U.S. Supreme Court Grants Cert in Lee v. Tam


This case addresses the same issue brought up by Pro-Football v. Blackhorse (section 2(a) of the Lanham Act), which is currently in the 4th Circuit. Pro-Football, Inc. petitioned the Court to skip the 4th Circuit and be joined to the Tam v. Lee case if it was granted here. There is no decision on that at this time.

Pro-Football v. Blackhorse coverage here.

Tam v. Lee coverage here.

Story from Law360 here.

Thanks to SD for the heads up.

Snarky News Commentary about Pro-Football Inc.’s Cert Petition

Hey it’s Friday! 🙂

From Above the Law, here is “Redskins Lawyers Act Like Complete Jerks, Surprising Nobody.”

An excerpt:

As Alison Frankel of Reuters reports, the Redskins’ attorneys from Biglaw heavyweights Arnold & Porter and Quinn Emanuel Urquhart & Sullivan wrote:

“This court relies on a robust adversarial process to fully vet questions before it,” the cert petition said. “The Team, not (The Slants), is the best suited to serve this function here.”

The ATL piece is pretty snarky, but raises a few interesting points, about which I have no intention of being snarky.

If you’ve read cert pool memos, then you might know this is a thing. Clerks will assess the quality of a brief and the name recognition or lack thereof in analyzing whether to recommend a grant. A poorly written petition in a case that is otherwise certworthy may be denied while the Court waits for the better vehicle. The kind of candor from the Supreme Court bar in a cert petition, I would have thought, seems ripe for snarky commentary. But the “Team”‘s lawyers really are among the very best.

Also, “The Slants” are doing all this for the right to be be satirical. Not so the “Team”! These are very, very different postures. And surely the Court knows this.

Finally, trying to piece together the strategy here now that there appear to be only eight Justices for the foreseeable future. The Federal Circuit ruled in favor of “The Slants”, so IF there is a 4-4 ideological split on the Court on this issue (HUGE IF), then they prevail and Section 2(a) of the Lanham Act is unenforceable in the Federal Circuit. The “Team” lost at the district court level, and who knows what was going to happen at the Fourth Circuit, so they’re trying to short circuit the “Slants”, but for what purpose? Really, there’s no help for anyone at SCOTUS if there’s a 4-4 split. Unless the “team”‘s counsel suspects there’s not really a 4-4 split! Of course. I wonder what the strategy sessions have concluded in terms of each Justice. Surely there are the four First Amendment stalwarts that signed on to Citizens United and Hobby Lobby (the Chief, Kennedy, Thomas, and Alito), so which of the other four is likely to join?

Pro-Football Inc. v. Blackhorse Cert Petition


Question presented:

The “disparagement clause” in § 2(a) of the Lanham Act bars the registration of a trademark that “may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” 15 U.S.C. § 1052(a). The questions presented are:

1. Whether § 2(a)’s disparagement clause violates the First Amendment.

2. Whether § 2(a)’s disparagement clause is impermissibly vague, in violation of the First and Fifth Amendments.

3. Whether the government’s decades-long delay between registering a trademark and cancelling the registration under § 2(a)’s disparagement clause violates due process.

The Fourth Circuit matter is still pending. This is an effort to jump ahead of the process to join another petition currently pending captioned Lee v. Tam. We posted about that Federal Circuit decision here.

Amicus Briefs in Pro-Football v. Blackhorse (4th Cir.)

59 Brief of Amici Curiae Native American Organizations in Support of Appellees

60 Brief of the Navajo Nation as Amicus Curiae in Support of Defendants-Appellees

61 Brief of Amici Curiae Fred T. Korematsu Center for Law and Equality, National Native American Bar Association, National Asian Pacific American Bar Association, Native Hawaiian Bar Association, and California Indian Law Association in Support of Defendants-Appellees and Affirmance

Link to previous postings in the trademark case here.

Federal Court Orders Cancellation of Washington Football Team’s Trademarks Registration

Here are the materials in Pro-Football, Inc. v. Blackhorse (E.D. Va.):

53 DCT Order on Briefing Schedule

56 Pro-Football Motion for Summary J on Constitutional Claims

71 Blackhorse Motion for Partial Summary J

100 Pro-Football Cross Motion

106 Blackhorse Second Motion for Partial Summary J

109 US Motion for Summary J

118 Blackhorse Reply in Support of 71

119 Pro-Football Reply in Support of 56

126 Blackhorse Reply in Support of 106

127 US Reply in Support of 109

128 Pro-Football Reply in Support of 100

161 DCT Order

Prior posts here, here, here, here, and here.

TTAB materials here.

Washington Football Team Argues Lanham Act/TTAB Decision Violates First and Fifth Amendments

Here is the opening brief in Pro-Football Inc. v. Blackhorse (E.D. Va.):

53 DCT Order on Briefing Schedule

56 Pro-Football Motion for Summary J on Constitutional Claims

According to the briefing schedules, briefs are going to be flying fast and furious. We’ll try to keep up.

Prior materials on the federal government intervention here, and the now-denied motion to dismiss here.

Federal Court Denies Motion to Dismiss Washington Football Team’s Suit against the Blackhorse Plaintiffs

Here are the materials in Pro-Football Inc. v. Blackhorse (E.D. Va.):

1 Complaint + Exhibits

19 Motion to Dismiss

25 Opposition

27 Rebuttal Brief

40 DCT Order Denying Motion to Dismiss

Blackhorse Plaintiffs Move to Dismiss Washington Football Team’s Suit

Here is the motion to dismiss in Pro-Football Inc. v. Blackhorse (E.D. Va.):

19 Motion to Dismiss

An excerpt:

In June 2014, the Trademark Trial and Appeal Board (“TTAB”), a component of the United States Patent and Trademark Office (“USPTO”), decided that the USPTO acted contrary to federal trademark law when it issued six trademark registrations to Plaintiff Pro-Football, Inc. (“PFI”), the owner of the Washington NFL team. The TTAB concluded that the marks were not eligible for registration under 15 U.S.C. § 1502(a) because they contain matter that “may disparage” Native Americans.1 Accordingly, the TTAB scheduled the registrations for cancellation by the Director of the USPTO. The TTAB acted after five Native American individuals, the defendants in this action (“Blackhorse Defendants”), petitioned it to cancel the registrations.

PFI could have appealed to the Federal Circuit, where the USPTO could have defended the TTAB decision, but PFI declined to do so. See 15 U.S.C. § 1071(a). Instead, PFI filed this civil action against the Blackhorse Defendants, under 15 U.S.C. § 1071(b)(4).

PFI’s dispute, however, is with the USPTO, not with the Blackhorse Defendants. PFI alleges that the TTAB — not the Blackhorse Defendants — acted unlawfully by scheduling its registrations for cancellation. Likewise, PFI seeks relief only against the USPTO — a declaratory judgment to prevent the Director of the USPTO from carrying out the cancellations. PFI alleges no conduct on the part of the Blackhorse Defendants other than filing a petition with the TTAB. It does not allege that they acted unlawfully or tortiously. Nor does PFI allege that the Blackhorse Defendants claim any interest in PFI’s trademarks or in similar trademarks. This lawsuit will not affect the legal rights or obligations of the Blackhorse Defendants in any way. As a result, the Complaint should be dismissed for the following two reasons:

• The Blackhorse Defendants are not “parties in interest” who may be sued under 15 U.S.C. § 1071(b)(4); and

• This Court lacks subject matter jurisdiction because there is no “Case or Controversy” under Article III of the Constitution as between PFI and the Blackhorse Defendants.

The complaint is here.