DuetsBlog

Collaborations in Creativity & the Law

Making Fair Use of the Super Bowl Trademark

Posted in Advertising, Articles, Branding, Dilution, Fair Use, Famous Marks, First Amendment, Infringement, Law Suits, Marketing, Trademark Bullying, Trademarks

Over the weekend, the Star Tribune continued the growing drum beat of understandable excitement for Super Bowl LII, as it steadily approaches U.S. Bank Stadium in Minneapolis.

The article also plays the typical NFL-enabling drum beat of caution against local businesses that might see fit to fairly and truthfully reference the Super Bowl in some commercial manner:

“From the NFL’s viewpoint, if businesses use the terms or other trademarks, it could appear like it is an official part of the Super Bowl or its related events, said Dolores DiBella, one of the lead intellectual property attorneys for the NFL.”

Perhaps the NFL would like to live in a world where no business can use the words “Super Bowl” without paying a fee; that isn’t the world we live in, especially given the growing judicial drum beat and emphasis on Free Speech and the First Amendment in the trademark/copyright worlds.

Nowhere in the article is there any acknowledgement that the NFL has long been accused of behaving as a trademark bully and overreaching with its valuable intellectual property rights.

The legal test for trademark infringement (likelihood of confusion) is not shown when a use “could appear like it is an official part of the Super Bowl or its related events,” the mere possibility is simply not enough, the likelihood of confusion must be probable.

Nowhere in the article is there any mention of trademark fair use; classic or nominative fair use. Nowhere is there any mention of Free Speech or the First Amendment. Even, this kind.

And, for those wondering whether the Super Bowl trademark might be famous and deserving of dilution protection, let’s not forget, the future of trademark dilution law is in question.

So, while it is true that not uttering the words “Super Bowl” will help a business play it safe and avoid all the fire and fury of the NFL, for those who are properly advised and have insurance coverage for advertising injury, that would be a very big game worth watching (or playing) too.

A Kind Demand Letter? Stranger Things Have Happened (Apologies)

Posted in Advertising, Branding, Infringement, Marketing

-Wes Anderson, Attorney

Chicago pop-up bar “The Upside Down” rode a wave of popularity program all the way to Netflix’s legal department. And that’s where things took an unexpected turn!

Okay, that lede could probably be less obviously playful. You might say the same thing about Netflix’s cease-and-desist letter to the operators of “The Upside Down.” Featuring replicas of the Stranger Things sets, the bar made no secret of its association to the show, saying it was “paying homage to the instant-classic television show about the haunting happenings in Hawkins, Indiana & the brave kids of the Hawkins Middle School A.V. Club who saved their friend & their town from the devious deeds of the Hawkins National Laboratory & the subsequent devastation of the Demogorgon!”

One might think a zealous trademark lawyer would instantly send a sternly-worded demand letter to the operators, insisting that the bar immediately cease operations. Instead, last month, Netflix’s in-house counsel sent along one of the friendliest demand letters you’re likely to find (click for the full size image):

That’s right, instead of pulling out citations to the Lanham Act, and reciting a string of trademark applications or registrations, Netflix went right for the gusto – a reference-laden, kind-hearted letter, asking only that the pop-up bar “not extend . . . beyond its 6 week run” and that the owners “reach out to us for permission if you plan to do something like this again.”

Make no mistake – outside counsel can be extremely valuable in assessing enforcement options, and the best way to deal with infringement. We all know that lawyers can, and frequently do, “ghostwrite” letters for in-house counsel or business contacts to send directly to infringers. But that doesn’t mean that a lawyer must write only in a caustic tone!

Ultimately, the letter resulted in excellent PR for both the bar and for Netflix. And a lesson to all in the trademark enforcement world – every once in a while, it’s okay to crack a couple jokes, even in a demand letter.

 

 

Claim Is Gone With The Wind At Death

Posted in Articles, Law Suits, Loss of Rights, Mixed Bag of Nuts, Television

Two time academy award winner Olivia de Havilland seeks an expedited trial for the lawsuit involving her right of publicity.  Olivia de Havilland, DBE v. FX Networks, et al, BC667011 (Superior Ct. Calif., June 30, 2017). The urgency is needed because Ms. de Havilland’s statutory right of publicity ceases at her death.  She is currently 101.

