You Have the Right to Remain Silent—But Only if You’re Told You Do?

BACKGROUND

The Fifth Amendment to the United States Constitution states that “no person . . . shall be compelled in any criminal case to be a witness against himself.” The Supreme Court held in Miranda v. Arizona that interrogation of an individual who is in government custody is presumed to be compulsive. Reciting the warnings that the Court spelled out in Miranda, including the “right to remain silent,” provides a safeguard against violating a criminal suspect’s Fifth Amendment right to be free from self-incrimination in the coercive setting of government custody. Implicit within Miranda warnings is the assurance that a defendant’s silence “will carry no penalty.” Wainwright v. Greenfield. Consequently, prosecution cannot use a criminal defendant’s silence after Miranda warnings have been given in its case-in-chief to prove the defendant’s guilt. 

Surprisingly, the question remains as to whether a defendant’s silence in response to government interrogation post-arrest but pre-Miranda warnings can be used against the defendant at trial as substantive evidence of guilt. 

THE ISSUE

Can the prosecution use a criminal defendant’s silence after the defendant is in custody but before Miranda warnings are given as evidence of guilt in its case-in-chief? 

THE SPLIT

In the 2013 case Salinas v. Texas, the Supreme Court held that a defendant’s non-response to a question by law enforcement while not in custody is admissible and can be used against the defendant as evidence of guilt. But the Court did not explicitly state whether a defendant’s pre-Miranda silence in response to interrogation is admissible if the defendant is in custody. While the Ninth, Tenth, and D.C. Circuits prohibit using post-arrest, pre-Miranda warning silence as substantive evidence of guilt, the Fourth, Eighth, and Eleventh Circuits allow the prosecution to use a defendant’s silence at any timeprior to the issuance of Miranda warnings.

On one side of the split, the Ninth Circuit has held that prosecution may only use a defendant’s post-arrest, pre-Miranda silence for the purpose of impeaching the defendant’s testimony, but not for its case-in-chief. In United States v. Hernandez, the court noted that a defendant’s right to remain silent is triggered by any custodial interrogation, not just when the defendant has been read Miranda rights. The D.C. Circuit went one step further in U.S. v. Moore, stating that “custody not interrogation is the triggering mechanism for the right to pretrial silence under Miranda.” The D.C. Circuit’s holding means that the prosecution cannot comment on a defendant’s silence while in custody prior to Mirandawarnings, even if there has been no interrogation. 

In contrast, in United States v. Cornwell, the Fourth Circuit held that presenting video footage at trial which showed the defendant’s silence in response to police questioning did not violate his Fifth Amendment rights “[b]ecause Cornwell had not received Miranda warnings at the time the video was recorded.” Similarly, the Eight Circuit in United States v. Osuna-Zepeda held that presenting evidence to the jury about a defendant’s failure to make a statement at the time of his arrest, but before he was given Miranda warnings, did not violated his Fifth Amendment right. The court noted that “an arrest by itself is not government action that implicitly induces a defendant to remain silent.”  

Eleventh Circuit precedent was established in 1991 in United States v. Rivera, in which the court held that the prosecution could comment at trial on the defendant’s silence when she was in custody because Miranda warnings had not yet been given. In 2016, the Eleventh Circuit in United States v. Wilchcombe followed the Rivera precedent, but acknowledged the entrenched circuit split and the lack of guidance from the Supreme Court. The court noted that Salinas was not controlling because in contrast to the defendants in Wilchcombe, the Salinas defendant was not in custody at the time of the silence in question. Nevertheless, the Eleventh Circuit in Wilchcombe affirmed a lower court decision to allow the prosecution to use the defendants’ silence after they were apprehended but before Miranda warnings were delivered as proof of guilt.

LOOKING FORWARD

The Supreme Court has the opportunity to resolve this circuit split by granting certiorari in Palacios-Solis v. U.S. In Palacios-Solis, the U.S. Coast Guard stopped and boarded a vessel in the Pacific Ocean and detained three defendants who were suspected of smuggling cocaine. The Coast Guard officers did not recite Miranda warnings, and the defendants remained silent in the face of the officers’ questions. The Eleventh Circuit, based on its own precedent, declined to overturn the district court’s decision to allow the prosecution to use the defendants’ pre-Miranda silence as evidence of guilt. The court again acknowledged the circuit split but, as in Wilchcombe, chose to follow its circuit precedent because the Supreme Court has not addressed this specific issue. Defendants have filed a petition for writ of certiorari. 

The Supreme Court should grant certiorari to resolve this deep circuit split and to ensure that law enforcement and lower courts honor the constitutional rights of criminal defendants in custody. Until the split is resolved, defendants’ right to remain silent will vary by jurisdiction. In some circuits, their silence after arrest, but before they have been told they have the right to remain silent, can be used against them at trial. 

Prosecution cannot use defendants’ responses to custodial interrogation against them if they have not received Miranda warnings, nor can prosecution use non-response to questions after Miranda warnings have been given. But in the Fourth, Eighth, and Eleventh Circuits, the government can use defendants’ silence in the face of custodial interrogation against them when police do not recite Miranda warnings. As Judge Rosenbaum’s state in her concurring opinion in Palacios-Solis, such an anomalous result “eviscerates the purposes of Miranda” and creates a significant risk of violating the Fifth Amendment rights of criminal defendants in those circuits. A suspect in custody cannot voluntarily relinquish the privilege against self-incrimination if he doesn’t know he has the privilege in the first place.

