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REDSKINS' GOOD WEEK GETS BETTER: COURT HOLDS DISPARAGING TRADEMARKS PROTECTED BY FIRST AMENDMENT

by Nathan Siegel -
On the field, the Redskins are now poised to make a run at the NFC East title much earlier than even their most optimistic followers anticipated after the Robert Griffin debacle. Off the field, the club’s insistence on maintaining its name and logo in the face of public criticism received a major boost with a landmark decision issued today by the Federal Circuit Court of Appeals in In re Tam, a closely-watched case discussed in previous posts on this blog.

The entire Federal Circuit, sitting en banc, ruled 8-3 that the provision of federal trademark law (the Lanham Act) that allows the government to deny registration of “disparaging” trademarks is unconstitutional under the First Amendment. In Tam, the Trademark Office refused to register the name of an Asian-American band, “The Slants”, on the rather ironic grounds that it disparages Asian-Americans. The Office declined the registration even though it was obvious that the band’s point was to express ethnic pride and lampoon such racial stereotypes.

Since 1981 the Federal Circuit, which oversees certain types of patent and other intellectual property cases, has consistently ruled that the Lanham Act’s disparagement provision is constitutional. But in today’s decision it reversed itself. It found that the point of the disparagement provision is to empower the government to use its oversight over trademarks to express disapproval of messages conveyed by some marks. The Court held decisively that the core point of the First Amendment is that the government has no business trying to regulate the point of view or message expressed by a person or commercial entity when it chooses a particular trademark.

The Trademark Office also applied the same “disparagement” provision when it cancelled the registration of the Redskins’ trademark on the grounds that it demeans Native Americans. Both sides of the Redskins’ case filed amicus briefs in Tam, and today’s decision seems to almost go out of its way to repeatedly mention the case and signal that the Federal Circuit thinks the Redskins’ trademark was also wrongly cancelled.

The Redskins’ appeal, which makes the same arguments that The Slants made here, is currently pending before a different court, the U.S. Court of Appeals for the Fourth Circuit. While today’s decision is therefore not binding in the Redskins’ case, it will surely be relied on heavily by the club to convince that court to reach the same result. And if the Fourth Circuit were to disagree, it would be very likely that the Supreme Court would step in to resolve the dispute.

That could happen in any event, as there other reasons that In re Tam might interest the Supreme Court. In recent years, the Court has shown increasing willingness to protect speech that that might be considered “commercial.” The precedent that Tam relied upon the most was Sorrell v. IMS Health, a 2011 decision in which the Supreme Court struck down as unconstitutional a state law restricting the use of pharmacy prescriptions for marketing purposes. Tam noted that even though trademarks, like pharmaceutical advertisements, are also typically treated as commercial speech, they are entitled to the same protection as core political speech when the object of regulation is the viewpoint or message they convey. Many court-watchers believe the Court is interested in pushing the boundaries of protected commercial speech even further, and Tam, the Redskins’ case, or both could provide an interesting opportunity for it to do that.

Nathan Siegel is a partner at Levine Sullivan Koch & Schulz, LLP, where he regularly represents clients in disputes over intellectual property rights and the First Amendment.
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WILL MADDEN NFL REACH THE SUPREME COURT? ESA AND OTHERS FILE AMICUS BRIEFS SUPPORTING ELECTRONIC ARTS

by Nathan Siegel -
The Entertainment Software Association, whose members include 30 publishers of computer and video games, today filed an amicus brief supporting Electronic Arts’ petition for the Supreme Court to review the Ninth Circuit’s decision in Davis v. Electronic Arts. In Davis, the Ninth Circuit re-affirmed one of its decisions in the O’Bannon litigation, which held in 2013 that EA did not have a First Amendment right to use the likenesses of college athletes in its NCAA video games. Davis involves the same claims, except that the plaintiffs are a putative class of retired NFL athletes and the games they challenge are the pre-2010 versions of Madden NFL.

Those versions of the game included the option to play with “historic” teams, in addition to current NFL rosters. EA stopped including that feature in Madden NFL in 2010 after lawsuits began to be filed.

ESA’s amicus brief argues that the Davis decision conflicts with a 2011 Supreme Court decision, in a case involving ESA, which held that video games are entitled to the same status under the First Amendment as other, more traditional forms of media, like books and movies. Davis held that EA’s games are not constitutionally protected because they are too realistic, a result that contradicts well-settled First Amendment doctrine that protects the dissemination of accurate speech about real people and events, like biographies. The brief further argues that Davis threatens the viability of other reality-based electronic games, including popular games that simulate events like presidential elections and historic military campaigns.