You may recall that Ms. de Havilland starred as the sweet Melanie Hamilton Wilkes who thought of Scarlett as a sister in my favorite movie the epic “Gone with the Wind.”  The movie received 10 Academy Awards.  It is an American classic.

Ms. de Havilland is suing FX and others involved with her depiction in the series “Feud: Bette and Joan” which depicts the rivalry between Bette Davis and Joan Crawford.   Ms. de Havilland was a friend of Bette Davis.  She claims that the series painted her in a false light, and violated both her statutory (Cal Civ. Code 3344) and common law right of publicity and unjustly enriched the FX defendants.

The right of publicity involves the right of an individual to control and profit from the commercial use of his or her name, image, likeness, or other unequivocal aspects of one’s identity.

We have blogged about the right of publicity before, here.

The FX defendants are defending against the allegations by invoking the anti-SLAPP Statute in California that protects against threats to the First Amendment in matters of public interest among other defenses.

Ms. de Havilland brought a motion for an expedited trial based on her “unusually advanced age” of 101.  She also asserted that she was susceptible to disease due to her advanced age and that she has recurring health issues.

As an aside, there is a separate statute for the right of publicity for the deceased at Cal. Civil Code 3344.1 in the unfortunate circumstance of Ms. de Havilland dying before resolution of the suit.

Not surprisingly, the Judge granted the motion for an expedited trial stating “I can’t imagine how one could not do that when the plaintiff is 101 years old.”  This will be an interesting trial to follow.

An Update from Mars: “CocoVaa” Dispute Resolved

Posted in Agreements, Infringement, Law Suits, Mixed Bag of Nuts, Trademark Bullying, Trademarks

Earlier this year, I posted about a dispute between candy company Mars Inc. and a small business based in Wisconsin, selling handmade fine chocolates under the mark CocoVaa.

In March, Mars Inc. filed a federal trademark infringement complaint in the Eastern District of Virginia, asserting that its registered CocoaVia® mark (Reg. No. 4179465), for a dietary supplement powder, was being infringed by the use of the mark CocoVaa for handmade fine chocolates. Mars Inc. sued both the company CocoVaa LCC, based in Madison, Wisconsin, as well as the company’s owner, Syovata Edari.

According to Mars Inc.’s website, the CocoaVia® supplement has naturally occurring “cocoa flavanols” that promote “healthy blood flow from head to toe,” which is important for  “cardiovascular health.” The supplement is available in either capsule form, or in flavored powdered stick packs that can be mixed into drinks, such as milk or smoothies.

Ms. Edari launched a strong public stand against Mars Inc., calling this a case of “trademark bullying” in interviews in local and national media outlets. Ms. Edari noted that her fine chocolates are “distinctly different” than Mars Inc.’s dietary supplement powders, that they have different packaging, and that they appear in “different consumer spheres,” such that consumers would be unlikely to think there’s a connection between the two brands.

In June, Ms. Edari received some good news when Mars Inc.’s complaint was dismissed for lack of personal jurisdiction,  because Ms. Edari and her company do not sell any products in Virginia (where the lawsuit was filed), nor do they have sufficient contacts there related to this dispute.

However, Ms. Edari wasn’t done with this battle just yet.  She anticipated that Mars Inc. may file another trademark infringement complaint in Wisconsin, where her business, CocoVaa LLC, is based.  Therefore, Ms. Edari made a preemptive strike, by filing her own complaint in federal court in Wisconsin, and seeking a declaratory judgment of non-infringement. Just a couple weeks ago, the parties reached a settlement and filed a one-sentence stipulation for dismissal, without any information as to the terms of settlement. However, Ms. Edari stated in a recent interview that her business will continue to operate under the “CocoVaa” name, which is a big win.

Notably, in recent media coverage, both parties refused to comment about details of the settlement, which suggests a confidentiality clause. Just guessing, but based on Ms. Edari’s previous outspoken media campaign and interviews about the dispute, as discussed in my previous post, perhaps the confidentiality clause was required by Mars, Inc., which is more common when settlement terms are favorable to the opposing party.

Thus it appears that Ms. Edari’s declaratory judgment action had a successful outcome, and that this was a favorable settlement for Ms. Edari and her business. As they say, sometimes the best defense is a good offense. What do you think?

 

Are pretzel crisps crumbling into genericness?

