yesterday, October 3, a few days after revealing that the court will take up the In re Tam trademark dispute, a case centring on US rock band The Slants.

Both cases concern disparaging trademarks, which are barred from registration under section 2(a) of the Lanham Act.

The court will provide guidance in the In Re Tam case on whether disparaging terms can be registered as trademarks or whether refusing registration is a violation of First Amendment rights.

Lawyers have told WIPR that the refusal to hear Blackhorse hasn’t come as a surprise, given that the court very rarely grants certiorari before a court judgment.

The Washington Redskins, a National Football League club, had asked the Supreme Court to immediately review a decision of the US District Court for the Eastern District of Virginia before a decision from the US Court of Appeals for the Fourth Circuit.

In 2014, six trademarks owned by the Redskins were cancelled by the US Patent and Trademarks Office after they were challenged by a group of Native Americans led by Amanda Blackhorse.

The Virginia court upheld the cancellations.

Monica Riva Talley, director at Sterne, Kessler, Goldstein & Fox, explained that the Supreme Court will only grant certiorari before judgment if the case is of “such imperative public importance as to justify deviation from normal appellate practice and to require immediate determination in this court”, a standard set forth in Supreme Court rule 11.

She added: “While this case is clearly of extreme importance to the Redskins, and perhaps some of their fans, it is likely not of such importance to the public at large. The Redskins will still be able to file amicus briefs in conjunction with the In re Tam case, and likely will.”

Brett Heavner, attorney at Finnegan, Henderson, Farabow, Garrett & Dunner, added that the case “was not really ripe for an appeal to the Supreme Court since the lower appeals court had not yet ruled on the Redskins case”.

According to Heavner, the team was essentially trying to “piggyback its Supreme Court appeal” onto the In re Tam case.

On the future of the Redskins case, Tim Kelly, partner at Fitzpatrick, Cella, Harper & Scinto, explained that the question “will be how the Fourth Circuit elects to handle” the current appeal.

The Fourth Circuit could either make a decision or wait for guidance from the Supreme Court’s decision in the In re Tam dispute.

“From Blackhorse’s perspective, my expectation would be that the team pursues amicus briefing following-up on the points raised in its amicus curiae submitted to the court in support of the petition for certiorari” in the In re Tam case, he said.

Although a number of issues overlap in both cases, In re Tam has a number of significant differences from the Redskins case, meaning that the analysis may not focus on issues# central to the Redskins case, according to Heavner.

He said:He explained that Simon Tam, the band’s founder, specifically chose the name The Slants to highlight his Asian heritage and to allow him to make social statements relating to Asian-American experiences in his music.

“So, it is possible that the Supreme Court may create a test that would require the allegedly ‘offensive’ trademark at issue to itself function as protected political or social speech (rather than primarily commercial speech),” said Heavner.

“In that case, it might be tougher for the Redskins to show that the team name functioned in the same way that Simon Tam is using The Slants.”

Heavner explained that  the court’s refusal to take the appeal means that the Redskins will be unable to seriously influence how the issues are presented to the Supreme Court in the In re Tam case.

He added that the team will also be required to build arguments around whatever the Supreme Court decides.

“Of course, if the Redskins are dissatisfied with the outcome of the lower court appeal, the team can at that time attempt to bring its case to the Supreme Court again,” said Heavner.

Christine Haight Farley, professor of law at the American University Washington College of Law, said: “The team would like to associate with Simon Tam because in many ways he is more sympathetic than the team. Tam wants to right a racial wrong; he wants to reclaim a racial epithet.”

Farley added that Tam has an en banc Federal Circuit ruling in his favour, while the team is appealing against a loss at a district court.

She said the Redskins “will just have to make its views known in an amicus brief like the rest of us”.

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More on this story

30 September 2016   The US Supreme Court decided yesterday that it will take up the In re Tam trademark dispute involving US rock band The Slants.
19 January 2017   The US Supreme Court yesterday heard oral arguments in the Lee v Tam trademark dispute, which centres on rock band The Slants, but lawyers have told WIPR that while the court pressed both sides, it provided “scant” insight into its position on the case.
3 July 2017   A group of Native Americans has dropped its high-profile trademark suit against the Washington Redskins, a National Football League team.