Washington Football Team, offensive trade marks and cultural expressions: time for a rethink?

Many readers will have noted the recent decision by the owners of the (American) Football team formerly known as the "Washington Redskins" to find a new name for the team. This decision is a response to the growing consensus that the term "redskin" (and the associated imagery and mascot used by the team) is offensive to Native Americans. The team ignored this issue for a number of years before finally acting, seemingly as a result of the actions of key sponsors and retail partners in connection with the increased attention on issues of racial inequality following the killing of George Floyd. [Not a great look for Washington Football Team.]

The Washington controversy has involved, among other things, some significant IP issues. Leaving aside the rather predictable (given the team's public dilation on the issue of a potential name change) instance of trade mark squatting, most of the IP interest came from proceedings in the TTAB and the District Court of Virginia, and the subsequent ruling of the Supreme Court in Matal v Tam. In very brief summary, five Native American plaintiffs initially (and on appeal) succeeded in having certain of the team's trade marks cancelled on the basis that they "may disparage...persons...or bring them into contempt or disrepute", contrary to §1052(a) of the Lanham Act. Importantly, however, these decisions did not restrict the team's ability to use the nickname "Redskins"; only (initially) the right to register this term as a trade mark. Then, in 2017, the Supreme Court determined that §1052(a) violated the free speech clause of the First Amendment, and was therefore unconstitutional. 

NFL - ready

This GuestKat can't help but feel personally that the team's plan to change its name means that the right outcome has now been reached, but too late and via a sub-optimal route. Without getting into a lengthy debate regarding the history and nature of the term "redskin" and the importance of freedom of speech, it seems that a group (which have been discriminated against over a long period) found the team's use of the term offensive, yet could not take effective action to stop this. 

This raises some questions: what role does IP play in debates of this nature; and could (and should) IP play a different and/or bigger role? 

Where are we now?

Obviously, many jurisdictions protect fundamental human rights and impose restrictions on discriminatory treatment and/or hate speech. Laws in this area are not universal or uniform (even as between states that are parties to the ECHR). They are also in most cases unlikely to assist those who wish to prevent speech that may be offensive to their culture, beliefs or otherwise, but that does not cross the blurry line that separates "offensive" speech from discrimination and/or "hate speech".

Issues of cultural identity and tradition, race, equality and discrimination are complex and (at least partially) overlapping. It is beyond the scope of this post (and abilities of the author) to seek to define and analyse all of the relevant issues. This GuestKat would however suggest in light of recent events, and the promising introspection that it has prompted in many of us, that the existing system (meant in the broadest sense) does not give sufficient power to those who have direct experience of the effects of others' lack of knowledge of and attention paid to the above issues, and the many harmful impacts of our choices and behaviours in relation to all forms of identity and difference (including culture and race). 

The IP community has already made substantial efforts to play a role in addressing these imbalances in knowledge and power. In particular, WIPO has led efforts to empower various communities to protect their Traditional Knowledge (TK), including traditional cultural expressions and genetic resources. This has led to a number of success stories and legislative reforms on a national scale.  

A suggestion

Returning to the imbalance between those with the greatest knowledge and experience of what can perhaps loosely be termed "social harm" and those who have the power to do something about this, is it time to look at ways to put more power into the hands of those who have the relevant knowledge and experience? Building on WIPO's Traditional Knowledge programme, the IP community could attempt to generate international buy-in for additional strengthening of the rights of communities that may too often be on the receiving end of discrimination, cultural appropriation, other forms of offence and/or marginalisation (including economic marginalisation).  

One option could be to look again at how we define "prior" or "senior" rights within the trade mark system. If an economic actor obtains a trade mark right (whether through use or registration), only a person who has used the same or a similar trade mark in commerce/trade before the later rightholder is likely to stand a chance of cancelling the registration and/or stopping the use of the mark by the later rightholder. This is a problem for people such as the Native American plaintiffs in the Washington case: economic activity essentially trumps issues of cultural identity and offence (a problem that may arise more frequently in countries which prioritise freedom of speech and impose few restrictions even on the registration of trade marks that may be immoral and/or offensive e.g. the US following the Supreme Court’s judgment in Brunetti). 

It could be argued that this is the least worst available option because economic activity is self-regulating. If a business chooses to register and/or use an offensive name, consumers will take their business elsewhere. However, this argument has not proven to be correct in the recent past and there is certainly a risk that it will not be correct in future. The problem is more fundamental: communities of various types do not have sufficient control over use of the indicia that comprise the cores of their respective identities. 

Could it therefore be a good idea to empower non-economic actors to stop the registration and/or use of certain indicia in a socially harmful manner? If so, how could this be achieved within existing trade mark systems? One option would be to broaden the scope of (unregistered) prior rights to include culturally sensitive indicia that have been used prior to the date of a later use, application or registration, but not necessarily used in commerce or trade. Alternatively, a register of indicia (and interested groups), not entirely unlike those protecting geographical indications, could be established. 

Either of the above options, and indeed any option, will face a number of challenges. These include how to define culturally sensitive indicia; who would make any such determination, and by what process; how to identify which persons or groups are entitled to the relevant rights; how to deal equitably with long-held economic interests in later-registered marks; and the question of whether and how "cultural" rights could be exploited economically, if the owner(s) so choose. 

This GuestKat is by no means an expert on the issues discussed above. This post is made with the aim of prompting a discussion, and the whole IPKat team [including Merpel] would love to hear readers' views on this complex, and undoubtedly important, topic.