Prof. Rodney A. Smolla, University of Georgia Law School
April 28, 2015
May the Patent and Trademark Office deny trademark protection for a mark that it deems disparaging to members of certain racial or ethnic groups? The issue has been most famously posed by the Washington Redskins trademark litigation, a dispute of Dickensian expanse that has lasted longer than most American wars.1 The Redskins case is now pending (in its second incarnation) in a federal district court in Virginia, and is unlikely to end anytime soon.
A recently decision in an entirely different controversy, however, may impact the point spread. Even so, my long-term bet is on the Redskins.
The recent case, decided last week, is In re Tam.2 Simon Shiao Tam was the front man for what the court described as an “Asian-American dance rock band” called “The Slants.” The Patent and Trademark Office denied the band a trademark, because the word “slants” has, among other meanings, a connotation disparaging to persons of Asian descent. On appeal, the U.S. Court of Appeals for the Federal Circuit rejected Tam’s argument that the denial of trademark protection for The Slants violated the First Amendment. While it may not come as a shock that the court rejected The Slants First Amendment argument, it ought to come as a shock that the court required only three short paragraphs, only one of which even counted. The Federal Circuit simply parroted an ancient doctrine, the “right/privilege distinction,” arguing that whether or not the First Amendment protects a band’s right to use the phrase “The Slants” as its name, the government’s refusal to bestow the name with trademark protection does not constitute censorship. Under this reasoning the band is free to use the name The Slants; the government, however, is under no obligation to grant the band the privilege of trademark protection.3
If this perfunctory logic is embraced in the Redskins litigation, the team will lose. Given the national firestorm over the Redskins matter, however, I suspect that district court in Virginia, and appellate courts up the road, will on further review of the play find the matter much more complicated.
Countless teams in high school, college, and professional sports have been pressured to change their names and mascots because they have been perceived as disparaging, particularly to Native Americans. Responding to the pressures, many changes have been made. The Stanford Indians became the Stanford Cardinals and the St. John’s Redmen became the Red Storm, to cite two of the more well-known examples. Perceptions vary as to whether any ethnic reference should be deemed per se disparaging. Some regard any team called the “Indians” or the “Seminoles” or the “Blackhawks” as off-limits. Others contend it is sensible to pick and choose between those that appear to pay homage to the nobility of a particular group and those that descend to racial slur. Thus not all racial or ethnic stereotypes, even those suggesting aggressive traits, are widely deemed taboo: the Notre Dame “Fighting Irish” or the University of Louisiana at Lafayette “Ragin’ Cajuns” are often cited as examples.
Consider the striking difference between the intensity of the decades-long controversy over the Washington Redskins name and logo and the relative peace regarding the name and logo of the Chicago Blackhawks. There are some steadfastly pure in conviction for whom the two names are indistinguishably offensive. But on the Richter scale of modern mass culture the Redskins have triggered a major quake while the Blackhawks have barely jiggered the needle. One explanation is that the Blackhawks are seen as honoring Indians, and the legendary Illinois Chief Black Hawk. As a young boy growing up in Illinois I would take canoe trips down the Rock River, past a majestic and inspiring 50-foot concrete statute of Chief Black Hawk by the Chicago sculptor Laredo Taft, which towers over a rocky cliff as the river winds past Oregon, Illinois.
Were push come to shove, the Patent and Trademark Office, citing this difference in cultural perceptions, might well rule that the Blackhawks can keep their name and logo but the Redskins cannot.
As a lifelong Blackhawks fan who also believes that the Hawks’ jerseys are the most beautiful in all of sport I would be tempted to applaud this outcome. As a First Amendment scholar and litigator, however, I must adhere to larger principle. The First Amendment stands against it.
Denial of trademark status to disparaging marks violates the single most powerful principle of First Amendment law, the presumption that “viewpoint discrimination” is unconstitutional. “If there is any fixed star in our constitutional constellation, it is that no official, high or petty, can prescribe what shall be orthodox in politics, nationalism, religion, or other matters of opinion.”4 To use the term “slants” to refer to Asian-Americans or “redskins” to Native-Americans may well be regarded as racist and offensive by many in society. But the central theme of the First Amendment is that government may not censor speech based on its offensiveness alone, even offensiveness grounded in values that have gained wide acceptance in society – such as the moral consensus among all decent citizens that racism is repugnant. “If there is a bedrock principle underlying the First Amendment, it is that the Government may not prohibit the expression of an idea simply because society finds the idea itself offensive or disagreeable.”5 Indeed, it is no accident that many of the most famous Supreme Court decisions protecting freedom of speech have involved the punishment of hateful expression, from the homophobic funeral protests of the Westboro Baptist Church6 to the cross-burning rituals of the Ku Klux Klan and other ill-begotten racists.7 The most powerful Supreme Court decision in this lineage is R.A.V. v. City of St. Paul,8 a cross-burning case striking down a prosecution brought under an ordinance that barred group disparagement. R.A.V. held that the government cannot let one side fight no-holds barred but force the other into political correctness, stating that government “has no such authority to license one side of a debate to fight freestyle, while requiring the other to follow Marquis of Queensbury Rules.”9
If R.A.V. and the heavy presumption against viewpoint discrimination is the governing law, then the Patent and Trademark Office may not favor the Blackhawks over the Redskins, nor may it treat them equally and cancel the marks of both. The government may not discriminate against any mark – the Redskins or the Blackhawks or The Slants – merely because of distaste for the disparagement the mark putatively communicates.
