Substantially Similar--A Blog on IP Issues, Writing and Film

The Name "Washington Redskins" and Efforts to Change It

by John Aquino on 11/05/13

I've been following the issue of whether the name of the Washington Redskins football team should be changed since 1999 as both a journalist and, briefly and tangetially, as the executive director of a tribal association.

I think the name should be changed, although I also feel that some of the arguments given for doing so do not make much sense.

In 1999, when I was a journalist for American Lawyer Media, I attended conferences in which an elderly Native American chief spoke with tears streaming down his creviced faces of attending Washington games with his grandchildren and being surrounded by drunken Washington fans with feathers in their hair and their faces painted red screaming in support of their team. "What do I tell my grandchildren?", I remember him asking. "That this is not about them?"

Embarrassment, humiliation, an insult to a person's heritage. All good reasons to be offended. But is it enough to cause someone to make changes to their property (intellectual) in which they have invested millions of dollars that could affect that someone's revenues. The name "Washington Redskins" is property, and it has been in use for over 80 years.

The efforts to change the name started with a legal process. In 1992, a petition was filed with the U.S. Patent and Trademark Office asking that the name "Washington Redskin" have its trademark status revoked under Section 14(3) of the Lanham Act, 15 U.S.C. Section 1064(3), which is the foundation for U.S. trademark law and which bars disparaging terms from trademark protection.

The strategy was that one reason the team has for not changing the name is its economic value. If the trademark protection were to be cancelled and anyone could use the name without cost, then the name would have no value and could be changed.

In 1999, the Trademark Trial and Appeal Board ordered in Harjo v. Pro-Football Inc. that the trademark be cancelled after it had determined that the term and five other related ones might disparage Native Americans.

The TTAB's ruling was overturned by the U.S. District Court for the Court of Appeals because it found the ruling was unsupported by substantaial evidence and barred by the doctrine of laches--which means the petitioners waited too long to file their petition--since the petition was filed many years after the team began using the name. The U.S. Court of Appeals for the District of Columbia Circuit affirmed the district court's ruling on the laches grounds in Pro-Football Inc. v Harjo, D.C. Cir., No. 03-7162, 7/15/05.

This year a second petition was filed in the TTAB, and the board heard arguments again on March 7, 2013 as to whether the trademark for the name "Washington Redskins" should be cancelled. Whether laches will again become an issue is uncertain. The standard for whether a trademark is disparaging is the opinion of the referenced group, according to another decision by the TTAB when it refused to register for a trademark the mark "Heeb" in 1998, saying the term was dispagarging to the Jewish people.

The decision could come at any time. If the board again rules against the team, an appeal would be likely.

It could well be that trademark law is not the best arena to settle this issue. Recognizing that, Native Americans have been working with the federal and state governments. On March 20, 2013, two weeks after the second petition was filed, H.R. 1278 was introduced by Del. Eni F. H. Falcomavaega Jr. (D-Am. Sam.) to amend the Lanham Act so as to make explicit use of the term "redskin" as a trademark disparaging and not eligible for trademark protection. On Nov. 5, 2013, the D.C. City Council approved a referendum calling on the team to change its name. The council cannot force the team to do this, but it is the council of the city whose name the team bears.

Native Americans have also worked with the media, and sentiment in favor of changing the name has grown.

Last week (Oct. 24, 2013), Washington Post columnist Eugene Robinson wrote a piece on how the name should be changed. He indicated that he feels the name is racist and in support described how the team's first owner George Preston Marshall was a racist who wouldn't allow African-American players on his team. This argument makes no sense to me. If Marshall was a racist, why does that translate into the name "Washington Redskins" being a racist term. Without getting into the issue of whether there can be racism without intent, I'm picking up Robinson's suggestion that a racist owner's picking a name naturally results in that name being racist.

Why would someone give their team a name they thought to be demeaning to a group of people. That's like the Nazis, if they had had a football team, calling it the "Heebs," which, as the TTAB ruled, is disparaging to the Jewish people.

