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Band Name Trademark Could Affect Redskins Trademark Cancellation Case by Francis J. Gorman, Esq.

The owner of the Washington Redskins moved quickly to insert itself into any Supreme Court consideration of the constitutionality of the Patent and Trademark Office authority to cancel a registered trademark because it disparages persons. This step was taken because another trademark case involving disparagement recently landed on the Supreme Court’s door step, while the case involving the Redskins trademark registrations is months away from reaching the Supreme Court.

The Redskins trademark cancellation case has become procedurally complicated. Some background may be helpful.

Pro-Football, Inc. (PFI) has been the owner of the Washington Redskins since 1932. The Redskins name was first used in 1933 when the franchise played in Boston. Use of the name Redskins gave PFI “common law” rights protecting the name as a trademark. In 1937, the team moved to Washington. It was not until 1967 (and later in 1974, 1978, and 1990) that the Patent and Trademark Office (PTO) granted PFI federal registrations of the Redskins marks. Registration of a trademark or service mark gives the owner additional substantive and procedural rights to protect its mark, over and above the common law rights that arise from just using the mark in commerce.

This legal controversy over the Redskins registered marks began in 1992, after years of relative calm about the name. Susan Harjo and five other Native Americans filed an action with an administrative body within the PTO asking that the Redskins marks be cancelled because they disparage Native Americans. Under §2(a) of the Lanham Act, which provides for federal registration of trademarks and governs how the process works, the PTO has the power to cancel registrations that “may disparage” persons. In 1999, the PTO cancelled the registrations because of disparagement. The case then went into the federal courts in Washington D.C. where it was well-litigated until 2009. The last decision in Harjo finally held that the 1992 action to cancel was barred because of “laches,” meaning it was brought too late.

Meanwhile, while the Harjo action was still being litigated, in 2006 Amanda Blackhorse and several others asked the PTO administrative court to cancel the same Redskins registrations. Blackhorse and the other challengers had not yet reached age 18 when the PTO cancelled the registrations in 1999, and they did not unreasonably delay in filing a new action at the PTO, an action without a laches problem. The PTO cancelled the registrations again in 2014, holding that at the time of the registrations the Redskins marks contained subject matter that may disparage Native Americans and subject them to contempt and disrepute. On appeal to the U.S. District Court in Alexandria, Virginia, the court upheld the PTO and the cancellation of the registrations. Pro-Football, Inc. v. Amanda Blackhorse. PFI appealed to the U.S. Court of Appeals for the Fourth Circuit in August 2015, continuing an apparently uphill battle. The appeal in Blackhorse is still pending.

Five months after PFI noticed its appeal, another trademark decision for disparagement rode in like the cavalry. The case is entitled Tam v. Lee from the U.S. Court of Appeals for the Federal Circuit (en banc) and involves an all-Asian rock band called “The Slants”. The band’s front-man, Simon Shiao Tam, named the band “The Slants” because he wanted to make a statement about racial and cultural issues; to “take ownership” of Asian stereotypes. He sought to register the name in 2010. The PTO, however, refused to register “The Slants” because the PTO found the name to be disparaging to the Asian community. In Tam v. Lee, the Federal Circuit held that the disparagement bar in §2(a) is unconstitutional because it violates the First Amendment. This decision supports continuing the registrations of the Redskins trademarks.

As welcome as the Tam decision is to PFI and its attorneys, the case also causes some procedural problems. PFI realized that the attorneys from the U.S. Justice Department (DOJ), representing the PTO, could try to take the case to the Supreme Court for review – Tam could be decided by the Supreme Court before Blackhorse or without Blackhorse, shutting off PFI’s chance to have the Supreme Court rule on the Redskins registered trademarks.