The Federal Circuit in Tam sought to avoid this First Amendment problem in its ruling against The Slants by invoking the notion that The Slants are not exactly being censored – they are not being forced to change their name – they are merely being denied the privilege of trademark protection, a benefit that exists by the grace of Congress.
This glib reasoning, however, has long been discredited in constitutional law. Under what is usually called “the doctrine of unconstitutional conditions,” the government is not free to attach unconstitutional conditions, such as the surrender of First Amendment rights, to the receipt of government benefits.10 As the Supreme Court explained in 1972:
For at least a quarter-century, this Court has made clear that even though a person has no “right” to a valuable governmental benefit and even though the government may deny him the benefit for any number of reasons, there are some reasons upon which the government may not rely. It may not deny a benefit to a person on a basis that infringes his constitutionally protected interests – especially, his interest in freedom of speech. For if the government could deny a benefit to a person because of his constitutionally protected speech or associations, his exercise of those freedoms would in effect be penalized and inhibited.11
The doctrine of unconstitutional conditions, however, is not as straightforward as the presumption against viewpoint discrimination, and that is what makes the outcome of the Redskins litigation very hard to call. Unlike the presumption against viewpoint discrimination, in which government censorship in modern times has always been struck down, the cases applying the unconstitutional conditions doctrine are uneven and inconsistent. At times the Supreme Court has strongly condemned any viewpoint or content restrictions attached to participation in government programs, at other times it has appeared to allow such restrictions as a permissible government restriction relating to the management of a governmental enterprise or as essential to defining the contours of a government program.
The inconsistency is caused by the opposing gravitational pull of two positions. As the Supreme Court recently explained, there is first the tough-minded position that “[a]s a general matter, if a party objects to a condition on the receipt of federal funding, its recourse is to decline the funds.”12 This “take it or leave it” principle may apply even when “the objection is that a condition may affect the recipient’s exercise of its First Amendment rights.”13 The tough-minded position, however, is counterbalanced by the doctrine of unconstitutional conditions. “At the same time, however, we have held that the Government ‘may not deny a benefit to a person on a basis that infringes his constitutionally protected … freedom of speech even if he has no entitlement to that benefit.’”14 In some cases, “a funding condition can result in an unconstitutional burden on First Amendment rights.”15 These two doctrines exist in apparent contradiction, and the trick is to determine those funding cases governed by the “take it or leave it” principle, and those in which the doctrine of unconstitutional conditions intervenes.16
The easiest cases to understand are those involving the direct internal management of certain governmental enterprises. The government may not prohibit racist speech in the general marketplace, for example, but it may prohibit its own employees from engaging in racist speech within the government workplace to prevent a hostile work environment in violation of civil rights laws.17 The government may not prohibit racist speech in the general marketplace, but it may clamp down on racist speech in prisons, in furtherance of reasonable penological interests in safety and security.18 These are really not unconstitutional conditions cases involving strings attached to government benefits (prison time is no government “benefit”), but rather cases that recognize that the government in undertaking certain government functions may have interests that it may bring to bear to justify restrictions on the speech of those who participate in those functions, such as the government’s own employees speaking on matters pertaining to the jobs, that do not exist when the government is engaged in regulation of the general populace.19
Harder to process, however, are cases in which the government does appear to be attaching conditions requiring the surrender of First Amendment rights to the receipt of a government benefit. In Bob Jones University v. United States,20 for example, the Supreme Court upheld an IRS ruling stripping Bob Jones University of tax exempt status because of its racist policies. If the government may deny a “tax subsidy” to Bob Jones for being racist, one might ask, why can’t it deny an “intellectual property subsidy” to the Washington Redskins or The Slants for being racist?
The Bob Jones case does not stand alone. In Regan v. Taxation With Representation of Washington,21 the Court upheld a requirement that nonprofit organizations seeking tax-exempt status under 26 U.S.C. §501(c)(3) not engage in substantial efforts to influence legislation. In Rust v. Sullivan22the Court upheld restrictions imposed by Congress on the receipt of federal funds for doctors, prohibiting funds being used for medical providers who counsel patients on abortion services. And in Christian Legal Society Chapter of the University of California, Hastings College of the Law v. Martinez,23 the Supreme Court upheld a requirement imposed by the Hastings Law School requiring that registered student groups open their membership to all comers, notwithstanding the objections of a religious student group opposed to homosexuality that claimed its First Amendment rights were violated by being forced to accept openly gay members.
Yet there is an equally formidable array of modern cases striking down conditions placed on the receipt of government benefits. In FCC v. League of Women Voters of California,24 for example, the Court struck down a restriction on public broadcasters that prohibited the broadcasters from editorializing as a condition of federal funding. In Agency for International Development v. Alliance for Open Society International, Inc.,25 the Court applied the doctrine of unconstitutional conditions to strike down a provision of a federal law requiring recipients of funds to adopt a policy stating that they oppose sex trafficking and prostitution. And perhaps most powerfully, the Court in Rosenberger v. Rector and Visitors of University of Virginia26 struck down a policy of the University of Virginia that denied funding to student groups who used the funds for religious proselytizing.