The name for the team before Marshall changed it was the "Braves," which also has Native American connections. The owners of professional sports teams named them after Native Americans because the names symbolize toughness and courage, not because they thought the names disparaged a group of people. The names "Cleveland Indians" and "Atlanta Braves" survive so far. Marshall's problem is that the name he picked--reportedly out of respect for a particular individual--specifically refers to the color of someone's skin.

What has really changed is our culture and sensitivity. When the name "Washington Redkins" began to be used in 1932 there was radio show called "Amos and Andy." The title characters were not very bright and did foolish things, but they were not that much different in kind than Laurel and Hardy or Abbott and Costello. Amos and Andy, however, were black men played by two white men--Freeman Gosden and Charles Cordell--using an exaggerated dialect. When an Amos and Andy film, Check and Double Check, was made in 1930, Gosden and Cordell blacked their faces. (When an Amos and Andy tv show was made in 1947, black actors were used.).

In 1932, the oriental detective Charlie Chan was played in a series of films by the Swedish-born actor Warner Orland. In the same fashion, the oriental detective Mr. Moto was played by Peter Lorre (born in Hungary), Mr. Wong by Boris Karloff (British) and when Orland died, Charlie Chan was played by Sidney Toler (born in Missouri of Scottish descent). Homosexuals in movies were characterized as effeminant men, and African-Anericans through actors such as Stepin Fetchit as slow and lazy. I remember my father both enjoying and being offended by an actor and singer named Danny Thomas, who had a popular television show on CBS in the 1950s and 1960s. Thomas was born in Toledo, Ohio of Lebanese descent but he used to do skits playing Italian-Americans who spoke in broken English. In one skit, he was calling CBS from a phone booth complaining that its show "The Untouchables" portrayed Italians and Italian-Americans as gangsters. He would say, "I'm a hot in the boots. I'm a hot in the boots." When the person he was calling didn't understand, Thomas shouted, "The telephone boots, she's a hot!" The skit ended with Thomas saying that Italians were good, decent people, and that if the head of CBS didn't change the show Thomas would put a bomb in his car.

When I was in grade school thirty years after Marshall changed his team's name to "Washington Redskins," we read a poem called "The Noble Redskin," which I dog-leafed because we were Redskin fans.

But by 1981, when the British actor Peter Ustinov played Charlie Chan in Charlie Chan and the Curse of the Dragon, Chinese-Americans protested the film with its white actor playing a Chinese with makeup on his eyeslids and using "Chop Suey pidgin English." Ustinov was following the tradition of Orland, Toler, Lorre, and Karloff. He or they were not being mean-spirited. But the times had changed.

There are anti-defamation organizations and, while people surely do it still, making fun people based on their sexual orientation or the way they talk or the color of their skin, such humor is not mainstream like it was with Stepin Fetchit.. When Rogers and Hammerstein wrote Flower Drum Song in 1958 about Chinese and Chinese-Americans in San Francisco, one of the leads, Larry Blyden, was a white man playing a Chinese-American character. I have no doubt they wrote the show with affection for its characters. But the show was not revived much because it was later thought to be full of racial stsreotypes, and when it was finally revived in 2002, Chinese-American playwright David Henry Hwang revised the book and it opened with an Asian-American cast.

What was not intended to offend can offend. What was once accepted is no longer acceptable. The term "Redskin" is now viewed as disparaging. White actors no longer wear blackface, Chinese are not played by white actors in movies, and a team name that calls attention to a person's skin and not his or her character is viewed as derogatory. That is why the name should be changed.

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Three Stories About President Kennedy

by John Aquino on 10/27/13

As the 50th anniversary of President John F. Kennedy's assassination nears, we all remember. I have three stories I want to share. Two I heard recently, and I had never heard them before, and the other concerns me.

I saw him live once. My Dad, an eloquent lawyer, talked the good nuns of the Catholic school into letting my brother Jim and I go with our Dad to opening Day at Griffith Stadium in 1961. He convinced them it was an educational experience. Dad always got tickets on the third base side. We saw President Kennedy in his seats on the first base side through Dad's binoculars.

My sister Joan was invited to one of Kennedy's inaugural balls in 1960. It had snowed the night before. My mother insisted that Joan wear boots with her gown. And when Joan was taking off her boots, the Kennedys, who were going from ball to ball, walked through the event and Joan missed them.