Sure enough, on April 20, 2016, the DOJ filed a petition for certiorari asking the Supreme Court to review the Federal Circuit’s decision in the Tam case. PFI was ready for its next step. Five days later, on April 25, 2016, PFI’s attorneys filed in the Supreme Court a petition for certiorari “before judgment” is rendered by the Fourth Circuit. The federal statute empowering the Supreme Court to issue a writ of certiorari does permit the writ (an order) to issue on a petition filed “before or after rendition of judgment.” 28 U.S.C §1254. Petitioning for review before judgment of the lower appellate court is rare, but less so when the DOJ files the petition. PFI cited only five cases in the Supreme Court since 1946 where the Court issued a writ of certiorari before judgment at the request of a private party.

PFI asks three things of the Supreme Court: (1) to not to review Tam because it is correctly decided, (2) to decide the constitutionality of §2(a), if at all, only after the Fourth Circuit decides PFI’s appeal in the Blackhorse case, and (3) if the Court grants review in Tam, the Court should grant PFI’s petition and review both cases together. PFI argues several reasons to support its petition before judgment. First, the only issue in Tam is the constitutionality of the §2(a) disparagement provision, whereas important and connected issues are present in the Blackhorse case – whether §2(a) is impermissibly vague and violates the Fifth Amendment and whether the decades-long delay between registration and cancellation violates procedural due process. Second, the decision should be rendered in the contexts of both registration and cancellation. Third, the issue is of imperative public importance. Fourth, Blackhorse is a valuable companion to the Tam case and indeed essential to a comprehensive review of the constitutional questions.

The Redskins trademark registration dispute is pending in two courts. The Fourth Circuit has months of work to do before it decides the appeal – oral argument and writing opinions – and the Fourth Court may wait to see what the Supreme Court does with PFI’s petition for certiorari. A Supreme Court decision to review the Tam decision could preempt any opportunity for PFI to have the Supreme Court decide the dispute over the cancellation of the Redskins trademark registrations.

One last recent development is a poll by the Washington Post released in May 2016 that shows 9 out of 10 Native Americans, today, are not offended by the Redskins team name. A 2004 Annenberg Center poll showed the same result. Regardless, current polls on disparagement are legally irrelevant unless and until the Supreme Court holds otherwise.

Whether the Supreme Court will make sure that the PFI and the Redskins trademark registrations are invited to the table for the proceedings remains to be seen. In any event, cancelation of the federal registrations would not prevent PFI from continuing to use “Redskins” in various common law marks, albeit marks that are harder to enforce and protect.


For commentary on trademarks and service marks, follow Frank on Twitter at @HeadsUpTRmark



© 2016 Gorman & Williams

Copyright Case Law Update by Charles L. Simmons, Jr., Esq.

Merriam Webster and YouTube’s Dancing Baby Test Fair Use Doctrine While “Happy Birthday to You” Goes Free

by Charles L. Simmons, Jr., Esq. / February 16, 2016

There are always lots of surprises as the federal courts apply copyright law to an unlimited array of creative works, both old and new. Three recent court decisions are reviewed in this blog, (1) a copycat unsuccessfully tried to use the “fair use doctrine” to justify his wholesale electronic copying of the Merriam Webster dictionary, (2) a mother who posted a video on YouTube of her baby dancing to Prince’s Let’s Go Crazy can sue Universal Music for causing a takedown of the video, and (3) the purported copyright holders of the lyrics to “Happy Birthday to You” who had collected millions in license fees are told that there is no evidence that they have any legal rights to the lyrics, thus freeing the lyrics for commercial interests to use without paying.

Richards v. Merriam Webster, Inc., 55 F.Supp.3d 205 (D. Mass. 2014)

A federal district court in Massachusetts would not allow complete copying of word definitions that may have been for decades, and in some instances centuries, available for public use.

Richards recounted his early personal struggles with the English language. He eventually realized that his own mediocre reading skills could be improved if he learned the meaning of all the words in a college dictionary. Richards read the Merriam-Webster Collegiate Dictionary six or seven times. As a result, Richards’ score on the verbal portion of the SAT rose from 560 to 740. When Richards took the LSAT, he scored above the 99.8th percentile. Richards accredits much of his success to his time spent reading Webster’s dictionary.

