©2016. Published in Landslide, Vol. 8, No. 3, January/February 2016, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
Feature
The Longstanding Pro Bono Battle Challenging the Washington Football Team Trademarks
Victoria F. Phillips and Ryan M. Van Olst
The battle over the “Redskins” federal trademark registrations received significant attention following the Trademark Trial and Appeal Board’s (TTAB’s) order to cancel the registrations. More recently, the U.S. District Court for the Eastern District of Virginia affirmed the TTAB’s decision, again highlighting the legal dispute over the “Redskins” registrations. Less known are the 20 years, thousands of billable hours, and millions of dollars in pro bono legal representation spent on the case.1 Drinker Biddle & Reath LLP (Drinker Biddle) has represented the petitioners pro bono since 2003. Partner Jesse Witten currently leads the firm’s representation.
In the 1992 case Harjo v. Pro-Football, Inc., a group of Native Americans petitioned to cancel six trademark registrations on the grounds that the marks were disparaging.2 The petition targeted the third wealthiest team in the NFL, the Washington Redskins.3 The TTAB ruled in favor of Suzan Harjo and the other Native American petitioners, but the case was later dismissed by the U.S. Court of Appeals for the District of Columbia Circuit on the grounds that the petitioners were barred by the doctrine of laches for delaying too long after reaching the age of majority to file their petition for cancellation.4 While Harjo was on appeal to the D.C. Circuit, another group of Native Americans filed a second petition in Blackhorse v. Pro-Football, Inc. in 2006.5 The Blackhorse case resulted in the cancellation of six “Redskins” federal trademarks by the TTAB, propelling the controversy into the national spotlight.
The district court recently affirmed the TTAB’s ruling in Pro-Football, Inc. v. Blackhorse.6Although Pro-Football filed a notice to appeal in the Fourth Circuit on August 6, 2011,7 the TTAB’s decision in Blackhorse represents a significant milestone for Drinker Biddle and the petitioners. At Drinker Biddle, a committee of lawyers decides whether to take on a particular pro bono case using criteria similar to the American Bar Association’s pro bono guidelines.8 “Of course, we would turn down something if there was a conflict, as we would turn down any matter,” said Witten, “but there is no ideological litmus test and our firm has taken cases that would be conservative on the political spectrum, and also cases that would be considered liberal, and everything in between.”
A different firm handled the initial Harjo case from 1992–2003. As the case was appealed, members of the original firm consulted Drinker Biddle of counsel Norm St. Landau for advice. Drinker Biddle partner Phil Mause went on to represent the plaintiffs on appeal. As appeals and remands from the district court in Harjo continued for more than six years, Drinker Biddle also took on the new set of Native American petitioners in 2006.
Witten first joined Drinker Biddle as a commercial litigator in 2009, and he was already familiar with the highly publicized case against the “Redskins” trademark. “Like anyone who reads the Washington Post, I had some vague awareness of the case, just from the articles that had been published on it over the many years, before I wandered into this law firm that was actually handling the case and wound up taking it over,” said Witten. Witten had some capacity as he was building his practice at the firm, and by coincidence, Mause asked Witten if he would be interested in taking the case over once Mause retired. “I was once given the advice that it’s always a good idea to take on an interesting and complex case,” said Witten, “and so I thought I would.” He began working on the case in 2010.
Even before Witten started working on the case, Suzan Harjo, a petitioner in the original Harjo case, expressed an interest in filing a second petition while the first case was awaiting appeal. Other interested Native Americans contacted her about the new petition, including activist Amanda Blackhorse and individuals as young as 18 (potentially preventing a repeat of the D.C. Circuit’s dismissal for laches in the Harjo case). Harjo was executive director of the National Congress of American Indians (NCAI) in the 1970s and 1980s, and became a witness in the second case, Blackhorse v. Pro-Football. The NCAI is the oldest, largest national organization of Native American tribes.9 The legal standard applied by the TTAB in Blackhorse was whether the trademark registrations at issue contained matter that “may disparage” at the time of their registration, which included the years 1967, 1974, 1978, and 1990.10 For the Blackhorse appeal in the U.S. District Court for the Eastern District of Virginia, both sides were permitted to supplement the record with additional evidence, and both sides did. “So we boarded the time machine back to 1967 and generated additional evidence from the 1960s and 1970s,” said Witten.