Posted in Advertising, Articles, Branding, Food, Genericide, Loss of Rights, Marketing, Trademarks, TTAB, USPTO

Marketing types and legal types who review labels, be well advised to choose words used carefully.

In other words, if you believe you own rights in Pretzel Crisps as a trademark, it’s not wise to use the number of so-called “Crisps” as the serving size, especially with no trademark notice symbol.

Frito-Lay’s successful 2014 generic challenge (pretzel crisps = pretzel crackers), was appealed to the Federal Circuit by the claimed trademark owner Princeton Vanguard, now Snyder’s Lance.

We followed this case up to the Federal Circuit appeal, then watched on the sidelines for a while:

Our friend, John Welch, over at the TTABlog, did a nice job summarizing the Federal Circuit’s decision vacating the Board’s genericness decision, sending it back for another and closer look.

John also nicely summarized the Board’s second look too, once again ordering cancellation of the Supplemental Registration and sustaining the Principal Register opposition on genericness grounds.

I’d like to remind our faithful readers again about the danger of self-inflicted wounds that can kill a trademark, one example being generic use in the Serving Size portion of the Nutrition Facts labels:

Makes it hard to avoid admitting during the litigation “that ‘crisps’ can be used as a term” for “pretzel crackers,” and that “packages for its PRETZEL CRISPS products provide nutrition facts for a serving size of a stated number of ‘crisps.’” These admissions proved helpful to Frito-Lay.

Another danger, it appears, is the lower case lettering use by others in mentioning the “pretzel crisps” product, a multitude of references apparently unpoliced by the claimed mark owner:

“[W]e note that there are many instances in the record where the term ‘pretzel crisps’ is set forth in lower case, with no apparent reference to the term as a brand, or to Defendant, indicating an understanding by the relevant public that the term ‘pretzel crisps’ refers to a product rather than to a single producer thereof. We note that many of these excerpts, from business as well as industry publications, are the work of authors who indicate an understanding that a brand is referenced by use of uppercase letters. Yet they use lower case letters to spell ‘pretzel crisps’ . . .”

Does that focus validate trademark counsel’s desire to steer away from using lower case branding, given the Board’s focus on type style? Or, if carefully managed, might the ills still be avoided?

Stay tuned on Princeton Vanguard’s next move following this loss, will it appeal again? If so, as John rightly asks, which appeal route makes the most sense, Federal Circuit again, or federal district court this time?

What’s more, Princeton Vanguard has been busy at the U.S. Trademark Office, apparently planning for a worst case scenario if it were to lose all protection for the bare wording “pretzel crisps” for “pretzel crackers,” which is where things stand for the moment. It has filed two new standard character word marks for slightly different goods, instead of “pretzel crackers”: “Peanut butter-covered pretzel snacks,” and “Chocolate-covered pretzel snacks.” And, this script for bare-bones “pretzel crackers”:

What say you, are the different goods descriptions enough to avoid genericness, and is the above shown script unique enough to permit exclusive ownership of a generic set of words?

Or, is it a little too light in the creativity department to infuse exclusive ownership potential into generic wording?

These questions will decided at some point along the line, since Frito-Lay has opposed these applications too.

“Let’s Play:” DMCA Takedown Notices and Game Developer Acquiescence

Posted in Copyrights, Fair Use, Infringement, Mixed Bag of Nuts, Technology

There is an entire gaming sub-culture developed around watching others play video games.  I’m not talking about gathering around the Game Cube in your friend’s basement and passing the only controller.  “Let’s Play” videos are game play videos made by players and posted or streamed online.  The videos usually include the players’ own running commentary, which typically offers sarcasm, loud noises, bad jokes, profanity, and occasionally helpful tips.

The concept of Let’s Play videos has been around, in various forms, as long as recording devices and screen captures have allowed gameplay documentation.  Today, some players make a sizeable living from Let’s Play video ad revenues.  Felix Kjellberg, whose YouTube name is PewDiePie, is easily the most well-known Let’s Play vlogger.  With over 50 million YouTube subscribers, PewDiePie was named the highest-earning YouTuber in both 2015 and 2016.

A screenshot from PewDiePie’s Let’s Play video for the game Dark Souls

Despite their popularity, however, the legality of Let’s Play videos is on shaky ground.  Each video features a reproduction of copyright-protected images from a video game.  The videos also typically feature the player’s voiceover and a small window showing the player’s reactions (see above example).  If not a pure reproduction of copyright-protected material, the videos are at least a derivative work.