Richards developed the concept of a “textbook dictionary” where words and definitions are presented in larger type and without multiple columns on a page so “everything wasn’t crammed together.” He wanted students and adults struggling with reading comprehension to be able to essentially read the dictionary like a book. Richards planned to disseminate his textbook dictionary to the world, free of charge.

To realize his vision, Richards downloaded 70% or more of the copyrighted Eleventh Edition of Webster’s dictionary. By some accounts in the legal filings, it took Richards about four months to complete his initial download. Richards then modified the entries for certain words by changing font sizes, adding emphasis, adding verbal illustrations, removing etymological history, removing pronunciation clues, and removing archaic and obsolete terms.

Richards sent a letter to Webster, requesting permission to use “virtually all” of the material in the Eleventh Edition for his textbook dictionary. Webster denied Richards’ request so Richards sued Webster arguing (1) that some of the Eleventh Edition’s content was available for public use; and (2) that Richards’ use of Webster’s content constituted fair use.

The District Court quickly disposed of Richards’ public use argument. The court found that Richards sought to use Webster’s entire dictionary, which is protected, and not just the individual parts of the dictionary that might be available to the public. To support his argument of fair use, Richards argued that his work was a new way of presenting stale and “crammed” content to a user to improve reading comprehension.

The court, however, determined that Richards used a significant amount of content from the Eleventh Edition and thus found in favor of Webster.

One additional point, Richards did not have an attorney in this case. His filings were cogent and his arguments had merit, regardless of the outcome. If Richards’ reading of the dictionary as a young man gave him the tools to present his case as he did, then for certain the method works.

Lentz v. Universal Music, Corp.801 F.3d 1126 (9th Cir 2015)

Stephanie Lenz was in her family kitchen listening to Let’s Go Crazy by Prince when she turned on her video cam and asked her 13 month old son what he thought of the music. He looks at the camera and starts bobbing up and down to the music. Lenz captured her “dancing baby” on video for about 29 seconds, and posted it on YouTube on February 7, 2007.

Prince is the copyright holder to the song Let’s Go Crazy, and Universal Music is responsible for enforcing Prince’s copyrights. Sean Johnson, an assistant in Universal Music’s legal department, was monitoring YouTube and saw the dancing baby video. He decided that the video should be included in a letter to YouTube requesting that it remove the listed videos Universal believed to be making unauthorized use of Prince’s song. As a result, YouTube removed the video on June 5 and so advised Lenz by email. The video had been on YouTube for about four months.

Lenz, however, sent a counter-letter to YouTube. YouTube provided that letter to Universal Music which in turn protested to no avail. YouTube reinstated the video in mid-July. Reinstatement was not enough for Lenz so Lenz filed suit on July 24, 2007. The wheels of justice turned slowly, and in 2013 the case went to the appellate court.

The court held that copyright holders must consider whether allegedly infringing material may actually be allowed because it was used in a way permissible by law. The court also held that Lenz could proceed with her suit and even receive “nominal” damages and possibly attorney’s fees and expenses. The court sent the case back for a trial to decide what damages Lenz may be able to recover. Additionally, Lenz had a free attorney who could still be rewarded for his efforts with a statutory attorney’s fee award.

Marya v. Warner/Chappell Music, Inc.___ F.Supp.3d ____, 2015 WL 5568497 (C.D. Ca. 2015)

Next, a federal district court in California rocked the copyright world by holding that Warner/Chappell Music and Summy-Birchard hold no valid copyrights in the “Happy Birthday to You” lyrics. Over the years, the defendants have collected millions in fees for use of the lyrics. The evidence is unclear as to who wrote the lyrics, and the possible candidates mentioned by the court are Patty Hill, Alice Jacobs, Ermina Chester Lincoln, or Preston Ware Orem. Nevertheless, the court found that, regardless of who the author was, there is no evidence that any potential author gave rights to the “Happy Birthday to You” lyrics to anyone.

