Commercial Speech, Privacy, Data Protection and Retention
Ernst August von Hannover v. Germany
On Appeal Mixed Outcome
Global Freedom of Expression is an academic initiative and therefore, we encourage you to share and republish excerpts of our content so long as they are not used for commercial purposes and you respect the following policy:
Attribution, copyright, and license information for media used by Global Freedom of Expression is available on our Credits page.
A group of five Native Americans sought to have the Washington Redskins’ trademark registration cancelled. The court held that Redskins’ long-used trademark can be cancelled despite the Redskins’ objections and past use of the trademark. However, the trademark can be cancelled only because the term “redskin” “may disparage” Native Americans.
In 1933, the National Football League (“NFL”) “Washington Redskins” used the mark “Redskins” after the team’s owner at the time, George Preston Marshall, selected the name. The team name, which was used to distinguish the team from the Boston Braves baseball team, has been used ever since. Over the years, the Redskins Marks have been a source of controversy.
Five Native Americas, Amanda Blackhorse, Marcus Briggs-Cloud, Phillip Gover, Jillian Pappan, and Courtney Tsotigh (“Blackhorse defendants”), brought a case against Pro-Football, Inc. (“PFI”) under §14 of the Trademark Act of 1946. The Blackhorse defendants wanted to cancel six of the plaintiff’s trademark registration of the Washington Redskins, which were issued in 1967, 1974, 1978, and 1990. The trademark involves the term “REDSKINS” for services relating to professional football. In June 2014, the Trademark Trial and Appeal Board ordered that the Redskin Marks registrations be cancelled, as they violate the Lanham Act.
After the Board’s decision, the plaintiffs brought a case in federal court. The defendants claim that the trademark registration violated 15 U.S.C. §1052(a) (Lanham Act), which forbids registration for trademarks that may be disparaging to persons or bring people into disrepute or contempt. The defendants claim that PFI’s trademarks may disparage Native Americans at the time they were registered and that laches will not bar the defendant’s claims. The court is now reviewing two sets of summary judgment cross-motions.
One issue before the court is “whether the Court should grant PFI’s Motion for Summary Judgment on Constitutional Claims and deny the cross-motion for summary judgment filed by Blackhorse Defendants and the United States of America.” [p. 2] PFI argues that the Lanham Act’s restriction on speech and burden on trademark holders violates the First Amendment. PFI also argues that the Lanham Act’s language of “may disparage” is unconstitutionally vague and allows for discriminatory and arbitrary implementation. Finally, PFI argues that the act overall burdens trademark holders’ speech.
After considering multiple precedents, the court denied PFI’s summary judgment motion and granted the U.S.’s and Blackhorse defendants’ summary judgment cross-motion. The court did so because the Lanham Act does not involve the First Amendment. The court also held that the federal trademark involves government speech, rather than commercial speech. Thus, federal trademarks are exempt from scrutiny under the First Amendment, as “government speech is exempt from First Amendment scrutiny.” [p. 29]
The court also granted the Blackhorse Defendants’ summary judgment cross-motion and denied the PFI’s summary judgment motion on constitutional grounds. The court found that the Lanham Act is not invalid because of vagueness for various readings, including that the Act gives fair warning of what actions qualify as disparaging and are prohibited, and, thus, does not allow for discriminatory and arbitrary enforcement.
The court denied PFI’s summary judgment cross-motion on the “may disparage claims,” and granted the Blackhorse defendants’ summary judgment motion. The court has the discretion to deny registration for trademarks it finds to be disparaging. To make this decision the court relies on dictionary entries and media, scholarly, and literary references. The court also takes into consideration the statements by individuals who belong to groups that may be disparaged by the Redskins Marks during the pertinent time period. “Accordingly, the Court finds that the record evidence of statements from Native American leaders and groups weigh in favor of finding that between 1967 and 1990, the Redskins Marks consisted of matter that ‘may disparage’ a substantial composite of Native Americans.” [p. 61]
Decision Direction indicates whether the decision expands or contracts expression based on an analysis of the case.
The court held that Redskins’ long-used trademark can be cancelled despite the Redskins’ objections and past use of the trademark. However, the trademark can be cancelled only because the term “redskin” “may disparage” Native Americans.
Global Perspective demonstrates how the court’s decision was influenced by standards from one or many regions.
Case significance refers to how influential the case is and how its significance changes over time.
Let us know if you notice errors or if the case analysis needs revision.