Wednesday, September 16, 2009

Time Isn't On Anybody's Side

Although the Washington Redskins logo is probably less offensive than the logo of the Cleveland Indians, the name "Redskins" is, if not inevitably derogatory, sufficiently so to render the trademark in that name invalid under a provision of the Lanham Act denying trademark protection to any mark that "[c]onsists 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." So said the Patent and Trademark Office (PTO) in response to a 1992 filing by Native Americans objecting to the "Redskins" name. After over a decade and a half of litigation, this past May the DC Circuit affirmed the trial court's ruling in favor of the football team on grounds of laches.

Laches, for the uninitiated, is a legal doctrine that denies recovery to plaintiffs with otherwise meritorious suits on the ground that they slept on their rights to the detriment of the defendant. It is an equitable analogue to a statute of limitations defense. In an earlier decision in the same case, the DC Circuit had ruled that the time to start counting was when the youngest plaintiff had reached the age of majority. Even so, the district court ruled, in the seven years and nine months between when the youngest plaintiff turned 18 and the petition to the PTO was filed, the football team had made substantial investments in its trademark, and so permitting the case to go forward would be prejudicial.

The May ruling found that the district court did not abuse its discretion in finding prejudice. The plaintiffs have now sought certiorari in the Supreme Court. The question whether the district judge in this case abused his discretion in finding prejudice is certainly not cert-worthy. However, the plaintiffs argue that the doctrine of laches ought not even apply in a case seeking to invalidate a trademark. Whether laches can so apply is indeed cert-worthy, and apparently the lower federal courts are divided on this issue.

Still, it's hard to see what the fuss is about on either side. Even if the football team wins, a laches ruling in its favor would not bind non-parties such as other Native Americans who have just turned 18 and who would have not slept on their rights at all. Given this, it is something of a mystery why the lawyers for the plaintiffs in this case--who are working pro bono--didn't just re-file with new, younger plaintiffs in the first place. Apparently, there is a younger plaintiff waiting in the wings. With each day that passes in the litigation of this case, she grows older, thus increasing the risk that she will be subject to a laches defense as well. Eventually, however, a plaintiff will be found who clearly avoids the laches defense.

Meanwhile, with each passing year, the notion that "Redskins" is an acceptable name for a football team grows less plausible. Thus, the football team also seems to be acting contrary to its interests in delaying a ruling on the merits. Eventually it will likely have to change its name and logo, and the longer it delays, the more likely that outcome becomes. Were I advising the "Redskins" football team, I would say change the name and logo voluntarily. Doing so would even be an opportunity to sell new merchandise to fans (which is why professional sports teams frequently change the look of their uniforms).

Posted by Mike Dorf


egarber said...

So how would the Lanham rule apply to the "Braves" or "Chiefs"? Are they in the same category -- or is there something more generic / broad in their flavoring?

Scarlet Knight said...

Tabloid fodder: Apparently a 1st year associate at Quinn Emanuel (counsel for the Redskins) agreed with you that a name change was (and is) needed and he let everyone know his position on the matter by sending a "reply all" to the email announcing the victory. It caused a bit of a ruckus.

Neil H. Buchanan said...

Surely the imagery used by the Chiefs and Braves (uses by both teams of arrow heads in their respective logos, and the Chiefs' home being Arrowhead Stadium) would put them over the line. By contrast, the Golden State Warriors long ago dropped all Indian-related images and are now simply generic "fighters" -- except that they've been particularly inept fighters for years.

Michael C. Dorf said...

Scarlet Knight: I read the saga of the reply-to-all-1L with interest and sadness. There's pretty clearly a generation gap at work. Too bad he failed the bar twice.

Now, onto other mascots. What about the Vikings?? Their mascot surely is a stereotype but arguably a favorable one? Or is that simply because we don't think about the victims of Vikings because they've been dead for hundreds of years? Or is the key that the Minnesotans who chose the names were trying to honor their ancestors? If so, would the answer in the case of the Braves or Chiefs be different if these teams were owned by Native Americans? (It's hard to imagine a Native American choosing the name "Redskin.")

A propos of nothing, when I first started teaching at Rutgers, I played intramural basketball on a team that was named (by the students) "the fighting Amish." Untrademarkable?

Neil H. Buchanan said...

What about the gone-but-not-forgotten Kansas City Jews and the Cleveland Caucasians?

heathu said...

Could an Irish-American sue Notre Dame for the term "Fighting Irish" (or over its belligerent cartoon Leprechaun)? It certainly doesn't strike me as a flattering image. Is all that is required to challenge a trademark is one insulted member of a racial or ethnic group?

Prof. Dorf asked if the names Braves or Chiefs would be different if the team were owned by Native Americans. That situation already sort of exists: The Braves of U of NC at Pembroke are the mascot for a historically Native American school; I assume they were naming the Braves after themselves.

Yet another category might be where the Native American tribe officially sanctions the use of their image, such as the Florida Seminoles. Is a single insulted Seminole out of luck if its tribal leaders have already approved it?

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