These two lines of precedent are in obvious tension, and it would be foolhardy to suggest that the results they produce are entirely consistent. It is difficult, for example, to place Martinez (the Hastings law school student group case) and Rosenberger (the UVA student group case) side-by-side and reconcile their opposite outcomes. Even so, the Supreme Court has set out a reasonably coherent guide. In Alliance, the majority opinion written by Chief Justice Roberts explained that the relevant distinction was between those conditions that “define the limits of the government spending program” and those that seek to use funding as leverage to regulate speech outside the contours of the program itself. This test, to be sure, is difficult to apply, and the line it seeks to draw is often elusive, as the Court itself in Alliance acknowledged, precisely because a law that in fact seeks to use leverage to regulate outside the law’s programmatic purpose may be crafted in such a manner that it is effectively recast as if it is “defining the limits of a spending program.”27
Yet the fact that it may at times be difficult to tell on which side of a line a specific case falls does not mean the line that has been drawn is itself flawed. It is not always easy to tell if a pitch is inside or outside the strike zone, but that does not mean the rules of baseball are hopelessly illegitimate in defining the difference between balls and strikes. The principle adopted by the Court in Alliance has much to commend it, including its parallelism to the principles that animate public forum law (principles that figured prominently in Rosenberger), in which the orthodoxy is that government may use the content of speech to define the contours of a limited public forum (such as university saying that funding or facilities are for use by student groups on topics germane to the university’s curricular and extracurricular mission), but may not discriminate within those contours among specific viewpoints or speakers (such as excluding religious perspectives on such topics).
Now back to the Washington Redskins and The Slants. How, under the doctrine of unconstitutional conditions, should the denial of trademark status to disparaging marks be characterized? Is it more like Bob Jones, Regan, Rust, or Martinez, or is it more like League of Women Voters, Alliance, or Rosenberger.
The first thing that must be said is that the cryptic analysis of the Federal Circuit in Tam is utterly indefensible in its lack of depth and probity. While it is possible that the denial of trademark registration to The Slants is constitutionally permissible, a great deal more analysis is required to justify that result beyond the rote recitation of the truism that denial of trademark status is simply denial of a government benefit, not an exercise in outright censorship. There is no persuasive justification for the Tam court’s neglect of the doctrine of unconstitutional conditions, and the weight of precedents such as League of Women Voters, Alliance, or Rosenberger. Given the enormous potency of the First Amendment doctrine rendering the presumption against viewpoint discrimination a near-absolute, and given the Supreme Court’s enforcement of that viewpoint discrimination principle in the context of government benefits (in cases such as Rosenberger and Alliance), the Federal Circuit’s breezy, on-the-fly dismissal of the First Amendment arguments advanced by The Slants cannot be defended.
I am confident that the Washington Redskins litigation will elicit much deeper analysis by the courts. I am also confident, though by no means sure, that the Redskins will win. The rule disallowing registration of disparaging marks does not fit comfortably within the bounds of the government “defining the contours of a limited public forum” or “the limits of a government spending program.” There are no neutral principles of intellectual property law to explain the ban. Trademark law, applied purely as trademark law, easily grants trademark recognition to the Washington Redskins mark. The words and symbols meet the traditional requirements of trademark law, as words, names, symbols, or designs used in commerce to identify particular commercial enterprises.28
In football parlance, to disqualify the Redskins on grounds of disparagement is a penalty – call it a late hit, or piling on. In First Amendment parlance, it looks suspiciously like the gratuitous viewpoint discrimination condemned in Rosenberger, or the attempt to use the leverage of a government benefit to regulate speech for reasons outside the contours of the government program itself, of the sort condemned in League of Women Voters and Alliance.
As a thought experiment, consider shifting the problem to a different intellectual property arena, copyright law. Imagine that Congress were to amend the Copyright Act to deny copyright protection to a work deemed “disparaging to any racial or ethnic group.” Under such a regime copyright might be denied to The Adventures of Huckleberry Finn.
Yes, Copyright exists at the grace of Congress, which is authorized under the Copyright and Patent Clause to grant to “Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”29 The Lanham Act’s protection of Trademark, emanating from the Commerce Clause,30 also exists at the grace of Congress. Notwithstanding the undisputable constitutional power of Congress to enact laws shaping the contours of copyright, patent, or trademark protection, Congress surely may not grant intellectual property protection to Catholics but not to Jews, to Republicans but not to Democrats, to Whites but not to Blacks, to those philosophically opposed to same sex marriage but not to those favoring it. If that is accepted, then it is hard to justify Congress using its power to deny intellectual property to rock bands called “The Slants” or “The Viet Cong” or to sports teams named the “Washington Redskins” or the “Cleveland Indians,” while allowing protection for the Beatles or the Blackhawks.
As much as it pains me to root for the Redskins, I think that is what the Constitution compels.