ESA’s amicus brief also notes that Davis and some other lower court decisions about realistic video games seem to reflect unwarranted judicial wariness about new media technologies, much like the negative reaction that many courts initially (but mistakenly) had to the introduction of movies a century ago. Finally, the brief argues that the core problem with the way many lower courts handle this area of law is that they misunderstand the Supreme Court’s decision almost four decades ago in Zacchini v. Scripps-Howard Broadcasting. Zacchini held that a local news station did not have a First Amendment right to broadcast in its entirety the live stunt that a human cannonball artist performed at a county fair. ESA argues that Zacchini was simply a dispute over who owns the broadcast rights to entire live entertainment events, but lower courts have instead misconstrued it to apply far more broadly to any dispute over anyone’s likeness in any form of media.

Amicus briefs supporting EA were also filed by a group of 31 law professors headed by Professors Eugene Volokh at UCLA School of Law and Jennifer Rothman at Loyola Law School, as well as by the Electronic Frontier Foundation and several other organizations. Those briefs argue that the Supreme Court needs to clarify how the First Amendment limits the right of publicity, because lower court decisions are so conflicting that the same type of work may be protected in one place but unlawful in another. They also argue that Davis got the First Amendment wrong because it discriminates against certain forms of media like video games and comic books, while favoring more traditional genres like regular printed books.

Davis has been the subject of posts on this blog in the past, but so far has been something of a sleeper case compared to the high-profile O’Bannon litigation and the Dryer lawsuit by retired NFL athletes over the use of their likenesses in NFL Films documentaries (which is pending in the Eighth Circuit). However, that will change quickly if the Supreme Court agrees to review Davis. The Court is likely to take that question up around January 2016, so stay tuned.

Nathan Siegel represents the Entertainment Software Association in its Supreme Court amicus brief in Davis.
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ELECTRONIC ARTS SEEKS SUPREME COURT REVIEW OF VIDEO GAME CASES THAT COULD CALL O’BANNON INTO QUESTION

by Nathan Siegel -
A crucial but little-noticed aspect of last week’s O’Bannon decision from the U.S. Court of Appeals for the Ninth Circuit was that it rested largely on its decision two years ago, in the companion Keller case, that student-athletes have a right of publicity to control the use of their names, images, and likenesses in video games produced by Electronic Arts (“EA”). O’Bannon found that EA would therefore have been willing to pay to license the athletes’ images in the games, as it does with current professional athletes. And because the NCAA’s rules bar such compensation in any form, the Ninth Circuit concluded those restrictions established the legal injury necessary to permit the athletes to sue the NCAA under the antitrust laws.

But what if the Keller decision turns out to be wrong? Could that potentially undermine O’Bannon? At least one member of the O’Bannon court’s three-judge panel, Chief Judge Sidney Thomas, suggested that he believes it probably would. Judge Thomas, who dissented in Keller, wrote in a footnote that “absent Keller, there is a serious question as to whether the plaintiffs have established the requisite antitrust injury in fact” to even get in the courtroom door.

We may now be one step closer to learning the answer. Yesterday, less than a week after the O’Bannon decision (the timing is coincidental), EA filed a petition asking the U.S. Supreme Court to review the Ninth Circuit’s right of publicity decisions concerning video games. EA asks the Court to overrule them and find instead that the First Amendment protects EA’s right to use athletes’ images in its video games without permission or compensation.

The specific case EA wants the Court to review is the Ninth Circuit’s decision in Davis v. Electronic Arts, which was issued earlier this year and has previously been discussed by this blog. The plaintiffs in Davis are a class of retired NFL players who challenge the feature of Madden NFL games that, until 2010, allowed gamers to play with “classic” NFL teams from the past, in addition to current rosters. That feature was discontinued after retired NFL athletes like Jim Brown began to file lawsuits.

The Ninth Circuit rejected EA’s First Amendment arguments for the same reasons that it ruled for the athletes in Keller. It found that EA needed to make a “transformative use” of the athletes’ images to be constitutionally protected, and Madden NFL failed that test because it closely replicated the reality of NFL athletes and games. Although technically EA’s petition only concerns Davis, not Keller (which was settled), in effect it challenges both because Davis relies entirely on Keller, as well as the Third Circuit’s similar 2013 decision in Hart v. Electronic Arts.

EA’s petition to the Supreme Court argues, as the author of this blog has argued in previous amicus briefs filed on behalf of media companies in video game cases, that the Ninth and Third Circuits got the First Amendment exactly backwards. The rationale of their decisions essentially punishes EA for producing video games that are accurate, and suggests that the Constitution instead requires creators of expressive media to distort (or “transform”) reality when they create works that relate to real people and events. As EA correctly notes, that makes no sense because the First Amendment first and foremost protects the dissemination of truth.

