Challenging the NFL's most beloved racial slur

Upon graduation from law school a quarter-century ago, working on pro bono legal matters was not at the forefront of my young legal mind. As a would-be intellectual property attorney, what skill or expertise could I meaningfully offer the traditional beneficiaries of general pro bono legal work? Given my specific field, it seemed clear that any potential business clients trying to build their intellectual property assets should expect to pay for the legal fees associated with the creation of those assets.

Little did I know that the groundwork for the pro bono case of my life was being laid even before I graduated from law school. My seven-year pro bono investment in a trademark case called Harjo v. Pro-Football, Inc. has enriched my life and professional experience as an intellectual property attorney in ways I couldn't imagine.

I wrote a student note on trademark genericness that was published in The Journal of Corporation Law and it was a finalist, but it did not win the prestigious Ladas Memorial Award in 1989. Yet, knowing about my interest in competing again, Charlotte Jones, then managing editor of The Trademark Reporter (TMR), encouraged me to continue writing, and provided me with a list of topics of interest to TMR.

The one that caught my eye was Section 2(a) of the Lanham Act's statutory prohibition on the federal registration of trademarks consisting of or comprising scandalous or immoral matter. Raised by a father who chaired the School of Religion at the University of Iowa, I was intrigued by topics of law and morality. But it was the dearth of case law interpreting Section 2(a) that sealed my commitment to write about this topic and I hoped to write what would become the seminal and authoritative piece on this overlooked yet fascinating portion of federal trademark law, dating back to the first federal Trademark Act of 1910.

Following graduation from law school, and a brief summer clerkship with Faegre & Benson, my wife and I packed up our life and drove a U-Haul van to Maryland with our dog to begin my work as a judicial law clerk in Washington, D.C. In my spare time from the court, and when I was not working on weekends as a licensed pharmacist, I continued to research Section 2(a). I quickly learned that it forbids the registration of not only scandalous and immoral matter, but also matter that may disparage. I also learned that the disparagement prong of Section 2(a) had even fewer cases decided under it than the handful of scandalous and immoral decisions.

Following the completion of my clerkship, we moved to the Twin Cities, where I rejoined Faegre & Benson's intellectual property group, continuing to advance the law review article in my spare time. Importantly, during the fall of 1991, the Atlanta Braves and the infamous "tomahawk chop" came to town for the World Series, spawning extensive media coverage of Native American protests. The gears started to turn in my mind about whether Section 2(a) might be an available cause of action for the protesters.

My stay at Faegre was brief because Dorsey & Whitney offered me the opportunity to be the firm's very first associate focused solely on trademark work. Shortly after joining Dorsey & Whitney, my article took a significant turn following the visit from the NFL's Washington team to the Twin Cities in January 1992 for the Super Bowl, again stirring even more intense Native American protests.

My impressions of the mascot protests from the previous fall had me turning to dictionaries for an understanding of the meaning of the Washington team's name, learning for the first time that the R-word shares the same definition as the N-word, the only difference being the race of people identified by each slur. Further research about the protests led me to Suzan Harjo, president of the Morning Star Institute, in Washington, D.C. We met, and after explaining Section 2(a), she earnestly requested our pro bono assistance to seek cancellation of the team's several R-word trademark registrations with the U.S.P.T.O. as disparaging to Native Americans.

Dorsey & Whitney provided enormous generosity and support in taking on the case. David Ranheim, the firm's pro bono partner at the time, was instrumental in gaining approval for such a high-profile case. We filed the Petition to Cancel on September 10, 1992, with coordinated news conferences in three cities.

A few months later, there was still quite a buzz about our petition to cancel, especially at the International Trademark Association's mid-year meeting. Skeptics saw it as a publicity stunt with no chance of success, since no trademark registration had ever been revoked before on those Section 2(a) grounds, but I later learned that a small group of experienced trademark attorneys had privately questioned both sides, and concluded among themselves, "Steve's going to win that case." Perhaps foreshadowing a favorable result, the next spring my labor-of-love law review article that I had been nurturing and developing since graduation, received the Brand Names Education Foundation's Ladas Memorial Award for 1992.

