The Legal Standing of the Chief Wahoo Logo

Spring training is here. It’s a new beginning! Every team has optimism for the coming season. (Well, almost every team. Sorry, Marlins fans.) But in this time of beginnings, we also have an ending. Specifically, this will be the last spring training — and the last season — with Chief Wahoo. Beginning in 2019, the Indians will no longer use the symbol on their uniforms.

In one sense, the move has seemed inevitable for a while now. Cleveland has been phasing out Chief Wahoo for years in the face of increasing public pressure from people who believe the logo is racist. I don’t intend to comment on that matter in this piece. You’re all intelligent people and can draw your own conclusions.* Instead, I’m going to focus on whether the Indians legally had to remove Wahoo and what the symbol’s removal means for other teams (like the Braves) who use Native American imagery.

*For what it’s worth, research suggests that mascots and logos such as Chief Wahoo are psychologically harmful to Native American youth.

As an initial matter, the traditional use of Chief Wahoo as a logo is generally fully protected by the First Amendment, even if certain individuals regard it as offensive. The Supreme Court has held in cases like R. A. V. v. St. Paul that it’s illegal to ban speech (which includes symbols) simply because it’s offensive. But the Indians are a business, and that makes things a little more complicated.

To take a look at this, we’re going to have to enter into an area of law known as “intellectual property”: trademarks, trade dress, copyrights, and patents. Each protects different things: trademarks protect trade names and logos; trade dress protects a certain product’s label and appearance; copyrights protect creative works; and patents protect ideas like inventions. (There’s a pretty decent overview of the differences here.) For our purposes, let’s oversimplify things and discuss the trademark that applies to both the team name and Chief Wahoo.

Now, we do have to dive into IP law very briefly. Trademarks are governed by a federal law called the Lanham Act. (There are state law trademarks, too, but we won’t get into those today.) Until last year, a part of the Lanham Act — specifically 15 U.S.C. § 1052(a) — prohibited the registration of a trademark which was “immoral, deceptive, or scandalous matter, or… which may disparage… persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

There are two kinds of trademarks which concern us here: registered and unregistered. Registered trademarks are the ones in a big book the federal government keeps called the Principal Register. An unregistered trademark is one that’s not in the Principal Register. If you want to impress your friends, there’s often an easy way to tell the difference. Unregistered trademarks, often called “common-law” trademarks, usually have a “TM” next to them. Registered trademarks — the ones in the Principal Register — usually have an ® next to them. (There are, as always, exceptions.)

So with that in mind, let’s now discuss football — and, specifically, the Washington Redskins. In recent years, there has been a significant kerfuffle about the Redskins’ team name.  And there was actually an entire series of lawsuits filed against Washington’s football team about whether or not they could register the term “Redskins.” Some courts, like the United States District Court for the Eastern District of Virginia in a case called Pro-Football, Inc. v. Blackhorse, held that names like “Redskins” were scandalous and disparaging to Native Americans, and thus couldn’t be registered. And there was similar litigation involving Chief Wahoo.

The lack of a registered trademark doesn’t stop a team from using a particular name or logo — it’s still protected by the First Amendment. What it does do, though, is prevent a team from fully protecting that name from others who want to use it too.

Let me explain. It’s technically true, under a case called Two Pesos v. Taco Cabana, that a party still has limited enforcement power with an unregistered trademark (i.e., you can still sue to stop another person from using it). However, possession of an unregistered trademark doesn’t allow a party either to (a) block importation of infringing goods or (b) make the relevant mark “incontestable.” And that’s actually a big deal, because if an entity can’t stop other people from using the a name or logo, then those other people can make their own jerseys and merchandise and profit off of said name or logo. So without full registered trademark protection, it’s possible to lose a lot of money, creating considerable incentive to avoid names or logos which can’t be registered.

But you’ll recall that I said this statute existed until last year — because then the Supreme Court weighed in. And now we’re leaving the realm of sports entirely and discussing, of all things, rock music.

There exists, evidently, a rock band known as The Slants. Whatever their musical virtues, the band’s major claim to fame appears to be their role in a case that went to the U.S. Supreme Court. Their bassist, Simon Tam, wanted to list the band’s name as a trademark in the Principal Register — that is, to make it a “registered trademark” — but the Patent and Trademark Office (“PTO”) told Tam no. Specifically, the PTO cited 15 U.S.C. § 1052(a) and said it wouldn’t register as a federally recognized trademark a name that was disparaging against Asian-Americans. And the case went all the way to the Supreme Court.

In the landmark case that resulted, called Matal v. Tam, the Supreme Court held that 15 U.S.C. § 1052(a) was unconstitutional because it amounted to the government prohibiting speech based on viewpoint in violation of the First Amendment. In one of the more memorable lines from recent Supreme Court jurisprudence, Justice Samuel Alito wrote in the Matal case that Section 1052(a) of the Lanham Act “is not an anti-discrimination clause; it is a happy-talk clause.” As a result, there is no longer a prohibition on registering trademarks that would otherwise be disparaging. If the Slants want to register their name, they can. If the Redskins want to register their name, they can also do so. And the same is true of the Indians and Chief Wahoo.

So the Indians phasing out Wahoo really isn’t legally required at all. In fact, after Matal, they have every right both to register it and to use it exclusively.

Which is why the story isn’t over. The Indians intend to keep ownership of the Chief Wahoo trademark even after phasing it out. Legally, however, it’s only possible for an entity to own a trademark if they make exclusive use of it. It’s not permissible, generally, to sit on a trademark and not use it. And that’s why the Indians are going to still be selling a limited amount of Chief Wahoo merchandise, even after phasing it off their uniforms. Otherwise they’d lose their trademark exclusivity rights.

And where does that leave teams like the Braves? Interestingly enough, the Braves, as you may recall, once used a Chief Wahoo-like logo, the “Screaming Indian” (or “Laughing Indian”). The Braves also once had a mascot named Chief Noc-A-Homa, who lived in a teepee; he too, has been permanently retired. Still, like the Indians, the Braves still sell some “Screaming Indian” merchandise so as to retain control of the trademark.

And this is where it gets interesting. Prior to the Matal case, it’s likely neither the Screaming Indian nor Chief Noc-A-Homa could be protected by a registered trademark; now, theoretically, both could. And that means that, if the Braves wanted to, they (legally, at least) could go in the opposite direction as the Indians, readopting and fully protecting their retired logos while Cleveland phases out Chief Wahoo.

But there is one last wrinkle. Baseball may be America’s national pastime, but there remains a single franchise north of the border, and that has created an interesting conflict between American and Canadian law. There is currently litigation about both Chief Wahoo and the Indians’ name pending in Canadian courts. In that case, an indigenous person is suing to block the Indians from using either their name or Chief Wahoo while playing in Toronto on the grounds that it violates Canada’s legal protections for indigenous peoples. Major League Baseball has intervened in that case on the Indians’ behalf. In Canada, “Indians” is a foreign (United States) registered trademark which has also been registered in Ontario, and Canadian law on free speech and trademarks is different. And if the plaintiff wins that case in Canada, the Indians would likely be required to play the Blue Jays in Toronto as simply “Cleveland.”