The Drinker Biddle team located and introduced several additional pieces of evidence in Blackhorse that were not present in the original Harjo case. Suzan Harjo testified with former NCAI vice president Raymond Apodaca as to positions and activities of the NCAI during that period. The testimony of Leon Cook, president of the NCAI in 1972, was introduced about a 1972 meeting demanding a change in the team name among leaders of different native organizations.11 That meeting included the president of the Washington Redskins NFL team at the time. The Drinker Biddle team also introduced a dictionary from 1898 defining the term “Redskin” as offensive, as well as a scholarly article from 1962 about the use of Indian slang at the Haskell Institute. Haskell was then a vocational school for Native American high school graduates that subsequently became a full University.12 The article, which was coauthored by an instructor at Haskell and a professor at Kansas University, described the different unique slang spoken by the students at Haskell. The authors found that nearly all of the students resented being called “redskins” in 1962, five years prior to the earliest “Redskins” federal trademark registration issued in 1967.
To date, Drinker Biddle has spent more than 9,000 billable hours and roughly $3.5 million in pro bono legal services for Suzan Harjo, Amanda Blackhorse, and the other Native American petitioners.13 “Almost all of my clients are big corporations, so it was really a pleasure to have represented these five individuals. They are really great people,” said Witten. “Some of them I would say are friends now, and they have such an interesting background and personal history which is so different from mine. It really reminds you of just how many different stories there are out there in the United States.” It was not until Witten met Amanda Blackhorse that he learned that there are tens of thousands of people living on the Navajo reservation who speak Navajo as their first language and the language they use with their families. English is commonly learned as a second language.
Drinker Biddle has sacrificed more than just billable hours in its pro bono representation in Harjo and Blackhorse. The pro bono work performed by Witten and others at Drinker Biddle may have disqualified the firm from potentially lucrative work related to the NFL. Former Drinker Biddle chairman Alfred Putnam noted that the firm has been precluded from opportunities to represent the NFL due to the conflicts posed by Blackhorse and Harjo.14 “We understood that we were unable to take work from the NFL and we have some regret about that, but . . . our clients were our clients, so there was nothing to be done,” Putnam said in a recent interview.15 Drinker Biddle will continue representing Amanda Blackhorse and the other four clients in Blackhorse on appeal.
Regardless of the final outcome in Blackhorse, there are signs that the U.S. Patent and Trademark Office (USPTO) supports the plaintiff’s view that the “Redskins” mark is offensive to a substantial composite of the Native American population. The recent cancellation in Blackhorse is the second time the USPTO has cancelled the marks at issue on the grounds that they may be “disparaging.” The first was the USPTO’s initial ruling in Harjo, later reversed by the D.C. Circuit. Since 1992 (the same year Harjo was filed), the USPTO has refused 12 new federal registrations relating to the marks, many on the grounds that that the marks may be “disparaging” for the first time.16 Witten believes that the original 1992 petition raised the awareness of USPTO staff to the fact that “Redskins” is a term that may disparage Native Americans. “Most Indians live in the West and they aren’t really well concentrated in the Washington, D.C., area,” said Witten, “so it’s understandable that the examining attorneys who would have been reviewing these trademark registration applications from 1967 to 1990 might not even have known a Native American.” Witten believes the examining attorneys were accustomed to the football team name and may not have realized the term’s disparaging meaning. “Had they lived in rural Oklahoma, they might have had a very different understanding of how the term has been used.”
