Indigenous Trademarks in Sports
Until recently, the use of Indigenous-related trademarks in sports was a controversial issue. While it is well-settled today that, at least morally, professional sports teams should not be using Indigenous trademarks for their name (i.e., the Washington Redskins) or mascot (i.e., Chief Wahoo for the Cleveland Indians), it is less clear what role, if any, federal trademark law has in prohibiting the use of Indigenous marks. To answer that question, this analysis will proceed in three parts: (1) by analyzing the trademark litigation against the Washington Redskins under the United States Lanham Act,[1](2) by analyzing how a potentially similar claim could be brought against a Canadian professional sports team under the Trademarks Act,[2] and (3) by arguing that the legislation of each jurisdiction should be amended to better protect minority interests, while potentially allowing fair use of such marks by appropriate parties.
USA: Actions under the Lanham Act
The most prominent example of a professional sports team using Indigenous-related marks is the Washington Redskins. Beginning in September 1992, Suzan Shown Harjo began litigation arguing that the trademarks held by the Redskins were disparaging pursuant to section 2(a) of the Lanham Act.[3] Section 2(a) of the Lanham Act reads as follows:[4]
- No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it (a) consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . .
To show that a trademark is disparaging, the plaintiffs must meet a two-part test: (1) they must show the likely meaning of the mark and (2) if that meaning refers to an identifiable group, that the meaning is disparaging to a substantial compositeof that group.[5] While the first part of the test is relatively easy to meet (the Trademark Board or court will look to dictionary definitions, encyclopedias, and other reference materials),[6] the second part of the test is more difficult for plaintiffs to meet (see the Blackhorse analysis below).
Pro-Football, Inc v Harjo
Initially, the plaintiffs in Harjo were successful in arguing that the use of the word “Redskin” is disparaging in accordance with section 2(a) of the Lanham Act, and the Redskins had their trademarks temporarily cancelled in 1999.[7] However, after a series of appeals, the United States Court of Appeals for the District of Columbia Circuit overturned the ruling on procedural grounds, stating that the doctrine of laches barred the plaintiffs from bringing their claim (the court effectively imposed the limitation period).[8] Although the Harjo litigation was ultimately unsuccessful, it raised public awareness of potential issues surrounding the use of Indigenous-related trademarks in sports. However, the Redskins doubled down on their position, remaining adamant that their marks were not disparaging and that they would continue in use. Following the Harjo decision, a second lawsuit was commenced: Pro-Football, Inc v Amanda Blackhorse.[9]
Pro-Football, Inc v Blackhorse
In the Blackhorse litigation, the members of the plaintiff group were between the ages of 18-and-24 when the suit was filed, meaning that they brought their case within six years of reaching the age of majority (barring the laches defence). However, the Blackhorse plaintiffs had another hurdle to surpass: under the second part of the disparagement test, they had to establish that the Redskins’ trademarks were disparaging to a substantial composite of Indigenous peoples not at the time of trial, but from 1967–1990 when the trademarks were granted.[10] The Blackhorse plaintiffs were able to sufficiently lead such evidence, and the Trademark Trial and Appeal Board ordered cancellation of various Redskins’ registrations based on the disparagement clause in section 2(a) of the Lanham Act.[11] However, the case did not end there. Following the US Supreme Court decision in Matal v Tam,[12] where the Court ruled that section 2(a) of the Lanham Act was unconstitutional on free speech grounds,[13] the Blackhorse decision was vacated, and the Redskins’ trademarks were thus able to remain registered.[14]
Although the Redskins’ trademarks were still legally registered and continued in force, the court of public opinion eventually won out. Specifically, following immense public pressure from FedEx (which owns the naming rights to the stadium where the team plays) and Nike (who removed all Redskins merchandise from their online store), the team’s ownership and management eventually succumbed and decided to retire the Redskins name and logo in July 2020.[15]However, this raises an interesting question: should public pressure and scrutiny be the driving force behind the retirement of disparaging and immoral marks, or should the legal system better protect the interests of minority groups rather than allowing professional sports teams to earn substantial profits off of their use of inequitable marks?
