Matthew Silverstein’s (JD ’17) JBIPL article judged ‘one of the best’ this year by IPL Review

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An article written by Matthew Silverstein (JD ’17) and published in the Wake Forest Journal of Business and Intellectual Property Law (JBIPL) has been judged as one of the best law review articles related to intellectual property published the past year.

Silverstein’s article, “Pro-Football, Inc. V. Blackhorse and the First Amendment: Does Classifying Trademarks as Government Speech Undermine Free Speech Protections?,” will be reprinted in the 2017 edition of the Intellectual Property Law Review, according to Karen Tripp, an editor of the Review. The Review is an annually published anthology by Thomson Reuters (West).

Silverstein’s article was originally printed in the Fall 2016 issue of the Wake Forest Journal of Business and Intellectual Property Law.  The introduction follows:

The Washington Redskins garner a great deal of media attention. On one hand this is not unexpected; they are the third most valuable franchise in the National Football League with an approximate worth of $2.85 billion. They play in a stadium that holds 85,000 spectators. Over the course of the team’s history, they have won three Super Bowls. Numerous Redskins are enshrined in the Pro Football Hall of Fame. All of these combine to indicate that this attention comes from its existence as a storied franchise in a nation obsessed with football.

However, this attention, more often than not, is now focused on the name of the team alone. The controversy over whether the team’s name, the “Redskins”, offends Native Americans has attracted comments from all over the globe, from the President of the United States down to every-day citizens. And this debate has not been confined to merely the popular press, legal commentators have also weighed in on both sides of the argument. While this controversy has often been very spirited, the Redskins have refused to change the name of the team.

Because of this staunch refusal, the debate has been pushed further into the public sphere. Starting in 1992, several Native Americans have challenged the Redskins trademark in court hoping that cancellation of their marks would force the team to change its name. After several setbacks for the Native American litigants, in June 2014 the United States Patent and Trademark Office’s Trademark Trial and Appeal Board held that the Redskins trademark was abusive under Section 2(a) of the Lanham Act and thus vacated the mark.

This action was affirmed in July 2015 by Judge Gerald Lee of the Eastern District of Virginia. The court upheld this decision on numerous grounds, including that the trademark program, operated by the United States Patent Office, constitutes government speech and thus is exempt from the First Amendment protections the Redskins allege their trademark carries.

This decision becomes questionable when viewed in light of In re Tam, a recent decision of the Court of Appeals for the Federal Circuit, finding Section 2(a) unconstitutional as a violation of the First Amendment. The analysis in Tam, when applied to the Blackhorse decision, demonstrates the significant problems that underlie the district court’s decision. It is unclear if trademarks are government speech in the first place. Even if they are, the degree to which Section 2(a) allows the federal government to engage in unconstitutional content-based regulations and viewpoint discrimination in the arena of speech is troubling. The federal government could avoid this situation entirely if it decides to refuse to enforce 2(a) in a way that discriminates against mark holders who, like the Redskins, utilize controversial marks.