In fact, in 1999 we did win the Harjo case after a long, hard fought litigation battle. Each R-word registration was ordered canceled under Section 2(a) as containing matter that may disparage Native Americans.

Nevertheless, our adversary was determined not to allow the decision to stand. It appealed the decision to federal district court in D.C., and the case went up and down on appeal for the next decade. The Drinker Biddle firm picked up where Dorsey & Whitney left off and continued pressing the Harjo case forward, though it was ultimately overturned on the ground of laches. However, the underlying legal theory, claims, and mountain of evidence survived in a new case brought by a new generation of Native American leaders led by petitioner Amanda Blackhorse and lead counsel Jesse Witten of Drinker Biddle.

The Blackhorse petitioners finally prevailed before the Trademark Trial and Appeal Board (TTAB) of the U.S.P.T.O. in June 2014, 15 years after the Harjo petitioners had first prevailed. The Washington team appealed the cancellation order again, this time to the federal district court in the Eastern District of Virginia, and in July of 2015, the TTAB's decision was affirmed, causing the team to appeal next to the Fourth Circuit Court of Appeals, where the focus appears to be a First Amendment challenge on the Constitutionality of Section 2(a) of the Lanham Act.

In my opinion, what the Washington team hasn't been able to clearly articulate is how its right to free speech is abridged by revocation of the federal registrations. Revoking registrations that should never have been granted does not compel the team to change its name or stop using the underlying trademarks. Moreover, in the face of the registrations being canceled, team owner Dan Snyder is on the record saying: "We'll never change the name, it's that simple. NEVER - you can use caps." How then, can the team's right to free speech be abridged by the cancellation? The team's theory also seems to suggest that its free speech is abridged if it somehow becomes more difficult to silence the speech of others who would like to make commercial use of the R-word. That's certainly an interesting twist on the First Amendment that the team appears willing to bring all the way to the Supreme Court.

In some ways, my seven-year investment in the Harjo case has been the gift that keeps on giving. Even though I haven't been involved in the Harjo case since the victory in 1999, or the current Blackhorse case, designing the original legal theory for the Harjo case opened many doors for me and put me on the fast track toward developing a national trademark practice at Winthrop & Weinstine. I continue to be thankful for the generosity of Professor Carl Moy, who invited me to speak at an Intellectual Property Symposium hosted by William Mitchell College of Law after the Harjo petition had been filed, and the talk I delivered, as a very young attorney, led to speaking the next year in front of the Federal Circuit Bar Association in Washington, D.C. No doubt, one thing leads to another, even when the spark begins with a pro bono representation.

Needless to say, my thinking about pro bono legal representation has evolved over time. I now routinely advise law students and young lawyers on how valuable pro bono work can be in developing relationships that last for a lifetime. They can also lay important groundwork for developing experience and advancing one's chosen practice of law. Not only can the work be personally gratifying, but it can allow for more direct client contact and rare first chair roles at an early stage of one's career, not to mention establish a track record of success. In addition, when tight legal budgets associated with business decisions aren't constraining a pro bono matter, this can also lead to opportunities for making new law, where others motivated by the bottom line and a strict cost benefit analysis might settle for a compromise.

My genuine hope is that in sharing my journey in the Harjo case, at least one young lawyer will be inspired to write something they might not otherwise have written, or take on one pro bono matter they would otherwise have declined. When my Harjo journey started I was happily married with one dog. Twenty-five years later: I am still happily married to the same wife, we have four kids and four more dogs, and we're still talking about Harjo and its progeny. What's in your pro bono future?

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Steven R. Baird is a shareholder at Winthrop & Weinstine and an author on DuetsBlog.

Published: Fri, Dec 18, 2015

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