I used to see President Kennedy's brother Ted when I was covering congressional hearings toward the end of his life.

I was in high school when President Kennedy was killed. We were herded into the chapel without being told why to pray for something important.

Today, we still remember President Kennedy because he brought such energy and charm to the presidency that, as a result, students joined the Peace Corps and astronauts went to the moon.

Here's the first story about Kennedy I hadn't heard before. The Kennedys were to fly into Fort Worth and stay at the Hotel Texas on the night of Nov. 21. The hotel was not the best in Fort Worth but had been selected by the Secret Service because it was easier to guard. Vice President Lyndon B. Johnson, a native son, had secured the best accommodations in the Hotel Texas, the Will Rogers Suite, on the 13th floor. The Kennedys were on the 8th floor.

The wealthy of Fort Worth were upset that the nation's president would be staying in the second best suite in the second best hotel in the city. And so they decided that they would lend art from their own collections to brighten the suite where the Kennedy's were to stay: Monets, Picassos, Van Goghs.

They were told that Mrs. Kennedy would stay in the master bedroom, and so they placed Van Gogh's "Road with a Peasant Shouldering a Hoe," over the bed and the Impressionists in that room. In the smaller bedroom where President Kennedy was to stay, they placed "manly" art such as the nude men swimming in Thomas Eakin's "Swimming" and Charles M. Russell's "Lost in a Snow Storm."

The Kennedys arrived at midnight, were exhausted, and went to bed without noticing the art on the walls. For some reason, they switched suites, and Jackie Kennedy ended up in the room with the nude male swimmers and John with the Van Gogh and Monet.

In the morning, the Kennedys did see the art, found a catalog the owners had put together and left, and discovered that the art works were the originals. Kennedy called the lady who had been the prime mover to thank her. It was likely the last phone call he made before going to Dallas. John and Jackie Kennedy's last time alone together was when they were surrounded by these masterpieces of art supplied by strangers as an incredible act of kindness. The owners were taking their paintings down mid-day on Nov. 22 when news came over the radio that Kennedy had been shot.

The second story I heard recently about Kennedy was about his rosary, which will be up for sale by auction shortly. It is described as a wealthy man's rosary: the beads are made of onyx, the cross of gold, the figure of Christ on the cross stylized, and Kennedy's name engraved on the cross.

The rosary is being auctioned by the sons of Dave Powers, Kennedy's friend and special assistant to whom the president gave the rosary. It is described as not in mint condition because the beads are worn from having been fingered during prayer by Kennedy and presumably Powers.

The third story involves me. Both President Kennedy and I were fans of the Lerner and Loewe 1960 musical Camelot about King Arthur. The original cast album ends with Richard Burton as King Arthur reciting what the album notes call "Camelot (Reprise)," which ends, "Don't let it be forgot/That once there was a spot, for one brief shining moment," and the chorus sings, "That was known as Camelot."

After President Kennedy died, Jackie Kennedy told Theodore White for his Life Magazine story about her husband's love for the "Camelot Reprise," and consequently the 1,000 days of the Kennedy Administration became known as "Camelot."

It always struck me how the original cast album ends this way but the musical itself ends with King Arthur and a young boy named Tom, who will presumably grow up to be Thomas Malory who wrote of King Arthur, singing the "Camelot Reprise." Whereas the song in the show ends with a note of hope, the song in the original cast album is elegiac and mournful.

The show was heavily reworked on the road, so it is possible that it once ended the way the album does. But it was changed by opening night, and the album was recorded after opening. Why, I wondered, did they end the album with Burton doing the "Camelot Reprise" alone? Was it because he was said to have a voice that sounded like an organ?--he did--and one that was so great you would willingly listen to him read the telephone book?--you wouldn't, I heard him do this on a talk show and it wasn't much. Or was it just cheaper?--they didn't have to bring in the actor playing young Tom.

But Burton speaking alone, according to Jackie, moved Kennedy and so many others who heard him do the "Camelot Reprise" on the album and in person. I remember when Burton played in the 1980 revival of Camelot he said in an interview he could see people leaning forward waiting for him to say the word "moment."