Some have argued that Let’s Play videos are protected fair use.  Statutory examples of fair use include criticism, comment, news reporting, and a few others.  Arguably, the gaming videos may be a form of commentary, as at least some of the videos do include commentary on the copyright-protected images themselves.  However, these statutory categories are only examples, and fair use is decided on a case-by-case consideration of six factors.  The transformative nature of the videos may weigh in favor of fair use.  That is, rather than a video game, Let’s Play videos provide video playback of one user’s gameplay with added commentary.  At this point, it is largely unclear whether these videos constitute fair use, and will likely remain so until a court has the opportunity to give guidance.

Whether Let’s Play videos are rampant infringement or protected fair use, video game developers have largely chosen a hands-off response. PewDiePie’s videos provide free advertising for the game developers to 50 million subscribers.  The videos give potential players an opportunity to preview gameplay and graphics before purchasing.  Because the draw of a video game is in active play, this likely does not take away from the game developers’ bottom lines.

This week, however, one video game developer reminded PewDiePie of the unstable footing on which his vlogging fame rests. A recent PewDiePie video included some racist commentary.  Unfortunately, it isn’t PewDiePie’s first misstep of this type.  Though this particular incident ruffled the wrong game developer’s feathers.  In a series of tweets, a co-founder of Campo Santo—developer of the game Firewatch—condemned PewDiePie’s statements and vowed to file DMCA takedown notices for PewDiePie’s Firewatch videos.

The Firewatch creator stated “I am sick of this child getting more and more chances to make money off of what we make.”  In apparent reference to the legalities, he said “[t]here is a bit of leeway you have to have with the internet when [you] wake up every day and make video games. There’s also a breaking point.”

This game developer’s response illustrates developers’ power with respect to the success of Let’s Play videos, and more generally highlights the power afforded copyright holders by the DMCA. The Firewatch creator’s takedown threat was an apparent result of his personal disgust at PewDiePie’s racist remarks, and did not relate to any new discovery of infringement.  Like other game developers, Campo Santo was well aware of Let’s Play videos.  Instead of using takedown notices to eliminate infringing content, the developer here is using the DMCA to dictate how PewDiePie infringes its content.  With the help of DMCA takedown notices, developers like Campo Santo can stand back in acquiescence, striking only when the infringement becomes inconvenient.  I wonder if the DMCA drafters anticipated this type of selective enforcement by copyright holders.  In a litigation setting, this practice may even raise the possibility of equitable defenses to infringement.

The Five-Finger Copyright Discount

Posted in Audio, Copyrights, Fair Use, False Advertising, Guest Bloggers, Infringement, International, Loss of Rights, Social Media

–James Mahoney, Razor’s Edge Communications

Recently violinists Rhett Price and Shiva Chaitoo got two very different lessons on the downside of posting performances on the Internet.

According to an article in The Boston Globe, a fan of Price alerted him to a video of Chaitoo’s playing. Turns out, Chaitoo was pulling a Milli Vanilli, fingering his violin over a sound-track of Price’s recordings. And he’d been doing it for at least a couple of years, and getting paid gigs from people who’ve seen the vids or his “live” performances.

Long story short: Price isn’t looking for anything more than for Chaitoo to stop his “tribute.”

What’s really interesting about the situation, though, is the copyright aspect of it, and the apparent lack of legal remedies available to Price.

According to Paul Litwin, a partner of Shames & Litwin entertainment lawyers, when Price posted his videos on YouTube and offered free downloads in exchange for email addresses, he essentially granted some use-rights. YouTube’s terms of service include “a worldwide, non-exclusive, royalty-free, sub-licenseable and transferable license to use.”

Litwin says, “If you buy and download a song, you can pretend to play and sing along with it. By posting his music on YouTube, Rhett is allowing the YouTube community to use it. [Chaitoo] isn’t saying he’s Rhett, so from a legal standpoint, he does not appear to be infringing copyright laws.”

Really? The YouTube T&S notwithstanding, it seems to me that this would usually come under fair-use category. Since Chaitoo used it for a marketing tool (and probably also “performed” the tracks at his paid gigs), I think he hit some very sour copyright notes. There’s a world of difference between playing air-violin in your living room and what Chaitoo did.

