Federal Circuit finds disparagement provision of Lanham Act unconstitutional under First Amendment

The Federal Circuit — with an assist from the First Amendment — recently took a small but significant bite out of the Lanham Act.

On Dec. 22, the U.S. Court of Appeals for the Federal Circuit found unconstitutional the ability of the United States Patent and Trademark Office under Section 2(a) to deny or cancel a trademark registration if the mark is considered “disparaging.”

In doing so, the Federal Circuit swallowed a 69-year-old provision of the Lanham Act — and its decision could lead to repercussions in other trademark disputes and overall First Amendment litigation.

In a 10-2 opinion of an en banc Federal Circuit, Judge Kimberly Ann Moore wrote:

“It is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys.”

The Federal Circuit found that granting the government the power to determine whether a mark was “disparaging” is a content-based regulation; thus, it is presumptively unconstitutional.

“It is beyond dispute that § 2(a) discriminates on the basis of content in the sense that it ‘applies to particular speech because of the topic discussed.’”

“Content-based regulations are presumptively invalid.”

The dispute came before the Federal Circuit after an Asian-American rock band named The Slants was denied federal registration because its mark was deemed disparaging.

“Whatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others. Even when speech ‘inflict[s] great pain, our Constitution protects it ‘to ensure that we do not stifle public debate.'”

The NFL’s Washington Redskins are currently fighting a similar battle in the U.S. Court of Appeals for the Fourth Circuit. Although the Federal Circuit’s decision is not binding on the Fourth Circuit (potentially opening up a circuit split and U.S. Supreme Court review), its rationale might influence the Fourth Circuit in determining whether to uphold the USPTO’s cancellation of the Redskins trademark.

The Federal Court’s opinion could lead to litigants using a similar First Amendment argument to challenge other laws not previously thought of as constitutional violations. In this case, the Circuit compared registering trademarks to the government issuing parade permits, copyright registrations, drivers licenses, and property records. 

For more coverage of the Federal Circuit’s opinion, see THR, NPR, and Techdirt.

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FCC withdraws support of NFL blackouts; Congress threatens action

In a sign of changing with the times, the Federal Communications Commission (FCC) revoked its long-standing support of the NFL’s blackout policy on Tuesday.

The NFL’s policy blocks all local broadcasts of football games if a team does not sell a certain amount of tickets 72 hours before kickoff. For years the FCC has supported this rule by prohibiting cable and satellite operators from airing the games that are blacked out on local broadcast stations. In an 5-0 vote, the FCC repealed its prohibition of cable and satellite operators airing blacked out games.

The FCC’s Order found that “sports blackout rules are no longer justified in light of the significant changes in the sports industry since these rules were first adopted nearly forty years ago.”

The reasoning behind the NFL’s blackout policy is to encourage ticket sales and attendance at games, but the policy hasn’t been invoked much in recent years. The NFL only blacked out two games last season.

The FCC’s decision merely means that the federal government no longer backs the NFL’s policy. The NFL can still enforce blackouts on its own. It will just not have the protection of the FCC.

Congress, specifically Senators John McCain and Richard Blumenthal wrote a letter to NFL Commissioner Roger Goodell yesterday asking the NFL to rescind its blackout policy. In the letter, McCain and Blumenthal wrote:

If the NFL fails to show leadership to finally end blackouts once and for all, Congress will be forced to act. We urge you to proactively rescind NFL policies that prevent loyal fans from enjoying the game and reform those practices that cause the league to fall short of the obligation it has to the American public.

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