The story behind authorship goes back to before 1893 when sisters Mildred Hill and Patty Hill wrote the melody and lyrics to a song entitled “Good Morning to All.” This melody is also the classic melody of “Happy Birthday to You.” In 1893, Mildred and Patty gave their rights to the manuscript containing “Good Morning” and other songs to Clayton F. Summy. That same year, Summy published the Good Morning song and copyrighted a songbook entitled Song Stories for the Kindergarten. After Mildred died, a third sister, Jessica Hill, renewed the copyright for Song Stories in 1921, acting as Mildred’s heir, but this copyright had expired in 1949.

Publication of the Happy Birthday lyrics occurred in a 1911 book entitled The Elementary Worker and His Work, but no one was credited in the book with authorship of the lyrics. The copyright on this book was registered, but to add more confusion, Alice Jacobs and Ermina Chester Lincoln were listed as the authors. In 1935, the Clayton F. Summy Company filed registrations for copyrights in two works, one of which defendants claim secured a federal copyright on the Happy Birthday lyrics. Problem is, the registration was not for the exact Happy Birthday lyrics, and the author of the new matter is Preston Ware Orem!

In 1935, Patty claimed that she wrote the lyrics to Happy Birthday. Patty never applied for copyright registration for the lyrics, and Patty, Mildred, and Jessica never contested any use by others of the lyrics to Happy Birthday.

The defendants were dealt a stunning blow. After so many years of enforcing copyright and requiring users to pay a fee to sing the lyrics, the defendants were scrambling to save the copyright. Right before trial began, the defendants settled the case agreeing to pay back the $14 million in fees they have collected over the years that were paid on the premise that they owned a valid copyright to the lyrics.

Now, when you are in a restaurant for a birthday and the staff brings out the cake, they can sing without fear of reprisal the well-known and classic lyrics to “Happy Birthday to You.”

Charles L. Simmons, Jr., Esq. is an attorney based in Baltimore, MD.  He heads up the business and insurance litigation practice at the firm Gorman & Williams.  Please click here to learn more about the author.


Copyright Registration Training Online w/ PBRC

Volunteer Attorneys!  Interested in helping artists with their legal issues but you aren’t sure where to start?  MdVLA’s Copyright Registration Training w/ the Pro Bono Resource Center of Maryland is now online.  Check it out here.  Once you view the webcast, we will get in touch to talk about pro bono opportunities.  Mentors and malpractice insurance are available.  If you have any questions, please don’t hesitate to call, 410-752-1633, or email,

You can also check out all of PBRC’s other great trainings on their website:

Brooklyn Graffiti Artists Sues Real Estate Developer Over Use of Work in Advertisement


By Rahil Gandhi

In the past few years, Brooklyn, NY has seen dramatic real estate growth.  This has brought developers by the truckload trying to cash in on the boom.  In a place as hip as Brooklyn, smart companies use engaging visual imagery in their advertisements to woo potential customers.  One such company is currently embroiled in a lawsuit over the use of a work of street art, or graffiti, in their advertisements.

Brooklyn-based graffiti artist Craig Anthony Miller (better known by his artist name “CAM”) has brought a lawsuit against real estate developer Toll Brothers for the use of a portion of his Elephant Mural in advertisements displayed on bus stop shelters, subways, phone booths, and newspapers in 2012.  These advertisements were meant to sell luxury loft-style condominiums.  Read More…

New Code of Best Practices to Assist those Working in Visual Arts with Fair Use

Best Practices in Fair Use for the Visual ArtsBy Latasha Ramphal

Visual artists can defend their work from a claim of copyright infringement if fair use is properly applied. The Code of Best Practices in Fair Use for the Visual Arts (Code) by the College Art Association was published recently with the goal of helping arts practitioners better understand how to apply the wily legal concept that is fair use. The Code, based on principles gleaned from conversations and workshops with over 100 visual arts professionals, includes guidance for artists, scholars, educators and museum professionals. While using the code cannot definitively protect you from being sued or losing a copyright infringement lawsuit, individuals who work with the visual arts may use the Code to apply fair use with more confidence. Read More…

The Law’s “Blurred Lines” Lead to Artists Having to “Give It Up” Big Time

blurred-linesRecent copyright infringement claims result in surprising settlements, court judgments:

By Hannah Fields

Copyright infringement has been a hot topic in pop music lately, and a verdict reached on March 10, 2015 by a federal jury in Los Angeles has caused quite a stir. That jury decided “Blurred Lines” singer Robin Thicke and producer Pharrell Williams had to pay the estate of Marvin Gaye a walloping $7.4 million for copyright infringement of Gaye’s 1977 song, “Got to Give It Up.”