Davis is being closely watched because, if the Supreme Court were to take the case, it could have implications far beyond sports video games or even student-athlete compensation. The Supreme Court has never meaningfully addressed the right of publicity at all. As a result, the right of publicity has become one of the most contentious areas of media law and has produced much disagreement within lower state and federal courts about what the law should be. Unless the current case schedule changes, the athletes’ response to EA’s petition will be due in a month, and we may know soon after whether the legal battles between athletes, media companies, and the NCAA that have been waged for years will finally reach the Supreme Court.

Nathan Siegel filed amicus briefs on behalf of multiple media companies in the O'Bannon, Keller, Hart, and Davis cases.
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Why the Innocence of Muslims Case Could Sink O'Bannon

by Nathan Siegel -
Last week the U.S. Court of Appeals for the Ninth Circuit rather dramatically stayed the injunction in the O’Bannon case, just twelve hours before NCAA schools would have been allowed to pay student-athletes up to $5,000 annually. The stay takes away any immediate deadline pressure for the court to rule, so it may be quite a while before a final decision is announced. 

Since oral argument in the case was held last March, however, both the Ninth Circuit and the influential Second Circuit have issued novel decisions in copyright cases whose rationale should call into question the expansive right-of-publicity theory the athletes assert in O’Bannon. Neither copyright dispute involved athletes or even publicity rights, but the courts’ reasoning in both cases illustrates why the publicity rights regime the O’Bannon plaintiffs advocate makes no practical sense.

As this blog has discussed previously, one of the arguments the O’Bannon plaintiffs make is that they have a right to consent to, and to be compensated for, the use of their names and likenesses in the broadcasts of the games in which they compete. Whether the Ninth Circuit will decide it needs to address that legal question to resolve the athletes’ antitrust claims is unclear. But in the event that the court does address the publicity rights question, the athletes’ publicity theories simply defy common sense, as multiple media entities have pointed out in amicus filings. 

The athletes contend that everyone who performs in a sporting event and whose name or likeness appears on television has a right to control the broadcast of their image. If that is so, then to obtain the rights to broadcast a game, a television network would need to obtain consents from every conceivable “performer” who might appear on TV. That could include literally hundreds of athletes, cheerleaders, coaches, trainers, marching band members, and numerous others whose permissions would be required for just a single broadcast. And, in theory, any one of those people could demand not to be shown or mentioned at all, or hold out for the best deal, or even demand that the network use their image only on the condition that the announcers say nice things about them. The resulting legal rights regime would be absurdly chaotic and would also undermine the broadcaster’s ability to fairly and neutrally report the game. 

For this very reason, since the dawn of radio in the 1930s, broadcasting law has recognized that the producer of a sporting event (such as a league, a team, or a stadium authority, depending upon how the particular sport is organized) owns the rights to control the original broadcast of the event. That is why networks pay entities like the NCAA and the NFL billions of dollars for broadcast rights, rights that would mean little if thousands of additional publicity rights agreements needed to be individually negotiated with each athlete and other “performer.”  

Strikingly, a very similar issue was at the heart of a copyright lawsuit over a movie trailer for the unreleased film Innocence of Muslims that was posted on YouTube. In that case, Garcia v. Google, the plaintiff was an actress who was deceived into participating in a cameo role in a film she was told would be a desert thriller. Instead, the film turned out to be a crude, anti-Islamic polemic and the actress’s lines were dubbed over with a voice asking, “Is your Mohammed a child molester”? 

After receiving numerous death threats, the actress sued Google, YouTube’s parent company, to try to force it to take the video clip down from YouTube. Her legal theory, which initially met with some success, was that she owned a copyright in her five-second performance, so neither the film nor the trailer could be exhibited without her consent. 

However, in May the Ninth Circuit, sitting en banc, rejected that theory. While acknowledging the difficulty of the actress’s plight, the court noted that the casts of movies like Ben-Hur or Lord of the Rings can number tens of thousands, and so “[t]reating every acting performance as an independent work would . . . be a logistical and financial nightmare.” It even pointed out that “filming group scenes like a public parade, or the 1963 March on Washington, would pose a huge burden if each of the thousands of marchers could claim an independent copyright” – scenarios that closely resemble televising live sporting events. Rather than creating a legal regime that would “tie the distribution chain in knots,” the court concluded that copyright law more sensibly vests title to a movie in the “author” (or authors) of the film as a whole.