As I’ve mentioned often before, I’m no lawyer (though I play one in the living room by reading aloud Steve Baird postings as if they were my own), so what do you knowledgeable folks think about both the situation and Lawyer Litwin’s assessment?

And one final factor to consider: Chaitoo lives and works in Trinidad and Tobago, which may complicate the copyright issue and Price’s available recourse.

Long Trail Brewing Tells Burton to TAKE A HIKE!

Posted in Agreements, Branding, Fashion, Law Suits, Marketing, Trademarks

What happens when a clothing manufacturer starts selling graphic t-shirts and sweatshirts, perhaps without doing a proper trademark search?  Sometimes a lawsuit.

A trailblazing brewery when it comes to trademark disputes, Long Trail recently sued snowboard manufacturer and fellow Vermonter Burton for using TAKE A HIKE on shirts and sweatshirts.  Here’s an example of one of the offending sweatshirts:

Long Trail owns U.S. Trademark Registration 3,637,458 for TAKE A HIKE! for shirts, short-sleeved shirts, and sweatshirts as shown only here on their website.

Two days after Long Trail sued Burton, the parties apparently settled it with Burton agreeing to cease use of the mark on these products.

So would you be confused by Burton’s use, just looking at the examples above?   Does TAKE A HIKE! even function as a trademark?  Does it indicate the source of goods or services to you, or is it merely ornamental?  Should Burton have turned around and said “No, you take a hike!”?

Burton does not appear to be the only one using the phrase “Take a Hike” on a graphic element on a shirt.  Target, Saks Off 5th, and Macy’s websites all have shirts or sweatshirts currently available for purchase bearing TAKE A HIKE – including one from The North Face.  Then there’s Amazon, where a quick search reveals over 700 search results for “Take a Hike” apparel.  This seemingly pervasive third party use suggests that the mark may not be source identifying.

Federal registrations provide a statutory, but rebuttable, presumption of the owner’s exclusive rights in a mark.  Without their federal registration of TAKE A HIKE! here, Long Trail may have experienced a more grueling climb to establish its rights in the mark before it could convince Burton to turn around.

While breweries sell plenty of cool swag, few go through the process of filing federal trademark applications on apparel, glassware, or even key chains.  There are over 12,000 live applications and registrations for breweries on “beer,” but there are less than 800 live applications and registrations owned by breweries for apparel or glassware.  Even Long Trail did not file for their LONG TRAIL mark on many of their goods until last year.  If you are a brewery, you may want to consider filing on important goods to your business other than beer, especially on your house brand like LONG TRAIL, as part of an overall filing strategy.

Federal Trademark Registration, the First Amendment, and Freedom of Speech: Part II

Posted in Articles, Copyrights, Dilution, Famous Marks, First Amendment, Trademarks, USPTO

As the drum roll proceeds to the upcoming Midwest IP Institute in Minneapolis and sharing the podium with Joel MacMull of the Archer firm (and Simon Tam fame) on Thursday September 28, in a few days, I’ll be making a stop south of the border, at the University of Iowa College of Law, where it all started for me in the law, to share some thoughts on this topic with the Iowa Intellectual Property Law Society on Friday September 15, here are the details to attend.

In the meantime, here is my second installment on the important topic of Federal Trademark Registration, the First Amendment, and Freedom of Speech: Part II.

I’ll call it part of a continued, controlled Tam catharsis, with more food for thought and discussion of where the law is heading, especially with forthcoming Part III, exploring the implications of the Supreme Court’s Tam decision, especially the future of federal trademark dilution law.

As you may recall, Part I questioned the Supreme Court’s characterization of Section 2(a) as banning speech and the Court’s conflation of the federal government’s issuance of a trademark registration (and corresponding meaning of the resulting Certificate of Registration, issued in the name of “The United States of America,” and corresponding meaning of the federal registration symbol — ® — which cannot be used lawfully unless granted federal registration unlike © and ™) with the meaning of the underlying trademark subject matter sought to be registered.

As it turns out, the learned Professor Christine Haight Farley of American University Washington College of Law similarly recognized: “A broader critique is that the [Tam] court seems often to be speaking of trademarks when the issue before it is limited to the registration of trademarks.”