Additionally, as  the D.C. Circuit noted in U.S. v. Moore, allowing the prosecution to comment at trial on a defendant’s pre-Miranda silence while in custody provides a perverse incentive for law enforcement to delay Miranda warnings and use a defendant’s refusal to answer questions against him or her at trial. Until the Supreme Court clarifies this issue and resolves the circuit split, the extent of a defendant’s right to remain silent after arrest will vary by jurisdiction. 

Generic or Descriptive? Trademark Protection in the Internet Age

Background

A trademark is a type of intellectual property that allows brand recognition for unique products or services. The Lanham Act is a federal statute that governs trademarks and provides guidelines for trademark registration. Under the Lanham Act, generic terms cannot be registered as trademarks. Since generic terms should be available for all competitors to use to describe their products, trademarks must be distinctive. Allowing a business to trademark a generic term would undermine competition in the free market economy and create a monopoly in a particular industry. 

With the rise of online businesses, several companies have applied for trademark protection for a generic term followed by .com. Examples include Weather.com, Law.com, and Booking.com. The decisions rendered by the U.S. Patent and Trademark Office (PTO) have varied; trademarks for Weather.com and Law.com were approved, while a trademark for Booking.com was denied because the PTO found that the term was too generic. 

The Issue

Does the addition of .com to a generic term for an online business create a registerable trademark despite the Lanham Act’s prohibition on trademarking generic terms?

The Split

In the case of In re Hotels.com, L.P., the United States Court of Appeals for the Federal Circuit ruled that Hotels.com is not a distinctive term and is merely a generic term that describes hotel reservation services. The evidence that Hotels.com provided was not sufficient to show that .com added to the term “hotels” created a distinctive brand that could be protected under the Lanham Act. Similarly, in In Re Reed Elsevier Properties Inc., the Federal Circuit affirmed the decision of the PTO that Lawyers.com was too generic to trademark. Lawyers.com provides a database of information about law, legal news, and legal services. The court utilized a two-part test, first described in H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., to determine whether or not a mark is considered generic under the Lanham Act. The first part focuses on what specific goods or services are at issue, and the second part assesses whether the particular term is understood by the public to refer primarily to those specific goods or services. Applying this test, Lawyers.com could not be trademarked because the term is not a discrete descriptor for the services provided on the website. The Ninth Circuit issued a similar ruling in the case of Advertise.Com, Inc. v. AOL Advertising, Inc., upholding a PTO decision to deny a trademark to Advertising.com for online advertising services. 

Most recently, The Fourth Circuit addressed this issue in the case of U.S. Patent and Trademark Office v. Booking.com B.V. The PTO denied trademark protection to Booking.com, stating that the domain is not distinctive and merely describes online reservation services for hotels, cars, and travel. Booking.com appealed this decision to the U.S. District Court for the Eastern District of Virginia, which reversed the PTO’s decision, stating that the addition of .com converted a generic term into a descriptive term. Additionally, Booking.com provided survey evidence that consumers recognize Booking.com as a brand rather than a category of services. This decision was affirmed by the Fourth Circuit, and certiorari was granted by the U.S. Supreme Court to clarify the circuit split. 

Looking Forward

The U.S. Supreme Court, which recently heard oral arguments in U.S. Patent and Trademark Office v. Booking.com B.V., will resolve this circuit split. Both the government and Booking.com provided arguments that reflected the concerns of different circuit courts with a focus on the balance between protecting brand identification and the fear of monopolization by one company over a particular industry. 

The government argued that the Court’s ruling in Goodyear’s India Rubber Glove v. Goodyear Rubber Co., that combining one generic term with another generic term such as “Company” or “Inc.” does not result in a descriptive term that can be trademarked, should apply in this case. The government also expressed concern about competition and which particular test to apply when evaluating whether or not generic terms should be trademarked. The government cited businesses such as Ebooking.com and Hotelbooking.com that would not be allowed to exist if Booking.com was granted a trademark. Additionally, the government advocated for a consumer-based test to determine whether generic terms should be afforded trademark protection. This test would focus on what a consumer understands a particular term to mean and whether Booking.com’s services could have additional meaning to the consumer. Applying this test allowed the government to assert that there is no additional meaning, and therefore, a trademark should not be granted to Booking.com. 

On the other side, Booking.com argued that the “primary significance test” should apply, providing trademark protection to Booking.com because the term represents a brand. The primary significance test allows a term to be classified as descriptive if the term refers to the producer or source of the product rather than the product itself. America Online, Inc. v. AT&T Corp. (4th Cir. 2001). Even though “booking” is a generic term and “.com” is a generic term, the combination of the two terms has significance as a brand to consumers. Booking.com also addressed the issue of a trademark creating a monopoly and asserted that the government provided no evidence that other businesses would be barred. Additionally, Booking.com discussed the international implications of trademark registration in the United States, noting that this trademark has been registered in approximately 80 other countries. Booking.com argued that registration in the United States would further allow the company to protect themselves against spoofing and cyber scams.     

The U.S. Supreme Court will rule on this issue soon, providing clarity to the approach that the PTO will take in the future when determining whether general terms added to .com can be trademarked. Resolving this circuit split will guide businesses on how to proceed when seeking brand recognition and protecting their products and services.