Similarly, in October 2014, singer/songwriter Tom Petty and co-writer Jeff Lynne claimed that their 1986 hit “I Won’t Back Down” was copied by the popular Sam Smith song, “Stay With Me.” Smith, along with writers James Napier and William Phillips settled the infringement claim with Petty and Lynne. According to a representative for Smith, the parties came to an immediate and amicable agreement. As a result of that settlement, Petty and Lynne are now listed as co-writers of the song and enjoy a 25% share of songwriting royalties. Read More…

Copyright Office: Change is Needed to Bring Music Marketplace Into Digital Era

copyright-symbol-smallBy Hannah Fields

The Copyright Office recently released a report, advocating for the music licensing system to better meet the demands of the digital era. This report, released February 5, 2015, recognizes many shortcomings of the current music licensing system and offers solutions for improving the music marketplace, which include changing how licensing fees are paid for copyrighted works.

Music is protected by two different copyrights: one in the composition and one in the sound recording. This is because there are two distinct works of artistic expression that exist in one song. First, the musical composition is the arrangement of notes, chords, and lyrics. This can be thought of as what you see expressed in sheet music, even though you don’t need to compose with sheet music to receive this type of copyright protection. Second, the sound recording, or the performance of a composition on a particular recording, is a work protected separately. Read More…

Monkey Selfie Belongs to the Public Domain!

By Latasha Ramphal

monkey-selfieThis popular monkey selfie recently shocked the media across the globe. In 2011, a monkey took several selfies in Indonesia using photography equipment owned by David Slater, a British wildlife photographer. The photographer made a huge profit from the famous monkey selfie. The best shot of the monkey selfie went viral and ended up on Wikimedia Commons’ online collection.

Read More…

Mind Your Business Workshop

Join us for a workshop to help Southern Maryland’s creative class better navigate budgets, cash flow, copyright, insurance, and more!

This event is FREE! But space is limited, please RSVP at or call Maryland Citizens for the Arts: 410-467-6700.

Mind Your Business is presented by PNC Bank, Maryland Volunteer Lawyers for the Arts, Maryland Citizens for the Arts and the Salisbury Wicomico Arts Council.

Saturday, May 2, 2015
Salisbury Wicomico Arts Council Office (SWAC)
104 Poplar Hill Ave.
Salisbury, MD 21801


If you have any questions, please email or call 410-752-1633.


Best Practices in Fair Use for the Visual Arts

On February 25th, MdVLA and Station North will host artists, lawyers, and law students at: Best Practices in Fair Use for the Visual Arts, a Presentation and Discussion to be held at the Station North Chicken Box, 1 W. North Ave., Baltimore, MD 21201 from 6 p.m. – 8 p.m. The event will focus on how artists, scholars, educators, and museum professionals can appropriately use the copyrighted works of others without permission in their practice through fair use. The presentation and discussion will be followed by a reception. The event is free. Please RSVP to .

The presentation and discussion will be led by Peter Jaszi, a professor of law at American University Washing College of Law. Professor Jaszi teaches copyright law and courses in law and cinema, as well as supervising students in the Glushko-Samuelson Intellectual Property Law Clinic, which he helped to establish, along with the Program on Intellectual Property and Information Justice. He has served as a Trustee of the Copyright Society of the U.S.A. and is a member of the editorial board of its journal. In 2007, he received the American Library Association’s L. Ray Patterson Copyright Award. He has written about copyright history and theory and co-authored a standard copyright textbook. With Prof, Pat Aufderheide, he facilitated the College Art Association’s Code of Best Practices in Fair Use for the Visual Arts, which was released on February 13.

The event page can be found HERE