With Part II, while admittedly not having all the answers, I thought it might be productive to ask some probing questions about the Court’s decision to provoke further discussion and guidance:

  • Why didn’t the Tam Court acknowledge that the normal and historical operation of trademark law actually facilitates the complete suppression of certain speech, perhaps justifying special treatment and a unique approach from its typical First Amendment and Free Speech cases?
  • Why didn’t the Tam Court acknowledge the material difference in kind struck by Congress between denying registration on the one hand and enjoining and/or punishing trademark use on the other hand, as only the latter truly qualifies as a ban on speech?
  • Why didn’t the Tam Court acknowledge that our entire federal trademark law flows from the U.S. Constitution too? In particular, the Commerce Clause (Article I, Section 8, Clause 3), granting Congress the power: “To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes.”
  • Why did the Tam Court not acknowledge that a Certificate of Registration is issued by the USPTO, under authority of the Department of Commerce, “in the name of the United States of America,” under Section 7 of the Lanham Act, and instead proceed to mock the governmental speech argument without addressing or attempting to explain away this difficult fact?
  • Did the Tam Court gloss over the language in Walker v. Texas Division, Sons of Confederate Veterans, Inc., noting “government statements (and government actions and programs that take the form of speech) do not normally trigger the First Amendment rules designed to protect the marketplace of ideas”?
  • Why did the Tam Court not feel compelled to explain how and why the government actions of approving or disapproving marks for registration somehow does not take the form of speech?
  • Was it disingenuous for the Tam Court to say “trademarks are private, not government speech,” when it was apparently unwilling to specifically and directly say that the government’s act of registering a trademark, issuing a Certificate of Registration (in “the name of the United State of America”), and placing a trademark on the Principal Register, is not government speech?
  • Isn’t the proper comparison in Walker and Tam, the state government’s direct control over specialty license plates and the federal government’s direct control over Certificates of Registration and the Principal Register, so isn’t it a red herring to emphasize that the federal government doesn’t “dream up” the applied-for marks, since Texas didn’t “dream up” the multitude of specialty license plate designs either?
  • Doesn’t the federal government, through the USPTO, edit, modify, and amend applied-for marks (through required disclaimers, description of goods/services changes, description of the mark changes, and drawing changes, etc.), at times, to place them in proper condition for approval, making the Tam Court’s attempt at distinguishing Walker v. Texas less compelling?
  • Why was the Tam Court more willing to limit Walker v. Texas to its facts than upholding the disparagement bar in Tam as facially constitutional, and then limiting Tam to its facts, in the unlikely event the hypothetical concern of Congress attempting to amend the Copyright Act to refuse similar matter ever would arise in the future?
  • In other words, why was the Tam Court so willing to embrace the hypothetical concerns of the false Copyright comparison with a multitude of ways to fairly distinguish from trademark?
  • As to the concern of chilling speech by denying federal registration, isn’t it telling that during the entire more than 100 year history of federal registration in the U.S., only some 5 million federal registrations have issued, which most certainly is a drop in the bucket to the number of eligible unregistered marks in use throughout the same period of time?
  • The Tam Court relied, in part, upon a perceived “haphazard record of enforcement” of the disparagement bar, how difficult would it be to develop evidence showing a similar “haphazard record” in applying other statutory bars found in federal trademark law?
  • How can the Tam Court actually resist saying that trademarks are a form of commercial speech, when it previously held in Friedman v. Rogers that the use of trade names “is a form of commercial speech”?
  • Why didn’t the Tam Court ever once mention “public policy” or the “unconstitutional conditions” doctrine in its decision?
  • Did the Tam Court focus its sights on “viewpoint” as a way to avoid implicating too many other content based restrictions in the Lanham Act as becoming vulnerable to First Amendment challenges?

Stay tuned for Part III, as the Tam Court’s focus on “viewpoint” is the likely key to unlocking what additional portions of federal trademark law are vulnerable to future First Amendment challenges.

A Special Thank You to Suzan Shown Harjo

Posted in Articles, Branding, First Amendment, Law Suits, Marketing, SoapBox, Trademarks, TTAB, USPTO

Today marks the 25th anniversary of the filing of the petition to cancel the R-Word registrations held by Pro-Football, Inc., the NFL franchise playing near the Nation’s capital.

Indian Country Today has published an interview with Suzan Shown Harjo, lead petitioner in Harjo et al v. Pro-Football, Inc., and organizer of Blackhorse et al v. Pro-Football, Inc.