Cleveland Guardians
As an interesting corollary, the Cleveland Indians removed their previous mascot, Chief Wahoo, from their uniforms and stadium signs at the end of the 2018 season. However, the team wished to retain its rights in the trademarked logo, which required them to continue using the mark. Thus, rather than “using” the mark on their uniforms and in their stadium for the whole world to see (and criticize), the team opted to continue “using” the Wahoo logo by selling merchandise featuring the logo in the USA, Canada, and internationally.[16]
Potential Future Name and Logo Changes
Upon reviewing the current team names and logos for each of the four major North American professional sport leagues that operate in the USA (the NHL, MLB, NFL, and NBA), three remaining teams have names or logos that may implicate Indigenous peoples in a discriminatory way: the Chicago Blackhawks and their logo featuring an Indigenous head dress (NHL), the Atlanta Braves (MLB), and the Kansas City Chiefs (NFL). Of the three, the Blackhawks and Braves have both publicly announced that they plan to maintain their current branding strategy.[17]
Canada: Actions under the Trademarks Act
Although there are fewer Canadian professional sports teams with potentially discriminatory names and logos than our USA counterparts, one Canadian example persisted in the Canadian Football League until 2020: the Edmonton Eskimos. Prior to their official name change to the Edmonton Elks in June 2021,[18] what recourse would a Canadian plaintiff have had if they wished to challenge the Eskimos’ trademarks under the Canadian Trademarks Act? The closest equivalent provisions in the Canadian Trademarks Act are sections 9(1)(j) and 9(1)(k), which read as follows:[19]
9(1) No person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for (j) any scandalous, obscene or immoral word or device, [or] (k) any matter that may falsely suggest a connection with any living individual . . .
Given that the Trademarks Act does not include the “disparage” language that is found in section 2(a) of the Lanham Act, Canadian plaintiffs would have narrower grounds upon which to launch Indigenous-related trademarks litigation. However, Canadian plaintiffs may have an additional option to pursue under the Trademarks Act. Specifically, an application can be made to Federal Court under section 57(1) of the Trademarks Act by any person interested (which therefore likely includes Indigenous applicants) to strike out or amend a trademark registration on the basis that the register does not accurately express or define the existing rights of the registered person.[20] Thus, an Indigenous plaintiff group could argue that any mark that is scandalous, obscene, or immoral under section 9(1)(j) cannot express an existingright to registration, and seek to have the mark amended or struck out accordingly. Further, section 12(1)(e) of the Trademarks Act states that “a trademark is registrable if it is not (e) a sign . . . whose adoption is prohibited by section 9”.[21] Thus, an Indigenous plaintiff group could further argue that the combination of sections 12(1)(e), 9(1)(j), and 57(1) lead to the conclusion that a holder of a scandalous, obscene, or immoral mark does not have an existing right to register. However, such a novel argument has not yet been fully developed in Canadian jurisprudence,[22] and the Edmonton Elks willingly rebranded themselves before any trademark litigation was initiated. Additionally, at least one large Canadian law firm is concerned about the possibility that a mark struck out on the grounds of being “scandalous, obscene or immoral” in Canada could be overruled based on freedom of expression concerns under section 2(b) of the Charter.[23]
Potential Reform
The Washington Commanders, Cleveland Guardians, and Edmonton Elks branding histories illustrate the problem that federal trademark law has with restraining the use of potentially immoral and discriminatory team names. Given the current difficulty that Canadian and American federal trademark legislation has with restraining the use of immoral or disparaging marks due to vagueness concerns that allow for a freedom of expression defence, is it time to consider legislative reform to better protect minority interests? While I leave the specifics to the legislative drafters of each jurisdiction, I believe that inserting more specific, targeted language to curb the registration and use of marks that may offend minority populations (specifically Indigenous populations) would be a positive step towards promoting reconciliation and equality in each country. As a caveat, however, I believe that concurrently adopting a fair dealing or fair use provision into the federal trademarks regime would be a necessary addition to ensure that such minority populations are able to fairly register and use marks that appropriately represent their heritage, including the reappropriation and neutralization of words, phrases, or symbols that carry historically negative connotations (i.e., as was done by “The Slants” in Matal[24]). By making such amendments to the federal trademarks regime, the Canadian and USA governments can deter the inappropriate use of immoral or disparaging marks while also empowering minority populations to celebrate their heritage and history in a positive way.
[1] Lanham Act, 15 USC § 1127 (1946).
[2] Trademarks Act, RSC 1985, c T-13.