It was not unusual for a cast album to end differently from the show. South Pacific ends with Nellie and DeBecque's children reprising "Dites Moi" and DeBecque, who was thought to be dead, entering and singing the song with them. Then DeBecque and Nellie hold hands as the orchestra swells. The cast album includes DeBecque finishing "Dites Moi" but then puts in a reprise of "Some Enchanted Evening" that actually occurs earlier in the show. It was clear they wanted to end the show with Enzio Pinza hitting that high note again rather than just have the orchestra swell.

But with Camelot, the change is from two people singing together to one and results in a completely different tone and mood. After Kennedy's death, a grieving nation attached itself to the voice image delivered by a great actor of a nation's promise tragically unfulfilled. And this song influenced the thinking of at least two generations about a presidential era.

I tried and tried to find out why this change had taken place. When Burton came to Washington in 1983 to play in Private Lives, I wrote his hotel daily, hung around the lobby until they asked me to leave, and tried, unsuccessfully, to have journalists I knew who had Kennedy Center connections arrange a meeting. But I never heard back from Burton. I also contacted his daughter Kate and others who were involved in the original cast album, most of whom have since died, but no one had an answer for me.

It would be interesting to know the cause of this one decision that created the mythos of the Kennedy's Camelot. If anyone knows the answer, let me know.

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Update on the Sherlock Holmes Copyright Case

by John Aquino on 09/18/13

To recap: It is possible to claim copyright for a fictional character that stems from a particular work but that also exists outside of the particular work. In other words, the alleged infringer does not copy any specific wording from the copyrighted work but copies the character that the author had shaped in a unique and distinctive way. The character of Sherlock Holmes was created by Sir Arthur Conan Doyle in 1887 in A Study in Scarlet. That novel and all Sherlock Holmes four novels and 46 short stories published before 1923 have fallen into the public domain. Doyle’s last collection of 10 Sherlock Holmes stories, The Case Book of Sherlock Holmes was published in 1927. Leslie S. Klinger, desiring to issue a collection of new Sherlock Holmes stories, filed litigation in the U.S. District Court for the Northern District of Illinois, arguing that he was not required to obtain a license from the Doyle estate for these new stories because the character of Sherlock Holmes had fallen into the public domain along with the works in which he first appeared.

Prior to the Doyle estate’s legal reply to the complaint, I suggested that its argument would be that when Doyle wrote the post-1923 Sherlock Holmes stories he was not in the same position as any author writing a story about Sherlock Holmes. He was the creator and was taking up where he left off.

In its Sept. 10, 2013 reply to the lawsuit, the Doyle estate wrote, “The facts are that Sir Arthur continued creating the characters in the copyrighted Ten Stories, adding significant aspects of each character’s background, creating new history about the dynamics of their own relationship, changing Holmes’ outlook on the world, and giving him new skills. And Sir Arthur did this in a non-linear way. Each of the Ten Stories is set at various points earlier in the two men’s lives—and even late stories create new aspects of the men’s youthful character. In other words, at any given point in their fictional lives, the characters depend on copyrighted character development.”

The estate went on to argue that a literary character is a single integrated work of authorship. There are not sixty versions of Sherlock Holmes in the 60 stories, the estate argued, there is one complex Sherlock Holmes.

Klinger has filed for a motion for summary judgment. The estate replied to the motion the day after its reply to the complaint, repeating its arguments cited earlier. And Klinger will respond to the reply. Then the court will decide on whether to grant summary judgment to Klinger or proceed with the litigation.

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Cowboys and Aliens—Just the Same Idea?

by John Aquino on 09/10/13

I’ve discussed the basic principle in copyright law that you can’t claim copyright of an idea. The recent case of Busti v. Platinum Studios Inc., W.D. Tex., No. 1-11-cv-01029, 8/30/13, illustrates this and concerns a film that many will have seen—Cowboys and Aliens, which premiered in July 2011 and starred Daniel Craig and Harrison Ford.

Here is the background. In 1995, “Cowboys and Aliens,” an 11-page comic book by Steven John Busti, appeared in the first issue of the magazine Bizarre Fantasy.

