Rodney Smolla is dean of Widener University Delaware Law School. He is the co-author of an amicus brief in the trademark case Pro-Football Inc. v. Blackhorse.
The Washington Redskins have appealed the July decision by federal District Judge Gerald Bruce Lee to cancel their trademark registration to the U.S. Court of Appeals for the 4th Circuit, and it will soon take up the case. Debate over whether the Redskins should change their name has raged for decades. Scores of college and university teams have altered their names and mascots out of sensitivity to Native Americans. The issue in the litigation, however, is whether the federal government should enter the fray, wielding its power to revoke the Redskins’ trademark registration. This pits a provision of the federal trademark statute, the Lanham Act, against the free-speech clause of the First Amendment.
The Lanham Act contains a ban that is breathtaking in its sweep, denying registration to any mark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
Protecting expression that is “immoral” or “scandalous” or that disparages or brings into contempt or disrepute “persons, living or dead, institutions, beliefs, or national symbols” is normally what freedom of speech is all about. Most Americans find deeply offensive the desecration of the American flag, depictions of animal cruelty in “crush videos” and the homophobic protests of the Westboro Baptist Church at military funerals. Yet all of these graphically offensive forms of expression have been deemed as protected by the First Amendment.
It is no answer to say that the Redskins can still call themselves the Redskins even if they can’t get their trademark registered, for it has long been the law that the First Amendment bars the government from conditioning benefits on the surrender of First Amendment rights. The First Amendment does not prevent the government from using the leverage of a public-benefits program to prevent discriminatory conduct, as with the Title IX gender discrimination provisions. But trademark law is not a civil rights statute, and the Redskins do not stand accused of discriminatory conduct. The government also has some latitude to establish conditions that shape the contour of spending programs. But the Lanham Act is not a spending program. Rather, the act’s anti-disparagement provision is a classic example of what the Constitution forbids: denial of a government benefit to penalize viewpoints the government finds offensive.
It has also been argued that canceling the Redskins’ trademark is an exercise of “government speech.” Governing requires advocacy in the articulation and execution of government policies. The First Amendment allows the government to advance certain viewpoints while renouncing others, on the theory that the political process provides a sufficient check. If voters disagree with the speech of the government, as expressed by the officials who compose it, they may elect different officials. It was this government speech doctrine that carried the day in the Supreme Court’s 2014 decision allowing Texas to refuse to grant approval of a specialty license plate featuring the Confederate battle flag.
It is understandable that a license plate manufactured by the government, required by the government to be affixed to a vehicle, bearing the government’s name and logo, and serving a government function regarding vehicle registration and law enforcement as a form of “Government ID” is “government speech.” But to treat the registration of the millions and millions of private trademarks as the government “speaking” is virtually nonsensical. Such a view would turn any decision by the government denying a benefit to a speaker, from refusal to recognize a student organization to denying a parade permit, into government speech. Government could deny trademark registration to Coke or Pepsi to discourage soda consumption. Congress could deny copyright protection to any book deemed racially disparaging. Call these actions government speech, and the inconvenient First Amendment is out of the picture.
The First Amendment must not be turned on its head. As the Supreme Court has admonished: “The very purpose of a Bill of Rights was to withdraw certain subjects from the vicissitudes of political controversy, to place them beyond the reach of majorities and officials and to establish them as legal principles to be applied by the courts.”