By Michael Cunningham – Thompson Rivers University 2L JD Student
The National Football League’s Washington Redskins find themselves in a familiar legal battle yet again over the offensiveness of their team name. Since 1992, there has been an ongoing protest over whether the name of the team is degrading to the Native American population. This first protest began with an action brought forward by Susan Harjo to the Trademark Trial and Appeal Board (TTAB) under s.2(a) of the Lanham Act. Section 2(a) bars the registration of trademarks that “… may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols …” Finally in 1999, the TTAB ruled that this was the case, and invalidated the trademark registrations held by Pro-Football, Inc., the ownership group of the Washington football club. Pro-Football appealed the decision and had the ruling reversed in 2003. The district court held that the plaintiffs had not shown substantive evidence that the term was disparaging to Native Americans when the trademarks were registered in 1967. As well, the decision was overturned on the defence of laches, which is essentially that the plaintiff had an unreasonable delay in bringing their claim forward and by doing so has prejudiced the defendant. The unreasonable delay resulted from the plaintiffs having known about the name for many years before choosing to bring their claim forward.
The new action against the Washington ownership group, which was put forth by Blackhorse et al. in 2006, was recently decided on by the TTAB. Once again, they found the trademarks to be disparaging towards Native Americans. One notable difference between the current case of Blackhorse and the earlier case of Harjo, is that this time around the plaintiffs are all 18 years of age. Having just reached the age of majority, Pro-Football will not be able to use the same lache defence they were able to previously.
Evidently, it seems that the Washington ownership group will raise constitutional issues with the TTAB’s ruling, in that their First and Fifth Amendment rights have been violated, those being their right to freedom of speech and their protection against unfair treatment in a legal process, respectively. In the meantime, Pro-Football has appealed this decision, which allows them to keep their trademarks intact for the time being.
Looking to the future, even if Pro-Football is unable to have the TTAB decision reversed, they are not legally required to change their name, as neither the US Patent and Trademark Office or the TTAB have the power to enforce such a decision. As pointed out by Darren Heitner, a contributor to Forbes and an intellectual property lawyer, even without federal trademark protection Pro-Football would still have common law protection over their trademarks.
This case also has implications in many other pro sports leagues in North America, as there are a handful of other teams such as the Atlanta Braves, Cleveland Indians, Chicago Blackhawks, Edmonton Eskimos and the Kansas City Chiefs that flirt with this controversy. In most of these cases it would likely be very difficult for a plaintiff to show that any of these teams’ trademarks were disparaging towards Native American people when they were filed.
There are likely two ways in which this situation will sort itself out. As suggested by Steven Shelton, a contributor for “The Legal Intelligencer”, the controversy may likely be resolved through political pressure, as there was a bill introduced to the US House of Representatives in 2013 that would deregister any trademarks that used the term “Redskin.” As well, a congressional representative from D.C. is pushing for a bill that would revoke the NFL’s tax-exempt policy unless Washington’s team name is changed.
The second situation involves pressure applied by corporate sponsors of the NFL. What would likely occur is something similar to what transpired with the NBA’s Los Angeles Clippers owner David Sterling in the aftermath of his racist remarks becoming public. Just as the NBA forced Sterling to sell his team for actions considered to be detrimental to the league, the NFL and its owners could do the same to Pro-Football, and force the name of the club to be changed.
This may be wishful thinking since this controversy has been around for over 20 years and there has yet to be enough pressure from either politicians or sponsors to influence the changing of Washington’s name. Pro-Football has been adamant that they will not change the name, and without substantial pressure from either of these groups, it likely will not occur as the courts do not possess the power to compel a change.