[3] See Alicia Jessop, “Inside the Legal Fight to Change the Washington Redskins Name” (15 October 2013), online: Forbes<www.forbes.com/sites/aliciajessop/2013/10/15/a-look-at-the-legal-fight-to-change-the-washington-redskins-name/?sh=70a0176d4b20>. See also Pro-Football, Inc v Harjo, Suzan, et al, 415 F (3d) 44 (DC Cir 2005) [Harjo].
[4] Lanham Act, supra note 1, s 2 [emphasis added]. See also Harjo, supra note 3.
[5] See Jessop, supra note 3.
[6] See ibid.
[7] See ibid.
[8] See Harjo, supra note 3. It should be noted that, in my opinion, resorting to a procedural doctrine such as laches to overrule a landmark trademarks case with potentially massive implications for the sporting landscape seems inequitable. Where a defendant seeks to rely on an equitable defence, it seems wrong to allow that defendant to take an inequitable stance.
[9] Pro-Football, Inc v Amanda Blackhorse, 112 F (3d) 439 (4th Cir 2018) [Blackhorse].
[10] See Jessop, supra note 3. Note that this creates a unique evidentiary challenge for the plaintiff group, as they must go back in time to find a “substantial number” (though not a majority) of Indigenous peoples found the marks disparaging.
[11] See Erik Brady, “Appeals court vacates decisions that canceled Redskins trademark registrations” (18 January 2018), online: USA Today<www.usatoday.com/story/sports/nfl/2018/01/18/appeals-court-vacates-decisions-canceled-redskins-trademark-registrations/1046758001/>.
[12] Matal v Tam, 137 S Ct 1744 (2017) [Matal]. Note that in Matal, the issue was with an Asian-American band called “The Slants”, but the group identified as Asian Americans and were seeking to “[neutralize] a slur by re-appropriating it in a self-empowering way”: Brady, supra note 11.
[13] See Matal, supra note 12. Note that the court stated: “speech may not be banned on the grounds that it expresses ideas that offend”.
[14] See Brady, supra note 11.
[15] See Rosa Sanchez, “NFL’s Washington Redskins to change name following years of backlash” (13 July 2020), online: ABC News<abcnews.go.com/US/washington-redskins-change-years-backlash/story?id=71744369>. Note that the team officially rebranded itself as the Washington Commanders in February 2022.
[16] See Maury Brown, “Cleveland Indians Are Removing Chief Wahoo From Field But Have Incentive To Keep Him On Shelves” (29 January 2018), online: Forbes <www.forbes.com/sites/maurybrown/2018/01/29/while-cleveland-indians-retiring-chief-wahoo-new-products-with-him-not-going-away/?sh=f8d0e332dc38>. Note that the Cleveland Indians officially rebranded themselves as the Cleveland Guardians (with a generic “C” logo) for the 2022 MLB season: see Edward Sutelan, “Guardians name change timeline: How years of criticism finally led to Cleveland’s baseball rebrand” (07 April 2022), online: Sporting News <www.sportingnews.com/ca/mlb/news/cleveland-guardians-baseball-name-change-timeline/xp4bekkfvkw8ufgrk76wssb8>.
[17] See Sanchez, supra note 15.
[18] See Wallis Snowdon, “Edmonton Elks: CFL club announces new name” (01 June 2021), online: CBC<www.cbc.ca/news/canada/edmonton/edmonton-ee-cfl-football-name-1.6048578>.
[19] Trademarks Act, supra note 2, ss 9(1)(j)–(k).
[20] See ibid, s 57(1). Note that this provides an advantage to Canadian plaintiffs over plaintiffs in the USA, as the Canadian plaintiff need only lead evidence relating to the existing rights of the registered owner, not trace evidence back to the time that the mark was originally registered.
[21] Ibid, s 12(1)(e).
[22] See Tamara Celine Winegust, Noelle Engle-Hardy, and Susan Keri, “Canada: Redskins, Eskimos, and Indians: The Canadian Approach to Disparaging Trademarks” (03 September 2015), online: Mondaq <www.mondaq.com/canada/trademark/424254/redskins-eskimos-and-indians-the-canadian-approach-to-disparaging-trademarks>.
[23] See May Cheng, “How Canada should deal with obscene trademarks” (17 September 2019), online: Osler<www.osler.com/en/resources/regulations/2019/how-canada-should-deal-with-obscene-trademarks>.
[24] See note 12 for reference.
Communications Law