Thursday, September 27th, 2012...2:21 pm

Native American Inspired Sports Teams from an IP Perspective

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By Dave Johnson

In his September 26, 2012 article on ESPN’s UniWatch[1], Paul Lukas put forth an argument to end the use of Native American inspired names for sports teams based on “intellectual property” issues. Unfortunately, Mr. Lukas is using the auspices of an important field of law related to branding to market what is essentially his view of political correctness. After briefly addressing the racism in the Washington Redskins’ name or the Cleveland Indians’ Chief Wahoo mascot, logo, and trademark, Mr. Lukas states:

I see this as more of an intellectual property issue. Basically, for those of us who aren’t Native American (which basically means the vast majority of the people who reading this), I don’t think we have the right to use images of headdresses, tomahawks, tribe names, and so on. It’s not a question of whether such symbols are offensive, or whether they perpetuate outdated stereotypes; it’s that they don’t belong to us.

Mr. Lukas’ argument continues more or less along a line of political correctness. However, from an intellectual property perspective, he is incorrect under the current laws. Pro Football, Inc., Dan Snyder’s company d/b/a The Washington Redskins, owns approximately 20 live trademarks covering the logos, insignia, team name, and various formative marks relating to the Redskins. The Cleveland Indians Baseball Company owns 41 live trademarks related to its logos, insignia, team name, and other formative marks, including for the Chief Wahoo logo in numerous classifications of goods. By going through the list of teams utilizing Native American inspired names and logos, the results will likely be the same. From an intellectual property perspective, the names and logos certainly do belong to the teams.

The question becomes one of equity. Soon, the two of the three prongs of the United States’ intellectual property system will exist as first-to-file systems. Trademark law depends on priority in filing for determining rights to a trademark, so long as the application is perfected through use of the mark in commerce. Patent law will also soon transition to a first-to-file system, bringing it largely in line with international patent laws. Copyright stands alone in not requiring registration in order to receive protection for a work, but there are definite advantages to publication or registration with the Copyright Office such as a definitive reference date related to the creation of the work.

What Mr. Lukas advocates in his article is that the Native American persona serves as a sort of “prior art” for the trademarks and copyrights and should invalidate the intellectual property rights of these sports organizations. [My apologies to intellectual property law purist for mixing terms].If it could be shown that Native American groups possessed prior similar trademarks and that the use by the teams caused consumer confusion, the trademarks should be invalidated. However, that would require prior use in commerce by the Native American groups. The same logic applies to copyright, whereby the local tribes would need to demonstrate that they had created a substantially similar work that the copyrights of the teams would infringe upon.

Mr. Lukas may not be speaking from a legal perspective, but he raises an interesting point about whether the intellectual property rights obtained by these organizations can or should be invalidated. A better analysis might be through each tribe’s right of publicity, a competing property interest that prevents the unauthorized commercial use of an individual’s name, face, signature, and “likeness” or persona. If a corporation can have personhood under the law, it is not a far leap to extend the same personhood to a group. As a person, a tribe should be able to protect its identity and privacy, including the misappropriation of the names and images related to that identity, a cause of action under tort law. Alternatively, a claim that the teams are trying to “pass off” the names and logos, and the products that display them, as an endorsement or source of origin might also be actionable. Use by the teams deprives the tribes from the particular commercial gain related to the infringement, namely using such names and images for their own sports teams, should they desire, or more realistically, merchandise.

If such a right of publicity exists for these Native American tribes, first a cease and desist demand must be issued, followed by an attempt to obtain injunctive relief, which might be granted alongside damages for emotional distress (usually for non-celebrities) or commercial loss (for celebrities). Whether such an action would be accepted would be interesting to see, but it should be noted that attempts to cancel the trademarks of teams such as the Washington Redskins on the grounds that the trademarks disparage Native Americans have failed, both for lack of showing of disparagement and laches issues. See, Pro-Football, Inc. v. Harjo, 567 F.Supp.2d 46 (D.D.C. 2008); and, Pro-Football, Inc. v. Harjo, 284 F.Supp.2d 96 (D.D.C. 2003). The Supreme Court refused to hear the Harjo case in 2009, effectively ending that dispute. But for the issue of laches (which is a time-bar doctrine to prevent “stale” claims), the right of publicity might be the best way to reclaim and prevent the use of Native American names and images by sports teams.

Dave Johnson, a 2L at the William & Mary School of Law, is a frequent contributor to the SELS blog. He may be reached at dcjohnson@email.wm.edu


[1] Paul Lukas, Time to Rethink Native American Imagery, ESPN.com (Sept. 26, 2012), http://espn.go.com/blog/playbook/fandom/post/_/id/12057/time-to-rethink-native-american-imagery.

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