Two years later, Platinum Studios Inc. published a one-sheet image of a spaceship chasing a cowboy with the title “Cowboys and Aliens. This broadside was intended to drum up interest in a potential movie. The film rights were purchased by Universal Studios Inc. and Dreamworks II.

In 2006, Platinum published a graphic novel, “Cowboys and Aliens,” Universal released the movie five years later, and Platinum reissued the graphic novel in conjunction with the movie.

In December 2011, Busti sued Platinum, Universal, and Dreamworks in the U.S. District Court for the Western District of Texas—Busti was from Austin--alleging that the graphic novel and the film infringed Busti's copyright in his comic book.

At first blush, it would seem to be a reasonable supposition that the comic book titled “Cowboys and Aliens” inspired the broadside with the same title which inspired the movie with the same title. But that just means that the idea of cowboys versus aliens was out there. Did Platinum executives have access to Busti’s comic book? Were the comic book and the graphic novel substantially similar?

In response to the defendants’ motion for summary judgment, Judge Sam Sparks wrote that there was no indication that Busti’s comic book had been widely disseminated enough that Platinum executives must have seen it. He further stated that Busti’s comic book dealt with the general idea of cowboys versus aliens and no specific scenes from Busti’s comic book were used in the graphic novel or the movie.

The court wrote that there was “overwhelming” evidence that the graphic novel had been independently created and concluded that the 1995 comic book and the novel and film were not substantially similar.

Over and over the court rejected what it called Busti’s speculations that people at Platinum must have seen his comic book. He could not prove access. And in the end, what the court saw was two works with the same title that dealt with the same very general idea.

The court consequently granted the defendants’ motion for summary judgment of non-infringement.

I wrote earlier of the similarities between Orson Welles’ Citizen Kane (1941) and George Cukor’s Keeper of the Flame (1942). Both dealt with major public figures and with journalists who find that the men, who both lived in gigantic mansions, turn out to be less than they seemed on the surface. The lighting of Flame also seems similar to that of Kane. And there are also dissimilarities between the two films in period and tone, in the darker character of Forest in Flame as opposed to the more complex Charles Foster Kane, and in quality.

Citizen Kane was released by RKO, and Flame by M-G-M. While not a major financial success, Kane received a great deal of attention, was nominated for best picture, and won the Oscar for best screenplay. When Flame came out, it did respectable business, received no major nominations, is primarily know as the second pairing of Spencer Tracy and Katherine Hepburn, and nobody got sued.

Years later Cukor claimed that he had not seen Kane when he was working on Flame. “Something was in the air,” he said.

Two years after Jaws, which was about a killer shark, Orca came out, about a killer whale. You can’t copyright an idea.

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Question #10: Protection for Recipes and Product Designs

by John Aquino on 08/30/13

Question: I am entering the food and drink industry and would like to develop new products. What kind of protection can I get for recipes and product designs?

Answers: Here are some thoughts. The approach is to flag issues related to possible infringement of your products and of other people' products.

As far as recipes go, they are usually seen as statements of facts (just ingredients and directions) and therefore not protectable by copyright law. A collection of recipes is protected by copyright, and taking a number of them from the collection would arguably infringe the copyright of the collection. If there was sufficient description of the recipe to make it a literary expression, the recipe could then possibly find copyright protection.

The protection for recipes and manufacturing methods for food and drink products can be protected by trade secret law. While the ingredients are on the package, the formulations and methods of manufacturing are what is protected. If you purchase a franchise from DQ or Swensens, you will be given access to their trade secrets (and bound to secrecy). Trade secrets are not registered and their protection comes from their being kept secret, such as keeping the recipe for Coca-Cola in a vault. The protection is that no one else knows how to make what you do. Theft of trade secrets can result in both civil litigation and criminal prosecution. Trade secret protection does not protect the secret from independent discovery or reverse engineering. And once the secret is out, there is no further protection.

Product packaging can find protection from trade dress law under the Lanham Act, which also outlines trademark protection. A concern would be that the distinctiveness of the package. Packaging that utilize commonly known shapes have been found not to be distinctive enough for trade dress protection unless they have acquired a secondary meaning.

I wanted to outline the broad parameters that I think would apply. With this background, you could decide to work with an attorney to review the possible protection for each of your products.

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