A month later, the Second Circuit reached the same conclusion in a more conventional dispute between a director and a film company. The film company owned the rights to the movie, but the director claimed that he too was entitled to a copyright in his “creative contribution” to the work. The court followed Garcia in concluding that recognizing such rights in every participant in a movie would invite legal chaos. It noted, “[f]ilmmaking is a collaborative process typically involving artistic contributions from large numbers of people, including – in addition to producers, directors, and screenwriters – actors, designers, cinematographers, camera operators, and a host of skilled technical contributors. If copyright subsisted separately in each of their contributions to the completed film, the copyright in the film itself . . . could be undermined by any number of individual claims.” Once again, the same could be said of all the people who contribute to a sporting event.

As the O’Bannon plaintiffs themselves have often emphasized, the publicity rights they claim in their athletic performances would be quite analogous to the type of rights normally defined by copyright law. But two appellate courts have now made clear that such copyrights do not exist, and for very sound reasons that should apply equally to sports broadcasts.

Nathan Siegel represented multiple media entities who filed an amicus brief in the O’Bannon appeal. 
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Will Today's Decision Cancelling the Redskins' Trademark Registration Survive Appeal?

by Nathan Siegel -
Today Virginia federal judge Gerald Lee upheld the Trademark Trial and Appeal Board’s decision to cancel the Washington Redskins’ trademark registration on the grounds that the team’s name “may disparage” Native Americans. Judge Lee rejected the team’s argument that Section 2(a) of the Lanham Act, which authorizes the Trademark Office to refuse to register potentially disparaging trademarks, violates the First Amendment. But Judge Lee’s constitutional reasoning, which embraces a highly expansive view of the federal government’s power over intellectual property created by private citizens, may well not withstand appellate scrutiny.

Judge Lee concluded that the Trademark Office’s decisions to register trademarks are the government’s speech. Therefore, he reasoned, the Board may do more or less whatever it wants, since a decision to deny the benefits of federal registration does not prevent the private applicant from using the trademark or expressing any views about it. In reaching that conclusion, the court relied heavily on the Supreme Court’s recent decision that the state of Texas may refuse to commission a license plate displaying the Confederate flag because the contents of vehicle license plates are government speech. 

However, the analogy to vehicle license plates is seriously flawed. A state’s vehicle licensing regime is entirely a creation of the state, and private citizens display license plates because the state requires them to. The states usually even make and issue the plates. By contrast, intellectual property by its very nature is created by and belongs to private citizens. 

Copyright and trademark laws merely regulate and facilitate the creation and use of private intellectual property, and are far more analogous to numerous other ways that government regulations affect private speech – such as permit requirements for parades and demonstrations, or noise ordinances restricting outdoor rock concerts. And it axiomatic that when the government undertakes to regulate private speech, it may not normally disfavor speech on the basis of its viewpoint, even if it may be offensive. For example, the Virginia court’s logic would seem to apply equally to copyright registration, which is also a federal government function. Yet that would mean Congress could empower the Copyright Office to reject any book, novel, article, film, etc. that in its view “may disparage” another group. 

Curiously, the Virginia court's decision also relies extensively on a 2002 decision by the U.S. Court of Appeals for the Fourth Circuit, which upheld a right to have a Confederate flag on Virginia’s license plates – even though that 2002 ruling has probably now been abrogated by the Supreme Court’s Texas decision. In any event, here too Judge Lee misconstrued First Amendment principles. 

The Fourth Circuit’s license plate decision notes that whether the government exercises “editorial control” over the content of the speech in dispute is an important factor in determining whether the speech belongs to the government. That may be so, but that factor clearly favors the Redskins. Proposed trademarks are created and submitted by applicants, and the Trademark Board either accepts or rejects their registration. It does not undertake to alter, change, or edit the design or content of those trademarks, just as the Copyright Office does not purport to re-write the content of books. By contrast, states routinely create the content of their license plates.

Judge Lee, however, construed “editorial control” to mean the power to accept or reject trademark applications. In other words, the very fact that the government undertakes to restrict speech supports its right to do so. That logic turns the First Amendment on its head, because the government’s power to reject trademark applications for viewpoint-based reasons is the very authority that is being challenged.

As discussed in a previous post on this blog, the U.S. Court of Appeals for the Federal Circuit has recently expressed serious doubts about whether the Lanham’s Act disparagement clause remains constitutional. The Redskins will now likely appeal to that court, setting up a showdown that could eventually end up in the Supreme Court. 
 
Nathan Siegel is a partner at Levine Sullivan Koch & Schulz, LLP, where he regularly represents clients in disputes over intellectual property rights and the First Amendment. 
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