Thanks to Indian Country Today and Suzan Shown Harjo for sharing this interview. Its documentation of history is so important for anyone who cares where we’ve been as a country and where we’re headed; it is valuable and timeless, powerful and compelling.

I’m so thankful to Suzan for the opportunity to play a small part in this long yet unfinished history, and here is a photo of us together on May 15, 2015, at a conference in Hinckley, Minnesota, during a celebration honoring her lifetime of advocacy for Native peoples:

Suzan’s heretofore and ongoing work is truly remarkable and a testament to who she is, even in the face of ignorant vitriol, and to how many lives she has touched and continues to touch in such a profound, generous, and meaningful way.

As I reflect on the historic petition to cancel we filed together on September 10, 1992, one thing I can’t get out of my mind is the national press conference question I answered from the Washington D.C. press corps, something like “what about the First Amendment?”

As I recall, my response was, something like, the beauty of this cause of action is that the First Amendment is not implicated because removing the federal government’s erroneous approval of the racial slur doesn’t compel the team to change the name, having said that, it is of course our hope that the team does the right thing and pick another name.

Who could have guessed it would take nearly a quarter century to reverse prior court of appeals precedent (McGinley) saying Section 2(a) did not violate Free Speech or the First Amendment, and then to have the Supreme Court agree that refusing federal registration of disparaging matter under Section 2(a) of the Lanham Act is viewpoint discrimination and a violation of Free Speech.

Thankfully much awareness has been raised and good has been done over the past quarter century, while the NFL and Washington franchise double down together on their joint investment to retain exclusive rights in a racial slur.

Hopefully with increased awareness raised and the movement and pressure continuing, we won’t have to wait another quarter century for justice and clearer thinking on this issue by the NFL, FEDEX, and other NFL sponsors, if not Daniel Snyder himself.

As I reflect back a quarter century ago, to the day, it was never about banning the team’s Freedom of Speech, it was about removing the federal government’s approval of a racial slur as a federally-registered trademark, and providing team ownership with a financial incentive to reconsider their choice to ignore the obvious, as Suzan has noted:

“We liked the approach of a pocketbook incentive case that did not force a name-change, but counted on the greed of the team owner to drop the name if exclusive federal trademarks were cancelled.”

“The pocketbook approach put things squarely where pro sports differed from educational sports: money. In most name and symbol changes made in educational sports, we had a way of discussing the issues and solutions, because there almost always were educators and officials who genuinely cared about the well-being of the students. In pro sports, even the health and safety issues seemed focused on liability and not on human beings, and some paid fans seemed physically provocative, while others seemed orchestrated online to attack and defame those of us who were challenging the NFL franchise in orderly legal forums.”

“Another reason I liked the pocketbook approach was that it didn’t impede anyone’s free speech. I was at WBAI-FM  in 1973, when the “seven dirty words” case started down the road to the Supreme Court’s 1978 ruling against free speech. The free speech flagship station of the Pacifica network, WBAI aired a cut from Comedian George Carlin’s “Class Clown” album and a listener complained to the Federal Communications Commission that his young son was wrongly exposed to dirty words. George Carlin’s “Seven Words You Can Never Say on Television” was based on an earlier routine by Comedian Lenny Bruce that was an excuse for one of his many arrests and jailings for using dirty words. The upshot of FCC v. Pacifica Foundation was that the federal government can restrict free speech in certain instances, the opposite of the Court’s 2017 ruling in The Slants case against the PTO, which rendered part of the trademark law unconstitutional as violative of the First Amendment. We never thought we were violating the NFL’s freedom of expression by using the same section of the trademark law.”

Ironically, as team owner Daniel Synder freely and proudly admits, the team’s ability and commitment to continue using the name will never change, even in the face of the mountain of evidence demonstrating its offensiveness and meaning as a racial slur, and even in the face of losing on the merits three times (twice at the TTAB, once at the E.D. Va.), or more.

So much for the Supreme Court’s concern that Section 2(a) actually chills Freedom of Speech, because according to Snyder, even after losing on the merits he has reaffirmed: “We will never change the name of the team,” “It’s that simple. NEVER — you can use caps.”

So, in the end, it is about the money, and the NFL clearly has had sufficient funds to defend the indefensible for a quarter century now, so isn’t it time FEDEX and other NFL sponsors step up and get on the right side of this issue, with their money? Let’s all follow the money.

Here’s to you Suzan, be well, Aho.