Several members of Congress agree with the USPTO. Since 2013, multiple bills have been introduced that would statutorily clarify “matter that may disparage” under the Lanham Act as including the term “Redskins” for the purposes of denying a federal trademark registration.17 The most recent reintroduction of the substance of that bill was by Congressman Honda of California in February of the current Congress. On behalf of his clients, Witten personally spoke to several members of the House and their staff, as well as Senate staff about the bill. As part of Drinker Biddle’s pro bono engagement, the firm provided technical support for the legislators drafting the bill by answering questions and providing information to legislators about the Lanham Act and Blackhorse decision. Witten thinks many members of Congress were very surprised to learn that, under the Lanham Act, Amanda Blackhorse and his other clients had to defend the decision of the USPTO to cancel the registrations. “They would have thought it would be more normal for the government to be defending its own decision,” said Witten. That is not how the statute was written, at least according to the judge who denied the petitioner’s motion to dismiss on those grounds in Blackhorse. According to Witten, when members of Congress heard that the USPTO was not defending its own decision in the litigation, they found it “outrageous” to put that burden on Amanda Blackhorse.
Witten said of his own experience working on the Blackhorse case, “I did not appreciate how much work would be involved . . . . [T]he team has approached this from a perspective of leaving no stone unturned, so it’s been a very costly and time-consuming undertaking for our firm. But when you take on a pro bono matter you don’t do it only so long as it’s easy and convenient, and if you make that commitment you have that professional responsibility to do it in a first-rate way.” When asked whether he was personally a fan of the Washington NFL team prior to this case, Witten replied, “Yes definitely I was a fan and still find myself rooting for them; I just wish that they would change the name.”
Endnotes
1. Gina Passarella, Drinker Biddle Leads Plaintiffs to Victory in NFL Redskins Case, Legal Intelligenser, June 19, 2014.
2. 50 U.S.P.Q.2d 1705 (T.T.A.B. 1999).
3. NFL Team Valuations: Washington Redskins, Forbes (Aug. 2014), http://www.forbes.com/teams/washington-redskins/.
4. Pro-Football, Inc. v. Harjo, 565 F.3d 880, 881 (D.C. Cir. 2009).
5. 111 U.S.P.Q.2d 1080 (T.T.A.B. 2014).
6. No. 1:14-cv-01043-GBL-IDD (E.D. Va. 2015), available at http://patentlyo.com/patent/2015/07/affirms-cancellation-redskin.html
7. Complaint, Pro-Football, Inc. v. Blackhorse, No. 1:14-cv-01043-GBL-IDD (E.D. Va. Aug. 14, 2014).
8. ABA, Standards for Programs Providing Civil Pro Bono Legal Services to Persons of Limited Means (Aug. 2013), available at http://www.americanbar.org/groups/probono_public_service/policy/standards.html.
9. Nat’l Cong. of Am. Indians, http://www.ncai.org/ (last visited Aug. 25, 2015).
10. Blackhorse, 111 U.S.P.Q.2d 1080.
11. Memorandum in Support of Petitioner’s Motion for Summary Judgment, Blackhorse, 111 U.S.P.Q.2d 1080 (T.T.A.B. 2014) (filed Feb, 26, 2015) (Cancellation No. 92.046,185).
12. School History, Haskell Indian Nations U., Article no longer available. (last visited Aug. 25, 2015).
13. Passarella, supra note 1.
14. Id.
15. Id.
16. Erik Brady, How Will Pending Trademark Ruling Impact Redskins Name?, USA Today (May 28, 2014), http://www.usatoday.com/story/sports/nfl/redskins/2014/05/28/washington-redskins-mascot-controversy-trademark-daniel-snyder/9680563/.
17. See, e.g., The Non-Disparagement of Native American Persons or Peoples in Trademark Registration Act of 2015, H.R. 684, 114th Cong. (2015); The Non-Disparagement of Native American Persons or Peoples in Trademark Registration Act of 2013, H.R. 1278, 113th Cong. (2013).